DEAZLEY, Ronan [Rethinking Copyright. History, Theory, Language]

Rethinking Copyright

For Matt the Hat

(‘Hooray for granddad!’)

Rethinking CopyrightHistory, Theory, Language

Ronan DeazleySchool of Law, University of Birmingham, UK

Edward ElgarCheltenham, UK • Northampton, MA, USA

© Ronan Deazley, 2006Jacket image: copyright © Ronald Searle, 1989, by kind permission of the artist andThe Sayle Literary Agency.

All rights reserved. No part of this publication may be reproduced, stored in a retrievalsystem or transmitted in any form or by any means, electronic, mechanical orphotocopying, recording, or otherwise without the prior permission of the publisher.

Published byEdward Elgar Publishing Limited Glensanda House Montpellier Parade Cheltenham Glos GL50 1UAUK

Edward Elgar Publishing, Inc. 136 West Street Suite 202 Northampton Massachusetts 01060 USA

A catalogue record for this book is available from the British Library

Library of Congress Cataloguing in Publication Data

Deazley, Ronan.Rethinking copyright: history, theory, language/Ronan Deazley.

p. cm.Includes bibliographical references and index.1. Copyright—Great Britain. 2. Copyright—Great Britain—History.

I. Title.KD1289.D435 2006346.4104’82—dc22

2006044012

ISBN-13: 978 1 84542 282 0 (cased)ISBN-10: 1 84542 282 1 (cased)

Printed and bound in Great Britain by MPG Books Ltd, Bodmin, Cornwall

Contents

Acknowledgements viiTable of cases ixTable of legislation xiii

Introduction 1

1 History I: 1710–1774 13

2 History II: 1774–1854 26

3 History III: 1854–1912 56

4 Theory I: what copyright isn’t … or, conceiving the public domain 101

5 Theory II: what is copyright? … or, the case for intellectual property freedoms and privileges (and in that order) 135

6 Conclusion 167

References 178Index 191

v

Acknowledgements

There are numerous people who have contributed in different ways in bringingthis book to press. In the first place I would like to thank Ruth Soetendorp andMartin Kretschmer for kindly inviting me to spend a thoroughly productiveresearch sabbatical in Bournemouth at the Centre for Intellectual PropertyPolicy and Management during the early part of 2005. I would also like tothank the British Academy for their Small Research Grant Award, whichallowed for an extended stay in London to carry out the necessary archivalresearch which lies at the heart of the second and third chapters of this book.In addition, there are the many people who were kind enough to read variousdrafts of the various chapters herein and to comment thereupon; they are, inno particular order: Tom Allen, Lionel Bently, Danielle Crossley, NormaDawson, Rosa Greaves, Martin Kretschmer, Philip Leith, Mark Rose, RuthSoetendorp, Simon Stokes, and David Vaver. Particular thanks are due toJamie Glister. No doubt there are people that I have forgotten to include; if soplease accept my apologies in advance. As usual, all mistakes and so on arethe author’s own.

vii

Table of cases

Abernethy v. Hutchinson (1825) 1 H & TW 28 85Adams v. Clementson (1879) 12 LR (Ch) 714 91Aflalo and Cook v. Lawrence and Bullen (1902) 1 Ch 318 91AG v. Guardian (No. 2) [1990] 1 AC 109 116Albert v. Strange (1849) 1 M&G 25 76, 91Allen v. Rawson (1845) 1 CB 551 68Archbold v. Sweet (1832) The Times, 10 February 1832 45Avonzo v. Mudie (1854) 10 Ex 203 57Ashdown v. Telegraph Group [2002] Ch 149 116–17, 152–53, 155–56Bach v. Longman (1777) 2 Cowp 623 29, 46, 54Barnett v. Glossop (1835) 1 Scott’s 621 47Beckford v. Hood (1798) 7 D&E 620 29–33, 39–40, 51Bentley v. Foster (1839) 10 Sim 329 47Bloxom v. Elsee (1827) 6 B&C 169 68Boosey v. Davidson (1847) The Times, 22 June 1847 50Boosey v. Davidson (1848) The Times, 7 June 1848 57Boosey v. Fairlie (1877) 4 AC 711 75Boosey v. Jeffreys (1851) 6 Ex Rep 580 43, 51–53, 57 Boosey v. Lonsdale (1841) The Times, 18 June 1841 47Boosey v. Purday (1848) The Times, 30 June 1848 43, 57Boosey v. Purday (1849) 4 Ex Rep 145 50–51, 57, 60Bowden Brothers v. Amalgamated Pictorials Ltd [1911] 1 Ch 386 89Boozey v. Tolkien (1848) 5 CB 476 43, 50Boucicault v. Chatterton (1876) 35 LTR 541, 5 LR (Ch) 267 74–75, 153Boucicault v. Delafield (1863) 1 H&M 597 57, 70–71, 153Brooke v. Clarke (1818) 1 B&Ald 396 35–37Brooke v. Milliken (1789) 3 TR 509 29Brook v. Wenworth (1796) 3 Anst 881 29Burnet v. Chetwood (1721) 2 Mer 441 115, 144Buxton v. James (1851) 5 DeG&S 80 43, 57Cabburn v. Lloyds (Ltd) (1909) 2 MCC 215 64Cadell and Davies v. Robertson (1812) The Times, 7 March 1812 35Caird v. Sime (1887) 12 AC 326 85–88Capitol Records v. Naxos of America (2005) 4 NY3d 540 167–69, 176–77Carnan v. Bowles (1786) 1 Cox 283 29

ix

Table of casesx

Cary v. Kearsley (1803) 4 Esp 168 36Cary v. Longman (1801) 1 East 358 31Chappell v. Boosey (1882) 21 ChD 232 75Chappell v. Purday (1841) 4 Y&C 485 48Chappell v. Purday (1843) 12 M&W 303 49Chappell v. Purday (1845) 14 M&W 303 49–50, 55, 57Chatterton and Webster v. Cave (1875) 10 LR (CP) 572 91Clementi v. Walker (1824) 2 B&C 861 43–44, 46Cocks v. Lonsdale (1849) The Times, 29 March 1849 43, 50, 57Cocks v. Purday (1846) 2 Car&K 269 50Cocks v. Purday (1848) 5 CB 860 43, 57Cocks v. Purday (1850) 12 Beav 451 57Colburn v. Duncombe (1838) 9 Simons’ Rep 151 47, 53Colburn v. Simms (1843) 2 Hare’s 543 47–48Coleman v. Wathen (1793) 5 D&E 245 29–30, 154Coyne v. Maxwell (1865) The Times, 7 and 10 June 1865 70, 155Cumberland v. Copeland (1861) 7 H&N 118 155Cumberland v. Planche (1834) 1 AD&E 580 45D’Almaine v. Boosey (1835) 1 Y&C 288 44–47Delondre v. Shaw (1828) 2 Sim 237 44–45Designers Guild v. Russell Williams [1998] FSR 803 2Designers Guild v. Russell Williams [2000] FSR 121 3Designers Guild v. Russell Williams [2001] 1 All ER 700 2, 3De Trusler v. Murray (1789) 1 East’s 363 29Dewar v. Purday (1834) The Times, 18 June 1834 45Donaldson v. Becket (1774) 4 Burr 2408, 2 Bro PC 129 5–6, 15–20, 22–25,

26–27, 30, 32, 37, 39–41, 45, 48, 50–55, 57–61, 64–67,76–79, 84, 87–89, 92, 94, 142, 153, 168, 170, 173–74, 177

Du Bost v. Beresford (1810) 2 Camp 511 36Eldred v. Ashcroft (2003) 537 US 186 167–68Exchange Telegraph Company Limited v. Gregory & Co. [1896]

1 QB 147 86Eyre v. Carnan (1781) 6 Bac Abr, 7th edn, 509 29Eyre v. Walker (1735) 1 Black W 331 14, 77Fellowes v. Chapman (1848) The Times, 8 December 1848 50, 57Fisher v. Folds (1834) 1 Jones’ Exchequer Reps 12 53–54Fishburn v. Hollingshead (1891) 2 Ch 371 75Fraser v. Edwards (1905) 2 MCC 10 64Forrester v. Waller (1741) PRO C 11 867/54 76Gyles v. Wilcox (1741) 2 Atk 141 144Glynn v. Weston Feature Films [1916] 1 Ch 261 116Guichard v. Mori (1831) 2 Coopers 216 44, 46, 61

Hawkesworth v. Newbery (1774) Lofft 775 26, 28–29Hime v. Dale (1803) 11 East 244 36Hubbard v. Vosper [1977] 2 QB 84 115Hyde Park v. Yelland [2001] Ch 143 116In Re Dickens, Dickens v. Hawksley [1935] Ch 267 95–97Jeffreys v. Boosey (1854) 4 HLC 815 24–25, 31, 38, 40, 43, 50, 53, 55,

56–79, 82–89, 92–95, 154, 169–77Keene v. Wheatley (1860) 14 F.Cas. 180 154La Cienega Music Co. v. ZZ Top [1995] 516 US 927 169Lacy v. Rhys (1864) 4 B&S 873 155Lawrence v. Smith (1822) Jacob 471 116Levy v. Rutley (1871) 6 LR (CP) 523 74, 91Lion Laboratories v. Evans [1985] QB 526 116Low v. Routledge (1864) 10 LTR 838 57, 71–72Low v. Routledge (1865) 1 LR (Ch App) 42 71–72Low v. Ward (1868) 6 LR (Eq) 415 73–74Lover v. Davidson (1856) 1 CB (NS) 182 57Mabe v. Connor (1909) 1 KB 505 87Macklin v. Richardson (1771) Amb 694 76, 153–54MacMillan v. Dent [1907] 1 Ch 107 64Mansell v. Valley Printing Co. [1908] 2 Ch 441 64, 88–89, 97Marzials v. Gibbons (1874) 9 LR (Ch App) 518 74Marsh v. Conquest (1864) 17 CB (NS) 418 154–55Millar v. Taylor (1768) 4 Burr 2303 5–6, 15–17, 26, 29–30, 39–42, 48,

50–51, 53–54, 66–67, 77–80, 82, 84, 88, 94, 97, 113, 138, 142, 153, 168, 170, 177

Monckton v. The Gramophone Company Ltd (1911–12) 28 TLR 205 64, 87–89

Motte v. Faulkner (1735) 1 Black W 331 14, 77Murray v. Benbow (1822) The Times, 2 February 1822 116Murray v. Bohn (1850) The Times, 8 August 1850 57Murray v. Bogue (1852) 1 Drewry 353 57Murray v. Dugdale (1823) The Times, 22 July 1823 116Murray v. Elliston (1822) 5 B&Ald 657 32, 45, 154Murray v. Heath (1831) 1 B&AD 804 45Murray v. Limbird (1828) The Times, 10 December 1828 45Newark v. National Phonographic (1907) 23 TLR 439 87Norowzian v. Arks (No. 2) [2000] FSR 363 3Norton v. Churton (1835) The Times, 16 July 1835 116Novello v. Sudlow (1852) 12 CBR 177 43, 52–53, 57Novello v. James (1851) The Times, 25 March 1851 43, 57Ollendorf v. Black (1850) 4 Deg&S 209 57

Table of cases xi

Osbourne v. Vitzelly (1885) 1 TLR 17 75Page v. Townsend (1832) 5 Sim 395 43–44Pepoli v. Laporte (1837) The Times, 17 June 1837 47Philip v. Pennell (1907) 2 MCC 91 64Platt v. Walter (1867) 17 LTR 157 71Pope v. Curl (1741) 2 Atk 342 76Power v. Walker (1814) 3 M&S 7 36, 43Queensbury v. Shebbeare (1758) 2 Eden 328 76Reade v. Conquest (1861) 9 CB (NS) 755 68–70Reid v. Maxwell (1886) 2 TLR 790 75Re The Musical Compositions ‘Kathleen Mavourneen’ and

‘Dermot Astore’, ex p. Hutchins and Romer (1879) 4 QBD 483 74Richardson v. Universities of Oxford and Cambridge (1804)

