Landmark Cases in Intellectual Property Law 9781509904662, 9781509904693, 9781509904686

This volume explores the nature of intellectual property law by looking at particular disputes. All the cases gathered h

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English Pages [411] Year 2017

Table of contents :
Preface
Contents
Contributors
Table of Cases
Table of Legislation
1
Mansell v Bunger (1626)
I. Introduction
II. Robert Mansell and the Patent for Glass
III. Conclusion
2
Stationers v Seymour (1677)
I. Introduction
II. The Legal Landscape to 1710
III. Role in the Literary Property Debates
IV. Stationers v Seymour Revisited
V. Conclusion
Annex: Seymour's Patent Enrolment C66/3111, no 14bis (7 Oct 1669)167
3
Sayer v Moore (1785)
I. Introduction
II. The Litigation against John Hamilton Moore
III. Copyright Law and Enlightenment Epistomology
IV. Where are they Now?
V. Conclusion
4
Day v Day, Day and Martin (1816)
I. Background to the Litigation
II. The Prior Jurisprudence
III. Day and Martin v Slee and Statham
IV. Day and Martin v Thomas Day, John Day and Peter Martin
V. The Implications of the Day and Martin Litigation
VI. Conclusion
VII. Postscript
5
Nobel's Explosives Company, Limited, v Anderson (1894)
I. Introduction
II. Smokeless Powders and Inventors" Identities
III. The Making of the Legal Case
IV. Chancery and Beyond
V. The Impact and Significance of the Case
6
Walter v Lane (1900)
I. Introduction
II. Lord Rosebery and his Speeches
III. Copyright in Oral Presentations
IV. Moberly Bell and Newspaper Copyright
V. Walter v Lane
VI. Originality and the Legacy of Walter v Lane
VII. Postcript
7
Spalding v Gamage (1915)
I. Introduction
II. The Development of Passing Off in the Nineteenth Century: an Uncertain Framework
III. Spalding, the 'Orb' Football Case
IV. Conclusion
8
King Features Syndicate, Inc and Betts v O & M Kleeman Ltd (1940)
I. Introduction
II. Syndicating Features
III. Novelty Rights
IV. Japanese Toys
V. Conclusion
9
Slee & Harris's Application (1966)
I. Introduction
II. Software in the 1960s
III. Patent Office Examination
IV. Software and Subject Matter Eligibility
10
Coco v AN Clark (Engineers) Ltd (1969)
I. Introduction
II. Quantitative Analysis
III. Qualitative Analysis
IV. Conclusion
Annex
11
Biogen v Medeva (1996)
I. Introduction
II. Commercialising Biotechnology
III. Inventive Thought or Inventive Industry?
IV. Lord Hoffmann's Opinion
V. Conclusion
12
R v Johnstone (2003)
I. Introduction
II. The Decision in R v Johnstone
III. Explaining R v Johnstone
IV. Criminalisation and the Making of Modern Trade Marks Law
V. Conclusion
13
Lego Juris A/S v OHIM (2010)
I. Introduction
II. Quantity Production
III. 'If You Can't Tell the Difference, Why Pay More?'30
IV. 'It's not Really a Toy, It's a Medium,54
V. 'Participation is the New Brand'79
Index

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LANDMARK CASES IN INTELLECTUAL PROPERTY LAW This volume explores the nature of intellectual property law by looking at particular disputes. All the cases gathered here aim to show the versatile and unstable character of a discipline still searching for landmarks. Each contribution offers an opportunity to raise questions about the narratives that have shaped the discipline throughout its short but profound history. The volume begins by revisiting patent litigation to consider the impact of the Statute of Monopolies (1624). It continues looking at different controversies to describe how the existence of an author’s right in literary property was a plausible basis for legal argument, even though no statute expressly mentioned authors’ rights before the Statute of Anne (1710). The collection also explores different moments of historical significance for intellectual property law: the first trade mark injunctions; the difficulties the law faced when protecting maps; and the origins of originality in copyright law. Similarly, it considers the different ways of interpreting patent claims in the late nineteenth and twentieth century; the impact of seminal cases on passing off and the law of confidentiality; and more generally, the construction of intellectual property law and its branches in their interaction with new technologies and marketing developments. It is essential reading for anyone interested in the development of intellectual property law.

ii

Landmark Cases in Intellectual Property Law

Edited by

Jose Bellido

OXFORD AND PORTLAND, OREGON 2017

Hart Publishing An imprint of Bloomsbury Publishing Plc Hart Publishing Ltd Kemp House Chawley Park Cumnor Hill Oxford OX2 9PH UK

Bloomsbury Publishing Plc 50 Bedford Square London WC1B 3DP UK

www.hartpub.co.uk www.bloomsbury.com Published in North America (US and Canada) by Hart Publishing c/o International Specialized Book Services 920 NE 58th Avenue, Suite 300 Portland, OR 97213-3786 USA www.isbs.com HART PUBLISHING, the Hart/Stag logo, BLOOMSBURY and the Diana logo are trademarks of Bloomsbury Publishing Plc First published 2017 © Jose Bellido 2017 Jose Bellido has asserted his right under the Copyright, Designs and Patents Act 1988 to be identified as Author of this work. All rights reserved. No part of this publication may be reproduced or transmitted in any form or by any means, electronic or mechanical, including photocopying, recording, or any information storage or retrieval system, without prior permission in writing from the publishers. While every care has been taken to ensure the accuracy of this work, no responsibility for loss or damage occasioned to any person acting or refraining from action as a result of any statement in it can be accepted by the authors, editors or publishers. All UK Government legislation and other public sector information used in the work is Crown Copyright ©. All House of Lords and House of Commons information used in the work is Parliamentary Copyright ©. This information is reused under the terms of the Open Government Licence v3.0 (http://www. nationalarchives.gov.uk/doc/open-government-licence/version/3) except where otherwise stated. All Eur-lex material used in the work is © European Union, http://eur-lex.europa.eu/, 1998–2017. British Library Cataloguing-in-Publication Data A catalogue record for this book is available from the British Library. ISBN: HB: 978-1-50990-466-2 ePDF: 978-1-50990-468-6 ePub: 978-1-50990-467-9 Library of Congress Cataloging-in-Publication Data Names: Bellido, Jose. Title: Landmark cases in intellectual property law / Edited by Jose Bellido. Description: Portland, Oregon : Hart Publishing, 2017. | Includes bibliographical references and index. Identifiers: LCCN 2017017562 (print) | LCCN 2017020683 (ebook) | ISBN 9781509904679 (Epub) | ISBN 9781509904662 (hardback : alk. paper) Subjects: LCSH: Intellectual property—Great Britain—Cases. | LCGFT: Casebooks Classification: LCC KD1269 (ebook) | LCC KD1269 .L37 2017 (print) | DDC 346.4104/8—dc23 LC record available at https://lccn.loc.gov/2017017562 Typeset by Compuscript Ltd, Shannon To find out more about our authors and books visit www.hartpublishing.co.uk. Here you will find extracts, author information, details of forthcoming events and the option to sign up for our newsletters.

Preface Intellectual property is a discipline with contested contours, historical and theoretical alike. It is also an area of the law that is attracting an increasing amount of scholarly attention. Such interest could explain why some key intellectual property cases have already appeared in earlier volumes of this series, despite or precisely because of their focus on property or equity.1 Those cases were particularly notable because they were—and still are— frequently used as referents to trace principles and mark conceptual boundaries that facilitated the making, or crystallised the ingredients, of an emerging discipline.2 This volume explores the nature of intellectual property law and the procedural conditions for its historical existence by looking at particular disputes. All the cases gathered here aim to show the versatile and unstable character of a discipline still searching for landmarks. Each contribution offers an opportunity to raise questions about the retrospective and prospective narratives that have shaped the discipline throughout its short but profound history. Each contribution, furthermore, stretches the parameters of discussion by focusing on a variety of legal and historical features that have purportedly influenced the development of intellectual property. The case study is the genre that unites all the contributions, yet it will soon become clear that the methodology used to unveil the landmark status of a particular case is anchored and understood differently by the scholars writing here. For instance, the significance of a decision is tested by some scholars who have decided to map the historicity of its citation across decades and jurisdictions. Instead of the decision itself, its shadow is considered to be the reason why the case has become an authority in intellectual property law. Some contributors use the landmark designation as a tool to explore the historical permutations evidenced by a controversy, and particularly those possibilities that were either obscured or highlighted by a given decision. However, others selected a case as a way to challenge reigning historical interpretations. Had all contributors agreed on the definition of a landmark intellectual property case and the reasons for its designation, the volume would not be so compelling. 1 L Bently ‘Prince Albert v Strange’ in C Mitchell and P Mitchell (eds) Landmark Cases in Equity (Oxford, Hart, 2012); C Seville ‘Millar v Taylor (1769): Landmark and Beacon. Still’ in S Douglas, R Hickey and E Waring (eds) Landmark Cases in Property Law (London, Bloomsbury, 2015); E Hudson ‘Phillips v Mulcaire [2012]: A Property Paradox?’ in Douglas et al Landmark Cases in Property Law (ibid). 2 B Sherman and L Bently, The Making of Modern Intellectual Property Law (Cambridge, Cambridge University Press, 1999).

vi Preface Just as valuable, the historical significance of a case might not necessarily correspond to its importance as legal precedent. As some of the chapters in this volume explain, the elusive value of a dispute, or the historical ramifications of a case, tend to revolve around how the controversy arose and how its decision is remembered in the discipline. Many contributors consider cases that might not have been viewed as significant at the time, and only later have come to be viewed as salient. Others prefer to reflect on the status of a case as a landmark, and its concomitant effect in setting legal principles, in order to discuss the distinctive nature of intellectual property law or any of its branches. It is precisely in the interstices between law and history that contributors find the value of a particular case. The volume consists of 13 contributions exploring distinct cases and elucidating a wide range of crucial perspectives on intellectual property law. For instance, the volume begins by revisiting patent litigation to consider the impact of the Jacobean Statute of Monopolies (1624). The next chapter then looks at different controversies and recurrent themes to describe how the existence of an author’s right in literary property was a plausible basis for legal argument, even though no statute expressly mentioned authors’ rights before the Statute of Anne (1710). The collection also explores different moments of historical significance that deepen our understanding of the discipline: the first trade mark injunctions; the difficulties copyright law faced when protecting maps; and the everlasting confusion around the meaning of originality. Similarly, it looks at the different ways of interpreting patent claims in the late nineteenth and twentieth centuries; the impact of seminal cases on passing off and the law of confidentiality; and more generally, the construction of intellectual property law and its branches in their interaction with new technologies, distributing arrangements and marketing developments. This collection contains contributions from some of the foremost researchers and academics in intellectual property law. I want to thank them all for their patience, their suggestions and their insightful contributions. I am also grateful to Paul Mitchell for encouraging me to prepare a proposal for an edited volume and to Hart for their interest in the manuscript and the care they have taken in publishing it. In addition, John Maher, Janet MacMillan and Cara Levey have provided comments and suggestions; my gratitude goes to all of them. Jose Bellido University of Kent

Contents Preface�� v Contributors�� ix Table of Cases�� xi Table of Legislation�� xxv 1. Mansell v Bunger (1626)�� 1 Sean Bottomley 2. Stationers v Seymour (1677)�� 21 H Tomás Gómez-Arostegui 3. Sayer v Moore (1785)�� 59 Isabella Alexander 4. Day v Day, Day and Martin (1816)�� 87 Lionel Bently 5. Nobel’s Explosives Company, Limited, v Anderson (1894)�� 117 Seymour Mauskopf 6. Walter v Lane (1900)�� 149 Barbara Lauriat 7. Spalding v Gamage (1915)�� 181 Hazel Carty 8. King Features Syndicate, Inc and Betts v O & M Kleeman Ltd (1940)�� 205 Jose Bellido 9. Slee & Harris’s Application (1966)�� 231 Brad Sherman 10. Coco v AN Clark (Engineers) Ltd (1969)�� 253 Tanya Aplin 11. Biogen v Medeva (1996)�� 289 Luke McDonagh 12. R v Johnstone (2003)�� 317 Elena Cooper

viii Contents 13. Lego Juris A/S v OHIM (2010)�� 345 Alain Pottage Index�� 373

Contributors Isabella Alexander is Associate Professor in the Faculty of Law at the University of Technology, Sydney, Australia. Tanya Aplin is Professor of Intellectual Property Law at the Dickson Poon School of Law, King’s College London, UK. Jose Bellido is Senior Lecturer in Law at the University of Kent, Canterbury, UK. Lionel Bently is Herchel Smith Professor of Intellectual Property and Co-Director of the Centre for Intellectual Property and Information Law (CIPIL) at the Faculty of Law, University of Cambridge, UK. Sean Bottomley is Research Fellow at the Institute of Advanced Study in Toulouse, France. Hazel Carty is Reader in Law at the School of Law, University of Manchester, UK. Elena Cooper is Leverhulme/Leadership Fellow at the CREATe Copyright Centre, Glasgow University, UK. H Tomás Gómez-Arostegui is the Kay Kitagawa & Andy Johnson-Laird IP Faculty Scholar and Professor of Law at Lewis & Clark Law School in Portland, Oregon, USA. Barbara Lauriat is Senior Lecturer in Law at King’s College London and a Research Fellow of the Oxford Intellectual Property Research Centre. Seymour Mauskopf is Professor of History at Duke University, Durham, NC, USA. Luke McDonagh is Lecturer in the Law School Department at City, University of London, UK. Alain Pottage is Professor in the Law School Department at the London School of Economics, UK. Brad Sherman is Professor of Law and ARC Australian Laureate Fellow at the TC Beirne School of Law, the University of Queensland, Brisbane, Australia.

x

Table of Cases A A v B Plc [2002] EMLR 8�� 271 AB Consolidated Ltd v Europe Strength Food Co Pty Ltd [1978] 2 NZLR 515�� 282 ABK Ltd v Foxwell [2002] EWHC 9 (Ch)�� 268 A-G v Cape [1976] QB 752�� 266 A-G v Heinemann Publishers Australia Pty Ltd (1989) 75 ALR 353�� 278 A-G v Observer Ltd [1990] 1 AC 109�� 264, 266 A-G v Rosse (1624) STAC 8/29/9�� 13, 19 A-G v Wellington Newspapers Ltd (No 2) [1989] 2 FSR 691�� 282 AG Spalding & Bros v AW Gamage Ltd (1915) 32 RPC 273�� 181–204 AT Poeton v Horton [2000] ICR 1208�� 268 AVB v TDD [2014] EWHC 1442 (QB)�� 275 Abernethy v Hutchinson (1825) 1 Hall & Twells 28�� 158, 160–61, 165 Ajello v Worsley [1898] 1 Ch 274�� 189, 195 Alexander v Irving Trust Co 132 F Supp 364 (SDNY 1955)�� 85 American Cyanamid v Ethicon Ltd [1975] AC 396�� 256 Amoskeag Manufacturing Co v LS & R (1849) New York Leg Obs 301�� 94 Anderson v Information Commissioner [2008] UKIT EA/2007/0103 �� 275 Andrews v Television New Zealand Ltd [2009] 1 NZLR 220 �� 283 Anonymous (1406) YB Mich 8 Hen 4, pl 2 (KB)�� 44 Arklow Investments Ltd v Maclean [2000] 1 WLR 594�� 282 Armstrong Strategic Management and Marketing Pty Ltd v Expense Reduction Analysts Group Pty Ltd [2013] 295 ALR 348, [2012] NSWCA 430�� 279 Asahi Kasei Kogyo KK’s Application [1991] RPC 485�� 294, 296, 308 Ashmore v Douglas-Home [1987] FSR 553�� 265 Associated Newspapers v HRH Prince of Wales [2006] EWCA Civ 1776, [2008] Ch 57 �� 275 Atkins v Stationers (1666) Carter 89 (HC)�� 47 Atlantic Giant Powder Co v Dittmar Powder Manufacturing Co (Cct Ct SDNY, 17 September 1881)�� 126 Atlantic Giant Powder Co v Parker (1879) Fed Cas No 625, 16 Blatchf 281 (US)�� 126 Australian Broadcasting Corporation v Lenah Game Meats Pty Ltd (2001) 208 CLR 199�� 278 Aveley/Cybervox Ltd v Boman [1975] FSR 139�� 268 B B v H Bauer Publishing Ltd [2002] EMLR 8�� 271 Bach v Longman (1777) 2 Cowp 263�� 63

xii Table of Cases Badische Anilin und Soda Fabrik v Levenstein (1885) 3 RPC 73�� 129 Benno Jaffe und Darmstaedter Lanolin Fabrik v John Richardson & Co (Leicester) Ltd (1894) 11 RPC 93�� 135 Bevan v Columbia Broadcasting Systems Inc 329 F Supp 601 (SDNY 1971)�� 84 Biogen Inc v Medeva plc [1993] RPC 475, [1995] RPC 25 (CA), [1996] UKHL 18, [1997] RPC 1 (HL)�� 289–316 Birmingham Sound Reproducers Ltd v Collaro Ltd (1955) 73 RPC 52�� 145 Birmingham Vinegar Brewery Co v Powell [1897] AC 710�� 186 Blackwell v Harper (1740) 2 Atk 93, Barn C 210�� 62 Blanchard v Hill (1742) 2 Atk 484, 26 ER 692 (LC)�� 93, 95, 97, 101–02 Blofeld v Payne (1833) 4 B & A 410, 110 ER 509 (KB)�� 183, 188, 199 Bluck v Information Commissioner (2007) 98 BMLR 1, [2008] WTLR 1 �� 275 Bondax Carpets Limited and Others v Advance Carpet Tiles and Another [1993] FSR 162�� 302 Bowles v Sayer (1780) C12/16556/12, C33/455�� 64 Braddyl v Hartley (1698) C9/165/37�� 37 Brewster v Newcombe (1696/7) C5/148/61�� 37 Bristol City Council v Information Commissioner [2010] UKFTT EA/2010/0012�� 276 British Dynamite Co v Krebs (1899) 13 RPC 190�� 117 British Leyland Motor Corp. v Armstrong Patents Co [1986] AC 577�� 206 Brooker v Police [2007] 3 NZLR 91�� 283 Brown v A-G NZAR [2006] 552 (DC) �� 283 Browne v Associated Newspapers Ltd [2007] EWCA Civ 295, [2008] QB 103�� 275 Browning v Information Commissioner [2013] UKUT 236 (AAC)�� 275 Bullivant v Ellis [1987] ICR 464�� 263, 269 Burberrys v JC Cording & Co Ltd (1909) 26 RPC 693�� 196–97, 200–01 Burgess v Burgess [1853] 43 ER 90�� 196, 198 Burrell v Clifford [2016] EWHC 294 (Ch)�� 275 C C v Holland [2012] NZHC 2155 �� 283 CA Inquiry [1918] 35 RPC 101�� 192 CF Partners (UK) LLP v Barclays Bank plc [2014] EWHC 3049 (Ch)�� 270 Cadbury Schweppes Inc v FBI Foods Ltd [2000] FSR 491�� 281 Cadbury Schweppes v Pub Squash [1981] RPC 429�� 182, 203–04 Caird v Sime (1887) 12 App Cas 326�� 160–61, 165, 168, 172 Cala Homes Ltd v Alfred McAlpine Homes East Ltd [1995] FSR 818�� 177 Campbell v Mirror Group Newspapers Ltd [2004] UKHL 22, [2004] 2 AC 457�� 265, 270 Canham v Jones (1813) 2 Vesey & Beames 218, 35 ER 302 (VC)�� 100–02, 104 Carflow Products (UK) Ltd v Lindwood Securities (Birmingham) Ltd [1996] FSR 424�� 269 Cary v Longman & Rees (1801)1 East 358, 102 ER 138�� 59, 81

Table of Cases xiii Catnic Comonents Ltd v Hill & Smith Ltd (1982) 99 RPC 183�� 146 Chicester District Council v Information Commissioner [2011] UKFTT EA/2010/0153 �� 276 Chiron Corp v Organon Teknika Ltd. (No 3) [1994] FSR 202�� 295, 298, 314 Chiswell v Lee (1681) C10/209/24 �� 37 Church of Scientology v Kaufman [1973] RPC 635�� 267 Clagget’s Estate, Re (1882) 20 Ch D 637�� 91 Clarke v Adie (1877) LR 2 App Cas 315�� 135 Clothworkers of Ipswich [1615] Godbolt 254, 78 ER 149�� 6 Cocks v Shout (1814) Lancaster Gazette, 16 July 1814 (Ex)�� 93 Coco v AN Clark (Engineers) Ltd [1969] RPC 41�� 253–88 Collag Corp v Merck & Co Inc [2003] FSR 16 �� 268 Collins Co v Brown (1857) 3 K & J 423, 69 ER 1174 (VC)�� 185 Commonwealth v John Fairfax & Sons Ltd (1980) 147 CLR 39�� 277 Conor v Angiotech [2008] RPC 28, [2008] UKHL 49�� 315 Consorzio del Prosciutto di Parma v Marks & Spencer Plc [1991] RPC 351�� 182 Constable v Gamble (1601) 5 Co Rep 106a (QB) �� 44 Convatec Ltd v Smith & Nephew Healthcare Ltd [2011] EWHC 2039 (Pat), [2012] RPC 9�� 117, 147 Cox v Land & Water Journal Co (1869–70) LR 9 Eq 324�� 162, 168 Cranleigh Precision Engineering Ltd v Bryant [1966] RPC 81 (QB)�� 255–56, 284–85 Cray Valley Ltd v Deltech Europe Ltd [2003] EWHC 728 (Ch)�� 269 Creation Records Ltd v NGN Ltd [1997] EMLR 444�� 265, 269 Croft v Day (1838) 1 Curt 782, 163 ER 271�� 91, 102, 115 Cruttwell v Lye (1810) 17 Ves Jun 335, 34 ER 129�� 100, 183, 200 D DBERR v Information Commissioner [2008] UKIT EA/2007/0072 �� 275 Darcy v Allin (1599) Noy 173, 74 ER 1131 (1601) 11 Co Rep 84b, 77 ER 1260�� 2 Dastar Corp. v Twentieth Century Fox Film Corp., 539 U.S. 23 (2003)�� 101 Day and Martin v Binning/Billings (1831) The Times, 22 January 1831, CP Coop 489, 47 ER 611 (VC).�� 110 Day and Martin v Bowling (John & James) (1817) The Morning Chronicle, 3 November 1817 (LC)�� 88, 109 Day and Martin v Brown (1821) Annual Register (June) 99 (KB)�� 91, 112 Day and Martin v Cockburn (James), Rowland (Joshua), Brewer (John) (1821) The Times, 26 March 1821; C33/679 (LC)�� 109 Day and Martin v Day (James) (1815) C33/614 (VC)�� 105 Day and Martin v Day (Thomas), Day (John) & Martin (Peter) (1816) C33/624, The Morning Post, 17 August 1816, The Times, 19 August 1816, The Morning Chronicle, 17 August 1816, The Morning Chronicle, 21 August 1816 (LC)�� 87–116 Day and Martin v Hesketh (William) (1815) C33/614 (VC)�� 105 Day and Martin v Martin (Thomas) (1814) C33/614 (VC)�� 105

xiv Table of Cases Day and Martin v Paley (William), Price (Reece) & Gosnell (John) (1817) C33/633 (LC)�� 109 Day and Martin v Payne (Thomas) (1815) C33/614 (VC)�� 105 Day and Martin v Shout (Benjamin) (1819) C33/658 (LC)�� 109 Day and Martin v Slee & Statham (1813) The Morning Chronicle, 9 July 1813, C33/603�� 103 Day and Martin v Turner (Richard) (1815) C33/613�� 105 Deans Rag Book Company Limited v Pomerantz and Sons (1930) 47 RPC 485�� 217 Del Casale v Artedomus (Aust) Pty Ltd [2007] NSWCA 172�� 278 Deloitte & Touche LLP v Dickson [2005] EWHC 721 (Ch)�� 268 De Maudsley v Palumbo [1996] EMLR 460�� 268 Dental Manufacturing Co Ltd v C de Trey & Co [1912] 3 KB 76�� 200 Derry City Council v Information Commissioner [2006] UKIT EA/2006/0014�� 275 Desktop Marketing Systems Pty Ltd v Telstra Corpn Ltd [2002] FCAFC 112�� 84 Doe v Australian Broadcasting Corporation [2007] VCC 281 �� 279 Donaldson v Becket (1774) 4 Burr 2408, 7 Bro PC (1st edn) 88 (HL)�� 22, 24, 29, 33–34 Douglas v Hello! Ltd [2003] EWHC 786 (Ch), [2003] 3 All ER 996�� 271, 273 Douglas v Hello! Ltd sub nom OBG v Allan [2007] UKHL 21, [2008] 1 AC 1�� 268, 272–74 Douglas v Hello! Ltd (No 3) [2005] EWCA Civ 595, [2006] QB 125 �� 272, 274 Draper v Trist [1939] 3 All ER 513�� 202 Du Boulay v Du Boulay (1869) LR 2 PC 430�� 184 Dunford & Elliot Ltd v Johnson & Firth Brown Ltd [1978] FSR 143�� 263, 268 Dyson Appliances Ltd v Hoover Ltd [2001] EWCA Civ 1440, [2002] ENPR 5, [2002] RPC 22, (2001) 24 (12) IPD 24077�� 117 E East India Co v Evans (1684/5) 1 Vern 305 (Ch)�� 48 Echevarria v Warner Bros Pictures 12 F Supp 632 (SD Cal 1935)�� 85 Edelsten v Edelsten (1863) 1 De G J & S 185, 46 ER 72 (LC)�� 182, 184, 198, 200 Edge & Sons Ltd v Gallon & Son (1900) 17 RPC 557�� 187–88 Edison Bell Phonograph Corpn v Smith (1894) 11 RPC 389�� 137 Eichel v Marcin 241 F 404 (SDNY, 1913)�� 85 Eircom Employee Share Ownership Trust and the Department of Finance [2003] IEIC 010367�� 277 Elanco Products v Mandops (Agrochemical Specialists) [1980] RPC 213�� 92 Erven Warnink BV v J Townend & Sons (Advocaat) [1979] AC 731 �� 182 Eugen Seitz AG v KHS Corpoplast GmbH [2015] RPC 11�� 268 Eurasian Natural Resources Corp Ltd v Judge [2014] EWHC 3556 (QB)�� 270 Euro-Excellence Inc v Kraft Canada Inc 2007 SCC 37, [2007] 3 SCR 20�� 92

Table of Cases xv Eva-Maria Painer v Standard VerlagsGmbH (Case C-145/10) [2012] ECDR 6�� 149, 175 Express Newspapers v News (UK) [1989] 1 WLR 1320�� 174, 176 Exxon Corpn v Exxon Insurance Consultants Ltd [1982] 1 Ch 119�� 174 EXXON/Fuel Oils (Case T-409/01) [1994] EPOR 149�� 299, 311 F Faccenda Chicken Ltd v Fowler [1987] Ch 117 �� 263 Faesenkleot v Jenkin [2014] NZHC 1637�� 283 Fage UK Ltd & Another v Chobani UK Ltd & Another [2014] EWCA Civ 5�� 299 Farina v Silverlock (1855) 1 K & J 509, 69 ER 560 (VC)�� 101 Federal Commissioner of Taxation v Donoghue [2015] FCAFC 183�� 278 Fish v Kelly (1864) 17 Common Bench Reports 194, 144 ER 78 �� 102, 115 Football Dataco v Yahoo (Case C-604/10) [2012] Bus LR 1753�� 149, 175 Force India Formula One Team Ltd v 1 Malaysia Racing Team Sdn Bhd [2012] RPC 29�� 268–69 Foreman v Chambers (2007) 284 DLR (4th) 210�� 280 Forensic Telecommunications Services Ltd v Chief Constable of West Yorkshire [2012] FSR 15�� 268–69 Francis Day & Hunter Ltd v Twentieth Century Fox Ltd [1940] AC 112 �� 202 Francome v Mirror Group Newspapers Ltd [1984] 1 WLR 892�� 270 Fraser v Thames TV Ltd [1984] QB 44�� 265 Futuretronics.com.au Pty Ltd v Graphix Labels Pty Ltd [2009] FCAFC 2�� 278 G G v Attorney-General [1994] 1 NZLR 714�� 282 Gammon v Attorney General of Hong Kong [1985] AC 1�� 327 GENENTECH I/Polypeptide Expression (Case T-292/85) [1989] EPOR 1�� 311 Genentech Inc’s Patent [1989] RPC 147�� 290, 298, 306, 308, 315 General Electric Co Ltd (USA) v The General Electric Co Ltd [1973] RPC 297�� 200 Generics (UK) Ltd v H Lundbeck A/S [2009] UKHL 12, [2009] 2 All ER 955�� 290, 311, 313, 315 Giller v Procopets [2008] VSCA 236 �� 279 Google v Vidal Hall [2015] EWCA Civ 311, [2015] 3 WLR 409�� 273–75 Gottschalk v Benson (1972) 409 U.S. 63�� 237–38, 240, 246 Gout v Aleploglplu (also sp. Aleplogpln, Aleploghler and Aleploghlu), (1833), The Times, 16 April, 1833, 5 Leg Obs 495, 1 Chitty’s General Prac 721 (VC)�� 95, 110 Gout v Samuel (1832) The Times, 16 July 1832 (VC)�� 110 Grant v Winnipeg Regional Health Authority 2015 MBCA 44�� 281 Gribble v Forbes (1800) Oracle and Daily Advertiser, 26 June 1800; Morning Post and Gazeteer, 3 July 1800 (CP)�� 111 Grosse v Purvis [2003] QDC 151�� 279

xvi Table of Cases H HEFC v Information Commissioner [2010] UKIT EA/2009/0036�� 275 Haig & Co v Forth Blending Co [1954] SC 35�� 202 Hall v Barrows (1863) 4 De G J & S 150, 46 ER 873 (LC)�� 184 Harrods Ltd v R Harrod Ltd [1924] 41 RPC 74�� 201 Health Service Executive v Information Commissioner [2008] IEHC 298, [2009] 1 IR 700�� 277 Heather v Moore (Express and Evening Chronicle, 1–3 March 1798)�� 60, 68, 79–81, 83, 85 Henry v Price & Gosnell (1831) The Times, 30 March 1831, The Standard, 30 March 1831(VC)�� 110 Henry Ford & Sons Ltd, Nissan Ireland and Motor Distributors Ltd and The Office of Public Works [1999] IEIC 98049�� 277 Henry Holt & Co v Liggette Myers Tobacco Co 23 F Supp 302 (ED Pa 1938) �� 84 Herald and Weekly Times Pty Ltd v Victoria [2006] VSCA 146�� 278 Herringman v Clerke (1681/2) C8/301/33�� 37 Hills v Wright (Ch & KB 1682/3–1683/4)�� 48 Hogg v Kirby (1803) 8 Ves Jun 215, 217, 32 ER 336 (LC)�� 93, 95, 98–101, 107, 111, 200 Hollinsworth v BCTV 1998 CanLII 6527�� 281 Home Office v Harman [1983] AC 280�� 263, 268 Horne v Ivy (1669) 1 Ventr 47 (KB), (1669/70) 1 Sid 441 (KB)�� 48 Hosking v Runting [2005] 1 NZLR 1�� 282–83 Human Genome Sciences Inc v Eli Lilly & Co. [2011] UKSC 51, [2012] RPC 6�� 313, 315 Hunt v A [2007] NZCA 332; [2008] 1 NZLR 368�� 283 Hutton v Forster (1833) The Times, 25 December 1833 (VC)�� 110 I CRI v Muller & Co’s Margarine Ltd [1901] AC 217�� 197–200 Ice TV Pty Ltd v Nine Network Australia Pty Ltd [2009] HCA 14�� 85 Illustrated Newspapers Ltd v Publicity Services (London) [1938] Ch 414�� 202 Imperial Chemical Industries v Montedison (UK) Ltd [1995] RPC 449�� 117 Improver Corp. v Remington Consumer Products Ltd [1990] FSR 181�� 302 Indata Equipment Supplies Ltd (t/a Autofleet) v ACL Ltd [1996] CLC 957 (QB), [1998] FSR 248 (CA)�� 265, 268 Independent Television Publications Ltd v Time Out Ltd & Elliott; British Broadcasting Corpn v Time Out Ltd & Elliott [1984] FSR 64�� 84 Infopaq International v Danske Dagblades Forening (Case C-05/08) [2009] ECR I-6569�� 149, 175 Inline Logistics Ltd v UCI Logistics Ltd [2001] EWCA Civ 1613, [2002] RPC 32, �� 268 Interlego AG v Tyco Industries Inc [1989] AC 217, [1988] 3 All ER 949�� 355 International News Service v Associated Press 248 US 215 (1918)�� 208 Iron-Ox Remedy Co Ltd v Co-operative Wholesale Society Ltd [1907] 24 RPC 425�� 198–99

Table of Cases xvii J J Bollinger and Others v Costa Brava Wine Co Ltd [1960] Ch 262 �� 203 JG v Samford (CP, 1584)�� 94 JN Dairies Ltd v Johal Dairies Ltd [2009] EWHC 1331 (Ch)�� 268–69 Jameson v Clarke [1902] 19 RPC 255�� 186 Jamieson & Co v Jamieson [1898] RPC 169�� 188 Jeffreys v Boosey (1854) 4 HLC 962, 10 ER 681 (HL)�� 157 John Walker & Sons Ltd v Henry Ost & Co [1970] 1 WLR 917 �� 203 Johns v Australian Securities Commission [1993] HCA 56, (1993) 178 CLR 408�� 278 Jones v Information Commissioner [2012] 2 Info LR 129, UKIT EA/2011/0156�� 276 Jones v Turner (1825) The Times, 23 August 1825�� 90 K Karum Group LLC v Paykel Financial Services [2014] NZLR 412�� 283 King Features Syndicate, Inc v Charles L Bouvé, Register of Copyrights DC, D of C (12-18-1940) 48 USPQ 237 �� 210 King Features Syndicate Inc v Rudolph Fleischer et al, 299 F. 533 (2d Cir. 1924)�� 215, 218, 222, 229 King Features Syndicate Inc v O & M Kleeman Ltd [1940] Ch 806, [1940] 1 Ch 523 (CA), [1940] 1 Ch 806 (HL)�� 205–230 King’s Printers v University of Oxford (1679/80)�� 38 Kirin-Amgen v TKT [2004] UKHL 46, [2005] 1 All ER 667�� 315 Kirkbi AG v Ritvik Holdings Inc [2005] 3 SCR 302�� 345–46, 355 Kitechnology BV v Unicor GmbH Plastmaschinen [1995] FSR 795�� 272, 274–75 Knott v Morgan (1836) 2 Keen 213, 48 ER 610 (Ch, MR)�� 114 Koninklijke Philips Electronics NV v Remington Consumer Products Ltd (Case C-299/99) [2002] ECR I-5475�� 346, 354 L Lac Minerals Ltd v International Corona Resources Ltd [1990] FSR 441�� 280–81 Lancashire Fires Ltd v SA Lyons & Co Ltd [1996] FSR 629�� 265, 268 Law Society of Upper Canada v CCH Canadian Ltd [2004] 5 LRC 428 (Fed CA)�� 84 Lazenby (Elizabeth) v Hallett and Hardie (1819) (KB)�� 112 Lazenby (Henry) v Wingrave (1829) The Times, 29 July 1829, Morning Chronicle, 29 July 1829 Morning Post, 29 July 1829 (KB)�� 112 Leather Cloth Co v American Leather Cloth Co Ltd (1863) 4 De G J & S 137, 46 ER 868 (Ch), [1865] 11 HL Cas 523, 11 ER 1435 (HL)�� 181, 184, 187 Lee v Haley (1869) 5 Ch App 155�� 183 Lego Juris A/S v OHIM (Case C-48/09P) [2010] ECR I-8403�� 345–71 Lego Juris A/S v OHIM (Case T-720/06) [2008] ECR II-3117�� 356 Lever v Goodwin (1887) 4 RPC 492�� 186 Lever v Goodwin (1887) 36 Ch D 1�� 187

xviii Table of Cases Levy v Walker (1878) 10 Ch D 436�� 183 Lion Laboratories Ltd v Evans [1985] QB 526�� 263 Longbottom v Shaw (1889) 6 RPC 510�� 138 Longman v Winchester (1809) 16 Ves Jun 269, 33 ER 897 (LC)�� 98 L’Oreal v Bellure (Case C-487/07) [2009] ECR I-5185�� 318 Louis Vuitton v Google France (Case C-236/08-238/08) [2010] ECR I-2417�� 318 Lucasfilm v Ainsworth [2011] UKSC 39�� 206 Lundbeck A/S v Generics (UK) Ltd [2008] EWCA Civ 311, [2008] RPC 19 aff’d [2009] UKHL 12, [2009] 2 All ER 955�� 290, 311–12 Lyle & Scott Ltd v Wolsey Ltd (1954) 71 RPC 395�� 145 M M’Andrew v Bassett (1864) 4 De G J & S 380, 46 ER 965 (LC) �� 200 McCann & Ors v The Trustees of the Victory Christian Fellowship [2015] IECA 117�� 277 Macaulay v Shackell (1827) 1 Bli NS 96, 4 ER 809 (HL)�� 184 McGill v Sports and Entertainment Media Group [2014] EWHC 3000 (QB) �� 268 McKennitt v Ash [2006] EWCA Civ 1714, [2008] QB 73 �� 275 Macklin v Richardson (1770) 1 Amb 694 (Ch)�� 158, 161 Macri v Miskiewicz [1993] CanLII 2385�� 280 Mafart v Television New Zealand Ltd [2006] 3 NZLR 534�� 283 Magnolia Metal Company v Tandem Smelting Syndicate Ltd [1900] 17 RPC 477�� 187–88 Mahon v Post Publications [2007] IESC 15�� 277 Malone v Commissioner of Police of the Metropolis (No.2) [1979] Ch 344 (Ch)�� 270 Mansell v Bunger (1626) PC 2/33�� 1–20 Manton v Marshall (1825) The Times, 21 January 1825, Morning Chronicle, 21 January 1825 (VC)�� 112 Manton v Mills (1828) The Times, 18 January 1828, Morning Post, 18 January 1828, The Morning Chronicle, 18 January 1828 (KB)�� 112 Marshall v Prescott [2015] NSWCA 110�� 278 Mars UK Ltd v Teknowledge Ltd [2000] FSR 138�� 268 Masson Seeley v Embossotype [1924] 41 RPC 160�� 201 Matthewson v Stockdale (1806) 12 Ves Jun 270, 33 ER 103 (LC)�� 84, 98 Maxim Nordenfelt Guns, The v Anderson (1897) 14 RPC 371�� 117, 134 Meredith v Wellington (1701) C7/234/4�� 37 Merrell Dow Pharmaceuticals Inc v H N Norton & Co Ltd [1996] RPC 76�� 294, 303, 310 Midas Hygiene Industries (P) Ltd v Sudhir Bhatia (2004) 3 SCC 90: 2004 (28) PTC 121 (India SC) �� 206 Millar v Taylor (1769) 4 Burr 2303 (KB)��v, 22, 29–34 Millington v Fox (1838) 3 Myl & Cr 388, 40 ER 956 (LC)�� 114, 183–84, 201, 340 Moore v Thomson (1890) 7 RPC 325�� 135

Table of Cases xix Moorgate Tobacco Co Ltd v Philip Morris Ltd (No 2) (1984) 156 CLR 414�� 279 Morison v Salmon (1841) 2 Manning & Granger 385, 133 ER 795 (CP)�� 111 Mosley v News Group Newspapers Ltd [2008] EWHC 1777 (QB), [2008] EMLR 20�� 275 Motley v Downman (1837) 3 My & Cr 1, 40 ER 824, (1837) 6 LJ Ch 308 (LC)�� 114 Multiform Displays v Whitmarley Displays (1956) 74 RPC 143�� 145 Murray v Yorkshire Fund Managers Ltd [1998] 1 WLR 951�� 265, 268 N National Research Development Corporation v Commissioner of Patents (1961) RPC 134�� 242 Native Guano Co v Sewage Manure Co [1891] 8 RPC 125�� 186 Newspaper Licensing Agency Ltd v Meltwater Holdings BV [2011] EWCA Civ 890, [2012] Bus LR 53BV �� 176 Nicols v Pitman (1884) 26 Ch D 374�� 160, 165, 167 Nobel’s Explosives Co Ltd v Anderson [1894] 11 RPC 115 (Ch), 11 RPC 519 (CA), [1895] 12 RPC 164 (HL)�� 117–147 Nobel’s Explosives Co v Jones, Scott & Co (1881) 17 Ch D 721�� 126 Norman Kark Publications Ltd v Odhams Press Ltd [1976] FSR 256�� 203 North Western and North Wales Sea Fisheries Committee v Information Commissioner [2008] UKIT EA/2007/0133�� 275 Norton v Atkinson (1774) (CP)�� 87 O O’Brien v Komesaroff (1982) 150 CLR 310�� 278 Ocular Sciences Ltd v Aspect Vision Care Ltd (No 2) [1997] RPC 289�� 268–69 O’Hara v Information Commissioner [2011] UKFTT EA/2010/0186�� 275 Olin Mathieson Chemical Corpn v Borex Laboratories Ltd (1970) 87 RPC 157�� 145 Ontex Resources Ltd v Metalore Resources Ltd (1993) CanLII 8673 (ON CA)�� 280 Orr Ewing & Co v Johnston & Co (1880) 13 Ch D 434�� 188 P Partridge v Menck (1845) 5 NY Ch Ann 572�� 201 Pawlett v Lee (1681) C10/202/96�� 37 Pawlett v Minshall (1701) C7/272/53�� 37 Pawlett v Smith (1685) C10/218/34�� 37 Payton & Co Ltd v Snelling, Lampard & Co Ltd [1901] AC 308�� 188 Perry v Truefitt (1842) 5 Beavan 66, 49 ER 749 (Ch, MR)�� 114–15, 181, 183, 185, 187, 198, 200 Personal Management Solutions Ltd v Blakes Bros Ltd [2014] EWHC 3495 (QB), �� 268 Platt v Walker (1867) 17 LT 157�� 162

xx Table of Cases Portakabin v Primakabin (Case C-558/08) [2010] ECR I-6963�� 318 Potter v Commissioner of Inland Revenue (1854) 10 Ex 147, 156 ER 392�� 197 Potters Ballotini Ltd v Weston Baker [1977] RPC 202�� 263, 269 Powell v Birmingham Vinegar Brewery Co [1897] AC 710�� 186 Primary Group (UK) Ltd v Royal Bank of Scotland Plc [2014] RPC 26�� 268–69 Prince Albert v Strange (1849) 1 Macn & G 25, 64 ER 293 (Ch)��v, 254 R R v Adam Ahmed Bhad (1999) Cr App R (s) 139�� 327, 329 R v Carter [1993] FSR 303��326-27, 329 R v Closs (1858) Dearsly & Bell 460, 169 ER 1082�� 333, 336 R v Department of Health Ex p. Source Informatics Ltd (No 1) [2001] QB 424 �� 265, 270 R v Dundas (1853) Cox Crim Cas 30�� 333, 336 R v Gomez [1993] AC 442�� 331 R v Hinks [2001] 2 AC 241�� 331–32 R v Johnstone [2003] UKHL 28, [2003] 1 WLR 1736, [2002] EWCA Crim 194, [2003] FSR 56�� 317–44 R v Keane [2001] FSR 7 �� 327–28 R v Lambert [2001] UKHL 37�� 327, 330 R v Lawrence [1972] AC 626�� 331 R v Lester (1975) 73 Cr App R 144�� 329 R v Rachel McCrudden 2005 EWCA 466�� 328, 331 R v S [2002] EWCA Crim 2558, 1 Cr App R 35�� 319, 328–30, 332 R v Sharman (1854) Dearsly 285, 169 ER 729�� 335 R v Smith (John) (1858) Dearsly & Bell 566, 169 ER 1122�� 335 R v Suter & Coulson (1867) 10 Cox Crim Cas 577�� 333, 336 R v Toshack (1849) 1 Den 492, 169 ER 341�� 335 R & A Bailey & Co Ltd v Boccaccio Pty Ltd (1986) 4 NSWLR 701�� 92 RB v Information Commissioner [2015] UKUT 614 (AAC)�� 275 RJ Reuter Co. Ltd v Mulhens [1954] Ch 50�� 202–03 Raft Ltd v Freestyle of Newhaven Ltd, Christopher Eric Horsnell, Highly Sprung Ltd [2016] EWHC 1711 (IPEC)�� 175 Ransome v Bentall (1834) 3 Law Journal 161 (Ch)�� 110 Reddaway (Frank) & Co Ltd v George Banham & Co Ltd [1896] AC 199�� 116, 185–88, 196–99 Richmond Pharmacology Ltd v Chester Overseas Ltd [2014] EWHC 2692 (Ch)�� 270 Robinson v Sands & McDougall [1917] 23 CLR 49 (HCA)�� 173, 176 Rogers v Hills (1708) C5/342/64�� 37 Rookes v Stationers (PC 1673)�� 40 Roper v Streater (KB 1672–72)�� 44–45 Rosemont Enterprises Inc v Random House & John Keats (1966) 466 F 2d 303 (2d Cir)�� 84 Rotunda Hospital v Information Commissioner [2009] IEHC 315�� 277

Table of Cases xxi S SI Green (UK) v Information Commissioner [2013] UKUT 473 (AAC)�� 276 Sabre Inc v International Air Transport Assn (2011) 344 DLR (4th) 657�� 280 Saltman Engineering Co Ltd v Campbell Engineering Co Ltd (1948) 65 RPC 203 �� 253 Samuelson v Producers Distributing Co Ltd 1932 1 Ch 201�� 202 Sawkins v Hyperion [2005] EWCA Civ 565�� 149, 173–75, 178 Sayer v Bennet (1784) 1 Cox 107�� 66 Sayer v Moore (1785) 1 East 361n�� 59–86 Schering Chemicals Ltd v Falkman Ltd [1982] QB 1�� 263, 269 Seager v Copydex [1967] RPC 349�� 254, 256, 284–85 Searle & Co Ltd v Celltech Ltd [1982] FSR 92�� 263, 268 Secretary of State for the Home Department v British Union for the Abolition of Vivisection [2008] EWCA Civ 870, [2009] 1 WLR 636�� 276 Sectrack NV v Satamatics Ltd [2007] EWHC 3003 (Comm)�� 268 Seeds Processing International v Scales, Gorne v Scales [2002] All ER (D) 214�� 269 Segar v King Features Syndicate (1941) 262 App Div 221 (NY App Div)�� 208, 213, 215, 218 Seyedi v Nexen (2016) ABCA 24�� 280 Seymour v Stationers (PC 1671 & 1676)�� 38–40, 53 Shari-Lea Hitchcock v TCN Channel Nine Pty Ltd (No 2) [2000] NSWCA 82�� 279 Sheedy v The Information Commissioner [2005] IESC 35�� 277 Shelley Films Ltd v Rex Features Ltd [1994] EMLR 134�� 265, 269 Sherwin v Sayer (1783) The Derby Mercury, 31 July 1783�� 64 Silhouette International v Hartlauer (Case C-355/96) [1998] ECR I-4799�� 324 Sim v Heinz [1959] RPC 75�� 202–03 Singer Manufacturing Co v Loog (1882–83) LR 8 App Cas 15�� 183, 185, 187 Singer Machine Manufacturers v Wilson (1877–8) LR 3 App Cas 376 �� 181, 183 Singleton v Bolton (1783) 3 Doug KB 293, 99 ER 661 (KB)�� 87 Skids Programme Management v McNeill [2013] 1 NZLR 1�� 283 Slavutych v Baker [1973] 41 DLR (3d) 71�� 280 Slee & Harris’s Application (1966) RPC 194�� 230–51 Smith Kline & French Laboratories (Australia) v Secretary to the Department of Community Services and Health [1990] FCA 151, [1990] FSR 617�� 278–79 Societa Esplosivi Industriali SpA v Ordnance Technologies (UK) Ltd [2004] EWHC 48 �� 268 Sony Corpn of America v Universal City Studios (1984) 464 US 417�� 84 Southern v How (1618) Cro Jac 468, 79 ER 400; Poph 143, 79 ER 1243; 2 Rolle Rep 5, 81 ER 621�� 94, 182 Springhead Spinning Co v Riley [1868] LR Eq 551 �� 184

xxii Table of Cases Stanelco Fibre Optics Ltd v Bioprogress Technology Ltd [2004] EWHC 2263 (Pat), �� 268 Stanley v Columbia Broadcasting System 35 Cal 2d 656 (SC Cal 1950)�� 85 Starbucks (HK) Ltd v British Sky Broadcasting Group Plc [2015] UKSC 31; [2015] 1 WLR 2628�� 204 Star Industrial v Yap Kwee Kor [1976] FSR 256�� 200, 203 Stationers v Bradford (Ch 1700)�� 51 Stationers v Gadbury (CP 1675)�� 40 Stationers v Gayne (CP 1681)�� 41 Stationers v Larkin (CP 1675)�� 40 Stationers v Marlowe (CP 1680)�� 41 Stationers v Marshall (KB 1678/9)�� 41 Stationers v Parker (1685) Skinner 233 (KB)�� 41, 48 Stationers v Partridge (Ch & QB 1709–12)�� 48, 51, 54 Stationers v Kekewicke (CP 1675)�� 40 Stationers v Seymour (1675–77) 1 Mod Rep 256, 3 Keble 792 (CP)�� 21–58 Stationers v Wright (Ch & KB 1682/3–1683/4)�� 48 Steel v Moore (Sunday Gazette, 8 March 1789)�� 60, 68, 81, 85 Stephens v Avery [1988] Ch 449�� 270 Streater v Roper (HL 1675) �� 44–45, 48 Streetscape Projects (Australia) Pty Ltd v City of Sydney [2013] NSWCA 2�� 278–79 Strix Ltd v Otter Controls Ltd (No.1) [1995] RPC 607�� 268 Sweet v Parsley [1970] AC 132�� 327 Swinton v Claphamson (1765) Public Ledger, 12 July 1765, London Evening Post, 13–15 July, 1765, Public Advertiser, 13 July 1765 (KB)�� 87 Sykes v Sykes (1824) 3 B & C 541, 107 ER 834, The Times, 10 August 1824�� 112 T Tata Consultancy Services Ltd v Sengar [2014] EWHC 2304 (QB), �� 268 Tchenguiz v Imerman [2010] EWCA Civ 908, [2011] 2 WLR 592�� 273 Teacher v Levy [1906] 23 RPC 117�� 186, 199 Television New Zealand v Rogers [2008] 2 NZLR 277�� 283 Terrapin Ltd v Builders’ Supply Co (Hayes) Ltd [1960] RPC 128�� 254, 256, 263, 284–85 Terrien Bros Construction Ltd v Delaurier 2007 BCCA 623�� 280 Tonson v Collins (1759–61) 1 Bl R 301, 1 Bl R 321 (KB)�� 29–31 Tonson v Hills (1706) C8/623/33�� 37 Tonson v Walker (1752) 3 Swanst 672 (Ch)�� 30, 49 Torbay Council v Satnam Singh, 2000 FSR 158�� 328 Trade Auxiliary Co v Middlesbrough & District Tradesmen’s Protection Association (1889) 40 Ch Div 25�� 163 Tucker v Kaye (1891) 8 RPC 58�� 131 Twentieth Century Music Corpn v Aiken (1975) 422 US 151�� 84 Tyco Industries v Lego Systems Inc (1987) 5 USPQ 2D (BNA) 1023�� 353, 356

Table of Cases xxiii U Ungar v Sugg (1892) 9 RPC 113�� 136 Union Carbide Corp v Naturin Ltd [1987] FSR 538�� 263, 268 United Telephone Co v Tasker (1889) 6 RPC 38�� 138 University of Cambridge v Stationers (PC 1623)�� 39 University of London Tutorial Press v University Tutorial Press [1916] 2 Ch 601�� 173 University of Western Australia v Gray [2009] FCAFC 116�� 279 V Venables v NGN Ltd [2002] 1 FCR 333�� 271 Vercoe v Rutland Fund Management Ltd [2010] EWHC 424 (Ch)�� 268, 270 Vernon & Co (Pulp Products) Ltd v Universal Pulp Containers Ltd [1980] FSR 179�� 269 Vestergaard Fransen S/A (now MVF3 ApS) v Bestnet Europe Ltd [2013] UKSC 31, [2013] RPC 33�� 268–69 Viagogo Ltd v Myles [2012] EWHC 433 (Ch)�� 268 Vine Products Ltd v Mackenzie & Co Ltd (No 3) [1967] FSR 402�� 203–04 W Wade v BSkyB Ltd [2014] EWHC 634�� 265 Walt Disney Productions v H John Edwards Publishing Co Pty Ltd (1954) 71 WN (NSW) �� 206 Walter v Howe (1881) 17 Ch Div 708�� 163 Walter v Lane [1900] AC 539 �� 149–180 Walter v. Steinkopff [1892] 3 Ch 489 �� 163, 165–66, 172 Warren v Lamert (1827) Morning Chronicle, 14 November 1827�� 90, 110 Warren v Wood & Pilcher (1827) The Standard, 20 November 1827�� 110 Warwickshire CC v Matalia [2015] EWHC B4 (Ch)�� 266 Waterman v Ayres [1888] 39 Ch D 29�� 187 Wellington v Mortier (1708) C5/276/36�� 37 West Australian Newspapers Ltd v Bond [2009] WASCA 127�� 279 Whelan Associates Inc v Jaslow Dental Laboratory 797 F 2s 1222 (3d Cir 1986)�� 84–85 Wilson (John) v Heeson (Joseph) (1833) The Sheffield Independent, 15 June 1833 (VC)�� 111 Wilson (John) v Wilson (George) & Southern (Francis) (1833) The Sheffield Independent, 8 June 1833 (VC)�� 111 Windsurfing International Inc v Tabur Marine (Great Britain) Ltd [1985] RPC 59�� 297, 308 Wotherspoon v Currie (1872) LR 5 HL 518�� 185, 188, 200 X X v A-G [1997] 2 NZLR 623�� 282 X Health Authority v Y [1988] RPC 379�� 270

xxiv Table of Cases X (Mr) and the Department of Transport, Tourism and Sport [2014] IEIC 090077�� 277 Y Yates Circuit Foil Company v Electrofoils Ltd [1976] FSR 345�� 269 Yovatt v Winyard (1820) 1 Jac & W 394, 37 ER 425 (LC)�� 102 Z Zacharides v Information Commissioner [2011] UKFTT EA/2010/0162�� 275

Table of Legislation AUSTRALIA Copyright Act 1968 s 10, 44C�� 92 EU LEGISLATION Directive 89/104/EEC to approximate the laws of the Member States relating to trade marks �� 323, 324, 326 Directive 98/44/EC on the Legal Protection of biotechnological inventions�� 290 Directive 2001/29/EC on the harmonisation of certain aspects of copyright and related rights in the information society art 2�� 175 Regulation (EC) 207/2009 on the Community trade mark art 7�� 353, 358–59 art 7(1)�� 354 art 7(1)(e)(ii)�� 353, 356 Directive 2016/943/EC on the protection of undisclosed know-how and business information (trade secrets) against their unlawful acquisition, use and disclosure art 4�� 284 INTERNATIONAL CONVENTIONS AND TREATIES Berne Convention for the Protection of Literary and Artistic Works (Berne, 9 September 1886); revised at Paris (24 July 1896)�� 165 European Convention for the Protection of Human Rights and Fundamental Freedoms (Rome, 4 November 1950)�� 270, 271 art 6(2)�� 319, 328 art 8, 10�� 270, 272, 274 Convention on the Grant of European Patents (Munich, 5 October 1973)�� 233, 247 art 69�� 146 IRELAND Freedom of Information Act 1997 s 26�� 277 s 26(1)(a)�� 277

xxvi Table of Legislation UNITED KINGDOM Act for Regulating the Privy Council 1641�� 38 Act for the Encouragement of Learning 1710 see Statute of Anne 1710 Act for the Uniformity 1662�� 42 Act for Uniformity 1549�� 42 Administration of Justice Act 1813�� 103 Animals (Scientific Procedures) Act 1986 s 24�� 276 Copyright Act 1842�� 174 s 2, 18, 19�� 162, 163 Copyright Act 1911�� 150, 180, 212, 217 s 22�� 205, 224, 225, 227 s 22(1)�� 221, 223–224 Copyright Act 1956�� 228 s 10�� 227 Copyright Designs and Patents Act 1988�� 174, 266 s 51�� 206–07 s 107�� 318, 326 s 107(4)(b)�� 318–19 s 107(4A)(b)�� 319 s 197�� 318 s 198(4)(b)�� 319 s 198(5)(b)�� 318 Copyright etc and Trade Marks (Offences and Enforcement) Act 2002 s 1�� 319 Designs Registration Act 1839�� 340 Engraving Copyright Act 1735�� 62 s 1�� 63 Engraving Copyright Act 1767�� 62 s 1�� 63 s 7�� 63 Engravings Act 1777�� 63, 67 Environmental Information Regulations 2004, SI 2004/3391 reg 12(5)(e)�� 276 Explosives Act 1875�� 123 Forgery Act 1861�� 335, 337 Freedom of Information Act 2000�� 276 s 41�� 265, 275 Hogarth’s Act see Engraving Copyright Act 1735�� 62–63 Human Rights Act 1998�� 265, 271, 282 Intellectual Property Act 2014 s 13�� 319 Lectures Copyright Act 1835�� 158, 165, 172 s 5�� 159 Licensing of the Printing Act 1662�� 23, 27, 40–41, 44–45, 48, 50 s 3, 6, 15, 16�� 27, 44, 46 s 6�� 27, 44, 46

Table of Legislation xxvii s 15�� 27 s 16�� 27 s 22�� 44 Merchandise Marks Act 1862�� 320–21, 332–40, 343 s 1�� 338 s 2�� 334 Merchandise Marks Act 1887�� 342 Misuse of Drugs Act 1971�� 330 Patents Act 1883�� 124, 130 s 5(5)�� 117, 143 s 27�� 142 s 44�� 125 Patents Act 1949�� 242, 244, 305, 312 s 101�� 231–32 Patents Act 1977�� 145, 246, 247, 251, 305, 312 s 1(1)�� 296, 306 s 1(1)(b)�� 295 s 3�� 295 s 5(2)(a)�� 295–96 s 72(1)(c)�� 296, 305 s 125�� 146 Patent Law Amendment Act 1852�� 19 Patents and Designs Act 1907�� 142, 221–22, 224, 227 Registered Designs Act 1949 s 35ZA�� 319 Senior Courts Act 1981 s 60�� 295 Statute of Anne 1710�� vi, 22–23, 24–25, 27–28, 30–31, 34, 62, 67, 85, 92 s 1, 9, 11�� 28 Statute of Monopolies 1624��vi, 1–5, 7, 13–15, 38, 46 s 6�� 231, 244–45 Supreme Court of Judicature Act 1873�� 185 Theft Act 1968�� 329 s 1�� 320, 331 Trade Marks Act 1994�� 318 s 9, 10�� 322–23 s 11�� 323 s 11(2)(b)�� 323 s 92�� 317, 322–23, 326–27, 343 s 92(1)�� 323 s 92(1)(b), (c)�� 321–22 s 92(5)�� 319, 322–23, 326 s 92(6)�� 318, 323 Trade Marks Registration Act 1875�� 101, 184–85

xxviii

1 Mansell v Bunger (1626) SEAN BOTTOMLEY

I. INTRODUCTION

T

HE FIRST USE of the word ‘monopoly’ recorded by the Oxford English Dictionary is from Sir Thomas More’s 1534 Treatise on the Passion. Considering that he used the term in connection with Judas Iscariot, More clearly meant to use it in an emotive and pejorative sense: He knoweth wel also that of all the disciples, there would none bee so false a traitor to betray his master but him selfe alone. And therefore is thys ware Iudas all in thyne owne hande. Thou haste a monopoly thereof. And whyle it is sought for, and so sore desired, and that by so many, and they that are also very ryche, thou mayest nowe make the price of thyne own pleasure & therefore ye shall good readers see Iudas was a great rich manne wyth thys one bargayne.1

Although ‘monopoly’ had probably yet to enter the popular vernacular, it certainly would before the end of the sixteenth century, monopolies becoming one of the most politically contentious issues of the day.2 In brief, the controversy revolved around the (ab)use of letters patent awarded by the monarchy, the primary instrument by which the royal prerogative was exercised. In the mid-sixteenth century, it was recognised that letters patent represented an apposite legal instrument by which foreign tradesmen could be awarded 1 Quoted in D Harris Sacks, ‘The Greed of Judas: Avarice, Monopoly, and the Moral conomy in England, ca 1350–ca 1600’ (1998) 28 The Journal of Medieval and Early Modern E Studies 265. ‘Monopoly’ though, was also being used in a more recognisable way. Bishop Hooper, for instance, enjoined the ‘making scarsite of all thinges [and] bringing the greater part of such commodities as be in euery realme into a few ryche menes handes so that they cannot be sold as commune goddes of the ciuile wealthe but as the goddes of one private person. The whiche Monopolie or selling of one man is forbiddin not onlie in the law of god: but also by the law of man’. J Hooper Declaration of the ten holy commaundementes (Zurich, Augustin Fries, 1549) 174. Similarly, the first English edition of More’s Utopia warned: ‘Suffer not these riche men to bie vp al, to ingrosse and forstalle, and with their monopolie to kepe the market alone as please them’. T More (Ralph Robynson, tr), Utopia (London, Abraham Neale, 1551) 56. 2 By way of illustration, a search on the Early English Books Online website (eebo. chadwyck.com/home) yields only seven publications containing the word ‘monopoly’ and/or its variants before 1575. Over the next half century leading up to the Statute of Monopolies, however, the same search yields 212 results.

2 Sean Bottomley exclusive rights to their technology, and so encourage them to emigrate to England to establish new industries and to instruct native apprentices.3 It was also hoped that the protection proffered by patents would encourage inventive activities at home. Such was the policy as originally envisaged by Lord Burghley, Elizabeth’s chief minister, but it soon came to be usurped by other interests and the monopolies that came to be awarded via patents can be divided into two broad categories.4 The first consisted of those awarded for the sole supply of basic commodities, such as salt and starch, or the manufacture of commercial and industrial goods, like iron and glass (although bona fide patents for invention also come within this category). These monopolies were usually awarded as a means of raising revenue for the Crown (patentees usually paid a rent to the Crown) and/or as a means of rewarding favourites: in 1618, James I awarded his jester a patent to manufacture tobacco pipes.5 The second category consisted of those patents awarded to confer the exclusive right to undertake certain administrative or bureaucratic functions that might ordinarily be deemed the responsibility of the government, but which, it was thought, could be ‘farmed’ out to private parties (who also paid a rent to the Crown). How patentees then profited from these ‘privileges’ was largely left up to them. Arthur Duckett, for example, co-held the right to search for saltpetre (an essential component for the manufacture of gunpowder) and, under the pretence of searching for saltpetre materials, would ‘offer to digge the kytchens parlers bedchambers workehouses and most necessary rooms of divers your said subjects … of purpose to drawe … great somes of money … to have their houses spared’.6 There was some overlap between these two categories: James’s jester probably never intended to manufacture tobacco pipes himself, but to licence and control the trade, and both categories would be censured by the Statute of Monopolies.7 Monopolies were understandably reviled by manufacturers, who were now excluded from their livelihoods, and by consumers who had to pay higher prices.8 Often associated with ‘projects’ and ‘projectors’, m onopolies

3 An example of such a patent would be the one awarded in 1567 to Anthony Becku and Jean Carré, discussed below in Section II. Becku and Carré were awarded a patent for 21 years to make window glass, on condition that ‘they instruct fully in the art a convenient number of Englishmen apprenticed to them’. Calendar of the Patent Rolls preserved in the Public Record Office. Elizabeth I, Volume IV, 1566–1569 (London, Her Majesty’s Stationary Office, 1964) 147. 4 C MacLeod, Inventing the Industrial Revolution: The English Patent System, 1660–1800 (Cambridge, Cambridge University Press, 1988) 12. 5 RM Smuts, ‘Armstrong, Archibald (d 1672)’, Oxford Dictionary of National Biography (Oxford, Oxford University Press, 2004). 6 Quoted in D Chan Smith, Sir Edward Coke and the Reformation of the Laws, Religion, Politics and Jurisprudence, 1578–1616 (Cambridge, Cambridge University Press, 2014) 66. 7 Similarly, one of the reasons advanced for the maintenance of the monopoly for playing cards was because higher prices might dissuade more workers from gambling. Darcy v Allin [1603] Noy 173, 174, 74 ER 1131, 1133 (KB). 8 For an example of a glass manufacturer excluded by Mansell, see n 36.

Mansell v Bunger (1626) 3 became something of a mainstay in popular literature and songs. The poet and satirist George Wither broached the subject in his popular Motto (1621), which reputedly sold 30,000 copies in a few months: I care not when there comes a Parliament: For I am no Projector, who invent New Monopolies, or such Suites, as Those, Who, wickedly pretending goodle shows, Abuses to reforme; engender more: And farre lesse tolerable, than before. Abusing Prince, and State, and Common-weale; Their (just deserved) beggaries to heale: Or, that their ill-got profit, may advance, To some Great Place, their Pride, and Ignorance.9

The authorities were less impressed—Wither was first examined by the House of Lords and then imprisoned for Motto.10 More seriously, monopolies were also subject to repeated attacks in Parliament, although the Crown was naturally reluctant to relinquish an important source of revenue and to see the prerogative curtailed. A basic pattern to these contests had emerged in Elizabeth’s final parliaments. Members would openly attack monopolists in the strongest terms, demanding action.11 The Crown in turn would express surprise and regret at the actions of its patentees and, to pre-empt legislation, agree to revoke the most controversial patents.12 But the Crown

9 Quoted in C Kyle, Theatre of State: Parliament and political culture in early Stuart England (Stanford, Stanford University Press, 2012). 10 M O’Callaghan, ‘Wither, George (1588–1667)’, Oxford Dictionary of National Biography (Oxford, Oxford University Press, 2004). 11 In 1601, the Member for Reading Sir Francis Moore despaired: ‘I cannot utter with my tongue or conceive with my heart the great grievances that the Town and Country for which I serve, suffereth by some of these Monopolies … I do speak it, there is no Act of hers that hath been or is more derogatory to her own Majesty, more odious to the Subject, more dangerous to the Common-Wealth than the granting of these Monopolies’. Presciently, Moore also understood that legislative action would prove to be futile: ‘And to what purpose is it to do anything by Act of Parliament, when the Queen will undo the same by her Prerogative?’, foreseeing what James and Charles would do after the Statute of Monopolies was passed. S D’Ewes, The Journals of All the Parliaments During the Reign of Queen Elizabeth (London, John Starkey, 1682) 645. 12 In her ‘Golden Speech’ of 1601, Elizabeth assured a delegation of Members: ‘That my grants should be grievous to my people and oppressions privileged under colour of our patents, our kingly dignity shall not suffer it. Yea, when I heard it, I could give no rest unto my thoughts until I had reformed it. Shall they, think you, escape unpunished that have thus oppressed you, and have been respectless of their duty, and regardless of our honour? No I assure you Mr Speaker … these varlets and lewd persons, not worthy the name of subjects, should not escape without condign punishment’. Quoted in JE Neale, Elizabeth I and her Parliaments, Vol. II 1584–1601 (London, Jonathan Cape, 1957) 390.

4 Sean Bottomley also took care to remind MPs of the importance of patents and warned them not to meddle too intrusively with the prerogative. In 1597, Elizabeth expressed the hope that her dutiful and loving Subjects would not take away her Prerogative, which is the chiefest Flower in her Garden, and the principal and head Pearl in her Crown and Diadem; but that they will rather leave that to her disposition. And as her Majesty hath proceeded to tryal of them already, so she promiseth to continue that they shall all be examined to abide the tryal and true Touchstone of the Law.13

Matters deteriorated under James I, a more profligate character than Elizabeth. In 1606, after Parliament complained about the proliferation of patents, he had obliged by promising to annul the most egregious grants.14 Similarly, in 1610, James issued a royal declaration based on his Book of Bounty, disavowing patents that would be ‘contrary to our Law’ and affirming that they should be triable at common law. None of this, however, did anything to curtail his largesse and, after an abortive attempt at legislation in 1621, Parliament managed to pass the Statute of Monopolies in 1624. The first section of the Statute confirmed the common law prohibition on monopolies: all Monopolies, and all Commissions, Grants, Licences, Charters and Letters Patents heretofore made or granted, or hereafter to be made or granted, to any Person or Persons, Bodies Politick or Corporate whatsoever, of or for the sole Buying, Selling, Making, Working or Using of any Thing within this Realm … are altogether contrary to the Laws of this Realm, and so are and shall be utterly void and of none Effect.15

The second section of the Statute continued that all such instruments ‘shall be for ever hereafter examined, heard, tried, and determined, by and according to the common laws of this realm, and not otherwise’, excluding the prerogative courts. Most of the following sections of the Statute detail exceptions to the general prohibition of the first section. Most famously, the sixth section excepted patents for new inventions. Similarly, the final two clauses of the Statute excepted specific patents and awards from the general prohibition. These were excluded primarily to guarantee that there was sufficient support for the Act to pass and, not coincidentally, one of the patents spared belonged to the Member for Glamorgan—Sir Robert Mansell.16 The significance of the Act has been emphasised for two reasons. Firstly, for the Whig historians of the nineteenth century, the Statute represented

13 D’Ewes,

Journals of All the Parliaments (n 11) 547. Hyde Price, The English Patents of Monopoly (London, Archibald Constable & Co, 1906) 26. 15 Statute of Monopolies 21 Jac. I c 3 (1624). 16 C Russell, Parliaments and English Politics, 1621–1629 (Oxford, Clarendon Press, 1979) 191. 14 W

Mansell v Bunger (1626) 5 the first occasion that the Crown relinquished a significant component of its traditional prerogative rights. For example, in his Constitutional History of England, Henry Hallam argued that during the reign of James I, ‘the commons had been engaged … in a struggle to restore and to fortify their own and their fellow subjects’ liberties. They had obtained in this period but one legislative measure of importance, the late declaratory act against monopolies’.17 Moving into the twentieth century, the Statute has been variously described as ‘the first statutory invasion of the prerogative’ and as a critical moment in the Commons’ ‘winning of the initiative’ in its protracted conflict with the Crown.18 This triumphalist account of the Statute has never commanded universal assent, though. David Hume, for example, while agreeing that the passing of the Statute ‘was gaining a great point, and establishing principles very favourable to liberty’, argued that James I had assented to its passing, and had actively supported the earlier Bill in 1621.19 In the modern historiography, Conrad Russell has also argued that the Statute passed with the active support of James I and Prince Charles. James was reportedly anxious for the Bill to pass in 1621 and 1624 as a means of sparing him the wheedling and begging of courtiers for special dispensations and monopolies. In one speech to the House of Lords in 1621, cited by Russell, James complained that suitors for patents ‘have been so troublesome to me that neither myself nor those about me could rest in their beds quiet for projectors, as the great back gallery, if it had a voice, could tell’.20 Other historians though, have suggested that James’s self-interest was piqued by other motives.

17 H Hallam, The Constitutional History of England, vol 1, 2nd edn (London, John Murray, 1829) 509. 18 C Mcllwain (writing in 1940) and Wallace Notestein (1924) quoted in C Kyle, ‘“But a New Button to an Old Coat”: The Enactment of the Statute of Monopolies, 21 James I cap 3’ (1998) 19 Journal of Legal History, 203–04. 19 D Hume, The History of Great Britain under the House of Stuart, Volume I containing the reigns of James I and Charles I (London, A Millar, 1759) 96–97. 20 Russell, Parliaments and English Politics (n 16) 109. James’s speech, however, is rambling and contradictory. Certainly the speech begins in strong terms: ‘I have bene alwayes a hater of projects and projectors, as those of my privie counsel both upon their honors and consciences can tell you’. But it was not the monopolies themselves that so irked the King, but the conduct of the patentees/monopolists. For example, at one point he condemns Sir Gyles Mompesson (the most notorious monopolist of the period, holding a patent for the manufacture of gold and silver thread): ‘Mompesson regarded not me, but got it only for him selfe’. In almost his next breath, though, James defends him: ‘he laboured for my proftt and soe few have I about me that doe trewly regard it as I must not discourage’. James also argued that the matter was not ‘fit for the judges to deliver their opinions [but instead] should have beene brought unto my Privy Counsell, for Sir Edward Villiers that is Master of my Mint came and tould me that this allwance of makinge gould and silver thread did hurt the Bullion’. He also chided Coke: ‘For though Sir Edward Coke be very busie and be called the father of the Law and the Commons’ howse have divers Yonge lawyers in it, yet all is not law that they say … I hope in his vouching presidents to compare my actions to usurpers or tyrants tymes you will punish him’. The speech appears in Lady De Villiers (ed), The Hastings Journal of the Parliament of 1621 (London, Royal Historical Society, 1953) 26–31.

6 Sean Bottomley Tim Harris argues that the Statute was an essentially political concession, used by James to obtain what he really wanted: funds for a potential war with Spain.21 Even then, the Lords were reportedly only induced to give the Bill its third reading after being cajoled by Prince Charles.22 There is, however, hardly any work on the legal history of patents and monopolies in the immediate aftermath of the Statute. One of the arguments in this chapter is that the true intent of James and Charles in assisting with the passage of the Statute is revealed by their subsequent actions. Secondly, the Act is conventionally regarded as the legislative foundation of the English patent system, and, by extension, arguably the ‘landmark’ in the history of British Intellectual Property Rights. Some economic historians, particularly new institutional economists, have suggested that the Statute, by establishing patents for invention in the common law, guaranteed the intellectual property rights of inventors. This, argued Douglass North (recipient of the 1993 Nobel prize in Economics), gave England a comparative advantage in the development of technology, which ultimately contributed to the industrial revolution,23 and this is a view that remains current in this literature.24 Historians of the patent system, though, are more measured in their assessment of the Statute and there is general agreement that the content of the Statute was declaratory of the common law of patents and monopolies as it stood at that time—although there was some disagreement as to what precisely this was and whether it would not be politic for the Statute to introduce some additional restrictions.25 Sir Edward Coke, for example, the Statute’s guiding hand, needed to be persuaded that new inventions ought to be excluded from the general prohibition on monopolies.26 What is certain though, is that the Statute gave expression to the growing determination to reaffirm the common law vis-à-vis the royal prerogative

21 T Harris, Rebellion, Britain’s First Stuart Kings (Oxford, Oxford University Press, 2014) 220. 22 Russell, Parliaments and English Politics (n 16) 191. 23 D North, The Rise of the Western World: A New Economic History (Cambridge, Cambridge University Press, 1973) 154. 24 Most notably, D Acemoğlu and J Robinson, Why Nations Fail: The Origins of Power, Prosperity and Poverty (London, Profile Books, 2013) 32. 25 MacLeod, Inventing the Industrial Revolution (1988) 17–18; S Bottomley, The British Patent System During the Industrial Revolution (Cambridge, Cambridge University Press, 2014), 102. 26 Even though when Coke had been Chief Justice of the King’s Bench, he had recognised that while monopolies were unlawful (‘for that is to take away Free-trade, which is the birthright of every Subject’), ‘if a man hath brought in a new Invention and a new Trade within the Kingdom, in peril of his life, and consumption of his estate or stock or if a man hath made a new Discovery of any thing, In such cases the King of his grace and favour, in recompense of his costs and travail, may grant by Charter unto him, That only he shall use such a Trade or Trafique for a certain time, because at first the people of the Kingdom are ignorant, and have not the knowledge or skill to use it’. The Clothworkers of Ipswich [1615] Godbolt 254, 78 ER 149 (KB).

Mansell v Bunger (1626) 7 and to define their respective boundaries. The second purpose of this c hapter is to assess whether the Statute succeeded in this aim. Did the common law prevent James and Charles from awarding and maintaining monopolies? To this end, the chapter examines the story of one of the most important patents awarded during this period, a patent for glass manufacture held by Sir Robert Mansell, and the source of the dispute for the first ‘test’ case heard after the Statute of Monopolies—Mansell v Bunger in 1626. II. ROBERT MANSELL AND THE PATENT FOR GLASS

The development of English glass-making in this period has been well covered by Eleanor Godfrey and David Crossley, and this section draws heavily on their work. Although there is some limited evidence for medieval glass manufacture in England, the story really begins in 1567 when Lord Burghley awarded a patent for the manufacture of window glass to Anthony Becku and Jean Carré (‘born in the Low Countries under the dominion of the King of Spain’).27 To help establish their enterprise, they arranged for the emigration of two Frenchmen, Pierre and Jean de Bongard (soon anglicised to Peter and John Bunger), who, unfortunately, did not prove to be entirely co-operative.28 When, for example, agents of the patentees were sent to the Bunger works to encourage the training of locals (as required by the terms of the patent), they were assaulted and the glass industry would remain in the hands of foreigners into the 1600s.29 Consequently, there was an ongoing search for a ‘native’ method of glass manufacture that would break this monopoly. It was also recognised that a method of glass manufacture that replaced timber with coal would yield a significant saving in fuel costs—although there were significant technical problems to be overcome. In particular, traditional wood furnaces did not produce a strong enough draught for coal to be used effectively and the coal smoke could discolour the molten glass.30 All this required the design of a new glass furnace which could produce high enough temperatures for the coal to burn and melt the glass, while also drawing away the coal smoke. The first patent for making glass with coal was awarded in 1610 to Sir William Slingsby, and a document in the Bodleian gives the reasons for the grant. In particular, it was hoped that encouraging Slingsby would lead to the ‘preservation of wood, whereof there is great famine’ and that ‘a great number of poor countrymen can be set at work … where now strangers only

27

Calendar of the Patent Rolls, 1566–1569, 146. Godfrey, The Development of English Glassmaking, 1560–1640 (Oxford, Clarendon Press, 1975) 20. 29 ibid 24. 30 ibid 148. 28 E

8 Sean Bottomley are employed’.31 This was also, however, a bona fide patent for invention, and it was hoped that the patent would result in ‘other men encouraged to exert their wit for new inventions’. Slingsby’s furnace, though, does not appear to have worked, and another coal furnace was patented by several courtiers the following year, including Thomas Mefflyn, the King’s Glazier, and Thomas Percival, to whom the actual invention has been accredited.32 Matters did not proceed smoothly for the new patentees. James I had to intercede on their behalf in a dispute with one William Robson, who held other patents relating to glass manufacture, and the Privy Council also noted that their works may have been sabotaged in 1613, of which ‘Isaac Bunger is vehemently to be suspected’.33 This probably explains why the patentees took on five new partners in 1615, attempting to shore up their financial position with an infusion of new capital, and also their political position. Among the new partners were Philip, Earl of Montgomery, and Sir Thomas Howard, both well-connected courtiers in favour with the King. Another new partner was Sir Robert Mansell, who soon bought out the other patentees to become sole proprietor of the patent. Mansell was in some respects a rather strange figure to have become a pioneer of coal-based glass manufacture. Born in 1570/1, he had entered naval service in his youth, serving as a privateer in 1590 and at the raid of Cadiz in 1596. He later served as an Admiral of the Narrow Seas, a position in which he achieved some personal distinction. James I also thought it strange, wondering aloud why ‘Robin Mansell being a Seaman, whereby he hath got so much Honour, should fall from Water to tamper with Fire, which are two contrary Elements’.34 However, as a protégé of Lord Nottingham, (to whom James I was indebted for the ease of his succession), Mansell had been appointed Treasurer of the Navy in 1604. Here, he revealed considerable financial acumen, as well as a near boundless

31 ‘Motives to make glass by sea coal’, 1610. North MSS. a.2, f 145. Bodleian Library, Oxford. The document also discussed potential objections to the grant. In particular, it was noted that while the patent might lead to ‘many families of glass makers undone or at least greatly deterred’, this should not preclude a grant to Slingsby: ‘there is no great cause to favour these glassmakers being foreigners … they did undertake to instruct our people in that art or mystery and did not, yet we will be contented to set them as work’. 32 Prompting Eleanor Godfrey to suggest that this ‘patent was legal by modern standards and was certainly the most legitimate of all the glass patents granted’. Godfrey, English Glassmaking (n 28) 60. 33 Quoted in Godfrey, English Glassmaking (n 28) 69. This does not, however, appear to have been the end of Robson’s opposition to the glass patent, and Mansell instigated action against Robson in King’s Bench and then the Court of Exchequer. Unfortunately, though, no direct record of the action survives and there is only passing reference made to it in another Exchequer case. ‘John Holloway, of London, Humphrey Holloway, of London. v. William Robson, of London’, 1618–19. King’s Remembrancer: Depositions, E134/16Jas1/East2, ff1–2. National Archives, London. 34 J Howard, Epistolæ Ho-Elianæ: Familiar Letters Domestick and Foreign (London, Humphrey Mosley, 1645) s 2, 6.

Mansell v Bunger (1626) 9 capacity for avarice. Mansell, for example, used Navy ships for his own private trading concerns. Another wheeze was for Mansell to under-supply the Navy with overpriced goods and to pocket the difference. Least a ppealingly, requests by injured and crippled seamen for relief from the Chatham Chest, a charitable fund founded by Lord Effingham, would prompt Mansell to fall ‘presently into raging passions and pangs’ of anger.35 Of course, M ansell’s corruption hardly distinguished him from other Navy administrators of the time, but the vigour with which he pursued the opportunities for malfeasance probably did. A 1608 Navy Commission found that ‘Mansell alone had made £12,000 from naval stores and embezzled £1,000 in wages in a single year’. But all this happened with the cognizance of James I, and Mansell stayed on as Treasurer until 1618. In itself, his newly acquired patent was a bona fide one for a new invention, a glass furnace that could use coal instead of wood. Mansell, however, was able to secure in 1615 a de facto monopoly of all glass manufacture by obtaining a proclamation from the King forbidding the use of wood for glass manufacture.36 Ostensibly, the proclamation was issued to preserve timber supplies for the Navy, although the total wood consumption of the glass industry was modest. By one estimate, the entire Wealden glass industry (the main centre of English glass-making) would have required a maximum of just over 5,000 acres of low-yielding coppice to sustainably fuel itself in 1600.37 The true purpose of the proclamation was alluded to later in the text, where it referred to the ‘encouragement which we are accustomed to give to new and profitable inventions, as the civility of the times may be maintained’—in other words, to provide additional protection for Mansell. This also explains why the proclamation prohibited the importation of glass as well. The proclamation was acted upon, providing Mansell with a working and enforceable monopoly. In 1618, for example, two g lass-makers were arrested for infringing the monopoly (using wood rather than coal), and were only released once they entered bonds guaranteeing good behaviour in the future.38 35 ‘Considerations of the present state of the Navy’ by Sir Robert Cotton, c 1608. Egerton MSS 2975, f 47. British Library. 36 ‘Proclamation for making glass with sea coal and pit coal only’, May 23 1615. State Papers Domestic James I, 14/187, f 95. National Archives, London. Mansell lost no time in enforcing his privileges. Sir Walter Bagot wrote to Mansell the following year complaining that ‘The proclamation was published here in this county of Stafford the 16th of June, and the third day after a messenger took away Jacob Henze, my chief workman, who hath been and still is employed in your works at Wollerton … we are now in despair to recover our loss’. ‘Petition of Sir Walter Bagot to Sir Robert Mansell’ in J Thirsk and JP Cooper (eds), Seventeenth-Century Economic Documents (Oxford, Clarendon Press, 1972) 205. 37 By contrast, the Wealden iron industry would have needed 200,000 to 250,000 acres of coppiced woodland. D Crossley, ‘The Archaeology of the Coal-Fuelled Glass Industry in England’ (2003) 1 The Archaeological Journal 160, 164. 38 ‘Letter from Sir Robert Mansell to Sir George Calvert, Clerk of the Council’, 4 May 1618. State Papers Domestic James I, 14/97, f 145. National Archives, London.

10 Sean Bottomley Even with his monopoly, however, Mansell faced problems on two fronts. First of all, technical issues with using coal still remained. Mansell struggled for several years to find a suitable location for his glass-works, moving them from the Isle of Purbeck, to Milford Haven, to Nottinghamshire and then finally up to Newcastle. It was here, finally, that the use of coal in glassmaking became a technical and commercial success. In particular, coal at Newcastle was cheap and there was a well-established sea-borne trade to London, the main market for Mansell’s glass (it was also possible to supply coastal towns in the east, such as Lynn and Norwich). Elsewhere in the country, licences were sold to window glass-makers to use coal—but on the condition that they did not sell their glass in London.39 Mansell also enjoyed early success in manufacturing looking glasses and crystal glass, drawing comparison to Murano glass from the Venetian ambassador in 1620.40 Second, Mansell had to deal with the intransigent opposition of Isaac Bunger and his various associates. This again took the form of sabotage, Bunger being suspected of various ‘devices to spoile the glasse’ at Newcastle (for want of alternatives, Mansell was obliged to employ some of Bunger’s kinsmen).41 It also took the form of outright violation of the monopoly, which resulted in Bunger’s imprisonment.42 Bunger’s opportunity to seriously threaten Mansell’s patent arrived in the Parliament of 1621. When Parliament met, the economy was in the midst of a serious economic downturn and, true to form, monopolies were blamed and roundly attacked.43 Mansell’s patent was especially vulnerable, partly because he was abroad on naval duties but also because the Venetian ambassador was anxious to forestall competition from English glass-makers and to stymie developments

39 D Crossley, ‘Sir William Clavell’s Glasshouse at Kimmeridge, Dorset: The Excavations of 1980–81’ (1987) 144 The Archaeological Journal 348. 40 In a report to the Doge in 1620, the Ambassador noted that the ‘crystal attaine a beauty not sensibly inferior, but of quite equal quality to that of Murano, which used once to have the pre-eminence and was the pride of all the world’. Quoted in Godfrey, English Glassmaking (n 28) 82. 41 As reported by Sir George More in W Notestein, FH Relf and H Simpson (eds), Commons Debates 1621, Volume 3 ‘The Notes of Sir Thomas Barrington of the House of Commones’ (New Haven, Yale University Press, 1934) 256. 42 And even in prison, Bunger resisted Mansell’s overtures. Elizabeth (Mansell’s wife) offered him his release, if ‘he will be conformable to his Majesty’s patent and proclamations for the glass business nor be a malicious disturber of Sir Robert Mansell’s works or contracts from henceforth’. This he initially refused, not knowing ‘how far my lady may straine any such promise to draw me into further trouble and therefore do fully desire to be excused for putting my hand to anything [which] may engage me to any future inconvenience’. ‘Elizabeth, Lady Mansell to Sir Clement Edmondes’, 1621. State Papers Domestic James I, 14/124, f 229. National Archives, London. 43 Although it is now thought that the ultimate cause of the depression may have been a currency devaluation in the Baltic, prompting an outflow of English specie. Harris, Rebellion (n 21) 196.

Mansell v Bunger (1626) 11 in the industry.44 It also seems that Mansell’s patent attracted particular controversy, even in the midst of the general attack on monopolies: the Member for Dunwich, Clement Coke, was briefly imprisoned in the Tower for striking a fellow Member after a heated discussion concerning the patent.45 It was Clement’s father, Sir Edward Coke, who was the main force pushing for the revocation of Mansell’s patent. In committee, he observed that ‘Three things need to be proved for the patent to be maintained: that it is a new invention, that the glass is as good cheape. That the glass is as good as before’.46 Coke appears to have made up his mind even before counsel were heard, stating on 7 May that: This is no new invention, for in Stafford and Herefordshire glass was before made with seacoale and Pitt Coale before this And whosoever will have the making of thing heeaer and prohibit all importation of the like, they must make it as well conditioned, sized, and as good cheape as the other. But all this yow faule in.47

This was a striking volte-face from Coke’s earlier support for the glass patent in 1614, when he had intervened personally in the dispute between Mansell’s predecessors and Robson, as well as redrafting the patent to include all types of glass.48 Counsel was heard later on the same day, and again a week later (14 May). Elizabeth Mansell (Sir Robert’s wife), was able to marshal an impressive body of evidence for the maintenance of the patent. In particular, the London Glaziers and the London Spectacle-Makers both supported Mansell’s patent, probably for two reasons. One, Isaac Bunger had already demonstrated his (lack of) good intentions before Mansell had secured his patent. In connection with his compatriots and Lionel Bennett, a London

44 Russell, Parliaments and English Politics (n 16) 62. The Venetian Ambassador also tried to encourage Venetian glassmakers to return home. In a 1623 report to the Council of Ten, Girolamo Lando, claimed that he had ‘even given my own money to some in order that they might return to Murano as they professed they wished to do; but I afterwards learned that they had gone to Scotland and to work elsewhere, which alone would render them worthy of punishment’. Allen B Hinds (ed), Calendar of State Papers and Manuscripts relating to English Affairs existing in the archives and collections of Venice, Vol. XVII, 1621–23 (London, HMSO, 1911) 309. 45 Notestein et al, Notes of Sir Thomas Barrington (n 41) 204, 215–19. 46 W Notestein, FH Relf and H Simpson (eds), Commons Debates 1621, Volume 5 ‘The Belasyse Diary’ (New Haven, Yale University Press, 1934) 122. 47 Notestein et al, Notes of Sir Thomas Barrington (n 41) 195. 48 Godfrey, English Glassmaking (n 28) 68. This was not an isolated incident. One Lepton held a patent giving him a monopoly for engrossing bills for lawsuits before the Council of the North. The patent was condemned as a grievance in Parliament and Coke angrily enquired of Lepton who had drawn up his patent, adding that whoever had done so deserved to be hanged. Lepton replied that it had prepared by the then Attorney-General—Coke. Russell, Parliaments and English Politics (n 16) 128.

12 Sean Bottomley wholesaler, he had secured his own de facto monopoly for supplying glass to the London glaziers. The monopoly was sustained by predatory pricing to force out any unwanted competition: when another man sett upp a ffurance, And then they woulde advaunce theire size and fall theire price to the value of a noble in a case difference, though yt weare by their owne protestation to theire losse 200 £; of purpose to overthrowe the party, which in a short time they effected.49

Second, contrary to claims from the other side, Mansell’s glass was probably better and cheaper than that made previously. This was certainly the view of the Venetian ambassador and it is corroborated by archaeological evidence showing that glass was being adopted for a growing variety of purposes at around this time, indicating that its price was falling, while its quality was improving.50 However, while the patent itself may have been beneficial to the commonwealth, in conjunction with the proclamation it conferred a monopoly to Mansell as Coke appreciated: ‘Why suffer yow not glasses to be imported if yow can sell cheaper. Answer. Tis for the Manefacture’. Coke’s eventual report on the patent led to it being denounced as a grievance by Parliament: If Mansil had invented the makeinge of glass with coale, yet he could not restraine them that made it with wood before no more then brewers or Cookes can be restrained from rostinge with wood if one should devise a new tricke to roast; but he invented it not, but the furnace. T’is but a new button upon an ould coate. And therefore adjudged a grievance in the creation and execution.51

This ostensibly weakened Mansell’s position, but in the absence of any accompanying legislation to actually annul his patent, it remained in force. Mansell was especially helped by the continuing support of the Privy Council, and a document prepared for the Master of the Rolls at the end of 1621, entitled ‘Instructions concerning the patent of glass’, made three main arguments for this policy. First, Mansell’s investments had been considerable (a figure of £28,000 is mentioned) and this had yielded improvements in the quality of glass and a reduction in prices. Secondly, he had also succeeded in expanding the range of domestically produced glass goods: ‘And as concerning looking glass, Sir Robert Mansell hath brought to such perfection that he hath caused our natives to be fully instructed and taught therein’. Finally, he was paying a rent of £1,000 per annum directly to His 49 Quoted in Godfrey, English Glassmaking (n 28) 55. Similarly, the French glass-makers were accused in 1610 of ‘often forbid[ding] the bringing of [glass] into the city and great places of commerce until such time that they find great scarcity’. ‘Motives to make glass by sea coal’, f 145. 50 D Crossley, ‘The English Glass Maker and His Search for Materials in the 16th And 17th Centuries’ in P McGray (ed) The Prehistory and History of Glassmaking Technology (Ann Arbor, American Ceramic Society, 1998) 168. 51 ibid 170.

Mansell v Bunger (1626) 13 Majesty, as well as another £1,800 to His Majesty’s servants. The document ends tersely, noting that ‘Bunger never paid penny rent’.52 Consequently, on his return from service abroad, Mansell’s position was as strong as ever. In 1623, for example, he had Sir William Clavell imprisoned in Marshalsea debtors’ prison and his glass furnace in Dorset demolished.53 Mansell’s patent was actually much safer in 1624 than it had been in the previous Parliament, even though this was when the Statute of Monopolies was passed. This is partly because Mansell was back in the country, and sitting in Parliament as Member for Glamorgan, but also because his incorrigible opposition to the widely loathed Duke of Buckingham buttressed his own popularity. An exception was probably made for Mansell’s patent as a result of Coke surmising that the Statute needed Mansell’s support to pass.54 This exception illustrates how, despite the framers of the Statute of Monopolies seeking to reaffirm the common law concerning monopolies and patents, the terms of the Statute had in practice been subject to negotiation and concession. A. Mansell v Bunger As we will shortly see, this marked only the beginning of Mansell’s dispute with Bunger, but before this could reach its conclusion in 1626, there were also at least two instances prior to the main hearing in Mansell where patentees instigated action in the prerogative courts, in contravention of the Statute of Monopolies. The first was Attorney-General v Rosse, dated September 1624, just a few months after the Statute had received the Royal Assent (25 May 1624).55 This was a prosecution in Star Chamber brought by the Attorney-General, Sir Thomas Coventry, for the infringement of Philip Foote’s patent, awarded for preparing clay for manufacturing tobacco pipes. Foote’s patent shared many of the same characteristics as Mansell’s. In particular, although it was apparently awarded in recognition of Foote’s ‘skill and industry and to his great charge’ in being able ‘to provide and prepare clay of that temper and quality’ which could be used to make tobacco pipes, his patent was also supplemented by a ban on the manufacture and import of all other types of tobacco pipe clay.56 Coventry sought to prosecute a large number of individuals for forcibly resisting the 52 ‘Reasons for defence of the glass patent’, Sir Julius Caesar, 21 December 1621. Additional Manuscripts 12496, ff 155–156. British Library, London. 53 D Crossley, ‘Sir William Clavell’s Glasshouse at Kimmeridge, Dorset: The Excavations of 1980–81’ (1987) 144 The Archaeological Journal 348, 355. 54 Godfrey, English Glassmaking (n 28) 122. 55 ‘Attorney-General v Rosse’, September 1624. Court of Star Chambers: Proceedings James I, STAC 8/29/9. National Archives, London. 56 ibid f 2.

14 Sean Bottomley patent. In particular, when Foote had attempted to seize clay belonging to the defendants, he was abused in a ‘most shameful manner and in contempt of the said letter patent that they cared not a turd for the same and that they the said Philip Foote and John Leigh [Foote’s agent] or either of them were as good take their own ordure as to make any seizure of the said clay’.57 It is possible that the case was brought to Star Chamber because issues of public order were at stake. The bill of complaint detailed another occasion when a crowd of ‘above one hundred and fifty persons’ had prevented Foote and a deputy marshal of the High Court of Admiralty from seizing a ship importing pipe clay and claiming that ‘they did strike at the said Philip Foote and John Leigh with their halberds and swords and swore that if they or either of them proffered to carry away the said clay so seized they would die every man of them’.58 Nonetheless, it is telling that Coventry was willing to instigate proceedings relating to a monopoly outside the common law courts so soon after the tumult of the Statute’s passing—especially as Francis Bacon had previously objected to Coventry’s appointment as the Recorder of London on the grounds that he had ‘been bred up by my Lord Coke, and seasoned in his ways’.59 The second instance occurred towards the end of 1625. William Trumball, who held a patent for ‘the making of salte a new way’, complained to the Privy Council that ‘divers unruly persons inhabiting in and about Lymington [did] indeavour to cross and hinder the due execution’ of his patent.60 The Privy Council agreed to intervene, writing to the mayor and burgesses of the town, requiring them: to take viewe of all the salt works within fower myles of [Lymington] and haveing informed yourselves of the true manner of their working and whether it be according to the new invention priveledged or after some other waies of their owne, either to reduce the said persons to conformitie, or otherwise to certifie unto us what you shall fynde, that we may take such further order as shalbe fit.61

Although the Privy Council was only concerned with whether Trumball’s ‘new way’ was being used, this was also, strictly speaking, a matter for the common law courts. Their decision to intervene indicates that the Council had little intention of being restrained by the terms of the Statute. This, however, was as far as matters were pursued, leaving Mansell as the first instance where matters came to a head and the Crown’s repudiation of the Statute of Monopolies laid bare.

57 ibid. 58 ibid.

59 Quoted in Richard Cust, ‘Coventry, Thomas, first Baron Coventry (1578–1640)’, Oxford Dictionary of National Biography (Oxford, Oxford University Press, 2004). 60 ‘Privy Council Registers’, 1625–26. Privy Council Registers: Charles I, PC 2/33, f 47. National Archives, London. 61 ibid.

Mansell v Bunger (1626) 15 After the passing of the Statute, Mansell had continued to enforce his patent against those who he believed were infringing it (and his patent, as mentioned above, had been explicitly omitted from the general prohibition on monopolies). This prompted Bunger and his associates to petition the King in 1626, ‘humbly pray[ing] that the said patent might either be revoked or examined by his learned counsel or to be left to the judgements of the common lawes’.62 The petition was referred to Robert Heath (the Attorney-General) on 22 May, who reported two weeks later that Bunger’s suit should: be freely left to his Majestie’s lawes for the using and injoying … of their trade of making glasse and revoking and overthrowing of the patente made to Sir Robert Mansell is both just and honourable and agreeable with the true intencion of the late statute against monopolies.

The report was discussed in the Privy Council on 19 June 1626; present were most of its pre-eminent figures such as the Lord Keeper (Sir Thomas Coventry), the Lord Treasurer (James Ley, 1st Earl of Marlborough) and the Secretary of State (Sir John Coke). Outwardly, it appears that the King was willing to defer to the Attorney-General’s report and he ‘hath therefore ben pleased to leave the said Bunger and the rest to take their remedie against the said Sir Robert Mansell by due course of law’.63 However, because of the delay involved in settling the action, the Council was also charged to consider whether Bunger and his associates should be permitted to re-enter the trade before a decision on Mansell’s patent had been made at common law. The two surviving records of the hearing imply that the Council was moved to consider this question at the request of Bunger, although it is d ifficult to explain why he would have risked asking the Council to intercede in any part of the dispute. Predictably, the Council decided ‘that until the cause be legally and fully determined the said Bunger nor any other without a uthority from Sir Robert Mansell shall not in any sorte be permitted to worke or make any kinde of glasse’.64 Also predictably, considering that Heath had already referred to his chances of success at common law, Mansell wasted little time in petitioning

62 ‘State of the case between Sir Robert Mansell, patentee for the sole making of glass, and Isaac Bunger, and others, trained in the same trade’, c 1626–27. Political Papers of Sir Thomas Jervoise, Ref 44M69/G2/31. Hampshire Archives and Local Studies, Winchester. Bunger was also petitioning Parliament at the same time and a bill for the repealing of the proviso concerning Mansell’s patent in the Statute of Monopolies received its first reading on 25 May. The bill, however, did not receive a second reading. W Bidewell and M Jansson (eds), Proceedings in Parliament 1626, Volume 3: Appendixes and Indices (New Haven, Yale University Press, 1997) 334. 63 ‘Privy Council Registers’, 1625–26. Privy Council Registers: Charles I, PC 2/33, f 352. National Archives, London. This proceeding was by writ of quo warranto in King’s Bench. ‘State of the case between Sir Robert Mansell and Isaac Bunger’. 64 ‘Privy Council Registers’, 1625–26, f 352.

16 Sean Bottomley Charles for the cause to be tried by the Privy Council instead, a request to which he acceded.65 The reasons for Charles’s change of mind are not recorded, but they can be partly inferred from the record of the consequent hearing, held on 6 December 1626 (when again, the most eminent members of the Council were present). The Council agreed, ‘upon the several direccions that have come from his Majestie’, that Mansell’s patent would remain in force. In particular, they feared that it would: bee of dangerous consequence, farre trenching upon the prerogative of the King, if patents of this nature, having so just grounds and so often approved, and for so valuable consideracions graunted and so long practized to the benefit of the commonwealth without injury … or if the validity of this patent in particular heretofore also examined in Parliament and there not dissolved should now bee referred to the strict tryall of the common lawe after all these proceedings had in the other wayes. Wherefore their Lordshipps doe further thinke it fit and order that all other proceedings upon any quo warranto now depending and all other precucions at lawe against this patent bee from henceforth forborne and stayed.66

Moreover, urgent matters of state had also come into play by this point. England had been at war with Spain since 1624. Charles though, had been forced to forgo parliamentary funds since June 1626 when he had dismissed Parliament to prevent the impeachment of his favourite (and probable lover) the afore-mentioned Buckingham (who had commanded a disastrous expedition against Cadiz). With the war ongoing, the Crown’s finances worsened precipitously, with desperation setting in before the end of the year.67 Under these circumstances, there was no way Charles could afford to forgo the annual £1,000 rent Mansell was paying for his patent. In a final coup de grâce, the Privy Council also ordered that Bunger and his associates should not further ‘trouble his Majestie or to attempt any thing against this or former orders made by the Board, upon paine of punishment to bee inflicted upon them’.68 Ten days later, the Privy Council awarded Mansell an open warrant, reinforcing the rights in his patent. In particular, not only was the manufacture of any kind of glass without the licence of Mansell prohibited, but all subjects were now commanded not to ‘abett,

65 ‘Reasons to move His Majesty for stay of further proceedings by course of law, for the overthrowing of a patent granted to me [Sir Robert Mansell] for the making of glass’, August 1625. State Papers Domestic Charles I, 16/521, ff. 207–08. National Archives, London. In the State Papers catalogue, the petition is dated to August 1625, although the pencil note on the original document provides this dating with a question mark, and also suggests 1626 as an alternative date. The petition was dated to 9 September 1626 by Bunger’s counsel. 66 ‘Privy Council Registers’, 1626. Privy Council Registers: Charles I, PC 2/34, f 187. National Archives, London. 67 T Cogswell, ‘“In the Power of the State”: Mr Anys’s Project and the Tobacco Colonies, 1626–1628’ (2008) 123 English Historical Review 39. 68 ibid.

Mansell v Bunger (1626) 17 incourage or uphould any the said persons to worke or make glasses contrary to the said letters patents, either by letting them any grounds, houses or furances, or by furnishing them with coals or other materials for the making of glasse as aforesaid’.69 Anyone failing to conform with this order were to be bound ‘to appeare before us to answer the said contempt’, with the ultimate threat that they would be held in ‘safe custodie’.70 This left Bunger and his associates with no option but to desist from continued challenges to Mansell’s patent, whose position was now unassailable. Mansell reportedly entered a Bill against some of the glass-makers in the Court of Star Chamber immediately after the Council’s final decision, but as there is no other record of further proceedings, it can be presumed that the glass-makers had finally relented.71 It is well established that Charles had restarted awarding monopolies during the Personal Rule, although Ronald Asch has suggested that there was nothing inevitable about the (short-term) failure of the Statute; while Parliament continued to meet until 1629 (albeit intermittently and at the King’s pleasure), pressure was exerted on the Crown ‘to comply as precisely as possible with the provision of the 1624 act’.72 But, as we have seen, the Attorney-General was prosecuting the infringement of patent monopolies in Star Chamber just months after the Statute had been passed, and while the same Parliament was in recess (the ‘Happy Parliament’ sat between 19 February 1624 to 24 May 1624 and from 2 November 1624 to 16 February 1625). Mansell, which constituted the first instance in which a monopoly of manufacture was fully tested, illustrates just how quickly and comprehensively Charles I abandoned the terms of the Statute and deployed the Crown’s legal and administrative apparatus to protect Mansell’s monopoly. This has two implications for how to interpret the Statute and its passing. First, in line with the Book of Bounty and other promises by the Crown not to continue awarding monopolies, the passing of the Statute can be seen as a short-term tactical concession by the Crown: there was probably never any intention to abide by its terms, just as James I had had no intention of abiding by the terms of his 1610 proclamation based on the Book of Bounty. Second, the Statute was not in itself the birth of modern intellectual property rights: without underlying constitutional changes heralded by the Civil War and the Glorious Revolution, it would have been, in effect, a dead letter.

69

ibid f 195.

70 ibid. 71

‘State of the case between Sir Robert Mansell and Isaac Bunger’. Asch, ‘The Revival of Monopolies: Court and Patronage during the Personal Rule of Charles I, 1629–1640’ in R Asch and A Birke (eds), Princes, Patronage and the Nobility: The Court at the Beginning of the Modern Age, c.1450–1650 (Oxford, Oxford University Press, 1991) 362. 72 R

18 Sean Bottomley III. CONCLUSION

Mansell’s patent, renewed in 1635, ended only with the disintegration of royal power leading up to the Civil War. First, the Scots’ invasion of the North, overrunning Northumberland and Durham where his main glassworks were situated at Newcastle, seriously affected production and shipping to London. He asked the Privy Council to dispatch at least two ships to Newcastle to pick up his glass and to bring back coals for his London works as well, reminding them pointedly that £750 would soon be due on the patent.73 Secondly, and decisively, his patent, as well as the other monopolies, was swept away by the political convulsions of 1641 that would lead to the Civil War. Item 37 in Parliament’s Grand Remonstrance had complained that: the Court of Star Chamber hath abounded in extravagant censures, not only for the maintenance and improvement of monopolies and their unlawful taxes, but for divers other causes where there hath been no offence, or very small; whereby His Majesty’s subjects have been oppressed by grievous fines, imprisonments, stigmatisings, mutilations, whippings, pillories, gags, confinements, banishments; after so rigid a manner as hath deprived men of the society of their friends [and] exercise of their professions.74

Considering the political cost, it is only natural to ask why the Stuarts persisted in awarding monopolies. The answer is simple: rents obtained from monopolies proved to be tremendously lucrative for the Stuarts. Financial estimates prepared for Charles I projected a total income of almost £900,000 in 1642, of which monopolies would contribute approximately £100,000 (and Mansell’s patent £1,500).75 However, as these estimates were 73 Statement by Sir Robert Mansell to Sec Windebank of the condition of his works near Newcastle for manufacture of window glass, 15 September 1640. State Papers Domestic Charles I, SP 16/467, ff 141–42. National Archives, London. 74 S Rawson Gardiner, Constitutional Documents of the Puritan Revolution, (Oxford, Clarendon Press, 1906), item 32. Although the Grand Remonstrance itself was passed by only a narrow margin, the anger concerning monopolies was widely shared. One Member, Sir John Colepeper (who would join the Royalists), denounced the: ‘Neast of Waspes, a swarme of Vermin which have overcrept the land I meane Monoplers, the Polers of the people, These like the frogges of Egipt have gotten possession of our dwellings, we have scarce a romme free from them, They sip in our Cupp, they dipp in our dish, they sitt by our fire, We find them in our Dy-fatt, Wash-bowle and Powdring tubb, they share with the Butler in his Box, They have marked and sealed from head to foote. Mr Speaker, they will not bate us a pynne, We may not buy our owne Cloathes, without their Broacage, These are the Leeches that have sucked the Comon Wealth soe hard, that it is almost become Hecticall’. Quoted in M Braddick, The Nerves of States. Taxation and the Financing of the English State, 1558–1714 (Manchester, Manchester University Press, 1996) 208–09. 75 At the end of the 1630s, the profit from soap was probably about £30,000 per annum, while Lord Goring contributed another £13,000 for the right to sell tobacco licences. Asch, ‘The Revival of Monopolies’ (n 72) 374. At the other end of the scale, William Barton paid an annual rent of £10 for his ‘engines which being put in order will cause and maintain their own motion’. Papers of John Bankes, MSS Bankes 11/2, f 12. Bodleian Library, Oxford.

Mansell v Bunger (1626) 19 prepared to help the King plan for the escalating crisis, they were divided into two categories: ‘receipts which are likely to continewe for the yeare 1642’; and receipts which were likely to ‘totally faile’.76 Tellingly, all the monopoly income fell into the latter category: without the Crown administration to enforce them, the monopolies were otiose. A similar document produced by the same exercise also categorised the King’s receipts according to whether they were likely to be ‘held illegal’. Again, the monopolies, including Mansell’s, were included under this heading, a fairly explicit recognition that the Crown was bending the law for its own purposes. Mansell, as well as Attorney-General v Rosse and Trumball, indicates that the Crown never had any intention of being bound by the terms of the Statute (and it should be noted that none of these three cases have ever been discussed in the historiography before now). Crown support for the legislation was unlikely to have ever been sincere: within months, the terms of patents for monopolies were being enforced in the Star Chamber and Privy Council. When the first substantive test of the common law’s jurisdiction occurred, two years after the Statute had been passed, the Crown entirely ignored its terms. This is not, however, to deny the importance of the Statute of Monopolies. When the administrative/legal apparatus of the monarchy was dismantled during the Civil War, a process confirmed by the Glorious Revolution, the statute provided the legislative foundation of the English patent system until it was finally reformed in 1852 by the Patent Law A mendment Act.77 Rather, it was not until the administrative/legal apparatus of the monarchy was dismantled during the Civil War, a process confirmed by the Glorious Revolution, that the Statute could take effect. In the aftermath of the Civil War, only two patentees attempted to enforce their patents in the Privy Council. The first instance was a petition from George Tomlyn, presented in 1661. Unfortunately for Tomlyn, the Council refrained from taking direct action, only instructing the Attorney-General to prosecute the infringers. This he was presumably reluctant to do, as in the following year Tomlyn was obliged to initiate legal action on his own behalf in the Court of Chancery.78 Similarly, a 1664 paper prepared for the Council stressed ‘That by the expresse words in the Statute against Monopolies, All M onopolies and all Priviledges of sole buying, selling, working, making or using anything, shall be examined, heard, tried and determined by the Common Lawes of the

76 C Russell, ‘Charles I’s Financial Estimates for 1642’ (1985) 58 Bulletin of the Institute of Historical Research 165. 77 Patent Law Amendment Act, 15 & 16 Vict c 83 (1852). 78 ‘Tomlyn v Stephens’, 1662. Chancery Pleadings before 1714, Bridges Division, C 5/43/113, National Archives, London.

20 Sean Bottomley Realme, and not otherwise … the Legality of a Patent, the Judges only can legally determine’.79 The final word should perhaps go to Hume, mentioned in the introduction, who had argued that the Statute had ‘establish[ed] principles very favourable to liberty’. Hume, though, also bemoaned Charles’s failure to abide the terms of the Statute: The most unpopular of all Charles’s measures, the most impolitic, the most oppressive, and even, excepting ship money, the most illegal, was the revival of monopolies, so solemnly abolished, after reiterated endeavours, by a recent act of parliament.80

79 Quoted in E Hulme, ‘Privy Council Law and Practice of Letters Patent for Invention from the Restoration to 1794’ (1917) 32 Law Quarterly Review 66–67. 80 Hume, The History of Great Britain (n 19) 247.

2 Stationers v Seymour (1677) H TOMÁS GÓMEZ-AROSTEGUI*

I. INTRODUCTION

I

NTEREST IN THE history of copyright law has grown remarkably in the last 30 years, especially the history of Anglo-American copyright. It is now a ‘discrete and popular field of academic inquiry’1 with scholars regularly revisiting court cases from the sixteenth through nineteenth centuries and sometimes even discovering new ones. Academics have paid particular attention to the origin of copyright in England because of its potential ripple effects on rhetorical, normative and doctrinal arguments over the proper scope of copyright law.2 The salient issue is whether copyright originated

* Research at institutions in Great Britain was made possible by a generous gift from Kay Kitagawa and Andy Johnson-Laird. Thanks also to Cassandra Mercer, Isabella Alexander, Lionel Bently, Jane Ginsburg, Oren Bracha, José Bellido and Simon Stern for comments on earlier drafts and to Sue Hurley, archivist of the Worshipful Company of Stationers and Newspaper Makers, for permitting me to review records at Stationers’ Hall. Special thanks also to Lionel Bently, David Waddilove, Sean Bottomley and Henry Mares for helping me track down documents while I was away from the UK. Any errors are mine alone. Sources that begin with AO (Audit Office), C (Chancery), CP (Common Pleas), KB (King’s Bench), PC (Privy Council), PROB (Probate), PSO (Privy Seal Office), SO (Signet Office), or SP (State Papers) are stored in the National Archives of the United Kingdom in Kew, England. Other depositories are abbreviated as follows: BL=British Library; Bodl=Bodleian Library; CLS=Columbia Law School; CUP=Cambridge University Press Archives; HLS=Harvard Law School; IT=Inner Temple Library; MT=Middle Temple Library; OUA=Oxford University Archives; OUP=Oxford University Press Archives; PFL=Philadelphia Free Library; SCA=Stationers’ Company Archive; and SJC=St John’s College Cambridge. In manuscript sources, I have left the orthography unchanged and expanded abbreviations by supplying the omitted letters in italics—eg wch becomes which, but I have expanded ye silently. Dates occurring on or before 2 September 1752 are not converted to the Gregorian Calendar. Moreover, as is customary, when an event falls between 1 January and 24 March, inclusive, prior to 1752, the year is given with a slash mark, eg 24 March 1711/2, but 25 March 1712. For dates of judicial and law officer appointments, I have relied on J Sainty, The Judges of England 1272–1990 (London, Selden Society, 1993); J Sainty, A List of English Law Officers, King’s Counsel and Holders of Patents of Precedence (London, Selden Society, 1987). 1 I Alexander and HT Gómez-Arostegui, ‘Introduction’ in I Alexander and HT GómezArostegui (eds), Research Handbook on the History of Copyright Law (Cheltenham, Edward Elgar, 2016) 1. 2 B Lauriat, ‘Copyright History in the Advocate’s Arsenal’ in ibid 7.

22 H Tomás Gómez-Arostegui as a natural or customary property right, protected at common law, or as a privilege created solely by the ‘Act for the Encouragement of Learning’ (1710), which scholars commonly call the Statute of Anne.3 These differing viewpoints carry hefty baggage because they set the historical basis of the right and offer insights as to its original purpose. Two landmark decisions on the subject are well known to scholars and have already been written about extensively. The first is Millar v Taylor, a King’s Bench decision from 1769. Relying on notions of property, natural justice and reason, the court ruled three-to-one that authors held a right at common law in their works, both before and after first publication, and that the Statute of Anne did not limit the right.4 Copyright was therefore perpetual. The second case is Donaldson v Becket, a House of Lords decision from 1774 that overturned Millar in part. The House held that copyrights in published works were governed by the Statute of Anne and its limited durations,5 meaning that newly published works would enter the public domain after 14 or 28 years. Although the decision did not determine the origin of copyright in England, a majority of the judges who spoke on the issue—and even a majority of the judges and speaking Lords combined—opined or allowed that an antecedent right did exist.6 The subject of this chapter, Stationers v Seymour (1677), played an important role in the aforementioned literary property debates. Although known to scholars, mostly for its early recognition of Crown Copyright, it has not received the same attention and in-depth study as Millar and Donaldson. At issue in Seymour was the validity of the patent for printing almanacs, which King James I had granted in perpetuity to the Company of Stationers in 1616. The defendant John Seymour had printed an almanac, written by John Gadbury, without licence of the Company. The Court of Common Pleas upheld the King’s right to grant the patent. According to printed reports of the case, the court offered a number of alternative grounds for doing so, including the following: [1] There is no difference in any material part betwixt th[e] [defendant’s] Almanack and that that is put in the Rubrick of the [Book of] Common-Prayer. Now the Almanack that is before the Common-Prayer, proceeds from a publick Constitution ; it was first settled by the Nicene Council, is established by the Canons of the Church [of England], and is under the Government of the Archbishop of

3

Statute of Anne 1710 (8 Anne c 19). Millar v Taylor (1769) 4 Burr 2303 (KB). 5 Donaldson v Becket (1774) 4 Burr 2408, 7 Bro PC (1st edn) 88 (HL); see also HT GómezArostegui, ‘Copyright at Common Law in 1774’ (2014) 47 Conn L Rev 1, 45–46. 6 HT Gómez-Arostegui, ‘A Reply to my Colleagues regarding Donaldson v Becket’ in E Cooper and R Deazley (eds), What is the Point of Copyright History? (Glasgow, CREATe, 2016) 45, 48. But see R Deazley, On the Origin of the Right to Copy (Oxford, Hart Publishing, 2004) 191–220. 4

Stationers v Seymour (1677) 23 Canterbury. So that Almanacks may be accounted Prerogative Copies…. [2] There is no particular Author of an Almanack : and then by the Rule of our Law, the King has the Property in the Copy.7

Other grounds were that the Crown had a superintendence over printing all books, that the House of Lords had already approved a broader patent, and that Parliament had implicitly approved the patent in the Printing Act of 1662.8 In the mid-to-late eighteenth century, proponents of common-law copyright often cited Seymour, alongside other printing-patent decisions, as evidence of a right in authors that antedated the Statute of Anne. Their argument was not that Seymour had expressly ruled in favour of commonlaw copyright, but that it had implicitly acknowledged as much by presupposing an intangible property right held by authors that persisted after the first publication of a work. Specifically, the Crown’s right in Seymour was thought to stem from authors in two ways: first, by the purchase or commissioning of the Book of Common Prayer, which contained the ‘almanac’ and had been compiled by the Archbishop at the direction of the Crown; and, second, under the maxim of derelict property. Insofar as Seymour based its ruling on a prerogative arising from elsewhere, proponents of authorial copyright believed it nevertheless demonstrated an incorporeal property, and that if the Crown could hold incorporeal property, authors could as well. On all these grounds, several judges in the literary property debates accepted Seymour and cases like it as persuasive precedent. Opponents, on the other hand, argued that Seymour ruled without any inkling of a property that could be held ab initio by ordinary subjects. By their lights, the right of the Crown to control the printing of almanacs arose due to the importance of the calendar contained therein, the King being head of the Church, or the Crown being seen at the time as having control over all printing. As one can imagine, Seymour has also drawn the attention of copyright historians. Nearly all scholarship covering the period before the Statute of Anne mentions or discusses the case.9 Some scholars see in the printed reports hints of a recognition of an author’s right, just as proponents did in the eighteenth century. Mark Rose, for example, has noted that ‘[p]erhaps

7

Stationers v Seymour (1677) 1 Mod Rep 256 (CP) 257–58. Stationers v Seymor (1677) 3 Keble 792 (CP) 792. Joseph Keble’s holograph of this printed report, which is identical in all pertinent respects, may be found at Bodl Rawl MS C.823, p 354. 9 See, eg, WS Holdsworth, ‘Press Control and Copyright in the 16th and 17th Centuries’ (1920) 29 Yale LJ 841, 853; H Ransom, The First Copyright Statute (Austin, University of Texas Press, 1956) 88; LR Patterson, Copyright in Historical Perspective (Nashville, Vanderbilt University Press, 1968) 88; J Feather, Publishing, Piracy and Politics: An Historical Study of Copyright in Britain (London, Mansell, 1994) 45–47; O Bracha, ‘Owning Ideas: A History of Anglo-American Intellectual Property’ (SJD, Harvard Law School 2005) 146, 154. 8

24 H Tomás Gómez-Arostegui in this decision we can detect some feeling for the author’s interest in controlling the publication of his texts’.10 And John Small has similarly noted that ‘[i]f the report is correct, [Chief Justice] North [of the Common Pleas] saw the right to print a book as a common-law right’.11 But others disagree. Howard Abrams, the biggest sceptic on this side of the pond, has written: The report of the case contains no discussion of any notions of authorship as the basis for the claimed right. This is worth noting when it is realized that the almanacs of the time, essentially no more than religious calendars, were particularly susceptible to the argument that they had no author and thus no basis for a claim of copyright. It demonstrates that although the royal patents were indeed a source of authority for an exclusive right to print, they embodied no notion of copyright as an author’s right arising from the act of creation.12

Many scholars today accordingly believe that it was wrong for proponents of common-law copyright to rely upon Seymour. This view tracks a broader one also held by some scholars that—contrary to the views of the majorities in Millar and Donaldson—authors held no intangible rights in their works prior to 1710, either before or after first publication. Any ability to control the first publication of a work stemmed not from any right in the work per se, the argument goes, but from the author’s ownership of the physical manuscript embodying it. And once the manuscript was transferred or published, that act manifestly ended any further control of the text by the author. Scholars also sometimes posit that it was only in the build-up to the Statute of Anne, as part of an effort to enact it, that we first see the argument that authors were the originators and proprietors of their own works; but it was not until the mid-to-late eighteenth century that copyright truly arose and was recognised as an intangible right stemming from an author and independent of chattel rights in a manuscript.13 This chapter revisits Seymour in light of newly discovered manuscript reports and records. As is often the case, these manuscripts augment and correct the printed reports.14 We will discover that students of the case—misled

10 M Rose, Authors and Owners: The Invention of Copyright (Cambridge MA, Harvard University Press, 1993) 23. 11 J Small, ‘The Development of Musical Copyright’ in M Kassler (ed), The Music Trade in Georgian England (Farnham, Ashgate, 2011) 233, 252–53. 12 H Abrams, ‘The Historic Foundation of American Copyright Law: Exploding the Myth of Common Law Copyright’ (1983) 29 Wayne L Rev 1119, 1148. Note that almanacs were often much more than just calendars. See EF Bosanquet, ‘English Seventeenth-Century Almanacks’ (1930) 10 The Library (4th ser) 361, 365–70; B Capp, Astrology and the Popular Press: English Almanacs 1500–1800 (London, Faber, 1979) 25–36. 13 See, eg, Patterson, Copyright (n 9) 5, 143–51, 159; Rose, Authors and Owners (n 10) 35–41, 59–65, 132–33; Deazley, Origin (n 6) 31–33, 69–74, 90, 93, 99–101; M Rose, Authors in Court (Cambridge MA, Harvard University Press, 2016) 24–35; S Teilmann-Lock, The Object of Copyright (London, Routledge, 2016) 16–18. 14 On the importance of manuscript reports to researchers and contemporary lawyers and judges, see J Oldham, ‘Detecting Non-Fiction: Sleuthing among Manuscript Case Reports for

Stationers v Seymour (1677) 25 in some instances by the printed reports—have often misunderstood the circumstances of the dispute. Some of the more common misconceptions include that the case was filed in the Court of King’s Bench, rather than in the Common Pleas; that it was decided in 1667, instead of 1677; that it was brought as an action for debt on the 1662 Act, rather than by information; that only one printing patent was involved, when there were actually two; that the Company owned the copyright in Gadbury’s almanac, when it did not; that Seymour did not claim a right to print the almanac in suit, when he did; that the court ruled ‘compilations’ had no certain authors, when it did not; and that the decision concerned rights in ‘almanacs’ generally, instead of merely the ‘calendar’ appearing within almanacs. This chapter will examine all the grounds discussed in Seymour, but it pays particular attention to the most contentious one: that counsel and the court had grounded the argument and decision at least in part on an intangible property (or ‘propriety’, as it was sometimes called) stemming from or analogous to a right held by authors. The copyright analogy appeared in only one of the two printed reports of the decision,15 and what was reported there was fairly lean. One aim of this chapter is to demonstrate that the property argument arose in a more developed manner, particularly both in how it was presented by counsel as rooted in an author’s labour and when considered alongside other arguments of counsel from the seventeenth century. To be sure, drawing an analogy between the rights of the Crown and authors was not a perfect fit. Yet, what is most important is that the link was being made at all. In order to make such a connection, lawyers and judges must have believed that an author’s right in literary property was a plausible and legitimate basis for argument, despite the fact no statute before 1710 expressly mentioned the rights of authors. In light of these findings, Seymour appears more probative of authorial rights than sceptics have previously supposed, and thus the decision of some judges to rely on it as evidence of a common-law right in authors should be viewed more favourably. Part II below describes some of the legal landscape that governed printing rights until 1710. Understanding as much helps situate Seymour. Part III then recounts how counsel and judges cited and depicted Seymour in four important cases during the literary property debates of the mid-to-late eighteenth century. Lastly, Part IV reconstructs Seymour and traces it through two venues: the Privy Council and the Court of Common Pleas.

What was Really Said’ in C Stebbings (ed), Law Reporting in Britain (London, Hambledon, 1995) 133; J Oldham, ‘The Indispensability of Manuscript Case Notes to Eighteenth-Century Barristers and Judges’ in A Musson and C Stebbings (eds), Making Legal History (Cambridge, Cambridge University Press, 2012) 30. 15

Compare 1 Mod 256 (present) with 3 Keble 792 (absent).

26 H Tomás Gómez-Arostegui II. THE LEGAL LANDSCAPE TO 1710

Before the Statute of Anne was enacted in 1710, there were a number of sources of exclusive printing rights in England, apart from the possibility of the common law. The earliest of which we have any record and the one most pertinent for our purposes is the royal privilege to print, which the Crown typically granted by letters patent to a bookseller (ie publisher), printer, author or other subject.16 Privileges usually gave the holder the sole right to print a certain work or a whole ‘class’ of works, such as all almanacs in English. The length of privileges varied. Most were for a term of years and a few for the life of the grantee, but due to renewals and reversions, many privileges were effectively perpetual. Printing and publishing a work did not terminate a patentee’s rights, as patents envisioned multiple printings. Apart from bestowing rights, these privileges sometimes contained remedial provisions imposing penalties and forfeitures for infringement. These remedies typically exceeded what would otherwise be available at common law or in equity. Four class patents emerged as the most litigious. The first was the patent for the office of the King’s Printers, which granted the holder the sole right to print all proclamations, statutes and other Acts of Parliament, along with the Bible and Book of Common Prayer. The second was the patent for the office of the King’s Printers for printing all books written in Latin, Greek and Hebrew, which became most closely associated with the Latin grammars attributed to William Lily. A third class patent covered all books touching or concerning the common laws of England and (starting in the late sixteenth century) two specifically named abridgments of statutes compiled by William Rastell and Ferdinando Pulton. The last major patent covered primers, psalters, psalms, almanacs and prognostications in English. Following prior, often separate patents, King James I granted this consolidated patent in perpetuity to the Company of Stationers in 1603 and regranted it in a broader form in 1616. The Company was, for those who are unfamiliar with it, the mistery governing printers, booksellers and others in the book trade in the City of London.17

16 See generally A Hunt, ‘Book Trade Patents, 1603–1640’ in A Hunt, G Mandelbrote and A Shell (eds), The Book Trade & Its Customers 1450–1900 (Winchester, St Paul’s Bibliographies, 1997) 27; M Grant Ferguson, ‘A Study of English Book-Trade Privileges During the Reign of Henry VIII’ (DPhil thesis, University of Oxford 2003); PWM Blayney, The Stationers’ Company and the Printers of London 1501–1557 (Cambridge, Cambridge University Press, 2013) vol 1, 130–73, vol 2, 952–59. For a contemporary description of the process for passing letters patent under the Great Seal, see SP18/42, f 9r (c Dec 1653). 17 I Gadd, ‘The Stationers’ Company in England before 1710’ in Alexander and GómezArostegui, Research Handbook (n 1) 81–95.

Stationers v Seymour (1677) 27 The almanac patent of 1616 is directly relevant to this chapter. It states in pertinent part: [W]ee … doe give and graunte vnto the [Company of Stationers] … full power priviledge and authoritie that they the said [Company] … shall and maie att all times and from time to time for ever printe and cause to be printed all manner of Almanackes and Prognosticacions whatsoever in the Englishe tongue and all manner of bookes and pamphlettes tendinge to the same purpose and which are not to bee taken and Construed other then Almanackes or Prognosticacions beinge allowed by the Archbishoppe of Canterburie and Bishopp of London or one of them …. [B]y these presentes … wee doe straightlie charge prohibite and commaunde all and singuler other Printers Bookesellers and all other[s] … that they or anie of them at anie time or times hereafter shall not printe or cause to bee printed or brought from the partes beyonde the Seas anie of the saide Almanackes [or] Prognosticacions … nor buy vtter or sell or cause to be boughte vttered or sould anie other Almanackes [or] Prognosticacions … then such onelie as shall bee printed by the said [Company.]18

The system of royal patents was supported for much of the early modern period by various regulations. The Privy Council and Court of Star Chamber, sitting in a quasi-legislative capacity, issued decrees in 1566, 1586 and 1637 that generally followed the same form. They recognised a primary right in the printing of books, instituted other prohibitions that were derivative of that right, and supplied remedies. The 1637 decree, for instance, forbade the printing of books that a person had the sole right to print by virtue of any letters patent. Derivatively, the decree then prohibited the importation, binding, stitching or sale of infringing copies. Offenders were subject to search, penalties, forfeiture of illicit books, banishment from the trade, and in some cases imprisonment. Books were also to be examined and allowed by licensors before they were printed.19 After the abolition of the Star Chamber in 1641, similar legislative support continued from 1643–51 and 1653–60 during the Civil Wars and Interregnum. The last statute to regulate printing rights before the Statute of Anne was the Printing Act of 1662. Like its predecessors, the Act imposed pecuniary penalties (6s 8d per infringing book, recoverable at law), forfeiture of illicit books, banishment from the book trade, and in some cases imprisonment. It further required that most books be licensed by censors before printing them.20 The 1662 Act lapsed in March 1678/9, was revived in June 1685, and then expired permanently in May 1695. After a number

18 Patent of the Company of Stationers for Almanacs &c, C66/2072, no 1 (8 March 1615/6); cf Patent of the Company of Stationers for Almanacs &c, C66/1619, m 31 (29 October 1603). 19 Decree of Star Chamber 1637, in E Arber (ed), A Transcript of the Registers of the Company of Stationers London 1554–1640 A.D. (London, 1875) vol 4, 528, 529–36. 20 Printing Act 1662 (13 & 14 Car 2 c 33) ss 3, 6, 15, 16.

28 H Tomás Gómez-Arostegui of unsuccessful attempts to revive the 1662 Act, a group of booksellers petitioned Parliament in December 1709 to enact a new copyright statute to replace what had come before. In their view, authors and their assigns held common-law copyrights in perpetuity in their works, but the remedy available at common law—ordinary damages and limited costs—was inadequate. They thus asked that the new statute revive the remedies available under the 1662 Act and proposed a bill with no limits on copyright duration.21 Parliament accommodated some of the booksellers’ requests. The Statute of Anne, which came into force on 10 April 1710, included penalties and forfeitures for those right holders who registered their books. But its terms were limited. The statute protected all books first published on or after 10 April for 14 years from first publication (and ‘no longer’), with a possible additional term to the author of another 14 years if she was still living at the expiration of the first. A legacy clause protected works published before 1710, but only for 21 years from the statute’s effective date, meaning through 1731. Notably, an ambiguous savings clause complicated matters by suggesting that Parliament intended to preserve a pre-existing form of common-law copyright.22 For the most part, infringement cases litigated from 1710 to 1731 did not need to squarely address the common law, as right holders could rely on statutory protection. But that changed with time, and it eventually fell to the courts of England in the mid-to-late eighteenth century to tackle whether a common-law copyright existed in authors independent of the Statute of Anne, and, if so, whether the statute pre-empted the right so as to limit its perpetual duration. III. ROLE IN THE LITERARY PROPERTY DEBATES

Precedent played an important role in the literary property debates.23 When asked to rule on whether the common law recognised a right in authors prior to the Statute of Anne, litigants and judges naturally inquired whether a court in England had previously decided the issue. Finding prior cases

21 Commons Journal (12 December 1709) vol 16, 240; The Case of the Booksellers Right to their Copies, or Sole Power of Printing their Respective Books, Represented to the Parliament (c 1709/10); A Bill for Encouragement of Learning, and for Securing the Property of Copies of Books to the Rightful Owners Thereof (c 1709/10). 22 Statute of Anne 1710 (8 Anne c 19) ss 1, 9, 11. 23 On the role of precedent and stare decisis in the 16th through 18th centuries, see DJ Ibbetson, ‘Case Law and Judicial Precedents in Mediaeval and Early-Modern England’ in S Dauchy, J Monballyu and A Wijffels (eds), Auctoritates. Xenia R.C. van Caenegem Oblata (Brussels, AWLSK, 1997) 55, 61–68; J Oldham, ‘Lord Mansfield, Stare Decisis, and the Ratio Decidendi 1756 to 1788’ in WH Bryson and S Dauchy (eds), Ratio Decidendi: Guiding Principles of Judicial Decisions (Berlin, Duncker and Humblot, 2006) 137; I Williams, ‘Early-Modern Judges and the Practice of Precedent’ in P Brand and J Getzler (eds), Judges and Judging in the History of the Common Law and Civil Law (Cambridge, Cambridge University Press, 2012) 51.

