Landmark Cases in Intellectual Property Law: Bounty, Disavowing Patents That Would Be Contrary To Our Law' and Affirm

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
LANDMARK CASES IN INTELLECTUAL
the chiefest Flower in her Garden, and the principal and head Pearl in her Crown PROPERTY LAW
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 This volume explores the nature of intellectual property law by looking at
they shall all be examined to abide the tryal and true Touchstone of the Law.13 particular disputes. All the cases gathered here aim to show the versatile
Matters deteriorated under James I, a more profligate character than and unstable character of a discipline still searching for landmarks. Each
Elizabeth. In 1606, after Parliament complained about the proliferation of contribution offers an opportunity to raise questions about the narratives
patents, he had obliged by promising to annul the most egregious grants.14 that have shaped the discipline throughout its short but profound history.
Similarly, in 1610, James issued a royal declaration based on his Book of The volume begins by revisiting patent litigation to consider the impact of
Bounty, disavowing patents that would be ‘contrary to our Law’ and affirm- the Statute of Monopolies (1624). It continues looking at different contro-
ing that they should be triable at common law. None of this, however, did versies to describe how the existence of an author’s right in literary property
anything to curtail his largesse and, after an abortive attempt at legislation was a plausible basis for legal argument, even though no statute expressly
in 1621, Parliament managed to pass the Statute of Monopolies in 1624. mentioned authors’ rights before the Statute of Anne (1710). The collec-
The first section of the Statute confirmed the common law prohibition on tion also explores different moments of historical significance for intellec-
monopolies: tual property law: the first trade mark injunctions; the difficulties the law
faced when protecting maps; and the origins of originality in copyright law.
all Monopolies, and all Commissions, Grants, Licences, Charters and Letters Similarly, it considers the different ways of interpreting patent claims in the
Patents heretofore made or granted, or hereafter to be made or granted, to any late nineteenth and twentieth century; the impact of seminal cases on pass-
Person or Persons, Bodies Politick or Corporate whatsoever, of or for the sole
ing off and the law of confidentiality; and more generally, the construction
Buying, Selling, Making, Working or Using of any Thing within this Realm … are
of intellectual property law and its branches in their interaction with new
altogether contrary to the Laws of this Realm, and so are and shall be utterly void
and of none Effect.15 technologies and marketing developments. It is essential reading for anyone
interested in the development of intellectual property law.
The second section of the Statute continued that all such instruments ‘shall
be for ever hereafter examined, heard, tried, and determined, by and accord-
ing 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 suf-
ficient 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.
14
W 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.
ii 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, monopo-
lies 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 monopo-
lists 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 under-
stood 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.
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
Landmark Cases in
by other interests and the monopolies that came to be awarded via pat-
ents can be divided into two broad categories.4 The first consisted of those
Intellectual Property Law
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 Edited by
the government, but which, it was thought, could be ‘farmed’ out to private
parties (who also paid a rent to the Crown).
Jose Bellido
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
OXFORD AND PORTLAND, OREGON
cards was because higher prices might dissuade more workers from gambling. Darcy v Allin
[1603] Noy 173, 174, 74 ER 1131, 1133 (KB). 2017
8 For an example of a glass manufacturer excluded by Mansell, see n 36.
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I. INTRODUCTION
www.isbs.com
T
HART PUBLISHING, the Hart/Stag logo, BLOOMSBURY and the
Diana logo are trademarks of Bloomsbury Publishing Plc
HE FIRST USE of the word ‘monopoly’ recorded by the Oxford
First published 2017
English Dictionary is from Sir Thomas More’s 1534 Treatise on the
Passion. Considering that he used the term in connection with Judas
© Jose Bellido 2017
Iscariot, More clearly meant to use it in an emotive and pejorative sense:
Jose Bellido has asserted his right under the Copyright,
Designs and Patents Act 1988 to be identified as Author of this work. He knoweth wel also that of all the disciples, there would none bee so false a
All rights reserved. No part of this publication may be reproduced or transmitted in any form or by traitor to betray his master but him selfe alone. And therefore is thys ware Iudas
any means, electronic or mechanical, including photocopying, recording, or any information
storage or retrieval system, without prior permission in writing from the publishers. all in thyne owne hande. Thou haste a monopoly thereof. And whyle it is sought
While every care has been taken to ensure the accuracy of this work, no responsibility for loss or damage
for, and so sore desired, and that by so many, and they that are also very ryche,
occasioned to any person acting or refraining from action as a result of any statement in it can thou mayest nowe make the price of thyne own pleasure & therefore ye shall good
be accepted by the authors, editors or publishers. readers see Iudas was a great rich manne wyth thys one bargayne.1
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 ©. Although ‘monopoly’ had probably yet to enter the popular vernacular, it
This information is reused under the terms of the Open Government Licence v3.0 (http://www. certainly would before the end of the sixteenth century, monopolies becoming
nationalarchives.gov.uk/doc/open-government-licence/version/3) except where otherwise stated.
one of the most politically contentious issues of the day.2 In brief, the contro-
All Eur-lex material used in the work is © European Union, http://eur-lex.europa.eu/, 1998–2017.
versy revolved around the (ab)use of letters patent awarded by the monar-
British Library Cataloguing-in-Publication Data
A catalogue record for this book is available from the British Library. chy, the primary instrument by which the royal prerogative was exercised. In
ISBN: HB: 978-1-50990-466-2 the mid-sixteenth century, it was recognised that letters patent represented
ePDF: 978-1-50990-468-6 an apposite legal instrument by which foreign tradesmen could be awarded
ePub: 978-1-50990-467-9
Library of Congress Cataloging-in-Publication Data
Names: Bellido, Jose. 1 Quoted in D Harris Sacks, ‘The Greed of Judas: Avarice, Monopoly, and the Moral
Title: Landmark cases in intellectual property law / Edited by Jose Bellido. 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
Description: Portland, Oregon : Hart Publishing, 2017. | Includes bibliographical references and index.
Hooper, for instance, enjoined the ‘making scarsite of all thinges [and] bringing the greater part
Identifiers: LCCN 2017017562 (print) | LCCN 2017020683 (ebook) | of such commodities as be in euery realme into a few ryche menes handes so that they cannot
ISBN 9781509904679 (Epub) | ISBN 9781509904662 (hardback : alk. paper) be sold as commune goddes of the ciuile wealthe but as the goddes of one private person. The
Subjects: LCSH: Intellectual property—Great Britain—Cases. | LCGFT: Casebooks whiche Monopolie or selling of one man is forbiddin not onlie in the law of god: but also by the
Classification: LCC KD1269 (ebook) | LCC KD1269 .L37 2017 (print) | DDC 346.4104/8—dc23
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
LC record available at https://lccn.loc.gov/2017017562 men to bie vp al, to ingrosse and forstalle, and with their monopolie to kepe the market alone
Typeset by Compuscript Ltd, Shannon 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.
To find out more about our authors and books visit www.hartpublishing.co.uk. Here you will find extracts, chadwyck.com/home) yields only seven publications containing the word ‘monopoly’ and/or
author information, details of forthcoming events and the option to sign up for our newsletters. its variants before 1575. Over the next half century leading up to the Statute of Monopolies,
however, the same search yields 212 results.
xxviii
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 bound-
aries that facilitated the making, or crystallised the ingredients, of an emerg-
ing discipline.2 This volume explores the nature of intellectual property law
and the procedural conditions for its historical existence by looking at par-
ticular disputes. All the cases gathered here aim to show the versatile and
unstable character of a discipline still searching for landmarks. Each contri-
bution 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 param-
eters 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 dec-
ades and jurisdictions. Instead of the decision itself, its shadow is consid-
ered 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 particu-
larly 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 Table of Legislation xxvii
Just as valuable, the historical significance of a case might not necessarily s 15�� 27
correspond to its importance as legal precedent. As some of the chapters in s 16�� 27
this volume explain, the elusive value of a dispute, or the historical rami- s 22�� 44
fications of a case, tend to revolve around how the controversy arose and Merchandise Marks Act 1862�� 320–21, 332–40, 343
s 1�� 338
how its decision is remembered in the discipline. Many contributors con-
s 2�� 334
sider cases that might not have been viewed as significant at the time, and
Merchandise Marks Act 1887�� 342
only later have come to be viewed as salient. Others prefer to reflect on the Misuse of Drugs Act 1971�� 330
status of a case as a landmark, and its concomitant effect in setting legal Patents Act 1883�� 124, 130
principles, in order to discuss the distinctive nature of intellectual property s 5(5)�� 117, 143
law or any of its branches. It is precisely in the interstices between law and s 27�� 142
history that contributors find the value of a particular case. The volume s 44�� 125
consists of 13 contributions exploring distinct cases and elucidating a wide Patents Act 1949�� 242, 244, 305, 312
range of crucial perspectives on intellectual property law. For instance, the s 101�� 231–32
volume begins by revisiting patent litigation to consider the impact of the Patents Act 1977�� 145, 246, 247, 251, 305, 312
Jacobean Statute of Monopolies (1624). The next chapter then looks at s 1(1)�� 296, 306
s 1(1)(b)�� 295
different controversies and recurrent themes to describe how the existence
s 3�� 295
of an author’s right in literary property was a plausible basis for legal argu-
s 5(2)(a)�� 295–96
ment, even though no statute expressly mentioned authors’ rights before s 72(1)(c)�� 296, 305
the Statute of Anne (1710). The collection also explores different moments s 125�� 146
of historical significance that deepen our understanding of the discipline: Patent Law Amendment Act 1852�� 19
the first trade mark injunctions; the difficulties copyright law faced when Patents and Designs Act 1907�� 142, 221–22, 224, 227
protecting maps; and the everlasting confusion around the meaning of origi- Registered Designs Act 1949
nality. Similarly, it looks at the different ways of interpreting patent claims s 35ZA�� 319
in the late nineteenth and twentieth centuries; the impact of seminal cases on Senior Courts Act 1981
passing off and the law of confidentiality; and more generally, the construc- s 60�� 295
tion of intellectual property law and its branches in their interaction with Statute of Anne 1710�� vi, 22–23, 24–25, 27–28, 30–31,
34, 62, 67, 85, 92
new technologies, distributing arrangements and marketing developments.
s 1, 9, 11�� 28
This collection contains contributions from some of the foremost research-
Statute of Monopolies 1624��vi, 1–5, 7, 13–15, 38, 46
ers and academics in intellectual property law. I want to thank them all for s 6�� 231, 244–45
their patience, their suggestions and their insightful contributions. I am also Supreme Court of Judicature Act 1873�� 185
grateful to Paul Mitchell for encouraging me to prepare a proposal for an Theft Act 1968�� 329
edited volume and to Hart for their interest in the manuscript and the care s 1�� 320, 331
they have taken in publishing it. In addition, John Maher, Janet MacMillan Trade Marks Act 1994�� 318
and Cara Levey have provided comments and suggestions; my gratitude s 9, 10�� 322–23
goes to all of them. s 11�� 323
s 11(2)(b)�� 323
Jose Bellido s 92�� 317, 322–23, 326–27, 343
s 92(1)�� 323
University of Kent
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
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 Contents
Act for Uniformity 1549�� 42
Administration of Justice Act 1813�� 103
Animals (Scientific Procedures) Act 1986 Preface�� v
s 24�� 276 Contributors�� ix
Copyright Act 1842�� 174 Table of Cases�� xi
s 2, 18, 19�� 162, 163 Table of Legislation�� xxv
Copyright Act 1911�� 150, 180, 212, 217
s 22�� 205, 224, 225, 227
s 22(1)�� 221, 223–224 1. Mansell v Bunger (1626)�� 1
Copyright Act 1956�� 228
Sean Bottomley
s 10�� 227
Copyright Designs and Patents Act 1988�� 174, 266 2. Stationers v Seymour (1677)�� 21
s 51�� 206–07 H Tomás Gómez-Arostegui
s 107�� 318, 326
s 107(4)(b)�� 318–19 3. Sayer v Moore (1785)�� 59
s 107(4A)(b)�� 319 Isabella Alexander
s 197�� 318 4. Day v Day, Day and Martin (1816)�� 87
s 198(4)(b)�� 319 Lionel Bently
s 198(5)(b)�� 318
Copyright etc and Trade Marks (Offences and Enforcement) Act 2002 5. Nobel’s Explosives Company, Limited, v Anderson (1894)�� 117
s 1�� 319 Seymour Mauskopf
Designs Registration Act 1839�� 340
6. Walter v Lane (1900)�� 149
Engraving Copyright Act 1735�� 62
s 1�� 63 Barbara Lauriat
Engraving Copyright Act 1767�� 62 7. Spalding v Gamage (1915)�� 181
s 1�� 63 Hazel Carty
s 7�� 63
Engravings Act 1777�� 63, 67 8. King Features Syndicate, Inc and Betts v O &
Environmental Information Regulations 2004, SI 2004/3391 M Kleeman Ltd (1940)�� 205
reg 12(5)(e)�� 276 Jose Bellido
Explosives Act 1875�� 123
9. Slee & Harris’s Application (1966)�� 231
Forgery Act 1861�� 335, 337
Freedom of Information Act 2000�� 276 Brad Sherman
s 41�� 265, 275 10. Coco v AN Clark (Engineers) Ltd (1969)�� 253
Hogarth’s Act see Engraving Copyright Act 1735�� 62–63 Tanya Aplin
Human Rights Act 1998�� 265, 271, 282
Intellectual Property Act 2014 11. Biogen v Medeva (1996)�� 289
s 13�� 319 Luke McDonagh
Lectures Copyright Act 1835�� 158, 165, 172
12. R v Johnstone (2003)�� 317
s 5�� 159
Elena Cooper
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
viii Contents
13. Lego Juris A/S v OHIM (2010)�� 345

Alain Pottage
Index�� 373
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
xxiv Table of Cases
X (Mr) and the Department of Transport, Tourism and Sport

[2014] IEIC 090077�� 277
Y Contributors
Yates Circuit Foil Company v Electrofoils Ltd [1976] FSR 345�� 269
Yovatt v Winyard (1820) 1 Jac & W 394, 37 ER 425 (LC)�� 102
Isabella Alexander is Associate Professor in the Faculty of Law at the
Z University of Technology, Sydney, Australia.
Zacharides v Information Commissioner [2011] UKFTT EA/2010/0162�� 275 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 xxiii
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
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
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 v A-G [1997] 2 NZLR 623�� 282

X Health Authority v Y [1988] RPC 379�� 270
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
Table of Cases
Star Industrial v Yap Kwee Kor [1976] FSR 256�� 200, 203
Stationers v Bradford (Ch 1700)�� 51
Stationers v Gadbury (CP 1675)�� 40 A
Stationers v Gayne (CP 1681)�� 41 A v B Plc [2002] EMLR 8�� 271
Stationers v Larkin (CP 1675)�� 40 AB Consolidated Ltd v Europe Strength Food Co Pty Ltd [1978]
Stationers v Marlowe (CP 1680)�� 41 2 NZLR 515�� 282
Stationers v Marshall (KB 1678/9)�� 41 ABK Ltd v Foxwell [2002] EWHC 9 (Ch)�� 268
Stationers v Parker (1685) Skinner 233 (KB)�� 41, 48 A-G v Cape [1976] QB 752�� 266
Stationers v Partridge (Ch & QB 1709–12)�� 48, 51, 54 A-G v Heinemann Publishers Australia Pty Ltd (1989) 75 ALR 353�� 278
Stationers v Kekewicke (CP 1675)�� 40 A-G v Observer Ltd [1990] 1 AC 109�� 264, 266
Stationers v Seymour (1675–77) 1 Mod Rep 256, 3 Keble 792 (CP)�� 21–58 A-G v Rosse (1624) STAC 8/29/9�� 13, 19
Stationers v Wright (Ch & KB 1682/3–1683/4)�� 48 A-G v Wellington Newspapers Ltd (No 2) [1989] 2 FSR 691�� 282
Steel v Moore (Sunday Gazette, 8 March 1789)�� 60, 68, 81, 85 AG Spalding & Bros v AW Gamage Ltd (1915) 32 RPC 273�� 181–204
Stephens v Avery [1988] Ch 449�� 270 AT Poeton v Horton [2000] ICR 1208�� 268
Streater v Roper (HL 1675) �� 44–45, 48 AVB v TDD [2014] EWHC 1442 (QB)�� 275
Streetscape Projects (Australia) Pty Ltd v City of Sydney Abernethy v Hutchinson (1825) 1 Hall & Twells 28�� 158, 160–61, 165
[2013] NSWCA 2�� 278–79 Ajello v Worsley [1898] 1 Ch 274�� 189, 195
Strix Ltd v Otter Controls Ltd (No.1) [1995] RPC 607�� 268 Alexander v Irving Trust Co 132 F Supp 364 (SDNY 1955)�� 85
Sweet v Parsley [1970] AC 132�� 327 American Cyanamid v Ethicon Ltd [1975] AC 396�� 256
Swinton v Claphamson (1765) Public Ledger, 12 July 1765, London Evening Amoskeag Manufacturing Co v LS & R (1849) New York Leg Obs 301�� 94
Post, 13–15 July, 1765, Public Advertiser, 13 July 1765 (KB)�� 87 Anderson v Information Commissioner [2008] UKIT EA/2007/0103 �� 275
Sykes v Sykes (1824) 3 B & C 541, 107 ER 834, The Times, Andrews v Television New Zealand Ltd [2009] 1 NZLR 220 �� 283
10 August 1824�� 112 Anonymous (1406) YB Mich 8 Hen 4, pl 2 (KB)�� 44
Arklow Investments Ltd v Maclean [2000] 1 WLR 594�� 282
T Armstrong Strategic Management and Marketing Pty Ltd v Expense
Tata Consultancy Services Ltd v Sengar [2014] EWHC 2304 (QB), �� 268 Reduction Analysts Group Pty Ltd [2013] 295 ALR 348,
Tchenguiz v Imerman [2010] EWCA Civ 908, [2011] 2 WLR 592�� 273 [2012] NSWCA 430�� 279
Teacher v Levy [1906] 23 RPC 117�� 186, 199 Asahi Kasei Kogyo KK’s Application [1991] RPC 485�� 294, 296, 308
Television New Zealand v Rogers [2008] 2 NZLR 277�� 283 Ashmore v Douglas-Home [1987] FSR 553�� 265
Terrapin Ltd v Builders’ Supply Co (Hayes) Ltd [1960] RPC 128�� 254, 256, Associated Newspapers v HRH Prince of Wales [2006]
263, 284–85 EWCA Civ 1776, [2008] Ch 57 �� 275
Terrien Bros Construction Ltd v Delaurier 2007 BCCA 623�� 280 Atkins v Stationers (1666) Carter 89 (HC)�� 47
Tonson v Collins (1759–61) 1 Bl R 301, 1 Bl R 321 (KB)�� 29–31 Atlantic Giant Powder Co v Dittmar Powder Manufacturing Co
Tonson v Hills (1706) C8/623/33�� 37 (Cct Ct SDNY, 17 September 1881)�� 126
Tonson v Walker (1752) 3 Swanst 672 (Ch)�� 30, 49 Atlantic Giant Powder Co v Parker (1879) Fed Cas No 625,
Torbay Council v Satnam Singh, 2000 FSR 158�� 328 16 Blatchf 281 (US)�� 126
Trade Auxiliary Co v Middlesbrough & District Tradesmen’s Protection Australian Broadcasting Corporation v Lenah Game Meats
Association (1889) 40 Ch Div 25�� 163 Pty Ltd (2001) 208 CLR 199�� 278
Tucker v Kaye (1891) 8 RPC 58�� 131 Aveley/Cybervox Ltd v Boman [1975] FSR 139�� 268
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 B
B v H Bauer Publishing Ltd [2002] EMLR 8�� 271
Bach v Longman (1777) 2 Cowp 263�� 63
xii Table of Cases Table of Cases xxi
Badische Anilin und Soda Fabrik v Levenstein (1885) 3 RPC 73�� 129 S
Benno Jaffe und Darmstaedter Lanolin Fabrik v John Richardson &
Co (Leicester) Ltd (1894) 11 RPC 93�� 135 SI Green (UK) v Information Commissioner [2013] UKUT 473 (AAC)�� 276
Bevan v Columbia Broadcasting Systems Inc 329 F Supp 601 Sabre Inc v International Air Transport Assn (2011)
(SDNY 1971)�� 84 344 DLR (4th) 657�� 280
Biogen Inc v Medeva plc [1993] RPC 475, [1995] RPC 25 (CA), Saltman Engineering Co Ltd v Campbell Engineering Co Ltd
[1996] UKHL 18, [1997] RPC 1 (HL)�� 289–316 (1948) 65 RPC 203 �� 253
Birmingham Sound Reproducers Ltd v Collaro Ltd (1955) 73 RPC 52�� 145 Samuelson v Producers Distributing Co Ltd 1932 1 Ch 201�� 202
Birmingham Vinegar Brewery Co v Powell [1897] AC 710�� 186 Sawkins v Hyperion [2005] EWCA Civ 565�� 149, 173–75, 178
Blackwell v Harper (1740) 2 Atk 93, Barn C 210�� 62 Sayer v Bennet (1784) 1 Cox 107�� 66
Blanchard v Hill (1742) 2 Atk 484, 26 ER 692 (LC)�� 93, 95, 97, 101–02 Sayer v Moore (1785) 1 East 361n�� 59–86
Blofeld v Payne (1833) 4 B & A 410, 110 ER 509 (KB)�� 183, 188, 199 Schering Chemicals Ltd v Falkman Ltd [1982] QB 1�� 263, 269
Bluck v Information Commissioner (2007) 98 BMLR 1, [2008] WTLR 1 �� 275 Seager v Copydex [1967] RPC 349�� 254, 256, 284–85
Bondax Carpets Limited and Others v Advance Carpet Tiles and Searle & Co Ltd v Celltech Ltd [1982] FSR 92�� 263, 268
Another [1993] FSR 162�� 302 Secretary of State for the Home Department v British Union for the Abolition
Bowles v Sayer (1780) C12/16556/12, C33/455�� 64 of Vivisection [2008] EWCA Civ 870, [2009] 1 WLR 636�� 276
Braddyl v Hartley (1698) C9/165/37�� 37 Sectrack NV v Satamatics Ltd [2007] EWHC 3003 (Comm)�� 268
Brewster v Newcombe (1696/7) C5/148/61�� 37 Seeds Processing International v Scales, Gorne v Scales [2002]
Bristol City Council v Information Commissioner [2010] All ER (D) 214�� 269
UKFTT EA/2010/0012�� 276 Segar v King Features Syndicate (1941) 262 App Div 221
British Dynamite Co v Krebs (1899) 13 RPC 190�� 117 (NY App Div)�� 208, 213, 215, 218
British Leyland Motor Corp. v Armstrong Patents Co [1986] AC 577�� 206 Seyedi v Nexen (2016) ABCA 24�� 280
Brooker v Police [2007] 3 NZLR 91�� 283 Seymour v Stationers (PC 1671 & 1676)�� 38–40, 53
Brown v A-G NZAR [2006] 552 (DC) �� 283 Shari-Lea Hitchcock v TCN Channel Nine Pty Ltd (No 2)
Browne v Associated Newspapers Ltd [2007] EWCA Civ 295, [2000] NSWCA 82�� 279
[2008] QB 103�� 275 Sheedy v The Information Commissioner [2005] IESC 35�� 277
Browning v Information Commissioner [2013] UKUT 236 (AAC)�� 275 Shelley Films Ltd v Rex Features Ltd [1994] EMLR 134�� 265, 269
Bullivant v Ellis [1987] ICR 464�� 263, 269 Sherwin v Sayer (1783) The Derby Mercury, 31 July 1783�� 64
Burberrys v JC Cording & Co Ltd (1909) 26 RPC 693�� 196–97, 200–01 Silhouette International v Hartlauer (Case C-355/96)
Burgess v Burgess [1853] 43 ER 90�� 196, 198 [1998] ECR I-4799�� 324
Burrell v Clifford [2016] EWHC 294 (Ch)�� 275 Sim v Heinz [1959] RPC 75�� 202–03
Singer Manufacturing Co v Loog (1882–83) LR 8 App Cas 15�� 183, 185, 187
C Singer Machine Manufacturers v Wilson (1877–8)
LR 3 App Cas 376 �� 181, 183
C v Holland [2012] NZHC 2155 �� 283 Singleton v Bolton (1783) 3 Doug KB 293, 99 ER 661 (KB)�� 87
CA Inquiry [1918] 35 RPC 101�� 192 Skids Programme Management v McNeill [2013] 1 NZLR 1�� 283
CF Partners (UK) LLP v Barclays Bank plc [2014] EWHC 3049 (Ch)�� 270 Slavutych v Baker [1973] 41 DLR (3d) 71�� 280
Cadbury Schweppes Inc v FBI Foods Ltd [2000] FSR 491�� 281 Slee & Harris’s Application (1966) RPC 194�� 230–51
Cadbury Schweppes v Pub Squash [1981] RPC 429�� 182, 203–04 Smith Kline & French Laboratories (Australia) v Secretary to the
Caird v Sime (1887) 12 App Cas 326�� 160–61, 165, Department of Community Services and Health [1990] FCA 151,
168, 172 [1990] FSR 617�� 278–79
Cala Homes Ltd v Alfred McAlpine Homes East Ltd [1995] FSR 818�� 177 Societa Esplosivi Industriali SpA v Ordnance Technologies (UK)
Campbell v Mirror Group Newspapers Ltd [2004] UKHL 22, Ltd [2004] EWHC 48 �� 268
[2004] 2 AC 457�� 265, 270 Sony Corpn of America v Universal City Studios (1984) 464 US 417�� 84
Canham v Jones (1813) 2 Vesey & Beames 218, 35 ER 302 (VC)�� 100–02, 104 Southern v How (1618) Cro Jac 468, 79 ER 400; Poph 143,
Carflow Products (UK) Ltd v Lindwood Securities (Birmingham) 79 ER 1243; 2 Rolle Rep 5, 81 ER 621�� 94, 182
Ltd [1996] FSR 424�� 269 Springhead Spinning Co v Riley [1868] LR Eq 551 �� 184
Cary v Longman & Rees (1801)1 East 358, 102 ER 138�� 59, 81
xx Table of Cases Table of Cases xiii
Portakabin v Primakabin (Case C-558/08) [2010] ECR I-6963�� 318 Catnic Comonents Ltd v Hill & Smith Ltd (1982) 99 RPC 183�� 146
Potter v Commissioner of Inland Revenue (1854) 10 Ex 147, 156 ER 392�� 197 Chicester District Council v Information Commissioner [2011] UKFTT
Potters Ballotini Ltd v Weston Baker [1977] RPC 202�� 263, 269 EA/2010/0153 �� 276
Powell v Birmingham Vinegar Brewery Co [1897] AC 710�� 186 Chiron Corp v Organon Teknika Ltd. (No 3) [1994] FSR 202�� 295, 298, 314
Primary Group (UK) Ltd v Royal Bank of Scotland Plc Chiswell v Lee (1681) C10/209/24 �� 37
[2014] RPC 26�� 268–69 Church of Scientology v Kaufman [1973] RPC 635�� 267
Prince Albert v Strange (1849) 1 Macn & G 25, 64 ER 293 (Ch)��v, 254 Clagget’s Estate, Re (1882) 20 Ch D 637�� 91
Clarke v Adie (1877) LR 2 App Cas 315�� 135
R Clothworkers of Ipswich [1615] Godbolt 254, 78 ER 149�� 6
Cocks v Shout (1814) Lancaster Gazette, 16 July 1814 (Ex)�� 93
R v Adam Ahmed Bhad (1999) Cr App R (s) 139�� 327, 329 Coco v AN Clark (Engineers) Ltd [1969] RPC 41�� 253–88
R v Carter [1993] FSR 303��326-27, 329 Collag Corp v Merck & Co Inc [2003] FSR 16 �� 268
R v Closs (1858) Dearsly & Bell 460, 169 ER 1082�� 333, 336 Collins Co v Brown (1857) 3 K & J 423, 69 ER 1174 (VC)�� 185
R v Department of Health Ex p. Source Informatics Ltd (No 1) Commonwealth v John Fairfax & Sons Ltd (1980) 147 CLR 39�� 277
[2001] QB 424 �� 265, 270 Conor v Angiotech [2008] RPC 28, [2008] UKHL 49�� 315
R v Dundas (1853) Cox Crim Cas 30�� 333, 336 Consorzio del Prosciutto di Parma v Marks & Spencer Plc
R v Gomez [1993] AC 442�� 331 [1991] RPC 351�� 182
R v Hinks [2001] 2 AC 241�� 331–32 Constable v Gamble (1601) 5 Co Rep 106a (QB) �� 44
R v Johnstone [2003] UKHL 28, [2003] 1 WLR 1736, [2002] Convatec Ltd v Smith & Nephew Healthcare Ltd [2011]
EWCA Crim 194, [2003] FSR 56�� 317–44 EWHC 2039 (Pat), [2012] RPC 9�� 117, 147
R v Keane [2001] FSR 7 �� 327–28 Cox v Land & Water Journal Co (1869–70) LR 9 Eq 324�� 162, 168
R v Lambert [2001] UKHL 37�� 327, 330 Cranleigh Precision Engineering Ltd v Bryant [1966]
R v Lawrence [1972] AC 626�� 331 RPC 81 (QB)�� 255–56, 284–85
R v Lester (1975) 73 Cr App R 144�� 329 Cray Valley Ltd v Deltech Europe Ltd [2003] EWHC 728 (Ch)�� 269
R v Rachel McCrudden 2005 EWCA 466�� 328, 331 Creation Records Ltd v NGN Ltd [1997] EMLR 444�� 265, 269
R v S [2002] EWCA Crim 2558, 1 Cr App R 35�� 319, 328–30, 332 Croft v Day (1838) 1 Curt 782, 163 ER 271�� 91, 102, 115
R v Sharman (1854) Dearsly 285, 169 ER 729�� 335 Cruttwell v Lye (1810) 17 Ves Jun 335, 34 ER 129�� 100, 183, 200
R v Smith (John) (1858) Dearsly & Bell 566, 169 ER 1122�� 335
R v Suter & Coulson (1867) 10 Cox Crim Cas 577�� 333, 336 D
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 DBERR v Information Commissioner [2008] UKIT EA/2007/0072 �� 275
RB v Information Commissioner [2015] UKUT 614 (AAC)�� 275 Darcy v Allin (1599) Noy 173, 74 ER 1131 (1601)
RJ Reuter Co. Ltd v Mulhens [1954] Ch 50�� 202–03 11 Co Rep 84b, 77 ER 1260�� 2
Raft Ltd v Freestyle of Newhaven Ltd, Christopher Eric Horsnell, Dastar Corp. v Twentieth Century Fox Film Corp., 539 U.S. 23 (2003)�� 101
Highly Sprung Ltd [2016] EWHC 1711 (IPEC)�� 175 Day and Martin v Binning/Billings (1831) The Times, 22 January 1831,
Ransome v Bentall (1834) 3 Law Journal 161 (Ch)�� 110 CP Coop 489, 47 ER 611 (VC).�� 110
Reddaway (Frank) & Co Ltd v George Banham & Co Ltd Day and Martin v Bowling (John & James) (1817) The Morning
[1896] AC 199�� 116, 185–88, 196–99 Chronicle, 3 November 1817 (LC)�� 88, 109
Richmond Pharmacology Ltd v Chester Overseas Ltd [2014] Day and Martin v Brown (1821) Annual Register (June) 99 (KB)�� 91, 112
EWHC 2692 (Ch)�� 270 Day and Martin v Cockburn (James), Rowland (Joshua), Brewer (John)
Robinson v Sands & McDougall [1917] 23 CLR 49 (HCA)�� 173, 176 (1821) The Times, 26 March 1821; C33/679 (LC)�� 109
Rogers v Hills (1708) C5/342/64�� 37 Day and Martin v Day (James) (1815) C33/614 (VC)�� 105
Rookes v Stationers (PC 1673)�� 40 Day and Martin v Day (Thomas), Day (John) & Martin (Peter) (1816)
Roper v Streater (KB 1672–72)�� 44–45 C33/624, The Morning Post, 17 August 1816, The Times,
Rosemont Enterprises Inc v Random House & John Keats (1966) 19 August 1816, The Morning Chronicle, 17 August 1816,
466 F 2d 303 (2d Cir)�� 84 The Morning Chronicle, 21 August 1816 (LC)�� 87–116
Rotunda Hospital v Information Commissioner [2009] IEHC 315�� 277 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 Table of Cases xix
Day and Martin v Paley (William), Price (Reece) & Gosnell (John) Moorgate Tobacco Co Ltd v Philip Morris Ltd (No 2) (1984) 156 CLR 414�� 279
(1817) C33/633 (LC)�� 109 Morison v Salmon (1841) 2 Manning & Granger 385, 133 ER 795 (CP)�� 111
Day and Martin v Payne (Thomas) (1815) C33/614 (VC)�� 105 Mosley v News Group Newspapers Ltd [2008] EWHC 1777 (QB),
Day and Martin v Shout (Benjamin) (1819) C33/658 (LC)�� 109 [2008] EMLR 20�� 275
Day and Martin v Slee & Statham (1813) The Morning Chronicle, Motley v Downman (1837) 3 My & Cr 1, 40 ER 824, (1837) 6 LJ
9 July 1813, C33/603�� 103 Ch 308 (LC)�� 114
Day and Martin v Turner (Richard) (1815) C33/613�� 105 Multiform Displays v Whitmarley Displays (1956) 74 RPC 143�� 145
Deans Rag Book Company Limited v Pomerantz and Sons (1930) Murray v Yorkshire Fund Managers Ltd [1998] 1 WLR 951�� 265, 268
47 RPC 485�� 217
Del Casale v Artedomus (Aust) Pty Ltd [2007] NSWCA 172�� 278 N
Deloitte & Touche LLP v Dickson [2005] EWHC 721 (Ch)�� 268
De Maudsley v Palumbo [1996] EMLR 460�� 268 National Research Development Corporation v Commissioner of
Dental Manufacturing Co Ltd v C de Trey & Co [1912] 3 KB 76�� 200 Patents (1961) RPC 134�� 242
Derry City Council v Information Commissioner [2006] Native Guano Co v Sewage Manure Co [1891] 8 RPC 125�� 186
UKIT EA/2006/0014�� 275 Newspaper Licensing Agency Ltd v Meltwater Holdings BV [2011]
Desktop Marketing Systems Pty Ltd v Telstra Corpn Ltd EWCA Civ 890, [2012] Bus LR 53BV �� 176
[2002] FCAFC 112�� 84 Nicols v Pitman (1884) 26 Ch D 374�� 160, 165, 167
Doe v Australian Broadcasting Corporation [2007] VCC 281 �� 279 Nobel’s Explosives Co Ltd v Anderson [1894] 11 RPC 115 (Ch),
Donaldson v Becket (1774) 4 Burr 2408, 7 Bro PC 11 RPC 519 (CA), [1895] 12 RPC 164 (HL)�� 117–147
(1st edn) 88 (HL)�� 22, 24, 29, 33–34 Nobel’s Explosives Co v Jones, Scott & Co (1881) 17 Ch D 721�� 126
Douglas v Hello! Ltd [2003] EWHC 786 (Ch), [2003] 3 All ER 996�� 271, 273 Norman Kark Publications Ltd v Odhams Press Ltd [1976] FSR 256�� 203
Douglas v Hello! Ltd sub nom OBG v Allan [2007] UKHL 21, North Western and North Wales Sea Fisheries Committee v Information
[2008] 1 AC 1�� 268, 272–74 Commissioner [2008] UKIT EA/2007/0133�� 275
Douglas v Hello! Ltd (No 3) [2005] EWCA Civ 595, Norton v Atkinson (1774) (CP)�� 87
[2006] QB 125 �� 272, 274
Draper v Trist [1939] 3 All ER 513�� 202 O
Du Boulay v Du Boulay (1869) LR 2 PC 430�� 184 O’Brien v Komesaroff (1982) 150 CLR 310�� 278
Dunford & Elliot Ltd v Johnson & Firth Brown Ltd [1978] FSR 143�� 263, 268 Ocular Sciences Ltd v Aspect Vision Care Ltd (No 2) [1997] RPC 289�� 268–69
Dyson Appliances Ltd v Hoover Ltd [2001] EWCA Civ 1440, O’Hara v Information Commissioner [2011] UKFTT EA/2010/0186�� 275
[2002] ENPR 5, [2002] RPC 22, (2001) 24 (12) IPD 24077�� 117 Olin Mathieson Chemical Corpn v Borex Laboratories Ltd (1970)
87 RPC 157�� 145
E Ontex Resources Ltd v Metalore Resources Ltd (1993) CanLII
East India Co v Evans (1684/5) 1 Vern 305 (Ch)�� 48 8673 (ON CA)�� 280
Echevarria v Warner Bros Pictures 12 F Supp 632 (SD Cal 1935)�� 85 Orr Ewing & Co v Johnston & Co (1880) 13 Ch D 434�� 188
Edelsten v Edelsten (1863) 1 De G J & S 185, 46 ER 72 (LC)�� 182, 184,
198, 200 P
Edge & Sons Ltd v Gallon & Son (1900) 17 RPC 557�� 187–88 Partridge v Menck (1845) 5 NY Ch Ann 572�� 201
Edison Bell Phonograph Corpn v Smith (1894) 11 RPC 389�� 137 Pawlett v Lee (1681) C10/202/96�� 37
Eichel v Marcin 241 F 404 (SDNY, 1913)�� 85 Pawlett v Minshall (1701) C7/272/53�� 37
Eircom Employee Share Ownership Trust and the Department of Pawlett v Smith (1685) C10/218/34�� 37
Finance [2003] IEIC 010367�� 277 Payton & Co Ltd v Snelling, Lampard & Co Ltd [1901] AC 308�� 188
Elanco Products v Mandops (Agrochemical Specialists) [1980] RPC 213�� 92 Perry v Truefitt (1842) 5 Beavan 66, 49 ER 749 (Ch, MR)�� 114–15, 181,
Erven Warnink BV v J Townend & Sons (Advocaat) [1979] AC 731 �� 182 183, 185, 187,
Eugen Seitz AG v KHS Corpoplast GmbH [2015] RPC 11�� 268 198, 200
Eurasian Natural Resources Corp Ltd v Judge [2014] EWHC 3556 (QB)�� 270 Personal Management Solutions Ltd v Blakes Bros Ltd [2014]
Euro-Excellence Inc v Kraft Canada Inc 2007 SCC 37, [2007] 3 SCR 20�� 92 EWHC 3495 (QB), �� 268
Platt v Walker (1867) 17 LT 157�� 162
xviii Table of Cases Table of Cases xv
Levy v Walker (1878) 10 Ch D 436�� 183 Eva-Maria Painer v Standard VerlagsGmbH (Case C-145/10)
Lion Laboratories Ltd v Evans [1985] QB 526�� 263 [2012] ECDR 6�� 149, 175
Longbottom v Shaw (1889) 6 RPC 510�� 138 Express Newspapers v News (UK) [1989] 1 WLR 1320�� 174, 176
Longman v Winchester (1809) 16 Ves Jun 269, 33 ER 897 (LC)�� 98 Exxon Corpn v Exxon Insurance Consultants Ltd [1982] 1 Ch 119�� 174
L’Oreal v Bellure (Case C-487/07) [2009] ECR I-5185�� 318 EXXON/Fuel Oils (Case T-409/01) [1994] EPOR 149�� 299, 311
Louis Vuitton v Google France (Case C-236/08-238/08)
[2010] ECR I-2417�� 318 F
Lucasfilm v Ainsworth [2011] UKSC 39�� 206
Lundbeck A/S v Generics (UK) Ltd [2008] EWCA Civ 311, [2008] Faccenda Chicken Ltd v Fowler [1987] Ch 117 �� 263
RPC 19 aff’d [2009] UKHL 12, [2009] 2 All ER 955�� 290, 311–12 Faesenkleot v Jenkin [2014] NZHC 1637�� 283
Lyle & Scott Ltd v Wolsey Ltd (1954) 71 RPC 395�� 145 Fage UK Ltd & Another v Chobani UK Ltd & Another
[2014] EWCA Civ 5�� 299
M Farina v Silverlock (1855) 1 K & J 509, 69 ER 560 (VC)�� 101
Federal Commissioner of Taxation v Donoghue [2015] FCAFC 183�� 278
M’Andrew v Bassett (1864) 4 De G J & S 380, 46 ER 965 (LC) �� 200 Fish v Kelly (1864) 17 Common Bench Reports 194, 144 ER 78 �� 102, 115
McCann & Ors v The Trustees of the Victory Christian Fellowship Football Dataco v Yahoo (Case C-604/10) [2012] Bus LR 1753�� 149, 175
[2015] IECA 117�� 277 Force India Formula One Team Ltd v 1 Malaysia Racing Team
Macaulay v Shackell (1827) 1 Bli NS 96, 4 ER 809 (HL)�� 184 Sdn Bhd [2012] RPC 29�� 268–69
McGill v Sports and Entertainment Media Group [2014] Foreman v Chambers (2007) 284 DLR (4th) 210�� 280
EWHC 3000 (QB) �� 268 Forensic Telecommunications Services Ltd v Chief Constable of
McKennitt v Ash [2006] EWCA Civ 1714, [2008] QB 73 �� 275 West Yorkshire [2012] FSR 15�� 268–69
Macklin v Richardson (1770) 1 Amb 694 (Ch)�� 158, 161 Francis Day & Hunter Ltd v Twentieth Century Fox Ltd [1940] AC 112 �� 202
Macri v Miskiewicz [1993] CanLII 2385�� 280 Francome v Mirror Group Newspapers Ltd [1984] 1 WLR 892�� 270
Mafart v Television New Zealand Ltd [2006] 3 NZLR 534�� 283 Fraser v Thames TV Ltd [1984] QB 44�� 265
Magnolia Metal Company v Tandem Smelting Syndicate Ltd Futuretronics.com.au Pty Ltd v Graphix Labels Pty Ltd [2009] FCAFC 2�� 278
[1900] 17 RPC 477�� 187–88
Mahon v Post Publications [2007] IESC 15�� 277 G
Malone v Commissioner of Police of the Metropolis (No.2)
[1979] Ch 344 (Ch)�� 270 G v Attorney-General [1994] 1 NZLR 714�� 282
Mansell v Bunger (1626) PC 2/33�� 1–20 Gammon v Attorney General of Hong Kong [1985] AC 1�� 327
Manton v Marshall (1825) The Times, 21 January 1825, GENENTECH I/Polypeptide Expression (Case T-292/85) [1989] EPOR 1�� 311
Morning Chronicle, 21 January 1825 (VC)�� 112 Genentech Inc’s Patent [1989] RPC 147�� 290, 298, 306,
Manton v Mills (1828) The Times, 18 January 1828, Morning Post, 308, 315
18 January 1828, The Morning Chronicle, 18 January 1828 (KB)�� 112 General Electric Co Ltd (USA) v The General Electric Co Ltd
Marshall v Prescott [2015] NSWCA 110�� 278 [1973] RPC 297�� 200
Mars UK Ltd v Teknowledge Ltd [2000] FSR 138�� 268 Generics (UK) Ltd v H Lundbeck A/S [2009] UKHL 12,
Masson Seeley v Embossotype [1924] 41 RPC 160�� 201 [2009] 2 All ER 955�� 290, 311, 313, 315
Matthewson v Stockdale (1806) 12 Ves Jun 270, 33 ER 103 (LC)�� 84, 98 Giller v Procopets [2008] VSCA 236 �� 279
Maxim Nordenfelt Guns, The v Anderson (1897) 14 RPC 371�� 117, 134 Google v Vidal Hall [2015] EWCA Civ 311, [2015] 3 WLR 409�� 273–75
Meredith v Wellington (1701) C7/234/4�� 37 Gottschalk v Benson (1972) 409 U.S. 63�� 237–38, 240, 246
Merrell Dow Pharmaceuticals Inc v H N Norton & Co Ltd Gout v Aleploglplu (also sp. Aleplogpln, Aleploghler and Aleploghlu),
[1996] RPC 76�� 294, 303, 310 (1833), The Times, 16 April, 1833, 5 Leg Obs 495, 1 Chitty’s
Midas Hygiene Industries (P) Ltd v Sudhir Bhatia (2004) General Prac 721 (VC)�� 95, 110
3 SCC 90: 2004 (28) PTC 121 (India SC) �� 206 Gout v Samuel (1832) The Times, 16 July 1832 (VC)�� 110
Millar v Taylor (1769) 4 Burr 2303 (KB)��v, 22, 29–34 Grant v Winnipeg Regional Health Authority 2015 MBCA 44�� 281
Millington v Fox (1838) 3 Myl & Cr 388, 40 ER 956 (LC)�� 114, 183–84, Gribble v Forbes (1800) Oracle and Daily Advertiser, 26 June 1800;
201, 340 Morning Post and Gazeteer, 3 July 1800 (CP)�� 111
Moore v Thomson (1890) 7 RPC 325�� 135 Grosse v Purvis [2003] QDC 151�� 279
xvi Table of Cases Table of Cases xvii
H J
HEFC v Information Commissioner [2010] UKIT EA/2009/0036�� 275 J Bollinger and Others v Costa Brava Wine Co Ltd [1960] Ch 262 �� 203
Haig & Co v Forth Blending Co [1954] SC 35�� 202 JG v Samford (CP, 1584)�� 94
Hall v Barrows (1863) 4 De G J & S 150, 46 ER 873 (LC)�� 184 JN Dairies Ltd v Johal Dairies Ltd [2009] EWHC 1331 (Ch)�� 268–69
Harrods Ltd v R Harrod Ltd [1924] 41 RPC 74�� 201 Jameson v Clarke [1902] 19 RPC 255�� 186
Health Service Executive v Information Commissioner [2008] Jamieson & Co v Jamieson [1898] RPC 169�� 188
IEHC 298, [2009] 1 IR 700�� 277 Jeffreys v Boosey (1854) 4 HLC 962, 10 ER 681 (HL)�� 157
Heather v Moore (Express and Evening Chronicle, 1–3 March 1798)�� 60, 68, John Walker & Sons Ltd v Henry Ost & Co [1970] 1 WLR 917 �� 203
79–81, 83, 85 Johns v Australian Securities Commission [1993] HCA 56,
Henry v Price & Gosnell (1831) The Times, 30 March 1831, (1993) 178 CLR 408�� 278
The Standard, 30 March 1831(VC)�� 110 Jones v Information Commissioner [2012] 2 Info LR 129,
Henry Ford & Sons Ltd, Nissan Ireland and Motor Distributors Ltd UKIT EA/2011/0156�� 276
and The Office of Public Works [1999] IEIC 98049�� 277 Jones v Turner (1825) The Times, 23 August 1825�� 90
Henry Holt & Co v Liggette Myers Tobacco Co 23 F Supp 302
(ED Pa 1938) �� 84 K
Herald and Weekly Times Pty Ltd v Victoria [2006] VSCA 146�� 278
Herringman v Clerke (1681/2) C8/301/33�� 37 Karum Group LLC v Paykel Financial Services [2014] NZLR 412�� 283
Hills v Wright (Ch & KB 1682/3–1683/4)�� 48 King Features Syndicate, Inc v Charles L Bouvé, Register of
Hogg v Kirby (1803) 8 Ves Jun 215, 217, 32 ER 336 (LC)�� 93, 95, 98–101, Copyrights DC, D of C (12-18-1940) 48 USPQ 237 �� 210
107, 111, 200 King Features Syndicate Inc v Rudolph Fleischer et al, 299 F. 533
Hollinsworth v BCTV 1998 CanLII 6527�� 281 (2d Cir. 1924)�� 215, 218, 222, 229
Home Office v Harman [1983] AC 280�� 263, 268 King Features Syndicate Inc v O & M Kleeman Ltd [1940] Ch 806,
Horne v Ivy (1669) 1 Ventr 47 (KB), (1669/70) 1 Sid 441 (KB)�� 48 [1940] 1 Ch 523 (CA), [1940] 1 Ch 806 (HL)�� 205–230
Hosking v Runting [2005] 1 NZLR 1�� 282–83 King’s Printers v University of Oxford (1679/80)�� 38
Human Genome Sciences Inc v Eli Lilly & Co. [2011] UKSC 51, Kirin-Amgen v TKT [2004] UKHL 46, [2005] 1 All ER 667�� 315
[2012] RPC 6�� 313, 315 Kirkbi AG v Ritvik Holdings Inc [2005] 3 SCR 302�� 345–46, 355
Hunt v A [2007] NZCA 332; [2008] 1 NZLR 368�� 283 Kitechnology BV v Unicor GmbH Plastmaschinen [1995] FSR 795�� 272, 274–75
Hutton v Forster (1833) The Times, 25 December 1833 (VC)�� 110 Knott v Morgan (1836) 2 Keen 213, 48 ER 610 (Ch, MR)�� 114
Koninklijke Philips Electronics NV v Remington Consumer
I Products Ltd (Case C-299/99) [2002] ECR I-5475�� 346, 354
CRI v Muller & Co’s Margarine Ltd [1901] AC 217�� 197–200 L

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 Lac Minerals Ltd v International Corona Resources Ltd
Imperial Chemical Industries v Montedison (UK) Ltd [1995] RPC 449�� 117 [1990] FSR 441�� 280–81
Improver Corp. v Remington Consumer Products Ltd [1990] FSR 181�� 302 Lancashire Fires Ltd v SA Lyons & Co Ltd [1996] FSR 629�� 265, 268
Indata Equipment Supplies Ltd (t/a Autofleet) v ACL Ltd [1996] Law Society of Upper Canada v CCH Canadian Ltd [2004]
CLC 957 (QB), [1998] FSR 248 (CA)�� 265, 268 5 LRC 428 (Fed CA)�� 84
Independent Television Publications Ltd v Time Out Ltd & Elliott; British Lazenby (Elizabeth) v Hallett and Hardie (1819) (KB)�� 112
Broadcasting Corpn v Time Out Ltd & Elliott [1984] FSR 64�� 84 Lazenby (Henry) v Wingrave (1829) The Times, 29 July 1829, Morning
Infopaq International v Danske Dagblades Forening (Case C-05/08) Chronicle, 29 July 1829 Morning Post, 29 July 1829 (KB)�� 112
[2009] ECR I-6569�� 149, 175 Leather Cloth Co v American Leather Cloth Co Ltd (1863) 4 De G J & S 137,
Inline Logistics Ltd v UCI Logistics Ltd [2001] EWCA Civ 1613, 46 ER 868 (Ch), [1865] 11 HL Cas 523, 11 ER 1435 (HL)�� 181, 184, 187
[2002] RPC 32, �� 268 Lee v Haley (1869) 5 Ch App 155�� 183
Interlego AG v Tyco Industries Inc [1989] AC 217, [1988] 3 All ER 949�� 355 Lego Juris A/S v OHIM (Case C-48/09P) [2010] ECR I-8403�� 345–71
International News Service v Associated Press 248 US 215 (1918)�� 208 Lego Juris A/S v OHIM (Case T-720/06) [2008] ECR II-3117�� 356
Iron-Ox Remedy Co Ltd v Co-operative Wholesale Society Ltd Lever v Goodwin (1887) 4 RPC 492�� 186
[1907] 24 RPC 425�� 198–99 Lever v Goodwin (1887) 36 Ch D 1�� 187
36 H Tomás Gómez-Arostegui Mansell v Bunger (1626) 5
and school books; the other related to almanacs. As to the first, Charles II the first occasion that the Crown relinquished a significant component of its
granted Seymour ‘full power lycence priviledge and sole authority that itt traditional prerogative rights. For example, in his Constitutional History of
shall and may bee lawfull for him … onely to Imprint vtter and sell or cause England, Henry Hallam argued that during the reign of James I, ‘the com-
to bee imprinted vttered and sould’ certain enumerated books, ‘whereof noe mons had been engaged … in a struggle to restore and to fortify their own
other person cann clayme the direct property by vertue of any Graunt duely and their fellow subjects’ liberties. They had obtained in this period but one
obteyned from us or any of our royall Predecessors’. Some of the works legislative measure of importance, the late declaratory act against monopo-
listed included Erasmi Opera (Works of Erasmus), Plinii Epistolæ (Letters lies’.17 Moving into the twentieth century, the Statute has been variously
of Pliny), Homeri Opera cum Clave (Works of Homer with key), Isocratis described as ‘the first statutory invasion of the prerogative’ and as a critical
Opera (Works of Isocrates), and Janua Linguarum (Door of Languages). moment in the Commons’ ‘winning of the initiative’ in its protracted conflict
The second part granted Seymour the same bundle of rights regarding ‘all with the Crown.18 This triumphalist account of the Statute has never com-
Almanacks and prognostications’ but limited his authority in this respect manded universal assent, though. David Hume, for example, while agreeing
to those ‘whose Originalls the said John Semour … cann purchase and that the passing of the Statute ‘was gaining a great point, and establishing
obteyne from the respective Authors thereof dureing the said Terme’. The principles very favourable to liberty’, argued that James I had assented to its
word ‘Originalls’ is ambiguous. Counsel for the Company later treated it as passing, and had actively supported the earlier Bill in 1621.19 In the mod-
synonymous with the word ‘copies’, itself an ambiguous term which at the ern historiography, Conrad Russell has also argued that the Statute passed
time could mean intangible rights in a work, physical copies of a work, or with the active support of James I and Prince Charles. James was reportedly
both depending on the context in which it was used. Counsel also appeared anxious for the Bill to pass in 1621 and 1624 as a means of sparing him the
to interpret ‘Originalls’ to refer to ‘new’ almanacs and prognostications.61 wheedling and begging of courtiers for special dispensations and monopo-
The difference between the two grants is remarkable. The language of lies. In one speech to the House of Lords in 1621, cited by Russell, James
the patent, which had been examined and approved by Heneage Finch, the complained that suitors for patents ‘have been so troublesome to me that
Solicitor General,62 is an indication that the drafter believed that authors neither myself nor those about me could rest in their beds quiet for projec-
held a right to exclude. Whereas the first grant treats the books as derelict, tors, as the great back gallery, if it had a voice, could tell’.20 Other historians
which the Crown could grant alone,63 the second expressly depends on the though, have suggested that James’s self-interest was piqued by other motives.
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
17 H Hallam, The Constitutional History of England, vol 1, 2nd edn (London, John Murray,
almanac grant subject to, and limited by, prior patent grants:
1829) 509.
18 C Mcllwain (writing in 1940) and Wallace Notestein (1924) quoted in C Kyle, ‘“But a
[P]rovided allwayes that if the lycense or priviledge of printing of any of the said
New Button to an Old Coat”: The Enactment of the Statute of Monopolies, 21 James I cap 3’
severall Bookes bee allready by vs or any of our Predecessors graunted to any of
(1998) 19 Journal of Legal History, 203–04.
our Subiects[,] and the Graunts thereof still in being[,] Our will and pleasure is 19 D Hume, The History of Great Britain under the House of Stuart, Volume I containing
and wee doe by theise presents … give and graunt vnto the said John Seymour … 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
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 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
aforesaid from and after the Expiration surrender or other sooner determination can tell you’. But it was not the monopolies themselves that so irked the King, but the conduct
of every such respective Graunt or Graunts[.] 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
61 See text to nn 66–68 below. my Privy Counsell, for Sir Edward Villiers that is Master of my Mint came and tould me that
62 See King’s Bill, SO7/24 (6 October 1669); Signet Office Docquet, SO3/16, p 270 this allwance of makinge gould and silver thread did hurt the Bullion’. He also chided Coke:
(October 1669). ‘For though Sir Edward Coke be very busie and be called the father of the Law and the Com-
63 cf Case and Opinion, Henry Trinder, SCA Court Book E, ff 123r, 123v (29 May 1681) mons’ howse have divers Yonge lawyers in it, yet all is not law that they say … I hope in his
(‘I conceive … that … [certain] Latin Coppies [in a grant to the Company] being (as I take them) vouching presidents to compare my actions to usurpers or tyrants tymes you will punish him’.
such as none had particular property in, are at the Kings dispos[al] … by that part of his pre- The speech appears in Lady De Villiers (ed), The Hastings Journal of the Parliament of 1621
rogative which intitles him to strayes[,] treasure trove &c because the property is in no other’.). (London, Royal Historical Society, 1953) 26–31.
6 Sean Bottomley Stationers v Seymour (1677) 35
Tim Harris argues that the Statute was an essentially political concession, historians. The printed reports are to blame; one makes no mention of
used by James to obtain what he really wanted: funds for a potential war Seymour’s patent, and the other only alludes to it.
with Spain.21 Even then, the Lords were reportedly only induced to give the Relatively little is known of Seymour. The son of staunch Royalist Sir
Bill its third reading after being cajoled by Prince Charles.22 There is, how- Edward Seymour, 2nd Baronet, and brother of Henry and Sir Joseph
ever, hardly any work on the legal history of patents and monopolies in the Seymour,58 he was not trained in the book trade, but instead received his pat-
immediate aftermath of the Statute. One of the arguments in this chapter is ent as a reward for service rendered to Charles II during the I nterregnum and
that the true intent of James and Charles in assisting with the passage of the Restoration. According to the patent, Seymour had ‘by our speciall Com-
Statute is revealed by their subsequent actions. mand and for our service made severall Journyes and voyages beyond the
Secondly, the Act is conventionally regarded as the legislative foundation seas all which hee hath performed with great fidelity diligence and successe’.
of the English patent system, and, by extension, arguably the ‘landmark’ Such was the closeness of Seymour’s family to the Stuarts that his brother
in the history of British Intellectual Property Rights. Some economic his- Henry had delivered the last messages between Charles I and Charles II
torians, particularly new institutional economists, have suggested that the before the former’s execution in January 1648/9.59 As a further reward for
Statute, by establishing patents for invention in the common law, guaranteed his loyalty, Charles II also appointed Seymour, along with his brother Henry,
the intellectual property rights of inventors. This, argued Douglass North as Comptroller of Customs for the Port of London for life, and granted him
(recipient of the 1993 Nobel prize in Economics), gave England a compara- a reversion, alongside his nephew Hugh, as Under-Searcher for the Port of
tive advantage in the development of technology, which ultimately contrib- London. Seymour even served as a Gentleman of the King’s Privy Chamber.60
uted to the industrial revolution,23 and this is a view that remains current in Not being a printer, Seymour simply partnered with others who were. But
this literature.24 Historians of the patent system, though, are more measured his decision to enter a trade so far outside his domain remains a mystery.
in their assessment of the Statute and there is general agreement that the One can only imagine it had something to do with the lucrative market for
content of the Statute was declaratory of the common law of patents and the books mentioned in his grant, although I doubt Seymour anticipated the
monopolies as it stood at that time—although there was some disagreement fight ahead.
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 inven- A. The 1669 Patent
tions ought to be excluded from the general prohibition on monopolies.26
What is certain though, is that the Statute gave expression to the growing Seymour’s patent (which is transcribed in the Annex at the end of this chap-
determination to reaffirm the common law vis-à-vis the royal prerogative ter) ran for 41 years from 7 October 1669 and contained two grants: one
related to certain ancient Classics, early modern Latin and Greek works,
21 T Harris, Rebellion, Britain’s First Stuart Kings (Oxford, Oxford University Press,
SP44/16, p 298 (21 December 1664). Seymour acquiesced to the objection. See, eg, SCA Court
2014) 220. Book D, f 118r (2 April 1666), f 119v (8 June 1666). Soon after, the Company secured its own
22 Russell, Parliaments and English Politics (n 16) 191.
23 D North, The Rise of the Western World: A New Economic History (Cambridge, 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
Cambridge University Press, 1973) 154. 1666). See also text to n 159.
24 Most notably, D Acemoğlu and J Robinson, Why Nations Fail: The Origins of Power,
Prosperity and Poverty (London, Profile Books, 2013) 32. 58 See [T Wotton], The English Baronetage (London, 1741) vol 1, 103–08; A Collins, The
25 MacLeod, Inventing the Industrial Revolution (1988) 17–18; S Bottomley, The British Peerage of England, 5th edn (London, 1779) vol 1, 174 (erroneously suggesting that John
Patent System During the Industrial Revolution (Cambridge, Cambridge University Press, Seymour had died at a very young age); Will of John Seymour, PROB11/359, f 87v (will
2014), 102. 20 July 1678; probate 21 January 1678/9); Will of Henry Seymour, PROB11/387, f 181v (will
26 Even though when Coke had been Chief Justice of the King’s Bench, he had recognised 21 July 1685; probate 3 May 1687); Will of Sir Joseph Seymour, PROB11/445, f 139r (will 4 May
that while monopolies were unlawful (‘for that is to take away Free-trade, which is the birth- 1687; probate 5 April 1698).
right of every Subject’), ‘if a man hath brought in a new Invention and a new Trade within the 59 [A Wood], Athenæ Oxonienses (London, 1692) vol 2, 523.
Kingdom, in peril of his life, and consumption of his estate or stock or if a man hath made a 60 Patent of Henry and John Seymour for Comptroller of Customs for the Port of London,
new Discovery of any thing, In such cases the King of his grace and favour, in recompense of C66/3038, no 22 (18 August 1663); Patent of John and Hugh Seymour for Office of Under-
his costs and travail, may grant by Charter unto him, That only he shall use such a Trade or Searcher for the Port of London, C66/3088, no 5 (16 October 1667); Petition of John Seymor,
Trafique for a certain time, because at first the people of the Kingdom are ignorant, and have SP29/368, f 252 (c 1674) (noting that Captain Hugh Seymour, his nephew, had died in the
not the knowledge or skill to use it’. The Clothworkers of Ipswich [1615] Godbolt 254, 78 Dutch naval wars); E Chamberlayne, Angliæ Notitia, 8th edn (Savoy, 1674) 182 (noting his
ER 149 (KB). place in the Privy Chamber).
appealed to the House of Lords, which reversed, thus ending perpetual and to define their respective boundaries. The second purpose of this c hapter
copyrights in published works.53 is to assess whether the Statute succeeded in this aim. Did the common law
The details of that complicated proceeding are beyond the scope of this prevent James and Charles from awarding and maintaining monopolies?
chapter, and unfortunately the reports of the case are often only short To this end, the chapter examines the story of one of the most important
approximations of what was said. But it appears that counsel and judges patents awarded during this period, a patent for glass manufacture held by
on both sides of the issue recycled many arguments from Millar.54 Lord Sir Robert Mansell, and the source of the dispute for the first ‘test’ case
Camden, who most vocally opposed the common-law right, made certain heard after the Statute of Monopolies—Mansell v Bunger in 1626.
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 II. ROBERT MANSELL AND THE PATENT FOR GLASS
King’s…. Away with such trifling!’55
Ultimately, the House of Lords ruled that published works were subject The development of English glass-making in this period has been well cov-
to the durational limits of the Statute of Anne. The decision did not deter- ered by Eleanor Godfrey and David Crossley, and this section draws heav-
mine the origin of copyright in England, but a majority of the judges who ily on their work. Although there is some limited evidence for medieval
advised the House on the issue—and even a majority of the judges and glass manufacture in England, the story really begins in 1567 when Lord
speaking Lords combined—opined or allowed that an antecedent right did Burghley awarded a patent for the manufacture of window glass to Anthony
exist. Thus, it was common for observers in the late eighteenth century and Becku and Jean Carré (‘born in the Low Countries under the dominion of
beyond to read Donaldson, sometimes in combination with Millar, as pre- the King of Spain’).27 To help establish their enterprise, they arranged for
dominating in favour of an antecedent right in literary works, both before the emigration of two Frenchmen, Pierre and Jean de Bongard (soon angli-
and after first publication.56 cised to Peter and John Bunger), who, unfortunately, did not prove to be
It is now time to look more closely at Seymour. 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
IV. STATIONERS v SEYMOUR REVISITED 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
The dispute between the Company of Stationers and Captain John Seymour break this monopoly. It was also recognised that a method of glass manu-
arose because Charles II had granted Seymour his own patent in 1669 for print- facture that replaced timber with coal would yield a significant saving in fuel
ing almanacs and certain works of Classical and instructional literature.57 costs—although there were significant technical problems to be overcome.
That Seymour held his own patent is a fact often overlooked by copyright 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
53 Donaldson v Becket (1774) 34 Lords Journal 32 (HL). could produce high enough temperatures for the coal to burn and melt the
54 See, eg, F Hargrave, An Argument in Defence of Literary Property (London, 1774) 50 glass, while also drawing away the coal smoke.
(‘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
The first patent for making glass with coal was awarded in 1610 to
(HL) iii (‘[T]he Reasons … on which Authors claim an Interest in their own private Copies, Sir William Slingsby, and a document in the Bodleian gives the reasons for
are not precisely the same as those from which the Interest of the Crown in Public Copies is the grant. In particular, it was hoped that encouraging Slingsby would lead
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
to the ‘preservation of wood, whereof there is great famine’ and that ‘a great
Foundation of Prerogative Copies.’). number of poor countrymen can be set at work … where now strangers only
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. 27 Calendar of the Patent Rolls, 1566–1569, 146.
57 Patent of John Seymour for Classics, School Books and Almanacs, C66/3111, no 14bis 28 E Godfrey, The Development of English Glassmaking, 1560–1640 (Oxford, Clarendon
(7 October 1669). An earlier attempt to grant him a similar patent failed due to a caveat objec- Press, 1975) 20.
tion lodged by members of the Company after the grant had passed the Privy Seal. See King’s 29 ibid 24.
Bill, SO7/14 (15 October 1664); Privy Seal Docquet, PSO5/10 (October 1664); Prohibition, 30 ibid 148.
are employed’.31 This was also, however, a bona fide patent for invention, of Property in the Crown or a Patentee from the Crown, is just the same ….
and it was hoped that the patent would result in ‘other men encouraged [T]he English Translation [of the Bible] he bought : Therefore it has been concluded
to exert their wit for new inventions’. Slingsby’s furnace, though, does not to be his Property…. The King has no Power or Control over the Subject-Matter :
appear to have worked, and another coal furnace was patented by several His Power rests in Property. His whole Right rests upon the Foundation of Prop-
erty in the Copy by the Common Law…. Whatever the Common Law says of
courtiers the following year, including Thomas Mefflyn, the King’s Glazier,
Property in the King’s Case, from Analogy to the Case of Authors, must hold
and Thomas Percival, to whom the actual invention has been accredited.32
conclusively, in my Apprehension, with regard to Authors.46
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 Discussing Seymour, Lord Mansfield noted that the Company’s counsel in
other patents relating to glass manufacture, and the Privy Council also 1677 had seen the necessity of analogising the Crown’s right to property.47
noted that their works may have been sabotaged in 1613, of which ‘Isaac Justice Aston and Lord Mansfield ultimately rejected the notion that
Bunger is vehemently to be suspected’.33 derelict works passed to the Crown—the works would instead become
This probably explains why the patentees took on five new partners in ‘common’—but they still saw support for authorial copyright in the premise
1615, attempting to shore up their financial position with an infusion of that underlay it.48
new capital, and also their political position. Among the new partners were Justice Yates, dissenting, distinguished Seymour, suggesting that the deci-
Philip, Earl of Montgomery, and Sir Thomas Howard, both well-connected sion rested solely on notions of public concern and safety rather than autho-
courtiers in favour with the King. Another new partner was Sir Robert rial property:
Mansell, who soon bought out the other patentees to become sole proprie- The King’s Right to … [almanacs] is, as Head of the Church, and of the politi-
tor of the patent. Mansell was in some respects a rather strange figure to cal Constitution.… Upon the whole of this Prerogative Claim of the Crown, it
have become a pioneer of coal-based glass manufacture. Born in 1570/1, appears to me, that the Right of the Crown to the sole and exclusive printing of
he had entered naval service in his youth, serving as a privateer in 1590 what is called Prerogative Copies, is founded on Reasons of Religion or of State.
and at the raid of Cadiz in 1596. He later served as an Admiral of the The only Consequences to which they tend are of a national and public Concern,
Narrow Seas, a position in which he achieved some personal distinction. respecting the established Religion, or Government of the Kingdom ; and have no
James I also thought it strange, wondering aloud why ‘Robin Mansell being Analogy to the Case of private Authors.49
a Seaman, whereby he hath got so much Honour, should fall from Water He stressed that the Crown’s property differed from what was now being
to tamper with Fire, which are two contrary Elements’.34 However, as a claimed for authors. ‘[T]he King does not derive this Right from Labour, or
protégé of Lord Nottingham, (to whom James I was indebted for the ease of Composition, or any one Circumstance attending the Case of Authors’.50
his succession), Mansell had been appointed Treasurer of the Navy in 1604. He also disputed the ramification of the Crown purchasing some of the
Here, he revealed considerable financial acumen, as well as a near boundless 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
31 ‘Motives to make glass by sea coal’, 1610. North MSS. a.2, f 145. Bodleian Library, on literary property in England. First filed in the Court of Chancery in 1771,
Oxford. The document also discussed potential objections to the grant. In particular, it was Thomas Becket and others sued Alexander and John Donaldson for infring-
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 ing The Seasons—the same work that was at issue in Millar. The Donaldsons
these glassmakers being foreigners … they did undertake to instruct our people in that art or countered that the work had fallen into the public domain. At the hear-
mystery and did not, yet we will be contented to set them as work’. ing, Lord Chancellor Apsley perpetually enjoined the defendants and
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 Glass- ordered them to disgorge any profits they had earned.52 The Donaldsons
making (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 46 ibid 2401, 2405; see also ibid 2396, 2401–05.
direct record of the action survives and there is only passing reference made to it in another 47 ibid 2402.
Exchequer case. ‘John Holloway, of London, Humphrey Holloway, of London. v. William 48 ibid 2347 (Aston J); ibid 2402 (Lord Mansfield).
Robson, of London’, 1618–19. King’s Remembrancer: Depositions, E134/16Jas1/East2, ff1–2. 49 ibid 2382–83.
National Archives, London. 50 ibid 2383–84.
34 J Howard, Epistolæ Ho-Elianæ: Familiar Letters Domestick and Foreign (London, 51 ibid 2384.
Humphrey Mosley, 1645) s 2, 6. 52 Becket v Donaldson (1772) C33/439, ff 26r–27r.
case for the King’s Bench to determine whether Millar could hold a copy- capacity for avarice. Mansell, for example, used Navy ships for his own pri-
right.39 The case then moved to the King’s Bench where, in 1769,40 the court vate trading concerns. Another wheeze was for Mansell to under-supply the
endorsed a copyright based on property, natural justice and reason. The Navy with overpriced goods and to pocket the difference. Least a ppealingly,
majority, which consisted of Chief Justice Mansfield and Justices Willes and requests by injured and crippled seamen for relief from the Chatham Chest,
Aston, held that authors of literary works and their assigns had a right at a charitable fund founded by Lord Effingham, would prompt Mansell to fall
common law to control the first publication and any subsequent multiplica- ‘presently into raging passions and pangs’ of anger.35 Of course, M ansell’s
tion of their works. This right existed independent of the Statute of Anne corruption hardly distinguished him from other Navy administrators of the
and survived it.41 The lone dissenter, Justice Yates, concurred that authors time, but the vigour with which he pursued the opportunities for malfea-
had a common-law right to control the first publication of a work, but he sance probably did. A 1608 Navy Commission found that ‘Mansell alone
recoiled at the idea that they could control multiplication afterward. As far had made £12,000 from naval stores and embezzled £1,000 in wages in
as he was concerned, the statute created the right in published works.42 a single year’. But all this happened with the cognizance of James I, and
Here, too, Seymour and cases like it were the subject of discussion, with Mansell stayed on as Treasurer until 1618.
all the judges in the majority relying on them. Justice Willes recognised In itself, his newly acquired patent was a bona fide one for a new inven-
that Seymour was decided at a time when the prerogative ran high, but it tion, a glass furnace that could use coal instead of wood. Mansell, however,
still proved that ‘Copy-Right was at that Time a well-known Claim’.43 He was able to secure in 1615 a de facto monopoly of all glass manufacture
noted that a copyright, stemming from employment of or purchase from the by obtaining a proclamation from the King forbidding the use of wood for
author, supported some patents, while others were based on a more general glass manufacture.36 Ostensibly, the proclamation was issued to preserve
right of property which he nevertheless thought was analogous to the rights timber supplies for the Navy, although the total wood consumption of the
of authors: glass industry was modest. By one estimate, the entire Wealden glass indus-
It is settled, then, ‘that the King is Owner of the Copies of all Books or Writings
try (the main centre of English glass-making) would have required a maxi-
which he had the sole Right originally to publish ; as Acts of Parliament, Orders mum of just over 5,000 acres of low-yielding coppice to sustainably fuel
of Council, Proclamations, the Common-Prayer Book.’ These and such like are itself in 1600.37 The true purpose of the proclamation was alluded to later in
his own Works, as he represents the State. So likewise, where by Purchase he had the text, where it referred to the ‘encouragement which we are accustomed
the Right originally to publish …. And in these last Cases the Property of the to give to new and profitable inventions, as the civility of the times may be
Crown stands exactly on the same Footing as Private Copy-Right : As to the Year- maintained’—in other words, to provide additional protection for Mansell.
Books, because the Crown was at the Expence of taking the Notes ; and as to the This also explains why the proclamation prohibited the importation of glass
Latin Grammar, because it paid for the Compiling and Publishing it.44 as well. The proclamation was acted upon, providing Mansell with a work-
Justice Aston also looked to Seymour and stated that the idea of an author’s ing and enforceable monopoly. In 1618, for example, two g lass-makers
property was ‘strongly supported by the concurrent Sense of Judges, to be were arrested for infringing the monopoly (using wood rather than coal),
collected from the Expressions they have made Use of in Cases at Common and were only released once they entered bonds guaranteeing good behav-
Law’.45 iour in the future.38
Chief Justice Mansfield adopted the arguments of his colleagues and made
a few observations of his own regarding the patent cases: 35 ‘Considerations of the present state of the Navy’ by Sir Robert Cotton, c 1608. Egerton
MSS 2975, f 47. British Library.

Crown-Copies are, as in the Case of an Author, civil Property : which is deduced, as 36 ‘Proclamation for making glass with sea coal and pit coal only’, May 23 1615. State
in the Case of an Author, from the King’s Right of Original Publication. The Kind 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
39 Millar v Taylor (1765) C33/426, ff 68v–69r; see also (1766) C33/426, f 325r (modifying day after a messenger took away Jacob Henze, my chief workman, who hath been and still is
order on rehearing to require Millar to file an action at law rather than state a case for the employed in your works at Wollerton … we are now in despair to recover our loss’. ‘Petition of
judges). Sir Walter Bagot to Sir Robert Mansell’ in J Thirsk and JP Cooper (eds), Seventeenth-Century
40 Millar v Taylor (20 April 1769, nunc pro tunc 7 June 1768, judg) KB122/338, rot 372. Economic Documents (Oxford, Clarendon Press, 1972) 205.
41 4 Burr 2312–14, 2334–35 (Willes J); ibid 2354 (Aston J); ibid 2395–99 (Lord Mansfield). 37 By contrast, the Wealden iron industry would have needed 200,000 to 250,000 acres
42 ibid 2355–56, 2378–79. of coppiced woodland. D Crossley, ‘The Archaeology of the Coal-Fuelled Glass Industry in
43 ibid 2317. England’ (2003) 1 The Archaeological Journal 160, 164.
44 ibid 2329; see also ibid 2315–17, 2328–29, 2332. 38 ‘Letter from Sir Robert Mansell to Sir George Calvert, Clerk of the Council’, 4 May 1618.
45 ibid 2347. State Papers Domestic James I, 14/97, f 145. National Archives, London.
Even with his monopoly, however, Mansell faced problems on two fronts. Seymour also featured in Tonson v Collins, a case argued twice in the Court
First of all, technical issues with using coal still remained. Mansell struggled of King’s Bench in 1761 but ultimately not determined. The plaintiffs claimed
for several years to find a suitable location for his glass-works, moving them to have inherited the copyrights in The Spectator, a periodical that ran ini-
from the Isle of Purbeck, to Milford Haven, to Nottinghamshire and then tially from 1711 to 1712. By the time the defendant had begun to produce
finally up to Newcastle. It was here, finally, that the use of coal in glass- unlicensed copies, the statutory copyrights had expired and an action could
making became a technical and commercial success. In particular, coal at proceed only on a copyright at common law.35 The case was tried by a jury
Newcastle was cheap and there was a well-established sea-borne trade to and a special verdict found. The jury determined that the Tonsons held the
London, the main market for Mansell’s glass (it was also possible to sup- copyrights in the work and that the defendant had sold unauthorised copies,
ply coastal towns in the east, such as Lynn and Norwich). Elsewhere in the but they left it to the judges to determine whether the facts as found truly
country, licences were sold to window glass-makers to use coal—but on the contravened the common law. During the first argument, counsel for the
condition that they did not sell their glass in London.39 Mansell also enjoyed plaintiffs cited Seymour, arguing among other things that the Crown could
early success in manufacturing looking glasses and crystal glass, drawing grant printing patents in works either compiled at its own expense or where
comparison to Murano glass from the Venetian ambassador in 1620.40 the owner was not known. In the latter instance the works became derelict
Second, Mansell had to deal with the intransigent opposition of Isaac property that fell to the Crown to administer.36 When the case was reargued
Bunger and his various associates. This again took the form of sabotage, the following term, William Blackstone, counsel for the plaintiffs, also relied
Bunger being suspected of various ‘devices to spoile the glasse’ at Newcastle on Seymour:
(for want of alternatives, Mansell was obliged to employ some of Bunger’s
I shall now go on to lay before the Court the several Cases at Law, which clearly
kinsmen).41 It also took the form of outright violation of the monopoly, shew, that when any laws relating to the prerogative of printing was brought
which resulted in Bunger’s imprisonment.42 Bunger’s opportunity to seri- before the Court it was principally argued & determined upon the foot of a prop-
ously threaten Mansell’s patent arrived in the Parliament of 1621. When erty in the Copy, supposed to be existing in the Crown .… [In Seymour,] [t]he
Parliament met, the economy was in the midst of a serious economic down- Court grounded its judgment upon the Fact of the Copy rights existing before,
turn and, true to form, monopolies were blamed and roundly attacked.43 First they say These Almanacks having no certain Author they belong to the
Mansell’s patent was especially vulnerable, partly because he was abroad Crown as Derelicts, Secondly because they are part of the Liturgy [ie Book of
on naval duties but also because the Venetian ambassador was anxious to Common Prayer] videlicet the Calendar[.]37
forestall competition from English glass-makers and to stymie developments Ultimately, Collins was never determined in the King’s Bench due to sus-
picions 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
39 D Crossley, ‘Sir William Clavell’s Glasshouse at Kimmeridge, Dorset: The Excavations of
was later abandoned when the suspicions were confirmed. Nevertheless, a
1980–81’ (1987) 144 The Archaeological Journal 348. contemporary source indicates that all the judges of the King’s Bench, at
40 In a report to the Doge in 1620, the Ambassador noted that the ‘crystal attaine a beauty least, were inclined to rule in favour of a copyright at common law in pub-
not sensibly inferior, but of quite equal quality to that of Murano, which used once to have lished works.38
the pre-eminence and was the pride of all the world’. Quoted in Godfrey, English Glassmaking
(n 28) 82. It did not take long for common-law copyright to rear its head again, but
41 As reported by Sir George More in W Notestein, FH Relf and H Simpson (eds), Commons this time copyright holders finally obtained their judgment. In 1763,
Debates 1621, Volume 3 ‘The Notes of Sir Thomas Barrington of the House of Commones’ Andrew Millar sued Robert Taylor in the Court of Chancery for infringing
(New Haven, Yale University Press, 1934) 256.
42 And even in prison, Bunger resisted Mansell’s overtures. Elizabeth (Mansell’s wife) a series of poems by James Thomson collectively called The Seasons. Taylor
offered him his release, if ‘he will be conformable to his Majesty’s patent and proclamations parried that the statutory copyrights had expired. Sitting by designation,
for the glass business nor be a malicious disturber of Sir Robert Mansell’s works or contracts Baron Smythe of the Court of Exchequer ordered the parties to state a
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. 35 Tonson v Collins (Trin 1759 bill) KB122/299, rot 79.
43 Although it is now thought that the ultimate cause of the depression may have been a
36 Tonson v Collins (1761) 1 Bl R 301 (KB) 304–05 (Wedderburn arg).
currency devaluation in the Baltic, prompting an outflow of English specie. Harris, Rebellion 37 Tonson v Collins (1761) BL Add MS 36201, ff 53, 63, 64–65 (KB); see also Tonson
(n 21) 196. 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).
Seymour appeared early on in Tonson v Walker, the first suit in a printed in the industry.44 It also seems that Mansell’s patent attracted particular
law report30 to squarely address common-law rights. The plaintiffs claimed controversy, even in the midst of the general attack on monopolies: the
to own the copyright in John Milton’s Paradise Lost, a book first pub- Member for Dunwich, Clement Coke, was briefly imprisoned in the Tower
lished in 1667. The plaintiffs’ edition of 1749 was newly annotated with for striking a fellow Member after a heated discussion concerning the
marginal notes by Thomas Newton. Robert Walker and his co-defendant patent.45
John Marchant, who had recently edited his own version of Paradise It was Clement’s father, Sir Edward Coke, who was the main force push-
Lost, answered that Milton’s book was in the public domain and that, ing for the revocation of Mansell’s patent. In committee, he observed that
although they had also taken from Newton’s notes, what they took consti- ‘Three things need to be proved for the patent to be maintained: that it is a
tuted a fair abridgment. On a motion for an injunction until the hearing,31 new invention, that the glass is as good cheape. That the glass is as good as
William Murray (the Solicitor General for England) made two principal before’.46 Coke appears to have made up his mind even before counsel were
arguments: first, a common-law right in published works predated the heard, stating on 7 May that:
Statute of Anne, and, second, the statute did not pre-empt the right but
This is no new invention, for in Stafford and Herefordshire glass was before made
simply augmented the remedies. In support of the first proposition, Murray with seacoale and Pitt Coale before this And whosoever will have the making of
relied in part on Seymour: ‘There[,] [counsel] argued from the principle thing heeaer and prohibit all importation of the like, they must make it as well
of property in the author, and it was admitted on the other side; and the conditioned, sized, and as good cheape as the other. But all this yow faule in.47
Court said that almanacks might belong to the crown, because there was
This was a striking volte-face from Coke’s earlier support for the glass pat-
no particular author’.32
ent in 1614, when he had intervened personally in the dispute between
Lord Hardwicke granted the injunction on two grounds: the Statute of
Mansell’s predecessors and Robson, as well as redrafting the patent to
Anne and the common law. First, the defendants’ book incorporated text—
include all types of glass.48
Newton’s notes—that was within the statutory period. But he also prohib-
Counsel was heard later on the same day, and again a week later
ited the defendants from printing Milton’s Paradise Lost alone.33 To be sure,
Lord Hardwicke expressed some doubts about whether a common-law right (14 May). Elizabeth Mansell (Sir Robert’s wife), was able to marshal an
existed and persisted in the underlying work, but he thought the argument impressive body of evidence for the maintenance of the patent. In particu-
reasonable enough to enjoin Paradise Lost in the disjunctive. In this respect, lar, the London Glaziers and the London Spectacle-Makers both supported
Mansell’s patent, probably for two reasons. One, Isaac Bunger had already
it appears that he did so in large part because of Seymour:
demonstrated his (lack of) good intentions before Mansell had secured his
The strongest thing is, what is said by the judges in Seymour’s case, arguing on patent. In connection with his compatriots and Lionel Bennett, a London
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 44 Russell, Parliaments and English Politics (n 16) 62. The Venetian Ambassador also tried
cases are used as tending to prove a general right in the author.34 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
30 Tonson v Walker (1752) 3 Swanst 672 (Ch) (albeit not printed until 1827). Affairs existing in the archives and collections of Venice, Vol. XVII, 1621–23 (London, HMSO,
31 A ‘hearing’ in the Court of Chancery was its equivalent of a trial. For more on Chancery 1911) 309.
45 Notestein et al, Notes of Sir Thomas Barrington (n 41) 204, 215–19.
procedure in infringement suits, see HT Gómez-Arostegui, ‘Equitable Infringement Remedies 46 W Notestein, FH Relf and H Simpson (eds), Commons Debates 1621, Volume 5 ‘The
before 1800’ in Alexander and Gómez-Arostegui, Research Handbook (n 1) 195.
32 3 Swanst 673. Belasyse Diary’ (New Haven, Yale University Press, 1934) 122.
47 Notestein et al, Notes of Sir Thomas Barrington (n 41) 195.
33 Tonson v Walker (1752) C33/398, f 322r; see also Tonson v Walker (1752) BL Add MS
48 Godfrey, English Glassmaking (n 28) 68. This was not an isolated incident. One Lepton
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). held a patent giving him a monopoly for engrossing bills for lawsuits before the Council of the
34 3 Swanst 680; see also Tonson v Walker (1752) BL Hargrave MS 470, pp 287, 289–90, North. The patent was condemned as a grievance in Parliament and Coke angrily enquired of
CLS MS G 79(3), ff 118, 119. Nine years later, after he was appointed to the bench and Lepton who had drawn up his patent, adding that whoever had done so deserved to be hanged.
ennobled as Lord Mansfield, William Murray recalled that Lord Hardwicke had ‘leant to the Lepton replied that it had prepared by the then Attorney-General—Coke. Russell, Parliaments
Property’ in Walker because of cases like Seymour. See Tonson v Collins (1761) 1 Bl R 301 and English Politics (n 16) 128.
(KB) 311.
wholesaler, he had secured his own de facto monopoly for supplying glass was no easy task. The printed reports represented only a small fraction of
to the London glaziers. The monopoly was sustained by predatory pricing the infringement cases that were filed, and mustering manuscript records
to force out any unwanted competition: and reports was difficult. There were no subject-matter indices to the court
records and most manuscript reports remained in private hands.24 Also
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 hampering searches was the fact that records of the common-law courts
their owne protestation to theire losse 200 £; of purpose to overthrowe the party, before 1733 were, for the most part, written in Latin and court hand.25 Due
which in a short time they effected.49 to these impediments, lawyers often relied on their own recollections of
cases or on the resources of their colleagues or Inns.
Second, contrary to claims from the other side, Mansell’s glass was probably
When it came to literary property, litigants and judges found only a
better and cheaper than that made previously. This was certainly the view of handful of cases decided before 1710—both in court records and printed
the Venetian ambassador and it is corroborated by archaeological evidence reports—and none of them squarely addressed the issue at hand. In Tonson
showing that glass was being adopted for a growing variety of purposes at
v Collins, for example, counsel for the plaintiffs noted that ‘[f]ew Precedents
around this time, indicating that its price was falling, while its quality was
[were] to be met with in the Books’.26 Chief Justice Mansfield acknowledged
improving.50 However, while the patent itself may have been beneficial to
as much, stating: ‘I do not remember from my own notes any law in Point
the commonwealth, in conjunction with the proclamation it conferred a
of Time before the Year 1709 or thereabouts or 1710’.27 Similarly, judges in
monopoly to Mansell as Coke appreciated: ‘Why suffer yow not glasses to
Millar v Taylor and Donaldson v Becket also noted the absence of authori-
be imported if yow can sell cheaper. Answer. Tis for the Manefacture’.
ties directly on point.28
Coke’s eventual report on the patent led to it being denounced as a griev-
Being without direct authority, proponents of the right instead relied
ance by Parliament:
upon a number of cases that obliquely addressed the issue, such as cases
If Mansil had invented the makeinge of glass with coale, yet he could not restraine deciding whether various printing patents were valid. Stationers v Seymour
them that made it with wood before no more then brewers or Cookes can be was among those cases and featured prominently. A tract writer noted its
restrained from rostinge with wood if one should devise a new tricke to roast; but relevance in 1762:
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 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 adju-
This ostensibly weakened Mansell’s position, but in the absence of any dication, we must be content to reason by analogy and inference : and the first
accompanying legislation to actually annul his patent, it remained in force. case which occurs for this purpose is that of the Company of Stationers against
Mansell was especially helped by the continuing support of the Privy Seymour.29
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
24 See HT Gómez-Arostegui, ‘What History Teaches Us About Copyright Injunctions and
main arguments for this policy. First, Mansell’s investments had been con- the Inadequate-Remedy-at-Law Requirement’ (2008) 81 S Cal L Rev 1997, 1222–25 (describ-
siderable (a figure of £28,000 is mentioned) and this had yielded improve- ing copyright litigation records in the Court of Chancery); WH Bryson, ‘Law Reports in
ments in the quality of glass and a reduction in prices. Secondly, he had also 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
succeeded in expanding the range of domestically produced glass goods: in the Eighteenth Century’ in H Hartog and WE Nelson (eds), Law as Culture and Culture
‘And as concerning looking glass, Sir Robert Mansell hath brought to such as Law (Madison, Madison House Publishers, 2000) 119 (same); Oldham, ‘Indispensability’
perfection that he hath caused our natives to be fully instructed and taught (n 14) 31–36, 51 (same).
25 See W Blackstone, Commentaries on the Laws of England (Oxford, 1768) vol 3, 322–23
therein’. Finally, he was paying a rent of £1,000 per annum directly to His (‘[M]any clerks and attorneys are hardly able to read, much less to understand, a [common-
law] 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,
49 Quoted in Godfrey, English Glassmaking (n 28) 55. Similarly, the French glass-makers 1776) 1–7 (making a similar observation).
were accused in 1610 of ‘often forbid[ding] the bringing of [glass] into the city and great places 26 Tonson v Collins (1761) 1 Bl R 301 (KB) 305 (Wedderburn arg).
of commerce until such time that they find great scarcity’. ‘Motives to make glass by sea coal’, 27 Tonson v Collins (1761) BL Add MS 36201, ff 53, 84 (KB).
f 145. 28 Millar v Taylor (1769) 4 Burr 2303 (KB) 2315–17 (Willes J); ibid 2347 (Aston J); ibid
50 D Crossley, ‘The English Glass Maker and His Search for Materials in the 16th And 2367 (Yates J); ibid 2405 (Lord Mansfield); Donaldson v Becket (1774) Morning Chronicle
17th Centuries’ in P McGray (ed) The Prehistory and History of Glassmaking Technology (19 February 1774) 2 (HL) (Perrot B); ibid (23 February 1774) 2 (De Grey CJ); ibid
(Ann Arbor, American Ceramic Society, 1998) 168. (24 February 1774) 2 (Lord Camden).
51 ibid 170. 29 A Vindication of the Exclusive Right of Authors to their Own Works (London, 1762) 18.
of unsuccessful attempts to revive the 1662 Act, a group of booksellers peti- Majesty, as well as another £1,800 to His Majesty’s servants. The document
tioned Parliament in December 1709 to enact a new copyright statute to ends tersely, noting that ‘Bunger never paid penny rent’.52 Consequently, on
replace what had come before. In their view, authors and their assigns held his return from service abroad, Mansell’s position was as strong as ever. In
common-law copyrights in perpetuity in their works, but the remedy availa- 1623, for example, he had Sir William Clavell imprisoned in Marshalsea
ble at common law—ordinary damages and limited costs—was inadequate. debtors’ prison and his glass furnace in Dorset demolished.53
They thus asked that the new statute revive the remedies available under the Mansell’s patent was actually much safer in 1624 than it had been in the
1662 Act and proposed a bill with no limits on copyright duration.21 previous Parliament, even though this was when the Statute of Monopolies
Parliament accommodated some of the booksellers’ requests. The Statute was passed. This is partly because Mansell was back in the country, and
of Anne, which came into force on 10 April 1710, included penalties and for- sitting in Parliament as Member for Glamorgan, but also because his incor-
feitures for those right holders who registered their books. But its terms were rigible opposition to the widely loathed Duke of Buckingham buttressed
limited. The statute protected all books first published on or after 10 April for his own popularity. An exception was probably made for Mansell’s patent
14 years from first publication (and ‘no longer’), with a possible additional as a result of Coke surmising that the Statute needed Mansell’s support to
term to the author of another 14 years if she was still living at the expiration pass.54 This exception illustrates how, despite the framers of the Statute of
of the first. A legacy clause protected works published before 1710, but only Monopolies seeking to reaffirm the common law concerning monopolies
for 21 years from the statute’s effective date, meaning through 1731. Notably, and patents, the terms of the Statute had in practice been subject to negotia-
an ambiguous savings clause complicated matters by suggesting that Parlia- tion and concession.
ment 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 A. Mansell v Bunger
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 As we will shortly see, this marked only the beginning of Mansell’s dispute
a common-law copyright existed in authors independent of the Statute of with Bunger, but before this could reach its conclusion in 1626, there were
Anne, and, if so, whether the statute pre-empted the right so as to limit its also at least two instances prior to the main hearing in Mansell where
perpetual duration. 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
III. ROLE IN THE LITERARY PROPERTY DEBATES Royal Assent (25 May 1624).55 This was a prosecution in Star Chamber
brought by the Attorney-General, Sir Thomas Coventry, for the infringe-
Precedent played an important role in the literary property debates.23 When ment of Philip Foote’s patent, awarded for preparing clay for manufactur-
asked to rule on whether the common law recognised a right in authors ing tobacco pipes. Foote’s patent shared many of the same characteristics
prior to the Statute of Anne, litigants and judges naturally inquired whether as Mansell’s. In particular, although it was apparently awarded in recogni-
a court in England had previously decided the issue. Finding prior cases tion 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
21 Commons Journal (12 December 1709) vol 16, 240; The Case of the Booksellers Right to manufacture and import of all other types of tobacco pipe clay.56 Coventry
their Copies, or Sole Power of Printing their Respective Books, Represented to the Parliament sought to prosecute a large number of individuals for forcibly resisting the
(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, 52 ‘Reasons for defence of the glass patent’, Sir Julius Caesar, 21 December 1621. Additional
‘Case Law and Judicial Precedents in Mediaeval and Early-Modern England’ in S Dauchy, J Manuscripts 12496, ff 155–156. British Library, London.
Monballyu and A Wijffels (eds), Auctoritates. Xenia R.C. van Caenegem Oblata (Brussels, 53 D Crossley, ‘Sir William Clavell’s Glasshouse at Kimmeridge, Dorset: The Excavations of
AWLSK, 1997) 55, 61–68; J Oldham, ‘Lord Mansfield, Stare Decisis, and the Ratio Decidendi 1980–81’ (1987) 144 The Archaeological Journal 348, 355.
1756 to 1788’ in WH Bryson and S Dauchy (eds), Ratio Decidendi: Guiding Principles of Judi- 54 Godfrey, English Glassmaking (n 28) 122.
cial Decisions (Berlin, Duncker and Humblot, 2006) 137; I Williams, ‘Early-Modern Judges 55 ‘Attorney-General v Rosse’, September 1624. Court of Star Chambers: Proceedings James
and the Practice of Precedent’ in P Brand and J Getzler (eds), Judges and Judging in the History I, STAC 8/29/9. National Archives, London.
of the Common Law and Civil Law (Cambridge, Cambridge University Press, 2012) 51. 56 ibid f 2.
patent. In particular, when Foote had attempted to seize clay belonging to The almanac patent of 1616 is directly relevant to this chapter. It states
the defendants, he was abused in a ‘most shameful manner and in contempt in pertinent part:
of the said letter patent that they cared not a turd for the same and that they
[W]ee … doe give and graunte vnto the [Company of Stationers] … full power
the said Philip Foote and John Leigh [Foote’s agent] or either of them were priviledge and authoritie that they the said [Company] … shall and maie att all
as good take their own ordure as to make any seizure of the said clay’.57 times and from time to time for ever printe and cause to be printed all man-
It is possible that the case was brought to Star Chamber because issues ner of Almanackes and Prognosticacions whatsoever in the Englishe tongue and
of public order were at stake. The bill of complaint detailed another occa- all manner of bookes and pamphlettes tendinge to the same purpose and which
sion when a crowd of ‘above one hundred and fifty persons’ had prevented are not to bee taken and Construed other then Almanackes or Prognosticacions
Foote and a deputy marshal of the High Court of Admiralty from seizing a beinge allowed by the Archbishoppe of Canterburie and Bishopp of London or
ship importing pipe clay and claiming that ‘they did strike at the said Philip one of them …. [B]y these presentes … wee doe straightlie charge prohibite and
Foote and John Leigh with their halberds and swords and swore that if they commaunde all and singuler other Printers Bookesellers and all other[s] … that
or either of them proffered to carry away the said clay so seized they would 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
die every man of them’.58 Nonetheless, it is telling that Coventry was will-
[or] Prognosticacions … nor buy vtter or sell or cause to be boughte vttered or
ing to instigate proceedings relating to a monopoly outside the common
sould anie other Almanackes [or] Prognosticacions … then such onelie as shall bee
law courts so soon after the tumult of the Statute’s passing—especially as printed by the said [Company.]18
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 The system of royal patents was supported for much of the early modern
Coke, and seasoned in his ways’.59 period by various regulations. The Privy Council and Court of Star Chamber,
The second instance occurred towards the end of 1625. William sitting in a quasi-legislative capacity, issued decrees in 1566, 1586 and 1637
Trumball, who held a patent for ‘the making of salte a new way’, com- that generally followed the same form. They recognised a primary right in
plained to the Privy Council that ‘divers unruly persons inhabiting in and the printing of books, instituted other prohibitions that were derivative of
about Lymington [did] indeavour to cross and hinder the due execution’ of that right, and supplied remedies. The 1637 decree, for instance, forbade
his patent.60 The Privy Council agreed to intervene, writing to the mayor the printing of books that a person had the sole right to print by virtue of
and burgesses of the town, requiring them: any letters patent. Derivatively, the decree then prohibited the importation,
binding, stitching or sale of infringing copies. Offenders were subject to
to take viewe of all the salt works within fower myles of [Lymington] and haveing search, penalties, forfeiture of illicit books, banishment from the trade, and
informed yourselves of the true manner of their working and whether it be accord-
in some cases imprisonment. Books were also to be examined and allowed
ing 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
by licensors before they were printed.19
what you shall fynde, that we may take such further order as shalbe fit.61 After the abolition of the Star Chamber in 1641, similar legislative sup-
port continued from 1643–51 and 1653–60 during the Civil Wars and Inter-
Although the Privy Council was only concerned with whether Trumball’s regnum. The last statute to regulate printing rights before the Statute of
‘new way’ was being used, this was also, strictly speaking, a matter for the Anne was the Printing Act of 1662. Like its predecessors, the Act imposed
common law courts. Their decision to intervene indicates that the Council pecuniary penalties (6s 8d per infringing book, recoverable at law), forfei-
had little intention of being restrained by the terms of the Statute. This, ture of illicit books, banishment from the book trade, and in some cases
however, was as far as matters were pursued, leaving Mansell as the first imprisonment. It further required that most books be licensed by censors
instance where matters came to a head and the Crown’s repudiation of the before printing them.20 The 1662 Act lapsed in March 1678/9, was revived
Statute of Monopolies laid bare. in June 1685, and then expired permanently in May 1695. After a number
57 ibid. 18 Patent of the Company of Stationers for Almanacs &c, C66/2072, no 1 (8 March 1615/6);
58 ibid.
59 Quoted in Richard Cust, ‘Coventry, Thomas, first Baron Coventry (1578–1640)’, Oxford 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
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. 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.
National Archives, London.
61 ibid.
II. THE LEGAL LANDSCAPE TO 1710 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
Before the Statute of Anne was enacted in 1710, there were a number of mentioned above, had been explicitly omitted from the general prohibi-
sources of exclusive printing rights in England, apart from the possibility of tion on monopolies). This prompted Bunger and his associates to petition
the common law. The earliest of which we have any record and the one most the King in 1626, ‘humbly pray[ing] that the said patent might either be
pertinent for our purposes is the royal privilege to print, which the Crown revoked or examined by his learned counsel or to be left to the judgements
typically granted by letters patent to a bookseller (ie publisher), printer, of the common lawes’.62 The petition was referred to Robert Heath (the
author or other subject.16 Privileges usually gave the holder the sole right Attorney-General) on 22 May, who reported two weeks later that Bunger’s
to print a certain work or a whole ‘class’ of works, such as all almanacs in suit should:
English. The length of privileges varied. Most were for a term of years and
be freely left to his Majestie’s lawes for the using and injoying … of their trade of
a few for the life of the grantee, but due to renewals and reversions, many
making glasse and revoking and overthrowing of the patente made to Sir Robert
privileges were effectively perpetual. Printing and publishing a work did not Mansell is both just and honourable and agreeable with the true intencion of the
terminate a patentee’s rights, as patents envisioned multiple printings. Apart late statute against monopolies.
from bestowing rights, these privileges sometimes contained remedial provi-
sions imposing penalties and forfeitures for infringement. These remedies The report was discussed in the Privy Council on 19 June 1626; present
typically exceeded what would otherwise be available at common law or were most of its pre-eminent figures such as the Lord Keeper (Sir Thomas
in equity. Coventry), the Lord Treasurer (James Ley, 1st Earl of Marlborough) and the
Four class patents emerged as the most litigious. The first was the patent Secretary of State (Sir John Coke). Outwardly, it appears that the King was
for the office of the King’s Printers, which granted the holder the sole right willing to defer to the Attorney-General’s report and he ‘hath therefore ben
to print all proclamations, statutes and other Acts of Parliament, along with pleased to leave the said Bunger and the rest to take their remedie against
the Bible and Book of Common Prayer. The second was the patent for the the said Sir Robert Mansell by due course of law’.63 However, because of the
office of the King’s Printers for printing all books written in Latin, Greek delay involved in settling the action, the Council was also charged to con-
and Hebrew, which became most closely associated with the Latin grammars sider whether Bunger and his associates should be permitted to re-enter the
attributed to William Lily. A third class patent covered all books touching or trade before a decision on Mansell’s patent had been made at common law.
concerning the common laws of England and (starting in the late sixteenth The two surviving records of the hearing imply that the Council was moved
century) two specifically named abridgments of statutes compiled by William to consider this question at the request of Bunger, although it is d ifficult to
Rastell and Ferdinando Pulton. The last major patent covered primers, explain why he would have risked asking the Council to intercede in any
psalters, psalms, almanacs and prognostications in English. Following prior, part of the dispute. Predictably, the Council decided ‘that until the cause be
often separate patents, King James I granted this consolidated patent in per- legally and fully determined the said Bunger nor any other without a uthority
petuity to the Company of Stationers in 1603 and regranted it in a broader from Sir Robert Mansell shall not in any sorte be permitted to worke or
form in 1616. The Company was, for those who are unfamiliar with it, the make any kinde of glasse’.64
mistery governing printers, booksellers and others in the book trade in the Also predictably, considering that Heath had already referred to his
City of London.17 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
16 See generally A Hunt, ‘Book Trade Patents, 1603–1640’ in A Hunt, G Mandelbrote 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
A Shell (eds), The Book Trade & Its Customers 1450–1900 (Winchester, St Paul’s Bibliogra- also petitioning Parliament at the same time and a bill for the repealing of the proviso concern-
phies, 1997) 27; M Grant Ferguson, ‘A Study of English Book-Trade Privileges During the ing Mansell’s patent in the Statute of Monopolies received its first reading on 25 May. The
Reign of Henry VIII’ (DPhil thesis, University of Oxford 2003); PWM Blayney, The Stationers’ bill, however, did not receive a second reading. W Bidewell and M Jansson (eds), Proceedings
Company and the Printers of London 1501–1557 (Cambridge, Cambridge University Press, in Parliament 1626, Volume 3: Appendixes and Indices (New Haven, Yale University Press,
2013) vol 1, 130–73, vol 2, 952–59. For a contemporary description of the process for passing 1997) 334.
letters patent under the Great Seal, see SP18/42, f 9r (c Dec 1653). 63 ‘Privy Council Registers’, 1625–26. Privy Council Registers: Charles I, PC 2/33, f 352.
17 I Gadd, ‘The Stationers’ Company in England before 1710’ in Alexander and Gómez-
National Archives, London. This proceeding was by writ of quo warranto in King’s Bench.
Arostegui, Research Handbook (n 1) 81–95. ‘State of the case between Sir Robert Mansell and Isaac Bunger’.
64 ‘Privy Council Registers’, 1625–26, f 352.
Charles for the cause to be tried by the Privy Council instead, a request in some instances by the printed reports—have often misunderstood the
to which he acceded.65 The reasons for Charles’s change of mind are not circumstances of the dispute. Some of the more common misconceptions
recorded, but they can be partly inferred from the record of the consequent include that the case was filed in the Court of King’s Bench, rather than in
hearing, held on 6 December 1626 (when again, the most eminent members the Common Pleas; that it was decided in 1667, instead of 1677; that it was
of the Council were present). The Council agreed, ‘upon the several direcci- brought as an action for debt on the 1662 Act, rather than by information;
ons that have come from his Majestie’, that Mansell’s patent would remain that only one printing patent was involved, when there were actually two;
in force. In particular, they feared that it would: that the Company owned the copyright in Gadbury’s almanac, when it did
bee of dangerous consequence, farre trenching upon the prerogative of the King,
not; that Seymour did not claim a right to print the almanac in suit, when he
if patents of this nature, having so just grounds and so often approved, and for did; that the court ruled ‘compilations’ had no certain authors, when it did
so valuable consideracions graunted and so long practized to the benefit of the not; and that the decision concerned rights in ‘almanacs’ generally, instead
commonwealth without injury … or if the validity of this patent in particular of merely the ‘calendar’ appearing within almanacs.
heretofore also examined in Parliament and there not dissolved should now bee This chapter will examine all the grounds discussed in Seymour, but it
referred to the strict tryall of the common lawe after all these proceedings had in pays particular attention to the most contentious one: that counsel and the
the other wayes. Wherefore their Lordshipps doe further thinke it fit and order court had grounded the argument and decision at least in part on an intan-
that all other proceedings upon any quo warranto now depending and all other gible property (or ‘propriety’, as it was sometimes called) stemming from
precucions at lawe against this patent bee from henceforth forborne and stayed.66 or analogous to a right held by authors. The copyright analogy appeared in
Moreover, urgent matters of state had also come into play by this point. only one of the two printed reports of the decision,15 and what was reported
England had been at war with Spain since 1624. Charles though, had been there was fairly lean. One aim of this chapter is to demonstrate that the prop-
forced to forgo parliamentary funds since June 1626 when he had dismissed erty argument arose in a more developed manner, particularly both in how
Parliament to prevent the impeachment of his favourite (and probable lover) it was presented by counsel as rooted in an author’s labour and when con-
the afore-mentioned Buckingham (who had commanded a disastrous expe- sidered alongside other arguments of counsel from the seventeenth century.
dition against Cadiz). With the war ongoing, the Crown’s finances worsened To be sure, drawing an analogy between the rights of the Crown and
precipitously, with desperation setting in before the end of the year.67 Under authors was not a perfect fit. Yet, what is most important is that the link was
these circumstances, there was no way Charles could afford to forgo the being made at all. In order to make such a connection, lawyers and judges
annual £1,000 rent Mansell was paying for his patent. must have believed that an author’s right in literary property was a plau-
In a final coup de grâce, the Privy Council also ordered that Bunger and his sible and legitimate basis for argument, despite the fact no statute before
associates should not further ‘trouble his Majestie or to attempt any thing 1710 expressly mentioned the rights of authors. In light of these findings,
against this or former orders made by the Board, upon paine of punishment Seymour appears more probative of authorial rights than sceptics have pre-
to bee inflicted upon them’.68 Ten days later, the Privy Council awarded viously supposed, and thus the decision of some judges to rely on it as evi-
Mansell an open warrant, reinforcing the rights in his patent. In particular, dence of a common-law right in authors should be viewed more favourably.
not only was the manufacture of any kind of glass without the licence of Part II below describes some of the legal landscape that governed printing
Mansell prohibited, but all subjects were now commanded not to ‘abett, 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 eight-
eenth century. Lastly, Part IV reconstructs Seymour and traces it through
65 ‘Reasons to move His Majesty for stay of further proceedings by course of law, for the
two venues: the Privy Council and the Court of Common Pleas.
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. What was Really Said’ in C Stebbings (ed), Law Reporting in Britain (London, Hambledon,
66 ‘Privy Council Registers’, 1626. Privy Council Registers: Charles I, PC 2/34, f 187.
1995) 133; J Oldham, ‘The Indispensability of Manuscript Case Notes to Eighteenth-Century
National Archives, London. Barristers and Judges’ in A Musson and C Stebbings (eds), Making Legal History (Cambridge,
67 T Cogswell, ‘“In the Power of the State”: Mr Anys’s Project and the Tobacco Colonies,
Cambridge University Press, 2012) 30.
1626–1628’ (2008) 123 English Historical Review 39.
68 ibid. 15 Compare 1 Mod 256 (present) with 3 Keble 792 (absent).
in this decision we can detect some feeling for the author’s interest in con- incourage or uphould any the said persons to worke or make glasses con-
trolling the publication of his texts’.10 And John Small has similarly noted trary to the said letters patents, either by letting them any grounds, houses
that ‘[i]f the report is correct, [Chief Justice] North [of the Common Pleas] or furances, or by furnishing them with coals or other materials for the mak-
saw the right to print a book as a common-law right’.11 But others disagree. ing of glasse as aforesaid’.69 Anyone failing to conform with this order were
Howard Abrams, the biggest sceptic on this side of the pond, has written: 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
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 and his associates with no option but to desist from continued challenges to
of the time, essentially no more than religious calendars, were particularly sus- Mansell’s patent, whose position was now unassailable. Mansell reportedly
ceptible to the argument that they had no author and thus no basis for a claim of entered a Bill against some of the glass-makers in the Court of Star Chamber
copyright. It demonstrates that although the royal patents were indeed a source of immediately after the Council’s final decision, but as there is no other record
authority for an exclusive right to print, they embodied no notion of copyright as of further proceedings, it can be presumed that the glass-makers had finally
an author’s right arising from the act of creation.12 relented.71
Many scholars today accordingly believe that it was wrong for proponents It is well established that Charles had restarted awarding monopolies
of common-law copyright to rely upon Seymour. This view tracks a broader during the Personal Rule, although Ronald Asch has suggested that there
one also held by some scholars that—contrary to the views of the majorities was nothing inevitable about the (short-term) failure of the Statute; while
in Millar and Donaldson—authors held no intangible rights in their works Parliament continued to meet until 1629 (albeit intermittently and at the
prior to 1710, either before or after first publication. Any ability to control King’s pleasure), pressure was exerted on the Crown ‘to comply as precisely
the first publication of a work stemmed not from any right in the work as possible with the provision of the 1624 act’.72 But, as we have seen, the
per se, the argument goes, but from the author’s ownership of the physi- Attorney-General was prosecuting the infringement of patent monopolies
cal manuscript embodying it. And once the manuscript was transferred or in Star Chamber just months after the Statute had been passed, and while
published, that act manifestly ended any further control of the text by the the same Parliament was in recess (the ‘Happy Parliament’ sat between
author. Scholars also sometimes posit that it was only in the build-up to the 19 February 1624 to 24 May 1624 and from 2 November 1624 to
Statute of Anne, as part of an effort to enact it, that we first see the argu- 16 February 1625). Mansell, which constituted the first instance in which a
ment that authors were the originators and proprietors of their own works; monopoly of manufacture was fully tested, illustrates just how quickly and
but it was not until the mid-to-late eighteenth century that copyright truly comprehensively Charles I abandoned the terms of the Statute and deployed
arose and was recognised as an intangible right stemming from an author the Crown’s legal and administrative apparatus to protect Mansell’s
and independent of chattel rights in a manuscript.13 monopoly. This has two implications for how to interpret the Statute and
This chapter revisits Seymour in light of newly discovered manuscript its passing. First, in line with the Book of Bounty and other promises by
reports and records. As is often the case, these manuscripts augment and cor- the Crown not to continue awarding monopolies, the passing of the Statute
rect the printed reports.14 We will discover that students of the case—misled 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
10 M Rose, Authors and Owners: The Invention of Copyright (Cambridge MA, Harvard
Book of Bounty. Second, the Statute was not in itself the birth of modern
University Press, 1993) 23. intellectual property rights: without underlying constitutional changes her-
11 J Small, ‘The Development of Musical Copyright’ in M Kassler (ed), The Music Trade in alded by the Civil War and the Glorious Revolution, it would have been, in
Georgian England (Farnham, Ashgate, 2011) 233, 252–53. effect, a dead letter.
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. 69 ibid f 195.
13 See, eg, Patterson, Copyright (n 9) 5, 143–51, 159; Rose, Authors and Owners (n 10) 70 ibid.
35–41, 59–65, 132–33; Deazley, Origin (n 6) 31–33, 69–74, 90, 93, 99–101; M Rose, Authors 71 ‘State of the case between Sir Robert Mansell and Isaac Bunger’.
in Court (Cambridge MA, Harvard University Press, 2016) 24–35; S Teilmann-Lock, The 72 R Asch, ‘The Revival of Monopolies: Court and Patronage during the Personal Rule
Object of Copyright (London, Routledge, 2016) 16–18. of Charles I, 1629–1640’ in R Asch and A Birke (eds), Princes, Patronage and the Nobility:
14 On the importance of manuscript reports to researchers and contemporary lawyers and The Court at the Beginning of the Modern Age, c.1450–1650 (Oxford, Oxford University
judges, see J Oldham, ‘Detecting Non-Fiction: Sleuthing among Manuscript Case Reports for Press, 1991) 362.
III. CONCLUSION 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
Mansell’s patent, renewed in 1635, ended only with the disintegration of Law, the King has the Property in the Copy.7
royal power leading up to the Civil War. First, the Scots’ invasion of the Other grounds were that the Crown had a superintendence over printing
North, overrunning Northumberland and Durham where his main glass- all books, that the House of Lords had already approved a broader patent,
works were situated at Newcastle, seriously affected production and ship- and that Parliament had implicitly approved the patent in the Printing Act
ping to London. He asked the Privy Council to dispatch at least two ships of 1662.8
to Newcastle to pick up his glass and to bring back coals for his London In the mid-to-late eighteenth century, proponents of common-law copy-
works as well, reminding them pointedly that £750 would soon be due on right often cited Seymour, alongside other printing-patent decisions, as
the patent.73 evidence of a right in authors that antedated the Statute of Anne. Their
Secondly, and decisively, his patent, as well as the other monopolies, was argument was not that Seymour had expressly ruled in favour of common-
swept away by the political convulsions of 1641 that would lead to the Civil law copyright, but that it had implicitly acknowledged as much by presup-
War. Item 37 in Parliament’s Grand Remonstrance had complained that: posing an intangible property right held by authors that persisted after the
the Court of Star Chamber hath abounded in extravagant censures, not only for first publication of a work. Specifically, the Crown’s right in Seymour was
the maintenance and improvement of monopolies and their unlawful taxes, but thought to stem from authors in two ways: first, by the purchase or commis-
for divers other causes where there hath been no offence, or very small; whereby sioning of the Book of Common Prayer, which contained the ‘almanac’ and
His Majesty’s subjects have been oppressed by grievous fines, imprisonments, had been compiled by the Archbishop at the direction of the Crown; and,
stigmatisings, mutilations, whippings, pillories, gags, confinements, banishments; second, under the maxim of derelict property. Insofar as Seymour based
after so rigid a manner as hath deprived men of the society of their friends [and] its ruling on a prerogative arising from elsewhere, proponents of authorial
exercise of their professions.74
copyright believed it nevertheless demonstrated an incorporeal property,
Considering the political cost, it is only natural to ask why the Stuarts per- and that if the Crown could hold incorporeal property, authors could as
sisted in awarding monopolies. The answer is simple: rents obtained from well. On all these grounds, several judges in the literary property debates
monopolies proved to be tremendously lucrative for the Stuarts. Financial accepted Seymour and cases like it as persuasive precedent. Opponents, on
estimates prepared for Charles I projected a total income of almost the other hand, argued that Seymour ruled without any inkling of a property
£900,000 in 1642, of which monopolies would contribute approximately that could be held ab initio by ordinary subjects. By their lights, the right of
£100,000 (and Mansell’s patent £1,500).75 However, as these estimates were 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.
73 Statement by Sir Robert Mansell to Sec Windebank of the condition of his works near
As one can imagine, Seymour has also drawn the attention of copyright
Newcastle for manufacture of window glass, 15 September 1640. State Papers Domestic
Charles I, SP 16/467, ff 141–42. National Archives, London. historians. Nearly all scholarship covering the period before the Statute
74 S Rawson Gardiner, Constitutional Documents of the Puritan Revolution, (Oxford, of Anne mentions or discusses the case.9 Some scholars see in the printed
Clarendon Press, 1906), item 32. Although the Grand Remonstrance itself was passed by only reports hints of a recognition of an author’s right, just as proponents did in
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 the eighteenth century. Mark Rose, for example, has noted that ‘[p]erhaps
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 7 Stationers v Seymour (1677) 1 Mod Rep 256 (CP) 257–58.
not buy our owne Cloathes, without their Broacage, These are the Leeches that have sucked 8 Stationers v Seymor (1677) 3 Keble 792 (CP) 792. Joseph Keble’s holograph of this printed
the Comon Wealth soe hard, that it is almost become Hecticall’. Quoted in M Braddick, The report, which is identical in all pertinent respects, may be found at Bodl Rawl MS C.823,
Nerves of States. Taxation and the Financing of the English State, 1558–1714 (Manchester, p 354.
Manchester University Press, 1996) 208–09. 9 See, eg, WS Holdsworth, ‘Press Control and Copyright in the 16th and 17th Centuries’
75 At the end of the 1630s, the profit from soap was probably about £30,000 per annum, (1920) 29 Yale LJ 841, 853; H Ransom, The First Copyright Statute (Austin, University of
while Lord Goring contributed another £13,000 for the right to sell tobacco licences. Asch, Texas Press, 1956) 88; LR Patterson, Copyright in Historical Perspective (Nashville, Vanderbilt
‘The Revival of Monopolies’ (n 72) 374. At the other end of the scale, William Barton paid an University Press, 1968) 88; J Feather, Publishing, Piracy and Politics: An Historical Study of
annual rent of £10 for his ‘engines which being put in order will cause and maintain their own Copyright in Britain (London, Mansell, 1994) 45–47; O Bracha, ‘Owning Ideas: A History of
motion’. Papers of John Bankes, MSS Bankes 11/2, f 12. Bodleian Library, Oxford. Anglo-American Intellectual Property’ (SJD, Harvard Law School 2005) 146, 154.
as a natural or customary property right, protected at common law, or as prepared to help the King plan for the escalating crisis, they were divided
a privilege created solely by the ‘Act for the Encouragement of Learning’ into two categories: ‘receipts which are likely to continewe for the yeare
(1710), which scholars commonly call the Statute of Anne.3 These differing 1642’; and receipts which were likely to ‘totally faile’.76 Tellingly, all the
viewpoints carry hefty baggage because they set the historical basis of the monopoly income fell into the latter category: without the Crown admin-
right and offer insights as to its original purpose. istration to enforce them, the monopolies were otiose. A similar document
Two landmark decisions on the subject are well known to scholars and produced by the same exercise also categorised the King’s receipts accord-
have already been written about extensively. The first is Millar v Taylor, a ing to whether they were likely to be ‘held illegal’. Again, the monopolies,
King’s Bench decision from 1769. Relying on notions of property, natural including Mansell’s, were included under this heading, a fairly explicit rec-
justice and reason, the court ruled three-to-one that authors held a right at ognition that the Crown was bending the law for its own purposes.
common law in their works, both before and after first publication, and that Mansell, as well as Attorney-General v Rosse and Trumball, indicates
the Statute of Anne did not limit the right.4 Copyright was therefore perpet- that the Crown never had any intention of being bound by the terms of the
ual. The second case is Donaldson v Becket, a House of Lords decision from Statute (and it should be noted that none of these three cases have ever been
1774 that overturned Millar in part. The House held that copyrights in pub- discussed in the historiography before now). Crown support for the legis-
lished works were governed by the Statute of Anne and its limited durations,5 lation was unlikely to have ever been sincere: within months, the terms of
meaning that newly published works would enter the public domain after patents for monopolies were being enforced in the Star Chamber and Privy
14 or 28 years. Although the decision did not determine the origin of copy- Council. When the first substantive test of the common law’s jurisdiction
right in England, a majority of the judges who spoke on the issue—and even occurred, two years after the Statute had been passed, the Crown entirely
a majority of the judges and speaking Lords combined—opined or allowed ignored its terms.
that an antecedent right did exist.6 This is not, however, to deny the importance of the Statute of Monopolies.
The subject of this chapter, Stationers v Seymour (1677), played an impor- When the administrative/legal apparatus of the monarchy was dismantled
tant role in the aforementioned literary property debates. Although known during the Civil War, a process confirmed by the Glorious Revolution, the
to scholars, mostly for its early recognition of Crown Copyright, it has not statute provided the legislative foundation of the English patent system
received the same attention and in-depth study as Millar and Donaldson. until it was finally reformed in 1852 by the Patent Law A mendment Act.77
At issue in Seymour was the validity of the patent for printing almanacs, Rather, it was not until the administrative/legal apparatus of the monarchy
which King James I had granted in perpetuity to the Company of Station- was dismantled during the Civil War, a process confirmed by the Glori-
ers in 1616. The defendant John Seymour had printed an almanac, written ous Revolution, that the Statute could take effect. In the aftermath of the
by John Gadbury, without licence of the Company. The Court of Com- Civil War, only two patentees attempted to enforce their patents in the Privy
mon Pleas upheld the King’s right to grant the patent. According to printed Council. The first instance was a petition from George Tomlyn, presented in
reports of the case, the court offered a number of alternative grounds for 1661. Unfortunately for Tomlyn, the Council refrained from taking direct
doing so, including the following: action, only instructing the Attorney-General to prosecute the infringers.
[1] There is no difference in any material part betwixt th[e] [defendant’s] Almanack
This he was presumably reluctant to do, as in the following year Tomlyn was
and that that is put in the Rubrick of the [Book of] Common-Prayer. Now the obliged to initiate legal action on his own behalf in the Court of Chancery.78
Almanack that is before the Common-Prayer, proceeds from a publick Consti- Similarly, a 1664 paper prepared for the Council stressed ‘That by the
tution ; it was first settled by the Nicene Council, is established by the Canons expresse words in the Statute against Monopolies, All M onopolies and all
of the Church [of England], and is under the Government of the Archbishop of Priviledges of sole buying, selling, working, making or using anything, shall
be examined, heard, tried and determined by the Common Lawes of the
3 Statute of Anne 1710 (8 Anne c 19).