3 Cooper’s Cases 564 56Routledge v. Low (1868) 3 LTR 100 71–75Roworth v. Wilkes (1807) M&R 94 35Sayre v. Moore (1785) 1 East’s 361 29Shepherd v. Conquest (1856) 17 CB 427 67–69Southey v. Sherwood (1817) 2 Mer 435 116Spiers v. Brown (1857) The Times, 11 December 1857 57Stockdale v. Onwhyn (1826) 5 B&C 174 45, 116Storace v. Longman (1788) 11 East’s 244 29The Exchange Telegraph Co. v. Howard (1906) 22 TLR 375 64Thomas v. Turner (1886) 23 ChD 292 91Tonson v. Walker (1739) 1 Black W 331 14, 77Tonson v. Collins (1761) 1 Black W 301 14, 32Tonson v. Collins (1762) 1 Black W 329 14Toole v. Young (1874) 9 LR (QB) 523 155Tuck v. Priester (1887) 19 QBD 48 82–85, 89Trustees of the British Museum v. Payne (1827) 4 Bing 540 45, 47University of Cambridge v. Bryer (1812) 16 East’s 317 33–34, 37, 60, 62Walthoe v. Walker (1737) 1 Black W 331, PRO C 11 1181/156 14, 77Walter v. Lane (1899) 2 Ch 729 85Walter v. Lane (1900) AC 539 85Webb v. Rose (1732) PRO C.11 1881/156 76West v. Francis (1822) 5 B&Ald 737 45White v. Geroch (1819) 2 B&Ald 298 37Whittingham v. Wooler (1817) 2 Swan 428 154Wheaton v. Peters (1834) 33 US 591 40, 60, 154, 169–70, 172–73, 176

Table of casesxii

Table of legislation

(The Statute of Anne) An 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 1709, 8 Anne, c. 19 13, 21, 23, 30, 33–34, 36–37, 53–54, 64, 76,

79, 81, 108–109, 121, 144, 159, 162, 168Appellate Jurisdiction Act 1876, Vict. 39 & 40, c. 59 58The Berne Convention 145Broadcasting Act 1996, c. 55 129Charter of the Fundamental Rights of the European Union 2000 135–37Copyright (Application to Other Countries) (Amendment) Order

2003, SI 2003/774 149Copyright (Bermuda) Order 2003, SI 2003/1517 149Copyright (Certification of Licensing Scheme for Educational

Recording or Broadcasts) (Open University) Order 2003, SI 2003/187 149

Copyright (Certification of Licensing Scheme for Educational Recording of Broadcasts and Cable Programmes) (Educational Recording Agency Limited) (Amendment) Order 2003, SI 2003/188 149

Copyright (Certification of Licensing Scheme for Educational Recording of Broadcasts) (Educational Recording Agency Limited) Order 2005, SI 2005/222 149

Copyright (Educational Establishments) Order 2005, SI 2005/223 149Copyright (Gibraltar) Order 2005, SI 2005/853 149Copyright (Musical Compositions) Act 1882, 45 & 46 Vict., c. 40 144Copyright (Visually Impaired Persons) Act 2002 (Commencement)

Order 2003, SI 2003/2499 149Copyright (Visually Impaired Persons) Act 2002, c. 33 131, 149Copyright Act 1801, 41 Geo. 3, c. 107 53Copyright Act 1814, 54 Geo. 3, c. 156 36, 53–55Copyright Act 1842, 5 & 6 Vict., c. 45 37, 71–72, 87, 144, 155Copyright Act 1911, 1 & 2 Geo. 5, c. 46 87, 94, 145–47, 151, 167Copyright Act 1956, c. 74 147–48, 151Copyright and Performances (Application to Other Countries) Order

2005, SI 2005/852 149Copyright and Related Rights Regulations 1996, SI 1996/2967 114, 150

xiii

Copyright and Related Rights Regulations 2003, SI 2003/2498 125, 149, 150, 158

Copyright Designs and Patents Act 1988, c. 48 102, 104, 106–107, 111,113–14, 117, 126–29, 147–50, 153, 156

Digital Millennium Copyright Act 1998, 17 USC § 1201 125(The Copyright Duration Directive) Directive harmonising the

term of protection of copyright and certain related rights, 93/98/EEC 36, 110, 147

(The Information Society Directive) Directive on the harmonisation of certain aspects of copyright and related rights in the information society, 2001/29/EC 120, 124–26, 149, 151, 156–59

(The Rental Rights Directive) Directive on rental right and lending right and on certain rights related to copyright in the field of intellectual property, 92/100/EEC 106–107

(The Software Directive) Directive on the legal protection of computer programs, 91/250/EEC 129

Dramatic Copyright Act 1833, 3 & 4 Will. 4, c. 15 68, 74, 144, 153Duration of Copyright and Rights in Performances Regulations

1995, SI 1995/3297 147Electronic Commerce (EC Directive) (Extension) (No. 2) Regulations

2003, SI 2003/2500 149Engraving Copyright Act 1735, 8 Geo. 2, c. 13 31, 35, 144Engraving Copyright Act 1767, 7 Geo. 3, c. 38 31, 35, 144European Convention on Human Rights 135European E-commerce Directive, 2003/31/EC 149Fine Arts Copyright Act 1862, 25 & 26 Vict., c. 68 83, 144, 146Human Rights Act 1998, c. 42 116, 152International Copyright Act 1838, 1 & 2 Vict., c. 59 56International Copyright Act 1844, 7 & 8 Vict., c. 12 56International Copyright Act 1886, 49 & 50 Vict., c. 33 74International Covenant on Economic, Social and Cultural Rights 136Lectures Copyright Act 1835, 5 & 6 Will. 4, c. 65 86, 144Legal Deposit Libraries Act (Commencement) Order 2004, SI 2004/145 149Legal Deposit Libraries Act 2003, c. 28 149Licensing Act 1662, 13 & 14 Car. 2, c. 33 76, 108, 143, 159Musical Copyright Act 1906, 6 Edw. 7, c. 36 144Prints Copyright Act 1776, 17 Geo. 3, c. 57 144Sculpture Copyright Act 1814, 54 Geo. 3, c. 56 144Unfair Contract Terms Act 1977, c. 50 128Unfair Terms in Consumer Contracts Regulations 1999, SI 1999/2083 128Universal Declaration of Human Rights 136Universities Act 1775, 15 Geo. 3, c. 53 22–23

Table of legislationxiv

Introduction

Having published my first book, On the Origin of the Right to Copy: Chartingthe Movement of Copyright Law in Eighteenth-Century Britain, 1695–1775(On the Origin of the Right to Copy),1 in July 2004, I did what every firstauthor does – I waited nervously for the reviews (if any). The first, by SimonStokes, appeared in February 2005 in the Entertainment Law Review. Stokes,an intellectual property practitioner and himself an author,2 was generousindeed: ‘persuasively argues’; ‘shed[s] fresh light’; ‘a fascinating work oflegal history’, and so on. He finished his review as follows:

Whilst Deazley does not directly address the current copyright debate, the reviewerwould argue that the development of copyright in the twentieth and twenty-firstcenturies has been a steady erosion of the public domain, often justified by the needto protect author’s rights (which rights are increasingly in the hands of the largeglobal media corporations). By piercing some cherished assumptions aboutcopyright and authors’ rights, and in particular through demolishing as a “myth” thetraditional view about the development of copyright and displacing the centrality ofthe modern proprietary author as the raison d’etre of the copyright system,Deazley’s book is welcome ammunition to those who would try to reassert thepublic domain.3

The review was certainly timely. When it was published I was based inBournemouth, on a research sabbatical at the Centre for Intellectual PropertyPolicy and Management,4 working on the first rough drafts for this book. I haddone considerable work on the second and third chapters (the ‘history’ bit)although more was to follow, and was beginning to consider the shape andstructure of the fourth and fifth chapters (the ‘theory’ bit). As if in dialoguewith Stokes, a dialogue about which until that time I was unaware (a very

1

1 Deazley, R. (2004), On the Origin of the Right to Copy: Charting the Movementof Copyright Law in Eighteenth-Century Britain, 1695–1775, Oxford: Hart Publishing.

2 See for example: Stokes, S. (2003), Art & Copyright, Oxford: Hart Publishing;Stokes, S. (2005), Digital Copyright, Oxford: Hart Publishing.

3 Stokes, S. (2005), Entertainment Law Review, p. 41. For other reviews, good, badand indifferent, see: Gummow, W.M.C. (2005), Australian Law Journal, p. 92; Adams,J.N. (2005), Intellectual Property Quarterly, p. 222; Alexander, I. (2005), CambridgeLaw Journal, p. 510 and Budd, A. (2005), Times Literary Supplement, 15 July 2005.

4 See www.cippm.org.uk.

post-modern affair), I had already begun work on a book which I hoped wouldengage directly with the current copyright debate, and in a way that touchedupon a number of the themes articulated in the concluding paragraph of hisreview: the exponential growth of copyright throughout the last hundred years;the nature and significance of the relationship between copyright and thepublic domain; and the place of rhetoric and myth-making in framing anddetermining contemporary copyright policy and discourse. However, beforefurther sketching out the substance and aims of this book, let me turn to a casewhich I have commented upon elsewhere and which, more than any othercopyright decision of the UK courts in recent years, acted as a spur for thiscurrent enterprise: Designers Guild v. Russell Williams [2001] (DesignersGuild).5

Anyone familiar with UK copyright law will be familiar with DesignersGuild, which concerned an allegation of unlawful copying between twowallpaper manufacturers. In August 1995 the claimants launched a new rangeof designs under the title Orientalis. One design from the range, the Ixia,which proved to be a considerable commercial success, consisted of a stripedpattern with flowers scattered over it, in what was referred to as ‘a somewhatimpressionistic style’. It was a design which, in the words of the claimants’designer, had been inspired by ‘the handwriting and feel’ of the Frenchimpressionist Henri Matisse. One year after the claimants launched theirOrientalis range a distributor for the defendant design company displayed awallpaper fabric, entitled Marguerite, at a trade fair in Utrecht. Margueritealso consisted of a striped design with scattered flowers overlaid in a similarstyle. Convinced that the copyright in their wallpaper design had beeninfringed, the claimants commenced proceedings in December 1996. At thetrial the issue for Collins QC was whether the defendant had copied the Ixiadesign, and if so whether they had copied a substantial amount of that design.Concentrating primarily upon whether there was sufficient evidence toestablish a finding of copying, Collins QC, observing that the defendant hadadopted the ‘essential features and substance’ of the original design, held infavour of the claimant.6 The defendant appealed not upon the finding ofcopying but upon the finding that they had copied a substantial amount of thework. The Court of Appeal, led by Morritt LJ, overturned the previousdecision holding that while the defendant had copied the idea of the Ixiadesign, as well as adopting several of the artistic techniques employed in theexecution of that design, they had not copied a substantial part of the

Rethinking copyright2

5 Designers Guild v. Russell Williams [2001] 1 All ER 700; see Deazley, R. (2004),‘Copyright in the House of Lords: Recent Cases, Judicial Reasoning and AcademicWriting’, Intellectual Property Quarterly, p. 121.

6 Designers Guild [1998] FSR 803.

claimant’s copyright work.7 The claimants appealed again, whereupon theHouse of Lords unanimously agreed to overturn the decision of the Court ofAppeal upon the basis that the Court of Appeal had erred in principle inexercising its appellate jurisdiction to reconsider what was essentially aquestion of fact for the trial judge.8

The purpose for revisiting Designers Guild is not to embark upon anexamination of the various merits and demerits of the decision itself, or thejudicial reasoning therein,9 but to draw upon one aspect of the one opinionwith which all of the Lords were in agreement – Lord Bingham’s statement asto the ‘very clear principle’ upon which copyright law rests: ‘[T]hat anyonewho by his or her own skill and labour creates an original work of whatevercharacter shall, for a limited period, enjoy an exclusive right to copy that work.No one else may for a season reap what the copyright owner has sown’.10 Forsuch a short synopsis, there is much to unpack. Begin by considering theimage which Lord Bingham’s observation conjures up in the mind’s eye: thefarmer toiling in the fields, turning the sod, sowing and nurturing his crop,only to lose the product of his labour to an undeserving other. For the farmer,read the struggling author; for his crop, read the original literary, dramatic,musical or artistic work; for those who reap what they have not sown, read thecopyright pirate and thief. The image has a powerful, rhetorical (and if notbiblical11 then certainly bucolic) appeal, providing a simple and seeminglyself-evident premise upon which to base a copyright regime. More than thishowever, it invokes a theoretical and historical provenance that leads us backin time to the late seventeenth century, to the founding of the modern Britishstate, to the political philosophy of John Locke, and in particular to his SecondTreatise on Government:

Introduction 3

7 Designers Guild [2000] FSR 121.8 As Lord Hoffman observed: ‘[B]ecause the decision involves the application of

a not altogether precise legal standard to a combination of features of varyingimportance, I think that this falls within the class of case in which an appellate courtshould not reverse a judge’s decision unless he has erred in principle’; Designers Guild[2001], p. 707. Lord Hoffman made reference to the comments of Buxton LJ inNorowzian v. Arks (No. 2) [2000] FSR 363, p. 370: ‘[W]here it is not suggested that thejudge has made any error of principle a party should not come to the Court of Appealsimply in the hope that the impression formed by the judges in this court … will bedifferent from that of the judge’.