Stationers v Seymour (1677) 29 was no easy task. The printed reports represented only a small fraction of the infringement cases that were filed, and mustering manuscript records and reports was difficult. There were no subject-matter indices to the court records and most manuscript reports remained in private hands.24 Also hampering searches was the fact that records of the common-law courts before 1733 were, for the most part, written in Latin and court hand.25 Due to these impediments, lawyers often relied on their own recollections of cases or on the resources of their colleagues or Inns. When it came to literary property, litigants and judges found only a handful of cases decided before 1710—both in court records and printed reports—and none of them squarely addressed the issue at hand. In Tonson v Collins, for example, counsel for the plaintiffs noted that ‘[f]ew Precedents [were] to be met with in the Books’.26 Chief Justice Mansfield acknowledged as much, stating: ‘I do not remember from my own notes any law in Point of Time before the Year 1709 or thereabouts or 1710’.27 Similarly, judges in Millar v Taylor and Donaldson v Becket also noted the absence of authorities directly on point.28 Being without direct authority, proponents of the right instead relied upon a number of cases that obliquely addressed the issue, such as cases deciding whether various printing patents were valid. Stationers v Seymour was among those cases and featured prominently. A tract writer noted its relevance in 1762: It is true, that the precise question now under solemn deliberation … is of the first impression : therefore, where we cannot rest our argument on a positive adjudication, we must be content to reason by analogy and inference : and the first case which occurs for this purpose is that of the Company of Stationers against Seymour.29 24 See HT Gómez-Arostegui, ‘What History Teaches Us About Copyright Injunctions and the Inadequate-Remedy-at-Law Requirement’ (2008) 81 S Cal L Rev 1997, 1222–25 (describing copyright litigation records in the Court of Chancery); WH Bryson, ‘Law Reports in England from 1603 to 1660’ in Stebbings, Law Reporting (n 14) 113 (describing gaps in the printed reports); J Oldham, ‘Underreported and Underrated: The Court of Common Pleas in the Eighteenth Century’ in H Hartog and WE Nelson (eds), Law as Culture and Culture as Law (Madison, Madison House Publishers, 2000) 119 (same); Oldham, ‘Indispensability’ (n 14) 31–36, 51 (same). 25 See W Blackstone, Commentaries on the Laws of England (Oxford, 1768) vol 3, 322–23 (‘[M]any clerks and attorneys are hardly able to read, much less to understand, a [commonlaw] record .… [T]he reading of any record that is forty years old is now become the object of science, and calls for the help of an antiquarian.’); A Wright, Court Hand Restored (London, 1776) 1–7 (making a similar observation). 26 Tonson v Collins (1761) 1 Bl R 301 (KB) 305 (Wedderburn arg). 27 Tonson v Collins (1761) BL Add MS 36201, ff 53, 84 (KB). 28 Millar v Taylor (1769) 4 Burr 2303 (KB) 2315–17 (Willes J); ibid 2347 (Aston J); ibid 2367 (Yates J); ibid 2405 (Lord Mansfield); Donaldson v Becket (1774) Morning Chronicle (19 February 1774) 2 (HL) (Perrot B); ibid (23 February 1774) 2 (De Grey CJ); ibid (24 February 1774) 2 (Lord Camden). 29 A Vindication of the Exclusive Right of Authors to their Own Works (London, 1762) 18.

30 H Tomás Gómez-Arostegui Seymour appeared early on in Tonson v Walker, the first suit in a printed law report30 to squarely address common-law rights. The plaintiffs claimed to own the copyright in John Milton’s Paradise Lost, a book first published in 1667. The plaintiffs’ edition of 1749 was newly annotated with marginal notes by Thomas Newton. Robert Walker and his co-defendant John Marchant, who had recently edited his own version of Paradise Lost, answered that Milton’s book was in the public domain and that, although they had also taken from Newton’s notes, what they took constituted a fair abridgment. On a motion for an injunction until the hearing,31 William Murray (the Solicitor General for England) made two principal arguments: first, a common-law right in published works predated the Statute of Anne, and, second, the statute did not pre-empt the right but simply augmented the remedies. In support of the first proposition, Murray relied in part on Seymour: ‘There[,] [counsel] argued from the principle of property in the author, and it was admitted on the other side; and the Court said that almanacks might belong to the crown, because there was no particular author’.32 Lord Hardwicke granted the injunction on two grounds: the Statute of Anne and the common law. First, the defendants’ book incorporated text— Newton’s notes—that was within the statutory period. But he also prohibited the defendants from printing Milton’s Paradise Lost alone.33 To be sure, Lord Hardwicke expressed some doubts about whether a common-law right existed and persisted in the underlying work, but he thought the argument reasonable enough to enjoin Paradise Lost in the disjunctive. In this respect, it appears that he did so in large part because of Seymour: The strongest thing is, what is said by the judges in Seymour’s case, arguing on the general right. In cases on grants by the Crown of exclusive publication of particular books, as Bibles, Prayer-books, acts of parliament, and year-books, the general argument in favour of the patentee has been, that the books were made at the expense of the Crown, and, therefore, the property is in the Crown. And these cases are used as tending to prove a general right in the author.34

30

Tonson v Walker (1752) 3 Swanst 672 (Ch) (albeit not printed until 1827). A ‘hearing’ in the Court of Chancery was its equivalent of a trial. For more on Chancery procedure in infringement suits, see HT Gómez-Arostegui, ‘Equitable Infringement Remedies before 1800’ in Alexander and Gómez-Arostegui, Research Handbook (n 1) 195. 32 3 Swanst 673. 33 Tonson v Walker (1752) C33/398, f 322r; see also Tonson v Walker (1752) BL Add MS 36193, ff 142–43 (copy of the writ of injunction). Suggestions that the injunction was on the statute only are mistaken. See, eg, Millar v Taylor (1769) 4 Burr 2303 (KB) 2379–80 (Yates J). 34 3 Swanst 680; see also Tonson v Walker (1752) BL Hargrave MS 470, pp 287, 289–90, CLS MS G 79(3), ff 118, 119. Nine years later, after he was appointed to the bench and ennobled as Lord Mansfield, William Murray recalled that Lord Hardwicke had ‘leant to the Property’ in Walker because of cases like Seymour. See Tonson v Collins (1761) 1 Bl R 301 (KB) 311. 31

Stationers v Seymour (1677) 31 Seymour also featured in Tonson v Collins, a case argued twice in the Court of King’s Bench in 1761 but ultimately not determined. The plaintiffs claimed to have inherited the copyrights in The Spectator, a periodical that ran initially from 1711 to 1712. By the time the defendant had begun to produce unlicensed copies, the statutory copyrights had expired and an action could proceed only on a copyright at common law.35 The case was tried by a jury and a special verdict found. The jury determined that the Tonsons held the copyrights in the work and that the defendant had sold unauthorised copies, but they left it to the judges to determine whether the facts as found truly contravened the common law. During the first argument, counsel for the plaintiffs cited Seymour, arguing among other things that the Crown could grant printing patents in works either compiled at its own expense or where the owner was not known. In the latter instance the works became derelict property that fell to the Crown to administer.36 When the case was reargued the following term, William Blackstone, counsel for the plaintiffs, also relied on Seymour: I shall now go on to lay before the Court the several Cases at Law, which clearly shew, that when any laws relating to the prerogative of printing was brought before the Court it was principally argued & determined upon the foot of a property in the Copy, supposed to be existing in the Crown .… [In Seymour,] [t]he Court grounded its judgment upon the Fact of the Copy rights existing before, First they say These Almanacks having no certain Author they belong to the Crown as Derelicts, Secondly because they are part of the Liturgy [ie Book of Common Prayer] videlicet the Calendar[.]37

Ultimately, Collins was never determined in the King’s Bench due to suspicions that the action was collusive. A subsequent order to have the case heard by all the common-law judges of England in the Exchequer Chamber was later abandoned when the suspicions were confirmed. Nevertheless, a contemporary source indicates that all the judges of the King’s Bench, at least, were inclined to rule in favour of a copyright at common law in published works.38 It did not take long for common-law copyright to rear its head again, but this time copyright holders finally obtained their judgment. In 1763, Andrew Millar sued Robert Taylor in the Court of Chancery for infringing a series of poems by James Thomson collectively called The Seasons. Taylor parried that the statutory copyrights had expired. Sitting by designation, Baron Smythe of the Court of Exchequer ordered the parties to state a

35

Tonson v Collins (Trin 1759 bill) KB122/299, rot 79. Tonson v Collins (1761) 1 Bl R 301 (KB) 304–05 (Wedderburn arg). 37 Tonson v Collins (1761) BL Add MS 36201, ff 53, 63, 64–65 (KB); see also Tonson v Collins (1761) 1 Bl R 321 (KB) 328 (Blackstone arg). 38 See Millar v Taylor (1769) 4 Burr 2303 (KB) 2327 (Willes J); ibid 2400 (Lord Mansfield). 36

32 H Tomás Gómez-Arostegui case for the King’s Bench to determine whether Millar could hold a copyright.39 The case then moved to the King’s Bench where, in 1769,40 the court endorsed a copyright based on property, natural justice and reason. The majority, which consisted of Chief Justice Mansfield and Justices Willes and Aston, held that authors of literary works and their assigns had a right at common law to control the first publication and any subsequent multiplication of their works. This right existed independent of the Statute of Anne and survived it.41 The lone dissenter, Justice Yates, concurred that authors had a common-law right to control the first publication of a work, but he recoiled at the idea that they could control multiplication afterward. As far as he was concerned, the statute created the right in published works.42 Here, too, Seymour and cases like it were the subject of discussion, with all the judges in the majority relying on them. Justice Willes recognised that Seymour was decided at a time when the prerogative ran high, but it still proved that ‘Copy-Right was at that Time a well-known Claim’.43 He noted that a copyright, stemming from employment of or purchase from the author, supported some patents, while others were based on a more general right of property which he nevertheless thought was analogous to the rights of authors: It is settled, then, ‘that the King is Owner of the Copies of all Books or Writings which he had the sole Right originally to publish ; as Acts of Parliament, Orders of Council, Proclamations, the Common-Prayer Book.’ These and such like are his own Works, as he represents the State. So likewise, where by Purchase he had the Right originally to publish …. And in these last Cases the Property of the Crown stands exactly on the same Footing as Private Copy-Right : As to the YearBooks, because the Crown was at the Expence of taking the Notes ; and as to the Latin Grammar, because it paid for the Compiling and Publishing it.44

Justice Aston also looked to Seymour and stated that the idea of an author’s property was ‘strongly supported by the concurrent Sense of Judges, to be collected from the Expressions they have made Use of in Cases at Common Law’.45 Chief Justice Mansfield adopted the arguments of his colleagues and made a few observations of his own regarding the patent cases: Crown-Copies are, as in the Case of an Author, civil Property : which is deduced, as in the Case of an Author, from the King’s Right of Original Publication. The Kind 39 Millar v Taylor (1765) C33/426, ff 68v–69r; see also (1766) C33/426, f 325r (modifying order on rehearing to require Millar to file an action at law rather than state a case for the judges). 40 Millar v Taylor (20 April 1769, nunc pro tunc 7 June 1768, judg) KB122/338, rot 372. 41 4 Burr 2312–14, 2334–35 (Willes J); ibid 2354 (Aston J); ibid 2395–99 (Lord Mansfield). 42 ibid 2355–56, 2378–79. 43 ibid 2317. 44 ibid 2329; see also ibid 2315–17, 2328–29, 2332. 45 ibid 2347.

Stationers v Seymour (1677) 33 of Property in the Crown or a Patentee from the Crown, is just the same …. [T]he English Translation [of the Bible] he bought : Therefore it has been concluded to be his Property…. The King has no Power or Control over the Subject-Matter : His Power rests in Property. His whole Right rests upon the Foundation of Property in the Copy by the Common Law…. Whatever the Common Law says of Property in the King’s Case, from Analogy to the Case of Authors, must hold conclusively, in my Apprehension, with regard to Authors.46

Discussing Seymour, Lord Mansfield noted that the Company’s counsel in 1677 had seen the necessity of analogising the Crown’s right to property.47 Justice Aston and Lord Mansfield ultimately rejected the notion that derelict works passed to the Crown—the works would instead become ‘common’—but they still saw support for authorial copyright in the premise that underlay it.48 Justice Yates, dissenting, distinguished Seymour, suggesting that the decision rested solely on notions of public concern and safety rather than authorial property: The King’s Right to … [almanacs] is, as Head of the Church, and of the political Constitution.… Upon the whole of this Prerogative Claim of the Crown, it appears to me, that the Right of the Crown to the sole and exclusive printing of what is called Prerogative Copies, is founded on Reasons of Religion or of State. The only Consequences to which they tend are of a national and public Concern, respecting the established Religion, or Government of the Kingdom ; and have no Analogy to the Case of private Authors.49

He stressed that the Crown’s property differed from what was now being claimed for authors. ‘[T]he King does not derive this Right from Labour, or Composition, or any one Circumstance attending the Case of Authors’.50 He also disputed the ramification of the Crown purchasing some of the works granted by patents. The title in the works would run to the public, not the King.51 Donaldson v Becket formed the last case of the eighteenth-century debates on literary property in England. First filed in the Court of Chancery in 1771, Thomas Becket and others sued Alexander and John Donaldson for infringing The Seasons—the same work that was at issue in Millar. The Donaldsons countered that the work had fallen into the public domain. At the hearing, Lord Chancellor Apsley perpetually enjoined the defendants and ordered them to disgorge any profits they had earned.52 The Donaldsons

46

ibid 2401, 2405; see also ibid 2396, 2401–05. ibid 2402. 48 ibid 2347 (Aston J); ibid 2402 (Lord Mansfield). 49 ibid 2382–83. 50 ibid 2383–84. 51 ibid 2384. 52 Becket v Donaldson (1772) C33/439, ff 26r–27r. 47

34 H Tomás Gómez-Arostegui appealed to the House of Lords, which reversed, thus ending perpetual copyrights in published works.53 The details of that complicated proceeding are beyond the scope of this chapter, and unfortunately the reports of the case are often only short approximations of what was said. But it appears that counsel and judges on both sides of the issue recycled many arguments from Millar.54 Lord Camden, who most vocally opposed the common-law right, made certain to distinguish and disparage Seymour along the same lines as Justice Yates. He sarcastically addressed the portion of Seymour that relied upon derelict property: ‘Printing belongs to nobody, and what is nobody’s is of course the King’s…. Away with such trifling!’55 Ultimately, the House of Lords ruled that published works were subject to the durational limits of the Statute of Anne. The decision did not determine the origin of copyright in England, but a majority of the judges who advised the House on the issue—and even a majority of the judges and speaking Lords combined—opined or allowed that an antecedent right did exist. Thus, it was common for observers in the late eighteenth century and beyond to read Donaldson, sometimes in combination with Millar, as predominating in favour of an antecedent right in literary works, both before and after first publication.56 It is now time to look more closely at Seymour. IV. STATIONERS v SEYMOUR REVISITED

The dispute between the Company of Stationers and Captain John Seymour arose because Charles II had granted Seymour his own patent in 1669 for printing almanacs and certain works of Classical and instructional literature.57 That Seymour held his own patent is a fact often overlooked by copyright

53

Donaldson v Becket (1774) 34 Lords Journal 32 (HL). eg, F Hargrave, An Argument in Defence of Literary Property (London, 1774) 50 (‘These [patent cases] are important Cases; for they are the strongest precedents in favor of a property in copies at common law.’); Donaldson v Becket (1774) Case of the Respondents (HL) iii (‘[T]he Reasons … on which Authors claim an Interest in their own private Copies, are not precisely the same as those from which the Interest of the Crown in Public Copies is derived, yet they are not less forcible’.); Donaldson v Becket (1774) Case of the Appellants (HL) 7 (‘Prerogative Copies … [are] upon Principles of public Utility…. Property … is not the Foundation of Prerogative Copies.’). 55 Donaldson v Becket (1774) Morning Chronicle (24 February 1774) 2 (HL); see also, eg, ibid (23 February 1774) 2 (De Grey CJ); Gentleman’s Magazine (London, February 1774) vol 44, 51, 56 (Eyre B). 56 Gómez-Arostegui, ‘Reply’ (n 6) 48; Gómez-Arostegui, ‘Copyright’ (n 5) 45–46. 57 Patent of John Seymour for Classics, School Books and Almanacs, C66/3111, no 14bis (7 October 1669). An earlier attempt to grant him a similar patent failed due to a caveat objection lodged by members of the Company after the grant had passed the Privy Seal. See King’s Bill, SO7/14 (15 October 1664); Privy Seal Docquet, PSO5/10 (October 1664); Prohibition, 54 See,

Stationers v Seymour (1677) 35 historians. The printed reports are to blame; one makes no mention of Seymour’s patent, and the other only alludes to it. Relatively little is known of Seymour. The son of staunch Royalist Sir Edward Seymour, 2nd Baronet, and brother of Henry and Sir Joseph Seymour,58 he was not trained in the book trade, but instead received his patent as a reward for service rendered to Charles II during the I nterregnum and Restoration. According to the patent, Seymour had ‘by our speciall Command and for our service made severall Journyes and voyages beyond the seas all which hee hath performed with great fidelity diligence and successe’. Such was the closeness of Seymour’s family to the Stuarts that his brother Henry had delivered the last messages between Charles I and Charles II before the former’s execution in January 1648/9.59 As a further reward for his loyalty, Charles II also appointed Seymour, along with his brother Henry, as Comptroller of Customs for the Port of London for life, and granted him a reversion, alongside his nephew Hugh, as Under-Searcher for the Port of London. Seymour even served as a Gentleman of the King’s Privy Chamber.60 Not being a printer, Seymour simply partnered with others who were. But his decision to enter a trade so far outside his domain remains a mystery. One can only imagine it had something to do with the lucrative market for the books mentioned in his grant, although I doubt Seymour anticipated the fight ahead. A. The 1669 Patent Seymour’s patent (which is transcribed in the Annex at the end of this chapter) ran for 41 years from 7 October 1669 and contained two grants: one related to certain ancient Classics, early modern Latin and Greek works, SP44/16, p 298 (21 December 1664). Seymour acquiesced to the objection. See, eg, SCA Court Book D, f 118r (2 April 1666), f 119v (8 June 1666). Soon after, the Company secured its own patent for some of the same school books that had been listed in Seymour’s abandoned 1664 grant. Patent of the Company of Stationers for School Books, C66/3084, no 16 (11 October 1666). See also text to n 159. 58 See [T Wotton], The English Baronetage (London, 1741) vol 1, 103–08; A Collins, The Peerage of England, 5th edn (London, 1779) vol 1, 174 (erroneously suggesting that John Seymour had died at a very young age); Will of John Seymour, PROB11/359, f 87v (will 20 July 1678; probate 21 January 1678/9); Will of Henry Seymour, PROB11/387, f 181v (will 21 July 1685; probate 3 May 1687); Will of Sir Joseph Seymour, PROB11/445, f 139r (will 4 May 1687; probate 5 April 1698). 59 [A Wood], Athenæ Oxonienses (London, 1692) vol 2, 523. 60 Patent of Henry and John Seymour for Comptroller of Customs for the Port of London, C66/3038, no 22 (18 August 1663); Patent of John and Hugh Seymour for Office of UnderSearcher for the Port of London, C66/3088, no 5 (16 October 1667); Petition of John Seymor, SP29/368, f 252 (c 1674) (noting that Captain Hugh Seymour, his nephew, had died in the Dutch naval wars); E Chamberlayne, Angliæ Notitia, 8th edn (Savoy, 1674) 182 (noting his place in the Privy Chamber).

36 H Tomás Gómez-Arostegui and school books; the other related to almanacs. As to the first, Charles II granted Seymour ‘full power lycence priviledge and sole authority that itt shall and may bee lawfull for him … onely to Imprint vtter and sell or cause to bee imprinted vttered and sould’ certain enumerated books, ‘whereof noe other person cann clayme the direct property by vertue of any Graunt duely obteyned from us or any of our royall Predecessors’. Some of the works listed included Erasmi Opera (Works of Erasmus), Plinii Epistolæ (Letters of Pliny), Homeri Opera cum Clave (Works of Homer with key), Isocratis Opera (Works of Isocrates), and Janua Linguarum (Door of Languages). The second part granted Seymour the same bundle of rights regarding ‘all Almanacks and prognostications’ but limited his authority in this respect to those ‘whose Originalls the said John Semour … cann purchase and obteyne from the respective Authors thereof dureing the said Terme’. The word ‘Originalls’ is ambiguous. Counsel for the Company later treated it as synonymous with the word ‘copies’, itself an ambiguous term which at the time could mean intangible rights in a work, physical copies of a work, or both depending on the context in which it was used. Counsel also appeared to interpret ‘Originalls’ to refer to ‘new’ almanacs and prognostications.61 The difference between the two grants is remarkable. The language of the patent, which had been examined and approved by Heneage Finch, the Solicitor General,62 is an indication that the drafter believed that authors held a right to exclude. Whereas the first grant treats the books as derelict, which the Crown could grant alone,63 the second expressly depends on the permission of authors. Unfortunately, the precise contours of the right are not fully expressed. The patent also contained a savings clause which appeared to make the almanac grant subject to, and limited by, prior patent grants: [P]rovided allwayes that if the lycense or priviledge of printing of any of the said severall Bookes bee allready by vs or any of our Predecessors graunted to any of our Subiects[,] and the Graunts thereof still in being[,] Our will and pleasure is and wee doe by theise presents … give and graunt vnto the said John Seymour … full and sole power license and authority to Imprint vtter and sell or cause to be Imprinted vttered and sold such of the said Bookes soe formerly graunted as aforesaid from and after the Expiration surrender or other sooner determination of every such respective Graunt or Graunts[.]

61

See text to nn 66–68 below. King’s Bill, SO7/24 (6 October 1669); Signet Office Docquet, SO3/16, p 270 (October 1669). 63 cf Case and Opinion, Henry Trinder, SCA Court Book E, ff 123r, 123v (29 May 1681) (‘I conceive … that … [certain] Latin Coppies [in a grant to the Company] being (as I take them) such as none had particular property in, are at the Kings dispos[al] … by that part of his prerogative which intitles him to strayes[,] treasure trove &c because the property is in no other’.). 62 See

Stationers v Seymour (1677) 37 Not long after the grant, the Company and Seymour entered into negotiations in an effort to reach an accommodation. For a time, he even offered to sell his patent to the University of Oxford.64 These efforts all failed. Believing he had a right to print, Seymour began to acquire copyrights in almanacs and print them. Note that in the late seventeenth century it was already common for booksellers and their lawyers to use the term ‘copyright’ (in place of the more ambiguous ‘copy’) to refer to an intangible right in a work—as distinct from the tangible manuscript embodying it— that authorised one to print and publish the work indefinitely.65 In S eymour’s view, the Company at best had the sole right to print mechanically all almanacs (that authors had authorised for publication) with the exception of those almanacs sold to him. Alternatively, the Company’s patent was invalid. Although the second proposition might have put his own patent at risk, Seymour seemed content to fall back, if necessary, on whatever rights the authors of almanacs had given him. A contemporaneous opinion of counsel, solicited by the Company, corroborated this view. William Jones opined that the ‘graunt to [Seymour] to imprint such bookes as he shall lawfully obtayn the copyes of will be good[,] Though in truth he will have right to such copyes without the help of this patent’.66 Jones further opined that the Company’s patent was void. To permit the Crown to control the mechanical printing of all almanacs, he advised, could lead down a slippery slope in which one could control the printing of books in any one science or ‘about as many subjects as can be enumerated[,] which would be a playn Monopoly … by the Common Law’.67 He concluded by stating that the Company’s patent would ‘be noe hindrance to [Seymour] to acquire the copys of such new bookes as noe other had the right to before him’.68 The Company also received advice from Heneage Finch, by then Attorney General, who took a different view. He opined that ‘Mr Seymour cannot 64 C Blagden, The Stationers’ Company: A History, 1403–1959 (London, George Allen and Unwin, 1960) 194–95; see also Letter of Thomas Yate to Leonel Jenkyns, SP29/292, f 125 (24 August 1671); Letter of John Fell to Leoline Jenkins, SP29/292, f 145 (27 August 1671); Letter of Thomas Yate to Leonel Jenkyns, SP29/292, f 146 (27 August 1671). For the Company’s efforts during this period to suppress almanacs printed by or for the university, see H Carter, A History of the Oxford University Press (Oxford, Clarendon Press, 1975) 54–70, 78–80. 65 See, eg, Chiswell v Lee (1681) C10/209/24, no 1 (signed by Henry Trinder); R Pawlett v Lee (1681) C10/202/96, no 1 (same); Herringman v Clerke (1681/2) C8/301/33, no 1 (signed by Henry Trinder and Anthony Keck); B Pawlett v Lee (1683/4) C10/211/60, no 1 (signed by Samuel Kecke); B Pawlett v Smith (1685) C10/218/34, no 3 (signed by John Denne); Brewster v Newcombe (1696/7) C5/148/61 (signed by Richard Webb); Braddyll v Hartley (1698) C9/165/37, no 1 (signed by Henry Penton); see also E Pawlett v Minshall (1701) C7/272/53, no 1 (signed by William Peere Williams); Meredith v Wellington (1701) C7/234/42, no 1 (signed by William Peirson); Tonson v Hills (1706) C8/623/33, no 1 (signed by Nicolas Rowe); Rogers v Hills (1708) C5/342/64, no 1 (signed by William Barnesley); Wellington v Mortier (1708) C5/276/36, no 1 (signed by John Browne). 66 Case and Opinion, William Jones, SCA Series I, box B2, item ii (9 October 1671). Within a few years, Jones became Solicitor General (1673–74/5) and Attorney General (1674/5–79). 67 ibid. 68 ibid.

38 H Tomás Gómez-Arostegui print any Almanacks by virtue of his Letters Patents but is hindred by the Precedent Patents to the Company of Stationers’.69 As a consequence of this advice, the Company seized and destroyed Seymour’s almanacs, presses and type in 1671.70 B. In the Privy Council The ensuing legal dispute proceeded in two venues. The sides first sparred in the Privy Council in late 1671, though it appears there was an attempt to resolve the matter before then. In his petition to the Privy Council, on 8 November 1671, Seymour alleged that he and the Company had already attended three separate hearings before the Lord Keeper (Sir Orlando Bridgeman), the Lord Privy Seal (Lord Robartes) and the Earl of Sandwich.71 Unfortunately, no memorial of those earlier proceedings appears to have survived. In the late seventeenth century, it was not uncommon for the Privy Council to hear party-to-party disputes involving printing patents, but its ability to adjudicate them fully was questionable. The Statute of Monopolies (1624) enacted that the validity of patents had to be tried and determined according to the common laws of the realm,72 and an Act for Regulating the Privy Council (1641) stated that the Council had no jurisdiction, power or authority to determine or dispose of the hereditaments, goods or chattels of any subjects of the kingdom. Those matters had to be ‘tried and determined in the ordinary courts of justice, and by the ordinary course of the law’.73 As a consequence, the Council sometimes acted more as mediators; and when the lawfulness of a monopoly was at issue, the Council often sent such matters to law for adjudication.74 The Council Board heard argument in Seymour on 8 December 1671.75 Serjeant John Maynard argued on behalf of Seymour and noted that Seymour had ‘purchase[d] Severall Coppies [of almanacs] and layd out Severall great Summes of Money’.76 His co-counsel, Francis Winnington, added that 69 Case and Opinion, Heneage Finch AG, SCA Series I, box B2, item iii ([October 1671]); see also Case and Opinion, Heneage Finch AG, Bodl Eng misc e MS 372, p 98 (13 October 1671). 70 See Seymour v Stationers (1671) BL Harley MS 5903, ff 54r, 55r (PC). 71 Seymour v Stationers (8 November 1671) PC2/63, pp 99, 99–100. 72 Act Concerning Monopolies 1624 (21 Jac 1 c 3) s 2. But see text to n 126. 73 Act for Regulating the Privy Council 1641 (16 Car 1 c 10) s 5. 74 See, eg, King’s Printers v University of Oxford (16 January 1679/80) OUA SEP/P/16, no 8, f 10r–v, OUP 5/1/1, pp 85, 108–10, PC2/68, pp 356, 357 (PC) (discussing jurisdictional objections and dismissing dispute between two printing patentees for lack of jurisdiction). 75 Seymour v Stationers (8 December 1671) PC2/63, p 128. 76 BL Harley MS 5903, f 54r. For other essentially identical reports of this argument, see SCA Wast Book, ff 76r–77v (5 February 1671/2); SCA Court Book D, ff 195v–196v (5 February 1671/2).

Stationers v Seymour (1677) 39 Seymour had ‘laid out above a thousand pounds to his great impoverishment and if he should not now enjoy the benefitt of his grant it would be \to/ his great Damage’.77 In counsels’ view, the grant to the Company was void because its term was stated to last in perpetuity and its scope was ‘soe very generall’.78 In effect, they objected to the fact that, under the Company’s interpretation of the patent, the Company could prevent the printing of all almanacs, including those in which the Company had not purchased the rights. This would constrain an author or publisher’s ability to choose a printer and would often leave them at the mercy of the Company’s prices and practices—a nontrivial hindrance. Many authors, for example, received only a few pounds each year for the almanacs they produced. And though some popular authors received greater sums (eg John Gadbury £20 and William Lilly £50 for 1671)79 they often hoped for more. Counsel for the Company, not surprisingly, sought to affirm its 1616 patent. They cited the savings clause in Seymour’s grant and noted that the Company’s patent had issued long before his: ‘[T]heire is a peculiar Clause of Exception in Mr Seymors Patent’80 and ‘[w]ee stand upon the validity of our grant beinge much the older’.81 Heneage Finch, also arguing on behalf of the Company, noted that the Company claimed only a right to control the mechanical printing of almanacs and not a right to prevent others from compiling almanacs or a right to print almanacs without an author’s permission: [I]f you Mr Serjeant [Maynard] write a Law booke, its true you may give or sell it to whome you please and they may keep it by them[,] but if either you or they desire to print it you must doe it by the Kings printers for the Law, Soe here lett [he] who will write Almanacks [do so], [but] the Company of Stationers onely have the Authority to print them.82

By the end of the argument, Seymour’s counsel had retreated. They no longer denied the validity of the King’s grant to the Company but hoped instead to be allowed to print alongside the Company. ‘Wee are not willing to bring these grants to a Judiciall debate in Westminster hall least we trip up on anothers heels’.83 The argument then shifted to whether the Company

77

BL Harley MS 5903, f 54r. ibid f 55v (Winnington arg). 79 SCA Journal Book of Money Disbursed (29 July 1671 and 25 January 1671/2). During this period, Gadbury was producing his own almanac and another under the name Thomas Trigge. 80 BL Harley MS 5903, f 55r (Pemberton arg). 81 ibid f 56v (Offley arg). 82 ibid f 56r. The notion that the Company could not print an almanac unless it had first obtained a right to the copy had, incidentally, been memorialised in a 1623 consent decree of the Privy Council. See University of Cambridge v Stationers (10 December 1623) PC2/32, pp 190, 191; see also University of Cambridge v Stationers (29 November 1623) CUP Pr B 2(3), item xiii (PC). 83 BL Harley MS 5903, f 56r (Winnington arg). 78

40 H Tomás Gómez-Arostegui had the lawful authority under its own patent or the Printing Act of 1662 to seize Seymour’s almanacs and destroy some of his printing equipment. The Company argued that it did and if Seymour felt otherwise he could sue at law. Seymour’s counsel responded that he was ‘but one person and not able to goe to Law with soe many who are very rich; therefore we desire and presse for some Accommodation’.84 The Council Board urged both sides to settle their differences with the aid of their lawyers, but the parties were unsuccessful.85 Not long after, Seymour tried farming his patent to Thomas Rookes, but Rookes suffered the same fate. The Company seized his almanacs and a new dispute in the Privy Council followed, which also went unresolved.86 C. In the Court of Common Pleas The next phase of the dispute occurred when Seymour received permission from John Gadbury to print his almanac for the year 1676, and printed it in 1675. The Company raided various printing houses and shops, confiscated Gadbury’s almanacs,87 and sued Seymour in the Court of Common Pleas during Michaelmas term 1675. Brought by information (‘intelligi et informari’) under the Printing Act of 1662, the information alleged that Seymour had caused 3,000 almanacs to be printed on 1 September 1675, and the Company accordingly sought £1,000 in penalties.88 One of the printed reports incorrectly (but harmlessly) states that the claim was brought as an action for debt on the statute, a form that technically differed from an information but whose objective would have been the same. The Company later amended its pleading and reduced the number of copies printed to 200 and the penalty sought to £66 13s 4d.89 The Stationers also sued Gadbury for causing 3,000 almanacs to be printed,90 George Larkin (a printer) for printing 3,000 almanacs,91 and Thomas Kequick (a binder) for stitching 1,200,92

84

ibid f 57r (Winnington arg). p 128; SCA Court Book D, ff 202v–203r (12 July 1672); see also Case of the Company of Stationers, SP29/441, ff 369, 369 (c 1675) (describing lack of settlement). 86 See Rookes v Stationers, Petition and Answer ([21 March 1672/3]) SCA Series I, box B2 (PC); Rookes v Stationers (2 April 1673) PC2/63, p 408, (6 August and 4 October 1673) PC2/64, pp 73, 110. 87 Case (n 85) f 370; SCA Court Book D, f 250v (5 July 1675), f 254v (8 November 1675); SCA Wardens’ Accounts (14 August, 6 September and 6 November 1675). 88 Stationers v Seymour (Mich 1675 info) CP40/2933, rot 888. 89 Stationers v Seymour (Mich 1675 info) CP40/2933, rot 918; see also SCA Journal Book of Money Disbursed (7 December 1675) (disbursement to John Lilly to have the declaration amended). 90 Stationers v Gadbury (Mich 1675 info) CP40/2933, rot 887. 91 Stationers v Larkin (Mich 1675 info) CP40/2933, rot 888d. 92 Stationers v Kekewicke (Mich 1675 info) CP40/2933, rot 887d. 85 PC2/63,

Stationers v Seymour (1677) 41 all on 1 September. These three related actions appear to have been subordinated to Seymour, which functioned as the bellwether case, and I have found no other records relating to them in the plea rolls. Originally appointed for 26 November 1675, the trial in Seymour was put off when the Company could only proffer a duplicate of its 1603 patent but not of its 1616 grant.93 Duplicates were necessary because the Company had surrendered its sealed 1603 patent to the Court of Chancery in order to obtain the 1616 grant, and its sealed 1616 patent had perished in the Great Fire of London in 1666. Whereas the Company had on 10 August 1667 procured inspeximus exemplifications under the Great Seal of its 1603 grant and its 1557 charter of incorporation, it did not, at that time, also obtain an exemplification of the more important 1616 grant. It is unclear why. Perhaps the Company accidentally exemplified the 1603 grant when it meant to exemplify the later one. In any case, the Company rectified the error on 6 December 1675, but Seymour did not come on for trial again until 5 June 1676.94 It is impossible to know how long the trial lasted. But in a similar case brought by the Company a few years later for infringement of the primers portion of its 1616 patent, the defendant described his own trial as lasting ‘two or three houres’ before ‘the Jury brought in a Verdict’.95 In Seymour, the jury returned a special verdict in which it made a number of lengthy findings, including that the following had been proven: the Company’s 1616 patent, the Printing Act of 1662 and Seymour’s 1669 patent.96 It also found that Seymour had caused 200 almanacs in English to be printed on 1 September 1675 in Westminster with the consent and licence of Gadbury (‘dedit consensum et licenciam suam’) but without the licence or consent of the Company (‘sine licencia vel consensu’).97 The jury next found the

93 SCA Wardens’ Accounts (26 November 1675); SCA Journal Book of Money Disbursed (26 and 30 November 1675) (‘[T]he Cause was put of[f] .… [W]e had pleaded [our] surendred [1603] patent’.). 94 Hanaper Comptroller’s Accounts, AO3/420 (19 August 1667) (noting that Humphrey Robinson, Master of the Company of Stationers, had requested only two exemplifications); SCA Journal Book of Money Disbursed (23 September 1667, 8 and 10 December 1675, 5 June 1676); SCA Wardens’ Accounts (5 June 1676); R Myers, The Stationers’ Company Archive (Winchester, St Paul’s Bibliographies, 1990) 51. On the pleadability and use in evidence at law of exemplifications when one could not produce the original patent with the Great Seal appended thereto, see Act Concerning Grants and Gifts 1549–50 (3 & 4 Edw 6 c 4) s 2; Act Concerning Exemplifications 1571 (13 Eliz c 6) s 2. In subsequent actions at law, the Company made sure to plead the exemplification it obtained in December 1675 of its 1616 grant. See, eg, Stationers v Marshall (12 February 1678/9 compounded) KB27/1997, rot 484–85; Stationers v Marlowe (Pas 1680 issue) CP40/2981, rot 313; Stationers v Gayne (15 June 1681 judg) CP40/2992, rot 441; Stationers v Parker (Hil 1684/5 issue) KB27/2040, rot 685. 95 Plea and Demurrer of John Gaine, Stationers v Braddyll (1681/2) C7/580/112 (referring to Gayne (n 94), an action which resulted in a general verdict for the defendant). 96 Stationers v Seymour (Trin 1676 verdict) CP40/2939, rot 401. 97 ibid.

42 H Tomás Gómez-Arostegui almanac ‘in hys verbis literis et figuris’, meaning that the written verdict replicated Gadbury’s almanac at large in words, letters and figures. Among other things, the record reproduced the 12 months of the calendar (with the Saints’ days), a table of the law terms, a list of eclipses, a perpetual tide table, a timeline of 31 notable events, and a table of the 12 signs of the zodiac.98 The jury further found that Gadbury’s calendar was the same as the calendar in the Book of Common Prayer that had been established by Act of Parliament: [M]enses dies mensum fixa festa et mobilia festa sunt eadem cum mensibus diebus mensum fixis festis et mobilibus festis in publico Calendario in libro Communis precacionis et administracionis Sacramentorum et aliorum rituum et ceremoniarum Ecclesie secundum usum Ecclesie Anglicana stabilito per Actum Parliamentis[.]99

‘Calendar’ meant not only the days, months and years, but also the fixed and moveable feasts (ie holidays), such as Christmas and Easter, respectively. For those who are unacquainted with it, the Book of Common Prayer contained a calendar in its preliminary pages in which certain morning and evening readings or ‘offices’ were assigned for particular days. The remainder of the book contained the daily offices and other occasional ones, such as for solemnising marriage. The Common Prayer became the official manual of worship in England and Wales after the Reformation. According to the Act of Parliament that first adopted the text, the King had appointed the Archbishop of Canterbury, and certain of the most learned and discreet Bishops, and other learned Men of this Realm … to draw and make one convenient and meet Order, Rite and Fashion of common and open Prayer and Administration of the Sacraments .…100

Thomas Cranmer, the Archbishop of Canterbury, took charge of the task and the book was first published in 1549. Changes were made to the book at various times, namely in 1552, 1559 and 1604.101 At the Restoration in 1660, Charles II commissioned changes that were later duly implemented.102 I unfortunately have been unable to find an extant copy of the almanac in suit. It is not Gadbury’s Ephemeris for the year 1676, a copy of which 98 The notable events included: ‘The creation of the World’ in 4019 BC; ‘The discovery of printing’ in 1399; ‘The bringing of printing to Westminster’ in 1462; and ‘The bringing back printing to Westminster by Captaine Seymour’ in 1675. ibid. 99 ibid. 100 Act for Uniformity of Service 1548/9 (2 & 3 Edw 6 c 1). 101 DN Griffiths, The Bibliography of the Book of Common Prayer (London, British Library, 2002) 62–63, 69, 82–83; B Spinks, ‘From Elizabeth I to Charles II’ in C Hefling and C Shattuck (eds), The Oxford Guide to the Book of Common Prayer (Oxford, Oxford University Press, 2006) 44. 102 His Majesties Declaration … Concerning Ecclesiastical Affairs (London, 25 October 1660); Act for the Uniformity of Publick Prayers 1662 (13 & 14 Car 2 c 4); Griffiths (n 101) 108–12.

Stationers v Seymour (1677) 43 does survive.103 That almanac was printed in Westminster by George Larkin—for the ‘Assigns of John Seymour’ and ‘[b]y Authority from the King’—but its title and some of its content differs from that specifically found by the jury in Seymour. One possibility is that the almanac in suit was a broadsheet, rather than a book almanac. Gadbury had been known in the past to produce both book and broadsheet formats of his work.104 And, yet, the information brought against Kequick, for stitching almanacs, counsels against a broadsheet. So either Gadbury authored more than one book almanac for 1676—something he also was known to have done previously—or Kequick had stitched a different almanac. After some delay, post-trial arguments in Seymour were heard before the judges in Easter and Trinity terms 1677. Representing the Company was Serjeant Francis Pemberton, the future Chief Justice of the King’s Bench (1681–82/3) and Common Pleas (1682/3–1683). What follows is his argument from Trinity term; it is unclear whether he argued the cause the preceding term. Pemberton first cited the long history of governmental control over printing as a ground for maintaining the grant: The press ‘tis true is an excellent invencion but the licenciousness thereof in every ones using it is of dangerous Consequence. No art can be more prejudiciall to the State ; & so ‘tis fit to be under the inspection of the Magistrate, & it is of a politique Consideracion[.] And so in England ever since printing came in it hath bene always under the Controul of the governement[.]105

Pemberton then drew from the rights of authors in their works. He began this line of argument by tapering the reach of the Company’s patent to a single component within almanacs: the calendar. Focusing on the calendar made the patent more palatable and better enabled an argument of ownership over a central component that always remained the same in all almanacs. The difficult issue, as Pemberton saw it, was identifying the author of the calendar: ‘Here in our case ‘tis a non liquet [ie it is unclear] to the Court who is the Author of the Almanack’, by which Pemberton meant the calendar.106

103 J Gadbury, Ephemeris: Or, A Diary Astronomical and Meteorological For the Year of Grace 1676 (Westminster, 1676); Wing A1755. 104 See, eg, SCA Journal Book of Money Disbursed (5 September 1664, 13 December 1665). 105 Stationers v Seymor (1677) IT Barrington MS 5, pp 308, 308; see also 1 Mod 256–57. 106 IT Barrington MS 5, p 308. There was no question that Gadbury had authored the almanac. Indeed, the jury found that the almanacs ‘fuerunt compilata fuit Anglice was compiled per quendam Johannem Gadbury’. CP40/2939, rot 401. Note that in the 17th century ‘author’ as a verb had not yet gained traction; the more common verbs were ‘compile’, ‘compose’, ‘make’, ‘pen’ and ‘write’. Additionally, one of the manuscript reports acknowledged that Seymour was ‘claiming a grant from this king to print them[;] [and] has printed a great many ; which were made by Gadbury who hath added some things to the Almanack, as prognostications of the weather, about Eclipses, & put in some remarkeable things’. IT Barrington MS 5, p 308.

44 H Tomás Gómez-Arostegui Gadbury did not claim to have authored (nor did Seymour claim to own) the calendar per se or to have exclusive rights in it.107 Thus, ‘the Contest [wa]s not between the Author & the Patentee’.108 So, was the calendar in the public domain or did the Crown own it? Relying on the long-standing maxim that derelict property went to the Crown, Pemberton posited that ‘if the author be not known, it belongs to the king’.109 Applying this maxim to works of authorship was sensible, he argued, as it was the only way to ‘secure the Authors propriety’,110 a fact he thought important as a matter of principle. An author ‘has [a] right to the Copy & ‘tis not fit [that] his right should be invaded or others reap the benefit of his pains’.111 The King, by granting the patent, was effectively exercising this right on behalf of the unknown author or owner. Pemberton believed that the common law supported his use of the maxim to the facts at hand, but he argued in the alternative that the Printing Act of 1662 also authorised the Crown to preserve material that might otherwise be considered derelict: ‘[I]f the case were against the plaintiffs at Common law, This Act of parliament has made it good’.112 The Act provided that it did not prejudice the ‘just rights and priviledges granted by his Majesty [or his royal predecessors] to any person or persons … [and] that such person or persons may exercise and use such right and priviledges … according to their respective grants’.113 This proviso extended not only to works in which the Crown held a property interest ab initio (‘Prerogative Coppies’), he argued, but to derelict works as well, given that the words of the statute were general.114 Pemberton next relied cautiously on Streater v Roper, a controversial decision involving the law patent that aided his cause. The circumstances of Streater are somewhat complicated, but bear recounting here. The case began, under the caption Roper v Streater, in the Court of King’s Bench in 1671.115 A syndicate of booksellers (which included Abel Roper) had purchased the copyright in and published the third part of Sir George Croke’s Reports in May 1669. John Streater, an assignee of the law patent, retaliated and reprinted the Reports. Roper confiscated the reprints and sued Streater

107

1 Mod 257 (‘[T]he Defendant in our Case makes no Title to the Copy’.). IT Barrington MS 5, p 308 (by ‘Patentee’, here, Pemberton meant the Company). 109 ibid; see also 1 Mod 257. For early cases discussing derelict property, see Anonymous (1406) YB Mich 8 Hen 4, pl 2, ff 1a, 2b, Seipp 1406.101 (KB); Constable v Gamble (1601) 5 Co Rep 106a (QB) 108b. cf E Coke, The Third Part of the Institutes of the Laws of England (London, 1644) 132 (‘Treasure trove is when any gold or silver[,] … whereof no person can prove any property, … doth belong to the King, or to some Lord or other by the Kings grant’.). 110 IT Barrington MS 5, p 308. 111 ibid. 112 ibid. 113 Printing Act 1662 (13 & 14 Car 2 c 33) s 22; see also ibid ss 3, 6. 114 IT Barrington MS 5, p 308. 115 Roper v Streater (Mich 1671 bill) KB27/1941/1, rot 237. 108

Stationers v Seymour (1677) 45 in an action for debt under the Printing Act of 1662. Streater pled the law patent as a bar to the action and Roper demurred to the plea, thus bringing the matter to issue without the need for a jury trial. The King’s Bench ultimately entered judgment for Roper.116 In the process, Chief Justice Hale invalidated the law patent as an unlawful restraint on a common trade (printing) and as being too imprecise and broad in its application.117 On a writ of error, the House of Lords reversed and adjudged the patent good, albeit without consulting the judges or entertaining solemn argument.118 The effect of the judgment was not only that the patent was valid—which meant that Roper should have printed his book through Streater—but that Streater was, at least in this instance, able to print a work seemingly owned by another. As was usual at the time, the House did not publicise its reasons. But according to one account, whose source material is not disclosed, the House relied on a number of factors, including that the privilege of printing law books was long-standing, the material at issue concerned matters of state, and the ‘King had the making of Judges, Serjeants and Officers of the Law’.119 In Seymour, Pemberton noted that unlike what had occurred in Streater, the Company had not printed Gadbury’s 1676 almanac. Rather, this was merely an instance where Gadbury should have printed his almanac with the Company instead of with Seymour. In short, there was no need for such a robust reading of the patent here. Pemberton further pointed out that the scope of the law patent was very broad—as it covered all books touching or concerning the common laws of England—while reiterating that the fight over the Company’s patent was over the sole printing of a single work: the calendar.120 Records of the argument on the other side have been elusive. The printed accounts make no mention of it, and although one manuscript report does, it is only in passing. According to Pemberton, Serjeant Francis Barrell had argued for Seymour in Easter term 1677 that the Stationers’ patent was ‘void, because the sole priviledge of printing of Almanacks is in [the] nature of a Monopoly, & so against Law’.121 This is not a particularly enlightening statement, but fortunately another memorial exists. A single sheet of paper in the archives of the Company, slipped between pages of a draft of the special verdict, appears to be notes taken of Barrell’s argument, or if not of

116

Roper v Streater (Mich 1672 judg) KB27/1941/1, rot 237. See M Bacon, A New Abridgment of the Law (London, 1759) vol 4, 208–09. 118 Streater v Roper (1675) 12 Lords Journal 703 (HL) 704; R North, The Life of the Right Honourable Francis North (London, 1742) 69 (based on notes of Francis North written c 1682–85). 119 Bacon (n 117) vol 4, 209. 120 IT Barrington MS 5, pp 308–09. 121 ibid 308. 117

46 H Tomás Gómez-Arostegui Barrell then of someone else arguing on Seymour’s behalf.122 Assuming this to be correct, the notes indicate that counsel first addressed the common law and then the effect of the 1662 Act. To start, counsel conceded that the Crown could grant a patent with respect to Acts of Parliament and Bibles, as those were prerogative copies. But this case involved a ‘private’ book—he did not limit himself to the calendar in the almanac—and the ‘Subject by Liberty of Birth right Cannot bee prohibited to print any private Booke’.123 Counsel went on to state that there ‘hath bene an Ownershippe allowed of Prerogative Copy & private Copy [and] [t]he Ownershippe of the one is gained by patent the other by Entrye’.124 To prohibit the owner of a private copy from printing it with whom he pleased, when the Crown had no right in the work at issue, would be to create an unlawful monopoly in the trade of printing, which he called an ‘Art Publique’. ‘A man’, he stressed, ‘may grante his Copy or printe it’.125 Counsel acknowledged that the Statute of Monopolies exempted printing patents from its reach,126 but he argued that the grant was nevertheless void at common law. As a fallback, he asserted that both patents—the Company’s and Seymour’s—‘may stande together’.127 Turning to the 1662 Act, counsel posited that it was ‘[n]ever Intended to give the Kinge a power to grante Copyes’.128 Rather, its purpose was to provide right holders certain remedies: The True Scope & Intent [was] that where the Kinge grants what he may grante (such Prerogative Copyes) or if another hath gotten by Entry &c He that printes [without authorisation] shall forfeite. And these wordes [in the statute] ([‘]where the same is not granted by patents[’] &c) must bee such As he [the King] had right to grante[.]129

122

MS Notes, SCA Series II, box 1 ([1677]) (inserted after page 1 of the draft verdict).

123 ibid.

124 ibid. By ‘entry’, counsel was referring to the process of registering a book with the Company of Stationers under the 1662 Act. The register served several functions under the statute: as a record for censorship purposes, as the principal method of proving ownership of the copy for purposes of the Act, and as a prerequisite for non-patentees to obtain the penalties and forfeitures of the Act. Printing Act 1662 (13 & 14 Car 2 c 33) ss 3, 6. For scholarship discussing the long-standing custom of entry with the Company and how entry did not create a right but instead served as proof of ownership, see Patterson (n 9) 55–64; M Bell, ‘Entrance in the Stationers’ Register’ (1994) 16 The Library (6th ser) 50, 51; PWM Blayney, ‘The Publication of Playbooks’ in JD Cox and DS Kastan (eds), A New History of Early English Drama (New York, Columbia University Press, 1997) 383, 400–05. Neither Seymour nor his confederates (who were members of the Company) registered Gadbury’s almanac, a fact that Barrell or his co-counsel did not see as an obstacle to Seymour’s argument (likely because Seymour was not suing under the Act). 125 MS Notes (n 122). 126 Act Concerning Monopolies 1624 (21 Jac 1 c 3) s 10. 127 MS Notes (n 122). 128 ibid. 129 ibid, quoting from the Printing Act 1662, s 6.

Stationers v Seymour (1677) 47 When the four members of the court spoke, they upheld the Company’s patent and implicitly held that it preceded and trumped Seymour’s later grant. They first followed Pemberton’s lead by focusing on the calendar. The judges discussed all of his arguments and adopted some as their own while also raising others. Chief Justice North spoke first and unfortunately his comments are a bit ambiguous. He purportedly said: I always took the Calendar to bee a prerogative Coppy. The materiall things in the Calendar are the days of the week, the days of the moneths, the ffeasts fixed & moveable the Moons & the Terms[.] And all this is in the Calendar which is part of the Common prayer. ’Tis 4 or 500 yeares ago since the Calendar has bene used [.]130 Now the Almanack that is before the Common-Prayer, proceeds from a publick Constitution ; it was first settled by the Nicene Council, is established by the Canons of the Church [of England], and is under the Government of the Archbishop of Canterbury. So that Almanacks may be accounted Prerogative Copies.131

Although there can be no question that North CJ saw the Crown as holding an exclusive right in the calendar ab initio, as opposed to as a derelict work, it is unclear how the right vested. Some of his remarks suggest that the right derived from the importance of the calendar and its supervision by the Church. Other language suggests that the right stemmed from its placement in the Book of Common Prayer, a work in which the Crown had appointed the compilers. Maybe he meant both. Subsequent cases perceived both grounds in his remarks. The idea that the Crown could obtain a property by employing or appointing authors was consistent with positions North had taken in 1666–68 while serving as counsel in a dispute over the law patent in several fora, including in the House of Commons and later before all the judges (save one) of the courts of King’s Bench, Common Pleas and Exchequer. In that capacity, he thought it reasonable to argue that the Crown had a ‘general ownership over law-books’.132 Among other things, the King appointed and paid the salaries of the judges who declared the common law and appointed the officers who kept the court records.133 It was also thought at the time that the King had paid the reporters of the Year Books. ‘The Salaries of the … Reporters in all Courts at Westminster were paid by the King formerly’.134 Francis Winnington, North’s co-counsel in the dispute, made the same point as follows: ‘[A]ntiently there were four reporters, that had a stipend from the king, who confered together at the making & setting for the report; & then

130

IT Barrington MS 5, p 309. 1 Mod 257. 132 Atkins v Stationers sub nom Stationers v Patentees (1666) Carter 89 (HC) 90. 133 ibid 91; Atkins v Stationers (1668) MT Treby MS 2C, pp 167, 171 (IT) (North arg). 134 Carter 91. 131

48 H Tomás Gómez-Arostegui twas reason the King should have & give the sole printing, because he was at the sole charge of collecting the Copys’.135 It appears that North CJ did not rely, in the alternative, on the 1662 Act. That would coincide with the argument made by Barrell (or his co-counsel) and would also happen to be consistent with a position North had taken as counsel on the law patent. In that context, he had argued that the statute was ‘the Ground of the prohibition and forfeiture[,] [but] Nothing of Right is Enacted’.136 Justice Windham ‘accorded’, but the reports do not reveal what if anything he said. For his part, Justice Atkins listed three grounds. He relied on the long history of governmental control over printing; Streater v Roper (which had approved a broader patent); and the Printing Act of 1662. ‘The Judgment in the House of Lords is solemn … and much stronger than this : there[,] was [a] license to print all Lawbooks, here only Almanacks’.137 On the last, he agreed with Pemberton that the Act must be interpreted to empower a grant relating to derelict works like the calendar. To say that the proviso only applied to works which the Crown owned ab initio—such as proclamations, declarations and Acts of Parliament, all of which the King had a part in—would make no sense, ‘[f]or there was no need of any such Clause : For there is no doubt but hee may grant these’.138 Justice Scroggs,

135 MT Treby MS 2C, pp 167–68, citing E Plowden, Les Comentaries ([London], 1571) Preface; see also Stationers v Partridge (1712) PFL MS LC 14.81, pp 31, 31 (QB) (Salkeld arg) (‘Where the King has a property or a Copy Right he may grant the sole printing of that Copy as the English Bibel because that was translated by Persons appointed by the Crown[,] so of the Year books because they were Collected by Persons who had a salary for that purpose from the Crown … [, and] So a Comon prayer book was directed by the King’.). 136 Atkins v Stationers (1666) SJC MS Bb James 613(5), pp 73, 87 (HC). The argument that the exclusive rights underlying patents depended on the 1662 Act for their validity was later made in 1683–84 with respect to both the psalms portion of the Company’s 1616 patent and the King’s Printers’ patent for Bibles and Common Prayers. The King’s Bench rejected the argument and upheld both grants in spite of the lapse of the 1662 Act. See Stationers v Wright (1682/3) C33/260, f 254r, C33/259, ff 313v–314r; Stationers v Wright (Trin 1683 bill, Hil 1683/4 judg) KB27/2028, rot 100; Hills v Wright (1682/3) C33/259, f 400r–v, C33/259, ff 313v–314r; Hills v Wright (Trin 1683 bill, Hil 1683/4 judg) KB27/2028, rot 98. See also Stationers v Parker (1685) Skinner 233 (KB) 234, BL Lansdowne MS 1064, pp 491, 493 (Pollexfen arg) (‘[T]hat Statute did not give a Right but only an Action of Debt [for penalties]’; ‘[T]he Statute did not alter the Case[;] only gave a certeyn Penalty against any man that print[s] books which another had a right to Print’.). The same did not hold for the remedies—penalties and forfeitures—often included in printing patents. In 1670, the King’s Bench stated that the Crown could not provide for the forfeiture of goods by patent. Horne v Ivy (1669) 1 Ventr 47 (KB) 47, (1669/70) 1 Sid 441 (KB) 441; see also East India Co v Evans (1684/5) 1 Vern 305 (Ch) 307–08. And by 1679, the Company’s own counsel questioned whether the remedies in its printing patents were enforceable. Counsel instead advised an action on the case for ordinary damages brought upon the right granted by the patent. Case and Opinion, William Jones, SCA Court Book E, f 122r–v (1 November 1679); Case and Opinion, Creswell Levinz AG, ibid f 123r (4 November 1679); Case and Opinion, Henry Trinder, ibid ff 123r, 124r (29 May 1681). 137 IT Barrington MS 5, p 309. 138 ibid; see also 3 Keble 792; Stationers v Seymour (1677) BL Add MS 35975, pp 200, 201.

Stationers v Seymour (1677) 49 the last to speak, expressly adopted Pemberton’s argument that derelict works resided in the King as a matter of common law. ‘In this case[,] as to the substantial part of the Almanack[, ie the calendar,] there is no certain Author & for that reason it belongs to the King’.139 Scroggs added another ground, stating that likewise the calendar was of public consequence. Another report of the court’s reasoning, which does not delineate the remarks of one judge from another, further highlights the rights of authors: [I]f the author was alive it might be printed or not printed at the authors pleasure but there being no author nor any that claims propriete in [the calendar] … the propertie to print it belongs to the King and he may give it to whom he pleases[.]140

The above text appeared at the end of the report, which suggests that this too was spoken by Justice Scroggs. This does not necessarily mean, however, that the other judges did not concur on this point. By process of elimination, it seems almost certain that Pemberton and the judges who linked the right of the King to that of authors—in order to prop up the patent—presupposed an author’s right derived from the common law. The 1662 Act makes no mention of authors’ rights, and it appears that Chief Justice North (at least) believed that the Act depended on primary rights stemming from elsewhere. Also out of the case is the custom of the City of London, which could conceivably have formed the legal basis for the rights of authors. None of the records or law reports in Seymour mention the custom, nor would it have applied in any event given that the infringements occurred in the City of Westminster. The bylaws of the Company could not serve as a source either; they did not apply to persons (like John Seymour) who were not members of the Company.141 Only an underlying right at common law could support a patent that purported to reach all subjects throughout England. Two more points bear mentioning. Pemberton and some of the judges must have envisioned a right of authors that persisted after the first publication of a work given that the work at issue—the calendar—had been published countless times before Seymour. It also seems safe to assume that the Crown did not possess the original manuscript of the calendar and that this was not fatal to the presupposition. The court lastly addressed whether the additional material in Gadbury’s almanac, beyond the calendar alone, somehow made his work sufficiently different from the calendar so as not to implicate the patent. It did not. Pemberton had argued: ‘As to the other point, the addicion & the alteracion (being not in the Substantial part) will make no difference ; no more then

139

IT Barrington MS 5, p 309. Add MS 35975, p 201. This manuscript volume bears the bookplate of Lord Hardwicke, and thus it probably was in his possession when he ruled in Tonson v Walker. 141 See Geoffrey Palmer AG and Heneage Finch SG, SP29/274 pt 2, f 151r–v (21 April 1670). 140 BL

50 H Tomás Gómez-Arostegui the putting in a piece of Æsops Fables’.142 Agreeing, Chief Justice North stated that ‘the materiall part is the same’ and Justice Scroggs said that ‘the substantial part is the same’.143 ‘Those additions of Prognostications and other things that are common in Almanacks, do not alter the Case ; no more than if a man should claim a property in another mans Copy, by reason of some inconsiderable additions of his own’.144 This reasoning also tracks advice previously given by North to the Company of Stationers while he was Solicitor General. North was one of the Company’s counsel when the dispute with Seymour first arose in the Privy Council in 1671. In that context, he stated: [N]oe variety of prognostications make the bookes severall [ie distinct][,] the Kallender being Still the same[;] in the Case of Schoole Bookes[,] where any one has a propriety, if an Other makes a Small Addition of Notes or Comments, this I hope shall not conclude or barre the propriety of the first.145

In the end, the Court of Common Pleas entered judgment against Seymour and ordered him to pay £66 13s 4d in penalties under the Printing Act of 1662, with half to go to the Company of Stationers and half to the Crown.146 *** Notably, Seymour was not alone in presuming authors’ rights before 1710. Take, for example, an instance that occurred in 1641/2 in a hearing in Parliament over printing patents. At the time, no statute supported exclusive printing rights. William Prynne, counsel for a subset of the Company, recited the following argument made by his opponents who were holders of various printing patents, including the patent to print the Bible: ‘[T]he Bible newly translated [in 1611] was the Kings copie[,] who had the same power as other Authors have to bestow it on whom he pleased’.147 Prynne called this his opponents’ ‘strongest and most colourable’ argument,148 and although he was on the other side, he did not question the analogy to authors’ rights. Indeed, he carried on with it, stating that the Bible was special because it

142

IT Barrington MS 5, p 309.

143 ibid. 144

1 Mod 258. Harley MS 5903, f 54v; see also Case and Opinion, Francis North SG, SCA Court Book D, f 191v (28 August 1671). 146 (27 July 1677 judg) CP40/2939, rot 401. 147 ([7 March 1641/2]) BL Harley MS 5909, ff 26r, 40v (HC). The original of this manuscript, in Prynne’s own hand, may be found at IT Petyt MS 511 (vol 23), f 14. Another copy is BL Hargrave MS 98, f 57. For other accounts of his opponents’ arguments, see A Breviate in the cause touching the Pattent for Printing. Questioned in Parliament about the year 1642, OUA SEP/P/16, no 6 (c 1641/2); A True Diurnall of the Passages in Parliament (7–14 March 1641/2), reprinted in J Raymond (ed), Making the News (Gloucestershire, Windrush Press, 1993) 46. 148 BL Harley MS 5909, f 41r. 145 BL

Stationers v Seymour (1677) 51 was ‘Gods own book and Copy’ and he had bequeathed it to ‘all men as the foundation and rule of their faith & lives’ and thus it could not ‘properly be called any mans particular copy as other books compiled by particular men may be’.149 ‘[T]hough the Translation of the Bible may be called the Translators Copy,’ he noted, ‘yet being intended wholely for the publick good and not for any mans private and particular lucre the Copy ought rather to be publick than private as well as the Translation and Bible it self’.150 Prynne also argued (though perhaps too broadly) that patents were ‘not granted by the Kings meer prerogative in Bookes or Printing but at the Special request of the Authors of these Books or the Printers or Stationers who bought the original copies of them’.151 A similar assumption of authors’ rights appeared in 1668. George Treby, who was reporting on an argument over the law patent, remarked that the Company’s 1616 patent for printing the singing psalms and psalters was likely valid because those works ‘were translated at the Kings charge or by his appointment, & so \he/ has the right of an author, & may grant them as he will’.152 Notably, both assumptions of authorial rights, noted above, occurred in the context of works that had already seen their first publication. Others also invoked authors’ rights. In the same dispute over the law patent, for instance, counsel for a number of booksellers and printers had argued in the House of Commons in 1666 that the ‘Author of every Manuscript or Copy hath (in all reason) as good right thereunto, as any Man hath to the Estate wherein he has the most absolute property’.153 And the rights of authors were also invoked in two other almanac cases before 1710. Counsel in one suit noted on behalf of a hawker and a printer that ‘the Author is intituled to the printeing of his owne booke if [he] will or else may sell his Coppy’,154 and in another it was argued on behalf of an author that ‘a difference [was] made [in Seymour] between an author & other people, for an Author has a natural right in his own labour’.155 It should, perhaps, come as no surprise that the Company’s 1684 charter, which Charles II granted to the Company during his attempt to reform the

149 ibid. 150 ibid.

151 ibid f 40v. cf Reasons to induce the passinge of the Bill touching printing, SP16/484, ff 121r, 122r (c Sept 1641) (stating confidently that an author had an ‘undoubted’ right in his tangible manuscript and also a right in ‘the worke’ stemming from his ‘owne studies & labour’ so as to control the first printing of it; then arguing more sanguinely that by implication an author and his assigns ‘must necessarily bee maintayned to have a propertie’ in the work after the first printing). 152 MT Treby MS 2C, pp 172–73. Treby later became Solicitor General (1689), Attorney General (1689–92) and Chief Justice of the Common Pleas (1692–1700). 153 The Case of the Booksellers and Printers Stated; with Answers to the Objections of the Patentee ([London], 1666). 154 Stationers v Bradford (12 June 1700) C37/692 (Cowper arg). 155 Stationers v Partridge (1709) HLS MS 1109, pp 47, 48 (Ch) (Northey arg).

52 H Tomás Gómez-Arostegui City of London and its chartered companies, also took for granted that authors were the source of copyrights. When the charter spoke of registration of a copyright, it spoke only of Company members who could trace their title back to the author. That is to say, those who fuerit et devenerit proprietarius alicuius libri vel copie aut per donum vel acquisitionem ab authore inde vel tal alia persona que habet vel habebit ius et potestatem dandi concedendi vel vendendi euisdem[.]156

shall be and shall become a proprietor of any book or copy either by gift or purchase from the author or thereafter from such other person who has or shall have the right and power of giving granting or selling the same.

And in 1685, the Bishop of Oxford, John Fell, similarly noted that authors granted copyrights to booksellers. Writing to John Bellinger, one of the Wardens of the Company, the Bishop stated that the University of Oxford would not ‘comprint the Books that the Company have in their Patents, or belong by way of Coppyright from the Authors of Books’.157 *** Not long after the judgment in Seymour, the parties met again in an attempt to resolve their differences.158 Although the Company had scored a victory in the Common Pleas regarding the almanac portion of its patent, Seymour’s patent contained another grant within it (for certain Latin and Greek works and school books) and he also held a separate reversion grant from the Crown (not previously mentioned in this chapter) for printing certain other school books.159 Both grants interfered with the Company’s objectives in the market. Additionally, Seymour and the Company were at loggerheads again in the Privy Council and in a committee of the House of Lords where

156 Patent of the Company of Stationers, C66/3242, no 4 (22 May 1684). On the life and death of this charter, see C Blagden, ‘Charter Trouble’ (1957) 6 Book Collector 369. 157 Letter of the Bishop of Oxford to John Bellinger, SCA Liber A, f 161r (c 21 August 1685). Twelve years prior, Fell had indicated that authors could hold a copyright after first publication. Entering a book in the register of the University of Oxford, he wrote: ‘The Copy belonging to Dr Fell & Dr Yates for the first Edition: after to the Author’. OUA SEP/P/17b/4b (14 April 1673). 158 SCA Journal Book of Money Disbursed (6 September and 27 October 1677, 14 March 1677/8); SCA Court Book D, f 287r (2 October 1677), ff 314v–315r (12 March 1677/8). 159 Grant to John Seymour for School Books, Privy Seal Docquet, PSO5/10 (November 1669). The reversion grant mostly covered books that had been granted to the Company in 1666. See n 57 above. Seymour’s reversion never passed the Great Seal and thus does not appear in the C66 patent rolls. See Petition of the Company of Stationers, John Seymore and Roger Norton, SP29/408, f 108 (c December 1678) (noting that the grant only passed the Privy Seal ‘by reason of [Seymour’s] sudden going beyond the Seas in your Majesties Service’).

Stationers v Seymour (1677) 53 Seymour had accused high-level members of the Company of trading in seditious and unlicensed books.160 The parties eventually settled. On 28 June 1678, Seymour assigned the entire patent that was at issue in Seymour to the Company for £200 per year during his life and £100 per year after his death—through the remaining term of the patent.161 Soon after, Seymour also agreed for 500 guineas to procure for the Company at his own expense and charges a printing patent to replace his reversion grant for school books.162 In the end, however, he did not see much of the money. Seymour died circa January 1678/9.163 As for Gadbury, apart from an inchoate effort to obtain his own privilege to print almanacs,164 he printed all of his Ephemeris almanacs after 1676 with the Company of Stationers. He then died in March 1703/4 and was succeeded in business by his cousin Job.165 V. CONCLUSION

In light of the records available to us, one can understand why so many proponents of common-law copyright relied upon Seymour. One can see in the arguments of counsel and in at least one of the judges a recognition in Seymour that authorship formed a basis for property rights in a work, and that when an author or owner of a work was uncertain, ownership passed to the Crown by operation of law. As far as the four printed and manuscript reports of the case reveal, no judge rejected this notion. The judgment also suggested that the Crown had a proprietary interest in the calendar because it was part of the Book of Common Prayer, a work which the Crown had commissioned from its compilers. The notion of a right held by purchase or employment of authors was already in currency at the time. And arguing from the purported ‘rights’ of an author was not new either; that line of argument had also appeared before. Importantly, these rights appeared to exist even after a work had been published. 160 Seymour v Stationers (17 and 24 November, 8 December 1676) PC2/65, pp 377, 384, 396; M Dzelzainis, ‘L’Estrange, Marvell and the Directions to a Painter: The Evidence of Bodleian Library, MS Gough London 14’ in A Dunan-Page and B Lynch (eds), Roger L’Estrange and the Making of Restoration Culture (London, Ashgate, 2008) 53, 55–65 (describing the work of the Lords’ committee in early-to-mid 1677); [J Seymour], The Case of Libels ([London], c 20 March 1676/7), reprinted in G Kemp (ed), Censorship and the Press, 1580–1720 (London, Pickering and Chatto, 2009) vol 3, 103. 161 Assignment from John Seymour to George Sawbridge, Abell Roper, Thomas Vere, John Martin and Thomas Newcomb, SCA Series I, box E22 (28 June 1678). 162 SCA Court Book D, f 330r (6 October 1678), f 337v (31 January 1678/9); see also Patent of the Company of Stationers for School Books, C66/3205, no 26 (6 January 1678/9). 163 Will of John Seymour (n 58). 164 SP44/337, p 122 (25 October 1686). 165 P Curry, ‘Gadbury, John (1627–1704)’ in ODNB (Oxford, Oxford University Press, 2011).

54 H Tomás Gómez-Arostegui To be sure, one could question the maxim that derelict works went to the Crown, as opposed to the public domain, or that the Crown owned the calendar as part of the Common Prayer—later cases certainly did (and successfully, I might add)166—but that should not distract from the fact that a link had been drawn between the rights of authors and the rights of the Crown. In short, a number of lawyers and judges in the late seventeenth century believed that an author’s right in literary property was a plausible basis for argument, even though no statute expressly mentioned authors’ rights before 1710. At a minimum, Seymour indicates, along with other evidence from the seventeenth century, that the notion of an antecedent right at common law was not fanciful or novel. ANNEX: SEYMOUR’S PATENT ENROLMENT C66/3111, no 14bis (7 Oct 1669)167

Charles the second &c To all manner of Printers Bookesellers Stationers and all our Officers Ministers and Subiects whatsoever they bee[,] Greeteing[,] know yee that wee for and in Consideration of the good and faithfull services which our trusty and well beloved John Seymour Esquire hath done to vs and our Royall ffather (of blessed memory) from the begining to the end of the late troubles and hath alsoe since our happy Restauration by our special Command and for our service made severall Journyes and voyages beyond the seas all which hee hath performed with

166 See, eg, Stationers v Partridge (1712) BL Add MS 35988, ff 95, 100 (QB) (Parker CJ); see also text to nn 48 and 51. 167 The King’s initial wish was that Seymour’s patent be fast-tracked. On the back of the King’s Bill is the annotation: ‘Our pleasure is, that this passe by immediate Warrant’. SO7/24 (6 October 1669). But for reasons unknown, the patent nevertheless proceeded through the usual stages. See Signet Office Docquet, SO3/16, p 270 (October 1669) (word ‘Imediate’ struck out). As one would expect, the Privy Seal Bill, on which the C66 enrolment is based, does not differ from the enrolment apart from orthographically, some incidentals unique to Privy Seal Bills, and a few words. Privy Seal Bill, C82/2392 (October 1669). I have noted the word changes by {bracketing} the text from the enrolment and then {bracketing} the text from the bill. Additionally, both the Privy Seal Bill and the enrolment omit certain form language that ordinarily would appear more fully in the sealed patents given to patentees. I have added the form language in . Copies of the patent printed in the 17th century—and drawn from Seymour’s sealed patent rather than from the enrolment—may be found at Bodl JJ Book Trade Docs, no 13 and at Longleat House. Manuscript copies of the grant also drawn directly or indirectly from Seymour’s sealed patent appear in a number of other places as well. See, eg, BL Harley MS 5910, ff 113r–115r; SP29/450, f 256 (incorrectly dated 17 October 1669). We can deduce that the copies just mentioned stem from the sealed patent given to Seymour because they include the name of Sir Richard Pigott, Clerk of the Patents, whose name normally would appear only on the sealed patents; their text more closely follows the bill than the enrolment; and the form language is not as abbreviated. Lastly, given that I do not cite it, I should note that Seymour’s sealed patent does not appear to have survived.

Stationers v Seymour (1677) 55 great fidelity diligence and successe and for diverse other good Causes and Considerations vs herevnto especially moveing have of our especiall Grace certaine knowledge and mere motion Given and granted and by theise presents for vs our heires and Successors doe give and graunt vnto the said John Seymour his Executors Administrators and assignes full power lycence priviledge and sole authority that itt shall and may bee lawfull for him the said John Semour his Executors Administrators and Assignes onely to Imprint vtter and sell or cause to bee imprinted vttered and sould[,] for the tearme and space of one and fforty yeares next and immediately ffollowing the date of theise our letters Pattents[,] in what letters or vollumes he or they shall please all and singuler the Bookes herein after mentioned (whereof noe other person cann clayme the direct {property} {propriety} by vertue of any Graunt duely obteyned from us or any of our royall Predecessors* (videlicet) Erasmi Opera Plinii Epistole Quintus Curtius Homeri Opera cum clave Justinius Dictionarium Poeticum Colmani Prosodia grece & latine Isocratis Opera Buchanani Opera Phrases & Elegantie Poetice Claudianus Lucanus Buxtorsi Scapule Screvelii & Pasoris Lexicon Valerius Maximus Suetonius Salustius Martialis Epigramita Senece Opera Lycosthenes Testamenta greca & latina Theocrites hesiodus & ceteri Poete minores grece & latine Cartesii Opera Horatius Juvenalis & Persius Lucius fflorus Livius Lucianus Plautus Reusneri Symbola Clavis Homerica Thesaurus Poeticus Janua Linguarum Sidelii Manuale Demosthenes Opera with all noats comments and paraphrases vpon all or any parte of the aforesaid Bookes and also all Almanacks and prognostications from tyme to tyme whose Originalls the said John Semour his heires Executors Administrators or Assignes cann purchase and obteyne from the respective Authors thereof dureing the said Terme[.] And wee doe hereby for vs our heires and Successors streightly charge and Command all and every Printers Bookesellers Stationers and other our Subiects whatsoever that from henceforth dureing the said Tearme of one and forty yeares by theise presents graunted they nor any of them (other then the said John Semour his Executors Administrators and Assignes* doe Imprint vttter or sell or cause to bee Imprinted vttered or sould any of the said Booke or Bookes or any parte or partes of the said Booke or Bookes which by theise our letters Patents are graunted and lycensed to be imprinted by the said John Semour his Executors Administrators and Assignes and that they nor any of them Import or cause to bee Imported from any of our dominions or from any parts beyond the Seas into this our kingdome of England any of the said Bookes new or old or any others which within the said Tearme of one and forty yeares shall be printed by the said John Semour his Executors Administrators or Assignes vpon paine of forfeiture to our vse

*

The closing ‘)’ is absent, but would most naturally fall here.

56 H Tomás Gómez-Arostegui of all and every the said Bookes soe to be by them or any of them {vttered sould or Imprinted} {imprinted vttered sould or imported} contrary to the meaneing of theise our letters Pattents[,] or of what else by law may be forfeited[,] and of being proceded against as an Offender against the late Act entituled an Act for preventing the frequent abuses in printing seditiouse treasonable and unlicensed Bookes and Pamphletts and for regulateing of printing and printing Presses and of incurring the penalty therein mentioned of six shillings eight pence for every such Booke or Bookes or part of such Booke or Bookes soe imprinted or imported as aforesaid and alsoe of forfeiting and further of incurring our Indignation and displeasure for breakeing and neglecting this our present Graunt and priviledge[.] And our further will and pleasure is and wee doe by theise presents for vs our heires and Successors will and Command aswell the Masters and Wardens of the mistery of Stationers in our Citty of London and other our Officers Ministers and Subiects within the said Citty of London and the libertyes of the same as alsoe all other our Officers Ministers and Subiects whatsoever as they tender our favour and will auoyd our displeasure for the contrary that they and every of them if need shall require shall ayd and assist the said John Semour his Executors Administrators and Assignes and every of them in the due exerciseing and execution of this our present lycense and priviledge with effect by entring att all and every convenient tyme and tymes dureing the said Tearme by theise presents graunted (having first obteyned a Warrant from the lord Cheife Justice of the kings Bench for the tyme being to that purpose) into any house or houses Printing houses Booke=binders Shopps Cellars and Warehouses or any other place or places whatsoever suspected aswell within libertyes as without to veiw see and search for any Booke or Bookes att any tyme or tymes hereafter to bee imprinted contrary to the tenour of theise our letters Pattents[,] soe as the said John Semour his Executors Administrators and Assignes shall att euery such tyme and tymes of veiwing and search take with him or them some one or more of our Officers or Ministers for that tyme being dwelling in that towne or Parish where such veiw or search shall bee made for his better veiwing and due search to be made in that behalfe and as much as in them is to seize all and every such Booke and Bookes as vpon any such veiw and search shall att any tyme or tymes dureing the said Tearme by theise presents graunted be found to be imprinted vttered sould or imported contrary to the tenour of theise our letters Pattents and cause the same to be condemned as forfeited by due proceedeings in our Court of Exchequer according to the forme and effect of the aforesaid Statute[,] and the Printers Importers Sellers and vtterers thereof or of any parte of the said Bookes to bee proceeded against and punished in the sevearest manner that may bee either by the lawes {or} {&} statutes of this our Realme or by any other Order Ordinance or Proclamation of vs or any of our predecessors or by our royall Prerogative[.] provided allwayes that if the lycense or priviledge of printing of any of the said severall Bookes

Stationers v Seymour (1677) 57 bee allready by vs or any of our Predecessors graunted to any of our Subiects and the Graunts thereof still in being[,] Our will and pleasure is and wee doe by theise presents for vs our heires and Successors give and graunt vnto the said John Seymour his Executors Administrators and Assignes full and sole power license and authority to Imprint vtter {and} {or} sell or cause to be Imprinted vttered and sold such of the said Bookes soe formerly graunted as aforesaid from and after the Expiration surrender or other sooner determination of every such respective Graunt or Graunts for and dureing the said Tearme of forty and one yeares[.] And our further will and pleasure is and wee doe by theise presents for vs our heires and Successors Covenant promise and graunt to and with the said John Seymour his Executors Administrators and Assignes that if and as often as any doubts or questions shall happen to arise for toucheing or concerneing the validity of theise our letters Pattents that then and soe often vpon the humble Petition of the said John Seymour his Executors Administrators or Assignes to vs our heires or Successors exhibited or vpon notice and certificat to vs our heires {and} {or} Successors by the learned Councell of the aforesaid John Seymour touching any defect requisite to bee amended wee our heires or Successors will graciously graunt other letters Patents vnto the said John Seymour his Executors Administrators and Assignes with such and soe many amendments Explanations Amplifications and Additions for supplyeing the said defects requisite to bee amended as by the Councell of the said John Seymour shall bee advised and thought fitt and which may any way tend to the Confirmation of theise our letters Patents or to the perfection of the Intention before by theise presents any way appeareing[.] and further that wee our heires and Successors dureing the continuance of theise our letters Patents or other of our letters Patents to bee renewed as aforesaid vpon the Petition of the said John Seymour his Executors Administrators or Assignes will graunt vnto him or them such Orders of our Councell Board Warrants vnder our privy Signett Writts of Assistance Proclamations and Iniunctions for his and theire most beneficiall enioyment of this our royall Graunt as shall be desired and found reasonable and not repugnant to the lawes and Statutes of this our Realme of England[.] And theise our letters Pattents {and} {or} the Inrollment thereof shall bee in all things firme good vallid and effectuall according to the true Intent and meaneing of the same notwithstanding the not true or perfect reciteing of the authors or tytles of the said severall and respective Booke and Bookes or any other matter Cause or thing whatsoever to the contrary in anywise notwithstanding[.] Provided allwayes that noething in this our Graunt conteyned shall any way extend to deminish or derrogate from the priviledges which cann or may bee claymed by both or either of the vniversityes touching the printing of all or any {of} { }168 the Bookes herein

168

Omitted in the Privy Seal Bill.

58 H Tomás Gómez-Arostegui before mentioned but that the same priviledges shall and may remaine in theire full force and Strength any thing herein before conteyned to the contrary in anywise notwithstanding[.] although expresse mention &c In wittnesse &c Wittnesse the king att Westminster the seaventh day of October [1669] Per breve de privato Sigillo

3 Sayer v Moore (1785) ISABELLA ALEXANDER*

I. INTRODUCTION

T

HE SELECTION OF Sayer v Moore1 as a landmark case in intellectual property law, or even in copyright law, might seem odd—particularly as it was not even reported except as a footnote to another case that occurred some 14 years later.2 Nevertheless, it is the contention of this chapter that this eighteenth-century case has played a key role in the development of copyright law in the common law world. There are two reasons for this. First, it produced one of the most memorable and popular pieces of copyright rhetoric, when Lord Mansfield proclaimed: In deciding we must take care to guard against two extremes equally prejudicial; the one, that men of ability, who have employed their time for the service of the community, may not be deprived of their just merits, and the reward of their ingenuity and labour; the other, that the world may not be deprived of improvements, nor the progress of the arts be retarded.3

* This chapter is based upon papers previously delivered by the author at the International Society for the History and Theory of Intellectual Property (ISHTIP) Conference, Paris, 26–28 June 2013, and at the International Conference for the History of Cartography, Antwerp, 12–17 July 2015. I am grateful to participants at those conferences for feedback and suggestions, in particular Professor Robert Mankin at ISHTIP. I am also grateful to Eloise Chandler for research assistance, Nick Millea (Bodleian Library) for assistance in locating materials, Pip Wilson for access to the archives at Imray Laurie Norie and Wilson Ltd and to Cristina Martinez and Tomás Gómez-Arostegui for reading this chapter in draft and providing helpful feedback. Sources that begin with C (Chancery), ADM (Admiralty), IND (Index) or PROB (Probate) are stored in the National Archives of the United Kingdom in Kew, England. 1 Sayer v Moore (1785) 1 East 361n, 102 ER 139n. Note, in East’s reports, where the case is first formally reported, Sayer’s name is alternatively spelled ‘Sayre’. In this article Sayer is used, as the more common form of the name. 2 Cary v Longman and Rees (1801) 1 East 358, 102 ER 138. For a detailed examination of Cary v Longman see Isabella Alexander, ‘“Manacles Upon Science”: Re-Evaluating Copyright in Informational Works in Light of 18th Century Case Law’ 38 Melbourne University Law Review 317. 3 Sayer v Moore (n 1) 361n.

60 Isabella Alexander This statement has been cited by a large number of academic commentators for a variety of purposes and positions.4 Some cite it as evidence of courts taking a labour-based or ‘sweat of the brow’ approach to subsistence and originality;5 others cite it as indicating copyright law’s concern with unfair competition,6 or as an early authority for a fair use exception.7 Most commonly, however, it is cited as evidence of the need to ‘balance’ or at least weigh up competing public and private interests in copyright law8 or by those seeking to establish the long-standing credentials of copyright’s concern with the advancement of knowledge.9 The second reason for claiming Sayer v Moore as a leading case in intellectual property law is more fully appreciated when it is considered alongside two subsequent related cases, Steel v Moore10 and Heather v Moore.11 Together, the three Moore cases demonstrate ways in which copyright law

4 For example, at the time of writing, a Boolean search for ‘(“Sayre v Moore” OR “Sayer v Moore”)’ on HeinOnline produced 377 search results, including 143 articles, 75 notes and 45 comments. 5 See Jane C Ginsburg, ‘Creation and Commercial Value: Copyright Protection of Works of Information’ (1990) 90 Columbia Law Review 1865, 1877; David Lindsay, ‘Protection of Compilations and Databases after ICETV: Authorship, Originality and the Transformation of Australian Copyright Law’ [2012] Monash University Law Review 3, 19; Lior Zemer, ‘The Making of a New Copyright Lockean’ (2006) 29 Harvard Journal of Law and Public Policy 891, 908; Abraham Drassinower, ‘From Distribution to Dialogue: Remarks on the Concept of Balance in Copyright Law’ (2009) 34 Journal of Corporation Law 991, 995. 6 See S Ricketson, ‘“Reaping without Sowing”: Unfair Competition and Intellectual Property Rights in Anglo-Australian Law’ (1984) 7 (1) University of New South Wales Law Journal 1, 8. 7 See, eg, Kathy Bowrey, ‘On Clarifying the Role of Originality and Fair Use in 19th C entury UK Jurisprudence: Appreciating “the Humble Grey which Emerges as a Result of Long Controversy”’ in C Ng, L Bently, G D’Agostino (eds), The Common Law of Intellectual Property: Essays in Honour of Professor David Vaver (Oxford, Hart Publishing, 2010), 45–69, 58; B Kaplan, An Unhurried View of Copyright (New York and London, Columbia University Press, 1967), 16–18; J Oakes, ‘Copyrights and Copy Remedies: Unfair Use and Injunctions’ [1990] Hofstra Law Review 983; N Snow, ‘Judges Playing Jury: Constitutional Conflicts in Deciding Fair Use on Summary Judgment’ (2010) 44 U C Davis Law Review 483, 520. 8 See P Menell, ‘An Analysis of the Scope of Copyright Protection for Application Programs’ (1989) 41 Stanford Law Review 1045, 1084; D Jordan, ‘Square Pegs and Round Holes: Domestic Intellectual Property Law and Native American Economic and Cultural Policy: Can it Fit?’ (2000) 25 American Indian Law Review 93, 101; D Nimmer, ‘Access Denied’ (2007) Utah Law Review 769, 769. 9 P Samuelson, ‘The Quest for a Sound Conception of Copyright’s Derivative Work Right’ (2012–2013) 101 Georgetown Law Journal 1505, 1389; JL Sheridan, ‘Copyright’s Knowledge Principle’ (2014–2015) 17 Vanderbilt Journal of Entertainment & Technology Law 39, 63; H Selvin, ‘Should Performance Dedicate?’ (1954) 42 California Law Review 40, 41; K Puri, ‘Fair Dealing with Copyright Material in Australia and New Zealand’ (1983) 13 Victoria University of Wellington Law Review 277, 291. 10 Steel v Moore (1789), reported in The Sunday Gazette and republished by Moore: ‘Extract from the Sunday Gazette of the 8th March 1789’ in JH Moore, The New Practical Navigator (London, JH Moore, 1793). 11 Heather v Moore (1798) Express and Evening Chronicle, 1–3 March 1798, Issue 537; ‘Trial of John Hamilton Moore for Pirating a Chart. Sittings after Term, March 1798, before Lord Kenyon and a Special Jury of Merchants’ (London, Plummer, 1798).

Sayer v Moore (1785) 61 and the determination of copyright cases formed a part of Enlightenment epistemology. This is particularly related to scientific method and approaches to the collecting, organising and storing of data, but also links to economic advancement through trade and commerce. That this occurs can be ascribed to a synergy that arose in the cases between the subject matter in dispute— sea charts—which had a particular importance in Enlightenment philosophy, and the developing doctrines of copyright law. The chapter begins by setting out the immediate background against which the Moore cases came before the courts, explaining the state of the sea chart trade in the mid-eighteenth century and the legal context in which it operated. It will then describe the course of the litigation itself. Part II will examine in more detail the historical development of the sea chart trade and, from there, tease out the discursive practices that can be discerned in the construction of the case and in particular the emerging links between science, Enlightenment thought, commerce and the law of copyright. Part III will complete the stories of our litigious chartmakers. The chapter will conclude by considering the ongoing impact of the three cases today and suggests that paying greater attention to these links has the potential to enrich today’s debates over the proper purposes of copyright law. II. THE LITIGATION AGAINST JOHN HAMILTON MOORE

A. Chartmakers and Copyright Law in the Mid-eighteenth Century For much of the eighteenth century, nautical publishing was dominated by a single firm, the partnership of Richard Mount and Thomas Page. Mount and Page largely operated by acquiring copper plates from much older publications, such as Seller’s 1693 English Atlas, and republishing them, perhaps after revising them.12 But by the end of that century the firm of Mount and Page (now in the hands of their successors) was unable to meet the increased demand for accurate charts created by the growth of shipping.13 As its business declined, new players entered the commercial market and the preeminence of Mount and Page gave way to six main players in the nautical publishing trade: Robert Sayer, John Hamilton Moore, David Steel, William Heather, William Faden and Aaron Arrowsmith. The business interests of these six publishers were linked in many ways. William Faden had inherited the map publishing business of Thomas

12 Yolande Hodson, ‘Maps, Charts and Atlases in Britain’ in MF Suarez, SJ and ML Turner, The Cambridge History of the Book in Britain, Volume V, 1695–1830 (Cambridge, Cambridge University Press, 2009) 776. 13 S Fisher, The Makers of the Blueback Charts: A History of Imray Laurie Norie & Wilson Ltd (St Ives, Imray Laurie Norie & Wilson Ltd, 2001) 3–4.

62 Isabella Alexander Jefferys, including Jefferys’ position as geographer to the king. Faden had not, however, acquired Jefferys’ stock of sea charts and plates, which Robert Sayer had purchased from Jefferys’ estate. William Heather had worked for Moore, David Steel had been an apprentice to one of the partners in Mount and Page, and Aaron Arrowsmith may have worked for Faden.14 Their places of business were clustered along the Thames, with Moore, Steel and Heather all based in or near Tower Hill. They used the same draughtsmen and engravers, competed for source material, published in partnership, and sold and used each other’s work, sometimes without permission. Before continuing, a few words are necessary to explain how copyright law applied to maps and charts at this point in history. Since 1710, the Statute of Anne had provided exclusive rights to print and publish books to authors and booksellers.15 Maps could be published in books in various ways—as books of maps (now called atlases) or as illustrations accompanying text. Some map and chart sellers registered their works with the Company of Stationers, pursuant to that Statute (as indeed they had done before the Act was passed, although in those days they had to be a member of the Stationers Company or find one to register for them), while others sought royal privileges or licences. In 1735, an Act was passed which protected prints and engravings against copying.16 The 1735 Engraving Act, known as Hogarth’s Act due to William Hogarth’s role in bringing about its enactment, gave exclusive rights to any person who ‘invented or designed, engraved, etched or worked in mezzotinto or chiaroscuro’ any ‘historical or other Prints’.17 Maps were, of course, produced by the same copper plate engraving techniques as other prints, but it was not at first clear whether they would fulfil the other requirements of that Act. While Blackwell v Harper18 seemed to confirm that this was possible, any lingering uncertainty as to whether they had legislative protection was resolved in an amending Act passed in 1767,19 14 ibid 5. While Fisher describes Arrowsmith as Faden’s assistant, Worms and BayntonWilliams are more circumspect: see L Worms and A Baynton-Williams, British Map Engravers (London, Rare Book Society, 2011) 26. 15 Act for the Encouragement of Learning, by Vesting the Copies of Printed Books in the Authors or Purchasers of Such Copies, during the Times therein mentioned, 8 Anne c 19 (1710). 16 An Act for the encouragement of the Arts of designing, engraving and etching historical and other Prints, by vesting the Properties thereof in the Inventors and Engravers, during the Time therein mentioned 1735 (8 Geo II c 13) (Engravings Act 1735). 17 ibid, Preamble. For a detailed history of this statute, including a reappraisal of Hogarth’s role in its enactment, see: D Hunter, ‘Copyright Protection for Engravings and Maps in Eighteenth-Century Britain’ (1987) 9 The Library (6s) 128; and, M Rose, ‘Technology and Copyright in 1735: The Engraver’s Act’ (2005) 21 The Information Society 63. 18 Blackwell v Harper (1740) 2 Atk 93, Barn C 210. 19 An Act to amend and render more effectual an Act made in the eighth Year of the Reign of King George the Second, for Encouragement of the Arts of Designing, Engraving and Etching, Historical and other Prints; and for vesting in, and securing to Jane Hogarth, Widow, the Property in certain Prints 1767 (7 Geo III c 38) (Engravings Act 1767). It is, of course, also possible that unbound sheet maps might have been found to fall under the Statute of Anne as

Sayer v Moore (1785) 63 which explicitly stated that any person who designed or engraved, or caused or procured to be designed or engraved, any map, chart or plan, would have the ‘benefit and protection’ of the 1735 Act and the current Act.20 This protection included the right to prevent copying for a term of 28 years.21 A third Act was passed in 1777, which extended the protection in two important ways. First, it expressly included copying ‘in part, by varying, adding to, diminishing from, the main design’.22 Second, it increased the remedies available, from merely being able to recover a penalty of five shillings per sheet (shared between His Majesty and the person bringing p roceedings)23 to providing that any person found infringing would be liable for damages as assessed by a jury and double costs of suit. This would be paid to the proprietor of the print(s) in question.24 B. Sayer v Moore: The Litigation Having briefly sketched the relevant statutory framework, it is time to turn to the litigation in question. It is probably no coincidence that each case shared the same defendant. A colourful figure, who inspired strong feelings in his contemporaries, John Hamilton Moore was born in a village near Edinburgh in 1738 and educated in Monaghan, Ireland, by a thencelebrated teacher of mathematics, Mr Ballendine. Moore entered the Royal Navy, but after receiving his discharge became a school teacher in Hounslow, subsequently opening his own academy in Brentford. It was while working as a schoolmaster that Moore wrote The Practical Navigator and Seaman’s New Daily Assistant, which was published in 1772 and became the most popular navigational textbook of its day. Other books followed: The Practical Observer (1775), A New and Complete Collection of Voyages and Travels (1778) and The Young Gentleman’s and Lady’s Monitors (1780). In 1781, Moore moved to London where he set up business first in the Minories and then at Tower Hill.25 This was the heart of the nautical

was found in the case of music in Bach v Longman (1777) 2 Cowp 263. See NA Mace, ‘Music Copyright in Late Eighteenth and Nineteenth Century Britain’ in I Alexander and HT GómezArostegui (eds) Research Handbook on the History of Copyright Law (Cheltenham, Edward Elgar, 2016) 139–57. 20

Engravings Act 1767, s 1. ibid, s 7. 22 An Act for more effectually securing the property of prints to inventors and engravers, by enabling them to sue for and recover penalties in certain cases 1777 (17 Geo III c 58) (Engravings Act 1777). 23 Engravings Act 1735, s 1. 24 Engravings Act 1777. 25 Worms and Baynton-Williams, British Map Engravers (n 14), 460–61; Fisher, Blueback Charts (n 13) 19; ‘Obituary’ 77 (1807) Gentleman’s Magazine 1174. 21

64 Isabella Alexander world: close to Trinity House26 the river Thames and its seamen, chandlers and nautical instrument-makers.27 Moore’s first advertisements offered navigation courses over a few weeks, for five guineas, with boarding accommodation provided in his house if necessary. He also began offering for sale charts, books, and nautical instruments such as compasses, quadrants and sextants, drawing and calculating instruments and telescopes.28 In 1782 he published his second practical text book, The Seaman’s Complete Daily Assistant. This time Moore shared the risk of publishing with four partners: the booksellers Law and Robinson, and his competitors Robert Sayer and John (or Jonathan) Bennett. By 1784 Moore was publishing his own charts. It seems that the very first chart he published got him into hot water,29 when a suit was brought against him in the King’s Bench by Sayer and Bennett. While Moore was new to copyright litigation, this was not Sayer’s first brush with the law of copyright. He was a prominent print and map seller who had moved into chart publishing following his acquisition of Jefferys’ plates in 1771. In 1770 he had brought an unsuccessful action against Cluer Dicey for copying and selling a print of the King of Denmark.30 In this case Sayer was nonsuited, as he had not engraved his name and date of first publication on the print in question, as required by the 1735 Act.31 In 1780, Sayer had himself been the defendant in Chancery proceedings brought by the printseller Carington Bowles, which eventually settled.32 A third case was brought in 1783 against Sayer by George Sherwin in the King’s Bench and involved piracy of a print of the actress Sarah Siddons.33

26 Trinity House was established by Henry VIII in 1514 when it was granted a Royal C harter to regulate pilotage of ships in ‘the King’s streams’. It was given further powers over licensing pilots in the River Thames, seamarks and ballastage and lighthouses in the seventeenth century. See www.trinityhouse.co.uk; and S Tyacke, ‘Chartmaking in England and its Context, 1500–1660’ in D Woodward (ed), The History Of Cartography, Volume 3: Cartography in the European Renaissance (Chicago, The University of Chicago Press, 2007) 1725. 27 Fisher, Blueback Charts (n 13) 19–20. 28 ibid 20. 29 According to Fisher, the earliest known Moore chart is ‘A new and correct chart of North America from the Island of Belleisle to Cape Cod’, published 20 January 1783: Fisher, Blueback Charts (above n 13), 141. 30 Sayer qui tam &c v Dicey et al (1770) 3 Wilson KB 60; 95 ER 933. See David Stokes, ‘Another Look at the Dicey-Marshall Publications, 1736–1806’ (2014) 15 The Library 111–157. The author is grateful to Cristina Martinez for pointing her to this source and helping her to identify Dicey. 31 8 Geo 2 c 13, s 1. 32 Bowles v Sayer (1780) C12/1656/12, C33/455 ff 2, 7. 33 Sherwin v Sayer (1783) printed in J Oldham, The Mansfield Manuscripts and the Growth of English Law in the Eighteenth Century, vol 1 (Chapel Hill, University of North Carolina Press, 1992) 770.

Sayer v Moore (1785) 65

The first chart published by John Hamilton Moore and the cause of the litigation. JH Moore, A New and Correct Chart of North America from the Island of Bellisle to Cape Cod (London, 1784). © The British Library Board Maps *70040(.40)

66 Isabella Alexander Sayer was therefore an experienced legal player, as well as considerably more established than Moore in the publishing and print-selling business, when he took Moore to court. Sayer and his partner Bennett34 complained that Moore had copied four charts of North America and made them into one large map.35 The decision to take the case to the King’s Bench is interesting, as the Court of Chancery tended to be the forum of choice for copyright plaintiffs of the time. One can only speculate as to Sayer’s motivation for choosing it, but it seems likely that the plaintiffs were influenced by the choice of remedy available; while Chancery could offer the frequently sought after remedies of injunction and disgorgement of profits, following the 1777 Act the King’s Bench could offer damages and double costs, and Sayer was asking for the considerable sum of £10,000.36 The case was heard by Lord Mansfield on 28 February 1785 before a ‘special jury’—a jury comprised of merchants who would be able to advise on the commercial aspects of the case.37 Sayer produced several witnesses, including William Faden, who attested that Sayer had purchased the charts at an auction of Jefferys’ estate. Two engravers, Delarochette and Winterfelt (or Winterfield), also appeared for Sayer. Delarochette, an eminent and respected cartographer and engraver who often worked with Faden, testified: that he had engraved the maps for Sayer; that they were a considerable improvement on the charts Sayer had purchased from Jefferys; that the materials for the charts would have cost Sayer between £3,000 and £4,000; and, that the defendant’s charts were copies. The second engraver, Winterfelt, testified that he had been employed by Moore to make the copies and that he had copied the Gulf Passage from the plaintiff’s map.38 34 Bennett’s involvement in the business at this stage may be questioned, as he had been diagnosed as insane in 1781 and committed to an asylum in 1783. In 1784, Sayer took steps to dissolve the partnership before the Master of the Rolls, Sir Lloyd Kenyon in Sayer v Bennet (1784) 1 Cox 107. While the result of the case is unknown, Bennett’s name disappeared from the partnership in 1785: see Fisher, Blueback Charts (n 13) 47. 35 The map in question was either ‘A New and Correct Chart of North America from Cape Cod to the Havannah’ (London, J H Moore, 1784) or ‘A New and Correct Chart of North America from Belleisle Strait to Florida’ (London, J H Moore, 1784). Skelton considers it to be the latter: RA Skelton, ‘Copyright and Piracy in Eighteenth Century Chart Publication’ (1960) 46 The Mariner’s Mirror 207, 208. 36 Estimates of what this sum would be worth today vary depending on the calculation method employed. Using the currency converter supplied on the website of The National Archives, its 2005 equivalent was £628,500 (in 2005). According to www.measuringworth. net, in 2016 it would be over £1 million. 37 The foreman of the Special Jury, to whom the letter detailing much of our information on the case was written, was James Bogle French. French, a merchant of St Swithin’s Lane and slave-owner on Grenada, was involved in the sale of rum to America. See ‘Legacies of British Slave-ownership’, www.ucl.ac.uk/lbs. For an examination of the different types and development of special juries, see JC Oldham, ‘The Origins of the Special Jury’ (1983) 50 The University of Chicago Law Review 137; JC Oldham, Trial by Jury: the 7th Amendment and Anglo-American Special Juries (New York, New York University Press, 2006). For Lord Mansfield’s use of special juries comprised of merchants, see JC Oldham, English Common Law in the Age of Mansfield (Chapel Hill, University of North Carolina Press, 2004) 20–27. 38 Sayer v Moore (n 1) 362n. See also Oldham, The Mansfield Manuscripts (n 33) 770–71.

Sayer v Moore (1785) 67 Despite this compelling evidence of copying, Sayer’s action was unsuccessful. Moore’s advantage lay in being able to draw on his contacts from the nautical world as well as his own experience and mathematical knowledge. Captain John Stephenson39 deposed that Moore’s maps were not the same as Sayer’s, but ‘essentially different’.40 It is his account of where the difference lies that is important. Where the engravers had testified solely as to the physical act of copying, Stephenson identified the difference in the content. Not just he, but two additional witnesses, Admiral Campbell FRS, Governor of Newfoundland, and William Wales FRS, an astronomer who had sailed with Captain Cook, gave evidence that Sayer’s maps were both erroneous and dangerous and that Moore’s were a considerable improvement over them. In considering the applicable law, Lord Mansfield considered that the principles underlying the Statute of Anne applied equally to the 1777 Engravings Act. He stated: The Act that secures copy-right to authors guards against the piracy of the words and sentiments; but it does not prohibit writing on the same subject … In all these cases, the question of fact to come before a jury is, whether the alteration be colourable or not? there (sic) 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 with regard to charts; whoever has it in his intention to publish a chart may take advantage of all prior publications.41

Summing up the evidence, he famously observed: In deciding we must take care to guard against two extremes equally prejudicial; the one, that men of ability, who have employed their time for the service of the community, may not be deprived of their just merits, and the reward of their ingenuity and labour; the other, that the world may not be deprived of improvements, nor the progress of the arts be retarded … If an erroneous chart be made, God forbid it should not be corrected even in a small degree, if it thereby become more serviceable and useful for the purposes to which it is applied.42

39 Susanna Fisher states that Captain John Stephenson was a coal trade master and close friend of Moore’s who provided him with information on the North Sea and Thames estuary. Fisher, Blueback Charts 21, 24, while Skelton suggests he was a Royal Navy Master, who had produced a number of charts for both Sayer and Moore. This could of course be two different career stages for the same man. Some case reports use ‘Stephenson’, while others use ‘Stevenson’. For consistency, this chapter uses only the former, except in references where the original spelling is observed. 40 ‘Extracts from a Letter written to James Bogle French, Esq, Foreman of the Special Jury who tried the Cause in the King’s Bench, at Guildhall, between Messrs Sayer and Bennet, Plaintiffs, and Mr John Hamilton Moore, Defendant, by Mr John Stevenson, one of Mr Moore’s Witnesses’ in Moore, The New Practical Navigator (n 10). 41 Sayer v Moore (n 1), 361n. 42 Sayer v Moore (n 1).

68 Isabella Alexander Having been so instructed the jury, not surprisingly, gave a verdict in Moore’s favour. Neatly and powerfully, Lord Mansfield set out the crux of the tension inherent in copyright law and policy: the balancing of the public interest in dissemination, improvement and progress with the claim of an author to benefit from his labours. It is this statement which has made the case of Sayer v Moore so popular with later commentators and is the first basis upon which its status as a leading case rests. The quote conveys the notion of a tension to be resolved that is both timeless and broadly applicable. It is, however, strongly influenced by both the subject matter at issue and the intellectual atmosphere of the time. To appreciate this, the case needs to be viewed against the background of trade custom, imperatives of commerce and empire as well as Enlightenment philosophy and the rise of scientific method and empiricism. However, before turning to elaborate on these matters, we must finish the story of the litigation against John Hamilton Moore. C. The Subsequent Cases: Steel v Moore and Heather v Moore No doubt encouraged by the result of the case brought against him by Sayer, Moore continued in his chart publishing venture. However, it was not long before he was again called upon to defend himself in the King’s Bench. The second case brought against Moore was by another rival, David Steel.43 Steel was also a close neighbour. Born in 1733, at the time of the case he was settled in Little Tower Hill where he ran a book and chart shop, which also sold mathematical and navigational instruments.44 In March 1789, Steel sought damages of £3,000 from Moore for having allegedly published a chart of ‘the East Coast of England, including the navigation from the South Foreland to Flamborough Head from the latest observations and surveys’. Steel alleged that this was copied from two charts he had published in 1782 which had been drawn by John Chandler.45 Once again, Moore produced Stephenson as his witness, as well as James Porteous, master of the royal yacht Augusta. Both witnesses attested to the presence of numerous errors in Steel’s map and the superiority of Moore’s. Stephenson claimed to have found at least 106 places where Moore’s map differed from Steel’s. He also allowed himself a rhetorical flourish, suggesting

43

Steel v Moore (n 10). Witt, A Bibliography of the Works Written and Published by David Steel and His Successors, with Notes on the Lives of David Steel and His Heirs (London, Anthony and Setitia Simmonds, 1991) 3, 4. 45 J Chandler, A Chart of the East Coast of England from Lowestoff to Scarborough, engraved by TJ Woodman (London, David Steel, 1782). (A copy is held by the Biblioteca Nacional de España); Felix Farley’s Bristol Journal (Bristol, England) 21 March 1789, 2. 44 MM

Sayer v Moore (1785) 69 the Elder Brethren of Trinity House, to whom Chandler had dedicated his chart, were arguably more culpable than Chandler for failing to examine it before giving their approval. The jury were prepared to have found for Moore, but Steel’s counsel submitted to a nonsuit (requiring Steel to pay Moore’s costs). Lord Kenyon apparently ‘declared he heartily concurred with the Jury, and expressed his indignation that such erroneous Charts as Mr Steel’s should be published’.46 Moore continued in his business and by 1791 was styling himself ‘Hydrographer and Chartseller to the Duke of Clarence’.47 However, he seems to have been a person who attracted enemies. In 1794 an anonymous broadsheet was circulated, which referred to Moore as the ‘pretended hydrographer to the Duke of Clarence’, and accused Moore of ‘debauching his servant’, ‘offering to bribe a villain to swear a false debt against her’, ‘robbing and hiring others to rob the late Mr Robert Sayer’ and ‘plundering the property of his neighbour Mr Steel’.48 That year Moore also had a falling out with his former assistant, William Heather. Heather had learnt the business of chart publishing and selling with Moore, but had left in 1792 to start his own business. Initially relations appear to have been good, with Heather printing and selling sailing directions for Moore’s charts as well as selling copies of The New Practical Navigator.49 But, sometime in 1794, Moore instituted an action at law against Heather in the King’s Bench seeking recovery of £1,270, which Moore claimed that Heather owed him from the time of his employment. Heather then brought a suit in the Court of Chancery, seeking an order to stop the trial until he could get discovery. In his Bill of Complaint, Heather accused Moore of neglecting his business and being given to intoxication and irregularity, which had required Heather to run the accounts and business for him. Heather alleged that after he left Moore’s employ, Moore had asked him to go into partnership and, upon Heather’s refusal, had become angry and threatened to ruin him.50 Moore eventually responded, denying Heather’s accusations of intoxication and irregularity in business. He claimed that his work in planning, constructing and laying down charts, as well as writing books on navigation, instructing captains, masters and officers of ships and vessels in navigation, and in making his charts ‘more correct and useful than any other charts’, kept him so busy and created such large demand, that he had to employ Heather

46 ibid. 47

See Moore, The Practical Navigator (n 10). copy of the broadsheet may be found in the archives of Imray Laurie Norie & Wilson Ltd. Also reproduced in Fisher, Blueback Charts, (above n 13) 27. 49 See entries in the English Short Title Catalogue, estc.bl.uk, and the titlepage of Moore, The New Practical Navigator (n 10). 50 C12/206/24 mm1–2. (3 November 1794). Note, I have not yet found any documents relating to the action at law. 48 A

70 Isabella Alexander as a shopman.51 Upon his wife becoming unwell he had sent her to the country and visited her there, meaning he had left more of his business in Heather’s hands. He maintained that Heather owed him money and, as Heather put in no further response, the injunction suspending the action at law was dissolved.52 This was not, however, the end of the ill-feeling between Heather and Moore. Although the fate of the King’s Bench action is unknown, Heather brought a second suit in Chancery against Moore in 1797, this time alleging copyright infringement. Heather, and his partner William Williams, accused Moore of pirating a chart entitled ‘A New and Correct Chart of the Coasts of France Spain & Portugal drawn from the latest observations & surveys by William Heather’, published in 1793. The case was commenced in Chancery,53 but moved to the King’s Bench where it was heard in March 1798 before Lord Kenyon and a special jury of merchants.54 Heather had indeed learnt more than just how to sell and publish charts from Moore and this time he beat him at his own game. Heather and Williams retained two King’s Counsel, Thomas Erskine and William Garrow, both high-profile leaders of the bar, as well as a third barrister, George Holroyd. At the trial, John Stephenson again appeared as witness, but this time he was witness for Heather—perhaps Heather was not the only one of Moore’s former friends to turn against him. Stephenson asserted that it was Moore’s chart which contained ‘several dangerous omissions’55 and that these were carefully remedied in Heather’s map. John Norie, another of Moore’s former employees, also gave evidence to the effect that Moore’s chart was a copy. Moore’s defence acknowledged that he had indeed copied the chart, but he denied the chart belonged to Heather and Williams. He claimed instead that they had copied it from his own publications. In response, Erskine, who had served as a midshipman in the Navy in his youth, turned the full force of his rhetorical powers to the occasion. Erskine began by setting out the policy of the legislation: ‘to secure to these different descriptions of persons who had been at great labour and expence, the fruits of their labours, by preventing others for a certain period from copying their works’.56 He went on to point out that the defendant had not even taken the trouble of drawing his own map, let alone collecting any useful information, but had made merely colourable alterations. Moreover, ‘Mr Moore had, through his negligence, omitted islands, rocks and shoals by wholesale, which omissions 51

C12/206/24 mm 3–6 (26 February 1795). C33/489 f 500v (10 July 1795). 53 C12/225/16, C33/496 ff 161, 372, C33/497 f 439. 54 Express and Evening Chronicle, 1–3 March 1798, Issue 537; ‘Trial of John Hamilton Moore for Pirating a Chart. Sittings after Term, March 1798, before Lord Kenyon and a Special Jury of Merchants’ (London, Plummer, 1798). 55 ‘Trial of John Hamilton Moore for Pirating a Chart’ 3. 56 ibid 1. 52

Sayer v Moore (1785) 71 rendered his Chart very dangerous, and would often prove fatal to the lives of Mariners.’57 Lord Kenyon was clearly persuaded by the arguments and witnesses for the plaintiffs. Observing that ‘the face of nature is open to everybody, but no person is permitted to copy another person’s property’,58 he instructed the jury that the defendant had clearly copied the plaintiffs’ chart. The jury found for the plaintiff. The reports do not record whether any damages were awarded. However, one claims that, in consequence of the verdict, the Chancery injunction was lifted, and Moore’s copper plates were destroyed, as were all the impressions taken from them. Moore also ‘refunded’ the money for those charts he had sold and paid all the Costs of Suit in Chancery.59 III. COPYRIGHT LAW AND ENLIGHTENMENT EPISTOMOLOGY

A. Maps, Law and Enlightenment Crucial to the arguments in each of the three cases was the question of what made a good sea chart. This was a question of considerable importance in the period. The eighteenth century is generally considered the period in which pre-modern, decorative or artistic maps gave way to practical, scientific maps.60 This shift required the development of new relations between mariners and commercial map producers and responded to a new demand. It was only since the late seventeenth century that printed maps had really begun to be printed locally in any great numbers—a fact which is somewhat surprising, given Britain’s long seafaring tradition.61 Prior to that time, English mariners, insofar as they used charts at all, relied on hand-drawn maps compiled using French, Portuguese, Dutch and Spanish materials. The market for printed sea atlases was dominated by the Dutch, with English translations being produced for the English market.62 John Seller was first to attempt to compete with the Dutch for the English market in the latter part of the seventeenth century, but even he was dependent on old Dutch plates which he acquired and refurbished.63 57

ibid 2. ibid 4. 59 ibid 5. 60 MH Edney, ‘Reconsidering Enlightenment Geography and Map Making: Reconnaissance, Mapping, Archive’ in CWJ Withers and D Livingstone (eds) Geography and Enlightenment (Chicago, University of Chicago Press, 1999) 165. 61 Hodson, ‘Maps, Charts and Atlases in Britain’ (n 12) 776. 62 Tyacke, ‘Chartmaking in England’ (n 26), 1722–53; S Fisher, ‘The Organisation of Hydrographic Information for English Navigators—Five Hundred Years of Sailing Directions and Charts’ (2001) 54 Journal of Navigation 157, 157–59. 63 C Verner, ‘John Seller and the Chart Trade in Seventeenth-Century England” in NJW Thrower (ed) The Compleat Plattmaker: Essays on Chart, Map and Globe Making in England in the Seventeenth and Eighteenth Centuries (Berkeley, University of California Press, 1978). 58

72 Isabella Alexander Captain Greenvile Collins, who had been appointed by Charles II to survey the coasts in 1681, commented in his resulting publication that he had been commissioned because ‘there were no Sea Charts or Maps of these Kingdoms but were Dutch, and Copies from them and those very erroneous.’64 Samuel Pepys, whose position as Clerk of the Acts to the Navy and later on in Trinity House and the Admiralty, also gave him a pressing interest in nautical matters, was concerned by the lack of good maps in this period. Of Seller’s new English sea atlas he complained: ‘They say that even Seller’s new maps are many of them little less than transcripts of the Dutch maps, some of them with papers pasted over and names scratched’.65 Over the course of the seventeenth century English shipping began to expand rapidly, with the number of ocean-going ships doubling by 1700, and doubling again by 1800 as trade with the East Indies became increasingly important.66 Yet poor quality charts remained a problem for mariners. Captain James Cook, whose own meticulous approach to map-making formed his reputation as a renowned hydrographic surveyor, blamed both navigators and map publishers for the poor quality of most charts, writing in his journal in 1770: [I]t is not [previous navigators] that are wholy to blame for the faultiness of the Charts, but the Compilers and Publishers, who publish to the world the rude Sketches of the Navigator as Accurate surveys, without telling what authority they have for so doing; for were they to do this we should then be as good or better judge than they, and know where to depend upon the Charts, and where not. Neither can I clear Seamen of this fault; among the few I have known who are Capable of drawing a Chart or Sketch of a Sea Coast I have generally, nay, almost always, observed them run into this error. I have known them lay down the line of a Coast they have never seen, and put down Soundings where they never have sounded; and, after all, are so fond of their performances as to pass the whole off as Sterling under the Title of a Survey Plan, etc.67

Parliament was also aware of the need to improve navigation. In 1714, the Board of Longitude was established and a reward of £20,000 was offered for a method which could find longitude to within half a degree (equivalent to two minutes of time) at sea. Two methods of establishing longitude were

64

‘Preface’ in G Collins, Great Britain’s Coasting Pilot (London, Freeman Collins, 1693). JR Tanner (ed) Samuel Pepys’s Naval Minutes, Publications of the Navy Records Society 60 (London, 1926) 135 as cited in HM Wallis, ‘Geography is Better than Divinitie. Maps, Globes and Geography in the Days of Samuel Pepys’ in NJW Thrower (ed) The Compleat Plattmaker (n 63) 18. 66 Fisher, Blueback Charts (n 13) 3; see also DW Waters, ‘The English Pilot: English Sailing Directions and Charts and the Rise of English Shipping, 16th to 18th Centuries’ (1989) 42 Journal of Navigation 317. 67 Captain WJL Wharton (ed), Captain Cook’s Journal During his Voyage Round the World made in H M Bark Endeavour 1768–71 (London, Elliott Stock, 1893) www.gutenberg.org/ files/8106/8106-h/8106-h.htm. 65

Sayer v Moore (1785) 73 ultimately found: one being John Harrison’s chronometers and the other using lunar tables, which the Board then published annually. After its main role was fulfilled, the Board turned its attention to fostering improvements in navigational instruments and improving naval charts.68 However, the Admiralty had no regular surveying service analogous to that provided by the military engineers of the Corps of Ordinance for the Army. From time to time special arrangements were made, as in the case of Murdoch Mackenzie, who was ordered by the Admiralty to survey Ireland and the west coast of Britain, but even the charts produced were engraved by the commercial map-maker Emmanuel Bowen and published privately by the author.69 Surveys were thus left largely to personal initiatives of pilots, masters and Trinity House officers, while publication was left to the commercial firms. However, the ability of such firms to carry out extensive revisions of existing maps, through the procuring of new surveys, was limited. Indeed, commissioning new surveys introduced still greater levels of risk, as Thomas Jefferys had discovered to his cost in his land-mapping ventures.70 Of the mid-eighteenth century chart-makers, Sayer and Bennett were alone in having a strong enough financial position to commission surveys, such as a survey, in 1777, of the Irish sea from Joseph Huddart, an East India company captain.71 They also had the advantage of having purchased the major share of Cook’s charts of Newfoundland from Jefferys. In numerous editions of his Practical Navigator, Moore observed that it was ‘a general Complaint among Seamen, that few Sea Charts are found correct’.72 He advised them to follow his instructions, which would allow them to make their own corrections to existing maps or even to make new ones. For his own maps, he appears to have been reliant on information garnered from his contacts, such as Stephenson, Porteous and other masters of the royal yachts, which allowed him to update publications he had copied from elsewhere. In the ninth edition, published in 1791, he ventilated his growing frustration with the lack of action taken by the Admiralty in this sphere, narrating that ‘some Time ago’ he had waited on the first Lord of the Admiralty and ‘took the Liberty to recommend the furnishing of Masters with proper Charts, when ordered upon distant Services’ but that he had ‘never heard any Thing of the Matter since’.73

68 P Johnson, ‘The Board of Longitude 1714–1828’ (1989) 99 Journal of the British Astronomical Association 63. 69 Hodson (n 12) 777. 70 See JB Harley, ‘The Bankruptcy of Thomas Jefferys: An Episode in the Economic History of Eighteenth Century Map-Making’ (1966) 20 Imago Mundi 27–48. 71 Fisher, Blueback Charts (n 13) 56. 72 JH Moore, The Practical Navigator, and Seaman’s New Daily Assistant, 6th edn (London, JH Moore, 1781) 243. 73 Moore (ibid) 251.

74 Isabella Alexander Moore and Sayer were thus both intimately involved in efforts to bring new levels of accuracy and comprehensive to sea charts—Moore through his navigational and mathematical skills and Sayer through his resources— and their competition in this relatively small field might alone have brought them into conflict. However, this is not the full story. As noted above, a growing concern for charts which would depict new discoveries and existing sea routes with scientific accuracy, using new technologies such as Harrison’s chronometer, is sometimes said to pave the way for modern, science-based, geography. At the same time, recent critical re-evaluations of historical cartography have emphasised the value-laden, complex, contested and ideological nature of map-making.74 A more nuanced story has thereby emerged, in which eighteenth-century geography can be viewed as ‘an intertextual web of discursive practices that underscored Enlightenment’s ideology of encyclopaedic knowledge’.75 In the case of Sayer v Moore, and the two cases which followed it, we can discern the close relationship between the development of copyright doctrine and Enlightenment ideology, and therefore argue that the law, too, formed part of this ‘intertextual web’. The influence of Enlightenment ideas and philosophies on copyright law is not a new observation. However, this chapter does not simply seek to point to ‘evidence’ for the influence of Enlightenment philosophy on the development of the common law, but rather to identify the emerging law of copyright as part of the English Enlightenment.76 Using the specific case study of the sea chart litigation, it demonstrates the interaction between legal ideas and doctrines and other key facets of eighteenth century thought and culture, such as the growing concern for dissemination of knowledge, changing views of science and scientific practices, the growth of trade and commerce and imperial or colonial expansion.77 Enlightenment thinkers shared a belief in ‘the power of learning as a means of bringing about improvement’.78 One form that this belief took was a widespread interest in ‘information management, data collection and knowledge production’,79 which took place in a flourishing print culture, embodied not only in the profusion of encyclopaedias and dictionaries

74 See, for example, JB Harley, ‘Maps, Knowledge and Power’ in Paul Laxton (ed), The New Nature of Maps: Essays in the History of Cartography (Baltimore, The Johns Hopkins University Press, 2001). 75 Edney, ‘Reconsidering Englightenment Geography’ (n 60) 165. 76 See J Rudolph, Common Law and Enlightenment in England, 1689–1750 (Rochester, Boydell Press, 2013). 77 ibid 2. 78 RB Sher, The Enlightenment and the Books: Scottish Authors and Their Publishers in Eighteenth Century Britain, Ireland, and America (Chicago, University of Chicago Press, 2007) 17. 79 Rudolph, Common Law and Enlightenment (n 76) 24.

Sayer v Moore (1785) 75 of arts and sciences,80 but also in the rapidly growing and transforming field of geography and map-making. Matthew Edney claims that, during the eighteenth century, the map was considered the ‘epitome of encyclopaedic knowledge’.81 He goes on to explain that ‘Enlightenment encyclopaedism entailed a dialectic of experience and reason: it is experience, usually visual in nature, which produces information about the world, but it is reason which refines and structures that experience and which gives it meaning’.82 Thus, the geographic practices of reconnaissance and mapping spread quickly beyond the field of geography, as mapping became a metaphor for a broader exercise in global ordering. Edney points to the examples provided by the encyclopaedists Diderot and d’Alembert, who called their work ‘a kind of world map’, to Ephraim Chambers’ reference to his 1728 classification a ‘map of knowledge’ and Carl Linnaeus’ description of his taxonomy system as a mappa naturae.83 A further, pertinent, example can be found in Blackstone’s famous Commentaries. While the relationship between Blackstone’s architectural training and the composition of his Commentaries84 as well as his artistic and visual instincts85 has attracted scholarly attention, the extension to mapping and surveying more generally has not often been made. An exception is Simon Stern, who has drawn attention to both Blackstone’s use of mapping as metaphor, as well as the relationship between his undertaking and other intellectual projects, such as those just mentioned, which are more frequently identified with Enlightenment encyclopaedism.86 This can clearly be seen in his introduction, where Blackstone wrote: an academical expounder of the laws’ should ‘consider his course as a general map of the law, making out the shape of the country, its connexions and boundaries, its greater divisions and principal cities: it is not his business to describe minutely the subordinate limits, or to fix the longitude and latitude of every inconsiderable hamlet’.87 80 See R Yeo, Encyclopaedic Visions: Scientific Dictionaries and Enlightenment Culture (Cambridge, Cambridge University Press, 2001). 81 Edney, ‘Reconsidering Enlightenment Geography’, (n 60) 173. 82 ibid 175. 83 M Edney, ‘Mathematical Cosmography and the Social Ideology of British Cartography, 1780–1820’ (1994) 46 Imago Mundi 101–16, 105. 84 See W Prest, ‘Blackstone as Architect: Constructing the Commentaries’ (2003) 15 Yale Journal of Law & the Humanities 103 and Carol Matthews, ‘A “Model of the Old House”: Architecture in Blackstone’s Life and Commentaries’ in Wilfrid Prest (ed), Blackstone and his Commentaries (Oxford, Hart Publishing, 2009). 85 CS Martinez, ‘Blackstone as Draughtsman: Picturing the Law’ in Wilfrid Prest (ed), Re-Interpreting Blackstone’s Commentaries (Oxford, Hart Publishing, 2014). 86 S Stern, ‘Effect and Technique in Legal Aesthetics’ (2015) 2 Critical Analysis of Law 496, 505. 87 W Blackstone, Blackstone’s Commentaries on the Laws of England, Volume 1 (Oxford, Clarendon Press, 1765) 35.

76 Isabella Alexander Blackstone, too, was concerned with characterising the law as a ‘science’, the word being repeated no fewer than 29 times in the introduction alone. While the question of whether Blackstone ‘succeeded’ in this respect has long been debated,88 in his endeavours we can trace the geographical method of the Enlightenment observed by Edney: ‘reconnaissance’, through observation and experience of the common law, followed by ‘mapping’, or ‘the reconciliation of differences between observations and the laying out of relations between individual pieces of data in a manner directly analogous to the making of a map’.89 Blackstone’s choice of the map metaphor both signals his participation in Enlightenment epistemology and emphasises the nature of the scientific method he is claiming for the common law. However, mapping was more than a metaphor for Enlightenment thinkers. A further aspect of the Enlightenment project was a drive to make the economy produce more wealth, increasing economic welfare, using newly acquired practical knowledge.90 One important way that this was achieved in Britain was through the global trade made possible by the strength of its navy and merchant shipping fleet, as well as its imperial holdings. For shipping to be efficient, accurate sea charts were crucial. B. Establishing the Authority of the Map Just as the use of the map as metaphor leant authority to Blackstone’s portrayal of the law, by lending it a sense of structure and coherence, so did the law come to provide authority for the particular maps in dispute in the Moore cases. Map titles of the eighteenth century almost always carried claims of being ‘new and accurate’, ‘new and exact’, ‘newly surveyed’ and so on, and most of the maps in the Moore litigation were no exception. As Mary Pedley has noted, such rhetoric was an important advertising and marketing tool, despite being often fallacious.91 However, there was more to such claims than simple sales puffery; they were also participating in the broader discourse of Enlightenment knowledge production and validation. It was not, however, sufficient simply to make claims as to newness and accuracy. As noted by Cook in the extract above, crucial to establishing whether the claims made to a map’s accuracy could be relied on was knowing the ‘authority’ under which it was produced.

88 See M Lobban, ‘Blackstone and the Science of Law’ (1987) 30 The Historical Journal 311. 89 Edney, ‘Reconsidering Enlightenment Geography’ (n 60) 186. 90 See J Mokyr, The Enlightenment Economy: An Economic History of Britain 1700–1850 (New Haven, Yale University Press, 2009) 30. 91 M Sponberg Pedley, The Commerce of Cartography (Chicago, University of Chicago Press, 2005) 188.

Sayer v Moore (1785) 77 In his 1774 Treatise of Maritim Surveying, the surveyor Murdoch Mackenzie complained that ‘No Branch of practical Geometry has been so little considered by Men of Science as Maritim Surveying’.92 He also added that: Wherever the Safety of Shipping is concerned, the Public has a Right to some Satisfaction with respect to the Nature and Grounds of the Publication. It is not sufficient to say in the Title, that it is an actual Survey; or a new and accurate Survey: it ought to be accompanied with, at least, a short Account of the fundamental Operations, and Manner in which the Survey was conducted.93

Edney points to the complementary production of geographical memoirs as one way in which geographers legitimised their own intellectual pretensions, as well as participating in the Enlightenment’s encyclopaedic epistemology:94 the memoir served to explain how the geographer had reasoned his way through the ever-increasing array of data available to him to produce the final, reconciled, graphic representation.95 An alternate approach was to incorporate other official statements on sources and practices. David Steel’s ‘Chart of the East Coast of England’, for example, contained the following dedication: ‘This Chart, having been honoured with the Approbation of the Right Honourable Master, Wardens and Elder Brethren of the Trinity House of Deptford Strond is by Permission respectfully dedicated to them by their most obedient and obliged humble servant John Chandler.’96 In the litigation against John Hamilton Moore, we can see that the courtroom emerged as a further venue in which the Enlightenment discourse of rational reconciliation of opposing viewpoints produced authoritative geographical knowledge, and can observe the legal doctrine of copyright being moulded to reflect its ideals and epistemology. In each of the three cases, ‘experts’ from the navigational sciences were brought into the court to provide evidence as to what would constitute a ‘good’ and ‘accurate’ map. In the case brought by Sayer, Captain John Stephenson explained that the errors arose in Sayer’s map because of a failure of projection: while the latitudes and longitudes had been taken from the same authorities as Moore had used, the erroneous principles upon which Sayer’s map was based meant that the course and distance between places was incorrect on his charts. A second authoritative witness was William Wales, a Fellow of the Royal Society and Master of the Royal Mathematical School in Christ’s Hospital, which had been founded by Charles II for the specific purpose of training young boys in navigation. Wales was also an astronomer and had sailed

92 M MacKenzie, A Treatise of Maritim Surveying (London, Edward and Charles Dilly, 1774) ix. 93 ibid x. 94 Edney, ‘Reconsidering Enlightenment Geography’ (n 60) 186–90. 95 Although Pedley observes such memoirs were less a feature of the English map trade than they were of the French: Pedley, The Commerce of Cartography (n 91) 169–70. 96 Chandler, Chart of the East Coast of England (n 45).