4 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 Gómez-
Arostegui, ‘Copyright at Common Law in 1774’ (2014) 47 Conn L Rev 1, 45–46. 76 C Russell, ‘Charles I’s Financial Estimates for 1642’ (1985) 58 Bulletin of the Institute of
6 HT Gómez-Arostegui, ‘A Reply to my Colleagues regarding Donaldson v Becket’ in Historical Research 165.
E Cooper and R Deazley (eds), What is the Point of Copyright History? (Glasgow, CREATe, 77 Patent Law Amendment Act, 15 & 16 Vict c 83 (1852).
2016) 45, 48. But see R Deazley, On the Origin of the Right to Copy (Oxford, Hart Publish- 78 ‘Tomlyn v Stephens’, 1662. Chancery Pleadings before 1714, Bridges Division,
ing, 2004) 191–220. 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 introduc-
tion, who had argued that the Statute had ‘establish[ed] principles very 2
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
Stationers v Seymour (1677)
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 H TOMÁS GÓMEZ-AROSTEGUI*
parliament.80
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 reg-
ularly 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 rip-
ple 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 News-
paper 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 Tem-
ple 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 appoint-
ments, 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 Gómez-
79 Quoted in E Hulme, ‘Privy Council Law and Practice of Letters Patent for Invention from Arostegui (eds), Research Handbook on the History of Copyright Law (Cheltenham, Edward
the Restoration to 1794’ (1917) 32 Law Quarterly Review 66–67. Elgar, 2016) 1.
80 Hume, The History of Great Britain (n 19) 247. 2 B Lauriat, ‘Copyright History in the Advocate’s Arsenal’ in ibid 7.
68 Isabella Alexander Stationers v Seymour (1677) 37
Having been so instructed the jury, not surprisingly, gave a verdict in Not long after the grant, the Company and Seymour entered into negotia-
Moore’s favour. tions in an effort to reach an accommodation. For a time, he even offered to
Neatly and powerfully, Lord Mansfield set out the crux of the tension sell his patent to the University of Oxford.64 These efforts all failed.
inherent in copyright law and policy: the balancing of the public interest Believing he had a right to print, Seymour began to acquire copyrights
in dissemination, improvement and progress with the claim of an author in almanacs and print them. Note that in the late seventeenth century it
to benefit from his labours. It is this statement which has made the case was already common for booksellers and their lawyers to use the term
of Sayer v Moore so popular with later commentators and is the first basis ‘copyright’ (in place of the more ambiguous ‘copy’) to refer to an intangible
upon which its status as a leading case rests. The quote conveys the notion right in a work—as distinct from the tangible manuscript embodying it—
of a tension to be resolved that is both timeless and broadly applicable. It that authorised one to print and publish the work indefinitely.65 In S eymour’s
is, however, strongly influenced by both the subject matter at issue and the view, the Company at best had the sole right to print mechanically all alma-
intellectual atmosphere of the time. To appreciate this, the case needs to be nacs (that authors had authorised for publication) with the exception of
viewed against the background of trade custom, imperatives of commerce those almanacs sold to him. Alternatively, the Company’s patent was inva-
and empire as well as Enlightenment philosophy and the rise of scientific lid. Although the second proposition might have put his own patent at risk,
method and empiricism. However, before turning to elaborate on these mat- Seymour seemed content to fall back, if necessary, on whatever rights the
ters, we must finish the story of the litigation against John Hamilton Moore. 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
C. The Subsequent Cases: Steel v Moore and Heather v Moore 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
No doubt encouraged by the result of the case brought against him by Sayer, Company’s patent was void. To permit the Crown to control the mechani-
Moore continued in his chart publishing venture. However, it was not long cal printing of all almanacs, he advised, could lead down a slippery slope
before he was again called upon to defend himself in the King’s Bench. The in which one could control the printing of books in any one science or
second case brought against Moore was by another rival, David Steel.43 ‘about as many subjects as can be enumerated[,] which would be a playn
Steel was also a close neighbour. Born in 1733, at the time of the case he was Monopoly … by the Common Law’.67 He concluded by stating that the
settled in Little Tower Hill where he ran a book and chart shop, which also Company’s patent would ‘be noe hindrance to [Seymour] to acquire the
sold mathematical and navigational instruments.44 copys of such new bookes as noe other had the right to before him’.68
In March 1789, Steel sought damages of £3,000 from Moore for hav- The Company also received advice from Heneage Finch, by then Attorney
ing allegedly published a chart of ‘the East Coast of England, including the General, who took a different view. He opined that ‘Mr Seymour cannot
navigation from the South Foreland to Flamborough Head from the lat-
64 C Blagden, The Stationers’ Company: A History, 1403–1959 (London, George Allen and
est observations and surveys’. Steel alleged that this was copied from two
Unwin, 1960) 194–95; see also Letter of Thomas Yate to Leonel Jenkyns, SP29/292, f 125
charts he had published in 1782 which had been drawn by John Chandler.45 (24 August 1671); Letter of John Fell to Leoline Jenkins, SP29/292, f 145 (27 August 1671); Let-
Once again, Moore produced Stephenson as his witness, as well as James ter of Thomas Yate to Leonel Jenkyns, SP29/292, f 146 (27 August 1671). For the Company’s
Porteous, master of the royal yacht Augusta. Both witnesses attested to the 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.
presence of numerous errors in Steel’s map and the superiority of Moore’s. 65 See, eg, Chiswell v Lee (1681) C10/209/24, no 1 (signed by Henry Trinder); R Pawlett
Stephenson claimed to have found at least 106 places where Moore’s map v Lee (1681) C10/202/96, no 1 (same); Herringman v Clerke (1681/2) C8/301/33, no 1 (signed
differed from Steel’s. He also allowed himself a rhetorical flourish, suggesting 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
43 Steel v Moore (n 10). William Peirson); Tonson v Hills (1706) C8/623/33, no 1 (signed by Nicolas Rowe); Rogers
44 MM Witt, A Bibliography of the Works Written and Published by David Steel and His v Hills (1708) C5/342/64, no 1 (signed by William Barnesley); Wellington v Mortier (1708)
Successors, with Notes on the Lives of David Steel and His Heirs (London, Anthony and Setitia C5/276/36, no 1 (signed by John Browne).
Simmonds, 1991) 3, 4. 66 Case and Opinion, William Jones, SCA Series I, box B2, item ii (9 October 1671). Within
45 J Chandler, A Chart of the East Coast of England from Lowestoff to Scarborough, a few years, Jones became Solicitor General (1673–74/5) and Attorney General (1674/5–79).
engraved by TJ Woodman (London, David Steel, 1782). (A copy is held by the Biblioteca 67 ibid.
Nacional de España); Felix Farley’s Bristol Journal (Bristol, England) 21 March 1789, 2. 68 ibid.
38 H Tomás Gómez-Arostegui Sayer v Moore (1785) 67
print any Almanacks by virtue of his Letters Patents but is hindred by the Despite this compelling evidence of copying, Sayer’s action was unsuc-
Precedent Patents to the Company of Stationers’.69 As a consequence of this cessful. Moore’s advantage lay in being able to draw on his contacts from
advice, the Company seized and destroyed Seymour’s almanacs, presses and the nautical world as well as his own experience and mathematical knowl-
type in 1671.70 edge. 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
B. In the Privy Council to the physical act of copying, Stephenson identified the difference in the
content. Not just he, but two additional witnesses, Admiral Campbell FRS,
The ensuing legal dispute proceeded in two venues. The sides first sparred Governor of Newfoundland, and William Wales FRS, an astronomer who
in the Privy Council in late 1671, though it appears there was an attempt had sailed with Captain Cook, gave evidence that Sayer’s maps were both
to resolve the matter before then. In his petition to the Privy Council, on erroneous and dangerous and that Moore’s were a considerable improve-
8 November 1671, Seymour alleged that he and the Company had already ment over them.
attended three separate hearings before the Lord Keeper (Sir Orlando In considering the applicable law, Lord Mansfield considered that the
Bridgeman), the Lord Privy Seal (Lord Robartes) and the Earl of Sandwich.71 principles underlying the Statute of Anne applied equally to the 1777
Unfortunately, no memorial of those earlier proceedings appears to have Engravings Act. He stated:
survived.
The Act that secures copy-right to authors guards against the piracy of the words
In the late seventeenth century, it was not uncommon for the Privy Coun- and sentiments; but it does not prohibit writing on the same subject … In all
cil to hear party-to-party disputes involving printing patents, but its abil- these cases, the question of fact to come before a jury is, whether the alteration
ity to adjudicate them fully was questionable. The Statute of Monopolies be colourable or not? there (sic) must be such a similitude as to make it probable
(1624) enacted that the validity of patents had to be tried and determined and reasonable to suppose that one is a transcript of the other, and nothing more
according to the common laws of the realm,72 and an Act for Regulating the than a transcript … So in the case of prints, no doubt different men may take
Privy Council (1641) stated that the Council had no jurisdiction, power or engravings from the same picture. The same principle holds with regard to charts;
authority to determine or dispose of the hereditaments, goods or chattels of whoever has it in his intention to publish a chart may take advantage of all prior
any subjects of the kingdom. Those matters had to be ‘tried and determined publications.41
in the ordinary courts of justice, and by the ordinary course of the law’.73 Summing up the evidence, he famously observed:
As a consequence, the Council sometimes acted more as mediators; and
In deciding we must take care to guard against two extremes equally prejudicial;
when the lawfulness of a monopoly was at issue, the Council often sent such
the one, that men of ability, who have employed their time for the service of the
matters to law for adjudication.74 community, may not be deprived of their just merits, and the reward of their inge-
The Council Board heard argument in Seymour on 8 December 1671.75 nuity and labour; the other, that the world may not be deprived of improvements,
Serjeant John Maynard argued on behalf of Seymour and noted that Seymour nor the progress of the arts be retarded … If an erroneous chart be made, God
had ‘purchase[d] Severall Coppies [of almanacs] and layd out Severall great forbid it should not be corrected even in a small degree, if it thereby become more
Summes of Money’.76 His co-counsel, Francis Winnington, added that serviceable and useful for the purposes to which it is applied.42
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 39 Susanna Fisher states that Captain John Stephenson was a coal trade master and close
1671). friend of Moore’s who provided him with information on the North Sea and Thames estuary.
70 See Seymour v Stationers (1671) BL Harley MS 5903, ff 54r, 55r (PC). Fisher, Blueback Charts 21, 24, while Skelton suggests he was a Royal Navy Master, who had
71 Seymour v Stationers (8 November 1671) PC2/63, pp 99, 99–100. produced a number of charts for both Sayer and Moore. This could of course be two different
72 Act Concerning Monopolies 1624 (21 Jac 1 c 3) s 2. But see text to n 126. career stages for the same man. Some case reports use ‘Stephenson’, while others use ‘Steven-
73 Act for Regulating the Privy Council 1641 (16 Car 1 c 10) s 5. son’. For consistency, this chapter uses only the former, except in references where the original
74 See, eg, King’s Printers v University of Oxford (16 January 1679/80) OUA SEP/P/16, no 8, spelling is observed.
f 10r–v, OUP 5/1/1, pp 85, 108–10, PC2/68, pp 356, 357 (PC) (discussing jurisdictional 40 ‘Extracts from a Letter written to James Bogle French, Esq, Foreman of the Special Jury
objections and dismissing dispute between two printing patentees for lack of jurisdiction). who tried the Cause in the King’s Bench, at Guildhall, between Messrs Sayer and Bennet, Plain-
75 Seymour v Stationers (8 December 1671) PC2/63, p 128. tiffs, and Mr John Hamilton Moore, Defendant, by Mr John Stevenson, one of Mr Moore’s
76 BL Harley MS 5903, f 54r. For other essentially identical reports of this argument, see SCA Witnesses’ in Moore, The New Practical Navigator (n 10).
Wast Book, ff 76r–77v (5 February 1671/2); SCA Court Book D, ff 195v–196v (5 February 41 Sayer v Moore (n 1), 361n.
1671/2). 42 Sayer v Moore (n 1).

Sayer was therefore an experienced legal player, as well as considerably Seymour had ‘laid out above a thousand pounds to his great impoverish-
more established than Moore in the publishing and print-selling business, ment and if he should not now enjoy the benefitt of his grant it would be
when he took Moore to court. Sayer and his partner Bennett34 complained \to/ his great Damage’.77 In counsels’ view, the grant to the Company was
that Moore had copied four charts of North America and made them into void because its term was stated to last in perpetuity and its scope was ‘soe
one large map.35 The decision to take the case to the King’s Bench is inter- very generall’.78 In effect, they objected to the fact that, under the Com-
esting, as the Court of Chancery tended to be the forum of choice for copy- pany’s interpretation of the patent, the Company could prevent the printing
right plaintiffs of the time. One can only speculate as to Sayer’s motivation of all almanacs, including those in which the Company had not purchased
for choosing it, but it seems likely that the plaintiffs were influenced by the rights. This would constrain an author or publisher’s ability to choose
the choice of remedy available; while Chancery could offer the frequently a printer and would often leave them at the mercy of the Company’s prices
sought after remedies of injunction and disgorgement of profits, following and practices—a nontrivial hindrance. Many authors, for example, received
the 1777 Act the King’s Bench could offer damages and double costs, and only a few pounds each year for the almanacs they produced. And though
Sayer was asking for the considerable sum of £10,000.36 some popular authors received greater sums (eg John Gadbury £20 and
The case was heard by Lord Mansfield on 28 February 1785 before a William Lilly £50 for 1671)79 they often hoped for more.
‘special jury’—a jury comprised of merchants who would be able to advise Counsel for the Company, not surprisingly, sought to affirm its 1616 pat-
on the commercial aspects of the case.37 Sayer produced several witnesses, ent. They cited the savings clause in Seymour’s grant and noted that the
including William Faden, who attested that Sayer had purchased the charts Company’s patent had issued long before his: ‘[T]heire is a peculiar Clause
at an auction of Jefferys’ estate. Two engravers, Delarochette and Winter- of Exception in Mr Seymors Patent’80 and ‘[w]ee stand upon the validity of
felt (or Winterfield), also appeared for Sayer. Delarochette, an eminent and our grant beinge much the older’.81 Heneage Finch, also arguing on behalf
respected cartographer and engraver who often worked with Faden, testi- of the Company, noted that the Company claimed only a right to control the
fied: that he had engraved the maps for Sayer; that they were a consider- mechanical printing of almanacs and not a right to prevent others from com-
able improvement on the charts Sayer had purchased from Jefferys; that the piling almanacs or a right to print almanacs without an author’s permission:
materials for the charts would have cost Sayer between £3,000 and £4,000;
[I]f you Mr Serjeant [Maynard] write a Law booke, its true you may give or sell
and, that the defendant’s charts were copies. The second engraver, Winter- it to whome you please and they may keep it by them[,] but if either you or they
felt, testified that he had been employed by Moore to make the copies and desire to print it you must doe it by the Kings printers for the Law, Soe here lett
that he had copied the Gulf Passage from the plaintiff’s map.38 [he] who will write Almanacks [do so], [but] the Company of Stationers onely
have the Authority to print them.82
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 By the end of the argument, Seymour’s counsel had retreated. They no
to dissolve the partnership before the Master of the Rolls, Sir Lloyd Kenyon in Sayer v Bennet longer denied the validity of the King’s grant to the Company but hoped
(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. instead to be allowed to print alongside the Company. ‘Wee are not willing
35 The map in question was either ‘A New and Correct Chart of North America from Cape to bring these grants to a Judiciall debate in Westminster hall least we trip
Cod to the Havannah’ (London, J H Moore, 1784) or ‘A New and Correct Chart of North up on anothers heels’.83 The argument then shifted to whether the Company
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 77 BL Harley MS 5903, f 54r.
Archives, its 2005 equivalent was £628,500 (in 2005). According to www.measuringworth. 78 ibid f 55v (Winnington arg).
net, in 2016 it would be over £1 million. 79 SCA Journal Book of Money Disbursed (29 July 1671 and 25 January 1671/2). During
37 The foreman of the Special Jury, to whom the letter detailing much of our information this period, Gadbury was producing his own almanac and another under the name Thomas
on the case was written, was James Bogle French. French, a merchant of St Swithin’s Lane Trigge.
and slave-owner on Grenada, was involved in the sale of rum to America. See ‘Legacies of 80 BL Harley MS 5903, f 55r (Pemberton arg).
British Slave-ownership’, www.ucl.ac.uk/lbs. For an examination of the different types and 81 ibid f 56v (Offley arg).
development of special juries, see JC Oldham, ‘The Origins of the Special Jury’ (1983) 50 The 82 ibid f 56r. The notion that the Company could not print an almanac unless it had first
University of Chicago Law Review 137; JC Oldham, Trial by Jury: the 7th Amendment and obtained a right to the copy had, incidentally, been memorialised in a 1623 consent decree
Anglo-American Special Juries (New York, New York University Press, 2006). For Lord Mans- of the Privy Council. See University of Cambridge v Stationers (10 December 1623) PC2/32,
field’s use of special juries comprised of merchants, see JC Oldham, English Common Law in pp 190, 191; see also University of Cambridge v Stationers (29 November 1623) CUP Pr B 2(3),
the Age of Mansfield (Chapel Hill, University of North Carolina Press, 2004) 20–27. item xiii (PC).
38 Sayer v Moore (n 1) 362n. See also Oldham, The Mansfield Manuscripts (n 33) 770–71. 83 BL Harley MS 5903, f 56r (Winnington arg).
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
Sayer v Moore (1785) 65

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 The first chart published by John Hamilton Moore and the cause of the litigation. JH Moore, A New and Correct Chart of North
from John Gadbury to print his almanac for the year 1676, and printed it America from the Island of Bellisle to Cape Cod (London, 1784). © The British Library Board Maps *70040(.40)
in 1675. The Company raided various printing houses and shops, confis-
cated 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 infor-
mation 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 print-
ing 3,000 almanacs,91 and Thomas Kequick (a binder) for stitching 1,200,92
84 ibid f 57r (Winnington arg).

85 PC2/63, 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.
world: close to Trinity House26 the river Thames and its seamen, chandlers all on 1 September. These three related actions appear to have been subor-
and nautical instrument-makers.27 dinated to Seymour, which functioned as the bellwether case, and I have
Moore’s first advertisements offered navigation courses over a few weeks, found no other records relating to them in the plea rolls.
for five guineas, with boarding accommodation provided in his house if Originally appointed for 26 November 1675, the trial in Seymour was
necessary. He also began offering for sale charts, books, and nautical instru- put off when the Company could only proffer a duplicate of its 1603 patent
ments such as compasses, quadrants and sextants, drawing and calculating but not of its 1616 grant.93 Duplicates were necessary because the Company
instruments and telescopes.28 In 1782 he published his second practical text had surrendered its sealed 1603 patent to the Court of Chancery in order
book, The Seaman’s Complete Daily Assistant. This time Moore shared the to obtain the 1616 grant, and its sealed 1616 patent had perished in the
risk of publishing with four partners: the booksellers Law and Robinson, Great Fire of London in 1666. Whereas the Company had on 10 August
and his competitors Robert Sayer and John (or Jonathan) Bennett. By 1784 1667 procured inspeximus exemplifications under the Great Seal of its 1603
Moore was publishing his own charts. It seems that the very first chart he grant and its 1557 charter of incorporation, it did not, at that time, also
published got him into hot water,29 when a suit was brought against him in obtain an exemplification of the more important 1616 grant. It is unclear
the King’s Bench by Sayer and Bennett. why. Perhaps the Company accidentally exemplified the 1603 grant when
While Moore was new to copyright litigation, this was not Sayer’s first it meant to exemplify the later one. In any case, the Company rectified the
brush with the law of copyright. He was a prominent print and map seller error on 6 December 1675, but Seymour did not come on for trial again
who had moved into chart publishing following his acquisition of Jefferys’ until 5 June 1676.94
plates in 1771. In 1770 he had brought an unsuccessful action against Cluer It is impossible to know how long the trial lasted. But in a similar case
Dicey for copying and selling a print of the King of Denmark.30 In this case brought by the Company a few years later for infringement of the primers
Sayer was nonsuited, as he had not engraved his name and date of first portion of its 1616 patent, the defendant described his own trial as lasting
publication on the print in question, as required by the 1735 Act.31 In 1780, ‘two or three houres’ before ‘the Jury brought in a Verdict’.95 In Seymour,
Sayer had himself been the defendant in Chancery proceedings brought by the jury returned a special verdict in which it made a number of lengthy
the printseller Carington Bowles, which eventually settled.32 A third case findings, including that the following had been proven: the Company’s
was brought in 1783 against Sayer by George Sherwin in the King’s Bench 1616 patent, the Printing Act of 1662 and Seymour’s 1669 patent.96 It also
and involved piracy of a print of the actress Sarah Siddons.33 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
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 licens-
ing pilots in the River Thames, seamarks and ballastage and lighthouses in the seventeenth 93 SCA Wardens’ Accounts (26 November 1675); SCA Journal Book of Money Disbursed
century. See www.trinityhouse.co.uk; and S Tyacke, ‘Chartmaking in England and its Context, (26 and 30 November 1675) (‘[T]he Cause was put of[f] .… [W]e had pleaded [our] surendred
1500–1660’ in D Woodward (ed), The History Of Cartography, Volume 3: Cartography in the [1603] patent’.).
European Renaissance (Chicago, The University of Chicago Press, 2007) 1725. 94 Hanaper Comptroller’s Accounts, AO3/420 (19 August 1667) (noting that Humphrey
27 Fisher, Blueback Charts (n 13) 19–20.
Robinson, Master of the Company of Stationers, had requested only two exemplifications);
28 ibid 20.
SCA Journal Book of Money Disbursed (23 September 1667, 8 and 10 December 1675, 5 June
29 According to Fisher, the earliest known Moore chart is ‘A new and correct chart of
1676); SCA Wardens’ Accounts (5 June 1676); R Myers, The Stationers’ Company Archive
North America from the Island of Belleisle to Cape Cod’, published 20 January 1783: Fisher, (Winchester, St Paul’s Bibliographies, 1990) 51. On the pleadability and use in evidence at
Blueback Charts (above n 13), 141. law of exemplifications when one could not produce the original patent with the Great Seal
30 Sayer qui tam &c v Dicey et al (1770) 3 Wilson KB 60; 95 ER 933. See David Stokes,
appended thereto, see Act Concerning Grants and Gifts 1549–50 (3 & 4 Edw 6 c 4) s 2; Act
‘Another Look at the Dicey-Marshall Publications, 1736–1806’ (2014) 15 The Library 111–157. Concerning Exemplifications 1571 (13 Eliz c 6) s 2. In subsequent actions at law, the Company
The author is grateful to Cristina Martinez for pointing her to this source and helping her to made sure to plead the exemplification it obtained in December 1675 of its 1616 grant. See, eg,
identify Dicey. Stationers v Marshall (12 February 1678/9 compounded) KB27/1997, rot 484–85; Stationers
31 8 Geo 2 c 13, s 1.
v Marlowe (Pas 1680 issue) CP40/2981, rot 313; Stationers v Gayne (15 June 1681 judg)
32 Bowles v Sayer (1780) C12/1656/12, C33/455 ff 2, 7.
CP40/2992, rot 441; Stationers v Parker (Hil 1684/5 issue) KB27/2040, rot 685.
33 Sherwin v Sayer (1783) printed in J Oldham, The Mansfield Manuscripts and the Growth 95 Plea and Demurrer of John Gaine, Stationers v Braddyll (1681/2) C7/580/112 (referring
of English Law in the Eighteenth Century, vol 1 (Chapel Hill, University of North Carolina to Gayne (n 94), an action which resulted in a general verdict for the defendant).
Press, 1992) 770. 96 Stationers v Seymour (Trin 1676 verdict) CP40/2939, rot 401.
97 ibid.
almanac ‘in hys verbis literis et figuris’, meaning that the written verdict which explicitly stated that any person who designed or engraved, or caused
replicated Gadbury’s almanac at large in words, letters and figures. Among or procured to be designed or engraved, any map, chart or plan, would
other things, the record reproduced the 12 months of the calendar (with have the ‘benefit and protection’ of the 1735 Act and the current Act.20 This
the Saints’ days), a table of the law terms, a list of eclipses, a perpetual tide protection included the right to prevent copying for a term of 28 years.21
table, a timeline of 31 notable events, and a table of the 12 signs of the A third Act was passed in 1777, which extended the protection in two impor-
zodiac.98 The jury further found that Gadbury’s calendar was the same as tant ways. First, it expressly included copying ‘in part, by varying, adding
the calendar in the Book of Common Prayer that had been established by to, diminishing from, the main design’.22 Second, it increased the remedies
Act of Parliament: available, from merely being able to recover a penalty of five shillings per
[M]enses dies mensum fixa festa et mobilia festa sunt eadem cum mensibus
sheet (shared between His Majesty and the person bringing p roceedings)23
diebus mensum fixis festis et mobilibus festis in publico Calendario in libro to providing that any person found infringing would be liable for damages
Communis precacionis et administracionis Sacramentorum et aliorum rituum et as assessed by a jury and double costs of suit. This would be paid to the
ceremoniarum Ecclesie secundum usum Ecclesie Anglicana stabilito per Actum proprietor of the print(s) in question.24
Parliamentis[.]99
‘Calendar’ meant not only the days, months and years, but also the fixed
B. Sayer v Moore: The Litigation
and moveable feasts (ie holidays), such as Christmas and Easter, respectively.
For those who are unacquainted with it, the Book of Common Prayer
Having briefly sketched the relevant statutory framework, it is time to turn
contained a calendar in its preliminary pages in which certain morning and
to the litigation in question. It is probably no coincidence that each case
evening readings or ‘offices’ were assigned for particular days. The remain-
shared the same defendant. A colourful figure, who inspired strong feel-
der of the book contained the daily offices and other occasional ones, such
ings in his contemporaries, John Hamilton Moore was born in a village
as for solemnising marriage. The Common Prayer became the official man-
near Edinburgh in 1738 and educated in Monaghan, Ireland, by a then-
ual of worship in England and Wales after the Reformation. According to
celebrated teacher of mathematics, Mr Ballendine. Moore entered the Royal
the Act of Parliament that first adopted the text, the King had
Navy, but after receiving his discharge became a school teacher in Houn-
appointed the Archbishop of Canterbury, and certain of the most learned and slow, subsequently opening his own academy in Brentford. It was while
discreet Bishops, and other learned Men of this Realm … to draw and make one working as a schoolmaster that Moore wrote The Practical Navigator and
convenient and meet Order, Rite and Fashion of common and open Prayer and Seaman’s New Daily Assistant, which was published in 1772 and became
Administration of the Sacraments .…100 the most popular navigational textbook of its day. Other books followed:
Thomas Cranmer, the Archbishop of Canterbury, took charge of the task The Practical Observer (1775), A New and Complete Collection of Voyages
and the book was first published in 1549. Changes were made to the book and Travels (1778) and The Young Gentleman’s and Lady’s Monitors
at various times, namely in 1552, 1559 and 1604.101 At the Restoration in (1780). In 1781, Moore moved to London where he set up business first in
1660, Charles II commissioned changes that were later duly implemented.102 the Minories and then at Tower Hill.25 This was the heart of the nautical
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
was found in the case of music in Bach v Longman (1777) 2 Cowp 263. See NA Mace, ‘Music
98 Copyright in Late Eighteenth and Nineteenth Century Britain’ in I Alexander and HT Gómez-
The notable events included: ‘The creation of the World’ in 4019 BC; ‘The discovery of
Arostegui (eds) Research Handbook on the History of Copyright Law (Cheltenham, Edward
printing’ in 1399; ‘The bringing of printing to Westminster’ in 1462; and ‘The bringing back Elgar, 2016) 139–57.
printing to Westminster by Captaine Seymour’ in 1675. ibid.
99 ibid. 20 Engravings Act 1767, s 1.
100 Act for Uniformity of Service 1548/9 (2 & 3 Edw 6 c 1). 21 ibid, s 7.
101 DN Griffiths, The Bibliography of the Book of Common Prayer (London, British 22 An Act for more effectually securing the property of prints to inventors and engravers, by
Library, 2002) 62–63, 69, 82–83; B Spinks, ‘From Elizabeth I to Charles II’ in C Hefling and enabling them to sue for and recover penalties in certain cases 1777 (17 Geo III c 58) (Engrav-
C Shattuck (eds), The Oxford Guide to the Book of Common Prayer (Oxford, Oxford Uni- ings Act 1777).
versity Press, 2006) 44. 23 Engravings Act 1735, s 1.
102 His Majesties Declaration … Concerning Ecclesiastical Affairs (London, 25 October 24 Engravings Act 1777.
1660); Act for the Uniformity of Publick Prayers 1662 (13 & 14 Car 2 c 4); Griffiths (n 101) 25 Worms and Baynton-Williams, British Map Engravers (n 14), 460–61; Fisher, Blueback
108–12. Charts (n 13) 19; ‘Obituary’ 77 (1807) Gentleman’s Magazine 1174.

Jefferys, including Jefferys’ position as geographer to the king. Faden had does survive.103 That almanac was printed in Westminster by George
not, however, acquired Jefferys’ stock of sea charts and plates, which Robert Larkin—for the ‘Assigns of John Seymour’ and ‘[b]y Authority from the
Sayer had purchased from Jefferys’ estate. William Heather had worked for King’—but its title and some of its content differs from that specifically
Moore, David Steel had been an apprentice to one of the partners in Mount found by the jury in Seymour. One possibility is that the almanac in suit
and Page, and Aaron Arrowsmith may have worked for Faden.14 Their was a broadsheet, rather than a book almanac. Gadbury had been known
places of business were clustered along the Thames, with Moore, Steel and in the past to produce both book and broadsheet formats of his work.104
Heather all based in or near Tower Hill. They used the same draughtsmen And, yet, the information brought against Kequick, for stitching almanacs,
and engravers, competed for source material, published in partnership, and counsels against a broadsheet. So either Gadbury authored more than one
sold and used each other’s work, sometimes without permission. book almanac for 1676—something he also was known to have done previ-
Before continuing, a few words are necessary to explain how copyright ously—or Kequick had stitched a different almanac.
law applied to maps and charts at this point in history. Since 1710, the After some delay, post-trial arguments in Seymour were heard before the
Statute of Anne had provided exclusive rights to print and publish books judges in Easter and Trinity terms 1677. Representing the Company was
to authors and booksellers.15 Maps could be published in books in vari- Serjeant Francis Pemberton, the future Chief Justice of the King’s Bench
ous ways—as books of maps (now called atlases) or as illustrations accom- (1681–82/3) and Common Pleas (1682/3–1683). What follows is his argu-
panying text. Some map and chart sellers registered their works with the ment from Trinity term; it is unclear whether he argued the cause the pre-
Company of Stationers, pursuant to that Statute (as indeed they had done ceding term.
before the Act was passed, although in those days they had to be a member Pemberton first cited the long history of governmental control over print-
of the Stationers Company or find one to register for them), while others ing as a ground for maintaining the grant:
sought royal privileges or licences. In 1735, an Act was passed which pro-
The press ‘tis true is an excellent invencion but the licenciousness thereof in every
tected prints and engravings against copying.16 The 1735 Engraving Act, ones using it is of dangerous Consequence. No art can be more prejudiciall to the
known as Hogarth’s Act due to William Hogarth’s role in bringing about its State ; & so ‘tis fit to be under the inspection of the Magistrate, & it is of a poli-
enactment, gave exclusive rights to any person who ‘invented or designed, tique Consideracion[.] And so in England ever since printing came in it hath bene
engraved, etched or worked in mezzotinto or chiaroscuro’ any ‘historical or always under the Controul of the governement[.]105
other Prints’.17
Pemberton then drew from the rights of authors in their works. He began this
Maps were, of course, produced by the same copper plate engraving tech-
line of argument by tapering the reach of the Company’s patent to a single
niques as other prints, but it was not at first clear whether they would fulfil
component within almanacs: the calendar. Focusing on the calendar made
the other requirements of that Act. While Blackwell v Harper18 seemed to
the patent more palatable and better enabled an argument of ownership
confirm that this was possible, any lingering uncertainty as to whether they
over a central component that always remained the same in all almanacs.
had legislative protection was resolved in an amending Act passed in 1767,19
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
14 ibid 5. While Fisher describes Arrowsmith as Faden’s assistant, Worms and Baynton-
is the Author of the Almanack’, by which Pemberton meant the calendar.106
Williams 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 103 J Gadbury, Ephemeris: Or, A Diary Astronomical and Meteorological For the Year of
Time therein mentioned 1735 (8 Geo II c 13) (Engravings Act 1735). Grace 1676 (Westminster, 1676); Wing A1755.
17 ibid, Preamble. For a detailed history of this statute, including a reappraisal of Hogarth’s 104 See, eg, SCA Journal Book of Money Disbursed (5 September 1664, 13 December 1665).
role in its enactment, see: D Hunter, ‘Copyright Protection for Engravings and Maps in 105 Stationers v Seymor (1677) IT Barrington MS 5, pp 308, 308; see also 1 Mod 256–57.
Eighteenth-Century Britain’ (1987) 9 The Library (6s) 128; and, M Rose, ‘Technology and 106 IT Barrington MS 5, p 308. There was no question that Gadbury had authored the almanac.
Copyright in 1735: The Engraver’s Act’ (2005) 21 The Information Society 63. Indeed, the jury found that the almanacs ‘fuerunt compilata fuit Anglice was compiled per
18 Blackwell v Harper (1740) 2 Atk 93, Barn C 210. quendam Johannem Gadbury’. CP40/2939, rot 401. Note that in the 17th century ‘author’ as
19 An Act to amend and render more effectual an Act made in the eighth Year of the Reign of a verb had not yet gained traction; the more common verbs were ‘compile’, ‘compose’, ‘make’,
King George the Second, for Encouragement of the Arts of Designing, Engraving and Etching, ‘pen’ and ‘write’. Additionally, one of the manuscript reports acknowledged that Seymour was
Historical and other Prints; and for vesting in, and securing to Jane Hogarth, Widow, the ‘claiming a grant from this king to print them[;] [and] has printed a great many ; which were
Property in certain Prints 1767 (7 Geo III c 38) (Engravings Act 1767). It is, of course, also made by Gadbury who hath added some things to the Almanack, as prognostications of the
possible that unbound sheet maps might have been found to fall under the Statute of Anne as weather, about Eclipses, & put in some remarkeable things’. IT Barrington MS 5, p 308.
Gadbury did not claim to have authored (nor did Seymour claim to own) and the determination of copyright cases formed a part of Enlightenment
the calendar per se or to have exclusive rights in it.107 Thus, ‘the Contest epistemology. This is particularly related to scientific method and approaches
[wa]s not between the Author & the Patentee’.108 So, was the calendar in to the collecting, organising and storing of data, but also links to economic
the public domain or did the Crown own it? advancement through trade and commerce. That this occurs can be ascribed
Relying on the long-standing maxim that derelict property went to the to a synergy that arose in the cases between the subject matter in dispute—
Crown, Pemberton posited that ‘if the author be not known, it belongs to sea charts—which had a particular importance in Enlightenment philoso-
the king’.109 Applying this maxim to works of authorship was sensible, he phy, and the developing doctrines of copyright law.
argued, as it was the only way to ‘secure the Authors propriety’,110 a fact The chapter begins by setting out the immediate background against
he thought important as a matter of principle. An author ‘has [a] right to which the Moore cases came before the courts, explaining the state of the
the Copy & ‘tis not fit [that] his right should be invaded or others reap the sea chart trade in the mid-eighteenth century and the legal context in which
benefit of his pains’.111 The King, by granting the patent, was effectively it operated. It will then describe the course of the litigation itself. Part II will
exercising this right on behalf of the unknown author or owner. Pemberton examine in more detail the historical development of the sea chart trade
believed that the common law supported his use of the maxim to the facts and, from there, tease out the discursive practices that can be discerned in
at hand, but he argued in the alternative that the Printing Act of 1662 also the construction of the case and in particular the emerging links between
authorised the Crown to preserve material that might otherwise be consid- science, Enlightenment thought, commerce and the law of copyright. Part III
ered derelict: ‘[I]f the case were against the plaintiffs at Common law, This will complete the stories of our litigious chartmakers. The chapter will con-
Act of parliament has made it good’.112 The Act provided that it did not clude by considering the ongoing impact of the three cases today and sug-
prejudice the ‘just rights and priviledges granted by his Majesty [or his royal gests that paying greater attention to these links has the potential to enrich
predecessors] to any person or persons … [and] that such person or persons today’s debates over the proper purposes of copyright law.
may exercise and use such right and priviledges … according to their respec-
tive 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 II. THE LITIGATION AGAINST JOHN HAMILTON MOORE
derelict works as well, given that the words of the statute were general.114
Pemberton next relied cautiously on Streater v Roper, a controversial A. Chartmakers and Copyright Law in the Mid-eighteenth Century
decision involving the law patent that aided his cause. The circumstances
of Streater are somewhat complicated, but bear recounting here. The case For much of the eighteenth century, nautical publishing was dominated by
began, under the caption Roper v Streater, in the Court of King’s Bench in a single firm, the partnership of Richard Mount and Thomas Page. Mount
1671.115 A syndicate of booksellers (which included Abel Roper) had pur- and Page largely operated by acquiring copper plates from much older pub-
chased the copyright in and published the third part of Sir George Croke’s lications, such as Seller’s 1693 English Atlas, and republishing them, per-
Reports in May 1669. John Streater, an assignee of the law patent, retaliated haps after revising them.12 But by the end of that century the firm of Mount
and reprinted the Reports. Roper confiscated the reprints and sued Streater 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
107 1 Mod 257 (‘[T]he Defendant in our Case makes no Title to the Copy’.). nautical publishing trade: Robert Sayer, John Hamilton Moore, David Steel,
108 IT Barrington MS 5, p 308 (by ‘Patentee’, here, Pemberton meant the Company). William Heather, William Faden and Aaron Arrowsmith.
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
The business interests of these six publishers were linked in many ways.
Co Rep 106a (QB) 108b. cf E Coke, The Third Part of the Institutes of the Laws of England William Faden had inherited the map publishing business of Thomas
(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. 12 Yolande Hodson, ‘Maps, Charts and Atlases in Britain’ in MF Suarez, SJ and ML Turner,
112 ibid. The Cambridge History of the Book in Britain, Volume V, 1695–1830 (Cambridge, Cambridge
113 Printing Act 1662 (13 & 14 Car 2 c 33) s 22; see also ibid ss 3, 6. University Press, 2009) 776.
114 IT Barrington MS 5, p 308. 13 S Fisher, The Makers of the Blueback Charts: A History of Imray Laurie Norie & Wilson
115 Roper v Streater (Mich 1671 bill) KB27/1941/1, rot 237. Ltd (St Ives, Imray Laurie Norie & Wilson Ltd, 2001) 3–4.
This statement has been cited by a large number of academic commentators in an action for debt under the Printing Act of 1662. Streater pled the law
for a variety of purposes and positions.4 Some cite it as evidence of courts patent as a bar to the action and Roper demurred to the plea, thus bring-
taking a labour-based or ‘sweat of the brow’ approach to subsistence and ing the matter to issue without the need for a jury trial. The King’s Bench
originality;5 others cite it as indicating copyright law’s concern with unfair ultimately entered judgment for Roper.116 In the process, Chief Justice Hale
competition,6 or as an early authority for a fair use exception.7 Most com- invalidated the law patent as an unlawful restraint on a common trade
monly, however, it is cited as evidence of the need to ‘balance’ or at least (printing) and as being too imprecise and broad in its application.117 On a
weigh up competing public and private interests in copyright law8 or by writ of error, the House of Lords reversed and adjudged the patent good,
those seeking to establish the long-standing credentials of copyright’s con- albeit without consulting the judges or entertaining solemn argument.118
cern with the advancement of knowledge.9 The effect of the judgment was not only that the patent was valid—which
The second reason for claiming Sayer v Moore as a leading case in intel- meant that Roper should have printed his book through Streater—but that
lectual property law is more fully appreciated when it is considered along- Streater was, at least in this instance, able to print a work seemingly owned
side two subsequent related cases, Steel v Moore10 and Heather v Moore.11 by another. As was usual at the time, the House did not publicise its reasons.
Together, the three Moore cases demonstrate ways in which copyright law But according to one account, whose source material is not disclosed, the
House relied on a number of factors, including that the privilege of print-
ing law books was long-standing, the material at issue concerned matters
4 For example, at the time of writing, a Boolean search for ‘(“Sayre v Moore” OR “Sayer of state, and the ‘King had the making of Judges, Serjeants and Officers of
v Moore”)’ on HeinOnline produced 377 search results, including 143 articles, 75 notes and the Law’.119
45 comments. In Seymour, Pemberton noted that unlike what had occurred in Streater,
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 the Company had not printed Gadbury’s 1676 almanac. Rather, this was
Compilations and Databases after ICETV: Authorship, Originality and the Transformation of merely an instance where Gadbury should have printed his almanac with
Australian Copyright Law’ [2012] Monash University Law Review 3, 19; Lior Zemer, ‘The the Company instead of with Seymour. In short, there was no need for such
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 a robust reading of the patent here. Pemberton further pointed out that the
Balance in Copyright Law’ (2009) 34 Journal of Corporation Law 991, 995. scope of the law patent was very broad—as it covered all books touching
6 See S Ricketson, ‘“Reaping without Sowing”: Unfair Competition and Intellectual
or concerning the common laws of England—while reiterating that the fight
Property Rights in Anglo-Australian Law’ (1984) 7 (1) University of New South Wales Law
Journal 1, 8. over the Company’s patent was over the sole printing of a single work: the
7 See, eg, Kathy Bowrey, ‘On Clarifying the Role of Originality and Fair Use in 19th C
entury calendar.120
UK Jurisprudence: Appreciating “the Humble Grey which Emerges as a Result of Long Con- Records of the argument on the other side have been elusive. The printed
troversy”’ in C Ng, L Bently, G D’Agostino (eds), The Common Law of Intellectual Prop-
erty: Essays in Honour of Professor David Vaver (Oxford, Hart Publishing, 2010), 45–69, 58; accounts make no mention of it, and although one manuscript report does,
B Kaplan, An Unhurried View of Copyright (New York and London, Columbia University it is only in passing. According to Pemberton, Serjeant Francis Barrell had
Press, 1967), 16–18; J Oakes, ‘Copyrights and Copy Remedies: Unfair Use and Injunctions’ argued for Seymour in Easter term 1677 that the Stationers’ patent was
[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. ‘void, because the sole priviledge of printing of Almanacks is in [the] nature
8 See P Menell, ‘An Analysis of the Scope of Copyright Protection for Application Pro- of a Monopoly, & so against Law’.121 This is not a particularly enlightening
grams’ (1989) 41 Stanford Law Review 1045, 1084; D Jordan, ‘Square Pegs and Round Holes: statement, but fortunately another memorial exists. A single sheet of paper
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) in the archives of the Company, slipped between pages of a draft of the
Utah Law Review 769, 769. special verdict, appears to be notes taken of Barrell’s argument, or if not of
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 116 Roper v Streater (Mich 1672 judg) KB27/1941/1, rot 237.
University of Wellington Law Review 277, 291. 117 See M Bacon, A New Abridgment of the Law (London, 1759) vol 4, 208–09.
10 Steel v Moore (1789), reported in The Sunday Gazette and republished by Moore: 118 Streater v Roper (1675) 12 Lords Journal 703 (HL) 704; R North, The Life of the
‘Extract from the Sunday Gazette of the 8th March 1789’ in JH Moore, The New Practical Right Honourable Francis North (London, 1742) 69 (based on notes of Francis North written
Navigator (London, JH Moore, 1793). c 1682–85).
11 Heather v Moore (1798) Express and Evening Chronicle, 1–3 March 1798, Issue 537; 119 Bacon (n 117) vol 4, 209.
‘Trial of John Hamilton Moore for Pirating a Chart. Sittings after Term, March 1798, before 120 IT Barrington MS 5, pp 308–09.
Lord Kenyon and a Special Jury of Merchants’ (London, Plummer, 1798). 121 ibid 308.
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 3
respect to Acts of Parliament and Bibles, as those were prerogative cop-
ies. 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 Sayer v Moore (1785)
bee prohibited to print any private Booke’.123 Counsel went on to state that
there ‘hath bene an Ownershippe allowed of Prerogative Copy & private
ISABELLA ALEXANDER*
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
I. INTRODUCTION
be to create an unlawful monopoly in the trade of printing, which he called
T
an ‘Art Publique’. ‘A man’, he stressed, ‘may grante his Copy or printe it’.125
HE SELECTION OF Sayer v Moore1 as a landmark case in intellectual
Counsel acknowledged that the Statute of Monopolies exempted printing
property law, or even in copyright law, might seem odd—particularly
patents from its reach,126 but he argued that the grant was nevertheless void
as it was not even reported except as a footnote to another case that
at common law. As a fallback, he asserted that both patents—the Com-
occurred some 14 years later.2 Nevertheless, it is the contention of this
pany’s and Seymour’s—‘may stande together’.127 Turning to the 1662 Act,
chapter that this eighteenth-century case has played a key role in the devel-
counsel posited that it was ‘[n]ever Intended to give the Kinge a power to
opment of copyright law in the common law world. There are two reasons
grante Copyes’.128 Rather, its purpose was to provide right holders certain
for this. First, it produced one of the most memorable and popular pieces of
remedies:
copyright rhetoric, when Lord Mansfield proclaimed:
The True Scope & Intent [was] that where the Kinge grants what he may grante
In deciding we must take care to guard against two extremes equally prejudicial;
(such Prerogative Copyes) or if another hath gotten by Entry &c He that printes
the one, that men of ability, who have employed their time for the service of the
[without authorisation] shall forfeite. And these wordes [in the statute] ([‘]where
community, may not be deprived of their just merits, and the reward of their inge-
the same is not granted by patents[’] &c) must bee such As he [the King] had right
nuity and labour; the other, that the world may not be deprived of improvements,
to grante[.]129
nor the progress of the arts be retarded.3
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 Com- * This chapter is based upon papers previously delivered by the author at the International
pany of Stationers under the 1662 Act. The register served several functions under the statute: Society for the History and Theory of Intellectual Property (ISHTIP) Conference, Paris, 26–28
as a record for censorship purposes, as the principal method of proving ownership of the copy June 2013, and at the International Conference for the History of Cartography, Antwerp,
for purposes of the Act, and as a prerequisite for non-patentees to obtain the penalties and 12–17 July 2015. I am grateful to participants at those conferences for feedback and sugges-
forfeitures of the Act. Printing Act 1662 (13 & 14 Car 2 c 33) ss 3, 6. For scholarship discuss- tions, in particular Professor Robert Mankin at ISHTIP. I am also grateful to Eloise Chandler
ing the long-standing custom of entry with the Company and how entry did not create a right for research assistance, Nick Millea (Bodleian Library) for assistance in locating materials,
but instead served as proof of ownership, see Patterson (n 9) 55–64; M Bell, ‘Entrance in the Pip Wilson for access to the archives at Imray Laurie Norie and Wilson Ltd and to Cristina
Stationers’ Register’ (1994) 16 The Library (6th ser) 50, 51; PWM Blayney, ‘The Publication Martinez and Tomás Gómez-Arostegui for reading this chapter in draft and providing helpful
of Playbooks’ in JD Cox and DS Kastan (eds), A New History of Early English Drama (New feedback. Sources that begin with C (Chancery), ADM (Admiralty), IND (Index) or PROB
York, Columbia University Press, 1997) 383, 400–05. Neither Seymour nor his confederates (Probate) are stored in the National Archives of the United Kingdom in Kew, England.
(who were members of the Company) registered Gadbury’s almanac, a fact that Barrell or his 1 Sayer v Moore (1785) 1 East 361n, 102 ER 139n. Note, in East’s reports, where the case is
co-counsel did not see as an obstacle to Seymour’s argument (likely because Seymour was not first formally reported, Sayer’s name is alternatively spelled ‘Sayre’. In this article Sayer is used,
suing under the Act). as the more common form of the name.
125 MS Notes (n 122). 2 Cary v Longman and Rees (1801) 1 East 358, 102 ER 138. For a detailed examination of
126 Act Concerning Monopolies 1624 (21 Jac 1 c 3) s 10. Cary v Longman see Isabella Alexander, ‘“Manacles Upon Science”: Re-Evaluating Copyright
127 MS Notes (n 122). in Informational Works in Light of 18th Century Case Law’ 38 Melbourne University Law
128 ibid. Review 317.
129 ibid, quoting from the Printing Act 1662, s 6. 3 Sayer v Moore (n 1) 361n.
58 H Tomás Gómez-Arostegui Stationers v Seymour (1677) 47
before mentioned but that the same priviledges shall and may remaine in When the four members of the court spoke, they upheld the Company’s
theire full force and Strength any thing herein before conteyned to the con- patent and implicitly held that it preceded and trumped Seymour’s later
trary in anywise notwithstanding[.] although expresse mention &c <of the grant. They first followed Pemberton’s lead by focusing on the calendar. The
true yearly value or certainty of the premisses or of any of them or of any judges discussed all of his arguments and adopted some as their own while
other Gifts or Grants by us or by any of our Progenitors or Predecessors also raising others. Chief Justice North spoke first and unfortunately his
heretofore made to the said John Seymour in these presents is not made or comments are a bit ambiguous. He purportedly said:
any Statute Act Ordinance Provision Proclamation or Restriction heretofore I always took the Calendar to bee a prerogative Coppy. The materiall things in
had made enacted ordained or provided or any other matter cause or thing the Calendar are the days of the week, the days of the moneths, the ffeasts fixed
whatsoever to the contrary thereof in any wise notwithstanding.> In & moveable the Moons & the Terms[.] And all this is in the Calendar which is
wittnesse &c <whereof we have caused these our Letters to be made Pat- part of the Common prayer. ’Tis 4 or 500 yeares ago since the Calendar has bene
ents.> Wittnesse the king att Westminster the seaventh day of October used [.]130
[1669]
Now the Almanack that is before the Common-Prayer, proceeds from a publick
Per breve de privato Sigillo 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 hold-
ing 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 appoint-
ing 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

131 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.
twas reason the King should have & give the sole printing, because he was bee allready by vs or any of our Predecessors graunted to any of our Subiects
at the sole charge of collecting the Copys’.135 and the Graunts thereof still in being[,] Our will and pleasure is and wee doe
It appears that North CJ did not rely, in the alternative, on the 1662 Act. by theise presents for vs our heires and Successors give and graunt vnto the
That would coincide with the argument made by Barrell (or his co-counsel) said John Seymour his Executors Administrators and Assignes full and sole
and would also happen to be consistent with a position North had taken as power license and authority to Imprint vtter {and} {or} sell or cause to be
counsel on the law patent. In that context, he had argued that the statute Imprinted vttered and sold such of the said Bookes soe formerly graunted as
was ‘the Ground of the prohibition and forfeiture[,] [but] Nothing of Right aforesaid from and after the Expiration surrender or other sooner determi-
is Enacted’.136 nation of every such respective Graunt or Graunts for and dureing the said
Justice Windham ‘accorded’, but the reports do not reveal what if any- Tearme of forty and one yeares[.] And our further will and pleasure is and
thing he said. For his part, Justice Atkins listed three grounds. He relied on wee doe by theise presents for vs our heires and Successors Covenant prom-
the long history of governmental control over printing; Streater v Roper ise and graunt to and with the said John Seymour his Executors Administra-
(which had approved a broader patent); and the Printing Act of 1662. ‘The tors and Assignes that if and as often as any doubts or questions shall
Judgment in the House of Lords is solemn … and much stronger than this : happen to arise for toucheing or concerneing the validity of theise our letters
there[,] was [a] license to print all Lawbooks, here only Almanacks’.137 Pattents that then and soe often vpon the humble Petition of the said John
On the last, he agreed with Pemberton that the Act must be interpreted to Seymour his Executors Administrators or Assignes to vs our heires or Suc-
empower a grant relating to derelict works like the calendar. To say that the cessors exhibited or vpon notice and certificat to vs our heires {and} {or}
proviso only applied to works which the Crown owned ab initio—such as Successors by the learned Councell of the aforesaid John Seymour touching
proclamations, declarations and Acts of Parliament, all of which the King any defect requisite to bee amended wee our heires or Successors will gra-
had a part in—would make no sense, ‘[f]or there was no need of any such ciously graunt other letters Patents vnto the said John Seymour his Execu-
Clause : For there is no doubt but hee may grant these’.138 Justice Scroggs, tors 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 Confirma-
135 MT Treby MS 2C, pp 167–68, citing E Plowden, Les Comentaries ([London], 1571)
tion of theise our letters Patents or to the perfection of the Intention before
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 by theise presents any way appeareing[.] and further that wee our heires and
as the English Bibel because that was translated by Persons appointed by the Crown[,] so of the Successors dureing the continuance of theise our letters Patents or other of
Year books because they were Collected by Persons who had a salary for that purpose from the our letters Patents to bee renewed as aforesaid vpon the Petition of the said
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 John Seymour his Executors Administrators or Assignes will graunt vnto
that the exclusive rights underlying patents depended on the 1662 Act for their validity was him or them such Orders of our Councell Board Warrants vnder our privy
later made in 1683–84 with respect to both the psalms portion of the Company’s 1616 pat- Signett Writts of Assistance Proclamations and Iniunctions for his and theire
ent 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 most beneficiall enioyment of this our royall Graunt as shall be desired and
v Wright (1682/3) C33/260, f 254r, C33/259, ff 313v–314r; Stationers v Wright (Trin 1683 bill, found reasonable and not repugnant to the lawes and Statutes of this our
Hil 1683/4 judg) KB27/2028, rot 100; Hills v Wright (1682/3) C33/259, f 400r–v, C33/259, Realme of England[.] And theise our letters Pattents {and} {or} the Inroll-
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 ment thereof shall bee in all things firme good vallid and effectuall according
(Pollexfen arg) (‘[T]hat Statute did not give a Right but only an Action of Debt [for penalties]’; to the true Intent and meaneing of the same notwithstanding the not true or
‘[T]he Statute did not alter the Case[;] only gave a certeyn Penalty against any man that print[s] perfect reciteing of the authors or tytles of the said severall and respective
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 Booke and Bookes or any other matter Cause or thing whatsoever to the
Crown could not provide for the forfeiture of goods by patent. Horne v Ivy (1669) 1 Ventr 47 contrary in anywise notwithstanding[.] Provided allwayes that noething in
(KB) 47, (1669/70) 1 Sid 441 (KB) 441; see also East India Co v Evans (1684/5) 1 Vern 305 this our Graunt conteyned shall any way extend to deminish or derrogate
(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 from the priviledges which cann or may bee claymed by both or either of the
damages brought upon the right granted by the patent. Case and Opinion, William Jones, SCA vniversityes touching the printing of all or any {of} { }168 the Bookes herein
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).
138 ibid; see also 3 Keble 792; Stationers v Seymour (1677) BL Add MS 35975, pp 200, 201. 168 Omitted in the Privy Seal Bill.
of all and every the said Bookes soe to be by them or any of them {vttered the last to speak, expressly adopted Pemberton’s argument that derelict
sould or Imprinted} {imprinted vttered sould or imported} contrary to the works resided in the King as a matter of common law. ‘In this case[,] as to
meaneing of theise our letters Pattents[,] or of what else by law may be for- the substantial part of the Almanack[, ie the calendar,] there is no certain
feited[,] and of being proceded against as an Offender against the late Act Author & for that reason it belongs to the King’.139 Scroggs added another
entituled an Act for preventing the frequent abuses in printing seditiouse ground, stating that likewise the calendar was of public consequence.
treasonable and unlicensed Bookes and Pamphletts and for regulateing of Another report of the court’s reasoning, which does not delineate the
printing and printing Presses and of incurring the penalty therein mentioned remarks of one judge from another, further highlights the rights of authors:
of six shillings eight pence for every such Booke or Bookes or part of such [I]f the author was alive it might be printed or not printed at the authors pleasure
Booke or Bookes soe imprinted or imported as aforesaid and alsoe of for- but there being no author nor any that claims propriete in [the calendar] … the
feiting and further of incurring our Indignation and displeasure for breake- propertie to print it belongs to the King and he may give it to whom he pleases[.]140
ing 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 The above text appeared at the end of the report, which suggests that this
Successors will and Command aswell the Masters and Wardens of the mis- too was spoken by Justice Scroggs. This does not necessarily mean, however,
tery of Stationers in our Citty of London and other our Officers Ministers that the other judges did not concur on this point.
and Subiects within the said Citty of London and the libertyes of the same By process of elimination, it seems almost certain that Pemberton and the
as alsoe all other our Officers Ministers and Subiects whatsoever as they judges who linked the right of the King to that of authors—in order to prop
tender our favour and will auoyd our displeasure for the contrary that they up the patent—presupposed an author’s right derived from the common
and every of them if need shall require shall ayd and assist the said John law. The 1662 Act makes no mention of authors’ rights, and it appears that
Semour his Executors Administrators and Assignes and every of them in the Chief Justice North (at least) believed that the Act depended on primary
due exerciseing and execution of this our present lycense and priviledge with rights stemming from elsewhere. Also out of the case is the custom of the
effect by entring att all and every convenient tyme and tymes dureing the City of London, which could conceivably have formed the legal basis for the
said Tearme by theise presents graunted (having first obteyned a Warrant rights of authors. None of the records or law reports in Seymour mention
from the lord Cheife Justice of the kings Bench for the tyme being to that the custom, nor would it have applied in any event given that the infringe-
purpose) into any house or houses Printing houses Booke=binders Shopps ments occurred in the City of Westminster. The bylaws of the Company
Cellars and Warehouses or any other place or places whatsoever suspected could not serve as a source either; they did not apply to persons (like John
aswell within libertyes as without to veiw see and search for any Booke or Seymour) who were not members of the Company.141 Only an underlying
Bookes att any tyme or tymes hereafter to bee imprinted contrary to the right at common law could support a patent that purported to reach all sub-
tenour of theise our letters Pattents[,] soe as the said John Semour his Execu- jects throughout England. Two more points bear mentioning. Pemberton
tors Administrators and Assignes shall att euery such tyme and tymes of and some of the judges must have envisioned a right of authors that per-
veiwing and search take with him or them some one or more of our Officers sisted after the first publication of a work given that the work at issue—the
or Ministers for that tyme being dwelling in that towne or Parish where such calendar—had been published countless times before Seymour. It also seems
veiw or search shall bee made for his better veiwing and due search to be safe to assume that the Crown did not possess the original manuscript of the
made in that behalfe and as much as in them is to seize all and every such calendar and that this was not fatal to the presupposition.
Booke and Bookes as vpon any such veiw and search shall att any tyme or The court lastly addressed whether the additional material in Gadbury’s
tymes dureing the said Tearme by theise presents graunted be found to be almanac, beyond the calendar alone, somehow made his work sufficiently
imprinted vttered sould or imported contrary to the tenour of theise our let- different from the calendar so as not to implicate the patent. It did not.
ters Pattents and cause the same to be condemned as forfeited by due pro- Pemberton had argued: ‘As to the other point, the addicion & the alteracion
ceedeings in our Court of Exchequer according to the forme and effect of (being not in the Substantial part) will make no difference ; no more then
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 139 IT Barrington MS 5, p 309.
140 BL Add MS 35975, p 201. This manuscript volume bears the bookplate of Lord
this our Realme or by any other Order Ordinance or Proclamation of vs or
Hardwicke, and thus it probably was in his possession when he ruled in Tonson v Walker.
any of our predecessors or by our royall Prerogative[.] provided allwayes 141 See Geoffrey Palmer AG and Heneage Finch SG, SP29/274 pt 2, f 151r–v (21 April
that if the lycense or priviledge of printing of any of the said severall Bookes 1670).
the putting in a piece of Æsops Fables’.142 Agreeing, Chief Justice North great fidelity diligence and successe and for diverse other good Causes and
stated that ‘the materiall part is the same’ and Justice Scroggs said that Considerations vs herevnto especially moveing have of our especiall Grace
‘the substantial part is the same’.143 ‘Those additions of Prognostications certaine knowledge and mere motion Given and granted and by theise
and other things that are common in Almanacks, do not alter the Case ; presents for vs our heires and Successors doe give and graunt vnto the said
no more than if a man should claim a property in another mans Copy, by John Seymour his Executors Administrators and assignes full power lycence
reason of some inconsiderable additions of his own’.144 This reasoning also priviledge and sole authority that itt shall and may bee lawfull for him the
tracks advice previously given by North to the Company of Stationers while said John Semour his Executors Administrators and Assignes onely to
he was Solicitor General. North was one of the Company’s counsel when Imprint vtter and sell or cause to bee imprinted vttered and sould[,] for the
the dispute with Seymour first arose in the Privy Council in 1671. In that tearme and space of one and fforty yeares next and immediately ffollowing
context, he stated: 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
[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 other person cann clayme the direct {property} {propriety} by vertue of any
has a propriety, if an Other makes a Small Addition of Notes or Comments, this I Graunt duely obteyned from us or any of our royall Predecessors* (videlicet)
hope shall not conclude or barre the propriety of the first.145 Erasmi Opera Plinii Epistole Quintus Curtius Homeri Opera cum clave Jus-
tinius Dictionarium Poeticum Colmani Prosodia grece & latine Isocratis
In the end, the Court of Common Pleas entered judgment against Seymour
Opera Buchanani Opera Phrases & Elegantie Poetice Claudianus Lucanus
and ordered him to pay £66 13s 4d in penalties under the Printing Act of
Buxtorsi Scapule Screvelii & Pasoris Lexicon Valerius Maximus Suetonius
1662, with half to go to the Company of Stationers and half to the Crown.146
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
Notably, Seymour was not alone in presuming authors’ rights before 1710. Reusneri Symbola Clavis Homerica Thesaurus Poeticus Janua Linguarum
Take, for example, an instance that occurred in 1641/2 in a hearing in Par- Sidelii Manuale Demosthenes Opera with all noats comments and para-
liament over printing patents. At the time, no statute supported exclusive phrases vpon all or any parte of the aforesaid Bookes and also all Alma-
printing rights. William Prynne, counsel for a subset of the Company, recited nacks and prognostications from tyme to tyme whose Originalls the said
the following argument made by his opponents who were holders of various John Semour his heires Executors Administrators or Assignes cann purchase
printing patents, including the patent to print the Bible: ‘[T]he Bible newly and obteyne from the respective Authors thereof dureing the said Terme[.]
translated [in 1611] was the Kings copie[,] who had the same power as And wee doe hereby for vs our heires and Successors streightly charge and
other Authors have to bestow it on whom he pleased’.147 Prynne called this Command all and every Printers Bookesellers Stationers and other our
his opponents’ ‘strongest and most colourable’ argument,148 and although Subiects whatsoever that from henceforth dureing the said Tearme of one
he was on the other side, he did not question the analogy to authors’ rights. and forty yeares by theise presents graunted they nor any of them (other
Indeed, he carried on with it, stating that the Bible was special because it 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
142 IT Barrington MS 5, p 309. which by theise our letters Patents are graunted and lycensed to be imprinted
143 ibid. by the said John Semour his Executors Administrators and Assignes and
144 1 Mod 258.
145 BL Harley MS 5903, f 54v; see also Case and Opinion, Francis North SG, SCA Court
that they nor any of them Import or cause to bee Imported from any of our
Book D, f 191v (28 August 1671). dominions or from any parts beyond the Seas into this our kingdome of
146 (27 July 1677 judg) CP40/2939, rot 401. England any of the said Bookes new or old or any others which within the
147 ([7 March 1641/2]) BL Harley MS 5909, ff 26r, 40v (HC). The original of this manu-
said Tearme of one and forty yeares shall be printed by the said John Semour
script, 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 his Executors Administrators or Assignes vpon paine of forfeiture to our vse
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. * The closing ‘)’ is absent, but would most naturally fall here.
To be sure, one could question the maxim that derelict works went to the was ‘Gods own book and Copy’ and he had bequeathed it to ‘all men as the
Crown, as opposed to the public domain, or that the Crown owned the calen- foundation and rule of their faith & lives’ and thus it could not ‘properly be
dar as part of the Common Prayer—later cases certainly did (and successfully, called any mans particular copy as other books compiled by particular men
I might add)166—but that should not distract from the fact that a link had may be’.149 ‘[T]hough the Translation of the Bible may be called the Trans-
been drawn between the rights of authors and the rights of the Crown. lators Copy,’ he noted, ‘yet being intended wholely for the publick good
In short, a number of lawyers and judges in the late seventeenth century and not for any mans private and particular lucre the Copy ought rather
believed that an author’s right in literary property was a plausible basis to be publick than private as well as the Translation and Bible it self’.150
for argument, even though no statute expressly mentioned authors’ rights Prynne also argued (though perhaps too broadly) that patents were ‘not
before 1710. At a minimum, Seymour indicates, along with other evidence granted by the Kings meer prerogative in Bookes or Printing but at the Spe-
from the seventeenth century, that the notion of an antecedent right at com- cial request of the Authors of these Books or the Printers or Stationers who
mon law was not fanciful or novel. 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
ANNEX: SEYMOUR’S PATENT ENROLMENT the singing psalms and psalters was likely valid because those works ‘were
C66/3111, no 14bis (7 Oct 1669)167 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
Charles the second <by the Grace of God King of England Scotland france of authorial rights, noted above, occurred in the context of works that had
and Ireland Defender of the faith> &c To all manner of Printers Booke- already seen their first publication.
sellers Stationers and all our Officers Ministers and Subiects whatsoever Others also invoked authors’ rights. In the same dispute over the law
they bee[,] Greeteing[,] know yee that wee for and in Consideration of the patent, for instance, counsel for a number of booksellers and printers
good and faithfull services which our trusty and well beloved John Seymour had argued in the House of Commons in 1666 that the ‘Author of every
Esquire hath done to vs and our Royall ffather (of blessed memory) from the Manuscript or Copy hath (in all reason) as good right thereunto, as any
begining to the end of the late troubles and hath alsoe since our happy Res- Man hath to the Estate wherein he has the most absolute property’.153 And
tauration by our special Command and for our service made severall the rights of authors were also invoked in two other almanac cases before
Journyes and voyages beyond the seas all which hee hath performed with 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
166 See, eg, Stationers v Partridge (1712) BL Add MS 35988, ff 95, 100 (QB) (Parker CJ); that ‘a difference [was] made [in Seymour] between an author & other peo-
see also text to nn 48 and 51. ple, for an Author has a natural right in his own labour’.155
167 The King’s initial wish was that Seymour’s patent be fast-tracked. On the back of the
It should, perhaps, come as no surprise that the Company’s 1684 charter,
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 which Charles II granted to the Company during his attempt to reform 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 149 ibid.
changes by {bracketing} the text from the enrolment and then {bracketing} the text from the 150 ibid.
bill. Additionally, both the Privy Seal Bill and the enrolment omit certain form language that 151 ibid f 40v. cf Reasons to induce the passinge of the Bill touching printing, SP16/484,
ordinarily would appear more fully in the sealed patents given to patentees. I have added the ff 121r, 122r (c Sept 1641) (stating confidently that an author had an ‘undoubted’ right in his
form language in <angled brackets>. Copies of the patent printed in the 17th century—and tangible manuscript and also a right in ‘the worke’ stemming from his ‘owne studies & labour’
drawn from Seymour’s sealed patent rather than from the enrolment—may be found at Bodl so as to control the first printing of it; then arguing more sanguinely that by implication an
JJ Book Trade Docs, no 13 and at Longleat House. Manuscript copies of the grant also drawn author and his assigns ‘must necessarily bee maintayned to have a propertie’ in the work after
directly or indirectly from Seymour’s sealed patent appear in a number of other places as well. the first printing).
See, eg, BL Harley MS 5910, ff 113r–115r; SP29/450, f 256 (incorrectly dated 17 October 152 MT Treby MS 2C, pp 172–73. Treby later became Solicitor General (1689), Attorney
1669). We can deduce that the copies just mentioned stem from the sealed patent given to General (1689–92) and Chief Justice of the Common Pleas (1692–1700).
Seymour because they include the name of Sir Richard Pigott, Clerk of the Patents, whose name 153 The Case of the Booksellers and Printers Stated; with Answers to the Objections of the
normally would appear only on the sealed patents; their text more closely follows the bill than Patentee ([London], 1666).
the enrolment; and the form language is not as abbreviated. Lastly, given that I do not cite it, I 154 Stationers v Bradford (12 June 1700) C37/692 (Cowper arg).
should note that Seymour’s sealed patent does not appear to have survived. 155 Stationers v Partridge (1709) HLS MS 1109, pp 47, 48 (Ch) (Northey arg).
City of London and its chartered companies, also took for granted that Seymour had accused high-level members of the Company of trading in
authors were the source of copyrights. When the charter spoke of registra- seditious and unlicensed books.160
tion of a copyright, it spoke only of Company members who could trace The parties eventually settled. On 28 June 1678, Seymour assigned the
their title back to the author. That is to say, those who 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
fuerit et devenerit shall be and shall become a
proprietarius alicuius libri vel proprietor of any book or
term of the patent.161 Soon after, Seymour also agreed for 500 guineas to
copie aut per donum vel copy either by gift or procure for the Company at his own expense and charges a printing patent
acquisitionem ab authore purchase from the author or to replace his reversion grant for school books.162 In the end, however, he
inde vel tal alia persona que thereafter from such other did not see much of the money. Seymour died circa January 1678/9.163 As
habet vel habebit ius et person who has or shall have for Gadbury, apart from an inchoate effort to obtain his own privilege to
potestatem dandi concedendi the right and power of giving print almanacs,164 he printed all of his Ephemeris almanacs after 1676 with
vel vendendi euisdem[.]156 granting or selling the same. the Company of Stationers. He then died in March 1703/4 and was suc-
ceeded in business by his cousin Job.165
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 V. CONCLUSION
would not ‘comprint the Books that the Company have in their Patents, or
belong by way of Coppyright from the Authors of Books’.157 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
Not long after the judgment in Seymour, the parties met again in an attempt Seymour that authorship formed a basis for property rights in a work, and
to resolve their differences.158 Although the Company had scored a victory that when an author or owner of a work was uncertain, ownership passed
in the Common Pleas regarding the almanac portion of its patent, Seymour’s to the Crown by operation of law. As far as the four printed and manuscript
patent contained another grant within it (for certain Latin and Greek works reports of the case reveal, no judge rejected this notion. The judgment also
and school books) and he also held a separate reversion grant from the suggested that the Crown had a proprietary interest in the calendar because
Crown (not previously mentioned in this chapter) for printing certain other it was part of the Book of Common Prayer, a work which the Crown had
school books.159 Both grants interfered with the Company’s objectives in commissioned from its compilers. The notion of a right held by purchase
the market. Additionally, Seymour and the Company were at loggerheads or employment of authors was already in currency at the time. And arguing
again in the Privy Council and in a committee of the House of Lords where 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.
156 Patent of the Company of Stationers, C66/3242, no 4 (22 May 1684). On the life and 160 Seymour v Stationers (17 and 24 November, 8 December 1676) PC2/65, pp 377, 384,
death of this charter, see C Blagden, ‘Charter Trouble’ (1957) 6 Book Collector 369. 396; M Dzelzainis, ‘L’Estrange, Marvell and the Directions to a Painter: The Evidence of
157 Letter of the Bishop of Oxford to John Bellinger, SCA Liber A, f 161r (c 21 August Bodleian Library, MS Gough London 14’ in A Dunan-Page and B Lynch (eds), Roger L’Estrange
1685). Twelve years prior, Fell had indicated that authors could hold a copyright after first and the Making of Restoration Culture (London, Ashgate, 2008) 53, 55–65 (describing the
publication. Entering a book in the register of the University of Oxford, he wrote: ‘The Copy work of the Lords’ committee in early-to-mid 1677); [J Seymour], The Case of Libels ([London],
belonging to Dr Fell & Dr Yates for the first Edition: after to the Author’. OUA SEP/P/17b/4b c 20 March 1676/7), reprinted in G Kemp (ed), Censorship and the Press, 1580–1720
(14 April 1673). (London, Pickering and Chatto, 2009) vol 3, 103.
158 SCA Journal Book of Money Disbursed (6 September and 27 October 1677, 14 March 161 Assignment from John Seymour to George Sawbridge, Abell Roper, Thomas Vere, John
1677/8); SCA Court Book D, f 287r (2 October 1677), ff 314v–315r (12 March 1677/8). Martin and Thomas Newcomb, SCA Series I, box E22 (28 June 1678).
159 Grant to John Seymour for School Books, Privy Seal Docquet, PSO5/10 (November 162 SCA Court Book D, f 330r (6 October 1678), f 337v (31 January 1678/9); see also Patent
1669). The reversion grant mostly covered books that had been granted to the Company in of the Company of Stationers for School Books, C66/3205, no 26 (6 January 1678/9).
1666. See n 57 above. Seymour’s reversion never passed the Great Seal and thus does not 163 Will of John Seymour (n 58).
appear in the C66 patent rolls. See Petition of the Company of Stationers, John Seymore and 164 SP44/337, p 122 (25 October 1686).
Roger Norton, SP29/408, f 108 (c December 1678) (noting that the grant only passed the Privy 165 P Curry, ‘Gadbury, John (1627–1704)’ in ODNB (Oxford, Oxford University Press,
Seal ‘by reason of [Seymour’s] sudden going beyond the Seas in your Majesties Service’). 2011).
100 Lionel Bently Sayer v Moore (1785) 69
Crutwell v Lye,75 a case concerning a business which transported goods the Elder Brethren of Trinity House, to whom Chandler had dedicated his
from Bristol and Bath to London. When its owner, George Lye, became chart, were arguably more culpable than Chandler for failing to examine
bankrupt, the business was sold by auction to Cruttwell. When Lye had sat- it before giving their approval. The jury were prepared to have found for
isfied his creditors, he started up in the same business, indicating he would Moore, but Steel’s counsel submitted to a nonsuit (requiring Steel to pay
use the same routes and times as previously. Cruttwell sought an injunction Moore’s costs). Lord Kenyon apparently ‘declared he heartily concurred
to prevent Lye competing in this way on the basis that it damaged the good- with the Jury, and expressed his indignation that such erroneous Charts as
will he had purchased. Samuel Romilly, now acting for the plaintiff, argued Mr Steel’s should be published’.46
that that ‘conduct falls directly within the principle in Hogg v Kirby’. Eldon Moore continued in his business and by 1791 was styling himself
LC refused the injunction sought but in a rather rambling judgment referred ‘Hydrographer and Chartseller to the Duke of Clarence’.47 However, he
to Hogg v Kirby, seems to have been a person who attracted enemies. In 1794 an anony-
mous broadsheet was circulated, which referred to Moore as the ‘pretended
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 hydrographer to the Duke of Clarence’, and accused Moore of ‘debauching
publishing his book as the work of the Plaintiff; which had been partly published: his servant’, ‘offering to bribe a villain to swear a false debt against her’,
the Injunction not going farther than to restrain the publication as the same with, ‘robbing and hiring others to rob the late Mr Robert Sayer’ and ‘plundering
or a continuation of, the Plaintiff’s work. So there can be no doubt, that this Court the property of his neighbour Mr Steel’.48 That year Moore also had a fall-
would interpose against that sort of fraud, which has been attempted by setting up ing out with his former assistant, William Heather. Heather had learnt the
the same trade, in the same place, under the same sign, or name: the party giving business of chart publishing and selling with Moore, but had left in 1792
himself out as the same person. to start his own business. Initially relations appear to have been good, with
This latter interpretation, especially, reframed Hogg v Kirby as embodying Heather printing and selling sailing directions for Moore’s charts as well as
a principle of general application to all traders, and one based distinctly on selling copies of The New Practical Navigator.49 But, sometime in 1794,
fraud. Moore instituted an action at law against Heather in the King’s Bench seek-
In June 1813, Anthony Hart, as counsel, also relied on Hogg v Kirby in ing recovery of £1,270, which Moore claimed that Heather owed him from
Canham v Jones,76 a case in which a former employee had started selling a the time of his employment. Heather then brought a suit in the Court of
medicine, known as ‘Velno’s Vegetable Syrup’, under that name. The case Chancery, seeking an order to stop the trial until he could get discovery. In
seems to have been presented both as one for misuse of a trade secret (the his Bill of Complaint, Heather accused Moore of neglecting his business and
employer having originally paid £6,000 for the recipe), and wrongful use being given to intoxication and irregularity, which had required Heather
of the name. The defendant had put in a demurrer ‘for want of Equity’, to run the accounts and business for him. Heather alleged that after he left
referring to the Gloucestershire Clothier’s case and identifying it as involv- Moore’s employ, Moore had asked him to go into partnership and, upon
ing selling cloth of inferior quality under the same mark. Hart argued that Heather’s refusal, had become angry and threatened to ruin him.50
the jurisdiction in Chancery was not dependent on the capacity to bring an Moore eventually responded, denying Heather’s accusations of intoxica-
action at law, but ‘stands upon false representation, producing injury, aggra- tion and irregularity in business. He claimed that his work in planning, con-
vated in this Instance by breach of trust’.77 Plumer VC rejected the argument structing and laying down charts, as well as writing books on navigation,
based upon the secret as having proceeded ‘upon an erroneous notion of instructing captains, masters and officers of ships and vessels in navigation, and
exclusive property’, and distinguished the case in hand from Hogg v Kirby, in making his charts ‘more correct and useful than any other charts’, kept
as here the defendant was merely representing ‘that he sells, not the Plain- him so busy and created such large demand, that he had to employ Heather
tiff’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: 46 ibid.
47 See Moore, The Practical Navigator (n 10).
the Violation of Right, with which the Defendant is charged, does not fall within 48 A copy of the broadsheet may be found in the archives of Imray Laurie Norie & Wilson
the Cases, in which the Court has restrained a fraudulent Attempt by one Man
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,
75 20 and 21 November 1810; 17 Ves Jun 335; 34 ER 129. The New Practical Navigator (n 10).
76 23 June 1813; 2 Vesey & Beames 218; 35 ER 302. 50 C12/206/24 mm1–2. (3 November 1794). Note, I have not yet found any documents
77 2 Vesey & Beames 218, 220; 35 ER 302. relating to the action at law.
70 Isabella Alexander Day v Day, Day and Martin (1816) 99
as a shopman.51 Upon his wife becoming unwell he had sent her to the of the houses of peers and commons, and the defendant had published a
country and visited her there, meaning he had left more of his business similar work under the name the ‘Imperial Calendar’. Eldon LC granted an
in Heather’s hands. He maintained that Heather owed him money and, as injunction, inferring from the evidence of mistakes common to both works
Heather put in no further response, the injunction suspending the action at that large portions of the defendant’s work had derived from the plaintiffs’
law was dissolved.52 works. Clarifying that nothing should prevent the defendant from creating
This was not, however, the end of the ill-feeling between Heather and its own calendar as a result of its own original labour, he observed:
Moore. Although the fate of the King’s Bench action is unknown, Heather In the case of Hogg v Kirby (8 Ves. 215) there was no doubt, that any person
brought a second suit in Chancery against Moore in 1797, this time alleg- might publish a work of the description, which was the subject of that Injunction:
ing copyright infringement. Heather, and his partner William Williams, each party might publish his own collection; and the articles might happen to be
accused Moore of pirating a chart entitled ‘A New and Correct Chart of the the same: but the one could not excite the public curiosity by copying into his
Coasts of France Spain & Portugal drawn from the latest observations & work from that of the other. The Defendant in that case had not done that: but
surveys by William Heather’, published in 1793. The case was commenced he published a Number of a work, as a continuation of the Plaintiffs’ old work;
in Chancery,53 but moved to the King’s Bench where it was heard in March taking the credit, which had been acquired by that, to his own; and that he was
1798 before Lord Kenyon and a special jury of merchants.54 Heather had not permitted to do.
indeed learnt more than just how to sell and publish charts from Moore and Eldon LC thus represented Hogg v Kirby as an example of a situation in
this time he beat him at his own game. Heather and Williams retained two which one publisher had illegitimately ‘taken credit’ of another. Moreover,
King’s Counsel, Thomas Erskine and William Garrow, both high-profile in many subsequent textbooks, the case was widely cited as a ‘copyright
leaders of the bar, as well as a third barrister, George Holroyd. At the trial, related’ matter, rather than as a trade mark precedent.71 Lloyd, in his semi-
John Stephenson again appeared as witness, but this time he was witness nal articles on trade mark law (later transformed into the first book devoted
for Heather—perhaps Heather was not the only one of Moore’s former to the topic), treated the case as falling in a separate category, suggesting
friends to turn against him. Stephenson asserted that it was Moore’s chart that the case represented an equitable extension of the property created by
which contained ‘several dangerous omissions’55 and that these were care- the Copyright Act to include cases where, rather than material being repro-
fully remedied in Heather’s map. John Norie, another of Moore’s former duced, new material was represented as if it were a reproduction.72 Most
employees, also gave evidence to the effect that Moore’s chart was a copy. bluntly, Charles Drewry stated categorically that Hogg v Kirby was ‘in fact
Moore’s defence acknowledged that he had indeed copied the chart, but a copyright case, obviously distinguishable from a trade mark case’.73
he denied the chart belonged to Heather and Williams. He claimed instead Yet Hogg v Kirby was also conceivable as a case of what we would now
that they had copied it from his own publications. In response, Erskine, call ‘passing off’ (though the term was not yet known to the courts).74
who had served as a midshipman in the Navy in his youth, turned the full The bill of complaint emphasised the work that went into producing the
force of his rhetorical powers to the occasion. Erskine began by setting out magazine, and its positive reception; that it was known and liked by refer-
the policy of the legislation: ‘to secure to these different descriptions of per- ence to its title and appearance; and that Kirby was involved in deceiving
sons who had been at great labour and expence, the fruits of their labours, the vendors and ultimate purchasers into viewing Kirby’s magazine as a
by preventing others for a certain period from copying their works’.56 He continuation of Hogg’s series. The need for protection of business reputa-
went on to point out that the defendant had not even taken the trouble of tion from such damaging deceptive practices was not peculiar to the pub-
drawing his own map, let alone collecting any useful information, but had lishing trade. Indeed, Eldon LC encouraged just such an interpretation in
made merely colourable alterations. Moreover, ‘Mr Moore had, through his
negligence, omitted islands, rocks and shoals by wholesale, which omissions
71 H Maddock, A Treatise on the Principles and Practice of the High Court of Chancery
51 C12/206/24 mm 3–6 (26 February 1795). (London, W Clarke & Sons, 1815) vol 1, 125; G Jeremy, A Treatise on the Equity Jurisdiction
52 C33/489 f 500v (10 July 1795). of the High Court of Chancery (London, J and W T Clarke, 1828) 324; G Goldsmith, The
53 C12/225/16, C33/496 ff 161, 372, C33/497 f 439. Doctrine and Practice of Equity (London, Saunders & Benning, 1838) 40.
54 Express and Evening Chronicle, 1–3 March 1798, Issue 537; ‘Trial of John Hamilton 72 Lloyd (n 44) 39.
Moore for Pirating a Chart. Sittings after Term, March 1798, before Lord Kenyon and a 73 CS Drewry, The Law of Trade Marks (London, 1878) 9.
Special Jury of Merchants’ (London, Plummer, 1798). 74 RH Eden, A Treatise on the Law of Injunctions (London, Joseph Butterworth, 1821)
55 ‘Trial of John Hamilton Moore for Pirating a Chart’ 3. 313, treats Hogg v Kirby as part of a series of cases, including Day v Day, involving trade
56 ibid 1. misrepresentation.
from an old, rather than representing new material to ‘part of the old work’. rendered his Chart very dangerous, and would often prove fatal to the lives
Acknowledging that extending of copyright in this way presented ‘consider- of Mariners.’57 Lord Kenyon was clearly persuaded by the arguments and
able hazard of miscarriage’, the judge indicated that while the question in witnesses for the plaintiffs. Observing that ‘the face of nature is open to
a copyright case was whether the books were the same, the question here everybody, but no person is permitted to copy another person’s property’,58
was whether the defendant represented them to be the same.65 Kirby was he instructed the jury that the defendant had clearly copied the plaintiffs’
entitled to publish any work that was ‘really new’ but having published it chart. The jury found for the plaintiff. The reports do not record whether
as ‘the continuation of the work of another person’, Eldon decided that in any damages were awarded. However, one claims that, in consequence of
such a case, an injunction should be granted. Nevertheless, he directed that the verdict, the Chancery injunction was lifted, and Moore’s copper plates
the plaintiff bring an action at law to which the defendants should plead were destroyed, as were all the impressions taken from them. Moore also
without delay, such that ‘it may be tried with all due speed’.66 According to ‘refunded’ the money for those charts he had sold and paid all the Costs of
the Order books, manuscript volumes in which Chancery proceedings are Suit in Chancery.59
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
III. COPYRIGHT LAW AND ENLIGHTENMENT EPISTOMOLOGY
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 A. Maps, Law and Enlightenment
Defendants … from publishing or exposing to sale copy or copies of the Defend-
ant’s said work and from printing publishing or exposing to sale any other work Crucial to the arguments in each of the three cases was the question of what
or publication as, or being a continuation of the Plaintiff’s work or the Defend- made a good sea chart. This was a question of considerable importance in the
ant’s work which has been so published as such continuation as aforesaid and period. The eighteenth century is generally considered the period in which
from printing all or any part or parts of the Plaintiff’s said work …67 pre-modern, decorative or artistic maps gave way to practical, scientific
One possible explanation for Hogg v Kirby is that it concerned protection of maps.60 This shift required the development of new relations between mari-
a literary work, and was an accessory to the copyright therein.68 It is notable ners and commercial map producers and responded to a new demand. It
that the bill referred to Hogg as being the sole proprietor of copyright in the was only since the late seventeenth century that printed maps had really
magazine,69 and much of Lord Eldon’s judgment seems concerned to reason begun to be printed locally in any great numbers—a fact which is some-
from the acknowledged copyright in issues 1–5. Moreover, the first occasion what surprising, given Britain’s long seafaring tradition.61 Prior to that time,
on which the case was cited in judgment was also limited to the context of English mariners, insofar as they used charts at all, relied on hand-drawn
publishing. In Longman v Winchester in 1809, also reported by Francis maps compiled using French, Portuguese, Dutch and Spanish materials. The
Vesey Junior,70 the claimants had published various works containing lists 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
65 8 Ves Jun 225, 32 ER 340. which he acquired and refurbished.63
66 8 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 57 ibid 2.
have allowed him to recover damages. 58 ibid 4.
67 C33/520, f 279v. The Order continues: ‘and it is further ordered that the injunction issued 59 ibid 5.
in this cause to restrain the Defendant Ralph Smith Kirby from printing or publishing any of 60 MH Edney, ‘Reconsidering Enlightenment Geography and Map Making: Reconnais-
the letters or communications sent to or received by him be continued until the hearing of this sance, Mapping, Archive’ in CWJ Withers and D Livingstone (eds) Geography and Enlighten-
cause and the further order of this Court’. ment (Chicago, University of Chicago Press, 1999) 165.
68 For other attempts to limit Hogg v Kirby, see Matthewson v Stockdale (1806) 12 Ves Jun 61 Hodson, ‘Maps, Charts and Atlases in Britain’ (n 12) 776.
270, 33 ER 103 (‘Mr. Richards, in Reply, observed, that in this case there was no such ground 62 Tyacke, ‘Chartmaking in England’ (n 26), 1722–53; S Fisher, ‘The Organisation of
of jurisdiction, as in Hogg v Kirby: a breach of confidence’). This, too, was a case concerning Hydrographic Information for English Navigators—Five Hundred Years of Sailing Directions
copyright in a compilation, the ‘East India Calendar’. and Charts’ (2001) 54 Journal of Navigation 157, 157–59.
69 The bill recited that ‘Copy right of the said work belonged to your Orator alone no other 63 C Verner, ‘John Seller and the Chart Trade in Seventeenth-Century England” in NJW
person besides him having any Interest or right of property whatever therein’. Thrower (ed) The Compleat Plattmaker: Essays on Chart, Map and Globe Making in England
70 16 Ves Jun 269, 33 ER 897 (LC). in the Seventeenth and Eighteenth Centuries (Berkeley, University of California Press, 1978).
Captain Greenvile Collins, who had been appointed by Charles II to survey inter partes argument on 11 and 15 March 1803.59 The case attracted some
the coasts in 1681, commented in his resulting publication that he had been attention, and was of concern to booksellers.60
commissioned because ‘there were no Sea Charts or Maps of these King- According to Francis Vesey Junior’s report of the arguments, Richard
doms but were Dutch, and Copies from them and those very erroneous.’64 Richards and Charles Wetherell, counsel for Hogg, sought to justify inter-
Samuel Pepys, whose position as Clerk of the Acts to the Navy and later vention on the basis of ‘property in a newspaper’; implied agreement; and
on in Trinity House and the Admiralty, also gave him a pressing interest in the duties of an agent to its principal.61 The first argument, which does not
nautical matters, was concerned by the lack of good maps in this period. Of appear to have been seriously pressed, suggested that property existed in
Seller’s new English sea atlas he complained: ‘They say that even Seller’s new a newspaper and that an action lay for publishing any other paper under
maps are many of them little less than transcripts of the Dutch maps, some the same title.62 The second argument was that Hogg’s agreement that the
of them with papers pasted over and names scratched’.65 defendant should be named as publisher and distribute the work carried
Over the course of the seventeenth century English shipping began to with it the implication that when this ceased the defendant should not pub-
expand rapidly, with the number of ocean-going ships doubling by 1700, lish a different work under the same title. This was necessary for the ‘com-
and doubling again by 1800 as trade with the East Indies became increas- plete enjoyment under the agreement’. As damages would be an insufficient
ingly important.66 Yet poor quality charts remained a problem for mari- remedy for breach of such an implied term, an injunction should issue. The
ners. Captain James Cook, whose own meticulous approach to map-making third argument put for Hogg was that the usage of booksellers, as well as
formed his reputation as a renowned hydrographic surveyor, blamed both equitable principles, meant that Kirby and Hogg stood in a relationship of
navigators and map publishers for the poor quality of most charts, writing agent and principal. Various cases were cited to support this, some con-
in his journal in 1770: cerning the publication of letters. In making these arguments, Hogg’s coun-
[I]t is not [previous navigators] that are wholy to blame for the faultiness of the
sel sought to distinguish Blanchard v Hill on the basis that it concerned
Charts, but the Compilers and Publishers, who publish to the world the rude a situation in which there was no prior contractual relationship between
Sketches of the Navigator as Accurate surveys, without telling what authority the parties. The defendant, represented by Sir Samuel Romilly, alluded to
they have for so doing; for were they to do this we should then be as good or bet- Blanchard, arguing that there was no copyright but merely ‘an adventure
ter judge than they, and know where to depend upon the Charts, and where not. under a certain name; such as card-makers, shoemakers, etc’, and that a
Neither can I clear Seamen of this fault; among the few I have known who are breach of contract, if there was such, would not justify an injunction.
Capable of drawing a Chart or Sketch of a Sea Coast I have generally, nay, almost Eldon LC granted an injunction until the hearing, though his precise rea-
always, observed them run into this error. I have known them lay down the line sons are less than clear. According to Vesey, Eldon LC was not prepared
of a Coast they have never seen, and put down Soundings where they never have to act on the basis of implied terms derived from the usage of booksellers,
sounded; and, after all, are so fond of their performances as to pass the whole off nor to infer a term that Kirby would ‘never become editor, proprietor or
as Sterling under the Title of a Survey Plan, etc.67
publisher, of any work similar in species, but different in the contents’.63
Parliament was also aware of the need to improve navigation. In 1714, the Eldon LC accepted that there was copyright in Hogg’s journal, but that this
Board of Longitude was established and a reward of £20,000 was offered would not be infringed where another person ‘set about a similar work,
for a method which could find longitude to within half a degree (equivalent bona fide his own’. This might have precluded intervention on such a basis,
to two minutes of time) at sea. Two methods of establishing longitude were 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
64
most such cases had involved offering a new work using material taken
‘Preface’ in G Collins, Great Britain’s Coasting Pilot (London, Freeman Collins, 1693).
65 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. 59C33/520, f 279v, 11 March 1803 (LC).
66 Fisher, Blueback Charts (n 13) 3; see also DW Waters, ‘The English Pilot: English Sailing 60Bell’s Weekly Messenger (20 March 1803) 95 (‘the above decision was looked for with
Directions and Charts and the Rise of English Shipping, 16th to 18th Centuries’ (1989) 42 much anxietyby the booksellers’).
Journal of Navigation 317. 61 8 Ves Jun 215, 217, 32 ER 336, 337.
67 Captain WJL Wharton (ed), Captain Cook’s Journal During his Voyage Round the World 62 They cited Watson v _____ (Hil Term 1732).
made in H M Bark Endeavour 1768–71 (London, Elliott Stock, 1893) www.gutenberg.org/ 63 8 Ves Jun 222, 32 ER 339.
files/8106/8106-h/8106-h.htm. 64 8 Ves Jun 222, 32 ER 339.

He responded with his own newspaper adverts alerting booksellers and ultimately found: one being John Harrison’s chronometers and the other
subscribers, to ‘the most shameful IMPOSITION’.53 using lunar tables, which the Board then published annually. After its main
Hogg decided to bring proceedings against Kirby (and his partner John role was fulfilled, the Board turned its attention to fostering improvements
Scott), filing a bill in Chancery setting out his grievance on 24 January 1803,54 in navigational instruments and improving naval charts.68 However, the
followed by affidavits.55 The bill claimed that Kirby had ‘most artfully con- Admiralty had no regular surveying service analogous to that provided by
trived the contents to make deception more complete’. For example, the the military engineers of the Corps of Ordinance for the Army. From time to
fifth issue of Granger’s Wonderful Museum had announced that issue 6 time special arrangements were made, as in the case of Murdoch Mackenzie,
would contain a portrait of a celebrated character named the Chevalier de who was ordered by the Admiralty to survey Ireland and the west coast
Verdun and the sketch of the skeleton of a very curious animal called the of Britain, but even the charts produced were engraved by the commercial
Mammoth. Kirby had included both in his new publication. Kirby’s journal map-maker Emmanuel Bowen and published privately by the author.69
also purported to finish an article on the history of the ‘woolly mammoth’ Surveys were thus left largely to personal initiatives of pilots, masters
which had been left unfinished in the fifth issue of Granger’s Wonderful and Trinity House officers, while publication was left to the commercial
Museum. Moreover, Kirby’s magazine, although purporting to be ‘No 1 firms. However, the ability of such firms to carry out extensive revisions of
of—A NEW SERIES’, contained an index to ‘the first five issues’. Hogg’s bill existing maps, through the procuring of new surveys, was limited. Indeed,
alleged that the effect was ‘impose upon the Publick and the Venders who commissioning new surveys introduced still greater levels of risk, as Thomas
had taken in the former Five numbers … and induce a belief that the same Jefferys had discovered to his cost in his land-mapping ventures.70 Of the
was a continuation of the genuine work’. It also charged that Kirby had mid-eighteenth century chart-makers, Sayer and Bennett were alone in hav-
instructed booksellers to assure purchasers that this was the case. ing a strong enough financial position to commission surveys, such as a sur-
Eldon LC granted an injunction until answer preventing Kirby and Scott vey, in 1777, of the Irish sea from Joseph Huddart, an East India company
from selling or circulating copies of the magazine, printing or publishing captain.71 They also had the advantage of having purchased the major share
‘any future number’ under ‘the same or under any similar appellation, [and] of Cook’s charts of Newfoundland from Jefferys.
from borrowing and using the title and appellation or copying the orna- In numerous editions of his Practical Navigator, Moore observed that it
ments or any part’.56 Kirby (and his partner John Scott) put in an answer, was ‘a general Complaint among Seamen, that few Sea Charts are found
‘denying the whole Equity’ of the claim, and sought to have the injunction correct’.72 He advised them to follow his instructions, which would allow
dissolved.57 Hogg requested an extension of time in which to show cause them to make their own corrections to existing maps or even to make new
to continue the injunction until the hearing, and this was granted on condi- ones. For his own maps, he appears to have been reliant on information
tion that Hogg ‘shewed cause on the merits’.58 The matter thus came to an 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
53 The York Herald (8 January 1803); The Hull Packet (11 January 1803); The Bury and Admiralty and ‘took the Liberty to recommend the furnishing of Masters
Norwich Post (12 January 1803). with proper Charts, when ordered upon distant Services’ but that he had
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 ‘never heard any Thing of the Matter since’.73
(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). 68 P Johnson, ‘The Board of Longitude 1714–1828’ (1989) 99 Journal of the British
56 C33/520, f 173; C37/2505 (27 January 1803) (‘Take the injunction till answer or further Astronomical Association 63.
order’). Hogg immediately added parallel suits against John George Barnard, Kirby’s printer, 69 Hodson (n 12) 777.
and Henry Delahay Symonds, a distributor: C13/2402/20 (bill of Alexander Hogg, 1 Feb 1803; 70 See JB Harley, ‘The Bankruptcy of Thomas Jefferys: An Episode in the Economic History
answer of JG Barnard, 16 March 1803). of Eighteenth Century Map-Making’ (1966) 20 Imago Mundi 27–48.
57 C13/2402/21 (11 February 1803); C33/520, f 154 (12 February 1803) (LC) (noting that 71 Fisher, Blueback Charts (n 13) 56.
defendant had answered; injunction to be dissolved unless plaintiff showed cause to continue 72 JH Moore, The Practical Navigator, and Seaman’s New Daily Assistant, 6th edn (Lon-
it by 20 February 1803). don, JH Moore, 1781) 243.

58 C33/520, f 212, 28 February 1803 (MR). 73 Moore (ibid) 251.
Moore and Sayer were thus both intimately involved in efforts to bring Henry Maddock wrote that ‘an injunction will not lie to restrain one trader
new levels of accuracy and comprehensive to sea charts—Moore through from making use of the same mark with another’.47 I have argued elsewhere
his navigational and mathematical skills and Sayer through his resources— that the proliferation of trade mark cases at common law in the late eight-
and their competition in this relatively small field might alone have brought eenth century can in part be understood as reflecting a widespread view that
them into conflict. However, this is not the full story. As noted above, a Chancery would not grant relief.48
growing concern for charts which would depict new discoveries and existing Nevertheless, a second, more recent, authority suggested that Chancery
sea routes with scientific accuracy, using new technologies such as Harrison’s might be more amenable to such suits. This was a decision of Eldon LC
chronometer, is sometimes said to pave the way for modern, science-based, in Hogg v Kirby in 1803. In this case, the plaintiff, Alexander Hogg, a
geography. At the same time, recent critical re-evaluations of historical car- publisher of 16 Paternoster Row,49 commenced publication of a magazine,
tography have emphasised the value-laden, complex, contested and ideolog- entitled Granger’s New Wonderful Museum and Extraordinary Magazine
ical nature of map-making.74 A more nuanced story has thereby emerged, in August 1802. The defendant, Ralph Smith Kirby, who was Hogg’s neigh-
in which eighteenth-century geography can be viewed as ‘an intertextual bour at 15 Paternoster Row,50 was designated as the publisher, but accord-
web of discursive practices that underscored Enlightenment’s ideology of ing to Hogg, who claimed to be the genuine publisher, Kirby was really
encyclopaedic knowledge’.75 only a distributor of the magazine, entitled to a mere four per cent commis-
In the case of Sayer v Moore, and the two cases which followed it, we sion on sales.51 After five issues, the parties fell out, Hogg having decided
can discern the close relationship between the development of copyright to remove Kirby’s name from the further print runs of some of the early
doctrine and Enlightenment ideology, and therefore argue that the law, issues (the first of which had been 3,000 copies). Hogg announced he would
too, formed part of this ‘intertextual web’. The influence of Enlighten- publish the sixth issue in December 1802. However, before he could do
ment ideas and philosophies on copyright law is not a new observation. so, on 1 January 1803, Kirby launched his own version, Kirby’s Original
However, this chapter does not simply seek to point to ‘evidence’ for the Wonderful Museum, or Magazine of Curiosities, for one shilling, being issue
influence of Enlightenment philosophy on the development of the common 1 of ‘a new series’.52 Hogg was incensed. It was not just that Kirby was
law, but rather to identify the emerging law of copyright as part of the English competing, and using the title ‘Wonderful Museum’, but that his publica-
Enlightenment.76 Using the specific case study of the sea chart litigation, it tion gave the impression that it was the continuation of Hogg’s publication.
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 sci-
entific practices, the growth of trade and commerce and imperial or colonial 47 H Maddock, A Treatise on the Principles and Practice of the High Court of Chancery
expansion.77 Enlightenment thinkers shared a belief in ‘the power of learn- (London, 1815) Vol 1, 134. The same statement appears in 1 Chitty’s General Prac. 721,
ing as a means of bringing about improvement’.78 One form that this belief though Joseph Chitty added that ‘in a late case’ an injunction had been granted, referring to
took was a widespread interest in ‘information management, data collection 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,
and knowledge production’,79 which took place in a flourishing print cul- Day and Martin, but like Chitty not suggesting a way to reconcile the cases).
ture, embodied not only in the profusion of encyclopaedias and dictionaries 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.
74 See, for example, JB Harley, ‘Maps, Knowledge and Power’ in Paul Laxton (ed), The 51 Hogg’s printer was Michael Allen. According to Hogg’s bill, William Granger’s name was
New Nature of Maps: Essays in the History of Cartography (Baltimore, The Johns Hopkins inserted as the nominal author ‘as is usual in works of that description’. However, Hogg was
University Press, 2001). notorious for reissuing similar publications under different titles: see CH Timperley, A Dictionary
75 Edney, ‘Reconsidering Englightenment Geography’ (n 60) 165. of Printers and Printing (London, H Johnson, 1839) 838. According to Vesey’s report of Hogg
76 See J Rudolph, Common Law and Enlightenment in England, 1689–1750 (Rochester, v Kirby, near the conclusion of his judgment, Lord Eldon LC had stated: ‘I have considerable
Boydell Press, 2013). difficulty as to the false colours under which the original publication appears. Though this
77 ibid 2. is very unusual, I cannot represent it to my mind otherwise than as something excessively
78 RB Sher, The Enlightenment and the Books: Scottish Authors and Their Publishers in like a fraud on the public. But it will be better to leave that as an ingredient in the action for
Eighteenth Century Britain, Ireland, and America (Chicago, University of Chicago Press, damages’.
2007) 17. 52 Jackson’s Oxford Journal (8 January 1803); The York Herald (15 January 1803); The York
79 Rudolph, Common Law and Enlightenment (n 76) 24. Herald (29 January 1803) (Kirby’s advertisements even warned his customers against imitators).
matter not ‘at Law’ but in Chancery, represented by the Attorney-General of arts and sciences,80 but also in the rapidly growing and transforming field
Dudley Ryder. According to one report, Ryder referred to common law of geography and map-making.
authorities, in particular the report of Southern v How, and thus indirectly to Matthew Edney claims that, during the eighteenth century, the map was
the unreported Elizabethan Gloucestershire Clothier’s case.41 Nonetheless, considered the ‘epitome of encyclopaedic knowledge’.81 He goes on to
Lord Hardwicke LC was unpersuaded and declined to grant an injunction. explain that ‘Enlightenment encyclopaedism entailed a dialectic of experi-
An account of his reasons was reported in Atkyns’ reports:42 ence and reason: it is experience, usually visual in nature, which produces
In the first place, the motion is to restrain the defendant from making cards
information about the world, but it is reason which refines and structures
with the same mark, which the plaintiff has appropriated to himself. And, in that experience and which gives it meaning’.82 Thus, the geographic prac-
this respect, there is no foundation for this court to grant such an injunction. tices of reconnaissance and mapping spread quickly beyond the field of
Every particular trader has some particular mark or stamp; but I do not know any geography, as mapping became a metaphor for a broader exercise in global
instance of granting an injunction here, to restrain one trader from using the same ordering. Edney points to the examples provided by the encyclopaedists
mark with another; and I think it would be of mischievous consequence to do it. Diderot and d’Alembert, who called their work ‘a kind of world map’, to
Ephraim Chambers’ reference to his 1728 classification a ‘map of knowl-
Although the issue was muddied because Blanchard based his exclusive right
edge’ and Carl Linnaeus’ description of his taxonomy system as a mappa
to sell the playing cards on a Charter granted by King Charles I to the Com-
naturae.83
pany of the Makers of Playing Cards,43 according to this report, the Court’s
A further, pertinent, example can be found in Blackstone’s famous
reasoning seemed to preclude completely any Chancery involvement in trade
Commentaries. While the relationship between Blackstone’s architectural
mark cases,44 and it came so to be understood. Thus, for example, in 1776,
training and the composition of his Commentaries84 as well as his artistic
Comyn’s Digest cited the case for the proposition that ‘[t]he Court will not
and visual instincts85 has attracted scholarly attention, the extension to
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 Abridg- mapping and surveying more generally has not often been made. An excep-
ment with the statement ‘there was no instance of restraining a trader from tion is Simon Stern, who has drawn attention to both Blackstone’s use of
mapping as metaphor, as well as the relationship between his undertaking
making use of the same mark with another’.46 Moreover, as late as 1815,
and other intellectual projects, such as those just mentioned, which are more
frequently identified with Enlightenment encyclopaedism.86 This can clearly
41 Southern v How (1618) Cro Jac 468, 471; Poph 144; 2 Rolle Rep 28. On the be seen in his introduction, where Blackstone wrote:
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. an academical expounder of the laws’ should ‘consider his course as a general map
42 2 Atk 484, 26 ER 692. JT Atkyns, Reports of cases argued and determined in the High of the law, making out the shape of the country, its connexions and boundaries,
Court of Chancery, in the time of Lord Chancellor Hardwicke, 2nd edn (London, H W oodfall its greater divisions and principal cities: it is not his business to describe minutely
and W Strahan, 1765–68); (London, The King’s Law Printers, 1781). The version in the the subordinate limits, or to fix the longitude and latitude of every inconsiderable
English reports derives from the 3rd edition, edited by Francis William Sanders and published
hamlet’.87
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 80 See R Yeo, Encyclopaedic Visions: Scientific Dictionaries and Enlightenment Culture
Amoskeag Manufacturing Co vI.S. and R., (1849) New York Leg Obs 301, 303 (‘The appre- (Cambridge, Cambridge University Press, 2001).
hension of mischievous consequences that this eminent judge felt and expressed, experience has 81 Edney, ‘Reconsidering Enlightenment Geography’, (n 60) 173.
shown to be groundless …’) (Duer J); E Lloyd, The Law of Trade Marks, 2nd edn (London, 82 ibid 175.
Yates and Alexander, 1865) 4 (‘it is not easy to follow the reasoning that led to Lord Hardwicke’s 83 M Edney, ‘Mathematical Cosmography and the Social Ideology of British Cartography,
conclusions’); FH Upton, A Treatise on the Law of Trademarks (Albany, Weare C Little, 1860), 1780–1820’ (1994) 46 Imago Mundi 101–16, 105.
12–13 (it is not easy to understand what mischievous consequences Lord Hardwicke thought 84 See W Prest, ‘Blackstone as Architect: Constructing the Commentaries’ (2003) 15 Yale
would ensue from enforcing trade marks). Journal of Law & the Humanities 103 and Carol Matthews, ‘A “Model of the Old House”:
45 A Gentleman of the Inner Temple, A Digest of the Laws of England Being a Continuation Architecture in Blackstone’s Life and Commentaries’ in Wilfrid Prest (ed), Blackstone and his
of Lord Chief Baron Comyn’s Digest, Brought Down to the Present Time (London, Strahan Commentaries (Oxford, Hart Publishing, 2009).
and Woodfall, 1776) 103; S Rose (ed), A Digest of the Laws of England by Sir John Comyns 85 CS Martinez, ‘Blackstone as Draughtsman: Picturing the Law’ in Wilfrid Prest (ed),
(London, Strahan, 1800), Vol 2, 233; A Hammond (ed), A Digest of the Laws of England by Re-Interpreting Blackstone’s Commentaries (Oxford, Hart Publishing, 2014).
Sir John Comyns (London, Strahan, 1822) Vol 2, 426. 86 S Stern, ‘Effect and Technique in Legal Aesthetics’ (2015) 2 Critical Analysis of Law
46 An Abridgment of the Modern Determinations in the Courts of Law and Equity: Being 496, 505.
a Supplement to Viner’s Abridgment (London, Strahan, 1805) Vol 5, 109 (under the heading 87 W Blackstone, Blackstone’s Commentaries on the Laws of England, Volume 1 (Oxford,
‘Injunctions’). Clarendon Press, 1765) 35.