9 For that, see Deazley, supra n. 5.10 Designers Guild [2001], p. 701. Interestingly, in the latest edition of Copinger

and Skone James on Copyright, the authors rely upon this very dicta in a commentaryupon the ‘Nature of Copyright’; Garnett, K., Davies, G. and Harbottle, G. (eds) (2005),Copinger and Skone James on Copyright, 15th edn, London: Sweet & Maxwell, p. 23.

11 Think for example of the right of Abraham to maintain his well because he had‘digged his well’ (Genesis 21:30) or of the simple principle that ‘thou shalt not steal’(Exodus 20:15).

[E]very man has a property in his own person … The labour of his body, and thework of his hands … are properly his. Whatsoever then he removes out of the statethat nature hath provided, and left it in, he hath mixed his labour with, and joinedto it something that is his own, and thereby makes it his property. It being by himremoved from the common state nature hath placed it in, it hath by this laboursomething annexed to it, that excludes the common right of other men: for thislabour being the unquestionable property of the labourer, no man but he can have aright to what that is once joined to, at least where there is enough, and as good, leftin common for others.12

As with Lord Bingham’s toiling farmer labour is the key, and as is the case forthe labour of the hand, then why not similarly for the labour of the head? Openany standard text (introductory or otherwise) on copyright or intellectualproperty and you will usually come across some reference to Locke’s ‘labourtheory’ as one of a number of plausible foundational principles upon which tobuild a system of copyright, albeit one which has of late fallen out of favour.13

If you bother to look, you will generally find it rubbing up against other morecontemporary and more easily digested justifications which rely uponalternative political, social and/or economic rationales.14 And yet it is in theconcept of labour, and labour theory, that Lord Bingham most readily locatesthe basic premise of copyright.15


12 Locke, J. (1690), Second Treatise on Government, s. 27, reprinted in Gough,J.W. (ed.) (1966), Oxford: Blackwell.

13 It has not fallen out of favour with all authors however; consider for exampleBainbridge who comments that: ‘The basic reason for intellectual property is that aman should own what he produces, that is, what he brings into being. If what heproduces can be taken from him, he is no better than a slave. Intellectual property is,therefore, the most basic form of property because a man uses nothing to produce itother than his mind’; Bainbridge, D. (2002), Intellectual Property, 5th edn, Harlow:Longman, p. 17. For a more sophisticated articulation of labour theory as a suitableprinciple upon which to base a system of copyright see, for example, almost anythingwritten by Wendy Gordon.

14 Typically these involve justifications based upon innovation, incentive andreward, the advancement of knowledge, the avoidance of the tragedy of the commons,or simply the moral right of the author.

15 For one explanation as to why this might be the case see Sterk, S.E. (1995–96),‘Rhetoric and Reality in Copyright Law’, Michigan Law Review, p. 1197, in which theauthor writes that ‘[o]ne explanation for the general failure to question [dominant]copyright rhetoric is that the participants in the lawmaking process – not onlylegislators and judges, but also lawyers, opinion-makers, and persons with wealth andpolitical influence – have a self-interest in widespread acceptance of the propositionthat authors deserve to benefit from their work. Rejecting the argument that authorsdeserve returns from their labours also would undermine the claim that prosperousmembers of society deserve their prosperity … If authors do not deserve incomescommensurate with their educational backgrounds, then how can other professionalsjustify high compensation based on their educational attainments? … If copyright

One explanation for Lord Bingham’s adherence to the labour construct nodoubt lies in the fact that this particular theoretical perspective is historicallycontingent with the emergence of copyright legislation within the UK itself.The writings of John Locke loomed large on the political landscape at thesame time as the need for a statutory system of copyright protection was beinglobbied within Parliament, which efforts would eventually lead to the passingof the [An] Act for the Encouragement of Learning by vesting the Copies ofPrinted Books in the Authors or Purchasers of such Copies, during the Timestherein mentioned 1709 (the Statute of Anne).16 This synergy between thehistorical and the theoretical is further augmented by the fact that the sametexts (in which you will find the various justifications for copyright) in themain provide an orthodox, if brief, historical snapshot of the development ofcopyright prior to and throughout the eighteenth century, an account whichmore often than not includes the significant mid-century debates concerningthe existence (or not) of copyright at common law – that is, a copyright basedupon the natural right of an author to his work (for which read ‘labourtheory’), and which predated statutory copyright in the guise of the Statute ofAnne. This is the story of the ‘battle of the booksellers’ and of the two seminaldecisions of Millar v. Taylor (1768) 4 Burr 2303 (Millar), and Donaldson v.Becket (1774) 4 Burr 2408 (Donaldson), which story is considered at length inOn the Origin of the Right to Copy,17 and which is recounted in brief in thefirst chapter of this work.

Suffice to say that, for the moment, the history presented in the mainstreamtexts is one which acknowledges the existence of this common law copyright(as historical fact),18 and so by extension implicitly embraces the conceit of

Introduction 5

protection is necessary to ensure financial rewards for authors, and if authors, by virtueof their education and innate abilities, resemble other people [such as lawyers] whoreap generous financial rewards, then authors must deserve copyright protection’, ibid.,pp. 1247–48.

16 Statute of Anne 1709, 8 Anne, c. 19. Indeed one standard text makes specificreference to ‘the plea of the philosopher, John Locke’ who at the time ‘demanded acopyright for authors which he justified by the time and effort expended in the writingof the work which should be rewarded like any other work’; Garnett et al., supra n. 10,p. 34. In this the authors are certainly overstating the case. For a discussion of Locke’sinvolvement in the copyright question at the end of the seventeenth and start of theeighteenth centuries, see Deazley, supra n. 1, Chapter 1.

17 Supra, n. 1.18 See for example Torremans who writes that ‘before publication the author could

rely on certain rights of literary property at common law to obtain protection againstunauthorised copying’; or Bainbridge who acknowledges that ‘the author did havecommon law rights that were potentially perpetual’; or Cornish & Llewelyn who notethat in the eighteenth century ‘[i]t was not difficult to argue that an author ought to havesome protection over his work before it was published. Since this went uncovered bythe [Statute of Anne], it could only lie in a right of literary property at common law’,

copyright as a natural authorial property,19 albeit one that has since beenstatutorily dispensed with.20 My point in drawing attention to this mutuallyreinforcing historical and theoretical framework is not to begin to pick it apart(not yet anyway) but simply to illustrate that Lord Bingham need not travel farto find support for his ‘very clear principle’ – it is there to be found, in oneshape or form, in almost all of the standard literature of the day.21 The point ofthis work, however, is to introduce the reader to a historical treatment of thedevelopment of copyright, as well as to some alternate theoretical approachesto copyright, that he or she may not otherwise come across within thatliterature.

In terms of history, this book very much picks up where On the Origin ofthe Right to Copy left off. As mentioned above, the first chapter of this bookreprises the central thesis of that earlier work; it exposes as ‘myth’ theorthodox history of the development of copyright law in eighteenth-centuryBritain – what I will refer to as the myth of Donaldson and the cult of Millar.Chapters two and three take up that story in the sense that they explore thehistory of the history of copyright; that is, they concern the manner in whichthe history of the development of copyright in the eighteenth century wassubsequently recorded and reported throughout the nineteenth century, into the


and that ‘to the extent that Parliament has entered the field, copyright under the Statuteof Anne 1710 was not to be supplemented by more embracing common law rights’; orGarnett et al. who comment that ‘thus the effect of the Statute of Anne was toextinguish the common law copyright in published works, while leaving the commonlaw copyright in unpublished works unaffected’. Torremans, P. (2005), Holyoak &Torremans: Intellectual Property Law, 4th edn, Oxford: Oxford University Press, p. 9;Bainbridge, supra n. 13, p. 31; Cornish, W. and Llewelyn, D. (2003), IntellectualProperty: Patents, Copyright, Trade Marks and Allied Rights, 5th edn, London: Sweet& Maxwell, p. 12, p. 347; Garnett et al., supra n. 10, p. 35.

19 It is difficult (impossible perhaps) to concede the existence of copyright atcommon law, albeit as a point of historical interest, without similarly lending credenceto some form of natural rights thesis that would otherwise underpin that common lawcopyright. In many respects, these two historical and theoretical strands, within thecontext of British copyright law, are inescapably bound to one another.

20 Traditionally the Statute of Anne 1709 is considered to have abolished thecommon law right in published works, whereas the common law right in unpublishedworks was abolished by the Copyright Act 1911, 1 & 2 Geo. 5, c. 46.

21 Interestingly, Colston and Middleton, in their commentary on the developmentof copyright, do make reference (albeit in a footnote) to the argument that in Donaldson‘the Court did not recognise any common law copy-right at all, even for unpublishedworks, and that instead the case recognises the underlying social interest in copyrightworks rather than the commercial interests of authors’, which argument they continue‘does call into question the principle of protecting authors relied on by Lord Binghamin Designers Guild v. Russell Williams (Textiles) Ltd (2001)’; Colston, C. andMiddleton, K. (2005), Modern Intellectual Property Law, 2nd edn, London: CavendishPublishing, p. 250, n. 6.

early twentieth, and beyond. Through these chapters we trace the rise and falland rise again of the conceit of common law copyright, the construct that is central to the orthodox history of the origins of copyright itself (within theUK at least). Within that trajectory we also explore the way in which one particularly significant decision of the House of Lords (perhaps the most important critique upon the concept of copyright at common law within nineteenth-century Anglo-American jurisprudence) was to becomesubsequently obscured, as well as the contribution which the late nineteenth-century treatise writers made to that process.

To this history of the history of copyright, chapters four and five add twotheoretical approaches to copyright which (as with the non-orthodox history ofcopyright, as well as the history of that history) are not otherwise to be foundin the mainstream contemporary texts upon copyright and intellectualproperty. As noted above, the theoretical framework within which thesestandard texts situate copyright tends to be one of a cursory romp through thevarious civil and common law justifications that can be called upon tounderwrite the copyright regime. By contrast, chapter four introduces thereader to the institution of copyright first and foremost through the prism ofthe public domain. The point is to articulate some basic conceptual distinctionsbetween the two phenomena, to explore the significance of the relationshipbetween the two, and to draw upon the concept of the public domain to betterunderstand the very nature of copyright, including both its limits and itslimitations.

Thereafter, having approached copyright in terms of that which it is not,chapter five considers what copyright is. Here, the inquiry is not as to why wehave (or tolerate) copyright, but rather to explore, albeit briefly, how best tolocate copyright within the parameters of traditional property discourse, aswell as reflecting upon the implications of so doing. Moreover, underpinningthese various historical and theoretical strands (which, cumulatively, do aspireto unsettle Lord Bingham’s foundational premise) can be found a simplerecurring theme – the almost too obvious observation that, in all of this,language matters.

That language matters naturally can be taken to mean a multitude ofthings.22 In the present context it concerns the place of both myth-making and

Introduction 7

22 For some recent comments upon the role of language and rhetoric withincopyright discourse see for example: Sterk, supra n. 15; Boyle, J. (1996), Shamans,Software, & Spleens: Law and the Construction of the Information Society, Cambridge,US and London, UK: Harvard University Press; Lemley, M.A. (1997), ‘RomanticAuthorship and the Rhetoric of Property’, Texas Law Review, p. 873; Ryan. M.(1998–99), ‘Fair Use and Academic Expression: Rhetoric, Reality, and Restriction onAcademic Freedom’, Cornell Journal of Law and Public Policy, p. 541; Benkler, Y.(1999), ‘Free as the Air to Common Use: First Amendment Constraints on Enclosure

rhetoric in contemporary copyright discourse. It concerns the particularterminologies that writers upon copyright employ (sometimes consciously, butoften not), which terminology exhorts a peculiar rhetorical force in framingthe way in which we think about copyright.