78 Isabella Alexander around the world on the Resolution with Captain Cook, who had a very high opinion of Wales’s navigational abilities.97 Wales agreed with Stephenson, adding that the latitudes and longitudes differed, particularly in the West Indies. The third witness, Admiral Campbell, went further still, explicitly linking the production of accurate maps to national pride in an imperial context. Campbell, who had introduced Cook to the Royal Society, stated that when he had examined Sayer’s charts ‘at his station in Newfoundland, he was grieved for the honour of his country, that such a publication should originate in England, and often wished to have had the power of suppressing it entirely, by burning all the Charts, and destroying the plates’.98 The evidence given by the witnesses emphasises the centrality of the graticule [the network of latitude and longitude lines] to establishing the epistemological truth of geographic representation.99 As set out in Chambers’ Cyclopaedia, the first qualification (of three) that every map must have was ‘That all Places have their just Situation with regard to the chief Circles of the Earth, as the Equator, Parallel, Meridians, & c. because on these depend many Properties of Regions as well as Celestial Phenomena’.100 Similarly, Samuel Johnson defined a map in 1755 as ‘a geographical picture on which lands and seas are delineated according to the longitude and latitude’.101 In Sayer v Moore, Captain Stephenson informed the court that Moore’s maps ‘were constructed upon the true principles of Mercator’s sailing; but Mr Sayer’s were neither Plane nor Mercator’s Charts: they were contrary to every received principle of geography and navigation, and consequently erroneous’.102 In other words, Sayer’s charts were inadequate not just because they were inferior, but because they breached Enlightenment epistemology; they did not conform to the very definition of a map. In the case brought against Moore by David Steel, Stephenson appeared again. This time he offered to point out 106 places where errors in Steel’s chart were corrected in Moore’s. The second witness to appear for Moore was James Porteous, the master of the royal yacht Augusta. Porteous’s evidence was so compelling that Steel’s counsel agreed to be nonsuited and Lord Kenyon was moved to express his own indignation at Steel’s temerity in publishing such poor quality charts.103 97 EI Carlyle, ‘Wales, William (bap. 1734, d. 1798)’, rev Derek Howse, Oxford Dictionary of National Biography (Oxford, Oxford University Press, 2004) www.oxforddnb.com.rp.nla. gov.au/view/article/28457. 98 ibid. 99 Edney, ‘Reconsidering Enlightenment Geography’ (n 60) 172. 100 E Chambers, Cyclopaedia, or, an Universal Dictionary of Arts and Sciences, Vol 2 (London, Chambers, 1728) 496. 101 Edney, ‘Reconsidering Enlightenment Geography’ (n 60) 172. 102 ‘Extracts from a Letter Written to James Bogle French Esq, Foreman of the Special Jury who tried the Cause in the King’s Bench, at Guildhall, between Messrs Sayer and Bennet, Plaintiffs, and Mr John Hamilton Moore, Defendant, by Mr John Stevenson, one of Mr Moore’s Witnesses’ in Moore, The New Practical Navigator (n 10). 103 ‘Extract from the Sunday Gazette of the 8th of March, 1789’ (n 10) Moore.

Sayer v Moore (1785) 79 However, it was in the final case, Heather v Moore, that Thomas Erskine’s rhetoric fully fleshed out the ideological synergies between Enlightenment map-making and Enlightenment law-making. Erskine opened by asserting that the principle upon which Heather should succeed was ‘the clearest, the wisest, and most conformable to the spirit of the Law’.104 He explained to the jury that the law’s policy was to secure to ‘persons who had been at great labour and expence, the fruits of their labour, by preventing others for a certain period from copying their works’.105 The reason that a monopoly could subsist in such a thing as a chart, despite it not being entirely original or new, was, according to Erskine, because they had at last reached ‘that state of perfection which enables the Navigator to go with safety from one part of the world to another’.106 This had been achieved because ‘various persons have contributed to fill up the measure of human knowledge, for the benefit of mankind, by inserting their discoveries, and adding something to that which was known before’.107 Indeed, it was this very perfection which led to charts being copied. As Erskine explained: It was impossible for a man to make a Chart of the British Channel, and not to place the Capes and Promontories as they had been before; Ireland lay West of England, and Scotland North of England; but the great perfection and utility of Charts consisted in their accuracy, in having every place which appeared on them placed in its exact latitude and longitude, and in pointing out to the Navigator every danger which ought to be avoided. A Chart was not the work of fancy, and if a man, by way of being ingenious, should take it into his head to make a Chart, placing Ireland East of England, and Land’s-end where Berwick now stands, he would be in no great danger of having his right to such a Chart invaded.108

Moore’s problem in this case was, the plaintiff alleged, that he had both copied Heather’s chart minutely, ‘without any alteration, or the least improvement’; at the same time, it was alleged, he had ‘through his negligence omitted islands, rocks, and shoals by wholesale, which omissions rendered his Chart very dangerous, and would often prove fatal to the lives of Mariners’.109 Quite how he had managed to copy the map ‘to the thousandth part of an inch’110 and yet also insert errors was not clear. Indeed, the evidence of Stephenson seemed to suggest Heather’s chart contained the same errors. The main point, however, was that Moore’s chart was not superior to Heather’s, nothing new was added and no improvements made. His chart

104

‘Trial of John Hamilton Moore’ (n 54) 1.

106

ibid 2.

105 ibid. 107 ibid. 108 ibid. 109 ibid. 110

ibid 3.

80 Isabella Alexander therefore did not align with Enlightenment values, nor indeed serve the demands of empire and mercantilism. If Moore were to be allowed to carry on in this way, Erskine said: the wisdom of the legislature would be defeated, a stop would be put to the enlargement of human knowledge, and to the future discoveries of men of science, to all works of invention and improvement whatever; and it would be totally impossible hereafter, ever to place any dependence on a Sea Chart, a thing of the utmost importance in carrying on the vast trade of this commercial country.111

In this case, Moore lost the battle of the experts. His counsel, Gibbs, was forced to concede that Moore had copied Heather’s chart, but argued that Heather himself had copied from an earlier publication of Moore’s. His witnesses were two engravers, Warner and Chapman, as well as two other witnesses whose occupations are not identified. However, as the Express and Evening Chronicle noted, ‘their evidence fell far short of proving the alleged fact’.112 As noted previously, the jury found for Heather. It is also apparent that the judges involved in the three cases, Lord Kenyon and Lord Mansfield, seem likewise to have conceived of their roles as interpreting the law in a way which would further Enlightenment ideology, in particular scientific accuracy and the furthering of British commercial and imperial interests. Lord Mansfield began his directions to the jury with the portentous announcement that ‘The rule of decision in this case is a matter of great consequence to the country’.113 He clearly envisaged his task as one of finding a solution that would foster ‘improvements’, ‘progress of the arts’ and the usefulness of knowledge. Lord Kenyon likewise saw clear links between the outcome of the cases before him, and sought to influence the jury to reach a verdict that favoured accuracy by focusing on the evidence relating to navigational science. In Heather v Moore he commented that: So many differences between them have been pointed out to me, in a very intelligent manner by Captain Stephenson, that I cannot consider the Plaintiffs’ Chart as a servile copy of the others; but that the minute information respecting the bearings, in the Plaintiffs’ Chart, seems to me to distinguish it most emphatically, from the other Charts of the Defendant.114 (emphasis added)

This time it was Heather who had copied and improved Moore’s maps, thereby acquiring the new copyright, which Moore had now infringed. Thus, in each case, the legal decision as to whether copyright was infringed was informed by an assessment of who had produced the ‘better’ map—and better meant more accurate, more scientific in appearance, more in tune

111 ibid. 112

Express and Evening Chronicle (London, 3 March 1798) 1. Sayer v Moore (n 1). 114 ‘Trial of John Hamilton Moore’ (n 54) 4. 113

Sayer v Moore (1785) 81 with Enlightenment ideology and more useful to the commercial and military needs of the expanding empire. However, the process was not complete when the court gave the imprimatur of scientific and navigational superiority to one of the publications in dispute. While this might have ended the legal proceedings, the decisions of the court had a further role to play. Lawyers know of the case of Sayer v Moore because it appears in Lord Mansfield’s notebooks,115 and because a report was belatedly published as a footnote to Cary v Longman.116 However, Moore himself was interested in publicising the proceedings. He began by inserting short descriptions of the Sayer v Moore and Steel v Moore cases in the ninth edition of The Practical Navigator.117 Two years later, in The New Practical Navigator, he published much more detailed descriptions of both cases. In the case of the former, he included a letter which Mr Stephenson was said to have written to the foreman of the jury, itself in response to a paragraph in the Public Ledger (which I have been unable to locate).118 In the same volume Moore also published a report of Steel v Moore, which was extracted from the Sunday Gazette.119 Understandably, Moore did not publish a report of Heather v Moore, but a pamphlet containing a report of the case was published, with only the printer identified.120 It is probably not too fanciful to suppose that the hand of Heather was involved. These reports were far from neutral; each emphasised the qualifications of the witnesses in favour of their own arguments, and minimised or ignored the credentials of those on the other side. For example, in the extract describing Steel v Moore, Mr Porteous is described as ‘pilot to the squadron in the North Sea’, while it is further noted that ‘Mr Moore was prepared, had it been necessary, with three other masters of the Royal yachts, besides many experienced navigators.’121 Although Captain Stephenson was prevented from giving all his evidence (the Court apparently satisfied with not hearing details of each of the 106 errors he had located), the extract makes some amends for the lack, by enumerating several of them. For good measure, the anonymous author finishes by criticising Steel’s mapmaker, Chandler, as well as Trinity House for accepting his dedication: Mr Chandler dedicates his Chart, by permission to the Elder Brethren of the Trinity House; but the misplacing of the Oaze-land is so glaring, that those Elder Brethren, who are so well acquainted with the Nob Channel, must have discovered it at first view; and, if they granted permission without examination, they

115 Oldham,

Mansfield Manuscript (n 33) 770–71. Cary v Longman (n 2). 117 Moore, The Practical Navigator (n 10). 118 Moore, The New Practical Navigator (n 10). 119 ibid. 120 ‘Trial of John Hamilton Moore’ (n 54). 121 ‘Extract from the Sunday Gazette’ (n 10). 116

82 Isabella Alexander may be deemed, if possible, more highly culpable. The most rational supposition, is, that Mr. Chandler has laboured under something, which, to say the least, appears very like a mistake!’122

The pamphlet published following Heather’s victory also follows its report of the case with five additional pages of evidence of the errors in Moore’s map and finishes with a final rhetorical flourish: In short, the omissions and errors in Mr. Moore’s Chart are so numerous, and several of them so exceedingly dangerous, that the negligence of the Engraver, and the inattention of the Publisher, must excite the indignation of every one, who properly regards the safety of our valuable Shipping, our extensive Commerce, and our inestimable Seamen!123

These publications therefore performed a similar role to the geographical memoirs discussed by Edney; they provided an account of the charts’ production as well as a validation of other textual claims made upon the chart as to their authority, accuracy and superiority. The court and the law of copyright were pressed into service as a badge of legitimacy attached to the geographic outputs of the mapmaker himself. IV. WHERE ARE THEY NOW?

As the eighteenth century gave way to the nineteenth, what became of our four litigious chart-makers? Moore’s business, highly successful at the end of the century, went into decline in the early nineteenth century and Moore experienced a run of bad luck. At least twice his maps were blamed for the loss of ships at sea in court martial proceedings. In each case the captain blamed Moore’s chart for the wreck of their ships, and were consequently exonerated.124 He seems to have spent some time in the Marshalsea for a debt owed to his shopman George Woulfe.125 Then he lost his sight following an illness and became embroiled in a dispute with his son-in-law, Robert Blachford. Blachford claimed the two went into a partnership which was later dissolved; Moore maintained he was taken advantage of and tricked.126 He was declared bankrupt on 1 August 1806 and died in Essex on 30 October 1807.127 Blachford continued in the chart and navigational text business, somewhat intermittently, but in 1835 the firm passed to another family member Michael Blachford, who was joined by a new partner, James Imray. 122 ibid. 123

‘Trial of John Hamilton Moore’ (n 54) 8. ADM1/5355 (27 December 1800), ADM1/5369 (17 April 1805). 125 IND1/6289. 126 C13/51/11, C13/487/49. 127 Worms and Baynton-Williams, British Map Engravers (n 14) 461. 124

Sayer v Moore (1785) 83 William Heather’s business flourished for some years, but he died in 1812 at the comparatively early age of 46. He left legacies to the two ‘natural or reputed daughters’ of John Hamilton Moore (one of whom had married Blachford).128 The business was purchased by his assistant John Norie (who had also worked for Moore and appeared as a witness against him in Heather v Moore) and George Wilson. David Steel died in 1799, leaving his stock in trade to his children. He was briefly succeeded by his son, then his widow, but in 1819 his business was also purchased by John Norie for more than £4,000. Robert Sayer’s business continued to flourish. He served on the court of the Stationers’ Company but declined the position of Master and he was able to purchase a large country house in Richmond in 1776.129 He died a very wealthy man in 1794 at the age of 65. On his death, he was succeeded in business by his assistants Robert Laurie and James Whittle.130 The nineteenth century saw the private chart-sellers continue in business, their fortunes rising and falling in turn. Eventually, in 1904, the four firms founded by Moore, Sayer, Steel and Heather merged to form Imray Laurie Norie & Wilson Ltd. The firm is now based in St Ives, Cambridgeshire, where it continues to produce sailing charts in paper and, now, digital form.131 V. CONCLUSION

A detailed examination of Sayer v Moore places it in the context of an ongoing trade rivalry. The sea chart cases against John Hamilton Moore are a rich source of information on the business activities of the London chart-sellers and, in particular, shed light on how that trade responded to the introduction of copyright law. Indeed, the litigation brought into focus a problem that had been simmering in the map trade for some time. In a highly competitive, high-risk and capital intensive business, a key way to cut costs and introduce a measure of security was to copy the successful maps of others. However, the best way to gain an edge over one’s competitors was to produce a better product. This could mean a more aesthetically pleasing map for some purchasers but, with Britain’s empire expanding, and growing numbers of ships needed to transport goods in both directions, it increasingly meant a more accurate and a more useful, or serviceable, map. However, the cases should not only be seen in relation to the commercial practices and problems of map-makers and map-sellers. They also contextualise

128 Fisher,

Blueback Charts (n 13) 82. ibid 58. 130 PROB 11/1242/92. 131 See the website of Imray Nautical Charts and Books, www.imray.com. 129

84 Isabella Alexander more broadly how that particular trade fitted into Enlightenment ideals, practices, priorities and epistemology. This reveals powerful connections between the development of copyright law and Enlightenment ideology. Copyright law is revealed as being part of the process of establishing a particular view of ‘science’, deeply embedded in Enlightenment ideology, which was then applied to assess the quality of the maps in question. To borrow the phrase of David Livingstone, the court room can be seen as yet another ‘venue of science’, that is, a site in which scientific meaning is made and interpreted.132 Lacking the centralised, institutional support given to mapmaking in France, English map-makers turned to the market to produce and regulate maps, as well as to assess their quality. But the market and its associated institutions (such as the courts) were far from neutral—they themselves were very much a part of the discursive practices of Enlightenment ideology. The case of Sayer v Moore and its two successors demonstrate that copyright law was a crucial part of this process. Despite the arguments made in this chapter for its status as a leading case and its popularity with academic commentators, Sayer v Moore has not been frequently cited by courts in either the United Kingdom or Australia. There are a handful of decisions relating to works of information which refer to the case of Matthewson v Stockdale, a case presided over by Erskine, by then Lord Chancellor, in which he discussed Sayer v Moore.133 These cases tend to refer to Sayer v Moore and Matthewson v Stockdale as authority for the proposition that copyright can subsist in factual works, but neglect the actual outcome of non-infringement.134 By contrast, Sayer v Moore has been referred to numerous times since 1921 by courts in the United States, including twice by the Supreme Court.135 In most of these cases it arises in the context of discussion over the competing claims between the public interest in access to knowledge and learning and the private interests of copyright owners, generally in relation to fair use or the idea/expression dichotomy.136

132 DN Livingstone, Putting Science in its Place: Geographies of Scientific Knowledge (Chicago, University of Chicago Press, 2003). 133 Matthewson v Stockdale (1806) 12 Ves Jun 270, 274. 134 Desktop Marketing Systems Pty Ltd v Telstra Corporation Limited [2002] FCAFC 112; Law Society of Upper Canada v CCH Canadian Ltd [2004] 5 LRC 428 (Federal Court of Appeal); Independent Television Publications Limited v Time Out Limited and Elliott; the British Broadcasting Corporation v Time Out Limited and Elliott [1984] FSR 64. 135 Sony Corporation of America v Universal City Studios, 464 US 417, 479 fn 33 (1984) (Blackmun J), Twentieth Century Music Corp v Aiken, 422 US 151, 156 fn 6 (Stewart J). 136 Cases referring to it in relation to fair use include: Sony Corporation of America v Universal City Studios, 464 US 417, 479 fn 33 (1984); Rosemont Enterprises Inc v Random House and John Keats, 366 F 2d 303 (2d Cir 1966) (Moore J); Henry Holt & Co v Liggette Myers Tobacco Co, 23 F Supp 302, 303 (E D Pa 1938) (Maris J). Cases referring to it in relation to the idea/expression dichotomy include: Bevan v Columbia Broadcasting Systems Inc, 329 F Supp. 601, 604–05 (SDNY 1971) (Tyler J); Whelan Associates Inc v Jaslow Dental Laboratory

Sayer v Moore (1785) 85 The United States, of course, has enshrined the Enlightenment ideal of ‘progress’ in its Constitution,137 and its doctrine of fair use resonates much more clearly with Lord Mansfield’s statement than the corresponding fair dealing exceptions of Britain and her former colonies. However, as Ariel Katz has pointed out, ‘While the US Constitution might be considered as one of the highlights of the Enlightenment, those ideals were not invented by the Framers and did not originate in the American colonies.’138 In Australia, the High Court has suggested that the relationship between Enlightenment ideals and copyright law has normative force: In both its title and opening recitals, the Statute of Anne of [1710] echoed explicitly the emphasis on the practical or utilitarian importance that certain seventeenth century philosophers attached to knowledge and its encouragement in the scheme of human progress. The ‘social contract’ envisaged by the Statute of Anne, and still underlying the present Act, was that an author could obtain a monopoly, limited in time, in return for making a work available to the reading public.139

However, as has been noted elsewhere,140 this led the Court to a decision that raised the threshold of copyright protection rather than establishing a more flexible approach to infringement. Thus, it may well be that in both Australia and the United Kingdom the way in which copyright law has developed, in particular the doctrine of fair dealing, has severely circumscribed the extent to which considerations flowing from Enlightenment ideology are incorporated. Questions of access to information and encouragement of learning can affect the way decisions relating to infringement are made. In response to those who suggest that fair use should not be exported, and could not work, outside the United States, examining the three cases of Sayer v Moore, Steel v Moore and Heather v Moore should remind us that the copyright laws of Great Britain and all her former colonies draw upon the Enlightenment project. In the eighteenth century, copyright doctrine developed in accordance with Enlightenment

797 F 2d 1222, 1235 fn 27 (3d Cir 1986) (Becker J); Alexander v Irving Trust Company, 132 F Supp 364, 368 (SDNY 1955) (Bicks J); Stanley v Columbia Broadcasting System, 35 Cal 2d 656, 673 (SC Cal 1950) (Traynor J, dissenting); Echevarria v Warner Bros Pictures, 12 F Supp 632 (SD Cal 1935), per Yankwich J (quoting judgement in Eichel v Marcin). 137 See M Birnhack, ‘The Idea of Progress in Copyright Law’ (2001) 1 Buffalo Intellectual Property Law Journal 3. 138 A Katz, ‘Fair Use 2.0: The Rebirth of Fair Dealing in Canada’ in M Geist (ed), The Copyright Pentalogy: How the Supreme Court of Canada Shook the Foundations of Copyright Law (Ottawa, University of Ottawa Press, 2013) 98. 139 IceTV Pty Limited v Nine Network Australia Pty Limited [2009] HCA 14 [25]. The seventeenth-century philosophers are identified in the footnotes as Francis Bacon and John Locke, two central Enlightenment thinkers. It is further notable, in relation to the discussion above at Part II, that Diderot and D’Alembert dedicated their Encyclopédie to Locke, Bacon and Newton. 140 See Alexander, ‘Manacles upon Science’ (n 2).

86 Isabella Alexander ideals and imperatives which sought to foster particular attitudes towards the collection, organisation and dissemination of knowledge, as well as the drive to deploy that knowledge in ways which would further the interests of commerce and economic growth. Today’s policymakers, who embrace the latter commercial consideration when discussing and formulating copyright policy, would do well to remember the former knowledge-centred approach.

4 Day v Day, Day and Martin (1816) LIONEL BENTLY*

A

LTHOUGH BY 1800 there was regular use of the common law to protect traders against misuse of their marks by rivals,1 there was no such practice in the Court of Chancery. This meant that, in the superior courts, traders were limited to claims for past damages, and could not obtain orders prohibiting future infringement. However, within a matter of decades, it had become normal for such traders to begin proceedings by seeking injunctive relief in equity. In due course, the action for ‘passing off’ would come to be seen as a creation of the Chancellor.2 This chapter explores the first instances of injunctive relief for misuse of trade marks.3 Between 1813 and 1821, Charles Day, the sole owner of the firm Day and Martin, a hugely successful manufacturer of boot polish (‘blacking’), brought proceedings on 14 occasions seeking injunctive relief against competitors, succeeding in 11 of these suits. Of all the cases, Day v Day, Day and Martin attracted the most attention, but it is the litigation as a whole that seems to have signalled an important shift in trade mark enforcement practice. * Herchel Smith Professor of Intellectual Property Law, University of Cambridge. Versions of this paper were given at the law firm, Visser Schaap & Kreijger, Amsterdam, in April 2016; the ‘Fusion or Fission?’ workshop at St Catherine’s College, Cambridge, in August 2016 and the Society of Legal Scholars conference, Oxford, September 2016. I am grateful for the comments received from participants in those events, as well as from Dev Gangjee, and to Tomas Gómez-Arostegui both for his generous advice on historical sources and for his careful reading of an earlier draft. Sources that begin with C (Court of Chancery) are stored in the National Archives of the United Kingdom in Kew, England. 1 L Bently, ‘The First Trade Mark Case at Common Law? The Story of Singleton v Bolton (1783)’ (2014) 47 UC Davis L Rev 969, 993 (referring to a number of decisions of the Court of King’s Bench, including Swinton v Claphamson (1765)), and 982 (referring Norton v Atkinson (1774) in Common Pleas). 2 RP Meagher, WMC Gummow and JRF Lehane, Equity: Doctrines and Remedies, 2nd edn (Sydney, Butterworths, 1984) 844, [4201]; J Heydon, M Leeming and P Turner, Meagher Gummow Lehane’s Equity: Doctrines and Remedies, 5th edn (London, LexisNexis, 2014), 1187 [43-005] (‘What is generally regarded as the modern tort of passing off is in truth the product of equity as much if not more than of law’). 3 F Schechter, The Historical Foundations of the Law Relating to Trade-Marks (New York, Columbia University Press, 1925) 138.

88 Lionel Bently Although the firm of Day and Martin was once very well known, their litigation campaign has not been the subject of previous study. This chapter begins by explaining the background to the litigation: the emergence of Day and Martin as the leading manufacturer of blacking and the firm’s growing concern with counterfeiters. After a review of the prior jurisprudence in Chancery, the chapter focuses in detail on two of Day and Martin’s 14 proceedings. The first was against former manager, Peter Statham; the second against a business established by traders also named Day, Day and Martin. Finally, the chapter considers the impact of the newly recognised procedure, its relationship with the common law action, as well as the extent to which the case is properly regarded as a leading case. The chapter concludes with Day and Martin returning to Chancery in 1843. I. BACKGROUND TO THE LITIGATION

The product at the centre of the litigation was ‘blacking’; in modern terms, black polish for leather. It was used primarily on boots and shoes, and was much in demand from those who walked the dirty London streets of the late eighteenth and early nineteenth centuries. A particularly intense shine was provided by so-called ‘Japan Blacking’, the name alluding to the glossy appearance of Japanese lacquer work. Such ‘Japan Blacking’ had been known at least as early as 1761.4 The constituents of blacking varied, and while there was evidently a trade in secret recipes for blacking, the standard ingredients would have included a mixture of black colouring made of powdered black bone, oil from sperm whales and oil of vitriol. In November 1817, Eldon LC would observe that ‘blacking surely has become very valuable’.5 The partnership of Day and Martin was established in December 1802,6 when Londoner Charles Day and Yorkshireman Benjamin Martin, then of Maiden Lane, started selling Japan Blacking according to a recipe which Martin had acquired.7 Advertisements for Day and Martin’s ‘Real Japan Blacking’ survive from as early as 1802,8 identifying its availability from

4 ‘Characters: Moral Humorous and Satirical, No XIX, John Leaptrot’ Public Ledger or The Daily Register of Commerce and Intelligence, 6 April 1761 (‘John has a most approved recipe for making Japan blacking, which he always mixes himself’). 5 Charles Day v John and James Bowling, The Morning Chronicle (3 November 1817). 6 Articles of co-partnership, 14 December 1802 (referred to in various pleadings). It seems that initially Martin had been the manufacturer and Day the chief distributor, but they soon resolved to operate as partners. 7 For an uncorroborated account of how, see ‘Shining Characters’ The York Herald (17 December 1836) (Martin acquired the recipe, while visiting the Kings Arms, St Sepulchre Gate, Doncaster, from a soldier, Thomas Florry, for a quart of ale). 8 Morning Post and Gazetteer (23 November 1802); Morning Chronicle (6 March 1804).

Day v Day, Day and Martin (1816) 89 numerous shopkeepers at one shilling and sixpence a pint.9 By 27 August 1806, the firm relocated to 97 High Holborn.10 Above the factory gates, large letters announced ‘Day and Martin 97 High Holborn’. Numbers, uncommon in London until the second half of the eighteenth century,11 had become useful ways to identify outlets, replacing the signboards of earlier eras.12 On 1 January 1808 Benjamin Martin retired and returned to Doncaster. Charles Day paid £7,000 for the recipe and £3,643 for his share of the partnership. The agreement allowed Day to continue to trade with the name ‘Day and Martin’. Day and Martin’s liquid blacking was sold in stone bottles, each containing one pint.13 On each bottle Day and Martin pasted a label stating: The real Japan Blacking made by Day and Martin 97 High Holborn This inestimable composition with half the usual labour produces the most brilliant jet black ever beheld fully equal to the highest japan varnish and affords peculiar nourishment to the leather will not soil the finest linen is perfectly free from any unpleasant smell and will retain its virtues in any climate. Directions for use. Let the dirt be brushed clean off. Stir up the blacking with a small cane or brush till it is well mixed then lay it on your blacking brush as thin as possible with which you black the boot or shoe equally all over. Apply your

9 ‘The Real Japan Blacking, Made by Day and Martin’, The Times (27 May 1803) (when operating from 10 Tavistock Street, Covent Garden), ‘in stone bottles’. 10 ‘The Real Japan Blacking, Made by Day and Martin’, The Times (27 August 1806). The Factory, located on part of the land owned by the Holborn Charity Estate, was said to have been built at a cost of £12,000: J Timbs, Curiosities of London (London, Longman, Green, Reader and Dyer, 1868) 431. The Holborn factory burned down in 1869, causing the firm to relocate, initially at Nine Elms, and following a further fire, to Borough Road: ‘Destructive Fire’, The Times (4 September 1869) 7; ‘Destructive Fires’, The Times (4 March 1870). 11 Although there is some indication of house numbering in the early eighteenth century, there were no regulations until the 1760s. Sir Ambrose Heal, Sign Boards of Old London Shops (London, Portman Books, 1957) 2–3, describes how very few of the entries in the London Directory for 1765 include numbers, whereas by 1770 around three-quarters did so. Reuben Rose-Redwood, ‘Indexing the great ledger of the Community: urban house numbers, city directories, and the production of social legibility’ (2008) 34 J Hist Geog 286, 287, tells us that ‘the Court of Common Council passed a law in 1765 that the city was officially required to number houses and place street signs at the corners of each intersection. One year earlier, the Post Office had extended home delivery beyond the London city limits, and the further expansion of postal services during the nineteenth century contributed to the growing use of house numbers in cities throughout England’. 12 On signboards, see D Garrioch, ‘House Names, Shop Signs and Social Organization in Western European Cities, 1500–1900’ (1994) 21 Urban History 20–48 (explaining the multiple functions of shop signs and describing the changing historical roles of such signs); ibid 36ff (noting reasons for gradual decline of signboards, including 1762 ban on overhanging signs, demographic changes in those who used the city and their capacity to ‘read’ signboards, but also the rise in the use of male surnames, such as ‘Day’ or ‘Martin’ to identify businesses). 13 From around 1812, there were relatively tight restrictions on the shape and size of blacking bottles: J Basford, ‘A Commodity of Good Names’: The Branding of Products, c. 1650– 1900 (PhD, University of York, 2012) 216, Ch 4. By 1816, Day and Martin was selling half pint bottles at tenpence.

90 Lionel Bently shining brush immediately and in one minute it will produce the brilliant lustre and jet black ever behold. No half pints made. Day and Martin. Price 1’ 6 each

Day and Martin had entered a competitive market. Other leading blacking manufacturers were Bayley & Blew, Perfumers, Cockspur St;14 Thomas, and later Robert, Warren from 14 St Martin’s Lane;15 Jonathan Warren, Thomas’s brother, initially of Great Suffolk Street, Haymarket;16 and Richard (‘Rich’) Turner of 114 London Road, Southwark.17 Nevertheless, Day and Martin quickly made an impression. Like the booksellers and medicine makers of the eighteenth century,18 Day and Martin engaged heavily in marketing, including billboards,19 placards, trade bills and, despite the applicable stamp duty (now at three shillings and sixpence per advert),20 newspaper advertising which became noticeably more frequent towards the end of the decade. Most of the advertising emphasised the quality of the product and its effect, some warned of counterfeits, and some used more literary techniques (poems, rhymes and the like). Indeed, some of Day and Martin’s advertisements were rumoured to be by Lord Byron.21 According to one account, their ‘puffs and poems enrich[ed] every newspaper 14

Bayley had been granted a patent for blacking cakes on 17 January 1771. was succeeded in 1805 by his son Robert. From 1816, Robert operated from Number 30 in the Strand. See R Williams, ‘Advertising: The Magic System’, in Problems in Materialism and Culture (London, Verso, 1980) 173 (who suggests that ‘the first nationally advertised product was Warren’s shoe blacking’). In Warren v Lamert, Morning Chronicle (14 November 1827), counsel for Warren claimed that it was the most famous maker of blacking, but Eldon LC responded that Day and Martin was its equal. 16 From 1821 at 30, Hungerford Stairs, Strand and from 1824, at 3, Chandos Street, Covent Garden. In 1822, Jonathan Warren sold the blacking business to Edward Woode in return for an annuity of £250. Warren died in 1825. 17 Turner was advertising in The Times from as early as 20 December 1815, but was bankrupt by 1826. He was deceased by 1828, by which time Taylor and Sadler, operators at the same address, claimed to have Turner’s recipe: Leicester Chronicle (13 December 1828). 18 Bently, ‘The First Trade Mark Case’ (n 1) 975–76. 19 For evidence of the advertising practices of Day and Martin’s competitor, Richard Turner, see Jones v Turner, The Times (23 August 1825) (describing practices of daubing ‘Use Turner’s Blacking’); The Times (14 January 1824) (evidence of Charles Delaport, painter for Warren, Turner and Dr Eady). 20 Initially one shilling per advertisement when first imposed by (1712) 10 Anne, c 12, the duty reached three shillings and sixpence per advertisement during the Napoleonic wars (it was abolished in 1853). See Williams, ‘Advertising: The Magic System’ (n 15) 173; A Bruttini, ‘Advertising and Socio-Economic Transformations in England, 1720–1760’ (1982) 5 Journal of Advertising 8 (surveying the development of newspaper advertising in the 18th century). 21 Lord Byron, The Two Foscari: An Historical Tragedy (Paris, Galgnani, 1822) 184 (Byron denies having received £500 from Day and Martin, but said that the accusation was ‘the highest compliment to my literary powers which I ever received’); J Wilson, Noctes Ambrosianae (New York, Widdleton, 1872) 211 (reproducing Odoherty’s verse on Byron’s denial, which first featured in Blackwood’s Magazine for 1822); N Mason, Literary Advertising and the Shaping of British Romanticism (Baltimore, Johns Hopkins University Press, 2013) 52–53 (discussing the links between Byron and Day and Martin, and suggesting Byron treated himself as a ‘brand’). 15 Thomas

Day v Day, Day and Martin (1816) 91 of the day’,22 not just in London but throughout the country.23 These values were linked with the name ‘Day and Martin’ and, taking account of the new ‘spatial rationalities’ of the city, also with the prime number, 97, that identified the factory. The business was a phenomenal success. By 1806, it is clear that the firm had distributors all over Great Britain,24 and by 1814 it was the market leader, styled the ‘King of Blacking Makers’.25 In 1821, in the Court of King’s Bench, the doyen of the bar, James Scarlett, observed that their fame ‘has spread through every clime’, and asked playfully ‘for who, with the slightest pretence to polish, could be unacquainted with the name Day and Martin?’26 Day and Martin were ‘the blackest, yet brightest, characters of the age’. Charles Day, who was attested to have been ‘a man possessing a very strong and acute mind’, ‘remarkably clear in his intellect’, with a ‘quite wonderful’ skill with numbers,27 amassed ‘a very large fortune’.28 When he died in 1836, he left an estate worth at least £340,000, including houses in Regent’s Park and Edgware Place as well as the Manor in Caterham in Surrey.29 The firm continued to operate very successfully well into the twentieth century.30 22 (1821) Annual Register (June) 99. For some examples of ‘poems’ from Day and Martin’s competitors, Turner and Warren, see (1817) 5 The Literary Panorama and National Register 852–54. For use of imagery by Turner, see Bristol Mercury, 1 Feb 1819 (image of gentleman shaving using cut-throat razor and relying on the shiny boots as a mirror). 23 ER McFall, Advertising: A Cultural Economy (London, Sage, 2004) 161 ff. 24 Jackson’s Oxford Journal (1804); Aberdeen Journal (26 September 1804), (distributors in Aberdeen, Inverness, Montrose); Bury and Norwich Post (12 December 1804), (identifying distributors in Bury, Norwich Cambridge, Newmarket, Ipswich, Wisbech, etc); York Herald (York, Ripon, Darlington, 29 June 1805); Hampshire Telegraph (Portsmouth, Southampton, Gosport, 5 August 1805); Lancaster Gazette, (Manchester, Liverpool, Preston, Lancaster, 4 January 1806). As their pleadings in their Chancery cases explained, Day and Martin had ‘succeeded in forming and establishing an extensive connection for the sale of the said composition to merchants, shopkeepers, dealers and others who purchased the said composition for exportion or for the purposes of selling again by retail’. 25 The Morning Chronicle (31 January 1814). 26 (1821) Annual Register (June) 99. Scarlett (1769–1844) was later made Lord Chief Baron, Lord Abinger. 27 Croft v Day (1838) 1 Curt 782, 789, 163 ER 271, 274 (Sir Herbert Jenner). Day had been blind for 20 years before his death, which explains the substantial legacy he left to ‘the Blind Man’s Friend’, a charity now run by the Clothworker’s Company under the name ‘The Clothworkers’ Charity for the Welfare of the Blind’. 28 Croft v Day (1838) 1 Curt 782, 787, 163 ER 271, 273 (Sir Herbert Jenner). 29 25 October 1835; (1836) Annual Register 215 (stating £450,000). In Croft v Day (1838) 1 Curt 782, 163 ER 271, concerning the validity of various codicils made in the weeks before Charles Day’s death, the figure was put at £340,000, comprising personal property worth £200,000 and real property valued at £140,000 (Prerogative Court). Day left the house at Edgware to his wife, Rebecca, and Harley House in Regent’s Park to his daughter, C aroline Clagett (the wife of Horatio Clagett, who, by contrast, was many times bankrupt: see Re Clagett’s Estate (1882) 20 Ch D 637 (CA)). 30 ‘Advertising Considered as an Art’ (1844) Chambers Edinburgh Journal 401 (Day and Martin was ‘quite as well known to the public at large as Scott of Abbotsford, and Wellington of Waterloo’).

92 Lionel Bently The legal proceedings with which we are concerned arose because of a growth in competitors who imitated Day and Martin’s name, address, labels and get-up. Day and Martin was not the first blacking firm to encounter such an issue: Bayley and Blew had complained about the counterfeiting of their names on blacking during the last decades of the eighteenth century.31 Charles Day’s tolerance had, however, become clearly strained by 1812, when the firm began to advertise details of the ‘counterfeits’. He warned customers that: Many of the counterfeits say, as made by Day and Martin; others have 97 Holborn, leaving out the word High; and some have a small (nr) before the original number.32

The following year, Day even went so far as to register his label for copyright protection at Stationers’ Hall,33 such registration being a necessary prerequisite to obtaining the penalties and forfeitures of the Statute of Anne (1710). Although Day was never to rely on copyright, the very act of registration is indicative of a desire to claim publicly his proprietorship of a mark (thus foreshadowing the demand for a trade mark register in the 1850s and 1860s).34 Later Charles Day would try to educate purchasers in techniques that would enable them to avoid being taken in by lookalike products. He produced a label with characteristics that were difficult and expensive to copy, and educated customers to look out for such specificities.35

31 Bayley had complained about counterfeits from the mid-1770s, when he took action against John Desoer, but for patent infringement (rather than infringement of the mark): Notice by John Desoer, 16 October 1775 in The Public Ledger (22 May 1776). Bayley and Blew continued to complain about counterfeiting: Morning Chronicle (22 July 1780); The Times (8 April 1799). 32 The Times (23 October 1812). As noted below, the rival operating at 97 Holborn was Alexander Christie, who Day and Martin would attempt to enjoin in 1814; the small ‘nr’ before ‘97 High Holborn’ was included by John and James Bowling, against whom Day would commence proceedings in January 1817. See also The Times (25 December 1811) (complaining about ‘swindlers’ using, inter alia,’97 Holborn’). 33 27 December 1813: A list of all the publications entered at Stationers Hall, since June 9th, 1815, the date of the last return to the Honourable House of Commons, 1817 Parliamentary Papers (236). 34 It also anticipates what would become the common twentieth century practice of relying on copyright in labels to prevent undesired circulation of products: Elanco Products v Mandops (Agrochemical Specialists) [1980] RPC 213 (CA) (former patentee successfully relied on copyright in label against producer of generic pesticide); Euro-Excellence Inc v Kraft Canada Inc., 2007 SCC 37, [2007] 3 SCR 20; R & A Bailey & Co Ltd v Boccaccio Pty Ltd & Ors (1986) 4 NSWLR 701 (Young J) (vendors in Australia of imported bottles of sherry upon which were affixed labels in which copyright subsisted infringed copyright in label), reversed by Copyright Act 1968 (Aust), ss 44C (‘The copyright in a work a copy of which is, or is on, or embodied in, a non-infringing accessory to an article is not infringed by importing the accessory with the article’), s 10 (defining ‘accessory’). 35 In ‘Fraud Prevented’, an advertisement in The Times (25 January 1817), Day informed readers that ‘many attempts … are daily made to impose on the unwary a spurious composition instead of the GENUINE BLACKING …’ To counter these, Day and Martin announce that it had adopted a new label with 97 ‘to be placed so conspicuously that they trust an attention to this, and the differences of the type, which is unlike all letter-press, will enable purchasers at once to detect the imposition’.

Day v Day, Day and Martin (1816) 93 Perhaps not surprisingly, Day and Martin also sought to use judicial means to suppress these imitators. Over the eight years from 1813 to 1821 Charles Day was to bring at least 14 sets of proceedings to suppress counterfeiting. Although such a campaign of litigation was itself unprecedented (and possibly never repeated), what was legally innovative about these cases is that they were proceedings in Chancery. By 1810, it was well established that the common law courts (King’s Bench, Common Pleas and Exchequer) would hear such actions, resulting often in substantial damages awards: for example, in 1814, in Cocks v Shout, the claimant, who had sold ‘Cocks’s Reading Sauce’ brought an action in Exchequer against Benjamin Shout, an oilman of Great Queen Street, and obtained £105 in damages.36 However, the fate of proceedings in Chancery for injunctive relief were much less certain. II. THE PRIOR JURISPRUDENCE

There had only been two reported cases that could sensibly be regarded as Chancery precedents in relation to misuse of trade marks: Blanchard v Hill and Hogg v Kirby. The former suggested that proceeding in Chancery was pointless; the latter, however, suggested otherwise. In Blanchard v Hill (1742),37 the plaintiff, Christopher Blanchard,38 was a maker of playing cards, in particular a card marked with a picture of the emperor of Delhi, with the words ‘The Great Mogul’ above. The defendant, Thomas Hill, also a card-maker,39 had printed and sold cards that also bore a similar image of The Great Mogul. When Blanchard discovered what Hill had been doing, he advertised that he would be pursuing the counterfeiter for a ‘remedy at Law’.40 Hill was not cowed, and placed counter-advertisements in various newspapers directly next to Blanchard’s. Blanchard pursued the

36 Cocks v Shout, 20 May 1814 (Chief Baron, Special jury), Lancaster Gazette (16 July 1814). Counsel for Cocks, Thomas Jervis, explained that such cases had occurred before and there was no need for him to recite those decisions as the ‘principle maintained by them is perfectly established’. The Chief Baron, Alexander Thomson, who had sat as a judge in Exchequer since 1787 (before becoming Chief Baron in February 1814), gave his assent, offering a nodding ‘Oh, certainly’: A Statement of a Trial of an Action against Mr Benjamin Shout, Oilman (Reading, 1814) 8. See TAB Corley, ‘The celebrated Reading Sauce: Charles Cocks and Co. Ltd 1789–1962’ 70 Berkshire Archaeological Journal 97–106. 37 What follows draws heavily on Norma Dawson, ‘English Trade Mark Law in the Eighteenth Century: Blanchard v Hill Revisited—Another “Case of Monopolies”?’ (2003) 24 J Leg Hist 111–42. 38 Blanchard, who operated out of the King’s Arms in Gerrard Street, was former partner, son-in-law and successor to Archibald Vans. See The Daily Courant (6 December 1711) (advertising the sale of cards by Archibald Vans from the Queens Arms, Gerard Street). 39 Formerly apprenticed to Richard Tustian, Hill was based in the ‘Knave of Clubs’ in St James, Haymarket. 40 Daily Advertiser (30 September 1742); London Evening Post (2 October 1742).

94 Lionel Bently matter not ‘at Law’ but in Chancery, represented by the Attorney-General Dudley Ryder. According to one report, Ryder referred to common law authorities, in particular the report of Southern v How, and thus indirectly to the unreported Elizabethan Gloucestershire Clothier’s case.41 Nonetheless, Lord Hardwicke LC was unpersuaded and declined to grant an injunction. An account of his reasons was reported in Atkyns’ reports:42 In the first place, the motion is to restrain the defendant from making cards with the same mark, which the plaintiff has appropriated to himself. And, in this respect, there is no foundation for this court to grant such an injunction. Every particular trader has some particular mark or stamp; but I do not know any instance of granting an injunction here, to restrain one trader from using the same mark with another; and I think it would be of mischievous consequence to do it.

Although the issue was muddied because Blanchard based his exclusive right to sell the playing cards on a Charter granted by King Charles I to the Company of the Makers of Playing Cards,43 according to this report, the Court’s reasoning seemed to preclude completely any Chancery involvement in trade mark cases,44 and it came so to be understood. Thus, for example, in 1776, Comyn’s Digest cited the case for the proposition that ‘[t]he Court will not grant an injunction to restrain one tradesman from using another’s mark’.45 A summary of the case featured in the 1805 supplement to Viner’s Abridgment with the statement ‘there was no instance of restraining a trader from making use of the same mark with another’.46 Moreover, as late as 1815, 41 Southern v How (1618) Cro Jac 468, 471; Poph 144; 2 Rolle Rep 28. On the Gloustershire Clothier’s case, JG v Samford, see JH Baker and T Milsom, Sources of English Legal History: Private Law to 1750, 2nd edn (Oxford, Oxford University Press, 2010) 673–76. 42 2 Atk 484, 26 ER 692. JT Atkyns, Reports of cases argued and determined in the High Court of Chancery, in the time of Lord Chancellor Hardwicke, 2nd edn (London, H W oodfall and W Strahan, 1765–68); (London, The King’s Law Printers, 1781). The version in the English reports derives from the 3rd edition, edited by Francis William Sanders and published in 1794. 43 The Company of the Makers of Playing Cards in the City of London, granted a Royal Charter by King Charles I on 22 Oct 1628. 44 Much later, Lord Hardwicke’s reasoning came to be viewed as erroneous. See, eg, The Amoskeag Manufacturing Co vI.S. and R., (1849) New York Leg Obs 301, 303 (‘The apprehension of mischievous consequences that this eminent judge felt and expressed, experience has shown to be groundless …’) (Duer J); E Lloyd, The Law of Trade Marks, 2nd edn (London, Yates and Alexander, 1865) 4 (‘it is not easy to follow the reasoning that led to Lord Hardwicke’s conclusions’); FH Upton, A Treatise on the Law of Trademarks (Albany, Weare C Little, 1860), 12–13 (it is not easy to understand what mischievous consequences Lord Hardwicke thought would ensue from enforcing trade marks). 45 A Gentleman of the Inner Temple, A Digest of the Laws of England Being a Continuation of Lord Chief Baron Comyn’s Digest, Brought Down to the Present Time (London, Strahan and Woodfall, 1776) 103; S Rose (ed), A Digest of the Laws of England by Sir John Comyns (London, Strahan, 1800), Vol 2, 233; A Hammond (ed), A Digest of the Laws of England by Sir John Comyns (London, Strahan, 1822) Vol 2, 426. 46 An Abridgment of the Modern Determinations in the Courts of Law and Equity: Being a Supplement to Viner’s Abridgment (London, Strahan, 1805) Vol 5, 109 (under the heading ‘Injunctions’).

Day v Day, Day and Martin (1816) 95 Henry Maddock wrote that ‘an injunction will not lie to restrain one trader from making use of the same mark with another’.47 I have argued elsewhere that the proliferation of trade mark cases at common law in the late eighteenth century can in part be understood as reflecting a widespread view that Chancery would not grant relief.48 Nevertheless, a second, more recent, authority suggested that Chancery might be more amenable to such suits. This was a decision of Eldon LC in Hogg v Kirby in 1803. In this case, the plaintiff, Alexander Hogg, a publisher of 16 Paternoster Row,49 commenced publication of a magazine, entitled Granger’s New Wonderful Museum and Extraordinary Magazine in August 1802. The defendant, Ralph Smith Kirby, who was Hogg’s neighbour at 15 Paternoster Row,50 was designated as the publisher, but according to Hogg, who claimed to be the genuine publisher, Kirby was really only a distributor of the magazine, entitled to a mere four per cent commission on sales.51 After five issues, the parties fell out, Hogg having decided to remove Kirby’s name from the further print runs of some of the early issues (the first of which had been 3,000 copies). Hogg announced he would publish the sixth issue in December 1802. However, before he could do so, on 1 January 1803, Kirby launched his own version, Kirby’s Original Wonderful Museum, or Magazine of Curiosities, for one shilling, being issue 1 of ‘a new series’.52 Hogg was incensed. It was not just that Kirby was competing, and using the title ‘Wonderful Museum’, but that his publication gave the impression that it was the continuation of Hogg’s publication.

47 H Maddock, A Treatise on the Principles and Practice of the High Court of Chancery (London, 1815) Vol 1, 134. The same statement appears in 1 Chitty’s General Prac. 721, though Joseph Chitty added that ‘in a late case’ an injunction had been granted, referring to Gout v Aleplogla (1833) (discussed infra (n 141); Robert Henley Eden, A Treatise on the Law of Injunctions (London, Joseph Butterworth, 1821) 314–15 (cites Blanchard after Day v Day, Day and Martin, but like Chitty not suggesting a way to reconcile the cases). 48 Bently, ‘The First Trade Mark Case’ (n 1) 984. 49 Hogg (1752–1809) had been a publisher at this address from the 1780s: Obituary, (1809) 79 The Gentleman’s Magazine 90–91; James Raven, The Business of Books: Booksellers and the English Book Trade, 1450–1850 (New Haven, Yale, 2007) 173 (with a map of Paternoster Row, identifying the locations of publishers including Hogg). 50 Kirby had been at that address since 1800. 51 Hogg’s printer was Michael Allen. According to Hogg’s bill, William Granger’s name was inserted as the nominal author ‘as is usual in works of that description’. However, Hogg was notorious for reissuing similar publications under different titles: see CH Timperley, A Dictionary of Printers and Printing (London, H Johnson, 1839) 838. According to Vesey’s report of Hogg v Kirby, near the conclusion of his judgment, Lord Eldon LC had stated: ‘I have considerable difficulty as to the false colours under which the original publication appears. Though this is very unusual, I cannot represent it to my mind otherwise than as something excessively like a fraud on the public. But it will be better to leave that as an ingredient in the action for damages’. 52 Jackson’s Oxford Journal (8 January 1803); The York Herald (15 January 1803); The York Herald (29 January 1803) (Kirby’s advertisements even warned his customers against imitators).

96 Lionel Bently He responded with his own newspaper adverts alerting booksellers and subscribers, to ‘the most shameful IMPOSITION’.53 Hogg decided to bring proceedings against Kirby (and his partner John Scott), filing a bill in Chancery setting out his grievance on 24 January 1803,54 followed by affidavits.55 The bill claimed that Kirby had ‘most artfully contrived the contents to make deception more complete’. For example, the fifth issue of Granger’s Wonderful Museum had announced that issue 6 would contain a portrait of a celebrated character named the Chevalier de Verdun and the sketch of the skeleton of a very curious animal called the Mammoth. Kirby had included both in his new publication. Kirby’s journal also purported to finish an article on the history of the ‘woolly mammoth’ which had been left unfinished in the fifth issue of Granger’s Wonderful Museum. Moreover, Kirby’s magazine, although purporting to be ‘No 1 of—A NEW SERIES’, contained an index to ‘the first five issues’. Hogg’s bill alleged that the effect was ‘impose upon the Publick and the Venders who had taken in the former Five numbers … and induce a belief that the same was a continuation of the genuine work’. It also charged that Kirby had instructed booksellers to assure purchasers that this was the case. Eldon LC granted an injunction until answer preventing Kirby and Scott from selling or circulating copies of the magazine, printing or publishing ‘any future number’ under ‘the same or under any similar appellation, [and] from borrowing and using the title and appellation or copying the ornaments or any part’.56 Kirby (and his partner John Scott) put in an answer, ‘denying the whole Equity’ of the claim, and sought to have the injunction dissolved.57 Hogg requested an extension of time in which to show cause to continue the injunction until the hearing, and this was granted on condition that Hogg ‘shewed cause on the merits’.58 The matter thus came to an

53 The York Herald (8 January 1803); The Hull Packet (11 January 1803); The Bury and Norwich Post (12 January 1803). 54 C13/2402/21. By this period, the various components of a bill in Chancery had become standardised. In his classic guide to Chancery pleading, F Van Heythuysen, Equity Draftsman (London, Butterworth, 1816) 1, the author describes the nine part of a Bill: ‘I. The Direction, or Address.—II. The Parties.—III. The Plaintiff’s Case.—IV. The Charge of Confederacy.—V. The Pretence and Charge.—VI. That Part which gives jurisdiction to the Court.—VII. The Interrogating Part.—VIII. The Prayer.—IX. The usual Prayer for a Subpoena or other Process.’ 55 C31/307 (affidavits of Alexander Hogg, 25 January 1803; 1 February 1803). 56 C33/520, f 173; C37/2505 (27 January 1803) (‘Take the injunction till answer or further order’). Hogg immediately added parallel suits against John George Barnard, Kirby’s printer, and Henry Delahay Symonds, a distributor: C13/2402/20 (bill of Alexander Hogg, 1 Feb 1803; answer of JG Barnard, 16 March 1803). 57 C13/2402/21 (11 February 1803); C33/520, f 154 (12 February 1803) (LC) (noting that defendant had answered; injunction to be dissolved unless plaintiff showed cause to continue it by 20 February 1803). 58 C33/520, f 212, 28 February 1803 (MR).

Day v Day, Day and Martin (1816) 97 inter partes argument on 11 and 15 March 1803.59 The case attracted some attention, and was of concern to booksellers.60 According to Francis Vesey Junior’s report of the arguments, Richard Richards and Charles Wetherell, counsel for Hogg, sought to justify intervention on the basis of ‘property in a newspaper’; implied agreement; and the duties of an agent to its principal.61 The first argument, which does not appear to have been seriously pressed, suggested that property existed in a newspaper and that an action lay for publishing any other paper under the same title.62 The second argument was that Hogg’s agreement that the defendant should be named as publisher and distribute the work carried with it the implication that when this ceased the defendant should not publish a different work under the same title. This was necessary for the ‘complete enjoyment under the agreement’. As damages would be an insufficient remedy for breach of such an implied term, an injunction should issue. The third argument put for Hogg was that the usage of booksellers, as well as equitable principles, meant that Kirby and Hogg stood in a relationship of agent and principal. Various cases were cited to support this, some concerning the publication of letters. In making these arguments, Hogg’s counsel sought to distinguish Blanchard v Hill on the basis that it concerned a situation in which there was no prior contractual relationship between the parties. The defendant, represented by Sir Samuel Romilly, alluded to Blanchard, arguing that there was no copyright but merely ‘an adventure under a certain name; such as card-makers, shoemakers, etc’, and that a breach of contract, if there was such, would not justify an injunction. Eldon LC granted an injunction until the hearing, though his precise reasons are less than clear. According to Vesey, Eldon LC was not prepared to act on the basis of implied terms derived from the usage of booksellers, nor to infer a term that Kirby would ‘never become editor, proprietor or publisher, of any work similar in species, but different in the contents’.63 Eldon LC accepted that there was copyright in Hogg’s journal, but that this would not be infringed where another person ‘set about a similar work, bona fide his own’. This might have precluded intervention on such a basis, except that the Lord Chancellor added that ‘it must be in substance a new and original work; and must be handed out to the world as such’.64 Eldon LC seems to reason from the protection afforded by copyright, noting that most such cases had involved offering a new work using material taken

59

C33/520, f 279v, 11 March 1803 (LC). Bell’s Weekly Messenger (20 March 1803) 95 (‘the above decision was looked for with much anxietyby the booksellers’). 61 8 Ves Jun 215, 217, 32 ER 336, 337. 62 They cited Watson v _____ (Hil Term 1732). 63 8 Ves Jun 222, 32 ER 339. 64 8 Ves Jun 222, 32 ER 339. 60

98 Lionel Bently from an old, rather than representing new material to ‘part of the old work’. Acknowledging that extending of copyright in this way presented ‘considerable hazard of miscarriage’, the judge indicated that while the question in a copyright case was whether the books were the same, the question here was whether the defendant represented them to be the same.65 Kirby was entitled to publish any work that was ‘really new’ but having published it as ‘the continuation of the work of another person’, Eldon decided that in such a case, an injunction should be granted. Nevertheless, he directed that the plaintiff bring an action at law to which the defendants should plead without delay, such that ‘it may be tried with all due speed’.66 According to the Order books, manuscript volumes in which Chancery proceedings are summarised along with details of the orders of the Court, the Court ruled: in as much as it appears to this Court that the work in the pleading named Kirby’s Original Wonderful Museum or Magazine of Curiosities hath been published and exposed to sale as and for a continuation of the Plaintiff’s work in the pleading mentioned His Lordship doth order that an Injunction be awarded to restrain the Defendants … from publishing or exposing to sale copy or copies of the Defendant’s said work and from printing publishing or exposing to sale any other work or publication as, or being a continuation of the Plaintiff’s work or the Defendant’s work which has been so published as such continuation as aforesaid and from printing all or any part or parts of the Plaintiff’s said work …67

One possible explanation for Hogg v Kirby is that it concerned protection of a literary work, and was an accessory to the copyright therein.68 It is notable that the bill referred to Hogg as being the sole proprietor of copyright in the magazine,69 and much of Lord Eldon’s judgment seems concerned to reason from the acknowledged copyright in issues 1–5. Moreover, the first occasion on which the case was cited in judgment was also limited to the context of publishing. In Longman v Winchester in 1809, also reported by Francis Vesey Junior,70 the claimants had published various works containing lists

65

8 Ves Jun 225, 32 ER 340. Ves Jun 226, 32 ER 340. Surprisingly, Vesey then states that no direction was given for bringing an action, which would be no use to the defendant with respect to the injunction. However, Hogg’s advertisements suggest he was contemplating such a course which would have allowed him to recover damages. 67 C33/520, f 279v. The Order continues: ‘and it is further ordered that the injunction issued in this cause to restrain the Defendant Ralph Smith Kirby from printing or publishing any of the letters or communications sent to or received by him be continued until the hearing of this cause and the further order of this Court’. 68 For other attempts to limit Hogg v Kirby, see Matthewson v Stockdale (1806) 12 Ves Jun 270, 33 ER 103 (‘Mr. Richards, in Reply, observed, that in this case there was no such ground of jurisdiction, as in Hogg v Kirby: a breach of confidence’). This, too, was a case concerning copyright in a compilation, the ‘East India Calendar’. 69 The bill recited that ‘Copy right of the said work belonged to your Orator alone no other person besides him having any Interest or right of property whatever therein’. 70 16 Ves Jun 269, 33 ER 897 (LC). 66 8

Day v Day, Day and Martin (1816) 99 of the houses of peers and commons, and the defendant had published a similar work under the name the ‘Imperial Calendar’. Eldon LC granted an injunction, inferring from the evidence of mistakes common to both works that large portions of the defendant’s work had derived from the plaintiffs’ works. Clarifying that nothing should prevent the defendant from creating its own calendar as a result of its own original labour, he observed: In the case of Hogg v Kirby (8 Ves. 215) there was no doubt, that any person might publish a work of the description, which was the subject of that Injunction: each party might publish his own collection; and the articles might happen to be the same: but the one could not excite the public curiosity by copying into his work from that of the other. The Defendant in that case had not done that: but he published a Number of a work, as a continuation of the Plaintiffs’ old work; taking the credit, which had been acquired by that, to his own; and that he was not permitted to do.

Eldon LC thus represented Hogg v Kirby as an example of a situation in which one publisher had illegitimately ‘taken credit’ of another. Moreover, in many subsequent textbooks, the case was widely cited as a ‘copyright related’ matter, rather than as a trade mark precedent.71 Lloyd, in his seminal articles on trade mark law (later transformed into the first book devoted to the topic), treated the case as falling in a separate category, suggesting that the case represented an equitable extension of the property created by the Copyright Act to include cases where, rather than material being reproduced, new material was represented as if it were a reproduction.72 Most bluntly, Charles Drewry stated categorically that Hogg v Kirby was ‘in fact a copyright case, obviously distinguishable from a trade mark case’.73 Yet Hogg v Kirby was also conceivable as a case of what we would now call ‘passing off’ (though the term was not yet known to the courts).74 The bill of complaint emphasised the work that went into producing the magazine, and its positive reception; that it was known and liked by reference to its title and appearance; and that Kirby was involved in deceiving the vendors and ultimate purchasers into viewing Kirby’s magazine as a continuation of Hogg’s series. The need for protection of business reputation from such damaging deceptive practices was not peculiar to the publishing trade. Indeed, Eldon LC encouraged just such an interpretation in

71 H Maddock, A Treatise on the Principles and Practice of the High Court of Chancery (London, W Clarke & Sons, 1815) vol 1, 125; G Jeremy, A Treatise on the Equity Jurisdiction of the High Court of Chancery (London, J and W T Clarke, 1828) 324; G Goldsmith, The Doctrine and Practice of Equity (London, Saunders & Benning, 1838) 40. 72 Lloyd (n 44) 39. 73 CS Drewry, The Law of Trade Marks (London, 1878) 9. 74 RH Eden, A Treatise on the Law of Injunctions (London, Joseph Butterworth, 1821) 313, treats Hogg v Kirby as part of a series of cases, including Day v Day, involving trade misrepresentation.

100 Lionel Bently Crutwell v Lye,75 a case concerning a business which transported goods from Bristol and Bath to London. When its owner, George Lye, became bankrupt, the business was sold by auction to Cruttwell. When Lye had satisfied his creditors, he started up in the same business, indicating he would use the same routes and times as previously. Cruttwell sought an injunction to prevent Lye competing in this way on the basis that it damaged the goodwill he had purchased. Samuel Romilly, now acting for the plaintiff, argued that that ‘conduct falls directly within the principle in Hogg v Kirby’. Eldon LC refused the injunction sought but in a rather rambling judgment referred to Hogg v Kirby, where the Defendant had a clear right to publish a similar work, under the same title as the Plaintiff’s, represented as distinct and original: but was prevented from publishing his book as the work of the Plaintiff; which had been partly published: the Injunction not going farther than to restrain the publication as the same with, or a continuation of, the Plaintiff’s work. So there can be no doubt, that this Court would interpose against that sort of fraud, which has been attempted by setting up the same trade, in the same place, under the same sign, or name: the party giving himself out as the same person.

This latter interpretation, especially, reframed Hogg v Kirby as embodying a principle of general application to all traders, and one based distinctly on fraud. In June 1813, Anthony Hart, as counsel, also relied on Hogg v Kirby in Canham v Jones,76 a case in which a former employee had started selling a medicine, known as ‘Velno’s Vegetable Syrup’, under that name. The case seems to have been presented both as one for misuse of a trade secret (the employer having originally paid £6,000 for the recipe), and wrongful use of the name. The defendant had put in a demurrer ‘for want of Equity’, referring to the Gloucestershire Clothier’s case and identifying it as involving selling cloth of inferior quality under the same mark. Hart argued that the jurisdiction in Chancery was not dependent on the capacity to bring an action at law, but ‘stands upon false representation, producing injury, aggravated in this Instance by breach of trust’.77 Plumer VC rejected the argument based upon the secret as having proceeded ‘upon an erroneous notion of exclusive property’, and distinguished the case in hand from Hogg v Kirby, as here the defendant was merely representing ‘that he sells, not the Plaintiff’s Medicine, but one of as good a Quality’. Importantly, however, the Vice-Chancellor seemed to accept Hogg v Kirby as an authority establishing a principle of applicability to all traders: the Violation of Right, with which the Defendant is charged, does not fall within the Cases, in which the Court has restrained a fraudulent Attempt by one Man 75

20 and 21 November 1810; 17 Ves Jun 335; 34 ER 129. 23 June 1813; 2 Vesey & Beames 218; 35 ER 302. 77 2 Vesey & Beames 218, 220; 35 ER 302. 76

Day v Day, Day and Martin (1816) 101 to invade another’s Property; to appropriate the Benefit of a valuable Interest, in the Nature of Good-Will, consisting in the Character of his Trade or Production, established by individual Merit: the other representing himself to be the same Person, and his Trade or Production the same; as in Hogg v Kirby …; combining Imposition on the Public with Injury to the Individual.78

However, if Hogg v Kirby was concerned with traders’ rights to prevent misrepresentation, rather than some form of ‘mutant copyright’,79 how was it to be reconciled with Blanchard v Hill (which is not mentioned in the report of the arguments in Canham v Jones)? Although counsel had raised it in Hogg v Kirby, in neither report did Eldon LC refer to the case. One possibility is that Blanchard v Hill was considered to pertain merely to claims based on ownership of marks, an idea that Hardwicke LC indicated would be rather dangerous. In contrast, Hogg did not claim to own the words ‘wonderful museum’, either in general or when used for periodical publications. Rather, the suit proceeded on the basis of a multiplicity of indications made by Kirby that his periodical was a continuation of Hogg’s.80 The distinction between use of a single sign and a deceptive course of action might have had a superficial plausibility.81 III. DAY AND MARTIN v SLEE AND STATHAM

Perhaps in the light of Canham v Jones, Day and Martin’s solicitor,82 Richard Stephens Taylor, or the firm’s counsel, Edward Wilbraham,83 thought Hogg v Kirby a sufficient indication of Lord Eldon LC’s likely approach to make it worth applying to Chancery for injunctive relief in a ‘trade mark’ case. The basis of the claim would be reputation built up by use of a name (‘Day and Martin’) in combination with a number (‘97’) and other matter (its bottle, labels and so on). As such, it would be clearly

78

2 Vesey & Beames 218, 221; 35 ER 303. Dastar v Twentieth Century Fox, 539 US 2334 (2003) (Supreme Court of United States). 80 In the decades prior to the Trade Mark Registration Act 1875, courts would frequently state that while there was no ownership or ‘copyright’ in a mark, the court would intervene to prevent fraud: Farina v Silverlock, (1855) 1 K & J 509, 515; 69 ER 560, 563 (where Page-Wood V-C refers to Blanchard in this way). 81 Indeed, the distinction between technical trade marks, and other deceptive practices, became a fundamental feature of US law at the end of the nineteenth century, but the purpose of the distinction was rather the opposite to the way it would have had to be used to reconcile Blanchard with Hogg. See, eg, R Cox, ‘The Prevention of Unfair Competition in Business’ (1891–92) 5 Harvard L Rev 139. The distinction was only ‘superficially’ plausible because whether based in use of a single mark or a more general course of action, the effect was precisely the same: to deceive purchasers into thinking Hill’s cards had been made (and were the quality of those made) by Blanchard. 82 Operating out of Gray’s Inn. 83 Wilbraham had a ‘moderate practice, not a very large one’: Evidence to Select Committee on Clerk of the Crown in Chancery (1844) PP 455, Q 206. 79

102 Lionel Bently istinguishable from the facts of Blanchard, being neither based in a guild d nor its Charter, nor involving use of an image. The first suit which Charles Day filed, Day and Martin v Slee and Statham, was brought against Samuel Slee and Peter Statham. The latter had been the general manager at Day and Martin and, having gone their separate ways, ended up in competition.84 Statham went into business first with Samuel Slee and later with Joseph Scott. It seems Charles Day was annoyed to find his former servant purporting to sell the ‘real’ Day and Martin blacking, when he had himself paid £7,000 to Martin for the exclusive benefit of the recipe. However, the law on use of trade secrets by former employees had not yet been accepted, as it would be in Yovatt v Winyard.85 Moreover, Canham v Jones, decided only weeks before, clearly suggested such a claim would not succeed. Consequently, the most promising basis for objection was that Statham and his partner fraudulently misrepresented their blacking to be that of Day and Martin.86 According to the affidavit evidence, Slee and Statham had erected the sign ‘Day and Martin’ over their premises, and used trade cards and bills that referred to ‘Slee and Statham. Proprietors of the original Day and Martin’s real Japan Blacking’. Additionally, one witness swore an affidavit that he had heard a conversation between Slee and Statham that indicated that they planned to move their shop to Holborn.87 Day and Martin filed their bill on 5 July 1813,88 accompanied by affidavit evidence from Charles Day, Jonathon Weston of the Strand (a medicine and perfumery warehouseman, and to feature in many subsequent cases),89 Joshua Webster and William Baggs.90 Day offered details of the background of Day and Martin’s, as well as its success, while Weston related how he had been approached by Slee and Statham with a view to operating as a distributor of its product, or even becoming a partner. Weston detailed various meetings with both Statham and Slee, as well as offering information as to the labels and business cards they used. Webster and

84 Statham (?1777–1834?) was general manager from 20 October 1808 to 27 May 1813. The Hampshire Advertiser (14 June 1834) (announcing Statham’s death at the age of 57). 85 (1820) 1 Jac & W 394. For background, see L Bently, ‘Patents and Trade Secrets in England: The Case of Newbery v James (1817)’ in RC Dreyfuss and JC Ginsburg, Intellectual Property at the Edge (Cambridge, CUP, 2014) 295 ff. 86 Probably Day would have been unable to object had Statham and Slee merely stated that the blacking was made to Day and Martin’s original recipe and by an ex-employee. 87 John William Lowcock, in C31/349 (5 July 1813). 88 C13/2113/17. 89 Indeed, Weston would marry the sister of Charles Day’s wife, Rebecca, and become the general manager of the Holborn factory: Croft v Day (1838) 1 Curt 782, 789, 163 ER 271, 274 (Sir Herbert Jenner). He died on 9 March 1863: Fish v Kelly (1864) 17 Common Bench Reports 194, 201 144 ER 78, 81. 90 C31/349. An affidavit from John Burnet, hairdresser, swore that he had visited Slee and Statham’s shop on 18 June 1813.

Day v Day, Day and Martin (1816) 103 Baggs had visited the premises and were able to describe it and the products they bought. Armed with these,91 Wilbraham then appeared before the Vice-Chancellor,92 Thomas Plumer, presenting a compelling case. Plumer V-C granted an injunction on 7 July 1813, restraining Slee and Statham from pasting or affixing on blacking labels which were copies of Day and Martin’s or any other label describing their composition as ‘actually made and manufactured’ by the plaintiffs; as well as printing or causing to be printed any cards papers or other devices stating themselves to be Day and Martin, the vendors of the composition actually made by Day and Martin, or from affixing upon any premises any inscription denoting that to be the place of business of Day and Martin or a place where their composition is sold. All this was by way of interim relief, until the defendants should ‘fully answer’.93 The injunction was reported briefly in The Morning Chronicle.94 When Peter Statham did submit his answer, in August 1813, he sought to justify his actions.95 He explained that while at Day and Martin the formula of its blacking had been altered and, as a result, the firm had received complaints. It was because of this, he stated, that he set up with Slee, so as to make blacking to the original recipe that had been used by Day and Martin. Slee and Statham’s advertising emphasised this connection and his former status, but was not intended to indicate the blacking was still made by Day and Martin. After all, Statham asserted, it was precisely the superiority of its recipe to that now being used by Day and Martin that Statham and Slee sought to be appreciated.96 Even before Statham had answered in 1813, he and Slee had been joined by a new partner, Joseph Scott.97 The new partnership might have been necessary to expand capacity,98 but equally might have reflected the costs of defending the litigation, or possibly even a strategy to prolong the judicial process. Once Day and Martin discovered this, it was necessary for them to

91 Unless there were obvious problems, once a bill was submitted and its claims supported by affidavit evidence, injunctions would issue until answer: see HT Gómez-Arostegui, ‘What History Teaches Us About Copyright Injunctions and the Inadequate-Remedy-at-Law Requirement’ (2008) 81 S Cal L Rev 1197, 1227 fn 143 (subpoenas issued as a matter of course, leaving the question of jurisdiction to be decided by demurrer). 92 The Administration of Justice Act 1813 established the post of Vice-Chancellor from 10 April 1813. Plumer was succeeded by John Leach in 1818 (when Plumer became Master of the Rolls). 93 C33/598, ff 1339r–1440v. 94 The Morning Chronicle (9 July 1813). 95 C13/2113/17, sworn 9 August 1813, before Master Wm Alexander. 96 The Morning Chronicle (31 January 1814) (endorsing the defendant’s claim that it made ‘a better article’ than that of Day & Martin.) 97 Scott seems to have joined Statham from 27 Jul 1813. The Post Office Annual Directory for 1814, p 285, has Scott, Slee and Statham, as ‘manufacturers of the Original Day and Martin’s Japan Blacking’. 98 According to Weston’s affidavit, that had been the purpose of Slee and Statham’s approach to him.

104 Lionel Bently issue a new bill, which they did in December,99 followed by an affidavit by Thomas Shillock,100 setting out numerous establishments at which he had purchased blacking sold as Day and Martin’s but in fact emanating with Scott, Slee and Statham. The matter came back before the Court, on this occasion before Lord Chancellor Eldon on Monday, 20 December 1813. Day and Martin had enhanced its legal team by adding Anthony Hart (who had appeared in Canham v Jones)101 and John Bell102 to work with Edward Wilbraham, who had drafted the bill. Eldon LC maintained relief in the same terms as that of Thomas Plumer V-C in July.103 From the perspective of Day and Martin, these moves seem to have been reasonably effective. The partnership of Scott, Slee and Statham was dissolved on 14 January 1814, the obligations being taken on by Joseph Scott. Moreover, by the end of 1814, Day and Martin reassured its customers that the recipe has not changed and that ‘most of the impositions lately practised in their name have been put down by the interference of the law’.104 That said, proceedings did not end there, and there were further developments over the next 12 months. In November 1814, Samuel Slee moved to dismiss the suit for want of prosecution of the initial bill by Day and Martin (despite having put in an answer),105 and proceeded to put in an answer to the second bill,106 which Slee had sworn on 19 January 1815 and submitted to the clerks on 7 February 1815. This came out of the blue and certainly took Taylor, Day and Martin’s solicitor, by surprise. They responded by indicating they intended to maintain the bill, and this was permitted on an undertaking to pay the costs of the motion to dismiss. However, the records suggest that matter against Slee did not proceed any further once the answer had been put in. There is no notice of objections (‘exceptions’ to the answer), and no record of the matter proceeding to a Master or a trial; nor is there any indication that the answer was regarded as a ‘full and perfect’ one and the injunction lifted.107 It seems Day and Martin was not 99 C13/2113/17.

100 C31/351.

101 (1754–1831). Hart had taken silk in 1807. He would succeed Leach as Vice-Chancellor in May 1827 before being made Lord Chancellor of Ireland in October of the same year. 102 Bell ‘devoted himself to the equity branch of the profession, and gradually acquired an extensive practice in the court of chancery, gaining a reputation as a lawyer second to that of none of his contemporaries’: JM Rigg, ‘Bell, John (1764–1836)’, rev Beth F Wood, Oxford Dictionary of National Biography (Oxford, Oxford University Press, 2004) accessed 7 September 2016. 103 C33/603, ff 137v–138r. 104 The Morning Chronicle (3 November 1814). 105 C33/606, f 1659r (1 November 1814) (order that bill be dismissed with costs). This was referred to Master Thomson. Day and Martin served notice that they would seek a motion to retain the bill: C31/361 (Affidavits of RS Taylor and William Robins, 3 December 1814). 106 C13/2124/17 (sworn 19 January 1815 before Master J Campbell). 107 HT Gómez-Arostegui, ‘Equitable Infringement Remedies Before 1800’ in IJ Alexander and HT Gómez-Arostegui (eds), Research Handbook on the History of Copyright (Cheltenham, Edward Elgar, 2016) 202–05.

Day v Day, Day and Martin (1816) 105 interested in pursuing the matter to a hearing and seeking a financial remedy against Slee, and probably some accommodation was reached between those parties. Slee, after all, was no longer selling blacking. Day and Martin commenced six further suits before we come to the second case of interest. The first of the six was a bill filed against Alexander Christie who was said to have hired a room at 97 Holborn which was styled ‘Day and Martin’s Counting House’ and delivered its blacking using similarly dressed ‘car-men’.108 Christie may well have desisted, as the proceedings do not appear to have got even as far as requiring the motion for an injunction. Three months later, another bill was filed against Richard Turner,109 a defendant of more considerable means, who engaged in clever delaying tactics before finally being subjected to an injunction until answer from the Vice-Chancellor in May 1815.110 In the summer of 1815, Day and Martin began a crackdown: proceedings were commenced against Thomas Martin for using similar labels and having ‘Day and Martin’ over his premises at 148 High Holborn;111 against William Hesketh for using bottles with similar labels and supplying retailers;112 against Thomas Payne for the same sorts of acts;113 and against James Day, also for using imitations of the labels.114 All these suits were heard by the Vice-Chancellor who granted injunctions until answer. The last defendant was the son of Thomas Day, and brother of John Day, both defendants in the second of the cases on which this article focuses, and to which I turn now. IV. DAY AND MARTIN v THOMAS DAY, JOHN DAY AND PETER MARTIN

Thomas Day and his son John were (like James) based in Webber Row in Southwark, just south of what is now Waterloo. On 8 September 1815,

108

Bill of 26 Jan 1814: C13/2122/8. C33/604, f 618 (23 Apr 1814) (referred to Master to see if D’s answer was sufficient). 110 C33/613, ff 973v–975v (27 May 1815). The defendant was a well-known maker of blacking from Southwark, and some of its trade cards have survived. The defendant was said to have located two allies, one named Day (from Monmouth St) and the other Martin (from Walworth Rd), to justify making a selling the blacking. The matter was contested, Sir Samuel Romilly leading the argument for Day and Martin, and John Leach (and Agar) defending. There are brief reports of proceedings, but not the outcome in ‘Real Japan Blacking’, Morning Chronicle (27 May 1815); Morning Post (27 May 1815). 111 Bill of 19 December 1814: C13/1431/45. Order, 21 July 1815 (injunction until answer): C33/614 ff 1404v–1405v. 112 Bill of 15 June 1815: C13/2127/8. Order, 21 July 1815 (injunction until answer): C33/614, ff 1524v–1525v. 113 Bill of 10 July 1815: C13/2127/7. Order, 21 July 1815 (injunction until answer): C33/ 614, f 1475v. 114 Bill of 10 July 1815: C13/1431/44. Order: 1 August 1815 (injunction until answer): C33/614, f 1403r–v. Leach appeared for the defendant. 109

106 Lionel Bently Thomas Day took a ten-year lease on premises at French Horn Yard which had an entrance from between 87 and 88 High Holborn,115 a matter of yards from Day and Martin’s at 97 High Holborn. Two months later, Thomas sub-leased the premises to his son John Day and Peter Martin, an illiterate gardener from Long Lawford in the County of Warwickshire.116 John Day and Peter Martin then became formal partners on 26 December 1815.117 They put up a signboard stating ‘Day and Martin’s Blacking Manufacturer No 87 High Holborn’ and started selling blacking in similar bottles with similar labels, except for the variation in the number ‘87’ in place of ‘97’. Peter Martin returned to the Midlands to be with his dying wife and therefore played little practical part in the business. Day and Martin filed a bill on 27 June 1816, seeking an injunction.118 Charles Day was convinced that the supposed partnership with Peter Martin was a wholly sham relationship designed to afford spurious justification for the deception that the use of the name and address would inevitably cause. The bill noted that this was not the first time that the Day family of Webber Row had tried to take advantage of the reputation Day and Martin’s blacking had garnered, as only the previous August it had obtained an injunction again John Day’s brother, James Day. Various affidavits were also sworn in support of the bill. In one, Samuel Underwood described visiting Thomas Day’s premises in Webber Row to purchase ‘Burnswick Black’ only to be sent to Wood Grocer, No 5, Queens Buildings, Knightsbridge, whereupon Thomas Day showed Underwood some labels and cards with the words ‘Day and Martin, Manufacturer of the Real Japan Blacking, 87 High Holborn’. The label on the bottle that Underwood received stated: The real Japan Blacking made and sold wholesale by Day and Martin 87 High Holborn. This excellent composition approved of by all parties who have used it with very little labour produces the most brilliant black ever seen quite equal to Japan varnish imparts superior nourishment to the leather will not strain the finest linen is perfectly free from any offensive smell and will retain its goodness in any Climate. Directions for use. Brush the dirt well off. Shake up the blacking till it is properly mixed then lay it on your brush in the usual manner. Black the boot or shoe equally over. Use your shining brush directly and in one minute you will have the most beautiful jet black ever seen. Half pints made. Price 1’ 6 each. No concern with any House ‘Day and Martin’.

115 According to the affidavit of Jonathan Weston, the lessor was Collins of Market Street, Kennington. 116 The bill C13/2129/34, claimed that the partnership was ‘merely pretended and fictitious and solely contrived with the view’ to defrauding Day and Martin. 117 The answer explains, however, that the solicitor who arranged the transaction had subsequently died. 118 C13/2129/24.

Day v Day, Day and Martin (1816) 107 Underwood went on to state that he had later visited Thomas Day at French Horn Yard and purchased blacking in bottles with the same label. Joseph Pope swore that in January 1816 he had followed a cart from French Horn Yard to an Oil Shop at No 6 Charles Street in Soho, where he asked for a bottle of ‘Day and Martin’s Real Japan Blacking’ and was supplied with a bottle just delivered. Further affidavit evidence was provided by Jonathan Weston, Thomas Blofield and Morgan Williams, relating to purchases and the labels, as well as the precise location of the premises as being in French Horn Yard rather than 87 or 88 High Holborn. On the basis of the affidavits, Charles Day was awarded an injunction until answer. Thomas Day put in his answer on 13 August 1816; and John Day and Peter Martin did likewise.119 The former admitted involvement in leasing French Horn Yard and sub-leasing it to John and Peter Martin. As for the co-partners, they denied deliberately seeking to defraud the claimant and argued that their packaging and representations were merely legitimate uses of their own names and the address of the business. They stated that not only had they leased French Horn Yard, but also that Martin had leased a floor of 87 High Holborn, where he planned to live, and this had been used, among other things, as a counting house for the business. They denied they imitated Day and Martin’s labels, seeking to explain the similarities as inevitable in descriptions of the nature, function, method of use and price of blacking. Indeed, they highlighted differences in language and typescript between the labels of Day and Martin and their labels, observed that they had already modified their labels once, and indicated a willingness to distinguish them further. On August 20, Sir John Leach KC moved to dissolve injunction, while the same team as before (Hart, Bell and Wilbraham) argued on behalf of Charles Day for its maintenance.120 The argument was briefly reported in the newspapers,121 which noted that the case attracted ‘considerable interest’ as a result of the new points of law before the court.122 According to these reports, there was some discussion of precedents, particularly with respect to freedom to use one’s own name.123 Anthony Hart apparently cited a number of cases on titles,124 and pointed out that no less

119 The defendants’ answers were prepared by Clement Tudway Swanston, a barrister later known for his reports on cases decided by Lord Eldon LC. 120 It was supposed to be even better, including Sir Samuel Romilly. However, he was unable to attend the argument because of ill-health: The Morning Chronicle (17 August 1816). 121 The Morning Chronicle (17 August 1816), The Morning Post (17 August 1816). Some fragments of the brief for defendant’s counsel survive at the London Metropolitan Archive, F/PEY/397. 122 The Morning Chronicle (17 August 1816). 123 Leach referred to an unreported case involving a shoemaker called ‘Myson’, which Eldon LC had referred to in Hogg v Kirby. Eldon LC referred to another supposed instance where a plaintiff was called ‘Myhouse’: The Morning Post (17 August 1816); The Times (19 August 1816) 2. 124 The Morning Chronicle (17 August 1816).

108 Lionel Bently than five persons had already been restrained from selling ‘Day and Martin’ blacking: the injunctions already awarded against Slee and Statham, Thomas Martin, Thomas Payne, William Hesketh and James Day.125 Eldon LC seemed relatively untroubled as to the general question of whether injunctive relief might be available at all. For him, it was not primarily a matter of whether the injunction would not harm others (as Hart had put it), so much as a one of preventing fraud.126 Lord Chancellor Eldon asked to see the labels and bottles, ‘I wish to see the bottles; much will depend upon the eye’.127 He noted there were differences in language: for example, where Day and Martin used ‘beautiful jet black’, Jonathan Day and Peter Martin’s label said ‘brilliant black’.128 Despite these differences, Eldon LC concluded that there was sufficient to indicate a fraudulent intention on the part of the defendants. The Lord Chancellor observed: As there was no patent, a monopoly in the case of blacking of the plaintiff, if any other could make the same article, he was at liberty to sell it, but not as the composition of the plaintiff … If Day could find a man of the name Martin, the blacking might be sold as that of Day and Martin, and they might set up their shop next door to that of the plaintiff, but still they must not sell their blacking for that of the plaintiff. The article was sold to the retail dealer, and their customers might think that the firm of 97 had been removed to 87. His Lordship was of the Opinion that the injunction, with some alterations, must stand; but he was quite ready, if wished for by the defendants, to direct an issue to be tried in a court of law.129

Eldon LC offered the defendants the option of trial of the issue before a jury, but they declined. Sir John Leach said that the defendants were ‘satisfied with his Lordship’s judgment’. The key question then was the precise form the order would take. This was especially problematic because the defendants were named ‘Day’ and ‘Martin’ and had at least some justification for using the number ‘87’. In the end, Eldon LC decided to maintain the injunction but in form that differed from that proposed in Charles Day’s bill. He had altered the injunction, he explained, to preserve the legal rights of the new company, ‘and at the same time to guard the original Company from being imposed on’.130 He had given the issue ‘the best attention [he] could possibly bestow on it’. The Order book stated: That an injunction be awarded to restrain the defendants Thomas Day, J onathan Day and Peter Martin their agents, servants and workmen, from pasting or 125

The Times (19 August 1816) 2. The Morning Chronicle (17 August 1816). 127 The Morning Post (17 August 1816); The Times (19 August 1816) 2; The Morning Chronicle (17 August 1816) (‘Show me the blacking bottles’). 128 The Morning Post (17 August 1816); The Times (19 August 1816) 2; The Morning Chronicle (17 August 1816) (‘Stir the blacking well’ or ‘sit it well with a brush or stick’). 129 The Times (19 August 1816) 2. 130 The Morning Chronicle (21 August 1816). 126

Day v Day, Day and Martin (1816) 109 a ffixing to the Bottles containing the Composition or Blacking in the Petitioners bill mentioned made and prepared or sold by them the Said defendants the Labels hitherto used by them or Said Labels being the same as or colourable imitations of the Labels used by the Petitioner as continuing partner of the firm Day and Martin in the Plaintiffs bill mentioned and from fraudulently imitating in the mode and form of subscribing and annexing their names to the Labels the mode and form of the Signatures prepared by the Plaintiff and with this variation it is Ordered that the Injunction be continued to the hearing of this Cause or the further Order of this Court.131

V. THE IMPLICATIONS OF THE DAY AND MARTIN LITIGATION

Having succeeded against Thomas Day, John Day and Peter Martin, Charles Day continued his campaign to suppress counterfeiters. Six further suits were begun between 1816 and 1821: in 1816 against Edward Baker132 and William Forward,133 in 1817 against William Paley, Reece Price and John Gosnell,134 as well as against John and James Bowling;135 in 1819 against Benjamin Shout, the oilman who had previously been an u nsuccessful defendant in an action at Law by Cocks over ‘Reading Sauce’;136 and in 1821, Charles Day brought suit against James Cockburn.137 Chancery continued to offer him valuable and virtually instant interim injunctive relief against these egregious imitations, the Lord Chancellor enjoining Paley, et al,138 and the Bowlings in 1817,139 Shout in 1819,140 and Cockburn in 1821.141

131

C33/624, f 1753v, at f 1756v. Bill of 16 December 1816 in C13/2145/9. 133 Bill of 16 December 1816 in C13/2147/16. Advised by Henry Maddock, Forward would eventually put in an answer, dated 16 February 1819, claiming he was reselling blacking he had himself bought innocently on the market. On Tuesday 15 December 1820, the action was dismissed for want of prosecution: C33/678, f 146. 134 Day v William Paley, Reece Price and John Gosnell, bill of 6 May 1817: C13/1993/62. 135 Day v John and James Bowling, bill, 1 November 1817: C13/2139/10. 136 Day v Benjamin Shout, bill, 23 November 1818: C13/2147/25. Advised by Simpkinson, Shout put in an answer on 11 February 1819. 137 Day v James Cockburn, Joshua Rowland, John Brewer, bill of March 1821, C 13/2160/25. 138 Day v William Paley, Reece Price and John Gosnell, Order, 8 May 1817: C33/633, ff 897v–898r (injunction until answer). 139 Day v Bowling, Order, 1 Nov 1817: C33/635, f 1792r–v; The Times (3 November 1817); The Morning Chronicle (3 November 1817); The Morning Post (3 November 1817); Caledonian Mercury, 27 Nov 1817 (injunction until answer). 140 Day v Benjamin Shout, 24 July 1819: C33/658, ff 1639v–1640v (injunction granted) (LC); The Morning Post (26 July 1819). 141 Day v James Cockburn, Joshua Rowland, John Brewer, The Times (26 March 1821) 3; Order, 22 March 1821: C33/679, ff 719v–720v (injunction until further answer). On 16 November 1821, the injunction was by agreement dissolved against Rowland and Brewer. 132

110 Lionel Bently Other litigants followed suit: John Collinge succeeded in an action against Phillip Bowden relating to the use of ‘Collinge’s Patent’ axletrees;142 and another blacking manufacturer, Robert Warren, brought two suits in 1827, initially with success, but the injunctions were later dissolved.143 Day and Martin again returned to Chancery in 1831, gaining an injunction against the printer of labels imitating theirs with the words ‘equal to’ inserted in small type next to ‘Day and Martin’.144 In the same year, in Henry v Price and Gosnell,145 ex parte injunctive relief was granted in relation to use of the name ‘Henry’ for calcinated magnesia. The following year, in the Gout case, an injunction was awarded restraining the defendant from exporting watches to Turkey bearing the mark ‘pessedede’ (some reports say ‘pesendede’ or ‘cesended’, but all agreeing that the word meant ‘warranted’), the Vice-Chancellor observing that he thought ‘it quite a matter of course to grant the injunction’.146 In 1833, in Ransome v Bentall, a famous Ipswich plough maker obtained an injunction against a defendant from Bishop’s Stortford for imitating the marks ‘Ransome’, ‘Ransome & Sons’ or ‘HH’ on plough-shares.147 In the same year injunctions were awarded in Hutton v Forster, which related to marks on envelopes used to carry serge to the Gold Coast148 and John Wilson v George Wilson and Francis Southern 142 The Morning Chronicle (8 June 1821) (injunction awarded); The Morning Post (8 June 1821). 143 Warren v Lamert (1827), Morning Chronicle (14 November 1827); The Bury and Norwich Post (21 November 1827); Morning Post (28 November 1827), The Standard (27 November 1827), The Times (28 November 1827) 3 (injunction dissolved) (LC); Warren v Wood and Pilcher, The Standard (20 November 1827), The Examiner (25 November 1827) (injunction granted) (VC); The Morning Chronicle (29 November 1827) (dissolved). Because of the connection between Charles Dickens and Warren’s blacking, the pleadings in these cases have been transcribed in Michael Allen, Charles Dickens and the Blacking Factory (St Leonards, Oxford-Stockley, 2011). 144 Day v Binning, 21 Jan 1831; The Times (22 January 1831); The Standard (21 January 1831); The Morning Post (22 January 1831); Day and Martin v Billings 1 Leg Observer 205; CP Coop 489, 47 ER 611 (Shadwell V-C). 145 Henry v Price (29 Mar 1831), The Times (30 March 1831); The Standard (30 March 1831); Liverpool Mercury (8 April 1831); 1 Leg Obs 364. 146 Gout v Samuel, The Times (16 July 1832) (VC) (discussed in David Buckden, ‘Ralph Gout, watchmaker (1740–1828)’ Antiquarian Horology 223–236); Gout v Aleplogpln, The Times (16 April 1833) 6; ‘Gout v Aleploglu, V-C 15 April, 1833’ in (1842) 5 Beavan 66n; 5 Leg Obs 495; and 1 Chitty’s General Prac 721; Goutt v Aleploghler in ‘Trade Marks’ (1841) 9 Month L Mag 201, 207 n (Easter Term 1833, V-C); and David Ralph Gout v Martin Aleploghlu, Mr Parkinson, James Frodsham, Thomas Hamson, Order, 22 July 1834 in C33/859 f 1188 (injunction continued) (VC). Ludlow and Jenkyns (1879) 27 describe this as ‘the first clear case’ of injunctive relief. 147 James Ransome, Robert Ransome James Allen Ransome v Nathan Bentall (11 December 1833) (1834) 3 Law Journal (Ch) 161 (VC); Ipswich Journal (21 December 1833); Bury and Norwich Post (25 December 1833); The Essex Standard (28 December 1833). C13/569/32 (bill, ‘Ransome v Bentall’); Order, 11 Dec 1833, C33/860, ff 313r–315r (VC Shadwell). 148 The Times (25 December 1833), 4 (VC) (indicating he would dispose of the motion at his private residence in Harley Street on Tuesday (31 December 1833)); ‘Letter to Editor of The Times from Forster and Smith’, The Times (27 December 1833) 4; ‘Letter to Editor from Forster and Smith’, Standard (27 December 1833); The Times (3 January 1834) 4 (injunction granted as prayed).

Day v Day, Day and Martin (1816) 111 which concerned the misuse of marks (J Wilson and a reversed crown) on cutlery.149 What was the basis of intervention by Chancery? In the late 1830s and 1840s, Lord Cottenham LC would express the view that Chancery was acting in its ancillary jurisdiction, giving effect to a trader’s legal right to prevent misrepresentations effected through use of signs or marks for which the trader had become known.150 Was this an accurate interpretation of Lord Eldon LC’s understanding? Certainly it is consistent with it. Before taking up the position as Lord Chancellor, Lord Eldon had been a common law judge, and indeed had presided in an 1800 case in Common Pleas concerning the counterfeiting of ‘Spilsbury’s Drops’.151 Moreover, in 1803, in Hogg v Kirby (which he saw as logically related to the trade mark jurisdiction), he granted injunctive relief, but proposed to Hogg that he pursue Kirby at common law. And in Day v Day, Day and Martin itself, Eldon LC gave the defendant the option of insisting on trial at law if he was not happy with Eldon LC’s conclusion. It seems then that Eldon LC saw Chancery as intervening in support of the common-law right because were it not to do so ‘damages do not give adequate relief’.152 As with Day, most of these cases went unreported, but the frequency with which plaintiffs pursued injunctive relief started to receive wide c omment.153 In 1839, one commentator would observe that: Many injunctions of this description have been granted by the present ViceChancellor, but none of the cases have appeared in the reports of that Court, although several are well known to counsel, and are often referred to.154

149 29 May 1833 (VC); reported in The Sheffield Independent (8 June 1833) (the V-C stating that ‘it is impossible to entertain a doubt about it’); John Wilson v Joseph Heeson, 7 June 1833, (V-C) reported in ‘Another Injunction Case’ The Sheffield Independent (15 June 1833); ‘Fraudulent Imitation of Marks’ Leeds Mercury, 29 June 1833. 150 (1837) 3 My & Cr 1; (1837) 6 LJ Ch 308. 151 Gribble v Forbes, Albion and Evening Advertiser (23 June 1800); London Packet (23 June 1800); Oracle and Daily Advertiser (26 June 1800); Morning Post and Gazeteer (3 July 1800). This was an action in the Court of Common Pleas before Lord Eldon and special Jury, relating to ‘Spilsbury’s Anti-scorbutic Drops’. The claimant, Mrs Gribble, was wife of the late Francis Spilsbury. The defendant, W & F Forbes, Chemists at 34 Blackman Street, The Borough, did not offer any defence, and was found liable. Lord Eldon said ‘there was no doubt on earth that the defendants could have no answer in point of law’. Gribble did not seek damages. Gribble seems to have commenced proceedings against others, such as William Smith, who entered into a bond not to sell such spurious mixtures; ‘Spilsbury’s Antiscorbutic Drops’ Whitehall Evening Post (28 June 1800). 152 Hogg v Kirby (1803) 8 Ves Jun 215, 225. 153 Morison v Salmon (1841) 2 Manning & Granger 385, 133 ER 795 (Maule J) (‘Applications are frequently made to the Court of Chancery to injoin one manufacturer from imitating the mark of another’); Anon, (1848) 9 Law Mag Quart Rev Juris ns 236 (‘There is a numerous class of cases in which persons have been restrained by injunction from using the name, trade mark, or indicia of another’); T Turner, ‘Trades Mark’ (1851) 14 The Jurist 223, 226, said ‘cases of this class … are already numerous, (many of them, being unopposed, or ex parte, are only mentioned, if at all, in the newspapers) and likely to multiply’. 154 Anon, ‘Piracy of Marks or signs of merchants and traders’, (1839) 22 Law Mag Quart Rev Jurisp 148, 152.

112 Lionel Bently That is not to say that proceedings at common law ceased. In 1819, Elizabeth Lazenby brought action against Hallett and Hardie over use of the name ‘HARVEY’S SAUCE’ for fish sauce: Lord Chief Justice Abbott said she was certainly the proprietor, and the jury found in her favour (though the damages were only 40 shillings).155 In 1821, Day and Martin itself returned to the common-law courts (King’s Bench) with an action against Henry Brown, an ‘oil-man’ based in Golden Square. Day and Martin was awarded £15 in damages.156 In 1824, in Sykes v Sykes (the first common law case featured in the law reports in which a trader succeeded in pursuing an action), Thomas Sykes succeeded in an action over misuse of ‘SYKES PATENT’ on shot belts and powder flasks by the defendants, Messrs Sikes and Beatson, even though the immediate purchasers had not been deceived, on the basis that ultimate purchasers would be.157 In the same year, 1824, the makers of ‘Hodson’s Pale Ale’ brought proceedings in the King’s Bench, the parties settling the issue on payment of 40 shillings.158 In 1828 Joseph Manton, a gunmaker from Hanover Square was awarded £25 damages against a defendant, William Mills (of 120 High Holborn) who had exported guns marked with Joseph Manton’s name for sale in India.159 The following year, Henry Lazenby, son of Elizabeth Lazenby, was awarded £40 damages for the defendant’s wrongful use of ‘Lazenby’s Harvey’s Fish Sauce’.160 The key advantage of proceeding in Chancery was evidently the speed and form of relief. In nearly all cases, once the bill was entered and the affidavits sworn, interim injunctive relief would ordinarily follow after

155 13 January 1819 (Guildhall, Abbott LCJ); A Statement of the Trial of the Action … (London, Printed for Mrs Lazenby). Abbott LCJ said such behaviour was both immoral and illegal, likely to injure the proprietor and the reputation of the product. 156 (1821) Annual Register (June) 99–100. Giving his submissions to the Court, James Scarlett explained that Brown’s blacking was brown rather than black, was not shiny and ‘burned up good men’s shoes’. However, it was sold bearing labels in imitation of that of Day and Martin’s. He described the defendant as ‘as a double trespasser; at once, a depreciator of their inestimable ware, and a destroyer of the shoes and boots of the community’. 157 7 August 1824 (York Summer Assizes); The Times (10 August 1824), (1824) 3 Barnewall and Cresswell 541; 107 ER 834 (Abbott LCJ). 158 21 April 1824 (Guildhall, with special jury): Morning Post (22 April 1824). 159 Manton v Mills, 17 January 1828 (KB, Lord Tenterden and jury), The Times (18 January 1828); Morning Post (18 January 1828); The Morning Chronicle (18 January 1828); (1828) 25 Asiatic Journal 283. The guns apparently had been made in Birmingham, Mills only making up the boxes. As guns sold at between £9–12, damages were the equivalent to the value of only three guns. For earlier proceedings for an injunction, see Joseph Manton v George Marshall, Times (21 January 1825), Morning Chronicle (21 January 1825) (Vice-Chancellor) (granting injunction). The newspapers describe this as a patent case, but from the content of the reports, the decision seems to have been based on the marks. 160 Lazenby v Wingrave (1829), (KB, Guildhall; Lord Tenterden and special jury), The Times (29 July 1829), 3; Morning Chronicle (29 July 1829); Morning Post (29 July 1829); Aberdeen Jo (23 September 1829). For some documents relating to the defence, see LMA: F/ PEY/414, Lazenby v Wingrave (1829).

Day v Day, Day and Martin (1816) 113 review by the court. The defendant would be compelled to cease its activities. Sometimes, defendants would enter an answer, but in other cases matters would stop there. Where an answer was entered, injunctive relief might be continued, as in the Day and Martin v Day, Day and Martin case. If the answer raised difficult issues that the court could not decide, the parties might be referred to the Courts of Law. One commentator noted in rather celebratory tone: Whatever doubts may have formerly prevailed, it may with confidence be said, that the foregoing investigation unequivocally shows that courts of equity will now interfere by injunction to prevent the piracy of marks or signs used in trade. The remedy is no less speedy than it is sufficient … It is curious to remark, that the court which has acquired the reputation of being proverbially cumbrous and tardy in its machinery or movements, is on these occasions made on of the most prompt and summary tribunals in the country.161

The great advantage of proceeding in Chancery then was the speed of initial proceeding and the remedy. Moreover at common law there were always worries as to how witnesses would perform in oral examination and cross examination, how juries would respond, and the variability of the damages awarded. VI. CONCLUSION

Although it was never fully reported in the law reports, Lord Eldon LC’s decision in Day and Martin v Day, Day and Martin (1816) made its way into the textbooks, and thus came to be given the status of a ‘landmark case’ (though one about which very little was then known). Of all the 14 cases in the Day and Martin litigation, this was the one which stood out, both because it was the hardest (as the defendants really were named ‘Day’ and ‘Martin’), but also because, as Lord Eldon LC explained, he had bestowed great care considering it. The first reference was Robert Eden in his book on injunctions, which stated that ‘an injunction, however, has been granted in one case to restrain a manufacturer of blacking from using labels in imitation of those employed by the plaintiff’, citing to ‘Day v. Day’162 Other writers picked up on the Eden citation: the case is referred to in an 1839 article,163

161 Anon, ‘Piracy of Marks or signs of merchants and traders’, (1839) 22 Law Mag Quart Rev Jurisp 148, 154–55. 162 Robert Henley Eden, A Treatise on the Law of Injunctions (London, Joseph Butterworth, 1821) 314. 163 Anon, ‘Piracy of Marks or signs of merchants and traders’, (1839) 22 Law Mag Quart Rev Jurisp 148, 152.

114 Lionel Bently in Charles Drewry’s 1842 textbook on the law of injunctions,164 Thomas Turner’s Law of Patents and Registration of Inventions,165 in Ludlow and Jenkyns’s 1878 work on trade marks,166 in Sebastian’s 1879 Digest,167 and in Kerly (1894), where it is described as ‘the earliest reported case in which the infringement of a trade-mark … was restrained’.168 Finally, the case was identified by Frank Schechter in the only systematic account of the history of trade mark law, as ‘the first issuance of an injunction restraining trade-mark infringement’.169 Gradually, the significance of the Day v Day, Day and Martin case (and its family) diminished, as other much more fully reported Chancery decisions enunciated clearly the principles on which the courts would operate. The most prominent of these were Knott v Morgan,170 Motley v Downman,171 Millington v Fox,172 and Perry v Truefit.173 Interestingly, each of these cases was reported because the facts raised a troublesome point in application of the (by then) well-established jurisdiction of Chancery to intervene in trade mark infringement cases. In Knott,174 Lord Langdale MR was faced with a claim based upon the general ‘get-up’ of the claimant’s buses (and an injunction was granted); in Motley,175 Lord Cottenham was asked to decide whether the benefit of a trade mark (‘M.C.’) moved with the business when it relocated, or was inherited by a new operator in the Carmarthen factory where the original manufacture had occurred; in Millington,176 the defendant had adopted the sign ‘Crowley’ believing it to be generic, but the court granted a final injunction; and in Perry the court had to decide whether relief should be granted where the

164 CS Drewry, A Treatise on the Law of Injunctions (Philadelphia, J Littell, 1842) 160. At 163, Drewry usefully explains why he regarded the new cases as consistent with Blanchard, the latter being a case where the claim was based solely on ownership under the guild Charter, rather than on the basis of trade reputation. 165 (1851) Ch IX. Note also TT, ‘Trades Mark’ (1851) 14 The Jurist 223. 166 (1879) 26 note (g) (referring to Eden). 167 Lewis Boyd Sebastian, A Digest of Cases of Trade Mark, Trade Name, Trade secret, Goodwill etc (London, Stevens, 1879) 10 (Case No 21). 168 Duncan Kerly, The Law of Trade Marks, Trade Names and Merchandise Marks (London, Sweet and Maxwell, 1894), 3. 169 Schechter (n 3) 138. 170 (1836) 2 Keen 213. Drewry (n 164) describes this as ‘the leading modern case’. 171 (1837) 3 My & Cr 1, (1837) 6 LJ Ch 308. 172 (1838) 3 My & C 338, 40 ER 956. 173 (1842) 5 Beavan 66, 49 ER 749. 174 Knott v Morgan (1836) 2 Keen 213 (Lord Langdale MR) (refusing motion to dissolve injunction). 175 Injunction granted by V-C, 14 April 1837; dissolved by LC, 6 July 1837, (1837) 3 My & Cr 1, (1837) 6 LJ Ch 308. 176 Millington v Fox (1838) 3 My & C 338, 40 ER 956 (Cottenham LC) (granting perpetual injunction).

Day v Day, Day and Martin (1816) 115 plaintiff’s mark itself contained a misrepresentation.177 While the cases were reported because the courts were dealing with new and difficult issues, the judgments themselves articulated the basic principles on which the Court of Chancery would intervene in a manner not seen in any of the accounts of Lord Eldon’s decisions. These thus came to replace Day v Day, Day and Martin as the foundational authorities on the intervention of Chancery. It is thus not surprising that references to the Day and Martin case law were increasingly sporadic: it was not even mentioned in the first treatise on trade mark law,178 and even where it was mentioned, this was very much in passing. For later generations, the reports came to give the impression that the first common law action was in 1824 and that Chancery only started to intervene in the 1830s. With the benefit of newspapers and archival sources, we now know that is not correct. VII. POSTSCRIPT

In recent times, Day and Martin v Day, Day and Martin (1816) has not often been treated as a landmark case, but another decision concerning Day and Martin’s blacking is frequently referred to in today’s textbooks. This is the case of Croft v Day.179 This case occurred a few years after the death of Charles Day in 1836. The business continued to operate under the supervision of a general manager, John Weston.180 The nephew of Charles Day, named William Charles Day, a stationer and engraver, started selling blacking, using trade cards and labels that were similar to those used by the firm bearing the name ‘Day and Martin’, substituting the Royal arms in the centre of the label where the image of the factory appeared, and 90½ Holborn Hill in place of 97 High Holborn. William Charles Day justified using his own surname in combination with that of ‘Martin’ as he had gained permission from an intimate acquaintance named Martin to do so. It appeared that a shopkeeper from Rickmansworth had purchased blacking from the defendant, believing it to be that of ‘Day and Martin’, and that when he sold it on his customers had returned it. Proceedings were brought by William Croft, one of the executors under Charles Day’s will, to restrain Day.

177 Perry v Truefitt (1842) 5 Beavan 66, 49 ER 749 (Lord Langdale MR) (refusing injunction because of misrepresentation by claimant). 178 E Lloyd (n 44). 179 18 December 1843, 7 Beav 84; The Morning Post (19 December 1843); The Times (14 December 1843) (hearing stood over); The Times (19 December 1843) 7 Beav 89. 180 Weston died on 9 March 1863. For details of Weston’s appointments, and the contractual management of the trade secret for the blacking, see Fish v Kelly (1864) 17 Common Bench Reports 194, 195 ff, 144 ER 78, 79 ff (detailing terms of agreement with William Fish, with penalty clause of £1,000).

116 Lionel Bently Granting the injunction, Lord Langdale MR set out some basic principles that have been widely referred to ever since. Most seminally, he observed that ‘no man has a right to sell his own goods as the goods of another’: to do so ‘is to commit a fraud’.181 Moreover, noting that every case must depend on its own peculiar circumstances,182 he found that the labels were so similar in colour, size, arrangement, and carry the same name (‘Day and Martin’) that they would ‘mislead the ordinary run of persons’183 and lead them to believe that the defendant was connected ‘in some way or other’ with the plaintiff. This would divert trade from 97 High Holborn to 90½ Holborn Hill and damage the claimant.

181

Referred to in Reddaway v Banham [1896] AC 199, 209 (Lord Herschell). 7 Beav 87. 183 7 Beav 89. 182

5 Nobel’s Explosives Company, Limited, v Anderson (1894) SEYMOUR MAUSKOPF*

I. INTRODUCTION

M

ORE THAN HALF a century after Nobel’s Explosives Company, Limited, v Anderson (1894), Thomas Anthony Blanco White referred to the decision as one of the cornerstones of modern British intellectual property law. Noting that the case closely followed the Patents Act 1883, which made the patent claim a compulsory part of the patent,1 he considered the importance of the case in establishing the principle that it is the inventor’s responsibility to delineate the scope of their invention in the claim.2 Although passages from this case continue to be cited,3 the historical details and the context in which it was decided seem to have been forgotten. The dispute arose during the Second Industrial Revolution (1870–1914), a time of remarkable technological developments, including new types of explosives and munitions. The importance of science in patentable inventions and innovations grew rapidly, which was reflected in increased number of patent infringement lawsuits.4 Legal teams gradually became technically versed, as did judges, and courtrooms were

* Archival sources are abbreviated as follows: ANA = Alfred Nobel’s archive, Stockholm, Sweden; FA = Frederick Abel Papers, Royal Society of Chemistry, England; NA = National Archives, Kew, England; PA = Parliamentary Archives, London, England. 1 Section 5(5) of Patents Act 1883. 2 TA Blanco White, Patents for Inventions and the Registration of Industrial Design (London, Stevens & Sons, 1962) 29. 3 See, eg, Imperial Chemical Industries v Montedison (UK) Ltd [1995] RPC 449; Dyson Appliances Ltd v Hoover Ltd [2001] EWCA Civ 1440, [2002] ENPR 5, [2002] RPC 22, (2001) 24(12) IPD 24077; Convatec Ltd v Smith & Nephew Healthcare Ltd [2011] EWHC 2039 (Pat). 4 The Maxim Nordenfelt Guns v Anderson (1897) 14 RPC 371; British Dynamite Co v Krebs (1899) 13 RPC 190. Indeed, this era of patent infringement has been characterised by Beauchamp as the ‘second industrial revolution in court’; see C Beauchamp, The Telephone Patents: Intellectual Property, Business, and the Law in the United States and Britain, 1876–1900 (PhD, University of Cambridge, 2007) Ch 2.

118 Seymour Mauskopf also populated by eminent chemists and technologists as expert witnesses, enabling similar decisions to hinge on technical and scientific issues. The case involved a dispute between a British company, Nobel’s Explosives Company, Limited, and the director-general of the British Royal Ordnance Factories, Dr William Anderson. As the Crown could not be sued in its own court, the nominal defendant was Anderson, a government official who agreed to a number of stipulations raised by the legal advisers of Nobel’s Explosives: admit to the manufacture of cordite; allow the inspection of the manufacturing process; and agree not to invoke protection of the Crown but ‘plead in such a way as will raise the real question at issue’, namely, patent infringement.5 Except in the strictly legal sense, the real defendants were the chemists Frederick Augustus Abel and James Dewar. As members of the War Office Committee on Explosives, of which Abel was president, they had fabricated and patented a double-base (nitro-glycerine and nitro-cellulose) military smokeless propellant, which they named ‘cordite’.6 Alfred Nobel had earlier made and patented a double-base smokeless powder, ‘ballistite’, samples of which were submitted upon request to the Committee. The parties fell out and this facilitated the emergence of a contentious issue since—as K enneth Swan observed two a few decades later—the case involved the unusual situation in which ‘a patentee had either the courage or the capital necessary to sue a Government department for infringement’.7 The fact that Abel and Dewar had taken out a patent related to government activities was also considered a political scandal by some newspapers and obviously contributed to the high profile of the litigation.8 In scientific terms, however, there was also an important distinction that affected its complexity: the one significant chemical difference in the type 5 JF Chance, Solicitor to the Treasury, to Bircham & Co, 15 October 1892. Nobel’s Explosives Company Limited v Anderson; correspondence, 4; ANA, FIII: 4, Doss 150. This response was from the War Secretary, Sir Henry Campbell-Bannerman. The stipulations were contained in a letter of 2 August 1892, Bircham & Co to Sir Godfrey Lushington, Permanent UnderSecretary at the Home Office. Nobel’s Explosives Company Limited v Anderson correspondence from 14 June 1892, 3. ANA, FIII: 4, Doss 150. The first stipulation was, in effect, an ‘admission’ that Anderson ‘has, since the date of the Patent 1471/88 [the ballistite patent], and more particularly in the years 1891 and 1892, manufactured at Waltham Abbey an explosive substance called Cordite’. Bircham & Co to JF Chance, 8 November 1892, Nobel’s Explosives Company Limited v Anderson; correspondence, 4–5 FIII: 4, Doss 150. The admission was modified (and presumably accepted) by the government. JF Chance—Bircham & Co, 10 December 1892, Nobel’s Explosives Company Limited v Anderson; correspondence, 6–7. ANA, FIII: 4, Doss 150. 6 English patents, Nos 5,614, 8,718, 11,664, and 11,667 of 1889. 7 K Swan ‘A review of the law relating to the use and patenting of inventions by Government Departments and their Officials’ Transactions of the Chartered Institute of Patent Agents, Vol XXXIX, 1920–21, 53 at 55; see also The Times (London, England, 15 February 1894) 7. 8 ‘The Cordite Scandal’ The Pall Mall Gazette (6 September 1893) 11; ‘The Alleged Cordite Scandal’ St. James’s Gazette (2 February 1894) 6; ‘Cordite’ The Pall Mall Gazette (15 February 1894) 1; ‘An Exploded System’ The Pall Mall Gazette (23 July 1894) 1.

Nobel’s Explosives Company, Limited, v Anderson (1894) 119 of nitro-cellulose used in the two propellants. In ballistite, it was what Nobel termed in his patent ‘soluble nitro-cellulose’, or ‘nitro-cellulose of the well-known soluble kind’; in cordite, the propellant was guncotton (insoluble nitro-cellulose).9 This difference had a crucial bearing on the case and its three judgments. Mr Justice Robert Romer found against the plaintiff. Although the plaintiff appealed, the decision was sustained in both the Court of Appeal and the House of Lords. This chapter is a historical study of the case that traces the background controversy; the way the case was argued by the parties; the decision and its appeals; and speculates about its enduring legal significance while also trying to elucidate the factors that made it a landmark decision in the development of British intellectual property law.10 II. SMOKELESS POWDERS AND INVENTORS’ IDENTITIES

The careers of Nobel, Abel and Dewar, the three protagonists of the dispute, and the crucial ingredients of their smokeless powders (nitro-glycerine and nitro-cellulose) exemplify the rapidly growing role of scientific knowledge and advance in invention and innovation. They also evidence how patent management became a central strategy to construct their identity as inventors. Alfred Nobel (1833–96) was a chemist and ambitious businessman who specialised in the development and manufacture of explosives and, later in his life, munitions. He had received informal tutelage as a youth in Russia from some leading chemists, but lacked formal science credentials.11 Frederick Abel was, however, one of the first full-time government professional scientists—‘chemist to the War Department’—and tried to negotiate a complex career of government service, professional scientific activity and commercial reward from his inventions.12 James Dewar was a professional academic chemist and held professorial chairs at Cambridge and the Royal Institution. Although primarily a ‘pure’ research scientist, he was also interested in profitable consulting work in applied chemistry, both for industrialists and the government, including profiting from patents.13 9 Soluble nitro-cellulose usually meant collodion nitro-cellulose (di-nitro-cellulose), soluble in ether-alcohol; guncotton meant tri-nitro-cellulose, the most highly nitrated form, insoluble in ether-alcohol. 10 Almost a century later, the case was still cited in intellectual property literature as a ‘landmark’ decision; see AW White ‘The Function and Structure of Patent Claims’ [1993] European Intellectual Property Review 243. 11 U Larsson, Alfred Nobel. Networks of Invention (Stockholm, The Nobel Museum, 2008) 28. 12 R Steele and K Watson, ‘Abel, Sir Frederick Augustus, first baronet (1827–1902)’, Oxford Dictionary of National Biography, revised edn, P Polden (Oxford, Oxford University Press, 2004): www.oxforddnb.com/view/article/ 30319. 13 JS Rowlinson, Sir James Dewar, 1842–1923: A Ruthless Chemist (Farnham, Ashgate Publishing, 2012) ch 7.

120 Seymour Mauskopf Nitro-cellulose and nitro-glycerine came from academic scientific research. They were both produced by the same kind of chemical reaction: nitration of organic materials—cellulose (cotton) for nitro-cellulose, and glycerol for nitro-glycerine—by steeping these materials in a mixture of concentrated nitric and sulphuric acid. Despite similar production, they differ in one major respect: nitro-glycerine is a single chemical compound, whereas nitro-cellulose is a more complex material (it is a long-chain polymer), which appears to stabilise into a few chemical types.14 The first use of guncotton is attributed to the German–Swiss chemist Christian Friedrich Schönbein in 1845–46. Schönbein recognised its potential as a smokeless substitute for black powder as a military propellant, named it guncotton, patented his process and tried to promote its production.15 A second, less explosive, type of nitro-cellulose, with different physical and chemical properties to guncotton, was also ‘discovered’.16 In 1866, Abel called Schönbein’s material tri-nitro-cellulose.17 The lower nitrated material(s) was known as collodion cotton and (sometimes) di-nitro-cellulose. Collodion cotton was soluble in an ether-alcohol mixture; guncotton was not.18 Collodion cotton was also a component of plastics such as ‘celluloid’, invented by John Wesley Hyatt in 1870.19 Nitro-glycerine’s first fabrication, by Ascanio Sobrero, an Italian physician and chemist, was almost contemporaneous with that of guncotton (1846).20 Sobrero focused on its physiological and medical properties.21

14

Exactly how many was controversial throughout the nineteenth century. was Professor of Chemistry at the University of Basel. He named his material ‘Schiesswolle’—‘gun-cotton’ in English. See CF Schönbein, ‘On the Discovery of Gun-Cotton’ (1847) 31 The London, Edinburgh and Dublin Philosophical Magazine and Journal of Science, 3rd series, 7. 16 It is not possible to identify a single discoverer of what became known as ‘collodion cotton’. 17 FA Abel, ‘Research on Gun-cotton—On the Manufacture and Composition of Gun-cotton’ (1866) 156 Philosophical Transactions of the Royal Society of London 282. 18 Edward Ash Hadow had researched the use of the ‘collodion process’ in photographic film. See EA Hadow ‘1. The quality and the Proportions of the Materials required in the Collodion Process. 1. Simple Collodion’ (1854) 1 Journal of the Photographic Society 178. Hadow called the soluble nitro-cellulose ‘collodion wool’. In a contemporaneous, more purely scientific paper, Hadow identified two ‘compounds’, which he called Compound B and Compound C, which were soluble in ether-alcohol, in contrast to Compound A (‘produced by action of the strongest acids’), which was not. See EA Hadow, ‘On the Substitution-Compounds obtained by the Action of Nitric Acid on Cotton’ (1855) 7 The Quarterly Journal of the Chemical Society of London 201, 208f. 19 See RD Friedel, Pioneer Plastic: The Making and Selling of Celluloid (Madison, University of Wisconsin Press, 1983). 20 Sobrero called it ‘pyroglycerin’; R Sohlman and H Schück, Nobel: Dynamite and Peace (Brian and Beatrix Lunn trs, New York, Cosmopolitan Book Corporation, 1929) 103. 21 A weak tincture of nitro-glycerine was marketed under the name ‘glonoin’. This is still readily available as a homeopathic remedy. 15 Schönbein

Nobel’s Explosives Company, Limited, v Anderson (1894) 121 A. Nobel and Abel: Tamers of Nitro-glycerine and Guncotton In Russia in the early 1850s, Nobel and his father were introduced to nitro-glycerine (and its possible military uses) by one of Alfred Nobel’s former chemistry teachers, Nicolai Zinin.22 A decade later they tried to develop nitro-glycerine for military uses, as an explosive in torpedoes and as a component in military propellants (combined with black powder) and later developed nitro-glycerine as a blasting agent, the key being a detonator to set off the nitro-glycerine in open air.23 Alfred Nobel established factories to produce nitro-glycerine and then marketed it worldwide as a blasting agent. But nitro-glycerine was prone to violent explosions, leading to restrictions and bans. To remedy explosiveness, Nobel experimented to stabilise it in various inert materials, the most successful of which he named ‘dynamite’.24 Nobel patented it in numerous countries, including Spain (1865), Britain (1867) and the United States (1865 and 1868).25 In 1871 the British Dynamite Company, Ltd was founded in Scotland, and in 1877 its name was changed to Nobel’s Explosives Company, Ltd.26 During the same decades, Frederick Abel was working to control guncotton. Like nitro-glycerine, it was unstable; by 1860, virtually all of the production venues had either been shut down or had blown up. In the early 1860s, an Austrian military officer, Wilhelm Freiherr Lenk von Wolfsberg (Baron von Lenk), claimed to have developed a means of stabilising guncotton and to have developed it as a propellant. The British military (and scientists) were keenly interested in von Lenk’s assertions and their assessment of them provided the context for Abel’s research.27 This had two components: a comprehensive scientific study of guncotton (and, to a degree, all identified types of nitro-cellulose) and a determination of means to ensure

22 Larsson,

Alfred Nobel. Networks of Invention (n 11) 36. Sohlman and Schück, Nobel: Dynamite and Peace (n 20) 108ff. Nobel thought that nitroglycerine exploded because of a sudden rise in temperature caused by shock or by the detonator. 24 ‘Dynamite: Its History and Manufacture’ Daily Gazette for Middleborough (North Yorkshire, England, 25 January 1876) 3; ‘Dynamite and its inventor’ Belfast Newsletter (Antrim, Northern Ireland, 23 April 1888) 6. 25 E Bergengren, Alfred Nobel: the man and his work (London, Thomas Nelson and Sons, 1962), 43; P Sáiz, Invención, patentes e innovación en la España contemporánea (Madrid, OEPM, 1999) 313; M Wilkins, The History of Foreign Investment in the United States to 1914 (Cambridge, Mass, Harvard University Press, 1989) 132. 26 R Trotter, The History of the Nobel’s Explosive Company Limited and Nobel Industries Limited, 1871–1926 (London, Imperial Chemical Industries, 1938); K Fant, Alfred Nobel: A Biography (New York, Arcade Publishing; 1991) 143. The constitution of a national corporation was one of the business strategies Nobel used to exploit his patents in different countries; see for instance, G Tortella, The Development of Modern Spain: An Economic History of the Nineteenth and Twentieth Centuries (Cambridge, Mass, Harvard University Press, 2000) 94. 27 The Gun Cotton Committee was established in 1864 by the Secretary of State for War, and was comprised of military officers and distinguished scientists, including Abel. The committee sat until 1868; see ‘Gun Cotton as a Mining Agent’ Morning Post (10 September 1869) 7. 23

122 Seymour Mauskopf its stability.28 Abel identified a method to stabilise it, which he patented and which became the standard method of producing stable guncotton.29 He also investigated the military uses of guncotton and developed it commercially as a blasting agent. Its military potential as propellant eluded him, but its commercial uses seemed very promising, especially in mining,30 and Abel arranged for its manufacture,31 which put him in direct competition with Nobel. In 1869, after a very destructive nitro-glycerine explosion in Wales, Parliament passed the Nitro Glycerine Act, banning the importation into Great Britain, or transportation within the country, of ‘every substance having nitro-glycerine in any form as one of its component parts or ingredients, without first securing a special licence for importation or transportation from one of the Principal Secretaries of State’ [Home Secretary or Secretary of State for War].32 This included dynamite as well as nitro-glycerine. As a government scientific adviser with a competitive product of his own, Abel was suspected of facilitating the bill’s passage.33 Abel’s—and guncotton’s— image were badly tarnished by an explosion on 11 August 1871 at the Stowmarket factory producing guncotton. Even before this catastrophe, Abel and other government military officials were under pressure from the reformist Secretary of State for War, Edward Cardwell, to give up personal patents because of a conflict of interest in holding and financially benefiting from them. After the Stowmarket disaster, Abel sold off his guncotton patent right.34 In March 1872 a Treasury Minute prohibited government officers from giving advice where ‘their own interest might come into collision with any other person’ and from taking out profitable patents ‘for any articles needed for the use of the government’.35 An Army Circular of 28 FA Abel ‘Researches on Gun-Cotton. On the Manufacture and Composition of Gun-Cotton’ (1866) 156 Philosophical Transactions of the Royal Society of London 269–308 and FA Abel ‘The Bakerian Lecture: Researches on Gun-Cotton. Second Memoir. On the Stability of Gun-Cotton’ (1867) 157 Philosophical Transactions of the Royal Society of London 181–253. 29 ‘Improvements in the Preparation and Treatment of Gun-cotton’, British Patents 1102 (20 April 1865). 30 Especially after the discovery by his assistant, EO Brown, that a mercury fulminate detonator, like Nobel’s, could be used to set gun-cotton off in open air. 31 By Messrs Prentice & Co of Stowmarket, the company that had produced Von Lenk’s guncotton in England. 32 See 32 & 33 Victoria, Chap 113. ‘An Act to prohibit for a limited period the importation, and to restrict and regulate the carriage of Nitro Glycerine. [11th August 1869]’. 33 Staveley Hill, MP for Coventry, explicitly stated this suspicion in Parliament on 16 May 1873. Henry Bruce, the Home Secretary, rebutted him; HC Deb 16 May 1873 vol 216 cc53–9. Alfred Nobel sarcastically expressed his own suspicion of Abel’s role in a letter to Home Secretary Bruce in March 1870: ‘The distinguished patentee for guncotton in England and chief Advisor of the House of Commons on Dynamite matters therefore appears to have exaggerated the danger of the latter substance’; Nobel to Bruce, March, 1870. Riksarkivet, Stockholm, ANA, Signum BI: 1, [Copybook] 1869: ‘Private Briefe fuer Herrn A. Nobel’. XVII (sheet 172). 34 Abel to Director of Artillery, 19 July 1873; WO 32/7142; NA. 35 Treasury Minute (March 1872), Royal Society of Chemistry, HC 5001—FA (box 1) Folder 10.

Nobel’s Explosives Company, Limited, v Anderson (1894) 123 1 June 1872 reiterated the latter provision. In 1874 a Select Committee of the House of Commons was appointed to reconsider the Nitro Glycerine Act. In light of its recommendations, the Explosives Act 1875 was enacted, which regulated the importation, manufacture and transportation of dynamite (and guncotton).36 B. Towards Ballistite and Cordite In 1875, Nobel patented another stable form of nitro-glycerine, blasting gelatine (gelignite), derived improbably from two explosive materials: nitroglycerine and collodion cotton.37 In one of his patents for blasting gelatine, Nobel speculated on its possible conversion into a smokeless military propellant,38 and spent 12 years working on this challenge. He succeeded by using Hyatt’s ‘celluloid’: specifically, the use of camphor as the predisposing material for gelatinising collodion cotton with nitroglycerin to obtain the necessary composition and physical consistency for a military propellant. The English patent for ballistite, which became the focus of this case, was applied for on 31 January 1888.39 What connected this patent with the British government, triggering the controversy, was a cumulative and quick succession of events. For instance, just a few months later, in July 1888, the War Office Committee on Explosives was established under the presidency of Abel and included James Dewar and August Dupré, consulting chemist to the Home Office’s explosives department. Among other things, the Committee was charged with assessing and advising on the latest advances in explosive agents, particularly smokeless military propellants, so as to obtain the best possible smokeless propellants for service weapons.40 It was

36

Explosives Act 1875 (38 Vict c 17). in Explosive Compounds’, English Patent 4179 ‘Improvements in Explosive Compounds’. Provisional Specification, 2 December 1875; Complete Specification, 2 June 1876. 38 Description published by the Royal Patent Office. The Nitro-Glycerine Company, Limited, Stockholm, ‘Method of Producing an Explosive in a Solid Shape from Nitro-glycerine, called Gelatinised Nitro-glycerine’. Patent in Sweden, 8 July 1876; ANA, F III: 7, Doss 155. 39 English Patent, 1471 ‘Improvements in the Manufacture of Explosives’. Provisional Specification, 31 January 1888; Complete Specification, 24 November 1888; Accepted, 15 January 1889. Nobel’s ballistite patent contained three claims, the relevant one here being the first: ‘I declare what I claim is:—I. The manufacture from nitro-glycerine and soluble nitro-cellulose, of a horny or semi-horny explosive compound, susceptible of granulation, substantially as and for the purposes herein described’; in ANA: H1a, Ser TRYCK, Doss Nr 266 (Blue-Book Specifications [Engleska Patentbeskrivingar]). 40 On 21 August 1893, the War Secretary stated in Parliament: ‘The object of the Department was not to decide on the merits of rival inventions, but to obtain the best material for the Public Service. For this purpose the Committee were naturally entitled to suggest improvements and modifications, and no special intimation to that effect was required’. HC Deb 21 August 1893 vol 16 cc633–6. (Henry Campbell-Bannerman). 37 ‘Improvements

124 Seymour Mauskopf also charged with carrying out experiments on explosives and munitions to advance the knowledge about them.41 Abel and Dewar proposed that any results of such advancement on their part should be patentable, with domestic patents to be assigned to the government but foreign patents to be held by them.42 This was possible because the 1883 Patents Act rescinded the prohibition on government officials from taking out patents.43 There was neither formal approval of nor official opposition to the proposal.44 In October 1888 the Committee explicitly asked Nobel to submit samples of ballistite.45 He agreed, and from 1 November until early 1889 submitted occasional samples.46 Although they faulted ballistite for potentially dangerous vaporisation of camphor, Abel and Dewar were very encouraging to Nobel about the prospects for his smokeless propellant.47 However, early in 1889, Abel and Dewar began to develop their own modification of ballistite48 (without camphor) and by mid-March submitted a sealed memorandum on their own research to the Treasury Solicitor ‘for future reference, in the event of a question arising as to priority of invention’.49 In April 1889 they filed a patent specification for production of a smokeless powder ‘in the

41 War Office Committee on Explosives. General Instructions [10 July 1888]. Royal Society of Chemistry, HC 5001,—FA (box 1); File 27: ‘War Office Committee on Explosives—General Instructions’ (10 July 1888). 42 ‘Position of Committee with Reference to Patents for Inventions and to Inventors’, First Half Yearly Progress Report of the President Explosives Committee, 31 December 1888 (London, War Office, 1889); SUPP 6/512; NA. 43 HC Deb 11 September 1893 vol 17 c834 (Edward Stanhope). The details of the deliberations on allowing government employees and officials to take out patents are in T1/8137B; NA (Patent Documents 1883–84). 44 On 28 August 1893, the War Secretary mentioned in Parliament: ‘No official reply having been sent, no written or official approval or disapproval of the Memorandum was given. What may have been communicated verbally I cannot, of course, say’; HC Deb 28 August 1893, vol 16 cc1206–7 (Henry Campbell-Bannerman). 45 ‘At invitation of Committee, on verbal authority, Mr. Nobel, 1.11.88, brought down two samples of a powder for trial’. Proceedings of Explosives Committee, 2 November 1888; SUPP 6/512, 5; NA. 46 The Secretary of the Explosives Committee, Captain Jocelyn Home Thomson, was permitted to observe the manufacturing process at Nobel's production site at Honfleur, France, on 28 March 1889 and was given additional supplies of ballistite; see Second Half-Yearly Progress Report of the President Explosives Committee, 30 June 1889 (London, Harrison and Sons, 1889) 7 and Appendix V (46) in SUPP6/512. 47 On 21 January 1889, Nobel submitted ‘the general terms, which he would demand in the event of the adoption of his powder’. Second Half-Yearly Progress Report of the President Explosives Committee, 30 June 1889 (ibid) 6 in SUPP6/512. 48 Abel and Dewar referred to their own powders as ‘Ballistite. Modification by Committee’ in the confidential Progress Reports of the Explosives Committee; Report No. 9. Minute 325. 12 June, 1889, 1 in SUPP6/512. 49 Submitted to the Director of Artillery on 17 March; Second Half-Yearly Progress Report of the President Explosives Committee, 30 June 1889 (London, Harrison and Sons, 1889) 12 in SUPP6/512.