Blackstone, too, was concerned with characterising the law as a ‘science’, Perhaps not surprisingly, Day and Martin also sought to use judicial
the word being repeated no fewer than 29 times in the introduction alone. means to suppress these imitators. Over the eight years from 1813 to
While the question of whether Blackstone ‘succeeded’ in this respect has 1821 Charles Day was to bring at least 14 sets of proceedings to suppress
long been debated,88 in his endeavours we can trace the geographical counterfeiting. Although such a campaign of litigation was itself unprec-
method of the Enlightenment observed by Edney: ‘reconnaissance’, through edented (and possibly never repeated), what was legally innovative about
observation and experience of the common law, followed by ‘mapping’, or these cases is that they were proceedings in Chancery. By 1810, it was well
‘the reconciliation of differences between observations and the laying out of established that the common law courts (King’s Bench, Common Pleas and
relations between individual pieces of data in a manner directly analogous Exchequer) would hear such actions, resulting often in substantial dam-
to the making of a map’.89 Blackstone’s choice of the map metaphor both ages awards: for example, in 1814, in Cocks v Shout, the claimant, who
signals his participation in Enlightenment epistemology and emphasises the had sold ‘Cocks’s Reading Sauce’ brought an action in Exchequer against
nature of the scientific method he is claiming for the common law. Benjamin Shout, an oilman of Great Queen Street, and obtained £105 in
However, mapping was more than a metaphor for Enlightenment think- damages.36 However, the fate of proceedings in Chancery for injunctive
ers. A further aspect of the Enlightenment project was a drive to make the relief were much less certain.
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 II. THE PRIOR JURISPRUDENCE
navy and merchant shipping fleet, as well as its imperial holdings. For ship-
ping to be efficient, accurate sea charts were crucial. 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
B. Establishing the Authority of the Map pointless; the latter, however, suggested otherwise.
In Blanchard v Hill (1742),37 the plaintiff, Christopher Blanchard,38 was
Just as the use of the map as metaphor leant authority to Blackstone’s a maker of playing cards, in particular a card marked with a picture of the
portrayal of the law, by lending it a sense of structure and coherence, so emperor of Delhi, with the words ‘The Great Mogul’ above. The defendant,
did the law come to provide authority for the particular maps in dispute in Thomas Hill, also a card-maker,39 had printed and sold cards that also bore
the Moore cases. Map titles of the eighteenth century almost always carried a similar image of The Great Mogul. When Blanchard discovered what Hill
claims of being ‘new and accurate’, ‘new and exact’, ‘newly surveyed’ and had been doing, he advertised that he would be pursuing the counterfeiter for
so on, and most of the maps in the Moore litigation were no exception. As a ‘remedy at Law’.40 Hill was not cowed, and placed counter-advertisements
Mary Pedley has noted, such rhetoric was an important advertising and in various newspapers directly next to Blanchard’s. Blanchard pursued the
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 knowl- 36 Cocks v Shout, 20 May 1814 (Chief Baron, Special jury), Lancaster Gazette (16 July 1814).
edge production and validation. It was not, however, sufficient simply to 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
make claims as to newness and accuracy. As noted by Cook in the extract established’. The Chief Baron, Alexander Thomson, who had sat as a judge in Exchequer
above, crucial to establishing whether the claims made to a map’s accuracy since 1787 (before becoming Chief Baron in February 1814), gave his assent, offering a nod-
could be relied on was knowing the ‘authority’ under which it was produced. ding ‘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)

88 See M Lobban, ‘Blackstone and the Science of Law’ (1987) 30 The Historical 24 J Leg Hist 111–42.
Journal 311. 38 Blanchard, who operated out of the King’s Arms in Gerrard Street, was former partner,
89 Edney, ‘Reconsidering Enlightenment Geography’ (n 60) 186. son-in-law and successor to Archibald Vans. See The Daily Courant (6 December 1711) (adver-
90 See J Mokyr, The Enlightenment Economy: An Economic History of Britain 1700–1850 tising the sale of cards by Archibald Vans from the Queens Arms, Gerard Street).
(New Haven, Yale University Press, 2009) 30. 39 Formerly apprenticed to Richard Tustian, Hill was based in the ‘Knave of Clubs’ in
91 M Sponberg Pedley, The Commerce of Cartography (Chicago, University of Chicago St James, Haymarket.
Press, 2005) 188. 40 Daily Advertiser (30 September 1742); London Evening Post (2 October 1742).
The legal proceedings with which we are concerned arose because of a In his 1774 Treatise of Maritim Surveying, the surveyor Murdoch Mackenzie
growth in competitors who imitated Day and Martin’s name, address, labels complained that ‘No Branch of practical Geometry has been so little consid-
and get-up. Day and Martin was not the first blacking firm to encounter ered by Men of Science as Maritim Surveying’.92 He also added that:
such an issue: Bayley and Blew had complained about the counterfeiting of
Wherever the Safety of Shipping is concerned, the Public has a Right to some
their names on blacking during the last decades of the eighteenth century.31 Satisfaction with respect to the Nature and Grounds of the Publication. It is not
Charles Day’s tolerance had, however, become clearly strained by 1812, sufficient to say in the Title, that it is an actual Survey; or a new and accurate
when the firm began to advertise details of the ‘counterfeits’. He warned Survey: it ought to be accompanied with, at least, a short Account of the funda-
customers that: mental Operations, and Manner in which the Survey was conducted.93
Many of the counterfeits say, as made by Day and Martin; others have 97 Holborn, Edney points to the complementary production of geographical memoirs as
leaving out the word High; and some have a small (nr) before the original number.32 one way in which geographers legitimised their own intellectual pretensions,
The following year, Day even went so far as to register his label for copy- as well as participating in the Enlightenment’s encyclopaedic epistemology:94
right protection at Stationers’ Hall,33 such registration being a necessary the memoir served to explain how the geographer had reasoned his way
prerequisite to obtaining the penalties and forfeitures of the Statute of Anne through the ever-increasing array of data available to him to produce the
(1710). Although Day was never to rely on copyright, the very act of regis- final, reconciled, graphic representation.95 An alternate approach was to
tration is indicative of a desire to claim publicly his proprietorship of a mark incorporate other official statements on sources and practices. David Steel’s
(thus foreshadowing the demand for a trade mark register in the 1850s and ‘Chart of the East Coast of England’, for example, contained the following
1860s).34 Later Charles Day would try to educate purchasers in techniques dedication: ‘This Chart, having been honoured with the Approbation of the
that would enable them to avoid being taken in by lookalike products. He Right Honourable Master, Wardens and Elder Brethren of the Trinity House
produced a label with characteristics that were difficult and expensive to of Deptford Strond is by Permission respectfully dedicated to them by their
copy, and educated customers to look out for such specificities.35 most obedient and obliged humble servant John Chandler.’96
In the litigation against John Hamilton Moore, we can see that the court-
room emerged as a further venue in which the Enlightenment discourse
31 Bayley had complained about counterfeits from the mid-1770s, when he took action against of rational reconciliation of opposing viewpoints produced authoritative
John Desoer, but for patent infringement (rather than infringement of the mark): Notice by geographical knowledge, and can observe the legal doctrine of copyright
John Desoer, 16 October 1775 in The Public Ledger (22 May 1776). Bayley and Blew continued being moulded to reflect its ideals and epistemology. In each of the three
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 cases, ‘experts’ from the navigational sciences were brought into the court
Alexander Christie, who Day and Martin would attempt to enjoin in 1814; the small ‘nr’ to provide evidence as to what would constitute a ‘good’ and ‘accurate’
before ‘97 High Holborn’ was included by John and James Bowling, against whom Day would map. In the case brought by Sayer, Captain John Stephenson explained that
commence proceedings in January 1817. See also The Times (25 December 1811) (complaining
about ‘swindlers’ using, inter alia,’97 Holborn’). the errors arose in Sayer’s map because of a failure of projection: while the
33 27 December 1813: A list of all the publications entered at Stationers Hall, since June 9th, latitudes and longitudes had been taken from the same authorities as Moore
1815, the date of the last return to the Honourable House of Commons, 1817 Parliamentary had used, the erroneous principles upon which Sayer’s map was based meant
Papers (236).
34 It also anticipates what would become the common twentieth century practice of rely- that the course and distance between places was incorrect on his charts.
ing on copyright in labels to prevent undesired circulation of products: Elanco Products A second authoritative witness was William Wales, a Fellow of the Royal
v Mandops (Agrochemical Specialists) [1980] RPC 213 (CA) (former patentee successfully Society and Master of the Royal Mathematical School in Christ’s Hospital,
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 & which had been founded by Charles II for the specific purpose of training
Ors (1986) 4 NSWLR 701 (Young J) (vendors in Australia of imported bottles of sherry upon young boys in navigation. Wales was also an astronomer and had sailed
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 acces-
sory with the article’), s 10 (defining ‘accessory’). 92 M MacKenzie, A Treatise of Maritim Surveying (London, Edward and Charles Dilly,
35 In ‘Fraud Prevented’, an advertisement in The Times (25 January 1817), Day informed 1774) ix.
readers that ‘many attempts … are daily made to impose on the unwary a spurious composi- 93 ibid x.
tion instead of the GENUINE BLACKING …’ To counter these, Day and Martin announce 94 Edney, ‘Reconsidering Enlightenment Geography’ (n 60) 186–90.
that it had adopted a new label with 97 ‘to be placed so conspicuously that they trust an atten- 95 Although Pedley observes such memoirs were less a feature of the English map trade than
tion to this, and the differences of the type, which is unlike all letter-press, will enable purchas- they were of the French: Pedley, The Commerce of Cartography (n 91) 169–70.
ers at once to detect the imposition’. 96 Chandler, Chart of the East Coast of England (n 45).
around the world on the Resolution with Captain Cook, who had a very high of the day’,22 not just in London but throughout the country.23 These values
opinion of Wales’s navigational abilities.97 Wales agreed with Stephenson, were linked with the name ‘Day and Martin’ and, taking account of the new
adding that the latitudes and longitudes differed, particularly in the West ‘spatial rationalities’ of the city, also with the prime number, 97, that identi-
Indies. The third witness, Admiral Campbell, went further still, explicitly fied the factory.
linking the production of accurate maps to national pride in an imperial The business was a phenomenal success. By 1806, it is clear that the firm
context. Campbell, who had introduced Cook to the Royal Society, stated had distributors all over Great Britain,24 and by 1814 it was the market
that when he had examined Sayer’s charts ‘at his station in Newfoundland, leader, styled the ‘King of Blacking Makers’.25 In 1821, in the Court of
he was grieved for the honour of his country, that such a publication should King’s Bench, the doyen of the bar, James Scarlett, observed that their fame
originate in England, and often wished to have had the power of suppress- ‘has spread through every clime’, and asked playfully ‘for who, with the
ing it entirely, by burning all the Charts, and destroying the plates’.98 slightest pretence to polish, could be unacquainted with the name Day and
The evidence given by the witnesses emphasises the centrality of the grati- Martin?’26 Day and Martin were ‘the blackest, yet brightest, characters of
cule [the network of latitude and longitude lines] to establishing the epis- the age’. Charles Day, who was attested to have been ‘a man possessing
temological truth of geographic representation.99 As set out in Chambers’ a very strong and acute mind’, ‘remarkably clear in his intellect’, with a
Cyclopaedia, the first qualification (of three) that every map must have was ‘quite wonderful’ skill with numbers,27 amassed ‘a very large fortune’.28
‘That all Places have their just Situation with regard to the chief Circles of the When he died in 1836, he left an estate worth at least £340,000, includ-
Earth, as the Equator, Parallel, Meridians, & c. because on these depend many ing houses in Regent’s Park and Edgware Place as well as the Manor in
Properties of Regions as well as Celestial Phenomena’.100 Similarly, Samuel Caterham in Surrey.29 The firm continued to operate very successfully well
Johnson defined a map in 1755 as ‘a geographical picture on which lands into the twentieth century.30
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
22 (1821) Annual Register (June) 99. For some examples of ‘poems’ from Day and Martin’s
constructed upon the true principles of Mercator’s sailing; but Mr Sayer’s were
competitors, Turner and Warren, see (1817) 5 The Literary Panorama and National Register
neither Plane nor Mercator’s Charts: they were contrary to every received 852–54. For use of imagery by Turner, see Bristol Mercury, 1 Feb 1819 (image of gentleman
principle of geography and navigation, and consequently erroneous’.102 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.
In other words, Sayer’s charts were inadequate not just because they were 24 Jackson’s Oxford Journal (1804); Aberdeen Journal (26 September 1804), (distributors
inferior, but because they breached Enlightenment epistemology; they did in Aberdeen, Inverness, Montrose); Bury and Norwich Post (12 December 1804), (identifying
not conform to the very definition of a map. distributors in Bury, Norwich Cambridge, Newmarket, Ipswich, Wisbech, etc); York Herald
In the case brought against Moore by David Steel, Stephenson appeared (York, Ripon, Darlington, 29 June 1805); Hampshire Telegraph (Portsmouth, Southampton,
Gosport, 5 August 1805); Lancaster Gazette, (Manchester, Liverpool, Preston, Lancaster,
again. This time he offered to point out 106 places where errors in Steel’s 4 January 1806). As their pleadings in their Chancery cases explained, Day and Martin had
chart were corrected in Moore’s. The second witness to appear for Moore ‘succeeded in forming and establishing an extensive connection for the sale of the said compo-
was James Porteous, the master of the royal yacht Augusta. Porteous’s evi- sition to merchants, shopkeepers, dealers and others who purchased the said composition for
exportion or for the purposes of selling again by retail’.
dence was so compelling that Steel’s counsel agreed to be nonsuited and 25 The Morning Chronicle (31 January 1814).
Lord Kenyon was moved to express his own indignation at Steel’s temerity 26 (1821) Annual Register (June) 99. Scarlett (1769–1844) was later made Lord Chief
in publishing such poor quality charts.103 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
97 EI Carlyle, ‘Wales, William (bap. 1734, d. 1798)’, rev Derek Howse, Oxford Dictionary Blind Man’s Friend’, a charity now run by the Clothworker’s Company under the name ‘The
of National Biography (Oxford, Oxford University Press, 2004) www.oxforddnb.com.rp.nla. Clothworkers’ Charity for the Welfare of the Blind’.
gov.au/view/article/28457. 28 Croft v Day (1838) 1 Curt 782, 787, 163 ER 271, 273 (Sir Herbert Jenner).
98 ibid. 29 25 October 1835; (1836) Annual Register 215 (stating £450,000). In Croft v Day (1838)
99 Edney, ‘Reconsidering Enlightenment Geography’ (n 60) 172. 1 Curt 782, 163 ER 271, concerning the validity of various codicils made in the weeks before
100 E Chambers, Cyclopaedia, or, an Universal Dictionary of Arts and Sciences, Vol 2 (London, Charles Day’s death, the figure was put at £340,000, comprising personal property worth
Chambers, 1728) 496. £200,000 and real property valued at £140,000 (Prerogative Court). Day left the house at
101 Edney, ‘Reconsidering Enlightenment Geography’ (n 60) 172. Edgware to his wife, Rebecca, and Harley House in Regent’s Park to his daughter, C aroline
102 ‘Extracts from a Letter Written to James Bogle French Esq, Foreman of the Special Jury Clagett (the wife of Horatio Clagett, who, by contrast, was many times bankrupt: see
who tried the Cause in the King’s Bench, at Guildhall, between Messrs Sayer and Bennet, Plain- Re Clagett’s Estate (1882) 20 Ch D 637 (CA)).
tiffs, and Mr John Hamilton Moore, Defendant, by Mr John Stevenson, one of Mr Moore’s 30 ‘Advertising Considered as an Art’ (1844) Chambers Edinburgh Journal 401 (Day and
Witnesses’ in Moore, The New Practical Navigator (n 10). Martin was ‘quite as well known to the public at large as Scott of Abbotsford, and Wellington
103 ‘Extract from the Sunday Gazette of the 8th of March, 1789’ (n 10) Moore. of Waterloo’).
shining brush immediately and in one minute it will produce the brilliant lustre However, it was in the final case, Heather v Moore, that Thomas Erskine’s
and jet black ever behold. rhetoric fully fleshed out the ideological synergies between Enlightenment
No half pints made. Day and Martin. Price 1’ 6 each map-making and Enlightenment law-making. Erskine opened by asserting
that the principle upon which Heather should succeed was ‘the clearest,
Day and Martin had entered a competitive market. Other leading black- the wisest, and most conformable to the spirit of the Law’.104 He explained
ing manufacturers were Bayley & Blew, Perfumers, Cockspur St;14 Thomas, to the jury that the law’s policy was to secure to ‘persons who had been at
and later Robert, Warren from 14 St Martin’s Lane;15 Jonathan Warren, great labour and expence, the fruits of their labour, by preventing others for
Thomas’s brother, initially of Great Suffolk Street, Haymarket;16 and Rich- a certain period from copying their works’.105 The reason that a monopoly
ard (‘Rich’) Turner of 114 London Road, Southwark.17 Nevertheless, Day could subsist in such a thing as a chart, despite it not being entirely original
and Martin quickly made an impression. Like the booksellers and medi- or new, was, according to Erskine, because they had at last reached ‘that
cine makers of the eighteenth century,18 Day and Martin engaged heavily state of perfection which enables the Navigator to go with safety from one
in marketing, including billboards,19 placards, trade bills and, despite the part of the world to another’.106 This had been achieved because ‘various
applicable stamp duty (now at three shillings and sixpence per advert),20 persons have contributed to fill up the measure of human knowledge, for the
newspaper advertising which became noticeably more frequent towards the benefit of mankind, by inserting their discoveries, and adding something to
end of the decade. Most of the advertising emphasised the quality of the that which was known before’.107 Indeed, it was this very perfection which
product and its effect, some warned of counterfeits, and some used more led to charts being copied. As Erskine explained:
literary techniques (poems, rhymes and the like). Indeed, some of Day and
Martin’s advertisements were rumoured to be by Lord Byron.21 Accord- It was impossible for a man to make a Chart of the British Channel, and not to
ing to one account, their ‘puffs and poems enrich[ed] every newspaper 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
14 placed in its exact latitude and longitude, and in pointing out to the Navigator
Bayley had been granted a patent for blacking cakes on 17 January 1771.
15 Thomas was succeeded in 1805 by his son Robert. From 1816, Robert operated from every danger which ought to be avoided. A Chart was not the work of fancy, and
Number 30 in the Strand. See R Williams, ‘Advertising: The Magic System’, in Problems in if a man, by way of being ingenious, should take it into his head to make a Chart,
Materialism and Culture (London, Verso, 1980) 173 (who suggests that ‘the first nationally placing Ireland East of England, and Land’s-end where Berwick now stands, he
advertised product was Warren’s shoe blacking’). In Warren v Lamert, Morning Chronicle would be in no great danger of having his right to such a Chart invaded.108
(14 November 1827), counsel for Warren claimed that it was the most famous maker of black-
ing, but Eldon LC responded that Day and Martin was its equal. Moore’s problem in this case was, the plaintiff alleged, that he had both
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 copied Heather’s chart minutely, ‘without any alteration, or the least
an annuity of £250. Warren died in 1825. improvement’; at the same time, it was alleged, he had ‘through his neg-
17 Turner was advertising in The Times from as early as 20 December 1815, but was bank-
ligence omitted islands, rocks, and shoals by wholesale, which omissions
rupt 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). rendered his Chart very dangerous, and would often prove fatal to the lives
18 Bently, ‘The First Trade Mark Case’ (n 1) 975–76. of Mariners’.109
19 For evidence of the advertising practices of Day and Martin’s competitor, Richard Turner,
Quite how he had managed to copy the map ‘to the thousandth part of
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, an inch’110 and yet also insert errors was not clear. Indeed, the evidence of
Turner and Dr Eady). Stephenson seemed to suggest Heather’s chart contained the same errors.
20 Initially one shilling per advertisement when first imposed by (1712) 10 Anne, c 12, the
The main point, however, was that Moore’s chart was not superior to
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, Heather’s, nothing new was added and no improvements made. His chart
‘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 high- 104 ‘Trial of John Hamilton Moore’ (n 54) 1.
est compliment to my literary powers which I ever received’); J Wilson, Noctes Ambrosianae 105 ibid.
(New York, Widdleton, 1872) 211 (reproducing Odoherty’s verse on Byron’s denial, which first 106 ibid 2.
featured in Blackwood’s Magazine for 1822); N Mason, Literary Advertising and the Shaping 107 ibid.
of British Romanticism (Baltimore, Johns Hopkins University Press, 2013) 52–53 (discuss- 108 ibid.
ing the links between Byron and Day and Martin, and suggesting Byron treated himself as a 109 ibid.
‘brand’). 110 ibid 3.
therefore did not align with Enlightenment values, nor indeed serve the numerous shopkeepers at one shilling and sixpence a pint.9 By 27 August
demands of empire and mercantilism. If Moore were to be allowed to carry 1806, the firm relocated to 97 High Holborn.10 Above the factory gates,
on in this way, Erskine said: large letters announced ‘Day and Martin 97 High Holborn’. Numbers,
uncommon in London until the second half of the eighteenth century,11
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, had become useful ways to identify outlets, replacing the signboards of
to all works of invention and improvement whatever; and it would be totally earlier eras.12 On 1 January 1808 Benjamin Martin retired and returned to
impossible hereafter, ever to place any dependence on a Sea Chart, a thing of the Doncaster. Charles Day paid £7,000 for the recipe and £3,643 for his share
utmost importance in carrying on the vast trade of this commercial country.111 of the partnership. The agreement allowed Day to continue to trade with the
name ‘Day and Martin’.
In this case, Moore lost the battle of the experts. His counsel, Gibbs, was
Day and Martin’s liquid blacking was sold in stone bottles, each contain-
forced to concede that Moore had copied Heather’s chart, but argued that
ing one pint.13 On each bottle Day and Martin pasted a label stating:
Heather himself had copied from an earlier publication of Moore’s. His
witnesses were two engravers, Warner and Chapman, as well as two other The real Japan Blacking made by Day and Martin 97 High Holborn
witnesses whose occupations are not identified. However, as the Express This inestimable composition with half the usual labour produces the most bril-
and Evening Chronicle noted, ‘their evidence fell far short of proving the liant jet black ever beheld fully equal to the highest japan varnish and affords
alleged fact’.112 As noted previously, the jury found for Heather. peculiar nourishment to the leather will not soil the finest linen is perfectly free
It is also apparent that the judges involved in the three cases, Lord Kenyon from any unpleasant smell and will retain its virtues in any climate.
and Lord Mansfield, seem likewise to have conceived of their roles as inter-
Directions for use. Let the dirt be brushed clean off. Stir up the blacking with a
preting the law in a way which would further Enlightenment ideology, in
small cane or brush till it is well mixed then lay it on your blacking brush as thin
particular scientific accuracy and the furthering of British commercial and as possible with which you black the boot or shoe equally all over. Apply your
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 9 ‘The Real Japan Blacking, Made by Day and Martin’, The Times (27 May 1803) (when
one of finding a solution that would foster ‘improvements’, ‘progress of the operating from 10 Tavistock Street, Covent Garden), ‘in stone bottles’.
arts’ and the usefulness of knowledge. Lord Kenyon likewise saw clear links 10 ‘The Real Japan Blacking, Made by Day and Martin’, The Times (27 August 1806). The
between the outcome of the cases before him, and sought to influence 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,
jury to reach a verdict that favoured accuracy by focusing on the evidence Reader and Dyer, 1868) 431. The Holborn factory burned down in 1869, causing the firm to
relating to navigational science. In Heather v Moore he commented that: 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).
So many differences between them have been pointed out to me, in a very intel- 11 Although there is some indication of house numbering in the early eighteenth century,
ligent manner by Captain Stephenson, that I cannot consider the Plaintiffs’ Chart there were no regulations until the 1760s. Sir Ambrose Heal, Sign Boards of Old London
as a servile copy of the others; but that the minute information respecting the 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.
bearings, in the Plaintiffs’ Chart, seems to me to distinguish it most emphatically, Reuben Rose-Redwood, ‘Indexing the great ledger of the Community: urban house numbers,
from the other Charts of the Defendant.114 (emphasis added) 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
This time it was Heather who had copied and improved Moore’s maps, to number houses and place street signs at the corners of each intersection. One year earlier, the
thereby acquiring the new copyright, which Moore had now infringed. Post Office had extended home delivery beyond the London city limits, and the further expan-
Thus, in each case, the legal decision as to whether copyright was infringed sion of postal services during the nineteenth century contributed to the growing use of house
numbers in cities throughout England’.
was informed by an assessment of who had produced the ‘better’ map—and 12 On signboards, see D Garrioch, ‘House Names, Shop Signs and Social Organization
better meant more accurate, more scientific in appearance, more in tune 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).
111 ibid. 13 From around 1812, there were relatively tight restrictions on the shape and size of black-
112 Express and Evening Chronicle (London, 3 March 1798) 1. ing bottles: J Basford, ‘A Commodity of Good Names’: The Branding of Products, c. 1650–
113 Sayer v Moore (n 1). 1900 (PhD, University of York, 2012) 216, Ch 4. By 1816, Day and Martin was selling half
114 ‘Trial of John Hamilton Moore’ (n 54) 4. pint bottles at tenpence.
Although the firm of Day and Martin was once very well known, their with Enlightenment ideology and more useful to the commercial and mili-
litigation campaign has not been the subject of previous study. This chapter tary needs of the expanding empire.
begins by explaining the background to the litigation: the emergence of Day However, the process was not complete when the court gave the impri-
and Martin as the leading manufacturer of blacking and the firm’s growing matur of scientific and navigational superiority to one of the publications
concern with counterfeiters. After a review of the prior jurisprudence in in dispute. While this might have ended the legal proceedings, the decisions
Chancery, the chapter focuses in detail on two of Day and Martin’s 14 proof the court had a further role to play. Lawyers know of the case of Sayer
ceedings. The first was against former manager, Peter Statham; the second v Moore because it appears in Lord Mansfield’s notebooks,115 and because a
against a business established by traders also named Day, Day and Martin. report was belatedly published as a footnote to Cary v Longman.116 However,
Finally, the chapter considers the impact of the newly recognised procedure, Moore himself was interested in publicising the proceedings. He began by
its relationship with the common law action, as well as the extent to which inserting short descriptions of the Sayer v Moore and Steel v Moore cases in
the case is properly regarded as a leading case. The chapter concludes with the ninth edition of The Practical Navigator.117 Two years later, in The New
Day and Martin returning to Chancery in 1843. 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
I. BACKGROUND TO THE LITIGATION 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
The product at the centre of the litigation was ‘blacking’; in modern terms, was extracted from the Sunday Gazette.119 Understandably, Moore did not
black polish for leather. It was used primarily on boots and shoes, and was publish a report of Heather v Moore, but a pamphlet containing a report of
much in demand from those who walked the dirty London streets of the the case was published, with only the printer identified.120 It is probably not
late eighteenth and early nineteenth centuries. A particularly intense shine too fanciful to suppose that the hand of Heather was involved.
was provided by so-called ‘Japan Blacking’, the name alluding to the glossy These reports were far from neutral; each emphasised the qualifications of
appearance of Japanese lacquer work. Such ‘Japan Blacking’ had been the witnesses in favour of their own arguments, and minimised or ignored
known at least as early as 1761.4 The constituents of blacking varied, and the credentials of those on the other side. For example, in the extract describ-
while there was evidently a trade in secret recipes for blacking, the standing Steel v Moore, Mr Porteous is described as ‘pilot to the squadron in the
ard ingredients would have included a mixture of black colouring made of North Sea’, while it is further noted that ‘Mr Moore was prepared, had it
powdered black bone, oil from sperm whales and oil of vitriol. In November been necessary, with three other masters of the Royal yachts, besides many
1817, Eldon LC would observe that ‘blacking surely has become very experienced navigators.’121 Although Captain Stephenson was prevented
valuable’.5 from giving all his evidence (the Court apparently satisfied with not hearing
The partnership of Day and Martin was established in December 1802,6 details of each of the 106 errors he had located), the extract makes some
when Londoner Charles Day and Yorkshireman Benjamin Martin, then of amends for the lack, by enumerating several of them. For good measure,
Maiden Lane, started selling Japan Blacking according to a recipe which the anonymous author finishes by criticising Steel’s mapmaker, Chandler, as
Martin had acquired.7 Advertisements for Day and Martin’s ‘Real Japan well as Trinity House for accepting his dedication:
Blacking’ survive from as early as 1802,8 identifying its availability from
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 discov-
4 ‘Characters: Moral Humorous and Satirical, No XIX, John Leaptrot’ Public Ledger or ered it at first view; and, if they granted permission without examination, they
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 115 Oldham, Mansfield Manuscript (n 33) 770–71.
that initially Martin had been the manufacturer and Day the chief distributor, but they soon 116 Cary v Longman (n 2).
resolved to operate as partners. 117 Moore, The Practical Navigator (n 10).
7 For an uncorroborated account of how, see ‘Shining Characters’ The York Herald 118 Moore, The New Practical Navigator (n 10).
(17 December 1836) (Martin acquired the recipe, while visiting the Kings Arms, St Sepulchre 119 ibid.
Gate, Doncaster, from a soldier, Thomas Florry, for a quart of ale). 120 ‘Trial of John Hamilton Moore’ (n 54).
8 Morning Post and Gazetteer (23 November 1802); Morning Chronicle (6 March 1804). 121 ‘Extract from the Sunday Gazette’ (n 10).
82 Isabella Alexander
may be deemed, if possible, more highly culpable. The most rational supposi-
tion, 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 4
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
Day v Day, Day and Martin (1816)
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 LIONEL BENTLY*
properly regards the safety of our valuable Shipping, our extensive Commerce,
and our inestimable Seamen!123
A
These publications therefore performed a similar role to the geographical LTHOUGH BY 1800 there was regular use of the common law to
memoirs discussed by Edney; they provided an account of the charts’ pro- protect traders against misuse of their marks by rivals,1 there was
duction as well as a validation of other textual claims made upon the chart no such practice in the Court of Chancery. This meant that, in the
as to their authority, accuracy and superiority. The court and the law of superior courts, traders were limited to claims for past damages, and could
copyright were pressed into service as a badge of legitimacy attached to the not obtain orders prohibiting future infringement. However, within a mat-
geographic outputs of the mapmaker himself. ter 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
IV. WHERE ARE THEY NOW? 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
As the eighteenth century gave way to the nineteenth, what became of our and Martin, a hugely successful manufacturer of boot polish (‘blacking’),
four litigious chart-makers? Moore’s business, highly successful at the end brought proceedings on 14 occasions seeking injunctive relief against com-
of the century, went into decline in the early nineteenth century and Moore petitors, succeeding in 11 of these suits. Of all the cases, Day v Day, Day
experienced a run of bad luck. At least twice his maps were blamed for the and Martin attracted the most attention, but it is the litigation as a whole
loss of ships at sea in court martial proceedings. In each case the captain that seems to have signalled an important shift in trade mark enforcement
blamed Moore’s chart for the wreck of their ships, and were consequently practice.
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 fol-
lowing an illness and became embroiled in a dispute with his son-in-law, * Herchel Smith Professor of Intellectual Property Law, University of Cambridge. Versions
Robert Blachford. Blachford claimed the two went into a partnership 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
which was later dissolved; Moore maintained he was taken advantage of and the Society of Legal Scholars conference, Oxford, September 2016. I am grateful for the
and tricked.126 He was declared bankrupt on 1 August 1806 and died in comments received from participants in those events, as well as from Dev Gangjee, and to
Essex on 30 October 1807.127 Blachford continued in the chart and naviga- 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
tional text business, somewhat intermittently, but in 1835 the firm passed National Archives of the United Kingdom in Kew, England.
to another family member Michael Blachford, who was joined by a new 1 L Bently, ‘The First Trade Mark Case at Common Law? The Story of Singleton v Bolton
partner, James Imray. (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,
122 ibid. 2nd edn (Sydney, Butterworths, 1984) 844, [4201]; J Heydon, M Leeming and P Turner, Meagher
123 ‘Trial of John Hamilton Moore’ (n 54) 8. Gummow Lehane’s Equity: Doctrines and Remedies, 5th edn (London, LexisNexis, 2014),
124 ADM1/5355 (27 December 1800), ADM1/5369 (17 April 1805). 1187 [43-005] (‘What is generally regarded as the modern tort of passing off is in truth the
125 IND1/6289. product of equity as much if not more than of law’).
126 C13/51/11, C13/487/49. 3 F Schechter, The Historical Foundations of the Law Relating to Trade-Marks (New York,
127 Worms and Baynton-Williams, British Map Engravers (n 14) 461. Columbia University Press, 1925) 138.
86 Isabella Alexander Sayer v Moore (1785) 83
ideals and imperatives which sought to foster particular attitudes towards William Heather’s business flourished for some years, but he died in 1812
the collection, organisation and dissemination of knowledge, as well as the at the comparatively early age of 46. He left legacies to the two ‘natural
drive to deploy that knowledge in ways which would further the interests of or reputed daughters’ of John Hamilton Moore (one of whom had mar-
commerce and economic growth. Today’s policymakers, who embrace the ried Blachford).128 The business was purchased by his assistant John Norie
latter commercial consideration when discussing and formulating copyright (who had also worked for Moore and appeared as a witness against him in
policy, would do well to remember the former knowledge-centred approach. 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 increas-
ingly meant a more accurate and a more useful, or serviceable, map.
However, the cases should not only be seen in relation to the commercial prac-
tices and problems of map-makers and map-sellers. They also contextualise
128 Fisher, Blueback Charts (n 13) 82.

129 ibid 58.
130 PROB 11/1242/92.
131 See the website of Imray Nautical Charts and Books, www.imray.com.
84 Isabella Alexander Sayer v Moore (1785) 85
more broadly how that particular trade fitted into Enlightenment ideals, The United States, of course, has enshrined the Enlightenment ideal of
practices, priorities and epistemology. This reveals powerful connections ‘progress’ in its Constitution,137 and its doctrine of fair use resonates much
between the development of copyright law and Enlightenment ideology. more clearly with Lord Mansfield’s statement than the corresponding fair
Copyright law is revealed as being part of the process of establishing a par- dealing exceptions of Britain and her former colonies. However, as Ariel
ticular view of ‘science’, deeply embedded in Enlightenment ideology, which Katz has pointed out, ‘While the US Constitution might be considered as
was then applied to assess the quality of the maps in question. To borrow one of the highlights of the Enlightenment, those ideals were not invented by
the phrase of David Livingstone, the court room can be seen as yet another the Framers and did not originate in the American colonies.’138 In Australia,
‘venue of science’, that is, a site in which scientific meaning is made and the High Court has suggested that the relationship between Enlightenment
interpreted.132 Lacking the centralised, institutional support given to map- ideals and copyright law has normative force:
making in France, English map-makers turned to the market to produce and
In both its title and opening recitals, the Statute of Anne of [1710] echoed explic-
regulate maps, as well as to assess their quality. But the market and its asso- itly the emphasis on the practical or utilitarian importance that certain seven-
ciated institutions (such as the courts) were far from neutral—they them- teenth century philosophers attached to knowledge and its encouragement in the
selves were very much a part of the discursive practices of Enlightenment scheme of human progress. The ‘social contract’ envisaged by the Statute of Anne,
ideology. The case of Sayer v Moore and its two successors demonstrate that and still underlying the present Act, was that an author could obtain a monopoly,
copyright law was a crucial part of this process. limited in time, in return for making a work available to the reading public.139
Despite the arguments made in this chapter for its status as a leading case
However, as has been noted elsewhere,140 this led the Court to a decision
and its popularity with academic commentators, Sayer v Moore has not been
that raised the threshold of copyright protection rather than establishing a
frequently cited by courts in either the United Kingdom or Australia. There
more flexible approach to infringement.
are a handful of decisions relating to works of information which refer to
Thus, it may well be that in both Australia and the United Kingdom the
the case of Matthewson v Stockdale, a case presided over by Erskine, by way in which copyright law has developed, in particular the doctrine of
then Lord Chancellor, in which he discussed Sayer v Moore.133 These cases fair dealing, has severely circumscribed the extent to which considerations
tend to refer to Sayer v Moore and Matthewson v Stockdale as authority
flowing from Enlightenment ideology are incorporated. Questions of access
for the proposition that copyright can subsist in factual works, but neglect
to information and encouragement of learning can affect the way decisions
the actual outcome of non-infringement.134 By contrast, Sayer v Moore has
relating to infringement are made. In response to those who suggest that fair
been referred to numerous times since 1921 by courts in the United States,
use should not be exported, and could not work, outside the United States,
including twice by the Supreme Court.135 In most of these cases it arises
examining the three cases of Sayer v Moore, Steel v Moore and Heather
in the context of discussion over the competing claims between the public
v Moore should remind us that the copyright laws of Great Britain and all
interest in access to knowledge and learning and the private interests of her former colonies draw upon the Enlightenment project. In the eighteenth
copyright owners, generally in relation to fair use or the idea/expression century, copyright doctrine developed in accordance with Enlightenment
dichotomy.136
132 797 F 2d 1222, 1235 fn 27 (3d Cir 1986) (Becker J); Alexander v Irving Trust Company, 132
DN Livingstone, Putting Science in its Place: Geographies of Scientific Knowledge F Supp 364, 368 (SDNY 1955) (Bicks J); Stanley v Columbia Broadcasting System, 35 Cal 2d
(Chicago, University of Chicago Press, 2003). 656, 673 (SC Cal 1950) (Traynor J, dissenting); Echevarria v Warner Bros Pictures, 12 F Supp
133 Matthewson v Stockdale (1806) 12 Ves Jun 270, 274.
134 Desktop Marketing Systems Pty Ltd v Telstra Corporation Limited [2002] FCAFC 112; 632 (SD Cal 1935), per Yankwich J (quoting judgement in Eichel v Marcin).
Law Society of Upper Canada v CCH Canadian Ltd [2004] 5 LRC 428 (Federal Court of 137 See M Birnhack, ‘The Idea of Progress in Copyright Law’ (2001) 1 Buffalo Intellectual
Appeal); Independent Television Publications Limited v Time Out Limited and Elliott; the Property Law Journal 3.
British Broadcasting Corporation v Time Out Limited and Elliott [1984] FSR 64. 138 A Katz, ‘Fair Use 2.0: The Rebirth of Fair Dealing in Canada’ in M Geist (ed), The Copy-
135 Sony Corporation of America v Universal City Studios, 464 US 417, 479 fn 33 (1984) right Pentalogy: How the Supreme Court of Canada Shook the Foundations of Copyright Law
(Blackmun J), Twentieth Century Music Corp v Aiken, 422 US 151, 156 fn 6 (Stewart J). (Ottawa, University of Ottawa Press, 2013) 98.
136 Cases referring to it in relation to fair use include: Sony Corporation of America 139 IceTV Pty Limited v Nine Network Australia Pty Limited [2009] HCA 14 [25]. The
v Universal City Studios, 464 US 417, 479 fn 33 (1984); Rosemont Enterprises Inc v Random seventeenth-century philosophers are identified in the footnotes as Francis Bacon and John
House and John Keats, 366 F 2d 303 (2d Cir 1966) (Moore J); Henry Holt & Co v Liggette Locke, two central Enlightenment thinkers. It is further notable, in relation to the discussion
Myers Tobacco Co, 23 F Supp 302, 303 (E D Pa 1938) (Maris J). Cases referring to it in relation above at Part II, that Diderot and D’Alembert dedicated their Encyclopédie to Locke, Bacon
to the idea/expression dichotomy include: Bevan v Columbia Broadcasting Systems Inc, 329 and Newton.
F Supp. 601, 604–05 (SDNY 1971) (Tyler J); Whelan Associates Inc v Jaslow Dental Laboratory 140 See Alexander, ‘Manacles upon Science’ (n 2).
132 Seymour Mauskopf Day v Day, Day and Martin (1816) 101
And after giving an account of the differences between soluble and insolu- to invade another’s Property; to appropriate the Benefit of a valuable Interest, in
ble nitro-cellulose, he said that Nobel’s provisional and final specification the Nature of Good-Will, consisting in the Character of his Trade or Production,
for ballistite should be interpreted restrictively.106 In fact, the judge rejected established by individual Merit: the other representing himself to be the same
other interpretations as being ‘ingenious, but to [his] mind, delusive’.107 He Person, and his Trade or Production the same; as in Hogg v Kirby …; combining
Imposition on the Public with Injury to the Individual.78
also offered an explanation of why he considered that the patent should
be interpreted in such a way. Nobel had specified soluble nitro-cellulose However, if Hogg v Kirby was concerned with traders’ rights to prevent
‘deliberately or intentionally’, because of the greater danger of insoluble misrepresentation, rather than some form of ‘mutant copyright’,79 how was
nitro-cellulose (especially when heat was used in malaxation) and because it to be reconciled with Blanchard v Hill (which is not mentioned in the
Nobel did not know whether the insoluble type could actually be used to report of the arguments in Canham v Jones)? Although counsel had raised it
manufacture a smokeless propellant.108 in Hogg v Kirby, in neither report did Eldon LC refer to the case. One pos-
Alongside their attempt to limit the scope of the Nobel’s ballistite pat- sibility is that Blanchard v Hill was considered to pertain merely to claims
ent, the defendant had also launched an attack on its validity, particularly based on ownership of marks, an idea that Hardwicke LC indicated would
noting that Nobel had anticipated it in an earlier patent for blasting gela- be rather dangerous. In contrast, Hogg did not claim to own the words
tine. Although the move did not knock out the ballistite patent, as the judge ‘wonderful museum’, either in general or when used for periodical publica-
considered it valid,109 it introduced a caveat that nevertheless shows the tions. Rather, the suit proceeded on the basis of a multiplicity of indications
strength of the argument. For when Romer J considered this point he said made by Kirby that his periodical was a continuation of Hogg’s.80 The dis-
that it was valid in so far as it was interpreted ‘in the limited way I have tinction between use of a single sign and a deceptive course of action might
mentioned’ (that is, limited to ordinary soluble nitro-cellulose).110 After have had a superficial plausibility.81
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, III. DAY AND MARTIN v SLEE AND STATHAM
in his view, was a principle governing all patent cases (including master
patents): 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
In order to make out infringement it must be established to the satisfaction of the
thought Hogg v Kirby a sufficient indication of Lord Eldon LC’s likely
Court that the alleged infringer, dealing with what he is doing as a matter of sub-
stance, is taking the invention claimed by the patent. Not the invention which the
approach to make it worth applying to Chancery for injunctive relief in
patentee might have claimed if he had been well advised or bolder, but that which a ‘trade mark’ case. The basis of the claim would be reputation built up
he has in fact and substance claimed on a fair construction of the specification.111 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
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 insolu- 78 2 Vesey & Beames 218, 221; 35 ER 303.
ble nitro-cellulose as distinct substances ensured that the material contents 79 Dastar v Twentieth Century Fox, 539 US 2334 (2003) (Supreme Court of United States).
would be different. As for process and product: ‘It [cordite] is made by 80 In the decades prior to the Trade Mark Registration Act 1875, courts would frequently
a process which, though in some ways similar, is not identical with the 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
process of Mr. Nobel. Cordite itself as an explosive is not in its qualities 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
106 ibid 127. Blanchard with Hogg. See, eg, R Cox, ‘The Prevention of Unfair Competition in Business’
107 ibid 126. (1891–92) 5 Harvard L Rev 139. The distinction was only ‘superficially’ plausible because
108 ibid. whether based in use of a single mark or a more general course of action, the effect was pre-
109 ibid 127–28. Romer J gave negative answer to the question of anticipation by the blast- cisely the same: to deceive purchasers into thinking Hill’s cards had been made (and were the
ing gelatine patent because ballistite was a new material comprised of different proportions of quality of those made) by Blanchard.
nitro-glycerine and soluble nitro-cellulose from that of blasting gelatine. 82 Operating out of Gray’s Inn.
110 ibid 127. 83 Wilbraham had a ‘moderate practice, not a very large one’: Evidence to Select Committee
111 ibid 127–28. on Clerk of the Crown in Chancery (1844) PP 455, Q 206.
102 Lionel Bently Nobel’s Explosives Company, Limited, v Anderson (1894) 131
istinguishable from the facts of Blanchard, being neither based in a guild

d have contributed to the strict construction of patent claims and specifications
nor its Charter, nor involving use of an image. that will be mentioned below, it was supposedly an attempt to avoid bifur-
The first suit which Charles Day filed, Day and Martin v Slee and cated decision-making and to better deal with the growth of scientific and
Statham, was brought against Samuel Slee and Peter Statham. The latter engineering difficulties in patent litigation.94 Sir Robert Romer became one
had been the general manager at Day and Martin and, having gone their of the Chancery Division judges who frequently adjudicated patent cases.95
separate ways, ended up in competition.84 Statham went into business He was described as patient, fair, and someone who ‘could not be influenced
first with Samuel Slee and later with Joseph Scott. It seems Charles Day by outside comments’.96 His decision on this case primarily looked at the
was annoyed to find his former servant purporting to sell the ‘real’ Day invention as a ‘textual artefact’.97 It focused on qualifying the invention
and Martin blacking, when he had himself paid £7,000 to Martin for the covered and claimed by Nobel’s ballistite patent of 1888.98 Such a com-
exclusive benefit of the recipe. However, the law on use of trade secrets prehensive focus on the normative effect of the text evidenced a pragmatic
by former employees had not yet been accepted, as it would be in Yovatt interest in determining the scope of protection. And it did so by interpreting
v Winyard.85 Moreover, Canham v Jones, decided only weeks before, what Nobel meant when he used the term ‘soluble nitro-cellulose’ in his pat-
clearly suggested such a claim would not succeed. Consequently, the most ent. This scrutiny of the specification not only indicates a remarkable trend
promising basis for objection was that Statham and his partner fraudulently in the development of modern patent jurisprudence, it also suggests that
misrepresented their blacking to be that of Day and Martin.86 According the defendant’s way of structuring the legal argument had a decisive impact
to the affidavit evidence, Slee and Statham had erected the sign ‘Day and on the outcome of the case.99 A cursory glance at the proceedings shows
Martin’ over their premises, and used trade cards and bills that referred to how the defendant had orientated a substantial part of his defence towards
‘Slee and Statham. Proprietors of the original Day and Martin’s real Japan limiting the scope of the ballistite patent. Yet the judge emphasised that the
Blacking’. Additionally, one witness swore an affidavit that he had heard a question raised had to be answered by restricting it to the time of the bal-
conversation between Slee and Statham that indicated that they planned to listite patent.100 In particular, nitro-cellulose consisted of two well-known
move their shop to Holborn.87 and distinct kinds—the soluble and the insoluble101—which the judge called
Day and Martin filed their bill on 5 July 1813,88 accompanied by affida- the soluble type ‘collodion cotton or (sometimes) collodion g uncotton’ and
vit evidence from Charles Day, Jonathon Weston of the Strand (a medicine described as being ‘principally, though not exclusively, used for photo-
and perfumery warehouseman, and to feature in many subsequent cases),89 graphic or surgical purposes’.102 These were distinguished at the time of
Joshua Webster and William Baggs.90 Day offered details of the back- the ballistite patent ‘as well-known objects of manufacture and sale’.103 By
ground of Day and Martin’s, as well as its success, while Weston related identifying only two distinct kinds of nitro-cellulose and delineating the
how he had been approached by Slee and Statham with a view to oper- soluble kind in that manner, the judge had, in effect, launched an oblique
ating as a distributor of its product, or even becoming a partner. Weston criticism of Moulton QC’s strategy of suggesting that Nobel meant a more
detailed various meetings with both Statham and Slee, as well as offering highly nitrated form of the soluble than that used in photography or sur-
information as to the labels and business cards they used. Webster and gery.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
84 Statham (?1777–1834?) was general manager from 20 October 1808 to 27 May 1813. 94 ‘The Patent Law’ The Western Daily Press (Bristol, England, 5 December 1881) 7;
The Hampshire Advertiser (14 June 1834) (announcing Statham’s death at the age of 57). J Whitehead ‘Patent Practice in England’ Journal of the Patent Office Society, XVI, 1934,
85 (1820) 1 Jac & W 394. For background, see L Bently, ‘Patents and Trade Secrets in 921, 937.
England: The Case of Newbery v James (1817)’ in RC Dreyfuss and JC Ginsburg, Intellectual 95 ‘Judicial Appointments’ The Times (23 February 1899) 6; Tucker v Kaye (1891) 8 RPC
Property at the Edge (Cambridge, CUP, 2014) 295 ff. 58 (Romer J).
86 Probably Day would have been unable to object had Statham and Slee merely stated that 96 ‘Cordite’ The Pall Mall Gazette (15 February 1894) 1.
the blacking was made to Day and Martin’s original recipe and by an ex-employee. 97 Pottage and Sherman Figures of Invention (n 75) 118–19.
87 John William Lowcock, in C31/349 (5 July 1813). 98 Nobel’s Explosives Company, Limited v Anderson [1894] 11 RPC 115, 124.
88 C13/2113/17. 99 ibid 125.
89 Indeed, Weston would marry the sister of Charles Day’s wife, Rebecca, and become the 100 ibid 125–26.
general manager of the Holborn factory: Croft v Day (1838) 1 Curt 782, 789, 163 ER 271, 101 ibid 125.
274 (Sir Herbert Jenner). He died on 9 March 1863: Fish v Kelly (1864) 17 Common Bench 102 ibid.
Reports 194, 201 144 ER 78, 81. 103 ibid.

90 C31/349. An affidavit from John Burnet, hairdresser, swore that he had visited Slee and 104 ibid.
Statham’s shop on 18 June 1813. 105 ibid.

of insoluble nitro-cellulose.90 At this point the litigation became primarily Baggs had visited the premises and were able to describe it and the prod-
concerned with the textual interpretation of Nobel’s ballistite patent of 1888. ucts they bought. Armed with these,91 Wilbraham then appeared before the
As can be inferred from the discussions noted above, the nature of nitro- Vice-Chancellor,92 Thomas Plumer, presenting a compelling case. Plumer
cellulose affected such discussion. Both ballistite and cordite were essen- V-C granted an injunction on 7 July 1813, restraining Slee and Statham
tially composed of nitro-cellulose and nitro-glycerine. Nitro-glycerine was from pasting or affixing on blacking labels which were copies of Day and
chemically identical in both propellants. In ballistite, the nitro-cellulose was Martin’s or any other label describing their composition as ‘actually made
soluble nitro-cellulose, while in cordite it was guncotton (insoluble nitro- and manufactured’ by the plaintiffs; as well as printing or causing to be
cellulose). Several different scientific, technical and legal issues intertwined printed any cards papers or other devices stating themselves to be Day and
here, all dependent on whether or not guncotton was covered by the soluble Martin, the vendors of the composition actually made by Day and Martin,
nitro-cellulose in Nobel’s ballistite patent. On the one hand, the question or from affixing upon any premises any inscription denoting that to be the
involved an assessment of ballistite’s relationship to earlier patents, mainly place of business of Day and Martin or a place where their composition is
that of blasting gelatine.91 On the other hand, the point was to consider sold. All this was by way of interim relief, until the defendants should ‘fully
the state of scientific knowledge of the materials and processes when the answer’.93 The injunction was reported briefly in The Morning Chronicle.94
patent was issued in 1888. In particular, what had Nobel meant by ‘soluble When Peter Statham did submit his answer, in August 1813, he sought to
nitro-cellulose’ then and, connected to this, what would standard scientific justify his actions.95 He explained that while at Day and Martin the formula
understanding of this term have been? A sub-question was: soluble in what? of its blacking had been altered and, as a result, the firm had received com-
A common laboratory distinction between collodion cotton and guncotton plaints. It was because of this, he stated, that he set up with Slee, so as to
was that the former was soluble in ether-alcohol and the latter was not. make blacking to the original recipe that had been used by Day and Martin.
But did Nobel mean to name collodion cotton (and only this) in his patent Slee and Statham’s advertising emphasised this connection and his former
application? Could ‘soluble’ be construed differently here?’92 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
IV. CHANCERY AND BEYOND sought to be appreciated.96
Even before Statham had answered in 1813, he and Slee had been joined
A. The Lower Court 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
The Patents Act 1883 made several procedural changes, such as a single defending the litigation, or possibly even a strategy to prolong the judicial
judge deciding patent cases rather than a jury.93 Although this appeared to process. Once Day and Martin discovered this, it was necessary for them 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; 91 Unless there were obvious problems, once a bill was submitted and its claims supported
‘Proceedings on Trial’; TS 36/96; NA. by affidavit evidence, injunctions would issue until answer: see HT Gómez-Arostegui, ‘What
91 Both blasting gelatine and ballistite were composed of nitro-glycerine and collodion- History Teaches Us About Copyright Injunctions and the Inadequate-Remedy-at-Law Require-
cotton; therefore, was ballistite covered by the blasting gelatine patent? The Attorney ment’ (2008) 81 S Cal L Rev 1197, 1227 fn 143 (subpoenas issued as a matter of course,
General questioned William Odling on this issue; see ‘Cross-Examination of William Odling, leaving the question of jurisdiction to be decided by demurrer).
30 January 1894, 77–78; Proceedings on Trial’; TS 36/96; NA. 92 The Administration of Justice Act 1813 established the post of Vice-Chancellor from
92 Odling (for the plaintiff) said: ‘So far as I can gather, the idea of solubility in nitro- 10 April 1813. Plumer was succeeded by John Leach in 1818 (when Plumer became Master
glycerine has gradually superseded the idea of solubility in ether-alcohol. I might, perhaps, give of the Rolls).
an illustration of that, that the original license for the manufacture of blasting gelatine was 93 C33/598, ff 1339r–1440v.
expressed in terms of solubility in ether-alcohol, and the license was expressed in terms of solu- 94 The Morning Chronicle (9 July 1813).
bility in nitro-glycerine’. Examination of William Odling, 30 January 1894, 57 ‘Proceedings on 95 C13/2113/17, sworn 9 August 1813, before Master Wm Alexander.
Trial’; TS 36/96; NA. However, under cross-examination by the Attorney-General, Odling did 96 The Morning Chronicle (31 January 1814) (endorsing the defendant’s claim that it made
admit that the ‘commercial’ meaning of ‘nitrated cellulose of the well-known soluble kind’ was ‘a better article’ than that of Day & Martin.)
collodion cotton, soluble in ether-alcohol. ‘Cross-Examination of William Odling, 31 January 97 Scott seems to have joined Statham from 27 Jul 1813. The Post Office Annual Directory
1894, 83; Proceedings on Trial’; TS 36/96; NA. for 1814, p 285, has Scott, Slee and Statham, as ‘manufacturers of the Original Day and
93 WR Cornish, Intellectual Property: Patents, Copyright, Trade Marks and Allied Rights Martin’s Japan Blacking’.
(London, Sweet & Maxwell, 1981) 84; see also Johnson’s Epitome of Patent Laws and Practice 98 According to Weston’s affidavit, that had been the purpose of Slee and Statham’s approach
(London, Longmans, Green & Co, 1887) 46. to him.

issue a new bill, which they did in December,99 followed by an affidavit by viewed them as chemically and physically different.83 However, the point of
Thomas Shillock,100 setting out numerous establishments at which he had bringing them together was to raise the question of whether the invention
purchased blacking sold as Day and Martin’s but in fact emanating with of cordite could have been made directly from the ballistite specification or
Scott, Slee and Statham. The matter came back before the Court, on this whether it required new thought and research. In other words, it was an
occasion before Lord Chancellor Eldon on Monday, 20 December 1813. attempt by the plaintiff to say that the cordite patent taken out by Abel and
Day and Martin had enhanced its legal team by adding Anthony Hart (who Dewar was not an independent invention, ‘except so far as it could have
had appeared in Canham v Jones)101 and John Bell102 to work with Edward been considered by them as merely as being an improvement on ballistite,
Wilbraham, who had drafted the bill. Eldon LC maintained relief in the the development of Nobel’s patent’.84
same terms as that of Thomas Plumer V-C in July.103 At the centre of the dispute was the history of Nobel’s invention and
From the perspective of Day and Martin, these moves seem to have been how it could affect the outcome of the case. Both parties developed differ-
reasonably effective. The partnership of Scott, Slee and Statham was dis- ent historical narratives and counter narratives that led to the invention.85
solved on 14 January 1814, the obligations being taken on by Joseph Scott. Such framing was interesting because it involved a departure from any act
Moreover, by the end of 1814, Day and Martin reassured its customers that of comparison. The plaintiff often depicted his invention as a ‘master’ or
the recipe has not changed and that ‘most of the impositions lately practised ‘pioneer patent’.86 The strength of that assertion relied on its uniqueness
in their name have been put down by the interference of the law’.104 That to cover subsequent patents like the cordite patent.87 With this argumenta-
said, proceedings did not end there, and there were further developments tive device of constructing an invention, the plaintiff, however, risked his
over the next 12 months. In November 1814, Samuel Slee moved to disposition and exposed himself to an attack from the defendant regarding the
miss the suit for want of prosecution of the initial bill by Day and Martin validity of the patent about which he was being sued. The defendant’s chal-
(despite having put in an answer),105 and proceeded to put in an answer to lenge illuminated a background topic that emerged through the proceedings
the second bill,106 which Slee had sworn on 19 January 1815 and submitted and arguably served as a catalyst for it to become the most important issue
to the clerks on 7 February 1815. This came out of the blue and certainly of the decision, namely the scope of the patent.88 Although the plaintiff
took Taylor, Day and Martin’s solicitor, by surprise. They responded by cited an important previous decision to support his argument of the unique
indicating they intended to maintain the bill, and this was permitted on (‘pioneer’) character of the invention,89 the defendant argued a different
an undertaking to pay the costs of the motion to dismiss. However, the interpretation of that precedent. By showing that the previous case hinged
records suggest that matter against Slee did not proceed any further once on the essential identity of materials and products, its relevance for this
the answer had been put in. There is no notice of objections (‘exceptions’ particular litigation could only be maintained by stretching the interpreta-
to the answer), and no record of the matter proceeding to a Master or a tion of the ballistite patent inappropriately widely to cover the employment
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 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
99 Trial’; TS 36/96; NA.
C13/2113/17.
100 C31/351. 83 Armstrong emphatically denied that cordite and ballistite were ‘the same thing’ in
101 (1754–1831). Hart had taken silk in 1807. He would succeed Leach as Vice-Chancellor ‘Examination of Henry Armstrong, 9 February 1894, 497; Proceedings on Trial’; TS 36/96;
in May 1827 before being made Lord Chancellor of Ireland in October of the same year. NA. Frankland concurred with Armstrong: ‘No, they are essentially different bodies’. Frank-
102 Bell ‘devoted himself to the equity branch of the profession, and gradually acquired an land noted, in particular, that ‘the very considerable difference in the potential energy possessed
extensive practice in the court of chancery, gaining a reputation as a lawyer second to that of by these two bodies, that is Ballistite on the one hand, and Cordite on the other’; ‘Examination
none of his contemporaries’: JM Rigg, ‘Bell, John (1764–1836)’, rev Beth F Wood, Oxford of Edward Frankland, 9 February 1894, 502; Proceedings on Trial’; TS 36/96; NA.
Dictionary of National Biography (Oxford, Oxford University Press, 2004) <www.oxforddnb. 84 ‘Minutes of Speech’, 30 January 1894, 44; ‘Proceedings on Trial’; TS 36/96; NA.
com/view/article/2015> accessed 7 September 2016. 85 ‘Opinion on Evidence by R Webster, MI Joyce and H Sutton’ 15 August 1893; SUPP
103 C33/603, ff 137v–138r. 5/410; NA.
104 The Morning Chronicle (3 November 1814). 86 ‘Minutes of Opening Speech (Moulton)’, 30 January 1894, 43 and ‘Summing Up’ (Cripps)
105 C33/606, f 1659r (1 November 1814) (order that bill be dismissed with costs). This was 5 February 1894, 257; ‘Proceedings on Trial’; TS 36/96; NA.
referred to Master Thomson. Day and Martin served notice that they would seek a motion 87 Cripps QC located the issue in the use of nitro-glycerine to form a smokeless powder. He
to retain the bill: C31/361 (Affidavits of RS Taylor and William Robins, 3 December 1814). maintained that the ballistite patent covered patents for other processes that led to the same
106 C13/2124/17 (sworn 19 January 1815 before Master J Campbell). result, even by a different process; ‘Summing Up’, 5 February 1894, 257; ‘Proceedings on
107 HT Gómez-Arostegui, ‘Equitable Infringement Remedies Before 1800’ in IJ Alexander Trial’; TS 36/96; NA.
and HT Gómez-Arostegui (eds), Research Handbook on the History of Copyright (Chelten- 88 Nobel’s Explosives Company, Limited v Anderson [1894] 11 RPC 115.
ham, Edward Elgar, 2016) 202–05. 89 Badische Anilin und Soda Fabrik v Levenstein [1885] RPC 73 (HL).
While the remarkable gathering of scientific celebrities was surely one of interested in pursuing the matter to a hearing and seeking a financial rem-
the salient features of the case, it is important to note that legal arguments edy against Slee, and probably some accommodation was reached between
depended upon eliciting different ‘figures of the invention’.75 This involved a those parties. Slee, after all, was no longer selling blacking.
discussion about scientific concepts that focused on the comparison between Day and Martin commenced six further suits before we come to the sec-
ballistite and cordite. As the main issue revolved around the chemical nature ond case of interest. The first of the six was a bill filed against Alexander
and the relations between the two types of nitro-cellulose and whether Christie who was said to have hired a room at 97 Holborn which was
they were different chemical species with distinct chemical properties or styled ‘Day and Martin’s Counting House’ and delivered its blacking using
not, the plaintiff emphasised the evidence produced by chemical experts similarly dressed ‘car-men’.108 Christie may well have desisted, as the pro-
who asserted their similarity. This was one of the main strategies to capture ceedings do not appear to have got even as far as requiring the motion for
the defendant’s liability. Denying the existence of distinct chemical species an injunction. Three months later, another bill was filed against Richard
of nitro-cellulose meant that the guncotton of cordite was covered by the Turner,109 a defendant of more considerable means, who engaged in clever
nitro-cellulose of ballistite.76 However, the defendant introduced counter- delaying tactics before finally being subjected to an injunction until answer
arguments based upon the evidence given not only by chemists but also from the Vice-Chancellor in May 1815.110 In the summer of 1815, Day
by mechanical engineers.77 And they obviously denied the identity between and Martin began a crackdown: proceedings were commenced against
the two substances, emphasising their differences.78 Arguing that such spe- Thomas Martin for using similar labels and having ‘Day and Martin’ over
cies did exist was a suitable manoeuvre to escape liability.79 Here we can his premises at 148 High Holborn;111 against William Hesketh for using
see how the plaintiff tended to highlight the substance over the process or bottles with similar labels and supplying retailers;112 against Thomas Payne
method of manufacture, and the defendant frequently switched the focus for the same sorts of acts;113 and against James Day, also for using imita-
to the process in order to displace any claim of identity between cordite tions of the labels.114 All these suits were heard by the Vice-Chancellor who
and ballistite. By raising the different process involved in the production of granted injunctions until answer. The last defendant was the son of Thomas
cordite, the defendant tried to discredit the plaintiff’s contention that ballis- Day, and brother of John Day, both defendants in the second of the cases on
tite and cordite were somehow the same thing physically and chemically.80 which this article focuses, and to which I turn now.
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 IV. DAY AND MARTIN v THOMAS DAY,
two military powders were essentially identical,82 and those for the defence JOHN DAY AND PETER MARTIN
75
Thomas Day and his son John were (like James) based in Webber Row in
A Pottage and B Sherman, Figures of Invention. A History of Patent Law (Oxford,
Oxford University Press, 2010) 11. Southwark, just south of what is now Waterloo. On 8 September 1815,
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 108 Bill of 26 Jan 1814: C13/2122/8.
Sayers, Henry Roscoe, Rudolf Benedikt, Robert Tatlock, Carl Lundholm, William Cullen and 109 C33/604, f 618 (23 Apr 1814) (referred to Master to see if D’s answer was sufficient).
William McNab). The defendant however relied on mechanical and civil engineers such as 110 C33/613, ff 973v–975v (27 May 1815). The defendant was a well-known maker of
Joseph Bramwell and Oscar Guttmann; see ‘Proceedings on Trial’; TS 36/96. blacking from Southwark, and some of its trade cards have survived. The defendant was said
78 ‘Cordite Patent in Chancery’ The Pall Mall Gazette (31 January 1894) 7. to have located two allies, one named Day (from Monmouth St) and the other Martin (from
79 James Dewar asserted that there existed ‘tri-nitro-cellulose’ and ‘di-nitro-cellulose’, Walworth Rd), to justify making a selling the blacking. The matter was contested, Sir Samuel
each of specific chemical formula; ‘Examination of James Dewar, 7 February 1894, 367–59; Romilly leading the argument for Day and Martin, and John Leach (and Agar) defending.
Proceedings on Trial’; TS 36/96; NA. There are brief reports of proceedings, but not the outcome in ‘Real Japan Blacking’, Morning
80 Webster QC: ‘Taking the process or means of manipulation, by which I mean malaxation Chronicle (27 May 1815); Morning Post (27 May 1815).
between heated rollers, is it or is it not the same process [for cordite as for ballistite] in your 111 Bill of 19 December 1814: C13/1431/45. Order, 21 July 1815 (injunction until answer):
opinion?—It is not the same.’ ‘Examination of Henry Armstrong, 9 February 1894, 496–97; C33/614 ff 1404v–1405v.
Proceedings on Trial’; TS 36/96; NA. 112 Bill of 15 June 1815: C13/2127/8. Order, 21 July 1815 (injunction until answer):
81 GB Ellis ‘On the Doctrine of Equivalents—Mechanical and Chemical’ CIPA Transactions C33/614, ff 1524v–1525v.
IX, 1890–91, 63–80. 113 Bill of 10 July 1815: C13/2127/7. Order, 21 July 1815 (injunction until answer): C33/
82 Odling took issue with the Attorney General’s attempt to distinguish physically between 614, f 1475v.
ballistite and cordite. ‘Cross-Examination of William Odling, 30 January 1894, 92; Proceed- 114 Bill of 10 July 1815: C13/1431/44. Order: 1 August 1815 (injunction until answer):
ings on Trial’; TS 36/96; NA. Similarly, Henry Roscoe testified that: ‘Chemically, certainly, C33/614, f 1403r–v. Leach appeared for the defendant.
Thomas Day took a ten-year lease on premises at French Horn Yard which a bright mathematician too.65 The defendant also retained a distinguished
had an entrance from between 87 and 88 High Holborn,115 a matter of yards patent barrister with a wide scientific purview, Sir Richard Webster, QC,
from Day and Martin’s at 97 High Holborn. Two months later, Thomas who helped the Attorney-General, Sir Charles Russell, to mount a defence.66
sub-leased the premises to his son John Day and Peter Martin, an illiterate Their performance in court was scrutinised by the press and some journalists
gardener from Long Lawford in the County of Warwickshire.116 John Day were struck by the masterly manner in which Moulton exposed the case.67
and Peter Martin then became formal partners on 26 December 1815.117 While he did not need any papers to conduct the case, Russell was criti-
They put up a signboard stating ‘Day and Martin’s Blacking Manufacturer cised for his constant need to consult the voluminous references and other
No 87 High Holborn’ and started selling blacking in similar bottles with colleagues.68 Journalists also made comment on the technical difficulties of the
similar labels, except for the variation in the number ‘87’ in place of ‘97’. case, the proceedings of which, according to a newspaper account, ‘begun to
Peter Martin returned to the Midlands to be with his dying wife and there- uncoil itself with the ponderous deliberation of a gorged boa constrictor’.69
fore played little practical part in the business. In fact, the scientific and technical complexity of the matter did not only
Day and Martin filed a bill on 27 June 1816, seeking an injunction.118 affect the argumentation of the case but also its preparation.70 For instance,
Charles Day was convinced that the supposed partnership with Peter counsel for the parties visited Waltham Abbey in Essex and the Nobel Explo-
Martin was a wholly sham relationship designed to afford spurious justifica- sives factory in Ardeer, Glasgow, to prepare their respective legal strategies
tion for the deception that the use of the name and address would inevitably and to secure evidence.71 Experiments were carried out, samples were taken
cause. The bill noted that this was not the first time that the Day family and expert witnesses were carefully arranged.72 Unsurprisingly, the selection
of Webber Row had tried to take advantage of the reputation Day and of witnesses became a concern for both parties,73 perhaps because of the
Martin’s blacking had garnered, as only the previous August it had obtained prevailing ‘Aristotelian attitude’ that seemed to affect patent cases.74
an injunction again John Day’s brother, James Day. Various affidavits were
also sworn in support of the bill. In one, Samuel Underwood described visit-
ing Thomas Day’s premises in Webber Row to purchase ‘Burnswick Black’
only to be sent to Wood Grocer, No 5, Queens Buildings, Knightsbridge, 65 T Mathew, ‘Moulton, John Fletcher, Baron Moulton (1844–1921)’, Oxford Dictionary
whereupon Thomas Day showed Underwood some labels and cards with of National Biography (revised edn) H Mooney (Oxford, Oxford University Press, 2004),
the words ‘Day and Martin, Manufacturer of the Real Japan Blacking, <www.oxforddnb.com/view/article/35132>. HF Moulton, The Life of Lord Moulton (London,
87 High Holborn’. The label on the bottle that Underwood received stated: Nisbet & Co, 1922) 196.
66 ‘Cordite Patent Rights’ The Sheffield and Rotherham Independent (12 January 1894) 4;
The real Japan Blacking made and sold wholesale by Day and Martin 87 High 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
Holborn. This excellent composition approved of by all parties who have used it
Press, 2015) 136–37; Arapostathis and Gooday, Patently Contestable (n 57) 71.
with very little labour produces the most brilliant black ever seen quite equal to 67 ‘Cordite Patent in Chancery’ The Pall Mall Gazette (30 January 1894) 7; ‘Cordite Patent
Japan varnish imparts superior nourishment to the leather will not strain the fin- in Chancery’ The Pall Mall Gazette (7 February 1894) 7.
68 ‘Cordite Patent in Chancery’ The Pall Mall Gazette (31 January 1894) 7. Although pat-
est linen is perfectly free from any offensive smell and will retain its goodness in
any Climate. ent 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’;
Directions for use. Brush the dirt well off. Shake up the blacking till it is prop- 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, par-
erly mixed then lay it on your brush in the usual manner. Black the boot or shoe
ticularly in relation to the cross-examination of scientific witnesses; see CA Cripps, A Retrospect
equally over. Use your shining brush directly and in one minute you will have the (London, W Heinemann, 1936) 72–73.
most beautiful jet black ever seen. Half pints made. Price 1’ 6 each. 69 The Pall Mall Gazette (31 January 1894) 2.
70 Anderson to M’Clintock, 18 November 1892 (arrangements for the impeding Cordite
No concern with any House ‘Day and Martin’. 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 (pro-
posing 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.
115 According to the affidavit of Jonathan Weston, the lessor was Collins of Market Street, 72 Hare & Co. to Webster, 26 April 1893; SUPP 5/410; NA.
Kennington. 73 Hare & Co. to Capt. Nathan, 20 December 1893 (undesirability for Mr Findlay or
116 The bill C13/2129/34, claimed that the partnership was ‘merely pretended and fictitious Mr Cook to become expert witnesses in case they were exposed to cross-examination); SUPP
and solely contrived with the view’ to defrauding Day and Martin. 5/410; NA.
117 The answer explains, however, that the solicitor who arranged the transaction had 74 Harry Pearson has summarised this attitude by saying that ‘generally the Court is
subsequently died. more impressed by technical evidence from authoritative people, than in so-called facts’; see
118 C13/2129/24. H Pearson, Rolls-Royce and the Rateau Patents (Derby, Rolls-Royce Heritage, 1989) 21–22.
III. THE MAKING OF THE LEGAL CASE 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
As historians of science have recently noted, the British courtroom became Pope swore that in January 1816 he had followed a cart from French Horn
a major venue for patent disputes in the late nineteenth century.57 Alfred Yard to an Oil Shop at No 6 Charles Street in Soho, where he asked for a
Nobel spent much time managing his patents worldwide, and he and his bottle of ‘Day and Martin’s Real Japan Blacking’ and was supplied with a
assignees appear to have adopted an aggressive strategy of litigating against bottle just delivered. Further affidavit evidence was provided by Jonathan
infringers.58 Their patent activities in Britain were also noticeable. For Weston, Thomas Blofield and Morgan Williams, relating to purchases and
instance, a particularly remarkable level of management attention can the labels, as well as the precise location of the premises as being in French
be seen in their attempt to extend their patents and in the dynamic push Horn Yard rather than 87 or 88 High Holborn. On the basis of the affida-
to pursue legal actions in British courts.59 In the early 1880s, Nobel vits, Charles Day was awarded an injunction until answer.
Explosives Ltd. had already sued for patent infringement in Britain.60 Thomas Day put in his answer on 13 August 1816; and John Day and
A few years later, the controversy between Alfred Nobel and Abel and Peter Martin did likewise.119 The former admitted involvement in leasing
Dewar seems to have triggered the legal action studied here. The action French Horn Yard and sub-leasing it to John and Peter Martin. As for the
was brought by Nobel Explosives Ltd, the holder of the ballistite patent, co-partners, they denied deliberately seeking to defraud the claimant and
in the Chancery Division of the High Court of Justice against William argued that their packaging and representations were merely legitimate uses
Anderson.61 Mr Justice Robert Romer, who, like many of the legal of their own names and the address of the business. They stated that not
representatives for each side, was distinguished in both law and science, only had they leased French Horn Yard, but also that Martin had leased
heard the case.62 Romer J had been a brilliant mathematician at Cambridge a floor of 87 High Holborn, where he planned to live, and this had been
and a professor of mathematics at Queen’s College, Cork before being used, among other things, as a counting house for the business. They denied
called to the bar.63 Prominent patent barristers also featured. John Fletcher they imitated Day and Martin’s labels, seeking to explain the similarities as
Moulton, the barrister acting for the plaintiff, was a stellar QC, surely one inevitable in descriptions of the nature, function, method of use and price
of the most formidable—and expensive—silks of his generation.64 He was of blacking. Indeed, they highlighted differences in language and typescript
between the labels of Day and Martin and their labels, observed that they
57 S Arapostathis and G Gooday, Patently Contestable. Electrical Technologies and had already modified their labels once, and indicated a willingness to distin-
Inventor Identities on Trial in Britain (Cambridge, Mass., The MIT Press, 2013) 7, 28, 49–53; guish them further.
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 On August 20, Sir John Leach KC moved to dissolve injunction, while
cuttings such as ‘Wig and Gown’ The Globe (London, England, 27 April 1897) 3; ‘A Chop of the same team as before (Hart, Bell and Wilbraham) argued on behalf of
Patent Actions’ The Globe (13 April 1898) 3. Charles Day for its maintenance.120 The argument was briefly reported in
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); the newspapers,121 which noted that the case attracted ‘considerable interest’
Atlantic Giant Powder Company v Parker (1879) Fed Cas No 625, 16 Blatchf. 281 [USA]. as a result of the new points of law before the court.122
59 ‘The Dynamite Patent’, The Yorkshire Post and Leeds Intelligencer (3 March 1881) 8;
According to these reports, there was some discussion of precedents, par-
‘The Dynamite Patents’ The Glasgow Herald (4 March 1881) 8; ‘The Dynamite Patent’ The
Cornish Telegraph (10 March 1881) 7. ticularly with respect to freedom to use one’s own name.123 Anthony Hart
60 Nobel’s Explosives Co v Jones, Scott & Co (1881) 17 Ch D 721. apparently cited a number of cases on titles,124 and pointed out that no less
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 119 The defendants’ answers were prepared by Clement Tudway Swanston, a barrister later
Alfred Cripps QC, Richard Burdon Haldane QC, T Rolls Warrington (instructed by Bircham known for his reports on cases decided by Lord Eldon LC.
& Co, agents for Moncrieff, Bair, Paterson & Co, of Glasgow); Counsel for the defendant: the 120 It was supposed to be even better, including Sir Samuel Romilly. However, he was unable
Attorney-General (Charles Arthur Russell), Richard Webster QC, Matthew Ingle Joyce QC, to attend the argument because of ill-health: The Morning Chronicle (17 August 1816).
Henry Sutton, Robert Cecil (instructed by Hare & Co, agents for the Solicitor to the Treasury). 121 The Morning Chronicle (17 August 1816), The Morning Post (17 August 1816). Some
63 FD Mackinnon, ‘Romer, Sir Robert (1840–1918)’, Oxford Dictionary of National Biog- fragments of the brief for defendant’s counsel survive at the London Metropolitan Archive,
raphy (revised edn), P Polden (Oxford, Oxford University Press, 2004), www.oxforddnb.com/ F/PEY/397.
view/article/35819; see also Rowlinson, Sir James Dewar (n 13) 67. 122 The Morning Chronicle (17 August 1816).
64 ‘Barristers’ Fees’ St. James’s Gazette (London, England, 19 September 1901) 16; see also 123 Leach referred to an unreported case involving a shoemaker called ‘Myson’, which Eldon
W Van der Kloot, ‘Lord Justice of Appeal John Fletcher Moulton and explosives production in LC had referred to in Hogg v Kirby. Eldon LC referred to another supposed instance where a
World War I: ‘the mathematical mind triumphant’ Notes Rec (2014) 68, 171–186; A Guagnini, plaintiff was called ‘Myhouse’: The Morning Post (17 August 1816); The Times (19 August
‘John Fletcher Moulton and Guglielmo Marconi: Bridging Science, Law, and Industry’ Notes 1816) 2.
Rec. (2009) 63, 355–63. 124 The Morning Chronicle (17 August 1816).
than five persons had already been restrained from selling ‘Day and Martin’ cord form’.50 This was the first cordite patent.51 As this patent utilised
blacking: the injunctions already awarded against Slee and Statham, Thomas ‘soluble nitro-cellulose’, the authors delineated their patent specification as
Martin, Thomas Payne, William Hesketh and James Day.125 a modification of blasting gelatine (the patent of which was scheduled to
Eldon LC seemed relatively untroubled as to the general question of expire later in 1889) and not of ballistite. Two more cordite patents fol-
whether injunctive relief might be available at all. For him, it was not pri- lowed in the next few months, as did a patent for machinery to manufacture
marily a matter of whether the injunction would not harm others (as Hart the propellant in the form of wires.52 Unlike the first cordite patent, the sec-
had put it), so much as a one of preventing fraud.126 Lord Chancellor Eldon ond and third employed tri-nitro-cellulose (guncotton). The third (referred
asked to see the labels and bottles, ‘I wish to see the bottles; much will to as ‘the cordite patent proper’ at one point in the trial) was a general tem-
depend upon the eye’.127 He noted there were differences in language: for plate for all subsequent cordite fabrications. Nobel learned about the cord-
example, where Day and Martin used ‘beautiful jet black’, Jonathan Day ite patents in May 1889 even though Abel and Dewar had intimated that
and Peter Martin’s label said ‘brilliant black’.128 Despite these differences, they were taking out patents.53 The duo (Dewar in particular) continued to
Eldon LC concluded that there was sufficient to indicate a fraudulent inten- assure Nobel that ballistite was still under serious consideration.54 On 25
tion on the part of the defendants. The Lord Chancellor observed: May, Nobel and Abel and Dewar reached a verbal agreement. Although
the specific details of this agreement are unknown, the fact is that relations
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 com- between Nobel and his English rivals soon degenerated swiftly. The discord
position of the plaintiff … If Day could find a man of the name Martin, the black- was over possible business arrangements regarding the foreign patents of
ing might be sold as that of Day and Martin, and they might set up their shop next Abel and Dewar, who would only include Nobel if he joined them on their
door to that of the plaintiff, but still they must not sell their blacking for that of terms. Nobel wanted to work through his own cartel of dynamite compa-
the plaintiff. The article was sold to the retail dealer, and their customers might nies.55 Dewar cut off discussion completely on 9 August.56
think that the firm of 97 had been removed to 87. His Lordship was of the Opin-
ion that the injunction, with some alterations, must stand; but he was quite ready, 50 Second Half-Yearly Progress Report of the President Explosives Committee, 30 June
if wished for by the defendants, to direct an issue to be tried in a court of law.129 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.
Eldon LC offered the defendants the option of trial of the issue before a 51 English Patent 5614 (Abel and Dewar), ‘An Improvement in the Manufacture of Explosives
jury, but they declined. Sir John Leach said that the defendants were for Ammunition’. 2 July 1890 ‘(but withheld from Publication under Section 44 Patents & c.,
‘satisfied with his Lordship’s judgment’. The key question then was the Act, 1883)’; Publication, 28 May 1892.
52 English Patent 8718 (Abel and Dewar), ‘Manufacture of Explosives’ 26 April 1890.
precise form the order would take. This was especially problematic because English Patent (Abel and Dewar), 11,664: ‘Improvement in the Manufacture of Explosives’;
the defendants were named ‘Day’ and ‘Martin’ and had at least some 24 May 1890. English Patent 11,667 (Abel, Dewar and Anderson), ‘Process and Apparatus for
justification for using the number ‘87’. 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
In the end, Eldon LC decided to maintain the injunction but in form that the Second Half-Yearly Progress Report of the President Explosives Committee, 30 June 1889
differed from that proposed in Charles Day’s bill. He had altered the injunc- (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 non-
tion, he explained, to preserve the legal rights of the new company, ‘and at
volatile constituent for camphor and added that: ‘It has been our duty, with the authority and
the same time to guard the original Company from being imposed on’.130 in the interest of the Department of Government which we serve, to protect certain results
He had given the issue ‘the best attention [he] could possibly bestow on it’. arrived at by us’. He specified the ‘nitro-glycerine powder’ and ‘smokeless powders of another
The Order book stated: 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
That an injunction be awarded to restrain the defendants Thomas Day, J onathan are in the folder, ‘Correspondence between Mr. Alfred Nobel and Messrs. Abel and Dewar’;
Day and Peter Martin their agents, servants and workmen, from pasting or 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’;
125 The Times (19 August 1816) 2. Dewar to Nobel (ibid) 156.
55 Dewar wrote to Nobel on 1 August 1889, stating that, for him, ‘the proper course to
126 The Morning Chronicle (17 August 1816).
127 The Morning Post (17 August 1816); The Times (19 August 1816) 2; The Morning adopt with regard to the specification is to adopt a partner who is willing to take one third for
Chronicle (17 August 1816) (‘Show me the blacking bottles’). a fixed sum and to discharge duties of negotiation, etc’. On 5 August, Nobel proposed that
128 The Morning Post (17 August 1816); The Times (19 August 1816) 2; The Morning Dewar (and Abel) ‘formulate a definite proposal which I may lay before our foreign Dynamite
Chronicle (17 August 1816) (‘Stir the blacking well’ or ‘sit it well with a brush or stick’). Companies’; Dewar to Nobel (ibid) 156.
56 Dewar to Nobel, 9 August 1889; Dewar to Nobel (ibid) 156.
129 The Times (19 August 1816) 2.
130 The Morning Chronicle (21 August 1816).
also charged with carrying out experiments on explosives and munitions a ffixing to the Bottles containing the Composition or Blacking in the Petitioners
to advance the knowledge about them.41 Abel and Dewar proposed that bill mentioned made and prepared or sold by them the Said defendants the Labels
any results of such advancement on their part should be patentable, with hitherto used by them or Said Labels being the same as or colourable imitations of
domestic patents to be assigned to the government but foreign patents to be 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
held by them.42 This was possible because the 1883 Patents Act rescinded
form of subscribing and annexing their names to the Labels the mode and form of
the prohibition on government officials from taking out patents.43 There
the Signatures prepared by the Plaintiff and with this variation it is Ordered that
was neither formal approval of nor official opposition to the proposal.44 In the Injunction be continued to the hearing of this Cause or the further Order of
October 1888 the Committee explicitly asked Nobel to submit samples of this Court.131
ballistite.45 He agreed, and from 1 November until early 1889 submitted
occasional samples.46
Although they faulted ballistite for potentially dangerous vaporisation V. THE IMPLICATIONS OF THE DAY AND MARTIN LITIGATION
of camphor, Abel and Dewar were very encouraging to Nobel about the
prospects for his smokeless propellant.47 However, early in 1889, Abel and Having succeeded against Thomas Day, John Day and Peter Martin, Charles
Dewar began to develop their own modification of ballistite48 (without Day continued his campaign to suppress counterfeiters. Six further suits
camphor) and by mid-March submitted a sealed memorandum on their were begun between 1816 and 1821: in 1816 against Edward Baker132 and
own research to the Treasury Solicitor ‘for future reference, in the event William Forward,133 in 1817 against William Paley, Reece Price and John
of a question arising as to priority of invention’.49 In April 1889 they Gosnell,134 as well as against John and James Bowling;135 in 1819 against
filed a patent specification for production of a smokeless powder ‘in the 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
41 War Office Committee on Explosives. General Instructions [10 July 1888]. Royal Society continued to offer him valuable and virtually instant interim injunctive relief
of Chemistry, HC 5001,—FA (box 1); File 27: ‘War Office Committee on Explosives—General against these egregious imitations, the Lord Chancellor enjoining Paley,
Instructions’ (10 July 1888).
42 ‘Position of Committee with Reference to Patents for Inventions and to Inventors’, First et al,138 and the Bowlings in 1817,139 Shout in 1819,140 and Cockburn
Half Yearly Progress Report of the President Explosives Committee, 31 December 1888 in 1821.141
(London, War Office, 1889); SUPP 6/512; NA.
43 HC Deb 11 September 1893 vol 17 c834 (Edward Stanhope). The details of the delibera-
tions 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 131 C33/624, f 1753v, at f 1756v.
may have been communicated verbally I cannot, of course, say’; HC Deb 28 August 1893, 132 Bill of 16 December 1816 in C13/2145/9.
vol 16 cc1206–7 (Henry Campbell-Bannerman). 133 Bill of 16 December 1816 in C13/2147/16. Advised by Henry Maddock, Forward would
45 ‘At invitation of Committee, on verbal authority, Mr. Nobel, 1.11.88, brought down two
eventually put in an answer, dated 16 February 1819, claiming he was reselling blacking he
samples of a powder for trial’. Proceedings of Explosives Committee, 2 November 1888; SUPP had himself bought innocently on the market. On Tuesday 15 December 1820, the action was
6/512, 5; NA. dismissed for want of prosecution: C33/678, f 146.
46 The Secretary of the Explosives Committee, Captain Jocelyn Home Thomson, was
134 Day v William Paley, Reece Price and John Gosnell, bill of 6 May 1817: C13/1993/62.
permitted to observe the manufacturing process at Nobel's production site at Honfleur, France, 135 Day v John and James Bowling, bill, 1 November 1817: C13/2139/10.
on 28 March 1889 and was given additional supplies of ballistite; see Second Half-Yearly 136 Day v Benjamin Shout, bill, 23 November 1818: C13/2147/25. Advised by Simpkinson,
Progress Report of the President Explosives Committee, 30 June 1889 (London, Harrison and Shout put in an answer on 11 February 1819.
Sons, 1889) 7 and Appendix V (46) in SUPP6/512. 137 Day v James Cockburn, Joshua Rowland, John Brewer, bill of March 1821, C 13/2160/25.
47 On 21 January 1889, Nobel submitted ‘the general terms, which he would demand in
138 Day v William Paley, Reece Price and John Gosnell, Order, 8 May 1817: C33/633,
the event of the adoption of his powder’. Second Half-Yearly Progress Report of the President ff 897v–898r (injunction until answer).
Explosives Committee, 30 June 1889 (ibid) 6 in SUPP6/512. 139 Day v Bowling, Order, 1 Nov 1817: C33/635, f 1792r–v; The Times (3 November 1817);
48 Abel and Dewar referred to their own powders as ‘Ballistite. Modification by Committee’
The Morning Chronicle (3 November 1817); The Morning Post (3 November 1817); Caledo-
in the confidential Progress Reports of the Explosives Committee; Report No. 9. Minute 325. nian Mercury, 27 Nov 1817 (injunction until answer).
12 June, 1889, 1 in SUPP6/512. 140 Day v Benjamin Shout, 24 July 1819: C33/658, ff 1639v–1640v (injunction granted)
49 Submitted to the Director of Artillery on 17 March; Second Half-Yearly Progress Report
(LC); The Morning Post (26 July 1819).
of the President Explosives Committee, 30 June 1889 (London, Harrison and Sons, 1889) 141 Day v James Cockburn, Joshua Rowland, John Brewer, The Times (26 March 1821) 3;
12 in SUPP6/512. 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.
Other litigants followed suit: John Collinge succeeded in an action against 1 June 1872 reiterated the latter provision. In 1874 a Select Committee of
Phillip Bowden relating to the use of ‘Collinge’s Patent’ axletrees;142 and the House of Commons was appointed to reconsider the Nitro Glycerine
another blacking manufacturer, Robert Warren, brought two suits in 1827, Act. In light of its recommendations, the Explosives Act 1875 was enacted,
initially with success, but the injunctions were later dissolved.143 Day and which regulated the importation, manufacture and transportation of dyna-
Martin again returned to Chancery in 1831, gaining an injunction against mite (and guncotton).36
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 B. Towards Ballistite and Cordite
the name ‘Henry’ for calcinated magnesia. The following year, in the Gout
case, an injunction was awarded restraining the defendant from exporting In 1875, Nobel patented another stable form of nitro-glycerine, blasting
watches to Turkey bearing the mark ‘pessedede’ (some reports say ‘pesend- gelatine (gelignite), derived improbably from two explosive materials: nitro-
ede’ or ‘cesended’, but all agreeing that the word meant ‘warranted’), the glycerine and collodion cotton.37 In one of his patents for blasting gela-
Vice-Chancellor observing that he thought ‘it quite a matter of course to tine, Nobel speculated on its possible conversion into a smokeless military
grant the injunction’.146 In 1833, in Ransome v Bentall, a famous Ipswich propellant,38 and spent 12 years working on this challenge. He succeeded by
plough maker obtained an injunction against a defendant from Bishop’s using Hyatt’s ‘celluloid’: specifically, the use of camphor as the predisposing
Stortford for imitating the marks ‘Ransome’, ‘Ransome & Sons’ or ‘HH’ material for gelatinising collodion cotton with nitroglycerin to obtain the
on plough-shares.147 In the same year injunctions were awarded in Hutton necessary composition and physical consistency for a military propellant.
v Forster, which related to marks on envelopes used to carry serge to the The English patent for ballistite, which became the focus of this case, was
Gold Coast148 and John Wilson v George Wilson and Francis Southern 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
142 The Morning Chronicle (8 June 1821) (injunction awarded); The Morning Post (8 June
War Office Committee on Explosives was established under the presidency
1821).
143 Warren v Lamert (1827), Morning Chronicle (14 November 1827); The Bury and of Abel and included James Dewar and August Dupré, consulting chem-
Norwich Post (21 November 1827); Morning Post (28 November 1827), The Standard ist to the Home Office’s explosives department. Among other things, the
(27 November 1827), The Times (28 November 1827) 3 (injunction dissolved) (LC); Warren Committee was charged with assessing and advising on the latest advances
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 in explosive agents, particularly smokeless military propellants, so as to
of the connection between Charles Dickens and Warren’s blacking, the pleadings in these cases obtain the best possible smokeless propellants for service weapons.40 It was
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; 36
CP Coop 489, 47 ER 611 (Shadwell V-C). Explosives Act 1875 (38 Vict c 17).
37 ‘Improvements in Explosive Compounds’, English Patent 4179 ‘Improvements in
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. Explosive Compounds’. Provisional Specification, 2 December 1875; Complete Specification,
146 Gout v Samuel, The Times (16 July 1832) (VC) (discussed in David Buckden, ‘Ralph 2 June 1876.
38 Description published by the Royal Patent Office. The Nitro-Glycerine Company,
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; Limited, Stockholm, ‘Method of Producing an Explosive in a Solid Shape from Nitro-glycerine,
5 Leg Obs 495; and 1 Chitty’s General Prac 721; Goutt v Aleploghler in ‘Trade Marks’ 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 Spec-
(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 ification, 31 January 1888; Complete Specification, 24 November 1888; Accepted, 15 January
C33/859 f 1188 (injunction continued) (VC). Ludlow and Jenkyns (1879) 27 describe this as 1889. Nobel’s ballistite patent contained three claims, the relevant one here being the first:
‘the first clear case’ of injunctive relief. ‘I declare what I claim is:—I. The manufacture from nitro-glycerine and soluble nitro-cellulose,
147 James Ransome, Robert Ransome James Allen Ransome v Nathan Bentall (11 December of a horny or semi-horny explosive compound, susceptible of granulation, substantially as
1833) (1834) 3 Law Journal (Ch) 161 (VC); Ipswich Journal (21 December 1833); Bury and and for the purposes herein described’; in ANA: H1a, Ser TRYCK, Doss Nr 266 (Blue-Book
Norwich Post (25 December 1833); The Essex Standard (28 December 1833). C13/569/32 Specifications [Engleska Patentbeskrivingar]).
40 On 21 August 1893, the War Secretary stated in Parliament: ‘The object of the Depart-
(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 ment was not to decide on the merits of rival inventions, but to obtain the best material
his private residence in Harley Street on Tuesday (31 December 1833)); ‘Letter to Editor of for the Public Service. For this purpose the Committee were naturally entitled to suggest
The Times from Forster and Smith’, The Times (27 December 1833) 4; ‘Letter to Editor from improvements and modifications, and no special intimation to that effect was required’. HC Deb
Forster and Smith’, Standard (27 December 1833); The Times (3 January 1834) 4 (injunction 21 August 1893 vol 16 cc633–6. (Henry Campbell-Bannerman).
granted as prayed).
its stability.28 Abel identified a method to stabilise it, which he patented and which concerned the misuse of marks (J Wilson and a reversed crown) on
which became the standard method of producing stable guncotton.29 He cutlery.149
also investigated the military uses of guncotton and developed it commer- What was the basis of intervention by Chancery? In the late 1830s and
cially as a blasting agent. Its military potential as propellant eluded him, 1840s, Lord Cottenham LC would express the view that Chancery was act-
but its commercial uses seemed very promising, especially in mining,30 and ing in its ancillary jurisdiction, giving effect to a trader’s legal right to pre-
Abel arranged for its manufacture,31 which put him in direct competition vent misrepresentations effected through use of signs or marks for which the
with Nobel. trader had become known.150 Was this an accurate interpretation of Lord
In 1869, after a very destructive nitro-glycerine explosion in Wales, Eldon LC’s understanding? Certainly it is consistent with it. Before taking
Parliament passed the Nitro Glycerine Act, banning the importation into up the position as Lord Chancellor, Lord Eldon had been a common law
Great Britain, or transportation within the country, of ‘every substance hav- judge, and indeed had presided in an 1800 case in Common Pleas concern-
ing nitro-glycerine in any form as one of its component parts or ingredients, ing the counterfeiting of ‘Spilsbury’s Drops’.151 Moreover, in 1803, in Hogg
without first securing a special licence for importation or transportation v Kirby (which he saw as logically related to the trade mark jurisdiction),
from one of the Principal Secretaries of State’ [Home Secretary or Secretary he granted injunctive relief, but proposed to Hogg that he pursue Kirby at
of State for War].32 This included dynamite as well as nitro-glycerine. As a common law. And in Day v Day, Day and Martin itself, Eldon LC gave the
government scientific adviser with a competitive product of his own, Abel defendant the option of insisting on trial at law if he was not happy with
was suspected of facilitating the bill’s passage.33 Abel’s—and guncotton’s— Eldon LC’s conclusion. It seems then that Eldon LC saw Chancery as inter-
image were badly tarnished by an explosion on 11 August 1871 at the vening in support of the common-law right because were it not to do so
Stowmarket factory producing guncotton. Even before this catastrophe, ‘damages do not give adequate relief’.152
Abel and other government military officials were under pressure from the As with Day, most of these cases went unreported, but the frequency with
reformist Secretary of State for War, Edward Cardwell, to give up personal which plaintiffs pursued injunctive relief started to receive wide c omment.153
patents because of a conflict of interest in holding and financially benefit- In 1839, one commentator would observe that:
ing from them. After the Stowmarket disaster, Abel sold off his guncotton
Many injunctions of this description have been granted by the present Vice-
patent right.34 In March 1872 a Treasury Minute prohibited government Chancellor, but none of the cases have appeared in the reports of that Court,
officers from giving advice where ‘their own interest might come into col- although several are well known to counsel, and are often referred to.154
lision 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
149 29 May 1833 (VC); reported in The Sheffield Independent (8 June 1833) (the V-C stating
28 FA Abel ‘Researches on Gun-Cotton. On the Manufacture and Composition of Gun-Cotton’

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);
(1866) 156 Philosophical Transactions of the Royal Society of London 269–308 and FA Abel ‘The ‘Fraudulent Imitation of Marks’ Leeds Mercury, 29 June 1833.
Bakerian Lecture: Researches on Gun-Cotton. Second Memoir. On the Stability of Gun-Cotton’ 150 (1837) 3 My & Cr 1; (1837) 6 LJ Ch 308.
(1867) 157 Philosophical Transactions of the Royal Society of London 181–253. 151 Gribble v Forbes, Albion and Evening Advertiser (23 June 1800); London Packet
29 ‘Improvements in the Preparation and Treatment of Gun-cotton’, British Patents 1102
(23 June 1800); Oracle and Daily Advertiser (26 June 1800); Morning Post and Gazeteer
(20 April 1865). (3 July 1800). This was an action in the Court of Common Pleas before Lord Eldon and special
30 Especially after the discovery by his assistant, EO Brown, that a mercury fulminate
Jury, relating to ‘Spilsbury’s Anti-scorbutic Drops’. The claimant, Mrs Gribble, was wife of the
detonator, like Nobel’s, could be used to set gun-cotton off in open air. late Francis Spilsbury. The defendant, W & F Forbes, Chemists at 34 Blackman Street, The
31 By Messrs Prentice & Co of Stowmarket, the company that had produced Von Lenk’s
Borough, did not offer any defence, and was found liable. Lord Eldon said ‘there was no doubt
guncotton in England. on earth that the defendants could have no answer in point of law’. Gribble did not seek dam-
32 See 32 & 33 Victoria, Chap 113. ‘An Act to prohibit for a limited period the importation,
ages. Gribble seems to have commenced proceedings against others, such as William Smith,
and to restrict and regulate the carriage of Nitro Glycerine. [11th August 1869]’. who entered into a bond not to sell such spurious mixtures; ‘Spilsbury’s Antiscorbutic Drops’
33 Staveley Hill, MP for Coventry, explicitly stated this suspicion in Parliament on 16 May
Whitehall Evening Post (28 June 1800).
1873. Henry Bruce, the Home Secretary, rebutted him; HC Deb 16 May 1873 vol 216 cc53–9. 152 Hogg v Kirby (1803) 8 Ves Jun 215, 225.
Alfred Nobel sarcastically expressed his own suspicion of Abel’s role in a letter to Home 153 Morison v Salmon (1841) 2 Manning & Granger 385, 133 ER 795 (Maule J) (‘Applica-
Secretary Bruce in March 1870: ‘The distinguished patentee for guncotton in England and chief tions are frequently made to the Court of Chancery to injoin one manufacturer from imitating
Advisor of the House of Commons on Dynamite matters therefore appears to have exagger- the mark of another’); Anon, (1848) 9 Law Mag Quart Rev Juris ns 236 (‘There is a numerous
ated the danger of the latter substance’; Nobel to Bruce, March, 1870. Riksarkivet, Stockholm, class of cases in which persons have been restrained by injunction from using the name, trade
ANA, Signum BI: 1, [Copybook] 1869: ‘Private Briefe fuer Herrn A. Nobel’. XVII (sheet 172). mark, or indicia of another’); T Turner, ‘Trades Mark’ (1851) 14 The Jurist 223, 226, said
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)
‘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’.
Folder 10. 154 Anon, ‘Piracy of Marks or signs of merchants and traders’, (1839) 22 Law Mag Quart
Rev Jurisp 148, 152.