One particularly evocative example is the language of copyright asintellectual property right, and of intellectual property right as human right, apowerful rhetoric, with little historical or theoretical credibility, but whichnonetheless threatens to dominate copyright discourse and drive contemporarycopyright policy. In this regard, if nothing else, this book encourages thereader to hold up to scrutiny the very language with which we articulate anddescribe copyright. As we do so, so too should we begin to more fully explorethe manner in which those who write about copyright can and do engage intheir own myth-making as to what copyright is and what copyright should be.Naturally, not all texts have equal influence within the field. There exist thoselegal treatises which lay claim to greater weight, respect and authority thanothers (some of which have been referred to within the footnotes of this veryintroduction), whether by reason of the talent and ability of their authors, theirscholarly breadth and depth, their comprehensive nature, or simply their age.Indeed we can all think of one or two texts that we turn to again and again foran ‘authoritative’ or ‘objective’ commentary upon some aspect of copyrightlaw. And yet those texts (as is the case with this text) are polemical. They domore than record, organise and comment upon the law of copyright; they seekto determine the conceptual parameters within which copyright is to beunderstood. This text then is about both the history and theory of copyright,but also about rhetoric and the constitutive power of legal writing.

Although I had begun to write this book by the time Stokes’ review of On theOrigin of the Right to Copy appeared in early 2005, its origins lay in thesummer of the previous year and with three discrete pieces of work with whichI was then currently engaged (what have since become chapters two, three,four and five). The synergies between the various pieces were not immediatelyapparent to me, but rather revealed themselves as the summer progressed andas my research and thinking about each developed. As a result, however, thisbook bears the scars of its unplanned and uneasy birth. Much has been leftunsaid; numerous threads that could otherwise have been taken up have been


of the Public Domain’, New York University Law Review, p. 354; Vaver, D. (2000),‘Intellectual Property: The State of the Art’, Law Quarterly Review, p. 621; Ginsburg,J.C. (2002–03), ‘Essay – How Copyright Got a Bad Name for Itself’, ColumbiaJournal of Law & The Arts, p. 61; Koenigsberg, F. (2004), ‘Humpty-Dumpty inCopyrightland’, Journal of the Copyright Society of the USA, p. 677.

left untouched. Much might have been done, for example, in more fullyexploring the individual relationships, politics and philosophies of those at thebar, or sitting on the bench, who surface and resurface throughout the talepresented in the second and third chapters – legal luminaries such asCampbell, Pollock and Brougham; or in considering the relevance (or not) ofthe anti-monopoly movement that briefly flourished within Europe in the midto late-nineteenth century within this history of the history of copyright; or inengaging in a more robust review and analysis of the theoretical literature onproperty in general, and on intellectual property in particular; and so on.

At the end of the day, the gaps and the flaws, the borrowings and theintellectual leaps of faith are there for all to see. However, they are hopefullynot entirely fatal to the integrity and value of the work. Ultimately the goal isto do little more than make a claim for a greater awareness of, and greaterattention to, the insights which alternate historical and theoretical treatmentsof the subject might bring to bear upon what we understand by copyright. Inthat sense this book represents no more than a springboard for my owncontinued research, as well as a challenge to others, whether teacher,academic, practitioner or judge.23 It seeks to provoke, to muddy the waters. Ifit achieves some success in that regard, albeit tentatively, then that is sufficientfor now. As the Manic Street Preachers would have it: ‘this is my truth, showme yours’.

Introduction 9

23 Jon O. Newman, judge on the US Court of Appeals for the Second Circuit,recently commented upon the extent to which ‘the scholarly debate in intellectualproperty today is essentially legislative and policy-oriented, and has so little to do withthe business of the courts’; Newman, J.O. (2001), ‘Academia and the Bench: Toward amore productive dialogue’, in Dreyfuss, R., Zimmerman, D.L. and First, H. (eds),Expanding the Boundaries of Intellectual Property: Innovation Policy for theKnowledge Society, Oxford: Oxford University Press, p. 422. This book is very muchto do with the manner in which the judiciary approach the task of thinking aboutallegations of copyright infringement.

‘[H]istorians must and ought to be exact, truthful, andabsolutely free of passions, for neither interest, fear, rancor, noraffection should make them deviate from the path of the truth,whose mother is history, the rival of time, repository of greatdeeds, witness to the past, example and adviser to the present,

and forewarning to the future.’

Miguel De Cervantes, Don Quixote

‘History is fucking.’

Alan Bennett, The History Boys

1. History I: 1710–1774

The passing of the Statute of Anne in April 1710 marked a historic moment inthe development of copyright. As the world’s first copyright statute it provideda legal protection of 14 years for works published after the commencement ofthe Act,1 as well as a 21-year protection for any works already in print.2

Compared with the 15 years prior to the Act, in which there had been nolegislative protection available to the book trade,3 the statute ushered in aperiod of relative security for the London booksellers.4 The Act, however, wasnot entirely the legislative panacea which the booksellers had sought. While itdid provide a property in books to bring stability to an insecure book trade, atthe same time it introduced measures to try to ensure that no monopolisticabuses could be brought to bear upon that trade.5 More generally however, thelegislation had a much broader social focus and remit, one that concerned thereading public, the continued production of useful literature, and theadvancement and spread of education. The central plank of the Statute of Annewas then, and remains, a social quid pro quo. To encourage ‘learned Men tocompose and write useful Books’ the State would provide a guaranteed, if

13

1 An Act for the Encouragement of Learning by Vesting the Copies of PrintedBooks in the Authors or Purchasers of such Copies, during the Times therein mentioned1709, 8 Anne, c. 19, s. 1 (Statute of Anne); if the author of the work in question wasstill alive 14 years after the first publication of his work, then he was entitled to thebenefit of an additional 14-year period, ibid., s. 11. The Act was passed in April 1710but, as was the convention at the time, was considered to have effect as if it had beenpassed at the start of the regnal year, that is in September 1709.

2 Ibid., s. 1.3 Prior to the passing of the Statute of Anne, the London book trade received

protection for their published works in the guise of the Licensing Act 1662, 13&14Car.2, c. 33. This Act lapsed in May 1695. For a recent commentary on the movementof the law prior to the Statute of Anne see Loewenstein, J. (2002), The Author’s Due:Printing and the Prehistory of Copyright, London: University of Chicago Press.

4 For various accounts of the development of the law at this time see: Feather, J.(1994), Publishing, Piracy and Politics: An Historical Study of Copyright in Britain,London: Mansell; Patterson, L.R. (1968), Copyright in Historical Perspective,Nashville: Vanderbilt University Press; Ransom, H. (1956), The First CopyrightStatute, Austin: University of Texas.

5 See for example Patterson who reads the Act as a ‘trade-regulation statutedirected to the problem of monopoly in various forms’; Patterson, supra n. 4, p. 150.

finite, right to print and reprint those works – an entirely pragmatic bargaininvolving the author, the bookseller and the public.

When the statutory periods of protection provided by the Act began toexpire in 1731, those London booksellers who dominated the trade adopted a number of strategies by which to further safeguard their business. Theybegan to seek injunctions from the Court of Chancery for works by authorsthat fell outside the periods of statutory protection,6 while at the same timelobbying Parliament to extend the periods of protection provided by thelegislation.7 Eventually, with the case of Midwinter v. Hamilton (1743–48),8

they turned to the courts of common law, signalling the beginning of a 30-year period, often referred to as the ‘battle of the booksellers’, in which the London booksellers locked horns with a newly emerging Scottish booktrade over the right to reprint works falling outside the protection of the 1709Act. The Scottish booksellers argued that there existed no copyright in anauthor’s work at common law. By contrast, the southern monopolistsproclaimed that the Statute of Anne did not create rights de novo, but ratherserved to supplement and support a pre-existing common law copyright.During this period both the arguments for and against the existence of thecommon law right were developed through a number of notable cases,including Millar v. Kincaid (1749–51)9 and Tonson v. Collins (1761, 1762),10


6 See for example Eyre v. Walker (1735) 1 Black W 331, Motte v. Faulkner (1735)1 Black W 331, Walthoe v. Walker (1737) 1 Black W 331 and Tonson v. Walker (1739)1 Black W 331.

7 The booksellers tried twice, in 1735 and in 1737, to secure a new Act to replacethe existing Statute of Anne. See: A Bill for the better Encouragement of Learning andthe more effectual securing of the Copies of Printed Books to the Authors or Purchasersof such Copies, during the Times therein mentioned (1735), Bodleian Library, MSCarte 114 391–96; A Bill for the Better Encouragement of Learning by the moreEffectual Securing the Copies of Printed Books to the Authors or Purchasers of suchCopies (1737), British Library, BS 68/16 (1).

8 There exist a number of documents relating to this action available in theBodleian Library, the British Library, and the Advocate’s Library, Edinburgh. See forexample: Petition of the Booksellers of London against the Booksellers of Edinburghand Glasgow, 15 July 1746; Answers for the Booksellers of Edinburgh and Glasgow tothe petition of Andrew Millar and other Booksellers in London, July 29 1746; and,Answers for the Booksellers of Edinburgh and Glasgow to the Petition of DanielMidwinter and other booksellers in London, 21 December 1746. See also Parks, S.(ed.) (1974), The Literary Property Debate: Seven Tracts, 1747–1773, New York, USand London, UK: Garland Publishing.

9 The Case of the Appellants, 8 February 1751, BM 18th century reel 4065/03; The Case of the Respondents, 11 February 1751, BM 18th century reel4065/04.

10 Tonson v. Collins (1761) 1 Black W 301; Tonson v. Collins (1762) 1 Black W329.

and culminating in the two seminal decisions of Millar v. Taylor (1768)(Millar (1768))11 and Donaldson v. Becket (1774) (Donaldson).12

In November 1765 counsel for the bookseller Andrew Millar appeared beforethe Court of Chancery alleging that Robert Taylor, a printer from Berwick, had‘vended and sold’ copies of his copyright work The Seasons by the poet JamesThomson. Taylor responded that, as Thomson had died in 1748, the work wasno longer within the copyright term provided by the 1709 Act. Sewell MRordered that ‘a case be made for the opinion of the judges of the Court ofKing’s Bench’ as to whether ‘the plaintiff had at the time of filing his bill inthis Court a property in the copies mentioned’,13 which referral gave rise toMillar v. Taylor (1768). Delivering the historic decision that copyright didexist at common law, Mansfield CJ set out that ‘it is agreeable to the Principlesof Right and Wrong … and therefore to the Common Law, to protect the Copy… after the Author has published’. Asking himself the rhetorical why thisshould be so, he observed simply ‘[b]ecause it is just, that an Author shouldreap the pecuniary Profits of his own Ingenuity and Labour’. Moreover, forMansfield CJ, this turned ‘upon Principles before and independent’ of theStatute of Anne.14 As a result, the new Lord Chancellor Apsley, in July 1770,ordered Taylor to account for all the copies of The Seasons that he had soldand granted a perpetual injunction to prevent the subsequent reproduction ofthe work.

One year later Thomas Becket filed a bill in Chancery against the Scottishbookseller Alexander Donaldson praying for an injunction to prevent himfrom printing the same work, The Seasons,15 upon submission of which an

History I: 1710–1774 15

11 Millar v. Taylor (1768) 4 Burr 2303. The judgment of the court was handeddown in April 1769, however the court had earlier decreed that as Millar had died on 8 June 1768 its decision was to be treated as if it had been delivered on 7 June 1768.

12 Donaldson v. Becket (1774) 4 Burr 2408.13 Public Records Office, C 33 426/68.14 Millar (1768) 2398. The decision in Millar, however, was not unanimous;

indeed this was the first occasion on which there was disagreement amongst the judgeson the King’s Bench upon any given issue. Of the other judges who spoke to the issue,Willes and Aston JJ were in agreement with Mansfield CJ, while Yates J provided thedissenting opinion. Yates J found it impossible to accept that a right could accrue to anauthor in perpetuity and considered it essential to keep in mind the consequences which‘the publick [sic] will feel, if this claim should be established’. He concluded: ‘[I]t isequally my duty, not only as a judge, but as a member of society, and even as a friendto the cause of learning, to support the limitations of the [Statute of Anne]’; ibid., p. 2395.