Nobel’s Explosives Company, Limited, v Anderson (1894) 125 cord form’.50 This was the first cordite patent.51 As this patent utilised ‘soluble nitro-cellulose’, the authors delineated their patent specification as a modification of blasting gelatine (the patent of which was scheduled to expire later in 1889) and not of ballistite. Two more cordite patents followed in the next few months, as did a patent for machinery to manufacture the propellant in the form of wires.52 Unlike the first cordite patent, the second and third employed tri-nitro-cellulose (guncotton). The third (referred to as ‘the cordite patent proper’ at one point in the trial) was a general template for all subsequent cordite fabrications. Nobel learned about the cordite patents in May 1889 even though Abel and Dewar had intimated that they were taking out patents.53 The duo (Dewar in particular) continued to assure Nobel that ballistite was still under serious consideration.54 On 25 May, Nobel and Abel and Dewar reached a verbal agreement. Although the specific details of this agreement are unknown, the fact is that relations between Nobel and his English rivals soon degenerated swiftly. The discord was over possible business arrangements regarding the foreign patents of Abel and Dewar, who would only include Nobel if he joined them on their terms. Nobel wanted to work through his own cartel of dynamite companies.55 Dewar cut off discussion completely on 9 August.56 50 Second Half-Yearly Progress Report of the President Explosives Committee, 30 June 1889 (London, Harrison and Sons, 1889) 12 in SUPP6/512; NA. The domestic patent was to be assigned to the Secretary of State for War. 51 English Patent 5614 (Abel and Dewar), ‘An Improvement in the Manufacture of Explosives for Ammunition’. 2 July 1890 ‘(but withheld from Publication under Section 44 Patents & c., Act, 1883)’; Publication, 28 May 1892. 52 English Patent 8718 (Abel and Dewar), ‘Manufacture of Explosives’ 26 April 1890. English Patent (Abel and Dewar), 11,664: ‘Improvement in the Manufacture of Explosives’; 24 May 1890. English Patent 11,667 (Abel, Dewar and Anderson), ‘Process and Apparatus for the Manufacture of Explosives in the Form of Wires or Roads and for forming the same into Cartridges’ 14 June 1890. In none of the patents is the term ‘cordite’ used, but it is used in the Second Half-Yearly Progress Report of the President Explosives Committee, 30 June 1889 (London, Harrison and Sons, 1889); SUPP 6/512, 11; NA. 53 For example, on 17 April 1889, Abel wrote to Nobel about their substitution of a nonvolatile constituent for camphor and added that: ‘It has been our duty, with the authority and in the interest of the Department of Government which we serve, to protect certain results arrived at by us’. He specified the ‘nitro-glycerine powder’ and ‘smokeless powders of another class for cannon’. The earliest mention by Nobel of knowledge that Abel and Dewar were patenting their smokeless powders was in a letter to Dewar, dated 8 May 1889. Both letters are in the folder, ‘Correspondence between Mr. Alfred Nobel and Messrs. Abel and Dewar’; ANA, FIII: 8, Dossier 156. 54 For example, on 9 June 1889, Dewar assured Nobel that ‘the Ballistite moves slowly its safe and steady course, and, considering the people we have to do with, can’t be accelerated’; Dewar to Nobel (ibid) 156. 55 Dewar wrote to Nobel on 1 August 1889, stating that, for him, ‘the proper course to adopt with regard to the specification is to adopt a partner who is willing to take one third for a fixed sum and to discharge duties of negotiation, etc’. On 5 August, Nobel proposed that Dewar (and Abel) ‘formulate a definite proposal which I may lay before our foreign Dynamite Companies’; Dewar to Nobel (ibid) 156. 56 Dewar to Nobel, 9 August 1889; Dewar to Nobel (ibid) 156.

126 Seymour Mauskopf III. THE MAKING OF THE LEGAL CASE

As historians of science have recently noted, the British courtroom became a major venue for patent disputes in the late nineteenth century.57 Alfred Nobel spent much time managing his patents worldwide, and he and his assignees appear to have adopted an aggressive strategy of litigating against infringers.58 Their patent activities in Britain were also noticeable. For instance, a particularly remarkable level of management attention can be seen in their attempt to extend their patents and in the dynamic push to pursue legal actions in British courts.59 In the early 1880s, Nobel Explosives Ltd. had already sued for patent infringement in Britain.60 A few years later, the controversy between Alfred Nobel and Abel and Dewar seems to have triggered the legal action studied here. The action was brought by Nobel Explosives Ltd, the holder of the ballistite patent, in the Chancery Division of the High Court of Justice against William Anderson.61 Mr Justice Robert Romer, who, like many of the legal representatives for each side, was distinguished in both law and science, heard the case.62 Romer J had been a brilliant mathematician at Cambridge and a professor of mathematics at Queen’s College, Cork before being called to the bar.63 Prominent patent barristers also featured. John Fletcher Moulton, the barrister acting for the plaintiff, was a stellar QC, surely one of the most formidable—and expensive—silks of his generation.64 He was 57 S Arapostathis and G Gooday, Patently Contestable. Electrical Technologies and Inventor Identities on Trial in Britain (Cambridge, Mass., The MIT Press, 2013) 7, 28, 49–53; C MacLeod, ‘Reluctant Entrepreneurs: Patents and State Patronage in New Technosciences, circa 1870–1930’ (2012) 103 Isis 328–39. These accounts seem to be confirmed by newspaper cuttings such as ‘Wig and Gown’ The Globe (London, England, 27 April 1897) 3; ‘A Chop of Patent Actions’ The Globe (13 April 1898) 3. 58 The Atlantic Giant Powder Company v The Dittmar Powder Manufacturing Company and Others; Circuit Court, S D New York, 27 September 1881; 9 Fed 316 (CCSDY, 1881); Atlantic Giant Powder Company v Parker (1879) Fed Cas No 625, 16 Blatchf. 281 [USA]. 59 ‘The Dynamite Patent’, The Yorkshire Post and Leeds Intelligencer (3 March 1881) 8; ‘The Dynamite Patents’ The Glasgow Herald (4 March 1881) 8; ‘The Dynamite Patent’ The Cornish Telegraph (10 March 1881) 7. 60 Nobel’s Explosives Co v Jones, Scott & Co (1881) 17 Ch D 721. 61 The assignment of the patent from Alfred Nobel to Nobel’s Explosives Ltd. took place in April 1892; see ‘Alfred Nobel, Esq. to Nobel’s Explosives Company, Limited 25 April 1892’; HL/PO/JU/4/3/443; PA. 62 The legal teams were: Counsel for the Plaintiff: John Fletcher Moulton QC, Charles Alfred Cripps QC, Richard Burdon Haldane QC, T Rolls Warrington (instructed by Bircham & Co, agents for Moncrieff, Bair, Paterson & Co, of Glasgow); Counsel for the defendant: the Attorney-General (Charles Arthur Russell), Richard Webster QC, Matthew Ingle Joyce QC, Henry Sutton, Robert Cecil (instructed by Hare & Co, agents for the Solicitor to the Treasury). 63 FD Mackinnon, ‘Romer, Sir Robert (1840–1918)’, Oxford Dictionary of National Biography (revised edn), P Polden (Oxford, Oxford University Press, 2004), www.oxforddnb.com/ view/article/35819; see also Rowlinson, Sir James Dewar (n 13) 67. 64 ‘Barristers’ Fees’ St. James’s Gazette (London, England, 19 September 1901) 16; see also W Van der Kloot, ‘Lord Justice of Appeal John Fletcher Moulton and explosives production in World War I: ‘the mathematical mind triumphant’ Notes Rec (2014) 68, 171–186; A Guagnini, ‘John Fletcher Moulton and Guglielmo Marconi: Bridging Science, Law, and Industry’ Notes Rec. (2009) 63, 355–63.

Nobel’s Explosives Company, Limited, v Anderson (1894) 127 a bright mathematician too.65 The defendant also retained a distinguished patent barrister with a wide scientific purview, Sir Richard Webster, QC, who helped the Attorney-General, Sir Charles Russell, to mount a defence.66 Their performance in court was scrutinised by the press and some journalists were struck by the masterly manner in which Moulton exposed the case.67 While he did not need any papers to conduct the case, Russell was criticised for his constant need to consult the voluminous references and other colleagues.68 Journalists also made comment on the technical difficulties of the case, the proceedings of which, according to a newspaper account, ‘begun to uncoil itself with the ponderous deliberation of a gorged boa constrictor’.69 In fact, the scientific and technical complexity of the matter did not only affect the argumentation of the case but also its preparation.70 For instance, counsel for the parties visited Waltham Abbey in Essex and the Nobel Explosives factory in Ardeer, Glasgow, to prepare their respective legal strategies and to secure evidence.71 Experiments were carried out, samples were taken and expert witnesses were carefully arranged.72 Unsurprisingly, the selection of witnesses became a concern for both parties,73 perhaps because of the prevailing ‘Aristotelian attitude’ that seemed to affect patent cases.74

65 T Mathew, ‘Moulton, John Fletcher, Baron Moulton (1844–1921)’, Oxford Dictionary of National Biography (revised edn) H Mooney (Oxford, Oxford University Press, 2004), . HF Moulton, The Life of Lord Moulton (London, Nisbet & Co, 1922) 196. 66 ‘Cordite Patent Rights’ The Sheffield and Rotherham Independent (12 January 1894) 4; on Webster’s expertise in patent law, see also C Beauchamp, Invented by Law: Alexander Graham Bell and the Patent That Changed America (Cambridge, Mass., Harvard University Press, 2015) 136–37; Arapostathis and Gooday, Patently Contestable (n 57) 71. 67 ‘Cordite Patent in Chancery’ The Pall Mall Gazette (30 January 1894) 7; ‘Cordite Patent in Chancery’ The Pall Mall Gazette (7 February 1894) 7. 68 ‘Cordite Patent in Chancery’ The Pall Mall Gazette (31 January 1894) 7. Although patent cases were not the expertise of Sir Charles Russell, Webster QC thought that ‘he mastered the subject in a wonderful way, and practically won the case by his speech for the defendant’; RH Viscount Alverstone, Recollections of Bar and Bench (London, Edward Arnold, 1914) 201–02. Similarly, Cripps QC recalled Russell’s extraordinary advocacy skills on the case, particularly in relation to the cross-examination of scientific witnesses; see CA Cripps, A Retrospect (London, W Heinemann, 1936) 72–73. 69 The Pall Mall Gazette (31 January 1894) 2. 70 Anderson to M’Clintock, 18 November 1892 (arrangements for the impeding Cordite trial); SUPP 5/410; NA. 71 ‘Cordite Patent Rights’ The Sheffield and Rotherham Independent (Sheffield, England, 12 January 1894) 4; Hare & Co to the Superintendent, Waltham Abbey, 15 August 1893 (proposing that junior counsel visit the factory); and Hare & Co to M’Clintock, 17 January 1894 (Webster’s visit to Waltham Abbey); SUPP 5/410; NA. 72 Hare & Co. to Webster, 26 April 1893; SUPP 5/410; NA. 73 Hare & Co. to Capt. Nathan, 20 December 1893 (undesirability for Mr Findlay or Mr Cook to become expert witnesses in case they were exposed to cross-examination); SUPP 5/410; NA. 74 Harry Pearson has summarised this attitude by saying that ‘generally the Court is more impressed by technical evidence from authoritative people, than in so-called facts’; see H Pearson, Rolls-Royce and the Rateau Patents (Derby, Rolls-Royce Heritage, 1989) 21–22.

128 Seymour Mauskopf While the remarkable gathering of scientific celebrities was surely one of the salient features of the case, it is important to note that legal arguments depended upon eliciting different ‘figures of the invention’.75 This involved a discussion about scientific concepts that focused on the comparison between ballistite and cordite. As the main issue revolved around the chemical nature and the relations between the two types of nitro-cellulose and whether they were different chemical species with distinct chemical properties or not, the plaintiff emphasised the evidence produced by chemical experts who asserted their similarity. This was one of the main strategies to capture the defendant’s liability. Denying the existence of distinct chemical species of nitro-cellulose meant that the guncotton of cordite was covered by the nitro-cellulose of ballistite.76 However, the defendant introduced counterarguments based upon the evidence given not only by chemists but also by mechanical engineers.77 And they obviously denied the identity between the two substances, emphasising their differences.78 Arguing that such species did exist was a suitable manoeuvre to escape liability.79 Here we can see how the plaintiff tended to highlight the substance over the process or method of manufacture, and the defendant frequently switched the focus to the process in order to displace any claim of identity between cordite and ballistite. By raising the different process involved in the production of cordite, the defendant tried to discredit the plaintiff’s contention that ballistite and cordite were somehow the same thing physically and chemically.80 Such discussion offered an opportunity to the parties to consider a thorny and highly topical legal issue in patent law—the doctrine of equivalents.81 As mentioned, the chemical experts for the plaintiff repeatedly said that the two military powders were essentially identical,82 and those for the defence 75 A Pottage and B Sherman, Figures of Invention. A History of Patent Law (Oxford, Oxford University Press, 2010) 11. 76 ‘All differences between nitro-cellulose are differences of degree; there is no sharp line of demarcation’ in ‘Examination of William Odling, 30 January 1894, 55; Proceedings on Trial’; TS 36/96; NA. 77 The plaintiff called a number of chemists to support the case (William Odling, Joseph Sayers, Henry Roscoe, Rudolf Benedikt, Robert Tatlock, Carl Lundholm, William Cullen and William McNab). The defendant however relied on mechanical and civil engineers such as Joseph Bramwell and Oscar Guttmann; see ‘Proceedings on Trial’; TS 36/96. 78 ‘Cordite Patent in Chancery’ The Pall Mall Gazette (31 January 1894) 7. 79 James Dewar asserted that there existed ‘tri-nitro-cellulose’ and ‘di-nitro-cellulose’, each of specific chemical formula; ‘Examination of James Dewar, 7 February 1894, 367–59; Proceedings on Trial’; TS 36/96; NA. 80 Webster QC: ‘Taking the process or means of manipulation, by which I mean malaxation between heated rollers, is it or is it not the same process [for cordite as for ballistite] in your opinion?—It is not the same.’ ‘Examination of Henry Armstrong, 9 February 1894, 496–97; Proceedings on Trial’; TS 36/96; NA. 81 GB Ellis ‘On the Doctrine of Equivalents—Mechanical and Chemical’ CIPA Transactions IX, 1890–91, 63–80. 82 Odling took issue with the Attorney General’s attempt to distinguish physically between ballistite and cordite. ‘Cross-Examination of William Odling, 30 January 1894, 92; Proceedings on Trial’; TS 36/96; NA. Similarly, Henry Roscoe testified that: ‘Chemically, certainly,

Nobel’s Explosives Company, Limited, v Anderson (1894) 129 viewed them as chemically and physically different.83 However, the point of bringing them together was to raise the question of whether the invention of cordite could have been made directly from the ballistite specification or whether it required new thought and research. In other words, it was an attempt by the plaintiff to say that the cordite patent taken out by Abel and Dewar was not an independent invention, ‘except so far as it could have been considered by them as merely as being an improvement on ballistite, the development of Nobel’s patent’.84 At the centre of the dispute was the history of Nobel’s invention and how it could affect the outcome of the case. Both parties developed different historical narratives and counter narratives that led to the invention.85 Such framing was interesting because it involved a departure from any act of comparison. The plaintiff often depicted his invention as a ‘master’ or ‘pioneer patent’.86 The strength of that assertion relied on its uniqueness to cover subsequent patents like the cordite patent.87 With this argumentative device of constructing an invention, the plaintiff, however, risked his position and exposed himself to an attack from the defendant regarding the validity of the patent about which he was being sued. The defendant’s challenge illuminated a background topic that emerged through the proceedings and arguably served as a catalyst for it to become the most important issue of the decision, namely the scope of the patent.88 Although the plaintiff cited an important previous decision to support his argument of the unique (‘pioneer’) character of the invention,89 the defendant argued a different interpretation of that precedent. By showing that the previous case hinged on the essential identity of materials and products, its relevance for this particular litigation could only be maintained by stretching the interpretation of the ballistite patent inappropriately widely to cover the employment I can see no difference between the two products … Not between Cordite and Ballistite in the finished product’; ‘Examination of Henry Roscoe, 1 February 1894, 173; Proceedings on Trial’; TS 36/96; NA. 83 Armstrong emphatically denied that cordite and ballistite were ‘the same thing’ in ‘Examination of Henry Armstrong, 9 February 1894, 497; Proceedings on Trial’; TS 36/96; NA. Frankland concurred with Armstrong: ‘No, they are essentially different bodies’. Frankland noted, in particular, that ‘the very considerable difference in the potential energy possessed by these two bodies, that is Ballistite on the one hand, and Cordite on the other’; ‘Examination of Edward Frankland, 9 February 1894, 502; Proceedings on Trial’; TS 36/96; NA. 84 ‘Minutes of Speech’, 30 January 1894, 44; ‘Proceedings on Trial’; TS 36/96; NA. 85 ‘Opinion on Evidence by R Webster, MI Joyce and H Sutton’ 15 August 1893; SUPP 5/410; NA. 86 ‘Minutes of Opening Speech (Moulton)’, 30 January 1894, 43 and ‘Summing Up’ (Cripps) 5 February 1894, 257; ‘Proceedings on Trial’; TS 36/96; NA. 87 Cripps QC located the issue in the use of nitro-glycerine to form a smokeless powder. He maintained that the ballistite patent covered patents for other processes that led to the same result, even by a different process; ‘Summing Up’, 5 February 1894, 257; ‘Proceedings on Trial’; TS 36/96; NA. 88 Nobel’s Explosives Company, Limited v Anderson [1894] 11 RPC 115. 89 Badische Anilin und Soda Fabrik v Levenstein [1885] RPC 73 (HL).

130 Seymour Mauskopf of insoluble nitro-cellulose.90 At this point the litigation became primarily concerned with the textual interpretation of Nobel’s ballistite patent of 1888. As can be inferred from the discussions noted above, the nature of nitrocellulose affected such discussion. Both ballistite and cordite were essentially composed of nitro-cellulose and nitro-glycerine. Nitro-glycerine was chemically identical in both propellants. In ballistite, the nitro-cellulose was soluble nitro-cellulose, while in cordite it was guncotton (insoluble nitrocellulose). Several different scientific, technical and legal issues intertwined here, all dependent on whether or not guncotton was covered by the soluble nitro-cellulose in Nobel’s ballistite patent. On the one hand, the question involved an assessment of ballistite’s relationship to earlier patents, mainly that of blasting gelatine.91 On the other hand, the point was to consider the state of scientific knowledge of the materials and processes when the patent was issued in 1888. In particular, what had Nobel meant by ‘soluble nitro-cellulose’ then and, connected to this, what would standard scientific understanding of this term have been? A sub-question was: soluble in what? A common laboratory distinction between collodion cotton and guncotton was that the former was soluble in ether-alcohol and the latter was not. But did Nobel mean to name collodion cotton (and only this) in his patent application? Could ‘soluble’ be construed differently here?’92 IV. CHANCERY AND BEYOND

A. The Lower Court The Patents Act 1883 made several procedural changes, such as a single judge deciding patent cases rather than a jury.93 Although this appeared to 90 The Attorney General termed this patent as ‘the only case that throws any light, as far as I have been able to follow it’; ‘Minutes of Attorney’s General Speech’, 7 February 1894, 348; ‘Proceedings on Trial’; TS 36/96; NA. 91 Both blasting gelatine and ballistite were composed of nitro-glycerine and collodioncotton; therefore, was ballistite covered by the blasting gelatine patent? The Attorney General questioned William Odling on this issue; see ‘Cross-Examination of William Odling, 30 January 1894, 77–78; Proceedings on Trial’; TS 36/96; NA. 92 Odling (for the plaintiff) said: ‘So far as I can gather, the idea of solubility in nitroglycerine has gradually superseded the idea of solubility in ether-alcohol. I might, perhaps, give an illustration of that, that the original license for the manufacture of blasting gelatine was expressed in terms of solubility in ether-alcohol, and the license was expressed in terms of solubility in nitro-glycerine’. Examination of William Odling, 30 January 1894, 57 ‘Proceedings on Trial’; TS 36/96; NA. However, under cross-examination by the Attorney-General, Odling did admit that the ‘commercial’ meaning of ‘nitrated cellulose of the well-known soluble kind’ was collodion cotton, soluble in ether-alcohol. ‘Cross-Examination of William Odling, 31 January 1894, 83; Proceedings on Trial’; TS 36/96; NA. 93 WR Cornish, Intellectual Property: Patents, Copyright, Trade Marks and Allied Rights (London, Sweet & Maxwell, 1981) 84; see also Johnson’s Epitome of Patent Laws and Practice (London, Longmans, Green & Co, 1887) 46.

Nobel’s Explosives Company, Limited, v Anderson (1894) 131 have contributed to the strict construction of patent claims and specifications that will be mentioned below, it was supposedly an attempt to avoid bifurcated decision-making and to better deal with the growth of scientific and engineering difficulties in patent litigation.94 Sir Robert Romer became one of the Chancery Division judges who frequently adjudicated patent cases.95 He was described as patient, fair, and someone who ‘could not be influenced by outside comments’.96 His decision on this case primarily looked at the invention as a ‘textual artefact’.97 It focused on qualifying the invention covered and claimed by Nobel’s ballistite patent of 1888.98 Such a comprehensive focus on the normative effect of the text evidenced a pragmatic interest in determining the scope of protection. And it did so by interpreting what Nobel meant when he used the term ‘soluble nitro-cellulose’ in his patent. This scrutiny of the specification not only indicates a remarkable trend in the development of modern patent jurisprudence, it also suggests that the defendant’s way of structuring the legal argument had a decisive impact on the outcome of the case.99 A cursory glance at the proceedings shows how the defendant had orientated a substantial part of his defence towards limiting the scope of the ballistite patent. Yet the judge emphasised that the question raised had to be answered by restricting it to the time of the ballistite patent.100 In particular, nitro-cellulose consisted of two well-known and distinct kinds—the soluble and the insoluble101—which the judge called the soluble type ‘collodion cotton or (sometimes) collodion g uncotton’ and described as being ‘principally, though not exclusively, used for photographic or surgical purposes’.102 These were distinguished at the time of the ballistite patent ‘as well-known objects of manufacture and sale’.103 By identifying only two distinct kinds of nitro-cellulose and delineating the soluble kind in that manner, the judge had, in effect, launched an oblique criticism of Moulton QC’s strategy of suggesting that Nobel meant a more highly nitrated form of the soluble than that used in photography or surgery.104 Although he referred to the fabrication of a highly nitrated soluble nitro-cellulose, he dismissed it as a fact to be disregarded in this case.105 94 ‘The Patent Law’ The Western Daily Press (Bristol, England, 5 December 1881) 7; J Whitehead ‘Patent Practice in England’ Journal of the Patent Office Society, XVI, 1934, 921, 937. 95 ‘Judicial Appointments’ The Times (23 February 1899) 6; Tucker v Kaye (1891) 8 RPC 58 (Romer J). 96 ‘Cordite’ The Pall Mall Gazette (15 February 1894) 1. 97 Pottage and Sherman Figures of Invention (n 75) 118–19. 98 Nobel’s Explosives Company, Limited v Anderson [1894] 11 RPC 115, 124. 99 ibid 125. 100 ibid 125–26. 101 ibid 125. 102 ibid. 103 ibid. 104 ibid. 105 ibid.

132 Seymour Mauskopf And after giving an account of the differences between soluble and insoluble nitro-cellulose, he said that Nobel’s provisional and final specification for ballistite should be interpreted restrictively.106 In fact, the judge rejected other interpretations as being ‘ingenious, but to [his] mind, delusive’.107 He also offered an explanation of why he considered that the patent should be interpreted in such a way. Nobel had specified soluble nitro-cellulose ‘deliberately or intentionally’, because of the greater danger of insoluble nitro-cellulose (especially when heat was used in malaxation) and because Nobel did not know whether the insoluble type could actually be used to manufacture a smokeless propellant.108 Alongside their attempt to limit the scope of the Nobel’s ballistite patent, the defendant had also launched an attack on its validity, particularly noting that Nobel had anticipated it in an earlier patent for blasting gelatine. Although the move did not knock out the ballistite patent, as the judge considered it valid,109 it introduced a caveat that nevertheless shows the strength of the argument. For when Romer J considered this point he said that it was valid in so far as it was interpreted ‘in the limited way I have mentioned’ (that is, limited to ordinary soluble nitro-cellulose).110 After interpreting the patent in such a restrictive way, it is no surprise then that he did not find an infringement of ballistite by cordite. He stated this in a particularly emphatic manner, with a clear and often-cited passage of what, in his view, was a principle governing all patent cases (including master patents): In order to make out infringement it must be established to the satisfaction of the Court that the alleged infringer, dealing with what he is doing as a matter of substance, is taking the invention claimed by the patent. Not the invention which the patentee might have claimed if he had been well advised or bolder, but that which he has in fact and substance claimed on a fair construction of the specification.111

Another remarkable feature of the judgment was the way in which Romer J compared the material contents, processes of fabrication and products of ballistite and cordite. Romer J’s characterisation of soluble and insoluble nitro-cellulose as distinct substances ensured that the material contents would be different. As for process and product: ‘It [cordite] is made by a process which, though in some ways similar, is not identical with the process of Mr. Nobel. Cordite itself as an explosive is not in its qualities

106

ibid 127. ibid 126. 108 ibid. 109 ibid 127–28. Romer J gave negative answer to the question of anticipation by the blasting gelatine patent because ballistite was a new material comprised of different proportions of nitro-glycerine and soluble nitro-cellulose from that of blasting gelatine. 110 ibid 127. 111 ibid 127–28. 107

Nobel’s Explosives Company, Limited, v Anderson (1894) 133 identical with ballistite, though it has considerable resemblance to it’.112 He continued: ‘whether or not, regarded as a chemical constitution, cordite is essentially different from ballistite I cannot be sure, seeing how the eminent experts before me differ on the point’.113 But this did not deter him from deciding against the plaintiff because the patent’s scope had already been affected by his restrictive interpretation. B. Canons of Construction Much discussion on the patent dispute can be found in contemporary newspapers and periodicals.114 The outcome of the litigation also attracted polarised reactions. Some praised the decision because it liberated ‘the trade from very heavy burdens’.115 Some others, however, considered that the case had only confirmed their belief that the system was ‘as bad as it could possibly be’.116 Such variety of opinions seems to have facilitated the appeal. In fact, the possibility of an appeal was already pointed out in a provincial paper, the Ipswich Journal, just two days after the conclusion of the case. There is little doubt that the Cordite case will go to the Appeal Court; it is not often that such big issues are at stake in an action, and then there is always the chance of the Government having to pay the piper. Mr. Nobel, too, is a very rich man, and he can well afford to pay the costs, while the Glasgow Company are not likely to lose a chance of getting possession of the cordite patent.117

The day after the judgment, Thomas Johnston, General Manager of Nobel’s Explosives Company Ltd, wrote to Nobel that, while naturally disappointed over the decision, he was still optimistic about an appeal.118 Moulton QC, although less sanguine than Johnston, did think that chances of success to overturn the judgment of the lower court justified an appeal.119 His wariness

112

ibid 128.

113 ibid.

114 ‘The Nobel’s Explosive Company v Anderson’ The Times (1 February 1894) 5; ‘Mr. Justice Romer's Court’ The Times (2 March 1894) 8; ‘The Cordite Case: The Nobel Explosives Company v Anderson’ The Manchester Guardian (31 January 1894) 7; ‘The C ordite Case: The Nobel Explosives Company v Anderson’ The Manchester Guardian (1 February 1894) 7; ‘The Cordite Case’ The Financial Times (31 January 1894) 5; ‘The Manufacture of Cordite’ Manchester Courier and Lancashire General Advertiser (30 January 1894) 2; ‘The Cordite Case’ Manchester Courier and Lancashire General Advertiser (2 February 1894) 3; ‘The Cordite Litigation’ Manchester Courier and Lancashire General Advertiser (8 February 1894) 8; ‘The Law Courts’ The Standard (15 February 1894) 2. 115 The Times (15 February 1894) 7. 116 ‘Cordite’ The Pall Mall Gazette (15 February 1894) 1. 117 The Ipswich Journal (17 February 1894) 5. 118 Johnston to Nobel, 16 February 1894, ‘Nobel’s Explosives, År 1894’; ANA, F IV: 5. 119 ‘Opinion by Moulton QC’ about the case, dated 21 February 1894. ANA, FIII: 6, Doss 152.

134 Seymour Mauskopf about a positive outcome was because of the emphasis the judge had placed on the differences in the types of nitro-cellulose used. Although with some delay, possibly because the War Office tried to reach an agreement with Nobel’s Explosives Company for the manufacture of cordite if the appeal was abandoned,120 the appeal was formally lodged in May 1894.121 Two months later, the hearing before a Court of Appeal began.122 Moulton QC presented a detailed history of modern explosives as a springboard for the principal arguments of the plaintiff.123 In particular, the main basis of his case continued to be an ontological argument that Nobel’s invention of ballistite was a ‘new and startling discovery’ of a double-base, ‘slow’ smokeless propellant.124 Quickly, he shifted to comparisons around the material similarity of ballistite and cordite in order to broaden the scope of Nobel’s patent specification.125 First, he compared the material and then he stated that the ‘soluble’ nitro-cellulose specified by Nobel’s ballistite patent had, in fact, a very high nitration level, comparable to that of insoluble g uncotton used in cordite.126 Second, he looked at the processes to claim that the process was identical with that described in Nobel’s ballistite patent. And he concluded that both the materials and the resulting products were indistinguishable.127 These comparative statements constituted an attempt to apply the patent doctrine of ‘pith and marrow’ to support an expansive construal of the ballistite patent and to find an infringement of the ballistite patent by cordite. In fact, Moulton had already mentioned this point to his client the plaintiff: In my opinion the evidence obtained proved that the defendants availed themselves of the pith and marrow of his specification and if so the decision ought to have been in favour of the plaintiffs on infringement. The judge however has taken the narrow construction, holding the Plaintiff strictly to the words of his claim, which in my opinion is contrary to the law as laid down by authoritative cases of all the courts including the House of Lords.128

120 Johnston to Nobel (n 118). What also contributed to the delay was the rise of another patent dispute against the government; Maxim Nordenfelt Guns v Anderson (1897) 14 RPC 371; and HS Maxim, My Life (London, Methuen and Co Ltd, 1915) 239–51. 121 The appeal was discussed at a Nobel Explosives Company Board meeting and was lodged on 8 May 1894; see Johnston to Nobel, 14 May 1894, ANA, Nobel’s Explosives, År 1894. 122 Three judges sat the court: the Master of the Rolls (William Brett); Lord Justice Kay; and Lord Justice Smith. 123 While the legal team for the plaintiff was the same, the defendant had John Rigsby as Attorney-General, substituting for Sir Charles Russel; see ‘The Cordite Case’, The Glasgow Herald (17 July 1894) 2. 124 Nobel’s Explosives Co., Ltd v Anderson (1894) 11 RPC 519, 520. 125 ibid 520. 126 ibid. 127 ibid. 128 ‘Opinion by Moulton QC’ ANA, FIII:6, Doss 152. By the phrase, ‘holding the Plaintiff strictly to the words of his claim’, Moulton meant, in particular, that in Justice Romer’s decision, ‘the claim is limited to the manufacture of the propulsive agent from soluble nitro-cellulose’.

Nobel’s Explosives Company, Limited, v Anderson (1894) 135 According to him, ‘[o]ver and over again the Courts, including the House of Lords, have held that there may be infringements not within the words of the claim, if the pith and marrow of the invention has been taken’.129 However, Lord Esher, the Master of Rolls, expressed concern about the doctrine: You must examine what people meant when they said that. That phrase is taken out and not used as they used it, but enlarged into whatever may be called the ‘pith and marrow.’ ‘Pith and marrow’ means nothing more than the meaning of the Specification on the fair interpretation.130

Moulton QC’s strategy was, however, trying to persuade the court that the characteristics of the invention were such that Nobel could not be ‘confined to his words’. By emphasising the ‘long step’ of Nobel’s invention, he was attempting to provide a precise definition of the concept of ‘pith and marrow’. If that was the case, he argued, ‘the infringer has taken a step almost exactly in the same direction, he has taken the substance of the invention’.131 Although the arguments on behalf the respondent were similar to those used in the lower court,132 there was an instance in which they became even clearer. When Kay LJ asked whether ‘the result was the same’, the defendant vigorously denied any possible identity. According to him, the patentee ‘insists on using the soluble nitro-cellulose, and the respondent, with much trouble, has found out how to use the insoluble’.133 More importantly, the defendant continued saying that Nobel ‘cannot have a right to anything more than what he has claimed [because] no one in 1888 knew that the insoluble could be used as an equivalent for the soluble nitro-cellulose’.134 The Court of Appeal unanimously upheld Mr Justice Romer’s judgment. And yet, the appeal decision offered distinctive remarks, some of which also became influential in the history of patent law. It did not only evidence different ways in which the three Lord Justices read the previous decision, but also, and more interestingly, it showed a particularly distinctive manner of looking at the controversial relation between legal and scientific authority.135 129 In support of this argument, Moulton cited a number of precedents: Clark v Adie (1877) 2 App Cas 315; Moore v Thomson (1890) 7 RPC 325; and Benno Jaffé und Darmstaedter Lanolin Fabrik v John Richardson and Co. (Leicester), Ltd (1894) 11 RPC 93. 130 Nobel’s Explosives Co, Ltd v Anderson (1894) 11 RPC 519, 520. 131 ibid 520. 132 ibid 521. 133 ibid 522. 134 The argument continued: ‘No benevolent construction can possibly give the Patentee protection for more than he has actually invented, nor is there room for any such suggestion where the alleged infringer has taken a method which has been repudiated in the Specification.’ Moulton, for the appellant, rejected this argument: ‘The Respondent’s method was merely an improvement of Nobel’s process, and therefore a tributary invention’; ibid. 135 Discussions around the appropriate role of scientists as experts can be read in ‘Scientific Assessors and Courts of Justice’ The Leeds Mercury (West Yorkshire, England, 6 August 1888) 3. For contemporary accounts, see C Hamlin, ‘Scientific Method and Expert Witnessing:

136 Seymour Mauskopf Once depicted as a ‘no nonsense judge’ with a business-like approach,136 Lord Esher MR began referring to the mass of technical evidence and the arguments discussed at length in the first instance and described them as ‘torture’.137 Perhaps because he had previously been highly critical of both ‘chemical experts’,138 and the expenses incurred in patent litigation,139 Lord Esher MR introduced his judgment making a sharp contrast between common sense in scientific and legal thinking, echoing the trial judge’s assessment. Interestingly, he distinguished scientific from legal complexity by emphasising that ‘as to the law, [this was] a very simple case’ in which he did not ‘feel the least difficulty in coming to a conclusion as to what the evidence proves’.140 While his point of departure was also the construction of the patent, he further developed the detailed explanation already given by the trial judge to disregard Moulton QC’s view that significant patents allowed for a broad interpretation. According to him, it did not matter whether the patent was a pioneer or a master patent, because ‘the canons of construction of the patent are precisely the same’.141 Further, ‘the canons of construction of a patent are the same canons of construction that are to be applied to every written instrument which has to be construed by the Court’.142 Such basic analogy to other legal instruments can be historically explained by reference to the specific ways in which judges that came to adjudicate British patent cases were appointed. According to some scholars, these judges were frequently drawn from the Chancery bar, and had been engaged all their working lives in the construction of wills and conveyancing documents;143 and their Chancery practice seems to have influenced their approach to the construction of patent documents.144 Although such analogy to other legal instruments was later criticised by some practitioners,145

Victorian Perspectives on a Modern Problem’ (1986) 16 Social Studies of Science 485; KD Watson ‘The Chemist as Expert: The Consulting Career of Sir William Ramsay’ (1995) 42 Ambix 143. 136 WL Hayhurst ‘Lord Esher, A No Nonsense Judge’ (1980) Gazette 285; see also WL Hayhurst ‘Lord Esher, and some Fundamentals of Patent Law’ (1981) 9 Bull. PTIC 493. 137 Nobel’s Explosives Co., Ltd. v Anderson (1894) 11 RPC 519, 522. 138 J Williams, The History of Explosives, vol II. The Case for Cordite (Essex, England, 2014) 26. 139 Ungar v Sugg (1892) 9 RPC 113, 116. 140 Nobel’s Explosives Co., Ltd. v Anderson (1894) 11 RPC 519, 522. 141 ibid 523. 142 ibid. 143 P Graham, ‘The National Courts and the possibility of a Central Court of Appeal’ in JA Kemp (ed) Patent Claim Drafting and Interpretation (London, Oyez Longman, 1983) 200–13; 203; see also WR Cornish ‘UK—The Practice in the UK’ in J Pagenberg and WR Cornish (eds) Interpretation of Patents in Europe (Cologne, Heymanns Verlag Gmbh, 2006) 219–49; 220. 144 For a good illustration of this, see R Morris, Patent Conveyancing (London, Stevens & Sons, 1887). 145 J Gray ‘The Addressee of a Patent Specification’ CIPA Transactions, XXXVI, 1917–18, 243.

Nobel’s Explosives Company, Limited, v Anderson (1894) 137 the interesting point to note here is that thematising the judgment in such a way gave Lord Esher MR an opportunity to establish the two ‘canons of construction’ in patent law, something he had already explored a month earlier.146 Both canons embraced the textual dimension of modern patent law and prescribed a legal fiction to interpret claims. The first canon was that the Court ought to construe the patents ‘as if it had to construe them the day after they were published’.147 Lord Esher MR went on to invoke this principle against Moulton QC’s attempts at flexible patent construction, particularly in view of the actions of the defendant and he asserted that ‘we are bound to construe the patent as if we had to construe it before the defendant was born, if the patent was before that time’.148 The second canon specified that the ‘state of circumstances existing as to the subjectmatter of such a document’ including the ‘state of knowledge’ at the time of patent publication needed to be determined.149 These two canons or rules of construction led him to the same conclusion as the trial judge regarding the patent controversy over nitro-cellulose. There was soluble nitro-cellulose and there was insoluble nitro-cellulose, and the word ‘soluble’ referred to whether the substance would be soluble in ether-alcohol. Moreover, Lord Esher MR noted that this state of knowledge about the two types of nitro-cellulose pertained not just to ‘chemists in the laboratory’ but also to commercial utilisers of nitro-cellulose.150 Insoluble nitro-cellulose was known to be much more dangerously explosive than the soluble form. Therefore Lord Esher MR concluded, in agreement with Romer J, that Nobel had ‘intentionally and specifically omitted to claim the insoluble, because he dared not, and he left it out deliberately, and it is therefore out’.151 This conclusion led Esher MR to a decision of noninfringement on the part of the defendant because ‘the defendant has taken a material which Mr. Nobel deliberately left out and omitted’.152 Significantly, Lord Esher MR ended with an extraordinary praise of trial judge’s decision.153 As a whole, his appeal judgment can be read as a provocative attack on expertise. If there is an overall thread that runs through his decision, it is the remarkable anxiety over the interface between law and science. Such anxiety was symptomatic and manifested in different passages of his decision, not only in the introductory remarks mentioned above but also in his views of Moulton QC.154

146

Edison Bell Phonograph Corpn. v Smith (1894) 11 RPC 389, 395. Nobel’s Explosives Co, Ltd. v Anderson (1894) 11 RPC 519, 523. 148 ibid 523. 149 ‘The Cordite Litigation’, Glasgow Herald (20 July 1894) 4. 150 Nobel’s Explosives C., Ltd v Anderson (1894) 11 RPC 519, 523. 151 ibid 524. 152 ibid 526. 153 ibid 526–27. 154 Nobel’s Explosives Co, Ltd. v Anderson (1894) 11 RPC 519, 526. 147

138 Seymour Mauskopf These passages can be easily overlooked but they provide a glimpse into the difficulties the patent bar had in expounding cases to judges who were ‘for the most part without technical background’.155 In fact, it can be said that Moulton’s exceptional scientific gift could have proved to be a simultaneous impairment.156 For some judges did not seem impressed by his scientific abilities—perhaps even the opposite.157 The two other judges concurred, and the appeal was accordingly dismissed. However, their views were markedly different. While Lord Justice Smith’s decision followed the views of Lord Esher MR,158 Lord Justice Kay offered a more nuanced judgment, perhaps demonstrating that he was specially versed in the complexities of patent cases.159 Although he seemed to have made up his mind for the defendant early in the proceedings,160 he nevertheless sympathised with the arguments submitted by Nobel.161 His judgment account characterised the products of the appellant and the respondent as the same.162 What made this decision interesting is the way in which it differentiated between the ‘thing’ as the material ‘object’ and its ‘result’ as the functional product.163 Despite his delineation of b allistite and cordite as ‘the same result’, Kay LJ found the propellant employing guncotton ‘not merely an improvement on his [Nobel’s] patent but the invention of really a different thing’.164 Although they agreed with the decision of the trial judge and the appeal was dismissed, Kay LJ was much less enthusiastic than Lord Esher MR about the first instance decision.165 The whole litigation also involved a political and economic dimension fully discussed in the newspapers.166 The second defeat of the plaintiffs in less 155 Cornish (n 143) 219–49; 220; see also ‘A Patent Judge’ Northern Whig (13 March 1897) 8; ‘A Special Court for Patent Cases’ Leeds Mercury (24 February 1894) 11; ‘Wig and Gown’ The Globe (7 June 1898) 6. 156 H Fletcher Moulton, The Life of Lord Moulton (London, Nisbet & Co, 1922) 40; see also Cripps (n 68) 32. 157 G Alexander, After Court Hours (London, Butterworth & Co, 1950) 47. 158 Regarding Moulton’s claim that ‘that they [ballistite and cordite] were so closely analogous, that they should be held in substance and effect the same thing’, Smith LJ commented that he was ‘wholly unable to follow the argument’; Nobel’s Explosives Co, Ltd. v Anderson (1894) 11 RPC 519, 534. 159 ‘A Case for Experts’ The Graphic (London, England, 28 December 1889) 11; see also United Telephone Co. v. Tasker (1889) 6 RPC 38; Longbottom v Shaw (1889) 6 RPC 510. 160 ‘The Cordite Explosive Litigation’ The Pall Mall Gazette (London, England, 17 July 1894) 7. 161 Kay LJ went on to say that ‘what the respondents had done was the greatest possible compliment to Mr Nobel’. He was reported to have subsequently observed that ‘Sir Frederick Abel and Professor Dewar have admitted that they had read the specification, and then set themselves to see whether they could not produce the same result in a different way’; see ‘The Cordite Litigation’ The Glasgow Herald (Glasgow, Scotland, 19 July 1894) 6. 162 Nobel’s Explosives Co, Ltd v Anderson (1894) 11 RPC 519, 530. 163 ibid 531. 164 ibid. 165 ‘The Cordite Litigation’ The Glasgow Herald (20 July 1894) 4. 166 ‘Cordite’ The Pall Mall Gazette (12 May 1894) 2.

Nobel’s Explosives Company, Limited, v Anderson (1894) 139 than six months meant that the government was reassured that ‘cordite’ was a valuable property.167 And that was of national importance because the Government was under pressure for the recurrent disastrous explosions at Waltham factory.168 C. The ‘Cordite Case’ at the House of Lords In August 1894, Johnston wrote to Nobel that he held out hopes for an appeal to the House of Lords because ‘considerations of equity weigh with the Lords, whereas the ordinary courts are practically entirely governed by forms of law and legal precedents’.169 The appeal to the House of Lords was heard in February 1895.170 While the appellant’s arguments regarding the material constituents and products followed much what they had been in the lower courts, the emphasis on specific issues somehow changed.171 Given that the view of the courts below had focused on the nature of nitrocellulose, this point became the gist of the case on its ultimate appeal. Once again, the attempt was to establish that there was no sharp boundary between ‘soluble’ and ‘insoluble’ nitro-cellulose.172 Indeed, Moulton QC asserted that it was a highly nitrated soluble nitro-cellulose that Nobel had indicated by his calculation of combustion of the components of ballistite in the specification of his patent. This argument was given prominence in the House of Lords because of prodding by Nobel.173 The appellant still argued

167 ‘Cordite’ The Pall Mall Gazette (26 July 1894) 5; ‘The National Explosives C ompany, limited, Hayle’ Royal Cornwall Gazette (21 June 1894) 5; ‘Nobel Dynamite Trust’ The Morning Post (May 1894) 7. Similarly, some newspapers considered that it was ‘a matter of legitimate satisfaction that he [Nobel] had failed’; see The Standard (20 July 1894) 5. 168 ‘The May Explosion at Waltham’ Army & Navy Gazette (30 June 1894) 4; ‘Another Terrible Explosion at Waltham’ Gloucester Citizen (8 May 1894) 3. 169 Johnston to Nobel, 23 August 1894, ‘Nobels Explosives, År 1894’; ANA, F IV: 5; see also ‘Nobel Dynamite Trust’ The Globe (May 1894) 2 [notice of appeal given]. 170 Five Law Lords sat on the case: Farrer Herschell LC, Lord Watson, Lord Ashbourne, Lord Morris and Lord Shand. Legal representation of the parties was practically the same as in the lower courts but the defendants had Sir Robert Reid, AG, replacing John Rigsby. Some wondered whether Reid could have ever imagined conducting a case like this when he came to accept the office of Attorney-General; see ‘Cordite Case in the Lords’ The Pall Mall Gazette (London, England, 28 February 1895) 7. 171 ‘The Case of the Appellants’; HL/PO/JU/4/3/443; PA. 172 Moulton QC argued that ‘neither of those were distinct things … neither of them being definite substances’; in ‘Cordite Trial (HL)’ 91; SUPP 5/802, NA; see also ‘The Smokeless Powder Rights’ The Sheffield Evening Telegraph (22 February 1895) 4. 173 Moulton QC asserted that, from his calculations, Nobel had indicated a ‘soluble’ nitrocellulose with a nitration of 12.9%, ‘which is rather higher than the nitration of the guncotton used at Waltham’. When asked by Lord Herschell LC whether ‘the well-known soluble kind was as high as that’ Moulton replied that ‘[t]he well-known soluble for explosives would be between 12 and 12.5’; in ‘Cordite Trial (HL)’ 40; SUPP 5/802, NA.

140 Seymour Mauskopf that soluble and insoluble nitro-cellulose were ‘chemically equivalent’174 or ‘so closely analogous that the passing from one to another does not take you out of the invention’.175 As commercial preparations of both collodion cotton (soluble) and guncotton (insoluble) were always mixtures of both kinds, the argument followed, those who fabricated cordite from guncotton should pay a royalty for the percent of soluble nitro-cellulose in their guncotton mixture.176 Less attention was given to process and products than to materials. But when this was addressed, the assertion was, as previously, that the processes of fabricating ballistite and cordite, and the resultant products, were essentially the same.177 Although these were all powerful contentions, Lord Watson queried the relevance of these claims for the similarity in chemical properties between ballistite and cordite if, in fact, the latter had been fabricated ‘by the use of an agent [insoluble nitro-cellulose] which you [Nobel] disclaim’.178 It was precisely the fact that the patentee took on himself risks in respect of the claims and that the case illustrated the perils of claim drafting that influenced the decision of the Lords.179 While Moulton QC occasionally used phrases like ‘pioneer patent’,180 the innovative significance of the ballistite patent did not figure prominently in his arguments before the House of Lords.181 Nor did the arguments feature the doctrine of ‘pith and marrow’ to the same degree in the appeal to the House of Lords.182 Rather, Moulton and Cripps QC, counsel for the appellants, focused on nitro-cellulose and highlighted the knowledge (and prior use by Nobel) of a highly nitrated form of soluble nitro-cellulose and the consequent chemical equivalence between the soluble and insoluble. Their point was that ‘if you have two celluloses [soluble and insoluble] of equally high nitration, so far as c ombination with

174 ‘Cordite Trial (HL)’ 110; SUPP 5/802, NA. ‘Chemical equivalence’ was defined by Lord Herschell LC in the proceedings; ibid 173. 175 ibid 67. At times, Moulton QC suggested essential identity between the two kinds of nitro-cellulose; ibid 31. Here, he was challenged by Lord Herschell LC; ibid 32. 176 ibid 61. Subsequently, Moulton QC set forth an analogous situation that suggested that the presence of soluble nitro-cellulose in the insoluble could have made a positive difference in the function of the insoluble; ibid 139. 177 When Mouton QC emphasised this point, Lord Herschell LC then stated that ‘[t]his seems to suggest that it is not admitted that all they had to do was take your patent and use insoluble.’ Moulton responded: ‘It is not admitted, but I think I shall rely on the evidence in this case as practically establishing it’; ibid 29. Under subsequent questioning, Moulton QC admitted that ‘there was no evidence one way or the other’ that Nobel had actually experimented with insoluble nitro-cellulose before he took out the ballistite patent. This led the Law Lords to query why the ballistite patent should cover the use of insoluble nitro-cellulose; ibid 118–19. 178 ibid 83. 179 For an overview of the drawing of patent claims in England, see J Imray ‘On Patent Claims’ CIPA Transactions, VI, 1887–88; 203, 204. 180 ‘Cordite Trial (HL)’ 31; SUPP 5/802, NA. 181 Presumably because the effort to categorise the invention as ‘pioneer’ was rejected by Lord Esher MR in the Court of Appeal. 182 There was just one reference to ‘pith and marrow’, ibid 43.

Nobel’s Explosives Company, Limited, v Anderson (1894) 141 nitro-glycerine is concerned, for explosive purposes, the one cellulose is the chemical equivalent of the other, and was known to be so … by Mr. Nobel, and by explosives manufacturers when Mr. Nobel’s patent was taken out in the year 1888.183 Consequently, Cripps QC emphasised that the nitro-cellulose in the ballistite patent should be construed as the highly nitrated soluble form, chemically equivalent to the insoluble nitro-cellulose of cordite.184 In response to this argument, the Law Lords expressed puzzlement over why Nobel had taken such pains to specify ‘soluble’ nitro-cellulose in his ballistite patent. For instance, Lord Shand queried: ‘Can you say why this word “soluble” is persistently used if the two things are exactly the same?’185 This way of interpreting the specification, confining the patentee to the words expressed on it, became the nub of the decision. In his judgment, Lord Herschell LC saw no reason to depart from the finding, in both the trial and appellate judgments, that soluble and insoluble nitro-cellulose were distinct substances both commercially and chemically. He concluded that ‘[t]he patent, therefore, must be read in the light of that distinction’, adding that: Where a Patentee claims thus the combination of two chemical substances named and specified, he cannot extend, or claim to extend, the protection of his patent to a combination of other substances than those which he has so specified, because such other combination maybe found to produce a substance having substantially the same qualities and capable of employment in the same way.186

Lord Herschell LC also considered—and dismissed—the arguments that counsel for the appellants had advanced as to why Nobel’s ‘soluble’ nitrocellulose should nevertheless extend to the defendants’ use of the insoluble in cordite. As for the appellant’s arguments that these were chemical equivalents, ‘that case [was] not established’:187 In 1888 chemists would not have understood that they might, as a matter of course, without danger and with equal advantage, use the insoluble in all the cases and for all the purposes for which the patentee has directed the soluble to be used.188 183

ibid 153. ibid 161. 185 Lord Herschell LC and Lord Shand expressed similar sentiments to Cripps QC, ibid 162–63. Lord Ashbourne asked bluntly: ‘Why did you put in the word “soluble” at all?’ ibid 171. At times, the Law Lords disputed Moulton’s and Cripp QC’s assertions about the chemical equivalence of soluble and insoluble nitro-cellulose, eg ibid 117. Earlier such queries are at ibid 48, 87. 186 Nobel’s Explosives Co, Ltd v Anderson (1895) 12 RPC 164, 167. 187 ibid 168. 188 ibid. In his decision, Lord Herschell LC did not address Cripps QC’ argument that Nobel was actually referring to a soluble nitro-cellulose of high nitration comparable to that of insoluble nitro-cellulose. However, he did address—and dismiss—the appellant’s argument for infringement because of intermixture of some soluble nitro-cellulose in the insoluble nitro-cellulose used in the respondent’s propellant. 184

142 Seymour Mauskopf Therefore, he pronounced that ‘the Judgment under appeal should be affirmed and the appeal be dismissed with costs’,189 a decision unanimously supported by the other law lords.190 Although the decision of the House of Lords was final, Moulton QC speculated a few months later on whether the patent principles applied to the case were perhaps too severe.191 Similarly, some newspapers did not appear totally convinced of the fairness of the outcome.192 According to them, the defence had been successful and the government had won because of ‘a slight and subtle technicality’.193 However, the interesting point raised in these newspaper accounts was that the conduct of affairs by the War Office committee when inviting manufacturers to submit a bid had not been sufficiently scrutinised.194 Perhaps because of the procedural complexities of the case, the most important issue had not been fully tested, basically whether Abel and Dewar had capitalised on the access to such privileged information to develop their cordite.195 In fact, the absence from both the trial and the cordite patent of the third member of that committee, August Dupré, cast doubts over the whole affair.196 A couple of years after the decision, it was still possible to read in a Scottish newspaper that ‘the smokeless powder of the British Army is believed by many to be but a copy of one of his [Nobel] patents’.197 V. THE IMPACT AND SIGNIFICANCE OF THE CASE

Although public opinion about the fairness of the decision varied significantly across different newspapers and parts of the United Kingdom, these differences faded away into the background of an interpretation of the case that emphasised its importance for the establishment of legal principles.198 189 ibid.

190 ibid 168–69; ‘Important Patent Case: The Ownership of Cordite’ Sheffield Evening Telegraph (28 February 1895) 3. 191 F Moulton ‘The Patents, Designs and Trade Marks Acts (1883 to 1888) Amendment Bill’ CIPA Transactions, vol XIII, 1894–95, 175, 196. 192 ‘Cordite and its Critics’ Leeds Times (7 September 1895) 4; ‘Smokeless and Worthless’ The Pall Mall Gazette (2 September 1895) 1. 193 ‘Occasional Notes’ The Pall Mall Gazette (1 March 1895) 2; ‘An Open Letter’ The Norwich Mercury (6 March 1895) 4. 194 The defendants provided an explanation of these relations in ‘The Case of the Respondent’, 37–40; HL/PO/JU/4/3/443; PA. 195 This was probably because the case concentrated on the issue of infringement and there was no discussion on the use of the invention for the services of the Crown (s 27 of the Patents Act 1883); see J Roberts and F Moulton, The Patents and Designs Act 1907 (London, Butterworth & Co, 1907) 66. 196 ‘Occasional Notes’ The Pall Mall Gazette (7 March 1895) 2. 197 The Dundee Advertiser (5 January 1897) 5. 198 While The Times had a favourable view of the decision, the Pall Mall Gazette remained critical throughout the proceedings. Accounts of the case also varied across the United Kingdom, with Scottish newspapers being more sympathetic to the plaintiff than their English counterparts. Arguably, the location of Nobel Explosives Ltd might have contributed to the interest of The Glasgow Herald in the case; see J Williams (n 138) 411.

Nobel’s Explosives Company, Limited, v Anderson (1894) 143 Of the many interesting issues raised in the litigation, the construction of the patent claim could be considered as the most significant feature that became central to the legal arguments presented in the case and its outcome. Blanco White perceived the landmark significance of these arguments and linked them to the enactment of the Patents Act 1883.199 It was only with the 1883 Act that the inclusion of claims was compulsory.200 In fact, this legislative enactment ‘mark[ed] the beginning of modern patent administration’201 and started the modernisation of the regulations regarding patent construction.202 Specifically, the 1883 Act mandated that the body of the patent—the specification in which the invention was described—needed to commence with a proper title and to end ‘with a distinct statement of the invention claimed’.203 Blanco’s main point concerned the role of the patentee in delineating the scope of the patent claim—and the significance of the case in establishing this role. In subsequent references, Blanco unpacked this by referring to critical passages from the judgments of Romer J and Esher LJ. If we pay close attention to such citations, it is possible to see how those passages explicitly rejected the idea that the scope of Nobel’s ballistite claim could be constructed with reference to the terms of the alleged infringement so as to cover those terms.204 Blanco’s remarks concerning claim phraseology became, in fact, part of a tradition in British patent law. Almost immediately after the decision of the House of Lords was handed down, references to the case began to appear in leading patent textbooks and treatises.205 One of the earliest introductions of the case into doctrine can be found in the third edition of Terrell, a major treatise on patent law published in 1895, which paid considerable attention not only to the House of Lords’ decision but also to the decisions of the courts below. In fact, it included references to Romer J’s passage where he stated that the case referred to ‘the invention claimed by the patent; not the invention which the patentee might have claimed if he had been well advised

199

Blanco White (n 2) 29. Crawford Munro, The Patents, Designs, and Trade Marks Act, 1883 (London, Stevens and Sons, 1884) 8. 201 K Boehm and A Silberston, The British Patent System, Volume 1: Administration (Cambridge, Cambridge University Press, 1967) 30. 202 J Hewish, Rooms Near Chancery. The Patent Office under the Commissioners 1852–1883 (London, British Library, 2000) 100; see also JA Kemp ‘Claim Drafting: An Historical Survey’ in JA Kemp (ed) Patent Claim Drafting and Interpretation (London: Oyez Longman, 1983) 15–27. 203 Section 5(5) of Patents Act 1883. 204 Blanco White (n 2) 50, 53, 77. 205 L Edmunds, The Law and Practice of Letters Patent for Inventors (London, Stevens & Sons, 1897) 23, 32, 197, 206–09, 336, 341, 349; R Frost, A Treatise on the Law and Practice Relating to Letters Patent for Inventions (London, Stevens & Sons, 1898) 46, 53, 56, 127, 251; 464, 468, 493, 579, 616, 628; R Wallace and JB Williamson, The Law and Practice R elating to Letters Patent for Inventions (London, William Clowes & Son 1900) 246, 254, 444; V Nicolas, The Law and Practice Relating to Letters Patent for Inventions (London, Butterworth & Co, 1904) 77–78; 156–57, 160. 200 JE

144 Seymour Mauskopf or bolder’.206 Similarly, the treatise cited Esher LJ’s assertion that the significance of the patent was irrelevant to its construction because, for all patents, ‘the canons of construction of the patent are precisely the same’.207 The subsequent edition of Terrell (1906) extended its appreciation of the case as it was decided in the lower courts and referred to a related issue—the state of the art at the time the patent was published.208 By the eleventh edition of Terrell, roughly contemporaneous with the third edition of Blanco’s book, some of these quotations had receded to footnote references. However, Terrell’s treatise continued to privilege the case by highlighting one particular quotation, the most memorable one from Romer J’s decision mentioned above. It was quoted in extenso as the introductory ‘general principle’ of the section on patent infringement.209 The impact of the case throughout the twentieth century can be observed not only in leading patent treatises but also in more generalist accounts of the law of intellectual property.210 What the case specifically meant and the value attached to it depended on the field of practice in which its significance was discussed. When the decision featured in conference papers at the professional body for patent practitioners, the Chartered Institute of Patent Agents, it was often cited in order to explain its bearing upon the drafting of claims.211 Although references to patent principles could be seen as the most fundamental outcome of the decision, the case occupied a prominent place in the education of patent agents in Britain. As it encouraged readers to focus on the practice of drafting patent specifications and on the duty of the inventor or the patent agent to disclose the scope of the invention, the Institute frequently included it in its intermediate exams. For the Institute, it was necessary to use the case recurrently to assess the knowledge and skills of those seeking to become patent agents.212 While patent agents were interested in the case for its pedagogical value regarding the practice of drafting claims, the patent bar looked at the case from a slightly different angle. The decision was often singled out for its practical s ignificance on questions of 206 T Terrell, The Law and Practice Relating to Letters Patent for Inventions (London, Sweet and Maxwell, 1895) 222. 207 ibid 95. 208 T Terrell and C Terrell, The Law and Practice Relating to Letters Patent for Inventions (London, Sweet and Maxwell, 1906) 130. 209 G Aldous, D Falconer and W Aldous, Terrell on the Law of Patents (London, Sweet & Maxwell, 1965) 384, 385–91. 210 R Haddan, The Inventors’ Adviser on Patents, Designs and Trade Marks (London, Harrison & Sons, 1922) 179; WR Cornish, Intellectual Property: Patents, Copyright, Trade Marks and Allied Rights (London, Sweet & Maxwell, 1981) 84, 131; S Ricketson, The Law of Intellectual Property (Sydney, The Law Book Company, 1984) 975. 211 HA Gill ‘The Doctrine of Equivalents’ CIPA Transactions, XXXIII, 1914–15, 317, 328–29; J Roberts ‘Discussion on Mr Potts’ Paper’ CIPA Transactions, XXXVI, 1917–18, 82, 84. 212 ‘Intermediate Examination Papers’, CIPA Transactions, LXVI, 1947–08, 310; LXVIII, 1949–50, 329; LXIX, 1950–51, 248.

Nobel’s Explosives Company, Limited, v Anderson (1894) 145 alleged patent infringement.213 In fact, Stanley Levy QC considered the case at length in a remarkable paper on patent infringement delivered at the Institute of Patent Agents.214 Similarly, the case also featured prominently in an overview of the patent system written by Peter Meinhardt and published just after the Second World War. Meinhardt highlighted it in the two areas of practice in which the impact of the decision had crystallised: (a) the construction of the patent claim and (b) the possibility of patent i nfringement.215 The passages dealing with patent claim construction included cautionary advice regarding the ways in which claims were drafted, because ‘one word may change the fate of the patent’.216 Taking into account the significance of the case for the different professions around patent practice, it is not a surprise then that the case has also appeared quite regularly in patent litigation in Britain.217 The decision played a critical role in establishing ‘claims’ as the principal device to delineate the legal boundaries of a patent. Moreover, it also stated that certain conditions applied to the construction of the scope of a patent claim: for example, it was the responsibility of the patentee (or their patent agent) to define the scope precisely.218 This was bounded by the state of knowledge at the time of the publication of the patent.219 The scope could not be construed retrospectively in the light of subsequent (possibly infringing) patents; the claims ought to be construed ‘as if the defendant had never been born’.220 These rules applied to all patents, regardless of their significance or status.221 As the case was an important decision in British patent history, it provided a benchmark when the process of Europeanisation of patent law took place in the 1970s. It became influential in a different way: when scholars tried to develop historical approaches to claim drafting and

213 GF Emery, Handy Guide to Patent Law and Practice (London, Sweet & Maxwell, 1904) 194; D Fulton, The Law and Practice Relating to Patents, Trade Marks and Designs (London, Jordan & Sons, 1905) 47; R Lochner, The New Patents Act (London, National Union of Manufacturers, 1950) 13. 214 S Levy ‘What Constitutes Infringement’ CIPA Transactions, LXXXI, 1962–63; C35. 215 P Meinhardt, Inventions, Patents and Monopolies (London, Stevens and Sons, 1946) 71. 216 ibid. 217 Lyle and Scott Ld. and Another v Wolsey Ld and Another (1954) 71 RPC 395, 405; Birmingham Sound Reproducers Ld v Collaro Ld and Collaro Ld v Birmingham Sound Reproducers Ltd (1955) 73 RPC 52, 69; Multiform Displays v Whitmarley Displays (1956) 74 RPC 143; Olin Mathieson Chemical Corporation and Others v Biorex Laboratories Limited and Another (1970) 87 RPC 157, 180. 218 JS Bushell ‘Discussion on What Constitutes Infringement’ CIPA Transactions, LXXXI, 1962–63; B79. 219 Nobel’s Explosives Co, Ltd v Anderson (1895) 12 RPC 164, 166. 220 The rationale behind this statement was that the inventor is only entitled to the benefit of what he actually claims and not what he might have claimed; RF Tarbox, ‘Prior Grant and the Duality of Invention’ CIPA Transactions, LXXVIII, 1959–60, C53, C63. 221 For an overview of these rules, R Jacob ‘Interpretations of Claims and Infringement’ in M Vitoria (ed) The Patents Act 1977—Conference Papers, Queen Mary College (London, Sweet & Maxwell, 1978) 64–76.

146 Seymour Mauskopf interpretation, it could be useful to compare different European traditions of patent law. For instance, the decisions have become a good starting point for those who seek to produce specific genealogies of patent systems such as the British and the German.222 In this sense, recent legal scholarship has continued looking at the case in order to explain patent doctrine dominant in the United Kingdom during the late nineteenth century and a substantial part of the twentieth century, until the passage of the Patents Act of 1977.223 While this chapter does not consider the specific details and difficulties experienced after British patent law was recast in the 1970s, a concluding note in relation to these recent decades might nevertheless show the persistent relevance of the case, indicating its landmark status both in history and law. After the enactment of the Patents Act 1977 the starting point for determining the scope of protection was section 125, which corresponded to Article 69 of the European Patent Convention (1973).224 Although this produced a different hermeneutical and political dimension to patent law,225 and diverse approaches to claim construction and determination of infringement, particularly after Lord Diplock held that a patent must be read in a ‘purposive’ manner,226 the case did not completely disappeared from law reports, patent treatises and intellectual property textbooks.227 For instance, it appeared prominently in a recent summary of the development of patent claim construction: In the United Kingdom, the practice has always been to interpret claims somewhat literally. The attitude has been that it is up to the patentee to define his own claim and it is his own misfortune if he fails to do so broadly enough. In the classic statement by Romer J, for there to be infringement, the alleged infringer must take the

222 P Leith, Harmonisation of Intellectual Property in Europe: A Case Study of Patent Procedure (London, Sweet & Maxwell, 1998) 105; A Stenvik ‘Protection for Equivalents under patent law—theories and practice’ (2001) 32 IIC 1. 223 DJ Brennan, ‘The Evolution of English Patent Claims as Property Definers’ (2005) 4 IPQ 361; 388; M Fisher, Fundamentals of Patent Law: Interpretation and Scope of P rotection (Oxford, Hart Publishing, 2007) 301; H Laddie ‘Kirin Amgen—The End of Equivalents in England? (2009) 40 IIC 3, 11. 224 L Bently and B Sherman, Intellectual Property Law (Oxford, Oxford University Press, 2015) 627. 225 See B Sherman, ‘Patent Claim Interpretation: The Impact of the Protocol on Interpretation’ (1991) 54 MLR 499. 226 ‘A patent specification should be given a purposive construction rather than a purely literal one derived from applying to it the kind of meticulous verbal analysis in which lawyers are too often tempted by their training to indulge’ Catnic Components Ltd. v Hill & Smith Ltd. (1982) 99 RPC 183, 243 (emphasis added). On this, see DS Chisum ‘Common Law and Civil Law Approaches to Patent Claim Interpretation: “Fence Posts” and “Sign Posts”’ in D Vaver and L Bently (eds) Intellectual Property in the New Millennium: Essays in Honour of William R. Cornish (Cambridge, Cambridge University Press, 2004) 96–108, 99. 227 A Roughton, P Johnson and T Cook, The Modern Law of Patents (London, LexisNexis, 2010) 215; C Colston and J Galloway, Modern Intellectual Property Law (London, Routledge, 2010) 64.

Nobel’s Explosives Company, Limited, v Anderson (1894) 147 invention claimed by the patent, ‘not that which the Patentee might have claimed if he had been well advised or bolder’.228

Similarly, a recent decision over a patent dispute shows how the case still shapes the British approach regarding questions of infringement.229 When the judge, Hon Mr Justice Colin Birss, decided that there was no infringement, the doctrine of patent construction established in the case was still cited as good and relevant law: A patent is to be construed as if the infringer had never been born. The claimants’ construction only arises at all because of the attempt to read this patent onto Durafiber. In my judgment the construction advanced by the claimants would not even occur to a skilled reader reading the document without knowledge of Durafiber and the argument in this case on infringement.230

228 PW Grubb, Patents for Chemicals, Pharmaceuticals and Biotechnology (Oxford, Oxford University Press, 1999) 380. 229 Convatec Ltd. and others v Smith & Nephew Healthcare Ltd. (2012) 129 RPC 182. 230 ibid 202.

148

6 Walter v Lane (1900) BARBARA LAURIAT*

I. INTRODUCTION [F]ew speeches which have produced an electrical effect on an audience can bear the colourless photography of a printed record.1

S

Archibald Philip Primrose, 5th Earl of Rosebery

OME SAY THAT that the European jurisprudence on originality in Infopaq and its successors2 sounded the death knell for an old case cited as ‘good law’ by the Court of Appeal just over ten years ago.3 Even before Infopaq, some suggested that the case should have little s ignificance in modern copyright law.4 The current edition of the well-known practitioner text Copinger on Copyright cautiously suggests its pulse should be taken.5 It appears that I come to bury Walter v Lane, not to praise it. Yet, just as Antony warned that a great man’s good deeds often lie interred while the evil ones live on, the legacy and value of this case are not in the principle for which it is usually cited, but they may be revealed by a close examination of the historical record. To understand its contemporary relevance, one

* Sources are abbreviated as follows: BUA = Bristol University Archives; NLS = National Library of Scotland; PA = Parliamentary Archives, London, England; TNL Archive = News UK Archives, Enfield, UK. The author is grateful to these archives for allowing access to their collections. Thanks are also due to Isabella Alexander, Robin Jacob, Richard Arnold and the editor for their helpful suggestions. 1 Lord Rosebery Pitt (London, Macmillan, 1892) 237. 2 C-5/08 Infopaq International v Danske Dagblades Forening [2009] ECR I-6569. See, eg, C-145/10 Eva-Maria Painer v Standard VerlagsGmbH [2012] ECDR 6; C-604/10 Football Dataco v Yahoo [2012] Bus LR 1753. 3 Sawkins v Hyperion [2005] EWCA Civ 565. See D Liu, ‘Of Originality: Originality in English Copyright Law: Past and Present’ (2014) 36 European Intellectual Property Rev 376 (arguing that Walter v Lane has been superseded by European law); E Derclaye, ‘Debunking Some of UK Copyright Law’s Longstanding Myths and Misunderstandings’ [2013] Intellectual Property Quarterly 1 (making the case that Walter v Lane is ‘definitely dead’). 4 N Gravells, ‘Authorship and Originality: The Persistent Influence of Walters v Lane’ (2007) IPQ 267, 268. 5 Post-Infopaq, ‘it is now open to argument as to whether Walter v Lane is good law’. Copinger & Skone-James on Copyright (London, Sweet & Maxwell, 2016) 204 [3-218].

150 Barbara Lauriat must look to nineteenth-century England before one looks to Luxembourg. Walter v Lane was very much of its time—the unsatisfactory result of conflicting and ambiguous statutory authority, common law, and public policy that was copyright law in 1899. Although the dispute resulted from deficiencies in the protection of both speeches and journalism, was complicated by common law protection for unpublished works, and turned on the definition of an author, paradoxically, it is now cited for a legal principle that was not part of the law at the time: originality.6 The myth of Walter v Lane as an originality case persists, and ‘good law’ or not, it has undoubtedly had an influence on the law. Upon closer examination, it highlights many of the deficiencies, confusions, and seeming contradictions of the copyright law at the close of the nineteenth century, and gave further support for the desperate need for copyright reform, in turn influencing the 1911 Copyright Act. It was a knotty legal and intellectual puzzle that challenged some of the great jurists of the day. At the same time, it could be viewed as a straightforward question of public policy, argued in the very newspapers that had such a stake in the outcome. At its core, Walter v Lane was the result of a clash between two areas of copyright law—those relating to newspapers and to oral presentations—with an interplay between the law protecting published and unpublished works that was so convoluted that a clear understanding of their application was baffling even to the experts. In order to understand the case, one must examine the legal context of copyright at the end of the twentieth century and the seemingly arbitrary gaps in protection left by the patchwork of statutory and common law protection. Without an appreciation for the legal significance of publication, the conflicting jurisprudence relating to oral presentations, and the contemporary debates over expanding protection for newspapers, it is easy to fall into the trap of viewing Walter v Lane through the distorting lens of modern copyright doctrine. It is also worth examining the people whose misunderstandings, prejudices, personal crusades, and conflicts led the case to rise to the House of Lords. Students studying Walter v Lane often struggle to reconcile the judgments with their intuitive reaction that Lord Rosebery (1847–1929) was the clear ‘author’ of the speeches. Commentators at the time reacted similarly, and the case attracted interest from both the legal community and the public. In the Preface to the 1903 edition of his treatise on the law of copyright, TE Scrutton, who had represented Lane, noted that ‘no case of recent years has given rise to more animated differences of opinion, both among 6 For example, ‘the classic originality case of Walter v Lane’. C Craig, ‘The Evolution of Originality in Canadian Copyright Law: Authorship, Reward and the Public Interest’ (2002) U of Ottawa L & Tech J 425, 442. Many have also noted the oddness of the case’s legacy, for example, W Cornish, ‘Conserving Culture and Copyright: A Partial History’ (2009) 13 Edinburgh L Rev 8, 17 (noting Walter v Lane’s interesting ‘long after-life in defining what could be a literary work for copyright purposes, even though afterwards the 1911 Copyright Act specified, for the first time, that the literary work had to be “original”’).

Walter v Lane (1900) 151 lawyers and laymen not ordinarily interested in legal decisions.’7 To understand Walter v Lane it helps to understand Rosebery’s role in the dispute. The case was a principled personal conflict, with the Bodley Head publisher John Lane (1854–1925) and Liberal editor Charles Geake (1867–1919) on one side and Charles Frederic Moberly Bell (1847–1911), the managing director of The Times, on the other. This feud caused embarrassment and upset to Rosebery himself, a friend to both Moberly Bell and Geake, who found himself caught in the middle. Hard cases may make bad law, but the House of Lord’s attempt to cut through the legal complexity, reaching a conclusion that incorporated both challenging issues of statutory interpretation and public policy, may still contain useful principles for contemporary copyright law. II. LORD ROSEBERY AND HIS SPEECHES

Discussions of Walter v Lane have largely ignored the role of the author of the speeches: Archibald Philip Primrose, the Fifth Earl of Rosebery. Rosebery was a Liberal Imperialist in politics, an enthusiast of the turf, and a wealthy man who married an even wealthier woman Hannah Rothschild.8 He served briefly as a Liberal Prime Minister (1894/95) and Secretary of State for Foreign Affairs under Gladstone. He contributed to the Times Literary Supplement in its infancy and published well-received biographies of Pitt and Lord Randolph Churchill.9 In his time, he was greatly respected as a politician and leading figure in society. Moberly Bell had once himself hoped Rosebery might prove an effective political leader of the Liberal Imperial Party.10 Despite his prominence during his life, he is not now remembered as a distinguished statesman or literary figure. He was not a man of great diligence, health or energy, and his liberalism eventually moved in directions unsupported by the party.11 He was, however, consistently in demand as a witty speaker at events ranging from political funerals to the unveiling of statues to the openings of golf clubs and public libraries,12 thus leading to his impact on the history of copyright.13

7

TE Scrutton, The Law of Copyright (1903) ‘Preface’, vi. L McKinstry, Rosebery, Statesman in Turmoil (London, John Murray, 2005); Rt R James Rosebery (London, Weidenfeld and Nicholson, 1963). 9 McKinstry (n 8) 206–10. 10 Moberly Bell’s daughter writes that her father had given up on Rosebery’s leadership abilities by 1902. EHC Moberly Bell The Life and Letters of CF Moberly Bell (London, The Richards Press Ltd, 1927) 223. 11 ibid 460. 12 James (n 8) 204–05; See AP Primrose Rosebery in C Geake (ed) Appreciations and Addresses (London and New York, John Lane, 1899). 13 Another connection to the history of copyright comes from Rosebery’s uncle Philip Henry Stanhope (then Lord Mahon), who was the primary supporter of the Bill leading to the 1842 Copyright Act—the legislation subject to interpretation in Walter v Lane. 8 See

152 Barbara Lauriat It is relevant to the understanding of Walter v Lane that a collection of Lord Rosebery’s speeches had already been published as a collection, drawing on reports of speeches previously printed in The Times. In 1896 publisher Neville Beeman produced the volume in which he ‘endeavoured, as far as lies in his power, to give those in which Lord Rosebery gives his views upon the principal political and social questions which have arisen during the last twenty-two years’.14 Beeman, importantly, had sought and received permission from The Times to use the material; the preface states that he was ‘indebted to Mr. Moberley [sic] Bell, the Manager of the Times, for his kind permission to republish these speeches from the columns of his paper’.15 The permission had been granted on the ‘express condition and assurance’ that the above statement be made.16 If John Lane had sought similar permission, Moberly Bell’s sense of principle would have been satisfied, and it is unlikely a legal dispute would have arisen. It is clear that Rosebery himself had not given permission for the Beeman volume and did not approve of the publication. The sentiment in the prefatory quotation from his biography of Pitt17 is one that he repeated throughout his life: ‘No one reads old speeches,’ he is reported to have said.18 When John Lane wrote to him asking for his consent to publish a collection of his speeches, Rosebery alluded to the earlier collection. Writing to Lane on 6 December 1898, he declined to support the collection, deeming the quality of his speeches too low for posterity. Now as to my speeches, I have sometimes as they appeared consented to their publication in a separate but ephemeral form. But as far as I am concerned I will never be a party to any collected publication which would give them a separate and substantial character. They are essentially things of the moment, fleeting and transitory, and I shall never assert their claim to be anything else. But I have no copyright in them, or authority to bind or loose in regard to them. And thus some of my political speeches were without my countenance reproduced—I think last year. I fear indeed that no collection of my speeches political or literary will ever have my countenance. They are not perhaps below the level of much of the trash now published, but I will never voluntarily add to that accumulation. I am afraid this is a disappointing answer, but I cannot bring myself to return any other.19

Lane was not put off by Rosebery’s polite denial. He moved forward with the edition and enlisted Rosebery’s friend and political supporter Charles Geake, the editor of Liberal Magazine, to edit the volume. The book was in proof by March 1899; Geake sent a copy to Rosebery, who was then

14

Speeches of Lord Rosebery, 1874–1896 (London, Neville Beeman, 1896).

15 ibid. 16

‘Copyright in Report and News’ The Times (24 August 1899) 6. Lord Rosebery Pitt (n 1). 18 Quoted in James (n 8) 490. 19 NLS; Rosebery Manuscripts, MS 10131, 187. 17

Walter v Lane (1900) 153 travelling to his residence in Naples, Italy. Rosebery was not well pleased. He wrote directly to Geake from Naples: I have just received your letter on arriving here. It made me perfectly sick. I thought that my letter had dismissed all suggestion of republishing any speeches of mine. My opinion is not at all changed. I have looked through your proof volume, and make the following remarks:--In the first place the speeches on Borneo and the two long addresses which I delivered last autumn have already been published in a separate form. The Gimcrack speech is almost unintelligible as it stands, but I think I corrected a report at the time. The next are in the main after-dinner speeches, almost entirely delivered on the spur of the moment (or of the previous five minutes) and are a description of drivel that I hoped had persisted in the newspapers that contained them. At any rate, I am quite clear that they ought to perish. If you continue your project I must reserve the liberty to myself of disavowing the publication, because I feel to the bottom of my heart that these things ought not to be republished. For example, the speeches on London and on Oratory were simply the reflections that arose as I listened to the respective lecturers, and I think they were probably more critical than the lecturers quite liked. But anyhow that sort of stuff ought not to be served up again. The same may be said of the second speech on Mr Gladstone. However I condemn the whole publication in toto with the exception of your little introductory notes, which I like very much.20

Rosebery’s strong disapproval distressed Geake. Lane was then in America, but before his departure, he had given instructions to publish the book as soon as possible.21 Under the circumstances, Geake thought it better to delay, but asked Rosebery for the return of the proofs. Rosebery took this as a sign that publication had definitely been decided upon and, on 20 May, sent word to Geake via his private secretary Waterfield,22 indicating that if he and Lane were going forward with the volume, then they at least should see the corrected versions kept by Waterfield at the Berkeley Square house.23 Geake and Lane mistakenly interpreted this as implicit consent to proceed with publication.24 Geake visited the house to view the corrected version, made some minor amendments accordingly, and Bodley Head proceeded to print Appreciations & Addresses. 20

BUA; Liberal Party Correspondence DM 668, Correspondence of Charles Geake, Folder 3. an unpublished draft letter to The Times, Geake explained his response to Rosebery’s letter from Naples: ‘His reply was so disconcerting that I did not feel justified in Mr Lane’s absence in America in going on with the publication of the book, although when he left England he had instructed me to get it out as quickly as possible’. BUA; Liberal Party Correspondence DM 668, Correspondence of Charles Geake, Folder 3. 22 Neville Waterfield was an Oxford graduate who served for many years as one of Rosebery’s private secretaries. McKinstry (n 8) at 303. 23 PA; HL/PO/JU/4/3/491, Appeals Cases and Writs of Error 47, Exhibit 16, 60. 24 Geake explained that it was his and Lane’s misunderstanding that led to publication. ‘But for Lord Rosebery’s express invitation to me to go to Berkeley Square and use his corrected speeches, the book would almost certainly have been abandoned.’ BUA, Liberal Party Correspondence DM 668, Correspondence of Charles Geake, Folder 3, unpublished letter to The Times. 21 In

154 Barbara Lauriat The book was met with the threat of legal action by The Times on the very day of publication: 24 June 1899. The newspaper’s solicitors, Soames, Edwards and Jones, wrote to Lane to warn him against publication on the basis it would infringe their client’s copyright in the text of the speeches.25 Lane replied to the solicitors on 26 June, explaining that the book had already been published. He stated his view that there had been no infringement of copyright, if indeed The Times had any copyright in the reports.26 He then heard nothing from newspaper’s solicitors for a week, during which they scurried to register assignments from the reporters of the copyright’s speeches in order to ensure legal standing for an injunction. As soon as it was clear that The Times was moving forward with the action, Geake wrote to Rosebery to make him aware of the case and seek his support. As I daresay you will have seen the Times take ‘Appreciations and Addresses’ to be an infringement of their copyright—and have actually decided to bring an action against Mr Lane. We had heard something of this ten days ago but hearing nothing for a week from the Times we thought that their second thoughts were not to pursue the matter. Of course Mr Lane will defend the action for we believe that the Times is wrong and that we are right. Mr Lane is going to brief Birrell27 who thinks (as he told me a week ago as a friend) that it was like the ‘impudence’ of the Times to assume a copyright to which certainly and clearly they were not entitled. This will now have to be decided in the courts, and the action for the injunction may be on in a few days. Perhaps you will tell me if the Times has in any way told you what they are doing? They already know your exact position about the book for we were compelled to tell them privately that (1) while you declined to authorise or encourage the book (2) you had allowed me to make the speeches a transcript of your own revised versions of them as kept at Berkeley Square It surprises me very much that the Times has moved after this time. It is certain that they have suffered no material injury and I suspect that their game is to ‘try it on’ to see if the Courts will for them extend the law of copyright.28

Geake went on to say that the edition was already selling very well—200 copies in seven days. Birrell was indeed confident that The Times had no case and hoped that Lane would ‘stick to his guns’.29 But Geake also hoped for Rosebery’s support. He considered his invitation to Berkeley Square 25 ‘No. 8 Affidavit of AF Walter, sworn 1st July 1899’ PA; HL/PO/JU/4/3/491, Appeals Cases and Writs of Error 47. 26 ibid 49. 27 Augustine Birrell (1850–1933). 28 BUA; Liberal Party Correspondence DM 668, Correspondence of Charles Geake, Folder 3. 29 ibid.

Walter v Lane (1900) 155 to make corrections to the proofs to be a helpful fact, but direct backing from Rosebery against The Times would be better. As both the original author of the speeches and as an influential political and social figure, his acknowledged support for the volume might discourage them from pursuing the case. Rosebery responded to Geake on 7 July 1899: Your note places me in a very difficult position. I always told you strongly from the first that opposed any taking up of these ill considered fragments, and, as you know, I had no idea of Mr Lane’s intentions until you sent me the book in proof. Secondly, I cannot agree that I authorized any “transcript of my revised version”. All I did was to send a message through the scribe of this letter that if Mr Lane was determined to publish, as you informed me he was, you had better correct the misprints from the book which our mutual friend Waterfield keeps. For, if I am to be published against my will, I would rather be published without the glaring misprints which disfigure, for example the Gimcrack speech. But that is almost the only speech in the book which I have corrected—in fact the only one with the exception of a word here and there—and I could show you in your volume four errors to which I am rather susceptible. I do not know what the law of the matter may be, though I have always understood that there is no copyright in speeches. If there were any vested in the speeches, your volume would not have appeared. But is the volume worth a law-suit? Would it not be better simply to express your indebtedness to the Times and your regret that you should not have acknowledged this sooner? I hate the law: I hate law suits: & I particularly hate being the corpus delicti.

On 13 July, Rosebery wrote to both Geake and Moberly Bell from his home, The Durdans, in Epsom. His letter to Geake was sympathetic but firm on his position that he had never authorised the publication of the speeches. My dear Geake The letter from Naples was meant to put an end to the publication, and, I felt confident, would do so. But then you wrote or sent a message to Waterfield or myself that Mr Lane had returned from America and was determined to proceed. So I then sent you word by Waterfield that if I were to be printed against my will, I had rather be printed correctly than incorrectly; and that you might look at his book, were you would find the Gimcrack speech, which you had included in your collection, corrected. This is all I know of the matter. But I am sincerely sorry for the vexation to yourself & wish I could find some way of obviating it. Yours sincerely R I hope you are all right again30

Rosebery appealed to Moberly Bell, hoping to find a way to end the dispute. 30

NLS; Rosebery Manuscripts, MS 10131, 204.

156 Barbara Lauriat My dear Mr Bell, I suppose you, as manager of the Times, are the source of the lawsuit that is about to rage over my body, or rather more strictly over my remains, and I write to ask if it be not possible to avert it. I have shunned law like a pestilence all my life, and it seems hard that in my declining years I should be dragged into a dispute with which I have nothing to do. I am now bombarded by both sides, and, so far as I can see, am expected to play a leading part! How I beg you to spare me this. Surely an acknowledgment from Mr Lane will meet your point, and that I understand he is willing to give. Anyhow I selfishly ask to be left alone and that your copyright be tested on some other vile corpus than that of Yours sincerely R If I am wrong in addressing you, pray forgive my troubling you.31

Moberly Bell’s response no longer exists, but Rosebery’s reply on 14 June 1899 shows that his efforts were in vain. He clearly believed an injustice had been done to The Times, as well as to Lord Rosebery himself, and he intended to persist with the action. Rosebery was annoyed but resigned. All right. Cursed are the peacemakers—as usual! While you and Lane quarrel over the copyright, and you compare the action of Lane to that of one who steals my pictures, I ponder to myself as to what property the hapless orator possesses. And would not your simile be more exact if you compared Lane to a man stealing from the ‘Times’ office choice engravings of my pictures? Anyhow all that I have ever asked for my speeches that they should be decently forgotten and now I suppose your action will only advertise Lane’s book!32

Geake also responded immediately, protesting his innocence in the misunderstanding that Rosebery had supported, or at least agreed to, publication. Rosebery replied to Geake: I am afraid there is this amount of insuperable discrepancy in our positions but, while I fully accept your statement that you never wrote to me that Mr Lane intended to persist in the publication, I certainly received such a statement from some other source to that effect. Had it not been for that, I certainly should not have sent you the message that you could consult Waterfield’s book: for I was under the impression and hope that my letter from the Mediterranean had put an end to the publication. This would not matter, were it not that in your last letter, you seem to intimate that my message set once more in motion the idea of publishing which had til then 31

NLS; Rosebery Manuscripts, MS 10131, 205. TNL Archive, Moberly Bell Papers, Letter from Lord Rosebery, 14 June 1889, TT/MGR/ CMB/2. 32

Walter v Lane (1900) 157 been abandoned. This, considering all that had passed, is so incredible that I feel sure I must misunderstand you. Perhaps Waterfield, from whom I am separated, as he is a town and I am a country mouse, may throw some light on the matter. At present I am completely baffled.33

Lord Rosebery did not want anyone to publish his speeches; he wanted them to be forgotten. He had no commercial incentive to attempt to protect his rights and appears to have been unaware of the legal protection available. Were it not for Geake’s mistaken belief that Rosebery’s suggestion to make corrections to the proofs from Waterfield’s book was tacit approval for publication, it would not have been published. It was Geake’s misunderstanding, combined with Lane’s failure to ask permission and Moberly Bell’s crusade to expand protection for newspapers, that led to the dispute in Walter v Lane. III. COPYRIGHT IN ORAL PRESENTATIONS

Rosebery had written to Geake that he ‘understood that there is no copyright in speeches’, but the truth of the matter was somewhat more complex. Oral presentations could be protected in various ways, with possible distinctions made between sermons, speeches, and lectures, and those delivered in public or private venues.34 Moreover, nineteenth century jurisprudence gave strong support for the principle that authors had common law rights in their unpublished works.35 Certainly if a lecture were reduced to writing then the manuscript would have common law protection for as long as it remained unpublished. But early cases on speeches and lectures also support a common law right even where an extemporaneous lecture had not been fixed in writing. This principle was confirmed by Scrutton in the 1890 edition of his treatise: Putting in writing the result of intellectual work is sufficient to vest the common law right in the author, but it does not appear essential. For instance, there is probably a common law right to prevent the publication of lectures of which no manuscript exists.36

33 BUA, Liberal Party Correspondence DM 668, Correspondence of Charles Geake, Folder 3 (Letter 13 July 1899, Rosebery to Geake). 34 See D Brennan and A Christie, ‘Spoken Words and Copyright Subsistence in Anglo American Law’, (2000) Intellectual Property Quarterly 309, 313–28; See A Birrell, Seven Lectures on the Law and History of Copyright (1899) 190. 35 An author ‘has the undisputed right to his manuscript; he may withhold, or he may communicate it, and communicating, he may limit the number of persons to whom it is imparted, and impose such restrictions as he pleases upon their use of it’. Jeffreys v Boosey (1854) 4 HLC, 962. 36 Scrutton (n 7) 61.

158 Barbara Lauriat The question was whether delivery of the speech constituted publication, placing it in the public domain unless the requisite formalities were observed to qualify for statutory protection. In a case from 1770 dealing with a dramatic performance, Macklin v Richardson, the defendant had commissioned a shorthand writer to see a play and take down the actors’ words; he then printed copies himself. The play had not been previously printed, and the author had made efforts to maintain control over his manuscript and copies (for example, retrieving the prompter’s copy after each show).37 Given these attempts to limit access to the works, the court determined that the play’s public performance did not constitute publication of the work. As an unpublished work, the author retained his common law copyright, which the defendant had infringed. The earliest case dealing with oral presentations, as distinct from dramatic performances, was Abernethy v Hutchinson.38 A surgeon who been giving a series of lectures on surgery at St Bartholomew’s Hospital sought to prevent the defendants from publishing those lectures.39 Abernethy’s lectures were delivered extemporaneously, though sometimes from notes, to students who paid for admission.40 Largely side-stepping the property question, Lord Eldon found that implied contract entered into by ‘persons who attend lectures or sermons, and take notes’ did not allow them ‘to carry into print those notes for their own profit, or for the profit of others’.41 Thus, the ban on publication extended to third parties who had not been students attending the lectures, though the legal basis for this quasi-privacy protection was not completely clear, as both trust and property are mentioned in the report of the case.42 From 1835, lectures were offered special protection though the Lectures Copyright Act.43 This impracticable piece of legislation gave to the author of any lecture the sole right and liberty of printing and publishing such lecture, provided that the author gave notice to two magistrates living within five miles of the place of the lecture, at least two days before the delivery of the lecture. It did not matter whether the lecture had been committed to writing or not. Lectures delivered ‘in any University or public school or college, or on any public foundation, or by any individual in virtue of or

37

Macklin v Richardson (1770) 1 Amb 694 (Ch). Abernethy v Hutchinson (1825) 1 Hall & Twells 28, 39. 39 (1825) 1 Hall & Twells 28. 40 ibid 29, 34. 41 ibid 35. 42 See R Deazley ‘Commentary on Publication of Lectures Act 1835’, in L Bently and M Kretschmer (eds) Primary Sources on Copyright (1450–1900) (2008) available at . 43 5 & 6 Will IV c 65. For background and legislative history of the Act see Isabella Alexander, Copyright Law and the Public Interest in the Nineteenth Century (Oxford, Hart, 2010) 90–92. 38

Walter v Lane (1900) 159 according to any gift, endowment or foundation’ were excluded from the provisions of the Act.44 Apparently, no actions were ever brought on the basis of the Act,45 and, in 1877, when TH Farrer, the Permanent Secretary of the Board of Trade appeared as a witness before the Royal Commission on Copyright, he said that he had never heard of anyone securing the right through the method of notifying magistrates.46 In James Fitzjames Stephen’s ‘Digest on the Law of Copyright’, prepared for the Royal Commission on Copyright, he described the protection available under the Act but also noted ‘The author of any lecture has [probably] at common law the same right as by statute, without giving such notice as is required but he cannot recover the penalties provided by the Act … for an infringement of his copyright’.47 In its Report, the Royal Commission admitted that the ‘term of copyright in a lecture not printed and published but publicly delivered’ was ‘wholly uncertain’.48 In its hearings, the 1878 Royal Commission had probed the protection of lectures in some depth, examining several witnesses as to their views on the existing and optimal protection of oral presentations. Commissioner and historian James Anthony Froude asked Farrer if he thought it was lawful for a shorthand writer to take down notes of a lecture. He responded: ‘It would depend on whether this Act was substituted for the common law or not’.49 Farrer was not inclined to protect lectures given in public places, but he thought that preachers should have copyright in their sermons.50 The Reverend Canon Farrar, however, did not agree, although he did believe that one ought to have a veto to prevent publication of a sermon that the speaker did not want published.51 Froude also asked Farrer whether he thought a lecture taken down by a shorthand writer and published in the paper and then subsequently published by the lecturer himself could give rise to a copyright held by the lecturer. Farrer thought that he could if he had given notice under the 1835 Act.52 The Commission recommended reforming and simplifying the law on lectures and allowing them the same protection afforded to books, allowing authors to prevent redelivery as well as publication and removing the notice requirement.53 They directly addressed the question of newspapers publishing reports of lectures; the Commission considered the practice desirable and recommended implied permission for newspaper

44

ibid s 5. Deazley (n 42) [8]. 46 Royal Commission on Copyright (‘RCC’) Minutes (1878) c-2036, 162. 47 Digest on the Law of Copyright, RCC Report at lxxiv. 48 RCC Report viii. 49 RCC Minutes 162. 50 ibid. 51 RCC Minutes 137. 52 RCC Minutes 162. 53 RCC Report xvi. 45

160 Barbara Lauriat reporting unless the lecturer published a notice.54 Copyright reform attempts in the following years failed, however, and the law remained in its uncertain and unsatisfactory state. The issue of protecting lectures arose again in 1884 in Nicols v Pitman. Nicols, a lecturer on ‘scientific subjects’, gave a ticketed lecture on the subject of ‘The Dog as the Friend of Man’ at the Working Men's College, Great Ormond Street.55 Unlike the speaker in Abernethy, Nicols prepared his manuscript in advance, memorised it, and then delivered his lecture almost entirely from memory.56 He had not, however, given prior notice to two magistrates in accordance with the Act.57 The defendant, a shorthand writer, took down the lecture verbatim in shorthand characters and then published it—still in shorthand characters.58 Kay J determined that because the location of the lecture had been a public college, it was excluded from the operation of the Act, and applied Abernethy. He interpreted Lord Eldon’s judgment to allow an audience in such a lecture to take notes ‘for their own personal purposes’, but they were not allowed to publish the lecture later for profit.59 The distinction between public and private lectures was critical; a private lecture would necessarily be protected through the mechanisms of the 1835 Act, while a public lecture was exempt from its provisions and subject to the law as applied in Abernethy. A few years later, the House of Lords addressed the issue of protection of lectures in Caird v Sime.60 Caird, a Professor of Moral Philosophy at the University of Glasgow, had delivered a series of lectures, which one of his students had taken down verbatim and arranged for Sime to print them as a crib. Caird opposed publication, and the case rose to the Lords. Lords Halsbury, Watson and Fitzgerald delivered judgments. Finding the 1835 Act unhelpful to the analysis because it excepted public universities, Lord Halsbury focused on the issue of whether the lecture had indeed been published and was no longer subject to the common law right. In his view the case turned on the legal question as to ‘whether on the agreed state of facts such a publication as is proved here must as a matter of law deprive the author of the literary composition in question of his proprietary right’.61 The main concern was whether Professor Caird’s delivery of his lectures in a university classroom ‘makes his delivery of that literary composition necessarily public to the whole world, so as to entitle any one who heard it 54 ibid. 55

Nicols v Pitman (1884) 26 Ch D 374. ibid 376. 57 ibid 377. 58 ibid 377. 59 ibid 381. 60 (1887) 12 App Cas 326. 61 ibid 337. 56

Walter v Lane (1900) 161 to republish it without the permission of its author’.62 In Lord Halsbury’s view it did not and Lord Watson agreed. The question was simply whether ‘oral delivery of the appellant’s lectures to the students attending his class is, in law, equivalent to communication to the public’ in order to destroy the common law right.63 Citing Macklin v Richardson and Abernethy v Hutchinson, he decided that, even though the University of Glasgow was a public institution, the students in the lectures were not members of the public as such.64 Lord Fitzgerald’s analysis also began with an acknowledgement of the legal principle that unpublished works were protected: It was not contested that by the common law of Scotland, as well as by the common law of England, every author has a right of property in his compositions so long as they remain ‘unpublished,’ and that a private lecturer may lawfully impose an express condition on persons allowed to hear his lecture, that they shall not publish what they hear, and that such a condition may also be lawfully implied from the circumstances. In such cases the common law protects the author's right of property and forbids infringement.65

Lord Fitzgerald, however, disagreed with his colleagues, on the question of whether delivery of the lectures in the class room of a public university constituted publication—he thought it did.66 Once published, they were given to the public. Although Lord Eldon had justified his decision in Abernethy with something more akin to a privacy right, the decision in Caird v Sime is derived from the same principle of common law copyright for unpublished literary works as Macklin—the Lords agreed that protection existed for an unpublished lecture, even if not fixed in writing.67 Thus, under the law at the time, Rosebery’s lectures would be protected until they were ‘published’, which they were by virtue of the manner and location of his delivery. Presciently, in lectures of his own delivered in 1898, Birrell observed that most lecturers were not particularly concerned about the newspapers publishing verbatim reports of their lectures, ‘Unless they happen to be politicians of the first rank, lecturing on some subject of which their ignorance is extensive, they will not be reported verbatim’.68 Rosebery was, of course, a politician of the first rank and did not lack newspaper coverage of his public pronouncements on any topic.

62 ibid. 63

ibid 344. ibid 348. 65 ibid 351–52. 66 ibid 353. 67 See also A Steel ‘A Non-Material Form of Copyright: The Strange History of Lecturer’s copyright’ (1999) 4 Australian J of Legal Hist 185, 210. 68 Birrell (n 34) 191. 64

162 Barbara Lauriat IV. MOBERLY BELL AND NEWSPAPER COPYRIGHT

Tensions between those who wanted to protect lectures and the newspapers that wanted to publish them was only one of the many copyright legal problems the newspaper business grappled with in the nineteenth century.69 The 1842 Copyright Act provided copyright protection for ‘books’, which arguably included newspapers as sheets of letterpress, and required registration before bringing an action70 In addition, section 18 of the 1842 Act gave rights to proprietors of periodicals and dealt with the circumstances under which the proprietor of a collective work would be protected, as opposed to the individual authors.71 But it did not mention newspapers specifically. Whether copyright protected ‘newspapers’, as distinct from the individual articles contained therein, was questioned by the Lord Chancellor in Platt v Walter.72 In the case of Cox v Land and Water Journal Company, however, Malins V-C found that newspapers did not fall under the terms of the 1842 Act, which meant that the defendant could not rely on the fact that the newspaper had not been registered in accordance with the Act to dismiss the claim. Extraordinarily the Vice-Chancellor granted the injunction on the basis of a common law property right, stating his view that the letters of a foreign correspondent, book reviews, stories, and other writings purchased by newspapers were protected under the Act ‘or by the general rules of property’, which entitled the newspaper proprietor to stop unauthorized publications.73 Unsurprisingly, faced with this rather contradictory collection of authority, the Report of the 1878 Royal Commission on Copyright deemed newspaper copyright a prime example of the ‘arbitrary … incomplete and obscure’ nature of the existing copyright law.74 Citing Cox v Land and Water Journal, the Commission’s Report observed that ‘[s]ome sort of copyright has been recognized in newspapers, but it is impossible to say what it is’.75 They pointed out the contradictions of the past case law, which had decided a newspaper was not a ‘book’ under the terms of the 1842 Act, yet was protected anyway, despite most courts agreeing that copyright was purely statutory.76 Little progress for the cause of newspaper protection was made in 1881 when John Walter, the managing proprietor of The Times, brought a suit

69 See J Bellido and K Bowrey, ‘From the Author to the Proprietor: Newspaper Copyright and The Times (1842–1956)’ (2014) 6 J of Media L 206. 70 Copyright Act 1842 (5&6 Vict 45) s 2. 71 ibid at s 18. 72 (1867) 17 LT 157, 159. 73 (1869–70) LR 9 Eq 324, 331. 74 RCC Report viii. 75 RCC Report viii. 76 ibid.

Walter v Lane (1900) 163 against the publisher of a pamphlet for reprinting a memoir of Disraeli that had previously appeared in The Times. The suit failed when the newspaper was unable to prove that it was the owner of the copyright beyond the fact of simply having paid the author.77 While the judge in Walter v Howe would not infer assignment from the mere fact of payment to the author, a subsequent case suggested that if copyright in an article were assigned and the newspaper was registered at Stationers’ Hall under section 19 of the 1842 Act, then the newspaper proprietor would have standing to bring an infringement suit under the 1842 Act.78 In the late 1880s The Times was in financial distress. Arthur Walter, the eldest son of John Walter and, as such, the hereditary manager, hired Charles Frederic Moberly Bell as Assistant Manager in 1890, hoping that his leadership would rejuvenate the flagging business.79 Moberly Bell had previously served as a foreign correspondent for The Times in Egypt and was glad to relocate to London.80 Once in his management role, some of his innovative ideas like The Times Literary Supplement proved successful; others like the Times Book Club were less so.81 He found himself frustrated, however, by the regular copying that went on in the newspaper industry, particularly from The Times.82 He made it his business to lobby for additional protection and challenge incidents of infringement, with some success. He waited for the right opportunity to seek legal redress, but was anxious for the legal certainty necessary to make business plans; the newspaper ‘wanted a decision either for or against us … we could not go on with the uncertainty that existed, and we baited a trap to catch a judgment’.83 The trap was sprung with Walter v Steinkopff, in which The Times attacked the common practice of copying and publishing extracts from articles in other newspapers. The St James’s Gazette had published segments from a long piece on America by Rudyard Kipling. This time, The Times’ solicitors made sure the assignment of Kipling’s copyright had been properly registered before bringing the action. North J rejected entirely the defendant’s argument that this kind of copying was common practice in the newspaper business, finding infringement and describing it as ‘a flagrant act of piracy’.84 He addressed the defendant’s contention that there could be no copyright in news, saying that there may be copyright in the ‘particular

77

Walter v Howe (1881) 17 Ch Div 708. The Trade Auxiliary Co v Middlesbrough and District Tradesmen’s Protection Association (1889) 40 Ch Div 25, 434. 79 J Feather, A History of the British Publishing Industry (New York, Routledge, 1991) 183–84. 80 F Harcourt Kitchin, Moberly Bell and his Times 12; Moberly Bell (n 11) 26. 81 Feather (n 79) 183. 82 Moberly Bell (n 10) 185. 83 ibid 186. 84 (1892) 3 Ch D 489, 501. 78

164 Barbara Lauriat forms of language or modes of expression by which information is conveyed’.85 In an acknowledgement of what was not yet known as fair dealing, North J stated that quotation or criticism of an earlier work in a new work that is otherwise original would be acceptable.86 In Steinkopff, however, it was not copying that involved ‘thought and labour and producing some original result, but a mechanical operation with scissors and paste, without the slightest pretension to an original result of any kind; it is a mere production of “copy” without trouble or cost’.87 While this was a victory for The Times, the existing protection still did not go far enough for Moberly Bell. In 1898 two copyright bills were introduced and referred to a Select Committee of the House of Lords. He was called as a witness and made an argument to the Committee for copyright protection for news on the basis of the labour and expense incurred.88 He asked for protection for newspaper copy for 24 hours, referring to an Australian statute that provided 48 hours of protection.89 His position was challenged on the basis that the law ought not to provide copyright protection in facts. Yet one of the great commercial problems The Times faced was the risk and expense of sending foreign correspondents to cover developing situations abroad. Once a story was published, competing newspapers could always use the facts but alter the expression.90 The expense incurred, and the value obtained, came from gathering the facts of a story from locations at a great distance, rather than the particular form of the literary expression. As Moberly Bell explained to the House of Lords Committee on 20 June 1898: Suppose the case that the President of a South American Republic has committed suicide. Anybody who sees him do so can telegraph the fact, and have copyright in it. We do not think we are the only persons to be allowed to telegraph it, but we say that if we are the only persons who do telegraph it we are entitled to protection.91

He was asking for far broader protection than copyright afforded to other literary works, albeit for a very short time; he wished for the law to prevent newspapers printing facts from a story if they had copied them from a rival publication and not their own correspondent. It was difficult for

85

ibid 495.

86 ibid. 87 ibid.

88 Report from the Select Committee of the House of Lords on the Copyright Bill [HL] together with the proceedings of the Committee, Minutes of Evidence and Appendix (393) Session 1898 (12 August 1898) 53. 89 HL Report 53, 55–56. His biography states that he asked for sixteen hours. Moberly Bell (n 11) 187. 90 Moberly Bell (n 10) 187–88. 91 Report from the Select Committee of the House of Lords on the Copyright Bill [HL] together with the proceedings of the Committee, Minutes of Evidence and Appendix, Session 1898 (12 August 1898) 393, 54.

Walter v Lane (1900) 165 the Lords questioning him to see how the protection he sought differed from protecting news itself. When asked by Lord Thring whether he could protect a simple expression of facts such as ‘Spanish War Ended’, he admitted that he did not believe it would be protected, and suggested it would probably not have value anyway as many people would be telegraphing such news.92 Referring back to the case of Walter v Steinkopff, Lord Monkswell suggested to him that, given his acknowledgement that there would not be protection in a ‘bare fact’ like ‘Spanish War ended’, but only in the literary expression.93 Moberly Bell disagreed: ‘I say we ought to have strictly absolute copyright in the news; that is my contention’.94 He was asking for too much. The Paris 1896 revision of the Berne convention had stated a clear principle that the ‘news of the day’ was not subject to copyright protection.95 Yet he did have grounds for annoyance. As Birrell stated in 1899: Nobody can read the newspapers without becoming aware of the fact that an enormous amount of steady, daily pilfering goes on … Sometimes, at the very end of a long and seemingly original paragraph, you may discover in a parenthesis to a rival print from which the whole has been conveyed.96

Thus, Moberly Bell was an annoyed man in the middle of a vigorous campaign for maximum newspaper copyright protection when he learned of Lane’s publication of the Times reports of Rosebery’s speeches in Appreciations and Addresses. He, like Lane, was sticking to his guns. V. WALTER v LANE

On 14 July 1899, there was a hearing before North J, the same judge who had decided Walter v Steinkopff in favour of The Times. Counsel were agreed that Lord Rosebery had not completed the necessary formalities to obtain his own copyright under the Lectures Copyright Act 1835, which he might have done had he wished to secure his rights (even if no one else ever had).97 In his judgment, North J immediately distinguished the cases of Abernethy v Hutchinson, Nicols v Pitman, and Caird v Sime, on the basis that Rosebery’s speeches had been delivered to public audiences to which newspaper reporters had been invited.98 Thus, according to North J, any

92

HL Report 58. ibid 59. 94 ibid. 95 S Ricketson, The Berne Convention for the Protection of Literary and Artistic Works 1886–1986 (1987) 502. 96 Birrell (n 34) 163. 97 [1899] 2 Ch 749, 751. 98 [1899] 2 Ch 749, 753–54. 93

166 Barbara Lauriat pre-publication common law rights had been lost, and the requirements of statutory protection had not been satisfied.99 Rosebery probably did not have any rights and was not claiming any even if he did. Since the speaker himself had no copyright, the question was whether the reports themselves could be literary works. Scrutton, appearing for the defendants, referred back to North J’s own judgment in Walter v Steinkopff where he had suggested that the literary form of the words had to be original to obtain copyright.100 But the evidence before North J showed significant variation between different newspaper reports of exactly the same speeches—sometimes entire paragraphs.101 The affidavit of Ernest Brain, who had himself reported a few of Rosebery’s speeches, claimed that the work of reporters involved considerable skill, labour and judgment since they were required to take shorthand notes of proceedings, which were then ‘carefully corrected and revised and written out and punctuated fit for publication’.102 North J noted that similar variations were found between different prose translations from other languages.103 While he did not find the American cases on reports of legal judgments to be particularly instructive, he did find cases on compilation copyright in railway timetables and directories helpful to his analysis.104 On 10 August, North J decided that the reports of the speeches were protected by copyright and granted the injunction preventing the publication of Appreciations and Addresses.105 In the weeks that followed, The Times published many letters addressing the case, reflecting both sides of the issue. Moberly Bell, Geake, Lane and publisher John Murray (1851–1928) were among those who contributed to the debate, with Moberly Bell publishing his letters semi-anonymously under the initials ‘MB’ On 11 August The Times published an editorial (very probably written by him) praising North J’s judgment and going on to discuss the current Copyright Bill before Parliament and the need for copyright protection for news.106 Letters to the Editor reacting to the case followed soon after.107 On 17 August Murray wrote to the newspaper in support of the result and pointed out the difference between a reporter of a speech and an amanuensis.108 On 22 August Moberly Bell published a 99 ibid.

100

[1899] 2 Ch 749, 753. [1899] 2 Ch 749, 754–55. See also ‘No 13, Affidavit of Henry William Edmonds sworn 7 July 1899’ PA; HL/PO/JU/4/3/491, Appeals Cases and Writs of Error, Walter v Lane, 56–57. 102 ‘No 11, Affidavit of Ernest Brain sworn 3 July 1899’ PA Archives HL/PO/JU/4/3/491, Appeals Cases and Writs of Error, Walter v Lane, 53. 103 [1899] 2 Ch 749, 758. 104 [1899] 2 Ch 749,756–58, 759–60. 105 [1899] Ch 749, 751. 106 ‘Is There Copyright in Newspaper Reports of Speeches’ The Times (11 August 1899) 7. 107 ‘Copyright in Reports of Speeches’ The Times (15 August 1899) 5; ‘Copyright in Reports of Speeches’ The Times (15 August 1899) 6. 108 J Murray, ‘Copyright in Reports of Speeches’ The Times (17 August 1899) 6. 101

Walter v Lane (1900) 167 letter disputing that the judgment was contrary to the public interest. In his view such an argument simply ‘means that it is to the interest of the public that they should be able to get news cheaply and that theft is the cheapest method of producing newspapers’.109 On 24 August Geake wrote to the editor with a tongue-in-cheek challenge to ‘MB’s description of events’.110 Two days later, Moberly Bell published another letter arguing for more extensive newspaper protection and pointing out that copyright had previously been found to protect ‘lists requiring no intellectual effort’ and that Rosebery had objected to publication.111 John Lane wrote expressing a strong objection to M urray’s public support for The Times in the case, given his role as president of the council of the Publisher’s Association.112 Despite Murray’s position, Lane appealed, with support from the Publishers’ Association to fight the case.113 The hearing was held on 30 October 1899. Scrutton and Birrell adjusted the emphasis of their arguments slightly to focus on the lack of originality of the reports, and, in particular, the quality of the skill and labour expended. They argued that even if the work of the reporters required skill, it was not ‘literary skill’ that was employed in creating the verbatim reports of speeches—it was essentially mechanical— and so the reporter was not an ‘author’ under the terms of the 1842 Act, which conferred copyright protection upon the ‘author’ of a ‘book’.114 Lord Rosebery was the only possible ‘author’ and he had given the speeches to the public, in the sense discussed by the court in Nicols v Pitman.115 In their view, reporting the speech could not remove that speech from the public domain, as it might be described today. On 9 November 1899 the Court of Appeal (Lindley MR, Sir Francis Jeune, and Romer LJ) allowed the appeal, with Lindley MR delivering the judgment. While an author of an unpublished manuscript might give or sell it to another, and implicitly transfer any rights therein, this was not the case with a speech delivered in the manner of Rosebery’s speeches. The Times did not acquire a title through Rosebery.116 In Lindley’s view, the ‘report and the speech reported are, no doubt, different things, but the printer or publisher of the report is not the “author” of the speech reported, which is the only thing which gives any value or interest to the report’.117 John Lane savoured his victory and circulated copies of the Court of Appeal’s judgment to his friends with an attached note of his own, decrying

109

MB, ‘Copyright in Reports of Speeches’ The Times (22 August 1899) 6. Charles Geake, ‘Copyright in Report and News’ The Times (24 August 1899) 6. 111 MB ‘Copyright in Reports and News’ The Times (26 August 1899) 10. 112 J Murray ‘Copyright in Reports and News’ The Times (26 August 1899) 10. 113 May 230. 114 [1899] 2 Ch 749, 763–55; 5 & 6 Vict c 45. 115 [1899] 2 Ch 749, 764. 116 ibid 771. 117 ibid 771. 110

168 Barbara Lauriat Moberly Bell and The Times for trying to protect an ephemeral literary product like newspapers years after publication.118 Yet he did not have long to gloat. The Times appealed to the House of Lords, where the Earl of Halsbury LC and Lords Davey, James and Brampton delivered judgments reversing the Court of Appeal and granting a perpetual injunction, with a dissent from Lord Robertson.119 Both Halsbury and Davey placed significant weight on the fact that the 1842 Act had no standard of quality for literary works to receive protection and decried the appropriation of others’ skill, labour and money. Halsbury emphasised that the Act did not require originality and criticised the Court of Appeal’s definition of ‘author’ for being too narrow; he suggested that it was a contradiction to recognise authorship in publications such as directories and maps but not in the reports of speeches.120 There was nothing in the statute that suggested only an ‘original composition’ would gain copyright protection.121 He identified the source of confusion as the conceptual difference between (1) the common law proprietary right in unpublished literary work and (2) the statutory ‘privilege of making copies’.122 The first—the common law right—was not at issue in the case because Lord Rosebery was making no claim or complaint. The second—the statutory privilege—did not include any requirement of literary merit or originality in order for copyright to subsist; the required formalities of the 1842 Act had been met. Each reporter of a speech could have his own copyright in his report, just as any artist or photographer could obtain a copyright in the same view.123 In Halsbury’s view, it was simply ‘a grievous injustice’ to misappropriate ‘the skill, labour, and capital of others’.124 Lord Davey acknowledged the possibility of a common law proprietary right in a speech or lecture, citing Caird v Syme; he also distinguished the question of statutory copyright on the basis that Rosebery had communicated his speeches to the public, and therefore had given up his rights.125 Davey also affirmed, contrary to the decision in Cox v Land and Water Journal, that a newspaper could, in fact, be a book under the meaning of Copyright Act.126 He addressed the respondent’s argument that Rosebery,

118

May 232. Walter v Lane [1900] AC 539. 120 ibid 545–56, 550. 121 ibid 546–47. 122 ibid 547. 123 ibid 549. 124 ibid 545. Halbury’s speech has been cited as the essential expression of ‘sweat of the brow’ originality. A Drassinower, ‘Canadian Originality: Remarks on a Judgment in Search of an Author’ in Y Gendreau (ed) An Emerging Intellectual Property Paradigm: Perspectives from Canada (Cheltenham, Edward Elgar, 2008) 139, 151. 125 ibid 550. 126 ibid 551. 119

Walter v Lane (1900) 169 the author, had given his speeches to the public and so no one could subsequently claim to be their ‘author’, appropriating rights to the speeches. This was not the position of The Times, he explained, which claimed only its thin copyright in the reports—not in the speeches themselves.127 Copyright under the Copyright Act had ‘nothing to do with the originality or literary merits of the author or composer’.128 Like Halsbury, he thought it ‘a sound principle that a man shall not avail himself of another’s skill, labour, and expense by copyright in the written product thereof’.129 Lord James considered the question of whether under the terms of the 1842 Act, a person producing unoriginal literary matter could nevertheless be an author.130 While it was clear to him that an employee taking dictation would be not be an author of the resulting document, the compiler of a street directory could be an author.131 So was the reporter of a public speech an author or not? He suggested that it depended on the nature of the reporter’s skill and art; it would have to be more than simply taking dictation. A report might be ‘obtained under circumstances of peculiar difficulty’ involving maintaining accuracy in taking down a rapid speaker, obtaining the material in a situation of intrigue, or translating from a foreign language.132 Thus, with some doubt, he concluded that ‘under the conditions existing’ in the case, the reporters were authors under the 1842 Act.133 Lord Brampton thought the author of the speech and the author of the report could be distinguished under the terms of the 1842 Act. He also agreed that a person taking dictation would not be able to claim a property right.134 But the reports of the speeches in The Times ‘involved considerable intellectual skill and brain labour beyond the mere mechanical operation of writing.’135 Authorship did not depend on ‘literary quality’, but the nature of the skill and labour in creating the work was important.136 Moreover, it was in the public interest to protect the result. Without the ‘brain and handiwork’ of the reporter, he observed, ‘the book would never have had existence, and the words of Lord Rosebery would have remained unrecorded’.137 The dissent of Lord Robertson accepted many of the legal premises of the majority judgments. He took the view that the ‘the intellectual and literary

127

ibid 551. ibid 552. 129 ibid. 130 ibid 554. 131 ibid. 132 ibid 554–55. 133 ibid 555. 134 ibid 558. 135 ibid 556. 136 ibid 558. 137 ibid 559. 128

170 Barbara Lauriat contribution’ of a reporter might conceivably give rise to copyright protection. In The Times reports of the speeches at issue, however, Robertson found straightforward shorthand reporting with no merit beyond their literal accuracy.138 He distinguished the cases of compilation copyright on the basis that they involved ‘structure and arrangement on the part of the maker’.139 The newspapers, of course, had a good deal to say about the House of Lords decision. Naturally, The Times was pleased with the result. The Spectator also approved. There is no copyright in a speech until it has been printed and published; why then should not the copyright belong to the reporter—and of course to the person who employs and pays such reporter—just as much as to the collector of names and addresses, and to the person who employs and pays such collector?140

The Daily News, however, was scathing in its report: The reporter who has hitherto been content to be paid for taking down another man’s words now finds that he has been pursuing the calling of an author all his life without knowing it. Pitman’s School of Shorthand becomes by the judgment of the Lords one of the leading literary centres in the kingdom.141

Shortly thereafter, Moberly Bell (once again as ‘MB’) wrote to the editor of The Daily News complaining that this editorial unfairly portrayed the judgment. The editor published the letter but replied that while they ‘sympathise with MB in his zeal for the protection of journalistic copyright … in this instance he has in our opinion pushed his zeal too far’.142 Geake was incensed by the result. Along with a cutting of the lengthy article from the Daily News, he sent to Rosebery a draft letter to The Times responding to the House of Lords’ judgment. Rosebery’s secretary Waterfield wrote to Geake from Berkeley Square on 10 August 1900: ‘Lord Rosebery says—why cannot you leave well enough alone? Your letter can do no good now, and he never would agree, so far as he is concerned, to your expression “express invitation … to Berkeley Square.”’143 Despite the exasperated tone of Waterfield’s letter, Rosebery does not appear to have been angry. He wrote to Geake on 14 August 1900 expressing his sympathy and joking that American sales had only increased due to the controversy, with unwitting buyers believing it to contain scandalous material.

138

ibid 560. ibid 561. 140 The Spectator (11 August 1900) 8. 141 ‘The Reporter as Author,’ The Daily News (7 August 1900) 4. 142 ‘Letters to the Editor’ The Daily News (9 August 1900). 143 BUA; Liberal Party Correspondence DM 668, Correspondence of Charles Geake, Folder 3. 139

Walter v Lane (1900) 171 My only feeling in the matter is for you. You have had a lot of annoyance in connection with a work which I cannot help fearing that you undertook from a friendly sentiment to me. As for Lane I understand he is having a fast sale of the book in America, ‘as suppressed in England’? All the US are ransacking it for the dubious passages!144

In his Preface to the 1903 edition of his treatise on copyright, a disappointed Scrutton waxed sarcastic about the result: The House of Lords has spoken, and the law is established. But for its decision it would seem startling that a person should be the author of a work, to which he has contributed neither the words, nor their arrangement, nor the ideas contained in them, when his only relation to that work is that he has correctly copied from dictation the language of the speaker who composed the thoughts in words. The so-called author shares his authorship with the mechanical phonograph, but under the protection of the House of Lords acquires a property in his copy from dictation.145

Birrell was less certain that he and Scrutton had been right. In his posthumously published memoirs he admitted ‘that I entertained a strong opinion that Mr Walter had no case, but in the House of Lords … I failed’.146 He was, however, no longer ‘so confident that I was right’ as he remained with regard to another case he had lost.147 VI. ORIGINALITY AND THE LEGACY OF WALTER v LANE

Birrell’s reassessment of his position in Walter v Lane was reasonable. Based on an understanding of the law protecting oral expressions at the time, Rosebery was, in fact, the original owner of the speeches (in the intangible sense that we would now describe as a literary work)—even absent fixation—because of the common law protection for unpublished speeches and lectures. Rosebery had, however, given up that common law right upon ‘publication’, ie by delivering the speech in a public context in the presence of the reporters.148 Because a majority in the House of Lords took a broad view of the definition of ‘author’ under the 1842 Act, and there was no specific requirement of originality or quality required by the statute, the reporters themselves were able to obtain a statutory right in the reports. The reporters’ status as ‘authors’ was grounded primarily on the skill, labour

144 ibid.

145 Scrutton,

The Law of Copyright, 4th edn (1903), ‘Preface’. A Birrell, Things Past Redress (London, Faber & Faber, 1937) 165. 147 ibid. 148 The trial judge North J would have disagreed with this interpretation of the law because he believed there be to have been ‘no original’, but it is consistent with the House of Lords majority. [1899] 2 Ch 749 at 754. 146

172 Barbara Lauriat and judgment they had expended and, to some degree, on the public interest in having such speeches preserved and reported in newspapers. Under the 1842 Act, the reporters’ rights did not arise at the point of fixation. Rather, the reporter’s rights arose at the point of publication in the newspapers, which fell under the statutory definition of ‘books’149 and had been registered as such. The subsequent assignment to The Times gave Walter standing to sue Lane for infringement of his copyright in the reports. Before 1911, the distinction between books that were published and unpublished was a legally very significant one. In ‘An Intentional View of the Copyright Work’, Justine Pila argues that the House of Lords majority in Walter v Lane erred because the reports of Rosebery’s speeches could not have been ‘books’ for copyright purposes.150 This is based on a misrepresentation of the majority’s position in stating that they thought Rosebery could not have himself received legal protection because the speeches were never ‘fixed’. The 1842 Act did not apply to works that were ‘fixed’ but to works that were ‘published’—a stark contrast with our modern copyright system where fixation is essential, formalities have been abolished and publication does not result in the same momentous shift in legal status. As discussed above, fixation was not necessary to protect a speech through common law or the 1835 Act. Under the 1842 Act, the crucial requirements were publication as a ‘book’ and registration. Fixation was just a step on the road to publication and registration as a book. While Rosebery could have obtained a literary copyright under the 1842 Act by fixing a speech, publishing it and following the registration requirements, it is clear from the case law cited by the Lords (eg Caird v Syme) that they understood he could have protected his speeches without fixation. Rosebery could either have delivered his speeches in circumstances that did not constitute ‘publication’ and so maintained his common law rights or he could have given the proper notice under the Lectures Copyright Act of 1835. The parties agreed that Rosebery could have done either of these things, but he had not; no one denied that he had given up his rights. The speeches themselves, with Rosebery as their author, had entered what we now describe as the public domain due to the manner of their delivery. Once his words had entered the public domain, the reporters in the room were free to use the speeches to write their reports. Although the issue was discussed, the case did not turn on the question of whether the speeches or the reports of the speeches were ‘books’. Lord Davey, for example, raised the issue to point out that, after years of uncertainty, more recent case law had treated newspapers as clearly falling within the statutory definition.151

149

Walter v Steinkopff at 495. J Pila, ‘An Intentional View of the Copyright Work’ 71 Modern L Rev 535, 538. 151 Walter v Lane [1900] at 550–51. 150

Walter v Lane (1900) 173 The central question in Walter v Lane was one of status: whether a reporter of a speech which had been given to the public by its author could himself become an ‘author’ of a work under the 1842 Act by writing a report of the speech, publishing it and following the necessary registration procedures. The main issue was whether the definition of an ‘author’ under the 1842 Act should be understood to require a degree of originality, as Birrell and Scrutton had argued successfully in the Court of Appeal. The majority agreed it did not. Halsbury questioned whether an originality requirement would have necessarily meant a favourable result for the defendant,152 but, ultimately, the majority rejected the Court of Appeal’s view that originality should be read into the understanding of authorship. Thus, Walter v Lane’s legacy as an originality case is rather bizarre. In fact, the case is regularly cited inaccurately as holding that the reports were ‘original literary works’, most notably by Mummery LJ in Sawkins v Hyperion,153 but also in academic literature and texbooks.154 This error is understandable given subsequent judicial treatment of the case. In the 1916 case of University of London Tutorial Press v University Tutorial Press, the defendant argued that the requirement that a work be ‘original’ under the 1911 Act higher standard for copyright than that of Walter v Lane.155 Peterson J was unpersuaded by this argument, interpreting ‘original’ as originating from the author.156 In 1917, the High Court of Australia addressed the holding of Walter v Lane in a case dealing with the question of whether a map was original under the Australian copyright statute that mirrored the 1911 Act. The Court correctly observed that ‘it certainly was held that originality in respect of the ideas expressed or in the composition recorded in the report which was the subject of their Lordships' consideration was not necessary’ in order for the reporter to be an author.157 Despite the fact that the changes to the statutory framework reflected new international obligations under the Berne Convention, Isaacs J found that ‘author’ and ‘original work’ were, and always had been ‘correlative’; originality for copyright purposes simply meant ‘originating with the author’.158

152

ibid 548. Sawkins v Hyperion Records Ltd [2005] EWCA Civ 563 [33]. 154 See, eg, A Rahmatian, ‘Copyright Protection for the Restoration, Reconstruction, and Digitization of Public Domain Works’ in Copyright and Cultural Heritage: Preservation and Access to Works in the Digital World (Cheltenham, Edward Elgar, 2010) 70; U Smartt, Media and Entertainment Law (London, Routledge, 2011) 292; NS Sreenivasalu, Law Relating to Intellectual Property (India, Partridge, 2013) 499; P Torremans, ‘Legal Issues Pertaining to the Restoration and Reconstitution of Manuscripts, Sheet Music, Paintings and Films for Marketing Purposes’ in Copyright Law: A Handbook of Contemporary Research (Cheltenham, Edward Elgar, 2007) 33. 155 [1916] 2 Ch 601, 606. 156 ibid 608. 157 Robinson v Sands & McDougall [1917] 23 CLR 49 (HCA) 54. 158 ibid 55–57. 153

174 Barbara Lauriat Yet, years later, the Court of Appeal in Exxon v Exxon noted that Walter v Lane had to be understood as coming from a context where ‘the protection given by copyright before that time was limited to books; and the Act of 1842 did not require originality as a necessary qualification’.159 In Interlego v Tyco, which dealt with an attempt to protect an essentially identical redrawing of a toy block, the Privy Council appeared to move towards a higher standard of originality.160 It acknowledged that copyright could potentially exist in a redrawing, but ‘copying, per se, however much skill or labour may be devoted to the process, cannot make an original work. A well executed tracing is the result of much labour and skill but remains what it is, a tracing’.161 While the judgment did not discuss Walter v Lane, the suggestion that ‘skill, labour or judgment merely in the process of copying cannot confer originality’162 seemed to contradict its essential principles. In Express Newspapers v News (UK), a case involving newspapers rewriting reports of interviews published in other newspapers, however, Sir Nicolas Brown-Wilkinson VC described Walter v Lane as ‘undeniably good law’, despite the 1842 Act having no requirement of originality.163 The holding of Walter v Lane as ‘the mere reporting of the words of another gives rise to a reporter’s copyright so long as skill and judgment have been employed in the composition of that report.164 He distinguished Interlego as dealing with a very different point of originality,165 and the case has tended to be restricted to its particular set of facts ever since. Even stronger confirmation of Walter v Lane’s status as good law came from the Court of Appeal in the 2005 case of Sawkins v Hyperion, both Mummery LJ and Jacob LJ cited Walter v Lane as positive authority on originality of works.166 In Sawkins a professor of musicology had rendered music composed in the seventeenth century by Michel-Richard de Lalande playable by modern instruments in performing editions; the question was whether under the Copyright Designs and Patents Act 1988, Professor Sawkins had authored an original musical work. Mummery LJ stated: The essential elements of originality were expounded by the House of Lords over a century ago in Walter v Lane …, a decision on the Copyright Act 1842) (5 & 6 Vict c 45). It remains good law … The House of Lords held that copyright subsisted in shorthand writers’ reports of public speeches as ‘original literary’ works.167 159

Exxon Corp v Exxon Insurance Consultants Ltd [1982] 1 Ch 119 (CA), 129. Interlego v Tyco [1989] AC 217. 161 ibid 263. 162 [1989] AC 217 (Lord Oliver). 163 Express Newspapers v News (UK) [1989] 1 WLR 1320, 1326. 164 ibid 1325. 165 ibid 1326. 166 Sawkins v Hyperion (n 154) [77]. 167 ibid at [33]. Several scholars have pointed out that statement is simply incorrect as a description of the House of Lords judgment. Eg Derclaye (n 3) at 9; Gravells (n 4) at 287. 160

Walter v Lane (1900) 175 He also referred to Lord Halsbury’s statement that copyright law does not allow ‘one man to make profit and to appropriate to himself the labour, skill, and capital of another’.168 Jacob LJ observed that: For, whilst it is trite that mere servile copying (for instance tracing or photocopying) does not amount to originality, there are clearly forms of “copying” which do—the shorthand writer's copyright is a paradigm example which has stood since Walter v Lane.169

Lord Mance expressed some reservations as to whether Walter v Lane was indeed compatible with obiter in Interlego, but he was persuaded by the analysis of Jacob LJ.170 Though a controversial case containing a misstatement of the holding in Walter v Lane, Sawkins appeared to give the case another lease of life. The implementation of European Directives has led to the adoption of an ‘author’s own intellectual creation’ standard for originality for databases, computer programs, and photographs, but outside of these technologically specific areas, it was thought that Member States could maintain their own standards of originality.171 Then, another case involving the centuries-old problem of newspaper copying—this time in the new digital environment of the internet—shifted the analysis of originality towards a harmonised European standard of ‘author’s own intellectual creation’.172 In Infopaq, the Court of Justice of the European Union gave a preliminary view on the practice of scanning newspaper articles and copying short text extracts from the articles. In determining whether such a reproduction infringed in terms of the Article 2 of the Directive, the national court was instructed to consider whether the extract contained ‘an element of the work which, as such, expresses the author’s own intellectual creation’.173 Subsequent European cases dealing with subsistence confirmed that ‘copyright is liable to apply only in relation to a subject-matter, such as a photograph, which is original in the sense that it is its author’s own intellectual creation’,174 and that a work is an author’s own intellectual creation where it expresses her personality, demonstrated by the author making ‘free and creative choices’ in the production of the work.175

168

Sawkins v Hyperion (n 153) [35]. [78]; This quotation was cited as positive authority recently as July 2016. Raft Limited v Freestyle of Newhaven Limited, Christopher Eric Horsnell, Highly Sprung Limited [2016] EWHC 1711 (IPEC) [7]. 170 Sawkins v Hyperion (n 153) [71]. 171 See, eg, E Rosati ‘Originality in US and UK Copyright as a Springboard for an EU-wide Reform Debate’ [2010] Intern’l Rev of IP and Competition L 524. 172 C-5/08 Infopaq International v Danske Dagblades Forening [2009] ECR I-6569. 173 ibid [48]. 174 C-145/10 Eva-Maria Painer v Standard VerlagsGmbH [2012] ECDR 6 [87]. 175 C-604/10 Football Dataco v Yahoo [2012] Bus LR 1753 [98]. 169 ibid

176 Barbara Lauriat In Newspaper Licensing Agency v Meltwater Holding BV, the UK courts addressed the application of the harmonised European originality standard when determining if newspaper headlines and text extracts were original literary works under the CDPA.176 In the High Court, Proudman J cited Walter v Lane and Express Newspapers as positive authority for the principle that the skill and labour necessary for an original work need not be directed to the creation of particular modes of expression; it can be deployed in the selection or choice of what should be included in the work. Thus copyright protection is available to verbatim reports of interviews and public speeches.177

Applying Infopaq, she found that the headlines were capable of being independent literary works if they were original.178 Upholding the judgment of Proudman J, Sir Andrew Morritt for the Court of Appeal asserted that the CJEU’s application of the ‘intellectual creation’ test for originality did not alter the domestic test for originality of originating with the author, as stated in University of London Press and Ladbroke.179 All of this leaves the status of Walter v Lane rather ambiguous. It is not clear to what extent CJEU judgments will impact on the interpretation of UK law in future, but it might be difficult to claim the reporters of Lord Rosebery’s speeches expressed their personalities by making ‘free and creative choices’.180 Yet it could be argued that the approach of the House of Lords in Walter v Lane is not entirely divergent from the European standard of originality, which also shifts focus to the author. Like the High Court of Australia in Robinson v Sands & McDougall, Jane Ginsburg has asserted that ‘authorship’ and ‘originality’ are essentially synonymous.181 Even when focusing on the author, the originality standard may need to be applied differently for different kinds of copyright works. Some works are necessarily factual or informational, manifesting the author’s personality while realising the aims of the work is difficult and potentially undesirable. One does not want to see the author’s personal touch in an instruction manual. Ginsburg suggests that this is, in fact, the case in jurisdictions such as France and Belgium; where courts attempt to identify a ‘personal stamp’ for copyright subsistence in a work, ‘as long as the nature of the work undertaken allows the author to make subjective choices in the work's contents or composition, the impress of the author's personality will be declared present’.182 176

[2010] EWHC 3099 (Ch), [2011] EWCA 890 (CA), [2012] Bus LR. Meltwater [30]. 178 ibid [77]–[78]. 179 ibid [20]. 180 See L Bently and B Sherman, Intellectual Property, 4th edn (Oxford, Oxford University Press 2014) 114–15. 181 J Ginsburg, ‘The Concept of Authorship in Comparative Copyright Law’ 52 DePaul L Rev 1063, 1078. 182 Ginsburg (n 181) 1081. 177

Walter v Lane (1900) 177 In such cases, it may still be important to look at the nature of the skill, labour and judgment employed by the author. In Walter v Lane, both Lord James and Lord Brampton found the nature of the skill and labour relevant to the issue of authorship, even if the quality of the work itself was not. Rather than requiring originality or literary merit, authorship in the views of James and Brampton (and Robertson, though he dissented) meant that an author expended a certain kind of skill and labour. In Brampton’s words, the skill had to be ‘intellectual’ rather than ‘mechanical’.183 James found that the reporter of the speeches was the ‘meritorious producer of the something necessary to constitute him an “author”’.184 As Ginsburg expresses the principle, ‘the quantum and the quality of sweat may matter to the determination of authorship’.185 In Walter v Lane it was not unreasonable for their Lordships to have found that the (relatively novel) skill of the shorthand reporters was intellectual in nature. It is important to remember the factual background that emerged at trial: there were often several reporters from different newspapers present at the speeches of Lord Rosebery. Despite the supposed verbatim recording of the speeches, every one of the published reports was different. This point was echoed by publisher John Murray in his letter to The Times; he emphasised that anyone familiar with ‘shorthand reporting of long speeches must be aware that no two full length reports taken down by different individuals will exactly correspond’.186 Consequently, it is unlikely that any of the reports were perfectly accurate verbatim records of the original speakers. As Laddie J observed: it is relevant to bear in mind that there may be considerable skill and expertise involved in attending a public lecture and taking down moderately accurately a speech. Anyone who has attended a trial and has read the daily transcript will marvel at how much clearer the transcript seems to be than what was said in court. This impression is confirmed by comparing the transcript with a tape recording of the proceedings. People frequently speak in half sentences. A good reporter or shorthand writer does more than act as a mere scribe.187

There is another important principle that arises from Walter v Lane which ought to be maintained as part of its legacy: the skilful recreation, preservation, conservation, or reconstruction of existing works should be legally protected when it is the public interest to do so. As Lord Brampton emphasised in his judgment, without the intellect and labour of the reporters, ‘the book would never have had existence, and the words of Lord Rosebery

183

Walter v Lane [1900] 556. ibid 555. 185 Ginsburg (n 181) 1082. 186 J Murray, ‘Copyright in Reports of Speeches’ The Times (17 August 1899) 6. 187 Cala Homes Ltd v Alfred McAlpine Homes East Ltd [1995] FSR 818, 835. 184

178 Barbara Lauriat would have remained unrecorded save in the memories of the comparatively few who were present on those occasions’.188 It may be necessary to incentivise the ‘copying’ of works deemed beneficial to the public interest where copying requires a great investment of time and labour, specific intellectual expertise and skill. Moreover, such forms of copying may themselves transcend mechanical copying such that inclusion of the creator under the category of ‘author’ is entirely reasonable. In such cases, Walter v Lane supports the principle that the law may recognise as an ‘author’ an individual who has developed particular expertise and a skill set that requires the application of intellectual labour beyond the mechanical. There were public policy reasons to protect the shorthand reports in Walter v Lane as socially valuable works. Indeed, had the reporters not produced their reports of the speeches of Lord Rosebery, most of the public would not have had access to their contents and they would also very likely have been lost.189 This principle that public policy calls for the inclusion of socially valuable copies of works within the statutory understanding of originality is echoed in Jacob LJ’s obiter in Sawkins v Hyperion: the sort of work done by the claimant should be encouraged. It saves others the time and trouble of recreation of near-lost works, but in no sense creates monopoly in them. If someone wants to use the claimant's short cut, they need his permission.190

There is also academic literature supporting the protection of works of this kind. Paul Torremans concludes that under the ‘UK common law copyright approach there may well be copyright in the restored or reconstituted version of an out of copyright work’.191 In a statement cited by the Jacob LJ in Sawkins, Ginsburg suggests that reproductions ‘requiring great talent and technical skill may qualify as protectable works of authorship, even if they are copies of pre-existing works. This would be the case for photographic and other high quality replicas of works of art’.192 Or, as Pila explains, there may be reasons to offer copyright protection ‘where the result is a product of genuine cultural interest that might otherwise remain inaccessible to the public’.193 Burton Ong has also argued persuasively that some kinds of ‘recreative works’ should be granted copyright protection.194

188

Walter v Lane [1900] 559. Alexander (n 43) 212. 190 Sawkins v Hyperion [87]. 191 P Torremans, ‘Legal Issues Pertaining to the Restoration and Reconstitution of Manuscripts, Sheet Music, Paintings and Films for Marketing Purposes’ (2011) 33 European Intellectual Property Rev 178, 188. 192 Sawkins v Hyperion [83]. 193 Pila (n 150) 549. 194 B Ong, ‘Originality From Copying: Fitting Recreative Works Into the Copyright Universe’ [2010] Intellectual Property Quarterly 165. 189

Walter v Lane (1900) 179 The nature of the copying is also important. Torremans warns that originality is still essential in determining whether to protect socially valuable copies of earlier works. He emphasises that ‘mere copying will not suffice’—in a restoration or reconstitution of an earlier work, some ‘personal input or creation by the person restoring or reconstituting the work is required’.195 Ong acknowledges that one must look to ‘a close examination of how the copying took place’ when considering the originality of ‘faithful reproductions of antecedent works’.196 Thus, to determine if works that are products of editing, recreation, preservation, conservation, or reconstruction are original, there are two important considerations: (1) the mode of copying—if it requires skill, labour and judgment rather than being servile and performing an ‘easy mechanical function’, and (2) whether there is public interest in having intellectual labour and skill dedicated to the re-creation, preservation, conservation, or reconstruction of a work. When it comes to infringement, the copyright protection is very thin; the right only prevents others from using the ‘short-cut’. One must avoid allowing copyright law to be used to deny academic access to cultural artefacts.197 Lord Davey said in Walter v Lane, it ‘was of course open to any other reporter to compose his own report of Lord Rosebery's speech’.198 The legacy of Walter v Lane may be this principle: that UK copyright law ought to be interpreted, or if necessary rewritten, to protect valuable copies of works where the skilled author of those works has expended sufficient intellectual labour and skill. VII. POSTCRIPT

Moberly Bell’s campaign for newspaper copyright did not end with his success in Walter v Lane. On 5 April 1911 he was in his office at The Times in a state of great vexation. Sydney Buxton, President of the Board of Trade, had introduced a Copyright Bill before the Commons several days before; it included a provision that would allow newspaper articles to be reproduced in another newspaper with acknowledgement, unless accompanied by a conspicuous notice expressly forbidding reproduction. In addition to publishing a letter from an anonymous journalist in The Times complaining of the proposed Bill,199 Bell sat down to compose a letter to Buxton, d ripping with outraged sarcasm. Although a Unionist I am not one of those who has hitherto associated the whole of the Cabinet with a desire to plunder other roosts but when I see names such

195

Torremans (n 191) (2011) 188. Ong (n 194) 176–77. 197 Rahmatian (n 154) 68. 198 Walter v Lane [1900] 552. 199 ‘The Copyright Bill and Journalism’ The Times (5 April 1911) 7. 196

180 Barbara Lauriat as yours and the Solicitor General’s to a Copyright Bill containing Article 21 I begin to wonder whether my moderation has not been a mistake and whether the Cabinet really proposes to legalise burglary and larceny provided the delinquent will only confess. There is something to be said for it I admit and the next time I have the pleasure of calling on Mrs Buxton I shall try to pick up some unconsidered trifle and on my way home shall call at a Police Office explain that it is the property of Mrs Buxton show that it has no certificate of property attached to it and treat it as my own until someone else manages to abstract it from me in the same manner …200

Moberly Bell never finished the letter. He put down his pen mid-composition and died.201 The Bill passed several months later as the 1911 Copyright Act, without the offending provision.