That is not to say that proceedings at common law ceased. In 1819, Elizabeth A. Nobel and Abel: Tamers of Nitro-glycerine and Guncotton
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 In Russia in the early 1850s, Nobel and his father were introduced to
certainly the proprietor, and the jury found in her favour (though the dam- nitro-glycerine (and its possible military uses) by one of Alfred Nobel’s for-
ages were only 40 shillings).155 In 1821, Day and Martin itself returned to mer chemistry teachers, Nicolai Zinin.22 A decade later they tried to develop
the common-law courts (King’s Bench) with an action against Henry Brown, nitro-glycerine for military uses, as an explosive in torpedoes and as a com-
an ‘oil-man’ based in Golden Square. Day and Martin was awarded £15 in ponent in military propellants (combined with black powder) and later
damages.156 In 1824, in Sykes v Sykes (the first common law case featured developed nitro-glycerine as a blasting agent, the key being a detonator to
in the law reports in which a trader succeeded in pursuing an action), set off the nitro-glycerine in open air.23 Alfred Nobel established factories to
Thomas Sykes succeeded in an action over misuse of ‘SYKES PATENT’ on produce nitro-glycerine and then marketed it worldwide as a blasting agent.
shot belts and powder flasks by the defendants, Messrs Sikes and Beatson, But nitro-glycerine was prone to violent explosions, leading to restrictions
even though the immediate purchasers had not been deceived, on the basis and bans. To remedy explosiveness, Nobel experimented to stabilise it
that ultimate purchasers would be.157 In the same year, 1824, the makers in various inert materials, the most successful of which he named ‘dyna-
of ‘Hodson’s Pale Ale’ brought proceedings in the King’s Bench, the parties mite’.24 Nobel patented it in numerous countries, including Spain (1865),
settling the issue on payment of 40 shillings.158 In 1828 Joseph Manton, Britain (1867) and the United States (1865 and 1868).25 In 1871 the British
a gunmaker from Hanover Square was awarded £25 damages against a Dynamite Company, Ltd was founded in Scotland, and in 1877 its name
defendant, William Mills (of 120 High Holborn) who had exported guns was changed to Nobel’s Explosives Company, Ltd.26
marked with Joseph Manton’s name for sale in India.159 The following year, During the same decades, Frederick Abel was working to control gun-
Henry Lazenby, son of Elizabeth Lazenby, was awarded £40 damages for cotton. Like nitro-glycerine, it was unstable; by 1860, virtually all of the
the defendant’s wrongful use of ‘Lazenby’s Harvey’s Fish Sauce’.160 production venues had either been shut down or had blown up. In the early
The key advantage of proceeding in Chancery was evidently the speed 1860s, an Austrian military officer, Wilhelm Freiherr Lenk von Wolfsberg
and form of relief. In nearly all cases, once the bill was entered and the (Baron von Lenk), claimed to have developed a means of stabilising gun-
affidavits sworn, interim injunctive relief would ordinarily follow after cotton and to have developed it as a propellant. The British military (and
scientists) were keenly interested in von Lenk’s assertions and their assess-
ment of them provided the context for Abel’s research.27 This had two
155 13 January 1819 (Guildhall, Abbott LCJ); A Statement of the Trial of the Action … components: a comprehensive scientific study of guncotton (and, to a degree,
(London, Printed for Mrs Lazenby). Abbott LCJ said such behaviour was both immoral and all identified types of nitro-cellulose) and a determination of means to ensure
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 22 Larsson, Alfred Nobel. Networks of Invention (n 11) 36.
and Martin’s. He described the defendant as ‘as a double trespasser; at once, a depreciator of 23 Sohlman and Schück, Nobel: Dynamite and Peace (n 20) 108ff. Nobel thought that nitro-
their inestimable ware, and a destroyer of the shoes and boots of the community’. glycerine exploded because of a sudden rise in temperature caused by shock or by the detonator.
157 7 August 1824 (York Summer Assizes); The Times (10 August 1824), (1824) 3 Barnewall
24 ‘Dynamite: Its History and Manufacture’ Daily Gazette for Middleborough (North York-
and Cresswell 541; 107 ER 834 (Abbott LCJ). shire, England, 25 January 1876) 3; ‘Dynamite and its inventor’ Belfast Newsletter (Antrim,
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 Northern Ireland, 23 April 1888) 6.
25 E Bergengren, Alfred Nobel: the man and his work (London, Thomas Nelson and Sons,
1828); Morning Post (18 January 1828); The Morning Chronicle (18 January 1828); (1828) 1962), 43; P Sáiz, Invención, patentes e innovación en la España contemporánea (Madrid,
25 Asiatic Journal 283. The guns apparently had been made in Birmingham, Mills only making OEPM, 1999) 313; M Wilkins, The History of Foreign Investment in the United States to 1914
up the boxes. As guns sold at between £9–12, damages were the equivalent to the value of only (Cambridge, Mass, Harvard University Press, 1989) 132.
three guns. For earlier proceedings for an injunction, see Joseph Manton v George Marshall, 26 R Trotter, The History of the Nobel’s Explosive Company Limited and Nobel Industries
Times (21 January 1825), Morning Chronicle (21 January 1825) (Vice-Chancellor) (granting Limited, 1871–1926 (London, Imperial Chemical Industries, 1938); K Fant, Alfred Nobel:
injunction). The newspapers describe this as a patent case, but from the content of the reports, A Biography (New York, Arcade Publishing; 1991) 143. The constitution of a national corpo-
the decision seems to have been based on the marks. ration was one of the business strategies Nobel used to exploit his patents in different countries;
160 Lazenby v Wingrave (1829), (KB, Guildhall; Lord Tenterden and special jury), The
see for instance, G Tortella, The Development of Modern Spain: An Economic History of the
Times (29 July 1829), 3; Morning Chronicle (29 July 1829); Morning Post (29 July 1829); Nineteenth and Twentieth Centuries (Cambridge, Mass, Harvard University Press, 2000) 94.
Aberdeen Jo (23 September 1829). For some documents relating to the defence, see LMA: F/ 27 The Gun Cotton Committee was established in 1864 by the Secretary of State for War, and
PEY/414, Lazenby v Wingrave (1829). 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.
Nitro-cellulose and nitro-glycerine came from academic scientific review by the court. The defendant would be compelled to cease its
research. They were both produced by the same kind of chemical reaction: activities. Sometimes, defendants would enter an answer, but in other cases
nitration of organic materials—cellulose (cotton) for nitro-cellulose, and matters would stop there. Where an answer was entered, injunctive relief
glycerol for nitro-glycerine—by steeping these materials in a mixture of might be continued, as in the Day and Martin v Day, Day and Martin case.
concentrated nitric and sulphuric acid. Despite similar production, they dif- If the answer raised difficult issues that the court could not decide, the
fer in one major respect: nitro-glycerine is a single chemical compound, parties might be referred to the Courts of Law. One commentator noted in
whereas nitro-cellulose is a more complex material (it is a long-chain poly- rather celebratory tone:
mer), which appears to stabilise into a few chemical types.14 The first use Whatever doubts may have formerly prevailed, it may with confidence be said,
of guncotton is attributed to the German–Swiss chemist Christian Friedrich that the foregoing investigation unequivocally shows that courts of equity will
Schönbein in 1845–46. Schönbein recognised its potential as a smokeless now interfere by injunction to prevent the piracy of marks or signs used in trade.
substitute for black powder as a military propellant, named it guncot- The remedy is no less speedy than it is sufficient … It is curious to remark, that the
ton, patented his process and tried to promote its production.15 A second, court which has acquired the reputation of being proverbially cumbrous and tardy
less explosive, type of nitro-cellulose, with different physical and chemi- in its machinery or movements, is on these occasions made on of the most prompt
cal properties to guncotton, was also ‘discovered’.16 In 1866, Abel called and summary tribunals in the country.161
Schönbein’s material tri-nitro-cellulose.17 The lower nitrated material(s) was The great advantage of proceeding in Chancery then was the speed of initial
known as collodion cotton and (sometimes) di-nitro-cellulose. Collodion proceeding and the remedy. Moreover at common law there were always
cotton was soluble in an ether-alcohol mixture; guncotton was not.18 Collo- worries as to how witnesses would perform in oral examination and cross
dion cotton was also a component of plastics such as ‘celluloid’, invented by examination, how juries would respond, and the variability of the damages
John Wesley Hyatt in 1870.19 Nitro-glycerine’s first fabrication, by Ascanio awarded.
Sobrero, an Italian physician and chemist, was almost contemporaneous
with that of guncotton (1846).20 Sobrero focused on its physiological and
medical properties.21 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
14
into the textbooks, and thus came to be given the status of a ‘landmark case’
Exactly how many was controversial throughout the nineteenth century.
15 Schönbein was Professor of Chemistry at the University of Basel. He named his material (though one about which very little was then known). Of all the 14 cases
‘Schiesswolle’—‘gun-cotton’ in English. See CF Schönbein, ‘On the Discovery of Gun-Cotton’ in the Day and Martin litigation, this was the one which stood out, both
(1847) 31 The London, Edinburgh and Dublin Philosophical Magazine and Journal of Science, because it was the hardest (as the defendants really were named ‘Day’ and
3rd series, 7.
16 It is not possible to identify a single discoverer of what became known as ‘collodion ‘Martin’), but also because, as Lord Eldon LC explained, he had bestowed
cotton’. great care considering it. The first reference was Robert Eden in his book on
17 FA Abel, ‘Research on Gun-cotton—On the Manufacture and Composition of Gun-cotton’
injunctions, which stated that ‘an injunction, however, has been granted in
(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 one case to restrain a manufacturer of blacking from using labels in imitation
film. See EA Hadow ‘1. The quality and the Proportions of the Materials required in the of those employed by the plaintiff’, citing to ‘Day v. Day’162 Other writers
Collodion Process. 1. Simple Collodion’ (1854) 1 Journal of the Photographic Society 178. picked up on the Eden citation: the case is referred to in an 1839 article,163
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-Com-
pounds obtained by the Action of Nitric Acid on Cotton’ (1855) 7 The Quarterly Journal of 161 Anon, ‘Piracy of Marks or signs of merchants and traders’, (1839) 22 Law Mag Quart
the Chemical Society of London 201, 208f.
19 See RD Friedel, Pioneer Plastic: The Making and Selling of Celluloid (Madison, Rev Jurisp 148, 154–55.
162 Robert Henley Eden, A Treatise on the Law of Injunctions (London, Joseph Butter-
University of Wisconsin Press, 1983).
20 Sobrero called it ‘pyroglycerin’; R Sohlman and H Schück, Nobel: Dynamite and Peace worth, 1821) 314.
163 Anon, ‘Piracy of Marks or signs of merchants and traders’, (1839) 22 Law Mag Quart
(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 Rev Jurisp 148, 152.
readily available as a homeopathic remedy.
in Charles Drewry’s 1842 textbook on the law of injunctions,164 Thomas of nitro-cellulose used in the two propellants. In ballistite, it was what
Turner’s Law of Patents and Registration of Inventions,165 in Ludlow and Nobel termed in his patent ‘soluble nitro-cellulose’, or ‘nitro-cellulose of
Jenkyns’s 1878 work on trade marks,166 in Sebastian’s 1879 Digest,167 and the well-known soluble kind’; in cordite, the propellant was guncotton
in Kerly (1894), where it is described as ‘the earliest reported case in which (insoluble nitro-cellulose).9 This difference had a crucial bearing on the
the infringement of a trade-mark … was restrained’.168 Finally, the case was case and its three judgments. Mr Justice Robert Romer found against the
identified by Frank Schechter in the only systematic account of the history of plaintiff. Although the plaintiff appealed, the decision was sustained in
trade mark law, as ‘the first issuance of an injunction restraining trade-mark both the Court of Appeal and the House of Lords. This chapter is a his-
infringement’.169 torical study of the case that traces the background controversy; the way
Gradually, the significance of the Day v Day, Day and Martin case the case was argued by the parties; the decision and its appeals; and specu-
(and its family) diminished, as other much more fully reported Chancery lates about its enduring legal significance while also trying to elucidate the
decisions enunciated clearly the principles on which the courts would factors that made it a landmark decision in the development of British
operate. The most prominent of these were Knott v Morgan,170 Motley intellectual property law.10
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 Chan- II. SMOKELESS POWDERS AND INVENTORS’ IDENTITIES
cery 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 careers of Nobel, Abel and Dewar, the three protagonists of the dispute,
the claimant’s buses (and an injunction was granted); in Motley,175 Lord and the crucial ingredients of their smokeless powders (nitro-glycerine and
Cottenham was asked to decide whether the benefit of a trade mark (‘M.C.’) nitro-cellulose) exemplify the rapidly growing role of scientific knowledge
moved with the business when it relocated, or was inherited by a new and advance in invention and innovation. They also evidence how patent
operator in the Carmarthen factory where the original manufacture had management became a central strategy to construct their identity as inven-
occurred; in Millington,176 the defendant had adopted the sign ‘Crowley’ tors. Alfred Nobel (1833–96) was a chemist and ambitious businessman
believing it to be generic, but the court granted a final injunction; and in who specialised in the development and manufacture of explosives and,
Perry the court had to decide whether relief should be granted where the 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 profes-
sional scientists—‘chemist to the War Department’—and tried to negoti-
ate a complex career of government service, professional scientific activity
164 CS Drewry, A Treatise on the Law of Injunctions (Philadelphia, J Littell, 1842) 160. and commercial reward from his inventions.12 James Dewar was a profes-
At 163, Drewry usefully explains why he regarded the new cases as consistent with Blanchard, sional academic chemist and held professorial chairs at Cambridge and the
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.
Royal Institution. Although primarily a ‘pure’ research scientist, he was
165 (1851) Ch IX. Note also TT, ‘Trades Mark’ (1851) 14 The Jurist 223. also interested in profitable consulting work in applied chemistry, both for
166 (1879) 26 note (g) (referring to Eden).
industrialists and the government, including profiting from patents.13
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 9 Soluble nitro-cellulose usually meant collodion nitro-cellulose (di-nitro-cellulose), soluble
(London, Sweet and Maxwell, 1894), 3. in ether-alcohol; guncotton meant tri-nitro-cellulose, the most highly nitrated form, insoluble
169 Schechter (n 3) 138. in ether-alcohol.
170 (1836) 2 Keen 213. Drewry (n 164) describes this as ‘the leading modern case’. 10 Almost a century later, the case was still cited in intellectual property literature as a
171 (1837) 3 My & Cr 1, (1837) 6 LJ Ch 308. ‘landmark’ decision; see AW White ‘The Function and Structure of Patent Claims’ [1993]
172 (1838) 3 My & C 338, 40 ER 956. European Intellectual Property Review 243.
173 (1842) 5 Beavan 66, 49 ER 749. 11 U Larsson, Alfred Nobel. Networks of Invention (Stockholm, The Nobel Museum,
174 Knott v Morgan (1836) 2 Keen 213 (Lord Langdale MR) (refusing motion to dissolve 2008) 28.
injunction). 12 R Steele and K Watson, ‘Abel, Sir Frederick Augustus, first baronet (1827–1902)’, Oxford
175 Injunction granted by V-C, 14 April 1837; dissolved by LC, 6 July 1837, (1837) 3 My & Dictionary of National Biography, revised edn, P Polden (Oxford, Oxford University Press,
Cr 1, (1837) 6 LJ Ch 308. 2004): www.oxforddnb.com/view/article/ 30319.
176 Millington v Fox (1838) 3 My & C 338, 40 ER 956 (Cottenham LC) (granting perpetual 13 JS Rowlinson, Sir James Dewar, 1842–1923: A Ruthless Chemist (Farnham, Ashgate
injunction). Publishing, 2012) ch 7.

also populated by eminent chemists and technologists as expert witnesses, plaintiff’s mark itself contained a misrepresentation.177 While the cases were
enabling similar decisions to hinge on technical and scientific issues. reported because the courts were dealing with new and difficult issues, the
The case involved a dispute between a British company, Nobel’s Explosives judgments themselves articulated the basic principles on which the Court
Company, Limited, and the director-general of the British Royal Ordnance of Chancery would intervene in a manner not seen in any of the accounts
Factories, Dr William Anderson. As the Crown could not be sued in its of Lord Eldon’s decisions. These thus came to replace Day v Day, Day and
own court, the nominal defendant was Anderson, a government official who Martin as the foundational authorities on the intervention of Chancery. It
agreed to a number of stipulations raised by the legal advisers of Nobel’s is thus not surprising that references to the Day and Martin case law were
Explosives: admit to the manufacture of cordite; allow the inspection of the increasingly sporadic: it was not even mentioned in the first treatise on
manufacturing process; and agree not to invoke protection of the Crown trade mark law,178 and even where it was mentioned, this was very much
but ‘plead in such a way as will raise the real question at issue’, namely, in passing. For later generations, the reports came to give the impression
patent infringement.5 that the first common law action was in 1824 and that Chancery only
Except in the strictly legal sense, the real defendants were the chemists started to intervene in the 1830s. With the benefit of newspapers and
Frederick Augustus Abel and James Dewar. As members of the War Office archival sources, we now know that is not correct.
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 VII. POSTSCRIPT
made and patented a double-base smokeless powder, ‘ballistite’, samples of
which were submitted upon request to the Committee. The parties fell out In recent times, Day and Martin v Day, Day and Martin (1816) has not
and this facilitated the emergence of a contentious issue since—as K enneth often been treated as a landmark case, but another decision concerning Day
Swan observed two a few decades later—the case involved the unusual and Martin’s blacking is frequently referred to in today’s textbooks. This is
situation in which ‘a patentee had either the courage or the capital necessary the case of Croft v Day.179 This case occurred a few years after the death of
to sue a Government department for infringement’.7 The fact that Abel and Charles Day in 1836. The business continued to operate under the supervision
Dewar had taken out a patent related to government activities was also con- of a general manager, John Weston.180 The nephew of Charles Day, named
sidered a political scandal by some newspapers and obviously contributed William Charles Day, a stationer and engraver, started selling blacking,
to the high profile of the litigation.8 using trade cards and labels that were similar to those used by the firm bear-
In scientific terms, however, there was also an important distinction that ing the name ‘Day and Martin’, substituting the Royal arms in the centre of
affected its complexity: the one significant chemical difference in the type 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
5 JF Chance, Solicitor to the Treasury, to Bircham & Co, 15 October 1892. Nobel’s Explo-
from an intimate acquaintance named Martin to do so. It appeared that a
sives 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
shopkeeper from Rickmansworth had purchased blacking from the defend-
in a letter of 2 August 1892, Bircham & Co to Sir Godfrey Lushington, Permanent Under- ant, believing it to be that of ‘Day and Martin’, and that when he sold it on
Secretary at the Home Office. Nobel’s Explosives Company Limited v Anderson correspond- his customers had returned it. Proceedings were brought by William Croft,
ence 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
one of the executors under Charles Day’s will, to restrain Day.
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. 177 Perry v Truefitt (1842) 5 Beavan 66, 49 ER 749 (Lord Langdale MR) (refusing injunction
ANA, FIII: 4, Doss 150. because of misrepresentation by claimant).

6 English patents, Nos 5,614, 8,718, 11,664, and 11,667 of 1889. 178 E Lloyd (n 44).
7 K Swan ‘A review of the law relating to the use and patenting of inventions by Government 179 18 December 1843, 7 Beav 84; The Morning Post (19 December 1843); The Times
Departments and their Officials’ Transactions of the Chartered Institute of Patent Agents, (14 December 1843) (hearing stood over); The Times (19 December 1843) 7 Beav 89.
Vol XXXIX, 1920–21, 53 at 55; see also The Times (London, England, 15 February 1894) 7. 180 Weston died on 9 March 1863. For details of Weston’s appointments, and the contrac-
8 ‘The Cordite Scandal’ The Pall Mall Gazette (6 September 1893) 11; ‘The Alleged Cordite tual management of the trade secret for the blacking, see Fish v Kelly (1864) 17 Common
Scandal’ St. James’s Gazette (2 February 1894) 6; ‘Cordite’ The Pall Mall Gazette (15 February Bench Reports 194, 195 ff, 144 ER 78, 79 ff (detailing terms of agreement with William Fish,
1894) 1; ‘An Exploded System’ The Pall Mall Gazette (23 July 1894) 1. 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 5
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 Nobel’s Explosives Company,
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 Limited, v Anderson (1894)
Hill and damage the claimant.
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 prin-
ciple 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 sci-
ence 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
181 Referred to in Reddaway v Banham [1896] AC 199, 209 (Lord Herschell). by Beauchamp as the ‘second industrial revolution in court’; see C Beauchamp, The Telephone
182 7 Beav 87. Patents: Intellectual Property, Business, and the Law in the United States and Britain,
183 7 Beav 89. 1876–1900 (PhD, University of Cambridge, 2007) Ch 2.
164 Barbara Lauriat Nobel’s Explosives Company, Limited, v Anderson (1894) 133
forms of language or modes of expression by which information is identical with ballistite, though it has considerable resemblance to it’.112
conveyed’.85 In an acknowledgement of what was not yet known as fair He continued: ‘whether or not, regarded as a chemical constitution, cordite
dealing, North J stated that quotation or criticism of an earlier work in a is essentially different from ballistite I cannot be sure, seeing how the emi-
new work that is otherwise original would be acceptable.86 In Steinkopff, nent experts before me differ on the point’.113 But this did not deter him
however, it was not copying that involved ‘thought and labour and produc- from deciding against the plaintiff because the patent’s scope had already
ing some original result, but a mechanical operation with scissors and paste, been affected by his restrictive interpretation.
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 B. Canons of Construction
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 Much discussion on the patent dispute can be found in contemporary
as a witness and made an argument to the Committee for copyright protec- newspapers and periodicals.114 The outcome of the litigation also attracted
tion for news on the basis of the labour and expense incurred.88 He asked polarised reactions. Some praised the decision because it liberated ‘the trade
for protection for newspaper copy for 24 hours, referring to an Australian from very heavy burdens’.115 Some others, however, considered that the
statute that provided 48 hours of protection.89 His position was challenged case had only confirmed their belief that the system was ‘as bad as it could
on the basis that the law ought not to provide copyright protection in facts. possibly be’.116 Such variety of opinions seems to have facilitated the appeal.
Yet one of the great commercial problems The Times faced was the risk and In fact, the possibility of an appeal was already pointed out in a provincial
expense of sending foreign correspondents to cover developing situations paper, the Ipswich Journal, just two days after the conclusion of the case.
abroad. Once a story was published, competing newspapers could always
There is little doubt that the Cordite case will go to the Appeal Court; it is not
use the facts but alter the expression.90 The expense incurred, and the value often that such big issues are at stake in an action, and then there is always the
obtained, came from gathering the facts of a story from locations at a great chance of the Government having to pay the piper. Mr. Nobel, too, is a very rich
distance, rather than the particular form of the literary expression. As man, and he can well afford to pay the costs, while the Glasgow Company are not
Moberly Bell explained to the House of Lords Committee on 20 June 1898: likely to lose a chance of getting possession of the cordite patent.117
Suppose the case that the President of a South American Republic has committed The day after the judgment, Thomas Johnston, General Manager of Nobel’s
suicide. Anybody who sees him do so can telegraph the fact, and have copyright Explosives Company Ltd, wrote to Nobel that, while naturally disappointed
in it. We do not think we are the only persons to be allowed to telegraph it, but over the decision, he was still optimistic about an appeal.118 Moulton QC,
we say that if we are the only persons who do telegraph it we are entitled to although less sanguine than Johnston, did think that chances of success to
protection.91
overturn the judgment of the lower court justified an appeal.119 His wariness
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 pre-
vent newspapers printing facts from a story if they had copied them from 112 ibid 128.
a rival publication and not their own correspondent. It was difficult for 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 Explo-
sives Company v Anderson’ The Manchester Guardian (31 January 1894) 7; ‘The C ordite
85 ibid 495. Case: The Nobel Explosives Company v Anderson’ The Manchester Guardian (1 February
86 ibid. 1894) 7; ‘The Cordite Case’ The Financial Times (31 January 1894) 5; ‘The Manufacture of
87 ibid. Cordite’ Manchester Courier and Lancashire General Advertiser (30 January 1894) 2; ‘The
88 Report from the Select Committee of the House of Lords on the Copyright Bill [HL] Cordite Case’ Manchester Courier and Lancashire General Advertiser (2 February 1894) 3;
together with the proceedings of the Committee, Minutes of Evidence and Appendix (393) ‘The Cordite Litigation’ Manchester Courier and Lancashire General Advertiser (8 February
Session 1898 (12 August 1898) 53. 1894) 8; ‘The Law Courts’ The Standard (15 February 1894) 2.
89 HL Report 53, 55–56. His biography states that he asked for sixteen hours. Moberly Bell 115 The Times (15 February 1894) 7.
(n 11) 187. 116 ‘Cordite’ The Pall Mall Gazette (15 February 1894) 1.
90 Moberly Bell (n 10) 187–88. 117 The Ipswich Journal (17 February 1894) 5.
91 Report from the Select Committee of the House of Lords on the Copyright Bill [HL] 118 Johnston to Nobel, 16 February 1894, ‘Nobel’s Explosives, År 1894’; ANA, F IV: 5.
together with the proceedings of the Committee, Minutes of Evidence and Appendix, Session 119 ‘Opinion by Moulton QC’ about the case, dated 21 February 1894. ANA, FIII: 6,
1898 (12 August 1898) 393, 54. Doss 152.

134 Seymour Mauskopf Walter v Lane (1900) 163
about a positive outcome was because of the emphasis the judge had placed against the publisher of a pamphlet for reprinting a memoir of Disraeli that
on the differences in the types of nitro-cellulose used. Although with some had previously appeared in The Times. The suit failed when the newspaper
delay, possibly because the War Office tried to reach an agreement with was unable to prove that it was the owner of the copyright beyond the
Nobel’s Explosives Company for the manufacture of cordite if the appeal fact of simply having paid the author.77 While the judge in Walter v Howe
was abandoned,120 the appeal was formally lodged in May 1894.121 would not infer assignment from the mere fact of payment to the author, a
Two months later, the hearing before a Court of Appeal began.122 Moulton subsequent case suggested that if copyright in an article were assigned and
QC presented a detailed history of modern explosives as a springboard for the newspaper was registered at Stationers’ Hall under section 19 of the
the principal arguments of the plaintiff.123 In particular, the main basis of 1842 Act, then the newspaper proprietor would have standing to bring an
his case continued to be an ontological argument that Nobel’s invention of infringement suit under the 1842 Act.78
ballistite was a ‘new and startling discovery’ of a double-base, ‘slow’ smoke- In the late 1880s The Times was in financial distress. Arthur Walter, the
less propellant.124 Quickly, he shifted to comparisons around the material eldest son of John Walter and, as such, the hereditary manager, hired Charles
similarity of ballistite and cordite in order to broaden the scope of Nobel’s Frederic Moberly Bell as Assistant Manager in 1890, hoping that his leader-
patent specification.125 First, he compared the material and then he stated ship would rejuvenate the flagging business.79 Moberly Bell had previously
that the ‘soluble’ nitro-cellulose specified by Nobel’s ballistite patent had, in served as a foreign correspondent for The Times in Egypt and was glad to
fact, a very high nitration level, comparable to that of insoluble g uncotton relocate to London.80 Once in his management role, some of his innovative
used in cordite.126 Second, he looked at the processes to claim that the pro- ideas like The Times Literary Supplement proved successful; others like the
cess was identical with that described in Nobel’s ballistite patent. And he Times Book Club were less so.81 He found himself frustrated, however, by
concluded that both the materials and the resulting products were indistin- the regular copying that went on in the newspaper industry, particularly
guishable.127 These comparative statements constituted an attempt to apply from The Times.82 He made it his business to lobby for additional protec-
the patent doctrine of ‘pith and marrow’ to support an expansive construal tion and challenge incidents of infringement, with some success. He waited
of the ballistite patent and to find an infringement of the ballistite patent by for the right opportunity to seek legal redress, but was anxious for the legal
cordite. In fact, Moulton had already mentioned this point to his client the certainty necessary to make business plans; the newspaper ‘wanted a deci-
plaintiff: sion 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
In my opinion the evidence obtained proved that the defendants availed them-
selves of the pith and marrow of his specification and if so the decision ought The trap was sprung with Walter v Steinkopff, in which The Times
to have been in favour of the plaintiffs on infringement. The judge however has attacked the common practice of copying and publishing extracts from
taken the narrow construction, holding the Plaintiff strictly to the words of his articles in other newspapers. The St James’s Gazette had published seg-
claim, which in my opinion is contrary to the law as laid down by authoritative ments from a long piece on America by Rudyard Kipling. This time, The
cases of all the courts including the House of Lords.128 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
120 Johnston to Nobel (n 118). What also contributed to the delay was the rise of another newspaper business, finding infringement and describing it as ‘a flagrant act
patent dispute against the government; Maxim Nordenfelt Guns v Anderson (1897) 14 RPC of piracy’.84 He addressed the defendant’s contention that there could be
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 no copyright in news, saying that there may be copyright in the ‘particular
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 77 Walter v Howe (1881) 17 Ch Div 708.
Attorney-General, substituting for Sir Charles Russel; see ‘The Cordite Case’, The Glasgow 78 The Trade Auxiliary Co v Middlesbrough and District Tradesmen’s Protection Association
Herald (17 July 1894) 2. (1889) 40 Ch Div 25, 434.
124 Nobel’s Explosives Co., Ltd v Anderson (1894) 11 RPC 519, 520. 79 J Feather, A History of the British Publishing Industry (New York, Routledge, 1991)
125 ibid 520. 183–84.
126 ibid. 80 F Harcourt Kitchin, Moberly Bell and his Times 12; Moberly Bell (n 11) 26.
127 ibid. 81 Feather (n 79) 183.
128 ‘Opinion by Moulton QC’ ANA, FIII:6, Doss 152. By the phrase, ‘holding the Plaintiff 82 Moberly Bell (n 10) 185.
strictly to the words of his claim’, Moulton meant, in particular, that in Justice Romer’s decision, 83 ibid 186.
‘the claim is limited to the manufacture of the propulsive agent from soluble nitro-cellulose’. 84 (1892) 3 Ch D 489, 501.
IV. MOBERLY BELL AND NEWSPAPER COPYRIGHT 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
Tensions between those who wanted to protect lectures and the newspa- of the claim, if the pith and marrow of the invention has been taken’.129
pers that wanted to publish them was only one of the many copyright legal However, Lord Esher, the Master of Rolls, expressed concern about the
problems the newspaper business grappled with in the nineteenth century.69 doctrine:
The 1842 Copyright Act provided copyright protection for ‘books’, which
You must examine what people meant when they said that. That phrase is taken
arguably included newspapers as sheets of letterpress, and required registra-
out and not used as they used it, but enlarged into whatever may be called the
tion before bringing an action70 In addition, section 18 of the 1842 Act gave ‘pith and marrow.’ ‘Pith and marrow’ means nothing more than the meaning of
rights to proprietors of periodicals and dealt with the circumstances under the Specification on the fair interpretation.130
which the proprietor of a collective work would be protected, as opposed
to the individual authors.71 But it did not mention newspapers specifically. Moulton QC’s strategy was, however, trying to persuade the court that the
Whether copyright protected ‘newspapers’, as distinct from the individual characteristics of the invention were such that Nobel could not be ‘confined
articles contained therein, was questioned by the Lord Chancellor in Platt to his words’. By emphasising the ‘long step’ of Nobel’s invention, he was
v Walter.72 In the case of Cox v Land and Water Journal Company, how- attempting to provide a precise definition of the concept of ‘pith and mar-
ever, Malins V-C found that newspapers did not fall under the terms of the row’. If that was the case, he argued, ‘the infringer has taken a step almost
1842 Act, which meant that the defendant could not rely on the fact that exactly in the same direction, he has taken the substance of the invention’.131
the newspaper had not been registered in accordance with the Act to dismiss Although the arguments on behalf the respondent were similar to those used
the claim. Extraordinarily the Vice-Chancellor granted the injunction on the in the lower court,132 there was an instance in which they became even
basis of a common law property right, stating his view that the letters of a clearer. When Kay LJ asked whether ‘the result was the same’, the defend-
foreign correspondent, book reviews, stories, and other writings purchased ant vigorously denied any possible identity. According to him, the patentee
by newspapers were protected under the Act ‘or by the general rules of ‘insists on using the soluble nitro-cellulose, and the respondent, with much
property’, which entitled the newspaper proprietor to stop unauthorized trouble, has found out how to use the insoluble’.133 More importantly, the
publications.73 defendant continued saying that Nobel ‘cannot have a right to anything
Unsurprisingly, faced with this rather contradictory collection of authority, more than what he has claimed [because] no one in 1888 knew that the
the Report of the 1878 Royal Commission on Copyright deemed insoluble could be used as an equivalent for the soluble nitro-cellulose’.134
newspaper copyright a prime example of the ‘arbitrary … incomplete and The Court of Appeal unanimously upheld Mr Justice Romer’s judgment.
obscure’ nature of the existing copyright law.74 Citing Cox v Land and And yet, the appeal decision offered distinctive remarks, some of which also
Water Journal, the Commission’s Report observed that ‘[s]ome sort of became influential in the history of patent law. It did not only evidence dif-
copyright has been recognized in newspapers, but it is impossible to say ferent ways in which the three Lord Justices read the previous decision, but
what it is’.75 They pointed out the contradictions of the past case law, which also, and more interestingly, it showed a particularly distinctive manner of
had decided a newspaper was not a ‘book’ under the terms of the 1842 Act, looking at the controversial relation between legal and scientific authority.135
yet was protected anyway, despite most courts agreeing that copyright was
purely statutory.76
129 In support of this argument, Moulton cited a number of precedents: Clark v Adie (1877)
Little progress for the cause of newspaper protection was made in 1881 2 App Cas 315; Moore v Thomson (1890) 7 RPC 325; and Benno Jaffé und Darmstaedter
when John Walter, the managing proprietor of The Times, brought a suit 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.
69 See J Bellido and K Bowrey, ‘From the Author to the Proprietor: Newspaper Copyright 133 ibid 522.
and The Times (1842–1956)’ (2014) 6 J of Media L 206. 134 The argument continued: ‘No benevolent construction can possibly give the Patentee
70 Copyright Act 1842 (5&6 Vict 45) s 2. protection for more than he has actually invented, nor is there room for any such suggestion
71 ibid at s 18. where the alleged infringer has taken a method which has been repudiated in the Specification.’
72 (1867) 17 LT 157, 159. Moulton, for the appellant, rejected this argument: ‘The Respondent’s method was merely an
73 (1869–70) LR 9 Eq 324, 331. improvement of Nobel’s process, and therefore a tributary invention’; ibid.
74 RCC Report viii. 135 Discussions around the appropriate role of scientists as experts can be read in
75 RCC Report viii. ‘Scientific Assessors and Courts of Justice’ The Leeds Mercury (West Yorkshire, England, 6 August
76 ibid. 1888) 3. For contemporary accounts, see C Hamlin, ‘Scientific Method and Expert Witnessing:
Once depicted as a ‘no nonsense judge’ with a business-like approach,136 to republish it without the permission of its author’.62 In Lord Halsbury’s
Lord Esher MR began referring to the mass of technical evidence and the view it did not and Lord Watson agreed. The question was simply whether
arguments discussed at length in the first instance and described them as ‘oral delivery of the appellant’s lectures to the students attending his class
‘torture’.137 Perhaps because he had previously been highly critical of both is, in law, equivalent to communication to the public’ in order to destroy
‘chemical experts’,138 and the expenses incurred in patent litigation,139 the common law right.63 Citing Macklin v Richardson and Abernethy
Lord Esher MR introduced his judgment making a sharp contrast between v Hutchinson, he decided that, even though the University of Glasgow was
common sense in scientific and legal thinking, echoing the trial judge’s a public institution, the students in the lectures were not members of the
assessment. Interestingly, he distinguished scientific from legal complexity public as such.64
by emphasising that ‘as to the law, [this was] a very simple case’ in which Lord Fitzgerald’s analysis also began with an acknowledgement of the
he did not ‘feel the least difficulty in coming to a conclusion as to what the legal principle that unpublished works were protected:
evidence proves’.140 While his point of departure was also the construc-
It was not contested that by the common law of Scotland, as well as by the
tion of the patent, he further developed the detailed explanation already common law of England, every author has a right of property in his compositions
given by the trial judge to disregard Moulton QC’s view that significant so long as they remain ‘unpublished,’ and that a private lecturer may lawfully
patents allowed for a broad interpretation. According to him, it did not impose an express condition on persons allowed to hear his lecture, that they shall
matter whether the patent was a pioneer or a master patent, because ‘the not publish what they hear, and that such a condition may also be lawfully implied
canons of construction of the patent are precisely the same’.141 Further, ‘the from the circumstances. In such cases the common law protects the author's right
canons of construction of a patent are the same canons of construction that of property and forbids infringement.65
are to be applied to every written instrument which has to be construed by Lord Fitzgerald, however, disagreed with his colleagues, on the question of
the Court’.142 whether delivery of the lectures in the class room of a public university con-
Such basic analogy to other legal instruments can be historically stituted publication—he thought it did.66 Once published, they were given
explained by reference to the specific ways in which judges that came to to the public. Although Lord Eldon had justified his decision in Abernethy
adjudicate British patent cases were appointed. According to some scholars, with something more akin to a privacy right, the decision in Caird v Sime is
these judges were frequently drawn from the Chancery bar, and had been derived from the same principle of common law copyright for unpublished
engaged all their working lives in the construction of wills and conveyancing literary works as Macklin—the Lords agreed that protection existed for an
documents;143 and their Chancery practice seems to have influenced their unpublished lecture, even if not fixed in writing.67
approach to the construction of patent documents.144 Although such analogy Thus, under the law at the time, Rosebery’s lectures would be protected
to other legal instruments was later criticised by some practitioners,145 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
Victorian Perspectives on a Modern Problem’ (1986) 16 Social Studies of Science 485; the newspapers publishing verbatim reports of their lectures, ‘Unless they
KD Watson ‘The Chemist as Expert: The Consulting Career of Sir William Ramsay’ (1995) 42
Ambix 143. happen to be politicians of the first rank, lecturing on some subject of which
136 WL Hayhurst ‘Lord Esher, A No Nonsense Judge’ (1980) Gazette 285; see also their ignorance is extensive, they will not be reported verbatim’.68 Rosebery
WL Hayhurst ‘Lord Esher, and some Fundamentals of Patent Law’ (1981) 9 Bull. PTIC 493. was, of course, a politician of the first rank and did not lack newspaper
137 Nobel’s Explosives Co., Ltd. v Anderson (1894) 11 RPC 519, 522.
coverage of his public pronouncements on any topic.
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.
62 ibid.
141 ibid 523.
63 ibid 344.
142 ibid.
64 ibid 348.
143 P Graham, ‘The National Courts and the possibility of a Central Court of Appeal’ in
65 ibid 351–52.
JA Kemp (ed) Patent Claim Drafting and Interpretation (London, Oyez Longman, 1983) 200–13; 66 ibid 353.
203; see also WR Cornish ‘UK—The Practice in the UK’ in J Pagenberg and WR Cornish (eds) 67 See also A Steel ‘A Non-Material Form of Copyright: The Strange History of Lecturer’s
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 & copyright’ (1999) 4 Australian J of Legal Hist 185, 210.
68 Birrell (n 34) 191.
Sons, 1887).
145 J Gray ‘The Addressee of a Patent Specification’ CIPA Transactions, XXXVI, 1917–18, 243.
reporting unless the lecturer published a notice.54 Copyright reform attempts the interesting point to note here is that thematising the judgment in such
in the following years failed, however, and the law remained in its uncertain a way gave Lord Esher MR an opportunity to establish the two ‘canons of
and unsatisfactory state. construction’ in patent law, something he had already explored a month
The issue of protecting lectures arose again in 1884 in Nicols v Pitman. earlier.146 Both canons embraced the textual dimension of modern patent
Nicols, a lecturer on ‘scientific subjects’, gave a ticketed lecture on the law and prescribed a legal fiction to interpret claims. The first canon was
subject of ‘The Dog as the Friend of Man’ at the Working Men's College, that the Court ought to construe the patents ‘as if it had to construe them the
Great Ormond Street.55 Unlike the speaker in Abernethy, Nicols prepared day after they were published’.147 Lord Esher MR went on to invoke this
his manuscript in advance, memorised it, and then delivered his lecture principle against Moulton QC’s attempts at flexible patent construction,
almost entirely from memory.56 He had not, however, given prior notice particularly in view of the actions of the defendant and he asserted that
to two magistrates in accordance with the Act.57 The defendant, a short- ‘we are bound to construe the patent as if we had to construe it before
hand writer, took down the lecture verbatim in shorthand characters and the defendant was born, if the patent was before that time’.148 The second
then published it—still in shorthand characters.58 Kay J determined that canon specified that the ‘state of circumstances existing as to the subject-
because the location of the lecture had been a public college, it was excluded matter of such a document’ including the ‘state of knowledge’ at the time of
from the operation of the Act, and applied Abernethy. He interpreted Lord patent publication needed to be determined.149
Eldon’s judgment to allow an audience in such a lecture to take notes ‘for These two canons or rules of construction led him to the same conclu-
their own personal purposes’, but they were not allowed to publish the lec- sion as the trial judge regarding the patent controversy over nitro-cellulose.
ture later for profit.59 The distinction between public and private lectures There was soluble nitro-cellulose and there was insoluble nitro-cellulose,
was critical; a private lecture would necessarily be protected through the and the word ‘soluble’ referred to whether the substance would be soluble in
mechanisms of the 1835 Act, while a public lecture was exempt from its ether-alcohol. Moreover, Lord Esher MR noted that this state of knowledge
provisions and subject to the law as applied in Abernethy. about the two types of nitro-cellulose pertained not just to ‘chemists in the
A few years later, the House of Lords addressed the issue of protection laboratory’ but also to commercial utilisers of nitro-cellulose.150 Insoluble
of lectures in Caird v Sime.60 Caird, a Professor of Moral Philosophy at the nitro-cellulose was known to be much more dangerously explosive than
University of Glasgow, had delivered a series of lectures, which one of his the soluble form. Therefore Lord Esher MR concluded, in agreement with
students had taken down verbatim and arranged for Sime to print them as a Romer J, that Nobel had ‘intentionally and specifically omitted to claim
crib. Caird opposed publication, and the case rose to the Lords. the insoluble, because he dared not, and he left it out deliberately, and it
Lords Halsbury, Watson and Fitzgerald delivered judgments. Finding the is therefore out’.151 This conclusion led Esher MR to a decision of non-
1835 Act unhelpful to the analysis because it excepted public universities, infringement on the part of the defendant because ‘the defendant has taken
Lord Halsbury focused on the issue of whether the lecture had indeed been a material which Mr. Nobel deliberately left out and omitted’.152 Signifi-
published and was no longer subject to the common law right. In his view cantly, Lord Esher MR ended with an extraordinary praise of trial judge’s
the case turned on the legal question as to ‘whether on the agreed state of decision.153 As a whole, his appeal judgment can be read as a provocative
facts such a publication as is proved here must as a matter of law deprive attack on expertise. If there is an overall thread that runs through his deci-
the author of the literary composition in question of his proprietary right’.61 sion, it is the remarkable anxiety over the interface between law and science.
The main concern was whether Professor Caird’s delivery of his lectures Such anxiety was symptomatic and manifested in different passages of his
in a university classroom ‘makes his delivery of that literary composition decision, not only in the introductory remarks mentioned above but also in
necessarily public to the whole world, so as to entitle any one who heard it his views of Moulton QC.154
54 ibid. 146 Edison Bell Phonograph Corpn. v Smith (1894) 11 RPC 389, 395.
55 Nicols v Pitman (1884) 26 Ch D 374. 147 Nobel’s Explosives Co, Ltd. v Anderson (1894) 11 RPC 519, 523.
56 ibid 376. 148 ibid 523.
57 ibid 377. 149 ‘The Cordite Litigation’, Glasgow Herald (20 July 1894) 4.
58 ibid 377. 150 Nobel’s Explosives C., Ltd v Anderson (1894) 11 RPC 519, 523.
59 ibid 381. 151 ibid 524.
60 (1887) 12 App Cas 326. 152 ibid 526.
61 ibid 337. 153 ibid 526–27.
154 Nobel’s Explosives Co, Ltd. v Anderson (1894) 11 RPC 519, 526.
These passages can be easily overlooked but they provide a glimpse into according to any gift, endowment or foundation’ were excluded from the
the difficulties the patent bar had in expounding cases to judges who were provisions of the Act.44 Apparently, no actions were ever brought on the
‘for the most part without technical background’.155 In fact, it can be said basis of the Act,45 and, in 1877, when TH Farrer, the Permanent Secretary
that Moulton’s exceptional scientific gift could have proved to be a simul- of the Board of Trade appeared as a witness before the Royal Commission
taneous impairment.156 For some judges did not seem impressed by his on Copyright, he said that he had never heard of anyone securing the right
scientific abilities—perhaps even the opposite.157 through the method of notifying magistrates.46
The two other judges concurred, and the appeal was accordingly In James Fitzjames Stephen’s ‘Digest on the Law of Copyright’, prepared
dismissed. However, their views were markedly different. While Lord Justice for the Royal Commission on Copyright, he described the protection avail-
Smith’s decision followed the views of Lord Esher MR,158 Lord Justice able under the Act but also noted ‘The author of any lecture has [probably]
Kay offered a more nuanced judgment, perhaps demonstrating that he was at common law the same right as by statute, without giving such notice as
specially versed in the complexities of patent cases.159 Although he seemed is required but he cannot recover the penalties provided by the Act … for
to have made up his mind for the defendant early in the proceedings,160 an infringement of his copyright’.47 In its Report, the Royal Commission
he nevertheless sympathised with the arguments submitted by Nobel.161 admitted that the ‘term of copyright in a lecture not printed and published
His judgment account characterised the products of the appellant and the but publicly delivered’ was ‘wholly uncertain’.48
respondent as the same.162 What made this decision interesting is the way In its hearings, the 1878 Royal Commission had probed the protection of
in which it differentiated between the ‘thing’ as the material ‘object’ and lectures in some depth, examining several witnesses as to their views on the
its ‘result’ as the functional product.163 Despite his delineation of b
allistite existing and optimal protection of oral presentations. Commissioner and
and cordite as ‘the same result’, Kay LJ found the propellant employing historian James Anthony Froude asked Farrer if he thought it was lawful for
guncotton ‘not merely an improvement on his [Nobel’s] patent but the a shorthand writer to take down notes of a lecture. He responded: ‘It would
invention of really a different thing’.164 Although they agreed with the deci- depend on whether this Act was substituted for the common law or not’.49
sion of the trial judge and the appeal was dismissed, Kay LJ was much Farrer was not inclined to protect lectures given in public places, but he
less enthusiastic than Lord Esher MR about the first instance decision.165 thought that preachers should have copyright in their sermons.50 The Rever-
The whole litigation also involved a political and economic dimension fully end Canon Farrar, however, did not agree, although he did believe that one
discussed in the newspapers.166 The second defeat of the plaintiffs in less 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 lec-
ture taken down by a shorthand writer and published in the paper and then
155 Cornish (n 143) 219–49; 220; see also ‘A Patent Judge’ Northern Whig (13 March 1897) 8;
subsequently published by the lecturer himself could give rise to a copyright
‘A Special Court for Patent Cases’ Leeds Mercury (24 February 1894) 11; ‘Wig and Gown’ The
Globe (7 June 1898) 6. held by the lecturer. Farrer thought that he could if he had given notice
156 H Fletcher Moulton, The Life of Lord Moulton (London, Nisbet & Co, 1922) 40; see under the 1835 Act.52 The Commission recommended reforming and sim-
also Cripps (n 68) 32. plifying the law on lectures and allowing them the same protection afforded
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 analo- to books, allowing authors to prevent redelivery as well as publication and
gous, that they should be held in substance and effect the same thing’, Smith LJ commented removing the notice requirement.53 They directly addressed the question
that he was ‘wholly unable to follow the argument’; Nobel’s Explosives Co, Ltd. v Anderson of newspapers publishing reports of lectures; the Commission considered
(1894) 11 RPC 519, 534.
159 ‘A Case for Experts’ The Graphic (London, England, 28 December 1889) 11; see also the practice desirable and recommended implied permission for newspaper
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 44 ibid s 5.
compliment to Mr Nobel’. He was reported to have subsequently observed that ‘Sir Frederick 45 Deazley (n 42) [8].
Abel and Professor Dewar have admitted that they had read the specification, and then set 46 Royal Commission on Copyright (‘RCC’) Minutes (1878) c-2036, 162.
themselves to see whether they could not produce the same result in a different way’; see ‘The 47 Digest on the Law of Copyright, RCC Report at lxxiv.
Cordite Litigation’ The Glasgow Herald (Glasgow, Scotland, 19 July 1894) 6. 48 RCC Report viii.
162 Nobel’s Explosives Co, Ltd v Anderson (1894) 11 RPC 519, 530. 49 RCC Minutes 162.
163 ibid 531. 50 ibid.
164 ibid. 51 RCC Minutes 137.
165 ‘The Cordite Litigation’ The Glasgow Herald (20 July 1894) 4. 52 RCC Minutes 162.
166 ‘Cordite’ The Pall Mall Gazette (12 May 1894) 2. 53 RCC Report xvi.
The question was whether delivery of the speech constituted publication, than six months meant that the government was reassured that ‘cordite’
placing it in the public domain unless the requisite formalities were observed was a valuable property.167 And that was of national importance because
to qualify for statutory protection. In a case from 1770 dealing with a dra- the Government was under pressure for the recurrent disastrous explosions
matic performance, Macklin v Richardson, the defendant had commis- at Waltham factory.168
sioned 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 C. The ‘Cordite Case’ at the House of Lords
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 In August 1894, Johnston wrote to Nobel that he held out hopes for an
the play’s public performance did not constitute publication of the work. As appeal to the House of Lords because ‘considerations of equity weigh with
an unpublished work, the author retained his common law copyright, which the Lords, whereas the ordinary courts are practically entirely governed by
the defendant had infringed. forms of law and legal precedents’.169 The appeal to the House of Lords
The earliest case dealing with oral presentations, as distinct from dramatic was heard in February 1895.170 While the appellant’s arguments regarding
performances, was Abernethy v Hutchinson.38 A surgeon who been giv- the material constituents and products followed much what they had been
ing a series of lectures on surgery at St Bartholomew’s Hospital sought to in the lower courts, the emphasis on specific issues somehow changed.171
prevent the defendants from publishing those lectures.39 Abernethy’s lec- Given that the view of the courts below had focused on the nature of nitro-
tures were delivered extemporaneously, though sometimes from notes, to cellulose, this point became the gist of the case on its ultimate appeal.
students who paid for admission.40 Largely side-stepping the property ques- Once again, the attempt was to establish that there was no sharp boundary
tion, Lord Eldon found that implied contract entered into by ‘persons who between ‘soluble’ and ‘insoluble’ nitro-cellulose.172 Indeed, Moulton QC
attend lectures or sermons, and take notes’ did not allow them ‘to carry into asserted that it was a highly nitrated soluble nitro-cellulose that Nobel had
print those notes for their own profit, or for the profit of others’.41 Thus, indicated by his calculation of combustion of the components of ballistite in
the ban on publication extended to third parties who had not been students the specification of his patent. This argument was given prominence in the
attending the lectures, though the legal basis for this quasi-privacy protec- House of Lords because of prodding by Nobel.173 The appellant still argued
tion 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 167 ‘Cordite’ The Pall Mall Gazette (26 July 1894) 5; ‘The National Explosives C ompany,
of any lecture the sole right and liberty of printing and publishing such lec- limited, Hayle’ Royal Cornwall Gazette (21 June 1894) 5; ‘Nobel Dynamite Trust’ The
ture, provided that the author gave notice to two magistrates living within Morning Post (May 1894) 7. Similarly, some newspapers considered that it was ‘a matter of
five miles of the place of the lecture, at least two days before the delivery 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
of the lecture. It did not matter whether the lecture had been committed Terrible Explosion at Waltham’ Gloucester Citizen (8 May 1894) 3.
to writing or not. Lectures delivered ‘in any University or public school or 169 Johnston to Nobel, 23 August 1894, ‘Nobels Explosives, År 1894’; ANA, F IV: 5; see
college, or on any public foundation, or by any individual in virtue of or 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
37 Macklin v Richardson (1770) 1 Amb 694 (Ch). to accept the office of Attorney-General; see ‘Cordite Case in the Lords’ The Pall Mall Gazette
38 Abernethy v Hutchinson (1825) 1 Hall & Twells 28, 39. (London, England, 28 February 1895) 7.
39 (1825) 1 Hall & Twells 28. 171 ‘The Case of the Appellants’; HL/PO/JU/4/3/443; PA.
40 ibid 29, 34. 172 Moulton QC argued that ‘neither of those were distinct things … neither of them being
41 ibid 35. definite substances’; in ‘Cordite Trial (HL)’ 91; SUPP 5/802, NA; see also ‘The Smokeless
42 See R Deazley ‘Commentary on Publication of Lectures Act 1835’, in L Bently and Powder Rights’ The Sheffield Evening Telegraph (22 February 1895) 4.
M Kretschmer (eds) Primary Sources on Copyright (1450–1900) (2008) available at <www. 173 Moulton QC asserted that, from his calculations, Nobel had indicated a ‘soluble’ nitro-
copyrighthistory.org>. cellulose with a nitration of 12.9%, ‘which is rather higher than the nitration of the guncotton
43 5 & 6 Will IV c 65. For background and legislative history of the Act see Isabella used at Waltham’. When asked by Lord Herschell LC whether ‘the well-known soluble kind
Alexander, Copyright Law and the Public Interest in the Nineteenth Century (Oxford, Hart, was as high as that’ Moulton replied that ‘[t]he well-known soluble for explosives would be
2010) 90–92. between 12 and 12.5’; in ‘Cordite Trial (HL)’ 40; SUPP 5/802, NA.
that soluble and insoluble nitro-cellulose were ‘chemically equivalent’174 or been abandoned. This, considering all that had passed, is so incredible that I feel
‘so closely analogous that the passing from one to another does not take sure I must misunderstand you.
you out of the invention’.175 As commercial preparations of both collodion Perhaps Waterfield, from whom I am separated, as he is a town and I am a country
cotton (soluble) and guncotton (insoluble) were always mixtures of both mouse, may throw some light on the matter. At present I am completely baffled.33
kinds, the argument followed, those who fabricated cordite from guncot-
ton should pay a royalty for the percent of soluble nitro-cellulose in their Lord Rosebery did not want anyone to publish his speeches; he wanted
guncotton mixture.176 Less attention was given to process and products them to be forgotten. He had no commercial incentive to attempt to protect
than to materials. But when this was addressed, the assertion was, as previ- his rights and appears to have been unaware of the legal protection avail-
ously, that the processes of fabricating ballistite and cordite, and the result- able. Were it not for Geake’s mistaken belief that Rosebery’s suggestion to
ant products, were essentially the same.177 make corrections to the proofs from Waterfield’s book was tacit approval
Although these were all powerful contentions, Lord Watson queried the for publication, it would not have been published. It was Geake’s misun-
relevance of these claims for the similarity in chemical properties between derstanding, combined with Lane’s failure to ask permission and Moberly
ballistite and cordite if, in fact, the latter had been fabricated ‘by the use of Bell’s crusade to expand protection for newspapers, that led to the dispute
an agent [insoluble nitro-cellulose] which you [Nobel] disclaim’.178 It was in Walter v Lane.
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
III. COPYRIGHT IN ORAL PRESENTATIONS
the decision of the Lords.179 While Moulton QC occasionally used phrases
like ‘pioneer patent’,180 the innovative significance of the ballistite patent
Rosebery had written to Geake that he ‘understood that there is no copy-
did not figure prominently in his arguments before the House of Lords.181
right in speeches’, but the truth of the matter was somewhat more complex.
Nor did the arguments feature the doctrine of ‘pith and marrow’ to the
Oral presentations could be protected in various ways, with possible distinc-
same degree in the appeal to the House of Lords.182 Rather, Moulton and
tions made between sermons, speeches, and lectures, and those delivered in
Cripps QC, counsel for the appellants, focused on nitro-cellulose and high-
public or private venues.34 Moreover, nineteenth century jurisprudence gave
lighted the knowledge (and prior use by Nobel) of a highly nitrated form
strong support for the principle that authors had common law rights in their
of soluble nitro-cellulose and the consequent chemical equivalence between
unpublished works.35 Certainly if a lecture were reduced to writing then the
the soluble and insoluble. Their point was that ‘if you have two celluloses
manuscript would have common law protection for as long as it remained
[soluble and insoluble] of equally high nitration, so far as c ombination with
unpublished. But early cases on speeches and lectures also support a com-
mon law right even where an extemporaneous lecture had not been fixed
174 ‘Cordite Trial (HL)’ 110; SUPP 5/802, NA. ‘Chemical equivalence’ was defined by Lord
in writing. This principle was confirmed by Scrutton in the 1890 edition of
Herschell LC in the proceedings; ibid 173. his treatise:
175 ibid 67. At times, Moulton QC suggested essential identity between the two kinds of
Putting in writing the result of intellectual work is sufficient to vest the common
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 law right in the author, but it does not appear essential. For instance, there is
the presence of soluble nitro-cellulose in the insoluble could have made a positive difference in probably a common law right to prevent the publication of lectures of which no
the function of the insoluble; ibid 139. manuscript exists.36
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 admit-
ted that ‘there was no evidence one way or the other’ that Nobel had actually experimented 33 BUA, Liberal Party Correspondence DM 668, Correspondence of Charles Geake,
with insoluble nitro-cellulose before he took out the ballistite patent. This led the Law Lords to Folder 3 (Letter 13 July 1899, Rosebery to Geake).
query why the ballistite patent should cover the use of insoluble nitro-cellulose; ibid 118–19. 34 See D Brennan and A Christie, ‘Spoken Words and Copyright Subsistence in Anglo
178 ibid 83. American Law’, (2000) Intellectual Property Quarterly 309, 313–28; See A Birrell, Seven
179 For an overview of the drawing of patent claims in England, see J Imray ‘On Patent Lectures on the Law and History of Copyright (1899) 190.
Claims’ CIPA Transactions, VI, 1887–88; 203, 204. 35 An author ‘has the undisputed right to his manuscript; he may withhold, or he may com-
180 ‘Cordite Trial (HL)’ 31; SUPP 5/802, NA. municate it, and communicating, he may limit the number of persons to whom it is imparted,
181 Presumably because the effort to categorise the invention as ‘pioneer’ was rejected by and impose such restrictions as he pleases upon their use of it’. Jeffreys v Boosey (1854)
Lord Esher MR in the Court of Appeal. 4 HLC, 962.
182 There was just one reference to ‘pith and marrow’, ibid 43. 36 Scrutton (n 7) 61.
My dear Mr Bell, nitro-glycerine is concerned, for explosive purposes, the one cellulose is the
I suppose you, as manager of the Times, are the source of the lawsuit that is about chemical equivalent of the other, and was known to be so … by Mr. Nobel,
to rage over my body, or rather more strictly over my remains, and I write to ask and by explosives manufacturers when Mr. Nobel’s patent was taken out in
if it be not possible to avert it. I have shunned law like a pestilence all my life, and the year 1888.183
it seems hard that in my declining years I should be dragged into a dispute with Consequently, Cripps QC emphasised that the nitro-cellulose in the bal-
which I have nothing to do. I am now bombarded by both sides, and, so far as listite patent should be construed as the highly nitrated soluble form, chemi-
I can see, am expected to play a leading part! How I beg you to spare me this. cally equivalent to the insoluble nitro-cellulose of cordite.184 In response to
Surely an acknowledgment from Mr Lane will meet your point, and that I under- this argument, the Law Lords expressed puzzlement over why Nobel had
stand he is willing to give. Anyhow I selfishly ask to be left alone and that your taken such pains to specify ‘soluble’ nitro-cellulose in his ballistite patent.
copyright be tested on some other vile corpus than that of For instance, Lord Shand queried: ‘Can you say why this word “soluble”
Yours sincerely 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
R
on it, became the nub of the decision. In his judgment, Lord Herschell LC
If I am wrong in addressing you, pray forgive my troubling you.31 saw no reason to depart from the finding, in both the trial and appellate
Moberly Bell’s response no longer exists, but Rosebery’s reply on 14 June judgments, that soluble and insoluble nitro-cellulose were distinct sub-
1899 shows that his efforts were in vain. He clearly believed an injustice stances both commercially and chemically. He concluded that ‘[t]he patent,
had been done to The Times, as well as to Lord Rosebery himself, and he therefore, must be read in the light of that distinction’, adding that:
intended to persist with the action. Rosebery was annoyed but resigned. 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
All right. Cursed are the peacemakers—as usual!
a combination of other substances than those which he has so specified, because
While you and Lane quarrel over the copyright, and you compare the action of such other combination maybe found to produce a substance having substantially
Lane to that of one who steals my pictures, I ponder to myself as to what property the same qualities and capable of employment in the same way.186
the hapless orator possesses. And would not your simile be more exact if you
Lord Herschell LC also considered—and dismissed—the arguments that
compared Lane to a man stealing from the ‘Times’ office choice engravings of my
pictures? counsel for the appellants had advanced as to why Nobel’s ‘soluble’ nitro-
cellulose should nevertheless extend to the defendants’ use of the insoluble
Anyhow all that I have ever asked for my speeches that they should be decently in cordite. As for the appellant’s arguments that these were chemical equiva-
forgotten and now I suppose your action will only advertise Lane’s book!32 lents, ‘that case [was] not established’:187
Geake also responded immediately, protesting his innocence in the misun- In 1888 chemists would not have understood that they might, as a matter of
derstanding that Rosebery had supported, or at least agreed to, publication. course, without danger and with equal advantage, use the insoluble in all the
Rosebery replied to Geake: cases and for all the purposes for which the patentee has directed the soluble to
I am afraid there is this amount of insuperable discrepancy in our positions but, be used.188
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 183 ibid 153.
some other source to that effect. Had it not been for that, I certainly should not 184 ibid 161.
have sent you the message that you could consult Waterfield’s book: for I was 185 Lord Herschell LC and Lord Shand expressed similar sentiments to Cripps QC, ibid
under the impression and hope that my letter from the Mediterranean had put an 162–63. Lord Ashbourne asked bluntly: ‘Why did you put in the word “soluble” at all?’ ibid 171.
end to the publication. 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
This would not matter, were it not that in your last letter, you seem to intimate ibid 48, 87.
that my message set once more in motion the idea of publishing which had til then 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
31
NLS; Rosebery Manuscripts, MS 10131, 205. of insoluble nitro-cellulose. However, he did address—and dismiss—the appellant’s argu-
32
TNL Archive, Moberly Bell Papers, Letter from Lord Rosebery, 14 June 1889, TT/MGR/ ment for infringement because of intermixture of some soluble nitro-cellulose in the insoluble
CMB/2. nitro-cellulose used in the respondent’s propellant.
Therefore, he pronounced that ‘the Judgment under appeal should be to make corrections to the proofs to be a helpful fact, but direct backing
affirmed and the appeal be dismissed with costs’,189 a decision unanimously from Rosebery against The Times would be better. As both the original
supported by the other law lords.190 Although the decision of the House of author of the speeches and as an influential political and social figure, his
Lords was final, Moulton QC speculated a few months later on whether acknowledged support for the volume might discourage them from pursu-
the patent principles applied to the case were perhaps too severe.191 Simi- ing the case.
larly, some newspapers did not appear totally convinced of the fairness of Rosebery responded to Geake on 7 July 1899:
the outcome.192 According to them, the defence had been successful and Your note places me in a very difficult position. I always told you strongly from
the government had won because of ‘a slight and subtle technicality’.193 the first that opposed any taking up of these ill considered fragments, and, as you
However, the interesting point raised in these newspaper accounts was that know, I had no idea of Mr Lane’s intentions until you sent me the book in proof.
the conduct of affairs by the War Office committee when inviting manu- Secondly, I cannot agree that I authorized any “transcript of my revised version”.
facturers to submit a bid had not been sufficiently scrutinised.194 Perhaps All I did was to send a message through the scribe of this letter that if Mr Lane
because of the procedural complexities of the case, the most important issue was determined to publish, as you informed me he was, you had better correct the
had not been fully tested, basically whether Abel and Dewar had capitalised misprints from the book which our mutual friend Waterfield keeps. For, if I am
on the access to such privileged information to develop their cordite.195 In to be published against my will, I would rather be published without the glaring
fact, the absence from both the trial and the cordite patent of the third mem- misprints which disfigure, for example the Gimcrack speech. But that is almost
ber of that committee, August Dupré, cast doubts over the whole affair.196 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
A couple of years after the decision, it was still possible to read in a Scottish
errors to which I am rather susceptible. I do not know what the law of the matter
newspaper that ‘the smokeless powder of the British Army is believed by
may be, though I have always understood that there is no copyright in speeches.
many to be but a copy of one of his [Nobel] patents’.197 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
V. THE IMPACT AND SIGNIFICANCE OF THE CASE this sooner? I hate the law: I hate law suits: & I particularly hate being the corpus
delicti.
Although public opinion about the fairness of the decision varied signifi-
On 13 July, Rosebery wrote to both Geake and Moberly Bell from his home,
cantly across different newspapers and parts of the United Kingdom, these
The Durdans, in Epsom. His letter to Geake was sympathetic but firm on
differences faded away into the background of an interpretation of the case
his position that he had never authorised the publication of the speeches.
that emphasised its importance for the establishment of legal principles.198
My dear Geake
189 ibid. The letter from Naples was meant to put an end to the publication, and, I felt
190 ibid 168–69; ‘Important Patent Case: The Ownership of Cordite’ Sheffield Evening confident, would do so. But then you wrote or sent a message to Waterfield or
Telegraph (28 February 1895) 3.
191 F Moulton ‘The Patents, Designs and Trade Marks Acts (1883 to 1888) Amendment Bill’ myself that Mr Lane had returned from America and was determined to proceed.
CIPA Transactions, vol XIII, 1894–95, 175, 196. So I then sent you word by Waterfield that if I were to be printed against my will,
192 ‘Cordite and its Critics’ Leeds Times (7 September 1895) 4; ‘Smokeless and Worthless’ I had rather be printed correctly than incorrectly; and that you might look at his
The Pall Mall Gazette (2 September 1895) 1. book, were you would find the Gimcrack speech, which you had included in your
193 ‘Occasional Notes’ The Pall Mall Gazette (1 March 1895) 2; ‘An Open Letter’ The
collection, corrected. This is all I know of the matter. But I am sincerely sorry for
Norwich Mercury (6 March 1895) 4.
194 The defendants provided an explanation of these relations in ‘The Case of the Respond- the vexation to yourself & wish I could find some way of obviating it.
ent’, 37–40; HL/PO/JU/4/3/443; PA.
195 This was probably because the case concentrated on the issue of infringement and there Yours sincerely
was no discussion on the use of the invention for the services of the Crown (s 27 of the Patents R
Act 1883); see J Roberts and F Moulton, The Patents and Designs Act 1907 (London,
Butterworth & Co, 1907) 66. I hope you are all right again30
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
Rosebery appealed to Moberly Bell, hoping to find a way to end the dispute.
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 30
counterparts. Arguably, the location of Nobel Explosives Ltd might have contributed to the NLS; Rosebery Manuscripts, MS 10131, 204.
interest of The Glasgow Herald in the case; see J Williams (n 138) 411.
The book was met with the threat of legal action by The Times on the Of the many interesting issues raised in the litigation, the construction of the
very day of publication: 24 June 1899. The newspaper’s solicitors, Soames, patent claim could be considered as the most significant feature that became
Edwards and Jones, wrote to Lane to warn him against publication on the central to the legal arguments presented in the case and its outcome. Blanco
basis it would infringe their client’s copyright in the text of the speeches.25 White perceived the landmark significance of these arguments and linked
Lane replied to the solicitors on 26 June, explaining that the book had them to the enactment of the Patents Act 1883.199 It was only with the 1883
already been published. He stated his view that there had been no infringe- Act that the inclusion of claims was compulsory.200 In fact, this legislative
ment of copyright, if indeed The Times had any copyright in the reports.26 enactment ‘mark[ed] the beginning of modern patent administration’201
He then heard nothing from newspaper’s solicitors for a week, during which and started the modernisation of the regulations regarding patent
they scurried to register assignments from the reporters of the copyright’s construction.202 Specifically, the 1883 Act mandated that the body of the
speeches in order to ensure legal standing for an injunction. patent—the specification in which the invention was described—needed to
As soon as it was clear that The Times was moving forward with the commence with a proper title and to end ‘with a distinct statement of the
action, Geake wrote to Rosebery to make him aware of the case and seek invention claimed’.203 Blanco’s main point concerned the role of the patentee
his support. 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
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 referring to critical passages from the judgments of Romer J and Esher LJ.
action against Mr Lane. We had heard something of this ten days ago but hearing If we pay close attention to such citations, it is possible to see how those
nothing for a week from the Times we thought that their second thoughts were passages explicitly rejected the idea that the scope of Nobel’s ballistite claim
not to pursue the matter. could be constructed with reference to the terms of the alleged infringement
so as to cover those terms.204
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
Blanco’s remarks concerning claim phraseology became, in fact, part of a
a week ago as a friend) that it was like the ‘impudence’ of the Times to assume a tradition in British patent law. Almost immediately after the decision of the
copyright to which certainly and clearly they were not entitled. 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
This will now have to be decided in the courts, and the action for the injunction of the case into doctrine can be found in the third edition of Terrell, a major
may be on in a few days. Perhaps you will tell me if the Times has in any way
treatise on patent law published in 1895, which paid considerable attention
told you what they are doing? They already know your exact position about the
not only to the House of Lords’ decision but also to the decisions of the
book for we were compelled to tell them privately that (1) while you declined to
authorise or encourage the book 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
(2) you had allowed me to make the speeches a transcript of your own revised invention which the patentee might have claimed if he had been well advised
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 199 Blanco White (n 2) 29.
on’ to see if the Courts will for them extend the law of copyright.28 200 JE Crawford Munro, The Patents, Designs, and Trade Marks Act, 1883 (London,
Stevens and Sons, 1884) 8.
Geake went on to say that the edition was already selling very well—200 201 K Boehm and A Silberston, The British Patent System, Volume 1: Administration
copies in seven days. Birrell was indeed confident that The Times had no (Cambridge, Cambridge University Press, 1967) 30.
202 J Hewish, Rooms Near Chancery. The Patent Office under the Commissioners
case and hoped that Lane would ‘stick to his guns’.29 But Geake also hoped 1852–1883 (London, British Library, 2000) 100; see also JA Kemp ‘Claim Drafting: An Historical
for Rosebery’s support. He considered his invitation to Berkeley Square 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.
25 ‘No. 8 Affidavit of AF Walter, sworn 1st July 1899’ PA; HL/PO/JU/4/3/491, Appeals Cases
205 L Edmunds, The Law and Practice of Letters Patent for Inventors (London, Stevens &
and Writs of Error 47. Sons, 1897) 23, 32, 197, 206–09, 336, 341, 349; R Frost, A Treatise on the Law and Practice
26 ibid 49.
27 Augustine Birrell (1850–1933).
Relating to Letters Patent for Inventions (London, Stevens & Sons, 1898) 46, 53, 56, 127, 251;
28 BUA; Liberal Party Correspondence DM 668, Correspondence of Charles Geake, Folder 3.
464, 468, 493, 579, 616, 628; R Wallace and JB Williamson, The Law and Practice R elating
29 ibid.
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.
or bolder’.206 Similarly, the treatise cited Esher LJ’s assertion that the sig- travelling to his residence in Naples, Italy. Rosebery was not well pleased.
nificance of the patent was irrelevant to its construction because, for all He wrote directly to Geake from Naples:
patents, ‘the canons of construction of the patent are precisely the same’.207
I have just received your letter on arriving here. It made me perfectly sick. I thought
The subsequent edition of Terrell (1906) extended its appreciation of the that my letter had dismissed all suggestion of republishing any speeches of mine.
case as it was decided in the lower courts and referred to a related issue—the My opinion is not at all changed. I have looked through your proof volume, and
state of the art at the time the patent was published.208 By the eleventh edi- make the following remarks:--In the first place the speeches on Borneo and the
tion of Terrell, roughly contemporaneous with the third edition of Blanco’s two long addresses which I delivered last autumn have already been published
book, some of these quotations had receded to footnote references. However, in a separate form. The Gimcrack speech is almost unintelligible as it stands,
Terrell’s treatise continued to privilege the case by highlighting one particu- but I think I corrected a report at the time. The next are in the main after-dinner
lar quotation, the most memorable one from Romer J’s decision mentioned speeches, almost entirely delivered on the spur of the moment (or of the previous
above. It was quoted in extenso as the introductory ‘general principle’ of the five minutes) and are a description of drivel that I hoped had persisted in the news-
section on patent infringement.209 papers 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
The impact of the case throughout the twentieth century can be observed
publication, because I feel to the bottom of my heart that these things ought not
not only in leading patent treatises but also in more generalist accounts of
to be republished. For example, the speeches on London and on Oratory were
the law of intellectual property.210 What the case specifically meant and the simply the reflections that arose as I listened to the respective lecturers, and I think
value attached to it depended on the field of practice in which its signifi- they were probably more critical than the lecturers quite liked. But anyhow that
cance was discussed. When the decision featured in conference papers at the sort of stuff ought not to be served up again. The same may be said of the second
professional body for patent practitioners, the Chartered Institute of Patent speech on Mr Gladstone. However I condemn the whole publication in toto with
Agents, it was often cited in order to explain its bearing upon the drafting the exception of your little introductory notes, which I like very much.20
of claims.211 Although references to patent principles could be seen as the Rosebery’s strong disapproval distressed Geake. Lane was then in Amer-
most fundamental outcome of the decision, the case occupied a prominent ica, but before his departure, he had given instructions to publish the book
place in the education of patent agents in Britain. As it encouraged readers
as soon as possible.21 Under the circumstances, Geake thought it better to
to focus on the practice of drafting patent specifications and on the duty of
delay, but asked Rosebery for the return of the proofs. Rosebery took this
the inventor or the patent agent to disclose the scope of the invention, the
as a sign that publication had definitely been decided upon and, on 20 May,
Institute frequently included it in its intermediate exams. For the Institute, it
sent word to Geake via his private secretary Waterfield,22 indicating that if
was necessary to use the case recurrently to assess the knowledge and skills
he and Lane were going forward with the volume, then they at least should
of those seeking to become patent agents.212 While patent agents were inter-
see the corrected versions kept by Waterfield at the Berkeley Square house.23
ested in the case for its pedagogical value regarding the practice of drafting Geake and Lane mistakenly interpreted this as implicit consent to proceed
claims, the patent bar looked at the case from a slightly different angle. The with publication.24 Geake visited the house to view the corrected version,
decision was often singled out for its practical s ignificance on questions of made some minor amendments accordingly, and Bodley Head proceeded to
print Appreciations & Addresses.
206 T Terrell, The Law and Practice Relating to Letters Patent for Inventions (London,
Sweet and Maxwell, 1895) 222.

207 ibid 95. 20 BUA; Liberal Party Correspondence DM 668, Correspondence of Charles Geake, Folder 3.
208 T Terrell and C Terrell, The Law and Practice Relating to Letters Patent for Inventions 21 In an unpublished draft letter to The Times, Geake explained his response to Rosebery’s
(London, Sweet and Maxwell, 1906) 130. letter from Naples: ‘His reply was so disconcerting that I did not feel justified in Mr Lane’s
209 G Aldous, D Falconer and W Aldous, Terrell on the Law of Patents (London, Sweet & absence in America in going on with the publication of the book, although when he left Eng-
Maxwell, 1965) 384, 385–91. land he had instructed me to get it out as quickly as possible’. BUA; Liberal Party Correspond-
210 R Haddan, The Inventors’ Adviser on Patents, Designs and Trade Marks (London, ence DM 668, Correspondence of Charles Geake, Folder 3.
Harrison & Sons, 1922) 179; WR Cornish, Intellectual Property: Patents, Copyright, Trade 22 Neville Waterfield was an Oxford graduate who served for many years as one of
Marks and Allied Rights (London, Sweet & Maxwell, 1981) 84, 131; S Ricketson, The Law of Rosebery’s private secretaries. McKinstry (n 8) at 303.
Intellectual Property (Sydney, The Law Book Company, 1984) 975. 23 PA; HL/PO/JU/4/3/491, Appeals Cases and Writs of Error 47, Exhibit 16, 60.
211 HA Gill ‘The Doctrine of Equivalents’ CIPA Transactions, XXXIII, 1914–15, 317, 24 Geake explained that it was his and Lane’s misunderstanding that led to publication.
328–29; J Roberts ‘Discussion on Mr Potts’ Paper’ CIPA Transactions, XXXVI, 1917–18, ‘But for Lord Rosebery’s express invitation to me to go to Berkeley Square and use his cor-
82, 84. rected speeches, the book would almost certainly have been abandoned.’ BUA, Liberal Party
212 ‘Intermediate Examination Papers’, CIPA Transactions, LXVI, 1947–08, 310; LXVIII, Correspondence DM 668, Correspondence of Charles Geake, Folder 3, unpublished letter to
1949–50, 329; LXIX, 1950–51, 248. The Times.
It is relevant to the understanding of Walter v Lane that a collection alleged patent infringement.213 In fact, Stanley Levy QC considered the case
of Lord Rosebery’s speeches had already been published as a collection, at length in a remarkable paper on patent infringement delivered at the
drawing on reports of speeches previously printed in The Times. In 1896 Institute of Patent Agents.214 Similarly, the case also featured prominently in
publisher Neville Beeman produced the volume in which he ‘endeavoured, an overview of the patent system written by Peter Meinhardt and published
as far as lies in his power, to give those in which Lord Rosebery gives his just after the Second World War. Meinhardt highlighted it in the two areas
views upon the principal political and social questions which have arisen of practice in which the impact of the decision had crystallised: (a) the con-
during the last twenty-two years’.14 Beeman, importantly, had sought and struction of the patent claim and (b) the possibility of patent i nfringement.215
received permission from The Times to use the material; the preface states The passages dealing with patent claim construction included cautionary
that he was ‘indebted to Mr. Moberley [sic] Bell, the Manager of the Times, advice regarding the ways in which claims were drafted, because ‘one word
for his kind permission to republish these speeches from the columns of his may change the fate of the patent’.216
paper’.15 The permission had been granted on the ‘express condition and Taking into account the significance of the case for the different pro-
assurance’ that the above statement be made.16 If John Lane had sought fessions around patent practice, it is not a surprise then that the case has
similar permission, Moberly Bell’s sense of principle would have been also appeared quite regularly in patent litigation in Britain.217 The decision
satisfied, and it is unlikely a legal dispute would have arisen. played a critical role in establishing ‘claims’ as the principal device to delin-
It is clear that Rosebery himself had not given permission for the eate the legal boundaries of a patent. Moreover, it also stated that certain
Beeman volume and did not approve of the publication. The sentiment in conditions applied to the construction of the scope of a patent claim: for
the prefatory quotation from his biography of Pitt17 is one that he repeated example, it was the responsibility of the patentee (or their patent agent)
throughout his life: ‘No one reads old speeches,’ he is reported to have to define the scope precisely.218 This was bounded by the state of knowl-
said.18 When John Lane wrote to him asking for his consent to publish a edge at the time of the publication of the patent.219 The scope could not
collection of his speeches, Rosebery alluded to the earlier collection. Writing be construed retrospectively in the light of subsequent (possibly infringing)
to Lane on 6 December 1898, he declined to support the collection, deeming patents; the claims ought to be construed ‘as if the defendant had never
the quality of his speeches too low for posterity. been born’.220 These rules applied to all patents, regardless of their signifi-
cance or status.221 As the case was an important decision in British patent
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 history, it provided a benchmark when the process of Europeanisation of
never be a party to any collected publication which would give them a separate patent law took place in the 1970s. It became influential in a different way:
and substantial character. They are essentially things of the moment, fleeting and when scholars tried to develop historical approaches to claim drafting 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 213 GF Emery, Handy Guide to Patent Law and Practice (London, Sweet & Maxwell, 1904)
year. I fear indeed that no collection of my speeches political or literary will ever 194; D Fulton, The Law and Practice Relating to Patents, Trade Marks and Designs (London,
have my countenance. They are not perhaps below the level of much of the trash Jordan & Sons, 1905) 47; R Lochner, The New Patents Act (London, National Union of
Manufacturers, 1950) 13.
now published, but I will never voluntarily add to that accumulation. I am afraid 214 S Levy ‘What Constitutes Infringement’ CIPA Transactions, LXXXI, 1962–63; C35.
this is a disappointing answer, but I cannot bring myself to return any other.19 215 P Meinhardt, Inventions, Patents and Monopolies (London, Stevens and Sons, 1946) 71.
216 ibid.
Lane was not put off by Rosebery’s polite denial. He moved forward with 217 Lyle and Scott Ld. and Another v Wolsey Ld and Another (1954) 71 RPC 395, 405;
the edition and enlisted Rosebery’s friend and political supporter Charles Birmingham Sound Reproducers Ld v Collaro Ld and Collaro Ld v Birmingham Sound Repro-
Geake, the editor of Liberal Magazine, to edit the volume. The book was ducers 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
in proof by March 1899; Geake sent a copy to Rosebery, who was then (1970) 87 RPC 157, 180.
218 JS Bushell ‘Discussion on What Constitutes Infringement’ CIPA Transactions, LXXXI,
1962–63; B79.
14 Speeches of Lord Rosebery, 1874–1896 (London, Neville Beeman, 1896). 220 The rationale behind this statement was that the inventor is only entitled to the benefit of
15 ibid. what he actually claims and not what he might have claimed; RF Tarbox, ‘Prior Grant and the
16 ‘Copyright in Report and News’ The Times (24 August 1899) 6. Duality of Invention’ CIPA Transactions, LXXVIII, 1959–60, C53, C63.
17 Lord Rosebery Pitt (n 1). 221 For an overview of these rules, R Jacob ‘Interpretations of Claims and Infringement’
18 Quoted in James (n 8) 490. in M Vitoria (ed) The Patents Act 1977—Conference Papers, Queen Mary College (London,
19 NLS; Rosebery Manuscripts, MS 10131, 187. Sweet & Maxwell, 1978) 64–76.
interpretation, it could be useful to compare different European traditions lawyers and laymen not ordinarily interested in legal decisions.’7 To under-
of patent law. For instance, the decisions have become a good starting point stand Walter v Lane it helps to understand Rosebery’s role in the dispute.
for those who seek to produce specific genealogies of patent systems such The case was a principled personal conflict, with the Bodley Head publisher
as the British and the German.222 In this sense, recent legal scholarship has John Lane (1854–1925) and Liberal editor Charles Geake (1867–1919) on
continued looking at the case in order to explain patent doctrine dominant one side and Charles Frederic Moberly Bell (1847–1911), the managing
in the United Kingdom during the late nineteenth century and a substantial director of The Times, on the other. This feud caused embarrassment and
part of the twentieth century, until the passage of the Patents Act of 1977.223 upset to Rosebery himself, a friend to both Moberly Bell and Geake, who
While this chapter does not consider the specific details and difficulties found himself caught in the middle. Hard cases may make bad law, but the
experienced after British patent law was recast in the 1970s, a conclud- House of Lord’s attempt to cut through the legal complexity, reaching a
ing note in relation to these recent decades might nevertheless show the conclusion that incorporated both challenging issues of statutory interpreta-
persistent relevance of the case, indicating its landmark status both in history tion and public policy, may still contain useful principles for contemporary
and law. After the enactment of the Patents Act 1977 the starting point for copyright law.
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 II. LORD ROSEBERY AND HIS SPEECHES
and diverse approaches to claim construction and determination of infringe-
ment, particularly after Lord Diplock held that a patent must be read in a Discussions of Walter v Lane have largely ignored the role of the author
‘purposive’ manner,226 the case did not completely disappeared from law of the speeches: Archibald Philip Primrose, the Fifth Earl of Rosebery.
reports, patent treatises and intellectual property textbooks.227 For instance, Rosebery was a Liberal Imperialist in politics, an enthusiast of the turf, and
it appeared prominently in a recent summary of the development of patent a wealthy man who married an even wealthier woman Hannah Rothschild.8
claim construction: He served briefly as a Liberal Prime Minister (1894/95) and Secretary of
State for Foreign Affairs under Gladstone. He contributed to the Times
In the United Kingdom, the practice has always been to interpret claims somewhat
Literary Supplement in its infancy and published well-received biographies
literally. The attitude has been that it is up to the patentee to define his own claim
of Pitt and Lord Randolph Churchill.9 In his time, he was greatly respected
and it is his own misfortune if he fails to do so broadly enough. In the classic state-
ment by Romer J, for there to be infringement, the alleged infringer must take the as a politician and leading figure in society. Moberly Bell had once him-
self hoped Rosebery might prove an effective political leader of the Lib-
eral 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
222 P Leith, Harmonisation of Intellectual Property in Europe: A Case Study of Patent man of great diligence, health or energy, and his liberalism eventually moved
Procedure (London, Sweet & Maxwell, 1998) 105; A Stenvik ‘Protection for Equivalents in directions unsupported by the party.11 He was, however, consistently in
under patent law—theories and practice’ (2001) 32 IIC 1.
223 DJ Brennan, ‘The Evolution of English Patent Claims as Property Definers’ (2005) demand as a witty speaker at events ranging from political funerals to the
4 IPQ 361; 388; M Fisher, Fundamentals of Patent Law: Interpretation and Scope of P rotection unveiling of statues to the openings of golf clubs and public libraries,12 thus
(Oxford, Hart Publishing, 2007) 301; H Laddie ‘Kirin Amgen—The End of Equivalents in leading to his impact on the history of copyright.13
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’
7 TE Scrutton, The Law of Copyright (1903) ‘Preface’, vi.
(1991) 54 MLR 499. 8 See L McKinstry, Rosebery, Statesman in Turmoil (London, John Murray, 2005);
226 ‘A patent specification should be given a purposive construction rather than a purely
Rt R James Rosebery (London, Weidenfeld and Nicholson, 1963).
literal one derived from applying to it the kind of meticulous verbal analysis in which lawyers 9 McKinstry (n 8) 206–10.
are too often tempted by their training to indulge’ Catnic Components Ltd. v Hill & Smith Ltd. 10 Moberly Bell’s daughter writes that her father had given up on Rosebery’s leadership
(1982) 99 RPC 183, 243 (emphasis added). On this, see DS Chisum ‘Common Law and Civil abilities by 1902. EHC Moberly Bell The Life and Letters of CF Moberly Bell (London, The
Law Approaches to Patent Claim Interpretation: “Fence Posts” and “Sign Posts”’ in D Vaver Richards Press Ltd, 1927) 223.
and L Bently (eds) Intellectual Property in the New Millennium: Essays in Honour of William 11 ibid 460.
R. Cornish (Cambridge, Cambridge University Press, 2004) 96–108, 99. 12 James (n 8) 204–05; See AP Primrose Rosebery in C Geake (ed) Appreciations and
227 A Roughton, P Johnson and T Cook, The Modern Law of Patents (London, LexisNexis,
Addresses (London and New York, John Lane, 1899).
2010) 215; C Colston and J Galloway, Modern Intellectual Property Law (London, Routledge, 13 Another connection to the history of copyright comes from Rosebery’s uncle Philip Henry
2010) 64. 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.
must look to nineteenth-century England before one looks to Luxembourg. invention claimed by the patent, ‘not that which the Patentee might have claimed
Walter v Lane was very much of its time—the unsatisfactory result of con- if he had been well advised or bolder’.228
flicting and ambiguous statutory authority, common law, and public policy Similarly, a recent decision over a patent dispute shows how the case still
that was copyright law in 1899. Although the dispute resulted from defi- shapes the British approach regarding questions of infringement.229 When
ciencies in the protection of both speeches and journalism, was complicated the judge, Hon Mr Justice Colin Birss, decided that there was no infringe-
by common law protection for unpublished works, and turned on the defini- ment, the doctrine of patent construction established in the case was still
tion of an author, paradoxically, it is now cited for a legal principle that was cited as good and relevant law:
not part of the law at the time: originality.6
The myth of Walter v Lane as an originality case persists, and ‘good 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
or not, it has undoubtedly had an influence on the law. Upon closer exami-
Durafiber. In my judgment the construction advanced by the claimants would
nation, it highlights many of the deficiencies, confusions, and seeming con-
not even occur to a skilled reader reading the document without knowledge of
tradictions of the copyright law at the close of the nineteenth century, and Durafiber and the argument in this case on infringement.230
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 inter-
play 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 seem-
ingly 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, preju-
dices, personal crusades, and conflicts led the case to rise to the House of
Lords. Students studying Walter v Lane often struggle to reconcile the judg-
ments 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 pub-
lic. 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) 228 PW Grubb, Patents for Chemicals, Pharmaceuticals and Biotechnology (Oxford, Oxford
U of Ottawa L & Tech J 425, 442. Many have also noted the oddness of the case’s leg-
acy, for example, W Cornish, ‘Conserving Culture and Copyright: A Partial History’ (2009) University Press, 1999) 380.
229 Convatec Ltd. and others v Smith & Nephew Healthcare Ltd. (2012) 129 RPC 182.
13 Edinburgh L Rev 8, 17 (noting Walter v Lane’s interesting ‘long after-life in defining what 230 ibid 202.
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”’).
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
Archibald Philip Primrose, 5th Earl of Rosebery
S
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 practi-
tioner 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 examina-
tion 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].
196 Hazel Carty Walter v Lane (1900) 165
‘were hardly consistent with fair or honest trade’ and ‘in common fairness’ the Lords questioning him to see how the protection he sought differed
ought to have been framed so as to counteract any deception.123 from protecting news itself. When asked by Lord Thring whether he could
protect a simple expression of facts such as ‘Spanish War Ended’, he admit-
ted that he did not believe it would be protected, and suggested it would
B. Lord Parker’s Analysis probably not have value anyway as many people would be telegraphing
such news.92
It has already been noted that the majority of the judges in the Spalding Referring back to the case of Walter v Steinkopff, Lord Monkswell sug-
litigation felt no need to engage in any discussion of the tort’s theoretical gested to him that, given his acknowledgement that there would not be
basis, but it would appear that Lord Parker had decided to provide a much protection in a ‘bare fact’ like ‘Spanish War ended’, but only in the literary
needed theoretical basis for an action that occupied ‘a great deal of the time expression.93 Moberly Bell disagreed: ‘I say we ought to have strictly abso-
of the Law Courts’.124 A man on a mission, Lord Parker kicked off his judg- lute copyright in the news; that is my contention’.94 He was asking for too
ment by asserting ‘I think it well to say a few words as to the principle on much. The Paris 1896 revision of the Berne convention had stated a clear
which such actions are founded’.125 Indeed, his mission had started some principle that the ‘news of the day’ was not subject to copyright protection.95
years earlier in Burberrys v JC Cording & Co Ltd (1909) where, as Parker Yet he did have grounds for annoyance. As Birrell stated in 1899:
J, he had sketched an earlier version of his more famous discussion.126 In his
Nobody can read the newspapers without becoming aware of the fact that an
analysis Lord Parker confronted the uncertainties still attached to the tort enormous amount of steady, daily pilfering goes on … Sometimes, at the very end
(though in so doing he relied on surprisingly few cases). of a long and seemingly original paragraph, you may discover in a parenthesis to
In his speech he underlined that the basis of a passing off action was a a rival print from which the whole has been conveyed.96
false representation by the defendant.127 In this he echoed the view of Lord
Thus, Moberly Bell was an annoyed man in the middle of a vigorous cam-
Halsbury in Reddaway.128 Provided that misrepresentation was calculated
paign for maximum newspaper copyright protection when he learned of
to harm no ‘actual passing off’129 was required. As for the misrepresenta-
tion, the tort was not limited to source misrepresentations. Lord Parker Lane’s publication of the Times reports of Rosebery’s speeches in Apprecia-
specifically noted the ‘corollary’ that misrepresenting the quality or class tions and Addresses. He, like Lane, was sticking to his guns.
of the plaintiff’s goods was also covered by the tort (and in fact used simi-
lar wording to that used by Sargant J at first instance).130 Reviewing (lim-
V. WALTER v LANE
ited) case law he confirmed that the representation need not be fraudulent
and actual harm need not be proved (provided ‘damages may probably
On 14 July 1899, there was a hearing before North J, the same judge who
ensue’). Further, he concluded that in both equity and common law the 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
123 In the inquiry as to damages the Official Referee had awarded £7,000—this sum being
he might have done had he wished to secure his rights (even if no one else
reduced by the CA to £250. Bankes LJ felt that the Official Referee had been influenced by ever had).97 In his judgment, North J immediately distinguished the cases of
the feeling that the defendants were ‘not playing the game according to the generally accepted Abernethy v Hutchinson, Nicols v Pitman, and Caird v Sime, on the basis
rules’: [1918] 35 RPC 101 CA, 119. that Rosebery’s speeches had been delivered to public audiences to which
124 Cutler, On Passing Off (n 42) 2.
125 [1915] 32 RPC 273, 283. His judgment was read by Dunedin. newspaper reporters had been invited.98 Thus, according to North J, any
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. 92 HL Report 58.
128 See above. And Turner LJ in Burgess v Burgess [1853] 43 ER 90. 93 ibid 59.
129 [1915] 32 RPC 273, 283. 94 ibid.
130 ibid, 284. He added, ‘possibly, therefore, the principle ought to be restated as follows: 95 S Ricketson, The Berne Convention for the Protection of Literary and Artistic Works
“A cannot, without infringing the rights of B, represent goods which are not B's goods or B’s 1886–1986 (1987) 502.
goods of a particular class or quality to be B’s goods or B’s goods of that particular class or 96 Birrell (n 34) 163.
quality”. The wrong for which the relief is sought in a passing-off action consists in every case 97 [1899] 2 Ch 749, 751.
of a representation of this nature’ (for Sargant J’s similar version see [1913] 30 RPC 388, 395). 98 [1899] 2 Ch 749, 753–54.
166 Barbara Lauriat Spalding v Gamage (1915) 195
pre-publication common law rights had been lost, and the requirements of only case referred to by the Court of Appeal—Ajello v Worsley—confirmed
statutory protection had not been satisfied.99 Rosebery probably did not that it was not tortious to advertise that you were undercutting a rival.113
have any rights and was not claiming any even if he did. Further, Phillimore LJ suggested that the angry letters Spalding received from
Since the speaker himself had no copyright, the question was whether their retailers might have been because of the high price at which Spalding
the reports themselves could be literary works. Scrutton, appearing for the were selling their Orb balls generally.114
defendants, referred back to North J’s own judgment in Walter v Steinkopff Indeed, a more critical view of the plaintiffs, both as a party to proceed-
where he had suggested that the literary form of the words had to be origi- ings and as traders, can be found in the discussion of the subsequent Court
nal to obtain copyright.100 But the evidence before North J showed sig- of Appeal that dealt with the inquiry as to damages. So Eve LJ remarked
nificant variation between different newspaper reports of exactly the same upon the ‘readiness’ of the plaintiffs’ agents and customers to attribute sharp
speeches—sometimes entire paragraphs.101 The affidavit of Ernest Brain, practice to the plaintiffs ‘and to entertain feelings of mistrust and resent-
who had himself reported a few of Rosebery’s speeches, claimed that the ment towards them’. This, he believed, might have been due to the previous
work of reporters involved considerable skill, labour and judgment since ‘mendacious’ promoting of the Orbs ‘which we were told were productive
they were required to take shorthand notes of proceedings, which were of everlasting complaints from customers’.115 This Court of Appeal rejected
then ‘carefully corrected and revised and written out and punctuated fit for what were found to be Spalding’s exaggerated claims of possible lost
publication’.102 profits,116 and commented upon the false statements by the plaintiffs as to
North J noted that similar variations were found between different prose the merit of the earlier Orb.117 Furthermore, both Courts of Appeal felt that
translations from other languages.103 While he did not find the American Spalding had caused difficulties for themselves given that they did not take
cases on reports of legal judgments to be particularly instructive, he did find a covenant from the waste company that they should not use or sell the
cases on compilation copyright in railway timetables and directories help- discarded footballs.118
ful to his analysis.104 On 10 August, North J decided that the reports of the However, neither Sargant J nor the House of Lords criticised the plain-
speeches were protected by copyright and granted the injunction preventing tiffs; rather they took a dim view of the defendants. Referring to this ‘rather
the publication of Appreciations and Addresses.105 unpleasant’ story,119 Sargant J was critical of the fact that Gamages’ repre-
In the weeks that followed, The Times published many letters addressing sentative did not question more carefully the scrap merchants from whom
the case, reflecting both sides of the issue. Moberly Bell, Geake, Lane and the discarded Orbs were purchased.120 He highlighted a lack of ‘plain,
publisher John Murray (1851–1928) were among those who contributed honest fair dealing’ about the meeting on 29 August.121 Lord Parker also
to the debate, with Moberly Bell publishing his letters semi-anonymously stressed his disapproval of Gamages’ representative at this meeting, not-
under the initials ‘MB’ On 11 August The Times published an editorial ing that he ‘treated the matter somewhat lightly’.122 As for the subsequent
(very probably written by him) praising North J’s judgment and going on advertisements, though in themselves not deceptive, he determined that they
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
113 [1898] 1 Ch 274, Stirling J: no trade libel liability where the defendant retailer advertised
support of the result and pointed out the difference between a reporter of
that he had the plaintiff’s merchandise for sale at the plaintiff’s wholesale price. The defend-
a speech and an amanuensis.108 On 22 August Moberly Bell published a ant 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.
99 ibid. 115 [1914] 31 RPC 125, 126.
100 [1899] 2 Ch 749, 753. 116 Swinfen Eady LJ [1918] 35 RPC 101 CA, 118 found no evidence that the plaintiffs
101 [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. had been planning an expensive advertising campaign and found that the Sewn Orbs had not
102 ‘No 11, Affidavit of Ernest Brain sworn 3 July 1899’ PA Archives HL/PO/JU/4/3/491, proved a success in subsequent seasons.
117 Eve LJ: [1918] 35 RPC 101, 123.
Appeals Cases and Writs of Error, Walter v Lane, 53. 118 Bankes LJ referred to their incautious disposal (121); there was similar criticism in the
103 [1899] 2 Ch 749, 758.
104 [1899] 2 Ch 749,756–58, 759–60. earlier Court of Appeal: see Phillimore LJ: [1914] 31 RPC 125, 138.
119 [1913] 30 RPC 388, 396.
105 [1899] Ch 749, 751.
120 ibid, 397.
106 ‘Is There Copyright in Newspaper Reports of Speeches’ The Times (11 August 1899) 7.
121 ibid, 398.
107 ‘Copyright in Reports of Speeches’ The Times (15 August 1899) 5; ‘Copyright in Reports
122 [1915] 32 RPC 273, 287.
of Speeches’ The Times (15 August 1899) 6.
108 J Murray, ‘Copyright in Reports of Speeches’ The Times (17 August 1899) 6.
However, Sargant J and the House of Lords focused on the inclusion in letter disputing that the judgment was contrary to the public interest. In his
those initial advertisements of the 1912 patent reference and the ‘Specially view such an argument simply ‘means that it is to the interest of the public
Tested’ stamp. Lord Parker found: ‘anyone comparing any of these adver- that they should be able to get news cheaply and that theft is the cheapest
tisements with the catalogue, or anyone with a knowledge of the catalogue method of producing newspapers’.109 On 24 August Geake wrote to the edi-
and seeing the advertisements, would be led to conclude that the respond- tor with a tongue-in-cheek challenge to ‘MB’s description of events’.110 Two
ents were offering for sale at 4s 9d the identical ball catalogued by the appel- days later, Moberly Bell published another letter arguing for more extensive
lants in their 1912 catalogue at 10s 6d’.106 Thus, according to Sargant J and newspaper protection and pointing out that copyright had previously been
the House of Lords the initial advertisements contained a misrepresentation found to protect ‘lists requiring no intellectual effort’ and that Rosebery
and they rejected the Court of Appeal’s view that the subsequent ‘corrected’ had objected to publication.111 John Lane wrote expressing a strong objec-
advertisements had removed any misleading impression that might have tion to Murray’s public support for The Times in the case, given his role as
resulted from the August advertisements. Sargant J found that Gamages’ president of the council of the Publisher’s Association.112
subsequent advertisements ought to have stated that there was a mistake in Despite Murray’s position, Lane appealed, with support from the Publishers’
their initial advertisements and that the footballs they were offering were Association to fight the case.113 The hearing was held on 30 October 1899.
different from those which had been described in those initial advertise- Scrutton and Birrell adjusted the emphasis of their arguments slightly to
ments. Lord Sumner contended that ‘though they were careful to do no new focus on the lack of originality of the reports, and, in particular, the qual-
mischief they left the old mischief to work’.107 Thus they held that the initial ity of the skill and labour expended. They argued that even if the work of
misrepresentation continued to have effect. the reporters required skill, it was not ‘literary skill’ that was employed in
Though it was held that this misrepresentation was ‘in its nature calcu- creating the verbatim reports of speeches—it was essentially mechanical—
lated to produce damage’,108 Lord Parker did not elaborate on the harm and so the reporter was not an ‘author’ under the terms of the 1842 Act,
likely to result, so as not to prejudice the subsequent inquiry. However, he which conferred copyright protection upon the ‘author’ of a ‘book’.114 Lord
did highlight the complaint made by one of Spalding’s retailers that Spalding Rosebery was the only possible ‘author’ and he had given the speeches to
had appeared to have sold to him at an inflated price.109 In the subsequent the public, in the sense discussed by the court in Nicols v Pitman.115 In their
inquiry as to damages, the Court of Appeal awarded £250 for lost sales view, reporting the speech could not remove that speech from the public
(though rejecting the highly speculative amount the plaintiffs sought)110 and domain, as it might be described today. On 9 November 1899 the Court of
for harm to their reputation in the trade.111 Appeal (Lindley MR, Sir Francis Jeune, and Romer LJ) allowed the appeal,
Before turning to Lord Parker’s analysis of the tort it is interesting to with Lindley MR delivering the judgment. While an author of an unpub-
point out the different judicial responses to the parties in this case of lished manuscript might give or sell it to another, and implicitly transfer any
aggressive competitive practice. rights therein, this was not the case with a speech delivered in the manner of
The defendants had argued that the plaintiffs had brought this action as Rosebery’s speeches. The Times did not acquire a title through Rosebery.116
a punishment for Gamages’ undercutting prices112 rather than for any real In Lindley’s view, the ‘report and the speech reported are, no doubt, differ-
misdescription. The Court of Appeal sympathised with this argument; the ent 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
106 [1915] 32 RPC 273, 286.
107
Appeal’s judgment to his friends with an attached note of his own, decrying
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.
109 MB, ‘Copyright in Reports of Speeches’ The Times (22 August 1899) 6.
110 At one point the plaintiffs had claimed £23,921 in damages (see Bankes LJ [1918]
110 Charles Geake, ‘Copyright in Report and News’ The Times (24 August 1899) 6.
35 RPC 101 CA, 119). 111 MB ‘Copyright in Reports and News’ The Times (26 August 1899) 10.
111 [1918] 35 RPC 101. Defendants’ counsel in Spalding contended that loss of reputation
112 J Murray ‘Copyright in Reports and News’ The Times (26 August 1899) 10.
was protected not by this tort but by the tort of trade libel. However, Swinfen Eady LJ, 117, 113 May 230.
accepted that such harm was recoverable provided it was the direct and natural result of the 114 [1899] 2 Ch 749, 763–55; 5 & 6 Vict c 45.
advertising. 115 [1899] 2 Ch 749, 764.
112 See Sargant J: [1913] 30 RPC 388, 400.
116 ibid 771.
117 ibid 771.
Moberly Bell and The Times for trying to protect an ephemeral literary should any of his customers see the price at which Gamages appeared to be
product like newspapers years after publication.118 Yet he did not have long selling the Orb, ‘they will no doubt describe us as downright robbers not
to gloat. The Times appealed to the House of Lords, where the Earl of tradesmen’.101
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 sig- A. The Spalding Litigation
nificant weight on the fact that the 1842 Act had no standard of quality
for literary works to receive protection and decried the appropriation of Sargant J, in the High Court, found Gamages liable in passing off, and
others’ skill, labour and money. Halsbury emphasised that the Act did not though the Court of Appeal overturned this decision, the House of Lords
require originality and criticised the Court of Appeal’s definition of ‘author’ restored Sargant J’s judgment: the plaintiffs were entitled to an injunction
for being too narrow; he suggested that it was a contradiction to recog- and to an inquiry into damages.102
nise authorship in publications such as directories and maps but not in the None of the courts involved felt it important that the case did not involve
reports of speeches.120 There was nothing in the statute that suggested only a source misrepresentation, but rather a misrepresentation as to the nature
an ‘original composition’ would gain copyright protection.121 He identified of the goods. All the courts were willing to consider liability based on the
the source of confusion as the conceptual difference between (1) the com- advertisements themselves. The key issue in the litigation was whether
mon law proprietary right in unpublished literary work and (2) the statu- Gamages’ advertisements misrepresented the discarded Improved Orbs as
tory ‘privilege of making copies’.122 The first—the common law right—was being the balls referred to in the plaintiffs’ 1912 catalogue as the ‘Improved
not at issue in the case because Lord Rosebery was making no claim or com- Sewn Orb’. This misrepresentation would also include the misrepresenta-
plaint. The second—the statutory privilege—did not include any require- tion that these balls were being offered at less than half the price set by
ment of literary merit or originality in order for copyright to subsist; the Spalding. To find A. Gamage Ltd liable the court would have to accept that
required formalities of the 1842 Act had been met. Each reporter of a speech the public, or at least Spalding’s commercial partners,103 would have been
could have his own copyright in his report, just as any artist or photogra- aware of the description and price of the Improved Sewn Orb in the 1912
pher could obtain a copyright in the same view.123 In Halsbury’s view, it was catalogue as well as being aware of the defendants’ initial advertisements.
simply ‘a grievous injustice’ to misappropriate ‘the skill, labour, and capital The defendants’ counsel had sought to argue that the overall statements
of others’.124 in their advertisements were only a repetition of what Spalding themselves
Lord Davey acknowledged the possibility of a common law proprietary had used in relation to the earlier versions of the Orb, which were of course
right in a speech or lecture, citing Caird v Syme; he also distinguished the the very products the defendants were in fact selling. The Court of Appeal
question of statutory copyright on the basis that Rosebery had communi- were sympathetic to this argument and in denying liability were also swayed
cated his speeches to the public, and therefore had given up his rights.125 by the fact that none of the initial advertisements referred to the balls as ‘the
Davey also affirmed, contrary to the decision in Cox v Land and Water Improved Sewn Orb’. Moreover, they did not believe that customers would
Journal, that a newspaper could, in fact, be a book under the meaning of see the patent number as having any importance.104 Further, the court
Copyright Act.126 He addressed the respondent’s argument that Rosebery, 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
118 May 232.
119 Walter v Lane [1900] AC 539. 101 Ritson, 12 October 1912, ibid (though given the date of this complaint and the fact that
120 ibid 545–56, 550. that the Orb was referred to—rather than the 1912 version in particular—it could be argued
121 ibid 546–47. that the retailer was generally annoyed at the prices being set by Spalding). They saw their
122 ibid 547. options as being to abandon the sale the Orb or to order directly from Gamage. In the inquiry
123 ibid 549. as to damages, the Court of Appeal were unimpressed by the plaintiffs’ witnesses—see, eg, Eve
124 ibid 545. Halbury’s speech has been cited as the essential expression of ‘sweat of the LJ: [1918] 35 RPC 101, 124.
brow’ originality. A Drassinower, ‘Canadian Originality: Remarks on a Judgment in Search of 102 The trial had lasted four days (according to Swinfen Eady LJ: [1918] 35 RPC 101, CA, 117).
an Author’ in Y Gendreau (ed) An Emerging Intellectual Property Paradigm: Perspectives from 103 Note Younger J [1917] RPC 289, 307: the Sewn Orb was ‘practically unknown to the
Canada (Cheltenham, Edward Elgar, 2008) 139, 151. public’ in August 1912.
125 ibid 550. 104 Cozens-Hardy MR: [1914] 31 RPC 125, 134.
126 ibid 551. 105 ibid, 134.
ootball (Patent No 15168)91 and the Specially Tested Orb.92 Indeed, both
F the author, had given his speeches to the public and so no one could subse-
the moulded Orb and the Sewn Orb were at times marked ‘Spalding Orb’.93 quently claim to be their ‘author’, appropriating rights to the speeches. This
Defendants’ counsel did make the point that had the plaintiffs taken a new was not the position of The Times, he explained, which claimed only its
name for their 1912 football the difficulties that arose in the case might have thin copyright in the reports—not in the speeches themselves.127 Copyright
been avoided.94 under the Copyright Act had ‘nothing to do with the originality or literary
On the plaintiffs’ application for an interlocutory injunction the defend- merits of the author or composer’.128 Like Halsbury, he thought it ‘a sound
ants undertook not to sell, advertise, offer for sale or supply Improved Orbs principle that a man shall not avail himself of another’s skill, labour, and
or Specially Tested Orb Footballs that were not of the proper description. expense by copyright in the written product thereof’.129
Though the defendants contended that this met the plaintiffs’ concerns, no Lord James considered the question of whether under the terms of the
customer having bought the goods based on the initial advertisements, the 1842 Act, a person producing unoriginal literary matter could nevertheless
plaintiffs proceeded to trial, seeking both an injunction and damages.95 be an author.130 While it was clear to him that an employee taking dicta-
Spalding had not entered into serious production of their new 1912 Sewn tion would be not be an author of the resulting document, the compiler of a
Orb: having had their fingers burnt with the moulded Orb, they had decided street directory could be an author.131 So was the reporter of a public speech
on caution with the new product. They proposed in effect to test the water an author or not? He suggested that it depended on the nature of the report-
by advertising, promoting through testimonials from players and seek- er’s skill and art; it would have to be more than simply taking dictation.
ing orders based on specimen footballs.96 The defendants’ advertisements A report might be ‘obtained under circumstances of peculiar difficulty’
appeared at the start of this campaign and the result was that Spalding involving maintaining accuracy in taking down a rapid speaker, obtain-
largely put their campaign on hold for the next three seasons.97 So Spalding ing the material in a situation of intrigue, or translating from a foreign
claimed lost profits on the basis that the defendants’ advertisements had language.132 Thus, with some doubt, he concluded that ‘under the condi-
ruined the launch of and subsequent marketing of their 1912 Orb.98 They tions existing’ in the case, the reporters were authors under the 1842 Act.133
also claimed damages for harm to reputation because of the inferior quality Lord Brampton thought the author of the speech and the author of the
of the discarded Orbs99 and also because of the likely incorrect perception report could be distinguished under the terms of the 1842 Act. He also
of the retailers to whom they sold Orb footballs that they were allowing agreed that a person taking dictation would not be able to claim a prop-
Gamages to undercut such retailers’ businesses. Spalding provided evidence erty right.134 But the reports of the speeches in The Times ‘involved con-
that one such retailer was demanding that they should reduce the price of siderable intellectual skill and brain labour beyond the mere mechanical
the 1912 ball sold to them so that the price was in line with what they operation of writing.’135 Authorship did not depend on ‘literary quality’,
had (apparently) given Gamages100 while another retailer complained that 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
91 Letter to Duke & Son, 5 September 1912, available HL/PO/JU/4/3/626 (Parliamentary
have had existence, and the words of Lord Rosebery would have remained
Archives).
92 In their statement of claim: see [1915] 32 RPC 273, 274. unrecorded’.137
93 See Swinfen Eady LJ in CA Inquiry [1918] 35 RPC 101, 113. The dissent of Lord Robertson accepted many of the legal premises of the
94 Kerly LJ in the Court of Appeal inquiry as to damages [1918] 35 RPC 101, 114: ‘the
majority judgments. He took the view that the ‘the intellectual and literary
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. 127 ibid 551.
95 The defendants argued that their undertaking met what was merely a quia timet threat of 128 ibid 552.
harm. The defendants did not offer the undertakings to the court nor to submit to an enquiry 129 ibid.
as to damages; nor to pay costs, Lord Parker: [1915] 32 RPC 273, 287. 130 ibid 554.
96 This is clear from the Court of Appeal inquiry into damages: [1918] 35 RPC 101, 108–11. 131 ibid.
97 Court of Appeal Inquiry into damages [1918] 35 RPC 101, CA, 108. 132 ibid 554–55.
98 Cozens-Hardy MR: [1914] 31 RPC 125, 135. 133 ibid 555.
99 Gamages had received no complaints about the Orbs that it had sold (see Cozens Hardy 134 ibid 558.
MR: [1914] 31 RPC 125, 134). 135 ibid 556.
100 Duke & Son, in a letter dated 4 September 1912. Available HL/PO/JU/4/3/626 136 ibid 558.
(Parliamentary Archives). 137 ibid 559.
contribution’ of a reporter might conceivably give rise to copyright protec- and newspapers between 23 August and 30 August 191284 had illustrations
tion. In The Times reports of the speeches at issue, however, Robertson of the product for sale that included the ‘Specially Tested’ stamp. All but
found straightforward shorthand reporting with no merit beyond their lit- one referred to the patent number that had appeared in the plaintiffs’ 1912
eral accuracy.138 He distinguished the cases of compilation copyright on catalogue. However, none of the advertisements used the name ‘Improved
the basis that they involved ‘structure and arrangement on the part of the Sewn Orb’: rather the name ‘Improved Orb Football’ was used except in
maker’.139 one advertisement where the product was referred to as ‘The Celebrated
The newspapers, of course, had a good deal to say about the House of Orb Football’. All stressed that the ball was being sold at four shillings and
Lords decision. Naturally, The Times was pleased with the result. The Spec- nine pence, down from an ‘original’ price of ten shillings and sixpence.
tator also approved. A representative of the plaintiffs visited Gamages on 29 August and in
‘an angry interview’85 objected to the advertisements, issuing a writ on
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 30 August. Gamages, after consulting their lawyers and declaring the offend-
employs and pays such reporter—just as much as to the collector of names and ing advertisements to be a stupid mistake, agreed by letter on 31 August to
addresses, and to the person who employs and pays such collector?140 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
The Daily News, however, was scathing in its report:
that they were not stocking the new ball and, indeed, letters were prepared
The reporter who has hitherto been content to be paid for taking down another to be sent to customers who might have relied on the ‘mistaken’ wording of
man’s words now finds that he has been pursuing the calling of an author all his their August advertisements. Subsequent advertisements appearing after the
life without knowing it. Pitman’s School of Shorthand becomes by the judgment issue of the writ, which the Court of Appeal found to be unobjectionable
of the Lords one of the leading literary centres in the kingdom.141 and which it was admitted would not in themselves have given rise to an
Shortly thereafter, Moberly Bell (once again as ‘MB’) wrote to the editor of action,87 referred to the ‘Famous Orb Football’ that they were able to sell at
The Daily News complaining that this editorial unfairly portrayed the judg- a bargain price, having secured a big stock at a great reduction.
ment. The editor published the letter but replied that while they ‘sympathise The plaintiffs were not aware until after the close of the pleadings that
with MB in his zeal for the protection of journalistic copyright … in this the balls at the heart of the dispute were the balls they had sold to the waste
instance he has in our opinion pushed his zeal too far’.142 rubber merchants. Initially they had complained of the standard form of
Geake was incensed by the result. Along with a cutting of the lengthy passing off, that is that the defendants were selling goods as Spalding’s when
article from the Daily News, he sent to Rosebery a draft letter to The they were not.88 However, the litigation eventually involved an allegation
Times responding to the House of Lords’ judgment. Rosebery’s secretary that the defendants had in effect misadvertised the discarded moulded Orb
Waterfield wrote to Geake from Berkeley Square on 10 August 1900: ‘Lord as the new Improved Sewn Orb and at a price much lower than that set by
Rosebery says—why cannot you leave well enough alone? Your letter can the plaintiffs. It should be noted that the plaintiffs varied the nomencla-
do no good now, and he never would agree, so far as he is concerned, to ture used for their new 1912 Orb. So the Improved Sewn Orb was also at
your expression “express invitation … to Berkeley Square.”’143 times referred to as the Improved Orb,89 the Improved 1912 Orb,90 the Orb
Despite the exasperated tone of Waterfield’s letter, Rosebery does not
appear to have been angry. He wrote to Geake on 14 August 1900 express-
ing his sympathy and joking that American sales had only increased due to
84 The advertisement in The Regiment though dated 31 August in fact appeared on
the controversy, with unwitting buyers believing it to contain scandalous
29 August.
material. 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
138 ibid 560. advertisements taken alone would not have given rise to a cause of action.
139 ibid 561. 88 Cozens-Hardy MR: [1914] 31 RPC 125, 135. And see Lord Parker: [1915] 32
140 The Spectator (11 August 1900) 8. RPC 273, 287.
141 ‘The Reporter as Author,’ The Daily News (7 August 1900) 4. 89 By November 1912 Spalding were advertising their 1910 and 1912 versions of the Orb,
142 ‘Letters to the Editor’ The Daily News (9 August 1900). side by side. The 1912 version was at this point referred to as ‘The Improved Orb’, though the
143 BUA; Liberal Party Correspondence DM 668, Correspondence of Charles Geake, patent number and the ‘Specially Tested’ stamp also appeared in the advertisement.
Folder 3. 90 See HL: [1915] 32 RPC 273, 278.
simply referred to as ‘The Improved Orb Football’ and was priced at 10s 6d. My only feeling in the matter is for you. You have had a lot of annoyance in
The illustration used for this ball involved the stamp ‘Spalding’s Orb’. connection with a work which I cannot help fearing that you undertook from a
In fact the moulded Orb had proved unreliable with potential defects.77 friendly sentiment to me. As for Lane I understand he is having a fast sale of the
Though they featured defect-free moulded balls in their 1911 catalogue book in America, ‘as suppressed in England’? All the US are ransacking it for the
dubious passages!144
(‘The Improved Orb Football’), Spalding ceased their manufacture and
withdrew from sale that part of their stock of moulded balls thought to In his Preface to the 1903 edition of his treatise on copyright, a disappointed
be unsatisfactory.78 In 1912 their catalogue, a publication mainly for over- Scrutton waxed sarcastic about the result:
seas circulation and retailers,79 advertised their new model, the Improved
The House of Lords has spoken, and the law is established. But for its decision
Sewn Orb, described as manufactured under Patent No 15168 and priced it would seem startling that a person should be the author of a work, to which
at ten shillings and six pence.80 This was another rubberised canvas ball. he has contributed neither the words, nor their arrangement, nor the ideas con-
However, it was not moulded under heat but sewn together as with leather tained in them, when his only relation to that work is that he has correctly copied
footballs. The illustration for this product involved the stamp ‘Specially from dictation the language of the speaker who composed the thoughts in words.
Tested’. Though claimed to be ‘a great improvement on the old moulded The so-called author shares his authorship with the mechanical phonograph, but
ball’ and ‘the best ball on the market for schools and junior clubs’, in fact the under the protection of the House of Lords acquires a property in his copy from
catalogue went on to repeat much of what had been written about the Orb dictation.145
generally in previous catalogues. Birrell was less certain that he and Scrutton had been right. In his posthu-
In May 1912 Spalding sold the discarded defective Orbs—some 5,580 mously published memoirs he admitted ‘that I entertained a strong opinion
in number—to waste rubber merchants at a low price and by September/ that Mr Walter had no case, but in the House of Lords … I failed’.146 He
October 1912, in a series of advertisements, Spalding were offering their was, however, no longer ‘so confident that I was right’ as he remained with
Orb Football (advertised as ‘not to be confused with the Improved Sewn regard to another case he had lost.147
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 VI. ORIGINALITY AND THE LEGACY OF WALTER v LANE
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 Birrell’s reassessment of his position in Walter v Lane was reasonable.
season, Gamages, as the Holborn Circus store was known until its closure in Based on an understanding of the law protecting oral expressions at the
1972, advertised the sale of what was in fact this discarded stock. Through time, Rosebery was, in fact, the original owner of the speeches (in the intan-
‘extraordinary negligence’83 the initial advertisements in various journals gible 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
77 Swinfen Eady LJ in [1918] 35 RPC 101 CA, 118 noted that the plaintiffs had accepted ‘publication’, ie by delivering the speech in a public context in the presence
that the Orb and Improved Orb were ‘a great failure and a very large loss was incurred by of the reporters.148 Because a majority in the House of Lords took a broad
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 immedi-
view of the definition of ‘author’ under the 1842 Act, and there was no
ately dropped the manufacture and invented what is now known as the Sewn Orb’, letter to specific requirement of originality or quality required by the statute, the
F&T Ritson, dated 16 October 1912 available HL/PO/JU/4/3/626 (Parliamentary Archives). reporters themselves were able to obtain a statutory right in the reports. The
78 Spalding kept about 1,000 for sale (see argument of defendants’ counsel: [1915] 32
RPC 273, 281).