15 Following Millar’s death, Becket and others had purchased his rights inThomson’s work.

interlocutory injunction was granted. In 1772 the case was heard before LordChancellor Apsley who considered himself bound by the decision of the courtin Millar (1768). As a result, he decreed that the injunction formerly grantedbe made perpetual.16 Donaldson appealed and in January 1774 his petition wasread before the House of Lords. As was the custom, whenever the House wasfaced with a particularly complex or difficult legal issue the twelve commonlaw judges were ordered to attend and to proffer advice for the considerationof the peers. Once counsels’ arguments had been delivered, Lord ChancellorApsley put three questions to the judges for the consideration of the House, towhich Lord Camden added a further two. The five questions were as follows:

1. Whether, at common law, an author of any book or literary composition,had the sole right of first printing and publishing the same for sale, andmight bring an action against any person who printed, published, and soldthe same, without his consent?

2. If the author had such right originally, did the law take it away upon hisprinting and publishing such book or literary composition, and might anyperson afterward reprint and sell, for his own benefit, such book or literarycomposition, against the will of the author?

3. If such action would have lain at common law, is it taken away by theStatute of 8th Anne: and is an author, by the said statute, precluded fromevery remedy except on the foundation of the said statute, and on theterms and conditions prescribed thereby?

4. Whether the author of any literary composition, and his assigns, had thesole right of printing and publishing the same, in perpetuity, by thecommon law?

5. Whether this right is any way impeached, restrained, or taken away, by theStatute 8th Anne?

While both sets of questions essentially amounted to the same thing, theredoes exist a fundamental difference between them, identified by Patterson,who notes that ‘analytically, the first three questions were directed to the rightsof the author, the latter two to the rights of the booksellers’.17 Lord Camden, itwould seem, was wary of the ease with which a common law copyright mightbe confirmed under the simple rubric of an author’s right. Carefully stressingthe place of an author’s ‘assigns’ and the perpetual nature of the right underdiscussion, his two questions covered the same ground as the LordChancellor’s, but in a way that sought to direct the attention of the House ofLords from the author to the bookseller.


16 See Donaldson v. Becket (1774) 2 Bro PC 129.17 Patterson, supra n. 4, p. 176.

Eleven of the twelve judges gave their opinions upon these five questions(Lord Mansfield abstained on account of having already given his opinion onthe matter in Millar (1768)).18 The traditional interpretation of the judges’votes details that a large majority considered that there did exist a perpetualcommon law copyright (10 to 1),19 while a smaller majority believed it hadbeen impeached as a result of the passing of the Statute of Anne (6 to 5).

However, the traditional record of the vote on the all-important third andfifth questions is wrong. In fact a majority of the judges (6 to 5) did notconsider the common law right to be compromised by the legislation. Thecrucial opinion in this regard was that of Nares J. While the majority of reportsof the case suggest that Nares J decided that the common law right, afterpublication, was removed by the Act, it is clear that he did not actually holdthis opinion;20 rather he considered that the legislation simply operated tosupplement the copyright an author had at common law.21 However, his

History I: 1710–1774 17

18 There are six sources of information about the votes and the decision of theLords: there are two records of Donaldson (1774) in the traditional law reports: 4 Burr2408, and 2 Bro PC 129; two further accounts can be found in the Journal of the Houseof Lords (1774) vol. 34, 12–32, as well as Cobbett’s Parliamentary History from theNorman Conquest, in 1066, to the year 1803 (44 volumes), 17, London: Hansard, pp.953–1003; finally there were two contemporary pamphlets printed at the time of thedecision, The Pleadings of the Counsel before the House of Lords in the great Causeconcerning Literary Property (1774) (Pleadings (1774)) and an account to which Notesand Observations and References by a Gentleman of the Inner Temple were added, bothof which are reprinted in Parks, S. (ed.) (1975), The Literary Property Debate: SixTracts, 1764–1774, New York, US and London, UK: Garland Publishing. There are, aswell, various contemporary newspaper accounts of the decision.

19 This is sometimes represented as an 8 to 3 vote; see for example Whicher, J.(1961–62), ‘The Ghost of Donaldson v Beckett: An Inquiry into the ConstitutionalDistribution of Powers over the Law of Literary Property in the United States – Part 1’,Copyright Society of the USA, p. 128.

20 See: Abrams, H. (1983), ‘The Historic Foundation of American Copyright Law:Exploding the Myth of Common Law Copyright’, Wayne Law Review, p. 1119; Rose,M. (1993), Authors and Owners: The Invention of Copyright, London: HarvardUniversity Press; Deazley, R. (2004), On the Origin of the Right to Copy: Charting theMovement of Copyright Law in Eighteenth-Century Britain, 1695–1775, Oxford: HartPublishing. The judges in the majority on this point were: Nares, Ashurst, Blackstone,Willes, Aston JJ and Smythe CB; those in the minority were: Eyre, Gould JJ, Perrott,Adams BB and De Grey CJ.

21 Cobbett’s report notes that ‘[Nares] stated to the House why he thought acommon law right in literary property did exist, and why the statute of Anne did nottake it away’ and yet records a vote of ‘yes’ for the third question; Cobbett, supra n. 18,p. 975. The Gentleman’s report cites Nares J as commenting that ‘as it is admitted onall Hands that an author has a beneficial Interest in his own manuscript beforePublication, it is a most extraordinary circumstance, that he shall lose that beneficialinterest, the very moment he attempts to exercise it. The Statute my Lords, does nottake away the common law remedy, although it gives an additional one’; supra n. 18,

opinion on this point was at the time inaccurately recorded in the House andthen subsequently misreported.

In addition to this, that ten of the judges considered that copyright subsistedat common law is not entirely accurate either; in fact four judges expresslyrejected any such notion: Eyre J, Perrott, Adams BB, and De Grey CJ.22 Thereason for this particular confusion lies in the fact that the Lord Chancellor’sfirst question as to whether an author had the ‘right of first printing andpublishing’ his work at common law can be read in two different ways. Thefirst presupposes the existence of copyright, as an intangible property right, atcommon law – that is, a right to publish and re-publish one’s work to theexclusion of all others. The second, however, relates to the existence of a rightat common law which flows from the ownership of the physical object, themanuscript – in this case, a right of first publication (a right to divulge) andnothing more. In failing to pay attention to this distinction, various writershave misunderstood and misreported the way in which three of the judges,Perrott, Adams BB and De Grey CJ, approached this issue.23 The confusionbetween and conflation of these two distinct concepts, of a publication right


p. 35. In addition to the speeches of the judges themselves, Rose also provides evidenceof contemporary newspaper reports which indicate that Nares in fact voted ‘no’ to thecrucial third question; Rose, supra n. 20, pp. 154–58.

22 In general see Deazley, supra n. 20, Chapter 8.23 Perrott and Adams BB are often represented as having expressed that opinion

that there existed a ‘qualified common law copyright’; this however is not the case.What they did recognise was that an author had certain rights over his physicalmanuscript which incorporated the right to decide whether to publish the manuscript ornot; in Perrott B’s words: ‘An author certainly had a right to his manuscript: he mightline his trunk with it, or he might print it. After publication any man might do the same... if a manuscript was surreptitiously obtained, an action at common law wouldcertainly lie for the corporeal part of it, the paper. So if a friend to whom it is lent, or aperson who finds it, multiplies copies, having surrendered the original manuscript, hehath surrendered all that the author has any common law right to claim’; Cobbett, supran. 18, pp. 981–82. As for Lord DeGrey, he acknowledged that ‘[w]ith respect to the firstquestion, there can be no doubt that an author has the sole right to dispose of hismanuscript as he thinks proper; it is his property, and till he parts with it, he canmaintain an action of trover, trespass, or upon the case of any man who shall convertthat property to his own use’, but continued that ‘the right now claimed at the bar, isnot a title to the manuscript, but to something after the owner has parted with, orpublished his manuscript; to some interest in right of authorship, to more than thematerials or manuscript on which his thoughts are displayed, which is termed LiteraryProperty ... which right is the subject of the second question proposed to us.’; ibid., p. 988. That is, in answering this first question DeGrey CJ was not addressing the issueas to whether or not copyright exists at common law, but was simply asserting thateveryone has certain rights which flow from the fact of ownership of the physicalmanuscript; not a case of a common law copyright, but rather common law rights overyour copy. Lord DeGrey, like Perrott, Adams BB, and Eyre J, comprehensively rejectedany idea of copyright at common law.

and the right to first publish, features heavily in the subsequent copyrightcommentary of the nineteenth and early twentieth century as we shall later see.However, of importance for the moment is that in the House of Lords amajority of the judges (seven) had acknowledged the existence of a commonlaw copyright and that a majority of those judges (six) considered thiscommon law right pre-eminent over the Statute of Anne.

The House of Lords, however, was not bound to follow the opinion of themajority of the judges and although in practice it almost always chose to doso, this case proved to be one of the exceptions to the rule. The day after thejudges had finished delivering their opinions to the House, five further peersspoke to the issue. Of these five only Lord Lyttleton spoke in favour of thecommon law right. The others, the Bishop of Carlisle, and Lords Howard,Apsley and Camden, all spoke against it. Lord Camden proved the moststrident in his rejection of the common law right. Dismissing the ‘whole bread-roll of citations and precedents’ that had been relied upon in support of thecommon law right as a ‘heterogeneous heap of rubbish, which is onlycalculated to confound your lordships, and mislead the argument’, heexpounded upon two pertinent themes. The first turned on the sovereignty ofParliament, and the relationship between the legislature, the common law andthe judiciary. He reminded the judiciary that ‘[t]heir business is to tell thesuitor how the law stands, not how it ought to be’; ‘otherwise’ he continued‘each judge would have a distinct tribunal in his own breast’ and ‘[c]aprice,self-interest, [and] vanity would by turns hold the scale of justice’ while ‘thelaw of property’ would be ‘indeed most vague and arbitrary’.24

His second concern was that of the bookseller. With his additional twoquestions he had sought to shift the focus of the House away from the rightsof the author, to the consequences of such rights existing in a bookseller (theauthor’s assign) in perpetuity. He reminded the peers that ‘the common lawright now claimed at your bar is the right of a private man to print his worksfor ever, independent of … all mankind’.25 Should the Lords vote in favour ofthe perpetual right, he warned, ‘[a]ll our learning will be locked up in thehands of the Tonsons and the Lintots of the age’. Moreover the booksellers,these ‘engrossers’, would then set upon books whatever price ‘their avaricechuses [sic] to demand, till the public became as much their slaves, as theirown hackney compilers are’. The notion of a right at common law was to LordCamden ‘as odious and selfish as any other, it deserves as much reprobation,and will become as intolerable’. ‘Knowledge and science’ he declared ‘are notthings to be bound in such cobweb chains’.26

History I: 1710–1774 19

24 Cobbett, supra n. 18, pp. 998–99.25 Ibid., p. 994.26 Supra n. 18, pp. 999–1001.

And so, 16 opinions had been delivered for the consideration of the peers,the last five of which had been expounded upon the day of the vote itself.Concerning Lord Camden’s fourth question as to the existence of copyright atcommon law, eight of those opinions endorsed the existence of such a right(seven judges and one peer), 27 while eight had rejected the notion (four judgesand four peers).28 However, while five questions had been put to the judges,only one question was put to the peers: should the perpetual injunctionpreviously granted by Lord Chancellor Apsley be overturned? This questionapproximated most closely to a choice between a perpetual common law rightand the time-limited Statute of Anne. The Lords, in finding for the defendant,opted for the latter. And yet, the nature and substance of this single vote failedto address the issue as to whether the Act had simply created a new right ofprinting books, or whether it had abrogated a pre-existing common lawcopyright; the decision to reverse the Lord Chancellor’s decree said nothing ofthis.