200 TNL Archive, Moberly Bell Papers, Letter to Sydney Buxton, 5 April 1911, TT/MGR/ CMB/2. 201 Moberly Bell (n 10) 314.

7 Spalding v Gamage (1915) HAZEL CARTY

I. INTRODUCTION

I

N 1842 IN Perry v Truefitt Lord Langdale accepted that ‘a man is not to sell his own goods under the pretence that they are the goods of another man’; he was not ‘to practise such a deception’.1 Though this principle still describes the standard claim for passing off, it failed to provide a rational basis for the tort and its development. Indeed, even though by the final decades of the nineteenth century fraud no longer appeared central to the tort, the need for its clarification had been largely ignored or side-stepped by the courts.2 It was only in 1915 that the House of Lords, in Lord Parker’s speech in AG Spalding & Bros v AW Gamage Ltd,3 presented the coherent theoretical basis of this tort. To do so, Lord Parker combined the two elements that had bubbled away separately throughout the nineteenth century: deception and property protection. As the principle in Perry revealed, deception or misrepresentation was accepted as fundamental to the tort. Spalding accepted that relevant misrepresentations were not limited to source misrepresentations (despite the implication in the Perry principle). Critically, however, Lord Parker went on to identify the particular link between that deception of the public and the plaintiff, the link that provided the plaintiff with a cause of action. That link was the harm to the plaintiff’s goodwill, a property right that justified imposing strict liability. Thus, the case has been termed ‘the landmark case

1 [1842] 49 ER 749, 752. This was ‘well understood’. According to the headnote the defendant was not to ‘pass off’ the goods. 2 This is discussed later in the text. As Wadlow asserts there was ‘little conscious analysis of how the law was developing’ (see C Wadlow, The Law of Passing-Off Unfair Competition by Misrepresentation, 5th edn (London, Sweet & Maxwell, 2016) 22. Note also, for example, Leather Cloth Co v American Leather Cloth Co Ltd 46 ER 868 where at 869 Lord Westbury LC highlighted the lack of judicial clarity and precision and Singer Machine Manufacturers v Wilson (1877-8) LR 3 App Cas 376 (HL) where at 400 Lord Blackburn was not prepared ‘as yet’ to agree as to the basis of passing off liability. 3 AG Spalding & Bros v AW Gamage Ltd [1915] 32 RPC 273.

182 Hazel Carty on goodwill as an element of passing off’.4 The focus on goodwill meant that the tort was no longer ‘anchored, as in its early nineteenth century formulation, to the name or trade mark of a product or business’5 and, indeed, it also meant that harm was not limited to lost profits. Yet this speech was not a landmark in the sense of a turning point in the tort. Rather its landmark status results from its clarification of its core concepts.6 It could be said that Lord Parker’s analysis is a landmark in the historical sense of that word: it presented boundaries for the tort’s refinement.7 This chapter will review earlier case law on the tort of passing off both to demonstrate the long-overdue need for this theoretical basis and to underline that Lord Parker was clarifying rather than remodelling. In addition, the facts of Spalding (which have never attracted sufficient attention) and the litigation in full will be discussed, together with the subsequent judicial and juristic reception of Lord Parker’s analysis. II. THE DEVELOPMENT OF PASSING OFF IN THE NINETEENTH CENTURY: AN UNCERTAIN FRAMEWORK

Apparently derived from the tort of deceit,8 the tort of passing off can arguably be traced back to the sixteenth century.9 However, it was in the nineteenth century that its real development took place.10 Throughout this 4 I Tregoning, ‘What’s in a Name? Goodwill in Early Passing-off Cases’ (2008) 34 Monash University Law Review 75, 78.

5 Lord

Scarman in Cadbury Schweppes Pty Ltd v Pub Squash Co Pty Ltd [1981] RPC 429, 490.

6 Now referred to as the ‘classical trinity’, see Nourse LJ in Consorzio del Prosciutto di Parma v Marks & Spencer Plc [1991] RPC 351, 368. Oxford English Dictionary, 2nd ed (Oxford, Clarendon Press, 1989) has as part of its definition of landmark ‘an object in the landscape, which, by its conspicuousness, serves as a guide in the direction of one’s course’. 7 ibid: ‘The boundary of a country, estate, etc …’ It is noted that it has been used figuratively in law to mean a framework. 8 See, eg, Lord Westbury in Edelsten v Edelsten [1863] 46 ER 72, 78 ‘an action on the case for deceit’. 9 Dodderidge J in Southern v Howe (1618) Cro Jac 468 referred to an unreported case that may have involved passing off. This has been identified as the 1584 case, Samford’s Case (see JH Baker, An Introduction to English Legal History, 3rd edn (London, Butterworths, 1990) 522). However, Schechter is unconvinced, calling the reference to Samford’s Case ‘an irrelevant dictum of a reminiscent judge’ (see FI Schechter, The Historical Foundations of the Law Relating to Trade-Marks (New York, Columbia University Press, 1925) 123). Dawson notes that the term ‘passing off’ was used in a legal context concerning a trade mark dispute in 1740, N Dawson ‘English Trade Mark Law in the Eighteenth Century: Blanchard v Hill Revisited’ (2003) 24 J Legal History 111. As Wadlow notes ‘there are indications that what would now be called passing-off actions did continue to occur in the 18th century without attracting much attention’ in Wadlow, The Law of Passing-Off (n 2), 22. 10 For history see FI Schechter, The Historical Foundations of the Law Relating to TradeMarks (New York, Columbia University Press, 1925); C Wadlow, The Law of Passing-Off (n 2), 18–33. However, note in the first edition of D Kerly The Law of Trade-Marks, T rade-name, and Merchandise Marks (London, Sweet & Maxwell, 1894) 2: ‘The law on this subject cannot be traced back further than the present century’ and Lord Diplock in Erven Warnink BV v J Townend & Sons (Advocaat) [1979] AC 731, 740, ‘the action arose in the 19th century’.

Spalding v Gamage (1915) 183 century deception appeared the key ingredient of the tort; and it had to be a deception that would harm the plaintiff.11 However, the theoretical basis was unclear. Though deceit—an action on the case—may have been the origin of the action, the tort of passing off was clearly different to that tort: the plaintiff was not the party deceived12 and no actual harm had to be proved.13 The basis of this action was further obscured by two interrelated factors: the different approach of the courts of equity and law and the growing importance of trade marks. The common law courts required fraud for liability, and initially so did the courts of equity when granting an injunction.14 However, in 1838 Lord Cottenham LC in Millington v Fox contended that, as far as equity was concerned, the absence of fraud at the inception of the disputed conduct was no bar to protection.15 Though subsequently Lord Langdale in Perry still based the equitable jurisdiction on fraud,16 ultimately it was accepted that equity would protect on the basis of a representation calculated to deceive. After-acquired knowledge of that likely deception sufficed as a form of fraud. Thus Lord Blackburn in Singer Machine Manufacturers v Wilson, while refusing to provide any principle for the tort, noted that where an injunction was sought the court was concerned with the prevention of the continuance of a wrong, so that once the defendant was aware of the actual deception he should be retrained otherwise ‘he would … do a wrong injurious to the Plaintiffs’.17 It is important to note that the facts of Millington v Fox concerned the use by the defendant of the plaintiff’s distinctive marks, recognisable by purchasers of goods as indicating the plaintiff as origin of those goods. Though Perry made it clear that passing off protected beyond such marks,18 such actions for infringement of ‘common law trade marks’ were often the subject of passing off litigation in the nineteenth century.19 Indeed,

11 Singer Manufacturing Co v Loog [1882–83] LR 8 App Cas 15, Watson noted ‘If [the plaintiff] cannot allege and prove that the public are deceived … he has no right to interfere with the use of the name by others’, 39; Levy v Walker [1878] 10 Ch D 436, 448: James LJ: the court will not interfere to protect against public deception per se. 12 See also dicta to the effect that it is a fraud on the plaintiff, eg Lee v Haley [1869] 5 Ch App 155, 161 a fraud on a person who has established a trade. 13 Blofeld v Payne [1833] 110 ER 509, see later in text. 14 Lord Eldon LC Crutwell v Lye [1810] 34 ER 129 ‘this Court would interpose against that sort of fraud’. 15 [1838] 40 ER 956. 16 ‘For the purposes of deception’ [1842] 49 ER 749, 752. 17 Singer Machine Manufacturers v Wilson [1877–78] LR 3 App Cas 376 (HL), 400. 18 Lord Langdale stated that a defendant: ‘cannot … be allowed to use names, marks, l etters, or other indicia, by which he may induce purchasers to believe that the goods which he is selling are the manufacture of another person’ [1842] 49 ER 749, 752. 19 MP McKenna, ‘The Normative Foundations of Trademark Law’ (2007) 82 Notre Dame Law Review 1839, 1856 notes that equity’s approach was to protect a plaintiff who could show substantially exclusive use of the mark—where this was not the case then the plaintiff would be required to prove at law that deception was intended.

184 Hazel Carty Bently notes a surge in trademark case law from the 1860s onwards.20 This ‘growing reception and use of marks in commercial practice’,21 was hardly surprising in an era which saw the rise of consumerism, the expansion of the distributive trades and, indeed, the growth in advertising.22 This would seem to explain a trend to accept that a property right existed in the common law trademark—a trend aided by the decision in Millington.23 Such a view was reinforced by the argument that where equitable relief was sought, a property right had to be involved.24 (Indeed at times the courts had asserted the tort protected a right of property in a plaintiff’s own name25 or a right analogous to the property attaching to copyright works).26 Of course, this was an era where legislative protection was being sought for such marks, eventually being achieved by the Trade Marks Registration 1875, an Act ‘widely understood as reinforcing the reconceptualization … of trade marks as property’.27 This trend seems to have originated from Lord Westbury, Lord Chancellor from 1861.28 In Leather Cloth Co v American Leather Cloth Co Lord Westbury used Millington to support his theory that equity’s protection of trademarks was based on property, not fraud. By 1894, Kerly, a leading trademark text of the time, confidently asserted: The trade mark cases … were so much more numerous and important that … a definite property right in the use of a trade mark was set up and the action for infringement became a specialised and distinct form of the more general action to restrain or to obtain damages for ‘passing off’.29

20 L Bently, ‘The Making of Modern Trade Marks Law: The Construction of the Legal Concept of Trade Mark (1860–80)’ in L Bently, J Davis and J Ginsburg (eds), Trade Marks and Brands: An Interdisciplinary Critique (Cambridge, Cambridge University Press, 2008) 11. 21 B Sherman and L Bently, The Making of Modern Intellectual Property Law (Cambridge, Cambridge University Press, 1999) 167. 22 On the growth of advertising see D Higgins, ‘The Making of Modern Trade Mark Law: The UK, 1860–1914. A Business History Perspective’ in L Bently et al, Trade Marks and Brands (n 20). 23 Kerly noted that Millington led to the ‘obvious deduction … the establishment of a right of property in trade-marks’. DM Kerly, The Law of Trade-Marks, Trade Names, and Merchandise Marks, 2nd edn (London, Sweet & Maxwell, 1901). 24 Lord Eldon LC Macaulay v Shackell [1827] 4 ER 809, equity ‘lends its assistance to a man who has … a right of property’. 25 Malins V-C in Springhead Spinning Co v Riley [1868] LR Eq 551 at 562. However, this was not accepted generally see, eg, Du Boulay v Du Boulay [1869] LR 2 PC 430. 26 Lord Cranworth in Leather Cloth Co v American Leather Cloth Co Ltd 11 ER 1435 (HL), 1440. However, cf James LJ in Singer v Loog [1880] 18 Ch.D 395, 412. 27 L Bently, ‘From Communication to Thing: Historical Aspects of the Conceptualisation of Trade Marks as Property’ 28 in G Dinwoodie and M Janis (eds), Trademark Law and Theory: A Handbook of Contemporary Research (Cheltenham, Edward Elgar, 2008). 28 He gave judgment in three cases in 1863 to this effect: Edelsten v Edelsten [1863] 46 ER 72; Hall v Barrows 46 ER 873; Leather Cloth Co v American Leather Cloth Co [1863] 46 ER 868, 870 (Ch). 29 D Kerly, The Law of Trade-Marks, 1st edn (London, 1894) 5.

Spalding v Gamage (1915) 185 Indeed, there were indications that some also accepted property in trade names.30 However, judicial opinion was divided.31 In 1857, just prior to Lord Westbury’s campaign, Page Wood V-C in The Collins Co v Brown32 expressly rejected the notion of property in a trademark (reflecting the view in Perry)33 and in Wotherspoon v Currie (1872) that same judge—now as the Lord Chancellor, Lord Hatherley—focused on liability based on likely deception.34 Eventually, the analysis of trademarks or names as property went out of fashion. Wadlow notes that prior to Spalding there had been a ‘hiatus of over 30 years during which hardly any judge suggested passing off defended property rights at all’.35 It may be that the debate over property rights had been curtailed by two legislative interventions. The first was the Judicature Act 1873 which removed any need to establish property rights when granting an injunction (and, of course, fused law and equity). The second was the Trade Marks Registration Act 1875 which abolished the action for infringement of a common law trade mark. As Wadlow notes,36 it could no longer be said that the tort protected a right of property in a trade mark ‘because if it did so it would have been no more than the abolished common law infringement action under another name’. In effect this Act required the courts to consider a general frame for passing off actions. This frame became clearer after the important cases of Singer Manufacturing Co v Loog and Reddaway (Frank) & Co Ltd v George B anham & Co Ltd, both of which went to the House of Lords. In Singer v Loog, James LJ in the Court of Appeal referred to the principle governing liability as ‘no man is entitled to represent his goods as being the goods of another man’ and rejected property in a name;37 Lord Watson in the House of Lords stressed that innocence was no defence, provided the use of the name by the defendant was calculated to deceive.38 In Reddaway v Banham—itself subsequently acknowledged to be a landmark case39— again misrepresentation was placed at the heart of the tort40 and again

30 Lord Blackburn in Singer v Loog [1882] 8 App Cas 15 at 33 both trade names and marks ‘are in a certain sense property …’ 31 ‘Lord Westbury’s doctrine of property in trademarks had never enjoyed unanimous support, even among equity lawyers’: Wadlow, The Law of Passing-Off (n 2) 30. 32 [1857] 69 ER 1174. 33 Lord Langdale: ‘I own it does not seem to me that a man can acquire a property merely in a name or mark’ [1842] 49 ER 749, 752. 34 [1871–2] LR 5 HL 508. 35 Wadlow, The Law of Passing-Off (n 2) 19. 36 ibid, 35. The Act made the registration of the trade mark the equivalent of public use. 37 [1880] 18 Ch.D 395 at 412. In reality the plaintiff sought to prevent the trade use of the word Singer even in price lists, etc. 38 [1882] 8 App Cas 15. Note, however, n 28. 39 Lord Diplock in Advocaat [1979] AC 731 at 741. See discussion later in text. 40 See, eg, Lord Halsbury [1896] AC 199, 207.

186 Hazel Carty property in a name or mark or get-up was rejected.41 In 1904, a leading text, Cutler’s On Passing Off, characterised passing off as ‘a matter of representation’, made no reference to rights or property and categorically stated that no intention to deceive was necessary, but rather the ‘commercial effect’ of the representation was the key to liability.42 Lord Diplock characterised the perception of the tort at this stage as ‘an action sui generis which lay for damage sustained or threatened in consequence of a misrepresentation of a particular kind’.43 However there remained uncertainties. The courts may have stressed misrepresentation as the key factor, but the required nature of that misrepresentation was unclear. The standard discussion of the tort placed it within the context of a misrepresentation as to source. Admittedly, the courts had expanded how such a misrepresentation might manifest itself to include misrepresentations involving get-up44 indirect reference to source45 and, in Reddaway v Banham, descriptive terms that had acquired secondary meaning.46 However, it was unclear whether other representations could be relevant to liability. There was evidence that some courts were prepared to impose liability to counter misdescriptions of the plaintiff’s product. So in Teacher v Levy47 Swinfen Eady J, without discussing the scope of the tort, presumably because fraud was involved, held that it covered passing off the plaintiff’s inferior product for the plaintiff’s superior product. Yet the emphasis in the higher courts continued to be on passing off as protecting against source misrepresentations. In Native Guano Co v Sewage Manure Co,48 though admittedly a case that was not pleaded coherently, the House of Lords was not minded to explore the product misrepresentation that, in fact, lay at its heart.49 Again, in Powell v Birmingham Vinegar Brewery Co (the Yorkshire Relish case) though Lord Davey stressed that the defendant’s product was not made to the ‘proper’ recipe—the emphasis was still on source misrepresentation.50 Subsequently

41

Lord Herschell ibid, 209–10. Cutler, On Passing Off, or, Illegal Substitution of the Goods of One Trader for the Goods of Another Trader (London, Gay and Bird, 1904) 5, 9. 43 Lord Diplock in Advocaat [1979] AC 731, 740. 44 Lever v Goodwin [1887] 4 RPC 492, CA. 45 Birmingham Vinegar Brewery Co v Powell [1897] AC 710. 46 [1896] AC 199. The descriptive term ‘camel hair belting’ had become associated exclusively with the plaintiffs. 47 [1906] 23 RPC 117 the defendant pub owners had been serving customers with the plaintiffs’ ordinary quality whisky where they had requested the plaintiffs’ special quality whisky. See also the Irish case, Jameson v Clarke [1902] 19 RPC 255. Wadlow, The Law of Passing-Off (n 2) 424 also notes Australian examples, some dating from 1869. 48 [1891] 8 RPC 125. 49 Diplock in Advocaat, the context of the case was ‘that the passing off actions that had hitherto come before the courts had all assumed what I have called the classic form’: [1979] AC 731, 746. 50 [1897] AC 710, 711. It was not important that the plaintiff’s name was not used by the defendant. 42 J

Spalding v Gamage (1915) 187 in Magnolia Metal Company v Tandem Smelting Syndicate Ltd (1900) Lord Halsbury, delivering the judgment of the House of Lords, still stressed source misrepresentation as the heart of the tort. He refused to be drawn on the possibility of a product equivalence misdescription being included within the tort, declaring that that would be ‘a different right being infringed’.51 Furthermore, whether there was a required context for the misrepresentation was unclear. Kerly,52 and a number of leading cases (including of course Perry), placed the context of the misrepresentation within that of a sale, hardly surprising when the majority of cases involved trademarks or names. Morison contended that ‘the earlier definitions of passing off … indicate that it is essential that there should be this composite act of selling together with a misrepresentation before the tort is made out’.53 Even in 1882 Lord Blackburn in Singer Manufacturing Co v Loog asserted ‘the original foundation of the whole law is this, that when one knowing that goods are not made by a particular trader sells them as and for the goods of that trader, he does that which injures that trader’.54 And Lord Herschell in Reddaway v Banham still referred to passing off goods for sale.55 However, in that same case Lord Halsbury did not focus on sale but rather asserted that the principle of law was ‘nobody has any right to represent his goods as the goods of somebody else’.56 As for the justification for imposing liability, though fraud and property rights had seemingly been removed from the tort,57 ghostly reminders of their former presence remained. So, there was a continued reference to equity’s fiction of fraud. In its first edition, 1894, Kerly accepted that the defendant could be liable for unintended deception but stressed that such a defendant did in fact commit a fraud by continuing ‘after discovering the dangerous character of his conduct’.58 Indeed, in 1900 Lord Davey in Edge & Sons Ltd v Gallon & Son declared: ‘[jurisdiction over passing off] … is a jurisdiction which has rested on fraud’ and it remained so, though fraud may be constituted by ‘[continuing] to do that which perhaps he was previously doing unintentionally or

51

[1900] 17 RPC 477, 485. Kerly and FG Underhay (ed) The Law of Trade-Marks, 4th edn (London, Sweet & Maxwell, 1913), 1 underlined that deception was the foundation of the action and placed the tort within the context of sales. There is no mention of any right. 53 WL Morison, ‘Unfair Competition and Passing Off’ (1956) 2 Sydney Law Review 50, 56. 54 [1882] LR 8 HL 15, 29. 55 [1896] AC 199, 209. He cited the famous dictum of Lord Kingsdown in Leather Cloth v American Leather Cloth Co [1865] 11 ER 1435, 1438: ‘the fundamental rule is, that one man has no right to put off his goods for sale as the goods of a rival trader’. 56 [1896] AC 199, 204 (see also Lord Macnaghten, 215, citing James LJ in Singer v Loog, referred to above in the text). 57 Of course, as is still the case today, should fraud be present that would be highlighted. 58 See also the reference to fraud by Chitty J in Lever v Goodwin [1887] 36 Ch D 1, 2 and by Fry LJ in Waterman v Ayres [1888] 39 Ch D 29, 37. 52 D

188 Hazel Carty unconsciously before the matter was brought to his attention’.59 It is also interesting to note the reference by Lord Herschell in Reddaway v Banham that the law should not be powerless to enforce ‘the most elementary principles of commercial morality’.60 Further, despite a property basis for the tort being out of favour, courts at times still referred to a right of the plaintiff as having been harmed or, indeed, referred to misappropriation by the defendant. So, in Reddaway v Banham Lord Herschell doubted that property existed in trademarks, names or get-up but did refer to the plaintiff’s ‘right to insist that [the word chosen as a mark] shall not be used without explanation or qualification if such use would be an instrument of fraud’.61 Similarly in 1898 in Jamieson & Co v Jamieson62 it was asserted that the action was ‘merely the exercise by the Plaintiff of a right that he has that he should not be injured by the fraud of the Defendant in pretending that the goods manufactured by him, the Defendant, are of the Plaintiff’s manufacture’. This ‘right’ reflected earlier dicta contained in Blofeld v Payne (1833), noted below.63 However, the vocabulary of theft was also evident at times: Lord Herschell in Reddaway contended that the defendant should not be allowed to ‘filch the business of a rival’ and referred to the mark having been ‘appropriated by another’;64 Lord Macnaghten in Payton & Co Ltd v Snelling, Lampard & Co Ltd noted that he found no intention ‘to steal’ the plaintiff’s trade.65 These uncertainties demanded clarity as to the theoretical basis of the tort. However, this lack of clarity was ignored by the courts at the end of the nineteenth century and beginning of the twentieth century. Rather it was common to assert that the only difficulty in this area of law was in applying the law to particular facts, the principles of the tort having become clear.66 This attitude was apparent in the House of Lords’ passing off decisions at the turn of the century: Magnolia Metal Company v Tandem Smelting Syndicate (1900);67 Payton & Co Ltd v Snelling, Lampard & Co Ltd (1901).68 It was

59

[1900] 17 RPC 557, 566. [1896] AC 199, 209. 61 ibid 215. 62 [1898] RPC 169, 191. 63 Litteldale J [1833] 110 ER 509, 510: even where no specific damage proved ‘it was still … an injury to his right’. 64 Reddaway v Banham [1896] AC 199, 209. 65 Lord Herschell, Reddaway [1896] AC 199, 211; Lord Macnaghten, 309. 66 Eg Lord Hatherley LC in Wotherspoon v Currie [1872] LR 5 HL 518, 512 ‘… the principles governing these cases have been … well settled by a long series of decisions’; Baggallay LJ Orr Ewing & Co v Johnston & Co [1880] 13 Ch D 434, 454; Lord Macnaghten in Reddaway: what was presented was ‘the old and familiar doctrines of the Court which have been repeated over and over again’ [1896] AC 199, 215. 67 [1900] 17 RPC 477. 68 [1901] AC 308. Tregoning, ‘What’s in a Name?’ (n 4) notes of these cases: ‘the House of Lords felt comfortable in not considering any specific rights or property such as goodwill as the subject of the claimed passing off infringement’: 88. 60

Spalding v Gamage (1915) 189 also apparent even where novel claims of passing off were presented to the courts, as in Society of Accountants and Auditors v Goodway & London Association of Accountants Ltd (1907). Here a society claimed passing off where the designation used by its members had been used by members of the defendants’ society. Warrington J simply decided that this involved an analogous question to standard passing off, focusing on the likely deception and harm to the ‘pecuniary interests’ of the plaintiffs.69 This lack of judicial interest in exploring the theoretical basis of the tort can also be seen in the Spalding litigation in the High Court and Court of Appeal (and at House of Lords’ level apart from Lord Parker and to an extent Lord Parmoor).70 Indeed, no authorities are cited by the trial judge and only one by the Court of Appeal—Ajello v Worsley—a claim in injurious falsehood where the plaintiff had abandoned his claim in passing off.71 All the judges involved were content to apply the tort though it was noted to be not ‘of the common type’72 and of ‘an unusual character’.73 III. SPALDING, THE ‘ORB’ FOOTBALL CASE

AG Spalding & Bros was a successful American sporting goods company;74 the defendant, AW Gamage Ltd, was a store renowned for its low prices.75 Starting in 1909, Spalding produced a series of footballs, made partly of vulcanised rubber, in what they termed their ‘Orb’ range.76 Spalding made various claims as to how these were preferable to ordinary leather footballs. Prior to the launch of the ‘Improved Sewn Orb’ in 1912—which lay at the heart of the litigation—these Orb footballs had all been moulded in one piece. In their 1910 catalogue Spalding announced that demand for the moulded Orb had been enormous and that they were launching the ‘Improved 1910 Orb Football’. In the subsequent catalogue in 1911 this was

69 (1907) 24 RPC 159, 167. Compare this attitude to the clear and severely limited framework devised for injurious falsehood/trade libel (though Salmond in fact placed the tort of passing off within the tort of injurious falsehood). 70 Lord Parmoor accepted that offering the plaintiff’s inferior goods or goods of a different class, representing those goods to be of ‘a superior and distinctive class’ was covered by the tort [1915] 32 RPC 273, 289. 71 [1898] 1 Ch 274 Ch D. 72 Sargant J [1913] 30 RPC 388, 395. 73 Lord Cozens-Hardy MR: [1914] 31 RPC 125, 133. 74 Founded in 1876 by the renowned Boston Red Stockings pitcher AG Spalding— interestingly, his middle name was Goodwill (!). 75 Younger J noted that their London stores were practically opposite [1917] RPC 289, 304. Grace’s Guide to British Industrial History () notes that Gamage insisted on selling everything cheaper than anywhere else. Gamage closed in 1972; Spalding is still a successful sporting goods firm. 76 Orb = Original Rubber Ball.

190 Hazel Carty simply referred to as ‘The Improved Orb Football’ and was priced at 10s 6d. The illustration used for this ball involved the stamp ‘Spalding’s Orb’. In fact the moulded Orb had proved unreliable with potential defects.77 Though they featured defect-free moulded balls in their 1911 catalogue (‘The Improved Orb Football’), Spalding ceased their manufacture and withdrew from sale that part of their stock of moulded balls thought to be unsatisfactory.78 In 1912 their catalogue, a publication mainly for overseas circulation and retailers,79 advertised their new model, the Improved Sewn Orb, described as manufactured under Patent No 15168 and priced at ten shillings and six pence.80 This was another rubberised canvas ball. However, it was not moulded under heat but sewn together as with leather footballs. The illustration for this product involved the stamp ‘Specially Tested’. Though claimed to be ‘a great improvement on the old moulded ball’ and ‘the best ball on the market for schools and junior clubs’, in fact the catalogue went on to repeat much of what had been written about the Orb generally in previous catalogues. In May 1912 Spalding sold the discarded defective Orbs—some 5,580 in number—to waste rubber merchants at a low price and by September/ October 1912, in a series of advertisements, Spalding were offering their Orb Football (advertised as ‘not to be confused with the Improved Sewn Orb’) at the discounted price of three shillings and eleven pence or three shillings.81 However, the waste rubber merchants sold the discarded footballs to AW Gamage Ltd almost as soon as they received them from Spalding.82 Over the 1912 August Bank holiday, a month before the start of the new football season, Gamages, as the Holborn Circus store was known until its closure in 1972, advertised the sale of what was in fact this discarded stock. Through ‘extraordinary negligence’83 the initial advertisements in various journals

77 Swinfen Eady LJ in [1918] 35 RPC 101 CA, 118 noted that the plaintiffs had accepted that the Orb and Improved Orb were ‘a great failure and a very large loss was incurred by the plaintiffs’. In a letter to a disgruntled retailer they noted of the moulded orb ‘it was quite possible that some of these balls might burst the first time they were used so we immediately dropped the manufacture and invented what is now known as the Sewn Orb’, letter to F&T Ritson, dated 16 October 1912 available HL/PO/JU/4/3/626 (Parliamentary Archives). 78 Spalding kept about 1,000 for sale (see argument of defendants’ counsel: [1915] 32 RPC 273, 281). 79 Younger J: [1917] RPC 289, 306. 80 In fact, the patent number was 15,163. 81 During 1912 there were a bewildering series of advertisements for orbs from both Gamage and Spalding, especially as at this point Spalding were discounting their Improved Orb. At the end of Sargant J’s judgment there is a lengthy debate with counsel as to how the balls should be referred to in the injunction. 82 The day prior to the day the merchants picked up the balls from Spalding, the merchants had approached Gamages and offered them the discarded footballs. 83 Sargant J [1913] 30 RPC 388, 397. Gamage’s employee had used the description from Spalding’s 1912 catalogue as the basis for the advertisements of the discarded balls.

Spalding v Gamage (1915) 191 and newspapers between 23 August and 30 August 191284 had illustrations of the product for sale that included the ‘Specially Tested’ stamp. All but one referred to the patent number that had appeared in the plaintiffs’ 1912 catalogue. However, none of the advertisements used the name ‘Improved Sewn Orb’: rather the name ‘Improved Orb Football’ was used except in one advertisement where the product was referred to as ‘The Celebrated Orb Football’. All stressed that the ball was being sold at four shillings and nine pence, down from an ‘original’ price of ten shillings and sixpence. A representative of the plaintiffs visited Gamages on 29 August and in ‘an angry interview’85 objected to the advertisements, issuing a writ on 30 August. Gamages, after consulting their lawyers and declaring the offending advertisements to be a stupid mistake, agreed by letter on 31 August to stop reference in the advertisements to the patent number and to the phrase ‘Specially Tested’.86 They also issued notices to their staff and customers that they were not stocking the new ball and, indeed, letters were prepared to be sent to customers who might have relied on the ‘mistaken’ wording of their August advertisements. Subsequent advertisements appearing after the issue of the writ, which the Court of Appeal found to be unobjectionable and which it was admitted would not in themselves have given rise to an action,87 referred to the ‘Famous Orb Football’ that they were able to sell at a bargain price, having secured a big stock at a great reduction. The plaintiffs were not aware until after the close of the pleadings that the balls at the heart of the dispute were the balls they had sold to the waste rubber merchants. Initially they had complained of the standard form of passing off, that is that the defendants were selling goods as Spalding’s when they were not.88 However, the litigation eventually involved an allegation that the defendants had in effect misadvertised the discarded moulded Orb as the new Improved Sewn Orb and at a price much lower than that set by the plaintiffs. It should be noted that the plaintiffs varied the nomenclature used for their new 1912 Orb. So the Improved Sewn Orb was also at times referred to as the Improved Orb,89 the Improved 1912 Orb,90 the Orb

84 The advertisement in The Regiment though dated 31 August in fact appeared on 29 August. 85 Cozens-Hardy MR: [1914] 31 RPC 125, 134. 86 The plaintiffs’ manager agreed he had not received this letter when he issued the writ: [1914] 31 RPC 125,130. 87 Lord Parker [1915] 32 RPC 273, 287 noted that it was admitted that the subsequent advertisements taken alone would not have given rise to a cause of action. 88 Cozens-Hardy MR: [1914] 31 RPC 125, 135. And see Lord Parker: [1915] 32 RPC 273, 287. 89 By November 1912 Spalding were advertising their 1910 and 1912 versions of the Orb, side by side. The 1912 version was at this point referred to as ‘The Improved Orb’, though the patent number and the ‘Specially Tested’ stamp also appeared in the advertisement. 90 See HL: [1915] 32 RPC 273, 278.

192 Hazel Carty ootball (Patent No 15168)91 and the Specially Tested Orb.92 Indeed, both F the moulded Orb and the Sewn Orb were at times marked ‘Spalding Orb’.93 Defendants’ counsel did make the point that had the plaintiffs taken a new name for their 1912 football the difficulties that arose in the case might have been avoided.94 On the plaintiffs’ application for an interlocutory injunction the defendants undertook not to sell, advertise, offer for sale or supply Improved Orbs or Specially Tested Orb Footballs that were not of the proper description. Though the defendants contended that this met the plaintiffs’ concerns, no customer having bought the goods based on the initial advertisements, the plaintiffs proceeded to trial, seeking both an injunction and damages.95 Spalding had not entered into serious production of their new 1912 Sewn Orb: having had their fingers burnt with the moulded Orb, they had decided on caution with the new product. They proposed in effect to test the water by advertising, promoting through testimonials from players and seeking orders based on specimen footballs.96 The defendants’ advertisements appeared at the start of this campaign and the result was that Spalding largely put their campaign on hold for the next three seasons.97 So Spalding claimed lost profits on the basis that the defendants’ advertisements had ruined the launch of and subsequent marketing of their 1912 Orb.98 They also claimed damages for harm to reputation because of the inferior quality of the discarded Orbs99 and also because of the likely incorrect perception of the retailers to whom they sold Orb footballs that they were allowing Gamages to undercut such retailers’ businesses. Spalding provided evidence that one such retailer was demanding that they should reduce the price of the 1912 ball sold to them so that the price was in line with what they had (apparently) given Gamages100 while another retailer complained that 91 Letter to Duke & Son, 5 September 1912, available HL/PO/JU/4/3/626 (Parliamentary Archives). 92 In their statement of claim: see [1915] 32 RPC 273, 274. 93 See Swinfen Eady LJ in CA Inquiry [1918] 35 RPC 101, 113. 94 Kerly LJ in the Court of Appeal inquiry as to damages [1918] 35 RPC 101, 114: ‘the obvious difficulty caused by not taking a new name for the new ball’. Bankes LJ suggested (121) that though as a product the Orb had been a failure, Spalding were probably not willing to jettison the considerable sums spent on advertising the Orb. Younger J in the Inquiry as to damages underlined that they had done insufficient themselves to distinguish their new product from their old product: [1917] 34 RPC 289. 95 The defendants argued that their undertaking met what was merely a quia timet threat of harm. The defendants did not offer the undertakings to the court nor to submit to an enquiry as to damages; nor to pay costs, Lord Parker: [1915] 32 RPC 273, 287. 96 This is clear from the Court of Appeal inquiry into damages: [1918] 35 RPC 101, 108–11. 97 Court of Appeal Inquiry into damages [1918] 35 RPC 101, CA, 108. 98 Cozens-Hardy MR: [1914] 31 RPC 125, 135. 99 Gamages had received no complaints about the Orbs that it had sold (see Cozens Hardy MR: [1914] 31 RPC 125, 134). 100 Duke & Son, in a letter dated 4 September 1912. Available HL/PO/JU/4/3/626 (Parliamentary Archives).

Spalding v Gamage (1915) 193 should any of his customers see the price at which Gamages appeared to be selling the Orb, ‘they will no doubt describe us as downright robbers not tradesmen’.101 A. The Spalding Litigation Sargant J, in the High Court, found Gamages liable in passing off, and though the Court of Appeal overturned this decision, the House of Lords restored Sargant J’s judgment: the plaintiffs were entitled to an injunction and to an inquiry into damages.102 None of the courts involved felt it important that the case did not involve a source misrepresentation, but rather a misrepresentation as to the nature of the goods. All the courts were willing to consider liability based on the advertisements themselves. The key issue in the litigation was whether Gamages’ advertisements misrepresented the discarded Improved Orbs as being the balls referred to in the plaintiffs’ 1912 catalogue as the ‘Improved Sewn Orb’. This misrepresentation would also include the misrepresentation that these balls were being offered at less than half the price set by Spalding. To find A. Gamage Ltd liable the court would have to accept that the public, or at least Spalding’s commercial partners,103 would have been aware of the description and price of the Improved Sewn Orb in the 1912 catalogue as well as being aware of the defendants’ initial advertisements. The defendants’ counsel had sought to argue that the overall statements in their advertisements were only a repetition of what Spalding themselves had used in relation to the earlier versions of the Orb, which were of course the very products the defendants were in fact selling. The Court of Appeal were sympathetic to this argument and in denying liability were also swayed by the fact that none of the initial advertisements referred to the balls as ‘the Improved Sewn Orb’. Moreover, they did not believe that customers would see the patent number as having any importance.104 Further, the court believed that the agreement to abandon the initial advertisements should have been accepted as satisfactory: Cozens-Hardy MR referred to the writ being issued ‘in hot haste’.105 101 Ritson, 12 October 1912, ibid (though given the date of this complaint and the fact that that the Orb was referred to—rather than the 1912 version in particular—it could be argued that the retailer was generally annoyed at the prices being set by Spalding). They saw their options as being to abandon the sale the Orb or to order directly from Gamage. In the inquiry as to damages, the Court of Appeal were unimpressed by the plaintiffs’ witnesses—see, eg, Eve LJ: [1918] 35 RPC 101, 124. 102 The trial had lasted four days (according to Swinfen Eady LJ: [1918] 35 RPC 101, CA, 117). 103 Note Younger J [1917] RPC 289, 307: the Sewn Orb was ‘practically unknown to the public’ in August 1912. 104 Cozens-Hardy MR: [1914] 31 RPC 125, 134. 105 ibid, 134.

194 Hazel Carty However, Sargant J and the House of Lords focused on the inclusion in those initial advertisements of the 1912 patent reference and the ‘Specially Tested’ stamp. Lord Parker found: ‘anyone comparing any of these advertisements with the catalogue, or anyone with a knowledge of the catalogue and seeing the advertisements, would be led to conclude that the respondents were offering for sale at 4s 9d the identical ball catalogued by the appellants in their 1912 catalogue at 10s 6d’.106 Thus, according to Sargant J and the House of Lords the initial advertisements contained a misrepresentation and they rejected the Court of Appeal’s view that the subsequent ‘corrected’ advertisements had removed any misleading impression that might have resulted from the August advertisements. Sargant J found that Gamages’ subsequent advertisements ought to have stated that there was a mistake in their initial advertisements and that the footballs they were offering were different from those which had been described in those initial advertisements. Lord Sumner contended that ‘though they were careful to do no new mischief they left the old mischief to work’.107 Thus they held that the initial misrepresentation continued to have effect. Though it was held that this misrepresentation was ‘in its nature calculated to produce damage’,108 Lord Parker did not elaborate on the harm likely to result, so as not to prejudice the subsequent inquiry. However, he did highlight the complaint made by one of Spalding’s retailers that Spalding had appeared to have sold to him at an inflated price.109 In the subsequent inquiry as to damages, the Court of Appeal awarded £250 for lost sales (though rejecting the highly speculative amount the plaintiffs sought)110 and for harm to their reputation in the trade.111 Before turning to Lord Parker’s analysis of the tort it is interesting to point out the different judicial responses to the parties in this case of aggressive competitive practice. The defendants had argued that the plaintiffs had brought this action as a punishment for Gamages’ undercutting prices112 rather than for any real misdescription. The Court of Appeal sympathised with this argument; the

106

[1915] 32 RPC 273, 286. ibid 289. 108 Being ‘of such a nature as to give rise to a strong probability of actual damage to the plaintiffs in both their retail and wholesale trades’ [1915] 32 RPC 273, 287. 109 ibid 287. 110 At one point the plaintiffs had claimed £23,921 in damages (see Bankes LJ [1918] 35 RPC 101 CA, 119). 111 [1918] 35 RPC 101. Defendants’ counsel in Spalding contended that loss of reputation was protected not by this tort but by the tort of trade libel. However, Swinfen Eady LJ, 117, accepted that such harm was recoverable provided it was the direct and natural result of the advertising. 112 See Sargant J: [1913] 30 RPC 388, 400. 107

Spalding v Gamage (1915) 195 only case referred to by the Court of Appeal—Ajello v Worsley—confirmed that it was not tortious to advertise that you were undercutting a rival.113 Further, Phillimore LJ suggested that the angry letters Spalding received from their retailers might have been because of the high price at which Spalding were selling their Orb balls generally.114 Indeed, a more critical view of the plaintiffs, both as a party to proceedings and as traders, can be found in the discussion of the subsequent Court of Appeal that dealt with the inquiry as to damages. So Eve LJ remarked upon the ‘readiness’ of the plaintiffs’ agents and customers to attribute sharp practice to the plaintiffs ‘and to entertain feelings of mistrust and resentment towards them’. This, he believed, might have been due to the previous ‘mendacious’ promoting of the Orbs ‘which we were told were productive of everlasting complaints from customers’.115 This Court of Appeal rejected what were found to be Spalding’s exaggerated claims of possible lost profits,116 and commented upon the false statements by the plaintiffs as to the merit of the earlier Orb.117 Furthermore, both Courts of Appeal felt that Spalding had caused difficulties for themselves given that they did not take a covenant from the waste company that they should not use or sell the discarded footballs.118 However, neither Sargant J nor the House of Lords criticised the plaintiffs; rather they took a dim view of the defendants. Referring to this ‘rather unpleasant’ story,119 Sargant J was critical of the fact that Gamages’ representative did not question more carefully the scrap merchants from whom the discarded Orbs were purchased.120 He highlighted a lack of ‘plain, honest fair dealing’ about the meeting on 29 August.121 Lord Parker also stressed his disapproval of Gamages’ representative at this meeting, noting that he ‘treated the matter somewhat lightly’.122 As for the subsequent advertisements, though in themselves not deceptive, he determined that they

113 [1898] 1 Ch 274, Stirling J: no trade libel liability where the defendant retailer advertised that he had the plaintiff’s merchandise for sale at the plaintiff’s wholesale price. The defendant no longer had any in stock but claimed he expected to be able to source such pianos if necessary. 114 [1914] 31 RPC 125, 140. 115 [1914] 31 RPC 125, 126. 116 Swinfen Eady LJ [1918] 35 RPC 101 CA, 118 found no evidence that the plaintiffs had been planning an expensive advertising campaign and found that the Sewn Orbs had not proved a success in subsequent seasons. 117 Eve LJ: [1918] 35 RPC 101, 123. 118 Bankes LJ referred to their incautious disposal (121); there was similar criticism in the earlier Court of Appeal: see Phillimore LJ: [1914] 31 RPC 125, 138. 119 [1913] 30 RPC 388, 396. 120 ibid, 397. 121 ibid, 398. 122 [1915] 32 RPC 273, 287.

196 Hazel Carty ‘were hardly consistent with fair or honest trade’ and ‘in common fairness’ ought to have been framed so as to counteract any deception.123 B. Lord Parker’s Analysis It has already been noted that the majority of the judges in the Spalding litigation felt no need to engage in any discussion of the tort’s theoretical basis, but it would appear that Lord Parker had decided to provide a much needed theoretical basis for an action that occupied ‘a great deal of the time of the Law Courts’.124 A man on a mission, Lord Parker kicked off his judgment by asserting ‘I think it well to say a few words as to the principle on which such actions are founded’.125 Indeed, his mission had started some years earlier in Burberrys v JC Cording & Co Ltd (1909) where, as Parker J, he had sketched an earlier version of his more famous discussion.126 In his analysis Lord Parker confronted the uncertainties still attached to the tort (though in so doing he relied on surprisingly few cases). In his speech he underlined that the basis of a passing off action was a false representation by the defendant.127 In this he echoed the view of Lord Halsbury in Reddaway.128 Provided that misrepresentation was calculated to harm no ‘actual passing off’129 was required. As for the misrepresentation, the tort was not limited to source misrepresentations. Lord Parker specifically noted the ‘corollary’ that misrepresenting the quality or class of the plaintiff’s goods was also covered by the tort (and in fact used similar wording to that used by Sargant J at first instance).130 Reviewing (limited) case law he confirmed that the representation need not be fraudulent and actual harm need not be proved (provided ‘damages may probably ensue’). Further, he concluded that in both equity and common law the

123 In the inquiry as to damages the Official Referee had awarded £7,000—this sum being reduced by the CA to £250. Bankes LJ felt that the Official Referee had been influenced by the feeling that the defendants were ‘not playing the game according to the generally accepted rules’: [1918] 35 RPC 101 CA, 119. 124 Cutler, On Passing Off (n 42) 2. 125 [1915] 32 RPC 273, 283. His judgment was read by Dunedin. 126 26 RPC 693. Within the context of a source misrepresentation he declared (701) that ‘the principles applicable to a case of this sort are well known’ and that a property right was involved, termed ‘trade or goodwill’ or ‘trade or business’. 127 [1915] 32 RPC 273, 284. 128 See above. And Turner LJ in Burgess v Burgess [1853] 43 ER 90. 129 [1915] 32 RPC 273, 283. 130 ibid, 284. He added, ‘possibly, therefore, the principle ought to be restated as follows: “A cannot, without infringing the rights of B, represent goods which are not B's goods or B’s goods of a particular class or quality to be B’s goods or B’s goods of that particular class or quality”. The wrong for which the relief is sought in a passing-off action consists in every case of a representation of this nature’ (for Sargant J’s similar version see [1913] 30 RPC 388, 395).

Spalding v Gamage (1915) 197 r epresentation was treated as the invasion of a right. It was the invasion of a right that was the ‘subject’ of the action.131 That right had to be identified. Without referring to any authorities,132 he claimed that ‘the more general opinion’ is that the right was a right of property and that (‘if a right of property at all’) the choice for the courts seemed to be between property in the mark and property in ‘the business or goodwill likely to be injured by the misrepresentation’.133 Noting that the first possibility had been expressly rejected by Lord Herschell in Reddaway,134 Lord Parker stated his own ‘strong reasons’ for preferring the latter possibility. These were that: passing off protected beyond misrepresentations involving a name or mark or get-up (as was indeed the case in Spalding itself); Reddaway should be understood not as protecting property in the descriptive term itself, but rather imposing liability based on the deceptive use of that term; the property even in so-called common law trademarks was always accepted to be ‘transitory’, requiring continued distinctiveness in the eyes of the public.135 Two points need to be highlighted in relation to this identification of the right at the heart of the tort. First, despite the cautious words used, it was highly likely that Lord Parker accepted that goodwill was a property right.136 This can be claimed because in his earlier discussion of the tort in Burberrys he had expressly identified goodwill as property.137 Secondly, though Lord Parker referred to ‘business or goodwill’, it is contended that any reference to business in his judgment should be understood as shaped by the definition of goodwill. Goodwill—customer connection—was a concept with which the courts had become familiar when describing the phenomenon of customer attraction in commercial, tax and partnership contexts.138 Indeed, a few years before Spalding it had been defined in Commissioners of Inland Revenue v Muller & Co’s Margarine Ltd139 and accepted 131

[1915] 32 RPC 273, 284. Tregoning, ‘What’s in a Name?’ (n 4) asserts that this landmark statement on goodwill ‘on the face of it … is a rather curious statement’ because of the lack of authority and the equivocation (78). 133 [1915] 32 RPC 273, 284. 134 The year of the case is incorrectly given as 1906 in the RPC reports. 135 [1915] 32 RPC 273, 284. 136 The caution is stressed by Murray ‘A distinct lack of goodwill’ (1997) EIPR 345', 345; and Tregoning, ‘What’s in a Name?’ (n 4) 78. 137 Tregoning, ‘What’s in a Name?’ (n 4) 80, asserts that goodwill had been recognised as property by the time of Potter v Commissioner of Inland Revenue [1854] 156 ER 392. 138 Wadlow The Law of Passing-Off (n 2) 27, notes goodwill was mentioned in early passing off / trademark cases ‘because disputes were particularly likely to arise between former partners or the vendor and purchaser of a business’. 139 Lord Macnaghten in CIR v Muller & Co’s Margarine Ltd [1901] AC 217, 223–34: ‘It is the benefit and advantage of the good name, reputation, and connection of a business. It is the attractive force which brings in custom’. RG Bone, ‘Hunting Goodwill: A History of the Concept of Goodwill in Trademark Law’ (2006) Boston University Law Review 547 ‘the concept of goodwill … reified the economic value associated with patterns of repeat purchasing’. 132 Indeed

198 Hazel Carty to be ‘inseparable from the business to which it adds value’.140 Like the court in Muller, Lord Parker stressed that the right he had identified was transitory, and like Muller he stressed the link between the right he espoused and customer connection—he noted that there had to be distinctiveness in the eyes of the public even where common law trademarks were involved. It is interesting to note that business or goodwill was a phrase subsequently used in Advocaat by Lord Diplock, who within his judgment highlighted the importance of goodwill, identified as ‘a broad concept’ and expressly drew on the definition of goodwill provided by Lord Macnaghten in Muller. Thus, for Lord Diplock, also, the notion of ‘business or goodwill’ seemed to be contained within the parameters of customer connection.141 C. Spalding as Clarification Lord Parker highlighted that goodwill was the right being protected and linked that right to the misrepresentation which had always been central to the tort. In so doing, the tort was confirmed to be not limited to trademark or trade name issues, not limited to source misrepresentations and—though this was not debated within the House of Lords but rather the subsequent inquiry as to damages—not limited to lost profits142 (the defendants had tried to argue that damages for reputation loss could only be awarded in trade libel but this was rejected by the Court of Appeal in the inquiry as to damages). However, this analysis was not a reworking of the tort but rather a clarification of the elements of the tort that had been present in the unclear development of the tort over the nineteenth century. Indeed, it should be noted that his speech received the complete approval of the other members of the House of Lords.143 Lord Parker’s focus on misrepresentations calculated to deceive mirrors the accepted view of the tort by the end of the nineteenth century. His analysis that it was the misrepresentation itself that was important rather than any actual ‘passing off’ of the goods (despite the wording of the Perry principle) also drew on earlier authority. So, he cited not only Lord Halsbury in Reddaway (and before him Turner LJ in Burgess v Burgess)144 but also contended that cases such as Edelsten v Edelsten and Iron-Ox Remedy Co

140 Lord Lindley: [1901] AC 217, 235; Lord Macnaghten, 223: ‘Goodwill has no independent existence. It cannot subsist by itself. It must be attached to a business’. 141 [1979] AC 731, 741–42. 142 If goodwill was the right being protected then that would mean that the tort must protect that business goodwill in a wide sense, not just lost profits. 143 Lord Atkinson: ‘I concur in it entirely’; Lord Sumner: ‘I am in entire agreement [with Lord Parker’s statement of law]’; Lord Parmoor: ‘I concur in the opinion of Lord Parker’: [1915] 32 RPC 273, 288; 288; 289, respectively. 144 [1853] 43 ER 90.

Spalding v Gamage (1915) 199 Ltd v Co-operative Wholesale Society Ltd showed that actual passing off need not be proved as a condition precedent to equitable relief.145 Indeed, Lord Parmoor expressly agreed with this proposition.146 Further, the view that the tort protected beyond standard source misrepresentation also appeared uncontroversial to the other members of the judiciary involved in the case (as it had to Swinfen Eady J in Teacher v Levy).147 Though Phillimore LJ accepted that it was ‘a more subtle and possibly more injurious passing off’148 none of the judges in the Spalding litigation had any problem in identifying the defendant’s misdescription as being within the tort.149 What is less certain, of course, is how far Lord Parker intended to expand the misrepresentations, relevant to the tort. His speech can be read as simply referring to one particular form of misdescription (and indeed this was suggested by Lord Fraser in Advocaat).150 However, Lord Parker did note that the issue was whether the use of the mark, name or get-up was calculated to deceive, it being ‘impossible to enumerate or classify all the possible ways in which a man may make the false representation relied upon’.151 It was this open door that Lord Diplock exploited in Advocaat, stressing that Lord Parker had in fact recognised source misrepresentation to be but a species of a wider genus.152 In determining that there was a right at the heart of the tort153 Lord Parker noted that in equity relief was available not only where no actual passing off occurred but also where the representation was not made fraudulently, ‘the representation … [being] treated as the invasion of a right’. As for the common law, Blofeld v Payne confirmed that, even where no specific damage was proved, the plaintiff was entitled to nominal damages, ‘the action … treated as one founded on the invasion of a right’.154 As for the nature of this right, if goodwill was the right at the heart of the tort then it was hardly surprising that Lord Parker identified it as a property right, transitory in nature. This chimed with the view of the courts in relation to the phenomenon of goodwill, already identified in other commercial settings. So Muller accepted that goodwill was property, given it could be bought and sold, ‘acquired … in any of the different ways in which property

145

[1863] 46 ER 72; [1907] 24 RPC 425 (a decision of Parker J). real issue is, did the respondents … make representations calculated to lead to the belief that these footballs were the “Improved Sewn Orb Football”’: [1915] 32 RPC 273, 289. 147 ibid. 148 [1914] 31 RPC 125, 138. 149 Lord Parmoor expressly agreed to this [1915] 32 RPC 273, 289. 150 Advocaat [1979] AC 731, 751–52. 151 [1915] 32 RPC 273, 284. 152 [1979] AC 731, 741. 153 Lord Diplock in Advocaat, 741 noted that Reddaway v Banham did not provide ‘any rational basis for an extension’. 154 Littledale J [1833] 110 ER 509, 510. 146 ‘The

200 Hazel Carty is usually acquired’ and the exclusive right to goodwill could be vindicated ‘if necessary by process of law’.155 Moreover, the key idea that goodwill was the interest being protected, though apparently innovative,156 can be seen to be built on previous case law. Lord Parker may have resolved ‘doubts’157 that goodwill was the right being protected, but he did not appear to believe that he was introducing a new element to the tort. Rather, he purported to draw on what ‘some authorities’ said the tort protected.158 Indeed, Tregoning contends that early cases, such as Hogg v Kirby and Crutwell v Lye159 involve ‘a nascent concept of goodwill arising from the protection of trademarks and business’ and draws attention to Lord Langdale’s discussion in Perry that the defendant has no right deceptively to use the plaintiff’s mark or name ‘in order to attract to himself that course of trade or custom’ which otherwise would have gone to the plaintiff.160 Again, Lord Hatherley in Wotherspoon referred to the plaintiff having acquired ‘a name in the market’, customers being pleased with the articles bearing the name.161 Further, though for a while the courts seemed prepared to accept property in the trade mark or name, Lord Diplock contended in General Electric Co Ltd (USA) v The General Electric Co Ltd (when reviewing the history of such marks) that the property in the common law trademark had ‘special characteristics’. Essentially the property was based on the recognition by purchasers that the mark indicated source and quality so that it arose through use and would be lost by disuse. For Lord Diplock the property was ‘an adjunct of the goodwill of a business’, incapable of a separate existence from that goodwill.162 It should be noted that Lord Westbury in Edelsten (one of the cases that accepted property in the mark) stressed that the p laintiff had used the mark ‘in an extensive trade’ and had acquired ‘high reputation’.163 Thus McKenna, reviewing US and English case law, concludes that the courts did not shift from protecting the trade mark itself to protecting the producer’s

155

Muller [1901] AC 217, 223. The Law of Passing-Off (n 2) 37, ‘an inspired innovation’. 157 Star Industrial v Yap Kwee Kor [1976] FSR 256, 269; Advocaat [1979] AC 731, 741: ‘finally resolved’, Reckitt & Colman Products v Borden Inc [1990] RPC 340, 417 (Lord Jauncey). 158 In 1912 defendants’ counsel in Dental Manufacturing Co Ltd v de Trey cited Lord Parker’s analysis in Burberrys that the protection of goodwill was ‘the object of a passing off action’ and there is a subtle appreciation of that concept evident in the speech of Buckley LJ [1912] 3 KB 76, 80. This suggests that the concept was not novel. 159 [1803] 32 ER 336 and [1810] 34 ER 129, respectively. 160 Tregoning, ‘What’s in a Name?’ (n 4) 91. He notes: ‘damage to trade and profits would invariably mean damage to goodwill and this was certainly recognised in the 19th century’ (83). 161 [1872] LR 5 HL 508, 514. 162 General Electric Co Ltd (USA) v The General Electric Co Ltd [1973] RPC 297, 326–26. 163 [1863] 46 ER 72. And even though in M’Andrew v Bassett 46 ER 965 the defendant had argued that the plaintiff’s mark lacked ‘general notoriety and reputation in the market’, Lord Westbury stressed that the mark had obtained ‘acceptance and reputation’. 156 Wadlow,

Spalding v Gamage (1915) 201 goodwill as property but rather ‘goodwill always was the focus’;164 that that the mark owner’s interest, both at law and equity, was ‘in its returning customers’.165 Interestingly, he cites an American case from 1847, Partridge v Menck,166 where the court noted that ‘the complainant had a valuable interest in the goodwill of his trade or business’ and was entitled to protection against any other person, who attempted to ‘pirate upon the goodwill of the complainant’s friends or customers … by sailing under his flag …’167 However, even though this was a long-overdue clarification, it was some time before Lord Parker’s analysis was expressly recognised as settling the law on passing off. Indeed, it is worth noting that The Times law report of the decision simply focused on the misrepresentation discussion, making no reference to the concept of goodwill, let alone Lord Parker’s discussion of that concept.168 And in the year following the decision, Salmond on Torts, the leading tort textbook, simply added Spalding to a footnote on Millington v Fox (that intention to deceive was not required).169 Though by 1922 Sebastian, in his text on trademarks, drew on the discussion in Spalding,170 in the early decades after the decision, the courts often appeared content to continue with the mantra that passing off cases were simply questions of fact.171 And this might be so even where the case involved an unusual claim in passing off, as in Harrods Ltd v R Harrod Ltd (1924), a case involving non-competing parties and a false suggestion of business connection.172 However, by the 1930s there was evidence in the reported case law that some sort of framework for the tort was being sought (perhaps because the boundaries of the tort were increasingly being questioned in non-standard claims).

164

McKenna, ‘The Normative Foundations of Trademark Law’ (n 19) 1886 fn 211. ibid, 1858 fn77. 166 5 NY Ch Ann 572. 167 Wadlow The Law of Passing-Off (n 2) 37, refers to it as his ‘inspired innovation’. 168 The Times Law Report, 23 March 1915. 169 JW Salmond, The Law of Torts: A Treatise on the English Law of Liability for Civil Injuries, 4th edn (London, Stevens & Haynes, 1916) 509 fn 10. 170 LB Sebastian, The Law of Trade Mark Registration, 2nd edn (London, Stevens & Son Ltd, 1922). Parker’s earlier analysis in Burberrys was also noted. 171 Eg Masson Seeley v Embossotype [1924] 41 RPC 160. The defendant had copied the plaintiff’s price list and product names. Tomlin J saw it as obvious that this was passing off. 172 [1924] 41 RPC 74, 87. Lord Diplock in Advocaat contended that Spalding ‘led the way to recognition by judges of other species of the same genus’ in cases such as this. It should be noted, however, that Spalding was not referenced in the Harrods case: the court focused on fraud and case law involving the misleading use of similar business names. However, though goodwill as a concept was not mentioned, Sargant LJ (the judge at first instance in Spalding) stressed the need for injury to property and that ‘property’ included ‘the trade reputation of the Plaintiffs’. 165

202 Hazel Carty So in Samuelson v Producers Distributing Co Ltd173 (1932), the Court of Appeal held that the plaintiff was entitled to claim passing off where the defendant’s film was advertised so as to falsely give the impression that it was based on the plaintiff’s well-known sketch. The court rejected the contention that passing off was limited to passing off the defendant’s goods as those of the plaintiff, contending that such a standard case of passing off to be ‘merely applications by the Court of a much wider principle’,174 that of restraining ‘irreparable injury being done to the plaintiff's property’. But no reference was made to Spalding and the property involved was claimed to be that in the copyright work.175 However, by the end of this decade Spalding was cited as important.176 In Illustrated Newspapers Ltd v Publicity Services (London) (1938), an unusual passing off claim involving the defendants inserting their advertising supplement into the plaintiffs’ periodicals without consent, the plaintiffs relied on the law of passing off ‘as expounded by Lord Parker [in Spalding]’.177 Indeed, in this case Crossman J applied a modern framework to the tort, highlighting the need for a misrepresentation178 and likely harm to the plaintiff’s property in the goodwill in their advertising media. Moreover, he rejected the defendants’ argument that the tort required that a third-party deal with the defendant as a result of the misrepresentation. In Draper v Trist179 (1939) Lord Parker’s speech in Spalding was cited by Wilfrid Greene MR in relation to the focus on misrepresentation180 and Goddard LJ, though not referencing Spalding, stressed that goodwill was the property right at the heart of the tort.181 By the 1950s Spalding appeared to be more generally identified as the frame and theoretical basis for the tort. So, Lord Hill Watson in the Scottish case Haig & Co v Forth Blending Co182 and Romer LJ in RJ Reuter Co.

173

1932 1 Ch 201. Romer LJ ibid at p210. 175 It should be noted that in Sim v Heinz [1959] RPC 75, 82 Hodson LJ contended that Romer LJ ‘No doubt … had in mind the language of Lord Parker’ in Spalding. 176 Though not by Salmond—in the 10th edition, edited by WTS Stallybrass (1945) ‘the uncertainty as to the conception underlying the action’ is noted, without any reference to Spalding (594). 177 [1938] Ch 414. They also relied on the Court of Appeal discussion in Samuelson. 178 The misrepresentation being that representation of the altered copies as unaltered copies. 179 [1939] 3 All ER 513. 180 ibid, 518 ‘the right which is infringed in a passing of case is one which was regarded at law as one the mere violation of which led to damage’. 181 ibid, 526 ‘that right of property being his right to the goodwill of his business’. In Francis Day & Hunter Ltd v Twentieth Century Fox Ltd [1940] AC 112 (another unusual claim, where the title of the plaintiff’s famous music hall song was used as title of the defendant’s film) the appellants had relied on Spalding (and Samuelson) as containing the general principles of the tort, though Wright, giving the judgment of the Privy Council, did not refer to any cases and made no reference to goodwill but rather to ‘an invasion of the plaintiff’s common law rights and a disturbance of his business interests’ [1940] AC 112, 126. 182 1954 SC 35 (Court of Session Outer House), 37–38. 174

Spalding v Gamage (1915) 203 Ltd v Mulhens183 both cited Spalding as did McNair J in Sim v Heinz. He noted, in agreement with plaintiff’s counsel: ‘in Lord Parker's speech … is to be found really the whole of the essential law relating to the action of passing off’.184 Hodson LJ in the Court of Appeal in Sim declared that Spalding was ‘the leading case on this branch of the law’.185 It is not surprising, therefore, that by 1962 Wilberforce J in Norman Kark Publications Ltd v Odhams Press Ltd186 referred to the basis of the action as being contained in Lord Parker’s speech, and by 1973 Lord Diplock in Star Industrial Company Ltd v Yap Kwee Kor187 stressed that Lord Parker’s test had laid to rest ‘whatever doubts there may have previously been as to the legal nature of the rights which were entitled to protection by an action for '“passing off” in courts of law or equity’. Though courts did not necessarily cite Spalding, in effect the classical trinity focusing on misrepresentation and harm to goodwill was now established. Thus, in Advocaat (1979) Lord Diplock found ‘a rational basis for the modern tort’ in Lord Parker’s speech in Spalding.188 IV. CONCLUSION

Having provided clarity, Lord Parker’s analysis was ultimately used by Lord Diplock in Advocaat (via the so-called drinks cases) to establish extended passing off. This removed product misrepresentation from the anchor of source misrepresentation, recognising shared ‘product goodwill’ attached to a descriptive term which had come to indicate a distinct and recognisable product.189 For this development Lord Diplock relied on the fact that goodwill was a broad concept and Lord Parker, by suggesting misrepresentations beyond standard source passing off,190 had revealed a wider genus of actionable wrong.191 However, Spalding has also proved to be a landmark in the sense of a boundary; any extension of the tort is limited by Lord Parker’s analysis. Lord Diplock in Advocaat was building on the drinks cases (starting with Bollinger),192 and in two of these cases judicial reference was made to the

183

[1954] Ch 50, 94. [1959] RPC 75, 79. 185 ibid, 82. 186 [1962] 1 WLR 380 Wilberforce J, 383. 187 [1976] FSR 256 PC, 269. 188 Lord Scarman in Cadbury Schweppes v Pub Squash [1981] RPC 429, 489. 189 Advocaat [1979] AC 731, 738 ‘advocaat is a word which attracts business’. 190 Its ‘classic form’ (ibid 739). 191 ibid, 741. 192 Danckwerts J in J Bollinger and Others v Costa Brava Wine Co Ltd [1960] Ch 262 referred to Lord Parker’s speech. The subsequent drinks cases—Vine Products Ltd v Mackenzie & Co Ltd (No 3) [1967] FSR 402 (Cross J); John Walker & Sons Ltd v Henry Ost & Co [1970] 1 WLR 917 (Foster J)—did not explore the issue of group goodwill via Spalding. 184

204 Hazel Carty tort now covering a wider area of protection against ‘unfair competition’.193 But Lord Parker’s analysis—the link it requires between the misrepresentation and the valuable intangible of goodwill—prevents this from being the case.194 This limiting effect—and its importance—was acknowledged by Lord Diplock in Advocaat. He accepted, even as he expanded the tort, that protection was to be granted within the context of injured goodwill.195 To do otherwise would run the risk of ‘hampering competition by providing civil remedies to every one competing in the market who has suffered damage to his business or goodwill in consequence of inaccurate statements of whatever kind that may be made by rival traders about their own wares’.196 A similar view can be found in the speeches of Lord Scarman in Cadbury Schweppes Pty Ltd v Pub Squash Co Pty Ltd197 and Lord Neuberger in Starbucks (HK) Ltd v British Sky Broadcasting Group Plc.198 Thus the boundaries set in Spalding continue to prevent the transformation of the tort into one protecting against misappropriation or unfair competition or even the more limited reconfiguring of passing off into a general commercial misrepresentation tort.

193 In Bollinger Danckwerts J labelled the tort ‘unfair competition’ (284); Cross J in Vine Products Ltd referred to taking the tort ‘into the unmapped area of “unfair trading”’ (427). 194 Though he provided a more elaborate framework for the tort, this still had misrepresentation and likely harm to goodwill at its heart. 195 [1979] AC 731, 740. 196 Lord Diplock ibid, 742. 197 [1981] RPC 429, 490:‘competition is safeguarded by the necessity for the plaintiff to prove that he has built up an intangible property right’. 198 [2015] UKSC 31; [2015] 1 WLR 2628. Lord Neuberger referred to the balancing exercise—between the public interest in free competition and that in the protection against unfair competition at [61].

8 King Features Syndicate, Inc and Betts v O & M Kleeman Ltd (1940) JOSE BELLIDO*

I. INTRODUCTION

S

HORTLY BEFORE HIS retirement, the eminent barrister Thomas Blanco White observed that the decision in King Features Syndicate, Inc and Betts v O & M Kleeman Ltd (1940)—more commonly known as the ‘Popeye’ case—had a strong influence on his lengthy experience at the patent bar. He explained that the case, which revolved around how unlicensed toys infringed on the copyright of comic strips, had made him and his colleagues aware of the loopholes in section 22 of the 1911 Copyright Act. Those loopholes, in turn, highlighted the complexity underpinning the law of copyright and designs.1 Similarly, a decade later, Sir Hugh Laddie highlighted the case in a famous lecture that concerned the expansion of

* I would like to thank John Maher and Cara Levey for their help. In addition, I am grateful to Kathy Bowrey for stimulating discussions and corrections. Abbreviations for archival sources are as follows: AMPAS (Academy of Motion Picture Arts and Sciences, Margaret Herrick Library Beverly Hills, California); BTHA (The British Toy & Hobby Association, London, UK); CAC (Churchill Archives Centre, Churchill College, Cambridge); HMCTS (Her Majesty’s Courts and Tribunals Service, London, United Kingdom); HPA (Harry Price Archive, Senate House, University of London); JTP (Jim Tully Papers, Charles E Young Research Library, University of California, Los Angeles); MSU Spec Coll Comic Art (Michigan State University, Special Collections, Comic Art, East Lansing, Michigan); MUML (McMaster University, Mills Memorial Library, William Ready Division of Archives and Research Collections;, Ontario, Canada); NA (National Archives, Kew, United Kingdom); NARA (National Archives and Record Administration, New York); NYPL (New York Public Library); NYSA (New York State Archives, Albany); OSU (Ohio State University, Billy Ireland Cartoon Library and Museum); PA (Records of the House of Lords, Parliamentary Archives, London); RKP (Routledge and Kegan Paul, Special Collections, University of Reading); WBHRC (William Bradley Literary Agency Records, Harry Ransom Center, University of Texas); WRHP (William Randolph Hearst Papers, Bancroft Library, University of California at Berkeley). 1 TA Blanco White, ‘Fifty Years in Patents’ (1987) European Intellectual Property Review 311.

206 Jose Bellido copyright over the twentieth century.2 More recently, the case has surfaced again, helping the UK Supreme Court to decide on what was then the first decision the Court delivered on copyright law.3 The ‘Popeye’ case, in other words, has become a central trope in intellectual property. Courts in the UK and beyond have signalled it as a decisive milestone in the history of copyright4 and labelled it a ‘landmark’ decision.5 There is, therefore, little need to justify its appearance here. Situated at the interface between the law of copyright and design, the case remains significant as it left open the question of what demarcates the different branches of intellectual property rights, and legal scholars still consider it key to grasping what they consider an unsettling overlap.6 Thus, they have embarked on a doctrinal analysis of the complicated legislative history that in the twentieth century has attempted to make sense of the overlap.7 While this chapter incidentally addresses the particular economy of the interface between copyright and designs, it prefers to concentrate on the historical nuances of the controversy. The argument here is that there is much to be gained in looking at the background of the dispute, its emergence, and how it was litigated by the protagonists. When the case is appreciated not just as the landmark that it would become, but in all of the particulars of its unfolding, the case enables us to address historical issues obscured in the scholarship that attempts to fix the overlap at the normative level. First, the chapter traces the link between newspaper syndication and character merchandising that underpinned the case and bound the plaintiffs together. Second, it reflects on the way the claim was framed and the manner in which the case was decided. Finally, it follows the cascade of reactions to the decision that spilled over legislative reforms ever since, some of which already perceived the special characteristics of the case. Although there are many interesting issues surrounding its history, the chapter argues that the most significant element of the case was the particular way in which foreign licensors mobilised themselves to litigate abroad not just to protect a ‘thing’ in itself but to secure

2 H Laddie, ‘Copyright: Over-strength, Over-regulated, Over-rated’ (1996) European Intellectual Property Review 253. 3 Lucasfilm v Ainsworth [2011] UKSC 39. 4 Walt Disney Productions v H John Edwards Publishing Co Pty Ltd (1954) 71 WN (NSW) [Australia]; Midas Hygiene Industries (P) Ltd v Sudhir Bhatia (2004) 3 SCC 90: 2004 (28) PTC 121 (SC) [India]. 5 British Leyland Motor Corp. v Armstrong Patents Co [1986] AC 577. 6 TA Blanco White, Patents and Registered Designs (London: Stevens & Sons, 1947) 58–59; L Melville ‘Design Copyright in the United Kingdom’ (1982) European Intellectual Property Review 269 (Part 1) and 310 (Part 2); G Dworkin and R Taylor ‘By Accident or design? The meaning of design under section 51 CDPA 1988’ (1990) European Intellectual Property Review 33–35. 7 L Bently, ‘Requiem for Registration? Reflection on the History of the United Kingdom Registered Design System’ in A Firth (ed) The Prehistory and Development of Intellectual Property Systems: v 1 (London, Sweet & Maxwell, 1997) 3–46.

King Features Syndicate (1940) 207 and facilitate the development of particular revenue mechanisms. In that sense, the circumstances of the case can be read as a controversy that shows the ways in which the nature of copyright shifted in the twentieth century, from an exclusive right to particular copyright subject matter to a platform for commercial activities centred on the circulation of knowledge and the deployment of new kinds of expertise related to merchandising, licensing and franchising opportunities. II. SYNDICATING FEATURES

Copyright scholars have tended to centre their attention on the doctrinal question of legal categories intertwined within the case.8 Such a focus has tended to highlight the case’s importance for the copyright protection of cartoon characters in their immaterial form.9 While this emphasis is understandable, the problem is that it tends to obscure a number of issues—and in particular, the underlying practices that triggered the dispute. It is worth briefly examining the identity of the plaintiffs and their decision to litigate in the first place. Indeed, not only is the ambiguity of the law rather curious, but so is the character of the plaintiffs’ operations and their variously resilient ways of setting out and defending their claim up to the House of Lords. Such a line of enquiry reveals an American corporate-owned media network, King Features Syndicate, Inc, that brought the case to the British courts. The reference to a syndicate here is interesting not only because it was precisely this that brought the plaintiffs together, but also because the study of syndication allows us to trace the emergence of new property relations characteristic of copyright in the twentieth century.10 In fact, newspaper syndication can be viewed as a process that combined technological

8

L Melville (n 6); G Dworkin and R Taylor (n 6). See, for instance, PF Carter Ruck, EP Skone James, FE Skone James, Copyright: M odern Law and Practice (London, Faber and Faber, 1965) 87–89 (‘Making Three-dimensional objects’); J Lahore, Intellectual Property Law in Australia: Copyright (Sydney, Butterworths, 1977) 225–27 (‘Artistic Reproduction in Different Dimensions’); J Phillips, ‘Elzie Segar, intellectual property creator extraordinary’ (1986) 8 European Intellectual Property Review 12, 373–76, at 374; A McGee and G Scanlan ‘Copyright in Character’ (2003) Journal of Business Law 470–86; J Hull ‘The merchandising of real and fictional characters: an analysis of some recent developments’ (1991) 2 Entertainment Law Review 4, 124–32, at 125. 10 J Bellido and K Bowrey ‘From the Author to the Proprietor: Newspaper Copyright & The Times (1842–1956)’ (2014) 6 Journal of Media Law 2, 306–33; see also L Bently, ‘Copyright and the Victorian Internet: Telegraphic Property Laws in Colonial Australia’ (2004) 38 Loy LA L Rev 71. 9

208 Jose Bellido and legal adjustments to produce a transnational platform to distribute and service newspaper content.11 In the late nineteenth century, international telegraphic routes and the typewriter simplified international trade communications. Similarly, in the early twentieth century, technological advances like the dry mat or matrix facilitated the possibility for artwork to be licensed worldwide.12 What the invention of mats provided to the newspaper industry was better legibility and less trouble to cast types.13 William Randolph Hearst was among the first businessmen to realise the potential of linking technological changes to particular property strategies based upon circulation of content.14 In 1909 he established a newsgathering set-up, the International News Service.15 Five years later, he started King Features Syndicate, Inc, a specialised branch devoted to providing newspapers with comic strips, short stories, picture layouts, maps and puzzles.16 Although both businesses offered material to newspapers, their distinctive appeal as syndicates was their ability to distribute, and hence to offer continuity, stability and the possibility of including an ongoing series of regular ‘features’— such as comic strips, maps, special articles and crossword puzzles—in every issue.17 As one of the leading executives of King Features Syndicate recalled 11 For a history of the emergence of syndicate services in North America, see CA Johanningsmeier, Fiction and the American literary marketplace (Cambridge, Cambridge University Press, 1997) 37–63. 12 AH Wasserstorm ‘Magazine, newspaper, and syndication problems’ in TR Kupferman (ed) Copyright Problems Analyzed (Chicago, Commerce Clearing House, 1953) 159–76 at 174; see also ‘The Wood Dry Mat by Wood Flong Corporation’ (1921) I Circulation, A Magazine for Newspaper-Makers 4 (September), 3; MSU Spec Coll Comic Art. 13 ‘Premier Matrices and Stereotypes’ Circulation, A Magazine for Newspaper- Makers (1921) (n 12), 4. 14 B Procter, William Randolph Hearst (Oxford, Oxford University Press, 2007) 38; ‘Hearst Features: World’s Greatest Circulation Builders’ (1922) The Fourth State (3 June) 21. 15 ‘International News Service’ Circulation, A Magazine for Newspaper-Makers (1921) (n 12) 6. International News Services became renowned in intellectual property scholarship as the litigants in a major US case (INS v AP, 1918). For interesting works on the historical background of the case, see C Wadlow ‘Unfair Competition by Misappropriation: the reception of International News in the Common World’ in CW Ng, Bently, and G D’Agostino (eds) The Common Law of Intellectual Property: Essays in Honour of Professor David Vaver (Oxford, Hart, 2010) 307–30; RA Epstein ‘International News Service v Associated Press: Custom and Law as Sources of Property Rights in News’ (1992) 78 Virginia Law Review 85 and DG Baird ‘Common Law Intellectual Property and the Legacy of International News Service v Associated Press’ (1983) 50 University of Chicago Law Review 411. 16 D Nasaw, The Chief. The Life of William Randolph Hearst (London, Gibson Square Books, 2002) 234; WA Swanberg, Citizen Hearst (London, Longmans, 1961) 302; see also ‘Defendant’s Witnesses: Joseph V Connolly’ in ‘Record on Appeal of Segar v King Features Syndicate (NY App Div 1941)’, 111–38 at 112; NYSA (‘King Features Syndicate is a corporation, and International Features Service was part of that corporation. It was subsequently merged in it’). 17 As the newsletter of the King Features Syndicate recognised, ‘the best thing to build circulation is good features … what really gives a newspaper distinction is its features’ in WG Bryan ‘Advertising Newspaper Advertising’ Circulation, A Magazine for Newspaper-Makers (n 12) 13; see also J Tebbel, The Life and Good Times of William Randolph Hearst (London, Victor Gollancz, 1953) 117; Happy Birthday Mickey! 50 ans d’histoire du Journal de Mickey

King Features Syndicate (1940) 209 in his autobiography, the term syndication ‘cover[ed] any centralized traffic in matter desirable to publishers. Specifically, it signifi[ed] the acquisition and sale of rights to reproduce for publication the works of authors and writers’.18 By 1934 King Features Syndicate claimed it offered ‘the greatest circulation combination on Earth’.19 Although the syndicate provided heterogeneous content, some of which was free of charge,20 comic strips became the most valuable material on offer.21 In particular, they encouraged newspapers to subscribe to the service,22 as they were considered distinctive circulation-makers.23 In other words, comics were deemed crucial to selling newspapers.24 By the late 1920s, comics appeared in virtually every newspaper in the United States.25 Their specific form of storytelling and ability to lend themselves to colour brought unparalleled success and the emergence of a set of rights attached to their circulation.26 The serialised nature of comics and their presentation (Paris, Chêne, 1984) 10–13; ‘Premier Cross-Word Puzzles’ IV Circulation, A Magazine for Newspaper-Makers 18 (February 1925) 7 and ‘Arthur Wynne introduced Black Squares, Making First Modern Cross-Word Puzzle’ Circulation, A Magazine for Newspaper-Makers (ibid) 18, 41. 18 M Koenigsberg, King News. An Autobiography (Philadelphia and New York, FA Stokes, 1941) 365. 19 A McClung Lee, The Daily Newspaper in America. The Evolution of a Social Instrument (New York, The Macmillan Company, 1937) 593; B Walker, The Comics before 1945 (New York, Abrams, 2004) 186. 20 Letter from Salvador Mendoza, KFS representative in Mexico, 25 April 1940, BANC MSS 77/121 carton 34, WRHP; see also JC Long, Public relations; a handbook of publicity (New York, McGraw-Hill, 1924) 76. 21 Bradley Kelly to Joseph Willicombe, 11 August 1938 (sending the new strip ‘Hippo and Hookie’, by Elliot Caplin, for Mr Hearst’s perusal), BANC MSS 77/121 carton 34, WRHP; B Lessing, ‘Humor-Laughter-Comics’ IV Circulation, A Magazine for Newspaper- Makers 19 (April 1925), 12, 40, MSU Spec Coll Comic Art. 22 See, generally, B Lewis, ‘The Syndicates and How They Grew’ Saturday Review (11 December 1971) 67–69, TM.P51 / Folder 13.1, OSU; see also FC Betts ‘Talking of Features’ The Newspaper World (19 November 1938) 10 (‘The strip cartoon possess the widest appeal of all newspaper features’). 23 According to Hearst ‘comic pages [brought] the largest immediate circulation’ in F Older, William Randolph Hearst, American (New York and London, D Appleton-Century Company, 1936) 148; see also G Allighan ‘Features, Not News, Build Circulation’ The Newspaper World (6 August 1938) 4; ‘How to win and hold big circulation: King Features Syndicate’ The Fourth State (4 February 1922) 9; see also V Marshall ‘The Kids Go to Bat for the Kat’ II Circulation, A Magazine for Newspaper-Makers 11 (March 1923) 41, MSU Spec Coll Comic Art (considering comics as circulation magnets). 24 RC Harvey, Children of the Yellow Kid. The Evolution of the American Comic Strip (Seattle, Frye Art Museum, 1998) 17. In the late 1970s, Richard Weiner noted that ‘a large part of the income of some syndicates is from comics. Leading comics purveyors are King, Chicago Tribune-New York News, NEA, and Field’; in R Weiner, Syndicated Columnists (New York, 1977) 25. 25 B Walker, ‘William Randolph Hearst and the Founding of an Empire’ in D Mullaney (ed) King of the Comics. 100 Years of King Features (San Diego, IDW Publishing, 2015) 11–38, at 17. 26 The specific definition of the term first and second ‘serial’ rights was often disputed, not only because it elicited tensions between authors, literary agents, and publishers, but because it evidenced differences in the ways copyright ownership was negotiated in periodical and book

210 Jose Bellido as ‘strips’, with the same character appearing weekly or daily, assured them a regular spot in many newspapers, particularly Sunday editions.27 According to the newsletter of the syndicate, the reason was that, ‘a good comic series [had] the great advantage of repetition, of building up readers like a snowball’.28 While the specific means of exploiting comic strips in serial form made it difficult for the litigants to present what they saw as their property, such a routine of exploitation made them attractive and therefore contested.29 Eluding categorisation as either advertising or current news,30 syndicated comics were somewhat ‘hybrid’ features that developed a special appeal for particular audiences such as women and children.31 To a great extent, the process of syndication enabled comics to be turned into assets.32 The value of the property emerged from the syndicated service as it was performed,33 that is, as it arose from the relationships between the syndicate, the newspaper subscribers and their readership.34 As some historians have noted,

publishing practices in the UK and the USA. For instance, see the discussions at the Publishers Association (UK) in RJL Kingsford, The Publishers Association 1896–1946 (Cambridge, Cambridge University Press, 1970) 126. 27 Letter from Frank J Markey to William Randolph Hearst, 28 July 1937 (‘offering Rube Goldberg’s latest comic creation, Lala Palooza’ that already appeared in the Detroit News, Milwaukee Journal, Syracuse Herald, Kansas City Journal Post, etc’), BANC MSS 77/121 carton 34, WRHP; see also King Features Syndicate, Inc v Charles L Bouvé, Register of Copyrights DC, D of C (12-18-1940) 48 USPQ 237 (regarding the registration of their magazine King Features Illustrated Weekly, a weekly sold to be bound with newspapers and containing independent and distinct contributions such as comic strips and special articles). 28 A Brisbane, ‘Why are Comic Pictures Necessary in Sunday Newspapers?’ I Circulation, A Magazine for Newspaper-Makers 3 (July 1921) 7–8 at 8, MSU Spec Coll Comic Art. 29 ‘Strip-Tease Cartoons’ Games & Toys (June 1937) 56 (‘to-be continued’). 30 Boyd Lewis defined them as ‘that part of the newspaper content which is not “spot: or immediate news (both local and international), not advertising, and not the paper’s own editorial interpretations’ in B Lewis ‘The Syndicates and How they Grew’ Saturday Review, 54 (11 December 1971) 67–69. 31 A Brisbane ‘Why are Comic Pictures Necessary in Sunday Newspapers?’ Circulation, A Magazine for Newspaper-Makers (n 28); ‘How many Syndicated Features?’ The Newspaper World (12 September 1936) 34; ‘Listen to Me, Provincial Press!’ The Newspaper World (10 June 1939) 13 (announcing the value of comic strips to ‘revitalise your children’s corner’); A Jordan and W Black ‘Which Sells the most Newspapers? Humor and Comics or Heart Interest’ V Circulation, A Magazine for Newspaper-Makers 24 (May 1926) 26–27, MSU Spec Coll Comic Art. 32 For instance, having articles mimeographed, sent to agents and handling them abroad, see John A Brogan, Jr. to Jim Tully, 20 June 1938, Folder 37, Box 13, Collection 250, JTP; see also ‘King Features Syndicate Ready-Print Comics’ Circulation, A Magazine for NewspaperMakers (n 31) 47. 33 John A Brogan, Jr. to Jim Tully, 29 June 1938 (appraising the articles), Folder 37, Box 13, Collection 250, JTP; see also VH Polachek ‘Over a Million’ II Circulation, A Magazine for Newspaper-Makers 11 (March 1923) 10, MSU Spec Coll Comic Art (showing the links between syndication and merchandising). 34 This was nicely captured in the newsletter published by King Features Syndicate when it was suggested that ‘circulation is the opposite of congestion. In a free flow, either of blood or ideas, there is vitality and advantage. Newspapers and readers react upon each other. A narrow

King Features Syndicate (1940) 211 the creative process of comic strips was often influenced by the syndicate’s perceptions of commercial angles and audience reactions.35 It was this dynamic way of generating value and exposure via instalments that attracted film entrepreneurs and toy manufacturers, obviously interested in the popularity of regular characters.36 Recognition of the special characteristics of syndication, and the opportunities it afforded, is instructive for the analysis of the intricacies of this case. It is only by looking at syndication that one gets a sense of the spectrum of ownership and the interesting territorialisation unveiled by the case. The property in question and the controversy it generated would not have existed if it had not been not surrounded by such distinctive forms of service and platform, which triggered different environments of distribution, use and exploitation.37 The arrangement made between King Features Syndicate and Disney in January 1930 was arguably one of the key historical events in the rise of Mickey Mouse as a merchandising legend;38 but another great syndicate success in the early thirties was Popeye.39 It was the exploitation of this cartoon character that generated the dispute between the American syndicate and the British defendants, a toy company called O & M Kleeman Ltd, based in Redcross Street, London.40 In June 1938, the writ whereby the action began was issued. The plaintiffs included both King Features Syndicate and Elzie Crisler Segar, the author of the cartoon. Their claim was for an injunction, damages and other relief for the infringement of copyright in the Popeye cartoons as a result of the making of unauthorised models, photographs, drawings, circulation is likely to mean a narrow newspaper. A big audience sends through, by a kind of wireless, a bigness of inspiration’ in ‘The King and the Big Bunch’ Circulation, A Magazine for Newspaper-Makers (n 12) 9. 35 For instance, Robert C Harvey writes that ‘[s]peculation has it that Hearst told Segar to tone down the violence of the strip. Judging from the strip itself, this advice was probably handed down to the cartoonist in early 1933’ in RC Harvey, The Art of the Funnies. An Aesthetic History (Jackson, MS, University Press of Mississippi, 1994) 167. 36 ‘Cameo’s Popeye Doll’ Playthings (March 1936) 5; ‘Popeye: Sand Toys’ Playthings (January 1927) 18; ‘Popeye Dolls’ Playthings (March 1937) 8; ‘Popeye Toy Filled Stockings’ Playthings (April 1937) 65; ‘Popeye Toy Projector’ Playthings (April 1937) 82. 37 As the syndicate agent in London recognised ‘we sell many cartoons. Each is a fine example of the feature. Not only is there behind them an unrivalled knowledge of the strip cartoon, but there is an organisation. No single artist is responsible for any one’; FC Betts, ‘Talking of Features’ The Newspaper World (19 November 1938) 10. 38 M Barrier, The Animated Man: A Life of Walt Disney (California, University of California Press, 2007) 83; Happy Birthday Mickey! (n 17) 10; ‘Merchandising Mickey Mouse’ The Film Weekly (1 November 1934) 18. 39 ‘The Funny Papers’ (1933) Fortune Magazine 45–49 at 43; see also R Goulart ‘The Glory Days: Or, Believe it or Not!’ in D Mullaney (ed) King of the Comics: 100 Years of King Features (California, IDW Publishing, 2015) 105–98 at 123. 40 For a brief history of the company, see H Kleeman, ‘Pioneers in Plastic. The Kleeware Story’ (Plastic Warrior, 2008) 3; H Kleeman ‘The Kleeware Story’ plastiquarian reprints from no 9, winter 1991 and Merchant Adventures 1905–1922. The Story of O And M Kleeman Limited (London, Newman Neame, 1955) (thanks to Avril Kleeman for providing me with a copy of this publication).

212 Jose Bellido brooches, toys and other articles that reproduced the Popeye figure of the said cartoons and/or selling or offering the same for sale.41 The claim was controversial on several grounds. Firstly, it was not clear whether or not a three-dimensional representation of an artistic work (in this case, the comic strip) constituted a copyright infringement. Although the 1911 Copyright Act offered a particularly broad interpretation of the scope of copyright, it was silent on this point. Secondly, in this case, there was no direct copying of the comic strip itself; the defendant’s source was another (licensed) Popeye toy. Thirdly, copyright law had typically been imagined as excluding the protection of manufactured or industrial objects. Lastly, it was not clear what obligation the copyright owner owed to the licensees and in this case the licensees had not registered the designs. A few months after the claim was lodged, as the parties were busy preparing for the trial or its settlement, there came an unexpected twist. On 13 October 1938, Elzie Crisler Segar, who had co-joined King Features as a plaintiff, died.42 Some scholars have speculated that the case might have been decided differently had Segar been alive through the proceedings.43 These writers have assumed that evidence of the author’s original could be called upon to determine if design law would have been applicable from the outset. Instead, Segar’s death caused the plaintiffs to amend the statement of the claim after quickly appointing a literary and editorial agent, Frank C Betts, as Segar’s ‘personal representative’.44 The appointment allowed the syndicate to address inheritance rules and strategies to secure continuity and avoid any problems the death might otherwise have caused to the claim. In particular, the plaintiffs’ solicitors proved Segar’s will in the Probate Registry of the High Court of Justice in England with two codicils annexed that were granted out to Betts.45 While this was a smart move to guarantee the strength of the claim, it did not pass unnoticed by the defendants, who also focused on Segar’s death in their attempt to break the chain of title.46 41 ‘Statement of Claim’ in King Features Syndicate Inc and another v O & M Kleeman (1941), HL/PO/JO/10/10/1236/1211, PA. 42 King Features Syndicate Inc v O & M Kleeman Ltd [1940] Ch 806 at 824 (CA) per Luxmore LJ. 43 H Laddie, P Prescott and M Vitoria, The Modern Law of Copyright (Butterworths, London, 1980) 154 (‘It would have interesting if the artist in the Popeye case had been in a position to give evidence; unfortunately, he was no longer alive’). 44 ‘Popeye the Sailor: Copyright Dispute’ The Times (21 March 1940) 10. 45 ‘Segar, Elzie Crisler’ 22 November 1939 (Date of Probate), Her Majesty’s Courts and Tribunals Service (HMCTS). 46 The move to challenge the title appeared to have been strategic since the property relationship between the parties was under considerable stress. In August 1939, the widow of the late Elzie Crisler Segar, Myrtle Annie, had sued King Features Syndicate because the corporation ‘did not account to her for all monies, benefits and profits derived by it from the licensing of the characters’. She claimed that the contractual breach had been so material and substantial that there has been a failure of ‘consideration’ and therefore her case argued for the property

King Features Syndicate (1940) 213 III. NOVELTY RIGHTS

Incorporating Frank C Betts into the claim and appointing him as Segar’s personal representative constituted an interesting and somewhat ironic twist, as he had played a central role in the emergence of the dispute. Since N ovember 1935, he had been Hearst’s man in London, replacing George A llison (1884–1957), who had represented the syndicate in its early expansion into Britain.47 The syndicate relied on a network of local agents in order to allow comic strips and other features to appear across multiple newspapers.48 These networks were created with the knowledge of the ways in which news traffic developed as communications systems expanded and improved.49 As a result, the syndicate was careful to take into account local idiosyncrasies and the habits that held readership when expanding into d ifferent territories.50 When George Allison left the syndicate to manage Arsenal football team in 1934, Betts appeared the ideal candidate to replace him in handling syndicated material in London.51 With a thorough knowledge of British communications and railway systems,52 his background made him an unusual agent, certainly atypical in the literary field.53 In the late 1920s, as part of the Betts-Binmore agency, he had initiated a few innovative ideas, including selling replicas of historical documents such as the Magna Carta

rights in Segar’s comic characters to be restored and returned to her; see Myrtle Annie Segar v King Features Syndicate, 262 App Div 221 (NY App Div 1941). Anyone who reads the transcripts can see how tense the relationship was between Mrs. Segar and King Features Syndicate and how unpleasant and distressful seems to have been Mrs Segar’s examination and cross-examination while on the witness stand; see ‘Plaintiff’s Witnesses: Myrtle Annie Segar’ in ‘Record on Appeal of Segar v King Features Syndicate (NY App Div 1941)’ 21–45, especially at 29–30, NYSA. 47 L Pizzitola, Hearst over Hollywood: Power, Passion, and Propaganda in the Movies (New York, Columbia University Press, 2002) 135. 48 See, for instance, ‘The English Press in South America’ (1932) Newspaper World and Advertising Review 48 (reporting Argentine’s KFS representative, Percy Foster). 49 ‘How the News Trains are Run’ The Newspaper World (22 January 1938) 62. 50 AI Gates, ‘The Habits that Hold the Reader’ Circulation, A Magazine for NewspaperMakers (n 12) 10 (discussing a survey conducted in Columbia University regarding reading habits and attitudes to newspapers in New York). 51 In 1949, Betts became chairman of the London Press Club. Founded in 1882, the club was a major communications and newspaper hub for socialising. For Betts’ agency, the club became a suitable place to introduce authors and publishers; see letter from Alec Harrison (Betts’ editorial manager) to J Enoch Powell, 9 April 1954, POLL 1/4/14, CAC. 52 FC Betts, Railways and Railway Securities (London, Mortimer, Harley & Co Limited, 1922). 53 The typical British literary agency was Curtis Brown, Ltd. The agency had been started by the London correspondent for the New York Press, Curtis Brown. Christine Campbell Thomson’s account of her career gives an interesting insight into the workings of the literary agency; see C Campbell Thomson, I am a Literary Agent. Memories Personal and Professional (London, Sampson Low, Marston & Co, 1951).

214 Jose Bellido on vellum paper.54 Moreover, his expertise as a go-between had been predominantly cultivated in finding possibilities for newspaper content, seeking opportunities in popular markets for new ‘serials’.55 In fact, newspaper content suitable for serialisation, such as spirit photographs and psychic investigations, was part of his portfolio and served to connect him with Hearst’s publishing networks.56 By the late 1920s, Betts had become one of the few local agents with experience in exploiting the worldwide fragmentation of publishing and film rights.57 It was not just that he could move easily from Henrietta to Fleet Street, the two areas of London where these contracts tended to be negotiated;58 it was also that in seeking new markets he had developed his own professional contacts in Paris, Hollywood and New York.59 Therefore, if there was anyone able to understand the commercial and legal complexities of syndicating material in Britain and beyond, it was Betts, who was then in business on his own account after incorporating his agency as a limited company in 1932.60 However, the point worth highlighting here is that he was appointed as the representative of the syndicate, and not the cartoonist. He only became Segar’s representative immediately after the cartoonist passed away.

54

‘Authors and their Books’ T.P.’s Weekly (26 March 1927) 751. decades later, the literary agent Andrew Dakers described Frank C. Betts, Ltd as a firm that ‘has a high reputation as specialists in the serial, newspaper and syndication fields, operating throughout the world’ in Andrew Dakers (Frank C Betts) to Vera Brittain, 28 September 1951, Vera Brittain Box 101, MUML. 56 Harry Price to Frank C Betts, 26 January 1933 (concerning Harry Price’s photographs used by Hearst), HPD/4A/2, HPA. For instance, King Features Syndicate distributed the work of James Oppenheim, who had popularised Freud and Jung’s work in the United States; see ‘Your Dreams Analysed by James Oppenheim, King Features Syndicate’ (1923) II Circulation, A Magazine for Newspaper-Makers 12 (7 April), MSU Spec Coll Comic Art. 57 ‘Film Rights: The Betts-Binmore Agency’ (1929) TP’s and Cassell’s weekly (20 July 1929) 370. This combined expertise was increasingly important because, as Stanley Unwin noted, ‘with the advent of “new” rights of many kinds, the management of literary property has become a much more complicated and technical business’; in S Unwin, The Truth about Publishing (London, Unwin Brothers, 1929) 300. 58 That mediating role between film and newspaper centres was surely rare since, according to the perception shared by some American journalists, Fleet Street still operated as a closed and traditional community, reluctant to adapt to new technological changes; see F Dillon ‘Fleet Street—with the Accent on the Fleet’ Circulation, A Magazine for Newspaper-Makers (n 28) 24–25; see also DM Church ‘More News Than All—and Better than the Best’ Circulation, A Magazine for Newspaper-Makers (n 33) 38. 59 JN Gough (Frank C Betts) to George Routledge & Sons, 17 October 1935, RKP 22/8; see also Frank C Betts to William Bradley (Paris), 17 August 1934, Box 222/Folder 6, WBHRC (regarding the translation of a Chaplin Series). 60 The principal objects for which the company was established were: ‘to carry on business as press agents, literary and editorial agents, news agents, proprietors and publishers of newspapers, journals, magazines, books, and other literary works and undertakings and to promote and encourage the publication of books, pamphlets or periodicals by the general publishing trade’; Memorandum of Association (Frank C Betts), 21 June 1932, Company Number 00266361, Companies House Archives. 55 Two

King Features Syndicate (1940) 215 The dispute between the plaintiffs and O & M Kleeman also evidenced the distinct historical connection being forged between newspaper copyright syndication and character merchandising.61 King Features S yndicate had begun offering comic strips not only to newspapers but also to film entrepreneurs and toy manufacturers.62 In fact, the Fleischer Studio’s a nimated version of the Popeye cartoon, distributed by Paramount, is seen by some historians as the result of a merchandising deal.63 A number of factors appear to have contributed to this commercial and legal expansion. One that seemed to have triggered the steady move towards new fields was a drop in paper consumption during the late 1930s.64 Arguably, this forced the syndicate to look beyond newspapers to exploit its content. Also associated with the shift towards toys were the successful forays of comic strips into the relatively new media of cinema.65 The rise of the motion picture industry and its particular success in converting comic strips into animated cartoons ostensibly contributed to the renewed popularity of comic strips.66 While this prompted several contractual intricacies between the syndicate and animation studios about how to test, define and exploit cartoon characters such as Popeye and Bluto,67 the interaction of technological, economic and cultural factors facilitated a feeling amongst

61 C Morcom, ‘Character Merchandising—a right, or mere opportunity?’ (1978) European Intellectual Property Review 7. 62 ‘Krazy Kat, Barney Google and Popeye Toy Projectors, copyright KFS and manufactured by Excel Projectors (Chicago)’ Playthings (April 1937) 82; ‘Popeye: Fisher-Price Toys, Inc, copyright KFS’ Playthings (October 1936) 9; ‘Popeye Excel Projectors, copyright KFS’ Playthings (December 1936) 7. 63 T Hollis, Toons in Toyland. The Story of Cartoon Character Merchandise (University Press of Mississippi, 2015) 18; see also ‘Plaintiff’s Witnesses: William L Brennan’ in ‘Record on Appeal of Segar v King Features Syndicate (NY App Div 1941)’, 71–104, at 72, NYSA. 64 This not only affected newspapers but paper manufacturers in general. Percy Forster to John A Brogan, 11 December 1939, Folder 37, Box 13, Collection 250, JTP. 65 See, generally, M Barrier, Hollywood Cartoons: American Animation in Its Golden Age (Oxford, Oxford University Press, 1999). Moses Koenigsberg, chairman of KFS, saw these forays as ‘natural and expected’ developments of the ‘cartoon industry’ in ‘Affidavit of Moses Koenigsberg’ in King Features Syndicate Inc v Rudolph Fleischer et al, Southern District of New York Equity, Case Docket #26-397, NARA. 66 L Cabarga, The Fleischer Story (New York, Da Capo Press, 1988) 82–139; S Culhane, Talking Animals and Other People (New York, St. Martin’s Press, 1986) 62–63. For an example of the ways in which the syndicate imagined the influence of films into their serials, see ‘A New Laugh-Serial by Witwer! Fighting Blood. King Features Syndicate’ Circulation, A Magazine for Newspaper-Makers (n 19) 2, MSU Spec Coll Comic Art (‘This new serial by HC Witwer will bring Witwer fans from magazines, motion picture theatres and book stores into your circle of regular readers and subscribers’); see also GS ‘Bonzo Makes his Bow: The Famous Studdy Dog becomes a Film Artist’ (1924) The Toy Trader (December) 44–45. 67 The contract between Fleisher and the syndicate signed on November 1932 is described in R Fleischer, Out of the Inkwell. Max Fleischer and the Animation Revolution (Lexington, KN, The University Press of Kentucky, 2005) 53–55; see also Hollis, Toons in Toyland (n 63) 18–20.

216 Jose Bellido toy manufacturers that by associating their products with these popular characters they could ‘reap the full benefit of tremendous publicity— publicity that was paid by someone else’.68 Hence, the overall presumption was not just that comics contributed to the sale of newspapers but that comics also ‘[sold] toys’.69 Aware of this commercial opportunity, the syndicate promoted Popeye at the New York World’s Fair in 1939,70 and used the impending release of the animated version of the cartoon as a timeframe to build up a merchandising strategy to boost its licensing potential.71 Coordinating commercial activities with film releases was one of the marketing operations to expand into different fields.72 Following the example set by Disney, which opened its London merchandising offices in 1933,73 the syndicate decided to appoint Frank C Betts to sell newspaper content and to address the incipient demand from toy manufacturers in Britain.74 In the late 1930s, he persuaded newspapers such as the Daily Mirror to include Popeye as a regular feature.75 Immediately afterwards, toy manufacturers started to apply for licences to reproduce the character in three-dimensional form.76 Although the syndicate had been successful in the US courts in litigating that copyright protection was available for characters portrayed in cartoons,77

68 AM Loewenthal ‘Hitch your Product to a Star’ Playthings (April 1936) 201; see also ‘Cartoon Characters Make Hit’ Playthings (August 1935) 57; ‘Cartoon Characters for American Needlecrafts’ Playthings (July 1933) 66 (‘The makers feel that the widespread circulation and popularity of the cartoons has created a ready market for soft toys’). 69 ‘Miniature Famous Cartoon Characters’ Playthings (June 1929) 73; ‘Cartoon Picture Puzzles’ Playthings (March 1933) 52; ‘Comics sell toys’ Playthings (September 1936) 150; ‘Cartoon Characters will invade Toyland’ Playthings (October 1936) 78–79; ‘Strip-Tease Cartoons’ Games & Toys (June 1937) 56 (‘the publication of this cartoon cannot fail to interest dealers, for the Daily Mirror has a nation-wide circulation and the adventures of P opeye and the Jeep will be followed closely by reader of that paper’). 70 ‘King Features Syndicate, Inc. Popeye Funny Ship model (1939)’ in Box 541, Folder 1, MssCol 2233, Manuscripts and Archives Division, NYPL. 71 ‘The Toy Merchandising Field’ Playthings (March 1935) 146 (Fleischer); ‘Exclusive Movies: Popeye and Betty Boop’ Playthings (April 1935) 97. ‘Popeye in Two-Reel Color Short’ The Film Weekly (25 February 1937) 32. In fact, some commentators considered the case to be an infringement of what they thought to be ‘a comic cinema figure (Popeye the Sailor)’; see B Cloutman and FW Luck Law for Printers and Publishers (London, Staples Press, 1949) 118. Similarly, Disney was publishing film release dates to attract toy manufacturers; see ‘Snow White and the 7 Dwarfs: Release Dates’ Games & Toys (August 1938) 53. 72 G Byrnes ‘Reg’Lar Fellers for Animated Cartoons’ Playthings (March 1936) 84. 73 ‘George Kamen appointed London Representative for Kay Kamen, Inc’ Playthings (July 1933) 60. 74 FC Betts ‘Talking of Features’ The Newspaper World (19 November 1938) 10 (‘The strip cartoon possess the widest appeal of all newspaper features’). 75 Popeye’s first appearance in Britain was at the magazine The Jolly Comic (April 1937) and was then syndicated to the Daily Mirror (May 1937) and The Sunday Pictorial newspapers; see ‘Strip-Tease Cartoons’ Games & Toys (June 1937) 56; ‘Popeye now appears every day in the Daily Mirror which is read by millions’ Games & Toys (ibid) 39. 76 King Features Syndicate, Inc v O & M Kleeman, Limited [1940] 1 Ch 523, 529. 77 King Features Syndicate v Fleischer, 299 F 533 (2d Cir 1924) referred to in King Features Syndicate, Inc v O & M Kleeman, Limited [1940] 1 Ch 523, 525.

King Features Syndicate (1940) 217 the legal landscape in Britain was markedly different.78 As its counsel noted, this specific controversy raised questions on the construction of the Copyright Act (1911), which had not yet been decided in the British courts. A previous case brought by a British toy maker, Dean’s Rag Co—arguably the first local attempt by a licensee to sue for design infringement of a cartoon character—had proved unsuccessful.79 When tested in court, the UK design registration held by Dean’s ultimately provided little protection for Mickey Mouse because, as the judge said, ‘by registering the design of Mickey Mouse the plaintiff company had not obtained a monopoly of all designs of Mickey Mouse, and if anyone wanted to apply Mickey Mouse to a toy he could do so’.80 Interestingly, the decision revealed that licensing and merchandising activities had rendered some aspects of design registration meaningless.81 For instance, the novelty criterion in design law was so narrowly circumscribed that it imperilled the emergence of commercial possibilities. In other words, the context of design law contained significant constraints, granting toy licensees a very thin protection.82 While this could be seen as part of the wider history of denigration of designs in the fabric of intellectual property law,83 the fact is that merchandising activities were troublesome for more immediate reasons. One could argue that the Dean’s Rag decision had opened an expectation gap in ‘shielding’ merchandising licences.84 Licensors and copyright owners were looking to protect the merchandising arrangements, since merchandising activities were becoming increasingly problematic, as they were fundamentally based on a practical attempt

78 ‘Mr. E. MacGillvray, K.C., who represented King Features Syndicate and Mr. Betts, said the case was of considerable importance, both to the parties and to the public, because of the general principles involved. As he conceived it, the cause raised a question, in connection with the construction of the Copyright Act, which had not yet been decided in the courts’ Games & Toys (April 1940) 80. 79 Deans Rag Book Company Limited v Pomerantz and Sons (1930) 47 RPC 485; ‘Mickey Mouse in Court’ The Times (18 July 1930) 5; ‘Mickey Mouse Whiskers: Alleged Infringement of Design’ The Times (19 July 1930) 20; ‘Mickey Mouse and the Albert Memorial’ The Evening Standard (18 July 1930) 11. 80 ‘Mickey Mouse Designs: No Infringement’ The Times (23 July 1930) 155; ‘The Mickey Mouse Case’ The Toy Trader (July 1930) 18; ‘Mickey Mouse Designs: No infringement’ The Manchester Guardian (23 July 1930) 15. 81 One of the earliest discussion where patent agents already identified the source of trouble is found in ELW Byrne ‘An Aspect of Copyright’ Transactions of the Chartered Institute of Patent Agents, Session 1923–1924, 215–23. 82 ‘Discussion on Mr Byrne’s Paper’ Transactions of the Chartered Institute of Patent Agents (ibid) 224–25. 83 On this history, see B Sherman and L Bently, The Making of Modern Intellectual Property Law (Cambridge, Cambridge University Press, 1999) 163–66. 84 See, for instance, ‘Things I see and Hear’ The Toy Trader (April 1938) 8–9; ‘A friendly Warning!’ Games & Toys (July 1930) 77; ‘Limits of Copyright’ (1940) The Law Journal 13, 12.

218 Jose Bellido to develop commercial angles from miscellaneous sources.85 As a result, these disputes became increasingly difficult to resolve in court, which were more concerned with referring to statutory provisions than investigating the emergence of new legal and commercial expectations.86 In fact, merchandising and licensing operations inscribed the assessment of novelty into the specific relationship between licensor and licensee. There is no better example of this than the way in which Frank C Betts used to offer the ‘property’ to potential licensees. He described the offer in terms of ‘novelty’ or ‘toy rights’,87 by which he meant the local opportunities afforded by the introduction of novelty into different product lines.88 Such vocabulary was not just limited to Betts but had also started to appear in licensing agreements and adverts in trade magazines.89 The newness conveyed and offered through licensing and merchandising operations was the creative incorporation of the comic or film character into the offerings of specific manufacturers and retailers such as items exclusive to specific department stores.90 The description of the character to prospective licensees emphasised the configuration of novelty as something never seen before in Britain, and was entwined in an effort to issue licences rapidly so that the licensees could capitalise on the character’s popularity at the moment of introduction, thus expanding the association with the character to consumer products such as candy, toys, watches, board games, stationery

85 ‘Defendant’s Exhibit O (1): Statement of Royalties due E.C. Segar, 21 June 1938’ in ‘Record on Appeal of Segar v King Features Syndicate (NY App Div 1941)’, 189–90, NYSA; ‘Merchandising Angles in New Disney Films’ Games & Toys (August 1938) 52. 86 It took some time for the British courts to fully consider and recognise these practices. Perhaps the first case we can appreciate some explicit acknowledgment is ‘Rawhide’ trade mark [1962] RPC 133. 87 This is precisely the way in which King Features Syndicate defined the property when negotiating with artists and licensees; see letter from JV Connolly to EC Segar, 5 July 1929 in ‘Defendant’s Exhibit M’ in ‘Record on Appeal of Segar v King Features Syndicate (NY App Div 1941)’, 787, NYSA. 88 The Class/Design Registration did not necessarily match the specific product lines as envisaged in the arrangements; ‘We are prepared to issue licences for novelties embodying this character and we shall be glad to know the precise novelty you have in mind’ in FC Betts to O&M Kleeman, Ltd, 13 March 1937, HL/PO/JO/10/10/1236/1211, PA. 89 ‘If it’s new—they’ll buy it!’ Playthings (October 1931) 75; ‘The new 1935 line of Transogram toys will be completely finished by the toy fair […] In addition the firm has also signed a contract with King Features for Pop-Eye bubble sets and will feature a complete line of this merchandise’ in ‘Scrappy, Pop-Eye and Orphan Annie with Transogram’ Playthings (March 1935) 160. 90 ‘Bar-Zim introduces new Popeye Nailing Sets’ Playthings (August 1936) 90; ‘Miller Rubber creates Popeye Toy’ Playthings (February 1935) 60; ‘Many new Popeye Lines by Cecil Coleman: Copyright King Features Syndicate’ Games & Toys (January 1938) 2–3. In the United States, King Features often worked with distributor George Borgfeldt & Company; in ‘Affidavit of Frank A Klaproth (manager of the Toy Department of George Borgfeldt & Co)’ in King Features Syndicate Inc v Rudolph Fleischer et al, Southern District of New York Equity, Case Docket #26-397, NARA.

King Features Syndicate (1940) 219 items or clothing.91 The novelty space meant that those who were interested in these arrangements had to compete with others in order to obtain a licence for a particular line. That novelty and its value depended on the exposure generated by the character’s circulation in a given newspaper, and by the launch of a related film version in Britain; the syndicate operated on the basis of having to close deals as soon as possible—to a greater or lesser degree, the value of the property was perishable because it could be diminished or even destroyed by an unauthorised release.92 Other consequences of this particular understanding of novelty can also be distinguished. In legal terms, the shift precipitated by merchandising practices meant that novelty in relation to toys became a geographical and temporal construct.93 In other words, it was assessed by local traders, taking into account the future potential of the cartoon or film character. Toy manufacturers contributed to this transformation because they realised that the most valuable toys were those that were ‘new’—that is, those that were first to incorporate cartoon or film characters.94 This constitutive transformation of the property also triggered an arguable shift in the meaning of toys and play that occurred throughout the twentieth century. Children’s activities and social expectations were undoubtedly affected by these practices. It might be suggested that playing with traditional toys, unless considered a novelty, began to be regarded as old-fashioned. IV. JAPANESE TOYS

Seen against this background, it is clear that there was much more at stake in the Popeye controversy than whether or not the toys were a copyright infringement. Perhaps the main problem in understanding the legal case today is not the intricate statutory provisions; the feature that sets the case apart is the complex and diffuse circumstances around which the claim was framed. As the law report seems divorced from the circumstances in

91

‘Popeye Rubber Stamps’ Playthings (September 1936) 145. Monmonier, Maps with the News. The Development of American Journalistic Cartography (Chicago, University of Chicago Press, 1989) 77. 93 For different understandings of novelty in relation to patent law, see M Biagioli ‘Patent Specification and Political Representation: How Patents Became Rights’ in M Biagioli, P Jaszi and M Woodmansee (eds) Making and Unmaking Intellectual Property: Creative Production in Legal and Cultural Perspective (Chicago, University of Chicago Press, 2011) 24–40. 94 ‘Popeye Novelties by Cecil Coleman, Ltd’ Games & Toys (December 1937) 1; ‘A Star is Born: Popeye by Cecil Coleman, Ltd; Copyright King Features Syndicate (1929)’ Games & Toys (January 1938) 1; ‘Many new Pop-Eye Games by Cecil Coleman, Ltd’ Games & Toys (February 1938) 2; ‘They’re New; They’re Best Sellers: Popeye Games, Toys and Crackers by Cecil Coleman, Ltd’ Games & Toys (March 1938) 1; Games & Toys (June 1938) 2. 92 M

220 Jose Bellido which the intangible property was constituted, and acquired its force, it is somewhat difficult to see the dynamic ways in which property and contract were interrelated and the ways in which this interaction precipitated the conflict. For instance, given the centrality of those whose commercial interests and relationships were vulnerable, one of the most interesting aspects of the dispute was the absence of the licensees in the claim. Although they were referred to briefly in the decision, neither Cecil Coleman Ltd nor Moritz & Chambers were incorporated to the claim.95 Such an incorporation would probably have made the complex issues bound up in the relationships between licensors and licensees more visible. In fact, the claim had been preceded by a series of events that put the defendants, O & M Kleeman Ltd, in a compromised position. A year before the writ, the Kleemans had approached the company that they believed to be the British copyright owner in order to obtain a licence for the marketing of Popeye: Paramount Pictures.96 After receiving a letter from Frank C Betts offering them an array of options,97 the company dismissed it, responding that they were not interested in handling ‘the line under the conditions mentioned by you’.98 The Kleemans seemed to have been acting on the legal advice that they could lawfully make Popeye articles without any licence.99 The rejection of the offer in such a way would have seemed outrageous to Betts, and the Kleeman’s response seems to have contributed to the plaintiffs’ decision to litigate. In other words, the conflict arose from the rejection of the offer and, more importantly, from Kleeman’s subsequent challenge in commissioning Popeye toys and the brooches from Japan via unofficial channels. Such a move was likely viewed as a real provocation that threatened the syndicate’s potential to exploit the character successfully in the Britain. Yet the defendants’ reference to Japan was also a salient feature of the context from which the claim had arisen.100 The Kleemans’ frequent visits to Japan had fully convinced them that ‘big business’ could be done by ordering the toys and brooches from there and selling them at a lower

95

King Features Syndicate, Inc v O & M Kleeman, Limited [1940] 1 Ch 523, 529. & M Kleeman Ltd to Paramount Films, March 11, 1937 in King Features Syndicate Inc. and another v O & M Kleeman (1941) HL/PO/JO/10/10/1236/1211, PA. 97 FC Betts to O & M Kleeman Ltd, March 13, 1937 in King Features Syndicate Inc (ibid). 98 O & M Kleeman Ltd to FC Betts, March 15, 1937 in King Features Syndicate Inc (ibid). 99 EJ MacGillvray, ‘Case Comment: King Features Syndicate v Kleeman’ The Author (Summer 1940) 104–05 at 104. 100 ‘O & M Kleeman; the leading house in the Japanese Trade for originality and service. Our Mr Max Kleeman has just returned from Japan with a host of new lines never before seen in this country. See our exclusive ranges at Manchester, Birmingham, Glasgow, Leeds, N ewcastle’ Games & Toys (January 1929) 92. See also ‘Foreign Piracy’ The Toy Trader (August 1938) 4. 96 O

King Features Syndicate (1940) 221 price than the ones already sold in London.101 Furthermore, parallel importation, that is, the possibility of overcoming the licensing arrangements developed by the claimants by bringing toys made in Japan, was thought an advantageous way to proceed cheaply and unnoticed since a member of the Kleeman family worked at the British customs office.102 Curiously enough, there was a competitive element in the case as the two licensees already enlisted by Frank C Betts were well-known British toy companies that also imported toys from Japan.103 The first, Moritz & Chambers, was given a licence to sell mechanical Popeye toys, and claimed to be ‘the leading Japanese importer’.104 The second, Cecil Coleman Ltd, held a licence to sell brooches,105 and was often described as a ‘direct importer from Japan’.106 Just a few months before the case was heard, one of their agents returned from a six-month buying tour in Japan.107 This set of circumstances was relevant because a substantial part of Kleeman’s defence relied on issues concerning these licensing operations. First, the defence launched a denial that any copyright existed in the c artoons per se. Second, it focused on the fact that the defendants’ copies had been derived from toys produced by one of the licensees (Cecil Coleman) and not from the plaintiffs’ cartoons. This enabled them to deny any infringement of copyright belonging to the plaintiffs.108 Third, the defendants argued that the subsistence of copyright had been affected by the issuing of licences for the production of Popeye for various items, particularly the licence granted to Cecil Coleman Ltd, due to the operation of section 22 (1) of the 1911 Copyright Act, surely the most powerful mechanism on which to base its case.109 The section read as follows: ‘This Act shall not

101 ‘I am sending you herewith a sample of brooch, Popeye Sailor, which is being sold in large quantities to showman. It is being sold by Cecil Coleman at 12/- per gross and I think we could do quite a big business in this’; see letter from J Kleeman to M Kleeman Ltd, February 24, 1937 in King Features Syndicate Inc (n 96); see also Merchant Adventures 1905–1922. The Story of O And M Kleeman Limited (London, Newman Neame, 1955) 15–17; ‘Home Again’ Games & Toys (January 1939) 58. 102 ‘Confirmation of Receipt of Order, Winckler & Co, Kobe Japan, March 15, 1937, [Popeye Brooches]’ in King Features Syndicate Inc (n 96). 103 ‘At Your Service: Popeye by Cecil Coleman, Ltd (Imports)’ Games & Toys (February 1938) 1; for some references as to the rise of Japan as an exporter of toys in the late 1930s, see World Trade in Toys (United States, Bureau of Foreign and Domestic Commerce, 1939) 8; V Page Copping, Expansion of Japan’s Foreign Trade and Industry (Washington, United States Government Printing Office, 1937). 104 ‘Moritz & Chambers Limited’ Games & Toys (September 1937) 108–09. 105 ‘Sleeping—Popeye: by Cecil Coleman, Ltd’ Games & Toys (April 1939) 1; ‘Admission of Facts by the Appellants’ in King Features Syndicate Incorporated (n 96). 106 ‘Communication with Japan’ Games & Toys (August 1937) 25. 107 ‘Cecil Coleman, Ltd’ Games & Toys (June 1938) 1; see also C Coleman ‘How Sino-Japanese will affect Japanese Exports to England’ Games & Toys (October 1937) 62. 108 King Features Syndicate, Inc (n 95) 527. 109 Section 22(1) of the Copyright Act (1911) read as follows: ‘This Act shall not apply to designs capable of being registered under the Patents and Designs Act, 1907, except designs

222 Jose Bellido apply to designs capable of being registered under the Patents and Designs Act, 1907, except designs which, though capable of being so registered, are not used or intended to use as models or patterns to be multiplied by any industrial process’ [author’s emphasis]. The defence counsel argued that the plaintiffs’ sketches were capable of design registration and that their failure to register their designs forced the case to fall outside copyright law.110 While this three-pronged defence seemed particularly strong, it did not succeed. Mr Justice Simonds, in giving judgment, stated that the plaintiffs owned copyright of the Popeye drawings as artistic works and that the defendants had infringed the copyright in artistic works.111 On the point that the defendants’ dolls, brooches and mechanical toys were copied from material produced by a licensee—Cecil Coleman—and not the plaintiffs, the judge considered it an ‘unattractive’ and ‘ill-founded’ argument.112 He concluded that this did not debar it from being classed as a copyright infringement as it could be classified as a case of indirect copying.113 Similarly, the reference to section 22 (1) of the Copyright Act failed. Starting from the presumption that the plaintiffs’ cartoons originated within the copyright regime, the judge concluded that the cartoons as artistic works were still protected by the Copyright Act and were not capable of registration as designs, therefore negating the applicability of section 22(1).114 Interestingly, just a few days after the decision, Cecil Coleman Ltd hurriedly announced that they held a licence and that they would be glad to send full particulars of this merchandise to interested buyers.115 Similarly, Frank C Betts placed a full-page advert in the most important trade journal, Games & Toys, stating that Popeye was the ‘copyright figure of King Features Syndicate, Inc’ and that the syndicate was ‘prepared to grant licences for the manufacture and marketing of toys’.116 This urge to publicise confirms that merchandising operations had reached a key stage for the successful exploitation of the character.

which, though capable of being so registered, are not used or intended to use as models or patterns to be multiplied by any industrial process’ [author’s emphasis]. 110 King Features Syndicate, Inc (n 95) 527; this argument was similar to the defence raised in the US case mentioned above; see ‘Brief in Support of Motion to Dismiss’ 18 in King Features Syndicate Inc v Rudolph Fleischer et al, Southern District of New York Equity, Case Docket #26-397, NARA. 111 King Features Syndicate, Inc (n 95) 538. 112 King Features Syndicate, Inc (n 95) 533. 113 King Features Syndicate, Inc (n 95) 532 (‘It must be immaterial whether the infringing article is derived directly or indirectly from the original work’) (author’s emphasis). 114 King Features Syndicate, Inc (n 95) 538. 115 ‘Popeye Novelties’ Games & Toys (April 1940) 30. 116 ‘Popeye: All enquiries to Frank C Betts Ltd’ Games & Toys (April 1940) 51.

King Features Syndicate (1940) 223

Betts attracted enquiries by placing an advert in Games & Toys just a few weeks after the decision of the Court of Appeal. Photograph courtesy of The British Library

In May 1940, the case went to the Court of Appeal, which reversed the earlier decision and dismissed the plaintiffs’ action.117 Section 22(1) of the

117

‘Popeye, The Sailor: Appeal in Copyright Action’ The Times (9 July 1940) 9.