reporters’ status as ‘authors’ was grounded primarily on the skill, labour
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 144 ibid.
end of Sargant J’s judgment there is a lengthy debate with counsel as to how the balls should 145 Scrutton, The Law of Copyright, 4th edn (1903), ‘Preface’.
be referred to in the injunction. 146 A Birrell, Things Past Redress (London, Faber & Faber, 1937) 165.
82 The day prior to the day the merchants picked up the balls from Spalding, the merchants 147 ibid.
had approached Gamages and offered them the discarded footballs. 148 The trial judge North J would have disagreed with this interpretation of the law because
83 Sargant J [1913] 30 RPC 388, 397. Gamage’s employee had used the description from he believed there be to have been ‘no original’, but it is consistent with the House of Lords
Spalding’s 1912 catalogue as the basis for the advertisements of the discarded balls. majority. [1899] 2 Ch 749 at 754.
and judgment they had expended and, to some degree, on the public interest also apparent even where novel claims of passing off were presented to the
in having such speeches preserved and reported in newspapers. Under the courts, as in Society of Accountants and Auditors v Goodway & London
1842 Act, the reporters’ rights did not arise at the point of fixation. Rather, Association of Accountants Ltd (1907). Here a society claimed passing off
the reporter’s rights arose at the point of publication in the newspapers, where the designation used by its members had been used by members of
which fell under the statutory definition of ‘books’149 and had been regis- the defendants’ society. Warrington J simply decided that this involved an
tered as such. The subsequent assignment to The Times gave Walter stand- analogous question to standard passing off, focusing on the likely deception
ing to sue Lane for infringement of his copyright in the reports. and harm to the ‘pecuniary interests’ of the plaintiffs.69
Before 1911, the distinction between books that were published and This lack of judicial interest in exploring the theoretical basis of the tort
unpublished was a legally very significant one. In ‘An Intentional View of can also be seen in the Spalding litigation in the High Court and Court
the Copyright Work’, Justine Pila argues that the House of Lords majority of Appeal (and at House of Lords’ level apart from Lord Parker and to
in Walter v Lane erred because the reports of Rosebery’s speeches could not an extent Lord Parmoor).70 Indeed, no authorities are cited by the trial
have been ‘books’ for copyright purposes.150 This is based on a misrepre- judge and only one by the Court of Appeal—Ajello v Worsley—a claim in
sentation of the majority’s position in stating that they thought Rosebery injurious falsehood where the plaintiff had abandoned his claim in passing
could not have himself received legal protection because the speeches were off.71 All the judges involved were content to apply the tort though it was
never ‘fixed’. The 1842 Act did not apply to works that were ‘fixed’ but noted to be not ‘of the common type’72 and of ‘an unusual character’.73
to works that were ‘published’—a stark contrast with our modern copy-
right system where fixation is essential, formalities have been abolished and
publication does not result in the same momentous shift in legal status. As III. SPALDING, THE ‘ORB’ FOOTBALL CASE
discussed above, fixation was not necessary to protect a speech through
common law or the 1835 Act. Under the 1842 Act, the crucial requirements AG Spalding & Bros was a successful American sporting goods company;74
were publication as a ‘book’ and registration. Fixation was just a step on the defendant, AW Gamage Ltd, was a store renowned for its low prices.75
the road to publication and registration as a book. While Rosebery could Starting in 1909, Spalding produced a series of footballs, made partly of
have obtained a literary copyright under the 1842 Act by fixing a speech, vulcanised rubber, in what they termed their ‘Orb’ range.76 Spalding
publishing it and following the registration requirements, it is clear from made various claims as to how these were preferable to ordinary leather
the case law cited by the Lords (eg Caird v Syme) that they understood he footballs. Prior to the launch of the ‘Improved Sewn Orb’ in 1912—which
could have protected his speeches without fixation. Rosebery could either lay at the heart of the litigation—these Orb footballs had all been moulded
have delivered his speeches in circumstances that did not constitute ‘publica- in one piece. In their 1910 catalogue Spalding announced that demand for
tion’ and so maintained his common law rights or he could have given the the moulded Orb had been enormous and that they were launching the
proper notice under the Lectures Copyright Act of 1835. The parties agreed ‘Improved 1910 Orb Football’. In the subsequent catalogue in 1911 this was
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
69 (1907) 24 RPC 159, 167. Compare this attitude to the clear and severely limited frame-
domain due to the manner of their delivery. Once his words had entered the
work devised for injurious falsehood/trade libel (though Salmond in fact placed the tort of
public domain, the reporters in the room were free to use the speeches to passing off within the tort of injurious falsehood).
write their reports. Although the issue was discussed, the case did not turn 70 Lord Parmoor accepted that offering the plaintiff’s inferior goods or goods of a different
on the question of whether the speeches or the reports of the speeches were class, representing those goods to be of ‘a superior and distinctive class’ was covered by the
tort [1915] 32 RPC 273, 289.
‘books’. Lord Davey, for example, raised the issue to point out that, after 71 [1898] 1 Ch 274 Ch D.
years of uncertainty, more recent case law had treated newspapers as clearly 72 Sargant J [1913] 30 RPC 388, 395.
73 Lord Cozens-Hardy MR: [1914] 31 RPC 125, 133.
falling within the statutory definition.151 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 (<www.gracesguide.co.uk/Gamages>) notes that

149 Walter v Steinkopff at 495. Gamage insisted on selling everything cheaper than anywhere else. Gamage closed in 1972;
150 J Pila, ‘An Intentional View of the Copyright Work’ 71 Modern L Rev 535, 538. Spalding is still a successful sporting goods firm.
151 Walter v Lane [1900] at 550–51. 76 Orb = Original Rubber Ball.
unconsciously before the matter was brought to his attention’.59 It is The central question in Walter v Lane was one of status: whether a
also interesting to note the reference by Lord Herschell in Reddaway reporter of a speech which had been given to the public by its author could
v Banham that the law should not be powerless to enforce ‘the most elemen- himself become an ‘author’ of a work under the 1842 Act by writing a report
tary principles of commercial morality’.60 of the speech, publishing it and following the necessary registration proce-
Further, despite a property basis for the tort being out of favour, courts dures. The main issue was whether the definition of an ‘author’ under the
at times still referred to a right of the plaintiff as having been harmed or, 1842 Act should be understood to require a degree of originality, as Birrell
indeed, referred to misappropriation by the defendant. So, in Reddaway and Scrutton had argued successfully in the Court of Appeal. The majority
v Banham Lord Herschell doubted that property existed in trademarks, agreed it did not. Halsbury questioned whether an originality requirement
names or get-up but did refer to the plaintiff’s ‘right to insist that [the word would have necessarily meant a favourable result for the defendant,152 but,
chosen as a mark] shall not be used without explanation or qualification if ultimately, the majority rejected the Court of Appeal’s view that originality
such use would be an instrument of fraud’.61 Similarly in 1898 in Jamieson & should be read into the understanding of authorship. Thus, Walter v Lane’s
Co v Jamieson62 it was asserted that the action was ‘merely the exercise by legacy as an originality case is rather bizarre. In fact, the case is regularly
the Plaintiff of a right that he has that he should not be injured by the fraud cited inaccurately as holding that the reports were ‘original literary works’,
of the Defendant in pretending that the goods manufactured by him, the most notably by Mummery LJ in Sawkins v Hyperion,153 but also in aca-
Defendant, are of the Plaintiff’s manufacture’. This ‘right’ reflected earlier demic literature and texbooks.154
dicta contained in Blofeld v Payne (1833), noted below.63 However, the This error is understandable given subsequent judicial treatment of the
vocabulary of theft was also evident at times: Lord Herschell in Reddaway case. In the 1916 case of University of London Tutorial Press v University
contended that the defendant should not be allowed to ‘filch the business of Tutorial Press, the defendant argued that the requirement that a work be
a rival’ and referred to the mark having been ‘appropriated by another’;64 ‘original’ under the 1911 Act higher standard for copyright than that of
Lord Macnaghten in Payton & Co Ltd v Snelling, Lampard & Co Ltd Walter v Lane.155 Peterson J was unpersuaded by this argument, interpret-
noted that he found no intention ‘to steal’ the plaintiff’s trade.65 ing ‘original’ as originating from the author.156 In 1917, the High Court
These uncertainties demanded clarity as to the theoretical basis of the of Australia addressed the holding of Walter v Lane in a case dealing with
tort. However, this lack of clarity was ignored by the courts at the end of the question of whether a map was original under the Australian copyright
the nineteenth century and beginning of the twentieth century. Rather it was statute that mirrored the 1911 Act. The Court correctly observed that ‘it
common to assert that the only difficulty in this area of law was in applying certainly was held that originality in respect of the ideas expressed or in the
the law to particular facts, the principles of the tort having become clear.66 composition recorded in the report which was the subject of their Lordships'
This attitude was apparent in the House of Lords’ passing off decisions at the consideration was not necessary’ in order for the reporter to be an author.157
turn of the century: Magnolia Metal Company v Tandem Smelting Syndicate Despite the fact that the changes to the statutory framework reflected new
(1900);67 Payton & Co Ltd v Snelling, Lampard & Co Ltd (1901).68 It was international obligations under the Berne Convention, Isaacs J found that
‘author’ and ‘original work’ were, and always had been ‘correlative’; origi-
nality for copyright purposes simply meant ‘originating with the author’.158
59 [1900] 17 RPC 557, 566.
60 [1896] AC 199, 209.
61 ibid 215.
62 [1898] RPC 169, 191. 152 ibid 548.
63 Litteldale J [1833] 110 ER 509, 510: even where no specific damage proved ‘it was 153 Sawkins v Hyperion Records Ltd [2005] EWCA Civ 563 [33].
still … an injury to his right’. 154 See, eg, A Rahmatian, ‘Copyright Protection for the Restoration, Reconstruction, and
64 Reddaway v Banham [1896] AC 199, 209. Digitization of Public Domain Works’ in Copyright and Cultural Heritage: Preservation and
65 Lord Herschell, Reddaway [1896] AC 199, 211; Lord Macnaghten, 309. Access to Works in the Digital World (Cheltenham, Edward Elgar, 2010) 70; U Smartt, Media
66 Eg Lord Hatherley LC in Wotherspoon v Currie [1872] LR 5 HL 518, 512 ‘… the and Entertainment Law (London, Routledge, 2011) 292; NS Sreenivasalu, Law Relating to
principles governing these cases have been … well settled by a long series of decisions’; Baggallay Intellectual Property (India, Partridge, 2013) 499; P Torremans, ‘Legal Issues Pertaining to
LJ Orr Ewing & Co v Johnston & Co [1880] 13 Ch D 434, 454; Lord Macnaghten in the Restoration and Reconstitution of Manuscripts, Sheet Music, Paintings and Films for
Reddaway: what was presented was ‘the old and familiar doctrines of the Court which have Marketing Purposes’ in Copyright Law: A Handbook of Contemporary Research (Cheltenham,
been repeated over and over again’ [1896] AC 199, 215. Edward Elgar, 2007) 33.
67 [1900] 17 RPC 477. 155 [1916] 2 Ch 601, 606.
68 [1901] AC 308. Tregoning, ‘What’s in a Name?’ (n 4) notes of these cases: ‘the House of 156 ibid 608.
Lords felt comfortable in not considering any specific rights or property such as goodwill as the 157 Robinson v Sands & McDougall [1917] 23 CLR 49 (HCA) 54.
subject of the claimed passing off infringement’: 88. 158 ibid 55–57.
Yet, years later, the Court of Appeal in Exxon v Exxon noted that Walter in Magnolia Metal Company v Tandem Smelting Syndicate Ltd (1900)
v Lane had to be understood as coming from a context where ‘the pro- Lord Halsbury, delivering the judgment of the House of Lords, still stressed
tection given by copyright before that time was limited to books; and the source misrepresentation as the heart of the tort. He refused to be drawn on
Act of 1842 did not require originality as a necessary qualification’.159 In the possibility of a product equivalence misdescription being included within
Interlego v Tyco, which dealt with an attempt to protect an essentially iden- the tort, declaring that that would be ‘a different right being infringed’.51
tical redrawing of a toy block, the Privy Council appeared to move towards Furthermore, whether there was a required context for the misrepresenta-
a higher standard of originality.160 It acknowledged that copyright could tion was unclear. Kerly,52 and a number of leading cases (including of course
potentially exist in a redrawing, but ‘copying, per se, however much skill or Perry), placed the context of the misrepresentation within that of a sale,
labour may be devoted to the process, cannot make an original work. A well hardly surprising when the majority of cases involved trademarks or names.
executed tracing is the result of much labour and skill but remains what it is, Morison contended that ‘the earlier definitions of passing off … indicate
a tracing’.161 While the judgment did not discuss Walter v Lane, the sugges- that it is essential that there should be this composite act of selling together
tion that ‘skill, labour or judgment merely in the process of copying cannot with a misrepresentation before the tort is made out’.53 Even in 1882
confer originality’162 seemed to contradict its essential principles. Lord Blackburn in Singer Manufacturing Co v Loog asserted ‘the original
In Express Newspapers v News (UK), a case involving newspapers rewrit- foundation of the whole law is this, that when one knowing that goods are
ing reports of interviews published in other newspapers, however, Sir Nicolas not made by a particular trader sells them as and for the goods of that trader,
Brown-Wilkinson VC described Walter v Lane as ‘undeniably good law’, he does that which injures that trader’.54 And Lord Herschell in Reddaway
despite the 1842 Act having no requirement of originality.163 The holding of v Banham still referred to passing off goods for sale.55 However, in that
Walter v Lane as ‘the mere reporting of the words of another gives rise to a same case Lord Halsbury did not focus on sale but rather asserted that the
reporter’s copyright so long as skill and judgment have been employed in the principle of law was ‘nobody has any right to represent his goods as the
composition of that report.164 He distinguished Interlego as dealing with a goods of somebody else’.56
very different point of originality,165 and the case has tended to be restricted As for the justification for imposing liability, though fraud and property
to its particular set of facts ever since. rights had seemingly been removed from the tort,57 ghostly reminders of
Even stronger confirmation of Walter v Lane’s status as good law came their former presence remained.
from the Court of Appeal in the 2005 case of Sawkins v Hyperion, both So, there was a continued reference to equity’s fiction of fraud. In its first
Mummery LJ and Jacob LJ cited Walter v Lane as positive authority on edition, 1894, Kerly accepted that the defendant could be liable for unin-
originality of works.166 In Sawkins a professor of musicology had rendered tended deception but stressed that such a defendant did in fact commit a fraud
music composed in the seventeenth century by Michel-Richard de Lalande by continuing ‘after discovering the dangerous character of his conduct’.58
playable by modern instruments in performing editions; the question was Indeed, in 1900 Lord Davey in Edge & Sons Ltd v Gallon & Son declared:
whether under the Copyright Designs and Patents Act 1988, Professor ‘[jurisdiction over passing off] … is a jurisdiction which has rested on
Sawkins had authored an original musical work. Mummery LJ stated: fraud’ and it remained so, though fraud may be constituted by ‘[continuing]
The essential elements of originality were expounded by the House of Lords
to do that which perhaps he was previously doing unintentionally or
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’ 51 [1900] 17 RPC 477, 485.
52
works.167 D 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.
159 Exxon Corp v Exxon Insurance Consultants Ltd [1982] 1 Ch 119 (CA), 129. 53 WL Morison, ‘Unfair Competition and Passing Off’ (1956) 2 Sydney Law Review 50, 56.
160 Interlego v Tyco [1989] AC 217. 54 [1882] LR 8 HL 15, 29.
161 ibid 263. 55 [1896] AC 199, 209. He cited the famous dictum of Lord Kingsdown in Leather Cloth
162 [1989] AC 217 (Lord Oliver). v American Leather Cloth Co [1865] 11 ER 1435, 1438: ‘the fundamental rule is, that one man
163 Express Newspapers v News (UK) [1989] 1 WLR 1320, 1326. has no right to put off his goods for sale as the goods of a rival trader’.
164 ibid 1325. 56 [1896] AC 199, 204 (see also Lord Macnaghten, 215, citing James LJ in Singer v Loog,
165 ibid 1326. referred to above in the text).
166 Sawkins v Hyperion (n 154) [77]. 57 Of course, as is still the case today, should fraud be present that would be highlighted.
167 ibid at [33]. Several scholars have pointed out that statement is simply incorrect as a 58 See also the reference to fraud by Chitty J in Lever v Goodwin [1887] 36 Ch D 1, 2 and
description of the House of Lords judgment. Eg Derclaye (n 3) at 9; Gravells (n 4) at 287. by Fry LJ in Waterman v Ayres [1888] 39 Ch D 29, 37.
property in a name or mark or get-up was rejected.41 In 1904, a leading text, He also referred to Lord Halsbury’s statement that copyright law does not
Cutler’s On Passing Off, characterised passing off as ‘a matter of represen- allow ‘one man to make profit and to appropriate to himself the labour,
tation’, made no reference to rights or property and categorically stated that skill, and capital of another’.168 Jacob LJ observed that:
no intention to deceive was necessary, but rather the ‘commercial effect’ of
For, whilst it is trite that mere servile copying (for instance tracing or photocopy-
the representation was the key to liability.42 Lord Diplock characterised the ing) does not amount to originality, there are clearly forms of “copying” which
perception of the tort at this stage as ‘an action sui generis which lay for do—the shorthand writer's copyright is a paradigm example which has stood
damage sustained or threatened in consequence of a misrepresentation of a since Walter v Lane.169
particular kind’.43 However there remained uncertainties.
Lord Mance expressed some reservations as to whether Walter v Lane was
The courts may have stressed misrepresentation as the key factor, but
the required nature of that misrepresentation was unclear. The standard indeed compatible with obiter in Interlego, but he was persuaded by the
discussion of the tort placed it within the context of a misrepresentation as analysis of Jacob LJ.170
Though a controversial case containing a misstatement of the holding
to source. Admittedly, the courts had expanded how such a misrepresenta-
in Walter v Lane, Sawkins appeared to give the case another lease of life.
tion might manifest itself to include misrepresentations involving get-up44
The implementation of European Directives has led to the adoption of an
indirect reference to source45 and, in Reddaway v Banham, descriptive terms
‘author’s own intellectual creation’ standard for originality for databases,
that had acquired secondary meaning.46 However, it was unclear whether
computer programs, and photographs, but outside of these technologically
other representations could be relevant to liability. There was evidence that
specific areas, it was thought that Member States could maintain their own
some courts were prepared to impose liability to counter misdescriptions
standards of originality.171 Then, another case involving the centuries-old
of the plaintiff’s product. So in Teacher v Levy47 Swinfen Eady J, without
problem of newspaper copying—this time in the new digital environment
discussing the scope of the tort, presumably because fraud was involved,
of the internet—shifted the analysis of originality towards a harmonised
held that it covered passing off the plaintiff’s inferior product for the plain-
European standard of ‘author’s own intellectual creation’.172 In Infopaq,
tiff’s superior product. Yet the emphasis in the higher courts continued to
be on passing off as protecting against source misrepresentations. In Native the Court of Justice of the European Union gave a preliminary view on
Guano Co v Sewage Manure Co,48 though admittedly a case that was not the practice of scanning newspaper articles and copying short text extracts
pleaded coherently, the House of Lords was not minded to explore the 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
product misrepresentation that, in fact, lay at its heart.49 Again, in Powell
consider whether the extract contained ‘an element of the work which, as
v Birmingham Vinegar Brewery Co (the Yorkshire Relish case) though Lord
such, expresses the author’s own intellectual creation’.173 Subsequent Euro-
Davey stressed that the defendant’s product was not made to the ‘proper’
pean cases dealing with subsistence confirmed that ‘copyright is liable to
recipe—the emphasis was still on source misrepresentation.50 Subsequently
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
41 Lord Herschell ibid, 209–10.
42 J Cutler, On Passing Off, or, Illegal Substitution of the Goods of One Trader for the
personality, demonstrated by the author making ‘free and creative choices’
Goods of Another Trader (London, Gay and Bird, 1904) 5, 9. in the production of the work.175
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. 168 Sawkins v Hyperion (n 153) [35].

47 [1906] 23 RPC 117 the defendant pub owners had been serving customers with the plain- 169 ibid [78]; This quotation was cited as positive authority recently as July 2016. Raft
tiffs’ ordinary quality whisky where they had requested the plaintiffs’ special quality whisky. Limited v Freestyle of Newhaven Limited, Christopher Eric Horsnell, Highly Sprung Limited
See also the Irish case, Jameson v Clarke [1902] 19 RPC 255. Wadlow, The Law of Passing-Off [2016] EWHC 1711 (IPEC) [7].
(n 2) 424 also notes Australian examples, some dating from 1869. 170 Sawkins v Hyperion (n 153) [71].
48 [1891] 8 RPC 125. 171 See, eg, E Rosati ‘Originality in US and UK Copyright as a Springboard for an EU-wide
49 Diplock in Advocaat, the context of the case was ‘that the passing off actions that had Reform Debate’ [2010] Intern’l Rev of IP and Competition L 524.
hitherto come before the courts had all assumed what I have called the classic form’: [1979] 172 C-5/08 Infopaq International v Danske Dagblades Forening [2009] ECR I-6569.
AC 731, 746. 173 ibid [48].

50 [1897] AC 710, 711. It was not important that the plaintiff’s name was not used by the 174 C-145/10 Eva-Maria Painer v Standard VerlagsGmbH [2012] ECDR 6 [87].
defendant. 175 C-604/10 Football Dataco v Yahoo [2012] Bus LR 1753 [98].
In Newspaper Licensing Agency v Meltwater Holding BV, the UK courts Indeed, there were indications that some also accepted property in trade
addressed the application of the harmonised European originality standard names.30 However, judicial opinion was divided.31 In 1857, just prior to
when determining if newspaper headlines and text extracts were original Lord Westbury’s campaign, Page Wood V-C in The Collins Co v Brown32
literary works under the CDPA.176 In the High Court, Proudman J cited expressly rejected the notion of property in a trademark (reflecting the view
Walter v Lane and Express Newspapers as positive authority for the princi- in Perry)33 and in Wotherspoon v Currie (1872) that same judge—now as
ple that the skill and labour necessary for an original work the Lord Chancellor, Lord Hatherley—focused on liability based on likely
need not be directed to the creation of particular modes of expression; it can
deception.34
be deployed in the selection or choice of what should be included in the work. Eventually, the analysis of trademarks or names as property went out of
Thus copyright protection is available to verbatim reports of interviews and public fashion. Wadlow notes that prior to Spalding there had been a ‘hiatus of
speeches.177 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
Applying Infopaq, she found that the headlines were capable of being inde-
been curtailed by two legislative interventions. The first was the Judicature
pendent literary works if they were original.178 Upholding the judgment of
Act 1873 which removed any need to establish property rights when grant-
Proudman J, Sir Andrew Morritt for the Court of Appeal asserted that the
ing an injunction (and, of course, fused law and equity). The second was the
CJEU’s application of the ‘intellectual creation’ test for originality did not
Trade Marks Registration Act 1875 which abolished the action for infringe-
alter the domestic test for originality of originating with the author, as stated
ment of a common law trade mark. As Wadlow notes,36 it could no longer
in University of London Press and Ladbroke.179
be said that the tort protected a right of property in a trade mark ‘because
All of this leaves the status of Walter v Lane rather ambiguous. It is not
if it did so it would have been no more than the abolished common law
clear to what extent CJEU judgments will impact on the interpretation of
infringement action under another name’. In effect this Act required the
UK law in future, but it might be difficult to claim the reporters of Lord
courts to consider a general frame for passing off actions.
Rosebery’s speeches expressed their personalities by making ‘free and crea-
This frame became clearer after the important cases of Singer Manufac-
tive choices’.180 Yet it could be argued that the approach of the House of turing Co v Loog and Reddaway (Frank) & Co Ltd v George B anham &
Lords in Walter v Lane is not entirely divergent from the European standard Co Ltd, both of which went to the House of Lords. In Singer v Loog,
of originality, which also shifts focus to the author. Like the High Court of James LJ in the Court of Appeal referred to the principle governing
Australia in Robinson v Sands & McDougall, Jane Ginsburg has asserted
liability as ‘no man is entitled to represent his goods as being the goods
that ‘authorship’ and ‘originality’ are essentially synonymous.181 Even when
of another man’ and rejected property in a name;37 Lord Watson in the
focusing on the author, the originality standard may need to be applied
House of Lords stressed that innocence was no defence, provided the use
differently for different kinds of copyright works. Some works are neces-
of the name by the defendant was calculated to deceive.38 In Reddaway
sarily factual or informational, manifesting the author’s personality while
v Banham—itself subsequently acknowledged to be a landmark case39—
realising the aims of the work is difficult and potentially undesirable. One
again misrepresentation was placed at the heart of the tort40 and again
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 copy-
right subsistence in a work, ‘as long as the nature of the work undertaken 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 …’

allows the author to make subjective choices in the work's contents or com- 31 ‘Lord Westbury’s doctrine of property in trademarks had never enjoyed unanimous
position, the impress of the author's personality will be declared present’.182 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
176 [2010] EWHC 3099 (Ch), [2011] EWCA 890 (CA), [2012] Bus LR. in a name or mark’ [1842] 49 ER 749, 752.
177 Meltwater [30]. 34 [1871–2] LR 5 HL 508.
178 ibid [77]–[78]. 35 Wadlow, The Law of Passing-Off (n 2) 19.
179 ibid [20]. 36 ibid, 35. The Act made the registration of the trade mark the equivalent of public use.
180 See L Bently and B Sherman, Intellectual Property, 4th edn (Oxford, Oxford University 37 [1880] 18 Ch.D 395 at 412. In reality the plaintiff sought to prevent the trade use of the
Press 2014) 114–15. word Singer even in price lists, etc.

181 J Ginsburg, ‘The Concept of Authorship in Comparative Copyright Law’ 52 DePaul L 38 [1882] 8 App Cas 15. Note, however, n 28.
Rev 1063, 1078. 39 Lord Diplock in Advocaat [1979] AC 731 at 741. See discussion later in text.
182 Ginsburg (n 181) 1081. 40 See, eg, Lord Halsbury [1896] AC 199, 207.
Bently notes a surge in trademark case law from the 1860s onwards.20 This In such cases, it may still be important to look at the nature of the skill,
‘growing reception and use of marks in commercial practice’,21 was hardly labour and judgment employed by the author. In Walter v Lane, both Lord
surprising in an era which saw the rise of consumerism, the expansion of James and Lord Brampton found the nature of the skill and labour rel-
the distributive trades and, indeed, the growth in advertising.22 This would evant to the issue of authorship, even if the quality of the work itself was
seem to explain a trend to accept that a property right existed in the common not. Rather than requiring originality or literary merit, authorship in the
law trademark—a trend aided by the decision in Millington.23 Such a view views of James and Brampton (and Robertson, though he dissented) meant
was reinforced by the argument that where equitable relief was sought, a that an author expended a certain kind of skill and labour. In Brampton’s
property right had to be involved.24 (Indeed at times the courts had asserted words, the skill had to be ‘intellectual’ rather than ‘mechanical’.183 James
the tort protected a right of property in a plaintiff’s own name25 or a right found that the reporter of the speeches was the ‘meritorious producer of
analogous to the property attaching to copyright works).26 Of course, this the something necessary to constitute him an “author”’.184 As Ginsburg
was an era where legislative protection was being sought for such marks, expresses the principle, ‘the quantum and the quality of sweat may matter
eventually being achieved by the Trade Marks Registration 1875, an Act to the determination of authorship’.185
‘widely understood as reinforcing the reconceptualization … of trade marks In Walter v Lane it was not unreasonable for their Lordships to have
as property’.27 found that the (relatively novel) skill of the shorthand reporters was intel-
This trend seems to have originated from Lord Westbury, Lord Chancellor lectual in nature. It is important to remember the factual background that
from 1861.28 In Leather Cloth Co v American Leather Cloth Co Lord emerged at trial: there were often several reporters from different newspa-
Westbury used Millington to support his theory that equity’s protection of pers present at the speeches of Lord Rosebery. Despite the supposed ver-
trademarks was based on property, not fraud. By 1894, Kerly, a leading batim recording of the speeches, every one of the published reports was
trademark text of the time, confidently asserted: different. This point was echoed by publisher John Murray in his letter
The trade mark cases … were so much more numerous and important that …
to The Times; he emphasised that anyone familiar with ‘shorthand report-
a definite property right in the use of a trade mark was set up and the action for ing of long speeches must be aware that no two full length reports taken
infringement became a specialised and distinct form of the more general action to down by different individuals will exactly correspond’.186 Consequently, it
restrain or to obtain damages for ‘passing off’.29 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
20 L Bently, ‘The Making of Modern Trade Marks Law: The Construction of the Legal speech. Anyone who has attended a trial and has read the daily transcript will
Concept of Trade Mark (1860–80)’ in L Bently, J Davis and J Ginsburg (eds), Trade Marks marvel at how much clearer the transcript seems to be than what was said in court.
and Brands: An Interdisciplinary Critique (Cambridge, Cambridge University Press, 2008) 11. This impression is confirmed by comparing the transcript with a tape recording
21 B Sherman and L Bently, The Making of Modern Intellectual Property Law (Cambridge,
of the proceedings. People frequently speak in half sentences. A good reporter or
22 On the growth of advertising see D Higgins, ‘The Making of Modern Trade Mark Law: The shorthand writer does more than act as a mere scribe.187
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 There is another important principle that arises from Walter v Lane which
property in trade-marks’. DM Kerly, The Law of Trade-Marks, Trade Names, and Merchandise ought to be maintained as part of its legacy: the skilful recreation, preser-
Marks, 2nd edn (London, Sweet & Maxwell, 1901). vation, conservation, or reconstruction of existing works should be legally
24 Lord Eldon LC Macaulay v Shackell [1827] 4 ER 809, equity ‘lends its assistance to a
man who has … a right of property’.

protected when it is the public interest to do so. As Lord Brampton empha-
25 Malins V-C in Springhead Spinning Co v Riley [1868] LR Eq 551 at 562. However, this sised in his judgment, without the intellect and labour of the reporters, ‘the
was not accepted generally see, eg, Du Boulay v Du Boulay [1869] LR 2 PC 430. book would never have had existence, and the words of Lord Rosebery
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). 183 Walter v Lane [1900] 556.
28 He gave judgment in three cases in 1863 to this effect: Edelsten v Edelsten [1863] 46 ER 72; 184 ibid 555.
Hall v Barrows 46 ER 873; Leather Cloth Co v American Leather Cloth Co [1863] 46 ER 185 Ginsburg (n 181) 1082.
868, 870 (Ch). 186 J Murray, ‘Copyright in Reports of Speeches’ The Times (17 August 1899) 6.
29 D Kerly, The Law of Trade-Marks, 1st edn (London, 1894) 5. 187 Cala Homes Ltd v Alfred McAlpine Homes East Ltd [1995] FSR 818, 835.
would have remained unrecorded save in the memories of the compara- century deception appeared the key ingredient of the tort; and it had to
tively few who were present on those occasions’.188 It may be necessary to be a deception that would harm the plaintiff.11 However, the theoretical
incentivise the ‘copying’ of works deemed beneficial to the public interest basis was unclear. Though deceit—an action on the case—may have been
where copying requires a great investment of time and labour, specific intel- the origin of the action, the tort of passing off was clearly different to that
lectual expertise and skill. Moreover, such forms of copying may themselves tort: the plaintiff was not the party deceived12 and no actual harm had to be
transcend mechanical copying such that inclusion of the creator under the proved.13 The basis of this action was further obscured by two interrelated
category of ‘author’ is entirely reasonable. In such cases, Walter v Lane factors: the different approach of the courts of equity and law and the grow-
supports the principle that the law may recognise as an ‘author’ an indi- ing importance of trade marks.
vidual who has developed particular expertise and a skill set that requires The common law courts required fraud for liability, and initially so did
the application of intellectual labour beyond the mechanical. the courts of equity when granting an injunction.14 However, in 1838 Lord
There were public policy reasons to protect the shorthand reports in Cottenham LC in Millington v Fox contended that, as far as equity was
Walter v Lane as socially valuable works. Indeed, had the reporters not concerned, the absence of fraud at the inception of the disputed conduct was
produced their reports of the speeches of Lord Rosebery, most of the public no bar to protection.15 Though subsequently Lord Langdale in Perry still
would not have had access to their contents and they would also very likely based the equitable jurisdiction on fraud,16 ultimately it was accepted that
have been lost.189 This principle that public policy calls for the inclusion equity would protect on the basis of a representation calculated to deceive.
of socially valuable copies of works within the statutory understanding of After-acquired knowledge of that likely deception sufficed as a form of
originality is echoed in Jacob LJ’s obiter in Sawkins v Hyperion: fraud. Thus Lord Blackburn in Singer Machine Manufacturers v Wilson,
while refusing to provide any principle for the tort, noted that where an
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 injunction was sought the court was concerned with the prevention of the
monopoly in them. If someone wants to use the claimant's short cut, they need continuance of a wrong, so that once the defendant was aware of the actual
his permission.190 deception he should be retrained otherwise ‘he would … do a wrong injuri-
ous to the Plaintiffs’.17
There is also academic literature supporting the protection of works of this It is important to note that the facts of Millington v Fox concerned the
kind. Paul Torremans concludes that under the ‘UK common law copyright use by the defendant of the plaintiff’s distinctive marks, recognisable by
approach there may well be copyright in the restored or reconstituted ver-
purchasers of goods as indicating the plaintiff as origin of those goods.
sion of an out of copyright work’.191 In a statement cited by the Jacob LJ in
Though Perry made it clear that passing off protected beyond such marks,18
Sawkins, Ginsburg suggests that reproductions ‘requiring great talent and
such actions for infringement of ‘common law trade marks’ were often
technical skill may qualify as protectable works of authorship, even if they
the subject of passing off litigation in the nineteenth century.19 Indeed,
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 prod-
uct of genuine cultural interest that might otherwise remain inaccessible to 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
the public’.193 Burton Ong has also argued persuasively that some kinds of with the use of the name by others’, 39; Levy v Walker [1878] 10 Ch D 436, 448: James LJ: the
‘recreative works’ should be granted copyright protection.194 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
188 Walter v Lane [1900] 559.
189
that sort of fraud’.
Alexander (n 43) 212. 15 [1838] 40 ER 956.
190 Sawkins v Hyperion [87].
16 ‘For the purposes of deception’ [1842] 49 ER 749, 752.
191 P Torremans, ‘Legal Issues Pertaining to the Restoration and Reconstitution of
17 Singer Machine Manufacturers v Wilson [1877–78] LR 3 App Cas 376 (HL), 400.
Manuscripts, Sheet Music, Paintings and Films for Marketing Purposes’ (2011) 33 European 18 Lord Langdale stated that a defendant: ‘cannot … be allowed to use names, marks, l etters,
Intellectual Property Rev 178, 188. or other indicia, by which he may induce purchasers to believe that the goods which he is
192 Sawkins v Hyperion [83].
193 Pila (n 150) 549.
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
194 B Ong, ‘Originality From Copying: Fitting Recreative Works Into the Copyright
Law Review 1839, 1856 notes that equity’s approach was to protect a plaintiff who could
Universe’ [2010] Intellectual Property Quarterly 165. 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.
on goodwill as an element of passing off’.4 The focus on goodwill meant The nature of the copying is also important. Torremans warns that
that the tort was no longer ‘anchored, as in its early nineteenth century for- originality is still essential in determining whether to protect socially valu-
mulation, to the name or trade mark of a product or business’5 and, indeed, able copies of earlier works. He emphasises that ‘mere copying will not
it also meant that harm was not limited to lost profits. suffice’—in a restoration or reconstitution of an earlier work, some ‘per-
Yet this speech was not a landmark in the sense of a turning point in sonal input or creation by the person restoring or reconstituting the work is
the tort. Rather its landmark status results from its clarification of its required’.195 Ong acknowledges that one must look to ‘a close examination
core concepts.6 It could be said that Lord Parker’s analysis is a landmark of how the copying took place’ when considering the originality of ‘faithful
in the historical sense of that word: it presented boundaries for the tort’s reproductions of antecedent works’.196 Thus, to determine if works that are
refinement.7 This chapter will review earlier case law on the tort of passing products of editing, recreation, preservation, conservation, or reconstruc-
off both to demonstrate the long-overdue need for this theoretical basis and tion are original, there are two important considerations: (1) the mode of
to underline that Lord Parker was clarifying rather than remodelling. In copying—if it requires skill, labour and judgment rather than being servile
addition, the facts of Spalding (which have never attracted sufficient atten- and performing an ‘easy mechanical function’, and (2) whether there is pub-
tion) and the litigation in full will be discussed, together with the subsequent lic interest in having intellectual labour and skill dedicated to the re-creation,
judicial and juristic reception of Lord Parker’s analysis. 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
II. THE DEVELOPMENT OF PASSING OFF IN THE NINETEENTH to be used to deny academic access to cultural artefacts.197 Lord Davey said
CENTURY: AN UNCERTAIN FRAMEWORK 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
Apparently derived from the tort of deceit,8 the tort of passing off can may be this principle: that UK copyright law ought to be interpreted, or if
arguably be traced back to the sixteenth century.9 However, it was in the necessary rewritten, to protect valuable copies of works where the skilled
nineteenth century that its real development took place.10 Throughout this author of those works has expended sufficient intellectual labour and skill.
4 I Tregoning, ‘What’s in a Name? Goodwill in Early Passing-off Cases’ (2008) 34 Monash
University Law Review 75, 78.

5 VII. POSTCRIPT
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 Moberly Bell’s campaign for newspaper copyright did not end with his suc-
Parma v Marks & Spencer Plc [1991] RPC 351, 368. Oxford English Dictionary, 2nd ed cess in Walter v Lane. On 5 April 1911 he was in his office at The Times in
(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’.
a state of great vexation. Sydney Buxton, President of the Board of Trade,
7 ibid: ‘The boundary of a country, estate, etc …’ It is noted that it has been used figura- had introduced a Copyright Bill before the Commons several days before; it
tively in law to mean a framework. included a provision that would allow newspaper articles to be reproduced
8 See, eg, Lord Westbury in Edelsten v Edelsten [1863] 46 ER 72, 78 ‘an action on the case
for deceit’.
in another newspaper with acknowledgement, unless accompanied by a
9 Dodderidge J in Southern v Howe (1618) Cro Jac 468 referred to an unreported case that conspicuous notice expressly forbidding reproduction. In addition to pub-
may have involved passing off. This has been identified as the 1584 case, Samford’s Case (see lishing a letter from an anonymous journalist in The Times complaining of
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 irrel-
the proposed Bill,199 Bell sat down to compose a letter to Buxton, d
ripping
evant dictum of a reminiscent judge’ (see FI Schechter, The Historical Foundations of the Law with outraged sarcasm.
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, Although a Unionist I am not one of those who has hitherto associated the whole
N Dawson ‘English Trade Mark Law in the Eighteenth Century: Blanchard v Hill Revisited’ of the Cabinet with a desire to plunder other roosts but when I see names such
(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. 195
10 For history see FI Schechter, The Historical Foundations of the Law Relating to Trade- Torremans (n 191) (2011) 188.
196 Ong (n 194) 176–77.
Marks (New York, Columbia University Press, 1925); C Wadlow, The Law of Passing-Off 197
(n 2), 18–33. However, note in the first edition of D Kerly The Law of Trade-Marks, T
rade-name, Rahmatian (n 154) 68.
198 Walter v Lane [1900] 552.
and Merchandise Marks (London, Sweet & Maxwell, 1894) 2: ‘The law on this subject can- 199
not be traced back further than the present century’ and Lord Diplock in Erven Warnink BV ‘The Copyright Bill and Journalism’ The Times (5 April 1911) 7.
v J Townend & Sons (Advocaat) [1979] AC 731, 740, ‘the action arose in the 19th century’.
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. 7
There is something to be said for it I admit and the next time I have the pleas-
ure 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 Spalding v Gamage (1915)
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 HAZEL CARTY
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,
I. INTRODUCTION
without the offending provision.
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 pro-
vide 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 pre-
sented 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 defend-
ant 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
200 TNL Archive, Moberly Bell Papers, Letter to Sydney Buxton, 5 April 1911, TT/MGR/ v Wilson (1877-8) LR 3 App Cas 376 (HL) where at 400 Lord Blackburn was not prepared ‘as
CMB/2. yet’ to agree as to the basis of passing off liability.
201 Moberly Bell (n 10) 314. 3 AG Spalding & Bros v AW Gamage Ltd [1915] 32 RPC 273.
228 Jose Bellido Spalding v Gamage (1915) 197
Both the problem, and the solution, of these attempts tended to depend on r epresentation was treated as the invasion of a right. It was the invasion of
distinct ways of imagining and projecting specific images and rationales for a right that was the ‘subject’ of the action.131
the law of copyright and designs that did not consider the practices that pro- That right had to be identified. Without referring to any authorities,132
duced the interface. In other words, the doctrinal and normative interpreta- he claimed that ‘the more general opinion’ is that the right was a right of
tion of the House of Lords’ decision tended to raise more questions than it property and that (‘if a right of property at all’) the choice for the courts
answered. While these doctrinal and legislative trajectories of intellectual seemed to be between property in the mark and property in ‘the busi-
property categories can be traced retrospectively, this is not the place to ness or goodwill likely to be injured by the misrepresentation’.133 Noting
do so—it is sufficient to observe that the patina of sophistication and inac- that the first possibility had been expressly rejected by Lord Herschell in
cessibility of the case was exacerbated as committees and judges began to Reddaway,134 Lord Parker stated his own ‘strong reasons’ for preferring
abstract it from its historical roots. the latter possibility. These were that: passing off protected beyond mis-
Curiously enough, Lionel Heald, QC, a barrister involved in the case representations involving a name or mark or get-up (as was indeed the
but prevented from arguing it before the House of Lords by war service, case in Spalding itself); Reddaway should be understood not as protecting
noticed this problem in the context of the copyright recommendations given property in the descriptive term itself, but rather imposing liability based
by the Gregory Committee.145 Similarly, another barrister on the defence on the deceptive use of that term; the property even in so-called common
team whose participation was also affected by war service, Alain Daubeny law trademarks was always accepted to be ‘transitory’, requiring continued
Russell-Clarke, raised the point in a conference at the Society of Arts.146 distinctiveness in the eyes of the public.135
He noted that: 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
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 was highly likely that Lord Parker accepted that goodwill was a property
contribute substantially to the income of copyright owners and their licensees. right.136 This can be claimed because in his earlier discussion of the tort
The merchandising rights in, for example, Mickey Mouse, Peter Pan, Captain in Burberrys he had expressly identified goodwill as property.137 Secondly,
Hook, Popeye the Sailor, Mary Poppins or even Pinky and Perky, to mention though Lord Parker referred to ‘business or goodwill’, it is contended that
only a few, are commercially valuable, and characters such as these are frequently any reference to business in his judgment should be understood as shaped by
copied in the round as in statuettes or toys, or in the flat as ornamentation upon a the definition of goodwill. Goodwill—customer connection—was a concept
wide variety of articles by persons desirous of ‘cashing in’ on their popularity.147 with which the courts had become familiar when describing the phenom-
Perhaps it should be added that it was precisely the way in which the com- enon of customer attraction in commercial, tax and partnership contexts.138
mercial opportunities were seized, and the intangible property channelled Indeed, a few years before Spalding it had been defined in Commissioners
and exploited, that had triggered the conflict. It should also be noted that of Inland Revenue v Muller & Co’s Margarine Ltd139 and accepted
a recurring observer, The Disney Organisation, was keenly interested in
requesting meetings to discuss any possible amendments to the law that 131 [1915] 32 RPC 273, 284.
could reform the design–copyright interface. Their efforts can be seen not 132 Indeed Tregoning, ‘What’s in a Name?’ (n 4) asserts that this landmark statement on
only in the Gregory Committee (1952),148 but also throughout the months goodwill ‘on the face of it … is a rather curious statement’ because of the lack of authority and
the equivocation (78).
leading up to the passage of the 1956 Copyright Act,149 and in the work of 133 [1915] 32 RPC 273, 284.
the Johnston Committee and its aftermath in the 1960s.150 Their ubiquitous 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.

145 Lionel Heald to Peter Walker, 5 July 1956, BT 209/577, NA. 137 Tregoning, ‘What’s in a Name?’ (n 4) 80, asserts that goodwill had been recognised as
146 AD Russell-Clarke, ‘Design Plagiarism and Copyright Reform’ (1968) 116 Journal of the property by the time of Potter v Commissioner of Inland Revenue [1854] 156 ER 392.
Royal Society of Arts 737–49. 138 Wadlow The Law of Passing-Off (n 2) 27, notes goodwill was mentioned in early
147 Russell-Clarke (ibid) 742. passing off / trademark cases ‘because disputes were particularly likely to arise between former
148 Report of the Gregory Committee on the Law of Copyright (n 140) 127. partners or the vendor and purchaser of a business’.
149 Walt Disney Organisation: overlapping of artistic copyright and copyright by way of 139 Lord Macnaghten in CIR v Muller & Co’s Margarine Ltd [1901] AC 217, 223–34: ‘It
registered design (1956), BT 209/577, NA. is the benefit and advantage of the good name, reputation, and connection of a business. It is
150 Report of Departmental Committee on Industrial Designs (Cmnd 1808) (1962) the attractive force which brings in custom’. RG Bone, ‘Hunting Goodwill: A History of the
(Johnston Committee Report) 123; see also Walt Disney Productions Ltd: memorandum
Concept of Goodwill in Trademark Law’ (2006) Boston University Law Review 547 ‘the con-
ommittee on Industrial Designs Report (Cmnd 1808), BT 209/429, NA.
relating to C cept of goodwill … reified the economic value associated with patterns of repeat purchasing’.
198 Hazel Carty King Features Syndicate (1940) 227
to be ‘inseparable from the business to which it adds value’.140 Like the calls to reform the law, and especially section 22(1). From that perspective,
court in Muller, Lord Parker stressed that the right he had identified was the claim that this case constitutes a doctrinal landmark is problematic.
transitory, and like Muller he stressed the link between the right he espoused The case was certainly prominent, throughout the remaining decades of the
and customer connection—he noted that there had to be distinctiveness in twentieth century, in discussions concerning the statutory changes affecting
the eyes of the public even where common law trademarks were involved. the overlap between copyright and the law of designs. It was discussed in
It is interesting to note that business or goodwill was a phrase subsequently almost all the committees that were formed to consider the law of patents,
used in Advocaat by Lord Diplock, who within his judgment highlighted copyright and designs in the following decades. For instance, just a few
the importance of goodwill, identified as ‘a broad concept’ and expressly years after the decision of the House of Lords, the Swan Committee, which
drew on the definition of goodwill provided by Lord Macnaghten in Muller. had been appointed in 1944 to consider the Patents and Designs Acts, noted
Thus, for Lord Diplock, also, the notion of ‘business or goodwill’ seemed to what they saw as the anomalous consequences of the case, drawing atten-
be contained within the parameters of customer connection.141 tion 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
C. Spalding as Clarification 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
Lord Parker highlighted that goodwill was the right being protected and artistic work to retain his remedies under the Copyright Act 1911, after he
linked that right to the misrepresentation which had always been central to has consented to the reproduction of the whole or a substantial part of his
the tort. In so doing, the tort was confirmed to be not limited to trademark work as a registered design’.140 Such critical examination came a decade
or trade name issues, not limited to source misrepresentations and—though later, when the Gregory Committee was appointed to report on desirable
this was not debated within the House of Lords but rather the subsequent changes in the law of copyright. Interestingly, the Committee described
inquiry as to damages—not limited to lost profits142 (the defendants had the case as having created a ‘no-man’s land’ on the borderline between copy-
tried to argue that damages for reputation loss could only be awarded in right and designs.141 In fact, this might have been one of the best descrip-
trade libel but this was rejected by the Court of Appeal in the inquiry as to tions ever given of the decision, which appeared to have created a boundary
damages). However, this analysis was not a reworking of the tort but rather that ‘effaced all boundaries’.142
a clarification of the elements of the tort that had been present in the unclear While the ambiguities of the interface between copyright and design cre-
development of the tort over the nineteenth century. Indeed, it should be ated a fertile ground for legal scholars to produce writings about ‘ doctrine’,143
noted that his speech received the complete approval of the other members both the Gregory Committee and subsequent attempts to r egulate this inter-
of the House of Lords.143 face shared a basic problem: they have tried to regulate it by looking at
Lord Parker’s focus on misrepresentations calculated to deceive mir- distinctive categories of intellectual property law, and thus failed to grasp
rors the accepted view of the tort by the end of the nineteenth century. His how these categories have come together practically and contingently.144
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 139 Final Report of the Departmental Committee (Swan Committee) on the Patents and
in Reddaway (and before him Turner LJ in Burgess v Burgess)144 but also Designs Acts (Cmd 7206), paras 311–13.
contended that cases such as Edelsten v Edelsten and Iron-Ox Remedy Co 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
140 Lord Lindley: [1901] AC 217, 235; Lord Macnaghten, 223: ‘Goodwill has no independ- from Scratch: Concepts of Order in No Man’s Land’ in B-R Hüppauf (ed) War, Violence and
ent existence. It cannot subsist by itself. It must be attached to a business’. the Modern Condition (Berlin, Walter de Gruyter, 1997) 46–64.
141 [1979] AC 731, 741–42. 143 F Honig, ‘Lettre de Grande-Bretagne’ La Propriété Industrielle (October 1942) 174–75;
142 If goodwill was the right being protected then that would mean that the tort must protect FE Skone James, Copinger and Skone James on the Law of Copyright (London, Sweet &
that business goodwill in a wide sense, not just lost profits. Maxwell, 1948) 71–75; AD Russell-Clarke, Copyright and Industrial Designs (London,

143 Lord Atkinson: ‘I concur in it entirely’; Lord Sumner: ‘I am in entire agreement [with Sweet & Maxwell, 1951) 238–41; ‘Discussion on Russell-Clarke’s paper’ Transactions of the
Lord Parker’s statement of law]’; Lord Parmoor: ‘I concur in the opinion of Lord Parker’: Chartered Institute of Patent Agents, Session 1950–51, 159–60.
[1915] 32 RPC 273, 288; 288; 289, respectively. 144 The recommendation of the Gregory Committee led to section 22 of the 1911 being
144 [1853] 43 ER 90. superseded by section 10 of the Copyright Act 1956.
started. During the appeal, the Kleemans’ premises suffered the effects of the Ltd v Co-operative Wholesale Society Ltd showed that actual passing off
September Blitz.133 need not be proved as a condition precedent to equitable relief.145 Indeed,
The war also disrupted the strategies developed by the litigants, affecting Lord Parmoor expressly agreed with this proposition.146
their legal representation. For instance, one of the barristers who had helped Further, the view that the tort protected beyond standard source mis-
the defendants from the very beginning, Alan Daubeny Russell-Clarke, went representation also appeared uncontroversial to the other members of the
on war service and had to be replaced when the case was heard at the Court judiciary involved in the case (as it had to Swinfen Eady J in Teacher
of Appeal.134 By the end of the summer of 1941, just after the law lords v Levy).147 Though Phillimore LJ accepted that it was ‘a more subtle and
finally decided the case, Japan was on the verge of declaring war. This point possibly more injurious passing off’148 none of the judges in the Spalding
is significant because the controversy, after all, involved a competitive con- litigation had any problem in identifying the defendant’s misdescription as
flict over Japanese export trade.135 That same year, the unsuccessful party, being within the tort.149 What is less certain, of course, is how far Lord
the Kleemans, embarked on a period of adjustment and decided to make a Parker intended to expand the misrepresentations, relevant to the tort. His
change to their business. Immediately after the decision, and possibly antici- speech can be read as simply referring to one particular form of misde-
pating wartime import restrictions, they switched from being toy importers scription (and indeed this was suggested by Lord Fraser in Advocaat).150
to become toy producers.136 If we look at the other parties the syndicate con- However, Lord Parker did note that the issue was whether the use of the
tinued with the same innovative strategies to exploit their characters, rely- mark, name or get-up was calculated to deceive, it being ‘impossible to
ing, on the same agent, Frank C. Betts, to continue expanding in Britain.137 enumerate or classify all the possible ways in which a man may make the
Betts eventually found help in developing these merchandising ventures by false representation relied upon’.151 It was this open door that Lord Diplock
enrolling a former Disney employee, Walter Tuckwell, who would become exploited in Advocaat, stressing that Lord Parker had in fact recognised
the leading figure of character merchandising in Britain in the 1960s.138 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
V. CONCLUSION passing off occurred but also where the representation was not made
fraudulently, ‘the representation … [being] treated as the invasion of a right’.
The decision of the House of Lords was welcomed by King Features Syndi- As for the common law, Blofeld v Payne confirmed that, even where no
cate and similar syndicating and merchandising enterprises. However, the specific damage was proved, the plaintiff was entitled to nominal damages,
judges’ confusing and exceedingly complicated reasoning only highlighted ‘the action … treated as one founded on the invasion of a right’.154 As for
the problems of relying on section 22(1) of the Copyright Act to regulate the the nature of this right, if goodwill was the right at the heart of the tort
interface between copyright and design. The obfuscation of the test of autho- then it was hardly surprising that Lord Parker identified it as a property
rial intention, and in particular the reality that syndicated cartoons were right, transitory in nature. This chimed with the view of the courts in rela-
also industrially produced, meant that there were in the coming years many tion 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
133 ‘My Log’ Games & Toys (June 1941) 38–39.
134 GSW 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. 145 [1863] 46 ER 72; [1907] 24 RPC 425 (a decision of Parker J).
136 ‘My Log’ Games & Toys (June 1941) 38–39; see also ‘Kleeman Progress’ Games & Toys 146 ‘The real issue is, did the respondents … make representations calculated to lead to the
(February 1952) 60. belief that these footballs were the “Improved Sewn Orb Football”’: [1915] 32 RPC 273, 289.
137 ‘Popeye: Applications for Licences’ Games & Toys (February 1959) 149; ‘Frank C Betts 147 ibid.
gives some marketing tips to freelances’ World’s Press News (7 September 1951) 35. 148 [1914] 31 RPC 125, 138.
138 ‘Frank Betts’ Games & Toys (October 1963) 58; ‘Tuck—Prince of Character Merchan- 149 Lord Parmoor expressly agreed to this [1915] 32 RPC 273, 289.
dising’ Games & Toys (September 1960) 82–83; WF Tuckwell ‘The Paris Fair, 1952’ Games 150 Advocaat [1979] AC 731, 751–52.
& Toys (July 1952) 74; ‘Character Merchandising’ Games & Toys (November 1956) 76; 151 [1915] 32 RPC 273, 284.
‘Popeye Character Merchandising: Walter F. Tuckwell’ Games & Toys (September 1963) 95; 152 [1979] AC 731, 741.
AW Turner, Terry Nation. The Man Who Invented the Daleks (London, Aurum Press, 2011) 153 Lord Diplock in Advocaat, 741 noted that Reddaway v Banham did not provide ‘any
97; KD Brown, The British Toy Business: A History since 1700 (London, The Hambledon rational basis for an extension’.
Press, 1996) 167. 154 Littledale J [1833] 110 ER 509, 510.
is usually acquired’ and the exclusive right to goodwill could be vindicated reversed the decision of the Court of Appeal and restored the judgment of
‘if necessary by process of law’.155 Simonds J.128 Their Lordships held that the section was not capable of the
Moreover, the key idea that goodwill was the interest being protected, interpretation sought by the respondents.129 Either a work was excluded
though apparently innovative,156 can be seen to be built on previous case ab initio because at the time of its making it was used or intended to be
law. Lord Parker may have resolved ‘doubts’157 that goodwill was the right used as a design for an article to be reproduced in more than 50 copies, or
being protected, but he did not appear to believe that he was introducing it received the full protection of the Copyright Act including the exclusive
a new element to the tort. Rather, he purported to draw on what ‘some right to reproduce the drawing in the form of an article the design for which
authorities’ said the tort protected.158 Indeed, Tregoning contends that was capable of registration. If a drawing was intended by the author in its
early cases, such as Hogg v Kirby and Crutwell v Lye159 involve ‘a nascent inception as a design for an article to be multiplied by industrial process,
concept of goodwill arising from the protection of trademarks and busi- that drawing was excluded from protection under the Copyright Act.130
ness’ and draws attention to Lord Langdale’s discussion in Perry that the Thus, in effect, the interface between copyright and design regimes could
defendant has no right deceptively to use the plaintiff’s mark or name ‘in be somehow deferred by reference to the author’s intention.131 It should be
order to attract to himself that course of trade or custom’ which otherwise recalled that due to Segar’s death, there was no evidence available about the
would have gone to the plaintiff.160 Again, Lord Hatherley in Wotherspoon cartoonist’s intention at the time he first drew Popeye.132
referred to the plaintiff having acquired ‘a name in the market’, customers The careful observer will notice that the timeline of the case coincides
being pleased with the articles bearing the name.161 with the first few years of the Second World War. While it is difficult to
Further, though for a while the courts seemed prepared to accept property speculate on the precise impact the war had on the proceedings, it is never-
in the trade mark or name, Lord Diplock contended in General Electric Co theless important to note that war conditions did affect both parties. Under
Ltd (USA) v The General Electric Co Ltd (when reviewing the history of such these extraordinary circumstances, the fact that they persevered and con-
marks) that the property in the common law trademark had ‘special charac- tinued their way up to the House of Lords is striking in itself, evidence
teristics’. Essentially the property was based on the recognition by purchas- of the unique characteristics of the case. When the plaintiffs got into the
ers that the mark indicated source and quality so that it arose through use Chancery Court initially, German air attacks on mainland Britain had just
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 Maugham) at 429; ‘When is that negative to be satisfied? (Viscount Maugham) at 427; ‘Section
the mark ‘in an extensive trade’ and had acquired ‘high reputation’.163 Thus 22 is not a very perfect example of drafting’ (Lord Wright) at 440; or ‘[i]t has been recognized
McKenna, reviewing US and English case law, concludes that the courts did 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.
not shift from protecting the trade mark itself to protecting the producer’s Decision’ (1941) 40 Patent and Trademark Review 2, 23–28.
128 ‘Copyright Case Ended’ Games & Toys (July 1941) 63.
129 According to Viscount Maugham, ‘[t]he only result of giving s. 22 its most natural mean-
155 Muller [1901] AC 217, 223. ing is that this right under the Act of 1911 may continue, even though at some time after the
156 Wadlow, The Law of Passing-Off (n 2) 37, ‘an inspired innovation’. work in question was first created the author or someone deriving title from him has thought fit
157 Star Industrial v Yap Kwee Kor [1976] FSR 256, 269; Advocaat [1979] AC 731, to use the work or a design taken from the work as a model or pattern to be multiplied by an
741: ‘finally resolved’, Reckitt & Colman Products v Borden Inc [1990] RPC 340, 417 industrial process’ in King Features Syndicate, Inc (n 126) 431 (Viscount Maugham).
(Lord Jauncey). 130 ‘My Lords, I cannot doubt that the person so referred to is the author, and that the
158 In 1912 defendants’ counsel in Dental Manufacturing Co Ltd v de Trey cited Lord time is the time when the design comes into existence’ in King Features Syndicate, Inc (n 126)
Parker’s analysis in Burberrys that the protection of goodwill was ‘the object of a passing off 427–28 (Viscount Maugham); ‘I think the governing element in the definition [of s 22] is the
action’ and there is a subtle appreciation of that concept evident in the speech of Buckley LJ [1912] use or intention to use the design as a model or pattern for industrial multiplication’; 440 (Lord
3 KB 76, 80. This suggests that the concept was not novel. Wright); see also A Goodman ‘The Law of Copyright’ (1957) 10 Current Legal Problems
159 [1803] 32 ER 336 and [1810] 34 ER 129, respectively. 1, 168–83 at 182.
160 Tregoning, ‘What’s in a Name?’ (n 4) 91. He notes: ‘damage to trade and profits would 131 This was also identified by the patent barrister, Peter J Stuart Bevan, in the Opinion given
invariably mean damage to goodwill and this was certainly recognised in the 19th century’ (83). to Britains, Ltd, a toy manufacturer, that was presented to the Gregory Committee; see ‘Memo-
161 [1872] LR 5 HL 508, 514. randum settled by Peter J Stuart Bevan, 23 August 1951’ in BTHA Archives.
162 General Electric Co Ltd (USA) v The General Electric Co Ltd [1973] RPC 297, 326–26. 132 As mentioned above, Laddie, Prescott and Vitoria highlighted this when they suggested
163 [1863] 46 ER 72. And even though in M’Andrew v Bassett 46 ER 965 the defendant had that ‘it would have interesting if the artist in the Popeye case had been in a position to give
argued that the plaintiff’s mark lacked ‘general notoriety and reputation in the market’, Lord evidence; unfortunately, he was no longer alive’: in Laddie, Prescott and Vitoria, The Modern
Westbury stressed that the mark had obtained ‘acceptance and reputation’. Law of Copyright (n 43) 154.
Copyright Act (1911) again took centre stage in the decision.118 Scott LJ goodwill as property but rather ‘goodwill always was the focus’;164 that
and Clauson LJ held that section 22(1) was a complete bar to the action. that the mark owner’s interest, both at law and equity, was ‘in its return-
Clauson LJ, giving judgment, noted that the plaintiffs’ licensees became ing customers’.165 Interestingly, he cites an American case from 1847,
qualified to register the three-dimensional representations of the figures Partridge v Menck,166 where the court noted that ‘the complainant had a
in question as designs under the Patents and Designs Acts and that it was valuable interest in the goodwill of his trade or business’ and was entitled to
clear that the design was used by the licensees as a model or pattern to protection against any other person, who attempted to ‘pirate upon the
be multiplied by an industrial process.119 Underpinning the reversal was goodwill of the complainant’s friends or customers … by sailing under his
the tension between two systems for the protection of intangible property. flag …’167
In other words, Clauson LJ’s judgment flagged policy issues derived from However, even though this was a long-overdue clarification, it was some
the interpretation of section 22 of the Copyright Act.120 On the one hand, time before Lord Parker’s analysis was expressly recognised as settling the
the discrepancy between design and copyright law could be seen in terms law on passing off. Indeed, it is worth noting that The Times law report
of two systems of property hinging on different kinds of exploitation (eg of the decision simply focused on the misrepresentation discussion, mak-
selling versus manufacturing). On the other hand, the practical consequence ing no reference to the concept of goodwill, let alone Lord Parker’s discus-
of bringing the systems together is that they could potentially both refer to a sion of that concept.168 And in the year following the decision, Salmond on
different thing that could be ‘owned’. According to some reporters, privileg- Torts, the leading tort textbook, simply added Spalding to a footnote on
ing design registration meant limiting copyright.121 Millington v Fox (that intention to deceive was not required).169 Though
While the scope and even the definition of the property was obviously by 1922 Sebastian, in his text on trademarks, drew on the discussion in
affected by the perspective taken on it, the interesting issue here was that Spalding,170 in the early decades after the decision, the courts often appeared
the drive towards design involved an assessment of the licensees’ activities. content to continue with the mantra that passing off cases were simply
If they had not shielded their licence in the proper manner,122 copyright questions of fact.171 And this might be so even where the case involved an
law could not be invoked and the plaintiffs lost their right to restrain the unusual claim in passing off, as in Harrods Ltd v R Harrod Ltd (1924),
defendants.123 In dissent, Luxmoore LJ agreed with the first instance deci- a case involving non-competing parties and a false suggestion of business
sion, but limited the injunction granted.124 Consistent with his decision on connection.172
the Mickey Mouse case a decade earlier, Luxmoore LJ reiterated that there However, by the 1930s there was evidence in the reported case law that
was no copyright in a character as such.125 some sort of framework for the tort was being sought (perhaps because the
The plaintiffs appealed to the House of Lords, where the key question was boundaries of the tort were increasingly being questioned in non-standard
again the meaning of section 22(1) of the Copyright Act.126 This was not a claims).
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
164 McKenna, ‘The Normative Foundations of Trademark Law’ (n 19) 1886 fn 211.
165 ibid, 1858 fn77.
118 King Features Syndicate, Inc v O & M Kleeman, Limited [1940] 1 Ch 806, 817–21 166 5 NY Ch Ann 572.
(Clauson LJ), 826–31 (Luxmoore, LJ), 831–33 (Scott LJ). 167 Wadlow The Law of Passing-Off (n 2) 37, refers to it as his ‘inspired innovation’.
119 King Features Syndicate, Inc (n 118) 817–21 (Clauson LJ), 826–31, at 818. 168 The Times Law Report, 23 March 1915.
120 King Features Syndicate, Inc (n 118) 821 (Clauson LJ); see also ‘Popeye Dolls Not 169 JW Salmond, The Law of Torts: A Treatise on the English Law of Liability for Civil
Copyright’ (1939) The Newspaper World (13 July) 12. Injuries, 4th edn (London, Stevens & Haynes, 1916) 509 fn 10.
121 ‘Limits of Copyright’ The Law Journal (13 July 1940) 12. 170 LB Sebastian, The Law of Trade Mark Registration, 2nd edn (London, Stevens & Son
122 ibid. Ltd, 1922). Parker’s earlier analysis in Burberrys was also noted.
123 King Features Syndicate, Inc v O & M Kleeman, Limited (n 118) 817–21 (Clauson LJ); 171 Eg Masson Seeley v Embossotype [1924] 41 RPC 160. The defendant had copied the
826–31; especially 820–21. plaintiff’s price list and product names. Tomlin J saw it as obvious that this was passing off.
124 King Features Syndicate, Inc v O & M Kleeman, Limited (n 118) 831 (Luxmoore LJ). 172 [1924] 41 RPC 74, 87. Lord Diplock in Advocaat contended that Spalding ‘led the way
125 King Features Syndicate, Inc v O & M Kleeman, Limited (n 118) 826 (Luxmoore LJ). to recognition by judges of other species of the same genus’ in cases such as this. It should be
126 King Features Syndicate, Inc, v O & M Kleeman, Limited [1941] AC 417, 421–32 noted, however, that Spalding was not referenced in the Harrods case: the court focused on
(Viscount Maugham), 432–34 (Lord Russell of Killowen), 434–41 (Lord Wright), 441–45 fraud and case law involving the misleading use of similar business names. However, though
(Lord Romer) and 445–52 (Lord Porter). goodwill as a concept was not mentioned, Sargant LJ (the judge at first instance in Spalding)
127 This struggle was evident throughout the decision. For instance, when the Lords noted stressed the need for injury to property and that ‘property’ included ‘the trade reputation of
that: ‘I am far from suggesting that the section is an example of perfect drafting’ (Viscount the Plaintiffs’.
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 prop-
erty’. 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 involv-
ing 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 mis-
representation178 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.

174 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). Betts attracted enquiries by placing an advert in Games & Toys just a few weeks
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.
after the decision of the Court of Appeal. Photograph courtesy of The British
179 [1939] 3 All ER 513. Library
180 ibid, 518 ‘the right which is infringed in a passing of case is one which was regarded at
In May 1940, the case went to the Court of Appeal, which reversed the
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 earlier decision and dismissed the plaintiffs’ action.117 Section 22(1) of the
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] 117 ‘Popeye, The Sailor: Appeal in Copyright Action’ The Times (9 July 1940) 9.
AC 112, 126.
182 1954 SC 35 (Court of Session Outer House), 37–38.
apply to designs capable of being registered under the Patents and Designs Ltd v Mulhens183 both cited Spalding as did McNair J in Sim v Heinz. He
Act, 1907, except designs which, though capable of being so registered, noted, in agreement with plaintiff’s counsel: ‘in Lord Parker's speech … is to
are not used or intended to use as models or patterns to be multiplied by be found really the whole of the essential law relating to the action of passing
any industrial process’ [author’s emphasis]. The defence counsel argued off’.184 Hodson LJ in the Court of Appeal in Sim declared that Spalding was
that the plaintiffs’ sketches were capable of design registration and that ‘the leading case on this branch of the law’.185 It is not surprising, therefore,
their failure to register their designs forced the case to fall outside copy- that by 1962 Wilberforce J in Norman Kark Publications Ltd v Odhams
right law.110 Press Ltd186 referred to the basis of the action as being contained in Lord
While this three-pronged defence seemed particularly strong, it did not Parker’s speech, and by 1973 Lord Diplock in Star Industrial Company
succeed. Mr Justice Simonds, in giving judgment, stated that the plaintiffs Ltd v Yap Kwee Kor187 stressed that Lord Parker’s test had laid to rest
owned copyright of the Popeye drawings as artistic works and that the ‘whatever doubts there may have previously been as to the legal nature of
defendants had infringed the copyright in artistic works.111 On the point the rights which were entitled to protection by an action for '“passing off”
that the defendants’ dolls, brooches and mechanical toys were copied from in courts of law or equity’. Though courts did not necessarily cite Spalding,
material produced by a licensee—Cecil Coleman—and not the plaintiffs, in effect the classical trinity focusing on misrepresentation and harm to
the judge considered it an ‘unattractive’ and ‘ill-founded’ argument.112 goodwill was now established. Thus, in Advocaat (1979) Lord Diplock
He concluded that this did not debar it from being classed as a copyright found ‘a rational basis for the modern tort’ in Lord Parker’s speech in
infringement as it could be classified as a case of indirect copying.113 Spalding.188
Similarly, the reference to section 22 (1) of the Copyright Act failed. Start-
ing from the presumption that the plaintiffs’ cartoons originated within the
copyright regime, the judge concluded that the cartoons as artistic works IV. CONCLUSION
were still protected by the Copyright Act and were not capable of regis-
tration as designs, therefore negating the applicability of section 22(1).114 Having provided clarity, Lord Parker’s analysis was ultimately used by
Interestingly, just a few days after the decision, Cecil Coleman Ltd hurriedly Lord Diplock in Advocaat (via the so-called drinks cases) to establish
announced that they held a licence and that they would be glad to send full extended passing off. This removed product misrepresentation from the
particulars of this merchandise to interested buyers.115 Similarly, Frank C anchor of source misrepresentation, recognising shared ‘product goodwill’
Betts placed a full-page advert in the most important trade journal, Games attached to a descriptive term which had come to indicate a distinct and
& Toys, stating that Popeye was the ‘copyright figure of King Features Syn- recognisable product.189 For this development Lord Diplock relied on the
dicate, Inc’ and that the syndicate was ‘prepared to grant licences for the fact that goodwill was a broad concept and Lord Parker, by suggesting mis-
manufacture and marketing of toys’.116 This urge to publicise confirms that representations beyond standard source passing off,190 had revealed a wider
merchandising operations had reached a key stage for the successful exploi- genus of actionable wrong.191
tation of the character. 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
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].
183 [1954] Ch 50, 94.
110 King Features Syndicate, Inc (n 95) 527; this argument was similar to the defence raised 184 [1959] RPC 75, 79.
in the US case mentioned above; see ‘Brief in Support of Motion to Dismiss’ 18 in King Features 185 ibid, 82.
Syndicate Inc v Rudolph Fleischer et al, Southern District of New York Equity, Case Docket 186 [1962] 1 WLR 380 Wilberforce J, 383.
#26-397, NARA. 187 [1976] FSR 256 PC, 269.
111 King Features Syndicate, Inc (n 95) 538.
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’.
113 King Features Syndicate, Inc (n 95) 532 (‘It must be immaterial whether the infringing
190 Its ‘classic form’ (ibid 739).
article is derived directly or indirectly from the original work’) (author’s emphasis). 191 ibid, 741.
192 Danckwerts J in J Bollinger and Others v Costa Brava Wine Co Ltd [1960] Ch 262
115 ‘Popeye Novelties’ Games & Toys (April 1940) 30.
116 ‘Popeye: All enquiries to Frank C Betts Ltd’ Games & Toys (April 1940) 51.
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.
tort now covering a wider area of protection against ‘unfair competition’.193 price than the ones already sold in London.101 Furthermore, parallel impor-
But Lord Parker’s analysis—the link it requires between the misrepresentation, that is, the possibility of overcoming the licensing arrangements
tation and the valuable intangible of goodwill—prevents this from being developed by the claimants by bringing toys made in Japan, was thought
the case.194 This limiting effect—and its importance—was acknowledged an advantageous way to proceed cheaply and unnoticed since a member
by Lord Diplock in Advocaat. He accepted, even as he expanded the tort, of the Kleeman family worked at the British customs office.102 Curiously
that protection was to be granted within the context of injured goodwill.195 enough, there was a competitive element in the case as the two licensees
To do otherwise would run the risk of ‘hampering competition by provid- already enlisted by Frank C Betts were well-known British toy companies
ing civil remedies to every one competing in the market who has suffered that also imported toys from Japan.103 The first, Moritz & Chambers, was
damage to his business or goodwill in consequence of inaccurate state- given a licence to sell mechanical Popeye toys, and claimed to be ‘the leading
ments of whatever kind that may be made by rival traders about their own Japanese importer’.104 The second, Cecil Coleman Ltd, held a licence to sell
wares’.196 brooches,105 and was often described as a ‘direct importer from Japan’.106
A similar view can be found in the speeches of Lord Scarman in Just a few months before the case was heard, one of their agents returned
Cadbury Schweppes Pty Ltd v Pub Squash Co Pty Ltd197 and Lord Neuberger from a six-month buying tour in Japan.107
in Starbucks (HK) Ltd v British Sky Broadcasting Group Plc.198 Thus the This set of circumstances was relevant because a substantial part of
boundaries set in Spalding continue to prevent the transformation of the Kleeman’s defence relied on issues concerning these licensing operations.
tort into one protecting against misappropriation or unfair competition or First, the defence launched a denial that any copyright existed in the c artoons
even the more limited reconfiguring of passing off into a general commercial per se. Second, it focused on the fact that the defendants’ copies had been
misrepresentation tort. derived from toys produced by one of the licensees (Cecil Coleman) and
not from the plaintiffs’ cartoons. This enabled them to deny any infringe-
ment 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;
193 In Bollinger Danckwerts J labelled the tort ‘unfair competition’ (284); Cross J in Vine V Page Copping, Expansion of Japan’s Foreign Trade and Industry (Washington, United States
Products Ltd referred to taking the tort ‘into the unmapped area of “unfair trading”’ (427). Government Printing Office, 1937).
194 Though he provided a more elaborate framework for the tort, this still had misrepresen- 104 ‘Moritz & Chambers Limited’ Games & Toys (September 1937) 108–09.
tation and likely harm to goodwill at its heart. 105 ‘Sleeping—Popeye: by Cecil Coleman, Ltd’ Games & Toys (April 1939) 1; ‘Admission of
195 [1979] AC 731, 740. Facts by the Appellants’ in King Features Syndicate Incorporated (n 96).
196 Lord Diplock ibid, 742. 106 ‘Communication with Japan’ Games & Toys (August 1937) 25.
197 [1981] RPC 429, 490:‘competition is safeguarded by the necessity for the plaintiff to 107 ‘Cecil Coleman, Ltd’ Games & Toys (June 1938) 1; see also C Coleman ‘How
prove that he has built up an intangible property right’. Sino-Japanese will affect Japanese Exports to England’ Games & Toys (October 1937) 62.
198 [2015] UKSC 31; [2015] 1 WLR 2628. Lord Neuberger referred to the balancing exer- 108 King Features Syndicate, Inc (n 95) 527.
cise—between the public interest in free competition and that in the protection against unfair 109 Section 22(1) of the Copyright Act (1911) read as follows: ‘This Act shall not apply to
competition at [61]. designs capable of being registered under the Patents and Designs Act, 1907, except designs
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 inter- 8
ests 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 & King Features Syndicate, Inc and
Chambers were incorporated to the claim.95 Such an incorporation would
probably have made the complex issues bound up in the relationships Betts v O & M Kleeman Ltd (1940)
between licensors and licensees more visible.
In fact, the claim had been preceded by a series of events that put the
JOSE BELLIDO*
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
I. INTRODUCTION
of Popeye: Paramount Pictures.96 After receiving a letter from Frank C Betts
S
offering them an array of options,97 the company dismissed it, respond-
HORTLY BEFORE HIS retirement, the eminent barrister Thomas
ing that they were not interested in handling ‘the line under the conditions
Blanco White observed that the decision in King Features Syndicate,
mentioned by you’.98 The Kleemans seemed to have been acting on the legal
Inc and Betts v O & M Kleeman Ltd (1940)—more commonly known
advice that they could lawfully make Popeye articles without any licence.99
as the ‘Popeye’ case—had a strong influence on his lengthy experience at the
The rejection of the offer in such a way would have seemed outrageous to
patent bar. He explained that the case, which revolved around how unli-
Betts, and the Kleeman’s response seems to have contributed to the plain-
censed toys infringed on the copyright of comic strips, had made him and
tiffs’ decision to litigate. In other words, the conflict arose from the rejection
his colleagues aware of the loopholes in section 22 of the 1911 Copyright
of the offer and, more importantly, from Kleeman’s subsequent challenge
Act. Those loopholes, in turn, highlighted the complexity underpinning the
in commissioning Popeye toys and the brooches from Japan via unofficial
law of copyright and designs.1 Similarly, a decade later, Sir Hugh Laddie
channels. Such a move was likely viewed as a real provocation that threat-
highlighted the case in a famous lecture that concerned the expansion of
ened 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 * I would like to thank John Maher and Cara Levey for their help. In addition, I am grate-
ful 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
95 King Features Syndicate, Inc v O & M Kleeman, Limited [1940] 1 Ch 523, 529. Archive, Senate House, University of London); JTP (Jim Tully Papers, Charles E Young
96 O & M Kleeman Ltd to Paramount Films, March 11, 1937 in King Features Syndicate Research Library, University of California, Los Angeles); MSU Spec Coll Comic Art (Michigan
Inc. and another v O & M Kleeman (1941) HL/PO/JO/10/10/1236/1211, PA. State University, Special Collections, Comic Art, East Lansing, Michigan); MUML (McMas-
97 FC Betts to O & M Kleeman Ltd, March 13, 1937 in King Features Syndicate Inc ter University, Mills Memorial Library, William Ready Division of Archives and Research
(ibid). Collections;, Ontario, Canada); NA (National Archives, Kew, United Kingdom); NARA
98 O & M Kleeman Ltd to FC Betts, March 15, 1937 in King Features Syndicate Inc (National Archives and Record Administration, New York); NYPL (New York Public
(ibid). Library); NYSA (New York State Archives, Albany); OSU (Ohio State University, Billy Ireland
99 EJ MacGillvray, ‘Case Comment: King Features Syndicate v Kleeman’ The Author Cartoon Library and Museum); PA (Records of the House of Lords, Parliamentary Archives,
(Summer 1940) 104–05 at 104. London); RKP (Routledge and Kegan Paul, Special Collections, University of Reading);
100 ‘O & M Kleeman; the leading house in the Japanese Trade for originality and service. Our WBHRC (William Bradley Literary Agency Records, Harry Ransom Center, University of
Mr Max Kleeman has just returned from Japan with a host of new lines never before seen in Texas); WRHP (William Randolph Hearst Papers, Bancroft Library, University of California
this country. See our exclusive ranges at Manchester, Birmingham, Glasgow, Leeds, N ewcastle’ at Berkeley).
Games & Toys (January 1929) 92. See also ‘Foreign Piracy’ The Toy Trader (August 1938) 4. 1 TA Blanco White, ‘Fifty Years in Patents’ (1987) European Intellectual Property Review 311.
206 Jose Bellido King Features Syndicate (1940) 219
copyright over the twentieth century.2 More recently, the case has surfaced items or clothing.91 The novelty space meant that those who were inter-
again, helping the UK Supreme Court to decide on what was then the first ested in these arrangements had to compete with others in order to obtain
decision the Court delivered on copyright law.3 The ‘Popeye’ case, in other a licence for a particular line. That novelty and its value depended on the
words, has become a central trope in intellectual property. Courts in the exposure generated by the character’s circulation in a given newspaper, and
UK and beyond have signalled it as a decisive milestone in the history of by the launch of a related film version in Britain; the syndicate operated on
copyright4 and labelled it a ‘landmark’ decision.5 There is, therefore, little the basis of having to close deals as soon as possible—to a greater or lesser
need to justify its appearance here. Situated at the interface between the degree, the value of the property was perishable because it could be dimin-
law of copyright and design, the case remains significant as it left open the ished or even destroyed by an unauthorised release.92 Other consequences
question of what demarcates the different branches of intellectual prop- of this particular understanding of novelty can also be distinguished. In legal
erty rights, and legal scholars still consider it key to grasping what they terms, the shift precipitated by merchandising practices meant that novelty
consider an unsettling overlap.6 Thus, they have embarked on a doctrinal in relation to toys became a geographical and temporal construct.93 In other
analysis of the complicated legislative history that in the twentieth century words, it was assessed by local traders, taking into account the future poten-
has attempted to make sense of the overlap.7 While this chapter incidentally tial of the cartoon or film character. Toy manufacturers contributed to this
addresses the particular economy of the interface between copyright and transformation because they realised that the most valuable toys were those
designs, it prefers to concentrate on the historical nuances of the controversy. that were ‘new’—that is, those that were first to incorporate cartoon or film
The argument here is that there is much to be gained in looking at the characters.94 This constitutive transformation of the property also triggered
background of the dispute, its emergence, and how it was litigated by the an arguable shift in the meaning of toys and play that occurred through-
protagonists. When the case is appreciated not just as the landmark that it out the twentieth century. Children’s activities and social expectations were
would become, but in all of the particulars of its unfolding, the case ena- undoubtedly affected by these practices. It might be suggested that playing
bles us to address historical issues obscured in the scholarship that attempts with traditional toys, unless considered a novelty, began to be regarded as
to fix the overlap at the normative level. First, the chapter traces the link old-fashioned.
between newspaper syndication and character merchandising that under-
pinned 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. IV. JAPANESE TOYS
Finally, it follows the cascade of reactions to the decision that spilled over
legislative reforms ever since, some of which already perceived the special Seen against this background, it is clear that there was much more at stake
characteristics of the case. Although there are many interesting issues sur- in the Popeye controversy than whether or not the toys were a copyright
rounding its history, the chapter argues that the most significant element of infringement. Perhaps the main problem in understanding the legal case
the case was the particular way in which foreign licensors mobilised them- today is not the intricate statutory provisions; the feature that sets the
selves to litigate abroad not just to protect a ‘thing’ in itself but to secure case apart is the complex and diffuse circumstances around which the claim
was framed. As the law report seems divorced from the circumstances in
2 H Laddie, ‘Copyright: Over-strength, Over-regulated, Over-rated’ (1996) European Intel-
lectual Property Review 253. 91

3 Lucasfilm v Ainsworth [2011] UKSC 39. ‘Popeye Rubber Stamps’ Playthings (September 1936) 145.
92 M Monmonier, Maps with the News. The Development of American Journalistic
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) Cartography (Chicago, University of Chicago Press, 1989) 77.
93 For different understandings of novelty in relation to patent law, see M Biagioli ‘Patent
PTC 121 (SC) [India].
5 British Leyland Motor Corp. v Armstrong Patents Co [1986] AC 577. Specification and Political Representation: How Patents Became Rights’ in M Biagioli, P Jaszi
6 TA Blanco White, Patents and Registered Designs (London: Stevens & Sons, 1947) 58–59; and M Woodmansee (eds) Making and Unmaking Intellectual Property: Creative Production
L Melville ‘Design Copyright in the United Kingdom’ (1982) European Intellectual Property 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
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 Born: Popeye by Cecil Coleman, Ltd; Copyright King Features Syndicate (1929)’ Games &
Review 33–35. Toys (January 1938) 1; ‘Many new Pop-Eye Games by Cecil Coleman, Ltd’ Games & Toys
7 L Bently, ‘Requiem for Registration? Reflection on the History of the United Kingdom (February 1938) 2; ‘They’re New; They’re Best Sellers: Popeye Games, Toys and Crackers by
Registered Design System’ in A Firth (ed) The Prehistory and Development of Intellectual Cecil Coleman, Ltd’ Games & Toys (March 1938) 1; Games & Toys (June 1938) 2.
Property Systems: v 1 (London, Sweet & Maxwell, 1997) 3–46.
to develop commercial angles from miscellaneous sources.85 As a result, and facilitate the development of particular revenue mechanisms. In that
these disputes became increasingly difficult to resolve in court, which were sense, the circumstances of the case can be read as a controversy that shows
more concerned with referring to statutory provisions than investigating the the ways in which the nature of copyright shifted in the twentieth century,
emergence of new legal and commercial expectations.86 from an exclusive right to particular copyright subject matter to a platform
In fact, merchandising and licensing operations inscribed the assessment for commercial activities centred on the circulation of knowledge and the
of novelty into the specific relationship between licensor and licensee. There deployment of new kinds of expertise related to merchandising, licensing
is no better example of this than the way in which Frank C Betts used to and franchising opportunities.
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 II. SYNDICATING FEATURES
vocabulary was not just limited to Betts but had also started to appear in
licensing agreements and adverts in trade magazines.89 The newness con- Copyright scholars have tended to centre their attention on the doctrinal
veyed and offered through licensing and merchandising operations was question of legal categories intertwined within the case.8 Such a focus has
the creative incorporation of the comic or film character into the offer- tended to highlight the case’s importance for the copyright protection of
ings of specific manufacturers and retailers such as items exclusive to spe- cartoon characters in their immaterial form.9 While this emphasis is under-
cific department stores.90 The description of the character to prospective standable, the problem is that it tends to obscure a number of issues—and
licensees emphasised the configuration of novelty as something never seen in particular, the underlying practices that triggered the dispute. It is worth
before in Britain, and was entwined in an effort to issue licences rapidly briefly examining the identity of the plaintiffs and their decision to litigate
so that the licensees could capitalise on the character’s popularity at the in the first place. Indeed, not only is the ambiguity of the law rather curi-
moment of introduction, thus expanding the association with the character ous, but so is the character of the plaintiffs’ operations and their variously
to consumer products such as candy, toys, watches, board games, stationery 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
85 ‘Defendant’s Exhibit O (1): Statement of Royalties due E.C. Segar, 21 June 1938’ in courts. The reference to a syndicate here is interesting not only because it
‘Record on Appeal of Segar v King Features Syndicate (NY App Div 1941)’, 189–90, NYSA; was precisely this that brought the plaintiffs together, but also because the
‘Merchandising Angles in New Disney Films’ Games & Toys (August 1938) 52. study of syndication allows us to trace the emergence of new property rela-
86 It took some time for the British courts to fully consider and recognise these practices.
tions characteristic of copyright in the twentieth century.10 In fact, news-
Perhaps the first case we can appreciate some explicit acknowledgment is ‘Rawhide’ trade
mark [1962] RPC 133. paper syndication can be viewed as a process that combined technological
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 Tran-
8 L Melville (n 6); G Dworkin and R Taylor (n 6).
sogram toys will be completely finished by the toy fair […] In addition the firm has also signed 9 See, for instance, PF Carter Ruck, EP Skone James, FE Skone James, Copyright: M odern
a contract with King Features for Pop-Eye bubble sets and will feature a complete line of this Law and Practice (London, Faber and Faber, 1965) 87–89 (‘Making Three-dimensional
merchandise’ in ‘Scrappy, Pop-Eye and Orphan Annie with Transogram’ Playthings (March objects’); J Lahore, Intellectual Property Law in Australia: Copyright (Sydney, Butterworths,
1935) 160. 1977) 225–27 (‘Artistic Reproduction in Different Dimensions’); J Phillips, ‘Elzie Segar, intel-
90 ‘Bar-Zim introduces new Popeye Nailing Sets’ Playthings (August 1936) 90; ‘Miller
lectual property creator extraordinary’ (1986) 8 European Intellectual Property Review 12,
Rubber creates Popeye Toy’ Playthings (February 1935) 60; ‘Many new Popeye Lines by 373–76, at 374; A McGee and G Scanlan ‘Copyright in Character’ (2003) Journal of Business
Cecil Coleman: Copyright King Features Syndicate’ Games & Toys (January 1938) 2–3. Law 470–86; J Hull ‘The merchandising of real and fictional characters: an analysis of some
In the United States, King Features often worked with distributor George Borgfeldt & Company; recent developments’ (1991) 2 Entertainment Law Review 4, 124–32, at 125.
in ‘Affidavit of Frank A Klaproth (manager of the Toy Department of George Borgfeldt & Co)’ 10 J Bellido and K Bowrey ‘From the Author to the Proprietor: Newspaper Copyright &
in King Features Syndicate Inc v Rudolph Fleischer et al, Southern District of New York Equity, The Times (1842–1956)’ (2014) 6 Journal of Media Law 2, 306–33; see also L Bently,
Case Docket #26-397, NARA. ‘Copyright and the Victorian Internet: Telegraphic Property Laws in Colonial Australia’ (2004)
38 Loy LA L Rev 71.
and legal adjustments to produce a transnational platform to distribute and the legal landscape in Britain was markedly different.78 As its counsel noted,
service newspaper content.11 In the late nineteenth century, international tel- this specific controversy raised questions on the construction of the Copy-
egraphic routes and the typewriter simplified international trade communi- right Act (1911), which had not yet been decided in the British courts. A
cations. Similarly, in the early twentieth century, technological advances like previous case brought by a British toy maker, Dean’s Rag Co—arguably the
the dry mat or matrix facilitated the possibility for artwork to be licensed first local attempt by a licensee to sue for design infringement of a cartoon
worldwide.12 What the invention of mats provided to the newspaper indus- character—had proved unsuccessful.79 When tested in court, the UK design
try was better legibility and less trouble to cast types.13 William Randolph registration held by Dean’s ultimately provided little protection for Mickey
Hearst was among the first businessmen to realise the potential of linking Mouse because, as the judge said, ‘by registering the design of Mickey
technological changes to particular property strategies based upon circula- Mouse the plaintiff company had not obtained a monopoly of all designs of
tion of content.14 In 1909 he established a newsgathering set-up, the Inter- Mickey Mouse, and if anyone wanted to apply Mickey Mouse to a toy he
national News Service.15 Five years later, he started King Features Syndicate, could do so’.80
Inc, a specialised branch devoted to providing newspapers with comic Interestingly, the decision revealed that licensing and merchandising
strips, short stories, picture layouts, maps and puzzles.16 Although both activities had rendered some aspects of design registration meaningless.81
businesses offered material to newspapers, their distinctive appeal as syndi- For instance, the novelty criterion in design law was so narrowly circum-
cates was their ability to distribute, and hence to offer continuity, stability scribed that it imperilled the emergence of commercial possibilities. In other
and the possibility of including an ongoing series of regular ‘features’— words, the context of design law contained significant constraints, grant-
such as comic strips, maps, special articles and crossword puzzles—in every ing toy licensees a very thin protection.82 While this could be seen as part
issue.17 As one of the leading executives of King Features Syndicate recalled 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 deci-
11 For a history of the emergence of syndicate services in North America, see CA Johan-
sion had opened an expectation gap in ‘shielding’ merchandising licences.84
ningsmeier, Fiction and the American literary marketplace (Cambridge, Cambridge University
Press, 1997) 37–63. Licensors and copyright owners were looking to protect the merchandis-
12 AH Wasserstorm ‘Magazine, newspaper, and syndication problems’ in TR Kupferman ing arrangements, since merchandising activities were becoming increas-
(ed) Copyright Problems Analyzed (Chicago, Commerce Clearing House, 1953) 159–76 ingly problematic, as they were fundamentally based on a practical attempt
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. 78 ‘Mr. E. MacGillvray, K.C., who represented King Features Syndicate and Mr. Betts, said
15 ‘International News Service’ Circulation, A Magazine for Newspaper-Makers (1921) the case was of considerable importance, both to the parties and to the public, because of
(n 12) 6. International News Services became renowned in intellectual property scholarship the general principles involved. As he conceived it, the cause raised a question, in connection
as the litigants in a major US case (INS v AP, 1918). For interesting works on the historical with the construction of the Copyright Act, which had not yet been decided in the courts’
background of the case, see C Wadlow ‘Unfair Competition by Misappropriation: the reception Games & Toys (April 1940) 80.
of International News in the Common World’ in CW Ng, Bently, and G D’Agostino (eds) The 79 Deans Rag Book Company Limited v Pomerantz and Sons (1930) 47 RPC 485; ‘Mickey
Common Law of Intellectual Property: Essays in Honour of Professor David Vaver (Oxford, Mouse in Court’ The Times (18 July 1930) 5; ‘Mickey Mouse Whiskers: Alleged Infringe-
Hart, 2010) 307–30; RA Epstein ‘International News Service v Associated Press: Custom and ment of Design’ The Times (19 July 1930) 20; ‘Mickey Mouse and the Albert Memorial’ The
Law as Sources of Property Rights in News’ (1992) 78 Virginia Law Review 85 and DG Baird Evening Standard (18 July 1930) 11.
‘Common Law Intellectual Property and the Legacy of International News Service v Associated 80 ‘Mickey Mouse Designs: No Infringement’ The Times (23 July 1930) 155; ‘The Mickey
Press’ (1983) 50 University of Chicago Law Review 411. Mouse Case’ The Toy Trader (July 1930) 18; ‘Mickey Mouse Designs: No infringement’ The
16 D Nasaw, The Chief. The Life of William Randolph Hearst (London, Gibson Square Manchester Guardian (23 July 1930) 15.
Books, 2002) 234; WA Swanberg, Citizen Hearst (London, Longmans, 1961) 302; see also 81 One of the earliest discussion where patent agents already identified the source of trouble
‘Defendant’s Witnesses: Joseph V Connolly’ in ‘Record on Appeal of Segar v King Features is found in ELW Byrne ‘An Aspect of Copyright’ Transactions of the Chartered Institute of
Syndicate (NY App Div 1941)’, 111–38 at 112; NYSA (‘King Features Syndicate is a corpo- Patent Agents, Session 1923–1924, 215–23.
ration, and International Features Service was part of that corporation. It was subsequently 82 ‘Discussion on Mr Byrne’s Paper’ Transactions of the Chartered Institute of Patent Agents
merged in it’). (ibid) 224–25.

17 As the newsletter of the King Features Syndicate recognised, ‘the best thing to build 83 On this history, see B Sherman and L Bently, The Making of Modern Intellectual Property
circulation is good features … what really gives a newspaper distinction is its features’ in Law (Cambridge, Cambridge University Press, 1999) 163–66.
WG Bryan ‘Advertising Newspaper Advertising’ Circulation, A Magazine for Newspaper-Makers 84 See, for instance, ‘Things I see and Hear’ The Toy Trader (April 1938) 8–9; ‘A friendly
(n 12) 13; see also J Tebbel, The Life and Good Times of William Randolph Hearst (London, Warning!’ Games & Toys (July 1930) 77; ‘Limits of Copyright’ (1940) The Law Journal
Victor Gollancz, 1953) 117; Happy Birthday Mickey! 50 ans d’histoire du Journal de Mickey 13, 12.
toy manufacturers that by associating their products with these popu- in his autobiography, the term syndication ‘cover[ed] any centralized traffic
lar characters they could ‘reap the full benefit of tremendous publicity— in matter desirable to publishers. Specifically, it signifi[ed] the acquisition
publicity that was paid by someone else’.68 Hence, the overall presumption and sale of rights to reproduce for publication the works of authors and
was not just that comics contributed to the sale of newspapers but that com- writers’.18 By 1934 King Features Syndicate claimed it offered ‘the greatest
ics also ‘[sold] toys’.69 Aware of this commercial opportunity, the syndicate circulation combination on Earth’.19
promoted Popeye at the New York World’s Fair in 1939,70 and used the Although the syndicate provided heterogeneous content, some of which
impending release of the animated version of the cartoon as a timeframe was free of charge,20 comic strips became the most valuable material on
to build up a merchandising strategy to boost its licensing potential.71 offer.21 In particular, they encouraged newspapers to subscribe to the
Coordinating commercial activities with film releases was one of the mar- service,22 as they were considered distinctive circulation-makers.23 In other
keting operations to expand into different fields.72 Following the example words, comics were deemed crucial to selling newspapers.24 By the late
set by Disney, which opened its London merchandising offices in 1933,73 the 1920s, comics appeared in virtually every newspaper in the United States.25
syndicate decided to appoint Frank C Betts to sell newspaper content and to Their specific form of storytelling and ability to lend themselves to colour
address the incipient demand from toy manufacturers in Britain.74 In the late brought unparalleled success and the emergence of a set of rights attached
1930s, he persuaded newspapers such as the Daily Mirror to include Popeye to their circulation.26 The serialised nature of comics and their presentation
as a regular feature.75 Immediately afterwards, toy manufacturers started to
apply for licences to reproduce the character in three-dimensional form.76
(Paris, Chêne, 1984) 10–13; ‘Premier Cross-Word Puzzles’ IV Circulation, A Magazine for
Although the syndicate had been successful in the US courts in litigating that Newspaper-Makers 18 (February 1925) 7 and ‘Arthur Wynne introduced Black Squares, Making
copyright protection was available for characters portrayed in cartoons,77 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 Instru-
68 AM Loewenthal ‘Hitch your Product to a Star’ Playthings (April 1936) 201; see also ment (New York, The Macmillan Company, 1937) 593; B Walker, The Comics before 1945
‘Cartoon Characters Make Hit’ Playthings (August 1935) 57; ‘Cartoon Characters for (New York, Abrams, 2004) 186.
American Needlecrafts’ Playthings (July 1933) 66 (‘The makers feel that the widespread circu- 20 Letter from Salvador Mendoza, KFS representative in Mexico, 25 April 1940, BANC
lation and popularity of the cartoons has created a ready market for soft toys’). MSS 77/121 carton 34, WRHP; see also JC Long, Public relations; a handbook of publicity
69 ‘Miniature Famous Cartoon Characters’ Playthings (June 1929) 73; ‘Cartoon Picture (New York, McGraw-Hill, 1924) 76.
Puzzles’ Playthings (March 1933) 52; ‘Comics sell toys’ Playthings (September 1936) 150; 21 Bradley Kelly to Joseph Willicombe, 11 August 1938 (sending the new strip ‘Hippo and
‘Cartoon Characters will invade Toyland’ Playthings (October 1936) 78–79; ‘Strip-Tease
Hookie’, by Elliot Caplin, for Mr Hearst’s perusal), BANC MSS 77/121 carton 34, WRHP;
Cartoons’ Games & Toys (June 1937) 56 (‘the publication of this cartoon cannot fail to interest B Lessing, ‘Humor-Laughter-Comics’ IV Circulation, A Magazine for Newspaper- Makers
dealers, for the Daily Mirror has a nation-wide circulation and the adventures of P opeye and 19 (April 1925), 12, 40, MSU Spec Coll Comic Art.
the Jeep will be followed closely by reader of that paper’). 22 See, generally, B Lewis, ‘The Syndicates and How They Grew’ Saturday Review
70 ‘King Features Syndicate, Inc. Popeye Funny Ship model (1939)’ in Box 541, Folder 1, (11 December 1971) 67–69, TM.P51 / Folder 13.1, OSU; see also FC Betts ‘Talking of Features’
MssCol 2233, Manuscripts and Archives Division, NYPL. The Newspaper World (19 November 1938) 10 (‘The strip cartoon possess the widest appeal
71 ‘The Toy Merchandising Field’ Playthings (March 1935) 146 (Fleischer); ‘Exclusive Mov- of all newspaper features’).
ies: Popeye and Betty Boop’ Playthings (April 1935) 97. ‘Popeye in Two-Reel Color Short’ 23 According to Hearst ‘comic pages [brought] the largest immediate circulation’ in F Older,
The Film Weekly (25 February 1937) 32. In fact, some commentators considered the case to William Randolph Hearst, American (New York and London, D Appleton-Century Company,
be an infringement of what they thought to be ‘a comic cinema figure (Popeye the Sailor)’; see 1936) 148; see also G Allighan ‘Features, Not News, Build Circulation’ The Newspaper World
B Cloutman and FW Luck Law for Printers and Publishers (London, Staples Press, 1949) 118. (6 August 1938) 4; ‘How to win and hold big circulation: King Features Syndicate’ The Fourth
Similarly, Disney was publishing film release dates to attract toy manufacturers; see ‘Snow State (4 February 1922) 9; see also V Marshall ‘The Kids Go to Bat for the Kat’ II Circulation,
White and the 7 Dwarfs: Release Dates’ Games & Toys (August 1938) 53. A Magazine for Newspaper-Makers 11 (March 1923) 41, MSU Spec Coll Comic Art (consider-
72 G Byrnes ‘Reg’Lar Fellers for Animated Cartoons’ Playthings (March 1936) 84. ing comics as circulation magnets).
73 ‘George Kamen appointed London Representative for Kay Kamen, Inc’ Playthings (July 24 RC Harvey, Children of the Yellow Kid. The Evolution of the American Comic Strip
1933) 60. (Seattle, Frye Art Museum, 1998) 17. In the late 1970s, Richard Weiner noted that ‘a large part
74 FC Betts ‘Talking of Features’ The Newspaper World (19 November 1938) 10 (‘The strip of the income of some syndicates is from comics. Leading comics purveyors are King, Chicago
cartoon possess the widest appeal of all newspaper features’). Tribune-New York News, NEA, and Field’; in R Weiner, Syndicated Columnists (New York,
75 Popeye’s first appearance in Britain was at the magazine The Jolly Comic (April 1937) and 1977) 25.
was then syndicated to the Daily Mirror (May 1937) and The Sunday Pictorial newspapers; see 25 B Walker, ‘William Randolph Hearst and the Founding of an Empire’ in D Mullaney (ed)
‘Strip-Tease Cartoons’ Games & Toys (June 1937) 56; ‘Popeye now appears every day in the King of the Comics. 100 Years of King Features (San Diego, IDW Publishing, 2015) 11–38,
Daily Mirror which is read by millions’ Games & Toys (ibid) 39. at 17.
76 King Features Syndicate, Inc v O & M Kleeman, Limited [1940] 1 Ch 523, 529. 26 The specific definition of the term first and second ‘serial’ rights was often disputed, not
77 King Features Syndicate v Fleischer, 299 F 533 (2d Cir 1924) referred to in King Features only because it elicited tensions between authors, literary agents, and publishers, but because it
Syndicate, Inc v O & M Kleeman, Limited [1940] 1 Ch 523, 525. evidenced differences in the ways copyright ownership was negotiated in periodical and book
as ‘strips’, with the same character appearing weekly or daily, assured The dispute between the plaintiffs and O & M Kleeman also evidenced
them a regular spot in many newspapers, particularly Sunday editions.27 the distinct historical connection being forged between newspaper copyright
According to the newsletter of the syndicate, the reason was that, ‘a good syndication and character merchandising.61 King Features S yndicate had
comic series [had] the great advantage of repetition, of building up readers begun offering comic strips not only to newspapers but also to film entre-
like a snowball’.28 preneurs and toy manufacturers.62 In fact, the Fleischer Studio’s a nimated
While the specific means of exploiting comic strips in serial form made version of the Popeye cartoon, distributed by Paramount, is seen by some
it difficult for the litigants to present what they saw as their property, such historians as the result of a merchandising deal.63 A number of factors
a routine of exploitation made them attractive and therefore contested.29 appear to have contributed to this commercial and legal expansion. One
Eluding categorisation as either advertising or current news,30 syndicated that seemed to have triggered the steady move towards new fields was a
comics were somewhat ‘hybrid’ features that developed a special appeal for drop in paper consumption during the late 1930s.64 Arguably, this forced
particular audiences such as women and children.31 To a great extent, the the syndicate to look beyond newspapers to exploit its content. Also asso-
process of syndication enabled comics to be turned into assets.32 The value ciated with the shift towards toys were the successful forays of comic
of the property emerged from the syndicated service as it was performed,33 strips into the relatively new media of cinema.65 The rise of the motion
that is, as it arose from the relationships between the syndicate, the news- picture industry and its particular success in converting comic strips
paper subscribers and their readership.34 As some historians have noted, into animated cartoons ostensibly contributed to the renewed popular-
ity of comic strips.66 While this prompted several contractual intricacies
between the syndicate and animation studios about how to test, define and
publishing practices in the UK and the USA. For instance, see the discussions at the Publish- exploit cartoon characters such as Popeye and Bluto,67 the interaction of
ers Association (UK) in RJL Kingsford, The Publishers Association 1896–1946 (Cambridge, technological, economic and cultural factors facilitated a feeling amongst
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 Copy-
rights DC, D of C (12-18-1940) 48 USPQ 237 (regarding the registration of their magazine 61 C Morcom, ‘Character Merchandising—a right, or mere opportunity?’ (1978) European
King Features Illustrated Weekly, a weekly sold to be bound with newspapers and containing Intellectual Property Review 7.
independent and distinct contributions such as comic strips and special articles). 62 ‘Krazy Kat, Barney Google and Popeye Toy Projectors, copyright KFS and manufac-
28 A Brisbane, ‘Why are Comic Pictures Necessary in Sunday Newspapers?’ I Circulation, tured by Excel Projectors (Chicago)’ Playthings (April 1937) 82; ‘Popeye: Fisher-Price Toys,
A Magazine for Newspaper-Makers 3 (July 1921) 7–8 at 8, MSU Spec Coll Comic Art. Inc, copyright KFS’ Playthings (October 1936) 9; ‘Popeye Excel Projectors, copyright KFS’
29 ‘Strip-Tease Cartoons’ Games & Toys (June 1937) 56 (‘to-be continued’). Playthings (December 1936) 7.
30 Boyd Lewis defined them as ‘that part of the newspaper content which is not “spot: or 63 T Hollis, Toons in Toyland. The Story of Cartoon Character Merchandise (University
immediate news (both local and international), not advertising, and not the paper’s own edi- Press of Mississippi, 2015) 18; see also ‘Plaintiff’s Witnesses: William L Brennan’ in ‘Record
torial interpretations’ in B Lewis ‘The Syndicates and How they Grew’ Saturday Review, 54 on Appeal of Segar v King Features Syndicate (NY App Div 1941)’, 71–104, at 72, NYSA.
(11 December 1971) 67–69. 64 This not only affected newspapers but paper manufacturers in general. Percy Forster to
31 A Brisbane ‘Why are Comic Pictures Necessary in Sunday Newspapers?’ Circulation, John A Brogan, 11 December 1939, Folder 37, Box 13, Collection 250, JTP.
A Magazine for Newspaper-Makers (n 28); ‘How many Syndicated Features?’ The Newspaper 65 See, generally, M Barrier, Hollywood Cartoons: American Animation in Its Golden Age
World (12 September 1936) 34; ‘Listen to Me, Provincial Press!’ The Newspaper World (Oxford, Oxford University Press, 1999). Moses Koenigsberg, chairman of KFS, saw these
(10 June 1939) 13 (announcing the value of comic strips to ‘revitalise your children’s corner’); forays as ‘natural and expected’ developments of the ‘cartoon industry’ in ‘Affidavit of Moses
A Jordan and W Black ‘Which Sells the most Newspapers? Humor and Comics or Heart Koenigsberg’ in King Features Syndicate Inc v Rudolph Fleischer et al, Southern District of
Interest’ V Circulation, A Magazine for Newspaper-Makers 24 (May 1926) 26–27, MSU Spec New York Equity, Case Docket #26-397, NARA.
Coll Comic Art. 66 L Cabarga, The Fleischer Story (New York, Da Capo Press, 1988) 82–139; S Culhane,
32 For instance, having articles mimeographed, sent to agents and handling them abroad, Talking Animals and Other People (New York, St. Martin’s Press, 1986) 62–63. For an
see John A Brogan, Jr. to Jim Tully, 20 June 1938, Folder 37, Box 13, Collection 250, JTP; see example of the ways in which the syndicate imagined the influence of films into their serials, see
also ‘King Features Syndicate Ready-Print Comics’ Circulation, A Magazine for Newspaper- ‘A New Laugh-Serial by Witwer! Fighting Blood. King Features Syndicate’ Circulation,
Makers (n 31) 47. A Magazine for Newspaper-Makers (n 19) 2, MSU Spec Coll Comic Art (‘This new serial by
33 John A Brogan, Jr. to Jim Tully, 29 June 1938 (appraising the articles), Folder 37, Box 13, HC Witwer will bring Witwer fans from magazines, motion picture theatres and book stores
Collection 250, JTP; see also VH Polachek ‘Over a Million’ II Circulation, A Magazine for into your circle of regular readers and subscribers’); see also GS ‘Bonzo Makes his Bow: The
Newspaper-Makers 11 (March 1923) 10, MSU Spec Coll Comic Art (showing the links Famous Studdy Dog becomes a Film Artist’ (1924) The Toy Trader (December) 44–45.
between syndication and merchandising). 67 The contract between Fleisher and the syndicate signed on November 1932 is described
34 This was nicely captured in the newsletter published by King Features Syndicate when it in R Fleischer, Out of the Inkwell. Max Fleischer and the Animation Revolution (Lexington,
was suggested that ‘circulation is the opposite of congestion. In a free flow, either of blood or KN, The University Press of Kentucky, 2005) 53–55; see also Hollis, Toons in Toyland (n 63)
ideas, there is vitality and advantage. Newspapers and readers react upon each other. A narrow 18–20.
on vellum paper.54 Moreover, his expertise as a go-between had been pre- the creative process of comic strips was often influenced by the syndicate’s
dominantly cultivated in finding possibilities for newspaper content, seek- perceptions of commercial angles and audience reactions.35 It was this
ing opportunities in popular markets for new ‘serials’.55 In fact, newspaper dynamic way of generating value and exposure via instalments that attracted
content suitable for serialisation, such as spirit photographs and psychic film entrepreneurs and toy manufacturers, obviously interested in the popu-
investigations, was part of his portfolio and served to connect him with larity of regular characters.36 Recognition of the special characteristics of
Hearst’s publishing networks.56 By the late 1920s, Betts had become one of syndication, and the opportunities it afforded, is instructive for the analysis
the few local agents with experience in exploiting the worldwide fragmen- of the intricacies of this case. It is only by looking at syndication that one
tation of publishing and film rights.57 It was not just that he could move gets a sense of the spectrum of ownership and the interesting territorialisa-
easily from Henrietta to Fleet Street, the two areas of London where these tion unveiled by the case. The property in question and the controversy it
contracts tended to be negotiated;58 it was also that in seeking new markets generated would not have existed if it had not been not surrounded by such
he had developed his own professional contacts in Paris, Hollywood and distinctive forms of service and platform, which triggered different environ-
New York.59 Therefore, if there was anyone able to understand the ments of distribution, use and exploitation.37
commercial and legal complexities of syndicating material in Britain and The arrangement made between King Features Syndicate and Disney in
beyond, it was Betts, who was then in business on his own account after January 1930 was arguably one of the key historical events in the rise of
incorporating his agency as a limited company in 1932.60 However, the Mickey Mouse as a merchandising legend;38 but another great syndicate suc-
point worth highlighting here is that he was appointed as the representative cess in the early thirties was Popeye.39 It was the exploitation of this cartoon
of the syndicate, and not the cartoonist. He only became Segar’s representa- character that generated the dispute between the American syndicate and the
tive immediately after the cartoonist passed away. British defendants, a toy company called O & M Kleeman Ltd, based in Red-
cross 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
54 ‘Authors and their Books’ T.P.’s Weekly (26 March 1927) 751. and other relief for the infringement of copyright in the Popeye cartoons
55 Two decades later, the literary agent Andrew Dakers described Frank C. Betts, Ltd as a result of the making of unauthorised models, photographs, drawings,
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. circulation is likely to mean a narrow newspaper. A big audience sends through, by a kind of
56 Harry Price to Frank C Betts, 26 January 1933 (concerning Harry Price’s photographs
wireless, a bigness of inspiration’ in ‘The King and the Big Bunch’ Circulation, A Magazine for
used by Hearst), HPD/4A/2, HPA. For instance, King Features Syndicate distributed the work
Newspaper-Makers (n 12) 9.
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, 35 For instance, Robert C Harvey writes that ‘[s]peculation has it that Hearst told Segar
A Magazine for Newspaper-Makers 12 (7 April), MSU Spec Coll Comic Art. to tone down the violence of the strip. Judging from the strip itself, this advice was probably
57 ‘Film Rights: The Betts-Binmore Agency’ (1929) TP’s and Cassell’s weekly (20 July 1929) handed down to the cartoonist in early 1933’ in RC Harvey, The Art of the Funnies. An
370. This combined expertise was increasingly important because, as Stanley Unwin noted, Aesthetic History (Jackson, MS, University Press of Mississippi, 1994) 167.
‘with the advent of “new” rights of many kinds, the management of literary property has 36 ‘Cameo’s Popeye Doll’ Playthings (March 1936) 5; ‘Popeye: Sand Toys’ Playthings
become a much more complicated and technical business’; in S Unwin, The Truth about Pub- (January 1927) 18; ‘Popeye Dolls’ Playthings (March 1937) 8; ‘Popeye Toy Filled Stockings’
lishing (London, Unwin Brothers, 1929) 300. Playthings (April 1937) 65; ‘Popeye Toy Projector’ Playthings (April 1937) 82.
58 That mediating role between film and newspaper centres was surely rare since, according 37 As the syndicate agent in London recognised ‘we sell many cartoons. Each is a fine
to the perception shared by some American journalists, Fleet Street still operated as a closed example of the feature. Not only is there behind them an unrivalled knowledge of the strip
and traditional community, reluctant to adapt to new technological changes; see F Dillon ‘Fleet cartoon, but there is an organisation. No single artist is responsible for any one’; FC Betts,
Street—with the Accent on the Fleet’ Circulation, A Magazine for Newspaper-Makers (n 28) ‘Talking of Features’ The Newspaper World (19 November 1938) 10.
24–25; see also DM Church ‘More News Than All—and Better than the Best’ Circulation, 38 M Barrier, The Animated Man: A Life of Walt Disney (California, University of California
A Magazine for Newspaper-Makers (n 33) 38. Press, 2007) 83; Happy Birthday Mickey! (n 17) 10; ‘Merchandising Mickey Mouse’ The Film
59 JN Gough (Frank C Betts) to George Routledge & Sons, 17 October 1935, RKP 22/8; see Weekly (1 November 1934) 18.
also Frank C Betts to William Bradley (Paris), 17 August 1934, Box 222/Folder 6, WBHRC 39 ‘The Funny Papers’ (1933) Fortune Magazine 45–49 at 43; see also R Goulart ‘The Glory
(regarding the translation of a Chaplin Series). Days: Or, Believe it or Not!’ in D Mullaney (ed) King of the Comics: 100 Years of King Features
60 The principal objects for which the company was established were: ‘to carry on business (California, IDW Publishing, 2015) 105–98 at 123.
as press agents, literary and editorial agents, news agents, proprietors and publishers of news- 40 For a brief history of the company, see H Kleeman, ‘Pioneers in Plastic. The Kleeware
papers, journals, magazines, books, and other literary works and undertakings and to promote Story’ (Plastic Warrior, 2008) 3; H Kleeman ‘The Kleeware Story’ plastiquarian reprints from
and encourage the publication of books, pamphlets or periodicals by the general publish- no 9, winter 1991 and Merchant Adventures 1905–1922. The Story of O And M Kleeman
ing trade’; Memorandum of Association (Frank C Betts), 21 June 1932, Company Number Limited (London, Newman Neame, 1955) (thanks to Avril Kleeman for providing me with a
00266361, Companies House Archives. copy of this publication).
brooches, toys and other articles that reproduced the Popeye figure of the III. NOVELTY RIGHTS
said cartoons and/or selling or offering the same for sale.41
The claim was controversial on several grounds. Firstly, it was not clear Incorporating Frank C Betts into the claim and appointing him as Segar’s per-
whether or not a three-dimensional representation of an artistic work sonal representative constituted an interesting and somewhat ironic twist, as
(in this case, the comic strip) constituted a copyright infringement. Although he had played a central role in the emergence of the dispute. Since N ovember
the 1911 Copyright Act offered a particularly broad interpretation of the 1935, he had been Hearst’s man in London, replacing George A llison
scope of copyright, it was silent on this point. Secondly, in this case, there (1884–1957), who had represented the syndicate in its early expansion into
was no direct copying of the comic strip itself; the defendant’s source was Britain.47 The syndicate relied on a network of local agents in order to allow
another (licensed) Popeye toy. Thirdly, copyright law had typically been comic strips and other features to appear across multiple newspapers.48
imagined as excluding the protection of manufactured or industrial objects. These networks were created with the knowledge of the ways in which news
Lastly, it was not clear what obligation the copyright owner owed to the traffic developed as communications systems expanded and improved.49
licensees and in this case the licensees had not registered the designs. As a result, the syndicate was careful to take into account local idiosyn-
A few months after the claim was lodged, as the parties were busy crasies and the habits that held readership when expanding into d ifferent
preparing for the trial or its settlement, there came an unexpected twist. On territories.50 When George Allison left the syndicate to manage Arsenal
13 October 1938, Elzie Crisler Segar, who had co-joined King Features as football team in 1934, Betts appeared the ideal candidate to replace him in
a plaintiff, died.42 Some scholars have speculated that the case might have handling syndicated material in London.51 With a thorough knowledge of
been decided differently had Segar been alive through the proceedings.43 British communications and railway systems,52 his background made him
These writers have assumed that evidence of the author’s original could be an unusual agent, certainly atypical in the literary field.53 In the late 1920s,
called upon to determine if design law would have been applicable from the as part of the Betts-Binmore agency, he had initiated a few innovative ideas,
outset. Instead, Segar’s death caused the plaintiffs to amend the statement including selling replicas of historical documents such as the Magna Carta
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 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
particular, the plaintiffs’ solicitors proved Segar’s will in the Probate Regis- transcripts can see how tense the relationship was between Mrs. Segar and King Features Syn-
try of the High Court of Justice in England with two codicils annexed that dicate and how unpleasant and distressful seems to have been Mrs Segar’s examination and
were granted out to Betts.45 While this was a smart move to guarantee the 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
strength of the claim, it did not pass unnoticed by the defendants, who also at 29–30, NYSA.
focused on Segar’s death in their attempt to break the chain of title.46 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
41 ‘Statement of Claim’ in King Features Syndicate Inc and another v O & M Kleeman Advertising Review 48 (reporting Argentine’s KFS representative, Percy Foster).
(1941), HL/PO/JO/10/10/1236/1211, PA. 49 ‘How the News Trains are Run’ The Newspaper World (22 January 1938) 62.
42 King Features Syndicate Inc v O & M Kleeman Ltd [1940] Ch 806 at 824 (CA) per 50 AI Gates, ‘The Habits that Hold the Reader’ Circulation, A Magazine for Newspaper-
Luxmore LJ. Makers (n 12) 10 (discussing a survey conducted in Columbia University regarding reading
43 H Laddie, P Prescott and M Vitoria, The Modern Law of Copyright (Butterworths, habits and attitudes to newspapers in New York).
London, 1980) 154 (‘It would have interesting if the artist in the Popeye case had been in a 51 In 1949, Betts became chairman of the London Press Club. Founded in 1882, the club
position to give evidence; unfortunately, he was no longer alive’). was a major communications and newspaper hub for socialising. For Betts’ agency, the club
44 ‘Popeye the Sailor: Copyright Dispute’ The Times (21 March 1940) 10. became a suitable place to introduce authors and publishers; see letter from Alec Harrison
45 ‘Segar, Elzie Crisler’ 22 November 1939 (Date of Probate), Her Majesty’s Courts and (Betts’ editorial manager) to J Enoch Powell, 9 April 1954, POLL 1/4/14, CAC.
Tribunals Service (HMCTS). 52 FC Betts, Railways and Railway Securities (London, Mortimer, Harley & Co Limited,
46 The move to challenge the title appeared to have been strategic since the property rela- 1922).
tionship between the parties was under considerable stress. In August 1939, the widow of the 53 The typical British literary agency was Curtis Brown, Ltd. The agency had been started
late Elzie Crisler Segar, Myrtle Annie, had sued King Features Syndicate because the corpora- by the London correspondent for the New York Press, Curtis Brown. Christine Campbell
tion ‘did not account to her for all monies, benefits and profits derived by it from the licensing Thomson’s account of her career gives an interesting insight into the workings of the literary
of the characters’. She claimed that the contractual breach had been so material and substantial agency; see C Campbell Thomson, I am a Literary Agent. Memories Personal and Professional
that there has been a failure of ‘consideration’ and therefore her case argued for the property (London, Sampson Low, Marston & Co, 1951).
260 Tanya Aplin King Features Syndicate (1940) 229
Table 2: Cases Citing Coco ‘Three-Step’ Test presence manifested itself in many different ways: sending counsels’ opin-
ions on the issue to the Board of Trade;151 timely positioning of ‘schol-
E&W IRE NI SCOT NZ CAN AUS SING US Total arly’ works in authoritative journals;152 and providing confirmation of their
Cited 39 4 1 1 12 16 40 2 1 116 licensing deals to support their evidence at the corresponding committees.153
Approved 5 2 2 15 24 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
Applied 38 38 1 10 13 43 6 149
problem’.154 In fact, the only recorded complaint the Government received
Cons. 12 2 1 3 18 about the potential effects of amending section 22(1) of the Copyright Act
Dist. 3 1 4 was from Disney.155 There were even some who believed that Government
Cited case citing 5 3 18 26 should not pay attention to a problem specifically caused by commercial
Coco practices developed by Disney.156
Cited case 10 2 12 Arguably, Disney and King Features Syndicate had preferred to ground
approving Coco their licensing and merchandising activities in copyright law, as opposed to
design law, because the intangible property was acquired automatically in
Applied case 1 2 18 1 22
many different countries.157 By the 1940s, international copyright was suf-
approving Coco
ficiently flat that it could be easily navigated throughout the world without
Applied case 11 11 the need to establish a network of agents that could secure local design reg-
citing Coco
istrations. More importantly, copyright was the suitable platform not only
Cited similar 1 9 1 11 to syndicate intangible property but also to develop licensing and merchan-
test dising activities. In that sense, it is not a surprise to see how they evidently
Applied similar 9 4 13 preferred the Popeye decision to continue being the law that governed their
test to Coco practices. In hindsight, one could also speculate that the syndicate’s particu-
Dist. similar test 1 1 lar emphasis on publicising and marketing the authorship of cartoon strips,
to Coco
TOTAL 103 43 2 1 28 83 138 8 1
151 ‘Opinion: Copyright by Lionel Heald, 8 May 1956’; BT 209/577, NA. and ‘Opinion:
citations
Copyright Bill Section 10 by EP Skone James, 27 June 1956’, BT 209/582, NA.
three-step test 152 For instance, Franklin Waldheim, Disney executive and copyright lawyer publishing
(per jurisdiction) ‘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
Table 2 identifies those cases from the targeted jurisdictions that have cited & Co and Walt Disney Productions Ltd, giving their views on the Report of the Departmental
Coco for its three-step test—either in simple or elaborated form. The table Committee on Industrial Design’ 1963, BT 209/429, NA.
154 Lionel Heald to Peter Walker, 5 July 1956, BT 209/577, NA.
breaks down the citations into further classifications, ie where the three-step 155 BJD Styles to W Wallace, 10 January 1964, BT 209/429, NA.
test is cited (or referred to), approved, applied, considered or distinguished. 156 ‘To some extent, I think Disney has created some of the troubles by their presumed line
Further, Table 2 notes those instances where a case that cites or approves of action’ in ‘Internal memorandum’ [undated], BT 209/577, NA.
157 That Disney imagined licensing arrangements coupled with copyright was the key strat-
Coco has itself been cited or applied. As well, instances where a test similar
egy to go forward seems to be confirmed in an explanation given by Gunther Lessing, Disney’s
to the Coco three-step test has been cited, applied or distinguished have legal counsel, to Art Arthur, Motion Picture Industry Council, when Lessing wrote: ‘the patent
been noted. From Table 2, it is worth observing that, in the targeted juris- lawyers told us that it “couldn’t be did” as such licenses as we contemplated would put our
dictions that were searched, the Coco three-step test has been applied in 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 com-
149 cases and approved in 24 cases. Further, decisions approving the Coco petition’; see GR Lessing to A Arthur, 18 November 1949, Motion Pictures Council Records;
three-step test have been applied in 22 cases and tests similar to the Coco Correspondence 1949–1952, 1-f.8, AMPAS. Similarly, in the 1920s, King Features Syndicate
three-step test have been applied in 13 cases. The jurisdictions in which 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
the application of the Coco three-step test has been greatest are (in order): ‘Brief in Support of Motion to Dismiss’ 18, in King Features Syndicate Inc v Rudolph Fleischer
Australia; England and Wales; and Ireland. Notably, the Coco three-step et al, Southern District of New York Equity, Case Docket #26-397, NARA.
230 Jose Bellido Coco v AN Clark (Engineers) Ltd (1969) 259
and the special care they devoted to the development of (copyright) credit Table 1: (Continued)
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 No of Cases
the form of attribution that came to circulate in its aftermath. Copyright Singapore 10
had emerged as an economic and social platform for licensing and merchan- Scotland 3
dising activities where syndication was the basis of the intangible property
Northern Ireland 3
right.
Ireland 50
Strasbourg 3
TOTAL 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 occa-
sions 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 non-
targeted 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.
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 23 My research assistant also searched Westlaw International plus hard copy indexes to U.S.
line: By arrangement with King Features Syndicate Inc. and Segar. The line must be used on all Law reports.
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.
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.
9
Table 1: Cases Citing Coco v Clark (1968–2016)
No of Cases Slee & Harris’s Application (1966)

England Wales 170
— UKSC 1 BRAD SHERMAN
— HL 6
— CA (Civ) 38
I. INTRODUCTION
— Ch D 50
I
— Ch D (Birmingham) 2 N MAY 1962, British Petroleum and two of its employees, Patrick Slee
— Ch D (Manchester) 1
and Pauline Harris, lodged two related patent applications at the British
Patent Office for improvements in the field of computer-based data pro-
— Ch D (Patents Ct) 8
cessing. The applications were initially rejected on the basis that the subject
— Fam Div 2 matter did not fall within the remit of the 1949 Patents Act and, as such,
— QBD 34 were not patentable. The 1966 decision of Slee & Harris’s Application1 was
— QBD (Admin) 1 a preliminary hearing of these objections.
The first application, Application Number 19463, was for a method of
— QBD (Admin) (Manchester) 1
operating a known (general purpose) computer so as to improve its effec-
— QBD (Comm) 2 tiveness in data processing. The Patent Office objected to the application
— QBD (TCC) 1 on the basis that the alleged invention did not fall within the scope of sec-
— QBD (Merc) (Manchester) 1 tion 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
— QBD (Manchester) 1
of Monopolies. The superintending examiner, JV Hudson, agreed, holding
— Information Tr 9 that because the outcomes of the computer-based invention were limited to
— PCC 2 ‘intellectual information’ it was not a ‘vendible product’ and, as such, not
— PO 1 a manner of new manufacture. Hudson rejected the claim on this basis. In
response, the applicants put forward an alternative claim to a computer
— CAT 1
programmed to operate with ‘improved effectiveness in data processing’.
— UKFTT 4 Unlike the initial claim, Hudson held that this was a claim to a machine
— UKIPO 1 modified in a particular way in order to achieve a particular result. On this
— UKUT 3 basis, he held that the claim was for a manner of new manufacture and was
thus potentially patentable.
Canada 110
The second related application, Application Number 19464, claimed
Australia 202 the means for controlling a computer so as to bring about the improve-
New Zealand 53 ments in data processing outlined in the first application. The initial exam-
USA 1 iner 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
(continued)
1 Slee & Harris’s Application (1966) RPC 194.