However, while the actual vote of the peers did not speak directly to thisissue, Lord Chancellor Apsley had addressed it and, as Abrams observes,while ‘the judicial statements were only advisory’, ‘the Lords’ statements werethe law of the case’.29 This was the Lord Chancellor who ‘entered into aminute discussion of the several citations and precedents that had been reliedupon at the Bar’, who ‘proved that they were foreign to any constructionswhich could support the Respondents’, who ‘very fully stated the several casesof injunctions in the Court of Chancery’, and who ‘gave an historical detail ofall the proceedings in both Houses upon the several stages’ of the Statute ofAnne ‘all tending to shew [sic] the sense of the legislature, at the time ofpassing it, to be against the right’.30 That is, Lord Chancellor Apsley, like LordCamden, explicitly denied the existence of any common law right ab initio,and it was this position that the majority of the peers embraced.

Moreover, that the House of Lords rejected the existence of the commonlaw right, contrary to the sentiments of the majority of the common lawjudges, is apparent in the language and success (or lack thereof) of twopetitions for legislation that followed in the wake of the decision, the firstcoming from the London booksellers, the second, from the universities ofOxford and Cambridge. Six days after the decision the booksellers petitionedthe Commons complaining that they ‘had constantly apprehended, that the


27 That is: Nares, Ashurst, Blackstone, Willes, Aston, Gould JJ, Smythe CB andLord Lyttleton.

28 That is: Eyre J, Perrott and Adams BB, De Grey CJ, the Bishop of Carlisle, andLords Howard, Apsley and Camden.

29 Abrams, supra n. 20, p. 1169.30 Pleadings, supra n. 18, p. 35.

[Statute of Anne] did not interfere with any copy-right that might be investedin [them] by the common law’. ‘[B]y a late solemn decision of the House ofPeers’ they continued ‘such common law right of authors and their assignshath been declared to have no existence, whereby your petitioners will be verygreat sufferers thro’ their involuntary misapprehension of the law’.31 Thepetition was referred to a committee for examination and, on 24 March 1774,leave was given in the Commons to bring in a Bill for the Relief ofBooksellers.32 Following this decision, a number of other petitions werepresented before the House. The booksellers of Edinburgh claimed that ‘thespecial indulgance [sic] prayed for by the London booksellers’ would behighly injurious to everyone concerned in ‘Bookselling, the Papermanufacture, the Art of printing, and other Branches therewith connected’.Acknowledging that the Scottish book trade was primarily concerned with ‘re-printing English books’ when the terms of the 1709 Act permitted it, theydeclared that extending the monopoly asked for by the London booksellerswould ‘be the ruin of many families in Scotland’ as well as being ‘prejudicialto the community at large’.33 Similar sentiments were expressed by otherbooksellers from London, Westminster, Glasgow and York, each decrying thedeleterious consequences of the proposed Bill.34

Not surprisingly, Alexander Donaldson himself did not remain silent. Hedelivered a petition referring to the decision he had secured before the Lordsand expressed his alarm at seeing it ‘ready to be snatched out of his hands bythe very people who have been hitherto guilty of oppression’. Should the Billpass into law it would be ‘to the great detriment of the publick [sic], to theinjury of letters, and to the utter ruin of inferior booksellers both in town andcountry’. Rejecting the ‘pretence of hardship’ claimed by the Londonbooksellers as ‘without foundation’, he prayed to the House ‘that the statute ofQueen Anne, which was expressly made for the encouragement of learning,may not now be altered or suspended, for the encouragement of the Londonbooksellers only’.35

These subsequent petitions fell on deaf ears. In March 1774 a Bill waspresented to and passed through the Commons, the Preamble to which, like thebooksellers’ original petition, set out that it had ‘lately been adjudged in theHouse of Lords that no such copy right in authors or their assigns doth existat common law’.36 Without drawing any distinction between works in which

History I: 1710–1774 21

31 Journal of the House of Commons, vol. 34, p. 513 (emphasis added).32 Ibid., pp. 588–90.33 Supra n. 31, pp. 665–66.34 Supra n. 31, pp. 668 and 698.35 Supra n. 31, p. 679.36 (Emphasis added).

copyright had expired, or works in which copyright under the 1709 Actcurrently subsisted, this Bill simply provided that any author (or his assign)who had already printed and published his work, should, from 4 June 1774,‘have the sole and exclusive liberty of printing such book … for the term offourteen years … and no longer’.37 The Bill however, was stalled in the upperchamber until the end of the parliamentary session; once again, the House ofLords had been the undoing of the London booksellers.

As noted above, the London monopolists were not the only interestedparties concerned by the decision in Donaldson. Carter writes that ‘[a]s soonas the House of Lords decided in 1774 that no subject had a perpetualcopyright in a published work … the Universities took steps to secureexceptional treatment’.38 In April 1775 leave was given, again in theCommons, for Lord North (then Chancellor of Oxford University) to prepareand bring in a Bill for enabling the Two Universities to hold in Perpetuity theCopy Right in books, for the advancement of useful Learning, and otherpurposes of Education, within the said Universities.39 North, although a peer,presented the Bill, steered it through the Commons, and brought it before theLords in less than 3 weeks.40 After only eight days before the Lords, theUniversities Act 1775 received the Royal Assent,41 granting the universities aperpetual right to reprint ‘all such books as shall at any time heretofore havebeen … bequeathed or otherwise given [to them] by the Author’ in order thatthe selling of such works would contribute to the generation of revenues ‘forthe Advancement of Learning, and other beneficial Purposes of Educationwithin the said Universities and Colleges’.42 In little over one month, theuniversities had secured what the London booksellers had unsuccessfullypursued for over 30 years.

That Parliament should sanction the granting of a statutory perpetualcopyright in certain books was not, in itself, considered problematic. Whatmattered, to the House of Lords at least, was who had control over theseperpetual privileges and why. When those in control were the universities, andwhen the revenues they generated were to be directed towards the advance-ment of those educational establishments (in theory at least), then both parlia-mentary chambers could agree that a perpetual statutory copyright, framed in


37 An Act for Relief of Booksellers and others, by vesting the Copies of PrintedBooks in the Purchasers of such Copies from Authors, or their Assigns, for a limitedTime.

38 Carter, H. (1975), A History of the Oxford University Press, to the Year 1780, 1, Oxford: Oxford University Press, p. 367.

39 Journal of the House of Commons, 35, p. 299.40 Ibid., pp. 340, 351, 370, 373.41 Universities Act 1775, 15 Geo. 3, c. 53.42 Preamble, s. 1.

such terms, was not such a controversial prospect. Indeed, the Act specificallyprovided that should either university sell any of these perpetual copyrightson, then all privileges granted therein were to be revoked.43 In this sense, theStatute of Anne and the Universities Act stand as twin pillars: both concernedcopyright in printed books, and both were secured on the strength of the socialimpact that each would have; both were fundamentally concerned with theadvancement of education and learning within Great Britain; and bothsupported the continued production of socially useful books. With the Statuteof Anne a necessary, if finite, bargain had been struck with the author and thebookseller; with the Universities Act a useful, non-finite, source of revenuewas provided for the support of two of the country’s most prestigious seats oflearning. Two contrasting measures directed toward the same end.

The failure of the London booksellers to secure further legislation in 1774,the success of the university lobby in 1775 and the language and tone of thelegislation that was proffered on behalf of the booksellers all reinforce the factthat, regardless of the wealth of argument and counter-argument which hadbeen expounded as to the nature of copyright in the 30 years leading up to theHouse of Lords’ decision, Donaldson turned primarily upon the same basicimpulses that underscored both the Statute of Anne and the Universities Act.In Donaldson, the House of Lords understood the copyright regime, first andforemost, as addressing the broader interests of society. A purely statutoryphenomenon, copyright was fundamentally concerned with the reading public,with the encouragement and spread of education, and with the continuedproduction of useful books. In deciding the case as they did, these eighteenth-century parliamentarians did not primarily seek to advance the rights of theindividual author. Rather, explicitly denying the existence of a common lawcopyright, they acted in the furtherance of much broader social goals andprinciples. The pre-eminence of the common good as the organising principleupon which to found a statutory system of copyright regulation waschampioned, while the notion of an authorial copyright at common law hadbeen declared not to exist.

That the House of Lords in Donaldson rejected the existence of anycommon law right is not, however, how that decision is popularly portrayed orunderstood. In the most recent edition of Copinger and Skone James onCopyright, Garnett, Davies and Harbottle write that in Millar ‘[t]he Court heldthat there was a common law right of an author to his copy stemming from theact of creation and that that right was not taken away by the Statute of Anne’.44

They continue:

History I: 1710–1774 23

43 Section 3.44 Garnett, K., Davies, G. and Harbottle, G. (eds) (2005), Copinger and Skone

James on Copyright, 15th edn, London: Sweet & Maxwell, para. 2–17.

The decision was finally overturned, however, by the House of Lords in Donaldsonv. Beckett in 1774, a case which decided that copyright was the deliberate creationof the Statute of Anne and thereafter treated as statutory property. Thus, the effectof the Statute of Anne was to extinguish the common law copyright in publishedworks, while leaving the common law copyright in unpublished works unaffected.45

Fundamental to this and other similar readings is the understanding thatauthors had a pre-existing copyright at common law over their work and that,with the 1709 Act, in limiting these natural rights Parliament sought to strikea more appropriate balance between the interests of the author and the widersocial good, in that to allow the author’s rights to run in perpetuity wouldhamper the free circulation of literature, knowledge and ideas. Such is thecommon perception of the balancing act that is copyright regulation – and it isa notion that has informed most of what has followed in the wake ofDonaldson.

However, because of the nature of the single vote in the appeals process tothe House of Lords, because of the lack of attention that the speeches of theindividual lords themselves have attracted, because of the emphasis that hasbeen placed upon the eleven judicial opinions delivered to the House, andbecause of the misreporting of key aspects of those opinions, Donaldsonprovided a conclusion to the eighteenth-century debate concerning theexistence of copyright at common law that has mislead judges, practitionersand academics alike for over 200 years. When the peers voted in favour ofreversing the earlier decree, they were voting against a perpetual right, but,regardless of their actual intention, their vote has been taken to correspondwith the (mis)reported opinion of the majority of the speaking judges. Itquickly becomes clear why the opinions of the 11 speaking judges bear somuch importance. It is not because they were decisive of the issue inDonaldson, but because they were later believed to represent an accuratesummary of the collective opinion of the House itself. Ultimately, what hasbeen taken from Donaldson is that there did exist a perpetual common lawcopyright, which right was not lost upon publication of an author’s work, butwhich was, on publication, prescribed by the Statute of Anne. With thereversal of the Lord Chancellor’s decree, the myth of a perpetual common lawcopyright in the author’s unpublished manuscript was created, albeit bydefault.

It is the story of the process by which this myth of a copyright at commonlaw takes root throughout the nineteenth century that provides the focus for thenext two chapters, a process which is all the more remarkable given that inJeffreys v. Boosey (1854)46 the House of Lords once again rejected the notion


45 Ibid.46 Jeffreys v. Boosey (1854) 4 HLC 815.

of a natural authorial copyright and, as was the case with Donaldson, onceagain the commentary of the law lords would become subsequently eclipsedby the opinions of the majority of the common law judges speaking to thepoint.

History I: 1710–1774 25

2. History II: 1774–1854

Two years after the House of Lords handed down their seminal decision inDonaldson v. Becket (1774) (Donaldson),1 reversing Millar v. Taylor (1768)(Millar),2 Capel Lofft, a young barrister attached to Lincolns Inns, publishedhis first, and only, collection of cases (which cases were principally decided inthe King’s Bench).3 Among the cases contained within Lofft’s volume isHawkesworth v. Newbery (1774), concerning an abridgement of DrHawkesworth’s Voyages by the defendant. The question for Lord ChancellorApsley was whether Newbery, in producing his abridged text, had infringedthe copyright in the original work. Lofft records the decision as follows:

The Lord Chancellor was of opinion that this abridgement of the work was not anyviolation of the author’s property whereon to ground an injunction.

That to constitute a true and proper abridgement of a work the whole must bepreserved in its sense: And then the act of abridgement is an act of understanding,employed in carrying a large work into a smaller corpus, and rendering it lessexpensive, and more convenient both to the time and use of the reader. Which madean abridgement in the nature of a new and meritorious work.

That this had been done by Mr. Newbery, whose edition might be read in a fourthpart of the time, and all the substance preserved, and conveyed in language as goodor better than the original, and in a more agreeable and useful manner. That he hadconsulted Mr. Justice Blackstone whose knowledge and skill in the profession wasuniversally known, and who as an author had done honour to his country.