224 Jose Bellido Copyright Act (1911) again took centre stage in the decision.118 Scott LJ and Clauson LJ held that section 22(1) was a complete bar to the action. Clauson LJ, giving judgment, noted that the plaintiffs’ licensees became qualified to register the three-dimensional representations of the figures in question as designs under the Patents and Designs Acts and that it was clear that the design was used by the licensees as a model or pattern to be multiplied by an industrial process.119 Underpinning the reversal was the tension between two systems for the protection of intangible property. In other words, Clauson LJ’s judgment flagged policy issues derived from the interpretation of section 22 of the Copyright Act.120 On the one hand, the discrepancy between design and copyright law could be seen in terms of two systems of property hinging on different kinds of exploitation (eg selling versus manufacturing). On the other hand, the practical consequence of bringing the systems together is that they could potentially both refer to a different thing that could be ‘owned’. According to some reporters, privileging design registration meant limiting copyright.121 While the scope and even the definition of the property was obviously affected by the perspective taken on it, the interesting issue here was that the drive towards design involved an assessment of the licensees’ activities. If they had not shielded their licence in the proper manner,122 copyright law could not be invoked and the plaintiffs lost their right to restrain the defendants.123 In dissent, Luxmoore LJ agreed with the first instance decision, but limited the injunction granted.124 Consistent with his decision on the Mickey Mouse case a decade earlier, Luxmoore LJ reiterated that there was no copyright in a character as such.125 The plaintiffs appealed to the House of Lords, where the key question was again the meaning of section 22(1) of the Copyright Act.126 This was not a surprise since the section consisted of a double negative, and as a result, it was particularly open to different interpretations.127 The law lords unanimously

118 King Features Syndicate, Inc v O & M Kleeman, Limited [1940] 1 Ch 806, 817–21 (Clauson LJ), 826–31 (Luxmoore, LJ), 831–33 (Scott LJ). 119 King Features Syndicate, Inc (n 118) 817–21 (Clauson LJ), 826–31, at 818. 120 King Features Syndicate, Inc (n 118) 821 (Clauson LJ); see also ‘Popeye Dolls Not Copyright’ (1939) The Newspaper World (13 July) 12. 121 ‘Limits of Copyright’ The Law Journal (13 July 1940) 12. 122 ibid. 123 King Features Syndicate, Inc v O & M Kleeman, Limited (n 118) 817–21 (Clauson LJ); 826–31; especially 820–21. 124 King Features Syndicate, Inc v O & M Kleeman, Limited (n 118) 831 (Luxmoore LJ). 125 King Features Syndicate, Inc v O & M Kleeman, Limited (n 118) 826 (Luxmoore LJ). 126 King Features Syndicate, Inc, v O & M Kleeman, Limited [1941] AC 417, 421–32 (Viscount Maugham), 432–34 (Lord Russell of Killowen), 434–41 (Lord Wright), 441–45 (Lord Romer) and 445–52 (Lord Porter). 127 This struggle was evident throughout the decision. For instance, when the Lords noted that: ‘I am far from suggesting that the section is an example of perfect drafting’ (Viscount

King Features Syndicate (1940) 225 reversed the decision of the Court of Appeal and restored the judgment of Simonds J.128 Their Lordships held that the section was not capable of the interpretation sought by the respondents.129 Either a work was excluded ab initio because at the time of its making it was used or intended to be used as a design for an article to be reproduced in more than 50 copies, or it received the full protection of the Copyright Act including the exclusive right to reproduce the drawing in the form of an article the design for which was capable of registration. If a drawing was intended by the author in its inception as a design for an article to be multiplied by industrial process, that drawing was excluded from protection under the Copyright Act.130 Thus, in effect, the interface between copyright and design regimes could be somehow deferred by reference to the author’s intention.131 It should be recalled that due to Segar’s death, there was no evidence available about the cartoonist’s intention at the time he first drew Popeye.132 The careful observer will notice that the timeline of the case coincides with the first few years of the Second World War. While it is difficult to speculate on the precise impact the war had on the proceedings, it is nevertheless important to note that war conditions did affect both parties. Under these extraordinary circumstances, the fact that they persevered and continued their way up to the House of Lords is striking in itself, evidence of the unique characteristics of the case. When the plaintiffs got into the Chancery Court initially, German air attacks on mainland Britain had just

Maugham) at 429; ‘When is that negative to be satisfied? (Viscount Maugham) at 427; ‘Section 22 is not a very perfect example of drafting’ (Lord Wright) at 440; or ‘[i]t has been recognized that in construing s. 22, sub-s. 1, it is convenient to disregard the double negative’ (Lord Porter) at 452; see also an interesting summary of the case in ‘Great Britain. Copyright-Designs. Decision’ (1941) 40 Patent and Trademark Review 2, 23–28. 128

‘Copyright Case Ended’ Games & Toys (July 1941) 63. According to Viscount Maugham, ‘[t]he only result of giving s. 22 its most natural meaning is that this right under the Act of 1911 may continue, even though at some time after the work in question was first created the author or someone deriving title from him has thought fit to use the work or a design taken from the work as a model or pattern to be multiplied by an industrial process’ in King Features Syndicate, Inc (n 126) 431 (Viscount Maugham). 130 ‘My Lords, I cannot doubt that the person so referred to is the author, and that the time is the time when the design comes into existence’ in King Features Syndicate, Inc (n 126) 427–28 (Viscount Maugham); ‘I think the governing element in the definition [of s 22] is the use or intention to use the design as a model or pattern for industrial multiplication’; 440 (Lord Wright); see also A Goodman ‘The Law of Copyright’ (1957) 10 Current Legal Problems 1, 168–83 at 182. 131 This was also identified by the patent barrister, Peter J Stuart Bevan, in the Opinion given to Britains, Ltd, a toy manufacturer, that was presented to the Gregory Committee; see ‘Memorandum settled by Peter J Stuart Bevan, 23 August 1951’ in BTHA Archives. 132 As mentioned above, Laddie, Prescott and Vitoria highlighted this when they suggested that ‘it would have interesting if the artist in the Popeye case had been in a position to give evidence; unfortunately, he was no longer alive’: in Laddie, Prescott and Vitoria, The Modern Law of Copyright (n 43) 154. 129

226 Jose Bellido started. During the appeal, the Kleemans’ premises suffered the effects of the September Blitz.133 The war also disrupted the strategies developed by the litigants, affecting their legal representation. For instance, one of the barristers who had helped the defendants from the very beginning, Alan Daubeny Russell-Clarke, went on war service and had to be replaced when the case was heard at the Court of Appeal.134 By the end of the summer of 1941, just after the law lords finally decided the case, Japan was on the verge of declaring war. This point is significant because the controversy, after all, involved a competitive conflict over Japanese export trade.135 That same year, the unsuccessful party, the Kleemans, embarked on a period of adjustment and decided to make a change to their business. Immediately after the decision, and possibly anticipating wartime import restrictions, they switched from being toy importers to become toy producers.136 If we look at the other parties the syndicate continued with the same innovative strategies to exploit their characters, relying, on the same agent, Frank C. Betts, to continue expanding in Britain.137 Betts eventually found help in developing these merchandising ventures by enrolling a former Disney employee, Walter Tuckwell, who would become the leading figure of character merchandising in Britain in the 1960s.138 V. CONCLUSION

The decision of the House of Lords was welcomed by King Features Syndicate and similar syndicating and merchandising enterprises. However, the judges’ confusing and exceedingly complicated reasoning only highlighted the problems of relying on section 22(1) of the Copyright Act to regulate the interface between copyright and design. The obfuscation of the test of authorial intention, and in particular the reality that syndicated cartoons were also industrially produced, meant that there were in the coming years many

133

‘My Log’ Games & Toys (June 1941) 38–39. Marlow replaced AD Russell-Clarke; see King Features Syndicate, Inc v O & M Kleeman, Limited [1940] 1 Ch 806, 809. 135 King Features Syndicate, Inc v O & M Kleeman, Limited [1940] 1 Ch 523, 530. 136 ‘My Log’ Games & Toys (June 1941) 38–39; see also ‘Kleeman Progress’ Games & Toys (February 1952) 60. 137 ‘Popeye: Applications for Licences’ Games & Toys (February 1959) 149; ‘Frank C Betts gives some marketing tips to freelances’ World’s Press News (7 September 1951) 35. 138 ‘Frank Betts’ Games & Toys (October 1963) 58; ‘Tuck—Prince of Character Merchandising’ Games & Toys (September 1960) 82–83; WF Tuckwell ‘The Paris Fair, 1952’ Games & Toys (July 1952) 74; ‘Character Merchandising’ Games & Toys (November 1956) 76; ‘Popeye Character Merchandising: Walter F. Tuckwell’ Games & Toys (September 1963) 95; AW Turner, Terry Nation. The Man Who Invented the Daleks (London, Aurum Press, 2011) 97; KD Brown, The British Toy Business: A History since 1700 (London, The Hambledon Press, 1996) 167. 134 GSW

King Features Syndicate (1940) 227 calls to reform the law, and especially section 22(1). From that perspective, the claim that this case constitutes a doctrinal landmark is problematic. The case was certainly prominent, throughout the remaining decades of the twentieth century, in discussions concerning the statutory changes affecting the overlap between copyright and the law of designs. It was discussed in almost all the committees that were formed to consider the law of patents, copyright and designs in the following decades. For instance, just a few years after the decision of the House of Lords, the Swan Committee, which had been appointed in 1944 to consider the Patents and Designs Acts, noted what they saw as the anomalous consequences of the case, drawing attention to the odd possibility that an infringer of a registered design would be exposed simultaneously to proceedings by the owner of the copyright and by the registered proprietor of the design.139 It is not a surprise, then, that the Committee recommended a critical examination of ‘the policy of allowing the owner of the copyright in an artistic work to retain his remedies under the Copyright Act 1911, after he has consented to the reproduction of the whole or a substantial part of his work as a registered design’.140 Such critical examination came a decade later, when the Gregory Committee was appointed to report on desirable changes in the law of copyright. Interestingly, the Committee described the case as having created a ‘no-man’s land’ on the borderline between copyright and designs.141 In fact, this might have been one of the best descriptions ever given of the decision, which appeared to have created a boundary that ‘effaced all boundaries’.142 While the ambiguities of the interface between copyright and design created a fertile ground for legal scholars to produce writings about ‘ doctrine’,143 both the Gregory Committee and subsequent attempts to r egulate this interface shared a basic problem: they have tried to regulate it by looking at distinctive categories of intellectual property law, and thus failed to grasp how these categories have come together practically and contingently.144

139 Final Report of the Departmental Committee (Swan Committee) on the Patents and Designs Acts (Cmd 7206), paras 311–13. 140 Report of the Gregory Committee on the Law of Copyright (Cmnd 8662) (1952) para 312. 141 Report of the Gregory Committee on the Law of Copyright (ibid) para 13. 142 For an interesting discussion of the figure of no-man’s land, see C Vismann, ‘Starting from Scratch: Concepts of Order in No Man’s Land’ in B-R Hüppauf (ed) War, Violence and the Modern Condition (Berlin, Walter de Gruyter, 1997) 46–64. 143 F Honig, ‘Lettre de Grande-Bretagne’ La Propriété Industrielle (October 1942) 174–75; FE Skone James, Copinger and Skone James on the Law of Copyright (London, Sweet & Maxwell, 1948) 71–75; AD Russell-Clarke, Copyright and Industrial Designs (London, Sweet & Maxwell, 1951) 238–41; ‘Discussion on Russell-Clarke’s paper’ Transactions of the Chartered Institute of Patent Agents, Session 1950–51, 159–60. 144 The recommendation of the Gregory Committee led to section 22 of the 1911 being superseded by section 10 of the Copyright Act 1956.

228 Jose Bellido Both the problem, and the solution, of these attempts tended to depend on distinct ways of imagining and projecting specific images and rationales for the law of copyright and designs that did not consider the practices that produced the interface. In other words, the doctrinal and normative interpretation of the House of Lords’ decision tended to raise more questions than it answered. While these doctrinal and legislative trajectories of intellectual property categories can be traced retrospectively, this is not the place to do so—it is sufficient to observe that the patina of sophistication and inaccessibility of the case was exacerbated as committees and judges began to abstract it from its historical roots. Curiously enough, Lionel Heald, QC, a barrister involved in the case but prevented from arguing it before the House of Lords by war service, noticed this problem in the context of the copyright recommendations given by the Gregory Committee.145 Similarly, another barrister on the defence team whose participation was also affected by war service, Alain Daubeny Russell-Clarke, raised the point in a conference at the Society of Arts.146 He noted that: To-day, what are commonly called ‘merchandising rights’ in the chief characters of successful books, plays and films are freely developed in visual form, and often contribute substantially to the income of copyright owners and their licensees. The merchandising rights in, for example, Mickey Mouse, Peter Pan, Captain Hook, Popeye the Sailor, Mary Poppins or even Pinky and Perky, to mention only a few, are commercially valuable, and characters such as these are frequently copied in the round as in statuettes or toys, or in the flat as ornamentation upon a wide variety of articles by persons desirous of ‘cashing in’ on their popularity.147

Perhaps it should be added that it was precisely the way in which the commercial opportunities were seized, and the intangible property channelled and exploited, that had triggered the conflict. It should also be noted that a recurring observer, The Disney Organisation, was keenly interested in requesting meetings to discuss any possible amendments to the law that could reform the design–copyright interface. Their efforts can be seen not only in the Gregory Committee (1952),148 but also throughout the months leading up to the passage of the 1956 Copyright Act,149 and in the work of the Johnston Committee and its aftermath in the 1960s.150 Their ubiquitous

145

Lionel Heald to Peter Walker, 5 July 1956, BT 209/577, NA. AD Russell-Clarke, ‘Design Plagiarism and Copyright Reform’ (1968) 116 Journal of the Royal Society of Arts 737–49. 147 Russell-Clarke (ibid) 742. 148 Report of the Gregory Committee on the Law of Copyright (n 140) 127. 149 Walt Disney Organisation: overlapping of artistic copyright and copyright by way of registered design (1956), BT 209/577, NA. 150 Report of Departmental Committee on Industrial Designs (Cmnd 1808) (1962) (Johnston Committee Report) 123; see also Walt Disney Productions Ltd: memorandum relating to C ommittee on Industrial Designs Report (Cmnd 1808), BT 209/429, NA. 146

King Features Syndicate (1940) 229 presence manifested itself in many different ways: sending counsels’ opinions on the issue to the Board of Trade;151 timely positioning of ‘scholarly’ works in authoritative journals;152 and providing confirmation of their licensing deals to support their evidence at the corresponding committees.153 One of the ironic twists of that presence was that some commentators began to describe the whole situation generated by the Popeye case as ‘the Disney problem’.154 In fact, the only recorded complaint the Government received about the potential effects of amending section 22(1) of the Copyright Act was from Disney.155 There were even some who believed that Government should not pay attention to a problem specifically caused by commercial practices developed by Disney.156 Arguably, Disney and King Features Syndicate had preferred to ground their licensing and merchandising activities in copyright law, as opposed to design law, because the intangible property was acquired automatically in many different countries.157 By the 1940s, international copyright was sufficiently flat that it could be easily navigated throughout the world without the need to establish a network of agents that could secure local design registrations. More importantly, copyright was the suitable platform not only to syndicate intangible property but also to develop licensing and merchandising activities. In that sense, it is not a surprise to see how they evidently preferred the Popeye decision to continue being the law that governed their practices. In hindsight, one could also speculate that the syndicate’s particular emphasis on publicising and marketing the authorship of cartoon strips,

151 ‘Opinion: Copyright by Lionel Heald, 8 May 1956’; BT 209/577, NA. and ‘Opinion: Copyright Bill Section 10 by EP Skone James, 27 June 1956’, BT 209/582, NA. 152 For instance, Franklin Waldheim, Disney executive and copyright lawyer publishing ‘The Anti-Maim Rule: New Design Bill Shares Majority View among Nations’ (1961) 8 Bull Copyright Soc’y USA 359 (with special reference to the ‘Popeye’ case). 153 ‘Articles licensed for Walt Disney characters’ in Report of Departmental Committee on Industrial Designs, Cmnd 1808 (1962) (Johnston Committee Report) 141; ‘Warren Murton & Co and Walt Disney Productions Ltd, giving their views on the Report of the Departmental Committee on Industrial Design’ 1963, BT 209/429, NA. 154 Lionel Heald to Peter Walker, 5 July 1956, BT 209/577, NA. 155 BJD Styles to W Wallace, 10 January 1964, BT 209/429, NA. 156 ‘To some extent, I think Disney has created some of the troubles by their presumed line of action’ in ‘Internal memorandum’ [undated], BT 209/577, NA. 157 That Disney imagined licensing arrangements coupled with copyright was the key strategy to go forward seems to be confirmed in an explanation given by Gunther Lessing, Disney’s legal counsel, to Art Arthur, Motion Picture Industry Council, when Lessing wrote: ‘the patent lawyers told us that it “couldn’t be did” as such licenses as we contemplated would put our trade marks in the public domain. Roy Disney and I decided that there was money to be derived from this endeavour so we based it on the copyright laws and the laws of unfair competition’; see GR Lessing to A Arthur, 18 November 1949, Motion Pictures Council Records; Correspondence 1949–1952, 1-f.8, AMPAS. Similarly, in the 1920s, King Features Syndicate had stated in open court that they relied solely on copyright to sue a toy manufacturer for an infringement of their copyright over ‘Spark Plug’, a cartoon authored by Billy DeBeck; see ‘Brief in Support of Motion to Dismiss’ 18, in King Features Syndicate Inc v Rudolph Fleischer et al, Southern District of New York Equity, Case Docket #26-397, NARA.

230 Jose Bellido and the special care they devoted to the development of (copyright) credit lines, were part and parcel of the attempt to set up an intangible property strategy.158 There seems to be a plausible link between the Popeye case and the form of attribution that came to circulate in its aftermath. Copyright had emerged as an economic and social platform for licensing and merchandising activities where syndication was the basis of the intangible property right.

158 ‘Popeye the Sailor. Note to exhibitors: it is highly important that all drawings of Popeye, and of other characters from the Popeye Cartoons wherever used bear the following credit line: By arrangement with King Features Syndicate Inc. and Segar. The line must be used on all forms of advertising, publicity, bill posting, etc, whether the drawings are made locally, adapted from Paramount accessories or used in any other way’ The Film Weekly (7 January 1937) 15.

9 Slee & Harris’s Application (1966) BRAD SHERMAN

I. INTRODUCTION

I

N MAY 1962, British Petroleum and two of its employees, Patrick Slee and Pauline Harris, lodged two related patent applications at the British Patent Office for improvements in the field of computer-based data processing. The applications were initially rejected on the basis that the subject matter did not fall within the remit of the 1949 Patents Act and, as such, were not patentable. The 1966 decision of Slee & Harris’s Application1 was a preliminary hearing of these objections. The first application, Application Number 19463, was for a method of operating a known (general purpose) computer so as to improve its effectiveness in data processing. The Patent Office objected to the application on the basis that the alleged invention did not fall within the scope of section 101 of the 1949 Patents Act, which defined an invention as a ‘manner of new manufacture’ within the meaning of section 6 of the 1624 Statute of Monopolies. The superintending examiner, JV Hudson, agreed, holding that because the outcomes of the computer-based invention were limited to ‘intellectual information’ it was not a ‘vendible product’ and, as such, not a manner of new manufacture. Hudson rejected the claim on this basis. In response, the applicants put forward an alternative claim to a computer programmed to operate with ‘improved effectiveness in data processing’. Unlike the initial claim, Hudson held that this was a claim to a machine modified in a particular way in order to achieve a particular result. On this basis, he held that the claim was for a manner of new manufacture and was thus potentially patentable. The second related application, Application Number 19464, claimed the means for controlling a computer so as to bring about the improvements in data processing outlined in the first application. The initial examiner objected to the claims on the basis that the ‘means for controlling’ the computer could take the form of a punched tape or card, or instructions 1

Slee & Harris’s Application (1966) RPC 194.

232 Brad Sherman written on a piece of paper in an appropriate computer language. Building on the idea that these were mere descriptions or expressions, it was argued that they were not patentable. The applicants responded that the means for controlling the computer could also be seen as ‘any integer that co-operated with the computer to make it operate in a certain way’. Given that this potentially included mechanical cams, which were clearly patentable subject matter, the applicants argued that the means for controlling the computer outlined in the application should be patentable. Hudson accepted this argument and allowed the application to proceed. In essence Slee & Harris’s Application was concerned with the subject matter eligibility of what might best be called software-related subject matter. Subject matter eligibility operates in patent law as a threshold question that precedes other doctrinal considerations such as novelty, inventive step, and sufficiency of disclosure. When thinking about whether subject matter is patent eligible, it is important to distinguish between situations where specific inventions are presented to the law for consideration, and situations where general classes or types of subject matter are discussed. That is, it is important to distinguish between situations where the focus is on whether the subject matter disclosed in a specific patent application is patent eligible and situations where the central concern is whether a general class of subject matter is, or should be, protectable. The process of determining whether a specific invention is patent eligible is a multi-step process. While there is no fixed pattern, it can usefully be divided into two stages. In the first instance, it is necessary to characterise the subject matter under consideration. Once the subject matter has been characterised, it is then necessary for it to be categorised, either as patent eligible or patent ineligible. In some legal regimes, such as in the United Kingdom (post-1977) and Europe (post-1973), the legislature provides an exhaustive and detailed list of the classes of invention deemed to be nonpatentable subject matter. In other jurisdictions, such as in pre-1977 United Kingdom law (where subject matter was defined as a ‘manner of new manufacture’ under section 101 of the 1949 Patents Act) and in the United States, the task of determining the classes of patentable subject matter, as well as how they are to be treated legally, is left to the courts, patent officials and others to decide. Once the categories are agreed on, they function like juridically sanctioned boundary objects that help to organise and shape the types of things protected by patent law. One of the reasons why Slee & Harris’s Application merits attention is because it was concerned with the eligibility of both the specific patent applications and the patentability of a general class of subject matter. The former because of the nature of the issue being litigated; the latter because of the novelty of the subject matter and the fact that patent law had yet to settle on an approach to software-related subject matter (the general term I will use to describe the information technology based inventions that were

Slee and Harris’s Application (1966) 233 under consideration in the case). The decision is also interesting because it was decided before the enactment of the 1973 European Patent Convention, which shifted the focus of debate away from a general discussion about patentable subject matter and the meaning of ‘invention’ to the narrower question of the meaning of ‘computer program per se’. As we will see, the decision is also important because it provides an insight into the approach to the patentability of software-related inventions that dominated British patent law over the course of the twentieth century and beyond. To understand the decision and the insights it offers, we first need to understand the context in which it was made. II. SOFTWARE IN THE 1960s

Today software is typically thought of as a pre-packaged consumer product that contains the instructions or code that controls computers. As software historians have shown, this was not always the case: ‘Historically speaking … software was not something that was purchased off-the-shelf nor was it a single application or product. Rather it was a bundle of systems, services and support’.2 It was not until the late 1960s that software came to be treated as a product and ‘even then software as code represented only a small component of a larger software system of services and support’.3 While there were exceptions, in the 1960s there were no standalone companies specialising in the creation and sale of software products: there was no organised and discrete software industry to speak of, or at least as we understand it today. In this environment, users tended to obtain their software in one of four ways: either from in-house corporate programming staff who would write the software for the employees; from user groups established by computer manufacturers to facilitate the free sharing of programs, algorithms and associated information;4 from programming service (or custom programming) companies who produced custom written software for users on a fee basis; or from computer manufacturers who provided software free of charge to customers who bought hardware from them (here, software was bundled with the hardware and given away for free as part of the overall package provided to customers). The manner in which software was created, exchanged and consumed during the 1960s had an impact on what was expected or demanded of

2 N Ensmenger, The Computer Boys Take Over: Computers: Programmers, and the Politics of Technical Expertise (Cambridge, Mass, MIT Press, 2010) 6. 3 ibid, 7. 4 RF Brothers and AM Grimaldi, ‘Prater and Patent Reform Proposals’ (1969) 17 Catholic University Law Review 389, 392.

234 Brad Sherman the law. In relation to the software obtained for free from computer manufactures or through user groups, there was no real need or interest in legal protection. To the (limited) extent that software was seen as a proprietary object, there was also little call for legal protection. This was because the close personal relationships that existed between software contractors and the companies they created software for minimised the need for legal or extra-legal means to control the reproduction or imitation of software. Over the course of the 1960s, a number of changes took place that gradually and haphazardly undermined this pre-modern regime. For my purpose, one of the most important developments was the gradual emergence of a new type of software artefact: the software product. Software products were standardised off-the shelf programs that were sold separately, some in the hundreds, a few in the thousands.5 The emergence of the software product industry not only saw a change in the way software was created, distributed and used, it also changed what was expected or demanded of the law. While in the past there had been little or no need for intellectual property protection, suddenly intellectual property was potentially relevant. It was this potential that British Petroleum hoped to exploit when it lodged its patent applications in 1961. At the time when the applications were examined in the early 1960s, there was a great deal of uncertainty about the state of the law and how it applied to software-related subject matter. While a number of information technology-based patents had already been granted protection, as they had not been considered by the courts, the law’s position on this novel form of subject matter was not clear. While some of the older classes of subject matter, such as kaleidoscopes, steam engines or dyes, may now seem odd or quaint, it is relatively easy to compile a list of the different types of subject matter that have been presented to the law for evaluation over the years. Recent examples include synthetic biology, business methods, nanotechnology and isolated genetic sequences. Although, with hindsight, it may be relatively easy to identify the subject matter under consideration at a particular point of time, when new forms of subject matter are first presented to the law for scrutiny there is often confusion about what the subject matter should be called, what its defining features are and how it compares to other types of subject matter. Given that would-be classes of potential subject matter are almost by definition novel, this is not surprising. What is more surprising, however, is that in some situations the law has found it difficult to determine what the subject matter in question was. This was the case with Slee & Harris’s Application. It also remains the case with software-related inventions more generally.

5 M Campbell-Kelly, From Airline Reservations to Sonic the Hedgehog: A History of the Software Industry (Cambridge, Mass, MIT Press, 2004) 3–4.

Slee and Harris’s Application (1966) 235 There were a number of reasons why the subject matter in issue in Slee proved to be so problematic. One key reason for this was because, as Nathan Ensmenger says, software is quintessentially a heterogeneous technology that is ‘inextricably linked to a larger social-technical system that includes machines (computers and their associated peripherals), p eople (users, designers and developers), and processes (the corporate payroll system, for example)’.6 As would-be subject matter, software’s heterogeneity presented real problems for the law. The reason for this is that when determining the standing of a class of subject matter, patent law cannot and does not embrace an open-ended view of techno-scientific objects. Instead, patent law needs to reduce the open-ended, fluid and heterogeneous technology into something that is both closed, demarcated, and predictable and, at the same time, flexible enough to accommodate both variations across the class of subject matter and also changes to the subject matter that occur over time. Another reason why software-related subject matter created so many problems for the law related to the fact that, from the outset, software was defined negatively as those computer-related things that were not hardware. Indeed, in the 1959 article in which the term was first used, John Turkey referred to software as those elements of a typical computer installation that were not ‘tubes, transistors, wires, tapes and the like’.7 The difficulty of defining something that was already defined in opposition to what it was not helped to contribute to software’s ‘widespread, ill-defined use’.8 The difficulties in ascertaining the contours of the subject matter were compounded by software’s intangibility which meant, amongst other things, that there were no obvious traces or markers that could be relied upon to demarcate the boundaries of the subject matter.9 While these factors were important, perhaps the most important reason why patent law found software so problematic was because of the way that the subject matter had been construed within the law which, in turn, was a consequence of the way that the domains of law and information

6 N Ensmenger, ‘Software as History Embodied’ (January–March 2009) 31(1) IEEE Annals of the History of Computing 88. 7 J Turkey, ‘The Teaching of Concrete Mathematics’ (1958) 65 American Mathematical Monthly 1, 1–9. 8 T Haigh, ‘Software in the 1960s as concept, service, and product’ (Jan–March 2002) IEEE Annals of the History of Computing 5. At the time, software included ‘documentation, development methodologies, user training and consulting services’. Ensmenger, The Computer Boys Take Over (n 2) 7. See also: MW Graham Jr, ‘Process Patents for C omputer Programs’ (1968) 56 California Law Review 2, 466, 467. 9 This was made worse by the fact that software was a ‘multidimensional and m utating object of analysis’ that ‘undergoes phase transitions, or changes of state. It solidifies at some points but vaporizes at others’. A Mackenzie, Cutting Code: Software and Sociality (New York, Peter Lang, 2006) 2.

236 Brad Sherman t echnology interacted with each other. To understand the reasons for this, it is necessary to pause and consider the relationship between patent law and techno-science. Patent law operates at the nexus of law, science and technology.10 While this is often portrayed as a one-sided asymmetrical relationship in which the law is continually struggling to keep pace with advances in science and technology,11 one of the lessons that we can learn from the history of patent law is that the relationship is much more complex and interdependent than is often thought. Techno-science has not only consistently provided potential new candidates for patent protection, it has also played an important role in allowing the law to deal with and accommodate that new subject matter. While science and technology do not provide answers to the normative question of whether new subject should be protected and if so to what extent, patent law has consistently looked to science and technology to provide the means to allow the law to describe, demarcate and identify that new subject matter.12 While these techniques, practices and norms—which range from taxonomic and nomenclatural rules and chemical formula through to engineering standards and technological platforms—are mediated by the legal framework in which they operate, they have consistently played a pivotal role in allowing the law to deal with and accommodate different types of novel subject matter. The expectation with software-related subject matter was no different. The problem for patent law at the time was that the law was unable to find a suitable way of determining how to deal with the subject matter at hand. The key reason for this was because the information technology industry was divided both in terms of what the subject matter was and also how it was to be interpreted. As a patent examiner wrote, the most prevalent problem in the debate over the patentability of computer programs was the ‘lack of effective communication between the parties involved’.13 This was primarily attributable to the lack of ‘concrete, workable definition set forth by the computer or software industry for even the most basic of terms’.14 The reason for this was that there were two different and competing ways of thinking about information technology-based inventions in operation at the time. One approach, which focused on the computer program as an end 10 See also GC Diaz, ‘Embodied Software: Patents and the History of Software development, 1946–1970 (July–September 2015) IEEE Annals of the History of Computing 8. 11 For a critical account of this way about thinking law and technology see: A Fish, Laying Claim to Yoga (Cambridge, Cambridge University Press, forthcoming). 12 In many instances patent law internalised the scientific and technical techniques that were used to define, demarcate and categorise different types of subject matter. It should be noted that this was not necessarily a direct nor subservient process. In some situations, the law pushed back and demanded and brought about changes in scientific practice. 13 T Buckman, ‘Protection of Proprietary interest in computer programs’ (1969) Journal of the Patent Office Society 135, 138. 14 ibid.

Slee and Harris’s Application (1966) 237 in its own right, was supported by hardware manufacturers such as IBM and Burroughs. The other approach, which focused on the programmed machine, was supported by small independent software companies and the odd large company (such as British Petroleum, Bell Laboratories and Mobil Oil). In many ways these contrasting views about what the subject matter was and how it was to be interpreted were made possible by the emergent and chaotic state of the industry, as well as the two-faced nature of software, which meant that it could legitimately and realistically be viewed as either a discrete and distinct commercial object or as a heterogeneous technological object. For hardware manufacturers, discussions about patentable subject matter were limited to discussions about whether computer programs were patent eligible. In this context, programs were presented as ‘nothing more than a set of instructions to a computer as to how it should manipulate information and data’.15 Specifically, programs were presented as flat, inert, two-dimensional descriptions of a process that ‘specifies, in greater or lesser detail, the manner in which something may be implemented’.16 Importantly, the descriptive character of computer programs remained the same whether the language used is binary, mnemonic assembly language or even higher level languages. It also remains the same regardless of the recording media, whether it be paper, punched cards, magnetic tape or even the internal magnetic cores of a computer memory. In all of these cases, the program continues to be explicative, that is, descriptive.17

By limiting the subject matter under consideration to computer programs and by presenting programs as inert descriptions of processes, hardware manufacturers were able to argue that computer programs were non- patentable mental processes. Specifically, it allowed them to suggest that a programme, like a punched paper piano roll, was: nothing more than a set of instructions for the machine (ie computer or piano) automatically to implement the mental processes or steps contained in the algorithm or musical composition. Such creativity as exists lies solely in the development of the algorithm or musical composition and any patent issuing thereon would necessarily be grounded on the ideas or mental steps involved.18

15 Brief Amicus Curiae on behalf of the Business Equipment Manufactures Association, Gottschalk v Benson, Supreme Court of the US, No 71-485 (October Term, 1971) 6. 16 RO Nimtz, ‘Computer Application and Claim Drafting under Current Law’ in S oftware Protection by Trade Secret, Contract, Patent: Law, practice, and forms (Washington, Patent Resources Group, 1969) 261. As IBM argued, a ‘computer program is simply a mode of expressing ideas’. Brief for Amicus Curiae International Business Machines, Gottschalk v Benson, Supreme Court of the US, No 71-485 (October Term, 1971) 3. 17 RO Nimtz, ‘The Data Processing Revolution’ in Software Protection by Trade Secret, Contract, Patent: Law, practice, and forms (Washington, Patent Resources Group, 1969) 128. 18 Brief Amicus Curiae on behalf of the Business Equipment Manufactures Association, Gottschalk v Benson, Supreme Court of the US, No 71-485 (October Term, 1971) 8.

238 Brad Sherman The argument that the subject matter should be limited to static twodimensionalprograms also allowed hardware manufacturers to argue that as programs merely specified, in greater or lesser detail, the manner in which something may be implemented that ‘the program is no more the subject matter of patent application than is the schematic diagram of an electrical circuit’.19 For hardware manufacturers and their supporters, viewing computer programs as static, flat and inert entities shaped the way computers were portrayed as machines.20 As IBM argued, the programming of a computer ‘does not vary the actual nature of the computer so as to constitute a patentable invention’.21 By arguing that a computer was the same machine irrespective of whether it contained a new and different program, hardware manufacturers were able to argue that the ‘computer does not acquire a new function, in any sense recognizable by the patent law, every time it is programmed to perform a different set of arithmetical calculations, any more than a piano played acquires a new function each time it plays a new song’.22 In this sense they were able to argue that the programming of a computer was no more than a conventional and unpatentable use of a known machine, similar to placing a new piano roll in a player piano. In both cases, the end result was patent ineligible. In contrast to the arguments made by hardware manufacturers, software producers not only adopted a different view of what the subject matter was, they also saw the technology differently. There were two key differences in the way that software companies and their supporters thought about the technology. The first was in terms of what the technology under consideration should be. While hardware companies thought that the question to be asked was whether computer programs were patentable subject matter, software companies proceeded on the basis that discussions about patentable subject matter should focus on special-purpose computers or ‘extended machines’ (a term used to describe the operation of a general purpose c omputer under the control of a software program, or a combined hardware-software system).23

19 ibid.

20 For hardware manufacturers, the explicative program was intended to operate as a boundary object both for determining patentable subject matter and also as a way of managing the difference between copyright and patents. 21 Brief for Amicus Curiae, International Business Machines, Gottschalk v Benson, Supreme Court of the US, No 71-485 (October Term, 1971) 3. 22 Reply Brief for the Petitioners, Gottschalk v Benson, Supreme Court of the US, No 71-485 (October Term, 1971) 5. 23 MC Jacobs, ‘Computer Technology (Hardware and Software): Some legal implications for antitrust, copyright and patents’ (1970) Rutgers Journal of Computers and the Law 50, 52. Citing S Rosen, ‘Hardware Design Reflecting Software Requirements’ (1965) 33 Proceedings of the Fall Joint Computer Conference, Pt II, 1143–44.

Slee and Harris’s Application (1966) 239 The second difference between hardware and software firms was in terms of the way that the technology was construed. While hardware companies had presented programs and hardware as discrete and separate objects, software producers argued that the technology only made sense when they were seen in combination.24 This was because on its own a programmable machine such as a general-purpose computer was ‘merely a “warehouse” of unrelated parts’.25 While these protean machines had potential, it was only when the program and hardware were amalgamated to form a special purpose machine that the potential could be fulfilled.26 That is, it was only when the computer was combined with a program that these ‘moronic machines’ were ‘capable of accomplishing such varied jobs as corporate payrolls and Apollo moon shots’.27 When loaded with a specific program, which ‘ transfers the latent power of the theoretically general-purpose machine into a specific tool for solving real-world problems’,28 a computer becomes a special purpose machine: for example, ‘an inventory control machine, a tax-return machine, a machine for automatically controlling a factory such as an oil refinery, a medical diagnosis machine, an engineering design machine for performing various calculations and for designing other machines etc’.29 One of the consequences of seeing the technology in this way is that it allowed software companies to argue that a program was more than a mere set of instructions. In particular, it allowed them to suggest that software was a machine device that structures the general-purpose hardware to become a specific purpose machine. When viewed functionally, the addition of a software program to control a general-purpose computer was said to ‘be just as much a machine addition to it as the additional hardware programming. In both cases, the addition of programming results in a machine system different from the original’.30 Importantly, this allowed software producers to argue that the subject matter was potentially patentable.

24 ibid.

25 EJ Brenner, ‘Guidelines to Examination of Programs’ (1966) 829 Official Gazette of the United States Patent Office 2, 442. 26 General purpose computers ‘can do anything for which we can provide suitable instruction … that is the source of its power’. However, ‘precisely because it can do anything, it can do nothing in and of itself. It does things only when we provide the programs that cause the universal machine to emulate particular machines of our design’. MS Mahoney, ‘What makes the history of software hard’ (2008) IEEE Annals of the History of Computing (July–September) 8, 10. 27 WD Smith, ‘Fighter for Computer-Program Patents’ (1968) New York Times (29 December) 19. 28 N Ensmenger, The Computer Boys Take Over: Computers: Programmers, and the Politics of Technical Expertise (Cambridge, Mass, MIT Press, 2010) 5. 29 Jacobs, ‘Computer Technology (Hardware and Software)’ (n 23) 51. 30 ibid, 52.

240 Brad Sherman Another point of difference between hardware and software companies was in terms of the way they saw programmed computers as machines. While hardware companies argued that programming did not change the nature of the computer, software producers argued that by ‘programming a computer, the user creates a new machine’.31 As Robert Nimtz, from Bell Laboratories, explained: [d]uring the actual execution of a program, a logical process is taking place or a new logical machine is taking form … During such execution, a new logical machine is formed and new logical processes are carried out on that new machine. Generally speaking, it is these new extant machines and extant processes that are the subject matter of patent claims.32

This way of viewing the technology enabled software producers to argue that the programmed computer acquired a new function that was recognisable by patent law. For software producers, what made modern electronic digital computers unique, and the reason why they differed from piano players and jacquard looms, was their ‘ability to be reconfigured, via software, into a seemingly infinite number of devices … it is the ability to be programmed via software that … encapsulates the essence of m odern computing’.33 While computers were universal machines which could ‘be programmed to perform an almost infinite range of operations from a musical synthesizer and a payroll system through to an airline reservation system, as a classically designed machine, a piano roll would never change a player piano into anything but what it is’.34 Over the course of the 1960s, hardware and software companies repeated their strategic and self-serving arguments about what the software-related subject matter should be and how it should be interpreted in a range of venues including conferences, academic journals, trade magazine, policy reviews and newspapers. In so doing they not only highlighted how important the question of what the subject matter was to patent eligibility, they also highlighted how entrenched and divided the industry’s response was to this question. The upshot of this was that in contrast to other types of subject matter, where the question of what the subject matter was (and, once this was decided, how it was to be characterised, defined and described) was largely resolved within the relevant scientific and technical communities and then

31 Brief for Amicus Curiae Institutional Networks Corporation, Gottschalk v Benson, Supreme Court of the US, No 71-485 (October Term, 1971) 4. 32 RO Nimtz, ‘The Data Processing Revolution’ in Software Protection by Trade Secret, Contract, Patent: Law, practice, and forms (Patent Resources Group, Washington, 1969) 129. 33 Ensmenger, The Computer Boys Take Over (n 2) 5. 34 PE Ceruzzi, Computing: A Concise History (Cambridge, Mass, MIT Press, 2012) 56.

Slee and Harris’s Application (1966) 241 adopted in the law, with software these questions were aired in legal fora. That is, instead of the technical or scientific community agreeing on what the subject matter was and how it was to be characterised, with software the industry worked out their ontological issues through the law. As a result, the task of determining the nature and characteristics of software-related subject matter was treated as a legal problem to be resolved using legal terms. One of the reasons why Slee is interesting is because it is one of the first occasions in which courts in the United Kingdom addressed these issues. It is also interesting in so far as it provides us with an insight into the approach that has been employed in patent law in the United Kingdom in its dealings with software-related subject matter over the last 50 or so years. It is to this question that I now turn. III. PATENT OFFICE EXAMINATION

Application Number 19463 was concerned with the programming of known (general purpose) computers to bring about improvements in a form of data processing known as linear programming. Specifically, it was concerned with the control of digital data-processing machines to find ‘solutions of sets of simultaneous linear equations or inequalities, or mixtures of both. Such sets of equations can be descriptive of industrial processes’. Linear programming involved the programming of a computer in such a way as to optimise or improve the solutions to particular problems. Typically, these linear programming applications used a method (known as the simplex method) to control a computer to solve such problems. Under this method, a set of three linear equations were arranged to solve a specific problem.35 Traditionally, the three steps were performed in a sequential linear fashion. The applicants realised that in the computation of the solution matrix, the second step

35

As the application stated: The computer is programmed to perform, inter alia, the following steps: (1) Scan the matrix to identify a column containing an element satisfying a predetermined condition. This column is called the ‘pivot column’ and the position of this element in the matrix is the ‘pivot point’. (2) To perform a transforming operation, called an ‘iteration’ on the matrix, to produce a resultant second matrix, which is stored. It need here be said only that this operation comprises a series of arithmetical operations involving the elements of the matrix and the value of the pivot-point element. (3) The resultant second matrix is processed in the computer in the same way as the first matrix. If a pivot point is found, an iteration is performed on the second matrix to yield a third matrix. The process continues with ‘further iterations until a matrix is generated which is devoid of pivot columns. This final matrix is the solution matrix and gives the values of the component variables which, when applied to the process, produce the optimum result’.

242 Brad Sherman could be performed while the first one was still proceeding. The result was that a number of steps (or iterations) could be in train simultaneously. When put into effect, this resulted in a more economical use of the computer. To this end claim 1 was for: A method of operating data processing apparatus, to produce a solution matrix for a plurality of simultaneous linear functions, comprising controlling iterative processing on a set of data representations of the simultaneous linear functions in such manner that an iteration is initiated while a previously initiated iteration is still proceeding so that a plurality of iterations proceed concurrently at one or more stages of the processing.

During the hearing, the applicants proposed an alternative claim (claim 2): A method of operating a computer to produce a solution matrix for a plurality of simultaneous linear functions which method is a modification of the ‘Simplex’ method and comprises controlling the iterative processing in such manner that after the initiation of at least one of the iterations, and while that iteration is still proceeding, a further iteration is initiated and proceeds concurrently with the first mentioned iteration during the remainder of the first mentioned iteration.

Because of problems with the breadth of claim 1 (which were not thought to be insurmountable), Hudson decided to focus on the second claim, which he characterised as a ‘method of operating a known machine’. The problem for the applicant, however, was that the product or result of this method was limited to ‘intellectual information’. This was problematic because a method was only a manufacture and thus an invention for the purposes of the 1949 Patents Act if it resulted in the production of a ‘vendible product’.36 Here Hudson drew upon the 1961 decision of the Australian High Court in National Research Development Corporation v Commissioner of Patents (NRDC)37 where the Court ruled that ‘what is meant by a “product” in relation to a process is only something in which the new and useful effect may be observed’ whereas ‘vendible’ referred to ‘utility in practical affairs’. For Hudson, the problem was that while a manufacture encompassed ‘any physical phenomenon in which the effect (of the process) may be observed’, the product of claim 2 was limited to intangible intellectual information. As he explained, ‘the reference to physical phenomena’ means that ‘an end product comprising merely intellectual information is not within the meaning given to the word “product” by the learned Australian Court’. These problems were compounded by the fact that although it was possible that the data produced by the applicant’s methods was vendible (given that it could be used in the design and control of industrial processes), Hudson said that this was not ‘essential or inherent in the method claimed’. Instead he argued that as the data produced might well be of purely academic interest and have no practical application, it could not be regarded as ‘vendible’ 36 37

GEC’s Application (1943) RPC 1. (1961) RPC 134.

Slee and Harris’s Application (1966) 243 within the meaning given to that term by the Australian High Court. On this basis he rejected the claim. During the hearing the applicants were permitted to submit two further additional claims (the third and fourth claims). While the third claim was rejected on same basis as the second claim, the fourth claim survived and, as such, warrants attention. This provided: A computer having slow and quick access storage, when programmed to solve a linear programming problem by an iterative algorithm the iterative algorithm being such that (a) data representations are transferred, portion by portion, from slow access storage to quick-access storage, (b) after at least one of the said transfers the transferred data representations are transferred back and forth, without intermediate transfer to slow access storage, between the quick-access storage and the arithmetical unit of the computer where they are processed in accordance with at least two iterations of the iterative algorithm, and (c) the processed data representations are transferred from quick-access to slow-access storage.

One of the reasons why this claim was held to be eligible subject matter was because Hudson held that it was ‘directed to a machine which has been set into such a condition that it can proceed to solve a particular program by undertaking a series of specified steps’. Importantly, and in line with the way that software companies viewed software-related subject matter, Hudson held that the subject matter was a machine which had been temporarily modified. Given the physical nature of the invention, Hudson concluded that the claim fell within the statutory definition of invention and, as such, was potentially patentable. The second, and in some ways more interesting application—Application Number 19464—was substantially the same as the other application, save for the fact that the claims were directed to the ‘programming means which control the computer to perform the iterative process in the manner previously described’. Claim 1 read: Linear programming means for use in controlling data processing apparatus so that it effects iterative processing on a set of data representations, which means are formed in such manner as to cause the initiation of an iteration while a previously initiated iteration is still proceeding, so that a plurality of iterations will proceed concurrently at one or more stages of the processing.

Hudson began by noting that the ‘programming means’—that is, the method used to control and harness the general purpose computer to achieve a specified task—could take different forms including a punched tape or card: the ‘punched holes representing instructions which can be read by the computer to produce input signals to the apparatus representative of the instructions’. Building upon a view of software that came to dominate in intellectual property law, particularly in copyright law, Hudson also noted that the program was written on the tape, but in such manner that the writing could subsequently be read by the computer and thus control the computer to operate according to the program.

244 Brad Sherman Reflecting the view of computer programs favoured by hardware manufacturers, Hudson noted that in ‘all forms, the new thing is the set of instructions; the way in which these are manifested-in the example given, by arrangements of punched holes on a tape is irrelevant’. If this view of the subject matter had been adopted, it would have meant that the applicants’ ‘means’ would have been little more than an unpatentable printed sheet (or mental method). Finding for the applicants, however—and adopting a view of the technology that aligned more with the approach favoured by software companies—Hudson accepted that the means claimed was more than a descriptive two-dimensional record of a program (which would have rendered it was unpatentable). Importantly, he accepted that the claim was not limited to punched cards or tapes, but extended instead to ‘any means which could be used to control a computer to operate in the way stated in the claim’. In particular, he accepted that the means was ‘an integer which physically cooperates with a computer to control the latter to operate in a certain way’. In a reading of the technology that mirrored the approach favoured by software producers, Hudson accepted that the means could be likened to a ‘cam, shaped according to certain formulae so that, when fixed into a machine, it controls the latter in a certain way’. On this basis, Hudson accepted that the application was for an invention within the meaning of the 1949 Patents Act and as such, was potentially patentable. IV. SOFTWARE AND SUBJECT MATTER ELIGIBILITY

In many ways, Slee & Harris’s Application is a straightforward and unremarkable decision. It simply applies and extends pre-existing case law to new subject matter, something that has occurred repeatedly over the years. In other ways, however, the short and to-the-point decision is noteworthy, not least because while a number of patents for methods of operating computers had already been granted at the time, as none of these had been considered either by the comptroller or by a higher judicial authority, Slee was one of, if not, the earliest decisions to consider the standing of softwarerelated subject matter under British patent law. Beyond this, two additional factors stand out. One noteworthy thing about Slee & Harris’s Application is that it highlights a particular and somewhat problematic approach to patentable subject matter that remains dominant today. One of the reasons why Slee is problematic is because of its reliance upon the 1959 Australian High Court decision of NRDC and the approach that it took to subject matter eligibility.38 In NRDC the Australian High Court held that when determining whether something is patent-eligible, we should ignore the language of section 6 38

(1959) 102 Commonwealth Law Reports 252.

Slee and Harris’s Application (1966) 245 of the 1624 Statute of Monopolies and look instead to the principles that have been used to apply the section. The High Court also held that when construing the law, it is important to ensure that the boundaries of patentable subject matter are fluid enough to encompass scientific and technological breakthroughs. The Court added that for subject matter to be eligible, there must be human intervention that creates an artificially created state of affairs that has some discernible effect (which is a restatement of the way the invention has traditionally been portrayed in patent law).39 This was reflected in the requirement that for there to be a manner of manufacture it was necessary to show that there was a vendible product. Although NRDC provided an important and much needed antidote to the restrictive and convoluted way that patents had been construed in the midtwentieth century, it provides little, if any, real guidance in determining the eligibility of patentable subject matter. This is because while the reasoning in NRDC provides guidance about the general approach to be adopted when thinking about patentable subject matter, it does not tell us anything about how we are to determine whether something is ‘artificial’ (and thus a product), nor about the criteria to be used when classifying subject matter more generally. Perhaps the biggest problem with NRDC, and, we can infer, with Slee, is that it ignores the preliminary and often more important question of the way that the subject matter is characterised. While there is no denying the important role that artificiality plays in determining subject matter eligibility, it is often subservient to the preliminary question: how is subject matter to be characterised? This is because the process of categorisation is often predetermined by the way that the subject matter is initially characterised. Also noteworthy about Slee—and in this context I am referring both to the decision of the supervising examiner about the fate of the two applications as well as to the way that the subject matter was presented in those applications—is that it highlights a particular approach to software-related subject matter that has shaped the way that patent law interacted, and continues to interact, with information technology-based inventions. The way the applications were drafted, as well as how they were interpreted by the supervising examiner, was notable for the way that they prioritised the computer program (and their equivalents). While the language had yet to be firmed up, it was clear that this included punched tape and cards, as well as two-dimensional static and descriptive computer programs. While these could be read by and control a computer, on their own they were seen to be merely descriptive non-patentable expressions or instructions. This accorded with the view of the subject matter supported by hardware manufactures. It was also an early indication of a way of thinking that was to dominate over

39 See B Sherman and L Bently, The Making of Modern Intellectual Property Law (Cambridge, Cambridge University Press, 1999) 150–51.

246 Brad Sherman the later part of the 1960s and 1970s whereby software-related subject matter came to be seen through the lens of the computer program. In effect, what occurred was that the computer program was separated out, almost fetishised, and given pride of place as a discrete and distinct object within the field of computer technology. While the shift was never complete—software companies in particular consistently spoke about programmed machines—it is clear that the computer program came to occupy a special place within discussions about computer-related inventions. The discussions were reorientated to focus more on the computer program, which became the lens through which discussions about computer-related inventions were framed. The pride of place given to computer programs was reflected in the way that the many doctrinal accounts of the field were organised. For example, in his 1966 article, Rights in Computer Software (which briefly discusses Slee), Blanco White limited his discussion to programs and programming techniques (in ‘contradistinction … to the “hardware”: the actual machinery’).40 In these accounts, the computer program (or the algorithm that was thought to underpin it) came to be seen as the ‘intellectual heart of computer operation’.41 The computer program also became the lens through which patents were viewed. This is evident in Slee and many of the other decisions that followed. At times, the focus on the computer program became so dominant that software-related patents that did not expressly claim a computer program were criticised for obfuscating and disguising the ‘true nature of their contribution by garbing the patent claims with recitations that appear to be directed to hardware components of digital computers and digital computer operations’.42 This distrust of the way the invention was presented became a dominant concern in interpreting software-related inventions in the latter part of the twentieth century. The preoccupation with the computer program also came to shape the way that histories of software patenting in this period have been viewed. This is reflected in the fact that to the extent that histories of patent law in this area reach beyond the 1977 Patent Act, they tend to view the history as the story of the attempt, for better or worse, to patent computer programs. In this context, the computer program came to take on a number of specific roles. One of the most important was the growing expectation that the program would operate as a boundary object that regulated patentable subject matter and, at the same time, the boundary between copyright and patents. In part this built upon the fact that that it was uncontroversially

40

TA Blanco White, ‘Rights in Computer Software’ (1966) Journal of Business Law 339. Katoma, ‘Legal Protection of Computer Programs’ (1965) 47 Journal of the Patent Office Society 955, 956. 42 Brief Amicus Curiae for Burroughs Corporation, Gottschalk v Benson, Supreme Court of the US, No 71-485 (October Term, 1971) 4. 41 GP

Slee and Harris’s Application (1966) 247 accepted that computer programs, as descriptions of sets of machine instructions, were not and should not be patentable subject matter. Over the course of the 1960s and 1970s the computer program’s role as a boundary object was reinforced by and given a certain sense of legitimacy. This occurred as a result of a series of institutional, bureaucratic and juridical changes which gradually enmeshed the place of the computer program within intellectual property law, the most important being the 1973 European Patent Convention and the 1977 Patents Act (which specifically excluded ‘computer programs per se’ from the scope of patentable subject matter), the Patent Cooperation Treaty (which from 1969 allowed Member States to exclude computer programs from the examination process),43 and British foreign and international copyright practice (which adopted the computer program as the archetypical subject matter). At the same time as the non-patentable computer program came to be entrenched as a central organising principle in patent law, it was also accepted that a general purpose computer programmed to undertake a specific task was potentially patentable. In a sense, it was accepted that the ‘three-dimensional machine that results from storing a novel and unobvious program in the core memory of a computer’ was potentially patentable. This was because, as Hudson accepted in relation to claim 4 of Application 19463, the programmed computer was ‘structurally different from the same machine without the program since its memory elements are differently arranged’.44 While the focus here was on the ‘ontological or existential process’ or ‘the actual process, procedure or method which is carried out as the program instructions are executed’,45 nonetheless the focus remained with the results of that process: the programmed machine.46 In this situation, the focus was on the technological (or engineering) nature of the subject matter. While this was similar to the approach that was employed by Hudson and favoured by software companies, one important difference was Hudson’s

43 See Draft records of the Washington Diplomatic Conference in the Patent Cooperation Treaty, (1970 Conference Documents), item 32. This eventually led to Rule 39(1) PCT. 44 GA Heitczman, ‘Computer Programs are Patentable’ (1970) 113 Seton Hall Law Review 1, 113, 127. See also GV Eltgroth, ‘Software and Patent Law’ (1966) Patent Law Annual 1. 45 ‘A Case History: Benson and Talbot: Appellant’s Position: Computer Programs in General’, Appendix C, appended to RO Nimtz, ‘Computer Application and Claim Drafting under current law’ in Software Protection by Trade Secret, Contract, Patent: Law, practice, and forms (Washington, Patent Resources Group, 1969) 261. 46 ‘These processes, during their execution, correspond to actual embodiment of a circuit which are merely represented by the schematic diagram. For convenience, this aspect of a program, the ontological or existential process, will be called the extant program. The extant program has the same relationship to the explicative program’, which had been proposed by the hardware companies, ‘as the electrical circuit has to the schematic diagram’: ‘A Case History: Benson and Talbot: Appellant’s Position: Computer Programs in General’, Appendix C, appended to RO Nimtz, ‘Computer Application and Claim Drafting under current law’ in Software Protection by Trade Secret, Contract, Patent: Law, practice, and forms (Washington, Patent Resources Group, 1969) 261.

248 Brad Sherman focus on the output of the invention and, in an attempt to delimit and bound the intangible invention, the need to show a physical effect. What we see in Slee is, in effect, the acceptance of the approaches advocated by both the hardware and software companies. While the legal way of thinking about software-related subject matter that is exemplified in Slee and that evolved throughout the 1960s shared characteristics with the approaches favoured by hardware and software companies, it differed in one important respect. While the difference is subtle, it is important. While computer programs were singled out for special attention, when determining what the subject matter should be, the law could not and did not limit itself to the two-dimensional program as such. Nor did it limit itself to focusing on the programmed machine, that is, to the three-dimensional machine. Instead of focusing on the subject matter as an end in its own right (either on the computer program as a set of instructions or on the programmed machine),47 the focus of attention shifted to look at the relationship between the (unpatentable) computer program and the (potentially patentable) programmed computer. Importantly, this new way of looking at patentable subject matter did not replace the alternative approaches favoured by hardware and software companies. Rather, it not only embraced them but also added this additional way looking at would-be subject matter to the existing enquiries. While hardware and software companies presented their arguments as alternatives, patent law managed to embrace both of these different interpretations at the same time. That is, while the hardware and software companies presented the choice of the subject matter as being either a computer program as a set of instructions or as a programmed computer, this new approach embraced both of these ways of thinking about patentable subject matter simultaneously. What we see emerging during this time was a situation where the two apparently conflicting ways of thinking about softwarerelated subject matter began to coexist to form a strange hybrid that united the business view of software favoured by hardware manufacturers with the technological interpretation favoured by software companies.48 This odd duality was also reflected in the different ways that the subject matter was represented in the applications at issue in Slee. In a sense the acceptance of the potential patentability of programmed computers, combined with a growing emphasis on the computer program, helped to lay the foundation for a third way of thinking about softwarerelated subject matter. This is not to suggest that Slee is the origin of this approach, nor that the approach was fully formed in the judgment. What 47 Or on the computer program as a discrete commercial object or from a broader more heterogeneous technological standpoint. 48 Ironically, the approach taken to software mirrors the dual function of the patent, which is at once a technical document and, at the same time, a form of commercial currency.

Slee and Harris’s Application (1966) 249 is does show, however, is that while there were issues that were uncertain and unclear at the time, by the mid-1960s the groundwork had already been laid for a particular way of thinking about software related subject matter. Importantly, while the European Patent Office may have shifted away from this approach when it adopted the any-hardware approach to patentable subject matter (whereby the existence of any type of technology is sufficient for something to be deemed patent eligible),49 this approach still dominates in the United Kingdom today.50 The approach outlined in Slee was one that focused on the process by which the two-dimensional static program was transformed into a novel three-dimensional machine. One of the notable things about this approach is that introduced a new temporal dimension into discussions about the patentability of software-related subject matter. This was the ‘four-dimensional machine, the fourth dimension being time, that existed solely during the execution of a novel and unobvious program on a general-purpose digital computer’.51 This way of thinking about software-related subject matter was captured in the remark by George Eltgroth, Patent Counsel in the Information Systems Division at General Electric Company, that a ‘programmed computer represents a new class of machines in which differences may be perceived by accepting the time dimension as an instrument of resolution, as well the dimensions of physical space, the latter being the presently accepted dimension for resolving the difference between machines’.52 As Eltgroth explained: There is no doubt that the computer at rest is a machine. There is also no doubt that the computer at rest is wholly the creation of the hardware layout man. But a computer does not function at rest. Rather, it functions as a dynamic instrument changing its organization in information space as a function of time. Thus, in operation the computer does not fall neatly into the current concepts of either a machine or of process.53

49 See L Bently and B Sherman, Intellectual Property Law, 4th edn (Oxford, Oxford University Press, 2014) 465–71. 50 Frustrated by the uncertainty and confusion that accompanied the various efforts to navigate patentable subject matter in relation to computer-related inventions, the European Patent Office effectively jettisoned the subject-matter enquiry (or at least reduced it to very broad brushstrokes: is the subject matter technological?), when it adopted the so-called any-hardware approach to patentable subject matter, whereby the existence of any type of technology is sufficient for something to be deemed patent eligible. Under the new approach, the mere presence of a technological artifact or process, no matter how old or lacking in originality (such as a cup, a nail, or a personal computer), is sufficient for something to pass the subject matter threshold. 51 GA Heitczman, ‘Computer Programs are patentable’ (1970) 113 Seton Hall Law Review 1, 113, 127. 52 Eltgroth, ‘Software and Patent Law’ (n 44) 3. The idea of a machine in which ‘agency functions are distributed in time, as well as space … the duality of physical space and information space’. 53 ibid.

250 Brad Sherman While the introduction of a temporal dimension into discussions about subject matter eligibility may have brought the legal analysis into line into with the way software was seen by the information technology industry (or at least a part thereof), it only added to the problems that the law was already experiencing at the time. This is because, unlike the approach suggested by hardware and software companies, this way of framing the subject matter did not provide an answer to the question of what the subject matter was and how it should be interpreted. Instead, it merely added a new question and an extra layer of complexity to the subject matter enquiry: where and how was the line to be drawn between a computer program and a programmed computer? These problems were compounded by the fact that no matter how much the law embraced the performative and dynamic nature of computing, it did not and could not operate with an object in motion. Instead, it was forced to produce a freeze frame of those iterations: ‘an image excerpted from a much longer, much more dynamic flow, like a wellplaced photograph of unfolding events’.54 The challenge for the law was determining where and how that line was to be drawn. Rather than helping to resolve the question of what the subject matter was and how it was to be interpreted, the approach that was foreshadowed in Slee only served to compound the existing problems. The particular problem here was that the subject matter could take many different forms, both in terms of whether it was seen as being two, three or four-dimensional and, once this decision had been made, where that subject matter started and ended. There were also questions about the level of abstraction that should be used to describe the technology (which in turn presupposed some sense of how the technology was layered), and the factors that could be used not only to demarcate and identify the limits of the technology but also to trace the intangible as it moved between different formats and registers. Over the course of the twentieth century and beyond, a range of different techniques have been used in an attempt to respond to these issues. The problem here—and one of the key reasons for the ongoing confusion in relation to subject matter patentability—is that patent law has been unable to develop a workable and consistent means of defining software-related subject matter. These problems were made worse by the speed of change within the industry, the inherently intangible nature of the subject matter, and the particular way that the subject matter was construed within patent law. Furthermore, as Slee shows, while decisions have been made about what the subject matter is, the question has always remained fluid and subject to change. As a result, it is not possible to identify a consistent or clear

54 K McGee, Bruno Latour: The Normativity of Networks (Abingdon, Routledge, 2014) 9. It is important that we do not underestimate that ‘tremendous work is required to render materials inert’; ibid, 192.

Slee and Harris’s Application (1966) 251 approach to the way that subject matter has been characterised or classified: different types of the subject matter have been used at different times, often interchangeably and without explanation. There is not only diversity between judgements, there is sometimes even diversity within a single judgement. This has not only made it difficult to predict how the law might respond in a given situation, it also makes it difficult to compare different decisions ostensibly dealing with similar types of subject matter. For anyone who has struggled with the question of the patentability of software-related subject matter under the 1977 Patents Act, the problems created by this way of thinking are very clear.

252

10 Coco v AN Clark (Engineers) Ltd (1969) TANYA APLIN*

I. INTRODUCTION

C

OCO v CLARK1 is assumed to have ‘foundational status’2 in the law of confidentiality. Yet this is surprising given that the case was a motion for an interlocutory injunction and because earlier Court of Appeal decisions, beginning with Saltman Engineering Co Ltd v Campbell Engineering Co Ltd,3 had already recognised that a duty of confidentiality could arise in equity, independently of contract. This chapter therefore interrogates the extent to which Coco may be legitimately considered a landmark case and argues that this characterisation is justified. This is because of the substantial influence that Megarry J’s formulation of the action for breach of confidence has had in England and Wales, Ireland and throughout the Commonwealth. This chapter begins by examining the key findings and reasoning in Coco (section I). It then discusses the significance of the decision through a quantitative analysis, identifying the number of cases in which Coco has been cited in multiple jurisdictions (section II). Section III then undertakes a qualitative analysis of the impact of Coco, focusing particularly on appellate court decisions in England and Wales, Ireland, Australia, Canada and New Zealand.

* My sincere thanks go to Mr James Parish, LLM (Distinction) (KCL) and currently a Ph D student at the University of Cambridge, who was my research assistant for this project. He provided invaluable support in gathering and electronically tabulating data relating to Coco v Clark and in copy-editing this chapter. 1 Coco v AN Clark (Engineers) Ltd [1968] FSR 415 (Megarry J). The case was also reported in [1969] RPC 41 and (1968) 1A IPR 587. 2 T Aplin, L Bently, P Johnson and S Malynicz, Gurry on Breach of Confidence: The Protection of Confidential Information, 2nd edn (Oxford, Oxford University Press 2012), [2.139]. 3 Saltman Engineering Co Ltd v Campbell Engineering Co Ltd (1948) 65 RPC 203 (CA). Described above (n 2) at [2.129] as ‘Unquestionably, the single most important development for the modern law of confidence’ because ‘it did not rely on contract or copyright but on an implied duty of confidentiality’.

254 Tanya Aplin Finally, this chapter concludes by offering some reflections as to the possible reasons for Coco’s influence and its likely role in future years. At the centre of this dispute was a two-stroke engine for a moped. The plaintiff claimed that he had designed a new moped—the ‘Coco’—and supplied the defendant with confidential information relating to its design with a view to embarking on a joint venture. Negotiations for such a joint venture abruptly came to an end and the defendant advised that it would make its own moped—the ‘Scamp’—to a different design. Subsequently, the defendant manufactured and sold its Scamp moped, which it admitted shared the same type of piston and carburetter as the ‘Coco’ moped, which was not in production. The plaintiff then sought an interlocutory injunction against the defendant to stop them making and selling their ‘Scamp’ moped, which the plaintiff alleged was similar in design to the engine in the Coco. The two central issues for consideration were: 1) whether there had been a breach of an obligation of confidence; and 2) whether an injunction ought to be granted. Megarry J decided that there was no prima facie case of breach of confidence and that an injunction should not be granted. He dismissed the motion, subject to undertakings given by the defendant to keep on account a royalty per Scamp moped. Described as above, Coco is a straightforward interlocutory decision. Yet, as we shall see, it has had enormous influence on the law of confidence. To understand why this is so, it is important to expand upon the reasons for Megarry J’s decision. On the issue of whether there was a breach of confidence, Megarry J began by observing that ‘[t]he equitable jurisdiction in cases of breach of confidence is ancient’4 and was ‘reasserted’ by Prince Albert v Strange.5 As there was no contract between the parties, Megarry J had to consider ‘the pure equitable doctrine of confidence’ and asked ‘what are the essentials of the doctrine?’6 After citing three Court of Appeal decisions—Saltman, Terrapin Ltd v Builders’ Supply Co (Hayes) Ltd7 and Seager v Copydex8— as ‘of the most assistance’, Megarry J went on to state these essentials, in what has become the most cited and relied upon passage from his judgment: In my judgment, three elements are normally required if, apart from contract, a case of breach of confidence is to succeed. First, the information itself, in the words of Lord Greene, M.R. in the Saltman case on page 215, must ‘have the necessary quality of confidence about it’. Secondly, that information must have been imparted in circumstances importing an obligation of confidence. Thirdly,

4

Coco (n 1), 419. Prince Albert v Strange (1849) 1 Macn & G 25 (Ch). 6 Coco (n 1), 419. 7 Terrapin Ltd v Builders’ Supply Co (Hayes) Ltd [1960] RPC 128 (CA). 8 Seager v Copydex [1967] RPC 349 (CA). 5

Coco v AN Clark (Engineers) Ltd (1969) 255 there must be an unauthorised use of that information to the detriment of the party communicating it.9

This may be described as the Coco ‘three-step’ test. Megarry J then discussed each limb of the three-step test that he had articulated in more detail—the ‘elaborated three-step test’. On the first requirement, Megarry J referred to Lord Greene’s statement in Saltman that ‘something which is public property and public knowledge’ cannot form the basis for a breach of confidence action.10 However, he observed that while common knowledge could not be confidential information, ‘this must not be taken too far’ and that: Something that has been constructed solely from materials in the public domain may possess the necessary quality of confidentiality: for something new and confidential may have been brought into being by the application of the skill and ingenuity of the human brain … there must be some product of the human brain which suffices to confer a confidential nature upon the information.11

Megarry J also remarked, in reliance on Cranleigh Precision Engineering Ltd v Bryant,12 that the ‘mere simplicity of an idea does not prevent it being confidential’, adding that ‘[i]ndeed, the simpler an idea, the more likely it is to need protection’.13 In relation to the second requirement, Megarry J noted that from the authorities he was not ‘able to derive any very precise idea of what test is to be applied in determining whether the circumstances import an obligation of confidence’.14 Nevertheless, Megarry J went on to articulate a test: It may be that that hard-worked creature, the reasonable man, may be pressed into service once more; for I do not see why he should not labour in equity as well as at law. It seems to me that if the circumstances are such that any reasonable man standing in the shoes of the recipient of the information would have realised that upon reasonable grounds the information was being given to him in confidence, then this should suffice to impose upon him the equitable obligation of confidence. In particular, where information of commercial or industrial value is given on a business-like basis and with some avowed common object in mind, such as a joint venture or the manufacture of articles by one party for the other, I would regard the recipient as carrying a heavy burden if he seeks to repel a contention that he was bound by an obligation of confidence: see the Saltman case at page 216.15

9

Coco (n 1), 419. Saltman (n 3), 215. 11 Coco (n 1), 420. 12 Cranleigh Precision Engineering Ltd v Bryant [1966] RPC 81 (QB). 13 Coco (n 1), 420. 14 Coco (n 1), 420. 15 Coco (n 1), 420–21. 10

256 Tanya Aplin Finally, Megarry J observed in relation to the third requirement that detriment was a debatable component. On the one hand ‘detriment ought to be present if equity is to be induced to intervene’,16 yet on the other hand he conceived of circumstances, involving private information that impacts upon a third party, where a person might want to restrain disclosure. However, as there was clearly detriment to the plaintiff, Megarry J did not feel the need to resolve this issue but expressed the ‘wish to keep open the possibility of the true proposition being that in the wider form’.17 Having set out these legal principles, Megarry J applied them to the facts of the case. He found there was plainly an obligation of confidence since ‘the whole object of the discussions was that the defendant company should manufacture a moped based on the plaintiff’s design, and the plaintiff imparted his information with that object alone’.18 The first and third requirements of the three-step test were not, however, satisfied. There was insufficient evidence about whether the information was confidential and whether there had been unauthorised use by the defendant. Here it is important to remember that the evidence before the judge included a report of a consultant engineer pointing out the resemblances between the two engines. There had not, however, been any cross-examination of this expert and the defendants argued that the similarities in design were a function of common knowledge in the field. As such, Megarry J felt ‘in almost complete darkness as to the extent to which the ideas were common to the moped world’.19 The plaintiffs thus failed to show a strong prima facie case. For the sake of completeness, it is also worth addressing the second issue in Coco—namely, whether to grant injunctive relief. As mentioned above, the lack of a strong prima facie case of breach of confidence pointed to the refusal of interlocutory relief.20 However, Megarry J also distinguished Terrapin from the facts of this application. The important differences were that, in this motion, there had been an absence of cross-examination of witnesses; the plaintiff’s alleged fraud, which could not be determined on affidavit evidence; and the plaintiff’s engine was not in production. This leads to a final observation about Megarry J’s decision. In articulating the relevant legal principles for breach of confidence and deciding whether to grant injunctive relief, he took a detour in considering the ‘spring-board’ doctrine as discussed in Terrapin, Seager v Copydex and Cranleigh Precision.

16

Coco (n 1), 421.

17 ibid. 18 ibid. 19

Coco (n 1), 425. Note that Coco pre-dated the House of Lords decision in American Cyanamid v Ethicon Ltd [1975] AC 396, which substituted the test of ‘a strong prima facie case’ with ‘a serious question to be tried’ in determining the grant of interlocutory relief. 20

Coco v AN Clark (Engineers) Ltd (1969) 257 Megarry J’s major concern was how this doctrine would be practically applied. He was particularly concerned about situations where information was a mixture of partly public and partly private information—how could a recipient realistically only use the public information? This led Megarry J provisionally to conclude that in this instance perhaps ‘the essence of the duty seems more likely to be that of not using without paying, rather than of not using at all’.21 Having examined Coco in detail, this chapter now turns to assess the impact that this decision has had on the law of confidence, beginning with a quantitative analysis.

II. QUANTITATIVE ANALYSIS

One way of assessing the reach and influence of Coco is to ascertain the number of cases in which it has been cited and relied upon. As such, a comprehensive search was undertaken to identify all cases in which Coco has been cited in the following jurisdictions: England and Wales; Ireland; Northern Ireland; Scotland; the United States; Canada; Australia; New Zealand; and Singapore. During the search, cases in other Commonwealth jurisdictions were identified, but a targeted search was not carried out (due to lack of comprehensive access to reported cases in these jurisdictions). Further, the search sought to ascertain whether it was the three-step test—in simple or elaborated form—or injunctive relief part of the decision that was relied upon. As will be seen, the three-step test was most frequently cited and so a further analysis was undertaken to identify whether this test was cited, applied, approved, considered, or distinguished. Some further reflections on the methodology should be made. Both online and offline sources were consulted in this search (listed in the Annex). The date range for the searches of published reports were from 1 July 1968— when Coco v Clark was decided—to June 2016 and a mixture of search terms were used (listed in the Annex). The search was conducted by a research assistant,22 along with the initial classifications of the case as cited, approved, etc. However, these classifications were all verified and finally determined by the author pursuant to a manual analysis (ie reading the case), as opposed to following the headnote guidance. As such, there are examples of where case headnotes indicate Coco as merely being referred

21 22

Coco (n 1), 423. The electronic tabulation of the results of the search is on file with the author.

258 Tanya Aplin to in the case, but the author has, after analysis, classified the reliance on Coco differently. The results of this quantitative analysis are reflected in Tables 1 and 2. Table 1: Cases Citing Coco v Clark (1968–2016) No of Cases England Wales

170

— UKSC

1

— HL

6

— CA (Civ)

38

— Ch D

50

— Ch D (Birmingham)

2

— Ch D (Manchester)

1

— Ch D (Patents Ct)

8

— Fam Div

2

— QBD

34

— QBD (Admin)

1

— QBD (Admin) (Manchester)

1

— QBD (Comm)

2

— QBD (TCC)

1

— QBD (Merc) (Manchester)

1

— QBD (Manchester)

1

— Information Tr

9

— PCC

2

— PO

1

— CAT

1

— UKFTT

4

— UKIPO

1

— UKUT

3

Canada

110

Australia

202

New Zealand USA

53 1 (continued)

Coco v AN Clark (Engineers) Ltd (1969) 259 Table 1: (Continued) No of Cases Singapore

10

Scotland

3

Northern Ireland

3

Ireland Strasbourg TOTAL

50 3 605

Non-targeted Jurisdictions Cayman Islands

3

Jamaica

3

Hong Kong

19

Jersey

4

South Africa

1

Malaysia

16

TOTAL

46

Table 1 indicates that the jurisdictions in which Coco has been cited most frequently are: Australia (202 cases), England and Wales (170 cases) and Canada (110 cases). New Zealand and Ireland have a significant number of cases citing Coco (53 and 50, respectively). Focusing on England and Wales, we see that the House of Lords/Supreme Court has referred to Coco on 7 occasions and the Court of Appeal has cited the case in 38 of its decisions. Perhaps the most surprising result is that only one United States case has cited Coco. As this result seemed odd, the author searched Westlaw International (‘All Federal and State cases’) on two further occasions with a combination of search terms; however, no further US cases were found.23 While searching the targeted jurisdictions, 46 cases citing Coco from other, non-targeted jurisdictions were identified. These nontargeted jurisdictions were not searched systematically, and can only give a partial indication of the influence of Coco. Therefore, these results will not be discussed further.

23 My research assistant also searched Westlaw International plus hard copy indexes to U.S. Law reports.

260 Tanya Aplin Table 2: Cases Citing Coco ‘Three-Step’ Test E&W IRE NI SCOT NZ CAN AUS SING US Total Cited Approved

39

4

1

1

5 38

1

12

16

40

2

2

15

2

1

116

10

13

43

2

1

3

18

24

Applied

38

Cons.

12

Dist.

3

1

Cited case citing Coco

5

3

18

26

10

2

12

18

1

22

11

11

9

1

11

Applied similar test to Coco

9

4

13

Dist. similar test to Coco

1

Cited case approving Coco Applied case approving Coco

1

2

Applied case citing Coco Cited similar test

1

TOTAL 103 citations three-step test (per jurisdiction)

43

2

1

28

83

6

149 4

1 138

8

1

Table 2 identifies those cases from the targeted jurisdictions that have cited Coco for its three-step test—either in simple or elaborated form. The table breaks down the citations into further classifications, ie where the three-step test is cited (or referred to), approved, applied, considered or distinguished. Further, Table 2 notes those instances where a case that cites or approves Coco has itself been cited or applied. As well, instances where a test similar to the Coco three-step test has been cited, applied or distinguished have been noted. From Table 2, it is worth observing that, in the targeted jurisdictions that were searched, the Coco three-step test has been applied in 149 cases and approved in 24 cases. Further, decisions approving the Coco three-step test have been applied in 22 cases and tests similar to the Coco three-step test have been applied in 13 cases. The jurisdictions in which the application of the Coco three-step test has been greatest are (in order): Australia; England and Wales; and Ireland. Notably, the Coco three-step

Coco v AN Clark (Engineers) Ltd (1969) 261 test was distinguished on only four occasions and in no case in the dataset was it disapproved or not followed. Tables 3 and 4 identify the distribution of citations of Coco and the threestep test according to time periods. The cases were allocated according to the date of judgment (as opposed to date of when the case was reported) and the decade relating to 2010 is measured only until June 2016. Table 3: Overall Citations by Decade Time Period

EW AUS CAN IRE NZ NI SCOT SING USA TOTALS

2010–2016

55

46

20

16

15

3

0

4

0

159

2000–2009

58

70

26

31

16

0

2

4

0

207

1990–1999

21

48

43

2

11

0

0

2

1

128

1980–1989

25

33

17

1

8

0

0

0

0

84

1970–1979

11

4

4

0

3

0

1

0

0

23

0

1

0

0

0

0

0

0

0

1

170 202

110

50

53

3

3

10

1

1968–1969 TOTALS

Table 4: Three-Step Test Citations by Decade Time Period

EW AUS CAN IRE NZ NI SCOT SING USA TOTALS

2010–2016

36

35

16

14

5

2

0

4

0

112

2000–2009

38

48

19

30

9

0

1

3

0

148

1990–1999

13

29

32

2

3

0

0

1

1

81

1980–1989

6

21

8

0

8

0

0

0

0

43

1970–1979

4

3

2

0

2

0

0

0

0

11

1968–1969

0

1

0

0

0

0

0

0

0

1

97

137

77

46

27

2

1

8

1

TOTALS

Tables 3 and 4 reveal that there was little ‘uptake’ of Coco by the courts in England and Wales and in the other targeted jurisdictions immediately following the decision and in the subsequent decade (1970s). From the period 1970–1979, it is England and Wales that features the highest number of citations (11) to Coco and its three-step test (four). However, it is not until 1980 onwards that citations to Coco and its three-step test significantly increase in number. During the period 1980–1989 citations to Coco are concentrated in Australia, England and Wales and Canada. This increase continues in the period 1990–1999 and peaks in the period 2000–2009, although continues to be high from 2010–2016. Once again, the citations are highest in Australia, England and Wales and Canada.

262 Tanya Aplin When it comes to the Coco three-step test, it is interesting to observe that the highest concentration of citations occurs in Australia during the periods 1990–1999 and 2000–2009 and in Canada during the period 1990–1999. It is not until 2000–2009 that England and Wales features the highest number of citations to the three-step test (38) although there is a high number in 2010–2016 (36). Another observation is that Coco had little influence in Ireland until 2000 onwards. Whereas, New Zealand courts have cited Coco consistently since the 1980s. Based on this quantitative analysis, it seems fair to conclude that a modest decision on interlocutory relief has been elevated to a landmark case in England and Wales, as well as in Australia, Canada and, to a somewhat lesser extent, in Ireland and New Zealand. To obtain a better understanding of Coco’s influence, however, a qualitative analysis of the case law is also required. This is undertaken in the next section, where the focus is on England and Wales, Australia, Canada, Ireland and New Zealand and primarily the appellate decisions that have applied, approved or considered Coco in these jurisdictions. III. QUALITATIVE ANALYSIS

A. England and Wales In examining the impact of Coco in England and Wales, this section focuses on appellate decisions of the House of Lords and Court of Appeal, with references to lower level court decisions where relevant. This section briefly explains Coco’s influence chronologically and then examines it in more detail thematically. As mentioned in section II, there were relatively few citations to Coco during 1970–1979 (11 in total), which increased to 25 during 1980–1989 and fell to 21 during 1990–1999. However, citations to the Coco three-step test increased from four in 1970–1979 to six in 1980–1989 to 13 in 1990–1999. From 2000 onwards, the citations to Coco increase significantly (to 58 in 2000–2009 and 55 in 2010–2016). Likewise, the citations to the Coco threestep test increase to 38 during 2000–2009 and to 36 during 2010–2016. When it comes to 1970–1979, the decade immediately following Coco, a few tentative explanations are offered as to why there were so few citations to Coco. First, Coco was not picked up by commentators as a key authority. Searches of key treatises24 and journals25 indicate that the case attracted

24 Terrell on the Law of Patents, 9th edn (London, Sweet & Maxwell, 1951), 10th edn (1961), 11th edn (1965), 12th edn (1971) and 13th edn (1982); EHT Snell, PV Baker, and R Megarry, Principles of Equity, 27th edn (London, Sweet & Maxwell, 1973). 25 International Review of Industrial Property and Copyright Law (IIC) (1970–1991) and CIPA Journal (1967–1971)

Coco v AN Clark (Engineers) Ltd (1969) 263 little discussion. In an article published in 1970, Professor Jones26 refers to Coco in relation to information being protected as confidential where the ‘whole result is not known’ even though elements may have been published, but not protected where it is trivial tittle-tattle.27 Only a cursory citation is made to Coco in relation to when an equitable obligation of confidence arises.28 While there is a key article by Professor Cornish on confidential information published in 1975,29 this contains passing references to Coco. Professor Cornish cites Coco for the ‘reasonable person’ test for step two30 and for circumstances in which damages might be granted in lieu of an injunction.31 But the Coco three-step test is nowhere mentioned. Moreover, a book on trade secrets by Turner, published in 1962—by the time Saltman and Terrapin had been decided—reveals substantial resistance to the idea of an equitable action for breach of confidence.32 Therefore, we might postulate that the equitable action for breach of confidence was still in its nascent stages of acceptance.33 Second, it is not until 1977 that the Court of Appeal considers Coco in two decisions, Potters Ballotini Ltd v Weston Baker34 and Dunford & Elliot Ltd v Johnson & Firth Brown Ltd.35 When it comes to the period 1980–1989, the Court of Appeal refers to Coco early on in 1982 in Schering Chemicals Ltd v Falkman Ltd36 and GD Searle & Co Ltd v Celltech Ltd.37 There is also the recognition of the equitable action, as stated in Saltman and applied in Coco, by the House of Lords in Home Office v Harman.38 While Coco is cited in argument in a handful of Court of Appeal decisions,39 it is not considered again by the Court of Appeal until 1987 in Roger Bullivant v Ellis40 and Union Carbide Corp v Naturin Ltd.41 And then, very importantly, it is cited in the 26 G Jones, ‘Restitution of Benefits Obtained in Breach of Another’s Confidence’ (1970) 86 Law Quarterly Review, 463. 27 ibid 467, 471. 28 ibid 474, fns 43 and 45. 29 WR Cornish, ‘Protection of Confidential Information in English Law’ (1975) 6 International Review of Industrial Property and Copyright Law 43. 30 ibid 49, fn 28. 31 ibid 55, fn 49. 32 AE Turner, The Law of Trade Secrets (London, Sweet & Maxwell, 1962) 235 interprets all the cases (including Saltman and Terrapin) as instances of contractual relationships. 33 See also EHT Snell, PV Baker, and R Megarry, Principles of Equity, 25th edn (London, Sweet & Maxwell, 1960), 600–01 and 26th edn (London, Sweet & Maxwell,1966), 721–22. 34 Potters Ballotini Ltd v Weston Baker [1977] RPC 202, 206–07 (Lord Denning MR). 35 Dunford & Elliot Ltd v Johnson & Firth Brown Ltd [1978] FSR 143 (CA), 148. 36 Schering Chemicals Ltd v Falkman Ltd [1982] QB 1, 36 (Templeman LJ). 37 GD Searle & Co Ltd v Celltech Ltd [1982] FSR 92, 99–100 (Cumming-Bruce LJ), 107–108 (Brightman LJ). 38 Home Office v Harman [1983] AC 280 (HL), 314 (Lord Scarman, Lord Simon in agreement). 39 Lion Laboratories Ltd v Evans [1985] QB 526 (CA); Faccenda Chicken Ltd v Fowler [1987] Ch 117 (CA). 40 Bullivant v Ellis [1987] ICR 464, 479–80 (May LJ). 41 Union Carbide Corp v Naturin Ltd [1987] FSR 538, 544–55 (Slade LJ, Ralph Gibson LJ in agreement).

264 Tanya Aplin Spycatcher litigation at all levels.42 As will be discussed below, the House of Lords’ decision had a significant ripple effect, especially in relation to personal confidences. During this decade, it is also worth noting that in the first textbook published on Intellectual Property in the UK, by Professor Cornish,43 breach of confidence is examined in chapter eight. In this chapter, as compared with Professor Cornish’s article from 1975, Megarry J’s three-step formulation is given prominence and described as ‘a convenient startingpoint for analysis’.44 Other aspects of the decision are also cited, relating to subject matter,45 when an obligation arises,46 the requirement of detriment47 and when damages may be granted in lieu of an injunction.48 In 1981, the Law Commission published a comprehensive review of the law of confidence in its Report, in which it treats the ‘reasonable person’ test in Coco as the present law, but only to critique it as unsatisfactory when it comes to improperly obtained confidential information.49 Further, Coco was cited in the Industrial Property Citator in 1982 as the main case dealing with the general principles of breach of confidence. This citator was a key index for intellectual property cases prior to the emergence of Westlaw.50 As well, in the 28th edition of Principles of Equity, which was the last edition of this treatise for which Megarry J was an editor, the equitable doctrine of breach of confidence as it relates to trade confidences is described as having three essentials and the Coco three step test is cited in support.51 Finally, Francis Gurry’s influential monograph, Breach of Confidence was published in 1984,52 in which all aspects of Coco are given considerable attention.53

42 Attorney General v Observer Ltd [1990] 1 AC 109, 151 (Scott J), 215 (Bingham LJ) and 268–72 (Lord Keith) and 282–82 (Lord Goff) (Spycatcher case). 43 WR Cornish, Intellectual Property: Patents, Copyright, Trade Marks and Allied Rights (London, Sweet & Maxwell, 1981). 44 ibid 268. 45 ibid 269, 272. 46 ibid 274–75. 47 ibid 285. 48 ibid 288. 49 Law Com No 110, Breach of Confidence Cmnd 8388 (1981), [3.14], [4.4], [5.3] and [5.5]. 50 M Fysh, Industrial Property Citator (London, Sweet & Maxwell, 1982) 112. My thanks to Dr Jose Bellido for pointing out this reference. 51 EHT Snell, PV Baker, and R Megarry, Principles of Equity, 28th edn (London, Sweet & Maxwell, 1982), 659. This citation also occurs in later editions: see 29th edn (London, Sweet & Maxwell, 1990) 684, 30th edn (London, Sweet & Maxwell, 2000) 45–76, but not in 31st edn (2005) and 32nd edn (2010). 52 F Gurry, Breach of Confidence (Oxford, Clarendon Press, 1984). 53 For example, it is cited in support of the three-step test (4), for the equitable nature of the action (37), for the quality of confidential information, including that it cannot extend to trivial tittle-tattle, but can include materials from the public domain which have been subject to skill and ingenuity of the brain (71, 81, 164), for the reasonable person test for determining when an obligation is imposed (119) and the principle that giving information on a business like basis will indicate an obligation (122), for when injunctions can be refused and damages granted in lieu (389, 398 and 402–04) and for the requirement of detriment (407–08).

Coco v AN Clark (Engineers) Ltd (1969) 265 Thus, the notion of an equitable action for breach of confidence really began to take root during the 1980s and Coco is seen as representing its core features. During the period 1990–1999, the Court of Appeal cites Coco on four occasions.54 Notably, published commentary about breach of confidence is also on the rise.55 But it is from 2000 onwards that there is a vast increase in the number of citations to Coco and its three-step test. This can be explained (as will be seen below) by a clutch of decisions relating to section 41 of the Freedom of Information Act 2000 and by an increase in personal information cases in which the relevance of Coco is explored in the light of the Human Rights Act 1998 and propelled by the House of Lords’ decision in Campbell v Mirror Group Newspapers Ltd.56 We also see the publication of more commentaries on breach of confidence that feature discussion of Coco,57 including a substantially revised second edition of Gurry’s Breach of Confidence. In this text, in particular, Coco continues to be given prominence in identifying the contours of the equitable action of confidence.58 We turn now to consider in more detail the impact of Coco. The influence has been greatest in relation to commercial and personal information, along with frequent citations in relation to FOI exemptions. Coco has also been relied upon in relation to artistic information and government information, although much less frequently. We begin with these less cited instances. B. Artistic and Government Information Coco has been cited in very few artistic and government information cases, hence they will be discussed together. The Coco three-step test has been applied to plays,59 television formats and programmes60 and film or other artistic sets.61 It is fair to say that breach of confidence has had minor 54 Lancashire Fires Ltd v SA Lyons & Co Ltd [1996] FSR 629, 667–68 (Bingham MR elivering judgment of the Court); Indata Equipment Supplies Ltd (t/a Autofleet) v ACL Ltd d [1998] FSR 248, 257–59 (Otton LJ; Owen J and Simon Brown LJ in agreement); Murray v Yorkshire Fund Managers Ltd [1998] 1 WLR 951, 956 (Nourse LJ, Schiemann LJ and Sir John Vinelott in agreement); R v Department of Health Ex p. Source Informatics Ltd (No 1) [2001] QB 424 [14] (Simon Brown LJ, Aldous and Schiemann LJJ in agreement). 55 See generally J Hull, Commercial Secrecy: Law and Practice (London, Sweet & Maxwell, 1998); and RG Toulson and CM Phipps, Confidentiality (London, Sweet & Maxwell, 1996). 56 Campbell v Mirror Group Newspapers Ltd [2004] UKHL 22, [2004] 2 AC 457. 57 RG Toulson and CM Phipps, Confidentiality, 2nd edn (London, Sweet & Maxwell, 2006), especially ch 3; P Stanley, The Law of Confidentiality: A Restatement (Oxford, Hart, 2008) 3, 6, 8, 11, 43, 104, 147, 158 and M Richardson et al, Breach of Confidence (Edward Elgar, 2012), 12, 117. 58 Aplin et al (n 2) [1.02], [5.45]-[5.46], [5.55], [5.57], [7.02]. 59 Ashmore v Douglas-Home [1987] FSR 553, 566–69 (Judge Mervyn Davies QC). 60 Fraser v Thames TV Ltd [1984] QB 44, 61, 64–66 (Hirst J); Wade v BSkyB Ltd [2014] EWHC 634, [50] (Birss J). 61 Shelley Films Ltd v Rex Features Ltd [1994] EMLR 134, 144 (Martin Mann QC) (citing Lord Goff in Spycatcher); Creation Records Ltd v NGN Ltd [1997] EMLR 444, 453 (Lloyd J) (cited in argument).

266 Tanya Aplin importance in relation to artistic cases, given that copyright law more readily protects literary and artistic works. Indeed, it has been those artistic creations at the margins of the closed list of categories in the Copyright Designs and Patents Act 1988 (UK) where protection via confidential information has been sought. As for government information, Coco was applied early on in Attorney General v Cape.62 Lord Widgery CJ cited Coco in support of the equitable basis for breach of confidence and cited the three-step test as the requirements for the action. He saw no objection to extending protection of this kind to government information—in this case diaries of a former Cabinet Minister. The other, major government information case to cite Coco is Spycatcher,63 which involved the publication of memoirs by a former MI5 agent. The first instance judge, Court of Appeal and House of Lords all referred to Coco;64 however, it is the House of Lords decision that has subsequently proved influential in relation to breach of confidence. Lord Griffiths cited the Coco three-step test with approval and considered the extent to which detriment was a requirement of the third limb.65 His Lordship observed that ‘detriment, or potential detriment to the confider, is an element that must be established before a private individual is entitled to the remedy’.66 However, he held that in the situation where the government is claimant, it is necessary to show that there is a public interest in maintaining the confidence or, in other words, ‘that the public interest will suffer detriment if an injunction is not granted’.67 Further, while he noted Megarry J’s statement that damages, rather than an injunction, may be suitable to remedy a breach of a commercial confidence, Lord Griffiths held this would be a wholly inappropriate remedy in the case of the security services and sensitive government information.68 Lord Griffiths also dealt with a situation not covered by the Coco three-step test, namely, third parties. He observed that a ‘third party who knowingly receives the confidential information directly from the confidant … will be restrained from making use of the information’.69

62

Attorney General v Cape [1976] QB 752, 769–70 (Widgery CJ). Attorney General v Observer Ltd [1990] 1 AC 109 (Spycatcher). An example of a local council relying on Coco is Warwickshire CC v Matalia [2015] EWHC B4 (Ch), [30] et seq. 64 Spycatcher (n 63) 151 Scott J cites Fairfax which cites Coco for the three-step test and at 215 Bingham LJ cites Coco for a duty arising where information is acquired in circumstances importing an obligation of confidence and not where the information is common knowledge. 65 Spycatcher (n 63) 268. 66 Spycatcher (n 63) 270. 67 ibid. 68 ‘I would therefore hold that whatever publication may have been achieved abroad, Peter Wright remains bound by his duty of secrecy and confidence and will not be allowed to publish Spycatcher in any form in this country’. Spycatcher (n 63) 271. 69 Spycatcher (n 63) 272. 63

Coco v AN Clark (Engineers) Ltd (1969) 267 The other, even more significant speech in Spycatcher came from Lord Goff.70 He, too, dealt with the question of detriment and agreed with Megarry J that the necessity of this requirement should be kept open.71 But in the case of government confidences it had to be shown that disclosure is detrimental ‘in the sense that the public interest requires that it should not be published’.72 As well, Lord Goff took the opportunity to articulate the principles relevant to breach of confidence. While he did not expressly cite Coco for these principles, his comments obiter reinforced the threestep test. Importantly, they also extended the reach of the three-step test to accidental and surreptitious acquisition. In terms of reinforcement, Lord Goff observed that a first limiting principle is that once information has entered the public domain then it is no longer confidential. Second, that ‘the duty of confidence applies neither to useless information or trivia’.73 Both these principles were articulated by Megarry J in Coco. Where Lord Goff expanded upon Coco was in stipulating that a duty may arise outside relationships or transactions: I start with the broad general principle (which I do not intend in any way to be definitive) that a duty of confidence arises when confidential information comes to the knowledge of a person (the confidant) in circumstances where he has notice, or is held to have agreed, that the information is confidential, with the effect that it would be just in all the circumstances that he should be precluded from disclosing the information to others. … I have expressed the circumstances in which the duty arises in broad terms, not merely to embrace those cases where a third party receives information from a person who is under a duty of confidence in respect of it, knowing that it has been disclosed by that person to him in breach of his duty of confidence, but also to include certain situations, beloved of law teachers—where an obviously confidential document is wafted by an electric fan out of a window into a crowded street, or where an obviously confidential document, such as a private diary, is dropped in a public place, and is then picked up by a passer-by.74

These comments obiter indicate that a duty of confidentiality can arise beyond situations where information has been imparted to situations of accidental or surreptitious acquisition of information. In addition, Lord Goff observed that a third limiting principle was that of public interest and the fact that courts might have to weigh the public interest in maintaining confidences

70 Who incidentally was the first judge to rely upon Coco in Church of Scientology v Kaufman [1973] RPC 635, 638. 71 Spycatcher (n 63) 281. 72 Spycatcher (n 63) 282. 73 ibid. 74 Spycatcher (n 63) 281.

268 Tanya Aplin against the public interest in disclosing the confidential information.75 In other words, he recognised a public interest ‘defence’—a legal principle not raised in Coco. C. Commercial Information Coco has stood the test of time when it comes to commercial confidences. The House of Lords in Harman v Home Office,76 Spycatcher (discussed above) and Douglas v Hello!77 (discussed below) and the Supreme Court in Vestergaard78 have cited Coco with approval. The Court of Appeal has applied the Coco three-step test—in its simple or elaborated form—in various decisions,79 while the High Court has also applied Coco and cited it with approval regularly.80 An indication of perhaps why Coco has been so 75

Spycatcher (n 63) 282. Harman v Home Office [1983] AC 280, 314 (Lord Scarman, Lord Simon in agreement). 77 Douglas v Hello! Ltd sub nom OBG v Allan [2007] UKHL 21, [2008] 1 AC 1. 78 Vestergaard Fransen S/A (now MVF3 ApS) v Bestnet Europe Ltd [2013] UKSC 31, [2013] RPC 33, [22]–[23] (Lord Neuberger with whom the other justices agreed) (referring to Coco for the equitable basis of breach of confidence and then citing Lord Goff in Spycatcher for when the obligation of confidence is imposed). 79 Dunford and Elliott Ltd v Johnson & Firth Brown Ltd [1978] FSR 143, 148 (Lord Denning MR); Indata Equipment Supplies Ltd (t/a Autofleet) v ACL Ltd [1998] FSR 248, 257–59 (Otton LJ; Owen J and Simon Brown LJ in agreement); Murray v Yorkshire Fund Managers Ltd [1998] 1 WLR 951, 956 (Nourse LJ; Schiemann LJ Sir John Vinelott in agreement); Inline Logistics Ltd v UCI Logistics Ltd [2001] EWCA Civ 1613, [2002] RPC 32, [23] et seq (Mummery LJ). Coco v Clark has been cited by the Court of Appeal in other commercial cases concerning ex-employees: GD Searle & Co Ltd v Celltech Ltd [1982] FSR 92, 99–100 (Cumming-Bruce LJ), 107–08 (Brightman LJ), Union Carbide Corp v Naturin Ltd [1987] FSR 538, 544–55 (Slade LJ, Ralph Gibson LJ in agreement); and AT Poeton v Horton [2000] ICR 1208, [11]–[13] (Morritt LJ) and considered in Lancashire Fires Ltd v SA Lyons & Co Ltd [1996] FSR 629, 667–68 (Bingham MR delivering judgment of the Court). 80 Decisions applying Coco: Strix Ltd v Otter Controls Ltd (No 1) [1995] RPC 607, 634; De Maudsley v Palumbo [1996] EMLR 460, 465–67, 468–69, 490; Ocular Sciences Ltd v Aspect Vision Care Ltd (No 2) [1997] RPC 289, 369–70, 374–75; Indata Equipment Supplies Ltd (t/a Autofleet) v ACL Ltd [1996] CLC 957, 968; Mars UK Ltd v Teknowledge Ltd [2000] FSR 138, 149–151; Collag Corp v Merck & Co Inc [2003] FSR 16, 308; ABK Ltd v Foxwell [2002] EWHC 9 (Ch), [69]; Societa Esplosivi Industriali SpA v Ordnance Technologies (UK) Ltd [2004] EWHC 48, [183]–[184]; Stanelco Fibre Optics Ltd v Bioprogress Technology Ltd [2004] EWHC 2263 (Pat), [22], [112]–[120]; Deloitte & Touche LLP v Dickson [2005] EWHC 721 (Ch), [31]–[40]; Sectrack NV v Satamatics Ltd [2007] EWHC 3003 (Comm), [34]–[69]; JN Dairies Ltd v Johal Dairies Ltd [2009] EWHC 1331 (Ch), [110]–[114]; Vercoe v Rutland Fund Management Ltd [2010] EWHC 424 (Ch), [323]–[331]; Forensic Telecommunications Services Ltd v Chief Constable of West Yorkshire [2012] FSR 15, [130]–[140]; Viagogo Ltd v Myles [2012] EWHC 433 (Ch), [36]–[37], [44]; Primary Group (UK) Ltd v Royal Bank of Scotland Plc [2014] RPC 26, [206] et seq; Tata Consultancy Services Ltd v Sengar [2014] EWHC 2304 (QB), [40]–[53], [72]–[76]; McGill v Sports and Entertainment Media Group [2014] EWHC 3000 (QB), [147]–[154]; Personal Management Solutions Ltd v Blakes Bros Ltd [2014] EWHC 3495 (QB), [163], [191]–[202]. Decisions citing Coco with approval include: Aveley/Cybervox Ltd v Boman [1975] FSR 139, 145–149; Force India Formula One Team Ltd v 1 Malaysia Racing Team Sdn Bhd [2012] RPC 29, [215], [224]; Eugen Seitz AG v KHS Corpoplast GmbH [2015] RPC 11, [48]. 76

Coco v AN Clark (Engineers) Ltd (1969) 269 frequently cited is given by Arnold J, when he states: ‘The clearest statement of the elements necessary to found an action for breach of an equitable obligation of confidence remains that of Megarry J in Coco’ and notes that Megarry J’s statement of the law ‘has repeatedly been cited with approval at the highest level’.81 The reasonable person test for step two of Coco (ie determining when there is a duty of confidence) has been cited with approval on several occasions.82 In Primary Group v Royal Bank of Scotland83 Arnold J made two observations about this test: ‘The first is that it does not depend on the existence of a confidential relationship between the discloser and the recipient of the information. The second is that it is objective rather than subjective’.84 Arnold J (correctly) cited Lord Goff’s dicta in Spycatcher, the House of Lords’ decision in Campbell, the Supreme Court decision in Vestergaard and the Court of Appeal decision in Imerman in support.85 Arnold J’s decision highlights how step two of Coco is no longer seen as barrier to imposing obligations of confidence when it comes to accidental or surreptitious acquisition of commercial secrets.86 Further, in reiterating that the reasonable person test is objective in nature, Arnold J departed from the unconventional view expressed by Jacob J (as he then was) in Carflow Products (UK) Ltd v Linwood Securities87 that the test could be subjective or objective.88 Coco has also been relied upon in ex-employee and other commercial cases in support of refusal of an injunction where information is in the public domain or if damages are an appropriate remedy.89 More recently, lower 81 Forensic Telecommunications Services Ltd v Chief Constable of West Yorkshire [2012] FSR 15, [130]; Force India Formula One Team Ltd v 1 Malaysia Racing Team Sdn Bhd [2012] RPC 29, [215]–[216]; Primary Group (UK) Ltd v Royal Bank of Scotland Plc [2014] RPC 26, [207]–[208]. 82 Yates Circuit Foil Company v Electrofoils Ltd [1976] FSR 345, 380 (Whitford J); Carflow Products (UK) Ltd v Lindwood Securities (Birmingham) Ltd [1996] FSR 424, 430 (Jacob J); Seeds Processing International v Scales, Gorne v Scales [2002] All ER (D) 214, [85]; Cray Valley Ltd v Deltech Europe Ltd [2003] EWHC 728 (Ch), [49]; Vestergaard Fransen S/A (now MVF3 ApS) v Bestnet Europe Ltd [2013] UKSC 31, [2013] RPC 33, [23]; and Primary Group (UK) Ltd v Royal Bank of Scotland Plc [2014] RPC 26, [210]–[211], [213], [227]. 83 Primary Group v Royal Bank of Scotland [2014] RPC 26. 84 ibid [211]. 85 ibid [221] et seq. 86 See also Shelley Films v Rex Features Ltd [1994] EMLR 134, 147–48; Creation Records Ltd v News Group Newspapers Ltd [1997] EMLR 444, 455; JN Dairies Ltd v Johal Dairies Ltd [2009] EWHC 1331 (Ch), [113]. 87 Carflow Products (UK) Ltd v Linwood Securities [1996] FSR 424. 88 ibid 428. 89 Potters Ballotini Ltd v Weston Baker [1977] RPC 202, 206–07 (Lord Denning MR); Vernon & Co (Pulp Products) Ltd v Universal Pulp Containers Ltd [1980] FSR 179, 191; Schering Chemicals Ltd v Falkman Ltd [1982] QB 1, 36; Roger Bullivant v Ellis [1987] ICR 464, 479–80 (May LJ); Ocular Sciences Ltd v Aspect Vision Care Ltd (No 2) [1997] RPC 289, 397; Cray Valley Ltd v Deltech Europe Ltd [2003] EWHC 728 (Ch), [47]; Vestergaard Fransden A/S v Bestnet Europe Ltd [2009] EWHC 1456 (Ch), [2010] FSR 2, [38]–[39].

270 Tanya Aplin courts have expressed doubts about whether an equitable duty of confidence can extend further than a contractual confidentiality obligation.90 D. Personal Information As will be seen, Spycatcher has been influential in affecting the scope of protection that developed for personal confidences. But, before addressing this point, it is necessary to step back and address some earlier cases. Megarry J, who had become a high court judge in 1967, shortly before his decision in Coco, subsequently became Vice-Chancellor in 1976. It was in this capacity that he considered the Coco three-step test in relation to telephone tapping, in the well-known Malone decision.91 Megarry V-C noted that the alleged misuse was not by the intended recipient of the information, but an unknown overhearer. He held that there was no duty of confidence and that a person has to, ‘accept the risk of any unknown overhearing that is inherent in the circumstances of communication’.92 Malone subsequently brought a successful claim for violation of his Article 8 rights under the European Convention of Human Rights (ECHR).93 As well, the Court of Appeal in Francome v Mirror Group Newspapers Ltd later distinguished Malone on the somewhat artificial basis that Francome involved telephone tapping by a private individual rather than the police (which had occurred in Malone).94 Conventional applications of Coco principles to personal information occurred in X Health Authority v Y95 and Stephens v Avery.96 However, post-Spycatcher the relevance of the Coco three-step test to personal or private information waned in England and Wales. This was presaged in the Court of Appeal decision in R v Department of Health Ex p. Source Informatics Ltd (No 1)97 and took root after the House of Lords decision in Campbell v Mirror Group Newspapers Ltd.98 In Source Informatics the 90 Vercoe v Rutland Fund Management [2010] EWHC 424 (Ch), [329]; Richmond harmacology Ltd v Chester Overseas Ltd [2014] EWHC 2692 (Ch), [75]; Eurasian Natural P Resources Corp Ltd v Judge [2014] EWHC 3556 (QB), [76]. But contrast CF Partners (UK) LLP v Barclays Bank plc [2014] EWHC 3049 (Ch), [132] (suggesting wider equitable duties could be imposed in circumstances that are not ordinary). 91 Malone v Commissioner of Police of the Metropolis (No 2) [1979] Ch 344 (Ch). 92 ibid 376. 93 Malone v United Kingdom Application No 8691/79 (1985) 7 EHRR 14. 94 Francome v Mirror Group Newspapers Ltd [1984] 1 WLR 892, 895 (Donaldson MR), and 900 (Fox LJ). 95 X Health Authority v Y [1988] RPC 379, 391 (Rose J) (detriment not required for an injunction). 96 Stephens v Avery [1988] Ch 449, 452 (Browne-Wilkinson V-C), (three-step test), 454 (on whether information confidential) and 456 (on duty of confidentiality). 97 Source Informatics Ltd (No 1) (n 54). 98 Campbell v Mirror Group Newspapers Ltd [2004] UKHL 22, [2004] 2 AC 457.

Coco v AN Clark (Engineers) Ltd (1969) 271 Court of Appeal had to consider whether disclosure of anonymised data extracted from prescription forms would be an unauthorised use of confidential information. In so doing, the court considered Coco along with other authorities and concluded that the touchstone for judging whether there is a duty of good faith and whether it has been breached is according to conscience, specifically, ‘would a reasonable pharmacist’s conscience be troubled by the proposed use to be made of patients’ prescriptions?’99 Applying this broad principle of equity, the court concluded that the pharmacist’s duty of confidence was not breached because the patient’s privacy was safeguarded through anonymisation of the data.100 This decision highlights how the formula of the three-step test was jettisoned in favour of applying a broad principle of equity, in part because the test was unable effectively to accommodate the sorts of concerns raised by privacy. The incorporation of the ECHR into domestic law via the Human Rights Act 1998 (UK) gave impetus to the courts to use breach of confidence to protect privacy. In several cases prior to Campbell, courts relied on Coco and interpreted the range of personal confidential information widely to include a person’s identity and location,101 sexual affairs102 and a private wedding.103 Campbell, however, signalled a major divergence from Coco and breach of confidence. In Campbell, the Daily Mirror newspaper had published details about the claimant’s cocaine addiction and her treatment for it, along with photographs of the claimant emerging from a Narcotics Anonymous meeting. A breach of confidence was found at first instance by Morland J,104 but his decision was overturned by the Court of Appeal.105 A majority of the House of Lords allowed the appeal. Despite the divergence in outcome, their lordships in fact agreed on the relevant legal principles. Lord Nicholls referred to Coco as setting out the ‘classic exposition’ of breach of confidence106 but noted that Spycatcher recognised that the ‘limiting constraint of the need for an initial confidential relationship’ was no longer required.107 Rather, a duty of confidence was imposed ‘whenever a person receives information he knows or ought to know is fairly and reasonably to regarded as confidential’.

99

Source Informatics (n 54), [35]. ibid [34]–[35]. 101 In the Matter of X [2001] 1 FCR 541; B v H Bauer Publishing Ltd [2002] EMLR 8, [23]–[26]; Venables v NGN Ltd [2002] 1 FCR 333, 448. 102 A v B Plc [2002] EMLR 8, [43] (Jack J) (Coco cited in argument but not referred to by the Court of Appeal in [2002] EWCA Civ 337, [2003] QB 195). 103 Douglas v Hello! [2003] EWHC 786 (Ch), [2003] 3 All ER 996. 104 Campbell v MGN Ltd [2002] EWHC 499, [2002] EMLR 30, [37]–[44] applying a threestep test identical to Coco but not citing the case. 105 Campbell v MGN Ltd [2002] EWCA Civ 1373, [2003] QB 633. 106 Campbell (HL), [13]. 107 Campbell (HL), [14]. 100

272 Tanya Aplin He added that the language of ‘duty of confidence’ and ‘confidential’ were ‘not altogether comfortable’ and the ‘more natural description today is that such information is private’ and that the ‘essence of the tort is better encapsulated now as misuse of private information’.108 Other members of the House of Lords did not use Lord Nicholls’ language of ‘tort’, however, their lordships recognised that there would be a different emphasis to the action. Lord Hoffmann saw the speech of Lord Goff in Spycatcher as a key development in the law of confidence,109 along with the incorporation of Article 8 ECHR into domestic law. As such, he saw there being ‘a shift in the centre of gravity of the action for breach of confidence when it is used as a remedy for the unjustified publication of personal information’.110 The focus of breach of confidence would no longer be on confidentiality, confidential relationships or conscience, but rather on the protection of human autonomy and dignity.111 Lord Hope, Baroness Hale and Lord Carswell located the protection of privacy within breach of confidence but saw Articles 8 and 10 of the ECHR—rather than traditional principles—as having a major role to play.112 Thus, in the context of personal or private information, the continuing relevance of Coco was questionable after Campbell. The relevance of ‘traditional’ confidentiality principles to private information continued to be addressed in appellate cases. For example, the Court of Appeal in Douglas v Hello! (No 3) referred to the ‘tort’ as ‘shoehorned’ within ‘the cause of action formerly described as breach of confidence’.113 As well, the court considered how the developments in Campbell had affected the Coco three-step test: Megarry J in Coco v A N Clark [1969] RPC 41 identified two requirements for the creation of a duty of confidence. The first was that the information should be confidential in nature and the second was that it should have been imparted in circumstances importing a duty of confidence. As we have seen, it is now recognised that the second requirement is not necessary if it is plain that the information is confidential, and for the adjective ‘confidential’ one can substitute the word ‘private’. What is the nature of ‘private information’? It seems to us that it must

108 ibid [14]. Also, in Douglas v Hello! Ltd sub nom OBG v Allan [2007] UKHL 21, [2008] 1 AC 1, [255] Lord Nicholls commented obiter that breach of confidence ‘covers two distinct causes of action, protecting two different interests: privacy, and secret (“confidential”) information’. 109 Campbell (HL), [46]–[49]. 110 Campbell (HL), [51]. 111 ibid. 112 ibid [86] (Lord Hope), [132]–[134] (Baroness Hale), [166]–[167] (Lord Carswell); ECHR Arts 8, 10. 113 Douglas v Hello! Ltd (No 3) [2005] EWCA Civ 595, [2006] QB 125 [53]. See also [96] where the Court states that ‘the effect of shoehorning this type of claim into the cause of action of breach of confidence means that it does not fall to be treated as a tort under English law: see Kitechnology BV v Unicor GmbH Plastmaschinen [1995] FSR 795, para 40’.

Coco v AN Clark (Engineers) Ltd (1969) 273 include information that is personal to the person who possess it and that he does not intend shall be imparted to the general public. The nature of the information, or the form in which it is kept, may suffice to make it plain that the information satisfies these criteria.114

Thus, post Campbell, the Coco three-step test was either significantly modified (or, at worst, redundant) in the case of private information. Notwithstanding, the Court of Appeal in a later decision, Tchenguiz v Imerman115 observed that the law ‘should be developed and applied consistently and coherently in both privacy and “old fashioned confidence” cases’.116 The court suggested that the ‘reasonable expectation of privacy’ test articulated in Campbell ‘chimes well with the test suggested in classic commercial confidence cases by Megarry J in Coco’.117 Therefore, post-Imerman it was unclear the extent to which Coco would continue to have a role to play in cases of private information. This issue, however, has been clarified by two appellate decisions—the House of Lords decision in Douglas v Hello!118 and the Court of Appeal decision in Google v Vidal Hall.119 The litigation in Douglas v Hello! was prompted by Hello! magazine’s threatened publication of surreptitiously taken photographs of the high- profile celebrity wedding between Michael Douglas and Catherine Zeta-Jones, in advance of OK! magazine’s exclusive coverage of the event (for which OK! had paid the Douglases £1 million). The claimants were unsuccessful in obtaining an interim injunction to prevent the threatened publication,120 but at trial Lindsay J found in favour of the claimants on the basis of an actionable breach of confidence.121 Lindsay J characterised the photographic representation of the wedding reception as either commercial confidential information or else of a hybrid kind.122 He analysed the information according to the Coco three-step test and placed considerable emphasis on the nature of the information as a kind of ‘trade secret’. Lindsay J awarded damages to the Douglases for mental distress, presumably in relation to their ‘privacy’ interest, along with damages for wasted costs incurred by their having to bring forward preparation, approval and provision of the authorised photographs to the third claimant, OK! magazine.123 A sum of £1,033,156 was awarded to the third claimant, OK! magazine, in respect of lost profits and wasted costs.124 The Court of Appeal dismissed Hello! 114

ibid [83]. Tchenguiz v Imerman [2010] EWCA Civ 908, [2011] 2 WLR 592. 116 ibid [67]. 117 ibid [66]. 118 Douglas v Hello! Ltd sub nom OBG v Allan [2007] UKHL 21, [2008] 1 AC 1. 119 Google v Vidal Hall [2015] EWCA Civ 311, [2015] 3 WLR 409 (Google case). 120 Douglas v Hello! Ltd (No 1) [2001] QB 967 (CA). 121 Douglas v Hello! Ltd [2003] EWHC 786 (Ch), [2003] EMLR 31. 122 ibid [196], [227]. 123 Douglas v Hello! (n 121) [57]. 124 ibid [55]. 115

274 Tanya Aplin agazine’s appeal against the first and second claimants, but allowed its m appeal against the third claimant.125 In the House of Lords, OK! magazine’s appeal was upheld and the order of Lindsay J restored. Lord Hoffmann, who delivered the leading speech of the majority, commented that this appeal was ‘not concerned with the protection of privacy’ but with OK!’s claim to protection of commercially confidential information.126 After recounting Lindsay J’s application of Coco to the facts, he explained why Lindsay J had been correct in his finding that the obligation of confidence bound Hello! magazine: The point of which one should never lose sight is that OK! had paid £1m for the benefit of the obligation of confidence imposed on all those present at the wedding in respect of any photographs of the wedding. That was quite clear. Unless there is some conceptual or policy reason why they should not have the benefit of that obligation, I cannot see why they were not entitled to enforce it. Any in my opinion there are no such reasons.127

Thus, Douglas v Hello! indicated that commercialised private information could be treated as a trade secret under the ‘traditional’ Coco principles but that, insofar as the claim related only to a claimant’s privacy interests, the Article 8 and 10 balancing analysis introduced by Campbell would be relevant. The recent Court of Appeal decision in Google v Vidal Hall authoritatively states that the action for misuse of private information is in fact a tort and indicates that this is distinct from breach of confidence. In this case, the claimants sought to bring a claim of misuse of private information against the defendant (Google) for collecting private information via its web browser without consent. An important issue was whether the claimants had permission to serve out of the jurisdiction and this depended on whether misuse of private information could be classified as tortious as opposed to equitable. If the latter, then the authority of Kitechnology BV v Unicor GmbH Plastmaschinen,128 which was binding on the court, held that service out of the jurisdiction would not be possible. Thus, as the court noted, this was a situation where the issue of classification or nomenclature actually, ‘made a difference’.129 The Court of Appeal held that it was clear that ‘there are now two separate and distinct actions: an action for breach of confidence; and one for misuse of private information’.130 Further, that misuse of private information was 125

Douglas v Hello! Ltd (No 3) [2005] EWCA Civ 595, [2006] QB 125. Douglas v Hello! Ltd sub nom OBG v Allan [2007] UKHL 21, [2008] 1 AC 1, [118]. ibid [117]. 128 Kitechnology BV v Unicor GmbH Plastmaschinen [1995] FSR 765. 129 Google (n 119) [17]. 130 ibid [21]. 126 127

Coco v AN Clark (Engineers) Ltd (1969) 275 a tort without any equitable characteristics for the purposes of service out of the jurisdiction and, as such, Kitechnology was not applicable since it concerned an action for breach of confidence.131 This characterisation was not seen as creating a new cause of action but ‘simply [giving] the correct legal label to one that already exists’.132 Moreover, it was also not limited to the issue of service out of the jurisdiction because the Court commented obiter: ‘We are conscious of the fact that there may be broader implications from our conclusions, for example as to remedies, limitation and vicarious liability … such points will need to be considered as and when they arise’.133 Subsequent decisions have maintained the distinction between breach of confidence and misuse of private information, thus highlighting that they are different legal creatures but also that any continuing role for Coco in relation to private information is a subsidiary one.134 E. FOI Cases The Freedom of Information Act 2000 (UK), section 41, has generated significant reliance on Coco. Section 41 creates an exemption for providing access to information held by public authorities where the disclosure of the information would constitute a breach of confidence. Multiple decisions have held that whether disclosure constitutes a breach of confidence within the meaning of section 41 is to be determined according to Coco principles.135

131

ibid (n 119) [43], [50]–[51]. ibid (n 119) [51]. 133 ibid. 134 Associated Newspapers v HRH Prince of Wales [2006] EWCA Civ 1776, [2008] Ch 57 [67]–[69]; McKennitt v Ash [2006] EWCA Civ 1714, [2008] QB 73 [8], [15] et seq (Buxton LJ, with whom Latham LJ and Longmore LJ agreed); Browne v Associated Newspapers Ltd [2007] EWCA Civ 295, [2008] QB 103, [29]; Mosley v News Group Newspapers Ltd [2008] EWHC 1777 (QB), [2008] EMLR 20, [108]; AVB v TDD [2014] EWHC 1442 (QB), [79]; and Burrell v Clifford [2016] EWHC 294 (Ch), [149]–[150]. 135 Derry City Council v Information Commissioner [2006] UKIT EA/2006/0014; Bluck v Information Commissioner (2007) 98 BMLR 1, [2008] WTLR 1; DBERR v Information Commissioner [2008] UKIT EA/2007/0072 (although expressing a doubt re the detriment requirement); Anderson v Information Commissioner [2008] UKIT EA/2007/0103 (although expressing a doubt re the detriment requirement); North Western and North Wales Sea Fisheries Committee v Information Commissioner [2008] UKIT EA/2007/0133 (Coco not the exclusive test to determine exemptions); HEFC v Information Commissioner [2010] UKIT EA/2009/0036; Zacharides v Information Commissioner [2011] UKFTT EA/2010/0162 (GRC); O’Hara v Information Commissioner [2011] UKFTT EA/2010/0186 (GRC) (noted that Coco may need to be modified for personal information); Browning v Information Commissioner [2013] UKUT 236 (AAC); RB v Information Commissioner [2015] UKUT 614 (AAC). 132

276 Tanya Aplin However, Coco is not always relevant in the FOI context. For example, see the Court of Appeal decision in Secretary of State for the Home D epartment v British Union for the Abolition of Vivisection.136 An application by BUAV under the Freedom of Information Act 2000 for information was rejected by virtue of section 44(1)(a). This provision exempts information from disclosure if this is ‘prohibited by or under any enactment’. The enactment said to prohibit disclosure was section 24 of the Animals (Scientific Procedures) Act 1986 (ASPA) which makes it an offence to disclose ‘any information which has been obtained by him in the exercise of those functions and which he knows or has reasonable grounds for believing to have been given in confidence’. Essentially, the issue before the Court of Appeal was whether it was to correct to interpret section 24 of ASPA as importing, by implication, the Coco three-step test.137 The court distinguished Coco, saying that it was not relevant to this statutory provision. There was nothing in the statutory language or context of section 24 of ASPA to justify interpreting it according to Coco. Moreover, the Coco test was described as differently oriented— at balancing commercial interests—whereas this provision was ‘concerned with relations of citizen and state’ and not with balancing interests.138 In the context of the Environmental Information Regulations 2004139 there is an exception to the duty to disclose environmental information where disclosure would adversely effect, ‘the confidentiality of commercial or industrial information where such confidentiality is provided by law to protect a legitimate economic interest’.140 In some cases, Coco has been used to determine when the exemption applies;141 in others the relevance of Coco has been doubted.142 F. Ireland The impact of Coco in Ireland can be dealt with briefly. In short, Coco has been accepted as reflecting the general principles on confidentiality and has been utilised in relation to freedom of information law. As noted earlier, the uptake by courts did not happen until 2000s onwards.

136 Secretary of State for the Home Department v British Union for the Abolition of Vivisection [2008] EWCA Civ 870, [2009] 1 WLR 636. Eady J at first instance had held that relying on Coco was a flawed approach. 137 ibid [29]. 138 ibid [31] 139 SI 2004 No 3391. 140 See reg 12(5)(e). 141 Bristol City Council v Information Commissioner [2010] UKFTT EA/2010/0012; Jones v Information Commissioner [2012] 2 Info LR 129, UKIT EA/2011/0156. 142 Chicester District Council v Information Commissioner [2011] UKFTT EA/2010/0153 (GRC); SI Green (UK) v Information Commissioner [2013] UKUT 473 (AAC).

Coco v AN Clark (Engineers) Ltd (1969) 277 In Mahon,143 the Irish Supreme Court had to consider whether a planning tribunal (established by statute) was able to impose obligations of confidence in respect of documents that it circulated. There was no statutory provision conferring confidentiality on the tribunal or its workings, thus the court resorted to common law principles. It cited the Coco three-step test with approval.144 On the third step, however, the Court considered the question of detriment and noted that the applicable authorities dealing with confidentiality and government information (such as Spycatcher) required the tribunal to show detriment to the public interest by disclosure of the confidential documents.145 In McCann,146 the Irish Court of Appeal subsequently cited Mahon (and its approval of the Coco v Clark three-step test) when dealing with confidentiality principles.147 Section 26 of the Freedom of Information Act 1997 Act (Ireland) allows a public body to refuse a request for information where it has been given to that body in confidence or where it would constitute a breach of a duty of confidence. In Sheedy v The Information Commissioner148 the Supreme Court of Ireland held that determining whether the information was given in confidence pursuant to section 26(1)(a) of the 1997 Act was correctly determined according to Coco principles. Multiple decisions of the Information Commissioner and High Court have also applied Coco in the context of the 1997 Act.149 G. Australia This section examines the High Court of Australia, Full Federal Court of Australia and State Supreme Court decisions that cite Coco. It is apparent that Australian appellate courts have approved and applied the Coco three-step test. For example, in Commonwealth v John Fairfax & Sons Ltd150 Mason J, in an interlocutory application in the High Court to 143

Mahon v Post Publications [2007] IESC 15. ibid [71]–[72]. 145 ibid [84]. 146 McCann & Ors v The Trustees of the Victory Christian Fellowship [2015] IECA 117. 147 ibid [31]. 148 Sheedy v The Information Commissioner [2005] IESC 35. 149 From the Irish High Court see: Rotunda Hospital v Information Commissioner [2009] IEHC 315, [64]–[72]; Health Service Executive v Information Commissioner [2008] IEHC 298, [2009] 1 IR 700; Sheedy v The Information Commissioner [2004] IEHC 192, [2004] 2 IR 533, 547. There are numerous decisions of the Information Commissioner that apply Coco. Some illustrative examples are: Henry Ford & Sons Ltd, Nissan Ireland and Motor Distributors Ltd and The Office of Public Works [1999] IEIC 98049; Eircom Employee Share Ownership Trust and the Department of Finance [2003] IEIC 010367; Mr John Burns, The Sunday Times and Trinity College Dublin (TCD) [2009] IEIC 080208; Mr L and the Health Service Executive [2013] IEIC 110200; Mr X and the Department of Transport, Tourism and Sport [2014] IEIC 090077. 150 Commonwealth v John Fairfax & Sons Ltd (1980) 147 CLR 39. 144

278 Tanya Aplin restrain publication of government documents, emphasised that the plaintiff had to satisfy the Coco three-step test and, in particular, discussed the need for the government to show detriment to the public interest.151 Fairfax citing Coco was then referred to by McHugh J in the High Court decision in Johns v Australian Securities Commission,152 which involved the confidentiality of Royal Commission transcripts. In addition, in Australian Broadcasting Corporation (ABC) v Lenah Game Meats Pty Ltd153 Gleeson CJ in the High Court of Australia cited the Coco three-step test with approval,154 although did not apply it to the facts of the case because of Lenah’s concession that the information here (footage of activities within a possum-processing facility) was not confidential.155 Full Federal Court of Australia and State Supreme Court of Appeal decisions have also cited the Coco three-step test with approval.156 In some instances, the courts have stressed the first element of Coco, ie the requirement of confidentiality. Thus, in O’Brien v Komesaroff157 Mason J (with whom other members of the High Court of Australia agreed) cited Coco for the principle that additions to public domain material could be confidential, but on the facts the commercial documents at issue (unit trust deeds and articles of association) did not constitute confidential information.158 The Full Federal Court and State Supreme Courts have also relied upon the statements in Coco that the confidential nature of information can come from materials in the public domain if ‘skill and ingenuity of

151 ibid 50–53. See also Smith Kline & French Laboratories (Australia) v Secretary to the Department of Community Services and Health [1990] FCA 151, [1990] FSR 617, [133] per Gummow J. 152 Johns v Australian Securities Commission [1993] HCA 56, (1993) 178 CLR 408, [29]. 153 Australian Broadcasting Corporation (ABC) v Lenah Game Meats Pty Ltd (2001) 208 CLR 199. 154 Noted in Streetscape Projects (Australia) Pty Ltd v City of Sydney (No 2) [2013] NSWCA 240, [17]. 155 Lenah (n 153). 156 Federal Commissioner of Taxation v Donoghue [2015] FCAFC 183, [54]–[55] (citing Coco three-step test and finding that income tax information was not confidential); Futuretronics.com.au Pty Ltd v Graphix Labels Pty Ltd [2009] FCAFC 2, [31] (citing Coco for the second step); Marshall v Prescott [2015] NSWCA 110, [53] et seq (applying Coco three-step test, but finding information not confidential); Streetscape Projects (Australia) Pty Ltd v City of Sydney [2013] NSWCA 2, [157] (Beazley P with McFarlan and Emmett JJA agreeing); Del Casale v Artedomus (Aust) Pty Ltd [2007] NSWCA 172, [36] (Hodgson JA) and [102], [133]–[134] (Campbell JA) (citing Coco three-step test with approval); Herald and Weekly Times Pty Ltd v Victoria [2006] VSCA 146, [24]; Attorney General v Heinemann Publishers Australia Pty Ltd (1989) 75 ALR 353, 415 (Kirby P) and 453 (McHugh JA). 157 O’Brien v Komesaroff (1982) 150 CLR 310. 158 ibid [42]. See also Johns v Australian Securities Commission (1993) 178 CLR 408, [6]–[7] where Gaudron J cites Coco in relation to the public domain and what constitutes confidential information.

Coco v AN Clark (Engineers) Ltd (1969) 279 the human brain’ has been applied, but that protection does not extend to trivial tittle tattle.159 While the ‘reasonable person’ test for identifying an obligation of confidence has been cited with approval, the Full Federal Court of Australia has noted that it does not assist with determining the scope of the obligation of confidence.160 Doubts about the need to show detriment for the third limb (ie misuse) have also been expressed.161 Appellate courts in Australia have also observed that Coco is not exhaustive of when a confidential obligation can be imposed, pointing to the fact that an obligation may arise where information is inherently confidential or private or where a person has actual or constructive knowledge that information is to be regarded as confidential.162 Together with a more flexible approach to remedies, this has enabled breach of confidence to better protect privacy.163 However, there are still limitations to relying upon this action (particularly in relation to intrusions), such that lower courts have sought to recognise tortious protection for privacy164 and the Australian Law Reform Commission has recommended the legislative introduction of a tort of privacy.165 Appellate courts166 and the legislature have yet to act in this regard. H. Canada This section examines Canadian Supreme Court and State Court of Appeal decisions that cite Coco. 159 University of Western Australia v Gray [2009] FCAFC 116, [162]–[163]; Streetscape Projects (Australia) Pty Ltd v City of Sydney [2013] NSWCA 2, [160] (Beazley P with McFarlan and Emmett JJA agreeing). 160 Smith Kline & French Laboratories (Australia) v Secretary to the Department of Community Services and Health [1991] FCA 150, [48]–[49]. 161 Smith Kline & French Laboratories (Australia) v Secretary to the Department of Community Services and Health [1990] FCA 151, [1990] FSR 617, [133]–[134] (Gummow J). 162 Moorgate Tobacco Co Ltd v Philip Morris Ltd (No 2) (1984) 156 CLR 414, 438 (Deane J); Smith Kline & French Laboratories (Australia) v Secretary to the Department of Community Services and Health [1990] FCA 151, [1990] FSR 617, [93] (Gummow J); Shari-Lea Hitchcock v TCN Channel Nine Pty Ltd (No 2) [2000] NSWCA 82, [28] (Spigelman CJ); West Australian Newspapers Ltd v Bond [2009] WASCA 127, [42] (Buss JA); Armstrong Strategic Management and Marketing Pty Ltd v Expense Reduction Analysts Group Pty Ltd [2013] 295 ALR 348, [2012] NSWCA 430, [100] (JA Campbell, MacFarlan JA and Sackville AJA in agreement). 163 See, eg Doe v Australian Broadcasting Corporation [2007] VCC 281 (2007); Giller v Procopets [2008] VSCA 236 (recognising damages for mental distress for breach of confidence). 164 Grosse v Purvis [2003] QDC 151 (16 June 2003). 165 Australian Law Reform Commission Report, Serious Invasions of Privacy in the Digital Era (2014): www.alrc.gov.au/news-media/alrc-releases-report-serious-invasions-privacy-digital-era. 166 The Victorian Court of Appeal in Giller v Procopets preferred to develop breach of confidence rather than recognise a separate tort of privacy: [2008] VSCA 236, [167]–[168] (Ashley JA) [431] (Neave JA).