232 Brad Sherman Coco v AN Clark (Engineers) Ltd (1969) 257
written on a piece of paper in an appropriate computer language. Building Megarry J’s major concern was how this doctrine would be practically
on the idea that these were mere descriptions or expressions, it was argued applied. He was particularly concerned about situations where information
that they were not patentable. The applicants responded that the means for was a mixture of partly public and partly private information—how could
controlling the computer could also be seen as ‘any integer that co-operated a recipient realistically only use the public information? This led Megarry
with the computer to make it operate in a certain way’. Given that this J provisionally to conclude that in this instance perhaps ‘the essence of the
potentially included mechanical cams, which were clearly patentable sub- duty seems more likely to be that of not using without paying, rather than
ject matter, the applicants argued that the means for controlling the com- of not using at all’.21
puter outlined in the application should be patentable. Hudson accepted Having examined Coco in detail, this chapter now turns to assess the
this argument and allowed the application to proceed. impact that this decision has had on the law of confidence, beginning with
In essence Slee & Harris’s Application was concerned with the subject a quantitative analysis.
matter eligibility of what might best be called software-related subject mat-
ter. Subject matter eligibility operates in patent law as a threshold question
that precedes other doctrinal considerations such as novelty, inventive step,
II. QUANTITATIVE ANALYSIS
and sufficiency of disclosure. When thinking about whether subject matter
is patent eligible, it is important to distinguish between situations where One way of assessing the reach and influence of Coco is to ascertain the
specific inventions are presented to the law for consideration, and situations number of cases in which it has been cited and relied upon. As such, a
where general classes or types of subject matter are discussed. That is, it is comprehensive search was undertaken to identify all cases in which Coco
important to distinguish between situations where the focus is on whether has been cited in the following jurisdictions: England and Wales; Ireland;
the subject matter disclosed in a specific patent application is patent eligible Northern Ireland; Scotland; the United States; Canada; Australia; New
and situations where the central concern is whether a general class of subject Zealand; and Singapore. During the search, cases in other Commonwealth
matter is, or should be, protectable. jurisdictions were identified, but a targeted search was not carried out (due
The process of determining whether a specific invention is patent eligible to lack of comprehensive access to reported cases in these jurisdictions).
is a multi-step process. While there is no fixed pattern, it can usefully be Further, the search sought to ascertain whether it was the three-step test—in
divided into two stages. In the first instance, it is necessary to characterise simple or elaborated form—or injunctive relief part of the decision that was
the subject matter under consideration. Once the subject matter has been relied upon. As will be seen, the three-step test was most frequently cited
characterised, it is then necessary for it to be categorised, either as patent and so a further analysis was undertaken to identify whether this test was
eligible or patent ineligible. In some legal regimes, such as in the United cited, applied, approved, considered, or distinguished.
Kingdom (post-1977) and Europe (post-1973), the legislature provides an Some further reflections on the methodology should be made. Both online
exhaustive and detailed list of the classes of invention deemed to be non- and offline sources were consulted in this search (listed in the Annex). The
patentable subject matter. In other jurisdictions, such as in pre-1977 United date range for the searches of published reports were from 1 July 1968—
Kingdom law (where subject matter was defined as a ‘manner of new manu- when Coco v Clark was decided—to June 2016 and a mixture of search
facture’ under section 101 of the 1949 Patents Act) and in the United States, terms were used (listed in the Annex). The search was conducted by a
the task of determining the classes of patentable subject matter, as well as research assistant,22 along with the initial classifications of the case as cited,
how they are to be treated legally, is left to the courts, patent officials and approved, etc. However, these classifications were all verified and finally
others to decide. Once the categories are agreed on, they function like juridi- determined by the author pursuant to a manual analysis (ie reading the
cally sanctioned boundary objects that help to organise and shape the types case), as opposed to following the headnote guidance. As such, there are
of things protected by patent law. examples of where case headnotes indicate Coco as merely being referred
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 21 Coco (n 1), 423.
settle on an approach to software-related subject matter (the general term I 22 The electronic tabulation of the results of the search is on file with the author.
will use to describe the information technology based inventions that were
256 Tanya Aplin Slee and Harris’s Application (1966) 233
Finally, Megarry J observed in relation to the third requirement that detri- under consideration in the case). The decision is also interesting because it
ment was a debatable component. On the one hand ‘detriment ought to be was decided before the enactment of the 1973 European Patent Conven-
present if equity is to be induced to intervene’,16 yet on the other hand he tion, which shifted the focus of debate away from a general discussion about
conceived of circumstances, involving private information that impacts upon patentable subject matter and the meaning of ‘invention’ to the narrower
a third party, where a person might want to restrain disclosure. However, as question of the meaning of ‘computer program per se’. As we will see, the
there was clearly detriment to the plaintiff, Megarry J did not feel the need decision is also important because it provides an insight into the approach
to resolve this issue but expressed the ‘wish to keep open the possibility of to the patentability of software-related inventions that dominated British
the true proposition being that in the wider form’.17 patent law over the course of the twentieth century and beyond. To under-
Having set out these legal principles, Megarry J applied them to the stand the decision and the insights it offers, we first need to understand the
facts of the case. He found there was plainly an obligation of confidence context in which it was made.
since ‘the whole object of the discussions was that the defendant company
should manufacture a moped based on the plaintiff’s design, and the plain-
tiff imparted his information with that object alone’.18 The first and third II. SOFTWARE IN THE 1960s
requirements of the three-step test were not, however, satisfied. There was
insufficient evidence about whether the information was confidential and Today software is typically thought of as a pre-packaged consumer product
whether there had been unauthorised use by the defendant. Here it is impor- that contains the instructions or code that controls computers. As software
tant to remember that the evidence before the judge included a report of a historians have shown, this was not always the case: ‘Historically speak-
consultant engineer pointing out the resemblances between the two engines. ing … software was not something that was purchased off-the-shelf nor
There had not, however, been any cross-examination of this expert and the was it a single application or product. Rather it was a bundle of systems,
defendants argued that the similarities in design were a function of common services and support’.2 It was not until the late 1960s that software came
knowledge in the field. As such, Megarry J felt ‘in almost complete darkness to be treated as a product and ‘even then software as code represented only
as to the extent to which the ideas were common to the moped world’.19 a small component of a larger software system of services and support’.3
The plaintiffs thus failed to show a strong prima facie case. While there were exceptions, in the 1960s there were no standalone com-
For the sake of completeness, it is also worth addressing the second issue panies specialising in the creation and sale of software products: there was
in Coco—namely, whether to grant injunctive relief. As mentioned above, no organised and discrete software industry to speak of, or at least as we
the lack of a strong prima facie case of breach of confidence pointed to the understand it today.
refusal of interlocutory relief.20 However, Megarry J also distinguished In this environment, users tended to obtain their software in one of four
Terrapin from the facts of this application. The important differences were ways: either from in-house corporate programming staff who would write
that, in this motion, there had been an absence of cross-examination of the software for the employees; from user groups established by computer
witnesses; the plaintiff’s alleged fraud, which could not be determined on manufacturers to facilitate the free sharing of programs, algorithms and
affidavit evidence; and the plaintiff’s engine was not in production. associated information;4 from programming service (or custom program-
This leads to a final observation about Megarry J’s decision. In articulating ming) companies who produced custom written software for users on a
the relevant legal principles for breach of confidence and deciding whether fee basis; or from computer manufacturers who provided software free of
to grant injunctive relief, he took a detour in considering the ‘spring-board’ charge to customers who bought hardware from them (here, software was
doctrine as discussed in Terrapin, Seager v Copydex and Cranleigh Precision. 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
16 Coco (n 1), 421.
17 ibid.
18 ibid.
19 Coco (n 1), 425.
2 N Ensmenger, The Computer Boys Take Over: Computers: Programmers, and the Politics
20 Note that Coco pre-dated the House of Lords decision in American Cyanamid v Ethicon
of Technical Expertise (Cambridge, Mass, MIT Press, 2010) 6.
Ltd [1975] AC 396, which substituted the test of ‘a strong prima facie case’ with ‘a serious 3 ibid, 7.
question to be tried’ in determining the grant of interlocutory relief. 4 RF Brothers and AM Grimaldi, ‘Prater and Patent Reform Proposals’ (1969) 17 Catholic
University Law Review 389, 392.

234 Brad Sherman Coco v AN Clark (Engineers) Ltd (1969) 255
the law. In relation to the software obtained for free from computer manu- there must be an unauthorised use of that information to the detriment of the
factures or through user groups, there was no real need or interest in legal party communicating it.9
protection. To the (limited) extent that software was seen as a proprietary This may be described as the Coco ‘three-step’ test. Megarry J then discussed
object, there was also little call for legal protection. This was because the each limb of the three-step test that he had articulated in more detail—the
close personal relationships that existed between software contractors and ‘elaborated three-step test’.
the companies they created software for minimised the need for legal or On the first requirement, Megarry J referred to Lord Greene’s statement
extra-legal means to control the reproduction or imitation of software. in Saltman that ‘something which is public property and public knowledge’
Over the course of the 1960s, a number of changes took place that gradu- cannot form the basis for a breach of confidence action.10 However, he
ally and haphazardly undermined this pre-modern regime. For my purpose, observed that while common knowledge could not be confidential informa-
one of the most important developments was the gradual emergence of a tion, ‘this must not be taken too far’ and that:
new type of software artefact: the software product. Software products were
standardised off-the shelf programs that were sold separately, some in the Something that has been constructed solely from materials in the public domain
may possess the necessary quality of confidentiality: for something new and con-
hundreds, a few in the thousands.5 The emergence of the software product
fidential may have been brought into being by the application of the skill and
industry not only saw a change in the way software was created, distributed
ingenuity of the human brain … there must be some product of the human brain
and used, it also changed what was expected or demanded of the law. While which suffices to confer a confidential nature upon the information.11
in the past there had been little or no need for intellectual property pro-
tection, suddenly intellectual property was potentially relevant. It was this Megarry J also remarked, in reliance on Cranleigh Precision Engineering
potential that British Petroleum hoped to exploit when it lodged its patent Ltd v Bryant,12 that the ‘mere simplicity of an idea does not prevent it being
applications in 1961. confidential’, adding that ‘[i]ndeed, the simpler an idea, the more likely it is
At the time when the applications were examined in the early 1960s, there to need protection’.13
was a great deal of uncertainty about the state of the law and how it applied In relation to the second requirement, Megarry J noted that from the
to software-related subject matter. While a number of information tech- authorities he was not ‘able to derive any very precise idea of what test is to
nology-based patents had already been granted protection, as they had not be applied in determining whether the circumstances import an obligation
been considered by the courts, the law’s position on this novel form of sub- of confidence’.14 Nevertheless, Megarry J went on to articulate a test:
ject matter was not clear. While some of the older classes of subject matter, It may be that that hard-worked creature, the reasonable man, may be pressed into
such as kaleidoscopes, steam engines or dyes, may now seem odd or quaint, service once more; for I do not see why he should not labour in equity as well as
it is relatively easy to compile a list of the different types of subject matter at law. It seems to me that if the circumstances are such that any reasonable man
that have been presented to the law for evaluation over the years. Recent standing in the shoes of the recipient of the information would have realised that
examples include synthetic biology, business methods, nanotechnology and upon reasonable grounds the information was being given to him in confidence,
isolated genetic sequences. Although, with hindsight, it may be relatively then this should suffice to impose upon him the equitable obligation of confidence.
easy to identify the subject matter under consideration at a particular point 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
of time, when new forms of subject matter are first presented to the law for
venture or the manufacture of articles by one party for the other, I would regard
scrutiny there is often confusion about what the subject matter should be
the recipient as carrying a heavy burden if he seeks to repel a contention that he
called, what its defining features are and how it compares to other types was bound by an obligation of confidence: see the Saltman case at page 216.15
of subject matter. Given that would-be classes of potential subject matter
are almost by definition novel, this is not surprising. What is more surpris-
ing, 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 9 Coco (n 1), 419.
Slee & Harris’s Application. It also remains the case with software-related 10 Saltman (n 3), 215.
11 Coco (n 1), 420.
inventions more generally. 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.
5 M Campbell-Kelly, From Airline Reservations to Sonic the Hedgehog: A History of the
Software Industry (Cambridge, Mass, MIT Press, 2004) 3–4.
254 Tanya Aplin Slee and Harris’s Application (1966) 235
Finally, this chapter concludes by offering some reflections as to the possible There were a number of reasons why the subject matter in issue in
reasons for Coco’s influence and its likely role in future years. Slee proved to be so problematic. One key reason for this was because,
At the centre of this dispute was a two-stroke engine for a moped. The as Nathan Ensmenger says, software is quintessentially a heterogeneous
plaintiff claimed that he had designed a new moped—the ‘Coco’—and sup- technology that is ‘inextricably linked to a larger social-technical system
plied the defendant with confidential information relating to its design with that includes machines (computers and their associated peripherals), p eople
a view to embarking on a joint venture. Negotiations for such a joint venture (users, designers and developers), and processes (the corporate payroll
abruptly came to an end and the defendant advised that it would make its system, for example)’.6 As would-be subject matter, software’s heterogeneity
own moped—the ‘Scamp’—to a different design. Subsequently, the defend- presented real problems for the law. The reason for this is that when
ant manufactured and sold its Scamp moped, which it admitted shared the determining the standing of a class of subject matter, patent law cannot and
same type of piston and carburetter as the ‘Coco’ moped, which was not in does not embrace an open-ended view of techno-scientific objects. Instead,
production. The plaintiff then sought an interlocutory injunction against patent law needs to reduce the open-ended, fluid and heterogeneous tech-
the defendant to stop them making and selling their ‘Scamp’ moped, which nology into something that is both closed, demarcated, and predictable and,
the plaintiff alleged was similar in design to the engine in the Coco. The two at the same time, flexible enough to accommodate both variations across
central issues for consideration were: 1) whether there had been a breach the class of subject matter and also changes to the subject matter that occur
of an obligation of confidence; and 2) whether an injunction ought to be over time.
granted. Megarry J decided that there was no prima facie case of breach of Another reason why software-related subject matter created so many
confidence and that an injunction should not be granted. He dismissed the problems for the law related to the fact that, from the outset, software was
motion, subject to undertakings given by the defendant to keep on account defined negatively as those computer-related things that were not hardware.
a royalty per Scamp moped. Indeed, in the 1959 article in which the term was first used, John Turkey
Described as above, Coco is a straightforward interlocutory decision. Yet, referred to software as those elements of a typical computer installation
as we shall see, it has had enormous influence on the law of confidence. To that were not ‘tubes, transistors, wires, tapes and the like’.7 The difficulty
understand why this is so, it is important to expand upon the reasons for of defining something that was already defined in opposition to what it was
Megarry J’s decision. not helped to contribute to software’s ‘widespread, ill-defined use’.8 The dif-
On the issue of whether there was a breach of confidence, Megarry J ficulties in ascertaining the contours of the subject matter were compounded
began by observing that ‘[t]he equitable jurisdiction in cases of breach of by software’s intangibility which meant, amongst other things, that there
confidence is ancient’4 and was ‘reasserted’ by Prince Albert v Strange.5 As were no obvious traces or markers that could be relied upon to demarcate
there was no contract between the parties, Megarry J had to consider ‘the the boundaries of the subject matter.9
pure equitable doctrine of confidence’ and asked ‘what are the essentials While these factors were important, perhaps the most important reason
of the doctrine?’6 After citing three Court of Appeal decisions—Saltman, why patent law found software so problematic was because of the way
Terrapin Ltd v Builders’ Supply Co (Hayes) Ltd7 and Seager v Copydex8— that the subject matter had been construed within the law which, in turn,
as ‘of the most assistance’, Megarry J went on to state these essentials, in was a consequence of the way that the domains of law and information
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
6 N Ensmenger, ‘Software as History Embodied’ (January–March 2009) 31(1) IEEE Annals
the words of Lord Greene, M.R. in the Saltman case on page 215, must ‘have
of the History of Computing 88.
the necessary quality of confidence about it’. Secondly, that information must have 7 J Turkey, ‘The Teaching of Concrete Mathematics’ (1958) 65 American Mathematical
been imparted in circumstances importing an obligation of confidence. Thirdly, 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, devel-
4
opment methodologies, user training and consulting services’. Ensmenger, The Computer Boys
Coco (n 1), 419. Take Over (n 2) 7. See also: MW Graham Jr, ‘Process Patents for C omputer Programs’ (1968)
5 Prince Albert v Strange (1849) 1 Macn & G 25 (Ch).
6
56 California Law Review 2, 466, 467.
Coco (n 1), 419. 9 This was made worse by the fact that software was a ‘multidimensional and m utating
7 Terrapin Ltd v Builders’ Supply Co (Hayes) Ltd [1960] RPC 128 (CA).
8
object of analysis’ that ‘undergoes phase transitions, or changes of state. It solidifies at
Seager v Copydex [1967] RPC 349 (CA). 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 10
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 Coco v AN Clark
law is that the relationship is much more complex and interdependent than
is often thought. Techno-science has not only consistently provided poten- (Engineers) Ltd (1969)
tial new candidates for patent protection, it has also played an important
role in allowing the law to deal with and accommodate that new subject
TANYA APLIN*
matter. While science and technology do not provide answers to the norma-
tive question of whether new subject should be protected and if so to what
extent, patent law has consistently looked to science and technology to pro-
I. INTRODUCTION
vide the means to allow the law to describe, demarcate and identify that new
C
subject matter.12 While these techniques, practices and norms—which range
OCO v CLARK1 is assumed to have ‘foundational status’2 in the
from taxonomic and nomenclatural rules and chemical formula through
law of confidentiality. Yet this is surprising given that the case was a
to engineering standards and technological platforms—are mediated by
motion for an interlocutory injunction and because earlier Court of
the legal framework in which they operate, they have consistently played
Appeal decisions, beginning with Saltman Engineering Co Ltd v Campbell
a pivotal role in allowing the law to deal with and accommodate different
Engineering Co Ltd,3 had already recognised that a duty of confidential-
types of novel subject matter. The expectation with software-related subject
ity could arise in equity, independently of contract. This chapter therefore
matter was no different.
interrogates the extent to which Coco may be legitimately considered a land-
The problem for patent law at the time was that the law was unable
mark case and argues that this characterisation is justified. This is because
to find a suitable way of determining how to deal with the subject matter
of the substantial influence that Megarry J’s formulation of the action for
at hand. The key reason for this was because the information technology
breach of confidence has had in England and Wales, Ireland and throughout
industry was divided both in terms of what the subject matter was and also
the Commonwealth.
how it was to be interpreted. As a patent examiner wrote, the most prevalent
This chapter begins by examining the key findings and reasoning in Coco
problem in the debate over the patentability of computer programs was the
(section I). It then discusses the significance of the decision through a quanti-
‘lack of effective communication between the parties involved’.13 This was
tative analysis, identifying the number of cases in which Coco has been cited
primarily attributable to the lack of ‘concrete, workable definition set forth
in multiple jurisdictions (section II). Section III then undertakes a qualitative
by the computer or software industry for even the most basic of terms’.14
analysis of the impact of Coco, focusing particularly on appellate court deci-
The reason for this was that there were two different and competing ways
sions in England and Wales, Ireland, Australia, Canada and New Zealand.
of thinking about information technology-based inventions in operation at
the time. One approach, which focused on the computer program as an end
* My sincere thanks go to Mr James Parish, LLM (Distinction) (KCL) and currently a
10 See also GC Diaz, ‘Embodied Software: Patents and the History of Software development, Ph D student at the University of Cambridge, who was my research assistant for this project.
1946–1970 (July–September 2015) IEEE Annals of the History of Computing 8. He provided invaluable support in gathering and electronically tabulating data relating to Coco
11 For a critical account of this way about thinking law and technology see: A Fish, Laying v Clark and in copy-editing this chapter.
Claim to Yoga (Cambridge, Cambridge University Press, forthcoming). 1 Coco v AN Clark (Engineers) Ltd [1968] FSR 415 (Megarry J). The case was also reported
12 In many instances patent law internalised the scientific and technical techniques that in [1969] RPC 41 and (1968) 1A IPR 587.
were used to define, demarcate and categorise different types of subject matter. It should be 2 T Aplin, L Bently, P Johnson and S Malynicz, Gurry on Breach of Confidence: The Protec-
noted that this was not necessarily a direct nor subservient process. In some situations, the law tion of Confidential Information, 2nd edn (Oxford, Oxford University Press 2012), [2.139].
pushed back and demanded and brought about changes in scientific practice. 3 Saltman Engineering Co Ltd v Campbell Engineering Co Ltd (1948) 65 RPC 203 (CA).
13 T Buckman, ‘Protection of Proprietary interest in computer programs’ (1969) Journal of Described above (n 2) at [2.129] as ‘Unquestionably, the single most important development
the Patent Office Society 135, 138. for the modern law of confidence’ because ‘it did not rely on contract or copyright but on an
14 ibid. implied duty of confidentiality’.
252 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 soft-
ware, which meant that it could legitimately and realistically be viewed as
either a discrete and distinct commercial object or as a heterogeneous tech-
nological 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 infor-
mation 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 algo-
rithm or musical composition. Such creativity as exists lies solely in the develop-
ment 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 Slee and Harris’s Application (1966) 251
The argument that the subject matter should be limited to static two- approach to the way that subject matter has been characterised or classi-
dimensionalprograms also allowed hardware manufacturers to argue that fied: different types of the subject matter have been used at different times,
as programs merely specified, in greater or lesser detail, the manner in which often interchangeably and without explanation. There is not only diver-
something may be implemented that ‘the program is no more the subject sity between judgements, there is sometimes even diversity within a single
matter of patent application than is the schematic diagram of an electrical judgement. This has not only made it difficult to predict how the law might
circuit’.19 respond in a given situation, it also makes it difficult to compare different
For hardware manufacturers and their supporters, viewing computer pro- decisions ostensibly dealing with similar types of subject matter. For anyone
grams as static, flat and inert entities shaped the way computers were por- who has struggled with the question of the patentability of software-related
trayed as machines.20 As IBM argued, the programming of a computer ‘does subject matter under the 1977 Patents Act, the problems created by this way
not vary the actual nature of the computer so as to constitute a patentable of thinking are very clear.
invention’.21 By arguing that a computer was the same machine irrespective
of whether it contained a new and different program, hardware manufactur-
ers 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 con-
sideration should be. While hardware companies thought that the ques-
tion 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.
While the introduction of a temporal dimension into discussions about sub- The second difference between hardware and software firms was in terms
ject matter eligibility may have brought the legal analysis into line into with of the way that the technology was construed. While hardware companies
the way software was seen by the information technology industry (or at had presented programs and hardware as discrete and separate objects,
least a part thereof), it only added to the problems that the law was already software producers argued that the technology only made sense when they
experiencing at the time. This is because, unlike the approach suggested by were seen in combination.24 This was because on its own a programmable
hardware and software companies, this way of framing the subject matter machine such as a general-purpose computer was ‘merely a “warehouse”
did not provide an answer to the question of what the subject matter was of unrelated parts’.25 While these protean machines had potential, it was
and how it should be interpreted. Instead, it merely added a new question only when the program and hardware were amalgamated to form a spe-
and an extra layer of complexity to the subject matter enquiry: where and cial purpose machine that the potential could be fulfilled.26 That is, it was
how was the line to be drawn between a computer program and a pro- only when the computer was combined with a program that these ‘moronic
grammed computer? These problems were compounded by the fact that no machines’ were ‘capable of accomplishing such varied jobs as corporate
matter how much the law embraced the performative and dynamic nature payrolls and Apollo moon shots’.27 When loaded with a specific program,
of computing, it did not and could not operate with an object in motion. which ‘ transfers the latent power of the theoretically general-purpose
Instead, it was forced to produce a freeze frame of those iterations: ‘an machine into a specific tool for solving real-world problems’,28 a computer
image excerpted from a much longer, much more dynamic flow, like a well- becomes a special purpose machine: for example, ‘an inventory control
placed photograph of unfolding events’.54 The challenge for the law was machine, a tax-return machine, a machine for automatically controlling a
determining where and how that line was to be drawn. factory such as an oil refinery, a medical diagnosis machine, an engineering
Rather than helping to resolve the question of what the subject matter design machine for performing various calculations and for designing other
was and how it was to be interpreted, the approach that was foreshadowed machines etc’.29
in Slee only served to compound the existing problems. The particular prob- One of the consequences of seeing the technology in this way is that it
lem here was that the subject matter could take many different forms, both allowed software companies to argue that a program was more than a mere
in terms of whether it was seen as being two, three or four-dimensional and, set of instructions. In particular, it allowed them to suggest that software was
once this decision had been made, where that subject matter started and a machine device that structures the general-purpose hardware to become a
ended. There were also questions about the level of abstraction that should specific purpose machine. When viewed functionally, the addition of a soft-
be used to describe the technology (which in turn presupposed some sense ware program to control a general-purpose computer was said to ‘be just
of how the technology was layered), and the factors that could be used not as much a machine addition to it as the additional hardware programming.
only to demarcate and identify the limits of the technology but also to trace In both cases, the addition of programming results in a machine system dif-
the intangible as it moved between different formats and registers. ferent from the original’.30 Importantly, this allowed software producers to
Over the course of the twentieth century and beyond, a range of differ- argue that the subject matter was potentially patentable.
ent 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 24 ibid.
subject matter. These problems were made worse by the speed of change 25 EJ Brenner, ‘Guidelines to Examination of Programs’ (1966) 829 Official Gazette of the
within the industry, the inherently intangible nature of the subject matter, United States Patent Office 2, 442.
26 General purpose computers ‘can do anything for which we can provide suitable
and the particular way that the subject matter was construed within patent
instruction … that is the source of its power’. However, ‘precisely because it can do any-
law. Furthermore, as Slee shows, while decisions have been made about thing, it can do nothing in and of itself. It does things only when we provide the programs
what the subject matter is, the question has always remained fluid and sub- that cause the universal machine to emulate particular machines of our design’. MS Mahoney,
ject to change. As a result, it is not possible to identify a consistent or clear ‘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
54 K McGee, Bruno Latour: The Normativity of Networks (Abingdon, Routledge, 2014) 9. of Technical Expertise (Cambridge, Mass, MIT Press, 2010) 5.
It is important that we do not underestimate that ‘tremendous work is required to render 29 Jacobs, ‘Computer Technology (Hardware and Software)’ (n 23) 51.
materials inert’; ibid, 192. 30 ibid, 52.

Another point of difference between hardware and software companies is does show, however, is that while there were issues that were uncertain
was in terms of the way they saw programmed computers as machines. and unclear at the time, by the mid-1960s the groundwork had already been
While hardware companies argued that programming did not change the laid for a particular way of thinking about software related subject matter.
nature of the computer, software producers argued that by ‘programming Importantly, while the European Patent Office may have shifted away from
a computer, the user creates a new machine’.31 As Robert Nimtz, from Bell this approach when it adopted the any-hardware approach to patentable
Laboratories, explained: subject matter (whereby the existence of any type of technology is sufficient
[d]uring the actual execution of a program, a logical process is taking place or
for something to be deemed patent eligible),49 this approach still dominates
a new logical machine is taking form … During such execution, a new logical in the United Kingdom today.50
machine is formed and new logical processes are carried out on that new machine. The approach outlined in Slee was one that focused on the process by
Generally speaking, it is these new extant machines and extant processes that are which the two-dimensional static program was transformed into a novel
the subject matter of patent claims.32 three-dimensional machine. One of the notable things about this approach
is that introduced a new temporal dimension into discussions about the
This way of viewing the technology enabled software producers to argue that
patentability of software-related subject matter. This was the ‘four-dimen-
the programmed computer acquired a new function that was recognisable
sional machine, the fourth dimension being time, that existed solely during
by patent law. For software producers, what made modern electronic digital
the execution of a novel and unobvious program on a general-purpose digi-
computers unique, and the reason why they differed from piano players and
tal computer’.51 This way of thinking about software-related subject matter
jacquard looms, was their ‘ability to be reconfigured, via software, into a
was captured in the remark by George Eltgroth, Patent Counsel in the Infor-
seemingly infinite number of devices … it is the ability to be programmed
mation Systems Division at General Electric Company, that a ‘programmed
via software that … encapsulates the essence of m computing’.33
odern
computer represents a new class of machines in which differences may be
While computers were universal machines which could ‘be programmed to
perceived by accepting the time dimension as an instrument of resolution, as
perform an almost infinite range of operations from a musical synthesizer
well the dimensions of physical space, the latter being the presently accepted
and a payroll system through to an airline reservation system, as a classi-
dimension for resolving the difference between machines’.52 As Eltgroth
cally designed machine, a piano roll would never change a player piano into
explained:
anything but what it is’.34
Over the course of the 1960s, hardware and software companies repeated There is no doubt that the computer at rest is a machine. There is also no doubt
their strategic and self-serving arguments about what the software-related that the computer at rest is wholly the creation of the hardware layout man. But
subject matter should be and how it should be interpreted in a range of a computer does not function at rest. Rather, it functions as a dynamic instrument
venues including conferences, academic journals, trade magazine, policy 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
reviews and newspapers. In so doing they not only highlighted how impor-
machine or of process.53
tant 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 mat- 49 See L Bently and B Sherman, Intellectual Property Law, 4th edn (Oxford, Oxford
ter, where the question of what the subject matter was (and, once this was University Press, 2014) 465–71.
50 Frustrated by the uncertainty and confusion that accompanied the various efforts to navi-
decided, how it was to be characterised, defined and described) was largely
gate patentable subject matter in relation to computer-related inventions, the European Patent
resolved within the relevant scientific and technical communities and then 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 suf-
ficient for something to be deemed patent eligible. Under the new approach, the mere presence
31 Brief for Amicus Curiae Institutional Networks Corporation, Gottschalk v Benson,
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.
Supreme Court of the US, No 71-485 (October Term, 1971) 4. 51 GA Heitczman, ‘Computer Programs are patentable’ (1970) 113 Seton Hall Law Review
32 RO Nimtz, ‘The Data Processing Revolution’ in Software Protection by Trade Secret,
1, 113, 127.
Contract, Patent: Law, practice, and forms (Patent Resources Group, Washington, 1969) 129. 52 Eltgroth, ‘Software and Patent Law’ (n 44) 3. The idea of a machine in which ‘agency
33 Ensmenger, The Computer Boys Take Over (n 2) 5.
34 PE Ceruzzi, Computing: A Concise History (Cambridge, Mass, MIT Press, 2012) 56.
functions are distributed in time, as well as space … the duality of physical space and informa-
tion space’.
53 ibid.
focus on the output of the invention and, in an attempt to delimit and bound adopted in the law, with software these questions were aired in legal fora.
the intangible invention, the need to show a physical effect. That is, instead of the technical or scientific community agreeing on what
What we see in Slee is, in effect, the acceptance of the approaches the subject matter was and how it was to be characterised, with software the
advocated by both the hardware and software companies. While the legal industry worked out their ontological issues through the law. As a result, the
way of thinking about software-related subject matter that is exemplified in task of determining the nature and characteristics of software-related sub-
Slee and that evolved throughout the 1960s shared characteristics with the ject matter was treated as a legal problem to be resolved using legal terms.
approaches favoured by hardware and software companies, it differed in One of the reasons why Slee is interesting is because it is one of the first
one important respect. While the difference is subtle, it is important. While occasions in which courts in the United Kingdom addressed these issues. It
computer programs were singled out for special attention, when determin- is also interesting in so far as it provides us with an insight into the approach
ing what the subject matter should be, the law could not and did not limit that has been employed in patent law in the United Kingdom in its dealings
itself to the two-dimensional program as such. Nor did it limit itself to focus- with software-related subject matter over the last 50 or so years. It is to this
ing on the programmed machine, that is, to the three-dimensional machine. question that I now turn.
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 III. PATENT OFFICE EXAMINATION
the (unpatentable) computer program and the (potentially patentable) pro-
grammed computer. Importantly, this new way of looking at patentable Application Number 19463 was concerned with the programming of known
subject matter did not replace the alternative approaches favoured by hard- (general purpose) computers to bring about improvements in a form of data
ware and software companies. Rather, it not only embraced them but also processing known as linear programming. Specifically, it was concerned
added this additional way looking at would-be subject matter to the existing with the control of digital data-processing machines to find ‘solutions of sets
enquiries. of simultaneous linear equations or inequalities, or mixtures of both. Such
While hardware and software companies presented their arguments as sets of equations can be descriptive of industrial processes’. Linear program-
alternatives, patent law managed to embrace both of these different inter- ming involved the programming of a computer in such a way as to optimise
pretations at the same time. That is, while the hardware and software com- or improve the solutions to particular problems. Typically, these linear pro-
panies presented the choice of the subject matter as being either a computer gramming applications used a method (known as the simplex method) to
program as a set of instructions or as a programmed computer, this new control a computer to solve such problems. Under this method, a set of three
approach embraced both of these ways of thinking about patentable subject linear equations were arranged to solve a specific problem.35 Traditionally,
matter simultaneously. What we see emerging during this time was a situa- the three steps were performed in a sequential linear fashion. The applicants
tion where the two apparently conflicting ways of thinking about software- realised that in the computation of the solution matrix, the second step
related 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 35As the application stated:
duality was also reflected in the different ways that the subject matter was The computer is programmed to perform, inter alia, the following steps:
represented in the applications at issue in Slee. (1) Scan the matrix to identify a column containing an element satisfying a predeter-
In a sense the acceptance of the potential patentability of programmed mined condition. This column is called the ‘pivot column’ and the position of this
element in the matrix is the ‘pivot point’.
computers, combined with a growing emphasis on the computer program, (2) To perform a transforming operation, called an ‘iteration’ on the matrix, to pro-
helped to lay the foundation for a third way of thinking about software- duce a resultant second matrix, which is stored. It need here be said only that this
related subject matter. This is not to suggest that Slee is the origin of this operation comprises a series of arithmetical operations involving the elements of
the matrix and the value of the pivot-point element.
approach, nor that the approach was fully formed in the judgment. What (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
47 Or on the computer program as a discrete commercial object or from a broader more a matrix is generated which is devoid of pivot columns. This final matrix is the
heterogeneous technological standpoint. solution matrix and gives the values of the component variables which, when
48 Ironically, the approach taken to software mirrors the dual function of the patent, which applied to the process, produce the optimum result’.
is at once a technical document and, at the same time, a form of commercial currency.
could be performed while the first one was still proceeding. The result was accepted that computer programs, as descriptions of sets of machine instruc-
that a number of steps (or iterations) could be in train simultaneously. When tions, were not and should not be patentable subject matter. Over the course
put into effect, this resulted in a more economical use of the computer. of the 1960s and 1970s the computer program’s role as a boundary object
To this end claim 1 was for: was reinforced by and given a certain sense of legitimacy. This occurred as
A method of operating data processing apparatus, to produce a solution matrix
a result of a series of institutional, bureaucratic and juridical changes which
for a plurality of simultaneous linear functions, comprising controlling iterative gradually enmeshed the place of the computer program within intellectual
processing on a set of data representations of the simultaneous linear functions property law, the most important being the 1973 European Patent Con-
in such manner that an iteration is initiated while a previously initiated iteration vention and the 1977 Patents Act (which specifically excluded ‘computer
is still proceeding so that a plurality of iterations proceed concurrently at one or programs per se’ from the scope of patentable subject matter), the Patent
more stages of the processing. Cooperation Treaty (which from 1969 allowed Member States to exclude
During the hearing, the applicants proposed an alternative claim (claim 2): computer programs from the examination process),43 and British foreign
and international copyright practice (which adopted the computer program
A method of operating a computer to produce a solution matrix for a plurality as the archetypical subject matter).
of simultaneous linear functions which method is a modification of the ‘Simplex’ At the same time as the non-patentable computer program came to
method and comprises controlling the iterative processing in such manner that be entrenched as a central organising principle in patent law, it was also
after the initiation of at least one of the iterations, and while that iteration is still
accepted that a general purpose computer programmed to undertake a spe-
proceeding, a further iteration is initiated and proceeds concurrently with the first
mentioned iteration during the remainder of the first mentioned iteration.
cific task was potentially patentable. In a sense, it was accepted that the
‘three-dimensional machine that results from storing a novel and unobvious
Because of problems with the breadth of claim 1 (which were not thought program in the core memory of a computer’ was potentially patentable.
to be insurmountable), Hudson decided to focus on the second claim, which This was because, as Hudson accepted in relation to claim 4 of Application
he characterised as a ‘method of operating a known machine’. The problem 19463, the programmed computer was ‘structurally different from the same
for the applicant, however, was that the product or result of this method was machine without the program since its memory elements are differently
limited to ‘intellectual information’. This was problematic because a method arranged’.44 While the focus here was on the ‘ontological or existential pro-
was only a manufacture and thus an invention for the purposes of the 1949 cess’ or ‘the actual process, procedure or method which is carried out as the
Patents Act if it resulted in the production of a ‘vendible product’.36 Here program instructions are executed’,45 nonetheless the focus remained with
Hudson drew upon the 1961 decision of the Australian High Court in the results of that process: the programmed machine.46 In this situation, the
National Research Development Corporation v Commissioner of Patents focus was on the technological (or engineering) nature of the subject matter.
(NRDC)37 where the Court ruled that ‘what is meant by a “product” in While this was similar to the approach that was employed by Hudson and
relation to a process is only something in which the new and useful effect favoured by software companies, one important difference was Hudson’s
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’, 43 See Draft records of the Washington Diplomatic Conference in the Patent Cooperation
the product of claim 2 was limited to intangible intellectual information. 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,
As he explained, ‘the reference to physical phenomena’ means that ‘an end
113, 127. See also GV Eltgroth, ‘Software and Patent Law’ (1966) Patent Law Annual 1.
product comprising merely intellectual information is not within the mean- 45 ‘A Case History: Benson and Talbot: Appellant’s Position: Computer Programs in Gen-
ing given to the word “product” by the learned Australian Court’. These eral’, Appendix C, appended to RO Nimtz, ‘Computer Application and Claim Drafting under
problems were compounded by the fact that although it was possible that current law’ in Software Protection by Trade Secret, Contract, Patent: Law, practice, and forms
(Washington, Patent Resources Group, 1969) 261.
the data produced by the applicant’s methods was vendible (given that it 46 ‘These processes, during their execution, correspond to actual embodiment of a circuit
could be used in the design and control of industrial processes), Hudson which are merely represented by the schematic diagram. For convenience, this aspect of a
said that this was not ‘essential or inherent in the method claimed’. Instead 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
he argued that as the data produced might well be of purely academic inter- hardware companies, ‘as the electrical circuit has to the schematic diagram’: ‘A Case History:
est and have no practical application, it could not be regarded as ‘vendible’ 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,
36 GEC’s Application (1943) RPC 1. Patent Resources Group, 1969) 261.
37 (1961) RPC 134.
the later part of the 1960s and 1970s whereby software-related subject mat- within the meaning given to that term by the Australian High Court. On this
ter came to be seen through the lens of the computer program. basis he rejected the claim.
In effect, what occurred was that the computer program was separated During the hearing the applicants were permitted to submit two further
out, almost fetishised, and given pride of place as a discrete and distinct additional claims (the third and fourth claims). While the third claim was
object within the field of computer technology. While the shift was never rejected on same basis as the second claim, the fourth claim survived and, as
complete—software companies in particular consistently spoke about pro- such, warrants attention. This provided:
grammed machines—it is clear that the computer program came to occupy a A computer having slow and quick access storage, when programmed to solve
special place within discussions about computer-related inventions. The dis- a linear programming problem by an iterative algorithm the iterative algorithm
cussions were reorientated to focus more on the computer program, which being such that (a) data representations are transferred, portion by portion, from
became the lens through which discussions about computer-related inven- slow access storage to quick-access storage, (b) after at least one of the said trans-
tions were framed. fers the transferred data representations are transferred back and forth, without
The pride of place given to computer programs was reflected in the way intermediate transfer to slow access storage, between the quick-access storage and
that the many doctrinal accounts of the field were organised. For example, in the arithmetical unit of the computer where they are processed in accordance with
his 1966 article, Rights in Computer Software (which briefly discusses Slee), at least two iterations of the iterative algorithm, and (c) the processed data repre-
Blanco White limited his discussion to programs and programming tech- sentations are transferred from quick-access to slow-access storage.
niques (in ‘contradistinction … to the “hardware”: the actual machinery’).40 One of the reasons why this claim was held to be eligible subject matter was
In these accounts, the computer program (or the algorithm that was thought because Hudson held that it was ‘directed to a machine which has been set
to underpin it) came to be seen as the ‘intellectual heart of computer into such a condition that it can proceed to solve a particular program by
operation’.41 The computer program also became the lens through which undertaking a series of specified steps’. Importantly, and in line with the way
patents were viewed. This is evident in Slee and many of the other deci- that software companies viewed software-related subject matter, Hudson
sions that followed. At times, the focus on the computer program became held that the subject matter was a machine which had been temporarily
so dominant that software-related patents that did not expressly claim a modified. Given the physical nature of the invention, Hudson concluded
computer program were criticised for obfuscating and disguising the ‘true that the claim fell within the statutory definition of invention and, as such,
nature of their contribution by garbing the patent claims with recitations was potentially patentable.
that appear to be directed to hardware components of digital computers The second, and in some ways more interesting application—Application
and digital computer operations’.42 This distrust of the way the invention Number 19464—was substantially the same as the other application, save
was presented became a dominant concern in interpreting software-related for the fact that the claims were directed to the ‘programming means which
inventions in the latter part of the twentieth century. The preoccupation with control the computer to perform the iterative process in the manner previ-
the computer program also came to shape the way that histories of software ously described’. Claim 1 read:
patenting in this period have been viewed. This is reflected in the fact that
Linear programming means for use in controlling data processing apparatus so
to the extent that histories of patent law in this area reach beyond the 1977
that it effects iterative processing on a set of data representations, which means
Patent Act, they tend to view the history as the story of the attempt, for bet-
are formed in such manner as to cause the initiation of an iteration while a previ-
ter or worse, to patent computer programs. ously initiated iteration is still proceeding, so that a plurality of iterations will
In this context, the computer program came to take on a number of spe- proceed concurrently at one or more stages of the processing.
cific roles. One of the most important was the growing expectation that
the program would operate as a boundary object that regulated patentable Hudson began by noting that the ‘programming means’—that is, the method
subject matter and, at the same time, the boundary between copyright and used to control and harness the general purpose computer to achieve a spec-
patents. In part this built upon the fact that that it was uncontroversially ified 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’.
40 TA Blanco White, ‘Rights in Computer Software’ (1966) Journal of Business Law 339. Building upon a view of software that came to dominate in intellectual
41 GP Katoma, ‘Legal Protection of Computer Programs’ (1965) 47 Journal of the Patent property law, particularly in copyright law, Hudson also noted that the pro-
Office Society 955, 956. gram was written on the tape, but in such manner that the writing could
42 Brief Amicus Curiae for Burroughs Corporation, Gottschalk v Benson, Supreme Court of
the US, No 71-485 (October Term, 1971) 4. subsequently be read by the computer and thus control the computer to
operate according to the program.
Reflecting the view of computer programs favoured by hardware man- of the 1624 Statute of Monopolies and look instead to the principles that
ufacturers, Hudson noted that in ‘all forms, the new thing is the set of have been used to apply the section. The High Court also held that when
instructions; the way in which these are manifested-in the example given, construing the law, it is important to ensure that the boundaries of patent-
by arrangements of punched holes on a tape is irrelevant’. If this view of the able subject matter are fluid enough to encompass scientific and technologi-
subject matter had been adopted, it would have meant that the applicants’ cal breakthroughs. The Court added that for subject matter to be eligible,
‘means’ would have been little more than an unpatentable printed sheet there must be human intervention that creates an artificially created state of
(or mental method). Finding for the applicants, however—and adopting a affairs that has some discernible effect (which is a restatement of the way
view of the technology that aligned more with the approach favoured by the invention has traditionally been portrayed in patent law).39 This was
software companies—Hudson accepted that the means claimed was more reflected in the requirement that for there to be a manner of manufacture it
than a descriptive two-dimensional record of a program (which would have was necessary to show that there was a vendible product.
rendered it was unpatentable). Importantly, he accepted that the claim was Although NRDC provided an important and much needed antidote to the
not limited to punched cards or tapes, but extended instead to ‘any means restrictive and convoluted way that patents had been construed in the mid-
which could be used to control a computer to operate in the way stated in twentieth century, it provides little, if any, real guidance in determining the
the claim’. In particular, he accepted that the means was ‘an integer which eligibility of patentable subject matter. This is because while the reasoning in
physically cooperates with a computer to control the latter to operate in NRDC provides guidance about the general approach to be adopted when
a certain way’. In a reading of the technology that mirrored the approach thinking about patentable subject matter, it does not tell us anything about
favoured by software producers, Hudson accepted that the means could be how we are to determine whether something is ‘artificial’ (and thus a prod-
likened to a ‘cam, shaped according to certain formulae so that, when fixed uct), nor about the criteria to be used when classifying subject matter more
into a machine, it controls the latter in a certain way’. On this basis, Hudson generally. Perhaps the biggest problem with NRDC, and, we can infer, with
accepted that the application was for an invention within the meaning of the Slee, is that it ignores the preliminary and often more important question of
1949 Patents Act and as such, was potentially patentable. the way that the subject matter is characterised. While there is no denying
the important role that artificiality plays in determining subject matter eligi-
bility, it is often subservient to the preliminary question: how is subject mat-
IV. SOFTWARE AND SUBJECT MATTER ELIGIBILITY ter to be characterised? This is because the process of categorisation is often
predetermined by the way that the subject matter is initially characterised.
In many ways, Slee & Harris’s Application is a straightforward and unre- Also noteworthy about Slee—and in this context I am referring both to
markable decision. It simply applies and extends pre-existing case law to the decision of the supervising examiner about the fate of the two applica-
new subject matter, something that has occurred repeatedly over the years. tions as well as to the way that the subject matter was presented in those
In other ways, however, the short and to-the-point decision is noteworthy, applications—is that it highlights a particular approach to software-related
not least because while a number of patents for methods of operating com- subject matter that has shaped the way that patent law interacted, and con-
puters had already been granted at the time, as none of these had been tinues to interact, with information technology-based inventions. The way
considered either by the comptroller or by a higher judicial authority, Slee the applications were drafted, as well as how they were interpreted by the
was one of, if not, the earliest decisions to consider the standing of software- supervising examiner, was notable for the way that they prioritised the com-
related subject matter under British patent law. Beyond this, two additional puter program (and their equivalents). While the language had yet to be
factors stand out. firmed up, it was clear that this included punched tape and cards, as well
One noteworthy thing about Slee & Harris’s Application is that it high- as two-dimensional static and descriptive computer programs. While these
lights a particular and somewhat problematic approach to patentable subject could be read by and control a computer, on their own they were seen to be
matter that remains dominant today. One of the reasons why Slee is prob- merely descriptive non-patentable expressions or instructions. This accorded
lematic is because of its reliance upon the 1959 Australian High Court deci- with the view of the subject matter supported by hardware manufactures. It
sion of NRDC and the approach that it took to subject matter eligibility.38 was also an early indication of a way of thinking that was to dominate over
In NRDC the Australian High Court held that when determining whether
something is patent-eligible, we should ignore the language of section 6
39 See B Sherman and L Bently, The Making of Modern Intellectual Property Law
38 (1959) 102 Commonwealth Law Reports 252. (Cambridge, Cambridge University Press, 1999) 150–51.
292 Luke McDonagh Coco v AN Clark (Engineers) Ltd (1969) 261
Geneva (Switzerland) would be a good location to attract expertise since test was distinguished on only four occasions and in no case in the dataset
the leading scientists in molecular biology lived and worked in Europe.20 was it disapproved or not followed.
In fact, Biogen was the first Europe-based biotechnology firm—albeit one Tables 3 and 4 identify the distribution of citations of Coco and the three-
with close links with Harvard University—and the company went on to step test according to time periods. The cases were allocated according to
become one of the world’s largest and most important biotech companies.21 the date of judgment (as opposed to date of when the case was reported) and
Biogen was shaped by the convergence of commercial interests around the decade relating to 2010 is measured only until June 2016.
academic research.22 According to Stanley Reiser, its founding marked
a historical milestone in the history of science because it crystallised an Table 3: Overall Citations by Decade
‘emerging viewpoint among biohealth scientists that work in a business
corporation is an appropriate extension of their lives in science’.23 Time Period EW AUS CAN IRE NZ NI SCOT SING USA TOTALS
Among the scientists involved in the initial project were Walter Gilbert of
2010–2016 55 46 20 16 15 3 0 4 0 159
Harvard University,24 Kenneth Murray from the University of Edinburgh,
who later became Professor Sir Kenneth Murray,25 Phillip Allen Sharp, 2000–2009 58 70 26 31 16 0 2 4 0 207
Professor at the Massachusetts Institute of Technology,26 and Charles 1990–1999 21 48 43 2 11 0 0 2 1 128
Weissmann, Professor at the University of Zurich.27 All were undoubtedly 1980–1989 25 33 17 1 8 0 0 0 0 84
world-leading experts in their respective fields of study, and two of them, 1970–1979 11 4 4 0 3 0 1 0 0 23
Gilbert and Sharp, later became Nobel Laureates.28 The fact that the corpo-
rate structure of Biogen consisted of prominent scientists, including Nobel 1968–1969 0 1 0 0 0 0 0 0 0 1
Laureates, was mentioned by the plaintiff in the proceedings both to give TOTALS 170 202 110 50 53 3 3 10 1
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
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
20 K Noble ‘Venture Capitalists’ New Role’ The New York Times (31 August 1981).
21 J Silverlight ‘Cashing in on DNA’ The Guardian (10 February 1980). 2000–2009 38 48 19 30 9 0 1 3 0 148
22 Kenney, Biotechnology (n 6).
23 SJ Reiser ‘The Ethics Movement in the Biological and Health Sciences’ in RE Bullger,
1990–1999 13 29 32 2 3 0 0 1 1 81
E Heitman and SJ Reiser (eds) The Ethical Dimensions of the Biological and Health Sciences 1980–1989 6 21 8 0 8 0 0 0 0 43
(Cambridge, Cambridge University Press, 2002) 3–20, 9.
24 ‘Copy of newspaper article from Boston Business Journal regarding Walter Gilbert and 1970–1979 4 3 2 0 2 0 0 0 0 11
Biogen, 1984/1985’ JDW/2/2/686/116, CSHL Archives Repository. 1968–1969 0 1 0 0 0 0 0 0 0 1
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. TOTALS 97 137 77 46 27 2 1 8 1
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) Tables 3 and 4 reveal that there was little ‘uptake’ of Coco by the courts in
596; J Durant, ‘Refrain from using the Alphabet: How Community Outreach Catalyzed the England and Wales and in the other targeted jurisdictions immediately fol-
Life Sciences at MIT’ in D Kaiser (ed) Becoming MIT: Moments of Decision (Cambridge, lowing the decision and in the subsequent decade (1970s). From the period
Mass, The MIT Press, 2010) 159.
27 See, generally, P Goujon, From Biotechnology to Genomes: The Meaning of the Double 1970–1979, it is England and Wales that features the highest number of
Helix (London, World Scientific Publishing, 2001) 225; ‘Harvard Wins Key Biotech Patent’ citations (11) to Coco and its three-step test (four). However, it is not until
(1983) New Scientist (8 December), 741. See also AD Chandler, Shaping the Industrial Cen- 1980 onwards that citations to Coco and its three-step test significantly
tury: The Remarkable Story of the Evolution of the Modern Chemical and Pharmaceutical
Companies (Cambridge, Mass, Harvard University Press, 2005) 275–76. increase in number. During the period 1980–1989 citations to Coco are
28 See S Müller-Wille, HJ Rheinberger, A Cultural History of Heredity (Chicago, University
concentrated in Australia, England and Wales and Canada. This increase
of Chicago Press, 2012) 190 and D Yi, The Recombinant University. Genetic Engineering continues in the period 1990–1999 and peaks in the period 2000–2009,
and the Emergence of Stanford Biotechnology (Chicago, The University of Chicago Press,
2015) 173. although continues to be high from 2010–2016. Once again, the citations
29 ‘Case for the Appellants’, HL/PO/JU/3/1913, PA.
are highest in Australia, England and Wales and Canada.
262 Tanya Aplin Biogen v Medeva (1996) 291
When it comes to the Coco three-step test, it is interesting to observe that in UK patent law.15 The case is of interest both historically and theoreti-
the highest concentration of citations occurs in Australia during the periods cally and still has features in need of further scrutiny, even after all this
1990–1999 and 2000–2009 and in Canada during the period 1990–1999. time, not least about how dissimilar the areas of law and science are from
It is not until 2000–2009 that England and Wales features the highest num- a methodological point of view, with each field possessing its own rational
ber of citations to the three-step test (38) although there is a high number processes and own standards of acceptable proof.16 On this, one could say
in 2010–2016 (36). Another observation is that Coco had little influence in that Biogen v Medeva shows—to scholars of science and law alike—that it
Ireland until 2000 onwards. Whereas, New Zealand courts have cited Coco is precisely such friction that makes patent law both fascinating and diffi-
consistently since the 1980s. cult. In this regard, over the course of this chapter I will assess the reasoning
Based on this quantitative analysis, it seems fair to conclude that a modest behind the judgments at the High Court, the Court of Appeal and, finally,
decision on interlocutory relief has been elevated to a landmark case in England the House of Lords, exploring each decision in detail. Following that I will
and Wales, as well as in Australia, Canada and, to a somewhat lesser extent, consider what makes the case a landmark today from the perspective of its
in Ireland and New Zealand. To obtain a better understanding of Coco’s influ- judicial legacy, also taking into account the views of the case participants
ence, however, a qualitative analysis of the case law is also required. This is 20 years on.
undertaken in the next section, where the focus is on England and Wales, Aus-
tralia, Canada, Ireland and New Zealand and primarily the appellate decisions
that have applied, approved or considered Coco in these jurisdictions. II. COMMERCIALISING BIOTECHNOLOGY
To understand the whole story of the litigation—from the Patents Court to

III. QUALITATIVE ANALYSIS 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
A. England and Wales 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 examining the impact of Coco in England and Wales, this section focuses in the blossoming field of biotechnology.17 This occurred during a period of
on appellate decisions of the House of Lords and Court of Appeal, with commercial euphoria surrounding the possibility of profit-making activities
references to lower level court decisions where relevant. This section briefly that emerged with the significant relaxation of the codes of practice and pro-
explains Coco’s influence chronologically and then examines it in more cedures regarding DNA research.18 In 1977 and early 1978 representatives
detail thematically. of a venture capital group (INCO) approached leading scientists with the
As mentioned in section II, there were relatively few citations to Coco dur- idea of setting up ‘a biotechnology company in Europe to use recombinant
ing 1970–1979 (11 in total), which increased to 25 during 1980–1989 and DNA technology to produce commercial products’.19 It was thought that
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. 15 The case is heavily featured in the latest edition of the leading practitioner textbook
From 2000 onwards, the citations to Coco increase significantly (to 58 in on patents: The Hon Mr Justice Birss, A Waugh, QC, T Mitcheson, QC, D Campbell, QC,
2000–2009 and 55 in 2010–2016). Likewise, the citations to the Coco three- 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:
step test increase to 38 during 2000–2009 and to 36 during 2010–2016. ‘Biogen Insufficiency’ (last accessed via Westlaw, 13 December 2016).
When it comes to 1970–1979, the decade immediately following Coco, a 16 A Pottage and B Sherman, Figures of Invention: A History of Modern Patent Law
few tentative explanations are offered as to why there were so few citations (New York, Oxford University Press, 2010) 1–29.
17 C Weissmann ‘Recombinant Interferon—the 20th anniversary’ in P Buckel (ed) Recom-
to Coco. First, Coco was not picked up by commentators as a key author- binant Protein Drugs (Basel, Springer, 2001) 3–42; ‘Harvard Keeps Its Hands Clean’ New
ity. Searches of key treatises24 and journals25 indicate that the case attracted 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.
24 Terrell on the Law of Patents, 9th edn (London, Sweet & Maxwell, 1951), 10th edn 19 ‘Summary of Professor Murray’s work’ in ‘Biogen’s Statement’, HL/PO/JU/3/1913, PA;
(1961), 11th edn (1965), 12th edn (1971) and 13th edn (1982); EHT Snell, PV Baker, and see also W Powell and K Sandholtz ‘Chance, Nécessité, et Naïveté: Ingredients to Create a New
R Megarry, Principles of Equity, 27th edn (London, Sweet & Maxwell, 1973). Organizational Form’ in JF Padgett and WW Powell (eds) The Emergence of Organizations
25 International Review of Industrial Property and Copyright Law (IIC) (1970–1991) and
and Markets (Princeton, Princeton University Press, 2012) 412–16.
CIPA Journal (1967–1971)
290 Luke McDonagh Coco v AN Clark (Engineers) Ltd (1969) 263
concerns and the ways in which the law could imagine industrial objects.7 little discussion. In an article published in 1970, Professor Jones26 refers to
Furthermore, biotechnological firms such as Biogen, Chiron or Genentech Coco in relation to information being protected as confidential where the
emerged as harbingers of a new intensive era of knowledge-based capital- ‘whole result is not known’ even though elements may have been published,
ism in which venture capitalists and scientists joined efforts to produce (and but not protected where it is trivial tittle-tattle.27 Only a cursory citation
secure) results that could be commercialised.8 is made to Coco in relation to when an equitable obligation of confidence
Placing the dispute in its historical context brings other interesting issues arises.28 While there is a key article by Professor Cornish on confidential
into consideration. While the case was being decided, the expectations of information published in 1975,29 this contains passing references to Coco.
political consensus around the EU Biotechnology Directive were very low.9 Professor Cornish cites Coco for the ‘reasonable person’ test for step two30
Although the Directive was finally agreed and passed,10 it is important to and for circumstances in which damages might be granted in lieu of an
note that the case was decided in the midst of a difficult political atmosphere injunction.31 But the Coco three-step test is nowhere mentioned. Moreover,
fraught with fragmented visions of patent law.11 a book on trade secrets by Turner, published in 1962—by the time Saltman
Furthermore, the importance of the case was quickly recognised from a and Terrapin had been decided—reveals substantial resistance to the idea of
pedagogical point of view. Every student of UK patent law began to study an equitable action for breach of confidence.32 Therefore, we might postu-
it, often in great detail, because it quickly made its way into standard intel- late that the equitable action for breach of confidence was still in its nascent
lectual property textbooks.12 Consequently, in exams it was—and still stages of acceptance.33 Second, it is not until 1977 that the Court of Appeal
is—not uncommon for students to be asked to discuss the legacy of Lord considers Coco in two decisions, Potters Ballotini Ltd v Weston Baker34 and
Hoffmann’s statement on ‘Biogen insufficiency’ in the context of earlier Dunford & Elliot Ltd v Johnson & Firth Brown Ltd.35
cases like Genentech (1989) and later cases such as Generics v Lundbeck When it comes to the period 1980–1989, the Court of Appeal refers to
(2009).13 Ambitious students take their time in writing their essays, trying Coco early on in 1982 in Schering Chemicals Ltd v Falkman Ltd36 and
to craft an argument as sly as Lord Hoffmann’s judgment. GD Searle & Co Ltd v Celltech Ltd.37 There is also the recognition of the
For the intellectual property scholar, reading the case today is a nostal- equitable action, as stated in Saltman and applied in Coco, by the House
gic yet stimulating experience. Despite later decisions having narrowed the of Lords in Home Office v Harman.38 While Coco is cited in argument
scope of its effect,14 the judgment should still be viewed as a pivotal decision 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
7 A Pottage, ‘Who Owns Academic Knowledge?’ (2004) 24 Cambridge Anthropology
2, 1–20.
8 B Rasmussen, Innovation and Commercialisation in the Biopharmaceutical Industry 26 G Jones, ‘Restitution of Benefits Obtained in Breach of Another’s Confidence’ (1970)
(Cheltenham, Edward Elgar, 2010) 67; see also M Newell-McGloughlin and E Re, The Evolu- 86 Law Quarterly Review, 463.
tion of Biotechnology: From Natufians to Nanotechnology (AA Dordrecht, Springer, 2006) 55. 27 ibid 467, 471.
9 ‘Biotechnology Committee Report’ CIPA Journal (February 1995) 58–59. 28 ibid 474, fns 43 and 45.
10 Directive 98/44/EC of the European Parliament and of the Council of 6 July 1998 on the 29 WR Cornish, ‘Protection of Confidential Information in English Law’ (1975) 6 Interna-
Legal Protection of Biotechnological Inventions. tional Review of Industrial Property and Copyright Law 43.
11 G Porter ‘The Drafting History of the European Biotechnology Directive’ in A Plomer 30 ibid 49, fn 28.
and P Torremans (eds) Embryonic Stem Cell Patents: European Law and Ethics (New York, 31 ibid 55, fn 49.
Oxford University Press, 2009) 3–28. 32 AE Turner, The Law of Trade Secrets (London, Sweet & Maxwell, 1962) 235 interprets
12 L Bently and B Sherman, Intellectual Property Law (Oxford, Oxford University Press, all the cases (including Saltman and Terrapin) as instances of contractual relationships.
2015) 414–15, 427, 454, 559–90, 1206; WR Cornish, D Llewelyn and T Aplin, Intellectual 33 See also EHT Snell, PV Baker, and R Megarry, Principles of Equity, 25th edn (London,
Property: Patents, Copyright, Trade Marks and Allied Rights (London, Sweet & Maxwell, Sweet & Maxwell, 1960), 600–01 and 26th edn (London, Sweet & Maxwell,1966), 721–22.
2010) 165–66, 211, 222, 248, 254–57; J Davies, Intellectual Property Law (Oxford, Oxford 34 Potters Ballotini Ltd v Weston Baker [1977] RPC 202, 206–07 (Lord Denning MR).
University Press, 2008) 255, 261–62; 281–91, 299–300. 35 Dunford & Elliot Ltd v Johnson & Firth Brown Ltd [1978] FSR 143 (CA), 148.
13 Genentech Inc’s Patent [1989] RPC 147, 272. H Lundbeck A/S v Generics (UK) Ltd 36 Schering Chemicals Ltd v Falkman Ltd [1982] QB 1, 36 (Templeman LJ).
[2008] EWCA Civ 311, [2008] RPC 19 as affirmed by the House of Lords in [2009] UKHL 37 GD Searle & Co Ltd v Celltech Ltd [1982] FSR 92, 99–100 (Cumming-Bruce LJ), 107–108
12, [2009] 2 All ER 955. See also D Brennan, ‘Biogen Sufficiency Reconsidered’ (2009) (Brightman LJ).
4 Intellectual Property Quarterly 476; J Pila, ‘Chemical Products and Proportionate Patents 38 Home Office v Harman [1983] AC 280 (HL), 314 (Lord Scarman, Lord Simon in
Before and After Generics v Lundbeck’ (2009) 20 King’s Law Journal 489 and C Helmers and agreement).
L McDonagh, ‘Patent Litigation in the UK: An Empirical Survey 2000–2008’ (2013) 8 Journal 39 Lion Laboratories Ltd v Evans [1985] QB 526 (CA); Faccenda Chicken Ltd v Fowler
of Intellectual Property Law & Practice 846. [1987] Ch 117 (CA).

14 S Moore ‘Patents: Insufficiency’ (2009) 31 European Intellectual Property Review 40 Bullivant v Ellis [1987] ICR 464, 479–80 (May LJ).
N53–54. 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 11
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 starting- Biogen v Medeva (1996)
point for analysis’.44 Other aspects of the decision are also cited, relating
to subject matter,45 when an obligation arises,46 the requirement of detri-
LUKE MCDONAGH*
ment47 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
I. INTRODUCTION
in Coco as the present law, but only to critique it as unsatisfactory when
T
it comes to improperly obtained confidential information.49 Further, Coco
HE DECISION IN Biogen v Medeva was handed down by the House
was cited in the Industrial Property Citator in 1982 as the main case dealing
of Lords more than 20 years ago.1 Since then, the case has acquired a
with the general principles of breach of confidence. This citator was a key
landmark status in British intellectual property law, not least because
index for intellectual property cases prior to the emergence of Westlaw.50 As
it was the first time that the House of Lords considered genetic engineer-
well, in the 28th edition of Principles of Equity, which was the last edition
ing in the context of patent law.2 Yet the specific historical contours of the
of this treatise for which Megarry J was an editor, the equitable doctrine of
case and the timing of the controversy were also significant. It was a case
breach of confidence as it relates to trade confidences is described as having
decided when the patenting of biotechnology had come under close political
three essentials and the Coco three step test is cited in support.51 Finally,
and legal scrutiny.3 Although the commercial importance of biotechnology
Francis Gurry’s influential monograph, Breach of Confidence was published
was already a reality, the legal and the political responses turned out to be
in 1984,52 in which all aspects of Coco are given considerable attention.53
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 biotechnol-
42 Attorney General v Observer Ltd [1990] 1 AC 109, 151 (Scott J), 215 (Bingham LJ)
ogy was interesting because it elicited theoretical and practical questions
and 268–72 (Lord Keith) and 282–82 (Lord Goff) (Spycatcher case). about biotechnology and the legal form.5 As an information-intensive tech-
43 WR Cornish, Intellectual Property: Patents, Copyright, Trade Marks and Allied Rights
nology,6 the impact of biotechnology on patent law affected both ethical
(London, Sweet & Maxwell, 1981).
44 ibid 268.
45 ibid 269, 272.
46 ibid 274–75.
* Archival sources are abbreviated as: CSHL = Cold Spring Harbour Laboratory, New York,
47 ibid 285.
48 ibid 288. USA; NA = National Archives, Kew, England; PA = Parliamentary Archives, London, England;
49 Law Com No 110, Breach of Confidence Cmnd 8388 (1981), [3.14], [4.4], [5.3] and UEA= University of Edinburgh Archives, Scotland.
1 Biogen Inc v Medeva plc [1997] RPC 1, [1996] UKHL 18, (1997) 38 BMLR 149, on
[5.5].
50 M Fysh, Industrial Property Citator (London, Sweet & Maxwell, 1982) 112. My thanks appeal from the Court of Appeal—Biogen Inc v Medeva Plc [1995] FSR 4, [1995] RPC 25, and
to Dr Jose Bellido for pointing out this reference. 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;
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 & A Warren ‘Discrimination by Redefinition: The Judicial Approach to Patenting Biotechnology
Maxwell, 1990) 684, 30th edn (London, Sweet & Maxwell, 2000) 45–76, but not in 31st edn in the United Kingdom’ (1997) The Journal of Business Law 575.
3 D Bannerman ‘Biotech Patenting’ CIPA Journal (January 1994) 3–6.
(2005) and 32nd edn (2010). 4 ‘Medical Research Council- Patenting’; FD 23/2389, NA; see also House of Commons
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 Science and Technology Committee (Third Report, 1994–1995 Session) para 216; S Amerasinghe
action (37), for the quality of confidential information, including that it cannot extend to trivial ‘Biotechnology in Australia’ IPAsia (April 1996) 25–27.
5 See A Pottage ‘The Socio-Legal Implications of the New Biotechnologies’ (2007) Annual
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 Review of Law and Social Science 321–44.
6 M Kenney, Biotechnology: The University Industrial Complex (New Haven, Yale
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 University Press, 1984) 4.
lieu (389, 398 and 402–04) and for the requirement of detriment (407–08).
288 Tanya Aplin Coco v AN Clark (Engineers) Ltd (1969) 265
Scotland 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
The Laws of Scotland features.
Session Cases During the period 1990–1999, the Court of Appeal cites Coco on four
occasions.54 Notably, published commentary about breach of confidence is
Singapore 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
The Singapore Law Reports (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 informa-
USA tion 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
ALR Index Campbell v Mirror Group Newspapers Ltd.56 We also see the publication
Federal Reporter of more commentaries on breach of confidence that feature discussion of
Shepard’s Citations Coco,57 including a substantially revised second edition of Gurry’s Breach
United States Supreme Court Digest of Confidence. In this text, in particular, Coco continues to be given promi-
nence in identifying the contours of the equitable action of confidence.58
Search terms used
We turn now to consider in more detail the impact of Coco. The influence
Coco v Clark, Coco v AN Clark, Coco v AN Clark and Coco [1969] RPC 41
has been greatest in relation to commercial and personal information, along
Coco v AN Clark Engineers Ltd
with frequent citations in relation to FOI exemptions. Coco has also been
Keyword searches of case reports relied upon in relation to artistic information and government information,
Coco; Clark; Megarry; three; first; confidence; test; quality; misuse; relief 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).
importance in relation to artistic cases, given that copyright law more read- Westlaw (UK)
ily protects literary and artistic works. Indeed, it has been those artistic crea- Westlaw International
tions at the margins of the closed list of categories in the Copyright Designs WorldLii
and Patents Act 1988 (UK) where protection via confidential information
has been sought. Offline indexes and law reports
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 Australia
basis for breach of confidence and cited the three-step test as the require-
ments for the action. He saw no objection to extending protection of this Administrative Law Decisions
kind to government information—in this case diaries of a former Cabinet Australian and New Zealand Citator to UK Reports 1558 to 1972
Minister. The other, major government information case to cite Coco is (Butterworths)
Spycatcher,63 which involved the publication of memoirs by a former MI5 Australian and New Zealand Citator to UK Reports 2001 (Butterworths)
agent. The first instance judge, Court of Appeal and House of Lords all Australian Case Citator
referred to Coco;64 however, it is the House of Lords decision that has sub- Australian Current Law
sequently proved influential in relation to breach of confidence. Australian Law Reports
Lord Griffiths cited the Coco three-step test with approval and considered Commonwealth Law Reports
the extent to which detriment was a requirement of the third limb.65 His Federal Court Reports
Lordship observed that ‘detriment, or potential detriment to the confider, NSW Law Reports
is an element that must be established before a private individual is entitled Queensland Reports
to the remedy’.66 However, he held that in the situation where the govern- Tasmanian Reports
ment is claimant, it is necessary to show that there is a public interest in Victorian Reports
maintaining the confidence or, in other words, ‘that the public interest will Western Australia Reports
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 suit- Canada
able 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 The Canadian Abridgement
and sensitive government information.68 Lord Griffiths also dealt with a Canadian Case Citations
situation not covered by the Coco three-step test, namely, third parties. He Federal Trail Reports
observed that a ‘third party who knowingly receives the confidential infor-
mation directly from the confidant … will be restrained from making use of England and Wales
the information’.69
Current Law Yearbook
The Digest
Law Reports
62 Attorney General v Cape [1976] QB 752, 769–70 (Widgery CJ).
63 Attorney General v Observer Ltd [1990] 1 AC 109 (Spycatcher). An example of a local New Zealand
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 Australian and New Zealand Citator to UK Reports 1558 to 1972
importing an obligation of confidence and not where the information is common knowledge. (Butterworths)
65 Spycatcher (n 63) 268.
66 Spycatcher (n 63) 270.
Australian and New Zealand Citator to UK Reports 2001 (Butterworths)
67 ibid. Butterworth’s Current Law
68 ‘I would therefore hold that whatever publication may have been achieved abroad, Peter District Court Reports
Wright remains bound by his duty of secrecy and confidence and will not be allowed to publish New Zealand Administrative Reports
Spycatcher in any form in this country’. Spycatcher (n 63) 271.
69 Spycatcher (n 63) 272. New Zealand Law Reports
of Legal Education (Bar School). The Telegraph describes Megarry J as ‘the The other, even more significant speech in Spycatcher came from Lord
most learned man on the Bench’213 and The Guardian as ‘an all rounder of Goff.70 He, too, dealt with the question of detriment and agreed with
rare quality’.214 The Times obituary notes that Megarry J published exten- Megarry J that the necessity of this requirement should be kept open.71 But
sively in the areas of property law and equity, and that ‘[u]sers of law text- in the case of government confidences it had to be shown that disclosure
books say he revolutionised the field in favour of a more rational, clearer is detrimental ‘in the sense that the public interest requires that it should
taxonomy’.215 The Independent describes his publications216 as ‘ground- not be published’.72 As well, Lord Goff took the opportunity to articulate
breaking works, setting out technical areas of the law in a clearly ordered the principles relevant to breach of confidence. While he did not expressly
and systematic way which students and practitioners found invaluable’ and cite Coco for these principles, his comments obiter reinforced the three-
that his scholarship ‘earned him not only an LLD from Cambridge but also step test. Importantly, they also extended the reach of the three-step test to
a Fellowship of the British Academy’.217 Certainly, the Coco three-step test accidental and surreptitious acquisition. In terms of reinforcement, Lord
is an example of this tendency for intellectual organisation and lucidity. Goff observed that a first limiting principle is that once information has
Thus, Megarry J’s scholarly aptitude and reputation, alongside his ability entered the public domain then it is no longer confidential. Second, that
successfully to straddle academia and practice,218 might ultimately account ‘the duty of confidence applies neither to useless information or trivia’.73
for why the Coco three-step test has gained the prominence that it has in Both these principles were articulated by Megarry J in Coco. Where Lord
relation to breach of confidence. 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
ANNEX
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
Sources consulted 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
Online indexes and databases the information to others.
AustLii …
BaiLii I have expressed the circumstances in which the duty arises in broad terms, not
BarNet Jade (Australia) merely to embrace those cases where a third party receives information from a
CanLii person who is under a duty of confidence in respect of it, knowing that it has been
Hein Online disclosed by that person to him in breach of his duty of confidence, but also to
InformationTr (UK) include certain situations, beloved of law teachers—where an obviously confiden-
JustCite tial document is wafted by an electric fan out of a window into a crowded street,
LexisNexis or where an obviously confidential document, such as a private diary, is dropped
NZLii in a public place, and is then picked up by a passer-by.74
Singapore Law Reports (Online) 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
213 The Telegraph (17 October 2006). The Independent (25 October 2006) states he ‘was that a third limiting principle was that of public interest and the fact that
widely regarded as the most learned and hard-working judge of his time’. courts might have to weigh the public interest in maintaining confidences
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 70 Who incidentally was the first judge to rely upon Coco in Church of Scientology v Kaufman
was also review editor and assistant editor of Law Quarterly Review for 23 years from 1944 [1973] RPC 635, 638.
to 1967. 71 Spycatcher (n 63) 281.
217 The Independent (25 October 2006). 72 Spycatcher (n 63) 282.
218 The Independent (25 October 2006) describes that Sir Robert Megarry’s ‘energy and 73 ibid.
talent’ enabled him to achieve ‘eminence as author, teacher and practitioner’. 74 Spycatcher (n 63) 281.
against the public interest in disclosing the confidential information.75 In for example (which was ground-breaking for articulating equitable rather
other words, he recognised a public interest ‘defence’—a legal principle not than contractual duties of confidence), the keywords simply state, ‘rights of
raised in Coco. 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
C. Commercial Information
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
Coco has stood the test of time when it comes to commercial confidences.
headnote keywords refer to ‘confidential information’ and ‘duty of confi-
The House of Lords in Harman v Home Office,76 Spycatcher (discussed
dence’ and in Seager v Copydex there is reference to ‘an action for misuse of
above) and Douglas v Hello!77 (discussed below) and the Supreme Court
confidential information’. But there is no prominence given in the headnotes
in Vestergaard78 have cited Coco with approval. The Court of Appeal has
of these cases to the principles underpinning this action. Nor are the princi-
applied the Coco three-step test—in its simple or elaborated form—in vari-
ples explicated in the pithy manner seen in Coco.
ous decisions,79 while the High Court has also applied Coco and cited it
In articulating the three-step test, in both its simple and elaborated forms,
with approval regularly.80 An indication of perhaps why Coco has been so
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
75 Spycatcher (n 63) 282. seen that the first step can embrace all varieties of confidential informa-
76 Harman v Home Office [1983] AC 280, 314 (Lord Scarman, Lord Simon in agreement). tion (commercial, personal, artistic and government secrets); the second
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]
step has evolved to enable obligations of confidence to be imposed where
RPC 33, [22]–[23] (Lord Neuberger with whom the other justices agreed) (referring to Coco a reasonable person knows (or ought to know) that it is confidential (thus
for the equitable basis of breach of confidence and then citing Lord Goff in Spycatcher for accommodating instances of accidental or surreptitious acquisition); and
when the obligation of confidence is imposed). the defence of public interest has been added to the notion of unauthorised
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, use in the third step, while at the same time the need for detriment has
257–59 (Otton LJ; Owen J and Simon Brown LJ in agreement); Murray v Yorkshire Fund been queried. Moreover, in England and Wales, the Coco three-step test has
Managers Ltd [1998] 1 WLR 951, 956 (Nourse LJ; Schiemann LJ Sir John Vinelott in agree- been judicially transformed into a distinct tort of misuse of private informa-
ment); 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 tion. Thus, Megarry J’s formulation of the action preserved the flexibility of
cases concerning ex-employees: GD Searle & Co Ltd v Celltech Ltd [1982] FSR 92, 99–100 equity, but at the same time offered a useful elucidation of principles.
(Cumming-Bruce LJ), 107–08 (Brightman LJ), Union Carbide Corp v Naturin Ltd [1987] FSR The approval of Coco and its three-step test by the most senior appellate
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 courts in the jurisdictions discussed is yet another reason for the enduring
[1996] FSR 629, 667–68 (Bingham MR delivering judgment of the Court). importance of the case. One can also point to its widespread acceptance
80 Decisions applying Coco: Strix Ltd v Otter Controls Ltd (No 1) [1995] RPC 607, 634;
amongst commentators in the field. Perhaps, however, the unusual weight
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 given to a first instance, interlocutory decision can be partly explained by
Ltd (t/a Autofleet) v ACL Ltd [1996] CLC 957, 968; Mars UK Ltd v Teknowledge Ltd [2000] the regard in which Megarry J was held. He was appointed to the bench in
FSR 138, 149–151; Collag Corp v Merck & Co Inc [2003] FSR 16, 308; ABK Ltd v Fox- 1967, and later became Vice Chancellor of the Chancery Division in 1976
well [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 before retiring in 1985. Following his retirement, he was frequently invited
Ltd [2004] EWHC 2263 (Pat), [22], [112]–[120]; Deloitte & Touche LLP v Dickson [2005] to sit in the Privy Council.212 Alongside his proficiency as a judge, Sir Robert
EWHC 721 (Ch), [31]–[40]; Sectrack NV v Satamatics Ltd [2007] EWHC 3003 (Comm), Megarry’s obituaries emphasise his academic success and credibility. They
[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 Telecom- note that he held academic appointments at the University of Cambridge,
munications Services Ltd v Chief Constable of West Yorkshire [2012] FSR 15, [130]–[140]; New York University and Osgoode Hall, and that he lectured at the Council
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 Entertain-
ment Media Group [2014] EWHC 3000 (QB), [147]–[154]; Personal Management Solutions 212 The Independent (25 October 2006). Sir Robert Megarry’s obituary in The Guardian
Ltd v Blakes Bros Ltd [2014] EWHC 3495 (QB), [163], [191]–[202]. Decisions citing Coco (19 October 2006) speculates that he did not get promoted to an appellate court through a
with approval include: Aveley/Cybervox Ltd v Boman [1975] FSR 139, 145–149; Force India mixture of circumstances—an (unsuccessful) prosecution by the Inland Revenue for making
Formula One Team Ltd v 1 Malaysia Racing Team Sdn Bhd [2012] RPC 29, [215], [224]; false statements on his income tax returns; his delayed elevation to the High Court when he
Eugen Seitz AG v KHS Corpoplast GmbH [2015] RPC 11, [48]. was 57; and the fact that he served in the civil service, rather than in combat, during the war.
IV. CONCLUSION 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
The above analysis has demonstrated that Coco has become a highly sig- obligation of confidence remains that of Megarry J in Coco’ and notes that
nificant authority in the law of confidence in England and Wales, Australia, Megarry J’s statement of the law ‘has repeatedly been cited with approval
Canada, New Zealand and Ireland. There is also nothing to suggest that at the highest level’.81
the role of Coco will wane, except possibly in relation to privacy protec- The reasonable person test for step two of Coco (ie determining when
tion. In England and Wales, the tort of misuse of private information is now there is a duty of confidence) has been cited with approval on several
unshackled from breach of confidence, thus opening the way for the tort’s occasions.82 In Primary Group v Royal Bank of Scotland83 Arnold J made
future development and the fading relevance of Coco when it comes to per- two observations about this test: ‘The first is that it does not depend on
sonal information. However, even in New Zealand, where a separate tort of the existence of a confidential relationship between the discloser and the
privacy has been judicially recognised (because of the perceived limitations recipient of the information. The second is that it is objective rather than
of breach of confidence), the equitable action is still used for protection of subjective’.84 Arnold J (correctly) cited Lord Goff’s dicta in Spycatcher, the
personal information. House of Lords’ decision in Campbell, the Supreme Court decision in Vest-
The implementation of the EU Trade Secrets Directive208 by the UK, prior ergaard and the Court of Appeal decision in Imerman in support.85 Arnold
to its likely departure from the EU following the result of the referendum J’s decision highlights how step two of Coco is no longer seen as barrier
on 23 June 2016, may affect the application of the Coco three-step test in to imposing obligations of confidence when it comes to accidental or sur-
relation to commercial or trade secrets. This will depend on whether the UK reptitious acquisition of commercial secrets.86 Further, in reiterating that
feels the need to copy and paste Article 4 of the Directive, which stipulates the reasonable person test is objective in nature, Arnold J departed from
what amounts to unlawful acquisition, use or disclosure of a trade secret209 the unconventional view expressed by Jacob J (as he then was) in Carflow
and, further, the degree to which rulings on the Directive by the Court of Products (UK) Ltd v Linwood Securities87 that the test could be subjective
Justice of the European Union will be regarded as binding or persuasive in or objective.88
its interpretation (depending on the type of departure of the UK from the Coco has also been relied upon in ex-employee and other commercial
EU). For now, however, courts in England and Wales do not seem anywhere cases in support of refusal of an injunction where information is in the pub-
near the brink of jettisoning Coco when it comes to commercial confidential lic domain or if damages are an appropriate remedy.89 More recently, lower
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 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]
decision to synthesise and encapsulate neatly the principles relating to the RPC 29, [215]–[216]; Primary Group (UK) Ltd v Royal Bank of Scotland Plc [2014] RPC 26,
equitable action for breach of confidence.210 This is aptly illustrated by [207]–[208].
the headnote to the report of Coco where the keywords state ‘elements of 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);
breach of confidence’ and the headnote goes on to describe that Megarry Seeds Processing International v Scales, Gorne v Scales [2002] All ER (D) 214, [85]; Cray Valley
J held the plaintiff had not satisfied ‘the three elements essential to a cause Ltd v Deltech Europe Ltd [2003] EWHC 728 (Ch), [49]; Vestergaard Fransen S/A (now MVF3
of action for breach of confidence’.211 Whereas, the headnotes of reports of 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].
earlier decisions, such as Saltman, Terrapin, Cranleigh Precision and Seager 83 Primary Group v Royal Bank of Scotland [2014] RPC 26.
v Copydex, do not frame the equitable principles in this manner. In Saltman, 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
208 Directive 2016/943 on the protection of undisclosed know-how and business informa- Ltd [2009] EWHC 1331 (Ch), [113].
tion (trade secrets) against their unlawful acquisition, use, or disclosure [2016] OJ L157/1. 87 Carflow Products (UK) Ltd v Linwood Securities [1996] FSR 424.
209 The greatest divergence in approach relates to unauthorised acquisition. 88 ibid 428.
210 See, eg, RP Meagher, WMC Gummow, JRF Lehane, Equity, doctrines, and remedies, 2nd 89 Potters Ballotini Ltd v Weston Baker [1977] RPC 202, 206–07 (Lord Denning MR);
edn (Sydney, Butterworths, 1984) [4110]–[4111], describing Megarry J in Coco as assembling Vernon & Co (Pulp Products) Ltd v Universal Pulp Containers Ltd [1980] FSR 179, 191;
the ideas in Saltman and Seager v Copydex and stating that ‘[t]he formulation of Megarry J Schering Chemicals Ltd v Falkman Ltd [1982] QB 1, 36; Roger Bullivant v Ellis [1987] ICR
will suffice as a working statement of the equitable principle’. See the same statements in 3rd 464, 479–80 (May LJ); Ocular Sciences Ltd v Aspect Vision Care Ltd (No 2) [1997] RPC
edn (1992), [4110]–[4111] and 4th edn (2002), [41-050], [41-055]. 289, 397; Cray Valley Ltd v Deltech Europe Ltd [2003] EWHC 728 (Ch), [47]; Vestergaard
211 I would like to thank Dr Jose Bellido for drawing this to my attention. Fransden A/S v Bestnet Europe Ltd [2009] EWHC 1456 (Ch), [2010] FSR 2, [38]–[39].
courts have expressed doubts about whether an equitable duty of confidence England and Wales gave impetus to the majority to develop New Zealand
can extend further than a contractual confidentiality obligation.90 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
D. Personal Information 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
As will be seen, Spycatcher has been influential in affecting the scope of pro- Hunt v A,199 which involved the disclosure of information that identified
tection that developed for personal confidences. But, before addressing this individuals involved in a sexual abuse case, the court analysed the issue
point, it is necessary to step back and address some earlier cases. according to confidentiality and Coco principles, with only a passing refer-
Megarry J, who had become a high court judge in 1967, shortly before ence to Hosking.200 Likewise, in R x X,201 which concerned the admissibility
his decision in Coco, subsequently became Vice-Chancellor in 1976. It was of evidence of a conversation between a nurse and a psychiatric patient, the
in this capacity that he considered the Coco three-step test in relation to court cited Coco202 although was keen to note its expansion in England and
telephone tapping, in the well-known Malone decision.91 Megarry V-C noted Wales, in cases such as Campbell.203 Although Hosking has been followed
that the alleged misuse was not by the intended recipient of the information, in lower court decisions,204 it has not been approved by the New Zealand
but an unknown overhearer. He held that there was no duty of confidence Supreme Court. Rather, the Court has expressed scepticism of Hosking in
and that a person has to, ‘accept the risk of any unknown overhearing that Television New Zealand v Rogers.205 In this decision, Anderson J, who had
is inherent in the circumstances of communication’.92 Malone subsequently dissented in Hosking v Runting, observed that he shared:
brought a successful claim for violation of his Article 8 rights under the
the concern expressed by the Chief Justice that the jurisprudence of that case
European Convention of Human Rights (ECHR).93 As well, the Court of should not be regarded as settled. It was decided by a bare majority and both the
Appeal in Francome v Mirror Group Newspapers Ltd later distinguished existence of the tort and the scope of it, if it continues to be recognised, will fall to
Malone on the somewhat artificial basis that Francome involved telephone be reviewed by this Court in an appropriate case.206
tapping by a private individual rather than the police (which had occurred
in Malone).94 In the commercial sphere, the Coco three-step test continues to be cited with
Conventional applications of Coco principles to personal information 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
occurred in X Health Authority v Y95 and Stephens v Avery.96 However,
types of confidential information.
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
197 ibid, [246] (Tipping J): ‘I consider it legally preferable and better for society’s under-
Informatics Ltd (No 1)97 and took root after the House of Lords decision
standing of what the Courts are doing to achieve the appropriate substantive outcome under
in Campbell v Mirror Group Newspapers Ltd.98 In Source Informatics the 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
90 Vercoe v Rutland Fund Management [2010] EWHC 424 (Ch), [329]; Richmond [2012] NZHC 2155 and Faesenkleot v Jenkin [2014] NZHC 1637. See also T McKenzie, ‘The
harmacology Ltd v Chester Overseas Ltd [2014] EWHC 2692 (Ch), [75]; Eurasian Natural
P New Intrusion Tort: The News Media Exposed’ (2014) 45 VUWLR 79.
199 Hunt v A [2007] NZCA 332; [2008] 1 NZLR 368, [65], [73].
Resources Corp Ltd v Judge [2014] EWHC 3556 (QB), [76]. But contrast CF Partners (UK) 200 ibid [87].
LLP v Barclays Bank plc [2014] EWHC 3049 (Ch), [132] (suggesting wider equitable duties 201 R x X [2010] 2 NZLR 181.
could be imposed in circumstances that are not ordinary). 202 ibid [42].
91 Malone v Commissioner of Police of the Metropolis (No 2) [1979] Ch 344 (Ch).
203 ibid [45].
92 ibid 376.
204 Andrews v Television New Zealand Ltd [2009] 1 NZLR 220 and Brown v Attorney-
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), General NZAR [2006] 552 (DC) Judge RLB Spear. It has been cited in passing in Mafart
and 900 (Fox LJ). v Television New Zealand Ltd [2006] 3 NZLR 534, [60]; Hunt v A [2008] 1 NZLR 368, [87];
95 X Health Authority v Y [1988] RPC 379, 391 (Rose J) (detriment not required for an and Brooker v Police [2007] 3 NZLR 91, [122] and [125].
205 Television New Zealand v Rogers [2008] 2 NZLR 277.
injunction). 206 ibid [144] (Anderson J).
96 Stephens v Avery [1988] Ch 449, 452 (Browne-Wilkinson V-C), (three-step test), 454 (on
207 Skids Programme Management v McNeill [2013] 1 NZLR 1, [76]; Karum Group LLC
whether information confidential) and 456 (on duty of confidentiality).
97 Source Informatics Ltd (No 1) (n 54). v Paykel Financial Services [2014] NZLR 412, 467.
98 Campbell v Mirror Group Newspapers Ltd [2004] UKHL 22, [2004] 2 AC 457.
I. New Zealand Court of Appeal had to consider whether disclosure of anonymised data
extracted from prescription forms would be an unauthorised use of con-
In assessing the impact of Coco on New Zealand law, the focus in this s ection fidential information. In so doing, the court considered Coco along with
is on New Zealand Court of Appeal (NZCA) decisions.188 The approval other authorities and concluded that the touchstone for judging whether
and application of the Coco three-step test occurred in the late 1970s in AB there is a duty of good faith and whether it has been breached is accord-
Consolidated Ltd v Europe Strength Food Co Pty Ltd189 in a case involving ing to conscience, specifically, ‘would a reasonable pharmacist’s conscience
commercial information, specifically the manufacturing process for health be troubled by the proposed use to be made of patients’ prescriptions?’99
food bars. It was not until a decade later that the NZCA applied the Coco Applying this broad principle of equity, the court concluded that the phar-
three-step test (noting its acceptance in AB Consolidated) to government macist’s duty of confidence was not breached because the patient’s privacy
information in the Spycatcher case of Attorney-General v Wellington News- was safeguarded through anonymisation of the data.100 This decision high-
papers Ltd (No 2).190 The New Zealand High Court then later extended lights how the formula of the three-step test was jettisoned in favour of
the application of Coco to personal information (in particular relating to a applying a broad principle of equity, in part because the test was unable
person’s identity).191 There was then a significant gap until the mid-2000s effectively to accommodate the sorts of concerns raised by privacy.
when the Court of Appeal considered the relevance of Coco again, this time The incorporation of the ECHR into domestic law via the Human Rights
in the context of the protection of privacy in Hosking v Runting.192 Act 1998 (UK) gave impetus to the courts to use breach of confidence to
Hosking is a landmark decision in New Zealand law because the court protect privacy. In several cases prior to Campbell, courts relied on Coco
recognised for the first time a tort in relation to wrongful publication of and interpreted the range of personal confidential information widely to
private information comprising two elements: a reasonable expectation of include a person’s identity and location,101 sexual affairs102 and a private
privacy in relation to facts; and publication of those facts that, according to wedding.103 Campbell, however, signalled a major divergence from Coco
an objective reasonable person, would be considered highly offensive.193 In and breach of confidence.
reaching this conclusion, P Gault and Blanchard J (in the majority) noted In Campbell, the Daily Mirror newspaper had published details about
that ‘[t]he elements of the breach of confidence are well established in New the claimant’s cocaine addiction and her treatment for it, along with pho-
Zealand, and our courts have adopted the formulation in Coco v Clark in tographs of the claimant emerging from a Narcotics Anonymous meeting.
areas such as employment, trade secrets and information about a plain- A breach of confidence was found at first instance by Morland J,104 but his
tiff’s private life’.194 However, Gault P and Blanchard J noted that the Coco decision was overturned by the Court of Appeal.105 A majority of the House
formulation did not fit all privacy cases and that in England and Wales, of Lords allowed the appeal. Despite the divergence in outcome, their lord-
while the courts had broadened the scope of the action, the Human Rights ships in fact agreed on the relevant legal principles. Lord Nicholls referred
Act 1998 (UK) allowed the courts to move beyond the borders of Coco, to Coco as setting out the ‘classic exposition’ of breach of confidence106 but
specifically in relation to the second element, in order to protect private noted that Spycatcher recognised that the ‘limiting constraint of the need
information.195 As such, England and Wales had created ‘two quite dis- for an initial confidential relationship’ was no longer required.107 Rather, a
tinct versions of the tort of breach of confidence’.196 The developments in duty of confidence was imposed ‘whenever a person receives information he
knows or ought to know is fairly and reasonably to regarded as confidential’.
188 There was an appeal from the Court of Appeal to the Privy Council in Arklow Invest-
ments Ltd v Maclean [2000] 1 WLR 594, 601 but this only cites Coco in support of the confi- 99 Source Informatics (n 54), [35].
dentiality obligation lasting provided the information is confidential. 100 ibid [34]–[35].
189 AB Consolidated Ltd v Europe Strength Food Co Pty Ltd [1978] 2 NZLR 515, 520–21.
101 In the Matter of X [2001] 1 FCR 541; B v H Bauer Publishing Ltd [2002] EMLR 8,
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
[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
623, 626. the Court of Appeal in [2002] EWCA Civ 337, [2003] QB 195).
192 Hosking v Runting [2005] 1 NZLR 1.
103 Douglas v Hello! [2003] EWHC 786 (Ch), [2003] 3 All ER 996.
193 Hosking, [117] (Gault P and Blanchard J) and [247]–[251] and [259] (Tipping J).
104 Campbell v MGN Ltd [2002] EWHC 499, [2002] EMLR 30, [37]–[44] applying a three-
194 ibid, [46] (Gault P and Blanchard J).
195 ibid, [38]–[43] (Gault P and Blanchard J).
step test identical to Coco but not citing the case.
105 Campbell v MGN Ltd [2002] EWCA Civ 1373, [2003] QB 633.
196 ibid, [42] (Gault P and Blanchard J).
106 Campbell (HL), [13].
107 Campbell (HL), [14].
He added that the language of ‘duty of confidence’ and ‘confidential’ were The Supreme Court of Canada has considered Coco on another occa-
‘not altogether comfortable’ and the ‘more natural description today is that sion, primarily in relation to the nature of confidential information and its
such information is private’ and that the ‘essence of the tort is better encap- relevance to remedies, in Cadbury Schweppes Inc v FBI Foods Ltd.180 The
sulated now as misuse of private information’.108 confidential information in this case was the recipe for a tomato juice and
Other members of the House of Lords did not use Lord Nicholls’ lan- clam broth drink called Clamato. The defendant had previously manufac-
guage of ‘tort’, however, their lordships recognised that there would be a tured Clamato under a licence agreement, which was later terminated when
different emphasis to the action. Lord Hoffmann saw the speech of Lord the plaintiff acquired the company that owned the confidential information.
Goff in Spycatcher as a key development in the law of confidence,109 along The defendant produced a competing drink—the Caesar Cocktail made
with the incorporation of Article 8 ECHR into domestic law. As such, he from tomato juice but which omitted clams or other seafood—which they
saw there being ‘a shift in the centre of gravity of the action for breach of made and sold at the end of the licence period. The plaintiff brought pro-
confidence when it is used as a remedy for the unjustified publication of per- ceedings for breach of confidence and sought injunctive relief. The Supreme
sonal information’.110 The focus of breach of confidence would no longer Court of Canada upheld the decision of Huddart J in the Supreme Court of
be on confidentiality, confidential relationships or conscience, but rather on British Columbia to refuse injunctive relief and to award damages on a ‘head
the protection of human autonomy and dignity.111 Lord Hope, Baroness start’ basis (and vacated the Court of Appeal’s decision to grant a perma-
Hale and Lord Carswell located the protection of privacy within breach nent injunction). In reaching its decision, the Supreme Court observed that
of confidence but saw Articles 8 and 10 of the ECHR—rather than tradi- Coco set a low threshold for what information was capable of constituting
tional principles—as having a major role to play.112 Thus, in the context confidential information181 and observed: ‘While equity is thus quick to
of personal or private information, the continuing relevance of Coco was protect confidences, it cannot be blind to the nature of the opportunity lost
questionable after Campbell. to the respondents, or the value of their information, when consideration
The relevance of ‘traditional’ confidentiality principles to private infor- turns to remedies’.182 The information was ‘nothing very special’, the con-
mation continued to be addressed in appellate cases. For example, the Court fidential information had only minimally contributed to the success of the
of Appeal in Douglas v Hello! (No 3) referred to the ‘tort’ as ‘shoehorned’ Caesar Cocktail and the plaintiffs had delayed in bringing their action.183
within ‘the cause of action formerly described as breach of confidence’.113 As These considerations, plus the adequacy of a monetary remedy, meant that
well, the court considered how the developments in Campbell had affected the trial judge had been correct to refuse a permanent injunction and that
the Coco three-step test: damages would need to be assessed for the 12-month period in which the
defendants had their head start.
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 It is also important to note that in the Canadian cases reviewed, only two
confidential in nature and the second was that it should have been imparted in cir- dealt with Coco in the context of personal information. In Hollinsworth
cumstances importing a duty of confidence. As we have seen, it is now recognised v BCTV184 the court applied the Coco three-step test in relation to a film
that the second requirement is not necessary if it is plain that the information made of hair transplant surgery. In Grant v Winnipeg Regional Health
is confidential, and for the adjective ‘confidential’ one can substitute the word Authority,185 a case involving negligent disclosure of confidential medical
‘private’. What is the nature of ‘private information’? It seems to us that it must 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
108 ibid [14]. Also, in Douglas v Hello! Ltd sub nom OBG v Allan [2007] UKHL 21, [2008] having been expanded by English courts to protect a reasonable expectation
1 AC 1, [255] Lord Nicholls commented obiter that breach of confidence ‘covers two dis- of privacy (citing Campbell and Douglas v Hello! in support).187
tinct causes of action, protecting two different interests: privacy, and secret (“confidential”)
information’.
109 Campbell (HL), [46]–[49].
110 Campbell (HL), [51]. 180 Cadbury Schweppes Inc v FBI Foods Ltd [2000] FSR 491.
111 ibid. 181 ibid [75].
112 ibid [86] (Lord Hope), [132]–[134] (Baroness Hale), [166]–[167] (Lord Carswell); 182 ibid [76].
ECHR Arts 8, 10. 183 ibid [86].
113 Douglas v Hello! Ltd (No 3) [2005] EWCA Civ 595, [2006] QB 125 [53]. See also [96] 184 Hollinsworth v BCTV 1998 CanLII 6527.
where the Court states that ‘the effect of shoehorning this type of claim into the cause of action 185 Grant v Winnipeg Regional Health Authority 2015 MBCA 44.
of breach of confidence means that it does not fall to be treated as a tort under English law: see 186 ibid [118].
Kitechnology BV v Unicor GmbH Plastmaschinen [1995] FSR 795, para 40’. 187 ibid [120].
The first State Court of Appeal decisions to cite and apply the Coco include information that is personal to the person who possess it and that he does
three-step test for determining equitable obligations of confidence involved not intend shall be imparted to the general public. The nature of the information,
employment and commercial information and were almost a decade or the form in which it is kept, may suffice to make it plain that the information
apart.167 It was not until 1989—some 21 years after Coco was decided— satisfies these criteria.114
that the Canadian Supreme Court had occasion to consider its relevance Thus, post Campbell, the Coco three-step test was either significantly modi-
to Canadian law in Lac Minerals Ltd v International Corona Resources fied (or, at worst, redundant) in the case of private information. Notwith-
Ltd.168 This case concerned misuse of information relating to the results standing, the Court of Appeal in a later decision, Tchenguiz v Imerman115
of drilling on certain land, which in turn affected the acquisition of mining observed that the law ‘should be developed and applied consistently and
rights. More specifically, the plaintiff company had revealed to the defend- coherently in both privacy and “old fashioned confidence” cases’.116 The
ant company (with a view to entering a joint venture or partnership) that court suggested that the ‘reasonable expectation of privacy’ test articulated
property adjacent to the land on which it owned mining rights was likely to in Campbell ‘chimes well with the test suggested in classic commercial con-
include mineral bearing deposits. The defendant company used this infor- fidence cases by Megarry J in Coco’.117 Therefore, post-Imerman it was
mation to develop a successful competing bid to mine that property. Issues unclear the extent to which Coco would continue to have a role to play in
of breach of confidence and breach of fiduciary duty were raised and, in cases of private information. This issue, however, has been clarified by two
relation to the former, the Supreme Court found the defendant in breach appellate decisions—the House of Lords decision in Douglas v Hello!118
of its duty of confidence. In reaching this conclusion, La Forest J cited the and the Court of Appeal decision in Google v Vidal Hall.119
Coco three-step test with approval,169 along with the dicta of Megarry J The litigation in Douglas v Hello! was prompted by Hello! magazine’s
that refers to there being a presumption of an obligation of confidence when threatened publication of surreptitiously taken photographs of the high-
‘information of commercial or industrial value is given on a business-like profile celebrity wedding between Michael Douglas and Catherine Zeta-Jones,
basis’.170 Sopinka J applied the same three-step test as in Coco although in advance of OK! magazine’s exclusive coverage of the event (for which
without citing Coco171 except in relation to the second step and the reason- OK! had paid the Douglases £1 million). The claimants were unsuccessful
able person test.172 Both La Forest J173 and Sopinka J174 assumed that detri- in obtaining an interim injunction to prevent the threatened publication,120
ment to the confider was a requirement. but at trial Lindsay J found in favour of the claimants on the basis of an
Lac Minerals and its approval of Coco has been cited in subsequent State actionable breach of confidence.121 Lindsay J characterised the photo-
Court of Appeal decisions involving confidential business plans,175 travel graphic representation of the wedding reception as either commercial confi-
databases,176 information relating to the purchase of property,177 and for dential information or else of a hybrid kind.122 He analysed the information
technical or artistic information relating to the production of jewelry.178 according to the Coco three-step test and placed considerable emphasis on
The reasonable person test from step 2 of Coco has also been cited with the nature of the information as a kind of ‘trade secret’. Lindsay J awarded
approval.179 damages to the Douglases for mental distress, presumably in relation to
their ‘privacy’ interest, along with damages for wasted costs incurred by
167 Slavutych v Baker [1973] 41 DLR (3d) 71, [45] (information relating to tenure of their having to bring forward preparation, approval and provision of the
an academic) and Ridgewood Resources Ltd v Henuset (1982) 18 Alta LR (2d) 68 at 76 authorised photographs to the third claimant, OK! magazine.123 A sum of
(information relevant to developed and undeveloped oil lands).
168 Lac Minerals Ltd v International Corona Resources Ltd [1990] FSR 441. £1,033,156 was awarded to the third claimant, OK! magazine, in respect
169 ibid, 447. of lost profits and wasted costs.124 The Court of Appeal dismissed Hello!
170 ibid, 451.
171 ibid, 491–92.
172 ibid, 494. 114 ibid [83].
173 ibid, 449. 115 Tchenguiz v Imerman [2010] EWCA Civ 908, [2011] 2 WLR 592.
174 ibid, 494. 116 ibid [67].
175 Seyedi v Nexen (2016) ABCA 24. 117 ibid [66].
176 Sabre Inc v International Air Transport Assn (2011) 344 DLR (4th) 657. 118 Douglas v Hello! Ltd sub nom OBG v Allan [2007] UKHL 21, [2008] 1 AC 1.
177 Ontex Resources Ltd v Metalore Resources Ltd (1993) CanLII 8673; Foreman 119 Google v Vidal Hall [2015] EWCA Civ 311, [2015] 3 WLR 409 (Google case).
v Chambers (2007) 284 DLR (4th) 210; Terrien Bros Construction Ltd v Delaurier 2007 120 Douglas v Hello! Ltd (No 1) [2001] QB 967 (CA).
BCCA 623. 121 Douglas v Hello! Ltd [2003] EWHC 786 (Ch), [2003] EMLR 31.
178 Macri v Miskiewicz 1993 CanLII 2385. 122 ibid [196], [227].
179 Seyedi v Nexen Inc (2016) ABCA 24 and Sabre Inc v International Air Transport Assn 123 Douglas v Hello! (n 121) [57].
(2011) 344 DLR (4th) 657. 124 ibid [55].
agazine’s appeal against the first and second claimants, but allowed its
m the human brain’ has been applied, but that protection does not extend to
appeal against the third claimant.125 In the House of Lords, OK! magazine’s trivial tittle tattle.159
appeal was upheld and the order of Lindsay J restored. Lord Hoffmann, who While the ‘reasonable person’ test for identifying an obligation of confi-
delivered the leading speech of the majority, commented that this appeal dence has been cited with approval, the Full Federal Court of Australia has
was ‘not concerned with the protection of privacy’ but with OK!’s claim noted that it does not assist with determining the scope of the obligation of
to protection of commercially confidential information.126 After recounting confidence.160 Doubts about the need to show detriment for the third limb
Lindsay J’s application of Coco to the facts, he explained why Lindsay J had (ie misuse) have also been expressed.161
been correct in his finding that the obligation of confidence bound Hello! Appellate courts in Australia have also observed that Coco is not exhaus-
magazine: tive of when a confidential obligation can be imposed, pointing to the fact
that an obligation may arise where information is inherently confidential or
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 wed- private or where a person has actual or constructive knowledge that infor-
ding in respect of any photographs of the wedding. That was quite clear. Unless mation is to be regarded as confidential.162 Together with a more flexible
there is some conceptual or policy reason why they should not have the benefit of approach to remedies, this has enabled breach of confidence to better protect
that obligation, I cannot see why they were not entitled to enforce it. Any in my privacy.163 However, there are still limitations to relying upon this action
opinion there are no such reasons.127 (particularly in relation to intrusions), such that lower courts have sought to
recognise tortious protection for privacy164 and the Australian Law Reform
Thus, Douglas v Hello! indicated that commercialised private information
Commission has recommended the legislative introduction of a tort of pri-
could be treated as a trade secret under the ‘traditional’ Coco principles
vacy.165 Appellate courts166 and the legislature have yet to act in this regard.
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. H. Canada
The recent Court of Appeal decision in Google v Vidal Hall authorita-
tively states that the action for misuse of private information is in fact a This section examines Canadian Supreme Court and State Court of Appeal
tort and indicates that this is distinct from breach of confidence. In this decisions that cite Coco.
case, the claimants sought to bring a claim of misuse of private informa-
tion against the defendant (Google) for collecting private information via its
web browser without consent. An important issue was whether the claim- 159 University of Western Australia v Gray [2009] FCAFC 116, [162]–[163]; Streetscape
ants had permission to serve out of the jurisdiction and this depended on Projects (Australia) Pty Ltd v City of Sydney [2013] NSWCA 2, [160] (Beazley P with McFarlan
and Emmett JJA agreeing).
whether misuse of private information could be classified as tortious as 160 Smith Kline & French Laboratories (Australia) v Secretary to the Department of
opposed to equitable. If the latter, then the authority of Kitechnology BV Community Services and Health [1991] FCA 150, [48]–[49].
v Unicor GmbH Plastmaschinen,128 which was binding on the court, held 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).
that service out of the jurisdiction would not be possible. Thus, as the court 162 Moorgate Tobacco Co Ltd v Philip Morris Ltd (No 2) (1984) 156 CLR 414, 438 (Deane J);
noted, this was a situation where the issue of classification or nomenclature Smith Kline & French Laboratories (Australia) v Secretary to the Department of Community
actually, ‘made a difference’.129 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
The Court of Appeal held that it was clear that ‘there are now two separate Newspapers Ltd v Bond [2009] WASCA 127, [42] (Buss JA); Armstrong Strategic Management
and distinct actions: an action for breach of confidence; and one for misuse and Marketing Pty Ltd v Expense Reduction Analysts Group Pty Ltd [2013] 295 ALR 348,
of private information’.130 Further, that misuse of private information was [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).
125 Douglas v Hello! Ltd (No 3) [2005] EWCA Civ 595, [2006] QB 125. 164 Grosse v Purvis [2003] QDC 151 (16 June 2003).
126 Douglas v Hello! Ltd sub nom OBG v Allan [2007] UKHL 21, [2008] 1 AC 1, [118]. 165 Australian Law Reform Commission Report, Serious Invasions of Privacy in the Digital Era
127 ibid [117]. (2014): www.alrc.gov.au/news-media/alrc-releases-report-serious-invasions-privacy-digital-era.
128 Kitechnology BV v Unicor GmbH Plastmaschinen [1995] FSR 765. 166 The Victorian Court of Appeal in Giller v Procopets preferred to develop breach of con-
129 Google (n 119) [17]. fidence rather than recognise a separate tort of privacy: [2008] VSCA 236, [167]–[168] (Ashley
130 ibid [21]. JA) [431] (Neave JA).
restrain publication of government documents, emphasised that the plain- a tort without any equitable characteristics for the purposes of service out
tiff had to satisfy the Coco three-step test and, in particular, discussed the of the jurisdiction and, as such, Kitechnology was not applicable since it
need for the government to show detriment to the public interest.151 Fairfax concerned an action for breach of confidence.131 This characterisation was
citing Coco was then referred to by McHugh J in the High Court deci- not seen as creating a new cause of action but ‘simply [giving] the correct
sion in Johns v Australian Securities Commission,152 which involved the legal label to one that already exists’.132 Moreover, it was also not limited
confidentiality of Royal Commission transcripts. In addition, in Australian to the issue of service out of the jurisdiction because the Court commented
Broadcasting Corporation (ABC) v Lenah Game Meats Pty Ltd153 Gleeson obiter: ‘We are conscious of the fact that there may be broader implications
CJ in the High Court of Australia cited the Coco three-step test with from our conclusions, for example as to remedies, limitation and vicarious
approval,154 although did not apply it to the facts of the case because of liability … such points will need to be considered as and when they arise’.133
Lenah’s concession that the information here (footage of activities within Subsequent decisions have maintained the distinction between breach of
a possum-processing facility) was not confidential.155 Full Federal Court of confidence and misuse of private information, thus highlighting that they
Australia and State Supreme Court of Appeal decisions have also cited the are different legal creatures but also that any continuing role for Coco in
Coco three-step test with approval.156 relation to private information is a subsidiary one.134
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 E. FOI Cases
Coco for the principle that additions to public domain material could be
confidential, but on the facts the commercial documents at issue (unit trust The Freedom of Information Act 2000 (UK), section 41, has generated
deeds and articles of association) did not constitute confidential informa- significant reliance on Coco. Section 41 creates an exemption for provid-
tion.158 The Full Federal Court and State Supreme Courts have also relied ing access to information held by public authorities where the disclosure
upon the statements in Coco that the confidential nature of information of the information would constitute a breach of confidence. Multiple deci-
can come from materials in the public domain if ‘skill and ingenuity of sions 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
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. 131 ibid (n 119) [43], [50]–[51].
152 Johns v Australian Securities Commission [1993] HCA 56, (1993) 178 CLR 408, [29]. 132 ibid (n 119) [51].
153 Australian Broadcasting Corporation (ABC) v Lenah Game Meats Pty Ltd (2001) 208 133 ibid.
CLR 199. 134 Associated Newspapers v HRH Prince of Wales [2006] EWCA Civ 1776, [2008] Ch 57
154 Noted in Streetscape Projects (Australia) Pty Ltd v City of Sydney (No 2) [2013] NSWCA
[67]–[69]; McKennitt v Ash [2006] EWCA Civ 1714, [2008] QB 73 [8], [15] et seq (Buxton
240, [17]. LJ, with whom Latham LJ and Longmore LJ agreed); Browne v Associated Newspapers Ltd
155 Lenah (n 153).
[2007] EWCA Civ 295, [2008] QB 103, [29]; Mosley v News Group Newspapers Ltd [2008]
156 Federal Commissioner of Taxation v Donoghue [2015] FCAFC 183, [54]–[55] (citing
EWHC 1777 (QB), [2008] EMLR 20, [108]; AVB v TDD [2014] EWHC 1442 (QB), [79]; and
Coco three-step test and finding that income tax information was not confidential); Futuret- Burrell v Clifford [2016] EWHC 294 (Ch), [149]–[150].
ronics.com.au Pty Ltd v Graphix Labels Pty Ltd [2009] FCAFC 2, [31] (citing Coco for the 135 Derry City Council v Information Commissioner [2006] UKIT EA/2006/0014; Bluck
second step); Marshall v Prescott [2015] NSWCA 110, [53] et seq (applying Coco three-step v Information Commissioner (2007) 98 BMLR 1, [2008] WTLR 1; DBERR v Information
test, but finding information not confidential); Streetscape Projects (Australia) Pty Ltd v City Commissioner [2008] UKIT EA/2007/0072 (although expressing a doubt re the detriment
of Sydney [2013] NSWCA 2, [157] (Beazley P with McFarlan and Emmett JJA agreeing); requirement); Anderson v Information Commissioner [2008] UKIT EA/2007/0103 (although
Del Casale v Artedomus (Aust) Pty Ltd [2007] NSWCA 172, [36] (Hodgson JA) and [102], expressing a doubt re the detriment requirement); North Western and North Wales Sea Fish-
[133]–[134] (Campbell JA) (citing Coco three-step test with approval); Herald and Weekly eries Committee v Information Commissioner [2008] UKIT EA/2007/0133 (Coco not the
Times Pty Ltd v Victoria [2006] VSCA 146, [24]; Attorney General v Heinemann Publishers exclusive test to determine exemptions); HEFC v Information Commissioner [2010] UKIT
Australia Pty Ltd (1989) 75 ALR 353, 415 (Kirby P) and 453 (McHugh JA). EA/2009/0036; Zacharides v Information Commissioner [2011] UKFTT EA/2010/0162
157 O’Brien v Komesaroff (1982) 150 CLR 310.
(GRC); O’Hara v Information Commissioner [2011] UKFTT EA/2010/0186 (GRC) (noted
158 ibid [42]. See also Johns v Australian Securities Commission (1993) 178 CLR 408,
that Coco may need to be modified for personal information); Browning v Information Com-
[6]–[7] where Gaudron J cites Coco in relation to the public domain and what constitutes missioner [2013] UKUT 236 (AAC); RB v Information Commissioner [2015] UKUT 614
confidential information. (AAC).
However, Coco is not always relevant in the FOI context. For example, see In Mahon,143 the Irish Supreme Court had to consider whether a plan-
the Court of Appeal decision in Secretary of State for the Home D epartment ning tribunal (established by statute) was able to impose obligations of con-
v British Union for the Abolition of Vivisection.136 An application by BUAV fidence in respect of documents that it circulated. There was no statutory
under the Freedom of Information Act 2000 for information was rejected by provision conferring confidentiality on the tribunal or its workings, thus
virtue of section 44(1)(a). This provision exempts information from disclo- the court resorted to common law principles. It cited the Coco three-step
sure if this is ‘prohibited by or under any enactment’. The enactment said to test with approval.144 On the third step, however, the Court considered the
prohibit disclosure was section 24 of the Animals (Scientific Procedures) Act question of detriment and noted that the applicable authorities dealing with
1986 (ASPA) which makes it an offence to disclose ‘any information which confidentiality and government information (such as Spycatcher) required
has been obtained by him in the exercise of those functions and which he the tribunal to show detriment to the public interest by disclosure of the
knows or has reasonable grounds for believing to have been given in confi- confidential documents.145 In McCann,146 the Irish Court of Appeal subse-
dence’. Essentially, the issue before the Court of Appeal was whether it was quently cited Mahon (and its approval of the Coco v Clark three-step test)
to correct to interpret section 24 of ASPA as importing, by implication, the when dealing with confidentiality principles.147
Coco three-step test.137 The court distinguished Coco, saying that it was not Section 26 of the Freedom of Information Act 1997 Act (Ireland) allows
relevant to this statutory provision. There was nothing in the statutory lan- a public body to refuse a request for information where it has been given
guage or context of section 24 of ASPA to justify interpreting it according to that body in confidence or where it would constitute a breach of a duty
to Coco. Moreover, the Coco test was described as differently oriented— of confidence. In Sheedy v The Information Commissioner148 the Supreme
at balancing commercial interests—whereas this provision was ‘concerned Court of Ireland held that determining whether the information was given
with relations of citizen and state’ and not with balancing interests.138 in confidence pursuant to section 26(1)(a) of the 1997 Act was correctly
In the context of the Environmental Information Regulations 2004139 determined according to Coco principles. Multiple decisions of the Informa-
there is an exception to the duty to disclose environmental information tion Commissioner and High Court have also applied Coco in the context
where disclosure would adversely effect, ‘the confidentiality of commercial of the 1997 Act.149
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 G. Australia
Coco has been doubted.142
This section examines the High Court of Australia, Full Federal Court of
Australia and State Supreme Court decisions that cite Coco.
F. Ireland It is apparent that Australian appellate courts have approved and applied
the Coco three-step test. For example, in Commonwealth v John Fairfax &
The impact of Coco in Ireland can be dealt with briefly. In short, Coco has Sons Ltd150 Mason J, in an interlocutory application in the High Court to
been accepted as reflecting the general principles on confidentiality and has
been utilised in relation to freedom of information law. As noted earlier, the 143 Mahon v Post Publications [2007] IESC 15.
144 ibid [71]–[72].
uptake by courts did not happen until 2000s onwards. 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.
136 Secretary of State for the Home Department v British Union for the Abolition of Vivisec- 149 From the Irish High Court see: Rotunda Hospital v Information Commissioner [2009]
tion [2008] EWCA Civ 870, [2009] 1 WLR 636. Eady J at first instance had held that relying IEHC 315, [64]–[72]; Health Service Executive v Information Commissioner [2008] IEHC
on Coco was a flawed approach. 298, [2009] 1 IR 700; Sheedy v The Information Commissioner [2004] IEHC 192, [2004]
137 ibid [29]. 2 IR 533, 547. There are numerous decisions of the Information Commissioner that apply
138 ibid [31] Coco. Some illustrative examples are: Henry Ford & Sons Ltd, Nissan Ireland and Motor
139 SI 2004 No 3391. Distributors Ltd and The Office of Public Works [1999] IEIC 98049; Eircom Employee Share
140 See reg 12(5)(e). Ownership Trust and the Department of Finance [2003] IEIC 010367; Mr John Burns, The
141 Bristol City Council v Information Commissioner [2010] UKFTT EA/2010/0012; Jones Sunday Times and Trinity College Dublin (TCD) [2009] IEIC 080208; Mr L and the Health
v Information Commissioner [2012] 2 Info LR 129, UKIT EA/2011/0156. Service Executive [2013] IEIC 110200; Mr X and the Department of Transport, Tourism and
142 Chicester District Council v Information Commissioner [2011] UKFTT EA/2010/0153 Sport [2014] IEIC 090077.
(GRC); SI Green (UK) v Information Commissioner [2013] UKUT 473 (AAC). 150 Commonwealth v John Fairfax & Sons Ltd (1980) 147 CLR 39.
324 Elena Cooper Biogen v Medeva (1996) 293
In January 2002, the Court of Appeal allowed Johnstone’s appeal. Tuckey For the purposes of this chapter, it is particularly significant that Biogen
LJ, delivering a judgment with which Pumfrey and Burton JJ agreed, held was one of the first companies to use genetic engineering to develop phar-
that ‘unless there is a civil infringement, there can be no offence under maceutical products—a business model that would become heavily reliant
section 92’.38 First, this was the proper interpretation of the words of section on patent law.30 In doing so, the company developed formal and informal
92: the reference to ‘infringement’ in section 92(5) was to civil infringement; relationships with academic institutions, funding professorships and labora-
the interpretation section (section 104) defined ‘infringement’ by reference tories. One of these professorships was held at the University of Edinburgh
to sections 9(1)–(2) and 10 concerning civil infringement. While section 104 by Kenneth Murray, an innovative researcher in the field of DNA recombi-
did not expressly mention the defences in sections 11 and 12, it would be nation who had contributed, with his wife Noreen, to the Scottish university
‘nonsense’ for section 92(5) to provide a defence when a defendant had a becoming an important scientific research hub.31 In fact, the Department of
reasonable belief that there was no civil infringement, when the absence Molecular Biology at the University of Edinburgh, having been instituted
of civil infringement would be no defence.39 Further, if the defences under in 1965, was the first of its kind in the UK.32 Murray’s interest in virology
sections 11 and 12 were not available to a defendant under section 92, then increased because of his association with Biogen,33 resulting in a series of
there would be an inconsistency with the EU Directive40 that seeks to har- projects that constituted the basis for a useful—and lucrative—hepatitis B
monise ‘substantive rules of central importance’ to trade mark law.41 That vaccine.34 Such scientific achievement was derived from his experimental
cannot have been the intention of Parliament. However, to avoid unneces- work in the late 1970s, particularly with the successful isolation of part of
sary complexity for juries, the prosecution would not be obliged to prove the genome of the virus hepatitis B—the Dane particle—and the splicing of
civil infringement in every case; rather it was for the defendant to set out in it into the DNA of a host cell.35 When the host cell replicated, the part of the
his Defence Statement the civil law provisions upon which he relied, and the hepatitis B genome encoded for in the spliced-in DNA was expressed. This
onus would be on the Crown to disprove that case.42 expression was a hepatitis B antigen capable of triggering the production of
Accordingly, the Court of Appeal held that Johnstone should have hepatitis B antibodies in the immune system. Murray’s experiments led to
been free to run the arguments set out in his Defence Statement: that the the filing of a patent application by Biogen on 22 December 1978 in the UK
use of the sign was not trade mark use and not civil infringement under (the Biogen 1 application).36 On 21 December 1979 Biogen made a filing at
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.
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 ‘Obitu-
D. The Appeal to the House of Lords ary: Professor Sir Kenneth Murray, the Scientist Who Developed the Vaccine Against Hepa-
titis B’ The Independent (15 April 2013); D Finnegan, ‘Obituary: Sir Kenneth Murray’ The
Guardian (21 April 2013); ‘Obituary: Professor Sir Kenneth Murray; Molecular Biologist
The prosecutions then appealed to the House of Lords. The question before Who Helped to Create a Life-Saving Machine’ The Times (26 April 2013); WJ Brammar and
the Lords was, as expressed by Lord Nicholls, ‘whether it is a defence to a WB Gratzer ‘Sir Kenneth Murray: 30 December 1930–7 April 2013’ (2014) 60 Biogr Mems
criminal charge under section 92 … that the defendant’s acts do not amount 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.
to a civil infringement of a trade mark’ per Lord Nicholls;45 or, as stated 32 S de Chadarevian, Designs for Life: Molecular Biology after World War II (Cambridge,
by Lord Walker, ‘whether a person can be convicted of an offence under 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
38 R v Johnstone, CA, [46]. Daily Mail (22 February) 29. See also J Watts and T Alkin, ‘A Road to Unification: Patent
39 ibid. Litigation in the United Kingdom 1990–2012’ (2013) 23 Fordham Intell Prop Media &
40 ibid [53]. Ent LJ 571, 581.
41 ibid, citing C-355/96 Silhouette International v Hartlauer [1998] ECR I-4799 [23]. 35 D Brennan ‘Biogen Sufficiency Reconsidered’ (n 13) 476–79.
42 ibid [48]. 36 ‘After much discussion it was agreed that Murray and Greenstreet should prepare patent
43 ibid [68]. for filing as soon as cloned strain available for deposit. This would be withdrawn and replaced
44 ibid [35] and [48] point (b). with a new one for “expression strain” if available in one year’ in ‘Minutes of the Fourth B
iogen
45 R v Johnstone, HL, [25], per Lord Nicholls. Scientific Board Meeting, 24 June 1978’,‘Miscellaneous Documents’ HL/PO/JU/3/1913, PA.
294 Luke McDonagh R v Johnstone (2003) 323
the European Patent Office (EPO)—claiming the earlier priority date—for a rely on section 11(2)(b) of the Trade Marks Act which provides that ‘the
patent (the Biogen patent) for an invention comprising: use of indications concerning the kind … or other characteristics of goods’
is not an infringement, if this was in accordance with ‘honest practices in
A recombinant DNA molecule characterized by a DNA sequence coding for a
polypeptide or a fragment thereof displaying HBV antigen specificity, said DNA industrial or commercial matters’. Johnstone’s argument was that the signs
sequence being operatively linked to an expression control sequence in the recom- in question merely indicated who the performers were.31
binant DNA molecule and being expressed to produce a polypeptide displaying Following other decisions at Crown Court level,32 Judge Mitchell rejected
HBV antigen specificity when a suitable host cell transformed with said recom- these submissions; he held that the criminal provisions in section 92 ‘stand
binant DNA molecule is cultured, the transformed host cell not producing any alone and should in no way be connected to the civil or tortious aspect that is
human serum proteins and any primate serum proteins other than the polypeptide created within this Act’.33 In particular, the word ‘infringement’ in section 92,
displaying HBV antigen specificity.37 merely denoted ‘unauthorised use’ of a mark, and not infringement as deter-
Claim 1 of the Biogen patent thus concerned a product defined ‘partly by the mined by reference to the civil law of trade marks.34 Following this rul-
way it had been made (‘recombinant DNA’) and partly by what it did (the ing, Johnstone changed his plea to guilty. He was sentenced to six months’
words following ‘characterized by’)’.38 Meanwhile, Claims 2 to 7 described imprisonment, concurrent, on each count. In addition, a confiscation order
specific embodiments of the recombinant DNA molecule according to was imposed, by consent, for £130,181.24 (to be paid within 18 months,
Claim 1. After a lengthy examination procedure, the patent was granted with three years’ imprisonment in default), as well as orders for forfeiture
by the EPO on July 1990 as European Patent (UK) No 0182442.39 Opposi- of all materials seized by the police during their investigations.35 This was
tion proceedings were entered against the patent shortly thereafter.40 The Johnstone’s second conviction for an offence of this kind.36
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 frag- C. The Appeal to the Court of Appeal
mentary nature of enforcement within the European Patent Convention
system, national litigation could still proceed over the same patent on the Leave to appeal to the Court of Appeal against the conviction was then
issues of infringement and validity.42 While the courts in the United King- granted in relation to a number of questions, concerning different facets
dom (England and Wales) had begun to take the EPO’s validity decisions of the relation between civil and criminal law. First, was it necessary for
into account, there was nonetheless some potential for divergent judicial the Crown to prove the civil infringement of a registered trade mark under
decisions to occur at the EPO and national levels.43 In fact, although previ- sections 9–11 Trade Marks Act 1994, in a prosecution under section 92(1)?
ous national cases had emphasised that the ‘decisions of the EPO must carry Secondly, could a defendant relying on the statutory defence in section 92(5)
considerably persuasive authority’,44 this kind of divergence in the context also rely on the civil sections 9–11 of the Trade Marks Act? More spe-
of parallel proceedings did indeed occur in Biogen v Medeva.45 cifically, did the words ‘infringement of a registered trade mark’ in section
92(5) denote civil infringement? Thirdly, if civil infringement was not a pre-
37 BIOGEN/Hepatitis B [1995] EPOR 1.
requisite to the offence under section 92, was section 92 compatible with
38 European Patent specification available at <register.epo.org/application?number=EP852 the EU Trade Marks Directive (89/104/EEC), which sought to harmonise
01908>.
39 ibid.
aspects of the civil law of trade marks?37
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
31 R v Johnstone, CA, [10]. The House of Lords referred to the reliance on s 11(2)(b) as an
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 alternative to the defence in s 92(5), see R v Johnstone, HL, [21].
32 R v Johnstone, CA [10].
of Professor Kenneth Murray, UEA.
41 T 0296/93 (HBV antigen production), OJEPO 1995, 627. 33 ‘Ruling of His Honour Judge Mitchell of 25 October 1999’, Appeal Papers (n 22).
42 I Britton ‘The English Stay Back?’ (2000) 3 Bio-Science Law Review 3, 99. 34 ibid.
43 L McDonagh, European Patent Litigation in the Shadow of the Unified Patent Court 35 ‘Criminal Appeal Office Summary’, Appeal Papers (n 22).
36 R v Johnstone, CA, [12].
(Cheltenham, Edward Elgar, 2016) 1–11.
44 Asahi Kasei Kogyo KK’s Application [1991] RPC 485, 540; see also Merrell Dow 37 ‘Criminal Appeal Office Summary’, Appeal Papers (n 22), and R v Johnstone, CA [2].
Pharmaceuticals Inc v H N Norton & Co Ltd [1996] RPC 76. There was also a fourth question: whether the penalties under section 92(6) (a maximum sen-
45 Y Cripps ‘Recombinant DNA Technology. A Patent Case in the House of Lords’ (1997) 56 tence of ten years’ imprisonment or an unlimited fine, or both) were compliant with the Treaty
The Cambridge Law Journal, 262–67, and J Straus ‘Patent Litigation in Europe—A G limmer of Rome, Art 5. See text to n 75 below.
of Hope? Present Status and Future Perspectives’ (2000) 2 Wash. UJL & Pol’y 403, 407.
registered trade marks (Bon Jovi, U2, The Rolling Stones, Rage Against III. INVENTIVE THOUGHT OR INVENTIVE INDUSTRY?
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 A. From the Office to the Court
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 … UK national litigation over the patent was initiated in July 1992, when
has in his possession, custody or control in the course of a business any such Biogen filed a patent infringement case against Medeva plc at the Patents
goods with a view to the doing of anything, by himself or another, which Court—part of the High Court of England and Wales—in London.46 The
would be in offence’ under section 92(1)(b). Section 92(1)(b) criminalises controversy underlying the case was that a UK-based pharmaceutical
unauthorised acts of selling, letting for hire, offering or exposing for sale or group called Medeva planned to market a third-generation hepatitis B vac-
hire or distributing ‘goods which bear, or the packaging of which bears, a cine manufactured via recombinant DNA technology.47 Biogen argued that
sign that is identical or, or likely to be mistaken for a registered trade mark’, this was an infringement of the patent granted to them by the EPO in 1990
with a view to gain for himself or another or with intent to cause loss to (EP 0182442), as well as another of their European patents (EP 0013828)
another. 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
B. The Crown Court Proceedings 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)
Kingston Crown Court heard the case in October 1999, before Judge to join SmithKline Beecham as a defendant to their revocation counter-claim.50
Mitchell. Johnstone began by pleading not guilty. His Defence Case State- The analysis of the precise grounds of Medeva’s counter-claim for revoca-
ment explained that the ‘general nature of his defence’ was that the use of tion of the Biogen patent is crucial for our purposes.51 The fundamentals
the signs in question (Bon Jovi, U2, etc) was not ‘trade mark use’;26 rather can be summarised as follows:
the signs merely indicated who the performers were.27 If that argument was (i) that the claimed invention was obvious in accordance with sections l(l)(b)
not accepted, the Defence Case Statement indicated that Johnstone wished and 3 of the Patents Act 1977, both at the date of application for the Biogen
to rely on the statutory defence in section 92(5) Trade Marks Act 1994.28 patent filed in December 1979 and at the claimed priority date of the Biogen
This provides that it is ‘a defence for a person charged with an offence 1 application in December 1978. (During the trial Biogen conceded that
under this section to show that he believed on reasonable grounds that the the claimed invention was obvious at the date when the application for the
use of the sign in the manner in which it was used, or was to be used, was European patent was filed. but argued that it was not obvious on the claimed
not an infringement of the registered trade mark’. To support these points, priority date of the earlier Biogen 1 application.)
Johnstone claimed that he had been advised by a reputable trade mark attor- (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
ney that his use of the signs in question was not trade mark infringement.29
1977—it did not support the invention claimed in the Biogen patent as filed
Before the jury was appointed, Judge Mitchell ruled on a preliminary
in 1979.
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 46 ‘Statement of Claim’, HL/PO/JU/3/1913, PA. The Patents Court was created in 1980
Trade Marks Act; civil liability under sections 9–11 should be a prerequi- by section 96 of the Patents Act 1977 (subsequently repealed and replaced by section 60 of
site to a finding of criminal liability under section 92.30 This was because, 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
as well as arguing that there was no ‘trade mark use’, Johnstone wished to 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
25 ‘Indictment’, Appeal Papers (n 22). G Counsell, ‘Medeva Faces Court Action over Patent’ The Independent (25 August 1993) 40.
26 ‘Agreed Statement of Facts and Issues’, para 2.3, Appeal Papers (n 22). 48 ‘Amended Particulars of Infringement’, HL/PO/JU/3/1913, PA.
27 R v Johnstone, CA, [34]. 49 C Huhne, ‘Patent Challenge’ The Independent (4 October 1993) 22 and G Counsell
28 ‘Agreed Statement of Facts and Issues’, para 2.3, Appeal Papers (n 22). ‘Medeva Faces Suit over New Vaccine’ The Independent (28 October 1993) 41.
29 ibid para 2.4. 50 L Jacobs ‘Case Comment: Patents’ (1993) 15 European Intellectual Property Review D89.
30 ‘Ruling of His Honour Judge Mitchell of 25 October 1999’, Appeal Papers (n 22). 51 ‘Amended Defence and Counterclaim’ and ‘Amended Particulars of Objections’
30 September 1992, HL/PO/JU/3/1913, PA.