That they had spent some hours together, and were agreed that an abridgement,where the understanding is employed in retrenching unnecessary and uninterestingcircumstances, which rather deaden the narration, is not an act of plagiarism uponthe original work, nor against any property of the author in it, but an allowable andmeritorious work. And that this abridgement of Mr. Newbery’s falls within thesereasons and descriptions.

Therefore the bill paying an injunction ought to be dismissed.4

There is much of interest in this singular and sparse account: the consensusbetween two legal luminaries who had earlier adopted fundamentally differentpositions on the question of the common law right in Donaldson; the implicit

26

1 Donaldson v. Becket (1774) 4 Burr 2408.2 Millar v. Taylor (1768) 4 Burr 2303.3 Lofft, C. (1776), Reports of Cases adjudged in the Court of King’s Bench, 12

Geo. 3–14 Geo. 3, London: Owen.4 Ibid., pp. 775–76.

literary commentary upon the original work in question; the conceptualalignment drawn between the act of plagiarism and the act of copyrightinfringement, and so on. Much, of course, has already been made of thedecision in existing commentaries on the development of nineteenth-centurycopyright jurisprudence concerning abridged texts.5 In the present context,however, it is worth drawing upon the record of the case for two discretepurposes. In the first place it reminds us of the nature and import of the LordChancellor’s reasoning in the Donaldson case – that the House rejected anynotion of an authorial copyright existing at common law, and that the principalreason for that decision concerned the promotion of the public interest in thesense of promoting the dissemination of learning and the increased productionand circulation of cheap and ‘useful books’.

Attitudes as to the existence of the common law right, as we shall see,waxed and waned throughout the nineteenth century, and it is in theexploration of this phenomenon that we come to the second reason foralluding to young Lofft’s collection of cases. Conscious of his youth, and ofthe fact that he had been called to the Bar just one year before his volume waspublished, Lofft considered it necessary to justify to his audience both theendeavour itself as well as the veracity of his accounts. In the Preface to hisvolume, in discussing the nature of reported cases, he drew his readers’attention to the fact that judicial decisions ‘are but Evidence of law, and notLaw’ albeit they are the ‘Highest Evidence’ one might rely upon. Moreover, heproffered, just as judgments were merely evidence of the law, ‘[r]eports are butevidence of judgments’ and, with no little self-deprecation, continued that‘these reports are far from the best evidence of these judgments’.Nevertheless, Lofft sought to assure his reader that:

I have not wilfully misrepresented or neglected any of those judgments. They areall within the memory of almost the whole bar, and of all the judges who deliveredthem; of whom the public has lost none, having suffered only (and there greatlyindeed) in the Exchequer, in which court none of the notes in this book are taken.6

For this and other reasons expounded therein, Lofft concluded his openinggambit by refusing to apologise, either to the public or to the profession, forthe nature or indeed the very existence of his work. Rather, he suggested thatthe very fact of having different and disparate accounts of the same cases, setout by different authors, might function to enable the profession and the publicbetter to understand the law per se:

History II: 1774–1854 27

5 See for example Vaver, D. (1995), ‘Abridgements and Abstracts: CopyrightImplications’, European Intellectual Property Review, p. 225.

6 Lofft, supra n. 3, pp. v–vi.

I must observe this, that in a few years constant attendance I have hardly known acase of any importance, either in law or equity settled upon the authority of a singlereporter, however eminent or respectable; but that I have known (and there aremany who know it better) numbers of cases, where an obscure point in one reporter,though of no ordinary merit, has been made clear by reference to another, where thetrue gist of the question has been ascertained, and the true reasons of the judgments,by lights drawn from the concurrence, nay, sometimes, from the opposition ofvarious reporters.7

Multiple accounts of the same decisions can indeed function to elucidate morefully the meaning and significance of a given judicial pronouncement;however they can similarly operate to obscure.8 Lofft was at pains to impressupon his reader that he did not intend to provide his ‘own thoughts andopinions’ but only the ‘thoughts, opinions and judgments of those who …must deserve and are secure of their notice’.9 His work was to be neither morenor less than an abridgement of decided cases.10

The dominance of this particular form of legal literature was subsequentlyto be supplanted with the rise of the legal treatise throughout the nineteenthcentury,11 the writers of which did not, nor could not make any similar claimto the type of objective reportage to which Lofft aspired. They were indeedproffering their own thoughts and opinions (as is this author), and it is with theinfluence of these texts, in particular in the late nineteenth and early twentiethcenturies, in setting the parameters as to the manner in which copyright was tobe understood, as well as reifying the myth of copyright at common law, thatthis and the next chapter is primarily concerned – that is, the constitutivepower of legal writing. In this sense, as we shall see, those writing legaltreatises upon copyright did more than organise, report and critique the law;truly, they wrote the law.

Among the numerous reasons that Lofft gave for compiling his collection ofKing’s Bench decisions one ran as follows:

I don’t know that there ever were fewer [reporters] since the beginning of the year-books now above four centuries and an half: And I gladly acknowledge [the current


7 Ibid., p. ix.8 See in general Doupe, M. and Salter, M. (2000), ‘Concealing the Past?:

Questioning Textbook Interpretations of the History of Equity and Trusts’, LiverpoolLaw Review, p. 253, and Doupe, M. and Salter, M. (2000), ‘Approaching the Natureand History of Property Law: The Limits of the Cheshire World View’, King’s CollegeLaw Review, p. 49.

9 Lofft, supra n. 3, p. ix.10 On the history and development of different forms of legal literature see

Simpson, A.W.B. (1983), ‘The Legal Treatise and Legal Theory’, in Ives, E.W. andManchester, A.H. (eds), Law, Litigants and the Legal Profession, London: RoyalHistorical Society, pp. 11–29.

11 Lofft, supra n. 3, p. ix.

reporters’] merit as remarkable as the smallness of their numbers. But if one badreporter should be added it would be his own loss and misfortune; if you will hisfolly – or, if you choose to say – his crime; it can be no prejudice to the good: Butif the cases I have to offer shall turn out not so bad … I flatter myself it will be apleasure to them that their labours have encouraged a young man to labour in hisprofession.12

It is important to bear in mind that in the years following Donaldson, andthroughout the rest of the eighteenth century, relatively few cases concerningcopyright came before the courts.13 Moreover, during that same period, evenfewer of those cases were reported in legal texts relatively contemporaneouslywith the judicial decisions themselves.14 Of the few that were, in the presentcontext, the two recorded by Durnford and East are the most significant:Coleman v. Wathen (1793) (Coleman)15 and Beckford v. Hood (1798)(Beckford).16 In both we can trace the beginnings of the recasting ofDonaldson and the first emergence of the cult of Millar. In Coleman, theplaintiff took an action against the defendant for staging a production of theplay, The Agreeable Surprise, which the plaintiff had purchased from itsauthor, the Irish dramatist John O’Keefe. Kenyon CJ, without even hearingcause on behalf of the defendant, dismissed the claim explaining that the 1709Act ‘only extends to prohibit the publication of the book itself’ and not itsperformance.17 Of interest, however, is the account of the argument on theplaintiff’s behalf:

Erskine shewed cause, on the ground that this was sufficient evidence for the juryto conclude that the work had been pirated; for it could not be supposed that theperformers could by any other means have exhibited so perfect a representation ofthe work. Besides, if this were held not to be a publication within the statute, all

History II: 1774–1854 29

12 Ibid., pp. vii–viii.13 Those reported include: Hawkesworth v. Newbery (1774) Lofft 775; Bach v.

Longman (1777) 2 Cowp 623; Eyre v. Carnan (1781) 6 Bac Abr, 7th edn, p. 509;Storace v. Longman (1788) 11 East’s 244; Sayre v. Moore (1795) 1 East’s 361; Carnanv. Bowles (1786) 1 Cox 283; De Trusler v. Murray (1789) 1 East’s 363; Brooke v.Milliken (1789) 3 TR 509; Coleman v. Wathen (1793) 5 D&E 245; Brook v. Wenworth(1796) 3 Anst 881; Beckford v. Hood (1798) 7 D&E 620.

14 Sayre v. Moore (1785) and De Trusler v. Murray (1789) were first recorded inEast’s Reports (1801). On Sayre v. Moore (1785) see also Oldham, J. (1992), TheMansfield Manuscripts and the growth of English law in the Eighteenth Century,Chapel Hill, US and London, UK: University of North Carolina Press, 770. On the lawreports from this era in general, see Veeder, V.V. (1968), ‘The English Reports,1537–1865’, in Select Essays in Anglo-American Legal History, II, London: Wildy &Sons, pp. 123–54.

15 Coleman v. Wathen (1793) 5 D&E 245.16 Beckford v. Hood (1798) 7 D&E 620.17 Coleman, p. 245.

dramatic works might be pirated with impunity; as this was the most valuable modeof profiting by them. And in Millar v. Taylor, a majority of the Judges were ofopinion, in the House of Lords, that an author had an exclusive property in hisworks independently of the stat. of Anne.18

While Erskine did not win the point, the conflation of Millar and Donaldsonin the printed report is remarkable indeed, foreshadowing the manner in whichthe reality of Donaldson would, not once, but twice throughout the course ofthe nineteenth century, become subsumed within the rhetoric of Millar.

This process, nascent in Coleman, was continued in Beckford, whichconcerned the reproduction of a literary work that fell squarely within theprotection of the Statute of Anne. Unfortunately for the plaintiff, he had notregistered his work in accordance with the Act,19 and so could not pursue forthe remedies provided therein. Instead he sought the common law remedy ofdamages (by an action on the case) and the question for the King’s Bench waswhether such an action could be sustained.

In Millar the King’s Bench under Lord Mansfield had decided that anauthor did have a perpetual right at common law in his literary productions;the decision however was not unanimous, with Yates J dissenting on thepoint.20 Now the King’s Bench consisted of Lord Kenyon, Ashurst J (who hadsimilarly held in favour of the common law right in Donaldson), Grose andLawrence JJ. In resolving Beckford, and recasting Donaldson, this court wouldact with unanimity.

In presenting his client’s case, Reader, counsel for Beckford, adopted twobeguiling rhetorical strategies. In the first instance, he continuously stressedthat the decision in Donaldson concerned the nature of the common law rightpost-publication only. In the second instance, he pressed two of the earlierdissenting voices as to the existence of the common law right, Yates J and Eyre B,21 into service in support of his client’s position. As to the first, Readerobserved:

Mr Justice Yates, who in the case of Millar v. Taylor in this Court was alone ofopinion that an author had not a right of property at common law in his works whenpublished, was yet decidedly of opinion that by the first clause of the statute ofAnne, an exclusive right was vested in the author during the terms therein limited;and that notwithstanding the penalties and confiscation given by the same act theauthor has all the common law remedies for the enjoyment of that right.22


18 Ibid.19 An 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 mentioned1709, 8 Anne, c. 19, s. 2 (Statute of Anne).