280 Tanya Aplin The first State Court of Appeal decisions to cite and apply the Coco three-step test for determining equitable obligations of confidence involved employment and commercial information and were almost a decade apart.167 It was not until 1989—some 21 years after Coco was decided— that the Canadian Supreme Court had occasion to consider its relevance to Canadian law in Lac Minerals Ltd v International Corona Resources Ltd.168 This case concerned misuse of information relating to the results of drilling on certain land, which in turn affected the acquisition of mining rights. More specifically, the plaintiff company had revealed to the defendant company (with a view to entering a joint venture or partnership) that property adjacent to the land on which it owned mining rights was likely to include mineral bearing deposits. The defendant company used this information to develop a successful competing bid to mine that property. Issues of breach of confidence and breach of fiduciary duty were raised and, in relation to the former, the Supreme Court found the defendant in breach of its duty of confidence. In reaching this conclusion, La Forest J cited the Coco three-step test with approval,169 along with the dicta of Megarry J that refers to there being a presumption of an obligation of confidence when ‘information of commercial or industrial value is given on a business-like basis’.170 Sopinka J applied the same three-step test as in Coco although without citing Coco171 except in relation to the second step and the reasonable person test.172 Both La Forest J173 and Sopinka J174 assumed that detriment to the confider was a requirement. Lac Minerals and its approval of Coco has been cited in subsequent State Court of Appeal decisions involving confidential business plans,175 travel databases,176 information relating to the purchase of property,177 and for technical or artistic information relating to the production of jewelry.178 The reasonable person test from step 2 of Coco has also been cited with approval.179 167 Slavutych v Baker [1973] 41 DLR (3d) 71, [45] (information relating to tenure of an academic) and Ridgewood Resources Ltd v Henuset (1982) 18 Alta LR (2d) 68 at 76 (information relevant to developed and undeveloped oil lands). 168 Lac Minerals Ltd v International Corona Resources Ltd [1990] FSR 441. 169 ibid, 447. 170 ibid, 451. 171 ibid, 491–92. 172 ibid, 494. 173 ibid, 449. 174 ibid, 494. 175 Seyedi v Nexen (2016) ABCA 24. 176 Sabre Inc v International Air Transport Assn (2011) 344 DLR (4th) 657. 177 Ontex Resources Ltd v Metalore Resources Ltd (1993) CanLII 8673; Foreman v Chambers (2007) 284 DLR (4th) 210; Terrien Bros Construction Ltd v Delaurier 2007 BCCA 623. 178 Macri v Miskiewicz 1993 CanLII 2385. 179 Seyedi v Nexen Inc (2016) ABCA 24 and Sabre Inc v International Air Transport Assn (2011) 344 DLR (4th) 657.

Coco v AN Clark (Engineers) Ltd (1969) 281 The Supreme Court of Canada has considered Coco on another occasion, primarily in relation to the nature of confidential information and its relevance to remedies, in Cadbury Schweppes Inc v FBI Foods Ltd.180 The confidential information in this case was the recipe for a tomato juice and clam broth drink called Clamato. The defendant had previously manufactured Clamato under a licence agreement, which was later terminated when the plaintiff acquired the company that owned the confidential information. The defendant produced a competing drink—the Caesar Cocktail made from tomato juice but which omitted clams or other seafood—which they made and sold at the end of the licence period. The plaintiff brought proceedings for breach of confidence and sought injunctive relief. The Supreme Court of Canada upheld the decision of Huddart J in the Supreme Court of British Columbia to refuse injunctive relief and to award damages on a ‘head start’ basis (and vacated the Court of Appeal’s decision to grant a permanent injunction). In reaching its decision, the Supreme Court observed that Coco set a low threshold for what information was capable of constituting confidential information181 and observed: ‘While equity is thus quick to protect confidences, it cannot be blind to the nature of the opportunity lost to the respondents, or the value of their information, when consideration turns to remedies’.182 The information was ‘nothing very special’, the confidential information had only minimally contributed to the success of the Caesar Cocktail and the plaintiffs had delayed in bringing their action.183 These considerations, plus the adequacy of a monetary remedy, meant that the trial judge had been correct to refuse a permanent injunction and that damages would need to be assessed for the 12-month period in which the defendants had their head start. It is also important to note that in the Canadian cases reviewed, only two dealt with Coco in the context of personal information. In Hollinsworth v BCTV184 the court applied the Coco three-step test in relation to a film made of hair transplant surgery. In Grant v Winnipeg Regional Health Authority,185 a case involving negligent disclosure of confidential medical information, the same three-step test as is contained in Coco was cited, but Lac Minerals and Cadbury Schweppes were cited in support of this test.186 The court does refer to Coco, however, in the context of breach of confidence having been expanded by English courts to protect a reasonable expectation of privacy (citing Campbell and Douglas v Hello! in support).187 180

Cadbury Schweppes Inc v FBI Foods Ltd [2000] FSR 491. ibid [75]. 182 ibid [76]. 183 ibid [86]. 184 Hollinsworth v BCTV 1998 CanLII 6527. 185 Grant v Winnipeg Regional Health Authority 2015 MBCA 44. 186 ibid [118]. 187 ibid [120]. 181

282 Tanya Aplin I. New Zealand In assessing the impact of Coco on New Zealand law, the focus in this s ection is on New Zealand Court of Appeal (NZCA) decisions.188 The approval and application of the Coco three-step test occurred in the late 1970s in AB Consolidated Ltd v Europe Strength Food Co Pty Ltd189 in a case involving commercial information, specifically the manufacturing process for health food bars. It was not until a decade later that the NZCA applied the Coco three-step test (noting its acceptance in AB Consolidated) to government information in the Spycatcher case of Attorney-General v Wellington Newspapers Ltd (No 2).190 The New Zealand High Court then later extended the application of Coco to personal information (in particular relating to a person’s identity).191 There was then a significant gap until the mid-2000s when the Court of Appeal considered the relevance of Coco again, this time in the context of the protection of privacy in Hosking v Runting.192 Hosking is a landmark decision in New Zealand law because the court recognised for the first time a tort in relation to wrongful publication of private information comprising two elements: a reasonable expectation of privacy in relation to facts; and publication of those facts that, according to an objective reasonable person, would be considered highly offensive.193 In reaching this conclusion, P Gault and Blanchard J (in the majority) noted that ‘[t]he elements of the breach of confidence are well established in New Zealand, and our courts have adopted the formulation in Coco v Clark in areas such as employment, trade secrets and information about a plaintiff’s private life’.194 However, Gault P and Blanchard J noted that the Coco formulation did not fit all privacy cases and that in England and Wales, while the courts had broadened the scope of the action, the Human Rights Act 1998 (UK) allowed the courts to move beyond the borders of Coco, specifically in relation to the second element, in order to protect private information.195 As such, England and Wales had created ‘two quite distinct versions of the tort of breach of confidence’.196 The developments in

188 There was an appeal from the Court of Appeal to the Privy Council in Arklow Investments Ltd v Maclean [2000] 1 WLR 594, 601 but this only cites Coco in support of the confidentiality obligation lasting provided the information is confidential. 189 AB Consolidated Ltd v Europe Strength Food Co Pty Ltd [1978] 2 NZLR 515, 520–21. 190 Attorney-General v Wellington Newspapers Ltd (No 2) [1989] 2 FSR 691, 702. 191 G v Attorney-General [1994] 1 NZLR 714, 717; X v Attorney-General [1997] 2 NZLR 623, 626. 192 Hosking v Runting [2005] 1 NZLR 1. 193 Hosking, [117] (Gault P and Blanchard J) and [247]–[251] and [259] (Tipping J). 194 ibid, [46] (Gault P and Blanchard J). 195 ibid, [38]–[43] (Gault P and Blanchard J). 196 ibid, [42] (Gault P and Blanchard J).

Coco v AN Clark (Engineers) Ltd (1969) 283 England and Wales gave impetus to the majority to develop New Zealand law to protect private information, but they expressed a clear preference for separate causes of action rather than a ‘twin-track’ approach to breach of confidence, for the sake of clarity of analysis and transparency.197 Post-Hosking, the reliance on Coco in relation to personal information has not been abandoned in favour of the privacy tort.198 For example, in Hunt v A,199 which involved the disclosure of information that identified individuals involved in a sexual abuse case, the court analysed the issue according to confidentiality and Coco principles, with only a passing reference to Hosking.200 Likewise, in R x X,201 which concerned the admissibility of evidence of a conversation between a nurse and a psychiatric patient, the court cited Coco202 although was keen to note its expansion in England and Wales, in cases such as Campbell.203 Although Hosking has been followed in lower court decisions,204 it has not been approved by the New Zealand Supreme Court. Rather, the Court has expressed scepticism of Hosking in Television New Zealand v Rogers.205 In this decision, Anderson J, who had dissented in Hosking v Runting, observed that he shared: the concern expressed by the Chief Justice that the jurisprudence of that case should not be regarded as settled. It was decided by a bare majority and both the existence of the tort and the scope of it, if it continues to be recognised, will fall to be reviewed by this Court in an appropriate case.206

In the commercial sphere, the Coco three-step test continues to be cited with approval, along with AB Consolidated.207 Therefore, it is fair to say that Coco continues to remain influential in New Zealand law in relation to all types of confidential information.

197 ibid, [246] (Tipping J): ‘I consider it legally preferable and better for society’s understanding of what the Courts are doing to achieve the appropriate substantive outcome under a self-contained and stand-alone common law cause of action to be known as invasion of privacy’. 198 Although some development of the tort has occurred to cover intrusions: see C v Holland [2012] NZHC 2155 and Faesenkleot v Jenkin [2014] NZHC 1637. See also T McKenzie, ‘The New Intrusion Tort: The News Media Exposed’ (2014) 45 VUWLR 79. 199 Hunt v A [2007] NZCA 332; [2008] 1 NZLR 368, [65], [73]. 200 ibid [87]. 201 R x X [2010] 2 NZLR 181. 202 ibid [42]. 203 ibid [45]. 204 Andrews v Television New Zealand Ltd [2009] 1 NZLR 220 and Brown v AttorneyGeneral NZAR [2006] 552 (DC) Judge RLB Spear. It has been cited in passing in Mafart v Television New Zealand Ltd [2006] 3 NZLR 534, [60]; Hunt v A [2008] 1 NZLR 368, [87]; and Brooker v Police [2007] 3 NZLR 91, [122] and [125]. 205 Television New Zealand v Rogers [2008] 2 NZLR 277. 206 ibid [144] (Anderson J). 207 Skids Programme Management v McNeill [2013] 1 NZLR 1, [76]; Karum Group LLC v Paykel Financial Services [2014] NZLR 412, 467.

284 Tanya Aplin IV. CONCLUSION

The above analysis has demonstrated that Coco has become a highly significant authority in the law of confidence in England and Wales, Australia, Canada, New Zealand and Ireland. There is also nothing to suggest that the role of Coco will wane, except possibly in relation to privacy protection. In England and Wales, the tort of misuse of private information is now unshackled from breach of confidence, thus opening the way for the tort’s future development and the fading relevance of Coco when it comes to personal information. However, even in New Zealand, where a separate tort of privacy has been judicially recognised (because of the perceived limitations of breach of confidence), the equitable action is still used for protection of personal information. The implementation of the EU Trade Secrets Directive208 by the UK, prior to its likely departure from the EU following the result of the referendum on 23 June 2016, may affect the application of the Coco three-step test in relation to commercial or trade secrets. This will depend on whether the UK feels the need to copy and paste Article 4 of the Directive, which stipulates what amounts to unlawful acquisition, use or disclosure of a trade secret209 and, further, the degree to which rulings on the Directive by the Court of Justice of the European Union will be regarded as binding or persuasive in its interpretation (depending on the type of departure of the UK from the EU). For now, however, courts in England and Wales do not seem anywhere near the brink of jettisoning Coco when it comes to commercial confidential information. An interesting, yet difficult to answer, question is: why has Coco been so influential? No doubt part of the appeal of Coco is that it was the first decision to synthesise and encapsulate neatly the principles relating to the equitable action for breach of confidence.210 This is aptly illustrated by the headnote to the report of Coco where the keywords state ‘elements of breach of confidence’ and the headnote goes on to describe that Megarry J held the plaintiff had not satisfied ‘the three elements essential to a cause of action for breach of confidence’.211 Whereas, the headnotes of reports of earlier decisions, such as Saltman, Terrapin, Cranleigh Precision and Seager v Copydex, do not frame the equitable principles in this manner. In Saltman,

208 Directive 2016/943 on the protection of undisclosed know-how and business information (trade secrets) against their unlawful acquisition, use, or disclosure [2016] OJ L157/1. 209 The greatest divergence in approach relates to unauthorised acquisition. 210 See, eg, RP Meagher, WMC Gummow, JRF Lehane, Equity, doctrines, and remedies, 2nd edn (Sydney, Butterworths, 1984) [4110]–[4111], describing Megarry J in Coco as assembling the ideas in Saltman and Seager v Copydex and stating that ‘[t]he formulation of Megarry J will suffice as a working statement of the equitable principle’. See the same statements in 3rd edn (1992), [4110]–[4111] and 4th edn (2002), [41-050], [41-055]. 211 I would like to thank Dr Jose Bellido for drawing this to my attention.

Coco v AN Clark (Engineers) Ltd (1969) 285 for example (which was ground-breaking for articulating equitable rather than contractual duties of confidence), the keywords simply state, ‘rights of a plaintiff apart from contract in case of misuse of confidential information’ and the headnote describes that ‘an obligation of confidence was placed on the Defendants by the delivery of the drawings, since they knew that such drawings were the property of the first Plaintiffs, and had been placed in the Defendants’ hands for a limited purpose’. In Terrapin and Cranleigh, the headnote keywords refer to ‘confidential information’ and ‘duty of confidence’ and in Seager v Copydex there is reference to ‘an action for misuse of confidential information’. But there is no prominence given in the headnotes of these cases to the principles underpinning this action. Nor are the principles explicated in the pithy manner seen in Coco. In articulating the three-step test, in both its simple and elaborated forms, Megarry J gave structure and clarity to a malleable action, but without turning it into a prescriptive trio of requirements to be satisfied. We have seen that the first step can embrace all varieties of confidential information (commercial, personal, artistic and government secrets); the second step has evolved to enable obligations of confidence to be imposed where a reasonable person knows (or ought to know) that it is confidential (thus accommodating instances of accidental or surreptitious acquisition); and the defence of public interest has been added to the notion of unauthorised use in the third step, while at the same time the need for detriment has been queried. Moreover, in England and Wales, the Coco three-step test has been judicially transformed into a distinct tort of misuse of private information. Thus, Megarry J’s formulation of the action preserved the flexibility of equity, but at the same time offered a useful elucidation of principles. The approval of Coco and its three-step test by the most senior appellate courts in the jurisdictions discussed is yet another reason for the enduring importance of the case. One can also point to its widespread acceptance amongst commentators in the field. Perhaps, however, the unusual weight given to a first instance, interlocutory decision can be partly explained by the regard in which Megarry J was held. He was appointed to the bench in 1967, and later became Vice Chancellor of the Chancery Division in 1976 before retiring in 1985. Following his retirement, he was frequently invited to sit in the Privy Council.212 Alongside his proficiency as a judge, Sir Robert Megarry’s obituaries emphasise his academic success and credibility. They note that he held academic appointments at the University of Cambridge, New York University and Osgoode Hall, and that he lectured at the Council

212 The Independent (25 October 2006). Sir Robert Megarry’s obituary in The Guardian (19 October 2006) speculates that he did not get promoted to an appellate court through a mixture of circumstances—an (unsuccessful) prosecution by the Inland Revenue for making false statements on his income tax returns; his delayed elevation to the High Court when he was 57; and the fact that he served in the civil service, rather than in combat, during the war.

286 Tanya Aplin of Legal Education (Bar School). The Telegraph describes Megarry J as ‘the most learned man on the Bench’213 and The Guardian as ‘an all rounder of rare quality’.214 The Times obituary notes that Megarry J published extensively in the areas of property law and equity, and that ‘[u]sers of law textbooks say he revolutionised the field in favour of a more rational, clearer taxonomy’.215 The Independent describes his publications216 as ‘groundbreaking works, setting out technical areas of the law in a clearly ordered and systematic way which students and practitioners found invaluable’ and that his scholarship ‘earned him not only an LLD from Cambridge but also a Fellowship of the British Academy’.217 Certainly, the Coco three-step test is an example of this tendency for intellectual organisation and lucidity. Thus, Megarry J’s scholarly aptitude and reputation, alongside his ability successfully to straddle academia and practice,218 might ultimately account for why the Coco three-step test has gained the prominence that it has in relation to breach of confidence. ANNEX

Sources consulted Online indexes and databases AustLii BaiLii BarNet Jade (Australia) CanLii Hein Online InformationTr (UK) JustCite LexisNexis NZLii Singapore Law Reports (Online)

213 The Telegraph (17 October 2006). The Independent (25 October 2006) states he ‘was widely regarded as the most learned and hard-working judge of his time’. 214 The Guardian (19 October 2006). 215 The Times (16 October 2006). 216 The Law of Real Property (1957), with Professor HWR Wade; A Manual of the Law of Real Property (1946) (there were eight editions), The Rents Act (1939) (there were 11 editions) and Snell’s Equity (which he edited from the 23rd edition in 1947 until the 28th edition). He was also review editor and assistant editor of Law Quarterly Review for 23 years from 1944 to 1967. 217 The Independent (25 October 2006). 218 The Independent (25 October 2006) describes that Sir Robert Megarry’s ‘energy and talent’ enabled him to achieve ‘eminence as author, teacher and practitioner’.

Coco v AN Clark (Engineers) Ltd (1969) 287 Westlaw (UK) Westlaw International WorldLii Offline indexes and law reports Australia Administrative Law Decisions Australian and New Zealand Citator to UK Reports 1558 to 1972 (Butterworths) Australian and New Zealand Citator to UK Reports 2001 (Butterworths) Australian Case Citator Australian Current Law Australian Law Reports Commonwealth Law Reports Federal Court Reports NSW Law Reports Queensland Reports Tasmanian Reports Victorian Reports Western Australia Reports Canada The Canadian Abridgement Canadian Case Citations Federal Trail Reports England and Wales Current Law Yearbook The Digest Law Reports New Zealand Australian and New Zealand Citator to UK Reports 1558 to 1972 (Butterworths) Australian and New Zealand Citator to UK Reports 2001 (Butterworths) Butterworth’s Current Law District Court Reports New Zealand Administrative Reports New Zealand Law Reports

288 Tanya Aplin Scotland The Laws of Scotland Session Cases Singapore The Singapore Law Reports USA ALR Index Federal Reporter Shepard’s Citations United States Supreme Court Digest Search terms used Coco v Clark, Coco v AN Clark, Coco v AN Clark and Coco [1969] RPC 41 Coco v AN Clark Engineers Ltd Keyword searches of case reports Coco; Clark; Megarry; three; first; confidence; test; quality; misuse; relief

11 Biogen v Medeva (1996) LUKE MCDONAGH*

I. INTRODUCTION

T

HE DECISION IN Biogen v Medeva was handed down by the House of Lords more than 20 years ago.1 Since then, the case has acquired a landmark status in British intellectual property law, not least because it was the first time that the House of Lords considered genetic engineering in the context of patent law.2 Yet the specific historical contours of the case and the timing of the controversy were also significant. It was a case decided when the patenting of biotechnology had come under close political and legal scrutiny.3 Although the commercial importance of biotechnology was already a reality, the legal and the political responses turned out to be problematic, since there were arguments for and against the patent system for protecting biotechnological inventions.4 Despite—or because of—its being an unsettled legal arena, the encounter between law and biotechnology was interesting because it elicited theoretical and practical questions about biotechnology and the legal form.5 As an information-intensive technology,6 the impact of biotechnology on patent law affected both ethical

* Archival sources are abbreviated as: CSHL = Cold Spring Harbour Laboratory, New York, USA; NA = National Archives, Kew, England; PA = Parliamentary Archives, London, England; UEA= University of Edinburgh Archives, Scotland. 1 Biogen Inc v Medeva plc [1997] RPC 1, [1996] UKHL 18, (1997) 38 BMLR 149, on appeal from the Court of Appeal—Biogen Inc v Medeva Plc [1995] FSR 4, [1995] RPC 25, and the Patents Court—Biogen Inc v Medeva Plc [1993] RPC 475. 2 ‘First House of Lords Decision on Biotechnology Patent’ (1996) 1 Comm Law 61; A Warren ‘Discrimination by Redefinition: The Judicial Approach to Patenting Biotechnology in the United Kingdom’ (1997) The Journal of Business Law 575. 3 D Bannerman ‘Biotech Patenting’ CIPA Journal (January 1994) 3–6. 4 ‘Medical Research Council- Patenting’; FD 23/2389, NA; see also House of Commons Science and Technology Committee (Third Report, 1994–1995 Session) para 216; S Amerasinghe ‘Biotechnology in Australia’ IPAsia (April 1996) 25–27. 5 See A Pottage ‘The Socio-Legal Implications of the New Biotechnologies’ (2007) Annual Review of Law and Social Science 321–44. 6 M Kenney, Biotechnology: The University Industrial Complex (New Haven, Yale University Press, 1984) 4.

290 Luke McDonagh concerns and the ways in which the law could imagine industrial objects.7 Furthermore, biotechnological firms such as Biogen, Chiron or Genentech emerged as harbingers of a new intensive era of knowledge-based capitalism in which venture capitalists and scientists joined efforts to produce (and secure) results that could be commercialised.8 Placing the dispute in its historical context brings other interesting issues into consideration. While the case was being decided, the expectations of political consensus around the EU Biotechnology Directive were very low.9 Although the Directive was finally agreed and passed,10 it is important to note that the case was decided in the midst of a difficult political atmosphere fraught with fragmented visions of patent law.11 Furthermore, the importance of the case was quickly recognised from a pedagogical point of view. Every student of UK patent law began to study it, often in great detail, because it quickly made its way into standard intellectual property textbooks.12 Consequently, in exams it was—and still is—not uncommon for students to be asked to discuss the legacy of Lord Hoffmann’s statement on ‘Biogen insufficiency’ in the context of earlier cases like Genentech (1989) and later cases such as Generics v Lundbeck (2009).13 Ambitious students take their time in writing their essays, trying to craft an argument as sly as Lord Hoffmann’s judgment. For the intellectual property scholar, reading the case today is a nostalgic yet stimulating experience. Despite later decisions having narrowed the scope of its effect,14 the judgment should still be viewed as a pivotal decision

7 A Pottage, ‘Who Owns Academic Knowledge?’ (2004) 24 Cambridge Anthropology 2, 1–20. 8 B Rasmussen, Innovation and Commercialisation in the Biopharmaceutical Industry (Cheltenham, Edward Elgar, 2010) 67; see also M Newell-McGloughlin and E Re, The Evolution of Biotechnology: From Natufians to Nanotechnology (AA Dordrecht, Springer, 2006) 55. 9 ‘Biotechnology Committee Report’ CIPA Journal (February 1995) 58–59. 10 Directive 98/44/EC of the European Parliament and of the Council of 6 July 1998 on the Legal Protection of Biotechnological Inventions. 11 G Porter ‘The Drafting History of the European Biotechnology Directive’ in A Plomer and P Torremans (eds) Embryonic Stem Cell Patents: European Law and Ethics (New York, Oxford University Press, 2009) 3–28. 12 L Bently and B Sherman, Intellectual Property Law (Oxford, Oxford University Press, 2015) 414–15, 427, 454, 559–90, 1206; WR Cornish, D Llewelyn and T Aplin, Intellectual Property: Patents, Copyright, Trade Marks and Allied Rights (London, Sweet & Maxwell, 2010) 165–66, 211, 222, 248, 254–57; J Davies, Intellectual Property Law (Oxford, Oxford University Press, 2008) 255, 261–62; 281–91, 299–300. 13 Genentech Inc’s Patent [1989] RPC 147, 272. H Lundbeck A/S v Generics (UK) Ltd [2008] EWCA Civ 311, [2008] RPC 19 as affirmed by the House of Lords in [2009] UKHL 12, [2009] 2 All ER 955. See also D Brennan, ‘Biogen Sufficiency Reconsidered’ (2009) 4 Intellectual Property Quarterly 476; J Pila, ‘Chemical Products and Proportionate Patents Before and After Generics v Lundbeck’ (2009) 20 King’s Law Journal 489 and C Helmers and L McDonagh, ‘Patent Litigation in the UK: An Empirical Survey 2000–2008’ (2013) 8 Journal of Intellectual Property Law & Practice 846. 14 S Moore ‘Patents: Insufficiency’ (2009) 31 European Intellectual Property Review N53–54.

Biogen v Medeva (1996) 291 in UK patent law.15 The case is of interest both historically and theoretically and still has features in need of further scrutiny, even after all this time, not least about how dissimilar the areas of law and science are from a methodological point of view, with each field possessing its own rational processes and own standards of acceptable proof.16 On this, one could say that Biogen v Medeva shows—to scholars of science and law alike—that it is precisely such friction that makes patent law both fascinating and difficult. In this regard, over the course of this chapter I will assess the reasoning behind the judgments at the High Court, the Court of Appeal and, finally, the House of Lords, exploring each decision in detail. Following that I will consider what makes the case a landmark today from the perspective of its judicial legacy, also taking into account the views of the case participants 20 years on. II. COMMERCIALISING BIOTECHNOLOGY

To understand the whole story of the litigation—from the Patents Court to the House of Lords, as well as the decisions of the European Patent Office, both the Opposition Division and the Technical Board of Appeal, one must first go back to the making of Biogen NV, the predecessor of the plaintiff, Biogen, Inc, a company created in the late 1970s to commercialise research in the blossoming field of biotechnology.17 This occurred during a period of commercial euphoria surrounding the possibility of profit-making activities that emerged with the significant relaxation of the codes of practice and procedures regarding DNA research.18 In 1977 and early 1978 representatives of a venture capital group (INCO) approached leading scientists with the idea of setting up ‘a biotechnology company in Europe to use recombinant DNA technology to produce commercial products’.19 It was thought that 15 The case is heavily featured in the latest edition of the leading practitioner textbook on patents: The Hon Mr Justice Birss, A Waugh, QC, T Mitcheson, QC, D Campbell, QC, J Turner, QC, T Hinchliffe, QC, Terrell on the Law of Patents (London, Sweet & Maxwell, 2017) including Chapter 2, section 2: ‘What is an Invention?’ and Chapter 13, section 3: ‘Biogen Insufficiency’ (last accessed via Westlaw, 13 December 2016). 16 A Pottage and B Sherman, Figures of Invention: A History of Modern Patent Law (New York, Oxford University Press, 2010) 1–29. 17 C Weissmann ‘Recombinant Interferon—the 20th anniversary’ in P Buckel (ed) Recombinant Protein Drugs (Basel, Springer, 2001) 3–42; ‘Harvard Keeps Its Hands Clean’ New Scientist, 20 November 1980, 497; ‘Harvard, Biogen in Patent Deal’ The New York Times (29 November 1983); S Yanchiski, ‘Chemical Giants Turn to Biotechnology’ New Scientist (6 November 1980) 349. 18 GSA Szabo ‘Patents and Recombinant DNA’ (1977) 2 Trends in Biochemical Sciences, 248–49. 19 ‘Summary of Professor Murray’s work’ in ‘Biogen’s Statement’, HL/PO/JU/3/1913, PA; see also W Powell and K Sandholtz ‘Chance, Nécessité, et Naïveté: Ingredients to Create a New Organizational Form’ in JF Padgett and WW Powell (eds) The Emergence of Organizations and Markets (Princeton, Princeton University Press, 2012) 412–16.

292 Luke McDonagh Geneva (Switzerland) would be a good location to attract expertise since the leading scientists in molecular biology lived and worked in Europe.20 In fact, Biogen was the first Europe-based biotechnology firm—albeit one with close links with Harvard University—and the company went on to become one of the world’s largest and most important biotech companies.21 Biogen was shaped by the convergence of commercial interests around academic research.22 According to Stanley Reiser, its founding marked a historical milestone in the history of science because it crystallised an ‘emerging viewpoint among biohealth scientists that work in a business corporation is an appropriate extension of their lives in science’.23 Among the scientists involved in the initial project were Walter Gilbert of Harvard University,24 Kenneth Murray from the University of Edinburgh, who later became Professor Sir Kenneth Murray,25 Phillip Allen Sharp, Professor at the Massachusetts Institute of Technology,26 and Charles Weissmann, Professor at the University of Zurich.27 All were undoubtedly world-leading experts in their respective fields of study, and two of them, Gilbert and Sharp, later became Nobel Laureates.28 The fact that the corporate structure of Biogen consisted of prominent scientists, including Nobel Laureates, was mentioned by the plaintiff in the proceedings both to give some indication of the calibre of those present and to highlight the fact that Biogen was not a ‘Board of Directors in the conventional sense’.29

20

K Noble ‘Venture Capitalists’ New Role’ The New York Times (31 August 1981). J Silverlight ‘Cashing in on DNA’ The Guardian (10 February 1980). 22 Kenney, Biotechnology (n 6). 23 SJ Reiser ‘The Ethics Movement in the Biological and Health Sciences’ in RE Bullger, E Heitman and SJ Reiser (eds) The Ethical Dimensions of the Biological and Health Sciences (Cambridge, Cambridge University Press, 2002) 3–20, 9. 24 ‘Copy of newspaper article from Boston Business Journal regarding Walter Gilbert and Biogen, 1984/1985’ JDW/2/2/686/116, CSHL Archives Repository. 25 Professor Murray was elected a Fellow of the Royal Society and was knighted for his services to science in 1993; see ‘The Witnesses’ in ‘Biogen’s Statement’, HL/PO/JU/3/1913, PA. At the time of writing, the University of Edinburgh is making available Murray’s papers concerning the case, see Coll-1527: Papers of Professor Kenneth Murray, UEA. 26 P Badge, Nobel Faces: A Gallery of Nobel Prize Winners (Weinheim, Wiley VCH, 2007) 596; J Durant, ‘Refrain from using the Alphabet: How Community Outreach Catalyzed the Life Sciences at MIT’ in D Kaiser (ed) Becoming MIT: Moments of Decision (Cambridge, Mass, The MIT Press, 2010) 159. 27 See, generally, P Goujon, From Biotechnology to Genomes: The Meaning of the Double Helix (London, World Scientific Publishing, 2001) 225; ‘Harvard Wins Key Biotech Patent’ (1983) New Scientist (8 December), 741. See also AD Chandler, Shaping the Industrial Century: The Remarkable Story of the Evolution of the Modern Chemical and Pharmaceutical Companies (Cambridge, Mass, Harvard University Press, 2005) 275–76. 28 See S Müller-Wille, HJ Rheinberger, A Cultural History of Heredity (Chicago, University of Chicago Press, 2012) 190 and D Yi, The Recombinant University. Genetic Engineering and the Emergence of Stanford Biotechnology (Chicago, The University of Chicago Press, 2015) 173. 29 ‘Case for the Appellants’, HL/PO/JU/3/1913, PA. 21

Biogen v Medeva (1996) 293 For the purposes of this chapter, it is particularly significant that Biogen was one of the first companies to use genetic engineering to develop pharmaceutical products—a business model that would become heavily reliant on patent law.30 In doing so, the company developed formal and informal relationships with academic institutions, funding professorships and laboratories. One of these professorships was held at the University of Edinburgh by Kenneth Murray, an innovative researcher in the field of DNA recombination who had contributed, with his wife Noreen, to the Scottish university becoming an important scientific research hub.31 In fact, the Department of Molecular Biology at the University of Edinburgh, having been instituted in 1965, was the first of its kind in the UK.32 Murray’s interest in virology increased because of his association with Biogen,33 resulting in a series of projects that constituted the basis for a useful—and lucrative—hepatitis B vaccine.34 Such scientific achievement was derived from his experimental work in the late 1970s, particularly with the successful isolation of part of the genome of the virus hepatitis B—the Dane particle—and the splicing of it into the DNA of a host cell.35 When the host cell replicated, the part of the hepatitis B genome encoded for in the spliced-in DNA was expressed. This expression was a hepatitis B antigen capable of triggering the production of hepatitis B antibodies in the immune system. Murray’s experiments led to the filing of a patent application by Biogen on 22 December 1978 in the UK (the Biogen 1 application).36 On 21 December 1979 Biogen made a filing at

30 S Smith Hughes, Genentech: The Beginnings of Biotech (Chicago, University of Chicago Press, 2011) 99–106. 31 E Southern ‘Tools for Genomics’ (2005) 11 Nature Medicine, 1029; T Dalyell ‘Obituary: Professor Sir Kenneth Murray, the Scientist Who Developed the Vaccine Against Hepatitis B’ The Independent (15 April 2013); D Finnegan, ‘Obituary: Sir Kenneth Murray’ The Guardian (21 April 2013); ‘Obituary: Professor Sir Kenneth Murray; Molecular Biologist Who Helped to Create a Life-Saving Machine’ The Times (26 April 2013); WJ Brammar and WB Gratzer ‘Sir Kenneth Murray: 30 December 1930–7 April 2013’ (2014) 60 Biogr Mems Fell R Soc 331–48; A Gann and J Beggs ‘Noreen Elizabeth Murray CBE. 26 February 1935–12 May 2011’ (2014) 60 Biogr Mems Fell R Soc, 349–74. 32 S de Chadarevian, Designs for Life: Molecular Biology after World War II (Cambridge, Cambridge University Press, 2002) 254. 33 ‘Cover letter to Kenneth Murray’s CV 1980/1981’, SB/1/1/437/7, CSHL Archives Repository. 34 C Marwick ‘Genetic Engineers in the Sin-Bin … and Making Vaccine Against Hepatitis’ New Scientist (11 September 1980), 764; M Walters ‘Prof Murray’s Biogen Mint’ (1983) The Daily Mail (22 February) 29. See also J Watts and T Alkin, ‘A Road to Unification: Patent Litigation in the United Kingdom 1990–2012’ (2013) 23 Fordham Intell Prop Media & Ent LJ 571, 581. 35 D Brennan ‘Biogen Sufficiency Reconsidered’ (n 13) 476–79. 36 ‘After much discussion it was agreed that Murray and Greenstreet should prepare patent for filing as soon as cloned strain available for deposit. This would be withdrawn and replaced with a new one for “expression strain” if available in one year’ in ‘Minutes of the Fourth B iogen Scientific Board Meeting, 24 June 1978’,‘Miscellaneous Documents’ HL/PO/JU/3/1913, PA.

294 Luke McDonagh the European Patent Office (EPO)—claiming the earlier priority date—for a patent (the Biogen patent) for an invention comprising: A recombinant DNA molecule characterized by a DNA sequence coding for a polypeptide or a fragment thereof displaying HBV antigen specificity, said DNA sequence being operatively linked to an expression control sequence in the recombinant DNA molecule and being expressed to produce a polypeptide displaying HBV antigen specificity when a suitable host cell transformed with said recombinant DNA molecule is cultured, the transformed host cell not producing any human serum proteins and any primate serum proteins other than the polypeptide displaying HBV antigen specificity.37

Claim 1 of the Biogen patent thus concerned a product defined ‘partly by the way it had been made (‘recombinant DNA’) and partly by what it did (the words following ‘characterized by’)’.38 Meanwhile, Claims 2 to 7 described specific embodiments of the recombinant DNA molecule according to Claim 1. After a lengthy examination procedure, the patent was granted by the EPO on July 1990 as European Patent (UK) No 0182442.39 Opposition proceedings were entered against the patent shortly thereafter.40 The Opposition Division of the EPO revoked the patent on 21 January 1993. On appeal, the Board of Appeal overturned that decision on 28 July 1994, which meant that the patent remained valid.41 Of course, due to the fragmentary nature of enforcement within the European Patent Convention system, national litigation could still proceed over the same patent on the issues of infringement and validity.42 While the courts in the United Kingdom (England and Wales) had begun to take the EPO’s validity decisions into account, there was nonetheless some potential for divergent judicial decisions to occur at the EPO and national levels.43 In fact, although previous national cases had emphasised that the ‘decisions of the EPO must carry considerably persuasive authority’,44 this kind of divergence in the context of parallel proceedings did indeed occur in Biogen v Medeva.45 37

BIOGEN/Hepatitis B [1995] EPOR 1. Patent specification available at . 39 ibid. 40 The oppositions were entered by International Murex Technologies Corporation, the Institut Pasteur, Immune AG and Hexal-Biotech GmbH. Medeva applied to intervene in the Opposition proceedings but the Technical Board of Appeal held that Medeva was not entitled to intervene; see ‘Medeva’s Statement’, HL/PO/JU/3/1913, PA; see also ‘Biogen Response to Medeva Plc’s Notice of Intervention Under Article 105 EPC (14 Jan 1992)’, Coll-1527: Papers of Professor Kenneth Murray, UEA. 41 T 0296/93 (HBV antigen production), OJEPO 1995, 627. 42 I Britton ‘The English Stay Back?’ (2000) 3 Bio-Science Law Review 3, 99. 43 L McDonagh, European Patent Litigation in the Shadow of the Unified Patent Court (Cheltenham, Edward Elgar, 2016) 1–11. 44 Asahi Kasei Kogyo KK’s Application [1991] RPC 485, 540; see also Merrell Dow Pharmaceuticals Inc v H N Norton & Co Ltd [1996] RPC 76. 45 Y Cripps ‘Recombinant DNA Technology. A Patent Case in the House of Lords’ (1997) 56 The Cambridge Law Journal, 262–67, and J Straus ‘Patent Litigation in Europe—A G limmer of Hope? Present Status and Future Perspectives’ (2000) 2 Wash. UJL & Pol’y 403, 407. 38 European

Biogen v Medeva (1996) 295 III. INVENTIVE THOUGHT OR INVENTIVE INDUSTRY?

A. From the Office to the Court UK national litigation over the patent was initiated in July 1992, when Biogen filed a patent infringement case against Medeva plc at the Patents Court—part of the High Court of England and Wales—in London.46 The controversy underlying the case was that a UK-based pharmaceutical group called Medeva planned to market a third-generation hepatitis B vaccine manufactured via recombinant DNA technology.47 Biogen argued that this was an infringement of the patent granted to them by the EPO in 1990 (EP 0182442), as well as another of their European patents (EP 0013828) though infringement proceedings over this other patent were not pursued through to trial.48 Medeva made a counter-claim for revocation. Interestingly, Biogen had licensed EP 0182442—the Biogen patent—to SmithKline Beecham and Merck, both of whom went on to market successful vaccines based on the patent;49 and early on in the proceedings Medeva attempted (unsuccessfully) to join SmithKline Beecham as a defendant to their revocation counter-claim.50 The analysis of the precise grounds of Medeva’s counter-claim for revocation of the Biogen patent is crucial for our purposes.51 The fundamentals can be summarised as follows: (i)

that the claimed invention was obvious in accordance with sections l(l)(b) and 3 of the Patents Act 1977, both at the date of application for the Biogen patent filed in December 1979 and at the claimed priority date of the Biogen 1 application in December 1978. (During the trial Biogen conceded that the claimed invention was obvious at the date when the application for the European patent was filed. but argued that it was not obvious on the claimed priority date of the earlier Biogen 1 application.) (ii) that Biogen was not entitled to avail of the priority date of the 1978 Biogen 1 application because—in accordance with section 5(2)(a) of the Patents Act 1977—it did not support the invention claimed in the Biogen patent as filed in 1979.

46 ‘Statement of Claim’, HL/PO/JU/3/1913, PA. The Patents Court was created in 1980 by section 96 of the Patents Act 1977 (subsequently repealed and replaced by section 60 of the Senior Courts Act 1981). For a comment, see J Rimmer ‘The UK Patents Court Decisions in Chiron and Biogen: A Review of the Issues’ Patent World (March 1994) 22–28; see also I Judge, S Cooke, M Burdon, T Powell, P Gilbert and C Hore ‘Chiron v Organon and Biogen v Medeva: A Boost for the Biotech Industry’ Patent World (December 1993–January 1994) 20–26. 47 ‘Medeva’s Fate Could Hinge on Patent Case’ The Times (30 September 1993) 30, and G Counsell, ‘Medeva Faces Court Action over Patent’ The Independent (25 August 1993) 40. 48 ‘Amended Particulars of Infringement’, HL/PO/JU/3/1913, PA. 49 C Huhne, ‘Patent Challenge’ The Independent (4 October 1993) 22 and G Counsell ‘Medeva Faces Suit over New Vaccine’ The Independent (28 October 1993) 41. 50 L Jacobs ‘Case Comment: Patents’ (1993) 15 European Intellectual Property Review D89. 51 ‘Amended Defence and Counterclaim’ and ‘Amended Particulars of Objections’ 30 September 1992, HL/PO/JU/3/1913, PA.

296 Luke McDonagh (iii) that the claimed invention was not an invention in line with section 1(1) Patents Act 1977. (iv) that the description in the specification was insufficient under section 72(l)(c) of the Patents Act 1977.

During a lengthy trial at the Patents Court, Aldous J heard expert evidence about what people skilled in the art of recombinant DNA technology would have thought and done at the time.52 One of the interesting points that came out during expert testimony was that during the period immediately prior to Prof Murray’s 1978 discovery a general voluntary moratorium on recombinant DNA experiments perceived to be potentially dangerous had been in place following the publication of the ‘Berg letter’ in the leading British journal Nature in July 1974.53 In retrospect, this was described as a factor that delayed progress in the field.54 While scientists continued to develop ideas in the abstract, practical research had halted, leaving the methods available to reach desired end-points and goals undeveloped.55 This was relevant to the court’s analysis of inventive step, because Aldous J had to decide whether, in light of prior-existing research, the patent was obvious at the claimed priority date of 1978. Nonetheless, the first issue to decide was whether Claim 1 of the Biogen patent referred to more than one invention. This was important to the insufficiency and obviousness questions because if the patent contained more than one invention, the claims would have to sufficiently disclose each invention; and moreover, each of the inventions would have to be considered in turn with regard to the priority date.56 To the relief of Biogen, Aldous J ruled that there was only one invention in Claim 1 of the Biogen patent. Given this finding, and in light of the evidence presented to him, he further concluded that the requirement of sufficiency was satisfied.57 With respect to obviousness, Aldous J followed the earlier ruling in Asahi58 on assessment of the priority date.59 He further voiced support for 52 Biogen relied on the testimony of Professor Sir Kenneth Murray, Professor Burrell, rofessor Villa-Komaroff and Dr Alan Kingsman. Medeva called Professor Jeffrey Almond, P Dr Cozens and Mr Ronald Holmes as witnesses. 53 The letter was also published in Science on 26 July 1974, 303 (‘Potential Biohazards of Recombinant DNA Molecules’). For a scholarly discussion of the moratorium, see E Friedberg, A Biography of Paul Berg: The Recombinant DNA Controversy Revisited (Singapore, World Scientific Publishing, 2014) 242–45; S Crotty, Ahead of the Curve: David Baltimore’s Life in Science (Berkeley, University of California Press, 2001) 100–02, and S Jassanoff, Designs on Nature: Science and Democracy in Europe and the United States (Princeton, Princeton University Press, 2005) 46. 54 ‘Dr Peter John Cozens: Defendant’s Expert’s Statement, 6 September 1993’, HL/PO/ JU/3/1913, PA. 55 Biogen Inc v Medeva Plc [1995] RPC 25, 114. 56 ibid 42–43. 57 ibid 44–50. 58 Asahi Kasei Kogyo KK’s Application [1991] RPC 485. For a commentary, see JR Lane ‘What Level of Disclosure Is Required to Anticipate a Patented Invention by Prior Publication or Use?’ (1990) 12 European Intellectual Property Review 462. 59 Biogen (n 55) 52–56.

Biogen v Medeva (1996) 297 the idea that a patent application which outlines a new principle, as well as a method by which it may be carried out, can provide support for a claim to that principle, however carried out.60 Along these lines, Aldous J decided that the principal claims (1–4) of the Biogen patent were supported, and thus entitled to the earlier priority date (the Biogen 1 application), although Claims 5–6 were not. In analysing the test for obviousness, Aldous J crucially referred to the classic four-step test in Windsurfing International Inc v Tabur Marine (Great Britain) Ltd.61 Such a structured approach to the question of obviousness enabled him to begin with the inventive concept underlying the invention.62 Thus, Aldous J first identified Professor Murray’s inventive concept as ‘the idea or decision to express a polypeptide displaying HBV antigen specificity in a suitable host’, that is, making HBV antigens by recombinant DNA technology.63 He then examined what would have been known to the person skilled in the art. Crucial to this assessment (of obviousness) was the ‘VillaKomaroff paper’—a seminal scientific publication on DNA recombination in the period prior to Professor Murray’s application, and thus an element contributing to the state of the art.64 Aldous J, in considering the importance of the Villa-Komaroff paper, remarked: It is accepted that once a decision [had] been made to try expression of the HBV genome, the technique set out in Villa-Komaroff would have been sufficient to enable it to be carried out. Thus the difference between the prior art and the inventive concept is the idea or decision to express a polypeptide displaying HBV antigen specificity in a suitable host.65

Aldous J then examined what strategies would have been available in 1978 to the skilled person who sought to make HBV antigens via recombinant DNA technology.66 He considered that there were two significant possible methods.67 One would have been to try to find out more about HBV and its DNA through gene sequencing, which would provide some useful information regarding the expression of the relevant genes.68 The alternative strategy would have been to take the genomic DNA and try to express it in E coli. This is what Professor Murray had done in the late 1970s.

60

ibid 56. Windsurfing International Inc v Tabur Marine (Great Britain) Ltd [1985] RPC 59. For a discussion of this case, see PA Stone ‘Some thoughts on the Windsurfing judgment’ (1986) 8 European Intellectual Property Review 242. 62 Biogen (n 55) 73–74. 63 ibid 57. 64 L Villa-Komaroff et al, ‘A Bacterial Clone Synthesizing Proinsulin’ (1978) 75 Proc Nati Acad Sci USA 3727. 65 Biogen (n 55) 58. 66 ibid 56–65. 67 ibid 59. 68 ibid 59–60. 61

298 Luke McDonagh Biogen’s argument on this point was that it was not until the sequence had been obtained, with the knowledge that introns—nucleotide sequences within a gene that are removed by RNA splicing—would not be a problem ‘that the skilled man would seriously consider expression of HBV antigens’.69 Aldous J agreed and held that the strategy taken by Professor Murray would not have been obvious in 1978 because only the patentee ‘contemplated expression of the HBV antigen in December 1978, despite the fact that the skilled man must have read the Villa-Komaroff paper and there was an incentive to do so. The reason may well be that stated in the patent, namely the skilled man was put off by introns’.70 Finally, Aldous J also rejected the idea that the patent did not describe an ‘invention’ in line with the earlier case of Genentech.71 Thus, the Patents Court ruled in favour of Biogen, holding that the principal claims of the patent were valid and granting an injunction restraining the defendants from infringing it and ordering the destruction of the infringing material.72 Precisely because this decision was seen as highly favourable to the patentee, Medeva suffered a significant financial blow, and decided to appeal.73 B. The Reversal by the Court of Appeal The Court of Appeal unanimously reversed the ruling of the lower court, finding the patent invalid.74 In contrast to the Patents Court, this court was assisted by scientific expert advisers;75 a support that had been considered particularly helpful in previous biotechnology cases decided on appeal.76

69

ibid 64. 65. Aldous J also rejected Medeva’s argument that the first strategy—gene sequencing—was an obvious way of making the antigens. See J Thomson ‘The Grey Penumbra of Interpretation Surrounding the Obviousness Test for Biotech Patents’ (1996) 2 European Intellectual Property Review 90. 71 Genentech Inc’s Patent [1989] RPC 147, 272. 72 ‘Order issued by Mr Justice Aldous, 9 November 1993’, HL/PO/JU/3/1913, PA. For newspaper accounts of the decision see L Buckingham ‘Medeva Suffers Vaccine Pain’ The Guardian (5 November 1993); G Foster, ‘Medeva Shakes Dealers’ The Daily Mail (5 November 1993) 71; R Hotten, ‘Medeva Loses Patent Battle’ The Independent (5 November 1993) 34. 73 In addition to the newspaper accounts of the decision cited in the previous footnote, specialist journals also discussed the decision; see I Judge et al, ‘Chiron v Organon and Biogen v Medeva’; and H Kelly, ‘Biogen’s Hepatitis B Patent Held Valid and Infringed’ (1993) 2 European Intellectual Property Review 75; N Jones ‘Biotechnology Patents: A Change of Heart’ (1994) 1 European Intellectual Property Review 37. 74 Biogen Inc v Medeva Plc [1995] RPC 25. The court comprised Nourse LJ, Gibson LJ and Hobhouse LJ and the hearings took place from 5–28 July and on 27 October 1994; see also ‘Case Note’ [1994] 12 European Intellectual Property Review D316–D317. 75 ibid 68. See also RS Crespi, ‘Recombinant DNA Patents in Litigation—A Comprehensive Study of Some EPO and UK National Court Decisions’ (1997) 28 International Review of Industrial Property 603, 615. 76 ‘Sydney’s Brenner appointment as Scientific Advisor in Genentech v The Wellcome Foundation’, SB/1/2/317, CSHL Archives Repository. 70 ibid

Biogen v Medeva (1996) 299 Hobhouse LJ delivered the judgment of the court and began it by saying that he did not believe that the court was differing from Aldous J on any question of the acceptance of the evidence of witnesses or primary s cientific fact.77 The court nevertheless undertook a thorough re-examination of the evidence on the question of whether the method disclosed in Biogen 1 had fully enabled the making of the invention (HBsAg).78 The court came to the conclusion that it had not.79 Hobhouse LJ opined: The outcome of this evidence is that whatever results the plaintiff obtained in 1978 did not amount to evidence justifying a claim to have produced a recombinant DNA molecule which enabled the expression of HBsAg in E. coli (or any other host).80

Such an approach differed fundamentally from Aldous J in the analysis of the nature of the invention disclosed in the patent.81 Hobhouse LJ ruled the description in the specification to be insufficient, holding that Claim 1 of the patent referred to more than one invention (product).82 The court held that the determination of sufficiency depended on the interaction between the description in the specification and the claim, with reference to the state of the art at the time of the application.83 Here the analysis of the specification and claim revealed that the 1978 Biogen 1 application did not adequately disclose the claimed invention(s).84 Strictly speaking, as the patent was not—according to the Court of Appeal—entitled to priority, the finding on obviousness was obiter dicta. However, it is interesting to continue reading the decision because the House of Lords referred to this reasoning as well. Hobhouse LJ appeared to consider Professor Murray’s strategy to be an obvious one. In this regard, he stated that the decision to adopt the strategy on the part of Murray/Biogen was purely a ‘matter of business judgment’, a ‘mere commercial decision’, and that all Biogen had done was ‘to pursue an identified goal by known means’.85 Moreover, even if the decision was not

77 Biogen Inc v Medeva Plc [1995] RPC 25, 68–69. This was remarkable because, as noted recently by Lord Justice Lewison, ‘Appellate courts have been repeatedly warned, by recent cases at the highest level, not to interfere with findings of fact by trial judges, unless compelled to do so. This applies not only to findings of primary fact, but also to the evaluation of those facts and to inferences to be drawn from them’—Fage UK Ltd & Another v Chobani UK Ltd & Another [2014] EWCA Civ 5 at 114. 78 ibid 70–76. See also May & Baker Ltd. v Boots [1950] UKHL 1. 79 ibid 111–12. 80 ibid 112. 81 ‘Case for the Appellants’, HL/PO/JU/3/1913, PA. 82 See I Karet ‘Priority and Sufficiency, Inventions and Obviousness’ (1995) 1 European Intellectual Property Review 42, 45. 83 Biogen Inc v Medeva Plc [1995] RPC 25, 78–83. 84 ibid 78–82; Exxon/Fuel oils OJEPO 1994, 653 (T 0409/91). 85 ibid 114. See also J Thomson ‘The Grey Penumbra of Interpretation Surrounding the Obviousness Test for Biotech Patents’ (1996) 1 European Intellectual Property Review 1, 90, 93.

300 Luke McDonagh ‘obvious’ in a general sense, Hobhouse LJ remarked that it was analogous to placing a bet on a horse based on the odds of success—‘an unobvious decision which is not an invention’.86 Although this type of judicial thinking surprised some commentators,87 the fact is that Hobhouse LJ remarked that he was inclined—and was only restrained by Medeva’s counsel’s lack of enthusiasm for the point—to rule that it was not an invention at all.88 As with the first instance decision, there was a direct impact on both companies’ share prices, and Biogen appealed the Court of Appeal’s ruling to the House of Lords, where the saga reached its conclusion.89 C. The End of the Affair Despite the fact that the Court of Appeal had been unanimous in its decision, Biogen prepared a strong case before the Lords, emphasising from the outset a series of notable differences within the decisions already handed down. Interestingly, they highlighted the judicial expertise of the trial judge, described as ‘an experienced patents judge’.90 Indeed, Aldous J was one of the few specialist judges in the High Court, someone trained in the intricacies of patent law at a crucial point in its development and with an expertise not found at the Court of Appeal.91 Similarly, Biogen tried to capitalise on the favourable outcome achieved at the EPO, noting how the decision came from a three-member Technical Board of Appeal set up specifically to handle biotechnology cases.92 Emphasising the expertise and experience of those authorities who had decided the case beyond the Court of Appeal was strategic since both had been unanimous on all major issues except the point of the date at which to judge sufficiency. As noted earlier, Biogen patented the recombinant method of making the antigens of a hepatitis B virus with a priority date of 22 December 1978 (the UK filing date—Biogen 1). It was accepted that it would have been obvious by 21 December 1979 (the EPO filing date for the Biogen patent). Therefore, the fundamental issue to be resolved by the House of Lords concerned the question of whether the claims of the patent, as granted by the EPO, 86

ibid 114. T Cook ‘Patents and Novel Insights’ (1995) Managing Intellectual Property (February) 3; JM Marshall ‘Biotechnology Patents: A Further Twist’ (1995) Patent World (February) 25–28. 88 Biogen Inc v Medeva Plc [1995] RPC 25, 83. 89 N Bannister, ‘Medeva Stock Boosted by Vaccine Patent Victory’ The Guardian (28 October 1994). 90 ‘Case for the Appellants’, HL/PO/JU/3/1913, PA. 91 S Thorley ‘Lord Justice Aldous: An Appreciation’ (2003) The CIPA Journal, 537–38; s ee also H Cline, S Cohen and G Moss ‘Biogen v Medeva: UK Patent Law Out of Step with Europe’ (1995) 14 Biotechnology Law Report 344, 345. 92 ‘Case for the Appellants’, HL/PO/JU/3/1913, PA; for a similar argument see B Reid ‘Biogen in the EPO: The Advantage of Scientific Understanding’ (1995) 17 European Intellectual Property Review 98. 87

Biogen v Medeva (1996) 301 were supported by the previously filed UK patent application (Biogen 1) from which priority was claimed.93 According to Biogen, one of the errors of the Court of Appeal was their failure to distinguish between the subject matter of the invention and the inventive concept, that is, between ‘what is the invention’ and ‘why it is inventive’.94 However, Medeva argued that it was preferable to address the issues as formulated by the Court of Appeal, rather than formulate a new set of issues, following a different order, in the manner suggested by Biogen.95 Moreover, Medeva’s submission noted that the nature of the inventive step relied upon in the case was ‘extremely unusual’.96 First, they argued that what was claimed was obvious, as a goal, beforehand. Secondly, they highlighted that Biogen had not claimed to have devised or invented any new technique.97 The House of Lords heard the case in April and May 1996 and its decision was unanimous, dismissing the appeal, and maintaining that the claims of the Biogen patent were not supported by the earlier Biogen 1 application.98 While Lord Hoffmann gave the lead judgment, Lord Mustill added his opinion on whether it was necessary for a patent to disclose an ‘invention’.99 The Lords did not give an explicit opinion on the correct approach to obviousness,100 but the decision attracted a considerable amount of publicity, largely because it was the first time that the House of Lords had looked at biotechnology patents.101 As the decision invalidated the Biogen patent and found for the UK-based company, Medeva, this was seen by some scholars as an attempt to limit the scope of biotechnology patents. Others praised it for its beneficial effects on the British biotechnology industry.102 More significantly, the case rapidly acquired landmark status in patent law because it affected the ways in which patent practitioners considered

93 See R Binns and B Driscoll, ‘Biogen v Medeva—The Highest Court in the UK Delivers Judgement’ (1997) 2 Drug Discovery Today 3, 117–21; ‘Biogen and Medeva—the Ultimate Ruling’ (1996) 19 Intellectual Property Newsletter 12, 1–3; ‘Biotechnology Patent News’ (1996) CIPA Journal (November) 883. 94 ‘Case for the Appellants’, HL/PO/JU/3/1913, PA. 95 ‘Medeva’s Statement’, HL/PO/JU/3/1913, PA. 96 ‘Case for the Respondents’, HL/PO/JU/3/1913, PA. 97 ibid. 98 Biogen Inc v Medeva plc [1997] RPC 1. The House of Lords judicial panel was made up of Lord Goff of Chieveley, Lord Browne-Wilkinson, Lord Mustill, Lord Slynn of Hadley and Lord Hoffmann. 99 ibid 31–32. 100 See I Karet, ‘Delivering the Goods? The House of Lords’ Decision in Biogen v Medeva,’ (1997) 1 European Intellectual Property Review 21, 23; see also A White, CIPA Guide to the Patents Act (London, Sweet & Maxwell, 2001) 98. 101 D Brahams, ‘Biogen Loses “Landmark” Vaccine Patent Claim’ (1996) 346 The Lancet 9038, 1375. See also ‘Genetic Engineering Patent Claim Was Too Broad’ The Times (1 N ovember 1996) 34; ‘Medeva Survives Hepagene Challenge’ The Times (1 November 1996) 34; R Colbey ‘Patently Sensible’ The Guardian (14 November 1996) B4. 102 JP Isacson ‘House of Lords Reins In Broad Claims’ (1996) 15 Biotechnology Law Report 1062.

302 Luke McDonagh fundamental questions such as the meaning of the ‘invention’,103 and the date at which the sufficiency of a specification ought to be judged.104 Further to this, it can be seen as a milestone case for patent scholarship because it enabled the reader to reconsider many aspects of patent law. For instance, it could be read as a decision in which the institutional politics of patent law were laid bare—in particular, the dissonance between the legal and scientific burdens of proof.105 In addition, while the House of Lords emphasised the relevance of the technically dominated EPO decision, it decided to revoke the very same patent that the EPO had previously upheld, showing once again how the multi-jurisdictional nature of European patent litigation can lead to disharmonious outcomes.106 As with the first instance and appellate decisions, the House of Lords’ ruling had an immediate impact on the companies’ share price, with the value of Biogen falling by just over four per cent and Medeva’s showing a small rise.107 IV. LORD HOFFMANN’S OPINION

A. The Context of a Decision By the time the case was decided by the House of Lords, Lord Hoffmann had already developed a considerable experience in judging patent cases.108 Although he did not consider himself a specialist in patent law, he acquired an interest in the field when he moved from the bar to the Bench.109 When he sat at the Patents Court, he restated Lord Diplock’s purposive construction to patent claims.110 Similarly, he had just given the leading judgment

103 The Hon Mr Justice C Birss, A Waugh, QC, T Mitcheson, QC, D Campbell, QC, J Turner, QC, T Hinchliffe, QC, Terrell on the Law of Patents, 18th edn (London, Sweet & Maxwell, 2017) including at ch 2, s 2: ‘What is an Invention?’ (last accessed via Westlaw, 13 December 2016). 104 ibid at Chapter 13, section 3: ‘Biogen Insufficiency’ (last accessed via Westlaw, 13 December 2016). 105 Pottage and Sherman, Figures of Invention (n 16) 1–29. 106 For a commentary of these issues, see I Karet, ‘English Courts and the EPO: What Next?’ (1997) 2 Intellectual Property Quarterly 244–48. 107 ‘Medeva Wins in Court Battle with Biogen’ (1996) The New York Times (1 November). 108 Lord Hoffmann was called to the bar in 1964 and became QC in 1977. His move to the bench took place in 1985, becoming a High Court Judge in the Chancery Division (1985–1992), Lord Justice at the Court of Appeal (1992–95) and member of the Judicial Committee of the House of Lords (1995–2009); see ‘A Conversation with Leonard Hoffmann’ (2010) 4 Law & Fin Mkt Rev 242. 109 L Hoffmann ‘Foreword’ in D Vaver and L Bently (eds) Intellectual Property in the New Millennium: Essays in Honour of William R Cornish (Cambridge, Cambridge University Press, 2004) ix; L Hoffmann ‘Patent Construction’ (2006) The CIPA Journal 727; L Hoffmann ‘The Patent System’ (2010) 123 Graya 19. 110 Improver Corp. v Remington Consumer Products Ltd [1990] FSR 181; see also Bondax Carpets Limited and Others v Advance Carpet Tiles and Another [1993] FSR 162.

Biogen v Medeva (1996) 303 at the House of Lords in Merrell Dow v Norton (1996).111 Therefore, it is no surprise that he delivered the major part of the judgment in Biogen.112 The clarity of Lord Hoffmann’s judgment was noted in contemporary accounts of the case.113 What made his approach so attractive was probably the systematic way in which he introduced and decided the issues raised before the Lords.114 It proceeded, in a sequential manner, from the technology underlying the patent litigated to the priority date and the question of sufficiency.115 Although the judgment followed on from the decision of the Court of Appeal, Lord Hoffman approached the subject matter in a more structured, readable and pragmatic way.116 The judgment established a sort of rhetorical structuring, with subtitles, paragraph boundaries and other textual indicators that were remarkably similar to other judgments already delivered by Lord Hoffmann.117 Beginning with a short passage on ‘genetic engineering’, Lord Hoffmann explained what DNA recombination was and how the subject of the patented invention—the HBV vaccine—worked.118 Having explained the technology and the patent, he further noted that the antigens could be used to test whether a patient was suffering from the virus—and, crucially, to make a vaccine.119 In doing so, the dispute was made legible through its most important issue, the identification of the inventive step.120 By comparison, the decision from the Court of Appeal can be criticised for being both overly technical and insufficiently detailed.121 Because several of the issues raised on appeal were not only recursive but also determinative of other questions, the Court of Appeal found it difficult to disentangle them. In other words, the way the decisions were graphically and logically performed at both venues was different. Perhaps the most laudable aspect of Lord Hoffmann’s approach was his ability to summarise and describe both

111 Merrell Dow Pharmaceuticals Inc v H N Norton & Co Ltd [1996] RPC 76; see I Karet ‘A Question of Epistemology’ (1996) 18 European Intellectual Property Review 97 and L Heng Gee ‘Intellectual Property: “Made Available to the Public”—The Final Saga?’ (1996) The Journal of Business Law 286. 112 Biogen Inc v Medeva plc [1997] RPC 1, 32–55. 113 AW White ‘House of Lords Disapproves of Free Beer’ CIPA Journal (December 1996) 1020–28, 1023. 114 According to Mark Janis, the decision offered ‘an even broader rationalization for the use of art 84 “support” arguments post-grant’ in M Janis ‘On Courts Herding Cats: Contending with the “Written Description” Requirement (and Other Unruly Patent Disclosure Doctrines)’ (2000) 2 Wash UJL & Pol’y 055. 115 Biogen Inc v Medeva plc [1997] RPC 1, 32–55. 116 Compare Biogen Inc v Medeva Plc [1995] RPC 25, 68–117 and [1997] RPC 1, 32–55. 117 Merrell Dow Pharmaceuticals Inc v H N Norton & Co Ltd [1996] RPC 76. 118 Biogen Inc v Medeva plc [1997] RPC 1, 32. 119 ibid 32. 120 ibid 33, 42–47. 121 Biogen Inc v Medeva Plc [1995] RPC 25, 68–72.

304 Luke McDonagh the technology and the controversy.122 Although some critics nevertheless considered the language of the House of Lords decision to be somewhat obscure123—at times blending different lines of inquiry,124 such a perception misses the point: the House of Lords judgment does not shy away from the murky scientific-legal complexity of patent law and in fact sheds new light on it.125 Lord Hoffmann’s opinion paid particular attention to the policy dimensions underpinning the law—as well as the traditional English principle of fair basis, which guided against the validation of overly broad or speculative patents—and the way he interpreted the facts and the requirements of patent law was informed by such awareness.126 Although some viewed it as an attempt to develop an economic analysis of patent law,127 this does not do the judgment justice—indeed, Lord Hoffmann himself later expressed doubts about the value of the economic approach.128 Perhaps the true context for the decision was more immediate: those familiar with British intellectual property could make a direct connection between the ethos of this decision and two important conferences that took place at around the same time in which the scope and purpose of intellectual and industrial property were debated.129

122 A similar view has been expressed by Alan White: ‘Lord Hoffmann prefaces his judgment in the House of Lords with a very clear exposition of the fundamentals of biotechnology and genetic engineering. His judgment is worth reading solely as a primer to this arcana area of modern science’ in AW White ‘House of Lords Disapproves of Free Beer’ CIPA Journal (December 1996) 1020–28, 1023. 123 ‘Panel Discussion on Overbroad Claiming’ (2002) 7 International Intellectual Property Law and Policy 26–31. 124 JP Isacson ‘House of Lords Reins In Broad Claims’ (1996) 15 Biotechnology Law Report 1062. 125 Pottage and Sherman, Figures of Invention (n 16) 181–206. 126 L Hoffmann ‘The Role of Policy in Intellectual Property Litigation’ (2003) 5 International Intellectual Property Law and Policy 35–43. On Lord Hoffmann’s commitment to giving effect to the policy choices of the legislature, see J Pila ‘Lord Hoffmann and Purposive Interpretation in Intellectual Property Law’ in PS Davies and J Pila (eds), The Jurisprudence of Lord Hoffmann (Oxford, Hart Publishing, 2015) 161–84, 162. 127 R Jacob ‘Industrial Property—Industry’s Enemy?’ (1997) 1 Intellectual Property Quarterly 3, 5. Surely, the observation was persuasive since Lord Hoffmann referred in his Opinion to Merges and Nelson’s well-known article on the economics of patent scope; see Merges and Nelson ‘On the Complex Economics of Patent Scope (1990) 90 Columbia Law Review 839. 128 ‘I have read some of the (Richard) Posner stuff and I found the economic theory of law interesting but not convincing. I just do not believe people behave like that’ in L Fangyi and C Zheng Xi ‘An Interview with the Right Hon. Baron Leonard Hubert Hoffmann of Chedworth’ (2008) 26 Singapore Law Review 226, 231. 129 H Laddie ‘Copyright: Over-Strength, Over-Regulated, Over-Rated?’ (1996) 18 European Intellectual Property Review 253; Jacob ‘Industrial Property—Industry’s Enemy?’ 3.

Biogen v Medeva (1996) 305 B. Assessing Obviousness The question of obviousness is a perennially difficult and elusive one in patent law.130 In Biogen Lord Hoffmann began by drawing a clear distinction, explaining that doing something first was not the same as being inventive, especially in a fast-developing area of science.131 This depiction of biotechnology as a branch of knowledge advancing at a considerable pace gave him an opportunity to decide whether the monopoly granted was justified or not.132 In this respect, the judgment followed an instrumentalist vision of patent law, understanding it as a system of reward in which the scope of the monopoly granted could be limited by judicial assessment.133 According to some commentators, such reasoning permeated the entire ratio of the decision, resulting in ‘a prejudicial attitude towards biotechnology patents’.134 On the other hand, it could be said that Lord Hoffmann’s view of the allowable breadth (or width) of the claims was influenced by a particular take on biotechnology as a young and pioneering field, and by the proposition that if over-broad claims were granted, this would pose an obstacle for valuable research.135 Lord Hoffmann noted that Professor Murray had purified DNA from Dane particles and had cut the DNA into fragments with restriction enzymes, with the aim of producing large fragments containing the relevant gene (which would make it easier to experiment on the fragments later on).136 Lord Hoffmann then remarked: By the time of the EPO patent application, the claims make it clear that they cover not only the polypeptide but also fragments which exhibit the relevant properties. But Biogen 1 does not make anything of this point.137

With this passage Lord Hoffmann had already signalled that he considered the Biogen 1 application to be somewhat deficient—in fact, insufficient.138 However, before examining this further he turned to the specifics of the

130

B Reid, A Practical Guide to Patent Law (London, Sweet & Maxwell, 1999) 42. Biogen Inc v Medeva plc [1997] RPC 1, 33–34. ibid 51–52. 133 ibid 54. Lord Hoffmann made a clear distinction between the 1949 and 1977 Patent Acts, emphasising the relevance of section 72(1)(c) of the 1977 Patents Act. 134 Warren ‘Discrimination by Redefinition’ (n 2) 575; for similar concerns regarding an ‘anti-biotech’ atmosphere: N Jones and I Britton ‘Biotech Patents—the Trend Reversed Again’ (1996) 18 European Intellectual Property Review 171. 135 Similarly, Sir Robin Jacob noted that the problem of these patents were their ‘undue’ width; see R Jacob, IP and Other Things. A Collection of Essays and Speeches (Oxford, Hart Publishing, 2015) 201. 136 Biogen Inc v Medeva plc [1997] RPC 1, 39. 137 ibid 39 (emphasis added). 138 ibid. 131 132

306 Luke McDonagh Biogen patent’s claims, noting that what was claimed was ‘a product, a molecule identified partly by the way in which it has been made (“recombinant DNA”) and partly by what it does’.139 In this respect, the patent claimed a broad monopoly over ‘any recombinant DNA molecule which expressed the genes of any HBV antigen in any host cell’ and for ‘any method of making a DNA molecule which would achieve the necessary expression’.140 As we shall see, the claim to any method would prove to be of great significance to the question of whether the claims properly supported the invention. But before addressing that question, Lord Hoffmann put forward a number of important points about the interpretation of ‘invention’ under section 1(1) of the Patents Act 1977. Regarding the question of ‘what is an invention?’ as separate from the four key requirements of patentability—which had been a crucial issue in Genentech141—he stated that the four requirements probably covered every possible meaning of invention and that the separate question should not be a primary focus, and should only be contemplated if analysis of the four requirements has left some ambiguity as to the nature of the invention at hand (leaving open the possibility, however remote, that there could be issues of ‘invention’ separate to the four requirements).142 Thus, one considerable virtue of Lord Hoffmann’s ruling was the removal of the awkward requirement from Genentech that a judge had to consider whether the patent covered an ‘invention’ before he/she analysed the various categories of novelty, inventive step, industrial application, etc.143 Having dealt with this somewhat pedantic question, Lord Hoffmann moved on to consider one of the critical issues at hand: whether Professor Murray had performed an inventive step.144 He expressed his dissatisfaction with the conclusions reached by Aldous J at the Patents Court, arguing that the trial judge had taken an over-broad approach to defining the inventive concept as the mere idea of making HBV antigens by recombinant DNA technology.145 Rather than putting it so broadly, Lord Hoffmann remarked that the inventive concept in the present case ought to be described as ‘the notion that Professor Murray’s method of achieving the goal—creating large fragments of genomic DNA, ligating them to pBR322 and introducing the hybrid molecule into E coli—would work’.146 This was, for Lord Hoffmann, the operative part of the invention that Aldous J had missed. Yet, although he

139

ibid 40. ibid 40 (emphasis added). 141 Genentech Inc’s Patent [1989] RPC 147. 142 Biogen Inc v Medeva plc [1997] RPC 1, 41. 143 Genentech Inc’s Patent [1989] RPC 147, 264; see M Spence ‘Patents and Biotechnology’ (1987) 113 LQR 368, 371. 144 Biogen Inc v Medeva plc [1997] RPC 1, 42–43. 145 ibid 43. 146 ibid. 140

Biogen v Medeva (1996) 307 was not satisfied by Aldous J’s assessment, it is notable that Lord Hoffmann also criticised elements of the approach taken by the Court of Appeal— specifically the reference to the fact that Biogen had made an initial decision, based on commercial concerns, to ‘pursue an identified goal by known means’.147 Nor did he find the ‘placing a bet’ analogy useful.148 For Lord Hoffmann, the company’s commercial decision-making process was simply not relevant to the question of patentability.149 However, Lord Hoffmann was in general agreement with the approach taken by Hobhouse LJ to the patentability question—that the strategy of Professor Murray was to pursue an identified goal by known means—though he deepened the analysis in his characteristic style: A proper statement of the inventive concept needs to include some express or implied reference to the problem which it required invention to overcome. The reasons why the expert witnesses thought it was not obvious to try the expression of genomic HBV DNA in E. coli were for the most part concerned with the uncertainties, in the absence of sequence information, about the presence of the HBV antigen genes in the Dane particle DNA, the perceived difficulties of expressing genomic eukaryotic DNA in a prokaryotic host, and, specifically, the problem of introns. It seems to me, therefore, that a more accurate way of stating the inventive concept as it appeared to Aldous J is to say that it was the idea of trying to express unsequenced eukaryotic DNA in a prokaryotic host.150

Thus, Lord Hoffmann not only identified the bare bones of the inventive concept—as it had appeared to Aldous J—he also fleshed it out, describing its operative elements and referenced the usefulness of the scientific expert witness testimony.151 Indeed, Lord Hoffmann was satisfied with the assumption that what Professor Murray did was not obvious, and was, therefore, inventive. In this, although he neatly sidestepped both prior judgments, he ended up much closer to Aldous J’s view on obviousness than that of H obhouse LJ. Lord Hoffmann summed up his view by saying that the patent’s inventiveness was ‘of a very unusual kind’ because it involved trying something ‘which a man less skilled in the art might have regarded as obvious, but which the expert would have thought so beset by obstacles as not to be worth trying’.152 What makes Lord Hoffman’s judgment a landmark on the point of inventiveness is therefore twofold: first, we know from the judgment that analysing the four patentability requirements will comprehensively deal with the question of ‘what is an invention?’ in the vast majority of cases, and

147

ibid 44.

148 ibid. 149 ibid. 150

ibid 44–45.

152

ibid 46.

151 ibid.

308 Luke McDonagh there is no need for a separate Genentech-style assessment; and second, Lord Hoffmann provided detailed guidance regarding how to apply the Windsurfing test to biotechnological inventions, emphasising the importance of expert testimony regarding the person skilled in the art.153 C. Support and Insufficiency While many praised Lord Hoffmann’s opinion, others were concerned that he had not emphasised the differences between the requirements of support and sufficiency.154 Central to his decision was the consideration of the question of whether the Biogen 1 application (from December 1978) supported the invention claimed in the Biogen patent (filed December 1979). On this point Lord Hoffman emphasised that ‘the specification must enable the invention to be performed to the full extent of the monopoly claimed’.155 Lord Hoffmann further opined that in a case where the claims include a number of products, the patent must enable the invention ‘to be performed in respect of each of them’.156 Crucial here was analysing (i) whether the patent described a product which has a beneficial effect, but nonetheless did not demonstrate a common principle corresponding to other products which will share the beneficial effects (products of the same class); or (ii) whether the patent disclosed a ‘beneficial property which is common to the class’ of products.157 In the former case, the patentee would only be entitled to a patent for the single described product—but with the latter the patentee could claim a monopoly on all products of the class.158 Here Lord Hoffmann stated that a patent would be over-broad if it claims ‘every way of achieving a result when it enables only one way and it is possible to envisage other ways of achieving that result which make no use of the invention’.159 Finally, he examined the Biogen 1 application on the question of support: As I have said, I accept the judge’s findings that the method was shown to be capable of making both antigens and I am willing to accept that it would work in any otherwise suitable host cell. Does this contribution justify a claim to a monopoly of any recombinant method of making the antigens? In my view it does not. The claimed invention is too broad. Its excessive breadth is due, not to the inability

153 ibid 43–48. Windsurfing International Inc v Tabur Marine (Great Britain) Ltd [1985] RPC 59, and Genentech Inc’s Patent [1989] RPC 147. 154 T Roberts ‘United Kingdom: Patents’ (1997) 19 European Intellectual Property Review D25–27. 155 ibid 48. See also Asahi Kasei Kogyo KK’s Application [1991] RPC 485. 156 ibid 49. 157 ibid. 158 ibid. See also May & Baker Ltd v Boots Pure Drug Co Ltd (1950) 67 RPC 23. 159 ibid 51.

Biogen v Medeva (1996) 309 of the teaching to produce all the promised results, but to the fact that the same results could be produced by different means.160

Here Lord Hoffmann referred to the fact that, although Professor Murray had done something brilliant ‘in cutting through the uncertainties’ of the day to achieve a positive result, he did not actually ‘establish any new principle which his successors had to follow if they were to achieve the same results’.161 Specifically, despite the fact that Professor Murray had, in the patent, described a way of choosing restriction enzymes that would cleave the DNA of the Dane particle into large fragments, once the DNA had been sequenced there was no need to choose to follow Professor Murray’s method—scientists could instead choose ‘those which digested the sites closest to the relevant gene or the part of the gene which expressed an antigenic fragment of the polypeptide’.162 As Lord Hoffmann put it: The metaphor used by one of the witnesses was that before the genome had been sequenced everyone was working in the dark. Professor Murray invented a way of working with the genome in the dark. But he did not switch on the light and once the light was on his method was no longer needed.163

Lord Hoffmann went on to express his concerns about awarding too wide a monopoly to a single inventor, emphasising that although Professor Murray had led the way, other researchers could follow what he had done by d ifferent routes—and he did not consider that simply leading the way was ‘enough to justify a monopoly of the whole field’.164 On this, Lord Hoffmann further remarked: The technical contribution made in such cases deserves to be recognised. But care is needed not to stifle further research and healthy competition by allowing the first person who has found a way of achieving an obviously desirable goal to monopolise every other way of doing so.165

Therefore, Lord Hoffmann held that the Biogen 1 application did not support the invention as claimed in the later filed European Patent, and for this reason it could not claim the priority date of Biogen 1. Moreover, because it had already been conceded that the invention was obvious when the Biogen patent was filed at the EPO in 1979, the patent was deemed to be invalid.166 While Lord Hoffmann accepted that the patent, lacking the support of the earlier priority date, was obvious, and thus invalid, he considered that his reasoning in making this decision meant that it was necessary to

160

ibid 52 (emphasis added).

161 ibid. 162 ibid. 163 ibid. 164 ibid. 165 166

ibid (emphasis added). ibid 52–53.

310 Luke McDonagh discuss what would become known as the landmark principle of (Biogen) insufficiency: In other words, the application may not add new matter to make an insufficient application sufficient. It seems to me in accordance with this scheme that an insufficient application should also not become sufficient because of general developments in the state of the art after the filing date.167

In the view of Lord Hoffman, Claim 1 of the Biogen patent (a product) generalised the teachings of the Biogen 1 application.168 It did so because the Biogen 1 application referred to a particular form of a product; yet, Claim 1 of the patent referred to any form of the product. In addition, Lord Hoffmann held that the method which was used was also generalised—in the Biogen 1 application, the particular product was made from a particular process. However, the patent’s claims as granted covered any method of making any form of the product. For this reason, Lord Hoffmann ruled that the technical contribution disclosed in the Biogen 1 application did not correspond to the broad monopoly sought by Claim 1 of the Biogen patent, ie the Biogen patent’s claims lacked sufficient support from the Biogen 1 application.169 Thus, the claim was held to be not fully enabled by the specification—the only thing that could be validly claimed was the production of the antigen by the particular means disclosed. The overall principle of Biogen insufficiency can therefore be described as follows: the patent’s claims must be supported by the description of the invention—as contained in the patent specification—or else the patent will be held invalid for insufficiency.170 D. Reconciling Lord Hoffmann’s View with the EPO’s Decision Having declared the patent invalid, Lord Hoffman had to explain how he could reconcile this decision with the EPO Technical Board’s earlier decision that the Biogen patent was, in fact, valid.171 Lord Hoffmann did this in a particularly elegant way, noting that the decision of the EPO did not actually proceed on any principle different from those that he had endeavoured to apply.172 He noted that, like him, the Technical Board had decided 167

ibid 54. ibid 54. 169 ibid 53–54. 170 ibid 54. 171 See also Merrell Dow Pharmaceuticals Inc v H N Norton & Co Ltd [1996] RPC 76. 172 The Court of Appeal decision had been criticised for not engaging with EPO case law— see BC Reid, ‘Biogen in the EPO: The Advantage of Scientific Understanding’ (1995) 2 European Intellectual Property Review 98, and C Colston, ‘Genetic Engineering—Failure to Invent? The House of Lords’ Decision in Biogen Inc v Medeva plc’ (1997) Intellectual Property Quarterly 521. 168

Biogen v Medeva (1996) 311 that the invention in Biogen 1 was not obvious—however, the Technical Board had held that the disclosure in Biogen 1 corresponded to the same invention claimed in the patent, and that the patent’s disclosure was sufficient to ‘enable the invention to be performed to the full extent of the claims’.173 Here, Lord Hoffmann’s view diverged from that of the Technical Board—according to Lord Hoffmann the Technical Board had failed to assess ‘whether the claims were too broad because expression could also be achieved without the use of the teaching which it contained’.174 In making this argument, Lord Hoffmann explicitly referred to two key EPO decisions in Genentech175 and Exxon.176 In other words, rather than ignoring the EPO Technical Board, as the Court of Appeal had done, Lord Hoffmann cleverly integrated its reasoning in the earlier cases of Genentech and Exxon in order to come to a conclusion that differed from the EPO’s decision on the Biogen patent, but which nonetheless fulfilled the expectation that national courts should take into account EPO decisions when national litigation takes place over a European patent.177 E. Biogen Insufficiency Reconsidered More than a decade after the decision, Lord Hoffmann was given the opportunity to reconsider his earlier ruling. From the bench of the Court of Appeal, Lord Hoffman gave the judgment in Lundbeck v Generics (UK) Ltd.178 Here, he severely narrowed the scope of his own doctrine of B iogen insufficiency—effectively distinguishing it on its own facts. In Biogen v Medeva, Lord Hoffman had ruled that it was insufficient for a patentee to merely disclose one way of performing the invention. In other words, if it was ‘possible to envisage other ways of achieving [its result] which make no use of the invention’ the patent would be invalid for being ‘wide or speculative’.179 Drawing on the traditional view of ‘fair basis’ under English law his Lord Hoffmann’s expressed view at the time of Biogen had been that the patent monopoly must correspond exactly with the claims of the invention. In this, he emphasised the need to allow subsequent research and to ensure competition between scientific bodies. What led to criticism of the

173

Biogen Inc v Medeva plc [1997] RPC 1, 53. ibid 53. 175 GENENTECH I/Polypeptide Expression T292/85 [1989] EPOR 1. 176 EXXON/Fuel Oils T409/01 [1994] EPOR 149. 177 ibid 53. 178 H Lundbeck A/S v Generics (UK) Ltd. [2008] EWCA Civ 311, [2008] RPC 19 as affirmed by the House of Lords in Generics (UK) Ltd v H Lundbeck A/S [2009] UKHL 12, [2009] 2 All ER 955. 179 Biogen v Medeva [1997] RPC 1, 22. 174

312 Luke McDonagh judgment—and eventually to Lord Hoffmann’s own decision in Generics v Lundbeck to drastically reduce the scope of Biogen insufficiency—was a realisation that the UK Patents Act, following the European Patent Convention (EPC), requires protecting patents for products ‘as such’.180 In this respect, two issues became increasingly clear in the aftermath of Biogen: (i) in the case of a product patent it is inevitable that the monopoly conferred will include all ways of making and using the product—otherwise it would not truly be a product patent;181 and (ii) when preparing, writing and filing the patent application, the teaching disclosed in the claims of the patent cannot conceivably cover every single way of making/using the product. Thus, a clear conflict became visible between what the law said should be protectable, and what Lord Hoffmann in Biogen v Medeva considered ought to be covered by the scope of the patent’s claims. In Generics v Lundbeck, Lord Hoffmann acknowledged this and recast his earlier ruling: Parliament has chosen to allow product claims and the jurisprudence of the EPO, which we have always regarded as carrying great weight, shows that such claims can be made in the latter case as well. It is too late to have regrets about the breadth of the monopoly which such claims confer.182

Despite it being ‘too late’, it seems clear from the above that even when reconsidering his own earlier ruling, Lord Hoffmann could not quite shrug off a lingering regret about the legislative breadth of the patent monopoly and its consequent effects on competition. On this, one final point is worth noting: the fact the traditional English view—acceptable under the Patents Act 1949—that patents ought be granted on a fair basis was no longer applicable under the terms of the Patents Act 1977 (and the EPC) ought to give pause for thought about what impact the forthcoming Unified Patent Court (UPC) might have on patent law.183 The potential certainly exists within the UPC’s specialist jurisdiction for further jurisprudential ‘filtering out’ of common law concepts of fairness and other generalist principles in favour of the more patent-focused analysis found at the EPO’s Technical Board. One hopes that future scholars of the UPC are not left to lament that it is ‘too late’ to reconsider the breadth of the patent monopoly in light of the new court’s jurisprudence.

180

Patents Act 1977 s 60. Pila, ‘Lord Hoffmann’ (n 126), also available in PS Davies and J Pila (eds), The Jurisprudence of Lord Hoffmann (Oxford, Hart Publishing, 2015). See also S Thambisetty, ‘The Evolution of Sufficiency in Common Law’ LSE Law, Society and Economy Working Paper No 6/2013. 182 H Lundbeck A/S v Generics (UK) Ltd [2008] RPC 19, 437, 450. 183 McDonagh, European Patent Litigation in the Shadow of the Unified Patent Court (n 43) 82–110. 181 J

Biogen v Medeva (1996) 313 V. CONCLUSION

In February 2015 several of those involved in the first instance proceedings at the Patents Court met in a workshop organised in central London by a leading intellectual property solicitors firm (Rouse).184 Although the spokeswoman for Medeva and the chief executive of Biogen had already expressed their views immediately after the decision was handed over by the Lords,185 it is nevertheless interesting to consider how some of the participants remembered specific details of the case almost 20 years later. The importance of those reminiscences and their historical potential lies not only in their accuracy, but also on the ways in which they seem to evoke issues not explicitly included in the law report. Perhaps the most interesting aspects not evident from either the legal record or the textbook treatments of the case were the personal relationships (and cultural gaps) that developed between the US lawyers and the British barristers when preparing their respective cases. Andrew Waugh QC, who was then a junior counsel for Biogen, recalled that during the initial Patents Court trial—where Hugh Laddie QC (later to become Sir Hugh Laddie) had taken the lead in arguing the case for Biogen—the tension between Biogen’s different sets of transatlantic lawyers was often very high.186 An interesting incident he remembered took place in the morning just before the trial was about to recommence, when a ‘momentous row’ erupted outside the courtroom between Laddie QC and Jim Haley, a US attorney working for Biogen, concerning the sharing of cross-examination notes.187 Suffice to say, Waugh QC felt the public nature of the argument was damaging to morale on the Biogen side and gave a boost to the other side (Medeva).188 Another aspect raised in the workshop concerned the difficulties involved in analysing and weighing up the value of complex scientific evidence in the legal context: specifically, the question of whether a hepatitis B surface antigen was expressed by doing what the patent described. In this

184 ‘Case Review: Biogen v Medeva, 20 years on,’ (2015) Lifesciences Intellectual Property Review . 185 M Grimond, ‘Medeva Wins Court Case’ The Independent (November 1996) 26. 186 Interestingly, Sir Hugh Laddie reflected on some of these issues after he retired as a judge at the Patents Court; H Laddie, ‘Patents—What’s Invention Got To Do With It?’ in Vaver and Bently (eds) Intellectual Property in the New Millennium (n 109) 91–95. 187 ‘Case Review: Biogen v Medeva, 20 years on’ (n 184). For some references to Haley’s involvement in drafting Biogen patent applications, see N Rasmussen, Gene Jockeys: Life Science and the Rise of Biotech Enterprise (Baltimore, Johns Hopkins University Press, 2014) 111. 188 After the case, both Simon Thorley QC and Andrew Waugh QC continued to deploy their expertise in pharmacology and biotechnology matters, appearing in the most important cases litigated in the field throughout the late twentieth and early twenty-first centuries, such as Generics (UK) Ltd v H Lundbeck A/S [2009] UKHL 12, [2009] 2 All ER 955 and Human Genome Sciences Inc v Eli Lilly & Co. [2011] UKSC 51, [2012] RPC 6.

314 Luke McDonagh regard, another participant remembered an issue from the proceedings that is not evident from reading the law report. Professor Jeffrey William Almond—who was then working at the University of Reading and testified for Medeva—recalled how he had cast doubt on the reliability of the autoradiographs that Biogen had presented as evidence (demonstrating the expression of the hepatitis B surface antigen). Here, Hugh Laddie QC for Biogen had focused the court’s attention on a number of highlighted dark areas in the autoradiographs which apparently showed where the radioactive label had been bound to the expressed surface antigen. Yet, to the naked eye these dark areas looked like mere black smudges. Thus, during Professor Almond’s testimony, Peter Prescott QC for Medeva had belittled the autoradiographs as mere ‘smudgeograms’.189 Professor Almond also recalled that he had found assessing this surface antigen expression question as an expert at a legal trial a strange experience: as a scientist, he had been trained to be wary of making conclusions based on partial evidence; yet at the trial his duty was to give his conclusive analysis—that he was unconvinced that the surface antigen expression had occurred—without the benefit of pressing for further scientific tests.190 Ultimately, Professor Almond came away from the case with a profound understanding of how dissimilar the fields of law and science are from a methodological point of view, with each field possessing its own rational processes and own standards of acceptable proof.191 Of course, Professor Almond is not the first person to have made this point; in fact, as noted earlier, it is this dissonance makes patent law a particularly fascinating area, and a hugely challenging one.192 Despite the friction experienced between the bodies of law and science, the case made clear just how important expert testimony is in patent litigation—put simply, the only way the Patents Court, Court of Appeal and House of Lords could make sense of the legal issues was to rely on the views of scientific experts on the field of biotechnology.193 On this, Professor Almond remembered how quickly he had become gripped by the drama of the court room. In particular, he came to realise that in the litigation arena

189 Here, it is worth noting that Peter Prescott QC and Professor Almond were both involved in the Patents Court case of Chiron Corp v Organon Teknika Ltd. (No 3) [1994] FSR 202 which was heard almost at the same time as Biogen by Aldous J. Moreover, Dr Brenner, one of the advisers of the Court of Appeal in Biogen, had also sat with Aldous J during the Chiron case. 190 ‘Case Review: Biogen v Medeva, 20 Years On’ (n 184). 191 On this epistemological difference, see Pottage and Sherman, Figures of Invention (n 16) 1–29 and 181–206. 192 ibid 9–10, 181–206. 193 For some interesting references of the expert’s role in patent law, see RE Hofer, ‘Experts in Patent Cases’ (1982) Litigation 8 (Winter) 44–46, 61–62 (US) and L Heald ‘The Function of the Expert Witness in Litigation’ (Lectures, monographs and reports / The Royal Institute of Chemistry, 1949).

Biogen v Medeva (1996) 315 even a casual exchange between experts on opposing sides might have serious consequences.194 Before testifying, Professor Alan Kingsman—the main scientific expert for Biogen, who later went on to found his own biotech company, Oxford BioMedica—had engaged in a relaxed conversation with his professional acquaintance and fellow expert, Professor Almond (perhaps naively, since Almond was due to testify for Medeva), explaining that much of his scientific report had been co-authored by Biogen’s legal team.195 Almond reported this comment back to his own legal team (Medeva)—and at the cross-examination Peter Prescott QC did not hesitate to use it as a weapon, quietly but stealthily putting Kingsman ‘under the cosh’ by asking whether a key passage of the report was Kingsman’s own testimony or ‘something a lawyer has written for you’.196 A flustered Kingsman had immediately looked daggers across at Almond—a look that Almond has never been able to put out of his mind.197 Interestingly, later in the trial, when it was Professor Almond’s turn to be cross-examined, he faced his own difficult moment on the stand: Hugh Laddie QC unexpectedly dug out Almond’s CV from a bundle of papers and asked him why, since he claimed to be an expert in the DNA field in the late 1970s, his own CV showed that he had attended an entry-level course on the subject during the period that Professor Murray was conducting the experiments that led to the 1978 Biogen 1 application.198 In fact, Biogen’s legal team continued to emphasise this point throughout the proceedings, highlighting that ‘his work in 1978–1979 did not involve manipulation at all’.199 Professor Almond noted that the ‘CV ambush’ experience, like Kingsman’s cold dagger look, is something he has never forgotten.200 Finally, Andrew Waugh QC made an interesting point about the ways the courts have handled biotechnological cases over the last few decades. Like Biogen, the majority of biotechnology cases have been overturned on appeal,201 breaking an initial pattern established by Genentech, where the first instance decision was upheld.202 As a result, Waugh QC quipped that in complex biotech cases he had learned a valuable lesson: ‘where the law is new and the facts are difficult, lose at first instance: the prospects of winning on appeal are much better’.203 194 ibid.

195 A full description of Professor Kingsman’s achievements can be found at www.sbs.ox.ac. uk/sites/default/files/Entrepreneurship_Centre/Docs/alan-kingsman.pdf. 196 ‘Case Review: Biogen v Medeva, 20 Years On’ (n 184). 197 ibid. 198 ‘Prof JW Almond: Cross-Examination by Mr Laddie’, HL/PO/JU/3/1913, PA. 199 ‘The Witnesses’ in ‘Biogen’s Statement’, HL/PO/JU/3/1913, PA. 200 ‘Case Review: Biogen v Medeva, 20 Years On’ (n 184). 201 Kirin-Amgen v TKT [2004] UKHL 46, [2005] 1 All ER 667; Conor v Angiotech [2008] RPC 28, [2008] UKHL 49; Generics (UK) Ltd v H Lundbeck A/S [2009] UKHL 12, [2009] 2 All ER 955; Human Genome Sciences Inc v Eli Lilly & Co. [2011] UKSC 51, [2012] RPC 6. 202 Genentech Inc’s Patent [1989] RPC 147. 203 ‘Case Review: Biogen v Medeva, 20 Years On’ (n 184).

316 Luke McDonagh This comment reflects two central concerns that illustrate why Biogen was a notable case: first, accommodating biotechnological inventions within patent law required something ‘new’ conceptually (in terms of expanding the notion of the ‘invention’ to allow organisms to be seen as ‘manufactured’, and thus, ‘invented’); and, second, it required a reliance on technology and scientific expertise (for assessing what the ‘difficult’ facts were concerning the new ‘intellectual possessions’).204 That all the key subsequent UK biotech patent cases have been overturned on appeal might demonstrate that the participants and arbiters of the legal process—lawyers and judges— require time, and perhaps the benefit of distance from the initial trial, to fully process the profound changes that happen when a new field of science comes to law. Biogen v Medeva is certainly one case that seems to reflect such historicity, and it ought to be seen as a true landmark.205

204

Pottage and Sherman, Figures of Invention (n 16) 181–93. a few months after the decision, some scholars began using the term ‘landmark’ to describe the case—see M Kern ‘Patentability of Biotechnological Inventions in the United Kingdom: The House of Lords Charts the Course’, IIC 29 (1998) 247–82, 248; D Sternfeld ‘Biogen Loses Out in Landmark UK Biotech Case’ Managing Intellectual Property (February 1997) 32–35. By contrast, see IC Baillie, ‘Biogen—Is It Possible to Be Worse Than It Looks?’ CIPA Journal (February 1997) 146–47; see also Janis ‘On Courts Herding Cats’ (n 114) 104. 205 Just

12 R v Johnstone (2003) ELENA COOPER*

I. INTRODUCTION

F

OR INTELLECTUAL PROPERTY lawyers today, R v Johnstone1 is a rare case: it is the only House of Lords ruling on the criminal law provisions of a current intellectual property statute. The appeal concerned the conviction of one Robert Alexander Johnstone at Kingston Crown Court for 12 counts under section 92 of the Trade Marks Act 1994,2 relating to the possession of bootleg CDs (unauthorised recordings of live performances by well-known popular music acts). In each instance, the registered trade mark was the name of the music artist in question, eg Bon Jovi, which appeared on the bootleg CD. Johnstone appealed against his conviction; he had pleaded guilty after the Crown Court had ruled that he was not entitled to argue his defence by reference to the limits imposed by civil law on infringing uses of a trade mark. Both the Court of Appeal and House of Lords found in his favour. The House of Lords held that implicit in section 92 was the requirement that the defendant’s use was one to which the trade mark proprietor could object under the civil law of trade marks: the defendant’s use of the sign must be use ‘as a trade mark’.3 Today, Johnstone is usually remembered by intellectual property lawyers for what the Lords had to say about the meaning of ‘use as a trade mark’

* With thanks to Lindsay Farmer, James Chalmers and Fiona Leverick for their comments on an earlier draft of this paper presented at the Criminal Law Forum, University of Glasgow, June 2016. 1 R v Johnstone [2003] UKHL 28, [2003] 1 WLR 1736, [2002] EWCA Crim 194, [2003] FSR 56. 2 The details of s 92 are at the text following n 25. 3 ibid (HL), [28] and [31], Lord Nicholls.

318 Elena Cooper and this has been much discussed in existing scholarship.4 As Lord Nicholls opined: the essence of a trade mark has always been that it is a badge of origin. It i ndicates trade source: a connection in the course of trade between the goods and the proprietor of the mark.5

On this issue, Johnstone is a dated landmark; the legal landscape has changed significantly since Johnstone was decided in 2003. Two points can be noted. First, developments in the European Court of Justice’s case law mean that it is now clear that a broad range of other trade mark functions are now relevant under the civil law of trade marks: ‘in particular … guaranteeing the quality of the goods or services in question and those of communication, investment or advertising’.6 The expansion in trade mark functions in the civil law has resulted in increased importance for defences to infringement (section 11) in limiting the scope of protection. Accordingly, were the test in Johnstone to be adapted to accommodate these other trade mark functions, no longer would it set significant limits on section 92; the ‘scope or “footprint” of section 92’ would not be necessarily ‘smaller than and wholly contained within, the “footprint” of the civil infringement sections’, as the Lords had intended.7 Secondly, as House of Lords’ judgments acknowledged,8 the issue of trade mark use would not have arisen had the case in Johnstone instead been brought in respect of criminal offences relating to copyright (eg in the music and lyrics) and/or performers rights (in respect of an ‘illicit recording’) under sections 107 and 197 Copyright Designs and Patents Act 1988.9 The prosecution in Johnstone brought the case under the Trade Marks Act 1994 because of the far higher penalties available at that time for trade mark offences (a maximum of ten years’ imprisonment and/or a fine)10 as compared to criminal offences relating to performers’ rights or copyright (then, a maximum of two years’ imprisonment and/or a fine).11 However, this 4 See, for example, NM Dawson, ‘Non-Trade Mark Use’, (2012) 4 Intellectual Property Quarterly 204–26; B Trimmer, ‘The Power of Attraction: Do Trade Marks have an “Image” Problem in the English Courts’, (2009) European Intellectual Property Review 195–201; P Yap, ‘Making Sense of Trade Mark Use’, (2007) 29 European Intellectual Property Review 10, 420–27. C Rutz, ‘After Arsenal and Electrocoin: Can the Opinions on Trade Mark Use be Reconciled?’, (2005) 36 International Review of Intellectual Property and Competition Law 6, 682–705; H Norman, ‘Time to Blow the Whistle on Trade Mark Use?’, (2004) 1 Intellectual Property Quarterly 1–34. 5 R v Johnstone, HL [13]. 6 C-487/07 L’Oreal v Bellure [2009] ECR I-5185 (ECJ, First Chamber), [58]. See also, C-236/08-238/08 Louis Vuitton v Google France [2010] ECR I-2417 (ECJ, Grand Chamber), [77]; C-558/08 Portakabin v Primakabin [2010] ECR I-6963 (ECJ, First Chamber), [30]. 7 R v Johnstone, HL, [73] per Lord Walker. 8 ibid, HL [40] per Lord Nicholls and [86] per Lord Walker. 9 1988. 10 Trade Marks Act 1994, s 92(6). 11 Copyright Designs and Patents Act 1988, ss 107(4)(b) and 198(5)(b) as enacted.

R v Johnstone (2003) 319 inconsistency has since been removed: the maximum penalty of ten years and/or an unlimited fine is now also applicable to copyright and performers’ rights12 (though the discrepancy remains for online infringement).13 As well as the question of trade mark use, the ruling in Johnstone is also well known for the human rights issues that it raised: its contribution to case law on the nature of burden of proof to be borne by the defendant in running a statutory defence (in Johnstone, section 92(5) Trade Marks Act 1994, discussed later) and its compatibility with the presumption of innocence under Art 6(2) of the European Convention of Human Rights. In J ohnstone, the House of Lords preferred the approach of the Court of Appeal in R v S,14 over that of the Court of Appeal in Johnstone; section 92(5) imposed a legal burden on the accused and this was compatible with the presumption of innocence in Article 6(2) European Convention on Human Rights.15 This aspect of Johnstone has also been closely considered in the existing literature.16 This chapter leaves these more frequently discussed aspects of Johnstone to one side. Instead, I consider Johnstone as a landmark in an area that has to date received little consideration: the relation between civil and criminal law in intellectual property. Intellectual property offences, I argue, are caught between their characterisation, on the one hand, as offences of ‘dishonesty’ and on the other, ‘quasi-criminal’ regulatory crime. I argue that the public interest dimension to countering piracy and counterfeiting, which justifies a regulatory characterisation, explains the approach adopted by the Lords in Johnstone. In considering the relation between civil and criminal law in intellectual property, this chapter fills an important gap in the existing literature. To date, there has been little literature on this relation and this gives only 12 Copyright Designs and Patents Act 1888, ss 107(4)(b) and 198(4)(b) introduced by the Copyright etc and Trade Marks (Offences and Enforcement) Act 2002, s 1. The same maximum penalties are also now applicable to registered design infringement: Intellectual Property Act 2014, s 13, introducing a new s 35ZA Registered Designs Act 1949. 13 Copyright Designs and Patents Act 1988, ss 107(4A)(b) and 198(4A)(b): where the offences are committed by communicating a work to the public, the maximum penalty remains two years’ imprisonment or a fine. The Gowers Review on Intellectual Property (2006) recommended the removal of this inconsistency as regards copyright law (Recommendation 36, para 5.81) and it is the current Government’s intention to introduce legislation on this point (Criminal Sanctions for Online Copyright Infringement: Government Consultation Response, IPO, 2016). 14 R v S [2002] EWCA Crim 2558, 1 Cr App R 35. 15 R v Johnstone, HL, [54]. This aspect of the case is referred to at (text to n 64 below). 16 See, for example: NP Metcalfe and AJ Ashworth ‘Case Comment: Trade Mark: Trade Marks At 1994 ss 11(2), 92—infringement’ (2004) Criminal Law Review 245–47; V Tadros and S Tierney, ‘The presumption of innocence and the Human Rights Act’ (2004) 67 Modern Law Review 3, 402–34; B Fitzpatrick, ‘Reverse burden and Article 6(2) of the European Convention on Human Rights’ (2005) 69 Journal of Criminal Law 6, 478–84; I Dennis, ‘Reverse Onuses and the Presumption of Innocence: In Search of Principle’ (2005) Criminal Law Review 901–36.

320 Elena Cooper c ursory attention to Johnstone.17 The exception here is Andreas Rahmatian’s 2004 Modern Law Review article ‘Trade Mark Infringement as a Criminal Offence’, which provides an analysis of all aspects of the Johnstone decision, including the relation between civil and criminal law.18 On the latter question, Rahmatian struggled to understand why the House of Lords did not assert a yet closer relation between civil and criminal law concepts.19 Rahmatian advocated an approach treating section 92 as ‘a criminal infringement provision, ie based on civil infringement and containing additional aggravating factors which together trigger criminal responsibility’;20 after all, as he explained: In the area of property offences, the criminal law frequently reverts to the civil law when interpreting elements of the actus reus. For example, the element ‘property belonging to another’, in section 1 of the Theft Act 1968 … is determined not only on the basis of sections 4 and 5 of that Act, but also on the basis of civil law.21

This chapter, among other things, responds to Rahmatian’s question. In doing so, it refers to the appeal papers held at the Parliamentary Archives, Westminster,22 which reveal that analogies with theft presented in argument to the Lords supported the opposite conclusion to that noted by Rahmatian: that section 92 should be interpreted without reference to the civil law. As we will see, R v Johnstone, is a landmark in disassociating the elements of intellectual property crime from theft for reasons different to those put forward by Rahmatian. In critically analysing the decision in Johnstone, this chapter also draws on original research into the experience of criminalising trade mark infringement from a very different time and context: the mid-nineteenth century. The important role that processes of criminalisation played in the making of the modern law of trade marks is analysed, focusing on the history of the first statute to provide protection for trade marks generally, regardless of subject matter: the Merchandise Marks Act 1862.23 The experience of criminalisation from a very different time and context enables us to 17 Johnstone is given only cursory attention in C Sharp and J Smith, ‘The Interplay Between Civil and Criminal IP Litigation in the UK’ (2012) 7 Journal of Intellectual Property Law & Practice 8, 573–79. 18 A Rahmatian, ‘Trade Mark Infringement as a Criminal Offence’ (2004) 67 Modern Law Review 4, 670–83, 675–77. For the implications of Johnstone for Scottish intellectual property law: A Rahmatian, ‘Vestiges of a Scottish Intellectual Property Law?’ (2004) 2 Juridical Review 209–12. 19 Rahmatian, Trade Mark Infringement (n 18) 675: ‘Several aspects of Johnstone are not easy to understand. One is the argument that the criminal offence has to be seen as a separate entity in principle, alongside the civil infringement law.’ 20 ibid 676. 21 ibid. 22 House of Lords Appeal Cases, Series 3, HL/PO/JU/4/3/2272, held by Parliamentary Archives, Houses of Parliament, Westminster, London; hereafter ‘Appeal Papers’. 23 25 & 26 Vict.

R v Johnstone (2003) 321 engage more critically with intellectual property crime today, by shifting the focus from immediately obvious explanations for the ruling in Johnstone (eg objectives of EU harmonisation of the civil trade mark law, and the language used by section 92) and drawing attention to underlying tensions in the law: both in the nineteenth century and today, trade mark offences were caught between efficient enforcement and the paradigm of serious crime involving dishonesty (theft today and forgery in the nineteenth century). History, therefore, in taking our attention away from the simple explanations, enables us to identify the more deep-seated ambivalence in the relation between intellectual property offences and paradigms of real crime today. This chapter is structured as follows. I begin by presenting a detailed account of the case of Johnstone, tracing its history through the rulings of the Crown Court, Court of Appeal and finally the House of Lords (section II). The analysis here focuses on the issue of the relation between civil and criminal law, and this is explained, in section III, by reference to wider criminal law categories. Following this, in section IV, in line with the purpose of The Landmark Cases series, I look to historical antecedents to Johnstone: the story of criminalisation in the making of the Merchandise Marks Act 1862. As the conclusion in section V argues, while the context for the 1862 Act was very different, this broad historical vantage point assists us to reflect more critically on Johnstone and intellectual property crime more generally today. II. THE DECISION IN R v JOHNSTONE

A. Facts and Background In October 1997, a package containing over 500 bootleg CDs and related artwork was sent by a Robert Alexander Johnstone through the post and delivered to the wrong address. The recipient contacted Polygram Records who, in turn, alerted the police. The police searched Johnstone’s home in New Malden, accompanied by a representative of the British Phonographic Industry, and found around 500 further bootleg CDs and cassettes. The police also spoke to an employee of Johnstone, working in an outhouse to Johnstone’s home, who said he packed 400 to 500 such CDs/cassettes every day.24 Criminal proceedings were initiated in March 1999. The indictment contained 12 specimen counts under section 92(1)(c) Trade Marks Act 1994. Each count alleged that Johnstone had in his possession, custody or control, various bootleg CDs bearing the names of well-known music acts that were

24

‘Agreed Statement of Facts and Issues’ paras 1.1–1.4, Appeal Papers (n 22).

322 Elena Cooper registered trade marks (Bon Jovi, U2, The Rolling Stones, Rage Against the Machine, Metallica, Simply Red), and recited the key elements of the offence under section 92(1)(c).25 Section 92(1)(c) provides that ‘a person commits an offence who, with a view to gain for himself or another, or with intent to cause loss to another, and without the consent of the proprietor … has in his possession, custody or control in the course of a business any such goods with a view to the doing of anything, by himself or another, which would be in offence’ under section 92(1)(b). Section 92(1)(b) criminalises unauthorised acts of selling, letting for hire, offering or exposing for sale or hire or distributing ‘goods which bear, or the packaging of which bears, a sign that is identical or, or likely to be mistaken for a registered trade mark’, with a view to gain for himself or another or with intent to cause loss to another. B. The Crown Court Proceedings Kingston Crown Court heard the case in October 1999, before Judge Mitchell. Johnstone began by pleading not guilty. His Defence Case Statement explained that the ‘general nature of his defence’ was that the use of the signs in question (Bon Jovi, U2, etc) was not ‘trade mark use’;26 rather the signs merely indicated who the performers were.27 If that argument was not accepted, the Defence Case Statement indicated that Johnstone wished to rely on the statutory defence in section 92(5) Trade Marks Act 1994.28 This provides that it is ‘a defence for a person charged with an offence under this section to show that he believed on reasonable grounds that the use of the sign in the manner in which it was used, or was to be used, was not an infringement of the registered trade mark’. To support these points, Johnstone claimed that he had been advised by a reputable trade mark attorney that his use of the signs in question was not trade mark infringement.29 Before the jury was appointed, Judge Mitchell ruled on a preliminary point. Counsel for Johnstone argued that, when the jury came to consider the statutory defence under section 92(5), they should be directed to have regard to the civil infringement and defence provisions of sections 9–11 Trade Marks Act; civil liability under sections 9–11 should be a prerequisite to a finding of criminal liability under section 92.30 This was because, as well as arguing that there was no ‘trade mark use’, Johnstone wished to

25

‘Indictment’, Appeal Papers (n 22). ‘Agreed Statement of Facts and Issues’, para 2.3, Appeal Papers (n 22). 27 R v Johnstone, CA, [34]. 28 ‘Agreed Statement of Facts and Issues’, para 2.3, Appeal Papers (n 22). 29 ibid para 2.4. 30 ‘Ruling of His Honour Judge Mitchell of 25 October 1999’, Appeal Papers (n 22). 26

R v Johnstone (2003) 323 rely on section 11(2)(b) of the Trade Marks Act which provides that ‘the use of indications concerning the kind … or other characteristics of goods’ is not an infringement, if this was in accordance with ‘honest practices in industrial or commercial matters’. Johnstone’s argument was that the signs in question merely indicated who the performers were.31 Following other decisions at Crown Court level,32 Judge Mitchell rejected these submissions; he held that the criminal provisions in section 92 ‘stand alone and should in no way be connected to the civil or tortious aspect that is created within this Act’.33 In particular, the word ‘infringement’ in section 92, merely denoted ‘unauthorised use’ of a mark, and not infringement as determined by reference to the civil law of trade marks.34 Following this ruling, Johnstone changed his plea to guilty. He was sentenced to six months’ imprisonment, concurrent, on each count. In addition, a confiscation order was imposed, by consent, for £130,181.24 (to be paid within 18 months, with three years’ imprisonment in default), as well as orders for forfeiture of all materials seized by the police during their investigations.35 This was Johnstone’s second conviction for an offence of this kind.36 C. The Appeal to the Court of Appeal Leave to appeal to the Court of Appeal against the conviction was then granted in relation to a number of questions, concerning different facets of the relation between civil and criminal law. First, was it necessary for the Crown to prove the civil infringement of a registered trade mark under sections 9–11 Trade Marks Act 1994, in a prosecution under section 92(1)? Secondly, could a defendant relying on the statutory defence in section 92(5) also rely on the civil sections 9–11 of the Trade Marks Act? More specifically, did the words ‘infringement of a registered trade mark’ in section 92(5) denote civil infringement? Thirdly, if civil infringement was not a prerequisite to the offence under section 92, was section 92 compatible with the EU Trade Marks Directive (89/104/EEC), which sought to harmonise aspects of the civil law of trade marks?37

31 R v Johnstone, CA, [10]. The House of Lords referred to the reliance on s 11(2)(b) as an alternative to the defence in s 92(5), see R v Johnstone, HL, [21]. 32 R v Johnstone, CA [10]. 33 ‘Ruling of His Honour Judge Mitchell of 25 October 1999’, Appeal Papers (n 22). 34 ibid. 35 ‘Criminal Appeal Office Summary’, Appeal Papers (n 22). 36 R v Johnstone, CA, [12]. 37 ‘Criminal Appeal Office Summary’, Appeal Papers (n 22), and R v Johnstone, CA [2]. There was also a fourth question: whether the penalties under section 92(6) (a maximum sentence of ten years’ imprisonment or an unlimited fine, or both) were compliant with the Treaty of Rome, Art 5. See text to n 75 below.

324 Elena Cooper In January 2002, the Court of Appeal allowed Johnstone’s appeal. Tuckey LJ, delivering a judgment with which Pumfrey and Burton JJ agreed, held that ‘unless there is a civil infringement, there can be no offence under section 92’.38 First, this was the proper interpretation of the words of section 92: the reference to ‘infringement’ in section 92(5) was to civil infringement; the interpretation section (section 104) defined ‘infringement’ by reference to sections 9(1)–(2) and 10 concerning civil infringement. While section 104 did not expressly mention the defences in sections 11 and 12, it would be ‘nonsense’ for section 92(5) to provide a defence when a defendant had a reasonable belief that there was no civil infringement, when the absence of civil infringement would be no defence.39 Further, if the defences under sections 11 and 12 were not available to a defendant under section 92, then there would be an inconsistency with the EU Directive40 that seeks to harmonise ‘substantive rules of central importance’ to trade mark law.41 That cannot have been the intention of Parliament. However, to avoid unnecessary complexity for juries, the prosecution would not be obliged to prove civil infringement in every case; rather it was for the defendant to set out in his Defence Statement the civil law provisions upon which he relied, and the onus would be on the Crown to disprove that case.42 Accordingly, the Court of Appeal held that Johnstone should have been free to run the arguments set out in his Defence Statement: that the use of the sign was not trade mark use and not civil infringement under section 11(2)(b).43 Though the Court had doubts as to whether these defences would succeed in most cases of bootlegging,44 his conviction was unsafe and was overturned. However, as Johnstone had served his prison sentence, a retrial was not ordered. D. The Appeal to the House of Lords The prosecutions then appealed to the House of Lords. The question before the Lords was, as expressed by Lord Nicholls, ‘whether it is a defence to a criminal charge under section 92 … that the defendant’s acts do not amount to a civil infringement of a trade mark’ per Lord Nicholls;45 or, as stated by Lord Walker, ‘whether a person can be convicted of an offence under

38

R v Johnstone, CA, [46].

39 ibid. 40

ibid [53]. ibid, citing C-355/96 Silhouette International v Hartlauer [1998] ECR I-4799 [23]. 42 ibid [48]. 43 ibid [68]. 44 ibid [35] and [48] point (b). 45 R v Johnstone, HL, [25], per Lord Nicholls. 41

R v Johnstone (2003) 325 section 92 for acts which do not amount to civil infringement of a registered trade mark’.46 Counsel for the prosecution reiterated the argument put forward in the courts below: section 92 was a self-contained provision; all the ingredients of the offence appeared on the face of the section. In particular, Parliament cannot have intended civil infringement to be introduced into the criminal courts because offences needed to be simple so jurors, lay magistrates and local trading standard authorities could understand them.47 The House of Lords, like the Court of Appeal below, accepted J ohnstone’s arguments. However, the nature of the relation between criminal and civil law was differently stated; Lord Nicholls, who delivered a judgment with which all the other Lords agreed,48 characterised the House of Lords approach as involving ‘a more confined process of interpretation’ than that of the Court of Appeal.49 However, the House of Lords accepted that ‘the ingredients of the offences created by section 92 are to be found within the section itself’.50 As Lord Walker explained, in his concurring judgment, this approach was supported by the difference in language between section 92 and the civil infringement sections 9–11 (for example, section 92 refers to ‘likely to be mistaken’ instead of ‘likelihood of confusion’ and ‘in the course of a business’ rather than ‘in the course of trade’). Lord Walker argued that this indicated: Parliament’s natural anxiety to frame the offence-creating provisions of the 1994 Act so as to be as self-contained and simple a code as possible. Prosecutions under section 92 are heard either in the magistrates’ court or in the Crown Court and would be burdensome if lay magistrates and juries regularly had to go into the intricacies of the law of civil infringement.51

However, notwithstanding this, the words ‘without the consent of the [trade mark] proprietor’ in section 92 denoted that the conduct to be criminalised was conduct to which the proprietor could object. Therefore, implicit in section 92 was the requirement that the defendant’s use be ‘use as a trade mark’. As Lord Nicholls explained: Parliament cannot have intended to criminalise conduct which could lawfully be done without the proprietor’s consent … That would be to extend, by means of a criminal sanction, the scope of the rights of the proprietor.52

A number of points supported this interpretation. First, the wording of section 92(5); ‘it would make no sense for reasonable belief in non-infringement 46

ibid [61], per Lord Walker. ibid [25]. 48 This included Lord Walker, who delivered a concurring judgment: R v Johnstone, HL, [88]. The other Lords were: Lord Hope, Lord Hutton and Lord Rodger. 49 ibid [33]. 50 ibid, HL [26]. 51 ibid [73]. 52 ibid [28]. 47

326 Elena Cooper to be a defence, if infringement was irrelevant so far as the criminal offences are concerned’.53 Further, the 1994 Act was to be interpreted, so far as possible, to accord with the harmonising objectives of the EU Trade Mark Directive.54 The result in R v Johnstone, therefore, is that notwithstanding the intention to make the criminal offences simple for juries, lay magistrates and trading standards, that civil trade mark concepts are relevant to the criminal offences in section 92; the House of Lords rejected the Crown Court approach at first instance that treated section 92 as a completely self-contained provision. At first glance, the relevance of civil trade mark concepts to section 92 might seem unremarkable. There are a number of considerations in the case of the Trade Marks Act 1994, that clearly point to this conclusion: the EU harmonisation of the civil trade mark law and the wording of section 92(5).55 Indeed, as Andreas Rahmatian argued in his Modern Law Review article, perhaps the noteworthy aspect of Johnstone is rather that the Lords did not advocate an even closer relation between civil and criminal law, such that the civil law of infringement more generally was a necessary part of section 92.56 With these questions in mind, the next section addresses how the relationship between civil and criminal law in Johnstone is to be explained, and it does so by first considering the more general position of intellectual property offences in the categories of the criminal law. III. EXPLAINING R v JOHNSTONE

A. Intellectual Property Offences and the Criminal Law What is the position of intellectual property offences within the criminal law? On the one hand, Court of Appeal authorities on sentencing have characterised criminal offences in intellectual property statutes as serious crimes involving dishonesty, analogous to theft. In R v Carter, the Court of Appeal heard an appeal against a sentence imposed by a Crown Court for nine months’ imprisonment, suspended for two years, to run concurrently on two counts, in respect of offences of making and distributing infringing copies of videotapes contrary to section 107 Copyright Designs and Patents Act 1988. The defendant had pleaded guilty and had no relevant p revious

53

ibid [29]. ibid [31], referring to Council Directive 89/104/EEC of 21 December 1988. 55 See text to nn 53 and 54. 56 Rahmatian, ‘Trade Mark Infringement as a Criminal Offence’ (n 18) 675–76. 54

R v Johnstone (2003) 327 convictions. The Court of Appeal refused to interfere with the sentence imposed by the Crown Court, Jowitt J remarking that: it has to be borne in mind that the counterfeiting of video films is a serious offence. In effect, to make and distribute pirate copies of films is to steal from the true owner of the copyright … It is an offence really of dishonesty.57

Similar comments were made in R v Adam Ahmed Bhad, an appeal over sentencing under section 92 Trade Marks Act 1994. While the Court of Appeal doubted whether ‘the custody threshold was in truth crossed’ in the case of the activities in question (an ‘isolated lapse’ of an otherwise ‘honest business’ which was a ‘small scale operation’), Bingham CJ nevertheless described section 92 as follows: The owners of trade marks have a commercial asset which is entitled to legal protection. Deliberately using someone else’s trade mark is in effect to steal their commercial goodwill. This is properly a criminal offence and a penalty must follow on conviction.58

However, in case law on the elements of the offence, the courts have treated intellectual property offences as regulatory offences, that is, statutory offences regulating an activity in the public interest and ‘not truly criminal’ in nature.59 For example, a well-established principle of criminal law is that the courts should apply a presumption of mens rea in interpreting a statutory provision creating a criminal offence. As Lord Reid explained in the House of Lords ruling in Sweet v Parsley: whenever a section is silent as to mens rea there is a presumption that, in order to give effect to the will of Parliament, we must read in words appropriate to require mens rea.60

Whereas the presumption is ‘particularly strong’ for offences that are ‘truly criminal’ in character,61 it can be displaced for offences concerning ‘quasicriminal acts’.62 In R v Keane, it was argued that the presumption of mens rea should apply to section 92(1); rejecting this argument, the Court of

57

R v Carter [1993] FSR 303, 304 (CA). R v Adam Ahmed Bhad (1999) Cr App R (s) 139, 142. 59 R v Lambert [2001] UKHL 37, [154] per Lord Clyde. Lord Clyde gave as an ‘obvious example’ of regulatory provisions, offences requiring a licence to carry out an activity. He considered the ‘promotion of health and safety and the avoidance of pollution’ as ‘among the purposes of such controls’. 60 Sweet v Parsley [1970] AC 132 (HL), 148. 61 In Gammon v Attorney General of Hong Kong, [1985] AC 1, 12, the Privy Council held that the presumption of mens rea is ‘particularly strong where the offence is “truly criminal” in character’, and that the ‘only situation’ in which the presumption could be displaced is where a statute concerned an ‘issue of social concern’ (eg public safety) and ‘greater vigilance to prevent the commission of the prohibited act’ would result. 62 Sweet v Parsley [1970] AC 132, 149–50, per Lord Reid. 58

328 Elena Cooper Appeal stated obiter that section 92 falls within the ‘quasi-criminal’ or regulatory category (though clearly stating that it did not wish to decide the issue).63 In a subsequent case, R v S, it was argued that the statutory defence in section 92(5), in providing a mens rea element, was an ‘essential element’ of the offence under section 92 (such that placing a legal burden of proof on the defendant to prove the elements of section 92(5) would conflict with the presumption of innocence under Art 6(2) of the European Convention on Human Rights).64 Rejecting this argument, the Court of Appeal held that ‘dishonesty … is not the gravamen of the offence’ under section 92.65 Rather, as Davis J explained, in a judgment with which the other members of the Court of Appeal agreed: Section 92 is a regulatory provision and the strong policy behind the 1994 Act, and mischief at which it is aimed, support the view that the use of such technique in this context is neither unprincipled or arbitrary: the unauthorised use of trade marks is the target of the legislation and the substance of the offence.66

The classification of section 92 as ‘regulatory’ was also one factor which the Court of Appeal in R v S considered to justify the defendant bearing the legal burden of proof under section 92(5),67 and this reasoning was expressly endorsed by Lord Nicholls in Johnstone.68 As Lord Nicholls acknowledged, referring to the much-cited dicta of Auld LJ in Torbay Council v Satnam Singh, ‘the offences in section 92 have rightly been described as offences of “near absolute liability”’.69 Justifying the regulatory classification is the ‘very considerable public importance in preventing the trade in counterfeit goods’.70 In R v S, Davis J explained this ‘public interest’ as follows: the result of fewer prosecutions would be that: the interests of the economy, of innocent consumers and of legitimate businesses would suffer … the DTI in December 2001 estimated that counterfeiting or IP 63

R v Keane [2001] FSR 7 [28], per Mance LJ. R v S [2002] EWCA Crim 2258, [22]. 65 ibid [30]. 66 ibid [34]. 67 ibid [48] point (4). 68 R v Johnstone, HL, [54]. 69 ibid [52], referring to dicta of Auld LJ in Torbay Council v Satnam Singh, 2000 FSR 158, 161: ‘At a first sight, this near absolute liability may seem harsh, especially when it is noted from section 92(6)(b) of the Act that the offence carries a maximum penalty on indictment of an unlimited fine or imprisonment up to 10 years or both. However, if the regime introduced by the Act is to operate as an effective protection both to registered proprietors of trade marks and consumers, it cannot sensibly depend on proof in every case of the trader’s knowledge of the existence of the registration … or on his rebuttal of the assertion that he was unaware of the registration or its detail’. This dicta has been approved in R v Keane [2001] FSR 7, [24] per Mance LJ and R v S [2002] EWCA Crim 2558, [17] per Davis J. 70 R v Rachel McCrudden 2005 EWCA 466, [10]: ‘It seems to us that the provisions contained in section 92 have been devised to constitute a rigorous statutory code involving offences initially of strict liability, for the plain policy reason that there is very considerable public importance in preventing the trade in counterfeit goods’. 64

R v Johnstone (2003) 329 crime generally was estimated to cost the UK economy some £9 billion per year and was responsible for prospective job losses in legitimate businesses of over 4,000 people. There is a very strong public interest in seeking to limit or prevent such an eventuality.71

The case law on the elements of the offence, sits uneasily with the Court of Appeal dicta on sentencing in R v Carter and R v Adam Ahmed Bhad; while the courts may legitimately impose tougher sentences for offences of strict liability where there is evidence that the defendant had knowledge,72 the Court of Appeal dicta on sentencing places weight on aspects that are not formally part of the offence.73 How can the tension implicit in these characterisations of intellectual property offences be explained? On one level this reflects the lack of coherence of criminal law categories more generally. As criminal law scholarship has shown, the distinction between strict liability and fault liability, ‘from a legal point of view’, is ‘fraught with difficulty’; there has been a ‘failure’ on the part of the courts to provide a clear legal criteria for the distinction between these two categories of offences, with the result that judges ‘fall back into specific judgments about the rights and wrongs in individual cases’.74 Further, as the Court of Appeal judgment in Johnstone notes, the activities caught by section 92 occupy a broad ground: The seriousness of trade mark infringement occupies a spectrum running from the comparatively trivial to the very serious … Counterfeiting is certainly a potentially serious offence, there being large sums of money to be dishonestly made by the deliberate counterfeiter.

As Tuckey LJ continued, at the ‘top end’, the activities caught by section 92 constitute a ‘serious offence of dishonesty’, for which the maximum penalties of ten years and/or an unlimited fine are appropriate.75 Yet, at the same 71

R v S, [48] point 7. R v Lester (1975) 73 Cr App R 144, discussed in J Roberts, N Padfield, L Harris, Current Sentencing Practice (London, Sweet and Maxwell, 2016) L2-2B01. 73 I am grateful to James Chalmers for discussion on this point. 74 A Norrie, Crime Reason and History: A Critical Introduction to Criminal Law, 3rd edn (Cambridge, Cambridge University Press, 2014) 103–04. See also G Williams, Textbook of Criminal Law, 2nd edn (London, Stevens & Sons, 1983) 934: ‘In general, the authorities on strict liability are so conflicting that it is impossible to abstract any coherent principle on when this form of liability arises and when it does not. A particular proposition affirming strict liability can almost always be matched by its contradictory affirming fault liability’ cited in Norrie, Crime Reason and History 102. 75 R v Johnstone, HL, [58]–[59]. These comments were made by the Court of Appeal, in rejecting the argument that the long maximum penalties (a maximum of ten years’ imprisonment and/or an unlimited fine) were disproportionate, and therefore incompatible with Article 5 Treaty of Rome. Article 5 Treaty of Rome requires penalties to be ‘effective, proportionate and dissuasive’. As the Court of Appeal noted in Johnstone, the maximum punishment of ten years’ imprisonment and/or an unlimited fine is on a par with offences under the Theft Act 1968 (obtaining property by deception, section 15) and the offence of forgery (under section 6 Forgery and Counterfeiting Act 1981): see R v Johnstone, CA, [58]. 72

330 Elena Cooper time, section 92 also encompasses more trivial acts not involving dishonesty, which are criminalised in the public interest, on a regulatory rationale. Hence, in R v S the Court of Appeal noted that ‘the reality’ of sentencing under section 92, is that ‘most cases under section 92 are brought in the magistrates’ court and, of those, the majority result (in the case of conviction) in a fine’. In that case the prosecution, without challenge from defence counsel, cited figures that fewer than ten per cent of convictions in the Crown Court or magistrates’ court (in the period 1998–2000) resulted in an immediate custodial sentences’.76 In this way, while the Court of Appeal in case law on sentencing has characterised section 92 as a serious offence involving dishonesty, case law on liability instead draws on the ‘reality’ of sentencing in the lower courts; in case law on liability, the ‘reality’ of sentencing is a means of justifying the regulatory classification and distinguishing section 92 from other offences where the availability of long maximum penalties has instead supported the rejection of a regulatory classification.77 The broad range of activity regulated by intellectual property crime, then, in combination with the lack of clarity about criminal law categories, results in contradictory characterisations by the criminal law. B. R v Johnstone and the Relation between Civil and Criminal Law How does uncovering the position of intellectual property offences in the wider criminal law improve our understanding of the House of Lords r uling in Johnstone? First, it helps us to understand the question that perplexed Rahmatian in his Modern Law Review article: why the House of Lords did not advocate a yet closer relation between criminal and civil law, such that the civil law of infringement is part of the offence in section 92.78 Rahmatian addressed one explanation for the Lords’—the need for juries and lay magistrates to understand section 92—and rightly noted that this was not convincing on its own; juries and lay magistrates are often confronted with complex areas of criminal law.79 The analysis in the last section perhaps provides a more convincing answer to Rahmatian’s question: the ‘strong public interest’ to be served in facilitating efficient prosecutions by trading standards departments, essential to counter the economic cost of piracy and counterfeiting. These concerns appear prominently in the judgments in Johnstone; the judgments of both Lord Nicholls and Lord Walker open by 76

R v S, [48]. ibid. Referring to offences under the Misuse of Drugs Act 1971 considered in R v L ambert [2001] UKHL 37. 78 Rahmatian, Trade Mark Infringement as a Criminal Offence (n 18) 676: ‘there does not seem to be a convincing reason why an artificially independent building of criminal law has to be erected adjacent to the civil law edifice’. 79 ibid 677. 77

R v Johnstone (2003) 331 drawing attention to the high economic cost of ‘piracy and counterfeiting’, accounting for between five and seven per cent of world trade and costing the UK some £9 billion per year,80 and Lord Nicholls expressly mentioned the need for an approach that does not cause ‘practical difficulties for weights and measures authorities’.81 In this way, the context for the Lords’ interpretation of section 92 included the very public interest concerns that have supported its treatment as a regulatory offence, and in turn justifies an approach that treats section 92 as a ‘rigorous statutory code’ that is simple in application.82 The position of intellectual property offences within criminal law categories also helps explain why the Lords did not pursue analogies between section 92 and the law of theft. The appeal papers held at the Parliamentary Archives reveal that counsel for the prosecution contended that the independence of the criminal offences in section 92 from the civil law of trade marks was supported by analogising intellectual property crime to theft.83 In R v Hinks, the House of Lords held that the crime of theft (set out in section 1, Theft Act 1968) encompassed conduct which was not actionable under civil law;84 the majority held that a defendant could ‘appropriate’ property for the purposes of theft, even though good title had been acquired by the defendant under civil law (in the case in question, by way of gift). As Lord Steyn, delivering a judgment with which a majority of the Lords agreed, explained: The purposes of the civil law and the criminal law are somewhat different. In theory the two systems should be in perfect harmony. In a practical world there will sometimes be disharmony between the two systems. In any event, it would be wrong to assume on a priori grounds that the criminal law rather than the civil law is defective.85

On this basis, Lord Steyn concluded that the ‘tension between civil and criminal law’ was ‘not a factor which justified a departure’ from existing criminal law case law.86 Indeed, there was, in fact, a benefit to the independence of the criminal law from civil law concepts: while in some contexts of the law of theft a judge cannot avoid explaining civil law concepts to a jury … the decisions of the House of Lords eliminate the need for such explanations in respect of appropriation. That is a great advantage in an overly complex corner of the law.87 80

R v Johnstone, HL, [1], [59]. ibid [32] per Lord Nicholls. 82 R v Rachel McCrudden, [10], quoted above n 72. 83 ‘Case for the Appellant’, Appeal Papers (n 22), para 7.12. 84 R v Hinks [2001] 2 AC 241. 85 ibid 252. 86 ibid, referring to the rulings in R v Gomez [1993] AC 442 and R v Lawrence [1972] AC 626. 87 ibid 253. 81

332 Elena Cooper The ruling in Hinks has been much criticised by criminal law scholars for ‘the conflict it creates between the civil and criminal law’.88 However, the analysis in the previous section suggests that the decision not to follow that approach in the case of intellectual property offences is best explained by the differences between these offences and theft; while case law on sentencing might invoke comparisons with theft, as regards the elements of the action, section 92 is treated as regulatory in nature and not like theft at all. Indeed, in Hinks, Lord Steyn was complacent about the tension between the civil and criminal law precisely because ‘the mental requirements of theft are an adequate protection against injustice’;89 theft, then, unlike intellectual property crime, is an offence where dishonesty is ‘the gravamen’ of the offence’.90 In this context, Johnstone can be seen as a landmark in the disassociation of the elements of intellectual property offences from the theft paradigm. IV. CRIMINALISATION AND THE MAKING OF MODERN TRADE MARKS LAW

A. From Johnstone to Historical Antecedents In the last section, I drew attention to less considered aspects of Johnstone regarding the relation between civil and criminal law, and the position of intellectual property crime more generally within criminal law frameworks. In this section, I turn to historical antecedents that help us to reflect f urther on these observations. In so doing, I draw attention to the historical contingency of the assumption that the criminal law is peripheral to trade mark law; as Andreas Rahmatian observed in the opening of his Modern Law Review article, ‘the criminal liability which may result from the infringement of a registered trade mark’ is ‘usually only briefly discussed’; the criminal law is viewed as a ‘quite different’ discipline.91 In fact, as this section explains, the first UK statute to protect trade marks generally, without limitation to subject matter, was a criminal law measure: the Merchandise Marks Act 1862. After illustrating the contribution of the criminal law of forgery to the shape of the 1862 Act (see part B below), I explain how processes of

88 JC Smith, ‘Case comment: R v Hinks’ (2001) Criminal Law Review, 162, 165: ‘The most serious aspect of the present decision is the conflict it creates between the civil and the c riminal law. It is surely intolerable that the performance of a perfectly valid contract should be a crime’. See also, R Stevens, ‘Private Rights and Public Wrongs’ in M Dyson Unravelling Tort and Crime (Cambridge, Cambridge University Press, 2014) 124–25. 89 R v Hinks, 253. 90 The phrase used by the Court of Appeal in R v S, [30], quoted at text to n 65. 91 Rahmatian, ‘Trade Mark Infringement as a Criminal Offence’ (n 18), 670, referring to leading treatises and textbooks on intellectual property law.