(iii) that the claimed invention was not an invention in line with section 1(1) engage more critically with intellectual property crime today, by shifting the
Patents Act 1977. focus from immediately obvious explanations for the ruling in Johnstone
(iv) that the description in the specification was insufficient under section 72(l)(c) (eg objectives of EU harmonisation of the civil trade mark law, and the lan-
of the Patents Act 1977. guage used by section 92) and drawing attention to underlying tensions in
During a lengthy trial at the Patents Court, Aldous J heard expert evidence the law: both in the nineteenth century and today, trade mark offences were
about what people skilled in the art of recombinant DNA technology would caught between efficient enforcement and the paradigm of serious crime
have thought and done at the time.52 One of the interesting points that came involving dishonesty (theft today and forgery in the nineteenth century).
out during expert testimony was that during the period immediately prior History, therefore, in taking our attention away from the simple explana-
to Prof Murray’s 1978 discovery a general voluntary moratorium on recom- tions, enables us to identify the more deep-seated ambivalence in the relation
binant DNA experiments perceived to be potentially dangerous had been between intellectual property offences and paradigms of real crime today.
in place following the publication of the ‘Berg letter’ in the leading British This chapter is structured as follows. I begin by presenting a detailed
journal Nature in July 1974.53 In retrospect, this was described as a factor account of the case of Johnstone, tracing its history through the rulings of the
that delayed progress in the field.54 While scientists continued to develop Crown Court, Court of Appeal and finally the House of Lords (section II).
ideas in the abstract, practical research had halted, leaving the methods The analysis here focuses on the issue of the relation between civil and crim-
available to reach desired end-points and goals undeveloped.55 This was inal law, and this is explained, in section III, by reference to wider criminal
relevant to the court’s analysis of inventive step, because Aldous J had to law categories. Following this, in section IV, in line with the purpose of
decide whether, in light of prior-existing research, the patent was obvious at The Landmark Cases series, I look to historical antecedents to Johnstone:
the claimed priority date of 1978. the story of criminalisation in the making of the Merchandise Marks
Nonetheless, the first issue to decide was whether Claim 1 of the Biogen Act 1862. As the conclusion in section V argues, while the context for the
patent referred to more than one invention. This was important to the insuf- 1862 Act was very different, this broad historical vantage point assists us
ficiency and obviousness questions because if the patent contained more than to reflect more critically on Johnstone and intellectual property crime more
one invention, the claims would have to sufficiently disclose each invention; generally today.
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 II. THE DECISION IN R v JOHNSTONE
finding, and in light of the evidence presented to him, he further concluded
that the requirement of sufficiency was satisfied.57 A. Facts and Background
With respect to obviousness, Aldous J followed the earlier ruling in
Asahi58 on assessment of the priority date.59 He further voiced support for In October 1997, a package containing over 500 bootleg CDs and related
artwork was sent by a Robert Alexander Johnstone through the post and
52 Biogen relied on the testimony of Professor Sir Kenneth Murray, Professor Burrell, delivered to the wrong address. The recipient contacted Polygram Records
rofessor Villa-Komaroff and Dr Alan Kingsman. Medeva called Professor Jeffrey Almond,
P who, in turn, alerted the police. The police searched Johnstone’s home in
Dr Cozens and Mr Ronald Holmes as witnesses.
53 The letter was also published in Science on 26 July 1974, 303 (‘Potential Biohazards of
New Malden, accompanied by a representative of the British Phonographic
Recombinant DNA Molecules’). For a scholarly discussion of the moratorium, see E Friedberg,
Industry, and found around 500 further bootleg CDs and cassettes. The
A Biography of Paul Berg: The Recombinant DNA Controversy Revisited (Singapore, World police also spoke to an employee of Johnstone, working in an outhouse
Scientific Publishing, 2014) 242–45; S Crotty, Ahead of the Curve: David Baltimore’s Life in to Johnstone’s home, who said he packed 400 to 500 such CDs/cassettes
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 Univer-
every day.24
sity Press, 2005) 46. Criminal proceedings were initiated in March 1999. The indictment con-
54 ‘Dr Peter John Cozens: Defendant’s Expert’s Statement, 6 September 1993’, HL/PO/
tained 12 specimen counts under section 92(1)(c) Trade Marks Act 1994.
JU/3/1913, PA.
55 Biogen Inc v Medeva Plc [1995] RPC 25, 114. Each count alleged that Johnstone had in his possession, custody or control,
56 ibid 42–43. various bootleg CDs bearing the names of well-known music acts that were
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. 24 ‘Agreed Statement of Facts and Issues’ paras 1.1–1.4, Appeal Papers (n 22).
59 Biogen (n 55) 52–56.
c ursory attention to Johnstone.17 The exception here is Andreas Rahmatian’s the idea that a patent application which outlines a new principle, as well as
2004 Modern Law Review article ‘Trade Mark Infringement as a Criminal a method by which it may be carried out, can provide support for a claim
Offence’, which provides an analysis of all aspects of the Johnstone decision, to that principle, however carried out.60 Along these lines, Aldous J decided
including the relation between civil and criminal law.18 On the latter ques- that the principal claims (1–4) of the Biogen patent were supported, and
tion, Rahmatian struggled to understand why the House of Lords did thus entitled to the earlier priority date (the Biogen 1 application), although
not assert a yet closer relation between civil and criminal law concepts.19 Claims 5–6 were not.
Rahmatian advocated an approach treating section 92 as ‘a criminal In analysing the test for obviousness, Aldous J crucially referred to the
infringement provision, ie based on civil infringement and containing addi- classic four-step test in Windsurfing International Inc v Tabur Marine (Great
tional aggravating factors which together trigger criminal responsibility’;20 Britain) Ltd.61 Such a structured approach to the question of obviousness
after all, as he explained: enabled him to begin with the inventive concept underlying the invention.62
Thus, Aldous J first identified Professor Murray’s inventive concept as ‘the
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 idea or decision to express a polypeptide displaying HBV antigen specificity
belonging to another’, in section 1 of the Theft Act 1968 … is determined not only in a suitable host’, that is, making HBV antigens by recombinant DNA tech-
on the basis of sections 4 and 5 of that Act, but also on the basis of civil law.21 nology.63 He then examined what would have been known to the person
skilled in the art. Crucial to this assessment (of obviousness) was the ‘Villa-
This chapter, among other things, responds to Rahmatian’s question. In
Komaroff paper’—a seminal scientific publication on DNA recombination
doing so, it refers to the appeal papers held at the Parliamentary Archives,
in the period prior to Professor Murray’s application, and thus an element
Westminster,22 which reveal that analogies with theft presented in argument
contributing to the state of the art.64 Aldous J, in considering the impor-
to the Lords supported the opposite conclusion to that noted by Rahmatian:
tance of the Villa-Komaroff paper, remarked:
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 It is accepted that once a decision [had] been made to try expression of the HBV
of intellectual property crime from theft for reasons different to those put genome, the technique set out in Villa-Komaroff would have been sufficient to
forward by Rahmatian. 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
In critically analysing the decision in Johnstone, this chapter also draws
antigen specificity in a suitable host.65
on original research into the experience of criminalising trade mark infringe-
ment from a very different time and context: the mid-nineteenth century. Aldous J then examined what strategies would have been available in 1978
The important role that processes of criminalisation played in the making to the skilled person who sought to make HBV antigens via recombinant
of the modern law of trade marks is analysed, focusing on the history of DNA technology.66 He considered that there were two significant possible
the first statute to provide protection for trade marks generally, regard- methods.67 One would have been to try to find out more about HBV and its
less of subject matter: the Merchandise Marks Act 1862.23 The experience DNA through gene sequencing, which would provide some useful informa-
of criminalisation from a very different time and context enables us to tion regarding the expression of the relevant genes.68 The alternative strat-
egy 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.
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 60 ibid 56.
Review 4, 670–83, 675–77. For the implications of Johnstone for Scottish intellectual property 61 Windsurfing International Inc v Tabur Marine (Great Britain) Ltd [1985] RPC 59. For
law: A Rahmatian, ‘Vestiges of a Scottish Intellectual Property Law?’ (2004) 2 Juridical Review a discussion of this case, see PA Stone ‘Some thoughts on the Windsurfing judgment’ (1986) 8
209–12. European Intellectual Property Review 242.
19 Rahmatian, Trade Mark Infringement (n 18) 675: ‘Several aspects of Johnstone are not 62 Biogen (n 55) 73–74.
easy to understand. One is the argument that the criminal offence has to be seen as a separate 63 ibid 57.
entity in principle, alongside the civil infringement law.’ 64 L Villa-Komaroff et al, ‘A Bacterial Clone Synthesizing Proinsulin’ (1978) 75 Proc Nati
20 ibid 676. Acad Sci USA 3727.
21 ibid. 65 Biogen (n 55) 58.
22 House of Lords Appeal Cases, Series 3, HL/PO/JU/4/3/2272, held by Parliamentary 66 ibid 56–65.
Archives, Houses of Parliament, Westminster, London; hereafter ‘Appeal Papers’. 67 ibid 59.
23 25 & 26 Vict. 68 ibid 59–60.
Biogen’s argument on this point was that it was not until the sequence had inconsistency has since been removed: the maximum penalty of ten years
been obtained, with the knowledge that introns—nucleotide sequences and/or an unlimited fine is now also applicable to copyright and performers’
within a gene that are removed by RNA splicing—would not be a prob- rights12 (though the discrepancy remains for online infringement).13
lem ‘that the skilled man would seriously consider expression of HBV As well as the question of trade mark use, the ruling in Johnstone is also
antigens’.69 Aldous J agreed and held that the strategy taken by Professor well known for the human rights issues that it raised: its contribution to case
Murray would not have been obvious in 1978 because only the patentee law on the nature of burden of proof to be borne by the defendant in run-
‘contemplated expression of the HBV antigen in December 1978, despite ning a statutory defence (in Johnstone, section 92(5) Trade Marks Act 1994,
the fact that the skilled man must have read the Villa-Komaroff paper and discussed later) and its compatibility with the presumption of innocence
there was an incentive to do so. The reason may well be that stated in the under Art 6(2) of the European Convention of Human Rights. In J ohnstone,
patent, namely the skilled man was put off by introns’.70 the House of Lords preferred the approach of the Court of Appeal in
Finally, Aldous J also rejected the idea that the patent did not describe R v S,14 over that of the Court of Appeal in Johnstone; section 92(5) imposed
an ‘invention’ in line with the earlier case of Genentech.71 Thus, the Pat- a legal burden on the accused and this was compatible with the presump-
ents Court ruled in favour of Biogen, holding that the principal claims of tion of innocence in Article 6(2) European Convention on Human Rights.15
the patent were valid and granting an injunction restraining the defendants This aspect of Johnstone has also been closely considered in the existing
from infringing it and ordering the destruction of the infringing material.72 literature.16
Precisely because this decision was seen as highly favourable to the patentee, This chapter leaves these more frequently discussed aspects of Johnstone
Medeva suffered a significant financial blow, and decided to appeal.73 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 crimi-
nal law in intellectual property. Intellectual property offences, I argue, are
B. The Reversal by the Court of Appeal caught between their characterisation, on the one hand, as offences of ‘dis-
honesty’ and on the other, ‘quasi-criminal’ regulatory crime. I argue that the
The Court of Appeal unanimously reversed the ruling of the lower court, public interest dimension to countering piracy and counterfeiting, which
finding the patent invalid.74 In contrast to the Patents Court, this court was justifies a regulatory characterisation, explains the approach adopted by the
assisted by scientific expert advisers;75 a support that had been considered Lords in Johnstone.
particularly helpful in previous biotechnology cases decided on appeal.76 In considering the relation between civil and criminal law in intellec-
tual 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
69 ibid 64.
70 ibid 65. Aldous J also rejected Medeva’s argument that the first strategy—gene 12 Copyright Designs and Patents Act 1888, ss 107(4)(b) and 198(4)(b) introduced by the
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 Copyright etc and Trade Marks (Offences and Enforcement) Act 2002, s 1. The same maxi-
Intellectual Property Review 90. mum penalties are also now applicable to registered design infringement: Intellectual Property
71 Genentech Inc’s Patent [1989] RPC 147, 272. 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
72 ‘Order issued by Mr Justice Aldous, 9 November 1993’, HL/PO/JU/3/1913, PA. For news-
paper accounts of the decision see L Buckingham ‘Medeva Suffers Vaccine Pain’ The Guardian offences are committed by communicating a work to the public, the maximum penalty remains
(5 November 1993); G Foster, ‘Medeva Shakes Dealers’ The Daily Mail (5 November 1993) two years’ imprisonment or a fine. The Gowers Review on Intellectual Property (2006) rec-
71; R Hotten, ‘Medeva Loses Patent Battle’ The Independent (5 November 1993) 34. ommended the removal of this inconsistency as regards copyright law (Recommendation 36,
73 In addition to the newspaper accounts of the decision cited in the previous footnote, para 5.81) and it is the current Government’s intention to introduce legislation on this point
specialist journals also discussed the decision; see I Judge et al, ‘Chiron v Organon and (Criminal Sanctions for Online Copyright Infringement: Government Consultation Response,
Biogen v Medeva’; and H Kelly, ‘Biogen’s Hepatitis B Patent Held Valid and Infringed’ (1993) IPO, 2016).
14 R v S [2002] EWCA Crim 2558, 1 Cr App R 35.
2 European Intellectual Property Review 75; N Jones ‘Biotechnology Patents: A Change of 15 R v Johnstone, HL, [54]. This aspect of the case is referred to at (text to n 64 below).
Heart’ (1994) 1 European Intellectual Property Review 37. 16 See, for example: NP Metcalfe and AJ Ashworth ‘Case Comment: Trade Mark: Trade
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 Marks At 1994 ss 11(2), 92—infringement’ (2004) Criminal Law Review 245–47; V Tadros
‘Case Note’ [1994] 12 European Intellectual Property Review D316–D317. and S Tierney, ‘The presumption of innocence and the Human Rights Act’ (2004) 67 Modern
75 ibid 68. See also RS Crespi, ‘Recombinant DNA Patents in Litigation—A Comprehensive Law Review 3, 402–34; B Fitzpatrick, ‘Reverse burden and Article 6(2) of the European Con-
Study of Some EPO and UK National Court Decisions’ (1997) 28 International Review of vention on Human Rights’ (2005) 69 Journal of Criminal Law 6, 478–84; I Dennis, ‘Reverse
Industrial Property 603, 615. Onuses and the Presumption of Innocence: In Search of Principle’ (2005) Criminal Law Review
76 ‘Sydney’s Brenner appointment as Scientific Advisor in Genentech v The Wellcome 901–36.
Foundation’, SB/1/2/317, CSHL Archives Repository.
and this has been much discussed in existing scholarship.4 As Lord Nicholls Hobhouse LJ delivered the judgment of the court and began it by saying
opined: 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
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 fact.77 The court nevertheless undertook a thorough re-examination of the
proprietor of the mark.5 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
On this issue, Johnstone is a dated landmark; the legal landscape has conclusion that it had not.79 Hobhouse LJ opined:
changed significantly since Johnstone was decided in 2003. Two points can
be noted. First, developments in the European Court of Justice’s case law The outcome of this evidence is that whatever results the plaintiff obtained in
mean that it is now clear that a broad range of other trade mark func- 1978 did not amount to evidence justifying a claim to have produced a recom-
binant DNA molecule which enabled the expression of HBsAg in E. coli (or any
tions are now relevant under the civil law of trade marks: ‘in particular …
other host).80
guaranteeing the quality of the goods or services in question and those of
communication, investment or advertising’.6 The expansion in trade mark Such an approach differed fundamentally from Aldous J in the analysis of
functions in the civil law has resulted in increased importance for defences the nature of the invention disclosed in the patent.81 Hobhouse LJ ruled the
to infringement (section 11) in limiting the scope of protection. Accordingly, description in the specification to be insufficient, holding that Claim 1 of the
were the test in Johnstone to be adapted to accommodate these other trade patent referred to more than one invention (product).82 The court held that
mark functions, no longer would it set significant limits on section 92; the the determination of sufficiency depended on the interaction between the
‘scope or “footprint” of section 92’ would not be necessarily ‘smaller than description in the specification and the claim, with reference to the state of
and wholly contained within, the “footprint” of the civil infringement the art at the time of the application.83 Here the analysis of the specification
sections’, as the Lords had intended.7 and claim revealed that the 1978 Biogen 1 application did not adequately
Secondly, as House of Lords’ judgments acknowledged,8 the issue of trade disclose the claimed invention(s).84 Strictly speaking, as the patent was
mark use would not have arisen had the case in Johnstone instead been not—according to the Court of Appeal—entitled to priority, the finding on
brought in respect of criminal offences relating to copyright (eg in the music obviousness was obiter dicta. However, it is interesting to continue reading
and lyrics) and/or performers rights (in respect of an ‘illicit recording’) the decision because the House of Lords referred to this reasoning as well.
under sections 107 and 197 Copyright Designs and Patents Act 1988.9 The Hobhouse LJ appeared to consider Professor Murray’s strategy to be an
prosecution in Johnstone brought the case under the Trade Marks Act 1994 obvious one. In this regard, he stated that the decision to adopt the strategy
because of the far higher penalties available at that time for trade mark on the part of Murray/Biogen was purely a ‘matter of business judgment’, a
offences (a maximum of ten years’ imprisonment and/or a fine)10 as com- ‘mere commercial decision’, and that all Biogen had done was ‘to pursue an
pared to criminal offences relating to performers’ rights or copyright (then, identified goal by known means’.85 Moreover, even if the decision was not
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” 77 Biogen Inc v Medeva Plc [1995] RPC 25, 68–69. This was remarkable because, as noted
Problem in the English Courts’, (2009) European Intellectual Property Review 195–201; recently by Lord Justice Lewison, ‘Appellate courts have been repeatedly warned, by recent
P Yap, ‘Making Sense of Trade Mark Use’, (2007) 29 European Intellectual Property Review cases at the highest level, not to interfere with findings of fact by trial judges, unless compelled
10, 420–27. C Rutz, ‘After Arsenal and Electrocoin: Can the Opinions on Trade Mark Use be to do so. This applies not only to findings of primary fact, but also to the evaluation of those
Reconciled?’, (2005) 36 International Review of Intellectual Property and Competition Law facts and to inferences to be drawn from them’—Fage UK Ltd & Another v Chobani UK Ltd
6, 682–705; H Norman, ‘Time to Blow the Whistle on Trade Mark Use?’, (2004) 1 Intellectual & Another [2014] EWCA Civ 5 at 114.
Property Quarterly 1–34. 78 ibid 70–76. See also May & Baker Ltd. v Boots [1950] UKHL 1.
5 R v Johnstone, HL [13].
79 ibid 111–12.
6 C-487/07 L’Oreal v Bellure [2009] ECR I-5185 (ECJ, First Chamber), [58]. See also,
80 ibid 112.
C-236/08-238/08 Louis Vuitton v Google France [2010] ECR I-2417 (ECJ, Grand Chamber), 81 ‘Case for the Appellants’, HL/PO/JU/3/1913, PA.
[77]; C-558/08 Portakabin v Primakabin [2010] ECR I-6963 (ECJ, First Chamber), [30]. 82 See I Karet ‘Priority and Sufficiency, Inventions and Obviousness’ (1995) 1 European
7 R v Johnstone, HL, [73] per Lord Walker.
8 ibid, HL [40] per Lord Nicholls and [86] per Lord Walker.
Intellectual Property Review 42, 45.
83 Biogen Inc v Medeva Plc [1995] RPC 25, 78–83.
9 1988.
84 ibid 78–82; Exxon/Fuel oils OJEPO 1994, 653 (T 0409/91).
10 Trade Marks Act 1994, s 92(6).
85 ibid 114. See also J Thomson ‘The Grey Penumbra of Interpretation Surrounding
11 Copyright Designs and Patents Act 1988, ss 107(4)(b) and 198(5)(b) as enacted.
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 think-
ing surprised some commentators,87 the fact is that Hobhouse LJ remarked 12
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 com- R v Johnstone (2003)
panies’ share prices, and Biogen appealed the Court of Appeal’s ruling to the
House of Lords, where the saga reached its conclusion.89
ELENA COOPER*
C. The End of the Affair

I. INTRODUCTION
F
Despite the fact that the Court of Appeal had been unanimous in its deci-
OR INTELLECTUAL PROPERTY lawyers today, R v Johnstone1
sion, Biogen prepared a strong case before the Lords, emphasising from the
is a rare case: it is the only House of Lords ruling on the crimi-
outset a series of notable differences within the decisions already handed
nal law provisions of a current intellectual property statute. The
down. Interestingly, they highlighted the judicial expertise of the trial judge,
appeal concerned the conviction of one Robert Alexander Johnstone at
described as ‘an experienced patents judge’.90 Indeed, Aldous J was one of
Kingston Crown Court for 12 counts under section 92 of the Trade Marks
the few specialist judges in the High Court, someone trained in the intrica-
Act 1994,2 relating to the possession of bootleg CDs (unauthorised
cies of patent law at a crucial point in its development and with an expertise
recordings of live performances by well-known popular music acts). In
not found at the Court of Appeal.91 Similarly, Biogen tried to capitalise
each instance, the registered trade mark was the name of the music artist
on the favourable outcome achieved at the EPO, noting how the decision
in question, eg Bon Jovi, which appeared on the bootleg CD. Johnstone
came from a three-member Technical Board of Appeal set up specifically to
appealed against his conviction; he had pleaded guilty after the Crown
handle biotechnology cases.92 Emphasising the expertise and experience of
Court had ruled that he was not entitled to argue his defence by reference
those authorities who had decided the case beyond the Court of Appeal was
to the limits imposed by civil law on infringing uses of a trade mark. Both
strategic since both had been unanimous on all major issues except the point
the Court of Appeal and House of Lords found in his favour. The House
of the date at which to judge sufficiency.
of Lords held that implicit in section 92 was the requirement that the
As noted earlier, Biogen patented the recombinant method of making the
defendant’s use was one to which the trade mark proprietor could object
antigens of a hepatitis B virus with a priority date of 22 December 1978 (the
under the civil law of trade marks: the defendant’s use of the sign must be
UK filing date—Biogen 1). It was accepted that it would have been obvious
use ‘as a trade mark’.3
by 21 December 1979 (the EPO filing date for the Biogen patent). There-
Today, Johnstone is usually remembered by intellectual property lawyers
fore, the fundamental issue to be resolved by the House of Lords concerned
for what the Lords had to say about the meaning of ‘use as a trade mark’
the question of whether the claims of the patent, as granted by the EPO,
86 ibid 114.
87 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. * With thanks to Lindsay Farmer, James Chalmers and Fiona Leverick for their comments
89 N Bannister, ‘Medeva Stock Boosted by Vaccine Patent Victory’ The Guardian
on an earlier draft of this paper presented at the Criminal Law Forum, University of Glasgow,
(28 October 1994). June 2016.
90 ‘Case for the Appellants’, HL/PO/JU/3/1913, PA. 1 R v Johnstone [2003] UKHL 28, [2003] 1 WLR 1736, [2002] EWCA Crim 194, [2003]
91 S Thorley ‘Lord Justice Aldous: An Appreciation’ (2003) The CIPA Journal, 537–38; s ee FSR 56.
also H Cline, S Cohen and G Moss ‘Biogen v Medeva: UK Patent Law Out of Step with Europe’ 2 The details of s 92 are at the text following n 25.
(1995) 14 Biotechnology Law Report 344, 345. 3 ibid (HL), [28] and [31], Lord Nicholls.
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.
316 Luke McDonagh Biogen v Medeva (1996) 301
This comment reflects two central concerns that illustrate why Biogen were supported by the previously filed UK patent application (Biogen 1)
was a notable case: first, accommodating biotechnological inventions within from which priority was claimed.93 According to Biogen, one of the errors
patent law required something ‘new’ conceptually (in terms of expanding of the Court of Appeal was their failure to distinguish between the subject
the notion of the ‘invention’ to allow organisms to be seen as ‘manufac- matter of the invention and the inventive concept, that is, between ‘what is
tured’, and thus, ‘invented’); and, second, it required a reliance on tech- the invention’ and ‘why it is inventive’.94 However, Medeva argued that it
nology and scientific expertise (for assessing what the ‘difficult’ facts were was preferable to address the issues as formulated by the Court of Appeal,
concerning the new ‘intellectual possessions’).204 That all the key subsequent rather than formulate a new set of issues, following a different order, in
UK biotech patent cases have been overturned on appeal might demonstrate the manner suggested by Biogen.95 Moreover, Medeva’s submission noted
that the participants and arbiters of the legal process—lawyers and judges— that the nature of the inventive step relied upon in the case was ‘extremely
require time, and perhaps the benefit of distance from the initial trial, to unusual’.96 First, they argued that what was claimed was obvious, as a goal,
fully process the profound changes that happen when a new field of science beforehand. Secondly, they highlighted that Biogen had not claimed to have
comes to law. Biogen v Medeva is certainly one case that seems to reflect devised or invented any new technique.97
such historicity, and it ought to be seen as a true landmark.205 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 opin-
ion 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 obvi-
ousness,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
204 Pottage and Sherman, Figures of Invention (n 16) 181–93. Patents Act (London, Sweet & Maxwell, 2001) 98.
205 Just a few months after the decision, some scholars began using the term ‘landmark’ 101 D Brahams, ‘Biogen Loses “Landmark” Vaccine Patent Claim’ (1996) 346 The
to describe the case—see M Kern ‘Patentability of Biotechnological Inventions in the United Lancet 9038, 1375. See also ‘Genetic Engineering Patent Claim Was Too Broad’ The Times
Kingdom: The House of Lords Charts the Course’, IIC 29 (1998) 247–82, 248; D Sternfeld (1 November 1996) 34; ‘Medeva Survives Hepagene Challenge’ The Times (1 November 1996)
‘Biogen Loses Out in Landmark UK Biotech Case’ Managing Intellectual Property (February 34; R Colbey ‘Patently Sensible’ The Guardian (14 November 1996) B4.
1997) 32–35. By contrast, see IC Baillie, ‘Biogen—Is It Possible to Be Worse Than It Looks?’ 102 JP Isacson ‘House of Lords Reins In Broad Claims’ (1996) 15 Biotechnology Law Report
CIPA Journal (February 1997) 146–47; see also Janis ‘On Courts Herding Cats’ (n 114) 104. 1062.
fundamental questions such as the meaning of the ‘invention’,103 and the even a casual exchange between experts on opposing sides might have seri-
date at which the sufficiency of a specification ought to be judged.104 Further ous consequences.194 Before testifying, Professor Alan Kingsman—the main
to this, it can be seen as a milestone case for patent scholarship because it scientific expert for Biogen, who later went on to found his own biotech
enabled the reader to reconsider many aspects of patent law. For instance, it company, Oxford BioMedica—had engaged in a relaxed conversation with
could be read as a decision in which the institutional politics of patent law his professional acquaintance and fellow expert, Professor Almond (per-
were laid bare—in particular, the dissonance between the legal and scien- haps naively, since Almond was due to testify for Medeva), explaining that
tific burdens of proof.105 In addition, while the House of Lords emphasised much of his scientific report had been co-authored by Biogen’s legal team.195
the relevance of the technically dominated EPO decision, it decided to Almond reported this comment back to his own legal team (Medeva)—and
revoke the very same patent that the EPO had previously upheld, showing at the cross-examination Peter Prescott QC did not hesitate to use it as a
once again how the multi-jurisdictional nature of European patent litigation weapon, quietly but stealthily putting Kingsman ‘under the cosh’ by ask-
can lead to disharmonious outcomes.106 As with the first instance and appel- ing whether a key passage of the report was Kingsman’s own testimony
late decisions, the House of Lords’ ruling had an immediate impact on the or ‘something a lawyer has written for you’.196 A flustered Kingsman had
companies’ share price, with the value of Biogen falling by just over four per immediately looked daggers across at Almond—a look that Almond has
cent and Medeva’s showing a small rise.107 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
IV. LORD HOFFMANN’S OPINION 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
A. The Context of a Decision 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
By the time the case was decided by the House of Lords, Lord Hoffmann Biogen 1 application.198 In fact, Biogen’s legal team continued to empha-
had already developed a considerable experience in judging patent cases.108 sise this point throughout the proceedings, highlighting that ‘his work in
Although he did not consider himself a specialist in patent law, he acquired 1978–1979 did not involve manipulation at all’.199 Professor Almond noted
an interest in the field when he moved from the bar to the Bench.109 When that the ‘CV ambush’ experience, like Kingsman’s cold dagger look, is some-
he sat at the Patents Court, he restated Lord Diplock’s purposive construc- thing he has never forgotten.200
tion to patent claims.110 Similarly, he had just given the leading judgment 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
103 The Hon Mr Justice C Birss, A Waugh, QC, T Mitcheson, QC, D Campbell, QC, appeal,201 breaking an initial pattern established by Genentech, where the
J Turner, QC, T Hinchliffe, QC, Terrell on the Law of Patents, 18th edn (London, Sweet & first instance decision was upheld.202 As a result, Waugh QC quipped that
Maxwell, 2017) including at ch 2, s 2: ‘What is an Invention?’ (last accessed via Westlaw,
13 December 2016). in complex biotech cases he had learned a valuable lesson: ‘where the law is
104 ibid at Chapter 13, section 3: ‘Biogen Insufficiency’ (last accessed via Westlaw, new and the facts are difficult, lose at first instance: the prospects of winning
13 December 2016). on appeal are much better’.203
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. 194 ibid.

107 ‘Medeva Wins in Court Battle with Biogen’ (1996) The New York Times (1 November). 195 A full description of Professor Kingsman’s achievements can be found at www.sbs.ox.ac.
108 Lord Hoffmann was called to the bar in 1964 and became QC in 1977. His move uk/sites/default/files/Entrepreneurship_Centre/Docs/alan-kingsman.pdf.
to the bench took place in 1985, becoming a High Court Judge in the Chancery Division 196 ‘Case Review: Biogen v Medeva, 20 Years On’ (n 184).
(1985–1992), Lord Justice at the Court of Appeal (1992–95) and member of the Judicial 197 ibid.
Committee of the House of Lords (1995–2009); see ‘A Conversation with Leonard Hoffmann’ 198 ‘Prof JW Almond: Cross-Examination by Mr Laddie’, HL/PO/JU/3/1913, PA.
(2010) 4 Law & Fin Mkt Rev 242. 199 ‘The Witnesses’ in ‘Biogen’s Statement’, HL/PO/JU/3/1913, PA.
109 L Hoffmann ‘Foreword’ in D Vaver and L Bently (eds) Intellectual Property in the New 200 ‘Case Review: Biogen v Medeva, 20 Years On’ (n 184).
Millennium: Essays in Honour of William R Cornish (Cambridge, Cambridge University Press, 201 Kirin-Amgen v TKT [2004] UKHL 46, [2005] 1 All ER 667; Conor v Angiotech [2008]
2004) ix; L Hoffmann ‘Patent Construction’ (2006) The CIPA Journal 727; L Hoffmann ‘The RPC 28, [2008] UKHL 49; Generics (UK) Ltd v H Lundbeck A/S [2009] UKHL 12, [2009] 2
Patent System’ (2010) 123 Graya 19. All ER 955; Human Genome Sciences Inc v Eli Lilly & Co. [2011] UKSC 51, [2012] RPC 6.
110 Improver Corp. v Remington Consumer Products Ltd [1990] FSR 181; see also Bondax 202 Genentech Inc’s Patent [1989] RPC 147.
Carpets Limited and Others v Advance Carpet Tiles and Another [1993] FSR 162. 203 ‘Case Review: Biogen v Medeva, 20 Years On’ (n 184).
regard, another participant remembered an issue from the proceedings at the House of Lords in Merrell Dow v Norton (1996).111 Therefore, it is
that is not evident from reading the law report. Professor Jeffrey William no surprise that he delivered the major part of the judgment in Biogen.112
Almond—who was then working at the University of Reading and testi- The clarity of Lord Hoffmann’s judgment was noted in contemporary
fied for Medeva—recalled how he had cast doubt on the reliability of the accounts of the case.113 What made his approach so attractive was probably
autoradiographs that Biogen had presented as evidence (demonstrating the the systematic way in which he introduced and decided the issues raised
expression of the hepatitis B surface antigen). Here, Hugh Laddie QC for before the Lords.114 It proceeded, in a sequential manner, from the technol-
Biogen had focused the court’s attention on a number of highlighted dark ogy underlying the patent litigated to the priority date and the question of
areas in the autoradiographs which apparently showed where the radioac- sufficiency.115 Although the judgment followed on from the decision of the
tive label had been bound to the expressed surface antigen. Yet, to the naked Court of Appeal, Lord Hoffman approached the subject matter in a more
eye these dark areas looked like mere black smudges. Thus, during Professor structured, readable and pragmatic way.116 The judgment established a sort
Almond’s testimony, Peter Prescott QC for Medeva had belittled the autora- of rhetorical structuring, with subtitles, paragraph boundaries and other
diographs as mere ‘smudgeograms’.189 textual indicators that were remarkably similar to other judgments already
Professor Almond also recalled that he had found assessing this surface delivered by Lord Hoffmann.117
antigen expression question as an expert at a legal trial a strange experi- Beginning with a short passage on ‘genetic engineering’, Lord Hoffmann
ence: as a scientist, he had been trained to be wary of making conclusions explained what DNA recombination was and how the subject of the pat-
based on partial evidence; yet at the trial his duty was to give his conclu- ented invention—the HBV vaccine—worked.118 Having explained the tech-
sive analysis—that he was unconvinced that the surface antigen expression nology and the patent, he further noted that the antigens could be used to
had occurred—without the benefit of pressing for further scientific tests.190 test whether a patient was suffering from the virus—and, crucially, to make
Ultimately, Professor Almond came away from the case with a profound a vaccine.119 In doing so, the dispute was made legible through its most
understanding of how dissimilar the fields of law and science are from a important issue, the identification of the inventive step.120
methodological point of view, with each field possessing its own rational By comparison, the decision from the Court of Appeal can be criticised
processes and own standards of acceptable proof.191 Of course, Professor for being both overly technical and insufficiently detailed.121 Because several
Almond is not the first person to have made this point; in fact, as noted of the issues raised on appeal were not only recursive but also determina-
earlier, it is this dissonance makes patent law a particularly fascinating area, tive of other questions, the Court of Appeal found it difficult to disentangle
and a hugely challenging one.192 them. In other words, the way the decisions were graphically and logically
Despite the friction experienced between the bodies of law and sci- performed at both venues was different. Perhaps the most laudable aspect of
ence, the case made clear just how important expert testimony is in patent Lord Hoffmann’s approach was his ability to summarise and describe both
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 111 Merrell Dow Pharmaceuticals Inc v H N Norton & Co Ltd [1996] RPC 76; see I Karet
the court room. In particular, he came to realise that in the litigation arena ‘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.
189 Here, it is worth noting that Peter Prescott QC and Professor Almond were both involved 113 AW White ‘House of Lords Disapproves of Free Beer’ CIPA Journal (December 1996)
in the Patents Court case of Chiron Corp v Organon Teknika Ltd. (No 3) [1994] FSR 202 1020–28, 1023.
which was heard almost at the same time as Biogen by Aldous J. Moreover, Dr Brenner, one 114 According to Mark Janis, the decision offered ‘an even broader rationalization for the
of the advisers of the Court of Appeal in Biogen, had also sat with Aldous J during the Chiron use of art 84 “support” arguments post-grant’ in M Janis ‘On Courts Herding Cats: Con-
case. tending with the “Written Description” Requirement (and Other Unruly Patent Disclosure
190 ‘Case Review: Biogen v Medeva, 20 Years On’ (n 184). Doctrines)’ (2000) 2 Wash UJL & Pol’y 055.
191 On this epistemological difference, see Pottage and Sherman, Figures of Invention (n 16) 115 Biogen Inc v Medeva plc [1997] RPC 1, 32–55.
1–29 and 181–206. 116 Compare Biogen Inc v Medeva Plc [1995] RPC 25, 68–117 and [1997] RPC 1, 32–55.
192 ibid 9–10, 181–206. 117 Merrell Dow Pharmaceuticals Inc v H N Norton & Co Ltd [1996] RPC 76.
193 For some interesting references of the expert’s role in patent law, see RE Hofer, ‘Experts 118 Biogen Inc v Medeva plc [1997] RPC 1, 32.
in Patent Cases’ (1982) Litigation 8 (Winter) 44–46, 61–62 (US) and L Heald ‘The Function 119 ibid 32.
of the Expert Witness in Litigation’ (Lectures, monographs and reports / The Royal Institute 120 ibid 33, 42–47.
of Chemistry, 1949). 121 Biogen Inc v Medeva Plc [1995] RPC 25, 68–72.
the technology and the controversy.122 Although some critics nevertheless V. CONCLUSION
considered the language of the House of Lords decision to be somewhat
obscure123—at times blending different lines of inquiry,124 such a percep- In February 2015 several of those involved in the first instance proceedings
tion misses the point: the House of Lords judgment does not shy away from at the Patents Court met in a workshop organised in central London by a
the murky scientific-legal complexity of patent law and in fact sheds new leading intellectual property solicitors firm (Rouse).184 Although the spokes-
light on it.125 woman for Medeva and the chief executive of Biogen had already expressed
Lord Hoffmann’s opinion paid particular attention to the policy dimen- their views immediately after the decision was handed over by the Lords,185
sions underpinning the law—as well as the traditional English principle of it is nevertheless interesting to consider how some of the participants remem-
fair basis, which guided against the validation of overly broad or specula- bered specific details of the case almost 20 years later. The importance of
tive patents—and the way he interpreted the facts and the requirements of those reminiscences and their historical potential lies not only in their accu-
patent law was informed by such awareness.126 Although some viewed it as racy, but also on the ways in which they seem to evoke issues not explicitly
an attempt to develop an economic analysis of patent law,127 this does not included in the law report. Perhaps the most interesting aspects not evident
do the judgment justice—indeed, Lord Hoffmann himself later expressed from either the legal record or the textbook treatments of the case were
doubts about the value of the economic approach.128 the personal relationships (and cultural gaps) that developed between the
Perhaps the true context for the decision was more immediate: those US lawyers and the British barristers when preparing their respective cases.
familiar with British intellectual property could make a direct connection Andrew Waugh QC, who was then a junior counsel for Biogen, recalled
between the ethos of this decision and two important conferences that took that during the initial Patents Court trial—where Hugh Laddie QC (later
place at around the same time in which the scope and purpose of intellectual to become Sir Hugh Laddie) had taken the lead in arguing the case for
and industrial property were debated.129 Biogen—the tension between Biogen’s different sets of transatlantic law-
yers 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
122 A similar view has been expressed by Alan White: ‘Lord Hoffmann prefaces his judg- cross-examination notes.187 Suffice to say, Waugh QC felt the public nature
ment in the House of Lords with a very clear exposition of the fundamentals of biotechnology of the argument was damaging to morale on the Biogen side and gave a
and genetic engineering. His judgment is worth reading solely as a primer to this arcana area boost to the other side (Medeva).188
of modern science’ in AW White ‘House of Lords Disapproves of Free Beer’ CIPA Journal
(December 1996) 1020–28, 1023.
Another aspect raised in the workshop concerned the difficulties involved
123 ‘Panel Discussion on Overbroad Claiming’ (2002) 7 International Intellectual Property in analysing and weighing up the value of complex scientific evidence in
Law and Policy 26–31. the legal context: specifically, the question of whether a hepatitis B sur-
124 JP Isacson ‘House of Lords Reins In Broad Claims’ (1996) 15 Biotechnology Law Report
1062.
face antigen was expressed by doing what the patent described. In this
125 Pottage and Sherman, Figures of Invention (n 16) 181–206.
126 L Hoffmann ‘The Role of Policy in Intellectual Property Litigation’ (2003) 5 Interna-
tional Intellectual Property Law and Policy 35–43. On Lord Hoffmann’s commitment to giv-
ing effect to the policy choices of the legislature, see J Pila ‘Lord Hoffmann and Purposive 184 ‘Case Review: Biogen v Medeva, 20 years on,’ (2015) Lifesciences Intellectual Property
Interpretation in Intellectual Property Law’ in PS Davies and J Pila (eds), The Jurisprudence of Review <www.lifesciencesipreview.com/article/case-review-biogen-v-medeva-20-years-on>.
Lord Hoffmann (Oxford, Hart Publishing, 2015) 161–84, 162. 185 M Grimond, ‘Medeva Wins Court Case’ The Independent (November 1996) 26.
127 R Jacob ‘Industrial Property—Industry’s Enemy?’ (1997) 1 Intellectual Property 186 Interestingly, Sir Hugh Laddie reflected on some of these issues after he retired as a judge
Quarterly 3, 5. Surely, the observation was persuasive since Lord Hoffmann referred in his at the Patents Court; H Laddie, ‘Patents—What’s Invention Got To Do With It?’ in Vaver and
Opinion to Merges and Nelson’s well-known article on the economics of patent scope; see Bently (eds) Intellectual Property in the New Millennium (n 109) 91–95.
Merges and Nelson ‘On the Complex Economics of Patent Scope (1990) 90 Columbia Law 187 ‘Case Review: Biogen v Medeva, 20 years on’ (n 184). For some references to Haley’s
Review 839. involvement in drafting Biogen patent applications, see N Rasmussen, Gene Jockeys: Life Science
128 ‘I have read some of the (Richard) Posner stuff and I found the economic theory of law and the Rise of Biotech Enterprise (Baltimore, Johns Hopkins University Press, 2014) 111.
interesting but not convincing. I just do not believe people behave like that’ in L Fangyi and 188 After the case, both Simon Thorley QC and Andrew Waugh QC continued to deploy
C Zheng Xi ‘An Interview with the Right Hon. Baron Leonard Hubert Hoffmann of Ched- their expertise in pharmacology and biotechnology matters, appearing in the most important
worth’ (2008) 26 Singapore Law Review 226, 231. cases litigated in the field throughout the late twentieth and early twenty-first centuries, such
129 H Laddie ‘Copyright: Over-Strength, Over-Regulated, Over-Rated?’ (1996) 18 as Generics (UK) Ltd v H Lundbeck A/S [2009] UKHL 12, [2009] 2 All ER 955 and Human
European Intellectual Property Review 253; Jacob ‘Industrial Property—Industry’s Enemy?’ 3. Genome Sciences Inc v Eli Lilly & Co. [2011] UKSC 51, [2012] RPC 6.
judgment—and eventually to Lord Hoffmann’s own decision in Generics B. Assessing Obviousness

v Lundbeck to drastically reduce the scope of Biogen insufficiency—was a
realisation that the UK Patents Act, following the European Patent Conven- The question of obviousness is a perennially difficult and elusive one in
tion (EPC), requires protecting patents for products ‘as such’.180 patent law.130 In Biogen Lord Hoffmann began by drawing a clear dis-
In this respect, two issues became increasingly clear in the aftermath of tinction, explaining that doing something first was not the same as being
Biogen: (i) in the case of a product patent it is inevitable that the monopoly inventive, especially in a fast-developing area of science.131 This depiction
conferred will include all ways of making and using the product—otherwise of biotechnology as a branch of knowledge advancing at a considerable
it would not truly be a product patent;181 and (ii) when preparing, writing pace gave him an opportunity to decide whether the monopoly granted was
and filing the patent application, the teaching disclosed in the claims of justified or not.132 In this respect, the judgment followed an instrumentalist
the patent cannot conceivably cover every single way of making/using the vision of patent law, understanding it as a system of reward in which the
product. Thus, a clear conflict became visible between what the law said scope of the monopoly granted could be limited by judicial assessment.133
should be protectable, and what Lord Hoffmann in Biogen v Medeva con- According to some commentators, such reasoning permeated the entire
sidered ought to be covered by the scope of the patent’s claims. In Generics ratio of the decision, resulting in ‘a prejudicial attitude towards biotechnol-
v Lundbeck, Lord Hoffmann acknowledged this and recast his earlier ruling: ogy 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
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 particular take on biotechnology as a young and pioneering field, and by
can be made in the latter case as well. It is too late to have regrets about the the proposition that if over-broad claims were granted, this would pose an
breadth of the monopoly which such claims confer.182 obstacle for valuable research.135
Lord Hoffmann noted that Professor Murray had purified DNA
Despite it being ‘too late’, it seems clear from the above that even when
from Dane particles and had cut the DNA into fragments with restric-
reconsidering his own earlier ruling, Lord Hoffmann could not quite shrug
tion enzymes, with the aim of producing large fragments containing the
off a lingering regret about the legislative breadth of the patent monopoly relevant gene (which would make it easier to experiment on the fragments
and its consequent effects on competition. On this, one final point is worth later on).136 Lord Hoffmann then remarked:
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 By the time of the EPO patent application, the claims make it clear that they cover
applicable under the terms of the Patents Act 1977 (and the EPC) ought to not only the polypeptide but also fragments which exhibit the relevant properties.
give pause for thought about what impact the forthcoming Unified Patent But Biogen 1 does not make anything of this point.137
Court (UPC) might have on patent law.183 The potential certainly exists With this passage Lord Hoffmann had already signalled that he considered
within the UPC’s specialist jurisdiction for further jurisprudential ‘filtering the Biogen 1 application to be somewhat deficient—in fact, insufficient.138
out’ of common law concepts of fairness and other generalist principles in However, before examining this further he turned to the specifics of the
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
130 B Reid, A Practical Guide to Patent Law (London, Sweet & Maxwell, 1999) 42.
the new court’s jurisprudence. 131 Biogen Inc v Medeva plc [1997] RPC 1, 33–34.
132 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
180 Patents Act 1977 s 60. ‘anti-biotech’ atmosphere: N Jones and I Britton ‘Biotech Patents—the Trend Reversed Again’
181 J Pila, ‘Lord Hoffmann’ (n 126), also available in PS Davies and J Pila (eds), The (1996) 18 European Intellectual Property Review 171.
Jurisprudence of Lord Hoffmann (Oxford, Hart Publishing, 2015). See also S Thambisetty, 135 Similarly, Sir Robin Jacob noted that the problem of these patents were their ‘undue’
‘The Evolution of Sufficiency in Common Law’ LSE Law, Society and Economy Working width; see R Jacob, IP and Other Things. A Collection of Essays and Speeches (Oxford, Hart
Paper No 6/2013. Publishing, 2015) 201.
182 H Lundbeck A/S v Generics (UK) Ltd [2008] RPC 19, 437, 450. 136 Biogen Inc v Medeva plc [1997] RPC 1, 39.
183 McDonagh, European Patent Litigation in the Shadow of the Unified Patent Court 137 ibid 39 (emphasis added).
(n 43) 82–110. 138 ibid.

Biogen patent’s claims, noting that what was claimed was ‘a product, a that the invention in Biogen 1 was not obvious—however, the Technical
molecule identified partly by the way in which it has been made (“recombi- Board had held that the disclosure in Biogen 1 corresponded to the same
nant DNA”) and partly by what it does’.139 In this respect, the patent claimed invention claimed in the patent, and that the patent’s disclosure was suf-
a broad monopoly over ‘any recombinant DNA molecule which expressed ficient to ‘enable the invention to be performed to the full extent of the
the genes of any HBV antigen in any host cell’ and for ‘any method of mak- claims’.173 Here, Lord Hoffmann’s view diverged from that of the Techni-
ing a DNA molecule which would achieve the necessary expression’.140 As cal Board—according to Lord Hoffmann the Technical Board had failed to
we shall see, the claim to any method would prove to be of great significance assess ‘whether the claims were too broad because expression could also be
to the question of whether the claims properly supported the invention. But achieved without the use of the teaching which it contained’.174 In making
before addressing that question, Lord Hoffmann put forward a number of this argument, Lord Hoffmann explicitly referred to two key EPO deci-
important points about the interpretation of ‘invention’ under section 1(1) sions in Genentech175 and Exxon.176 In other words, rather than ignoring
of the Patents Act 1977. the EPO Technical Board, as the Court of Appeal had done, Lord Hoff-
Regarding the question of ‘what is an invention?’ as separate from the mann cleverly integrated its reasoning in the earlier cases of Genentech and
four key requirements of patentability—which had been a crucial issue Exxon in order to come to a conclusion that differed from the EPO’s deci-
in Genentech141—he stated that the four requirements probably covered sion on the Biogen patent, but which nonetheless fulfilled the expectation
every possible meaning of invention and that the separate question should that national courts should take into account EPO decisions when national
not be a primary focus, and should only be contemplated if analysis of the litigation takes place over a European patent.177
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 E. Biogen Insufficiency Reconsidered
Thus, one considerable virtue of Lord Hoffmann’s ruling was the removal
of the awkward requirement from Genentech that a judge had to consider More than a decade after the decision, Lord Hoffmann was given the
whether the patent covered an ‘invention’ before he/she analysed the various opportunity to reconsider his earlier ruling. From the bench of the Court
categories of novelty, inventive step, industrial application, etc.143 Having of Appeal, Lord Hoffman gave the judgment in Lundbeck v Generics (UK)
dealt with this somewhat pedantic question, Lord Hoffmann moved on to Ltd.178 Here, he severely narrowed the scope of his own doctrine of B iogen
consider one of the critical issues at hand: whether Professor Murray had insufficiency—effectively distinguishing it on its own facts. In Biogen
performed an inventive step.144 He expressed his dissatisfaction with the v Medeva, Lord Hoffman had ruled that it was insufficient for a patentee
conclusions reached by Aldous J at the Patents Court, arguing that the trial to merely disclose one way of performing the invention. In other words, if
judge had taken an over-broad approach to defining the inventive concept as it was ‘possible to envisage other ways of achieving [its result] which make
the mere idea of making HBV antigens by recombinant DNA technology.145 no use of the invention’ the patent would be invalid for being ‘wide or
Rather than putting it so broadly, Lord Hoffmann remarked that the speculative’.179 Drawing on the traditional view of ‘fair basis’ under English
inventive concept in the present case ought to be described as ‘the notion law his Lord Hoffmann’s expressed view at the time of Biogen had been
that Professor Murray’s method of achieving the goal—creating large frag- that the patent monopoly must correspond exactly with the claims of the
ments of genomic DNA, ligating them to pBR322 and introducing the hybrid invention. In this, he emphasised the need to allow subsequent research and
molecule into E coli—would work’.146 This was, for Lord Hoffmann, the to ensure competition between scientific bodies. What led to criticism of the
operative part of the invention that Aldous J had missed. Yet, although he
139 ibid 40. 173 Biogen Inc v Medeva plc [1997] RPC 1, 53.
140 ibid 40 (emphasis added). 174 ibid 53.
141 Genentech Inc’s Patent [1989] RPC 147. 175 GENENTECH I/Polypeptide Expression T292/85 [1989] EPOR 1.
142 Biogen Inc v Medeva plc [1997] RPC 1, 41. 176 EXXON/Fuel Oils T409/01 [1994] EPOR 149.
143 Genentech Inc’s Patent [1989] RPC 147, 264; see M Spence ‘Patents and Biotechnology’ 177 ibid 53.
(1987) 113 LQR 368, 371. 178 H Lundbeck A/S v Generics (UK) Ltd. [2008] EWCA Civ 311, [2008] RPC 19 as
144 Biogen Inc v Medeva plc [1997] RPC 1, 42–43. affirmed by the House of Lords in Generics (UK) Ltd v H Lundbeck A/S [2009] UKHL 12,
145 ibid 43. [2009] 2 All ER 955.
146 ibid. 179 Biogen v Medeva [1997] RPC 1, 22.
discuss what would become known as the landmark principle of (Biogen) was not satisfied by Aldous J’s assessment, it is notable that Lord Hoffmann
insufficiency: also criticised elements of the approach taken by the Court of Appeal—
specifically the reference to the fact that Biogen had made an initial deci-
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 insuf- sion, based on commercial concerns, to ‘pursue an identified goal by known
ficient application should also not become sufficient because of general develop- means’.147 Nor did he find the ‘placing a bet’ analogy useful.148 For Lord
ments in the state of the art after the filing date.167 Hoffmann, the company’s commercial decision-making process was simply
not relevant to the question of patentability.149 However, Lord Hoffmann
In the view of Lord Hoffman, Claim 1 of the Biogen patent (a product)
was in general agreement with the approach taken by Hobhouse LJ to the
generalised the teachings of the Biogen 1 application.168 It did so because
patentability question—that the strategy of Professor Murray was to pursue
the Biogen 1 application referred to a particular form of a product; yet, an identified goal by known means—though he deepened the analysis in his
Claim 1 of the patent referred to any form of the product. In addition, Lord characteristic style:
Hoffmann held that the method which was used was also generalised—in
the Biogen 1 application, the particular product was made from a particular A proper statement of the inventive concept needs to include some express or
process. However, the patent’s claims as granted covered any method of implied reference to the problem which it required invention to overcome. The
making any form of the product. For this reason, Lord Hoffmann ruled 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 uncer-
that the technical contribution disclosed in the Biogen 1 application did
tainties, in the absence of sequence information, about the presence of the HBV
not correspond to the broad monopoly sought by Claim 1 of the Biogen
antigen genes in the Dane particle DNA, the perceived difficulties of expressing
patent, ie the Biogen patent’s claims lacked sufficient support from the genomic eukaryotic DNA in a prokaryotic host, and, specifically, the problem of
Biogen 1 application.169 Thus, the claim was held to be not fully enabled introns. It seems to me, therefore, that a more accurate way of stating the inven-
by the specification—the only thing that could be validly claimed was the tive concept as it appeared to Aldous J is to say that it was the idea of trying to
production of the antigen by the particular means disclosed. The overall express unsequenced eukaryotic DNA in a prokaryotic host.150
principle of Biogen insufficiency can therefore be described as follows: the
Thus, Lord Hoffmann not only identified the bare bones of the inventive
patent’s claims must be supported by the description of the invention—as
concept—as it had appeared to Aldous J—he also fleshed it out, describ-
contained in the patent specification—or else the patent will be held invalid
ing its operative elements and referenced the usefulness of the scientific
for insufficiency.170
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 judg-
D. Reconciling Lord Hoffmann’s View with the EPO’s Decision
ments, he ended up much closer to Aldous J’s view on obviousness than
that of Hobhouse LJ. Lord Hoffmann summed up his view by saying that
Having declared the patent invalid, Lord Hoffman had to explain how he
the patent’s inventiveness was ‘of a very unusual kind’ because it involved
could reconcile this decision with the EPO Technical Board’s earlier deci-
trying something ‘which a man less skilled in the art might have regarded as
sion that the Biogen patent was, in fact, valid.171 Lord Hoffmann did this
obvious, but which the expert would have thought so beset by obstacles as
in a particularly elegant way, noting that the decision of the EPO did not
not to be worth trying’.152
actually proceed on any principle different from those that he had endeav-
What makes Lord Hoffman’s judgment a landmark on the point of inven-
oured to apply.172 He noted that, like him, the Technical Board had decided
tiveness is therefore twofold: first, we know from the judgment that ana-
lysing the four patentability requirements will comprehensively deal with
167 ibid 54. the question of ‘what is an invention?’ in the vast majority of cases, and
168 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. 147 ibid 44.
172 The Court of Appeal decision had been criticised for not engaging with EPO case law— 148 ibid.
see BC Reid, ‘Biogen in the EPO: The Advantage of Scientific Understanding’ (1995) 2 Euro- 149 ibid.
pean Intellectual Property Review 98, and C Colston, ‘Genetic Engineering—Failure to Invent? 150 ibid 44–45.
The House of Lords’ Decision in Biogen Inc v Medeva plc’ (1997) Intellectual Property Quar- 151 ibid.
terly 521. 152 ibid 46.
there is no need for a separate Genentech-style assessment; and second, of the teaching to produce all the promised results, but to the fact that the same
Lord Hoffmann provided detailed guidance regarding how to apply the results could be produced by different means.160
Windsurfing test to biotechnological inventions, emphasising the importance Here Lord Hoffmann referred to the fact that, although Professor Murray
of expert testimony regarding the person skilled in the art.153 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
C. Support and Insufficiency same results’.161 Specifically, despite the fact that Professor Murray had,
in the patent, described a way of choosing restriction enzymes that would
While many praised Lord Hoffmann’s opinion, others were concerned that cleave the DNA of the Dane particle into large fragments, once the DNA
he had not emphasised the differences between the requirements of sup- had been sequenced there was no need to choose to follow Professor
port and sufficiency.154 Central to his decision was the consideration of the Murray’s method—scientists could instead choose ‘those which digested the
question of whether the Biogen 1 application (from December 1978) sup- sites closest to the relevant gene or the part of the gene which expressed an
ported the invention claimed in the Biogen patent (filed December 1979). antigenic fragment of the polypeptide’.162 As Lord Hoffmann put it:
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 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
Lord Hoffmann further opined that in a case where the claims include a
working with the genome in the dark. But he did not switch on the light and once
number of products, the patent must enable the invention ‘to be performed
the light was on his method was no longer needed.163
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 Lord Hoffmann went on to express his concerns about awarding too wide
did not demonstrate a common principle corresponding to other prod- a monopoly to a single inventor, emphasising that although Professor
ucts which will share the beneficial effects (products of the same class); or Murray had led the way, other researchers could follow what he had done
(ii) whether the patent disclosed a ‘beneficial property which is common by d
ifferent routes—and he did not consider that simply leading the way
to the class’ of products.157 In the former case, the patentee would only be was ‘enough to justify a monopoly of the whole field’.164 On this, Lord
entitled to a patent for the single described product—but with the latter the Hoffmann further remarked:
patentee could claim a monopoly on all products of the class.158 Here Lord The technical contribution made in such cases deserves to be recognised. But care
Hoffmann stated that a patent would be over-broad if it claims ‘every way of is needed not to stifle further research and healthy competition by allowing the
achieving a result when it enables only one way and it is possible to envisage first person who has found a way of achieving an obviously desirable goal to
other ways of achieving that result which make no use of the invention’.159 monopolise every other way of doing so.165
Finally, he examined the Biogen 1 application on the question of support:
Therefore, Lord Hoffmann held that the Biogen 1 application did not sup-
As I have said, I accept the judge’s findings that the method was shown to be capa- port the invention as claimed in the later filed European Patent, and for this
ble of making both antigens and I am willing to accept that it would work in any reason it could not claim the priority date of Biogen 1. Moreover, because it
otherwise suitable host cell. Does this contribution justify a claim to a monopoly had already been conceded that the invention was obvious when the Biogen
of any recombinant method of making the antigens? In my view it does not. The patent was filed at the EPO in 1979, the patent was deemed to be invalid.166
claimed invention is too broad. Its excessive breadth is due, not to the inability 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
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 160 ibid 52 (emphasis added).
D25–27. 161 ibid.
155 ibid 48. See also Asahi Kasei Kogyo KK’s Application [1991] RPC 485. 162 ibid.
156 ibid 49. 163 ibid.
157 ibid. 164 ibid.
158 ibid. See also May & Baker Ltd v Boots Pure Drug Co Ltd (1950) 67 RPC 23. 165 ibid (emphasis added).
159 ibid 51. 166 ibid 52–53.
356 Alain Pottage R v Johnstone (2003) 325
why pay more?’41 It even emphasised the difference between its ethos and section 92 for acts which do not amount to civil infringement of a regis-
that of Lego, with advertisements that showed toy weapons made of bricks. tered trade mark’.46 Counsel for the prosecution reiterated the argument
What courts and most external observers saw as an aggressive attempt to put forward in the courts below: section 92 was a self-contained provision;
extend a monopoly, Lego presented as an attempt to prevent competitors all the ingredients of the offence appeared on the face of the section. In par-
from exploiting interchangeability so as to free-ride on the economic and ticular, Parliament cannot have intended civil infringement to be introduced
cultural capital that the brick had accrued over decades. Given the force into the criminal courts because offences needed to be simple so jurors, lay
of the intuition expressed in the doctrine of functionality, Lego was almost magistrates and local trading standard authorities could understand them.47
bound to fail in its trade mark cases against Tyco and Mega Bloks. But it is The House of Lords, like the Court of Appeal below, accepted J ohnstone’s
interesting to notice that in applying the doctrine of functionality the CJEU arguments. However, the nature of the relation between criminal and civil
had to finesse the doctrinal definition of the invention in patent law. Lego law was differently stated; Lord Nicholls, who delivered a judgment with
argued for an interpretation of the Philips decision that would have allowed which all the other Lords agreed,48 characterised the House of Lords
competitors to make bricks that employed its stud and recess mechanism approach as involving ‘a more confined process of interpretation’ than that
but not to clothe that mechanism in a shape that was interchangeable with of the Court of Appeal.49 However, the House of Lords accepted that ‘the
its own bricks. It argued that the shape of the classic brick was an aspect ingredients of the offences created by section 92 are to be found within
of just one of the possible embodiments of the invention protected by its the section itself’.50 As Lord Walker explained, in his concurring judg-
expired patents, and that even if that shape were monopolised by a trade ment, this approach was supported by the difference in language between
mark, competitors would still have meaningful access to the invention. But section 92 and the civil infringement sections 9–11 (for example, section 92
the doctrine of functionality cut this argument short by emphasising that the refers to ‘likely to be mistaken’ instead of ‘likelihood of confusion’ and ‘in
holder of a trade mark effectively controls a class of shapes that contains not the course of a business’ rather than ‘in the course of trade’). Lord Walker
only the shape as registered but all shapes that might be confusingly similar argued that this indicated:
to the registered shape. Parliament’s natural anxiety to frame the offence-creating provisions of the 1994
Lego proposed its own interpretation of the doctrine of functionality. In Act so as to be as self-contained and simple a code as possible. Prosecutions under
its appeal from the Grand Board of Appeal of the OHIM to the Court of section 92 are heard either in the magistrates’ court or in the Crown Court and
First Instance of the CJEU, Lego suggested that ‘the decisive question is would be burdensome if lay magistrates and juries regularly had to go into the
whether trade mark protection would create a monopoly on technical solu- intricacies of the law of civil infringement.51
tions or the functional characteristics of the shape in question, or whether
However, notwithstanding this, the words ‘without the consent of the [trade
sufficient freedom remains for competitors to apply the same technical solu-
mark] proprietor’ in section 92 denoted that the conduct to be criminalised
tion and use the same characteristics’.42 If the object of Article 7(i)(e)(ii)
was conduct to which the proprietor could object. Therefore, implicit in
was indeed to prevent a trade mark holder from monopolising a ‘technical
section 92 was the requirement that the defendant’s use be ‘use as a trade
mark’. As Lord Nicholls explained:
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) Parliament cannot have intended to criminalise conduct which could lawfully be
bricks (see Tyco Industries v Lego Systems Inc 5 USPQ 2D (BNA) 1023 (1987), 1033–34. For done without the proprietor’s consent … That would be to extend, by means of a
true Lego aficionados, none of the rival products comes close to the real thing. For example: criminal sanction, the scope of the rights of the proprietor.52
‘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 A number of points supported this interpretation. First, the wording of section
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 92(5); ‘it would make no sense for reasonable belief in non-infringement
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 envi-
ronmental factors like temperature, and is prone to warp. Plus it is softer plastic and does not 46 ibid [61], per Lord Walker.
hold its edge or clutch power over time. It’s a bad choice for a construction toy. But here’s the 47 ibid [25].
thing. The capital in Megabloks (or Lego) the value is ultimately in the tooling. It’s the molds 48 This included Lord Walker, who delivered a concurring judgment: R v Johnstone,
and machinery. In order for Mattel to brink Megabloks up to Lego quality they would need HL, [88]. The other Lords were: Lord Hope, Lord Hutton and Lord Rodger.
to retool everything. Pretty much toss the bulk of what they just bought and start with all new 49 ibid [33].
tooling and machinery’. Forum post at: www.eurobricks.com/forum/index.php?showtopic=93 50 ibid, HL [26].
033&st=25&p=1839083&#entry1839083. 51 ibid [73].

42 T-720/06 Lego Juris A/S v OHIM, 12 November 2008, 30. 52 ibid [28].
326 Elena Cooper Lego Juris A/S v OHIM (2010) 355
to be a defence, if infringement was irrelevant so far as the criminal offences to grow with the Canadian children who had started by playing with MAXI
are concerned’.53 Further, the 1994 Act was to be interpreted, so far as blocks. As children get bigger, the blocks they play get smaller. However, Mega
possible, to accord with the harmonising objectives of the EU Trade Mark Bloks waited until 1989, a year after LEGO’s patents had expired, before extend-
Directive.54 ing 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
The result in R v Johnstone, therefore, is that notwithstanding the
and Lego patents.38
intention to make the criminal offences simple for juries, lay magistrates
and trading standards, that civil trade mark concepts are relevant to the Throughout its brief, Mega Bloks identifies itself as an original ‘mom and
criminal offences in section 92; the House of Lords rejected the Crown pop’ company, and plays on the theme of a firm ‘growing with Canadian
Court approach at first instance that treated section 92 as a completely children’, clearly to some effect. In his judgment, Justice Le Bel looked for-
self-contained provision. At first glance, the relevance of civil trade mark ward to the benefits that unrestrained competition would bring to Canadian
concepts to section 92 might seem unremarkable. There are a number of children: ‘The fact is that the monopoly on the bricks is over, and MEGA
considerations in the case of the Trade Marks Act 1994, that clearly point BLOKS and LEGO bricks may be interchangeable in the bins of the play-
to this conclusion: the EU harmonisation of the civil trade mark law and rooms of the nation—dragons, castles and knights may be designed with
the wording of section 92(5).55 Indeed, as Andreas Rahmatian argued in his them, without any distinction’.39
Modern Law Review article, perhaps the noteworthy aspect of Johnstone Interchangeability is indeed the key to understanding what was at stake
is rather that the Lords did not advocate an even closer relation between in Lego’s action against the OHIM. The commercial success of the Lego
civil and criminal law, such that the civil law of infringement more gener- brick is based on the ‘exponential’ nature of the product. With the addition
ally was a necessary part of section 92.56 With these questions in mind, the of each new purchase, the possibilities afforded by a child’s collection of
next section addresses how the relationship between civil and criminal law bricks are expanded at relatively minimal cost. Furthermore, this marginal
in Johnstone is to be explained, and it does so by first considering the more cost effect is precisely what induces competitors to make bricks that are
general position of intellectual property offences in the categories of the interchangeable with Lego’s product. By marketing interchangeable blocks,
criminal law. 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 inter-
III. EXPLAINING R v JOHNSTONE changeability. In 1984 a Hong Kong subsidiary of the US firm Tyco (then
known for its range of Matchbox toy cars) began manufacturing blocks
A. Intellectual Property Offences and the Criminal Law 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
What is the position of intellectual property offences within the criminal was doing, it showed its reverse-engineered bricks in trade fairs, and its
law? On the one hand, Court of Appeal authorities on sentencing have marketing strategy was quite unequivocal. In trade journals and women’s
characterised criminal offences in intellectual property statutes as serious magazines in the United States, Tyco advertised its bricks with a byline that
crimes involving dishonesty, analogous to theft. In R v Carter, the Court of played on the notion that they were indistinguishable from Lego bricks:
Appeal heard an appeal against a sentence imposed by a Crown Court for ‘Which part is Tyco? Which part is Lego? If you can't tell the difference,
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 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,
53
[1988] 3 All ER 949, is analysed as a landmark IP decision by Aldo Nicotra in ‘Hitting the
ibid [29]. bricks’, in C Heath and A Kamperman Sanders (eds), Landmark Intellectual Property Cases
54 ibid [31], referring to Council Directive 89/104/EEC of 21 December 1988.
55
and Their Legacy (Berlin, Kluwer Law International, 2010) 135–80. The practical effect of
See text to nn 53 and 54. these decisions was somewhat limited because in 1986 Tyco was acquired by Mattel, which
56 Rahmatian, ‘Trade Mark Infringement as a Criminal Offence’ (n 18) 675–76. 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.
Regulation]’.32 The Cancellation Division of the OHIM stayed proceed- convictions. The Court of Appeal refused to interfere with the sentence
ings until after the European Court of Justice had delivered its judgment in imposed by the Crown Court, Jowitt J remarking that:
Philips v Remington (2002),33 which purportedly clarified the meaning of
it has to be borne in mind that the counterfeiting of video films is a serious offence.
the phrase ‘a shape necessary to achieve a technical result’. In effect, to make and distribute pirate copies of films is to steal from the true
In Philips the ECJ held that ‘a sign consisting exclusively of the shape of owner of the copyright … It is an offence really of dishonesty.57
a product is unregistrable by virtue thereof if it is established that the essen-
tial functional features of that shape are attributable only to the technical Similar comments were made in R v Adam Ahmed Bhad, an appeal over
result’,34 and observed that there was nothing in the wording of Article 7(1) sentencing under section 92 Trade Marks Act 1994. While the Court of
to suggest that the existence of other shapes for achieving the same result Appeal doubted whether ‘the custody threshold was in truth crossed’ in the
could ‘overcome the ground for refusal or invalidity’.35 In its decision in the case of the activities in question (an ‘isolated lapse’ of an otherwise ‘honest
Lego case, the Cancellation Division took this to mean that the term ‘neces- business’ which was a ‘small scale operation’), Bingham CJ nevertheless
sary’ should be interpreted as meaning that ‘the respective shape or element described section 92 as follows:
of the shape is necessary in the sense of a conditio sine qua non for achiev- The owners of trade marks have a commercial asset which is entitled to legal
ing the [technical] result’, and, if that were the case, it would be irrelevant protection. Deliberately using someone else’s trade mark is in effect to steal their
that there were other shapes that would allow the same technical result to commercial goodwill. This is properly a criminal offence and a penalty must
be achieved.36 Applied to the Lego brick, this meant that the upper surface follow on conviction.58
was not eligible for registration as a trade mark: However, in case law on the elements of the offence, the courts have treated
[A]ll the various elements of the shape of which the Lego brick consists, namely intellectual property offences as regulatory offences, that is, statutory
the knobs, their number, their diameter, their height, their symmetrical placement offences regulating an activity in the public interest and ‘not truly criminal’
in the upper side of the brick, the height, width and length of the brick itself, are in nature.59 For example, a well-established principle of criminal law is that
all essential for the result achieved, and are all necessary to achieve it’.37 the courts should apply a presumption of mens rea in interpreting a statu-
Lego engaged in a succession of appeals in which it pressed for an alter- tory provision creating a criminal offence. As Lord Reid explained in the
native interpretation of Philips, according to which a given function or House of Lords ruling in Sweet v Parsley:
‘technical result’ might appear in quite different shapes; even if a function whenever a section is silent as to mens rea there is a presumption that, in order to
lapsed into the public domain, its specific shape might still be protected by a give effect to the will of Parliament, we must read in words appropriate to require
trade mark. mens rea.60
To appreciate why Lego argued so persistently for this interpretation we Whereas the presumption is ‘particularly strong’ for offences that are ‘truly
should return to the Canadian decision. In a brief submitted to the Supreme criminal’ in character,61 it can be displaced for offences concerning ‘quasi-
Court, Mega Bloks, an alter ego of Mega Brands, presented its commercial criminal acts’.62 In R v Keane, it was argued that the presumption of mens
strategy in the following terms: rea should apply to section 92(1); rejecting this argument, the Court of
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 57 R v Carter [1993] FSR 303, 304 (CA).
58 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 ‘obvi-
ous 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
32 R856/2004-G Lego Juris v Mega Brands, Decision of the Grand Board of appeal of the purposes of such controls’.
60 Sweet v Parsley [1970] AC 132 (HL), 148.
OHIM of 10 July 2006, para 8. 61 In Gammon v Attorney General of Hong Kong, [1985] AC 1, 12, the Privy Council held
33 C-299/99 Koninklijke Philips Electronics NV v Remington Consumer Products Ltd
[2002] ECR I-5475. that the presumption of mens rea is ‘particularly strong where the offence is “truly criminal” in
34 ibid, 84. character’, and that the ‘only situation’ in which the presumption could be displaced is where a
35 ibid, 81. statute concerned an ‘issue of social concern’ (eg public safety) and ‘greater vigilance to prevent
36 R856/2004-G Lego Juris v Mega Brands, Decision of the Grand Board of appeal of the commission of the prohibited act’ would result.
62 Sweet v Parsley [1970] AC 132, 149–50, per Lord Reid.
OHIM of 10 July 2006, 10.
37 ibid, 10.
Appeal stated obiter that section 92 falls within the ‘quasi-criminal’ or regu- customers and being adaptive to their individual and dynamic needs. [V]alue is
latory category (though clearly stating that it did not wish to decide the defined by and co-created with the consumer rather than embedded in output.26
issue).63 In a subsequent case, R v S, it was argued that the statutory defence In the case of brands, marketers characterise the eclipse of the goods-dominant
in section 92(5), in providing a mens rea element, was an ‘essential element’ view as a shift ‘from the conceptualization of brand as a firm-provided
of the offence under section 92 (such that placing a legal burden of proof property of goods to brand as a collaborative value co-creation activity of
on the defendant to prove the elements of section 92(5) would conflict with firms and all of their stakeholders’.27 Or, in a somewhat different formula-
the presumption of innocence under Art 6(2) of the European Convention tion, ‘brand meaning [is] socially negotiated, rather than delivered unaltered
on Human Rights).64 Rejecting this argument, the Court of Appeal held and in toto from context to context, consumer to consumer’.28
that ‘dishonesty … is not the gravamen of the offence’ under section 92.65 The theme of co-creation has been taken up to some effect in trade mark
Rather, as Davis J explained, in a judgment with which the other members scholarship.29 Here the point of this archaeology of market artefacts is just
of the Court of Appeal agreed: to contextualise the story of the Lego brick, to show how the brick articu-
Section 92 is a regulatory provision and the strong policy behind the 1994 Act, lates both the ‘metallurgical’ sense of artefacts and the emerging sense of
and mischief at which it is aimed, support the view that the use of such technique artefacts as collaboratively constituted, and how the uses of the Lego brick
in this context is neither unprincipled or arbitrary: the unauthorised use of trade make visible the role of communication in structuring this mode of collabo-
marks is the target of the legislation and the substance of the offence.66 ration or ‘participation’.
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
III. ‘IF YOU CAN’T TELL THE DIFFERENCE, WHY PAY MORE?’30
burden of proof under section 92(5),67 and this reasoning was expressly
endorsed by Lord Nicholls in Johnstone.68 As Lord Nicholls acknowledged,
The upper surface of the Lego brick, as fixed in a photographic image, was
referring to the much-cited dicta of Auld LJ in Torbay Council v Satnam
registered as a Community trade mark in October 1999, some three years
Singh, ‘the offences in section 92 have rightly been described as offences
after the application was first filed at the OHIM.31 Two days later, Mega
of “near absolute liability”’.69 Justifying the regulatory classification is the
Brands, Lego’s leading competitor in the toy brick market, contested the
‘very considerable public importance in preventing the trade in counterfeit
registration, arguing that it was invalid because the features represented
goods’.70 In R v S, Davis J explained this ‘public interest’ as follows: the
in the image constituted ‘a shape necessary to achieve a technical result
result of fewer prosecutions would be that:
within the meaning of Article 7(1)(e)(ii) of the [Community Trade Mark
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. 26 ibid, 6.