R v Johnstone (2003) 333 criminalisation, in presupposing that there was an existing legal right to be criminalised, also played an important role in the creation of the concept of a civil law of trade marks (see part C below). This Part also discusses a fundamental tension at the root of the 1862 Act, that ultimately led to its demise: the conflict between the forgery paradigm (in particular, its requirement of dishonesty) and the objective of facilitating efficient prosecutions (see part D below). This observation lays the groundwork for the conclusion of the chapter (section V); bringing the analysis back to Johnstone, I show how the experience from a very different time and context helps us to focus on more deep-rooted tensions in intellectual property crime today and its ambivalent relation to ‘real’ crime. B. The Merchandise Marks Act 1862 and Forgery By way of background, as Brad Sherman and Lionel Bently have shown, trade mark law emerged as a ‘discrete and recognised area of law’ over the course of the second half of the nineteenth century. As of the middle part of the nineteenth century, the law was ‘dilatory and chaotic’,92 comprising statutory protection for trade marks for specific trades (eg cutlery wares in Hallamshire, linen, the hops trade and gun barrels),93 as well as protection through civil actions for deceit and the general criminal law (eg cheat94 or obtaining property by false pretences).95 Viewed in this context, the Merchandise Marks Act 1862 was an important development, provid ing statutory protection for the first time for trade marks broadly defined. As section 1 stated: ‘Trade Mark’ shall include any and every such Name, Signature, Word, letter, Device, Emblem, Figure, Sign, Seal, Stamp, Diagram, Label, Ticket, or other Mark as aforesaid lawfully used by any Person to denote any Chattel or (in Scotland) any Article of Trade, Manufacture, or Merchandise, to be in an Article or Thing of the Manufacture, Workmanship, Production or Merchandise of such Person or to be an Article or Thing of any peculiar or particular Description made or sold by such Person.

The purpose of the legislation, as Milner Gibson MP (the President of the Board of Trade) explained to the House of Commons, was to address the

92 B Sherman and L Bently, The Making of Modern Intellectual Property Law: The British Experience, 1760–1911 (Cambridge, Cambridge University Press, 2008) 167. 93 A summary of these legislative enactments can be found in L Bently, ‘The Making of Modern Trade Mark Law: The Construction of the Legal Concept of Trade Mark (1860–1880)’ in L Bently, J Davis and Jane C Ginsburg, Trade Marks and Brands: An Interdisciplinary Critique (Cambridge, Cambridge University Press, 2011) 5–7. 94 R v Closs (1858) 169 ER 1082, Dears &B 460. 95 R v Dundas (1853) Cox Crim Cas 30; R v Suter & Coulson (1867) 10 Cox Crim Cas 577.

334 Elena Cooper problem of ‘forged Trade Marks’.96 The Act criminalised, inter alia, with ‘intent to defraud, or to enable another to defraud any Person’, the forging or counterfeiting of any trade mark or the application of a forged or counterfeited trade mark (or the causing or procuring of such forging or counterfeiting, or application) to any chattel/article not being the ‘Manufacture, Workmanship, Production or Merchandise’ of any person whose trade mark shall be so forged or counterfeited.97 Existing literature has considered a number of aspects of the nature of the protection provided by the Merchandise Marks Act. Lionel Bently has described the Act’s protection for trade marks as a ‘communication-based wrong’—deriving from an intention to deceive—rather than premised on trade marks as property.98 Further, Brad Sherman and Lionel Bently have noted that the perception that trade mark law was ‘more concerned with regulating fraud than property’ resulted in the exclusion of trade marks from the category of ‘intellectual property’ that was taking shape in the mid-nineteenth century.99 In this section, I instead consider the implications of the particular criminal law paradigm—forgery—for the elements of the action under the 1862 Act. The history of forgery in the eighteenth and early nineteenth centuries has been explored in detail elsewhere. During the eighteenth century, there was a huge expansion in forgery legislation; among other things, this made forgery of a wide variety of documents relating to public and private finance a capital felony.100 As Phil Handler has shown, forgery assumed ‘critical importance’ in nineteenth-century debates that led to penal reform in the 1830s, removing capital punishment for over 200 crimes comprising the ‘Bloody Code’ that had been passed in the eighteenth century.101 By the mid-nineteenth century, forgery spanned a broad range of offences: while the offence at common law was a misdemeanour, there was also a complex web of statutory offences, some of which were felonies. Many of these were

96

Parl Deb 3rd S Vol 164 col 1089 (18 July 1861). Merchandise Marks Act 1862, s 2. 98 L Bently, ‘From Communication to Thing: Historical Aspects to the Conceptualisation of Trade Marks as Property’ in GB Dinwoodie and MD Janis (eds) Trademark Law and Theory: A Handbook on Contemporary Research (Cheltenham, Edward Elgar, 2008) section II(A). 99 Sherman and Bently, The Making of Modern Intellectual Property Law (n 92) 172. 100 Lindsay Farmer refers to forgery as the ‘quintessential crime’ of the eighteenth century. See L Farmer, Making the Modern Criminal Law: Criminalization and Civil Order (Oxford, Oxford University Press, 2016) 69. See also R McGowen, ‘Making the ‘Bloody Code’? Forgery Legislation in Eighteenth-Century England’ in N Landau, Law, Crime and English Society: 1660–1830 (Cambridge, Cambridge University Press, 2002) 117–38, explaining the increase in forgery legislation in the eighteenth century by the need to secure a financial system that sustained a nation at war. 101 P Handler, ‘Forging the Agenda: The 1819 Select Committee on Criminal Laws Revisited’ (2004) 25 Journal of Legal History 3, 249–68, 262. 97

R v Johnstone (2003) 335 codified by the Forgery Act 1861.102 Forgery was not defined by statute; as James Fitzjames Stephen noted, writing later in the century, the Forgery Act 1861 merely enumerated the types of document that could be forged.103 The essential characteristics of these offences were instead understood to stem from the offence’s definition at common law: ‘the fraudulent making or alteration of a writing to the prejudice of another man’s right’;104 as a leading criminal law treatise—William Oldnall Russell’s A Treatise on Crimes and Misdemeanors—stated: ‘the counterfeiting of any writing with a fraudulent intent, whereby another may be prejudiced, is forgery at common law’.105 How did the 1862 Act relate to these pre-existing criminal law offences? On one level, the 1862 Act can be seen as a legislative response to court rulings in the late 1850s, on the ambit of existing common law offences. In R v Smith,106 the Court of Crown Cases Reserved quashed a defendant’s conviction for common law forgery, by procuring the printing of 10,000 wrappers that were similar to the wrappers under which the prosecutor sold his product: powders called ‘Borwick’s Baking Powders’ and ‘Borwick’s Egg Powders’. Rejecting the argument by Counsel for the plaintiff, that the false wrapper was analogous to a ‘false certificate’,107 the Court held that the ‘real offence’ was the ‘issuing them with the fraudulent matter in them’; merely printing the wrappers did not involve forgery. As Pollock CB concluded: I doubt very much whether these papers are within that principle. They are merely wrappers, and in their present shape I doubt whether they are anything like a document or instrument which is the subject of forgery at common law.108

102 24&25 Vict. See generally, WM Oldnall Russell and CS Greaves, A Treatise on Crimes and Misdemeanors, 4th edn (London, Stevens & Sons, 1865) Vol 2, Ch 33. As Stephen noted, the intention behind the 1861 Act was to codify all existing forgery legislation, but it in fact left a number pre-existing enactments unrepealed: JF Stephen, The History of the Criminal Law of England (London, Macmillan & Co, 1883) Vol 3, 184–85. 103 Stephen, A History of the Criminal Law (ibid) Vol 3, 184. 104 Quoted in the edition of a leading criminal law treatise current at the time of the debates on the 1862 Act: WO Russell and CS Greaves, A Treatise on Crimes in Misdemeanors, 3rd edn (London, Saunder and Benning, 1843) 318, quoting Blackstone’s Commentaries Vol 4, 247. 105 Russell and Greaves, A Treatise on Crimes in Misdemeanors (n 104) 358. 106 R v John Smith (1858) 169 ER 1122, Dears & B 566. 107 ibid 572. Relying on cases about certificates in R v Toshack (1849) 169 ER 341, 1 Den 492. R v Sharman (1854) 169 ER 729; Dearsly 285, counsel argued that: ‘The certificates in the cases of Toshack and Sharman certified that a man had done certain things. Here the wrapper is in effect a certificate that Borwick had put his powder in the packet’. 108 R v John Smith, 573–74. See also Willes J: ‘I am entirely of the same opinion … The fraud consists in putting inside the wrappers powder which is not genuine and selling that’ (at 574). Byles J: ‘Here there was no counterfeit. The offence lies in the use of the wrapper’ (at 575). Bramwell B: ‘Forgery supposes the possibility of a genuine document … The prisoner may have committed a gross fraud in using the wrappers for that which was not the genuine powder, and may possibly be indicted for obtaining money by false pretences, but I think he cannot be convicted of forgery’ (at 575).

336 Elena Cooper While the printing of wrappers bearing the mark of another was not forgery, the Court in Smith made clear that the defendant might have committed the offence of obtaining money by false pretences.109 Further, the ruling in R v Closs, suggested that such conduct might also be actionable as a common law cheat; common law cheat encompassed ‘frauds which affect … the public at large’ and this included the use of ‘false tokens’ with ‘the semblance of public authenticity’.110 In Closs, Cockburn CJ held obiter that: if a person, in the course of his trade openly and publicly carried on, were to put a false mark or token upon an article, so as to pass it off as a genuine one when in fact it was only a spurious one, and the article was sold and money obtained by means of that false mark or token, that would be a cheat at common law.111

Notwithstanding this case law, both cheat and false pretences required the prosecution to prove causation between the false pretence or false token and the fraudulent obtaining of money. This sometimes caused problems for prosecutors,112 as the parliamentary debates on the Bill acknowledged.113 Forgery, then, overcame these problems of proof in so far as the offence was complete when the mark was forged, regardless of whether it was applied to goods114 (though, as we see below, it raised different problems).115 The forgery paradigm upon which the 1862 Act was based, however, was more than just a legislative reversal of the approach at common law; it was also intended to indicate that trade mark offences were a serious crime. This is apparent from the particular analogy drawn in the legislative debates on the 1862 Act: trade mark forgery was compared to the forgery of a ‘check

109 ibid 573, per Pollock CB: ‘The defendant may have been guilty of obtaining money by false pretences; of that there can be no doubt …’ See also Willes J at 574, Bramwell B and Channell B at 575. For examples of successful prosecutions see: R v Dundas (1853) Cox Crim Cas 30; R v Suter & Coulson (1867) 10 Cox Crim Cas 577. 110 Russell and Greaves, A Treatise on Crimes in Misdemeanors (n 104) 279. 111 R v Closs (1858) 169 ER 1082; Dearsly and Bell 460, 466. Closs concerned the unauthorised imitation of a signature on a painting, but Cockburn CJ (at 467) also gave the following example: ‘if a man sold a gun with the mark of a particular manufacturer upon it, so as to make it appear like the genuine production of the manufacturer, that would be a false mark or token, and the party would be guilty of a cheat, and therefore liable to punishment’. A judgment was also delivered by Crompton J; while he supported Cockburn CJ’s opinion he expressly did not wish to ‘pledge’ himself ‘as to the nature of the false token, which would amount to a cheat at common law’ (at 467). 112 In R v Closs, this was the reason for the jury’s ‘not guilty’ verdict on the count for false pretences: Thomas Closs, 2 November 1857, Proceedings of the Central Criminal Court 864 [1109], available at www.oldbaileyonline.org. The prosecution for cheat failed because the indictment was not correctly framed: R v Closs, 467. 113 Parl Deb 3rd S Vol 167 col 1419 (4 July 1862), the Attorney General: ‘Its object was to avoid the necessity of having to adduce before a jury such evidence—which it was sometimes very difficult to get—as would satisfy them that the offence of cheating at common law had been committed’. 114 On this point, see DM Kerly and FG Underhay, The Law of Merchandise Marks and the Criminal Law of False Marking, 3rd edn (London, Sweet & Maxwell, 1909) 18. 115 See below, text to nn 145–55.

R v Johnstone (2003) 337 on a bank’116 or a ‘bill of exchange’.117 This comparison was a statement about the serious nature of the criminality involved; the forgery of cheques or bills of exchange was a felony punishable by penal servitude for life.118 As an article from The Jurist explained, comparing forgery of a trade mark to forgery of a bill of exchange: if there is any distinction it is merely one of degree—both offences come under the same category—they are both forgeries; and if one offence is to be punished with less severity than the other, it is not because the criminality is less in the one case than the other but because the result of the one kind of forgery are more mischievous to society than the other.119

What did the forgery paradigm mean for the shape of the 1862 Act? First, the forgery basis was one justification for the rejection of registration.120 As Milner Gibson MP explained: The forgery of a mark was like the forgery of a check on a bank. If an intent to defraud him was proved, a man was entitled to protection, without being put to the expense of registration.121

In taking this stance, the Government measure was at odds with the proposals of many local Chambers of Commerce: a number of local Chambers of Commerce had proposed registration, in petitions presented to Parliament,122 116 Milner Gibson MP, in debating the Bill in the Committee of the House of Commons, asserted that the ‘forgery of a mark was like the forgery of a check on a bank’. Parl Deb 3rd S Vol 167 col 1419 (4 July 1862). 117 ‘There is no real distinction between using the name of another in a bill of exchange with the intention to defraud and using the trade mark of another for a similar purpose …’ The Jurist, 18.10.1862, 471. Arthur Ryland, a solicitor and prominent member of the Birmingham Chamber of Commerce, in a paper presented to the National Association of the Promotion of Social Science asserted that the unauthorised use of ‘names’ was analogous to ‘the writing of another’s name to a bill of exchange and obtaining money for it’. A Ryland, ‘The Fraudulent Imitation of Trade Marks’ in (1859) Transactions of the National Association for the Promotion of Social Science, 229. 118 JB Byles, A Treatise on the Law of Bills of Exchange, Promissory Notes, Bank-notes and Checks, 9th edn (London, H Sweet, 1866) citing Forgery Act 1861, 24 & 25 Vict, s. 22. See also Russell, A Treatise on Crimes and Misdemeanors (n 102) 940–41. 119 The Jurist, 18 October 1862, 471. 120 This was not the only explanation; another was complexity and expense. See, for example, the comments of the Lord Chancellor (Lord Campbell) on the Bill’s second reading on the same subject debated in 1861: Parl Deb 3rd S Vol 161 col 1271 (4 March 1861). 121 Parl Deb 3rd S Vol 167 col 1419 (4 July 1862). 122 See the Wolverhampton Chamber of Commerce’s petition, App 816, Appendix to the Report of the Select Committee on Public Petitions (in respect of petitions presented 30 June–2 July 1862) and VC Beaumont, Wolverhampton Chamber of Commerce 1856–1956 (1956), 48. See also the Sheffield Corporation’s petition, App 411, Appendix to the Report of the Select Committee on Public Petitions (in respect of petitions presented 7–9 April 1862). See also the ‘Report on Trade Marks’ contained in Glasgow Chamber of Commerce Minutes, 11 February 1862 (Glasgow City Archives, Glasgow, UK). See also the National Association for the Promotion of Social Science’s petition, App 83, Appendix to the Report of the Select Committee on Public Petitions (in respect of petitions presented 24–25 February 1862). See also the Birmingham and Midland District Chamber of Commerce’s petition, App 360 Appendix to

338 Elena Cooper and a Bill including registration prepared by the Sheffield Chamber was presented to Parliament.123 Secondly, the forgery paradigm resulted in the criminalisation of a broad range of unauthorised acts relating to a trade mark. As I noted above, the crime of forgery was complete on the forging of the mark; there was no necessity for the mark to be used in trade or affixed to goods. Forgery also criminalised acts of ‘uttering’ which, in the case of private financial instruments, required the parting with, tendering, offering or use in order to receive credit.124 Hence the provisions of the 1862 Act encompassed ‘whosoever shall forge or counterfeit, or shall utter …’.125 While not discussed explicitly, the comparison with forgery of private finance instruments may have had implications for the scope of protection: the offence of forgery as applied to bills or cheques merely required the forged instrument to be ‘seemingly genuine’ such that ‘it was calculated to impose on mankind in general’ and would ‘deceive persons using ordinary observation’; there was ‘no need for perfect resemblance’ and it was not necessary that ‘an individual skilled in that kind of writing would detect its fallacy.’126 Finally, the forgery paradigm meant that there was only liability where the prosecutor proved dishonesty; as the chapter on forgery in Joseph Chitty’s treatise on Bills of Exchange stated: ‘intent to defraud’ was ‘the very essence of forgery’.127 Indeed, forgery was classified as a crimen falsi: a crime that, due to the dishonesty involved, rendered an offender infamous, that is, deprived of certain ‘rights of a citizen’, such as serving on a jury.128 We return to the requirement of ‘intent to defraud’ later. the Report of the Select Committee on Public Petitions (in respect of petitions presented 21–22 March 1861) and Chronicles of the Birmingham Commercial Social and Chamber of Commerce A.D. 1783–1913 (1913) 174. See also Association of Chambers of Commerce Standing Committee Minutes (22 March 1862) and Association of Chambers of Commerce Executive Council Minutes (2 February 1860), London Metropolitan Archives, London. 123 Trade Marks Bill PP 1862 Bill 17. A petition in favour of the Sheffield Bill was presented by the Wolverhampton Chamber of Commerce: App 816, Appendix to the Report of the Select Committee on Public Petitions (in respect of petitions presented 30 June 1862– 2 July 1862). See also Wolverhampton Chamber of Commerce Minutes for 5 March 1861 (Wolverhampton Archives & Local Studies, Wolverhampton), recording a discussion between Sheffield and Wolverhampton Chambers on the subject of registration. The Sheffield Bill was also supported by the then recently formed Association of Chambers of Commerce, see Report of the Chairman to the Association of Chambers of Commerce, 19 February 1862 (London M etropolitan Archives, London). By contrast, the Huddersfield Chamber of Commerce supported the Government Bill, that became the Merchandise Marks Act 1862: see the Huddersfield Chamber of Commerce’s petition, App 211, Appendix to the Report of the Select Committee on Public Petitions (in respect of petitions presented 17–19 March 1862). 124 Byles, A Treatise on the Law of Bills of Exchange (n 118) 321. 125 Merchandise Marks Act 1862, s 1, emphasis added. 126 Byles, A Treatise on the Law of Bills of Exchange (n 118) 318–19. 127 J Chitty and JW Hume, Practical Treatise on Bills of Exchange, Checks on Bankers, Promissory Notes, Bankers’ Cash Notes and Bank Notes, 9th edn (London), reprinted in the 12th American edition (Springfield, S&C Merriam, 1854) 864. 128 Byles, A Treatise on the Law of Bills of Exchange (n 118) 317.

R v Johnstone (2003) 339 C. Criminalisation and the Civil Law of Trade Marks The criminal law, then, provided the paradigm for the nature of trade mark protection under the Merchandise Marks Act 1862, the first statute protecting trade marks generally. However, there was another contribution of criminal law frameworks to nineteenth century trade mark law: the 1862 Act’s criminal law basis also had important implications for the development of the concept of a civil law of trade marks. Existing scholarship, as we have already seen, has referred to mid-nineteenth century trade mark law as ‘dilatory and chaotic’, ‘uncertain’ and not ‘coherent’.129 Lionel Bently, in The Making of Modern Trade Mark Law, cites the evidence of the solicitor Joseph Travers Smith to the Select Committee preceding the 1862 Act’s passage about the existing law’s ‘very considerable’ problems: trade marks are not recognised as having any legal validity or effect … there is no written law and we have consequently no definition by which we can try what a trade mark is, nor consequently what particular symbol amounts to a trade mark.130

Yet, as we will now see, criminalisation involved presupposing order and coherence on existing common law protection; the process of criminalisation contributed to the creation of a civil law of trade marks as an identifiable body of law. By way of background, as Lindsay Farmer has explained, the nineteenth century saw ‘a huge expansion of the criminal law’ by the ‘legislative state’; in addition to extensive legislation codifying and consolidating existing offences, numerous new statutory offences were created, concerning a broad range of activities.131 A common justification for such legislative criminalisation, shows Farmer, was the view that ‘the function of the criminal law was that of defending rights defined elsewhere in the law’.132 As the Commissioners on Criminal Law asserted in their Fourth Report published in 1839: A crime must usually consist of some act, or combination of acts, constituting a violation of some right, or an attempt to violate some right, aggravated by the use of violence, or a fraudulent of malicious intention.133

In the debates preceding the Merchandise Marks Act’s passage, the ‘right’, the violation of which was being criminalised, was expressed to be the 129 Sherman and Bently, The Making of Modern Intellectual Property Law (n 92) 166; L Bently, The Making of Modern Trade Mark Law (n 93) 4. Report from the Select Committee on the Trade Marks Bill and Merchandise marks Bill; PP 1862 (212), Q.2619. 130 Bently, ibid. 131 Farmer, Making the Modern Criminal Law (n 100) 78. 132 ibid 82. 133 Fourth Report of Her Majesty’s Commissioners on Criminal Law, PP 1839 [168], xiii. See also, Seventh Report of Her Majesty’s Commissioners on Criminal Law, PP 1943 [448], 7 ‘All wrongs are violations of right, the subject of either preventative or remedial provisions …’.

340 Elena Cooper rotection provided by the Court of Chancery, ancillary to the common p law of deceit. As the President of the Board of Trade, Milner Gibson MP explained to the House of Commons Select Committee, the Merchandise Marks Bill did not involve: the creation of any new species of property in trade marks. The rights now protected by the Court of Chancery are the only rights which I would protect under any criminal law.134

In this sense, as Milner Gibson MP explained, the Merchandise Marks Bill was understood to be different to the legislative reform of design law135 that ‘created a new kind of property, which would not otherwise have existed’; ‘in the case of trade marks … the law already recognised a property in those marks and rendered it a civil offence to forge them’.136 Criminalisation, then, demanded that the common law of deceit be conceived as a civil law of trade marks. Indeed, Milner Gibson MP’s reference to the protection offered by the Court of Chancery is not without significance. The Court of Chancery had claimed a jurisdiction for itself that went beyond the common law basis of the action; in Millington v Fox an injunction was granted where there was no evidence of fraudulent use by the defendant137 and such an extension was uncertain as it raised difficult questions of principle about the relation between law and equity.138 These uncertainties went unmentioned in legislative debates identifying the pre-existing rights that were to be criminalised. Similar observations can be made about the nature of prosecutions under the 1862 Act; in applying the MMA, a number of courts expressly deferred to the civil courts of common law and equity on substantive trade mark law issues, treating the common law of deceit as the substantive law of trade marks. For instance, Liverpool Police Court declined to rule on whether ‘prepared corn’ for corn starch was a ‘mark’ protected by the 1862 Act, the magistrate suggesting that the complainants should first ‘get an authoritative decision’ from the Court of Chancery.139 In another prosecution under the 1862 Act, about markings applied to hops, Mansion House Police Court granted the defendant ‘a special case for the purpose of taking the opinion of the Court of Queen’s Bench on the law as applicable to the facts’,140

134

‘Parliamentary Committees: Trade Marks’, The Standard (8 April 1862) 5. This was a reference to the Design Registration Act 1839 (2 Vict), which was the first Act to protect designs to all articles of manufacture, and not just fabrics. See further, Sherman and Bently, The Making of Modern Intellectual Property Law (n 92) 64. 136 Parl Deb 3rd S Vol 165 col 446 (18 February 1862), Milner Gibson MP speaking in the context of debates about registration. 137 Millington v Fox (1838) 3 Myl & Cr 388; 40 ER 956. 138 Bently, ‘From Communication to Thing’ (n 98) text to fn 43–45. 139 Liverpool Police Court Liverpool Mercury (7 July 1964) 3. 140 Mansion House The Standard (17 July 1865) 7. 135

R v Johnstone (2003) 341 though this ‘appeal’ was subsequently withdrawn.141 Implicit in these rulings, then, was the assumption that the substantive law of trade marks was a domain defined by civil law; criminalisation, therefore, contributed to the creation of the concept of a civil law of trade marks. D. Efficient Enforcement v the Forgery Paradigm In relating the 1862 Act to pre-existing civil protection, the legislative debates also presented criminalisation as being concerned with the provision of a ‘more prompt and less expensive remedy’ for existing common law rights; the objective of criminalisation was ‘to facilitate the process’ of the more efficient enforcement of existing rights at common law,142 overcoming the ‘inefficiency of the present law, and of its great costliness and the delay which it occasioned’.143 As we will now see, this goal came into conflict with the forgery paradigm upon which the Act was based, and was ultimately the cause of the 1862 Act’s demise. As we saw above, the mental element of dishonesty—or intention to defraud—was an essential element of the crime of forgery.144 However, in the debates culminating in the 1862 Act, concerns that this would stand in the way of efficient prosecutions, resulted in proposals to place the burden of proving dishonesty on the defendant.145 In the debate on these proposals, in 1861, objections were raised as regards the position of ‘innocent parties who purchase goods in the ordinary course of business, and sell them without any fraudulent intent’;146 in particular, ‘wholesale traders who deal in goods which are manufactured by others’.147 As the petition of one society representing these interests—the Manchester Guardian Society for the Protection of Trade—stated: your petitioners represent those who deal in goods which are so variously marked that it is utterly impossible to ascertain in most cases whether any trade mark or alleged trade mark is interfered with, or even whether the mark is intended as a trade mark or not; and yet at the instance of interested or malicious persons,

141

Mansion House The Standard (28 November 1865) 3. Committees: Trade Marks’ The Standard (8 April 1862) 5, Milner Gibson MP. 143 ibid, Mr Smith of the firm Avery and Co London. 144 See text to n 127 above. 145 Merchandise Marks Bill PP 1861 Bill 79, cl 8. Cf the debate about the burden of proof under s 92(5) today (see n 69). 146 Petition of three London wholesale warehousemen, reprinted at App 582, Appendix to the Report of the Select Committee on Public Petitions (in respect of petitions presented 22–24 April 1861). 147 Petition of the Manchester Guardian Society for the Protection of Trade, App 627, Appendix to the Report of the Select Committee on Public Petitions (in respect of petitions presented 29 April–1 May 1861). 142 ‘Parliamentary

342 Elena Cooper criminal proceedings might be taken … with the proof of infringement thrown onto the accused148

The 1862 Bill was prepared expressly with the intention of meeting to this concern149 and therefore the resulting 1862 Act required the prosecutor to prove dishonesty. However, the tension between the forgery paradigm (requiring proof of dishonesty) and the objective of efficient remedies continued after the 1862 Act’s passage. Writing three years after the Act’s passage, the barrister Edward Lloyd commented that ‘it does not seem probable that this Act will come into very general use, owing to the difficulty of proving a fraudulent intention …’150 For the same reason, writing after the Act’s repeal, the treatise writer DM Kerly described the 1862 Act as ‘a dead letter from its first enactment’; ‘ it left the onus of proving the intent to defraud of the person charged upon the prosecutor, and it made no provision for the summary prosecution of these offences’.151 The 1862 Act’s demise, then, stemmed from an inherent tension in legislative objectives. However, the forgery paradigm was important; the analogy with the forgery of cheques and bills signified that trade mark offences were serious crimes involving dishonesty.152 Yet, the requirement of dishonesty at the heart of forgery153 conflicted with the objective of facilitating the efficient prosecution of the misuse of trade marks. While the context in the nineteenth century was very different, these themes reveal remarkable continuity with the underlying tensions we noted in the categorisation of intellectual property offences today.154 Bringing the analysis back to the ruling in Johnstone, the characterisation of intellectual property offences

148 ibid. The petition of three London wholesale warehousemen (cited at n 146 above) also supported registration as a means of providing notice to those dealing in goods. The Glasgow Chamber of Commerce was also sensitive to these interests, and proposed both registration and limiting protected marks just to ‘names’ so as to make it clear what could be claimed as a trade mark. See Report on Trade Marks at Glasgow Chamber of Commerce, Minutes 11 February 1862, Glasgow City Archives. 149 As William Matheson Hindmarch QC, a barrister who drafted the Merchandise Marks Bill, wrote to the Glasgow Chamber of Commerce in 1862, the intention was ‘to prepare a Bill … free from the objections taken by the wholesale dealers to the Bill of last year’. Letter dated 9 December 1861 from WM Hindmarch to Samuel Higginbotham Esq, Glasgow Chamber of Commerce papers, Glasgow City Archives. 150 ‘Reviews: The Law of Trade Marks’, Solicitors’ Journal and Reporter (18 N ovember 1865) 47, quoting E Lloyd, The Law of Trade Marks, 2nd edn (London, Yates and Alexander, 1865) 12. 151 Kerly and Underhay (n 114) 3. Cf the position under the Merchandise Marks Act 1887 (50 & 51 Vict), which repealed and replaced the 1862 Act, and placed the burden of proving ‘intent to defraud’ on the accused (see Kerly and Underhay, Law of Merchandise Marks, 5). The aim of this change, as well as others introduced by the 1887 Act, was to ensure that ‘the operation of the measure shall be as prompt and as summary as possible.’ Parl Deb 3rd S Vol 316 col 1730 (4 July 1887), Mr Mundella. 152 See text to nn 117–19. 153 See text to n 127. 154 See section III A.

R v Johnstone (2003) 343 today, as in the nineteenth century, again occupies a complex ground, straddling both analogies with ‘real crime’ involving dishonesty and regulatory objectives of facilitating efficient prosecution. V. CONCLUSION

Johnstone, as we saw at the outset, is the only House of Lords authority on the interpretation of criminal offences in a current intellectual property statute. While the case has been much considered for its contribution to case law on the functions of a trade mark and the human rights issues arising from the reversal of the burden of proof, little attention has been given to its implications for the relation of intellectual property between civil and criminal law. This chapter fills this gap. It has argued that the position of intellectual property offences within broader criminal law categories helps to explain why the House of Lords both affirmed the general principle of trying to keep criminal offences as self-contained as possible, while also referring to concepts from the civil law of trade marks. While ‘dishonesty’ is often referred to as a characteristic of conduct that is criminalised, the elements of the offence in section 92 have been framed on the basis of a regulatory rationale, justified by reference to the public interest in efficient enforcement. This latter rationale explains, among other things, why closer analogies between intellectual property crime and the current law of theft were not pursued in Johnstone. The historical experience uncovered in this chapter illustrates that the role of the criminal law in intellectual property is far from new. As we have seen, the criminal law provided an important contribution to the making of the first legislation protecting trade marks regardless of subject matter: the Merchandise Marks Act 1862. Not only was the basis of this legislation an existing criminal law paradigm (forgery), but processes of criminalisation, in demanding the identification of a pre-existing legal right, contributed to the emergence of the concept of a civil law of trade marks. The assumption of recent times that criminal offences lie at the periphery of trade mark law, is revealed to be historically contingent; criminalisation was in fact a central process in the making of modern trade mark law. How do these historical antecedents help us better to reflect on the relation between criminal and civil law in Johnstone? Johnstone, as we have seen, is on one level explained by factors that are intrinsically tied to its context in recent times, most obviously the objective of EU harmonisation of trade mark law (which required the courts to interpret section 92 so as to keep the scope of criminal offences narrower than the protection offered by civil law) and the particular language of the relevant parts of the Trade Marks Act 1994 (section 92). However, as we have seen, taken on their own, these factors do not adequately explain the precise nature of

344 Elena Cooper the relation between civil and criminal law struck by the House of Lords. Indeed, this was a point that was raised but unanswered in the existing literature; why had the House of Lords not advocated a closer relation between civil and criminal law concepts? History, in providing us with the experience of a very different time and context, can help us to transcend immediately obvious explanations, and uncover underlying tensions with deeper roots. While there are stark differences between the nineteenth century experience presented in this chapter and the case law on intellectual property offences today, both reveal trade mark offences to be caught between the paradigm of serious crime involving dishonesty (forgery in the nineteenth century and theft today) and efficient enforcement. As we have seen, Johnstone is best understood by reference to this tension. History, therefore, helps us to appreciate the longstanding complexity of criminal offences relating to the category we today refer to as intellectual property, and their ambivalence to paradigms of serious crime.

13 Lego Juris A/S v OHIM (2010) ALAIN POTTAGE

I. INTRODUCTION Thing is, we all played with Lego … There just comes a time when you don’t go into that box anymore, and then for the next 30 years Lego’s been playing with me. Messing with my mind and my way of looking at things. I’ve [been wondering] all this time, where do I end and toys begin?1

I

N THE 1980S, after the last of its patents relating to the brick had expired, the Lego company embarked on a global effort to use trade mark law to prevent its competitors from marketing bricks that were interchangeable with its own. Starting from the premise that Ole Kirk Christiansen, the founder of the Lego, had designed the bricks to have ‘eye appeal’,2 the company’s lawyers argued that the classic configuration of two parallel rows of four cylindrical studs was now distinctive of the Lego company as a source of goods. Ultimately, the company’s attempts to register the configuration of studs as a mark, or to initiate an action for passing off based on the market aura of the shape, were unsuccessful. Courts in various jurisdictions3 held that the disposition of studs on the classic brick was essentially attributable to functionality, and therefore fell within the province of patent law. This meant that it would be contrary to the basic principles of intellectual property law to allow Lego to extend its patent rights by recourse to trade mark law. As the Supreme Court of Canada put it, ‘the law of trade marks may not be used to perpetuate monopoly rights enjoyed under now-expired patents. The market for these products is now open, free and competitive’.4

1 D Coupland, cited in M Koepke ‘Douglas Coupland: A mean case of shapehead’ available at . 2 I Austen, ‘Building a legal case, block by block’ The New York Times (2 February 2005). 3 For a very useful conspectus of the Lego cases, see Rr W de Vrey, Towards a European Unfair Competition Law. A Clash of Legal Families (Leyden, Brill, 2005) 293–96 and notes. 4 Kirkbi AG v Ritvik Holdings Inc [2005] 3 SCR 302, 308 (LeBel J). See also at 342: ‘Granting such a claim in these circumstances would amount to recreating a monopoly contrary to the basic policies of the laws and legal principles which inform the various forms of intellectual property in our legal system’.

346 Alain Pottage Trade mark law has few ‘constitutional moments’—understood in the attenuated sense of occasions on which the basic principles of a regime are reinvented or rearticulated. So it is interesting that courts took Lego’s trade mark actions as an occasion to assert a basic normative principle of intellectual property law. In the course of its decision, the Supreme Court of Canada invoked ‘basic and necessary distinctions between different forms of intellectual property and their legal and economic functions’.5 It highlighted a ‘doctrine of functionality’ which went ‘to the essence of what is a trade-mark’: This doctrine recognizes that trade mark law is not intended to prevent the competitive use of utilitarian features of products, but that it fulfils a source-distinguishing function.6

This is the kind of principle that makes a ‘landmark’. And although the decision of the Court of Justice of the European Union in Lego v OHIM (2010)7 might be considered jurisprudentially dependent on the earlier decision of the Court in Philips v Remington,8 the Lego decision is less straightforward and more interesting because of the nature of the artefact. As we shall see, the distinction between functionality and signification is particularly difficult in the case of the Lego brick because functionality—the ‘clutch power’ of the bricks—is the feature that allowed Lego to evolve from a simple architectural toy into the archetype of a modularised medium. The technical mode of connectivity turns bricks into the ‘materials’ of a medium that can articulate diverse kinds of language or ‘signification’. And the ‘functionality’ of modularising connectivity turns out to have a cultural, ethical and affective significance that is capitalised in the Lego brand. Just as the functionality of the brick participates in various modes of meaning production, this same functionality acquires broader cultural meaning. In Lego Juris v OHIM the ‘doctrine of functionality’ is not rendered as expressively as it was in the Canadian decision. As is often the case with CJEU decisions in trade mark cases, the text has the toneless, non-idiomatic, quality of a translation made by computer programme: When the shape of a product merely incorporates the technical solution developed by the manufacturer of that product and patented by it, protection of that shape as a trade mark once the patent has expired would considerably and permanently reduce the opportunity for other undertakings to use that technical solution. In the system of intellectual property rights developed in the European Union, technical solutions are capable of protection only for a limited period, so that subsequently they may be freely used by all economic operators. 5

Kirkbi AG v Ritvik Holdings Inc [2005] 3 SCR 302, 327 (LeBel J). ibid, 331. 7 At the time of writing, it was still true to say that UK trade mark law had been largely absorbed into European Union trade mark law. 8 C-299/99 Koninklijke Philips Electronics NV v Remington Consumer Products Ltd [2002] ECR I-5475. 6

Lego Juris A/S v OHIM (2010) 347 However it is expressed, this ‘doctrine of functionality’ reaffirms the founding premise of modern intellectual property jurisprudence. If intellectual property rights are to be justified as private rights that serve the public interest— by enhancing the public domain or by making markets in consumer goods more efficient—then the ideological integrity of the system as a whole depends on the specification and ‘jointing’ of its constituent parts. The doctrine of functionality presupposes a specific understanding of the nature and operation of intellectual property rights, according to which intellectual property rights circumscribe intangible artefacts in such a way as to afford exclusive control over their use. As Hunter and Thomas observe, Lego’s attempts to use trade mark law to resurrect its patent-based monopoly on the brick express of this essentially mid-twentieth century view of the functions of patents and trade marks: The company saw its corporate success defined by establishing formal mechanisms of protection through the patent system over various features of the blocks and elements of the Lego system. Based on this understanding of intellectual property, success for the company came from establishing ever-stronger forms of control, concentrated at a single point at the highest executive levels of the company. The patent system was uniquely well-developed to deliver this sort of centralised, monopolistic control.9

And the ‘doctrine’ that tribunals around the world invoked (in one guise or another) to counter Lego’s monopolistic ambitions was premised on the same sense of the function of intellectual property rights. When the classic brick was invented and first marketed, it seemed perfectly suited to this model. But the brick has progressively evolved into a resource for new modes of creativity, which have in turn called forth new idioms or techniques of appropriation, better adapted to the contingencies of collaborative or participatory creativity. Indeed, in the same moment as it was seeking to retrench an old-style intellectual property monopoly, the Lego company was also positioning itself in the vanguard of a movement towards collaborative or responsive corporate engagement with consumers and other market participants. The Lego brick is an essential part of this story. Indeed, the brick is an IP ‘landmark’ in its own right. The brick is so thoroughly implicated in the history of intellectual property law that one could imagine taking it as the vehicle of an engaging and expansive course in intellectual property law. Not only has this piece of plastic been the subject of patent, copyright and trade mark cases in a number of jurisdictions, but the story of Lego (the corporation and its products) opens onto a dimension of intellectual property law that the textbook preoccupation with legislation and litigation rather

9 D Hunter and J Thomas, ‘Lego and the System of Intellectual Property, 1955–2015’ (2016) Intellectual Property Quarterly 1, 5.

348 Alain Pottage obscures; namely, the articulation of the licensing and merchandising practices that constitute the real social and economic life of intellectual property rights. There are other reasons for leading with this particular artefact. The Lego brick is not only an exemplary intellectual property object; it is also a good tool to think with. The features of the brick that engage cultural theorists10 are also useful resources for reflection on the architecture of intellectual property discourse. Taken as a conceptual device, the classic brick functions as a kind of experimental model for working with a set of distinctions that are central to intellectual property thinking: material and immaterial, functionality and signification, individual and collaborative creativity. Beginning with the brick allows one to re-engage with a basic premise of the orthodox jurisprudential theory of trade marks, which foregrounds products rather than people or corporations. This approach has real critical potential, precisely because we are not accustomed to the idea that products are the leading actors in social or economic life.11 But trade mark theory deprives products of their vitality and complexity, and simplifies the communicative processes in which they are implicated, because it assumes that products are stable entities with embedded characteristics. Information about commercial provenance (that is, the trade mark) is just superadded to the product. The product is a vehicle for signs conveying information about itself. The theory of trade marks as signs of commercial provenance took shape in the age of industrial manufacturing and marketing, which supplied the premises of the search costs theory of marks. II. QUANTITY PRODUCTION

The doctrine of functionality expresses what, following Baudrillard, one might call the ‘metallurgical’ understanding of industrial artefacts.12 The jurisprudential division between functionality and signification expresses what marketing theorists call the ‘goods-dominant’ view of markets.13 According to this view, which took root in the early twentieth century, value was ‘embedded’ in tangible products by the process of manufacture, which

10 An engagement that is exemplified in a book with the wonderful title of Lego Studies; see MJP Wolf, Lego Studies: Examining the Building Blocks of a Transmedial Phenomenon (London, Routledge 2014). 11 ‘Nobody these days seems to look first at the product of a firm when inquiring into that firm’s identity. Organization studies, management science and economic theory of the firm all hasten to reach, in the very first steps of their analysis, a level of abstraction that precludes the question of just what the firm is producing’ in D Baecker, ‘The form of the firm’ (2006) 13 Organization 1, 109–42, 128. 12 See generally J Baudrillard, The System of Objects (London, Verso, 1996). 13 See SL Vargo and RF Lusch ‘Evolving to a new dominant logic for marketing’ (2004) Journal of Marketing 68, 1–17.

Lego Juris A/S v OHIM (2010) 349 engineered form and function into scarce material resources. The kind of manufacturing process that twentieth-century marketers had in mind was the large-scale production line, in which embedded properties were also standardised properties, replicated in a potentially infinite succession of industrial goods. The function of marketing was to try to persuade consumers that they needed or wanted these standardised goods. This style of marketing might be characterised as a process of ‘retailing’, the etymology of which comes from the French word retailler, meaning to cut out, trim or cut again; or, to take the dictionary example, to cut a bale of cloth into as many pieces as there are customers. The difficulty in the early twentieth century was to ensure that there were enough consumers for the extensive production runs that were now possible. Archie Shaw, a wealthy manufacturer of office goods and the co-founder of the Harvard Bureau of Business Research, wrote an influential article in which he suggested that the task of marketing was to bring distribution up to speed with production: While we are but upon the threshold of the possibilities of efficiency in production, the progress thus far made has outstripped the existing system of distribution. If our producing possibilities are to be fully utilized, the problems of distribution must be solved. A market must be found for the goods potentially made available. This means, in the main, a more intensive cultivation of existing markets. The unformulated wants of the individual must be ascertained and the possibility of gratifying them brought to his attention.14

As Veblen observed in his discussion of the new mode of ‘salesmanship’, this meant that both goods and their customers were now mass-produced artefacts: ‘T]he fabrication of customers can now be carried on as a routine operation, quite in the spirit of the mechanical industries and with much the same degree of assurance as regards the quality, rate and volume of the output’.15 The distinction made in Lego v OHIM, between shape as an expression of functionality and shape as an agent of signification, articulates both the ‘upstream’ and the ‘downstream’ dimensions of this ‘goods-dominant’ view. On one hand, the theory of shape as an expression of the functional properties of an artefact assumes that ‘functionality’ is an embedded property of the brick. In other words, functionality is treated as a property imparted by a

14 AW Shaw, ‘Some problems in market distribution’ (1912) 26 The Quarterly Journal of Economics 4, 703–65; 709, 705–06. 15 T Veblen, ‘Manufacture and salesmanship’ in S Mestrovic (ed) Thorstein Veblen on Culture and Society (New York, Sage, 2003) 139. It should be noted grocers and other retailers, who still enjoyed the confidence of the local customer, often refused to be treated as cogs in a machine controlled by the large manufacturers and distributors (see S Strasser, Satisfaction Guaranteed: The Making of the American Mass Market (New York, Pantheon Books, 1989), especially Ch 5).

350 Alain Pottage process of mass production—or, more accurately, standardising production— which ensures that all bricks have the same competences. This assumption is interesting precisely because of its obviousness. Elsewhere I have described how a certain representation of large-scale manufacture functioned as a kind of ideological infrastructure for the emergence of the modern sense of the invention as an intangible ‘type’ embodied in a tangible ‘token’.16 Just as the printing press, by virtue of its powers of replication, made visible the difference between the spiritual work and its material exemplars, the industrial production line precipitated the ‘invention’ from the series of exemplars in which it was embodied. So the ‘technical solution’ embodied in the Lego brick can be addressed as a distinct intangible entity, fixed in the patent text, and susceptible to infringement by competitors, only because of a historical process in which the emergence of the production line allowed patent jurisprudence to see the invention as a stable form reproduced in a succession of embodiments. If anything, the notion that goods consist in embedded properties which have to be retailed to consumers becomes even more pronounced when we move ‘downstream’, into the realm of trade mark jurisprudence. According to the conventional legal and economic theory of marks as indicators of commercial provenance, a trade mark tells the consumer that the product that he or she is contemplating buying was produced by (or under the auspices of) a firm whose products they had previously found satisfactory. By the same token, legally enforceable trade marks are supposed to give corporations—‘economic operators’—an incentive to invest in and maintain the quality of their products, the better to build and enhance a market reputation and to build market share. These are the two principal factors in the supposed efficiency of legally protected trade marks. Historically, the ‘search costs’ theory of trade marks emerged with the rise of mass markets and mass distribution. The operations of marketing, branding and advertising were geared towards overcoming the separation of supplier and consumer that resulted from the concentration of production, the expansion of the railroads, the invention of durable and hygienic packaging and so on.17 The goal of marketing and advertising was to replace spatial proximity with proximity through signification. In his analysis of

16 See A Pottage and B Sherman, Figures of Invention, A History of Modern Patent Law (Oxford, Oxford University Press, 2010), especially Ch 2. 17 In her account of the early history of modern brands, Susan Strasser describes how a ‘population accustomed to homemade products and unbranded merchandise [was] converted into a national market for standardized, advertised, brand-named goods in general’ (Strasser, Satisfaction Guaranteed (n 15) 7).

Lego Juris A/S v OHIM (2010) 351 the question of distribution, Shaw called this ‘sale by description’,18 and characterised advertisers as ‘middlemen’: [W]e find in the past half century and especially in the past decade a rapid adoption by producers of agencies for direct communication of ideas about the goods to the consumer. This means that another function formerly divided among middlemen is being taken over as a function. The newspapers, periodicals, and other advertising agencies may be termed functional middlemen, as were the insurance companies, the transportation companies, and the banks.19

In crude terms, the ‘function’ of marketing and advertising, rather like the function of transportation, was to get goods from one place to another, from the producer to the consumer. To return to the presentation of the ‘goods-dominant’ view, marketing was about steering or controlling ‘physical flows’;20 tangible goods with embedded qualities had to be conveyed ‘downstream’ along linear channels leading from producer to consumer. In trade mark jurisprudence this premise reappears as a materialist or ‘physicalist’ understanding of communication. Communication is understood as the transfer or conveyance of a quantum of information from one place to another. The information conveyed from the producer to the consumer—or ascribed to the product by the trade mark—is understood in quantitative terms, as an ‘offering’ that can be accepted, rejected, misunderstood, or quite simply ignored, by the consumer, but which is not actually transformed or collaboratively created by the consumer. The information simply is what it is. This linear, instrumentalist understanding of communication resonates with marketers’ representation of consumers as largely passive targets of advertising.21 Throughout the twentieth century, practitioners and theorists of marketing understood brands as strategic means of capturing mental ‘real estate’.22 Brands, through their circulation in advertising media, were supposed to generate and sustain the ‘public image, character, or personality’ that made

18 ‘The root idea in sale by description is the communication of ideas about the goods to the prospective purchaser by spoken, written, or printed symbols. This takes the place of the sight of the goods themselves or a sample of them’ (Shaw, ‘Market distribution’ (n 14) 723). 19 Shaw, ‘Market distribution’ (n 14) 736. 20 Vargo and Lusch, ‘New dominant logic for marketing’ (n 13) 9. 21 ibid, 2: ‘Customers, like resources, became something to be captured or acted on, as English vocabulary would eventually suggest; we “segment” the market, “penetrate” the market, and “promote to” the market all in the hope of attracting customers’. 22 For the classic account, see A Ries and J Trout, Positioning: The Battle for Your Mind (New York, McGraw Hill, 2001), especially at 16: ‘Each day, thousands of advertising messages compete for the prospect’s mind. And make no mistake about it, the mind is the battleground. Between 6 inches of gray matter is where the advertising war takes place. And the battle is rough, with no holds barred and no quarter given’. For a critique of the ‘mind-share’ theory of advertising and branding, see D Holt, How Brands Become Icons (Boston, Harvard Business School Press, 2004).

352 Alain Pottage products desirable to status-conscious consumers.23 The effective advertisement is one that will be recalled by the consumer, or, better still, one that successfully elicits from the consumer the ‘pleasurable’ enthymematic effort of ‘resolving’ textual or visual ambiguities. In the marketing theory of co-creation, this ‘goods-dominant’ view of markets is contrasted with a ‘service-dominant’ view, which proposes a very different sense of how market value is generated and circulated; and, crucially, a very different sense of the ontology of market artefacts. From this perspective, services are construed as processes in which specialised knowledge and skill are applied to resources with a view to benefitting someone. This somewhat formal definition can be rendered as a more basic proposition: the composition and value of market ‘things’ are not functions of their inherent properties, or of properties embedded in them by manufacturers; rather, the qualities of things are contingent on the way in which the supplier and the customer collaborate communicatively, anticipating and responding to each other’s expectations about the service and the relationship in which it is implicated. Furthermore, this process of bilateral collaboration is itself lodged in the broader socio-technical network that functions as its infrastructure.24 Two points are worth emphasising here. First, market artefacts are characterised not by their material properties or functionalities, but by the application of resources of knowledge and skill that actualise the potential of resources and give them their social, technical, and economic performativity by socio-technical operations that ascribe the value and meaning; ‘Over the past 50 years, resources have come to be viewed not only as stuff but also as intangible and dynamic functions of human ingenuity and appraisal, and thus they are not static or fixed. Everything is neutral (or perhaps even a resistance) until humankind knows what to do with it. Essentially resources are not; they become’.25 Second, if the performativity of the resource is a reflex of the articulation of social relationships, then the role ascribed to consumer is very different. Consumers are no longer represented as a constituency ‘to be captured or acted on’, but as a group of potential collaborators that marketers should seek to engage in dialogue, and from whom they should learn: The service-centred view of marketing is customer-centric. This means more than simply being consumer oriented; it means collaborating with and learning from 23 BB Gardner and SJ Levy, ‘The product and the brand’ (1955) 33 Harvard Business Review 2, 33–39, 38. 24 ‘Service is not created just by the supplier and the customer. It is created in a network of activities involving a host of stakeholders. For example, there are contributions from intermediaries, employees, the media, neighbours, and society in general through such infrastructural networks as roads, electricity grids and broadband connections’ (E Gummesson, ‘Extending the service-dominant logic: from customer centricity to balanced centricity’ (2008) 36 Journal of the Academy of Marketing Science 15–17, 16). 25 Vargo and Lusch, ‘New dominant logic for marketing’ (n 13) 2.

Lego Juris A/S v OHIM (2010) 353 customers and being adaptive to their individual and dynamic needs. [V]alue is defined by and co-created with the consumer rather than embedded in output.26

In the case of brands, marketers characterise the eclipse of the goods-dominant view as a shift ‘from the conceptualization of brand as a firm-provided property of goods to brand as a collaborative value co-creation activity of firms and all of their stakeholders’.27 Or, in a somewhat different formulation, ‘brand meaning [is] socially negotiated, rather than delivered unaltered and in toto from context to context, consumer to consumer’.28 The theme of co-creation has been taken up to some effect in trade mark scholarship.29 Here the point of this archaeology of market artefacts is just to contextualise the story of the Lego brick, to show how the brick articulates both the ‘metallurgical’ sense of artefacts and the emerging sense of artefacts as collaboratively constituted, and how the uses of the Lego brick make visible the role of communication in structuring this mode of collaboration or ‘participation’. III. ‘IF YOU CAN’T TELL THE DIFFERENCE, WHY PAY MORE?’30

The upper surface of the Lego brick, as fixed in a photographic image, was registered as a Community trade mark in October 1999, some three years after the application was first filed at the OHIM.31 Two days later, Mega Brands, Lego’s leading competitor in the toy brick market, contested the registration, arguing that it was invalid because the features represented in the image constituted ‘a shape necessary to achieve a technical result within the meaning of Article 7(1)(e)(ii) of the [Community Trade Mark

26

ibid, 6. Merz, z He and SL Vargo, ‘The evolving brand logic: a service-dominant logic perspective’ (2009) 37 Journal of the Academy of Marketing Science 328–44, 328–29. 28 AM Muniz, Jr and TC O’Guinn ‘The Brand Community’ (2001) 27 Journal of Consumer Research 4 412–32, 414. 29 See, for example, D Gangjee, ‘Property in brands: the commodification of conversation’ in H Howe and J Griffiths (eds) Property Concepts in Intellectual Property Law (Cambridge, Cambridge University Press, 2013) 29–59, and L McDonagh, ‘From brand performance to consumer performativity: assessing European trade mark law after the rise of anthropological marketing’ (2015) 42 Journal of Law and Society 4, 611–36. 30 See ad at: www.battlegrip.com/tag/tyco/. In fact, Tyco considered the Lego brick to be too difficult to use for younger children, so it loosened the clutch power of its (still interchangeable) bricks (see Tyco Industries v Lego Systems Inc 5 USPQ 2D (BNA) 1023 (1987), 1033–34. 31 At first, the OHIM refused to register the shape of the rick as a trade mark, but after further submissions from Lego the examiner accepted that the brick had acquired distinctiveness and that it was not functional in the sense of Article 7. Lego later claimed that ‘The decision of the Office to accept it for registration was the most thoroughly researched and carefully considered decision the Examination Division had taken to date’ (R856/2004-G Lego Juris v Mega Brands, Decision of the Grand Board of appeal of OHIM of 10 July 2006, s 9). 27 MA

354 Alain Pottage Regulation]’.32 The Cancellation Division of the OHIM stayed proceedings until after the European Court of Justice had delivered its judgment in Philips v Remington (2002),33 which purportedly clarified the meaning of the phrase ‘a shape necessary to achieve a technical result’. In Philips the ECJ held that ‘a sign consisting exclusively of the shape of a product is unregistrable by virtue thereof if it is established that the essential functional features of that shape are attributable only to the technical result’,34 and observed that there was nothing in the wording of Article 7(1) to suggest that the existence of other shapes for achieving the same result could ‘overcome the ground for refusal or invalidity’.35 In its decision in the Lego case, the Cancellation Division took this to mean that the term ‘necessary’ should be interpreted as meaning that ‘the respective shape or element of the shape is necessary in the sense of a conditio sine qua non for achieving the [technical] result’, and, if that were the case, it would be irrelevant that there were other shapes that would allow the same technical result to be achieved.36 Applied to the Lego brick, this meant that the upper surface was not eligible for registration as a trade mark: [A]ll the various elements of the shape of which the Lego brick consists, namely the knobs, their number, their diameter, their height, their symmetrical placement in the upper side of the brick, the height, width and length of the brick itself, are all essential for the result achieved, and are all necessary to achieve it’.37

Lego engaged in a succession of appeals in which it pressed for an alternative interpretation of Philips, according to which a given function or ‘technical result’ might appear in quite different shapes; even if a function lapsed into the public domain, its specific shape might still be protected by a trade mark. To appreciate why Lego argued so persistently for this interpretation we should return to the Canadian decision. In a brief submitted to the Supreme Court, Mega Bloks, an alter ego of Mega Brands, presented its commercial strategy in the following terms: Mega Bloks gained market prominence in Canada and elsewhere after introducing its oversized MAXI blocks for pre-school children in the 1980s. No-one else was manufacturing large-sized blocks for very young children … Mega Bloks wanted

32 R856/2004-G Lego Juris v Mega Brands, Decision of the Grand Board of appeal of OHIM of 10 July 2006, para 8. 33 C-299/99 Koninklijke Philips Electronics NV v Remington Consumer Products Ltd [2002] ECR I-5475. 34 ibid, 84. 35 ibid, 81. 36 R856/2004-G Lego Juris v Mega Brands, Decision of the Grand Board of appeal of OHIM of 10 July 2006, 10. 37 ibid, 10.

Lego Juris A/S v OHIM (2010) 355 to grow with the Canadian children who had started by playing with MAXI blocks. As children get bigger, the blocks they play get smaller. However, Mega Bloks waited until 1989, a year after LEGO’s patents had expired, before extending its product line beyond the MAXI blocks … The MICRO MEGA BLOKS toy bricks, by utilizing the coupling studs, embody the inventions of the expired Page and Lego patents.38

Throughout its brief, Mega Bloks identifies itself as an original ‘mom and pop’ company, and plays on the theme of a firm ‘growing with Canadian children’, clearly to some effect. In his judgment, Justice Le Bel looked forward to the benefits that unrestrained competition would bring to Canadian children: ‘The fact is that the monopoly on the bricks is over, and MEGA BLOKS and LEGO bricks may be interchangeable in the bins of the playrooms of the nation—dragons, castles and knights may be designed with them, without any distinction’.39 Interchangeability is indeed the key to understanding what was at stake in Lego’s action against the OHIM. The commercial success of the Lego brick is based on the ‘exponential’ nature of the product. With the addition of each new purchase, the possibilities afforded by a child’s collection of bricks are expanded at relatively minimal cost. Furthermore, this marginal cost effect is precisely what induces competitors to make bricks that are interchangeable with Lego’s product. By marketing interchangeable blocks, competitors literally and metaphorically hitch themselves onto Lego and the technical and cultural ‘standard’ established by the brick. Mega Bloks was not the first competitor to have sought to exploit the market effects of interchangeability. In 1984 a Hong Kong subsidiary of the US firm Tyco (then known for its range of Matchbox toy cars) began manufacturing blocks to specifications reverse-engineered from the three-dimensional form of the Lego brick.40 Tyco was quite open about its strategy; it told Lego what it was doing, it showed its reverse-engineered bricks in trade fairs, and its marketing strategy was quite unequivocal. In trade journals and women’s magazines in the United States, Tyco advertised its bricks with a byline that played on the notion that they were indistinguishable from Lego bricks: ‘Which part is Tyco? Which part is Lego? If you can't tell the difference,

38 Supreme Court of Canada, Court File No 29956, Respondent’s Factum, Kirkbi AG v Ritvik Holdings, 14 and 17. 39 Kirkbi AG v Ritvik Holdings Inc (n 5) 339, per LeBel J. 40 One of the cases to arise from this, Interlego AG v Tyco Industries Inc [1989] AC 217, [1988] 3 All ER 949, is analysed as a landmark IP decision by Aldo Nicotra in ‘Hitting the bricks’, in C Heath and A Kamperman Sanders (eds), Landmark Intellectual Property Cases and Their Legacy (Berlin, Kluwer Law International, 2010) 135–80. The practical effect of these decisions was somewhat limited because in 1986 Tyco was acquired by Mattel, which discontinued the Tyco line of bricks; then, in a strange twist, it acquired Mega Brands in order to hold a position in the market for bricks.

356 Alain Pottage why pay more?’41 It even emphasised the difference between its ethos and that of Lego, with advertisements that showed toy weapons made of bricks. What courts and most external observers saw as an aggressive attempt to extend a monopoly, Lego presented as an attempt to prevent competitors from exploiting interchangeability so as to free-ride on the economic and cultural capital that the brick had accrued over decades. Given the force of the intuition expressed in the doctrine of functionality, Lego was almost bound to fail in its trade mark cases against Tyco and Mega Bloks. But it is interesting to notice that in applying the doctrine of functionality the CJEU had to finesse the doctrinal definition of the invention in patent law. Lego argued for an interpretation of the Philips decision that would have allowed competitors to make bricks that employed its stud and recess mechanism but not to clothe that mechanism in a shape that was interchangeable with its own bricks. It argued that the shape of the classic brick was an aspect of just one of the possible embodiments of the invention protected by its expired patents, and that even if that shape were monopolised by a trade mark, competitors would still have meaningful access to the invention. But the doctrine of functionality cut this argument short by emphasising that the holder of a trade mark effectively controls a class of shapes that contains not only the shape as registered but all shapes that might be confusingly similar to the registered shape. Lego proposed its own interpretation of the doctrine of functionality. In its appeal from the Grand Board of Appeal of the OHIM to the Court of First Instance of the CJEU, Lego suggested that ‘the decisive question is whether trade mark protection would create a monopoly on technical solutions or the functional characteristics of the shape in question, or whether sufficient freedom remains for competitors to apply the same technical solution and use the same characteristics’.42 If the object of Article 7(i)(e)(ii) was indeed to prevent a trade mark holder from monopolising a ‘technical 41 See ad at: www.battlegrip.com/tag/tyco/. In fact, Tyco considered the Lego brick to be too difficult to use for younger children, so it loosened the clutch power of its (still interchangeable) bricks (see Tyco Industries v Lego Systems Inc 5 USPQ 2D (BNA) 1023 (1987), 1033–34. For true Lego aficionados, none of the rival products comes close to the real thing. For example: ‘Megabloks will be hard to “bring up to Lego quality”. The problem with Megabloks isn't the design. It’s the plastic. They use Polystyrene instead of ABS. It's a common Injection Molded plastic. Most plastic models are made from it. But it is nowhere near as durable or precise as ABS. It’s great for plastic models. Styrene can be chemically melted so it glues well. Plus styrene tooling is designed for lower temperature lower pressure injection. (So it doesn’t cost as much as ABS to make new molds). The downside is styrene is more brittle, is more prone to environmental factors like temperature, and is prone to warp. Plus it is softer plastic and does not hold its edge or clutch power over time. It’s a bad choice for a construction toy. But here’s the thing. The capital in Megabloks (or Lego) the value is ultimately in the tooling. It’s the molds and machinery. In order for Mattel to brink Megabloks up to Lego quality they would need to retool everything. Pretty much toss the bulk of what they just bought and start with all new tooling and machinery’. Forum post at: www.eurobricks.com/forum/index.php?showtopic=93 033&st=25&p=1839083&#entry1839083. 42 T-720/06 Lego Juris A/S v OHIM, 12 November 2008, 30.

Lego Juris A/S v OHIM (2010) 357 solution’, then it was clear that the functionality embodied in the shape and configuration of the Lego brick could quite easily be embodied in alternative shapes or configurations. Competitors were entirely free to reproduce the once-patented ‘clutch power’ of the Lego brick in bricks with different dimensions or detailing; in bricks that would not be interchangeable with the Lego product. Invoking the theory of infringement in patent law, it observed that an invention remains the same invention even when it is materialised in very different embodiments. So to grant trade mark protection to the specific shape of the classic brick would not be to re-enclose what had fallen into the public domain; competitors would still be free to use a number of alternative shapes, each of which would embody the invention claimed in Lego’s expired patents.43 Lego went on to argue that its bricks were not exclusively functional in the sense of Philips because they comprised features that expressed aesthetic choices. So, for example, in its arguments before the Grand Board of Appeal, Lego argued that the features of the upper surface—‘the cylindrical shape of the knobs, their flat tops and their specific configuration on the Lego brick’—were not entirely ‘driven by function’.44 It suggested that as a matter of law these facts were relevant because a shape qualified as ‘exclusively’ functional in the sense of Philips only if a change in the shape would change its functionality. Lego also tried to argue that one should begin on the ground of trade mark law rather than patent law: in determining what were the essential elements of a shape, one should begin with the perception of the average consumer of the goods, not with the analysis that might be deployed by an expert in the relevant technology. Only once that shape had been anatomised from the perspective of the consumer should one go on to determine whether each of its essential elements embodied a technical solution.45 These arguments were rejected by each of the tribunals that heard Lego’s case. There were no homely evocations of life in the playrooms of Europe, 43 See ibid at 33: ‘[T]he expression “technical solution” is synonymous with the expression “patented invention”, which determines the scope of the patent protection and makes it possible to obtain a “technical result”. That same result could also be achieved legally by means of other patented inventions, whereas alternative shapes applying the same “technical solution” would infringe that patent. Those alternative shapes would, however, not infringe a trade mark protecting specific designs of the same “technical solution”, provided that the differences between the designs allow consumers to distinguish between the products. Thus, trade mark protection does not lead to a permanent technical monopoly but allows competitors of the trade mark proprietor to apply the same “technical solution”’. 44 R856/2004-G Lego Juris v Mega Brands, Decision of the Grand Board of appeal of OHIM of 10 July 2006, 21. 45 According to the Court of First Instance, ‘the essential characteristics of a shape must be determined from the point of view of the relevant consumer and not by experts according to a purely technical analysis, because it is logically necessary to identify the essential characteristics of a shape before examining whether they perform a technical function’ (Case T-270/06 (n 42) 52).

358 Alain Pottage but the approach closely paralleled that taken by the Supreme Court of Canada. The jurisprudential analysis was essentially a rationalisation of the intuition that Lego should not be allowed to revive its monopoly on the 1958 brick. The Court of Justice observed that the statutory bar on functional shapes had to be interpreted in the light of the public interest in ‘[preventing] trade mark law [from] granting an undertaking a monopoly on technical solutions or functional characteristics of a product’.46 It is difficult to imagine a scenario in which anyone would go straight to the trade mark registry to protect a patentable invention, so what the court really had in mind was a renewed monopoly on ‘technical solutions’. Thus, contrary to the approach advocated by Lego, each of the tribunals began on the ground of patent law. Put simply, if a shape had in a previous life been ‘captured’ in a patent text as an aspect of the embodiment of an invention, one could not then recharacterise that shape as a trade mark. In its decision, the CJEU reasserted the view originally taken by the Cancellation Division: the proviso in Article 7 was satisfied if the shape of the product was ‘technically causal of, and sufficient to obtain, the intended technical result’.47 In other words, as long as the shape affected a technical function, it did not matter whether that function could have been affected by means of other shapes. As a result, none of the tribunals were concerned enough to engage Lego’s argument that the shape should be anatomised first from the point of view of the consumer rather than that of the technical expert. The Court of First Instance merely asserted that consumers might lack the technical knowledge to evaluate the shape from a functional perspective, ‘and therefore certain characteristics may be essential from his point of view even though they are not essential in the context of an analysis of functionality, and vice versa’.48 Furthermore, having construed the shape from the perspective of the 1958 patent, none of the tribunals could find an essential element that was not functional. On the basis of extensive expert evidence, the Grand Chamber observed that the shape was thoroughly functional: ‘The “eye appeal” that [Lego] speaks of merely stems from the aesthetics of sound structural and functional form’.49 Although the CJEU acknowledged that the shape of the brick had, as a matter of fact, become

46

Lego Juris v OHIM, 14 September 2010, Case C-48/09, at para 43. Case C-48/09 (ibid) 50. 48 Case T-270/06 (n 42) 70. 49 ibid, 63. At para 53, the tribunal details the elements that constituted the shape of the brick and that underpinned its functionality: ‘the bosses [studs]: height and diameter for clutch power, number for fixing versatility, layout for fixing arrangement; the secondary projections: clutch power, the number for best clutch power in all positions, the thickness of the wall to act as a spring; sides connected with sides of other bricks to produce a wall; hollow skirt: to mesh with the bosses and to enable fixing for clutch power; overall shape: brick shape for building, size for children to hold’. 47

Lego Juris A/S v OHIM (2010) 359 capable of fulfilling the essential function of a trade mark,50 as a matter of law the shape was simply not eligible for registration as a trade mark. Lego was right to state that in patent law the relation between invention and embodiment (and hence shape) is contingent, and that what is patented is the invention rather than the embodiment. If one were to respect the inherent logics of patent law and trade mark law, one might indeed be able to differentiate the functional and signifying aspects of shape in the way that Lego proposed. Yet the doctrine of functionality, translated into the rule that a shape will qualify as functional as long as there is a ‘sufficient’ causal connection between function and shape, cuts through the patent lawyer’s understanding of invention and embodiment and defines shape pragmatically, in such a way as to prevent an apparent duplication of intellectual property protection. Hence the Court of First Instance’s suggestion that the proscription in Article 7 did not relate ‘solely to the technical solution incorporated in [a] shape but to the shape and its essential characteristics themselves’, and that ‘the shape as such must be capable of being freely used’.51 Again, the point is that, once imbued with functionality, a shape is disqualified from becoming a trade mark; so the shape ‘as such’ is in the public domain.52 This understanding of shape has emerged as a regulative principle that ‘adjusts’ or moderates the internal logics of patent and trade mark law specifically so as not to allow firms to arbitrage the differences between those logics.53 This highlights the basic premise of the doctrine of functionality: that the purpose of the modern regime of intellectual property rights is actually to regulate the production and circulation of material goods. The effect of dematerialising material artefacts, of abstracting a work or invention from an embodiment or protecting marks of commercial provenance is to create a form of property that grants control over the manufacture and marketing of industrial artefacts. The decision in Lego v OHIM presupposes and indeed reaffirms this understanding of the

50 Case C-48/09 9 (n 46) 40: ‘In the present case, it has not been disputed that the shape of the Lego brick has become distinctive in consequence of the use which has been made of it and is therefore a sign capable of distinguishing the appellant’s goods from others which have another origin’. 51 Case 270/06 (n 42) 42. 52 The Grand Chamber observed that in any case the question of what might remain open to competitors was not straightforward: ‘registration as a trade mark of a purely functional product shape is likely to allow the proprietor of that trade mark to prevent other undertakings not only from using the same shape, but also from using similar shapes’ (Case). Commenting on the ultimate decision of the CJEU, the head of intellectual property at Lego suggested that the result would simply exacerbate consumer confusion: ‘Analyses show that 40%–60% of shoppers believe they are buying a Lego product when in fact they are purchasing a different product. Shoppers can see there is a different name on the box but they believe it is a product line or a company owned by us’ (cited in S Farrell, ‘Lego loses out to bitter rival Mega Brands in EU brick trade mark battle’ Daily Telegraph (15 September 2010)). 53 Note that Justice Le Bel in the Canadian case cited only one example for the applications of the doctrine of functionality: ‘to prevent the extension of a patent’.

360 Alain Pottage role of intellectual property rights, precisely because of the way in which it determines the interface between patent law and trade mark law in order to withdraw a monopoly from a material artefact. IV. ‘IT’S NOT REALLY A TOY, IT’S A MEDIUM’54

The first Lego brick was closely modeled on the ‘Self-Locking Brick’ patented by Hilary Page in the late 1930s. At a time when wood was still the obvious medium for children’s toys, Page was one of the first toymakers to promote the virtues of plastic as a more durable and hygienic material: ‘Dust and germs cannot cling to the bright shiny surface, and the range of bright colors is most attractive and interesting to the child’.55 Some of Page’s first creations were just plastic versions of familiar toys—note in particular Kiddicraft’s sets of Building Beakers (1938)56 and Pyramid Rings (1939)57— but the ‘Self-Locking Brick’ was more thoroughly novel. One can of course identify precursors of the plastic brick. In the 1830s Friedrich Fröbel, the founder of the kindergarten movement, recruited local artisans to make sets of stackable wooden blocks that were included in his repertoire of pedagogical ‘gifts’.58 From the late nineteenth century until the early part of the twentieth century, the market for toy building blocks was dominated by Richter’s stone Anker Blocks, which were made of a compound of quartz, chalk, linseed oil and dye. These stone blocks were not designed to facilitate open-ended construction, but were made and sold in sets, each of which allowed children to reconstruct a particular architectural form.59 In Britain, the period between the First and Second World Wars saw the emergence of Wenebrik, Kliptiko, Bayko, and Dinky Builder building sets, composed of metal or tinplate components that could be linked or hooked together to make architectural forms. Page’s Self-Locking Bricks were different because the use of moulded plastic allowed bricks to be put together much more easily and so allowed more open-ended play. Page’s UK patent of 1940 described a number of variations on a hollow cuboid block with two rows of studs on the upper

54 Observation made by one of the co-founders of LUGNET, the online Lego users forum, cited in S Carney ‘Lego enthusiasts are building connections online, brick by brick’, LA Times (18 January 2001) . 55 J Hughes and C Saunter (2008) ‘Hilary Fisher Page and Kiddicraft’, available at www. hilarypagetoys.com. 56 . 57 . 58 Note the supposed influence of these blocks on Frank Lloyd Wright (see N Brosterman, Inventing Kindergarten (New York, Abrams, 2002). 59 For a full account, see GF Hardy, Richter’s Anker (Anchor) Stone Building Sets (2014), available at .

Lego Juris A/S v OHIM (2010) 361 surface. One side of each block was etched with a groove designed to hold standard architectural elements such as windows or doors.60 Production of the blocks was interrupted by the war and when plastic became available again for civilian manufacturing, the bricks were made and marketed as an element of Kiddicraft’s range of ‘Sensible Toys’. It is not clear to what extent Page appreciated the real potential of the plastic brick, and, arguably, it was only fully realised when the invention was taken up and perfected by Lego. In the 1930s Lego was known as a maker of conventional wooden toys including the popular Lego Duck. There are differing accounts of how the company came to copy Page’s patented bricks. One plausible story is that Ole Kirk Christiansen shared Page’s interest in plastic, and that when he ordered an injection moulding machine from the UK, the supplier sent some samples of the Kiddicraft block together with drawings which have since been lost.61 In any case, the first Lego bricks had the same form and proportions, the shape and the same arrangement of studs, and were inscribed with the same slot to accommodate architectural elements such as windows or door frames. Lego called this type its Automatic Binding Brick. It is not quite true to say that these were ‘a stud-for-plastic-stud copy’62 of Page’s blocks. According to evidence given by the engineer who made the original moulds, the Lego version was designed with sharper edges and corners, and the studs on the upper surface were flattened somewhat, so as to ‘make the end result look more like a Danish brick’; or, quite simply, ‘a good-looking brick’.63 In any case, the Automatic Binding Brick was not a commercial success and, in response to complaints from its customers in Germany,64 Lego set about designing a new version of the brick. In 1958 it produced the design that fully realised the potential of the brick as a medium of play.65

60

UK patent 633055, Improvements in Toy Building Blocks, 25 June 1949. See J Hughes and C Saunter, ‘History’ at . See also J Phillips, ‘An empire built of bricks: a brief appraisal of Lego’ (1987) 12 EIPR 363. 62 D Hunter and G Lastowka ‘BarbieTM’ (2016) 18 Tulane Journal of Technology and Intellectual Property 133–60. 63 See Interlego v Tyco [1989] 1 AC 217, 248, and the observations reported in Hughes and Saunter, ‘History’ (n 61): ‘[W]ith the cooperation of a tooling works in Copenhagen, we modified the design of the brick, and moulds were made. The modifications in relation to the Kiddicraft bricks included straightening round corners and converting inches to cm and mm, which altered the size of the brick by approx. 0.1 mm in relation to the Kiddicraft brick. The studs on the bricks were also flattened on top’. 64 See H Gardner, ‘LEGO: The toy of the twentieth century—the case of the simple building blocks’ in P Harris and F MacDonald (eds), European Business and Marketing (London, Sage, 2004) 216–28, 222. 65 Much depended on the success of the redesigned plastic brick; in 1960, the warehouse housing wooden toys burned down, and Gotfred Kirk Kristiansen around the brick. In the words of his son: ‘Gotfred Kirk Kristiansen bet the whole farm on one-third of his business, plastic toys, and not just any toy—the brick. [He] felt he had stumbled onto something unique with this brick. You can build anything out it. It doesn’t fall apart when you throw it around. And you can add to this system forever’ (cited in JW Rivkin, SH Thomke and D Beyersdorfer, ‘Lego’ Harvard Business School Case 613-004, July 2012, 3. 61

362 Alain Pottage The claims of LEGO’s European and North American patents relating to the 1958 brick highlighted the enhanced ‘clutch power’ afforded by the new design. The specification of the UK patent, which was modelled on the Danish patent, described ‘an improved coupling means for holding building blocks together in any desired relative position, thus providing for a large variety of combinations of the blocks for making toy structures of many different kinds and shapes’.66 The crucial innovation here consisted in the arrangement of complementary studs and cylindrical recesses; adolescent males of all ages will have an almost haptic sense of the way in which the studs on the upper surface of a brick snap into the spaces around the set of cylindrical recesses that ran down the underside of the bricks. The ‘friction fit’67 of this new iteration of the brick was very much superior to that of the original Kiddicraft block or its derivative, Lego’s Automatic Binding Brick.68 The superior ‘clutch power’ of the new bricks was not just an effect of shape or configuration, but it depended on the materials used. The full potential of the patented stud and tube mechanism was not fully achieved until 1963, when Lego began to manufacture its bricks with ABS plastic rather than cellulose acetate. Given close control over the injection moulding process, the new material allowed Lego to machine the bricks to much finer tolerances.69 On the basis of this abridged history it might be said that the Lego brick is actually a perfect illustration of the logic of manufacture and marketing that informs modern intellectual property jurisprudence. The use of ABS plastic allowed bricks to be moulded to the exacting tolerances for which Lego is still renowned and it made them more durable and more colourfast (a not insignificant consideration given the longevity of many Lego collections). The functionality that is described in the various phases of Lego’s action against the OHIM works precisely and reliably because the basic architecture of studs and recesses is engineered into the bricks by processes of industrial production that are accurate and consistent. And these (embedded) properties support the image of ‘quality’ retailed by Lego’s marketers and advertisers. At the same time, however, these properties have allowed the Lego brick to become something more than or other than a manufactured product that is simply retailed to the consumer. In her account of Lego as a medium for ‘facilitated play’, Maaike Lauwaert suggests that the properties of the 1958

66

UK Patent 866,557, Improvements relating to Toy Building Sets, 26 April 1961, 1. specification, at 2. All the relevant patents are collected at brickfetish.com/patents/ patent.html. 68 ibid; see drawings at p 50 of the patent specification: brickfetish.com/patents/uk/gb_ 866557_5.html. 69 Gardner, ‘LEGO: The toy of the twentieth century’ (n 64) 217. 67 ibid;

Lego Juris A/S v OHIM (2010) 363 brick allowed it to transcend the vocation of the original Kiddicraft/Lego brick: The design characteristics of the new stud-and-tube interlocking mechanism facilitated a move away from Lego as an architectural toy. Their stability and clutch power facilitated more stable and more complex constructions and broadened both design and building options. This increase in possible and facilitated LEGO play practices was furthered by the LEGO System i Leg or LEGO System of Play introduced in 1955. The play system originally consisted of 28 sets and 8 vehicles plus some supplementary elements. The idea behind the system of play was that not only the individual bricks were interchangeable but the sets as well.70

Ultimately the brick facilitates more than just ‘play’. The Lego brick is such a common metaphor for linguistic connectivity,71 or for (say) molecular binding in polymer sciences or genomics, because those who use it ignore the details of the patented coupling mechanism. But the metaphor quite nicely ‘reacts back’ on the material brick, highlighting the sense in which it has become a language or medium: that is, a set of materials from which different users can invent and fabricate, make art,72 engage in self-description and generally participate in cultural commentary. Lego bricks do indeed have properties engineered into them, but they are engineered as infrastructure for modes of creation and communication that transcend their infrastructure. Lauwaert notes that there is more to the brick than its innate competences. In this way it is just one element of a composite or network that frames or ‘facilitates’ play: ‘The structure of a toy, its technological specifications, its materiality, the rules and manuals, examples and guidelines, its ‘reputation’ and connotations create a network of facilitated play. Both the material and immaterial aspects of a toy or computer game create a window of opportunities within whose boundaries the player can act’.73 What the player sees, touches, plays with and experiences is not just a plastic object and a set of embedded functionalities, nor even a plastic object with a superadded sign that conveys some reassuring or satisfying information about its provenance. Rather, the product is the composite of materials, materialised

70 M Lauwaert, The Place of Play: Toys and Digital Cultures (Amsterdam, Amsterdam University Press 2014) at 56–57. 71 In a legal context, one might think of Otto-Khan Freund’s characterisation of law in terms of a child’s set of bricks that can be composed and recomposed by the parties to a legal action, this being a metaphorical expression of Kelsen’s sense of law’s instrumentality (see ‘Introduction’ to K Renner, The Institutions of Private Law and Their Social Functions (London, Routledge & Kegan Paul, 1949). 72 Note Lego’s embarrassment over its handling of Ai Wei Wei’s request for bricks as materials for an artwork. See M Tan, ‘Lego: refusing to sell bricks to Chinese artist Ai Weiwei was a mistake’ The Guardian (28 April 2016), at . 73 M Lauwaert, The Place of Play (n 70) 12–13.

364 Alain Pottage competences, cultural idioms and brand charisma that make up the network of play practices. In practice, there is no such thing as functionality divided from signification; what the brick does, or what one can do with it, is an effect of how users, individually or collaboratively, recombine the elements that make up the medium of the ‘game’. Over the past three decades or so, it has become even more difficult to identify the ‘brick’ with the plastic artefact. Consider the example of Lego’s highly successful Mindstorms ‘game’. The components of the Mindstorms range are designed to allow users to invent and build robotic devices. The core element of each set is a ‘programmable brick’, essentially a central processing unit, which can be programmed by means of dedicated software to execute commands or respond to specified stimuli. The ‘body’ of the robot, and the motors and sensors which enable it to act in the world, are built around the programmable brick in the traditional Lego way, by fitting studs and recesses together. The software used by the brick is an evolution of the LEGO/Logo language that Lego developed in 1967 in partnership with the MIT Media Lab.74 The basic ambition of LEGO/Logo language was that software should have the same user-friendly modular feel as the classic Lego brick,75 and the same analogy is applied to Mindstorms: These graphical programming languages use the same fundamental principles of modularity which are already familiar to the builder of LEGO sets. The Mindstorms user builds software programs for her robot just as she has built her physical robot: brick by brick.76

On one hand, the material connectivity of the plastic brick inspires the use of the syntax of the programming language and the aesthetics of its user interface, in such a way as to make largely invisible the socio-technical complexity of software. In return, this image of an open-ended programming language with pixelated elements turns the brick into an icon of ‘modularity’, a rhetorical figure that has enjoyed particular success in IP discourse in recent times. By 2010, when the CJEU decided Lego v OHIM, the brick had already turned into something much more complex than a classic industrial artefact.

74 Logo was based on the Lego-like principles of ‘interactivity, modularity, extensibility, flexibility of data types’, and it was accessible through an interface that demanded less sophistication of the user. See generally The Logo Foundation, ‘The Logo programing language’, available at . 75 ‘Just as students can build increasingly complex machines by snapping together LEGO bricks, they can build increasingly complex computer programs by “snapping together” Logo commands’ (M Resnick and S Ocko, ‘LEGO/Logo: Learning Through and About Design’, available at: ). 76 C Hanson, ‘Brick by brick: Mindstorms and gaming’, in MJP Wolf (ed), Lego Studies. Examining the Building Blocks of a Transmedial Phenomenon (London, Taylor & Francis, 2014) 153–65, 159.

Lego Juris A/S v OHIM (2010) 365 In one sense, of course, the Court’s analysis hit the mark. Lego’s attempt to stem the incoming tide of interchangeable bricks was an attempt to defend its monopoly on the brick as an industrial manufacture. The company’s copyright and trade mark actions were initiated in defence of a portfolio of ‘old IP’, and they were met with an equally ‘old’ jurisprudential analysis. Because both sides argued the case on the premise that the brick was just an industrial manufacture, it served as an occasion for the Court to affirm a doctrine that entrenches trade mark law in an anachronistic vision of market artefacts. Perhaps there is some acknowledgment of the medial character of the brick in Justice Le Bel’s celebration of an era in which a diversity of bricks would mingle in the playrooms of Canadian children. Interchangeability is construed almost as though it were akin to a vital technical standard. Meanwhile, the permutations on the division between shape as an index to function and shape as a means of signification, as two aspects of a finished artefact, return us to the goods-dominant view of artefacts. The medial character of the brick is more evident in the strategy of product differentiation that Lego had begun to adopt even before the expiry of its patents. From the 1950s onwards, Lego bricks were often sold in thematically framed sets or in scale model sets (notably of cars, aeroplanes, and other vehicles) marketed as collectible pieces. When competitors started making interchangeable bricks this strategy of uploading cultural or thematic content into the medium of the brick became especially pertinent. When Mattel, the owner of rights to Barbie, acquired Mega Brands in 2014, its position in the market in construction toys countered the incursion that Lego had made into the ‘Barbie market’ with its Lego Friends line of products.77 Although both Lego and Mega Bloks emphasise the educational value of bricks, the contest for market dominance is increasingly played out as a contest between thematic brick sets, with Lego’s Star Wars and Ninjago themes on one side, and Mega Brands’ Despicable Me, American Girl and Thomas the Tank Engine sets on the other. In this way, the medium of the brick has become a medium for the articulation of contents that are derived from licensing arrangements with media entertainment companies. The development of these transmedial connections draws on the ability of television and film, ‘to characterize and narrativise fictional figures’,78 and it brings with it the evolution of new ways of structuring and protecting intellectual property portfolios.

77 See B Solomon ‘Jealous Barbie: Mattel comes after Lego with Mega Bloks purchase’ Forbes.com, 28 February 2014, available at . 78 S Hjarvard, The Mediatization of Culture and Society (London, Routledge, 2013) 8.

366 Alain Pottage V. ‘PARTICIPATION IS THE NEW BRAND’79

In 2004, as a key part of the exercise of re-righting the company after a period of dramatic financial decline, the new CEO of the Lego Group decided to organise the company around four ‘core priorities’: ‘(1) the LEGO brand, (2) the LEGO brick, (3) our unique system of play, and (4) the loyal LEGO community’.80 The company and its branding consultants had already embarked on a reconstructive archaeology of the brand, drawing on ‘conversations with the family owner (the founder’s grandson), archival studies of LEGO’s previous value statements, and comparisons with the core values of competitors’.81 From these materials the company forged for itself an ethical ‘tradition’ that could be leveraged in its present and future self-descriptions. The values elicited from the past were used to make a brand ethos premised on a sense of how children are supposed (still) to experience LEGO play. As Hjarvard puts it: ‘the core of the Lego image was reinterpreted as a value inherent in Lego bricks, but applicable to other kinds of toys and types of play’; namely, the value of ‘quality of play’.82 ‘Quality of play’ draws together diverse connotations of modularity: as the attribute that turns material and immaterial components into media by rendering them as ‘Lego-like’ blocks; as the achievement of a mode of second-order engineering that recognises that it is making parts and protocols whose meaning and functionality are ascribed by users (Lego bricks are engineered to be ‘engineered’); as the ethical principle that components should not only serve as resources for individual creativity, but also as resources that facilitate collaborative creativity. Regarding this last point, just as the rendering of material and medial ‘substances’ as granular blocks enables the user to mould them much as the Renaissance artist ‘formed’ matter, it also renders them as matter to be taken up and reworked by successive collaborators or whose different parts can be worked on by different collaborators, in proportion to the competences or availability of each. The statement that ‘participation is the new brand’ is ironic given how long it took the Lego company to drop its defensive stance in relation to its intellectual property and embrace the open-source model that was forced upon it by the hacking of the original Mindstorms software. As one LEGO executive put it: ‘We came to understand that limiting creativity is the opposite of our mission. Our goal is to foster inquiry and ingenuity’.83 79 From a presentation by Lego executive, Stiven Kerestegian, ‘Open innovation. Towards an organic community of LEGO users’, available at www.kea.dk/fileadmin/user_upload/ Samarbejde/Business_forum/Innovation/LEGO_Stiven.pdf. 80 Cited in Rivkin, Thomke and Beyersdorfer ‘Lego’ (n 65) 7. 81 MJ Hatch and M Schultz, ‘The cycles of corporate branding: The case of the LEGO company’ (2003) 46 California Management Review 1, 6–26, 13. 82 S Hjarvard, The Mediatization of Culture and Society (n 78). 83 M Nipper, quoted in F Lindz, ‘How Lego Is Constructing the Next Generation of Engineers’ Smithsonian (May 2013) .

Lego Juris A/S v OHIM (2010) 367 Perhaps then, the brick has become the brand. Modularity, as figured in the brick, has become a byword for the capacity of Lego to articulate a diversity of user experiences around a distinctive ethos. The brand is so charismatic because the values of ‘quality of play’ resonate so closely with a broader cultural movement that IP scholars have characterised in terms of ‘remix culture’, or ‘open source’ or ‘distributed’ creativity.84 But the story of the Lego brick does not rest with its transfiguration into a brand emblem, or with a shift from a ‘metallurgical’ to a ‘semiurgical’ sense of artefacts. If brands are a matter of ‘participation’, then we need to return to the notion that artefacts are collaboratively constituted. In their account of the ‘economy of qualities’, Callon, Medeal and Rabeirosa propose that one should construe market artefacts not primarily as ‘goods’, which appear in the market with characteristics that are stable enough for comparisons to be made and prices attributed, but as products, in the etymological sense of producere, meaning ‘to bring forward’. In these terms, a product is ‘something that consists of a sequence of actions, a series of operations that transform it, move it and cause it to change hands, to cross a series of metamorphoses that end up putting it into a form judged useful by an economic agent who pays for it’.85 As it makes its way through these metamorphoses, the product is subject to a succession of apprehensions or ‘qualifications’.86 The product is quite simply a different thing for each of the actors by which it is ‘qualified’. So the creation of market demand is a matter of recruiting consumers’ abilities ‘to judge and evaluate’. This intensifies Lauwaert’s notion of ‘facilitated play’. Artefacts are constituted not just dialogically, in an encounter between designer and user,87 but in a nexus of co-implicated observations or ‘qualifications’. Although 84 For example, this sense of modularity played a significant role in Yochai Benkler’s presentation of the wealth network economy (see The Wealth of Networks (New Haven, Yale University Press, 2006)). Benkler does not mention Lego, but it is difficult to read his account of ‘modularity’ in online participation projects without thinking of Lego. 85 M Callon, C Méadel and V Rabeharisoa, ‘The economy of qualities’ (2002) 31 Economy and Society 2, 194–217, 197. 86 There is a convergence with marketing theory here, notably in the idea that operations of qualification and requalification are most visible in the context of services: ‘what is important in the service business is the relationship, or, rather, system of relationships which, on a material and collective basis, organizes the qualification of products’ (Callon et al, ‘The economy of qualities’ (n 85) 210–11). 87 Drawing on Madeleine Akrich’s analysis of the inscription and description of technical artefacts Lauwaert construes play as an encounter between two modes of engagement with the material thing: that of the designer and that of the user. ‘Docile’ users might follow the script, but others will gravitate to the ‘periphery’ For Akrich, the embedded properties, they are part of a script that materialises or ‘inscribes’ the vision and ethos of the designer or producer; ‘like a film script, technical objects define a framework of action together with the actors and the space in which they are supposed to act’. M Akrich, ‘The de-scription of technical objects’ in WE Bijker and J Law (eds), Shaping Technology/Building Society. Studies in Sociotechnical Callonhange (Cambridge, MA, MIT Press, 1992) 205–24, 208. But this script has then to be ‘de-scribed’ by the user, who will actualize the competences of the artefact in ways that might depart significantly from the script. Akrich gives the example of a simple electrical lighting device designed in Europe for use in rural parts of Africa.

368 Alain Pottage the economy of qualities is presented diachronically, as though qualifications succeed one another as a product ‘metamorphoses’ its way to the consumer, the idiom of the assemblage requires that one think of these qualifications as co-existing and co-acting synchronically. So the product is itself a nexus of qualifications; it is constituted by the diffracted set of observations that ascribe characteristics to it, and each ‘qualification’ of an artifact is in effect a recomposition of ingredients that are already framed and coloured by the qualifications of others. To be confronted with a product—to return to the primal scene of trade mark theory—is to engage with, or to participate in, this interplay of observations. What one engages with is not just an inert material object with some superadded information, but rather materials, competences and signs as they are ‘represented’ in interleaved ‘qualifications’. How does this dynamic play out in the case of brick as an emblem of modularity? According to the strategy devised by the Lego company’s branding consultants, the newly refreshed brand was supposed to be lived and practised by the management and employees of the company on a daily basis. The brand—and, crucially, the look and feel of the product—was supposed to become the medium for the ‘organisational culture’ of the company; that is, the ‘internal values, beliefs, and basic assumptions that embody the heritage of the company and are manifest in the ways employees feel about the company they are working for’.88 And the material figure of the brick played a crucial role in this process of individual and collective self-description: This [strategy] inspired the creation of new working methods, such as: inviting participants to build the LEGO brand in LEGO bricks and then discuss their meanings with other participants; and creating a “value gallery,” a game where pictures are used to help the participants articulate their associations with the company values. In this cycle, corporate branding activities were framed by consistent reference to the restated and updated company values’.89

As a medium for the rehearsal of organisational roles, the brick inculcates in the employees and managers of the company a sense of their own inventiveness, of their commitment to the brand ethos of creative play, and, quite simply, a sense of their distinctiveness as a corporate body. The ethos of the product also characterises the ecology of the workplace itself. In Lego offices around the world no employee has a desk of their own and no one can sit in any one place for more than a limited time; the idea is to replicate in the workforce the synergetic modularity of the product itself, and to reaffirm the idea of LEGO work as being anything but routine or static. Here the brick functions as a medium—metaphorical, material, and ethical—for fashioning corporate identity and culture. 88 89

Hatch and Schultz, ‘The cycles of corporate branding’ (n 81) 9–10. Hatch and Schultz, ‘The cycles of corporate branding’ (n 81) 16.

Lego Juris A/S v OHIM (2010) 369 This specific example of the use of the brick as the material avatar of modularity tells us something about the relationship between brands and artefacts, or communication and materiality, in a post-industrial context. First, one should note that the brick and its connotations are articulated within a specific process of communication. From a theoretical perspective, the brick is a resource for self-description; it is a medium through which employees make their role within the firm explicit to themselves and others, through which the firm as a collective entity reconstructs and affirms its distinctive commercial culture or ethos,90 and through which the managers of the firm position the brand in the market. Each of these modes of self-description mobilises two kinds of assemblage at once. There is the assemblage of ‘materials’ that make up the medium: shapes, textures, functionalities, facilitating narratives, inscribed and mass media signs and so on. However, this assemblage is doubled and animated by another: the assemblage of ‘qualifications’ in which each user of the medium mobilises, patterns, or actualises the elements of the medium. Dirk Baecker unfolds this dimension of the assemblage in his analysis of the firm as a communicative system. A product ‘tells employees, managers and clients alike just what the firm is about’,91 but it is not just a means of communicating corporate culture and identity, it is also a medium in which the firm necessarily exposes itself to critical observation by others; in which, in other words, it sees itself being seen. Decisions about what kind of product to make are shaped by recursive reflection on the connection that others make between the qualities of the product, the ‘technological’ competence or reputation of the firm, the ethos or brand persona of the firm. And, from the perspective of the firm, one has to add to these various ‘determinations’ of a product a strategic sense of the evolution of market conditions: To do business means to travel back and forth between these determinations, exploring their scope or spielraum and again and again inventing recombinations of product (identity), technology (quality, reliability), organisation (evidence, service) and economy (prices, markets).92

So if we lead with the product, as trade mark theory would suggest, then we find an artefact that is already implicated in, and saturated with, different qualifications. And the Lego brick, by virtue of being a medium in itself, is just a particularly good device with which to illustrate the medial or mediated character of all market artefacts. Each user of an artefact is involved in the same constellation as that with which the firm is involved, but from a different entry point. Consumers might not always have the same facility for self-observation as the firm, and 90

Or, in the idiom of corporate social responsibility discourse, its ‘reason for existing’. Baecker, ‘The form of the firm’ (n 11) 128. 92 ibid 132. 91

370 Alain Pottage some qualifications that they engage with take the form of socio-technical devices that work unobtrusively to shape their apprehension of the product,93 or of marketing and profiling strategies implemented by what Callon and his co-authors call the ‘professionals’ of qualification.94 But again, users engage not with a stable material artefact, but with a set of communicative ‘qualifications’ or ‘determinations’ that they have to ‘recombine’ for themselves. Even ‘routine’ consumption involves a minimal degree of selfdescription. These processes of communication are much more complex, and much more contingent, than the linear transfer of information that is imagined by trade mark theory. Furthermore, they are more complex than the notions of modularity and participation might suggest. The brick as a branded emblem of modularity is itself diffracted into a mode of modularity that is much more contingent and less open to coordination than would suggest. In the case of Lego, modularity as it is practised and communicated in the boardroom is different from modularity as it is experienced by children in the playrooms of various nations, which is different again from modularity as it is mobilised by adult fans of Lego (AFOLs) who use the branded brick to forge communities that based on a highly specialised idiom.95 So the quality of ‘participation’ that is signified by the Lego brick is not that which brand managers might bring to the fore; rather it is the quality of participation that arises from positioning oneself within a skein of qualifications. A brand itself is an assemblage.96 In one sense, this means that there as many iterations of a brand as there are communicative systems—persons, organisations, publics—in which the material, medial, or discursive ingredients that compose the brand (and its relation to the artefact) are drawn together. In another sense, it means that the brand is the multiplicity of these different existences. The upshot is not that the decision in Lego v OHIM is based on an anachronistic view of industrial artefacts, or that there is a disjuncture between trade mark theory and the real social life of brands.97 We already know these things. The point is that trade mark jurisprudence

93

See F Cochoy, Une sociologie du packaging (Paris, PUF, 2002). Callon et al, ‘The economy of qualities’ (n 85) 212. 95 Antorini notes that adult fans have evolved a kind of folk taxonomy for Lego components. Features such as colour or configuration are rendered in a jargon that means that ‘it takes inside knowledge to know exactly what kind of meaning or concrete LEGO element AFOLs are referring to’ (YM Antorini, Brand Community Collaboration. An Intrinsic Case Study of the Adult Fans of Lego Community (PhD thesis, Copenhagen Business School, 2007) 175). 96 This is somewhat different from Celia Lury’s proposition that brand ‘assembles culture’ into itself; see C Lury ‘Brands as assemblage: assembling culture’ (2009) 2 Journal of Cultural Economy 1–2, 67 –82. 97 The legal form of the trade mark is itself an assemblage, which involves the practices of registration and opposition, watching and searching (see, for instance, J Bellido and H Kang, ‘In Search of a Trade Mark: Search Practices and Bureaucratic Poetics’ (2016) Griffith Law Review 1-25). 94

Lego Juris A/S v OHIM (2010) 371 is itself one mode of ‘qualifying’ or observing artefacts, and although the form of property that is protected by a trade mark probably does not represent or encompass the ‘capital’ that is indexed by a brand or mark,98 the rights granted by trade mark marks may be useful precisely because of their anachronistic premises. The general proposition is that the biography of the Lego brick allows one to differentiate between three types of artefacts and brands: first, the twentieth-century sense of industrial manufactures that still informs trade mark jurisprudence and which is particularly well expressed in Lego v OHIM; second, the ‘semiurgical’ view according to which brands eclipse and animate the material artefacts that are suffused with their market aura; and, third, the sense that brands and artefacts are constituted and recombined in communicative processes that are also modes of self-description.

98 On this form of ‘intangible’ capital note the proposition that: ‘the very concept of “intangibles” has emerged as a way to make sense of the discrepancy between the market value and the book value of companies, which has resulted from the declining relevance of an earlier industrial value regime’; see A Arvidsson and N Peitersen, The Ethical Economy. Rebuilding Value After the Crisis (New York, Columbia University Press, 2013) 22).

372

Index Abel, Frederick Augustus career 119 guncotton 120–2 patent 118, 125–6, 129, 142 War Office Committee on Explosives 118, 123–4 Abrams, Howard 24 Aldous, Sir William 296–300, 306–7 d’Alembert Jean 75 Allison, George 213 almanacs 22–7, 33–4, 36–50 passim, 53 Almond, Professor Jeffrey 314–15 Anderson, Dr William 118, 126 Aristotelian attitudes see under patent claim, inventor’s responsibility Arrowsmith, Aaron 61–2 Asch, Ronald 17 Attorney-General v Rosse (1624) see under Mansell v Bunger (1626) Baecker, Dirk 369 Baggs, William 102–3 ballistite see under patent claim, inventor’s responsibility Barrell, Serjeant Francis 43, 45–8 Baudrillard, Jean 348 Becket, Thomas 33 Becku, Anthony 7 Beeman, Neville 152 Bellinger, John 52 Bennett, John (Jonathan) 64, 66, 73 Bennett, Lionel 11 Bently, Lionel 184, 333–4, 339 Berg letter 296 Betts, Frank Cecil 212–14, 216, 218, 220–3, 226 Betts-Binmore agency 213 Bibles 26, 30, 33, 46, 48, 50–1 Biogen Inc v Medeva plc (1996) business model 293 corporate structure 292 counter-claim grounds 295–6 Court of Appeal 298–300 EPO (European Patent Office) filing/ decision 294–5, 300 filing of claim for patent 294 Hoffmann’s opinion 301–12 background experience 302–3 and Biogen insufficiency 311–12

clarity/systematic nature of judgment 303–4 context 302–4 and EPO decision 310–11 obviousness assessment 305–8 policy dimension 304 support and sufficiency 308–10 Hoffmann’s opinion in Biogen, inventiveness 306–8 House of Lords 300–2 initial claim 295–6 inventive thought v inventive industry 295–302 key issues/conclusion 289–91, 315–16 landmark status 289–91, 301–2 obviousness test 296–8, 300–1 Patents Court 296–8 workshop reminiscences 313–15 see also biotechnology and patent law Biogen NV 291–2 biotechnology and patent law commercialisation of biotechnology 291–5 DNA recombination 291–4, 300 voluntary moratorium 296 law/science dissimilarities 314 overturning on appeal 316 scientists involved in project 292 see also Biogen Inc v Medeva plc (1996) Birrell, Augustine 154, 161, 165, 167, 171, 173 Birss, Mr Justice Colin 147, 265, 291, 302 Blachford, Michael 82–3 Blachford, Robert 82 blacking product see trade mark enforcement practice, early 19th cent, Japan Blacking Blackstone, Sir William Commentaries 29, 75–6 role as counsel 31 Blanchard, Christopher 93–5 Blanchard v Hill see under Day and Martin litigation Blanco White, Thomas Anthony 117, 143–4, 205, 246 Blofield, Thomas 107 Board of Longitude 72–3 Board of Trade 159, 179, 229, 333, 340 Bodley Head (publisher) 151, 153 Book of Bounty 4, 17

374 Index Book of Common Prayer 23, 26, 31, 42, 47, 53 Bowen, Emmanuel 73 Bowles, Carington 64 Brampton, Lord 168–9, 177 Buckingham, Duke of 13, 16 Bunger, Peter, John and ‘Isaac’ 7–8, 10–11 Mansell v Bunger (1626) 13–17 Burghley, Lord 2, 7 Buxton, Sidney 179–80 Caird, Professor Edward 160–1 calendars 23–5, 42–50, 53–4 Campbell, Admiral, FRS 67, 78 Cardwell, Edward 122 Carré, Jean 7 cartoon characters see under design/ copyright interface Chambers of Commerce 337–8 Chambers, Ephraim 75 Cyclopaedia 78 Chandler, John 68–9, 77, 81–2 Charles I 17–20, 35 Charles II 34–6, 42, 51, 72, 77 Charles, Prince (later Charles I) 5–7 chartmakers and copyright law (mid-18th cent) copying 62–4, 67–8, 70–1, 79–82 Enlightenment epistemology 61, 71–83, 85–6 Admiralty surveying and personal initiatives 73–4 authority of the map 76–82 law and intertextual web 74–6 mapping as metaphor 75–6 navigation improvement need 72–4 perfection claims 79–81 practical/scientific emphasis 71–2 fair dealing doctrine 85 key issues/conclusions 61, 83–6 main publishers 61–2 in 19th cent 82–3 maps’ engraving copyright 62–3 Tower Hill, as chart-making centre 62–4 see also Sayer v Moore (1785) Chitty, Joseph 95, 338 Christiansen, Ole Kirk 345, 361 Christie, Alexander 105 civil and criminal law, relation between criminal law and IP offences 326–33 forgery paradigm 333–8 and efficient enforcement 341–3 historical antecedents 332–3, 343–4 key issues/conclusion 320–1, 343 trade mark protection and criminal law 332–3, 339–41 see also R v Johnstone (2003) Clarence, Duke of 69

Coco v AN Clark (Engineers) Ltd (1969) artistic and government information, citations 265–8 Australia, citations 277–9 breach of confidence 254–5, 284–5 Canada, Citations 279–81 citations 257–62 commercial information 268–70 England and Wales, decisions 262–5 European law 284 facts of dispute 254 freedom of information (FOI) cases 275–7 injunctive relief 256, 262 interlocutory injunction 253–4 Ireland, citations 276–7 key issues/conclusion 253–4, 284–6 Megarry, Sir Robert 253–85 passim New Zealand, citations 282–3 personal information decisions 270–5 sources 286–8 annex spring-board doctrine 256–7 three-step test for breach 255–6, 285 Coke, Clement 11 Coke, Sir Edward 6, 11–13 Coke, Sir John 15 Coleman Ltd, Cecil 220–2 comic strips see under design/copyright interface common law trade marks see under passing off tort confidentiality law see Coco v AN Clark (Engineers) Ltd (1969) Constitutional History of England (Hallam) 5 Cook, Captain James 67, 72–3, 76, 78 Copinger on Copyright 149 copying indirect 222 maps see under under chartmakers and copyright law (mid-18th cent) mechanical 164, 178 newspaper industry 163–4, 175 prints and engravings 62, 64 toys 174, 212 videotapes 326 copyright, origin of term 37 copyright law origins almanacs 22–6, 33–4, 36–43 passim, 53 authors’ rights, presumption pre-1710 50–2 calendars 23–5, 42–50, 54 differing viewpoints 21–2 key issues 25 labour 25, 44, 51 landmark decisions 22 legal landscape pre-1710 26–8 literary property debates 28–34

Index 375 Stationers’ Company Charter 1684 51–2 see also chartmakers and copyright law (mid-18th cent); design/copyright interface; oral presentations and copyright; Stationers v Seymour (1677) cordite see under patent claim, inventor’s responsibility Cordite Case see Nobel’s Explosives Company Limited, v Anderson (1894) Cottenham, Lord 111, 114, 183 Coventry, Sir Thomas 13–15 Cranmer, Thomas 42 Cripps, Charles Alfred, QC 140–1 Croft v Day see under Day and Martin litigation Croke’s (Sir George) Reports 44 Daily Mirror 216, 271 The Daily News 170 Davey, Lord 168, 172, 179, 186–7 Day, Charles 87–9, 91–3, 102, 106–9, 115 Day, James 105–6, 108 Day, John 105–7, 109 Day and Martin (firm) 88–93 address 91–2, 101, 106 competitiveness 90–1 labels 91, 101, 106–7, 109 legal proceedings 92–3, 101–16 name 88–9, 91–2, 101, 108, 113, 115–16 success of business 91 Day and Martin litigation Blanchard v Hill 93–5, 97, 101–2 Croft v Day 115–16 further suits 109, 112 Hogg v Kirby 95–101 as passing off case 99–100 implications of 111–13 litigants following suit 110–11 other cases 114–15 prior jurisprudence 93–101 see also trade mark enforcement practice, early 19th cent Day and Martin v Slee and Statham see under trade mark enforcement practice, early 19th cent Day and Martin v Slee and Statham (1813) 101–5 Day and Martin v Thomas Day, John Day and Peter Martin see under trade mark enforcement practice, early 19th cent Day, Thomas 105–8 Day v Day, Day and Martin (1816) 87, 111 business background 88–93 defendants 107 Eldon’s judgment 108–9 injunction argument 107–8

leading case 113–14 litigation 105–9 plaintiffs 105–7 see also trade mark enforcement practice, early 19th cent Day, William Charles 115 Dean’s Rag Co 217 Delarochette (engraver) 66 design/copyright interface cartoon characters 215–17 comic strips 209–12, 215 Japanese toys 220–1, 226 licenses/licensing 216–19, 221 newspaper syndication 207–12 novelty/toy rights 205–6, 212–21 three-dimensional form 216 see also chartmakers and copyright law (mid-18th cent); copyright law origins; King Features Syndicate, Inc and Betts v O & M Kleeman Ltd (1940); oral presentations and copyright Dewar, James career 118–19 patent 118, 125–6, 129, 142 War Office Committee on Explosives 123–4 Dicey, Cluer 64 Diderot, Denis 75, 85 Diplock, Lord 146, 186, 198–200, 203–4, 302 Disney Organisation 211, 216, 226, 228–9 DNA recombination see under biotechnology and patent law Drewry, Charles 99, 114 Duckett, Arthur 2 Dupré, August 142 War Office Committee on Explosives 123–4 Eden, Robert 113 Edinburgh University 292–3 Edney, Matthew 75–7, 82 Eldon, Lord 88, 95–101, 104, 108–9, 111, 113, 115, 158, 160–1 Elizabeth I 2–4 Eltgroth, George 249 English Atlas (Sellers) 61, 72 Enlightenment epistemology see under chartmakers and copyright law (mid-18th cent) Ensmenger, Nathan 235, 239 Erskine, Thomas 70, 79–80, 84 Esher, Lord 135–8, 140, 143–4 Faden, William 61–2, 66 fair dealing doctrine see under chartmakers and copyright law (mid-18th cent) Farmer, Lindsey 339

376 Index Farrar, Canon 159 Farrer, Thomas Henry 159 Fell, Bishop John 52 Finch, Heneage 36–9 Fleischer Studios 215 Foote, Philip 13–14 forgery paradigm see under civil and criminal law, relation between Froude, James 159 functionality doctrine goods dominant view 348–53 marketing/advertising functions 350–1 metallurgical understanding 348, 353, 367 patent and trade mark law 345–6 service-dominant view 352–3 signification/functionality distinction 346 Supreme Court of Canada decision 345–6, 354–5, 358, 365 see also Lego Juris v OHIM (2010) Gadbury, John 22, 25, 39–45, 49, 53 AW Gamage Ltd 189–95 Garrow, William 70 Geake, Charles 151–7, 166–7, 170 genetic engineering see biotechnology, and patent law Gibson, Milner, QC 333–4, 337, 340 Ginsburg, Jane 176–8 glass patents coal furnace use 7–13 early patents 7–8 Mansell’s patents 8–13, 18 see also Mansell v Bunger (1626); monopoly/monopolies Godfrey, Eleanor 7 Grand Remonstrance 18 Granger’s New Wonderful Museum and Extraordinary Magazine 95–6 Gregory Committee 227–8 gun cotton 120–2 Hale, Baroness Brenda Marjorie 272 Hale, Chief Justice 45 Haley, Jim 313 Hallam, Henry 5 Halsbury, Lord 160–1, 168–9, 173, 175, 187, 196, 198 Handler, Phil 334 Harris, Pauline 231 Harris, Tim 6 Harrison, John 73 Hart, Anthony 100, 104, 107–8 Harvard Bureau of Business Research 349 Heald, Lionel, QC 228 Hearst, William Randolph 208, 213–14 Heath, Robert 15

Heather v Moore (1798) see under Sayer v Moore (1785) Heather, William 61–2, 83 v Moore 69–71 Hill, Thomas 93 Hjarvard, Stig 366 Hobhouse, Lord Justice 299–300, 307 Hoffmann, Lord, opinion see under Biogen Inc v Medeva plc (1996) Hogg, Alexander 95–7 Hogg v Kirby see under Day and Martin litigation Holroyd, George 70 Howard, Sir Thomas 8 Huddart, Joseph 73 Hudson, JV 231–2, 242–4, 247 Hume, David 5, 20 Hunter, Dan 347 Hyatt, John Wesley 120, 123 Imray, James 82–3 Imray Laurie Norie & Wilson Ltd 83 inventor’s responsibility see patent claim, inventor’s responsibility Ipswich Journal 133 James I 2, 4–5, 8–9, 17, 22, 26 James, Lord 168–9, 177 Japan Blacking see under trade mark enforcement practice, early 19th cent Japanese toys see under design/copyright interface Jefferys, Thomas 61–2, 64, 66, 73 Johnson, Samuel 78 Johnston Committee 228 Johnston, Thomas 133, 139 Johnstone, Robert Alexander 317–18, 321–5 Jones, William 37 Kay, Lord Justice 135, 138, 160 Kenyon, Lord 69–71, 78, 80 Kequick, Thomas 40–1, 43 Kerly, Duncan 114, 184, 187, 342 King Features Syndicate Inc 207–9, 211, 222, 226, 229 King Features Syndicate, Inc and Betts v O & M Kleeman Ltd (1940) appeal court 223–4 calls to reform law 226–7 complex circumstances 219–26 controversial elements 212 design/copyright interface, ambiguities 227–9 exploitation of case 211, 215–16 House of Lords 224–5 intangible property 224 international copyright 229–30

Index 377 key issues/conclusion 206–7, 226–30 plaintiffs/defendants’ identity 207–14 preceding events 220–1 Second World War impact 225–6 significance 205–6 three-pronged defence 221–2 see also design/copyright interface Kingsman, Professor Alan 315 Kipling, Rudyard 163 Kirby, Ralph Smith 95–9, 101, 111 Kirby’s Original Wonderful Museum, or Magazine of Curiosities 95–6, 98 O & M Kleeman Ltd 211, 215, 220 Laddie, Sir Hugh 177, 205–6, 313–15 Lane, John 151–7, 165–8, 171 Larkin, George 40–1, 43 Laurie, Robert 83 Lauwaert, Maaike 362–3 Law and Robinson (booksellers) 64 Lazenby, Elizabeth 112 Lazenby, Henry 112 Le Bel, Justice 355, 359, 365 Leach, Sir John, KC 107–8 Lego Juris v OHIM (2010) 346 anachronistic premises 370–1 anti-monopoly view of tribunals 357–60 CJEU decision 346–7 interchangeability argument 355–6 as landmark case 346 Lego brick antecedents 360–1 Automatic Binding Brick 361 consumers’ experience 369–70 core priorities 366 facilitated play 363, 367–8 as IP landmark 347–8 marketing/manufacturing logic 362–3 medial character 365 as metaphor 363 Mindstorms range 364 modularity 366–7, 370 and organisational culture of company 368–9 participation as new product 366–71 patented bricks 361–2 play facilitator 363–4 quality of play 366–7 Lego interpretation of functionality doctrine 356–7 specific shape argument 354–5 trade mark registration rejection 353–4 see also functionality doctrine Leigh, John 14 Levy, Stanley 145 Liberal Magazine 152 licenses/licensing see under design/copyright interface

Lilly, William 39 Lily, William 26 Linnaeus, Carl 75 Lloyd, Edward 99, 342 Longitude, Board of 72–3 Lye, George 100 Mackenzie, Murdoch 73, 77 Maddock, Henry 95 Mansell, Elizabeth 11 Mansell, Sir Robert 4, 7–13, 15–17 career 8–9 glass-making patents 8–13, 18 Mansell v Bunger (1626) 13–17 Attorney-General v Rosse (1624) 13–14 matters of state in play 16 Privy Council agreement that patent should continue 15–16 discussion of report 15 effect of Civil War 18–19 open warrant award 16–17 Statute of Monopolies (1624) contravention/importance 4–7, 13–14, 17, 19 see also glass patents; monopoly/ monopolies Mansfield, Lord 29, 32–3, 59–60, 66–8, 80–1, 85 Manton, Joseph 112 marine charts see chartmakers and copyright law (mid-18th cent) Martin, Benjamin 88–9 Martin, Peter 106–9 Martin, Thomas 105, 108 Maynard, Serjeant John 38–9 Medeva plc 295, 300–1 Mefflyn, Thomas 8 Mega Brands/Mega Bloks 353–4, 365 Megarry, Judge Sir Robert 253–85 passim career 285–6 Meinhardt, Peter 145 Mickey Mouse, merchandising 211, 217, 224, 228 Millar, Andrew 31 Milton, John 30 misrepresentation see under passing off tort Mitchell, Judge 322–3 Moberly Bell, Charles 151–2, 155–7, 163–8, 170, 179–80 Modern Law Review 320, 326, 330, 332 monopoly/monopolies Civil War and aftermath 19–20 common law and royal prerogative 6–7 first use of word 1 letters patent 1–2 lucrativeness for Stuarts 18–19 reviling/criticism of 2–4

378 Index Statute of Monopolies (1624), contravention/importance 4–7, 13–14, 17, 19, 38, 46 see also glass patents; Mansell v Bunger (1626); Stationers v Seymour (1677) Montgomery, Philip, Earl of 8 Moore cases 61–71, 76–7, 81–3 Moore, John Hamilton 61–2, 68, 83 decline of business 82 education and teaching career 63 first chart 65 partners 64 publishing career 63–4 on quality of charts 73–4 responses to enemies 69–70 Sayer v Moore (1785) 63–8 More, Sir Thomas 1 Moritz & Chambers 220–1 Motto (Wither) 3 Moulton, John Fletcher, QC 126–7, 131, 133–42 Mount and Page 61 Mount, Richard 61 Murray, John 166–7, 177 Murray, Noreen 293 Murray, Professor Sir Kenneth 292–3, 296–9, 305–7, 309 Murray, William 30 Nature journal 296 The New Practical Navigator (Moore) 69, 81 newspaper copyright see under oral presentations and copyright syndication see under design/copyright interface Newton, Thomas 30 Nicholls, Lord 271–2, 318, 324–5, 328, 330–1 nitro-cellulose (gun cotton) see under patent claim, inventor’s responsibility nitro-glycerine see under patent claim, inventor’s responsibility Nobel, Alfred ballistite 123–4 career 119 disagreement with Abel and Dewar 125 nitro-glycerine 118–23, 125, 129–30, 141 patent disputes in Britain 126 patents 118–19 soluble/insoluble nitro-cellulose/collodian cotton 130, 139–41 Nobel Explosives factory 127 Nobel’s Explosives Company, Ltd 121

Nobel’s Explosives Company Limited, v Anderson (1894) 117 appeal court 133–9 Aristotelian attitude to witnesses 127 basic dispute 118 crucial scientific distinction 118–19 elements of case 126–30 history of invention 129–30 House of Lords 139–42 impact/significance 142–7 judgments 119 lower court 130–3 and patent construction, modernisation 117, 143–4 political scandal 118 press discussion 133, 142 professional use of case 144–5 real defendants 118 scientific/technical complexity 127–8 textbook/treatise references 143–4 see also patent claim, inventor’s responsibility Norie, John 70, 83 North, Chief Justice 24, 47–50 North, Douglass Cecil 6 North, Justice 163, 165–6 novelty rights see under design/copyright interface Ong, Burton 178–9 oral presentations and copyright lectures’ protection 158–61 legal position 157–61 newspaper copyright 150, 162–5, 179–80 play’s public performance 258 Rosebery’s career and speeches see Rosebery, Lord (Archibald Philip Primrose) third parties 158 unpublished lectures 157–8 see also chartmakers and copyright law (mid-18th cent); copyright law origins; design/copyright interface; Walter v Lane (1900) Orb football case see under Spalding v Gamage (1915) Page, Hilary 360–1 Page, Thomas 61–2 Paramount Pictures 215, 220 Parker, Lord 181–2, 189, 194–204 passing off case see under trade mark enforcement practice, early 19th cent passing off tort basic principle 181 common law trade marks 183–5, 198, 200–1

Index 379 deceit as basis 182–3 development in 19th cent 182–9 equity/common law 183 fraud requirement 183, 187–8 misrepresentation 185–7, 196–9 plaintiff’s goodwill 181–2, 188–9, 197–200 see also Spalding v Gamage (1915) patent claim, inventor’s responsibility Aristotelian attitudes 127 ballistite 119, 123–4, 129–33, 138, 140 Britain as patent dispute venue 126 canons of construction 133–9, 136–7, 144 cordite 118, 124–5, 129–30, 132–3 and Europeanisation of patent law 145–6 figures of the invention 128–9 importance of science 117–19 inventors’ identities 119–20 legal/scientific authority 135–8 modernisation of patent construction 117, 143–4 nitro-cellulose (gun cotton) 120–3, 130 nitro-glycerine 118–23, 125, 129–30, 141 scope of claim 145–6 War Office Committee on Explosives 118, 123–4 see also Nobel’s Explosives Company Limited, v Anderson (1894) patent law biotechnology see biotechnology and patent law glass patents see glass patents subject matter eligibility in see subject matter eligibility in patent law Payne, Thomas 105, 108 Pedley, Mary 76 Pemberton, Serjeant Francis 43–5, 47–9 Percival, Thomas 8 Pila, Justine 172, 178 Plumer, Thomas, V-C 100–1, 103–4 Popeye, case see King Features Syndicate, Inc and Betts v O & M Kleeman Ltd (1940) Porteous, James 68, 73, 78, 81 The Practical Navigator and Seaman’s New Daily Assistant (Moore) 63, 73 Prescott, Peter, QC 314–15 Primrose, Archibald Philip see Rosebery, Lord Privy Council see under Mansell v Bunger (1626); Stationers v Seymour (1677) protection against copying, chartmakers and copyright law (mid-18th cent) 62–4, 67–8, 70–1, 79–82 Prynne, William 50–1

R v Johnstone (2003) Court of Appeal 323–4 Crown Court proceedings 322–3 dishonesty analogous to theft 326–7 facts/background 321–2 House of Lords 324–6 human rights issues 319 key issues/conclusion 319–21, 343–4 public interest concerns 330–1 regulatory offences 327–8, 330 strict/fault liability distinction 329–30 theft analogy for IP crime 331–2 trade mark use 317–19, 343–4 see also civil and criminal law, relation between Rahmatian, Andreas 320, 326, 330, 332 Richards, Richard 97 Robson, William 8 Romer, Mr Justice Robert 119, 131–2, 135, 137, 143–4, 167, 202 career 126 Romilly, Sir Samuel 97, 100 Rookes, Thomas 40 Roper, Abel 44–5 Rose, Mark 23–4 Rosebery, Lord (Archibald Philip Primrose) Appreciation and Addresses (Geake) (Bodley Head 1899) 153–4, 165–6 attitude to collected speeches’ publication 152–7, 168, 170–1 as author of speeches 150, 161, 171–2 career and speeches 151 Speeches of Lord Rosebery, 1874–1896 (Beeman, 1896) 152 see also oral presentations and copyright; Walter v Lane (1900) Rothschild, Hannah 151 Royal Commission on Copyright 1878 159, 162 Russell, Conrad 5 Russell, Sir Charles 127 Russell-Clarke, Alan Daubeny 226, 228 St James’s Gazette 163 saltpetre 2 Sayer, Robert 61–2, 64, 66–9, 73–4, 77–8, 83 Sayer v Moore (1785) background 61–3 citations 84 defendant 63–4 hearing 66 Heather v Moore (1798) 69–71, 79–81, 83 litigation 63–8, 78 Mansfield’s summing up- 67–8 plaintiff 64, 66 publicity of proceedings 81–2

380 Index significance 59–61, 74–5, 77–8 Steel v Moore (1789) 68–9, 78, 81–2 subsequent cases 68–71 summing-up/verdict 67–8 unsuccessful action 67 witnesses 66–7 see also chartmakers and copyright law (mid-18th cent) Schönbein, Christian Friedrich 120 Scott, John 96 Scott, Joseph 103–4 Scroggs, Justice 48–50 Scrutton, Thomas Edward, The Law of Copyright 150–1, 157, 166–7, 171, 173 sea charts see chartmakers and copyright law (mid-18th cent) The Seaman’s Complete Daily Assistant (Moore) 64 Second Industrial Revolution 117 Segar, Elzie Crisler 211–12, 214, 225 Seller, John 71–2 Seymour, Captain John 34–5 1669 patent 35–8, 54–8 Annex post-judgment settlement 52–3 see also Stationers v Seymour (1677) Seymour family 35 Sharp, Professor Phillip 292 Shaw, Archie 349, 351 Sherman, Brad 333–4 Sherwin, George 64 Shillock, Thomas 104 Simonds, Mr Justice 222, 225 Slee & Harris’s Application (1966) Application Number 19463 231, 241–3 Application Number 19464 231–2, 243–4 computer program prioritisation 245–7 general purpose programmed computer 247–50 hardware/software company approaches 248 key issues/conclusion 232–3, 250–1 patent office examination 241–4 suplex method 241–2 time dimension 249–50 see also subject matter eligibility in patent law Slee, Patrick 231 Slee, Samuel 102–4 Slingsby, Sir William 7–8 Small, John 24 Sobrero, Ascanio 120 software issues see under subject matter eligibility in patent law AG Spalding & Bros 189–93 Spalding v Gamage (1915) as clarification 198–203

High Court/Court of Appeal/House of Lords findings 193–6 as landmark case 181–2, 201–4 Orb football case 189–93, 195 Parker’s analysis 196–204 see also passing off tort The Spectator 31, 170 Statham, Peter 88, 102–4, 108 Stationers v Seymour (1677) background 34–8 conclusions from judgment 49–54 Court of Common Pleas 40–50 importance 23–4 misconceptions about 24–5 post-judgment settlement 52–3 Privy Council 27, 38–40, 50, 52–3 1669 patent 35–8, 54–8 Annex Statute of Monopolies (1624) 38, 46 see also copyright law origins Statute of Monopolies (1624) see under Mansell v Bunger (1626); Stationers v Seymour (1677) Steel, David 61–2, 68–9, 77, 81, 83 Steel v Moore (1789) see under Sayer v Moore (1785) Stephen, James Fitzjames 159, 335 Stephenson, Captain John 67–8, 70, 73, 77–81 Steyn, Lord 331–2 Streater, John 44–5 subject matter eligibility in patent law artificiality approach 245 dominant approach 244–5 key issues/conclusion 232–3, 250–1 law/science/technology 236 multi-step process 232 pre-European Convention 233 software issues 233–41 approaches to information technology 236–7 emergence of software product 234 hardware manufacturers and 237–8, 240–1 heterogeneous technology 235 legal problems 234–6 negative definitions 235 pre-modern regime 233–4 software manufacturers’ approach 239–41 see also Slee & Harris’s Application (1966) Swan, Sir Kenneth 118, 226 Sykes, Thomas 112 syndication see design/copyright interface, newspaper syndication Taylor, Richard Stevens 101 Taylor, Robert 31

Index 381 Terrell, Thomas, Law and Practice Relating to Letters Patent for Inventions 143–4 Thomas, Julian 347 Thomson, James 31 The Times 151–2, 154–6, 162–70, 172, 177, 179, 201, 286 The Times Literary Supplement 151, 163 tobacco pipes 2, 13–14 Tomlyn, George 19 Torremans, Paul 178–9 Tower Hill, as chart-making centre 62–4 toy rights see under design/copyright interface trade mark enforcement practice, early 19th cent Chancery enforcement 87, 94–5, 112–13 Day and Martin see Day and Martin litigation, and cases injunctive relief 87–8 Japan Blacking 88–9, 106–7 key issues/conclusion 88–9, 113–15 playing cards 93–4 prior jurisprudence 93–101 trade mark use/protection see under civil and criminal law, relation between Treatise of Maritim Surveying (Mackenzie) 77 Treby, George 51 Trinity House 64, 69, 72–3, 77, 81 Trumball, William 14, 19 Tuckwell, Walter 226 Turkey, John 235 Turner, Amédée Edward 263 Turner, Richard 105 Turner, Thomas 114 Tyco 174, 355–6 Underwood, Samuel 106–7 Veblen, Thorstein 349 Vesey Junior’s report 97–8 Villa-Komaroff paper 297–8 Viner’s Abridgment 94 von Lenk, Baron 121

Wadlow, Christopher 185 Wales, William, FRS 67, 77–8 Walker, Robert 30 Walter, Arthur 163, 171–2 Walter, John 162–3 Walter v Lane (1900) appeal 167–8 contemporary interest 150–1, 166–7, 170 Court of Appeal hearing 167–8 and European law 175–6 House of Lords 168–70 initial hearing 165–7 injunction 166 litigation 165–71 and originality 149–50, 171–9 press correspondence/comment 166–7, 170 as principled personal conflict 151 public interest 177–8 published/unpublished distinction 172 reporters rights 171–5, 177–9 Rosebery’s reaction 170–1 see also oral presentations and copyright; Rosebery, Lord (Archibald Philip Primrose) War Office Committee on Explosives 118, 123–4, 134, 142 Waterfield, Neville 153, 155–7, 170 Watson, Lord 140, 160–1, 185 Waugh, Andrew, QC 313, 315 Webster, Joshua 102 Webster, Sir Richard, QC 127 Weissmann, Professor Charles 292 Weston, Jonathan 102, 107 Wetherell, Charles 97 Whittle, James 83 Wilbraham, Edward 101, 103–4, 107 Williams, William 70 Wilson, George 83 Windham, Justice 48 Winnington, Francis 38–9, 47 Winterfelt (Winterfield) 66 Wither, George 3

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