64 R v S [2002] EWCA Crim 2258, [22]. 27 MA Merz, z He and SL Vargo, ‘The evolving brand logic: a service-dominant logic per-
65 ibid [30]. spective’ (2009) 37 Journal of the Academy of Marketing Science 328–44, 328–29.
66 ibid [34]. 28 AM Muniz, Jr and TC O’Guinn ‘The Brand Community’ (2001) 27 Journal of Consumer
67 ibid [48] point (4). Research 4 412–32, 414.
68 R v Johnstone, HL, [54]. 29 See, for example, D Gangjee, ‘Property in brands: the commodification of conversation’
69 ibid [52], referring to dicta of Auld LJ in Torbay Council v Satnam Singh, 2000 FSR 158, in H Howe and J Griffiths (eds) Property Concepts in Intellectual Property Law (Cambridge,
161: ‘At a first sight, this near absolute liability may seem harsh, especially when it is noted Cambridge University Press, 2013) 29–59, and L McDonagh, ‘From brand performance to
from section 92(6)(b) of the Act that the offence carries a maximum penalty on indictment of consumer performativity: assessing European trade mark law after the rise of anthropological
an unlimited fine or imprisonment up to 10 years or both. However, if the regime introduced marketing’ (2015) 42 Journal of Law and Society 4, 611–36.
by the Act is to operate as an effective protection both to registered proprietors of trade marks 30 See ad at: www.battlegrip.com/tag/tyco/. In fact, Tyco considered the Lego brick to be too
and consumers, it cannot sensibly depend on proof in every case of the trader’s knowledge of difficult to use for younger children, so it loosened the clutch power of its (still interchange-
the existence of the registration … or on his rebuttal of the assertion that he was unaware of able) bricks (see Tyco Industries v Lego Systems Inc 5 USPQ 2D (BNA) 1023 (1987), 1033–34.
the registration or its detail’. This dicta has been approved in R v Keane [2001] FSR 7, [24] per 31 At first, the OHIM refused to register the shape of the rick as a trade mark, but after fur-
Mance LJ and R v S [2002] EWCA Crim 2558, [17] per Davis J. ther submissions from Lego the examiner accepted that the brick had acquired distinctiveness
70 R v Rachel McCrudden 2005 EWCA 466, [10]: ‘It seems to us that the provisions and that it was not functional in the sense of Article 7. Lego later claimed that ‘The decision of
contained in section 92 have been devised to constitute a rigorous statutory code involving the Office to accept it for registration was the most thoroughly researched and carefully con-
offences initially of strict liability, for the plain policy reason that there is very considerable sidered decision the Examination Division had taken to date’ (R856/2004-G Lego Juris v Mega
public importance in preventing the trade in counterfeit goods’. Brands, Decision of the Grand Board of appeal of OHIM of 10 July 2006, s 9).
products desirable to status-conscious consumers.23 The effective advertise- crime generally was estimated to cost the UK economy some £9 billion per year
ment is one that will be recalled by the consumer, or, better still, one that and was responsible for prospective job losses in legitimate businesses of over
successfully elicits from the consumer the ‘pleasurable’ enthymematic effort 4,000 people. There is a very strong public interest in seeking to limit or prevent
of ‘resolving’ textual or visual ambiguities. such an eventuality.71
In the marketing theory of co-creation, this ‘goods-dominant’ view of The case law on the elements of the offence, sits uneasily with the Court of
markets is contrasted with a ‘service-dominant’ view, which proposes a very Appeal dicta on sentencing in R v Carter and R v Adam Ahmed Bhad; while
different sense of how market value is generated and circulated; and, cru- the courts may legitimately impose tougher sentences for offences of strict
cially, a very different sense of the ontology of market artefacts. From this liability where there is evidence that the defendant had knowledge,72 the
perspective, services are construed as processes in which specialised knowl- Court of Appeal dicta on sentencing places weight on aspects that are not
edge and skill are applied to resources with a view to benefitting someone. formally part of the offence.73 How can the tension implicit in these charac-
This somewhat formal definition can be rendered as a more basic propo- terisations of intellectual property offences be explained? On one level this
sition: the composition and value of market ‘things’ are not functions of reflects the lack of coherence of criminal law categories more generally. As
their inherent properties, or of properties embedded in them by manufac- criminal law scholarship has shown, the distinction between strict liability
turers; rather, the qualities of things are contingent on the way in which the and fault liability, ‘from a legal point of view’, is ‘fraught with difficulty’;
supplier and the customer collaborate communicatively, anticipating and there has been a ‘failure’ on the part of the courts to provide a clear legal
responding to each other’s expectations about the service and the relation- criteria for the distinction between these two categories of offences, with
ship in which it is implicated. Furthermore, this process of bilateral collabo- the result that judges ‘fall back into specific judgments about the rights and
ration is itself lodged in the broader socio-technical network that functions wrongs in individual cases’.74
as its infrastructure.24 Further, as the Court of Appeal judgment in Johnstone notes, the activi-
Two points are worth emphasising here. First, market artefacts are char- ties caught by section 92 occupy a broad ground:
acterised not by their material properties or functionalities, but by the appli-
The seriousness of trade mark infringement occupies a spectrum running from the
cation of resources of knowledge and skill that actualise the potential of
comparatively trivial to the very serious … Counterfeiting is certainly a potentially
resources and give them their social, technical, and economic performativity serious offence, there being large sums of money to be dishonestly made by the
by socio-technical operations that ascribe the value and meaning; ‘Over the deliberate counterfeiter.
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 As Tuckey LJ continued, at the ‘top end’, the activities caught by section 92
they are not static or fixed. Everything is neutral (or perhaps even a resist- constitute a ‘serious offence of dishonesty’, for which the maximum penal-
ance) until humankind knows what to do with it. Essentially resources are ties of ten years and/or an unlimited fine are appropriate.75 Yet, at the same
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 71 R v S, [48] point 7.
is very different. Consumers are no longer represented as a constituency ‘to 72 R v Lester (1975) 73 Cr App R 144, discussed in J Roberts, N Padfield, L Harris, Current
be captured or acted on’, but as a group of potential collaborators that mar- Sentencing Practice (London, Sweet and Maxwell, 2016) L2-2B01.
73 I am grateful to James Chalmers for discussion on this point.
keters should seek to engage in dialogue, and from whom they should learn: 74 A Norrie, Crime Reason and History: A Critical Introduction to Criminal Law, 3rd edn
The service-centred view of marketing is customer-centric. This means more than (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
simply being consumer oriented; it means collaborating with and learning from
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 liabil-
ity can almost always be matched by its contradictory affirming fault liability’ cited in Norrie,
23 BB Gardner and SJ Levy, ‘The product and the brand’ (1955) 33 Harvard Business Crime Reason and History 102.
Review 2, 33–39, 38. 75 R v Johnstone, HL, [58]–[59]. These comments were made by the Court of Appeal, in
24 ‘Service is not created just by the supplier and the customer. It is created in a network of rejecting the argument that the long maximum penalties (a maximum of ten years’ imprison-
activities involving a host of stakeholders. For example, there are contributions from interme- ment and/or an unlimited fine) were disproportionate, and therefore incompatible with Article
diaries, employees, the media, neighbours, and society in general through such infrastructural 5 Treaty of Rome. Article 5 Treaty of Rome requires penalties to be ‘effective, proportionate
networks as roads, electricity grids and broadband connections’ (E Gummesson, ‘Extending and dissuasive’. As the Court of Appeal noted in Johnstone, the maximum punishment of
the service-dominant logic: from customer centricity to balanced centricity’ (2008) 36 Journal ten years’ imprisonment and/or an unlimited fine is on a par with offences under the Theft
of the Academy of Marketing Science 15–17, 16). Act 1968 (obtaining property by deception, section 15) and the offence of forgery (under
25 Vargo and Lusch, ‘New dominant logic for marketing’ (n 13) 2. section 6 Forgery and Counterfeiting Act 1981): see R v Johnstone, CA, [58].
time, section 92 also encompasses more trivial acts not involving dishon- the question of distribution, Shaw called this ‘sale by description’,18 and
esty, which are criminalised in the public interest, on a regulatory rationale. characterised advertisers as ‘middlemen’:
Hence, in R v S the Court of Appeal noted that ‘the reality’ of sentencing
[W]e find in the past half century and especially in the past decade a rapid adop-
under section 92, is that ‘most cases under section 92 are brought in the tion by producers of agencies for direct communication of ideas about the goods
magistrates’ court and, of those, the majority result (in the case of convic- to the consumer. This means that another function formerly divided among mid-
tion) in a fine’. In that case the prosecution, without challenge from defence dlemen is being taken over as a function. The newspapers, periodicals, and other
counsel, cited figures that fewer than ten per cent of convictions in the advertising agencies may be termed functional middlemen, as were the insurance
Crown Court or magistrates’ court (in the period 1998–2000) resulted in companies, the transportation companies, and the banks.19
an immediate custodial sentences’.76 In this way, while the Court of Appeal In crude terms, the ‘function’ of marketing and advertising, rather like the
in case law on sentencing has characterised section 92 as a serious offence
function of transportation, was to get goods from one place to another,
involving dishonesty, case law on liability instead draws on the ‘reality’ of
from the producer to the consumer.
sentencing in the lower courts; in case law on liability, the ‘reality’ of sen-
To return to the presentation of the ‘goods-dominant’ view, market-
tencing is a means of justifying the regulatory classification and distinguish-
ing was about steering or controlling ‘physical flows’;20 tangible goods
ing section 92 from other offences where the availability of long maximum
with embedded qualities had to be conveyed ‘downstream’ along linear
penalties has instead supported the rejection of a regulatory classification.77
channels leading from producer to consumer. In trade mark jurisprudence
The broad range of activity regulated by intellectual property crime, then, in
this premise reappears as a materialist or ‘physicalist’ understanding of com-
combination with the lack of clarity about criminal law categories, results in
munication. Communication is understood as the transfer or conveyance
contradictory characterisations by the criminal law.
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’
B. R v Johnstone and the Relation between Civil and Criminal Law that can be accepted, rejected, misunderstood, or quite simply ignored, by
the consumer, but which is not actually transformed or collaboratively cre-
How does uncovering the position of intellectual property offences in the
ated by the consumer. The information simply is what it is. This linear,
wider criminal law improve our understanding of the House of Lords r uling
instrumentalist understanding of communication resonates with marketers’
in Johnstone? First, it helps us to understand the question that perplexed
representation of consumers as largely passive targets of advertising.21
Rahmatian in his Modern Law Review article: why the House of Lords did
Throughout the twentieth century, practitioners and theorists of marketing
not advocate a yet closer relation between criminal and civil law, such that
understood brands as strategic means of capturing mental ‘real estate’.22
the civil law of infringement is part of the offence in section 92.78 Rahmatian Brands, through their circulation in advertising media, were supposed to
addressed one explanation for the Lords’—the need for juries and lay generate and sustain the ‘public image, character, or personality’ that made
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 18 ‘The root idea in sale by description is the communication of ideas about the goods to
provides a more convincing answer to Rahmatian’s question: the ‘strong the prospective purchaser by spoken, written, or printed symbols. This takes the place of the
public interest’ to be served in facilitating efficient prosecutions by trading sight of the goods themselves or a sample of them’ (Shaw, ‘Market distribution’ (n 14) 723).
19 Shaw, ‘Market distribution’ (n 14) 736.
standards departments, essential to counter the economic cost of piracy 20 Vargo and Lusch, ‘New dominant logic for marketing’ (n 13) 9.
and counterfeiting. These concerns appear prominently in the judgments in 21 ibid, 2: ‘Customers, like resources, became something to be captured or acted on, as
Johnstone; the judgments of both Lord Nicholls and Lord Walker open by English vocabulary would eventually suggest; we “segment” the market, “penetrate” the mar-
ket, 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
76 R v S, [48]. (New York, McGraw Hill, 2001), especially at 16: ‘Each day, thousands of advertising
77 ibid. Referring to offences under the Misuse of Drugs Act 1971 considered in R v L
ambert messages compete for the prospect’s mind. And make no mistake about it, the mind is the bat-
[2001] UKHL 37. tleground. Between 6 inches of gray matter is where the advertising war takes place. And the
78 Rahmatian, Trade Mark Infringement as a Criminal Offence (n 18) 676: ‘there does not battle is rough, with no holds barred and no quarter given’. For a critique of the ‘mind-share’
seem to be a convincing reason why an artificially independent building of criminal law has to theory of advertising and branding, see D Holt, How Brands Become Icons (Boston, Harvard
be erected adjacent to the civil law edifice’. Business School Press, 2004).
79 ibid 677.
process of mass production—or, more accurately, standardising production— drawing attention to the high economic cost of ‘piracy and counterfeiting’,
which ensures that all bricks have the same competences. This assumption is accounting for between five and seven per cent of world trade and cost-
interesting precisely because of its obviousness. Elsewhere I have described ing the UK some £9 billion per year,80 and Lord Nicholls expressly men-
how a certain representation of large-scale manufacture functioned as a tioned the need for an approach that does not cause ‘practical difficulties for
kind of ideological infrastructure for the emergence of the modern sense weights and measures authorities’.81 In this way, the context for the Lords’
of the invention as an intangible ‘type’ embodied in a tangible ‘token’.16 interpretation of section 92 included the very public interest concerns that
Just as the printing press, by virtue of its powers of replication, made vis- have supported its treatment as a regulatory offence, and in turn justifies an
ible the difference between the spiritual work and its material exemplars, approach that treats section 92 as a ‘rigorous statutory code’ that is simple
the industrial production line precipitated the ‘invention’ from the series of in application.82
exemplars in which it was embodied. So the ‘technical solution’ embodied The position of intellectual property offences within criminal law cat-
in the Lego brick can be addressed as a distinct intangible entity, fixed in the egories also helps explain why the Lords did not pursue analogies between
patent text, and susceptible to infringement by competitors, only because of section 92 and the law of theft. The appeal papers held at the Parliamentary
a historical process in which the emergence of the production line allowed Archives reveal that counsel for the prosecution contended that the inde-
patent jurisprudence to see the invention as a stable form reproduced in a pendence of the criminal offences in section 92 from the civil law of trade
succession of embodiments. marks was supported by analogising intellectual property crime to theft.83
If anything, the notion that goods consist in embedded properties which In R v Hinks, the House of Lords held that the crime of theft (set out in
have to be retailed to consumers becomes even more pronounced when we section 1, Theft Act 1968) encompassed conduct which was not actionable
move ‘downstream’, into the realm of trade mark jurisprudence. Accord- under civil law;84 the majority held that a defendant could ‘appropriate’
ing to the conventional legal and economic theory of marks as indicators property for the purposes of theft, even though good title had been acquired
of commercial provenance, a trade mark tells the consumer that the prod- by the defendant under civil law (in the case in question, by way of gift).
uct that he or she is contemplating buying was produced by (or under the As Lord Steyn, delivering a judgment with which a majority of the Lords
auspices of) a firm whose products they had previously found satisfactory. agreed, explained:
By the same token, legally enforceable trade marks are supposed to give
The purposes of the civil law and the criminal law are somewhat different. In
corporations—‘economic operators’—an incentive to invest in and maintain theory the two systems should be in perfect harmony. In a practical world there
the quality of their products, the better to build and enhance a market repu- will sometimes be disharmony between the two systems. In any event, it would be
tation and to build market share. These are the two principal factors in the wrong to assume on a priori grounds that the criminal law rather than the civil
supposed efficiency of legally protected trade marks. law is defective.85
Historically, the ‘search costs’ theory of trade marks emerged with the
On this basis, Lord Steyn concluded that the ‘tension between civil and
rise of mass markets and mass distribution. The operations of marketing,
criminal law’ was ‘not a factor which justified a departure’ from existing
branding and advertising were geared towards overcoming the separation of
criminal law case law.86 Indeed, there was, in fact, a benefit to the independ-
supplier and consumer that resulted from the concentration of production,
ence of the criminal law from civil law concepts:
the expansion of the railroads, the invention of durable and hygienic pack-
aging and so on.17 The goal of marketing and advertising was to replace while in some contexts of the law of theft a judge cannot avoid explaining civil
spatial proximity with proximity through signification. In his analysis of 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
80R v Johnstone, HL, [1], [59].

81ibid [32] per Lord Nicholls.
16 See A Pottage and B Sherman, Figures of Invention, A History of Modern Patent Law 82 R v Rachel McCrudden, [10], quoted above n 72.
(Oxford, Oxford University Press, 2010), especially Ch 2. 83 ‘Case for the Appellant’, Appeal Papers (n 22), para 7.12.
17 In her account of the early history of modern brands, Susan Strasser describes how a
84 R v Hinks [2001] 2 AC 241.
‘population accustomed to homemade products and unbranded merchandise [was] converted 85 ibid 252.
into a national market for standardized, advertised, brand-named goods in general’ (Strasser, 86 ibid, referring to the rulings in R v Gomez [1993] AC 442 and R v Lawrence [1972]
Satisfaction Guaranteed (n 15) 7). AC 626.
87 ibid 253.
The ruling in Hinks has been much criticised by criminal law scholars for engineered form and function into scarce material resources. The kind of
‘the conflict it creates between the civil and criminal law’.88 However, the manufacturing process that twentieth-century marketers had in mind was
analysis in the previous section suggests that the decision not to follow that the large-scale production line, in which embedded properties were also
approach in the case of intellectual property offences is best explained by standardised properties, replicated in a potentially infinite succession of
the differences between these offences and theft; while case law on sentenc- industrial goods. The function of marketing was to try to persuade con-
ing might invoke comparisons with theft, as regards the elements of the sumers that they needed or wanted these standardised goods. This style of
action, section 92 is treated as regulatory in nature and not like theft at all. marketing might be characterised as a process of ‘retailing’, the etymology
Indeed, in Hinks, Lord Steyn was complacent about the tension between the of which comes from the French word retailler, meaning to cut out, trim or
civil and criminal law precisely because ‘the mental requirements of theft cut again; or, to take the dictionary example, to cut a bale of cloth into as
are an adequate protection against injustice’;89 theft, then, unlike intellec- many pieces as there are customers.
tual property crime, is an offence where dishonesty is ‘the gravamen’ of the The difficulty in the early twentieth century was to ensure that there were
offence’.90 In this context, Johnstone can be seen as a landmark in the dis- enough consumers for the extensive production runs that were now possi-
association of the elements of intellectual property offences from the theft ble. Archie Shaw, a wealthy manufacturer of office goods and the co-founder
paradigm. 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:
IV. CRIMINALISATION AND THE MAKING OF MODERN
While we are but upon the threshold of the possibilities of efficiency in production,
TRADE MARKS LAW
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
A. From Johnstone to Historical Antecedents
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
In the last section, I drew attention to less considered aspects of Johnstone unformulated wants of the individual must be ascertained and the possibility of
regarding the relation between civil and criminal law, and the position of gratifying them brought to his attention.14
intellectual property crime more generally within criminal law frameworks.
As Veblen observed in his discussion of the new mode of ‘salesmanship’,
In this section, I turn to historical antecedents that help us to reflect f urther
this meant that both goods and their customers were now mass-produced
on these observations. In so doing, I draw attention to the historical contin-
artefacts: ‘T]he fabrication of customers can now be carried on as a routine
gency of the assumption that the criminal law is peripheral to trade mark law;
operation, quite in the spirit of the mechanical industries and with much
as Andreas Rahmatian observed in the opening of his Modern Law Review
the same degree of assurance as regards the quality, rate and volume of the
article, ‘the criminal liability which may result from the infringement of a
output’.15
registered trade mark’ is ‘usually only briefly discussed’; the criminal law
The distinction made in Lego v OHIM, between shape as an expression
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 of functionality and shape as an agent of signification, articulates both the
to subject matter, was a criminal law measure: the Merchandise Marks ‘upstream’ and the ‘downstream’ dimensions of this ‘goods-dominant’ view.
Act 1862. After illustrating the contribution of the criminal law of forgery On one hand, the theory of shape as an expression of the functional proper-
to the shape of the 1862 Act (see part B below), I explain how processes of ties 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
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 14 AW Shaw, ‘Some problems in market distribution’ (1912) 26 The Quarterly Journal of
law. It is surely intolerable that the performance of a perfectly valid contract should be a crime’. Economics 4, 703–65; 709, 705–06.
See also, R Stevens, ‘Private Rights and Public Wrongs’ in M Dyson Unravelling Tort and 15 T Veblen, ‘Manufacture and salesmanship’ in S Mestrovic (ed) Thorstein Veblen on
Crime (Cambridge, Cambridge University Press, 2014) 124–25. Culture and Society (New York, Sage, 2003) 139. It should be noted grocers and other retail-
89 R v Hinks, 253. ers, who still enjoyed the confidence of the local customer, often refused to be treated as cogs
90 The phrase used by the Court of Appeal in R v S, [30], quoted at text to n 65. in a machine controlled by the large manufacturers and distributors (see S Strasser, Satisfaction
91 Rahmatian, ‘Trade Mark Infringement as a Criminal Offence’ (n 18), 670, referring to Guaranteed: The Making of the American Mass Market (New York, Pantheon Books, 1989),
leading treatises and textbooks on intellectual property law. especially Ch 5).
obscures; namely, the articulation of the licensing and merchandising prac- criminalisation, in presupposing that there was an existing legal right to be
tices that constitute the real social and economic life of intellectual property criminalised, also played an important role in the creation of the concept
rights. There are other reasons for leading with this particular artefact. The of a civil law of trade marks (see part C below). This Part also discusses a
Lego brick is not only an exemplary intellectual property object; it is also fundamental tension at the root of the 1862 Act, that ultimately led to its
a good tool to think with. The features of the brick that engage cultural demise: the conflict between the forgery paradigm (in particular, its require-
theorists10 are also useful resources for reflection on the architecture of intel- ment of dishonesty) and the objective of facilitating efficient prosecutions
lectual property discourse. Taken as a conceptual device, the classic brick (see part D below). This observation lays the groundwork for the conclusion
functions as a kind of experimental model for working with a set of distinc- of the chapter (section V); bringing the analysis back to Johnstone, I show
tions that are central to intellectual property thinking: material and immate- how the experience from a very different time and context helps us to focus
rial, functionality and signification, individual and collaborative creativity. on more deep-rooted tensions in intellectual property crime today and its
Beginning with the brick allows one to re-engage with a basic premise ambivalent relation to ‘real’ crime.
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 B. The Merchandise Marks Act 1862 and Forgery
are the leading actors in social or economic life.11 But trade mark theory
deprives products of their vitality and complexity, and simplifies the com- By way of background, as Brad Sherman and Lionel Bently have shown,
municative processes in which they are implicated, because it assumes that trade mark law emerged as a ‘discrete and recognised area of law’ over the
products are stable entities with embedded characteristics. Information course of the second half of the nineteenth century. As of the middle part
about commercial provenance (that is, the trade mark) is just superadded to of the nineteenth century, the law was ‘dilatory and chaotic’,92 comprising
the product. The product is a vehicle for signs conveying information about statutory protection for trade marks for specific trades (eg cutlery wares in
itself. The theory of trade marks as signs of commercial provenance took Hallamshire, linen, the hops trade and gun barrels),93 as well as protection
shape in the age of industrial manufacturing and marketing, which supplied through civil actions for deceit and the general criminal law (eg cheat94
the premises of the search costs theory of marks. 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.
II. QUANTITY PRODUCTION As section 1 stated:
‘Trade Mark’ shall include any and every such Name, Signature, Word, letter,
The doctrine of functionality expresses what, following Baudrillard, one
Device, Emblem, Figure, Sign, Seal, Stamp, Diagram, Label, Ticket, or other Mark
might call the ‘metallurgical’ understanding of industrial artefacts.12 The
as aforesaid lawfully used by any Person to denote any Chattel or (in Scotland)
jurisprudential division between functionality and signification expresses any Article of Trade, Manufacture, or Merchandise, to be in an Article or Thing
what marketing theorists call the ‘goods-dominant’ view of markets.13 of the Manufacture, Workmanship, Production or Merchandise of such Person or
According to this view, which took root in the early twentieth century, value to be an Article or Thing of any peculiar or particular Description made or sold
was ‘embedded’ in tangible products by the process of manufacture, which 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
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 92 B Sherman and L Bently, The Making of Modern Intellectual Property Law: The British
firm’s identity. Organization studies, management science and economic theory of the firm all Experience, 1760–1911 (Cambridge, Cambridge University Press, 2008) 167.
hasten to reach, in the very first steps of their analysis, a level of abstraction that precludes 93 A summary of these legislative enactments can be found in L Bently, ‘The Mak-
the question of just what the firm is producing’ in D Baecker, ‘The form of the firm’ (2006) ing of Modern Trade Mark Law: The Construction of the Legal Concept of Trade Mark
13 Organization 1, 109–42, 128. (1860–1880)’ in L Bently, J Davis and Jane C Ginsburg, Trade Marks and Brands: An Interdis-
12 See generally J Baudrillard, The System of Objects (London, Verso, 1996). ciplinary Critique (Cambridge, Cambridge University Press, 2011) 5–7.
13 See SL Vargo and RF Lusch ‘Evolving to a new dominant logic for marketing’ (2004) 94 R v Closs (1858) 169 ER 1082, Dears &B 460.
Journal of Marketing 68, 1–17. 95 R v Dundas (1853) Cox Crim Cas 30; R v Suter & Coulson (1867) 10 Cox Crim Cas 577.
problem of ‘forged Trade Marks’.96 The Act criminalised, inter alia, with However it is expressed, this ‘doctrine of functionality’ reaffirms the founding
‘intent to defraud, or to enable another to defraud any Person’, the forg- premise of modern intellectual property jurisprudence. If intellectual prop-
ing or counterfeiting of any trade mark or the application of a forged or erty rights are to be justified as private rights that serve the public interest—
counterfeited trade mark (or the causing or procuring of such forging or by enhancing the public domain or by making markets in consumer goods
counterfeiting, or application) to any chattel/article not being the ‘Manufac- more efficient—then the ideological integrity of the system as a whole
ture, Workmanship, Production or Merchandise’ of any person whose trade depends on the specification and ‘jointing’ of its constituent parts.
mark shall be so forged or counterfeited.97 The doctrine of functionality presupposes a specific understanding of the
Existing literature has considered a number of aspects of the nature of nature and operation of intellectual property rights, according to which
the protection provided by the Merchandise Marks Act. Lionel Bently has intellectual property rights circumscribe intangible artefacts in such a way as
described the Act’s protection for trade marks as a ‘communication-based to afford exclusive control over their use. As Hunter and Thomas observe,
wrong’—deriving from an intention to deceive—rather than premised on Lego’s attempts to use trade mark law to resurrect its patent-based monop-
trade marks as property.98 Further, Brad Sherman and Lionel Bently have oly on the brick express of this essentially mid-twentieth century view of the
noted that the perception that trade mark law was ‘more concerned with functions of patents and trade marks:
regulating fraud than property’ resulted in the exclusion of trade marks
The company saw its corporate success defined by establishing formal mecha-
from the category of ‘intellectual property’ that was taking shape in the nisms of protection through the patent system over various features of the blocks
mid-nineteenth century.99 In this section, I instead consider the implications and elements of the Lego system. Based on this understanding of intellectual prop-
of the particular criminal law paradigm—forgery—for the elements of the erty, success for the company came from establishing ever-stronger forms of con-
action under the 1862 Act. trol, concentrated at a single point at the highest executive levels of the company.
The history of forgery in the eighteenth and early nineteenth centuries The patent system was uniquely well-developed to deliver this sort of centralised,
has been explored in detail elsewhere. During the eighteenth century, there monopolistic control.9
was a huge expansion in forgery legislation; among other things, this made And the ‘doctrine’ that tribunals around the world invoked (in one guise
forgery of a wide variety of documents relating to public and private finance or another) to counter Lego’s monopolistic ambitions was premised on the
a capital felony.100 As Phil Handler has shown, forgery assumed ‘criti- same sense of the function of intellectual property rights. When the classic
cal importance’ in nineteenth-century debates that led to penal reform in brick was invented and first marketed, it seemed perfectly suited to this
the 1830s, removing capital punishment for over 200 crimes comprising model. But the brick has progressively evolved into a resource for new
the ‘Bloody Code’ that had been passed in the eighteenth century.101 By the modes of creativity, which have in turn called forth new idioms or tech-
mid-nineteenth century, forgery spanned a broad range of offences: while niques of appropriation, better adapted to the contingencies of collaborative
the offence at common law was a misdemeanour, there was also a complex or participatory creativity. Indeed, in the same moment as it was seeking to
web of statutory offences, some of which were felonies. Many of these were retrench an old-style intellectual property monopoly, the Lego company was
also positioning itself in the vanguard of a movement towards collabora-
tive or responsive corporate engagement with consumers and other market
96 Parl Deb 3rd S Vol 164 col 1089 (18 July 1861). participants.
97 Merchandise Marks Act 1862, s 2. The Lego brick is an essential part of this story. Indeed, the brick is an
98 L Bently, ‘From Communication to Thing: Historical Aspects to the Conceptualisation of
IP ‘landmark’ in its own right. The brick is so thoroughly implicated in the
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). history of intellectual property law that one could imagine taking it as the
99 Sherman and Bently, The Making of Modern Intellectual Property Law (n 92) 172.
vehicle of an engaging and expansive course in intellectual property law.
100 Lindsay Farmer refers to forgery as the ‘quintessential crime’ of the eighteenth century.
Not only has this piece of plastic been the subject of patent, copyright and
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 trade mark cases in a number of jurisdictions, but the story of Lego (the cor-
Legislation in Eighteenth-Century England’ in N Landau, Law, Crime and English Society: poration and its products) opens onto a dimension of intellectual property
1660–1830 (Cambridge, Cambridge University Press, 2002) 117–38, explaining the increase law that the textbook preoccupation with legislation and litigation rather
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.

9 D Hunter and J Thomas, ‘Lego and the System of Intellectual Property, 1955–2015’ (2016)
Intellectual Property Quarterly 1, 5.

Trade mark law has few ‘constitutional moments’—understood in the codified by the Forgery Act 1861.102 Forgery was not defined by statute;
attenuated sense of occasions on which the basic principles of a regime are as James Fitzjames Stephen noted, writing later in the century, the Forgery
reinvented or rearticulated. So it is interesting that courts took Lego’s trade Act 1861 merely enumerated the types of document that could be forged.103
mark actions as an occasion to assert a basic normative principle of intel- The essential characteristics of these offences were instead understood to
lectual property law. In the course of its decision, the Supreme Court of stem from the offence’s definition at common law: ‘the fraudulent mak-
Canada invoked ‘basic and necessary distinctions between different forms ing or alteration of a writing to the prejudice of another man’s right’;104
of intellectual property and their legal and economic functions’.5 It high- as a leading criminal law treatise—William Oldnall Russell’s A Treatise
lighted a ‘doctrine of functionality’ which went ‘to the essence of what is a on Crimes and Misdemeanors—stated: ‘the counterfeiting of any writing
trade-mark’: with a fraudulent intent, whereby another may be prejudiced, is forgery at
common law’.105
This doctrine recognizes that trade mark law is not intended to prevent the competi-
tive use of utilitarian features of products, but that it fulfils a source-distinguishing How did the 1862 Act relate to these pre-existing criminal law offences?
function.6 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
This is the kind of principle that makes a ‘landmark’. And although the deci- R v Smith,106 the Court of Crown Cases Reserved quashed a defendant’s
sion of the Court of Justice of the European Union in Lego v OHIM (2010)7 conviction for common law forgery, by procuring the printing of 10,000
might be considered jurisprudentially dependent on the earlier decision of wrappers that were similar to the wrappers under which the prosecutor sold
the Court in Philips v Remington,8 the Lego decision is less straightforward his product: powders called ‘Borwick’s Baking Powders’ and ‘Borwick’s Egg
and more interesting because of the nature of the artefact. As we shall see, Powders’. Rejecting the argument by Counsel for the plaintiff, that the false
the distinction between functionality and signification is particularly diffi- wrapper was analogous to a ‘false certificate’,107 the Court held that the ‘real
cult in the case of the Lego brick because functionality—the ‘clutch power’ offence’ was the ‘issuing them with the fraudulent matter in them’; merely
of the bricks—is the feature that allowed Lego to evolve from a simple printing the wrappers did not involve forgery. As Pollock CB concluded:
architectural toy into the archetype of a modularised medium. The technical
mode of connectivity turns bricks into the ‘materials’ of a medium that can I doubt very much whether these papers are within that principle. They are merely
articulate diverse kinds of language or ‘signification’. And the ‘functionality’ 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
of modularising connectivity turns out to have a cultural, ethical and affec-
tive significance that is capitalised in the Lego brand. Just as the functional-
ity of the brick participates in various modes of meaning production, this 102 24&25 Vict. See generally, WM Oldnall Russell and CS Greaves, A Treatise on Crimes
same functionality acquires broader cultural meaning. and Misdemeanors, 4th edn (London, Stevens & Sons, 1865) Vol 2, Ch 33. As Stephen noted,
In Lego Juris v OHIM the ‘doctrine of functionality’ is not rendered as the intention behind the 1861 Act was to codify all existing forgery legislation, but it in fact left
expressively as it was in the Canadian decision. As is often the case with a number pre-existing enactments unrepealed: JF Stephen, The History of the Criminal Law of
England (London, Macmillan & Co, 1883) Vol 3, 184–85.
CJEU decisions in trade mark cases, the text has the toneless, non-idiomatic, 103 Stephen, A History of the Criminal Law (ibid) Vol 3, 184.
quality of a translation made by computer programme: 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
When the shape of a product merely incorporates the technical solution developed (London, Saunder and Benning, 1843) 318, quoting Blackstone’s Commentaries Vol 4, 247.
by the manufacturer of that product and patented by it, protection of that shape 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.
as a trade mark once the patent has expired would considerably and permanently 107 ibid 572. Relying on cases about certificates in R v Toshack (1849) 169 ER 341, 1 Den
reduce the opportunity for other undertakings to use that technical solution. In
492. R v Sharman (1854) 169 ER 729; Dearsly 285, counsel argued that: ‘The certificates in the
the system of intellectual property rights developed in the European Union, tech- cases of Toshack and Sharman certified that a man had done certain things. Here the wrapper
nical solutions are capable of protection only for a limited period, so that subse- 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
quently they may be freely used by all economic operators.
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’
5
(at 575). Bramwell B: ‘Forgery supposes the possibility of a genuine document … The prisoner
Kirkbi AG v Ritvik Holdings Inc [2005] 3 SCR 302, 327 (LeBel J). may have committed a gross fraud in using the wrappers for that which was not the genuine
6 ibid, 331.
7 At the time of writing, it was still true to say that UK trade mark law had been largely
powder, and may possibly be indicted for obtaining money by false pretences, but I think he
cannot be convicted of forgery’ (at 575).
absorbed into European Union trade mark law.
8 C-299/99 Koninklijke Philips Electronics NV v Remington Consumer Products Ltd
[2002] ECR I-5475.

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 13
common law cheat; common law cheat encompassed ‘frauds which affect …
the public at large’ and this included the use of ‘false tokens’ with ‘the sem-
blance of public authenticity’.110 In Closs, Cockburn CJ held obiter that: Lego Juris A/S v OHIM (2010)
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 ALAIN POTTAGE
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 I. INTRODUCTION
prosecution to prove causation between the false pretence or false token
and the fraudulent obtaining of money. This sometimes caused problems for Thing is, we all played with Lego … There just comes a time when you don’t go
prosecutors,112 as the parliamentary debates on the Bill acknowledged.113 into that box anymore, and then for the next 30 years Lego’s been playing with
Forgery, then, overcame these problems of proof in so far as the offence was me. Messing with my mind and my way of looking at things. I’ve [been wondering]
complete when the mark was forged, regardless of whether it was applied to all this time, where do I end and toys begin?1
I
goods114 (though, as we see below, it raised different problems).115 N THE 1980S, after the last of its patents relating to the brick had expired,
The forgery paradigm upon which the 1862 Act was based, however, was the Lego company embarked on a global effort to use trade mark law
more than just a legislative reversal of the approach at common law; it was to prevent its competitors from marketing bricks that were interchange-
also intended to indicate that trade mark offences were a serious crime. This able with its own. Starting from the premise that Ole Kirk Christiansen, the
is apparent from the particular analogy drawn in the legislative debates on founder of the Lego, had designed the bricks to have ‘eye appeal’,2 the com-
the 1862 Act: trade mark forgery was compared to the forgery of a ‘check pany’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
109 ibid 573, per Pollock CB: ‘The defendant may have been guilty of obtaining money by of studs as a mark, or to initiate an action for passing off based on the market
false pretences; of that there can be no doubt …’ See also Willes J at 574, Bramwell B and aura of the shape, were unsuccessful. Courts in various jurisdictions3 held
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. that the disposition of studs on the classic brick was essentially attribut-
110 Russell and Greaves, A Treatise on Crimes in Misdemeanors (n 104) 279. able to functionality, and therefore fell within the province of patent law.
111 R v Closs (1858) 169 ER 1082; Dearsly and Bell 460, 466. Closs concerned the unauthor-
This meant that it would be contrary to the basic principles of intellectual
ised 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 property law to allow Lego to extend its patent rights by recourse to trade
it appear like the genuine production of the manufacturer, that would be a false mark or token, mark law. As the Supreme Court of Canada put it, ‘the law of trade marks
and the party would be guilty of a cheat, and therefore liable to punishment’. A judgment was may not be used to perpetuate monopoly rights enjoyed under now-expired
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 patents. The market for these products is now open, free and competitive’.4
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 1 D Coupland, cited in M Koepke ‘Douglas Coupland: A mean case of shapehead’ available
indictment was not correctly framed: R v Closs, 467. at <hour.ca/2005/05/26/a-mean-case-of-shapehead>.

113 Parl Deb 3rd S Vol 167 col 1419 (4 July 1862), the Attorney General: ‘Its object was to 2 I Austen, ‘Building a legal case, block by block’ The New York Times (2 February 2005).
avoid the necessity of having to adduce before a jury such evidence—which it was sometimes 3 For a very useful conspectus of the Lego cases, see Rr W de Vrey, Towards a European
very difficult to get—as would satisfy them that the offence of cheating at common law had Unfair Competition Law. A Clash of Legal Families (Leyden, Brill, 2005) 293–96 and notes.
been committed’. 4 Kirkbi AG v Ritvik Holdings Inc [2005] 3 SCR 302, 308 (LeBel J). See also at 342: ‘Grant-
114 On this point, see DM Kerly and FG Underhay, The Law of Merchandise Marks and the ing such a claim in these circumstances would amount to recreating a monopoly contrary to
Criminal Law of False Marking, 3rd edn (London, Sweet & Maxwell, 1909) 18. the basic policies of the laws and legal principles which inform the various forms of intellectual
115 See below, text to nn 145–55. property in our legal system’.
344 Elena Cooper R v Johnstone (2003) 337
the relation between civil and criminal law struck by the House of Lords. on a bank’116 or a ‘bill of exchange’.117 This comparison was a statement
Indeed, this was a point that was raised but unanswered in the existing liter- about the serious nature of the criminality involved; the forgery of cheques
ature; why had the House of Lords not advocated a closer relation between or bills of exchange was a felony punishable by penal servitude for life.118
civil and criminal law concepts? History, in providing us with the experience As an article from The Jurist explained, comparing forgery of a trade mark
of a very different time and context, can help us to transcend immediately to forgery of a bill of exchange:
obvious explanations, and uncover underlying tensions with deeper roots.
if there is any distinction it is merely one of degree—both offences come under the
While there are stark differences between the nineteenth century experience same category—they are both forgeries; and if one offence is to be punished with
presented in this chapter and the case law on intellectual property offences less severity than the other, it is not because the criminality is less in the one case
today, both reveal trade mark offences to be caught between the paradigm than the other but because the result of the one kind of forgery are more mischie-
of serious crime involving dishonesty (forgery in the nineteenth century vous to society than the other.119
and theft today) and efficient enforcement. As we have seen, Johnstone is
What did the forgery paradigm mean for the shape of the 1862 Act? First,
best understood by reference to this tension. History, therefore, helps us to
the forgery basis was one justification for the rejection of registration.120
appreciate the longstanding complexity of criminal offences relating to the
As Milner Gibson MP explained:
category we today refer to as intellectual property, and their ambivalence to
paradigms of serious crime. 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 propos-
als 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 Promo-
tion 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 exam-
ple, 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 Com-
mittee 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
and a Bill including registration prepared by the Sheffield Chamber was today, as in the nineteenth century, again occupies a complex ground, strad-
presented to Parliament.123 dling both analogies with ‘real crime’ involving dishonesty and regulatory
Secondly, the forgery paradigm resulted in the criminalisation of a broad objectives of facilitating efficient prosecution.
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 V. CONCLUSION
criminalised acts of ‘uttering’ which, in the case of private financial instru-
ments, required the parting with, tendering, offering or use in order to Johnstone, as we saw at the outset, is the only House of Lords authority
receive credit.124 Hence the provisions of the 1862 Act encompassed ‘who- on the interpretation of criminal offences in a current intellectual property
soever shall forge or counterfeit, or shall utter …’.125 While not discussed statute. While the case has been much considered for its contribution to case
explicitly, the comparison with forgery of private finance instruments may law on the functions of a trade mark and the human rights issues arising
have had implications for the scope of protection: the offence of forgery from the reversal of the burden of proof, little attention has been given to
as applied to bills or cheques merely required the forged instrument to be its implications for the relation of intellectual property between civil and
‘seemingly genuine’ such that ‘it was calculated to impose on mankind in criminal law. This chapter fills this gap. It has argued that the position of
general’ and would ‘deceive persons using ordinary observation’; there was intellectual property offences within broader criminal law categories helps
‘no need for perfect resemblance’ and it was not necessary that ‘an indi- to explain why the House of Lords both affirmed the general principle of
vidual skilled in that kind of writing would detect its fallacy.’126 trying to keep criminal offences as self-contained as possible, while also
Finally, the forgery paradigm meant that there was only liability where referring to concepts from the civil law of trade marks. While ‘dishonesty’
the prosecutor proved dishonesty; as the chapter on forgery in Joseph is often referred to as a characteristic of conduct that is criminalised, the
Chitty’s treatise on Bills of Exchange stated: ‘intent to defraud’ was ‘the elements of the offence in section 92 have been framed on the basis of a
very essence of forgery’.127 Indeed, forgery was classified as a crimen falsi: regulatory rationale, justified by reference to the public interest in efficient
a crime that, due to the dishonesty involved, rendered an offender infamous, enforcement. This latter rationale explains, among other things, why closer
that is, deprived of certain ‘rights of a citizen’, such as serving on a jury.128 analogies between intellectual property crime and the current law of theft
We return to the requirement of ‘intent to defraud’ later. 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
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 Com- seen, the criminal law provided an important contribution to the making of
merce A.D. 1783–1913 (1913) 174. See also Association of Chambers of Commerce Standing the first legislation protecting trade marks regardless of subject matter: the
Committee Minutes (22 March 1862) and Association of Chambers of Commerce Executive Merchandise Marks Act 1862. Not only was the basis of this legislation an
Council Minutes (2 February 1860), London Metropolitan Archives, London.
existing criminal law paradigm (forgery), but processes of criminalisation,
123 Trade Marks Bill PP 1862 Bill 17. A petition in favour of the Sheffield Bill was pre-
sented by the Wolverhampton Chamber of Commerce: App 816, Appendix to the Report of
in demanding the identification of a pre-existing legal right, contributed to
the Select Committee on Public Petitions (in respect of petitions presented 30 June 1862– the emergence of the concept of a civil law of trade marks. The assumption
2 July 1862). See also Wolverhampton Chamber of Commerce Minutes for 5 March 1861 of recent times that criminal offences lie at the periphery of trade mark law,
(Wolverhampton Archives & Local Studies, Wolverhampton), recording a discussion between
Sheffield and Wolverhampton Chambers on the subject of registration. The Sheffield Bill
is revealed to be historically contingent; criminalisation was in fact a central
was also supported by the then recently formed Association of Chambers of Commerce, see process in the making of modern trade mark law.
Report of the Chairman to the Association of Chambers of Commerce, 19 February 1862 How do these historical antecedents help us better to reflect on the rela-
(London M etropolitan Archives, London). By contrast, the Huddersfield Chamber of Com-
merce supported the Government Bill, that became the Merchandise Marks Act 1862: see the
tion between criminal and civil law in Johnstone? Johnstone, as we have
Huddersfield Chamber of Commerce’s petition, App 211, Appendix to the Report of the Select seen, is on one level explained by factors that are intrinsically tied to its
Committee on Public Petitions (in respect of petitions presented 17–19 March 1862). context in recent times, most obviously the objective of EU harmonisa-
124 Byles, A Treatise on the Law of Bills of Exchange (n 118) 321.
125 Merchandise Marks Act 1862, s 1, emphasis added. tion of trade mark law (which required the courts to interpret section 92
126 Byles, A Treatise on the Law of Bills of Exchange (n 118) 318–19. so as to keep the scope of criminal offences narrower than the protection
127 J Chitty and JW Hume, Practical Treatise on Bills of Exchange, Checks on Bankers,
offered by civil law) and the particular language of the relevant parts of
Promissory Notes, Bankers’ Cash Notes and Bank Notes, 9th edn (London), reprinted in the
12th American edition (Springfield, S&C Merriam, 1854) 864.
the Trade Marks Act 1994 (section 92). However, as we have seen, taken
128 Byles, A Treatise on the Law of Bills of Exchange (n 118) 317. on their own, these factors do not adequately explain the precise nature of
criminal proceedings might be taken … with the proof of infringement thrown C. Criminalisation and the Civil Law of Trade Marks
onto the accused148
The 1862 Bill was prepared expressly with the intention of meeting to this The criminal law, then, provided the paradigm for the nature of trade mark
concern149 and therefore the resulting 1862 Act required the prosecutor protection under the Merchandise Marks Act 1862, the first statute pro-
to prove dishonesty. However, the tension between the forgery paradigm tecting trade marks generally. However, there was another contribution of
(requiring proof of dishonesty) and the objective of efficient remedies con- criminal law frameworks to nineteenth century trade mark law: the 1862
tinued after the 1862 Act’s passage. Writing three years after the Act’s pas- Act’s criminal law basis also had important implications for the develop-
sage, the barrister Edward Lloyd commented that ‘it does not seem probable ment of the concept of a civil law of trade marks. Existing scholarship, as we
that this Act will come into very general use, owing to the difficulty of prov- have already seen, has referred to mid-nineteenth century trade mark law
ing a fraudulent intention …’150 For the same reason, writing after the Act’s as ‘dilatory and chaotic’, ‘uncertain’ and not ‘coherent’.129 Lionel Bently, in
repeal, the treatise writer DM Kerly described the 1862 Act as ‘a dead letter The Making of Modern Trade Mark Law, cites the evidence of the solicitor
from its first enactment’; ‘ it left the onus of proving the intent to defraud of Joseph Travers Smith to the Select Committee preceding the 1862 Act’s pas-
the person charged upon the prosecutor, and it made no provision for the sage about the existing law’s ‘very considerable’ problems:
summary prosecution of these offences’.151 trade marks are not recognised as having any legal validity or effect … there is
The 1862 Act’s demise, then, stemmed from an inherent tension in legisla- no written law and we have consequently no definition by which we can try what
tive objectives. However, the forgery paradigm was important; the analogy a trade mark is, nor consequently what particular symbol amounts to a trade
with the forgery of cheques and bills signified that trade mark offences were mark.130
serious crimes involving dishonesty.152 Yet, the requirement of dishonesty Yet, as we will now see, criminalisation involved presupposing order and
at the heart of forgery153 conflicted with the objective of facilitating the coherence on existing common law protection; the process of criminalisa-
efficient prosecution of the misuse of trade marks. While the context in tion contributed to the creation of a civil law of trade marks as an identifi-
the nineteenth century was very different, these themes reveal remarkable able body of law.
continuity with the underlying tensions we noted in the categorisation of By way of background, as Lindsay Farmer has explained, the nineteenth
intellectual property offences today.154 Bringing the analysis back to the century saw ‘a huge expansion of the criminal law’ by the ‘legislative
ruling in Johnstone, the characterisation of intellectual property offences state’; in addition to extensive legislation codifying and consolidating exist-
ing offences, numerous new statutory offences were created, concerning
a broad range of activities.131 A common justification for such legislative
148 ibid. The petition of three London wholesale warehousemen (cited at n 146 above) also
criminalisation, shows Farmer, was the view that ‘the function of the crimi-
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
nal law was that of defending rights defined elsewhere in the law’.132 As the
and limiting protected marks just to ‘names’ so as to make it clear what could be claimed Commissioners on Criminal Law asserted in their Fourth Report published
as a trade mark. See Report on Trade Marks at Glasgow Chamber of Commerce, Minutes in 1839:
11 February 1862, Glasgow City Archives.
149 As William Matheson Hindmarch QC, a barrister who drafted the Merchandise Marks A crime must usually consist of some act, or combination of acts, constituting a
Bill, wrote to the Glasgow Chamber of Commerce in 1862, the intention was ‘to prepare a violation of some right, or an attempt to violate some right, aggravated by the use
Bill … free from the objections taken by the wholesale dealers to the Bill of last year’. Letter
of violence, or a fraudulent of malicious intention.133
dated 9 December 1861 from WM Hindmarch to Samuel Higginbotham Esq, Glasgow
Chamber of Commerce papers, Glasgow City Archives. In the debates preceding the Merchandise Marks Act’s passage, the ‘right’,
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, the violation of which was being criminalised, was expressed to be the
1865) 12.
151 Kerly and Underhay (n 114) 3. Cf the position under the Merchandise Marks Act 1887 129 Sherman and Bently, The Making of Modern Intellectual Property Law (n 92) 166;
(50 & 51 Vict), which repealed and replaced the 1862 Act, and placed the burden of proving L Bently, The Making of Modern Trade Mark Law (n 93) 4. Report from the Select Committee
‘intent to defraud’ on the accused (see Kerly and Underhay, Law of Merchandise Marks, 5). on the Trade Marks Bill and Merchandise marks Bill; PP 1862 (212), Q.2619.
The aim of this change, as well as others introduced by the 1887 Act, was to ensure that 130 Bently, ibid.
‘the operation of the measure shall be as prompt and as summary as possible.’ Parl Deb 3rd 131 Farmer, Making the Modern Criminal Law (n 100) 78.
S Vol 316 col 1730 (4 July 1887), Mr Mundella. 132 ibid 82.
152 See text to nn 117–19. 133 Fourth Report of Her Majesty’s Commissioners on Criminal Law, PP 1839 [168],
153 See text to n 127. xiii. See also, Seventh Report of Her Majesty’s Commissioners on Criminal Law, PP 1943 [448],
154 See section III A. 7 ‘All wrongs are violations of right, the subject of either preventative or remedial provisions …’.
rotection provided by the Court of Chancery, ancillary to the common

p though this ‘appeal’ was subsequently withdrawn.141 Implicit in these rul-
law of deceit. As the President of the Board of Trade, Milner Gibson MP ings, then, was the assumption that the substantive law of trade marks was
explained to the House of Commons Select Committee, the Merchandise a domain defined by civil law; criminalisation, therefore, contributed to the
Marks Bill did not involve: creation of the concept of a civil law of trade marks.
the creation of any new species of property in trade marks. The rights now pro-
tected by the Court of Chancery are the only rights which I would protect under
any criminal law.134 D. Efficient Enforcement v the Forgery Paradigm
In this sense, as Milner Gibson MP explained, the Merchandise Marks Bill In relating the 1862 Act to pre-existing civil protection, the legislative
was understood to be different to the legislative reform of design law135 that debates also presented criminalisation as being concerned with the provi-
‘created a new kind of property, which would not otherwise have existed’; sion of a ‘more prompt and less expensive remedy’ for existing common law
‘in the case of trade marks … the law already recognised a property in those rights; the objective of criminalisation was ‘to facilitate the process’ of the
marks and rendered it a civil offence to forge them’.136 Criminalisation, more efficient enforcement of existing rights at common law,142 overcoming
then, demanded that the common law of deceit be conceived as a civil law the ‘inefficiency of the present law, and of its great costliness and the delay
of trade marks. Indeed, Milner Gibson MP’s reference to the protection which it occasioned’.143 As we will now see, this goal came into conflict with
offered by the Court of Chancery is not without significance. The Court of the forgery paradigm upon which the Act was based, and was ultimately the
Chancery had claimed a jurisdiction for itself that went beyond the com- cause of the 1862 Act’s demise.
mon law basis of the action; in Millington v Fox an injunction was granted As we saw above, the mental element of dishonesty—or intention to
where there was no evidence of fraudulent use by the defendant137 and such defraud—was an essential element of the crime of forgery.144 However, in
an extension was uncertain as it raised difficult questions of principle about the debates culminating in the 1862 Act, concerns that this would stand in
the relation between law and equity.138 These uncertainties went unmen- the way of efficient prosecutions, resulted in proposals to place the burden
tioned in legislative debates identifying the pre-existing rights that were to of proving dishonesty on the defendant.145 In the debate on these proposals,
be criminalised. in 1861, objections were raised as regards the position of ‘innocent par-
Similar observations can be made about the nature of prosecutions under ties who purchase goods in the ordinary course of business, and sell them
the 1862 Act; in applying the MMA, a number of courts expressly deferred without any fraudulent intent’;146 in particular, ‘wholesale traders who deal
to the civil courts of common law and equity on substantive trade mark law in goods which are manufactured by others’.147 As the petition of one soci-
issues, treating the common law of deceit as the substantive law of trade ety representing these interests—the Manchester Guardian Society for the
marks. For instance, Liverpool Police Court declined to rule on whether Protection of Trade—stated:
‘prepared corn’ for corn starch was a ‘mark’ protected by the 1862 Act, the
magistrate suggesting that the complainants should first ‘get an authorita- your petitioners represent those who deal in goods which are so variously marked
tive decision’ from the Court of Chancery.139 In another prosecution under 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
the 1862 Act, about markings applied to hops, Mansion House Police Court
a trade mark or not; and yet at the instance of interested or malicious persons,
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
141 Mansion House The Standard (28 November 1865) 3.
142 ‘Parliamentary Committees: Trade Marks’ The Standard (8 April 1862) 5, Milner
Gibson MP.
134 ‘Parliamentary Committees: Trade Marks’, The Standard (8 April 1862) 5. 143 ibid, Mr Smith of the firm Avery and Co London.
135 This was a reference to the Design Registration Act 1839 (2 Vict), which was the first Act 144 See text to n 127 above.
to protect designs to all articles of manufacture, and not just fabrics. See further, Sherman and 145 Merchandise Marks Bill PP 1861 Bill 79, cl 8. Cf the debate about the burden of proof
Bently, The Making of Modern Intellectual Property Law (n 92) 64. under s 92(5) today (see n 69).
136 Parl Deb 3rd S Vol 165 col 446 (18 February 1862), Milner Gibson MP speaking in the 146 Petition of three London wholesale warehousemen, reprinted at App 582, Appendix to
context of debates about registration. the Report of the Select Committee on Public Petitions (in respect of petitions presented 22–24
137 Millington v Fox (1838) 3 Myl & Cr 388; 40 ER 956. April 1861).
138 Bently, ‘From Communication to Thing’ (n 98) text to fn 43–45. 147 Petition of the Manchester Guardian Society for the Protection of Trade, App 627,
139 Liverpool Police Court Liverpool Mercury (7 July 1964) 3. Appendix to the Report of the Select Committee on Public Petitions (in respect of petitions
140 Mansion House The Standard (17 July 1865) 7. presented 29 April–1 May 1861).
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 alterna-
tive shapes or configurations. Competitors were entirely free to reproduce
the once-patented ‘clutch power’ of the Lego brick in bricks with differ-
ent 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 protec-
tion 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 aes-
thetic 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 ‘exclu-
sively’ 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 percep-
tion 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 pos-
sible 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 solu-
tion” 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 character-
istics 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 dif-
ficult 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 Can-
cellation 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 tech-
nical 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.

47 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’.
382 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 pat-
ented 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 sugges-
tion 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 charac-
teristics 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 intel-
lectual property rights is actually to regulate the production and circula-
tion 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 Index 381
role of intellectual property rights, precisely because of the way in which it Terrell, Thomas, Law and Practice Relating Wadlow, Christopher 185
to Letters Patent for Inventions 143–4 Wales, William, FRS 67, 77–8
determines the interface between patent law and trade mark law in order to Thomas, Julian 347 Walker, Robert 30
withdraw a monopoly from a material artefact. Thomson, James 31 Walter, Arthur 163, 171–2
The Times 151–2, 154–6, 162–70, 172, Walter, John 162–3
177, 179, 201, 286 Walter v Lane (1900)
The Times Literary Supplement 151, 163 appeal 167–8
IV. ‘IT’S NOT REALLY A TOY, IT’S A MEDIUM’54 tobacco pipes 2, 13–14 contemporary interest 150–1, 166–7,
Tomlyn, George 19 170
The first Lego brick was closely modeled on the ‘Self-Locking Brick’ pat- Torremans, Paul 178–9 Court of Appeal hearing 167–8
Tower Hill, as chart-making centre 62–4 and European law 175–6
ented by Hilary Page in the late 1930s. At a time when wood was still the toy rights see under design/copyright House of Lords 168–70
obvious medium for children’s toys, Page was one of the first toymakers interface initial hearing 165–7
to promote the virtues of plastic as a more durable and hygienic material: trade mark enforcement practice, early injunction 166
19th cent litigation 165–71
‘Dust and germs cannot cling to the bright shiny surface, and the range of Chancery enforcement 87, 94–5, 112–13 and originality 149–50, 171–9
bright colors is most attractive and interesting to the child’.55 Some of Page’s Day and Martin see Day and Martin press correspondence/comment 166–7,
first creations were just plastic versions of familiar toys—note in particular litigation, and cases 170
injunctive relief 87–8 as principled personal conflict 151
Kiddicraft’s sets of Building Beakers (1938)56 and Pyramid Rings (1939)57— Japan Blacking 88–9, 106–7 public interest 177–8
but the ‘Self-Locking Brick’ was more thoroughly novel. One can of course key issues/conclusion 88–9, 113–15 published/unpublished distinction 172
identify precursors of the plastic brick. In the 1830s Friedrich Fröbel, the playing cards 93–4 reporters rights 171–5, 177–9
prior jurisprudence 93–101 Rosebery’s reaction 170–1
founder of the kindergarten movement, recruited local artisans to make sets trade mark use/protection see under civil and see also oral presentations and copyright;
of stackable wooden blocks that were included in his repertoire of peda- criminal law, relation between Rosebery, Lord (Archibald Philip
gogical ‘gifts’.58 From the late nineteenth century until the early part of the Treatise of Maritim Surveying Primrose)
(Mackenzie) 77 War Office Committee on Explosives 118,
twentieth century, the market for toy building blocks was dominated by Treby, George 51 123–4, 134, 142
Richter’s stone Anker Blocks, which were made of a compound of quartz, Trinity House 64, 69, 72–3, 77, 81 Waterfield, Neville 153, 155–7, 170
chalk, linseed oil and dye. These stone blocks were not designed to facilitate Trumball, William 14, 19 Watson, Lord 140, 160–1, 185
Tuckwell, Walter 226 Waugh, Andrew, QC 313, 315
open-ended construction, but were made and sold in sets, each of which Turkey, John 235 Webster, Joshua 102
allowed children to reconstruct a particular architectural form.59 In Britain, Turner, Amédée Edward 263 Webster, Sir Richard, QC 127
the period between the First and Second World Wars saw the emergence of Turner, Richard 105 Weissmann, Professor Charles 292
Turner, Thomas 114 Weston, Jonathan 102, 107
Wenebrik, Kliptiko, Bayko, and Dinky Builder building sets, composed of Tyco 174, 355–6 Wetherell, Charles 97
metal or tinplate components that could be linked or hooked together to Whittle, James 83
make architectural forms. Underwood, Samuel 106–7 Wilbraham, Edward 101, 103–4, 107
Williams, William 70
Page’s Self-Locking Bricks were different because the use of moulded Veblen, Thorstein 349 Wilson, George 83
plastic allowed bricks to be put together much more easily and so allowed Vesey Junior’s report 97–8 Windham, Justice 48
more open-ended play. Page’s UK patent of 1940 described a number of Villa-Komaroff paper 297–8 Winnington, Francis 38–9, 47
Viner’s Abridgment 94 Winterfelt (Winterfield) 66
variations on a hollow cuboid block with two rows of studs on the upper von Lenk, Baron 121 Wither, George 3
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) <articles.latimes.com/2001/jan/18/news/tt-13517>.
55 J Hughes and C Saunter (2008) ‘Hilary Fisher Page and Kiddicraft’, available at www.
hilarypagetoys.com.
56 <www.hilarypagetoys.com/Home/Products/3/4>.
57 <www.hilarypagetoys.com/Home/Products/3/30>.
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 <www.ankerstein.ch/downloads/CVA/Book-PC.pdf>.
380 Index Lego Juris A/S v OHIM (2010) 361
significance 59–61, 74–5, 77–8 High Court/Court of Appeal/House of surface. One side of each block was etched with a groove designed to hold
Steel v Moore (1789) 68–9, 78, 81–2 Lords findings 193–6
subsequent cases 68–71 as landmark case 181–2, 201–4
standard architectural elements such as windows or doors.60 Production of
summing-up/verdict 67–8 Orb football case 189–93, 195 the blocks was interrupted by the war and when plastic became available
unsuccessful action 67 Parker’s analysis 196–204 again for civilian manufacturing, the bricks were made and marketed as an
witnesses 66–7 see also passing off tort
see also chartmakers and copyright law The Spectator 31, 170
element of Kiddicraft’s range of ‘Sensible Toys’. It is not clear to what extent
(mid-18th cent) Statham, Peter 88, 102–4, 108 Page appreciated the real potential of the plastic brick, and, arguably, it was
Schönbein, Christian Friedrich 120 Stationers v Seymour (1677) only fully realised when the invention was taken up and perfected by Lego.
Scott, John 96 background 34–8
Scott, Joseph 103–4 conclusions from judgment 49–54
In the 1930s Lego was known as a maker of conventional wooden toys
Scroggs, Justice 48–50 Court of Common Pleas 40–50 including the popular Lego Duck. There are differing accounts of how the
Scrutton, Thomas Edward, The Law of importance 23–4 company came to copy Page’s patented bricks. One plausible story is that
Copyright 150–1, 157, 166–7, misconceptions about 24–5
171, 173 post-judgment settlement 52–3
Ole Kirk Christiansen shared Page’s interest in plastic, and that when he
sea charts see chartmakers and copyright law Privy Council 27, 38–40, 50, 52–3 ordered an injection moulding machine from the UK, the supplier sent some
(mid-18th cent) 1669 patent 35–8, 54–8 Annex samples of the Kiddicraft block together with drawings which have since
The Seaman’s Complete Daily Assistant Statute of Monopolies (1624) 38, 46
(Moore) 64 see also copyright law origins
been lost.61 In any case, the first Lego bricks had the same form and pro-
Second Industrial Revolution 117 Statute of Monopolies (1624) see under portions, the shape and the same arrangement of studs, and were inscribed
Segar, Elzie Crisler 211–12, 214, 225 Mansell v Bunger (1626); Stationers with the same slot to accommodate architectural elements such as windows
Seller, John 71–2 v Seymour (1677)
Seymour, Captain John 34–5 Steel, David 61–2, 68–9, 77, 81, 83
or door frames. Lego called this type its Automatic Binding Brick. It is not
1669 patent 35–8, 54–8 Annex Steel v Moore (1789) see under Sayer quite true to say that these were ‘a stud-for-plastic-stud copy’62 of Page’s
post-judgment settlement 52–3 v Moore (1785) blocks. According to evidence given by the engineer who made the original
see also Stationers v Seymour (1677) Stephen, James Fitzjames 159, 335
Seymour family 35 Stephenson, Captain John 67–8, 70, 73,
moulds, the Lego version was designed with sharper edges and corners, and
Sharp, Professor Phillip 292 77–81 the studs on the upper surface were flattened somewhat, so as to ‘make the
Shaw, Archie 349, 351 Steyn, Lord 331–2 end result look more like a Danish brick’; or, quite simply, ‘a good-looking
Sherman, Brad 333–4 Streater, John 44–5
Sherwin, George 64 subject matter eligibility in patent law
brick’.63 In any case, the Automatic Binding Brick was not a commercial
Shillock, Thomas 104 artificiality approach 245 success and, in response to complaints from its customers in Germany,64
Simonds, Mr Justice 222, 225 dominant approach 244–5 Lego set about designing a new version of the brick. In 1958 it produced the
Slee & Harris’s Application (1966) key issues/conclusion 232–3, 250–1
Application Number 19463 231, 241–3 law/science/technology 236
design that fully realised the potential of the brick as a medium of play.65
Application Number 19464 231–2, multi-step process 232
243–4 pre-European Convention 233
computer program prioritisation 245–7 software issues 233–41 60 UK patent 633055, Improvements in Toy Building Blocks, 25 June 1949.
general purpose programmed approaches to information 61 See J Hughes and C Saunter, ‘History’ at <www.hilarypagetoys.com/Home/History>. See also
computer 247–50 technology 236–7
J Phillips, ‘An empire built of bricks: a brief appraisal of Lego’ (1987) 12 EIPR 363.
hardware/software company emergence of software product 234 62 D Hunter and G Lastowka ‘BarbieTM’ (2016) 18 Tulane Journal of Technology and
approaches 248 hardware manufacturers and 237–8,
Intellectual Property 133–60.
key issues/conclusion 232–3, 250–1 240–1 63 See Interlego v Tyco [1989] 1 AC 217, 248, and the observations reported in Hughes
patent office examination 241–4 heterogeneous technology 235
and Saunter, ‘History’ (n 61): ‘[W]ith the cooperation of a tooling works in Copenhagen, we
suplex method 241–2 legal problems 234–6
modified the design of the brick, and moulds were made. The modifications in relation to the
time dimension 249–50 negative definitions 235
Kiddicraft bricks included straightening round corners and converting inches to cm and mm,
see also subject matter eligibility in patent pre-modern regime 233–4
which altered the size of the brick by approx. 0.1 mm in relation to the Kiddicraft brick. The
law software manufacturers’
studs on the bricks were also flattened on top’.
Slee, Patrick 231 approach 239–41 64 See H Gardner, ‘LEGO: The toy of the twentieth century—the case of the simple building
Slee, Samuel 102–4 see also Slee & Harris’s Application
blocks’ in P Harris and F MacDonald (eds), European Business and Marketing (London, Sage,
Slingsby, Sir William 7–8 (1966)
2004) 216–28, 222.
Small, John 24 Swan, Sir Kenneth 118, 226 65 Much depended on the success of the redesigned plastic brick; in 1960, the warehouse
Sobrero, Ascanio 120 Sykes, Thomas 112
housing wooden toys burned down, and Gotfred Kirk Kristiansen around the brick. In the
software issues see under subject matter syndication see design/copyright interface,
words of his son: ‘Gotfred Kirk Kristiansen bet the whole farm on one-third of his business,
eligibility in patent law newspaper syndication
plastic toys, and not just any toy—the brick. [He] felt he had stumbled onto something unique
AG Spalding & Bros 189–93
with this brick. You can build anything out it. It doesn’t fall apart when you throw it around.
Spalding v Gamage (1915) Taylor, Richard Stevens 101
And you can add to this system forever’ (cited in JW Rivkin, SH Thomke and D Beyersdorfer,
as clarification 198–203 Taylor, Robert 31
‘Lego’ Harvard Business School Case 613-004, July 2012, 3.
The claims of LEGO’s European and North American patents relating deceit as basis 182–3 R v Johnstone (2003)
development in 19th cent 182–9 Court of Appeal 323–4
to the 1958 brick highlighted the enhanced ‘clutch power’ afforded by the equity/common law 183 Crown Court proceedings 322–3
new design. The specification of the UK patent, which was modelled on the fraud requirement 183, 187–8 dishonesty analogous to theft 326–7
Danish patent, described ‘an improved coupling means for holding build- misrepresentation 185–7, 196–9 facts/background 321–2
plaintiff’s goodwill 181–2, 188–9, House of Lords 324–6
ing blocks together in any desired relative position, thus providing for a 197–200 human rights issues 319
large variety of combinations of the blocks for making toy structures of see also Spalding v Gamage (1915) key issues/conclusion 319–21, 343–4
many different kinds and shapes’.66 The crucial innovation here consisted patent claim, inventor’s responsibility public interest concerns 330–1
Aristotelian attitudes 127 regulatory offences 327–8, 330
in the arrangement of complementary studs and cylindrical recesses; adoles- ballistite 119, 123–4, 129–33, 138, 140 strict/fault liability distinction 329–30
cent males of all ages will have an almost haptic sense of the way in which Britain as patent dispute venue 126 theft analogy for IP crime 331–2
the studs on the upper surface of a brick snap into the spaces around the canons of construction 133–9, 136–7, trade mark use 317–19, 343–4
144 see also civil and criminal law, relation
set of cylindrical recesses that ran down the underside of the bricks. The cordite 118, 124–5, 129–30, 132–3 between
‘friction fit’67 of this new iteration of the brick was very much superior and Europeanisation of patent Rahmatian, Andreas 320, 326, 330, 332
to that of the original Kiddicraft block or its derivative, Lego’s Automatic law 145–6 Richards, Richard 97
figures of the invention 128–9 Robson, William 8
Binding Brick.68 The superior ‘clutch power’ of the new bricks was not just importance of science 117–19 Romer, Mr Justice Robert 119, 131–2,
an effect of shape or configuration, but it depended on the materials used. inventors’ identities 119–20 135, 137, 143–4, 167, 202
The full potential of the patented stud and tube mechanism was not fully legal/scientific authority 135–8 career 126
modernisation of patent Romilly, Sir Samuel 97, 100
achieved until 1963, when Lego began to manufacture its bricks with ABS construction 117, 143–4 Rookes, Thomas 40
plastic rather than cellulose acetate. Given close control over the injection nitro-cellulose (gun cotton) 120–3, 130 Roper, Abel 44–5
moulding process, the new material allowed Lego to machine the bricks to nitro-glycerine 118–23, 125, 129–30, Rose, Mark 23–4
141 Rosebery, Lord (Archibald Philip Primrose)
much finer tolerances.69 scope of claim 145–6 Appreciation and Addresses (Geake)
On the basis of this abridged history it might be said that the Lego brick War Office Committee on (Bodley Head 1899) 153–4, 165–6
is actually a perfect illustration of the logic of manufacture and marketing Explosives 118, 123–4 attitude to collected speeches’
see also Nobel’s Explosives Company publication 152–7, 168, 170–1
that informs modern intellectual property jurisprudence. The use of ABS Limited, v Anderson (1894) as author of speeches 150, 161, 171–2
plastic allowed bricks to be moulded to the exacting tolerances for which patent law career and speeches 151
Lego is still renowned and it made them more durable and more colourfast biotechnology see biotechnology and Speeches of Lord Rosebery, 1874–1896
patent law (Beeman, 1896) 152
(a not insignificant consideration given the longevity of many Lego collec- glass patents see glass patents see also oral presentations and copyright;
tions). The functionality that is described in the various phases of Lego’s subject matter eligibility in see subject Walter v Lane (1900)
action against the OHIM works precisely and reliably because the basic matter eligibility in patent law Rothschild, Hannah 151
Payne, Thomas 105, 108 Royal Commission on Copyright
architecture of studs and recesses is engineered into the bricks by processes Pedley, Mary 76 1878 159, 162
of industrial production that are accurate and consistent. And these (embed- Pemberton, Serjeant Francis 43–5, 47–9 Russell, Conrad 5
ded) properties support the image of ‘quality’ retailed by Lego’s marketers Percival, Thomas 8 Russell, Sir Charles 127
Pila, Justine 172, 178 Russell-Clarke, Alan Daubeny 226, 228
and advertisers. Plumer, Thomas, V-C 100–1, 103–4
At the same time, however, these properties have allowed the Lego brick Popeye, case see King Features Syndicate, St James’s Gazette 163
to become something more than or other than a manufactured product that Inc and Betts v O & M Kleeman Ltd saltpetre 2
(1940) Sayer, Robert 61–2, 64, 66–9, 73–4,
is simply retailed to the consumer. In her account of Lego as a medium for Porteous, James 68, 73, 78, 81 77–8, 83
‘facilitated play’, Maaike Lauwaert suggests that the properties of the 1958 The Practical Navigator and Seaman’s New Sayer v Moore (1785)
Daily Assistant (Moore) 63, 73 background 61–3
Prescott, Peter, QC 314–15 citations 84
Primrose, Archibald Philip see Rosebery, defendant 63–4
Lord hearing 66
66 Privy Council see under Mansell v Bunger Heather v Moore (1798) 69–71,
UK Patent 866,557, Improvements relating to Toy Building Sets, 26 April 1961, 1.
67 (1626); Stationers v Seymour (1677) 79–81, 83
ibid; specification, at 2. All the relevant patents are collected at brickfetish.com/patents/
protection against copying, chartmakers and litigation 63–8, 78
patent.html.
68 ibid; see drawings at p 50 of the patent specification: brickfetish.com/patents/uk/gb_ copyright law (mid-18th cent) 62–4, Mansfield’s summing up- 67–8
67–8, 70–1, 79–82 plaintiff 64, 66
866557_5.html.
69 Gardner, ‘LEGO: The toy of the twentieth century’ (n 64) 217. Prynne, William 50–1 publicity of proceedings 81–2
Statute of Monopolies (1624), Nobel’s Explosives Company Limited, brick allowed it to transcend the vocation of the original Kiddicraft/Lego
contravention/importance 4–7, 13–14, v Anderson (1894) 117
17, 19, 38, 46 appeal court 133–9
brick:
see also glass patents; Mansell v Bunger Aristotelian attitude to witnesses 127 The design characteristics of the new stud-and-tube interlocking mechanism facili-
(1626); Stationers v Seymour (1677) basic dispute 118
Montgomery, Philip, Earl of 8 crucial scientific distinction 118–19 tated a move away from Lego as an architectural toy. Their stability and clutch
Moore cases 61–71, 76–7, 81–3 elements of case 126–30 power facilitated more stable and more complex constructions and broadened
Moore, John Hamilton 61–2, history of invention 129–30 both design and building options. This increase in possible and facilitated LEGO
68, 83 House of Lords 139–42 play practices was furthered by the LEGO System i Leg or LEGO System of Play
decline of business 82 impact/significance 142–7
education and teaching career 63 judgments 119
introduced in 1955. The play system originally consisted of 28 sets and 8 vehicles
first chart 65 lower court 130–3 plus some supplementary elements. The idea behind the system of play was that
partners 64 and patent construction, not only the individual bricks were interchangeable but the sets as well.70
publishing career 63–4 modernisation 117, 143–4
on quality of charts 73–4 political scandal 118 Ultimately the brick facilitates more than just ‘play’. The Lego brick is such
responses to enemies 69–70 press discussion 133, 142 a common metaphor for linguistic connectivity,71 or for (say) molecular
Sayer v Moore (1785) 63–8 professional use of case 144–5
More, Sir Thomas 1 real defendants 118
binding in polymer sciences or genomics, because those who use it ignore
Moritz & Chambers 220–1 scientific/technical complexity 127–8 the details of the patented coupling mechanism. But the metaphor quite
Motto (Wither) 3 textbook/treatise references 143–4 nicely ‘reacts back’ on the material brick, highlighting the sense in which it
Moulton, John Fletcher, QC 126–7, 131, see also patent claim, inventor’s
133–42 responsibility
has become a language or medium: that is, a set of materials from which dif-
Mount and Page 61 Norie, John 70, 83 ferent users can invent and fabricate, make art,72 engage in self-description
Mount, Richard 61 North, Chief Justice 24, 47–50 and generally participate in cultural commentary. Lego bricks do indeed
Murray, John 166–7, 177 North, Douglass Cecil 6
Murray, Noreen 293 North, Justice 163, 165–6
have properties engineered into them, but they are engineered as infra-
Murray, Professor Sir Kenneth 292–3, novelty rights see under design/copyright structure for modes of creation and communication that transcend their
296–9, 305–7, 309 interface infrastructure.
Murray, William 30
Ong, Burton 178–9
Lauwaert notes that there is more to the brick than its innate compe-
Nature journal 296 oral presentations and copyright tences. In this way it is just one element of a composite or network that
The New Practical Navigator lectures’ protection 158–61 frames or ‘facilitates’ play: ‘The structure of a toy, its technological specifi-
(Moore) 69, 81 legal position 157–61
newspaper newspaper copyright 150, 162–5,
cations, its materiality, the rules and manuals, examples and guidelines, its
copyright see under oral presentations and 179–80 ‘reputation’ and connotations create a network of facilitated play. Both the
copyright play’s public performance 258 material and immaterial aspects of a toy or computer game create a window
syndication see under design/copyright Rosebery’s career and speeches see
interface Rosebery, Lord (Archibald Philip
of opportunities within whose boundaries the player can act’.73 What the
Newton, Thomas 30 Primrose) player sees, touches, plays with and experiences is not just a plastic object
Nicholls, Lord 271–2, 318, 324–5, 328, third parties 158 and a set of embedded functionalities, nor even a plastic object with a super-
330–1 unpublished lectures 157–8
nitro-cellulose (gun cotton) see under patent see also chartmakers and copyright law
added sign that conveys some reassuring or satisfying information about its
claim, inventor’s responsibility (mid-18th cent); copyright law origins; provenance. Rather, the product is the composite of materials, materialised
nitro-glycerine see under patent claim, design/copyright interface; Walter
inventor’s responsibility v Lane (1900)
Nobel, Alfred Orb football case see under Spalding
ballistite 123–4 v Gamage (1915) 70 M Lauwaert, The Place of Play: Toys and Digital Cultures (Amsterdam, Amsterdam Uni-
career 119
versity Press 2014) at 56–57.
disagreement with Abel and Page, Hilary 360–1 71 In a legal context, one might think of Otto-Khan Freund’s characterisation of law in terms
Dewar 125 Page, Thomas 61–2
of a child’s set of bricks that can be composed and recomposed by the parties to a legal action,
nitro-glycerine 118–23, 125, 129–30, Paramount Pictures 215, 220
this being a metaphorical expression of Kelsen’s sense of law’s instrumentality (see ‘Intro-
141 Parker, Lord 181–2, 189, 194–204
duction’ to K Renner, The Institutions of Private Law and Their Social Functions (London,
patent disputes in Britain 126 passing off case see under trade mark
Routledge & Kegan Paul, 1949).
patents 118–19 enforcement practice, early 19th cent 72 Note Lego’s embarrassment over its handling of Ai Wei Wei’s request for bricks as materi-
soluble/insoluble nitro-cellulose/collodian passing off tort
als for an artwork. See M Tan, ‘Lego: refusing to sell bricks to Chinese artist Ai Weiwei was a
cotton 130, 139–41 basic principle 181
mistake’ The Guardian (28 April 2016), at <www.theguardian.com/artanddesign/2016/apr/28/
Nobel Explosives factory 127 common law trade marks 183–5, 198,
lego-sell-bricks-chinese-artist-ai-weiwei-mistake>.
Nobel’s Explosives Company, Ltd 121 200–1 73 M Lauwaert, The Place of Play (n 70) 12–13.
competences, cultural idioms and brand charisma that make up the network key issues/conclusion 206–7, 226–30 Lilly, William 39
plaintiffs/defendants’ identity 207–14 Lily, William 26
of play practices. In practice, there is no such thing as functionality divided preceding events 220–1 Linnaeus, Carl 75
from signification; what the brick does, or what one can do with it, is an Second World War impact 225–6 Lloyd, Edward 99, 342
effect of how users, individually or collaboratively, recombine the elements significance 205–6 Longitude, Board of 72–3
three-pronged defence 221–2 Lye, George 100
that make up the medium of the ‘game’. see also design/copyright interface
Over the past three decades or so, it has become even more difficult to Kingsman, Professor Alan 315 Mackenzie, Murdoch 73, 77
identify the ‘brick’ with the plastic artefact. Consider the example of Lego’s Kipling, Rudyard 163 Maddock, Henry 95
Kirby, Ralph Smith 95–9, 101, 111 Mansell, Elizabeth 11
highly successful Mindstorms ‘game’. The components of the Mindstorms Kirby’s Original Wonderful Museum, or Mansell, Sir Robert 4, 7–13, 15–17
range are designed to allow users to invent and build robotic devices. The Magazine of Curiosities 95–6, 98 career 8–9
core element of each set is a ‘programmable brick’, essentially a central pro- O & M Kleeman Ltd 211, 215, 220 glass-making patents 8–13, 18
Mansell v Bunger (1626) 13–17
cessing unit, which can be programmed by means of dedicated software to Laddie, Sir Hugh 177, 205–6, 313–15 Attorney-General v Rosse (1624) 13–14
execute commands or respond to specified stimuli. The ‘body’ of the robot, Lane, John 151–7, 165–8, 171 matters of state in play 16
and the motors and sensors which enable it to act in the world, are built Larkin, George 40–1, 43 Privy Council
Laurie, Robert 83 agreement that patent should
around the programmable brick in the traditional Lego way, by fitting studs Lauwaert, Maaike 362–3 continue 15–16
and recesses together. The software used by the brick is an evolution of the Law and Robinson (booksellers) 64 discussion of report 15
LEGO/Logo language that Lego developed in 1967 in partnership with the Lazenby, Elizabeth 112 effect of Civil War 18–19
Lazenby, Henry 112 open warrant award 16–17
MIT Media Lab.74 The basic ambition of LEGO/Logo language was that Le Bel, Justice 355, 359, 365 Statute of Monopolies (1624)
software should have the same user-friendly modular feel as the classic Lego Leach, Sir John, KC 107–8 contravention/importance 4–7, 13–14,
brick,75 and the same analogy is applied to Mindstorms: Lego Juris v OHIM (2010) 346 17, 19
anachronistic premises 370–1 see also glass patents; monopoly/
These graphical programming languages use the same fundamental principles of anti-monopoly view of tribunals 357–60 monopolies
modularity which are already familiar to the builder of LEGO sets. The Mind- CJEU decision 346–7 Mansfield, Lord 29, 32–3, 59–60, 66–8,
interchangeability argument 355–6 80–1, 85
storms user builds software programs for her robot just as she has built her physi- as landmark case 346 Manton, Joseph 112
cal robot: brick by brick.76 Lego brick marine charts see chartmakers and copyright
antecedents 360–1 law (mid-18th cent)
On one hand, the material connectivity of the plastic brick inspires the use Automatic Binding Brick 361 Martin, Benjamin 88–9
of the syntax of the programming language and the aesthetics of its user consumers’ experience 369–70 Martin, Peter 106–9
interface, in such a way as to make largely invisible the socio-technical com- core priorities 366 Martin, Thomas 105, 108
facilitated play 363, 367–8 Maynard, Serjeant John 38–9
plexity of software. In return, this image of an open-ended programming as IP landmark 347–8 Medeva plc 295, 300–1
language with pixelated elements turns the brick into an icon of ‘modular- marketing/manufacturing logic 362–3 Mefflyn, Thomas 8
ity’, a rhetorical figure that has enjoyed particular success in IP discourse in medial character 365 Mega Brands/Mega Bloks 353–4, 365
as metaphor 363 Megarry, Judge Sir Robert 253–85 passim
recent times. Mindstorms range 364 career 285–6
By 2010, when the CJEU decided Lego v OHIM, the brick had already modularity 366–7, 370 Meinhardt, Peter 145
turned into something much more complex than a classic industrial artefact. and organisational culture of Mickey Mouse, merchandising 211, 217,
company 368–9 224, 228
participation as new product 366–71 Millar, Andrew 31
patented bricks 361–2 Milton, John 30
play facilitator 363–4 misrepresentation see under passing off tort
74 Logo was based on the Lego-like principles of ‘interactivity, modularity, extensibility, quality of play 366–7 Mitchell, Judge 322–3
Lego interpretation of functionality Moberly Bell, Charles 151–2, 155–7,
flexibility of data types’, and it was accessible through an interface that demanded less sophis-
doctrine 356–7 163–8, 170, 179–80
tication of the user. See generally The Logo Foundation, ‘The Logo programing language’,
specific shape argument 354–5 Modern Law Review 320, 326, 330, 332
available at <el.media.mit.edu/logo-foundation/logo>.
75 ‘Just as students can build increasingly complex machines by snapping together LEGO trade mark registration rejection 353–4 monopoly/monopolies
see also functionality doctrine Civil War and aftermath 19–20
bricks, they can build increasingly complex computer programs by “snapping together” Logo
Leigh, John 14 common law and royal prerogative 6–7
commands’ (M Resnick and S Ocko, ‘LEGO/Logo: Learning Through and About Design’,
Levy, Stanley 145 first use of word 1
available at: <llk.media.mit.edu/papers/ll.html>).
76 C Hanson, ‘Brick by brick: Mindstorms and gaming’, in MJP Wolf (ed), Lego Studies. Liberal Magazine 152 letters patent 1–2
licenses/licensing see under design/copyright lucrativeness for Stuarts 18–19
Examining the Building Blocks of a Transmedial Phenomenon (London, Taylor & Francis,
interface reviling/criticism of 2–4
2014) 153–65, 159.
Farrar, Canon 159 Heather v Moore (1798) see under Sayer In one sense, of course, the Court’s analysis hit the mark. Lego’s attempt to
Farrer, Thomas Henry 159 v Moore (1785)
Fell, Bishop John 52 Heather, William 61–2, 83
stem the incoming tide of interchangeable bricks was an attempt to defend
Finch, Heneage 36–9 v Moore 69–71 its monopoly on the brick as an industrial manufacture. The company’s
Fleischer Studios 215 Hill, Thomas 93 copyright and trade mark actions were initiated in defence of a portfolio of
Foote, Philip 13–14 Hjarvard, Stig 366
forgery paradigm see under civil and Hobhouse, Lord Justice 299–300, 307
‘old IP’, and they were met with an equally ‘old’ jurisprudential analysis.
criminal law, relation between Hoffmann, Lord, opinion see under Because both sides argued the case on the premise that the brick was just
Froude, James 159 Biogen Inc v Medeva plc (1996) an industrial manufacture, it served as an occasion for the Court to affirm
functionality doctrine Hogg, Alexander 95–7
goods dominant view 348–53 Hogg v Kirby see under Day and Martin
a doctrine that entrenches trade mark law in an anachronistic vision of
marketing/advertising functions 350–1 litigation market artefacts. Perhaps there is some acknowledgment of the medial
metallurgical understanding 348, 353, Holroyd, George 70 character of the brick in Justice Le Bel’s celebration of an era in which a
367 Howard, Sir Thomas 8
patent and trade mark law 345–6 Huddart, Joseph 73
diversity of bricks would mingle in the playrooms of Canadian children.
service-dominant view 352–3 Hudson, JV 231–2, 242–4, 247 Interchangeability is construed almost as though it were akin to a vital
signification/functionality distinction 346 Hume, David 5, 20 technical standard. Meanwhile, the permutations on the division between
Supreme Court of Canada decision Hunter, Dan 347
345–6, 354–5, 358, 365 Hyatt, John Wesley 120, 123
shape as an index to function and shape as a means of signification, as
see also Lego Juris v OHIM (2010) two aspects of a finished artefact, return us to the goods-dominant view
Imray, James 82–3 of artefacts.
Gadbury, John 22, 25, 39–45, 49, 53 Imray Laurie Norie & Wilson Ltd 83
AW Gamage Ltd 189–95 inventor’s responsibility see patent claim,
The medial character of the brick is more evident in the strategy of prod-
Garrow, William 70 inventor’s responsibility uct differentiation that Lego had begun to adopt even before the expiry of its
Geake, Charles 151–7, 166–7, 170 Ipswich Journal 133 patents. From the 1950s onwards, Lego bricks were often sold in themati-
genetic engineering see biotechnology, and
patent law James I 2, 4–5, 8–9, 17, 22, 26
cally framed sets or in scale model sets (notably of cars, aeroplanes, and other
Gibson, Milner, QC 333–4, 337, 340 James, Lord 168–9, 177 vehicles) marketed as collectible pieces. When competitors started making
Ginsburg, Jane 176–8 Japan Blacking see under trade mark interchangeable bricks this strategy of uploading cultural or thematic con-
glass patents enforcement practice, early 19th cent
coal furnace use 7–13 Japanese toys see under design/copyright
tent into the medium of the brick became especially pertinent. When Mattel,
early patents 7–8 interface the owner of rights to Barbie, acquired Mega Brands in 2014, its position
Mansell’s patents 8–13, 18 Jefferys, Thomas 61–2, 64, 66, 73 in the market in construction toys countered the incursion that Lego had
see also Mansell v Bunger (1626); Johnson, Samuel 78
monopoly/monopolies Johnston Committee 228
made into the ‘Barbie market’ with its Lego Friends line of products.77
Godfrey, Eleanor 7 Johnston, Thomas 133, 139 Although both Lego and Mega Bloks emphasise the educational value of
Grand Remonstrance 18 Johnstone, Robert Alexander 317–18, bricks, the contest for market dominance is increasingly played out as a con-
Granger’s New Wonderful Museum and 321–5
Extraordinary Magazine 95–6 Jones, William 37
test between thematic brick sets, with Lego’s Star Wars and Ninjago themes
Gregory Committee 227–8 on one side, and Mega Brands’ Despicable Me, American Girl and Thomas
gun cotton 120–2 Kay, Lord Justice 135, 138, 160 the Tank Engine sets on the other. In this way, the medium of the brick has
Kenyon, Lord 69–71, 78, 80
Hale, Baroness Brenda Marjorie 272 Kequick, Thomas 40–1, 43
become a medium for the articulation of contents that are derived from
Hale, Chief Justice 45 Kerly, Duncan 114, 184, 187, 342 licensing arrangements with media entertainment companies. The develop-
Haley, Jim 313 King Features Syndicate Inc 207–9, 211, ment of these transmedial connections draws on the ability of television
Hallam, Henry 5 222, 226, 229
Halsbury, Lord 160–1, 168–9, 173, 175, King Features Syndicate, Inc and Betts
and film, ‘to characterize and narrativise fictional figures’,78 and it brings
187, 196, 198 v O & M Kleeman Ltd (1940) with it the evolution of new ways of structuring and protecting intellectual
Handler, Phil 334 appeal court 223–4 property portfolios.
Harris, Pauline 231 calls to reform law 226–7
Harris, Tim 6 complex circumstances 219–26
Harrison, John 73 controversial elements 212
Hart, Anthony 100, 104, 107–8 design/copyright interface,
Harvard Bureau of Business Research 349 ambiguities 227–9
Heald, Lionel, QC 228 exploitation of case 211, 215–16 77 See B Solomon ‘Jealous Barbie: Mattel comes after Lego with Mega Bloks purchase’
Hearst, William Randolph 208, House of Lords 224–5
Forbes.com, 28 February 2014, available at <www.forbes.com/sites/briansolomon/2014/02/28/
213–14 intangible property 224
jealous-barbie-mattel-comes-after-lego-with-mega-bloks-purchase/#5904f3c25114>.
Heath, Robert 15 international copyright 229–30 78 S Hjarvard, The Mediatization of Culture and Society (London, Routledge, 2013) 8.
V. ‘PARTICIPATION IS THE NEW BRAND’79 Stationers’ Company Charter 1684 51–2 leading case 113–14
see also chartmakers and copyright law litigation 105–9
(mid-18th cent); design/copyright plaintiffs 105–7
In 2004, as a key part of the exercise of re-righting the company after interface; oral presentations and see also trade mark enforcement practice,
a period of dramatic financial decline, the new CEO of the Lego Group copyright; Stationers v Seymour (1677) early 19th cent
decided to organise the company around four ‘core priorities’: ‘(1) the cordite see under patent claim, inventor’s Day, William Charles 115
responsibility Dean’s Rag Co 217
LEGO brand, (2) the LEGO brick, (3) our unique system of play, and (4) Cordite Case see Nobel’s Explosives Delarochette (engraver) 66
the loyal LEGO community’.80 The company and its branding consultants Company Limited, v Anderson (1894) design/copyright interface
had already embarked on a reconstructive archaeology of the brand, draw- Cottenham, Lord 111, 114, 183 cartoon characters 215–17
Coventry, Sir Thomas 13–15 comic strips 209–12, 215
ing on ‘conversations with the family owner (the founder’s grandson), archi- Cranmer, Thomas 42 Japanese toys 220–1, 226
val studies of LEGO’s previous value statements, and comparisons with the Cripps, Charles Alfred, QC 140–1 licenses/licensing 216–19, 221
core values of competitors’.81 From these materials the company forged for Croft v Day see under Day and Martin newspaper syndication 207–12
litigation novelty/toy rights 205–6, 212–21
itself an ethical ‘tradition’ that could be leveraged in its present and future Croke’s (Sir George) Reports 44 three-dimensional form 216
self-descriptions. The values elicited from the past were used to make a see also chartmakers and copyright law
brand ethos premised on a sense of how children are supposed (still) to Daily Mirror 216, 271 (mid-18th cent); copyright law origins;
The Daily News 170 King Features Syndicate, Inc and Betts
experience LEGO play. As Hjarvard puts it: ‘the core of the Lego image Davey, Lord 168, 172, 179, 186–7 v O & M Kleeman Ltd (1940); oral
was reinterpreted as a value inherent in Lego bricks, but applicable to other Day, Charles 87–9, 91–3, 102, 106–9, 115 presentations and copyright
kinds of toys and types of play’; namely, the value of ‘quality of play’.82 Day, James 105–6, 108 Dewar, James
Day, John 105–7, 109 career 118–19
‘Quality of play’ draws together diverse connotations of modularity: as Day and Martin (firm) 88–93 patent 118, 125–6, 129, 142
the attribute that turns material and immaterial components into media by address 91–2, 101, 106 War Office Committee on
rendering them as ‘Lego-like’ blocks; as the achievement of a mode of sec- competitiveness 90–1 Explosives 123–4
labels 91, 101, 106–7, 109 Dicey, Cluer 64
ond-order engineering that recognises that it is making parts and protocols legal proceedings 92–3, 101–16 Diderot, Denis 75, 85
whose meaning and functionality are ascribed by users (Lego bricks are engi- name 88–9, 91–2, 101, 108, 113, Diplock, Lord 146, 186, 198–200,
neered to be ‘engineered’); as the ethical principle that components should 115–16 203–4, 302
success of business 91 Disney Organisation 211, 216, 226, 228–9
not only serve as resources for individual creativity, but also as resources Day and Martin litigation DNA recombination see under
that facilitate collaborative creativity. Regarding this last point, just as the Blanchard v Hill 93–5, 97, 101–2 biotechnology and patent law
rendering of material and medial ‘substances’ as granular blocks enables the Croft v Day 115–16 Drewry, Charles 99, 114
further suits 109, 112 Duckett, Arthur 2
user to mould them much as the Renaissance artist ‘formed’ matter, it also Hogg v Kirby 95–101 Dupré, August 142
renders them as matter to be taken up and reworked by successive collabo- as passing off case 99–100 War Office Committee on
rators or whose different parts can be worked on by different collaborators, implications of 111–13 Explosives 123–4
litigants following suit 110–11
in proportion to the competences or availability of each. The statement that other cases 114–15 Eden, Robert 113
‘participation is the new brand’ is ironic given how long it took the Lego prior jurisprudence 93–101 Edinburgh University 292–3
company to drop its defensive stance in relation to its intellectual property see also trade mark enforcement practice, Edney, Matthew 75–7, 82
early 19th cent Eldon, Lord 88, 95–101, 104, 108–9, 111,
and embrace the open-source model that was forced upon it by the hacking Day and Martin v Slee and Statham 113, 115, 158, 160–1
of the original Mindstorms software. As one LEGO executive put it: ‘We see under trade mark enforcement Elizabeth I 2–4
came to understand that limiting creativity is the opposite of our mission. practice, early 19th cent Eltgroth, George 249
Day and Martin v Slee and Statham English Atlas (Sellers) 61, 72
Our goal is to foster inquiry and ingenuity’.83 (1813) 101–5 Enlightenment epistemology see under
Day and Martin v Thomas Day, John Day chartmakers and copyright law
and Peter Martin see under trade mark (mid-18th cent)
79 From a presentation by Lego executive, Stiven Kerestegian, ‘Open innovation. Towards
enforcement practice, early 19th cent Ensmenger, Nathan 235, 239
an organic community of LEGO users’, available at www.kea.dk/fileadmin/user_upload/ Day, Thomas 105–8 Erskine, Thomas 70, 79–80, 84
Samarbejde/Business_forum/Innovation/LEGO_Stiven.pdf. Day v Day, Day and Martin Esher, Lord 135–8, 140, 143–4
80 Cited in Rivkin, Thomke and Beyersdorfer ‘Lego’ (n 65) 7.
(1816) 87, 111
81 MJ Hatch and M Schultz, ‘The cycles of corporate branding: The case of the LEGO
business background 88–93 Faden, William 61–2, 66
company’ (2003) 46 California Management Review 1, 6–26, 13. defendants 107 fair dealing doctrine see under chartmakers
82 S Hjarvard, The Mediatization of Culture and Society (n 78).
Eldon’s judgment 108–9 and copyright law (mid-18th cent)
83 M Nipper, quoted in F Lindz, ‘How Lego Is Constructing the Next Generation of Engineers’
injunction argument 107–8 Farmer, Lindsey 339
Smithsonian (May 2013) <www.smithsonianmag.com/innovation/how-lego-is-constructing-
the-next-generation-of-engineers-37671528/?no-ist=&page=3>.
Book of Common Prayer 23, 26, 31, 42, Coco v AN Clark (Engineers) Ltd (1969) Perhaps then, the brick has become the brand. Modularity, as figured in the
47, 53 artistic and government information,
Bowen, Emmanuel 73 citations 265–8
brick, has become a byword for the capacity of Lego to articulate a diversity
Bowles, Carington 64 Australia, citations 277–9 of user experiences around a distinctive ethos. The brand is so charismatic
Brampton, Lord 168–9, 177 breach of confidence 254–5, 284–5 because the values of ‘quality of play’ resonate so closely with a broader cul-
Buckingham, Duke of 13, 16 Canada, Citations 279–81
Bunger, Peter, John and ‘Isaac’ 7–8, 10–11 citations 257–62
tural movement that IP scholars have characterised in terms of ‘remix cul-
Mansell v Bunger (1626) 13–17 commercial information 268–70 ture’, or ‘open source’ or ‘distributed’ creativity.84 But the story of the Lego
Burghley, Lord 2, 7 England and Wales, decisions 262–5 brick does not rest with its transfiguration into a brand emblem, or with a
Buxton, Sidney 179–80 European law 284
facts of dispute 254
shift from a ‘metallurgical’ to a ‘semiurgical’ sense of artefacts. If brands
Caird, Professor Edward 160–1 freedom of information (FOI) are a matter of ‘participation’, then we need to return to the notion that
calendars 23–5, 42–50, 53–4 cases 275–7 artefacts are collaboratively constituted. In their account of the ‘economy
Campbell, Admiral, FRS 67, 78 injunctive relief 256, 262
Cardwell, Edward 122 interlocutory injunction 253–4
of qualities’, Callon, Medeal and Rabeirosa propose that one should con-
Carré, Jean 7 Ireland, citations 276–7 strue market artefacts not primarily as ‘goods’, which appear in the market
cartoon characters see under design/ key issues/conclusion 253–4, 284–6 with characteristics that are stable enough for comparisons to be made and
copyright interface Megarry, Sir Robert 253–85 passim
Chambers of Commerce 337–8 New Zealand, citations 282–3
prices attributed, but as products, in the etymological sense of producere,
Chambers, Ephraim 75 personal information decisions 270–5 meaning ‘to bring forward’. In these terms, a product is ‘something that
Cyclopaedia 78 sources 286–8 annex consists of a sequence of actions, a series of operations that transform it,
Chandler, John 68–9, 77, 81–2 spring-board doctrine 256–7
Charles I 17–20, 35 three-step test for breach 255–6, 285
move it and cause it to change hands, to cross a series of metamorpho-
Charles II 34–6, 42, 51, 72, 77 Coke, Clement 11 ses that end up putting it into a form judged useful by an economic agent
Charles, Prince (later Charles I) 5–7 Coke, Sir Edward 6, 11–13 who pays for it’.85 As it makes its way through these metamorphoses, the
chartmakers and copyright law Coke, Sir John 15
(mid-18th cent) Coleman Ltd, Cecil 220–2
product is subject to a succession of apprehensions or ‘qualifications’.86 The
copying 62–4, 67–8, 70–1, 79–82 comic strips see under design/copyright product is quite simply a different thing for each of the actors by which it is
Enlightenment epistemology 61, 71–83, interface ‘qualified’. So the creation of market demand is a matter of recruiting con-
85–6 common law trade marks see under passing
Admiralty surveying and personal off tort
sumers’ abilities ‘to judge and evaluate’.
initiatives 73–4 confidentiality law see Coco v AN Clark This intensifies Lauwaert’s notion of ‘facilitated play’. Artefacts are con-
authority of the map 76–82 (Engineers) Ltd (1969) stituted not just dialogically, in an encounter between designer and user,87
law and intertextual web 74–6 Constitutional History of England
mapping as metaphor 75–6 (Hallam) 5
but in a nexus of co-implicated observations or ‘qualifications’. Although
navigation improvement need 72–4 Cook, Captain James 67, 72–3, 76, 78
perfection claims 79–81 Copinger on Copyright 149
84 For example, this sense of modularity played a significant role in Yochai Benkler’s pres-
practical/scientific emphasis 71–2 copying
fair dealing doctrine 85 indirect 222 entation of the wealth network economy (see The Wealth of Networks (New Haven, Yale
key issues/conclusions 61, 83–6 maps see under under chartmakers and University Press, 2006)). Benkler does not mention Lego, but it is difficult to read his account
main publishers 61–2 copyright law (mid-18th cent) 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
in 19th cent 82–3 mechanical 164, 178
maps’ engraving copyright 62–3 newspaper industry 163–4, 175 and Society 2, 194–217, 197.
86 There is a convergence with marketing theory here, notably in the idea that operations of
Tower Hill, as chart-making centre 62–4 prints and engravings 62, 64
see also Sayer v Moore (1785) toys 174, 212 qualification and requalification are most visible in the context of services: ‘what is important
Chitty, Joseph 95, 338 videotapes 326 in the service business is the relationship, or, rather, system of relationships which, on a mate-
Christiansen, Ole Kirk 345, 361 copyright, origin of term 37 rial and collective basis, organizes the qualification of products’ (Callon et al, ‘The economy of
Christie, Alexander 105 copyright law origins qualities’ (n 85) 210–11).
87 Drawing on Madeleine Akrich’s analysis of the inscription and description of technical
civil and criminal law, relation between almanacs 22–6, 33–4, 36–43 passim, 53
criminal law and IP offences 326–33 authors’ rights, presumption artefacts Lauwaert construes play as an encounter between two modes of engagement with the
forgery paradigm 333–8 pre-1710 50–2 material thing: that of the designer and that of the user. ‘Docile’ users might follow the script,
and efficient enforcement 341–3 calendars 23–5, 42–50, 54 but others will gravitate to the ‘periphery’ For Akrich, the embedded properties, they are part
historical antecedents 332–3, 343–4 differing viewpoints 21–2 of a script that materialises or ‘inscribes’ the vision and ethos of the designer or producer; ‘like
key issues/conclusion 320–1, 343 key issues 25 a film script, technical objects define a framework of action together with the actors and the
trade mark protection and criminal labour 25, 44, 51 space in which they are supposed to act’. M Akrich, ‘The de-scription of technical objects’ in
law 332–3, 339–41 landmark decisions 22 WE Bijker and J Law (eds), Shaping Technology/Building Society. Studies in Sociotechnical
see also R v Johnstone (2003) legal landscape pre-1710 26–8 Callonhange (Cambridge, MA, MIT Press, 1992) 205–24, 208. But this script has then to be
Clarence, Duke of 69 literary property debates 28–34 ‘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 Index
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 Abel, Frederick Augustus clarity/systematic nature of
qualifications of others. To be confronted with a product—to return to the career 119 judgment 303–4
guncotton 120–2 context 302–4
primal scene of trade mark theory—is to engage with, or to participate in, patent 118, 125–6, 129, 142 and EPO decision 310–11
this interplay of observations. What one engages with is not just an inert War Office Committee on obviousness assessment 305–8
material object with some superadded information, but rather materials, Explosives 118, 123–4 policy dimension 304
Abrams, Howard 24 support and sufficiency 308–10
competences and signs as they are ‘represented’ in interleaved ‘qualifica- Aldous, Sir William 296–300, Hoffmann’s opinion in Biogen,
tions’. How does this dynamic play out in the case of brick as an emblem 306–7 inventiveness 306–8
of modularity? d’Alembert Jean 75 House of Lords 300–2
Allison, George 213 initial claim 295–6
According to the strategy devised by the Lego company’s branding con- almanacs 22–7, 33–4, 36–50 passim, 53 inventive thought v inventive
sultants, the newly refreshed brand was supposed to be lived and practised Almond, Professor Jeffrey 314–15 industry 295–302
by the management and employees of the company on a daily basis. The Anderson, Dr William 118, 126 key issues/conclusion 289–91, 315–16
Aristotelian attitudes see under patent claim, landmark status 289–91, 301–2
brand—and, crucially, the look and feel of the product—was supposed to inventor’s responsibility obviousness test 296–8, 300–1
become the medium for the ‘organisational culture’ of the company; that is, Arrowsmith, Aaron 61–2 Patents Court 296–8
the ‘internal values, beliefs, and basic assumptions that embody the heritage Asch, Ronald 17 workshop reminiscences 313–15
Attorney-General v Rosse (1624) see under see also biotechnology and patent law
of the company and are manifest in the ways employees feel about the com- Mansell v Bunger (1626) Biogen NV 291–2
pany they are working for’.88 And the material figure of the brick played a biotechnology and patent law
crucial role in this process of individual and collective self-description: Baecker, Dirk 369 commercialisation of
Baggs, William 102–3 biotechnology 291–5
This [strategy] inspired the creation of new working methods, such as: inviting ballistite see under patent claim, inventor’s DNA recombination 291–4, 300
responsibility voluntary moratorium 296
participants to build the LEGO brand in LEGO bricks and then discuss their
Barrell, Serjeant Francis 43, 45–8 law/science dissimilarities 314
meanings with other participants; and creating a “value gallery,” a game where Baudrillard, Jean 348 overturning on appeal 316
pictures are used to help the participants articulate their associations with the Becket, Thomas 33 scientists involved in project 292
company values. In this cycle, corporate branding activities were framed by con- Becku, Anthony 7 see also Biogen Inc v Medeva plc (1996)
sistent reference to the restated and updated company values’.89 Beeman, Neville 152 Birrell, Augustine 154, 161, 165, 167,
Bellinger, John 52 171, 173
As a medium for the rehearsal of organisational roles, the brick inculcates Bennett, John (Jonathan) 64, 66, 73 Birss, Mr Justice Colin 147, 265, 291, 302
Bennett, Lionel 11 Blachford, Michael 82–3
in the employees and managers of the company a sense of their own inven- Bently, Lionel 184, 333–4, 339 Blachford, Robert 82
tiveness, of their commitment to the brand ethos of creative play, and, quite Berg letter 296 blacking product see trade mark enforcement
simply, a sense of their distinctiveness as a corporate body. The ethos of Betts, Frank Cecil 212–14, 216, 218, practice, early 19th cent, Japan Blacking
220–3, 226 Blackstone, Sir William
the product also characterises the ecology of the workplace itself. In Lego Betts-Binmore agency 213 Commentaries 29, 75–6
offices around the world no employee has a desk of their own and no one Bibles 26, 30, 33, 46, 48, 50–1 role as counsel 31
can sit in any one place for more than a limited time; the idea is to replicate Biogen Inc v Medeva plc (1996) Blanchard, Christopher 93–5
business model 293 Blanchard v Hill see under Day and Martin
in the workforce the synergetic modularity of the product itself, and to reaf- corporate structure 292 litigation
firm the idea of LEGO work as being anything but routine or static. Here counter-claim grounds 295–6 Blanco White, Thomas Anthony 117,
the brick functions as a medium—metaphorical, material, and ethical—for Court of Appeal 298–300 143–4, 205, 246
EPO (European Patent Office) filing/ Blofield, Thomas 107
fashioning corporate identity and culture. decision 294–5, 300 Board of Longitude 72–3
filing of claim for patent 294 Board of Trade 159, 179, 229,
Hoffmann’s opinion 301–12 333, 340
88 Hatch and Schultz, ‘The cycles of corporate branding’ (n 81) 9–10. background experience 302–3 Bodley Head (publisher) 151, 153
89 Hatch and Schultz, ‘The cycles of corporate branding’ (n 81) 16. and Biogen insufficiency 311–12 Book of Bounty 4, 17
372 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, func-
tionalities, facilitating narratives, inscribed and mass media signs and so on.
However, this assemblage is doubled and animated by another: the assem-
blage of ‘qualifications’ in which each user of the medium mobilises, pat-
terns, 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 prod-
uct 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, ser-
vice) 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 medi-
ated 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’.
91 Baecker, ‘The form of the firm’ (n 11) 128.
92 ibid 132.
370 Alain Pottage Lego Juris A/S v OHIM (2010) 371
some qualifications that they engage with take the form of socio-technical is itself one mode of ‘qualifying’ or observing artefacts, and although the
devices that work unobtrusively to shape their apprehension of the product,93 form of property that is protected by a trade mark probably does not rep-
or of marketing and profiling strategies implemented by what Callon and resent or encompass the ‘capital’ that is indexed by a brand or mark,98 the
his co-authors call the ‘professionals’ of qualification.94 But again, users rights granted by trade mark marks may be useful precisely because of their
engage not with a stable material artefact, but with a set of communica- anachronistic premises. The general proposition is that the biography of
tive ‘qualifications’ or ‘determinations’ that they have to ‘recombine’ for the Lego brick allows one to differentiate between three types of artefacts
themselves. Even ‘routine’ consumption involves a minimal degree of self- and brands: first, the twentieth-century sense of industrial manufactures
description. These processes of communication are much more complex, that still informs trade mark jurisprudence and which is particularly well
and much more contingent, than the linear transfer of information that is expressed in Lego v OHIM; second, the ‘semiurgical’ view according to
imagined by trade mark theory. Furthermore, they are more complex than which brands eclipse and animate the material artefacts that are suffused
the notions of modularity and participation might suggest. The brick as a with their market aura; and, third, the sense that brands and artefacts are
branded emblem of modularity is itself diffracted into a mode of modularity constituted and recombined in communicative processes that are also modes
that is much more contingent and less open to coordination than would sug- of self-description.
gest. 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 modular-
ity 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 qualifica-
tions. 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 ingre-
dients 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).

94 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 compo-
nents. 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. 98 On this form of ‘intangible’ capital note the proposition that: ‘the very concept of “intan-
97 The legal form of the trade mark is itself an assemblage, which involves the practices of gibles” has emerged as a way to make sense of the discrepancy between the market value and
registration and opposition, watching and searching (see, for instance, J Bellido and H Kang, the book value of companies, which has resulted from the declining relevance of an earlier
‘In Search of a Trade Mark: Search Practices and Bureaucratic Poetics’ (2016) Griffith Law industrial value regime’; see A Arvidsson and N Peitersen, The Ethical Economy. Rebuilding
Review 1-25). Value After the Crisis (New York, Columbia University Press, 2013) 22).

Landmark Cases in Intellectual Property Law: Bounty, Disavowing Patents That Would Be Contrary To Our Law' and Affirm

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4 Sean Bottomley

became something of a mainstay in popular literature and songs. The poet

­England (Stanford, Stanford University Press, 2012).

­Biography (Oxford, Oxford University Press, 2004).

exclusive rights to their technology, and so encourage them to emigrate to

(Cambridge, Cambridge University Press, 1988) 12.

(Oxford, Oxford University Press, 2004).

Hart Publishing Ltd Bloomsbury Publishing Plc

Mansell v Bunger (1626)

Cambridge University Press, 1999).

Act for Regulating the Privy Council 1641����������������������������������������������������������� 38

13. Lego Juris A/S v OHIM (2010)���������������������������������������������������� 345

Copyright Act 1968

Directive 89/104/EEC to approximate the laws of the Member

INTERNATIONAL CONVENTIONS AND TREATIES

Berne Convention for the Protection of Literary and Artistic Works

Freedom of Information Act 1997

X (Mr) and the Department of Transport, Tourism and Sport

Ungar v Sugg (1892) 9 RPC 113������������������������������������������������������������������������ 136

Venables v NGN Ltd [2002] 1 FCR 333������������������������������������������������������������ 271

Wade v BSkyB Ltd [2014] EWHC 634��������������������������������������������������������������� 265

X v A-G [1997] 2 NZLR 623����������������������������������������������������������������������������� 282

Stanelco Fibre Optics Ltd v Bioprogress Technology Ltd [2004]

CRI v Muller & Co’s Margarine Ltd [1901] AC 217��������������������������������� 197–200 L

MSS 2975, f 47. British Library.

III. CONCLUSION Canterbury. So that Almanacks may be accounted Prerogative Copies….

3 Statute of Anne 1710 (8 Anne c 19).

ing, 2004) 191–220. C 5/43/113, National Archives, London.

1671/2). 42 Sayer v Moore (n 1).

Sayer v Moore (1785) 65

C. In the Court of Common Pleas

84 ibid f 57r (Winnington arg).

SCA Wardens’ Accounts (14 August, 6 September and 6 November 1675).

108–12. Charts (n 13) 19; ‘Obituary’ 77 (1807) Gentleman’s Magazine 1174.

Barrell then of someone else arguing on Seymour’s behalf.122 Assuming this

130 IT Barrington MS 5, p 309.

files/8106/8106-h/8106-h.htm. 64 8 Ves Jun 222, 32 ER 339.

it by 20 February 1803). don, JH Moore, 1781) 243.

Charter by King Charles I on 22 Oct 1628.

‘Injunctions’). Clarendon Press, 1765) 35.

Eighteenth Century: Blanchard v Hill Revisited—Another “Case of Monopolies”?’ (2003)

in publishing such poor quality charts.103 Baron, Lord Abinger.

A detailed examination of Sayer v Moore places it in the context of an

128 Fisher, Blueback Charts (n 13) 82.

­ istinguishable from the facts of Blanchard, being neither based in a guild

Reports 194, 201 144 ER 78, 81. 103 ibid.

Statham’s shop on 18 June 1813. 105 ibid.

(London, Longmans, Green & Co, 1887) 46. to him.

demarcation’ in ‘Examination of William Odling, 30 January 1894, 55; Proceedings on Trial’;

28 FA Abel ‘Researches on Gun-Cotton. On the Manufacture and Composition of Gun-Cotton’

Rev Jurisp 148, 152.

Goodwill etc (London, Stevens, 1879) 10 (Case No 21).

injunction). Publishing, 2012) ch 7.

ANA, FIII: 4, Doss 150. because of misrepresentation by claimant).

Sweden; FA = Frederick Abel Papers, Royal Society of Chemistry, England; NA = National

(London, Stevens & Sons, 1962) 29.

1898 (12 August 1898) 393, 54. Doss 152.

Lord Justice Smith.

Sweet and Maxwell, 1895) 222.

[F]ew speeches which have produced an electrical effect on an audience

Library of Scotland; PA = Parliamentary Archives, London, England; TNL Archive = News

C-145/10 Eva-Maria Painer v Standard VerlagsGmbH [2012] ECDR 6; C-604/10 Football

(2007) IPQ 267, 268.

England (Stanford, Stanford University Press, 2012).

Biography (Oxford, Oxford University Press, 2004).

Act for Regulating the Privy Council 1641�� 38

13. Lego Juris A/S v OHIM (2010)�� 345

Ungar v Sugg (1892) 9 RPC 113�� 136

Venables v NGN Ltd [2002] 1 FCR 333�� 271

Wade v BSkyB Ltd [2014] EWHC 634�� 265

X v A-G [1997] 2 NZLR 623�� 282

CRI v Muller & Co’s Margarine Ltd [1901] AC 217�� 197–200 L

istinguishable from the facts of Blanchard, being neither based in a guild

exclusively with the plaintiffs. 168 Sawkins v Hyperion (n 153) [35].

[Popeye Brooches]’ in King Features Syndicate Inc (n 96).

rotection provided by the Court of Chancery, ancillary to the common