20 See Chapter 1, n. 14.21 Ibid. See also Chapter 1, n. 22 and accompanying text.22 Beckford, pp. 623–24.

As to the second he argued that, while Eyre B might have given his opinionagainst the common law right after publication, he ‘was yet of [the] opinionthat there might be a remedy in equity, upon the foundation of the statuteindependently of the terms and conditions thereby prescribed in respect of thepenalties given’.23 Marryat, counsel for the defendant, countered that when astatute was ‘merely confirmatory of a pre-existing right’ then any penaltiescontained therein might indeed be considered to be simply accumulative tothose already existing at common law; this however was not the case for worksprotected by copyright. In support, Marryat drew a parallel between engraversand authors and suggested that, as was evident from the legislative provisionspreventing the reproduction and sale of protected engravings,24 ‘theLegislature thought that no such remedy as this now attempted lay by virtueof the statutes’.25

Kenyon CJ’s opening statement made clear his opinion on the common lawright:

All arguments in support of the rights of learned men in their works, must ever beheard with great favour by men of liberal minds to whom they are addressed. It wasprobably on that account that when the great question of literary property wasdiscussed some judges of enlightened understanding went the length of maintainingthat the right of publication rested exclusively in the authors and those who claimedunder them for all time.26

While he was sure that the Lords in Donaldson were right to confine the rightto the time limited within the 1709 Act, Kenyon CJ was equally certain that‘the common law gives the remedy by action on the case for the violation ofit’ within those times.27 Ashurst J, not surprisingly, was of the same mind. Of

History II: 1774–1854 31

23 Ibid., p. 624.24 Engraving Copyright Act 1735, 8 Geo. 2, c. 13; Engraving Copyright Act 1767,

7 Geo. 3, c. 38.25 Beckford, p. 625.26 Ibid., p. 627; for other Lord Kenyon decisions concerning copyright see: De

Trusler v. Murray (1789) 1 East’s 363, and Cary v. Longman (1801) 1 East 358.27 Beckford, p. 627. A number of subsequent writers and judges have taken Kenyon

CJ’s observations to indicate that he was ‘against the common law right’ in the sensethat he did not consider a copyright to exist at common law; see for example thecomments of Parke B and Lord Brougham in Jeffreys v. Boosey (1854) 4 HLC 815(Jeffreys), and Copinger, W.A. (1870), The Law of Copyright in Works of Literatureand Art, London: Stevens & Haynes, p. 17. However, that Kenyon considered thedecision in Donaldson was the correct one does not necessarily mean that heconsidered no common law copyright to exist. Rather, given the overall tenor of hiscommentary, as well as those of the judges sitting with him, it is suggested that he didconsider the common law right to exist, but also thought the House of Lords correct toconsider it circumscribed by the Statute of Anne.

the four King’s Bench judges however it was Grose J who specificallyaddressed Donaldson and its relationship with the issue before the court:

I was at first struck with the consideration, that six to five of the judges whodelivered their opinions in the House of Lords … were of opinion that the commonlaw right of action was taken away by the statute of Anne; but upon further view, itappears that the amount of their opinions went only to establish that the commonlaw right of action, could not be exercised beyond the time limited by that statute.28

To complete the recasting of Donaldson, Lawrence J, who was in completeagreement with the three previous opinions, provided Lord Mansfield with thelast word, relying upon his decision in Tonson v. Collins (1761) (Tonson(1761)) as an authority in point.29

Four years after the decision in Beckford the first treatise exclusivelydevoted to the law of copyright was published: The Law of Copyright byJoshua Montefiore. In this short work (only 59 pages in length), Montefiorecommented that ‘in the opinions of no less than eight of the twelve judges’ inDonaldson, the common law right ‘was allowed and perpetuated by thecommon law of England; but six held it abridged by the statute of Anne’.30 Theprocess in Beckford whereby the (misreported) opinions of the 11 judges whoprovided opinions for the House of Lords in Donaldson would come to standfor the collective opinion of the House itself had begun in the legal literaturealso.

It was clearly evident 20 years later, when the issue from Coleman wasreplayed before the courts in Murray v. Elliston (1822) (Murray (1822)).31 InMurray, the defendant had staged a production at the Theatre Royal, DruryLane, based upon Byron’s work Marino Faliero, Doge of Venice, the copyrightin which Byron had assigned to the plaintiff. James Scarlett, later LordAbinger, argued the case for the plaintiff upon the ‘right of property’ which hisclient had in the work, ‘whether that right of property arise from the commonlaw, or from the statutes relative to it’ being immaterial; that is, the plaintiffhad a property in his work which may well be damaged as a result of theunauthorised adaptation. Adolphus, for Elliston, grounded the response


28 Beckford, p. 629.29 Tonson v. Collins (1761) 1 Black W 301. For a commentary on Tonson (1761)

see Deazley, R. (2004), On the Origin of the Right to Copy: Charting the Movement ofCopyright in Eighteenth-Century Britain, 1695–1775, Oxford: Hart Publishing,Chapter 5(2) (On the Origin of the Right to Copy).

30 Montefiore, J. (1802), The Law of Copyright, London, p. 2. Montefiore recordedBeckford in the following way: ‘The right of property in a new work is vested in theauthor for a certain period by 8 Ann c. 19 and the author has a remedy by action atcommon law, for violation of such property’; ibid., p. 28.

31 Murray v. Elliston (1822) 5 B&Ald 657.

squarely within Grose J’s reading of Donaldson, that the majority of commonlaw judges had decided that the action at common law was taken away by theStatute of Anne and that ‘the author was precluded from every remedy, excepton the statute’; ‘the claim by the plaintiff’ he continued ‘is at variance with thisdecision’.32 Abbott CJ and the rest of the court held for the defendant: anaction could not be maintained for adapting and performing Byron’s work.

This orthodoxy of the interplay between the common law and the statutehowever had not yet been fully entrenched. Ten years after Montefiore’s textwas published, the year in which Charles Dickens was born, Beckford and theStatute of Anne were subsequently considered in University of Cambridge v.Bryer (1812) (University of Cambridge), in which the university soughtcompensation from the defendant for non-delivery of his published work asrequired under s. 5 of the 1709 Act.33 Henry Peter Brougham, counsel for thedefendant, argued that only such works as were registered in accordance withthe legislation (s. 2) fell within the library deposit provision (s. 5). ‘It has beensaid’ Lord Ellenborough observed:

[T]hat the statute has three objects; but I cannot subdivide the two first; I think ithas only two. The counsel for the plaintiffs contended that there was no right atcommon law; and perhaps there might not be; but with that we have notparticularly anything to do. He has considered the three objects to be, first, theprotection of authors, by vesting the right in them; then the fortifying their right bypenalties; and, thirdly, the encouragement of literature. But I think it has properlybut two, viz. the object of promoting the copyright, and that of the advancement oflearning.34

Even if the court were not properly concerned with adjudicating upon theexistence of the common law right, how did Ellenborough CJ rationaliseBeckford? He did so in the following terms:

It was very properly observed in Beckford v. Hood, that unless the proprietor of thebook had a right of action independent of that given for the penalties, his remedymight be anticipated, or rather precluded by a common informer;[35] who might by

History II: 1774–1854 33

32 Ibid., p. 659.33 University of Cambridge v. Bryer (1812) 16 East’s 317.34 Ibid., pp. 320–21 (emphasis added).35 This was as a result of s. 1 of the legislation, which set out that should anyone

infringe against the copyright subsisting in any work ‘then such offender or offendersshall forfeit such book or books, and all and every sheet or sheets, being part of suchbook or books, to the proprietor or proprietors of the copy thereof, who shall forthwithdamask and make waste paper of them; and further, that every such offender oroffenders shall forfeit one penny for every sheet which shall be found in his, her or theircustody, either printed or printing, published or exposed to sale, contrary to the trueintent and meaning of this Act; the one moiety thereof to the Queen’s most Excellentmajesty, Her Heirs and Successors, and the other Moiety thereof to any person or

some species of collusion difficult to detect, have stopped the course of his remedyentirely; and therefore the action was upheld in that case.36

In Ellenborough CJ’s opinion, it was on this basis that an action wasmaintainable independently of the penalties provided – upon the authority ofthe ‘substantial provision’ which vested the copyright in an author (that is, s. 1 of the Statute of Anne) rather than one of a pre-existing common lawright.37


persons that shall sue for the same’ (emphasis added). That is, the right of complaintagainst infringement was not restricted to the author or his assign, but to anyone whomight sue for the same upon authority of the Act.

36 University of Cambridge, p. 322.37 The decision in University of Cambridge was highly controversial in that it

established that even books which were not registered at Stationers’ Hall in accordancewith the legislation were, nevertheless, required to be delivered to the copyrightlibraries. A considerable number of publications followed in its wake decrying theresult: Brydges, E. (1813), A Summary Statement of the Great Grievance imposed onAuthors and Publishers, London: Longman, Hurst, Rees, Orme and Brown; Cochrane,J.G. (1813), The Case Stated between The Public Libraries and the Booksellers,London: Moyes; Turner, S. (1813), Reasons for a Modification of the Act of Anne,Respecting the Delivery of Books and Copyright, London: Nichols and Son andBentley; Britton, J. (1814), The Right of Literature, or an Inquiry into the Policy andJustice of the Claims of Certain Public Libraries on all the Publishers and Authors ofthe United Kingdom, London: Valpy. Not surprisingly, those who wrote condemningthe decision invoked the conceit of an author’s copyright subsisting at common law,with the library deposit requirement representing a tax upon this natural property right.For example, Brydges wrote that ‘[t]he Legislature has long acknowledged (and theCommon Law seems from early ages to have acknowledged) the principle of propertyin the productions of a man’s mind’ and that ‘[t]his tax then is a blight to production. Itnips the most valuable fruits of Literature in their very bud’, ibid., p. 12. Similarly,Cochrane wrote that ‘[f]rom the first introduction of printing into England ... there hadbeen no legislative enactment on the subject, but it had always been understood andacted upon, that the copyright of every author or proprietor was vested in him inperpetuity’, ibid., p. 3. Again, Turner commented: ‘It will make the question of rightstill more clear, if we consider what property in copyright authors did possess, andwould now have possessed, if the Act of Anne had never passed. Happily, we here haveto tread on firm ground; the legal corresponds with the moral and philosophical right.It is well known that in the Case of Millar v. Taylor, 1769, Lord Mansfield, and Mr.Justice Willes, and Mr. Justice Aston, were of opinion, that there was a common lawright of an author to his copy in perpetuity, independent of the Act of Anne, and that itwas not taken away by his publication of the work, or by the Act of Anne … The samequestion was brought before the House of Lords, 1774, in the Case of Donaldsonagainst Becket … [and] on this solemn decision, it was determined that by the passingof the Act of Anne the perpetual right of authors had been taken away, and a term offourteen years, with the contingency of another term of fourteen years, substituted inits stead’, ibid., pp. 22–23. Moreover, Turner makes his observations as to the impactof Donaldson relying entirely upon the opinions of the common law judges, andwithout making any reference to the speeches of the Lords at all; ibid. A Select

This approach was consistent with his previous decision in Roworth v.Wilkes (1807), which concerned the reproduction of the plaintiff’s treatise, TheArt of Defence on Foot, including various engravings contained therein.38 Asto the prints in particular, the relevant legislation required that the ownerengrave his name upon them,39 which the plaintiff had failed to do; as a resultthe defendant argued that Roworth was not entitled to any remedy under the1735 Act. Lord Ellenborough observed: ‘Although the plaintiff’s name is notengraved upon them, if there has been a piracy, I think the plaintiff is entitledto a verdict … The interest being vested, the common law gives the remedy’.40

In the instant case, that the work had not been registered did not then mean thatthe plaintiff had no protection in accordance with the legislation, as a result ofwhich he was liable for delivery of his published work, given that the librarydeposit provision ‘relates to the persons whose property is protected for theperiod for which it is protected’.41

Lord Ellenborough presided over one further case with a direct link toDonaldson before Isaac Espinasse completed and published his Treatise on theLaw of Actions on Statutes … and on the Statutes Respecting Copyright (1824)(Treatise on the Law of Actions on Statutes):42 Brooke v. Clarke (1818)(Brooke (1818)).43 The link was Francis Hargrave, the author of an annotatedversion of Coke’s Institutes of the Laws of England, to which the actionpertained. Hargrave had been third counsel for the London booksellers inDonaldson and, not given the opportunity to present his arguments before the

History II: 1774–1854 35

Committee of the House of Commons was appointed to look into the library depositprovisions, amongst other things. In its Report of June 1818 the Select Committeenoted as follows: ‘During this period, the claim of authors and publishers to theperpetual Copyright of their publications, vested upon what was afterwards determinedto have been the common law, by a majority of nine to three of the Judges, on the casesof Millar and Taylor in 1769, and Donaldson and Becket in 1774 … By this Act [the1709], which in the last of these two cases, has since been determined to havedestroyed the former perpetual Copyright, and to have submitted one for a more limitedperiod’; (1818) Report from the Select Committee on the Copyright Acts, 4.

38 Roworth v. Wilkes (1807) M&R 94 (Roworth); Roworth, C. (1798), The Art ofDefence on Foot, with the broad sword and sabre, uniting the Scotch and Austrianmethods into one regular system, London: Egerton.

39 Engraving Copyright Act 1735, s. 1. See also: Engraving Copyright Act 1767;Prints Copyright Act 1776, 17 Geo. 3, c. 57.

40 Roworth, p. 98 (emphasis added).41 University of Cambridge, pp. 322–23. On this opinion that the remedy at

common law would lie for so long as the statutory protection lasted see also thedecision of the Scottish Court of Session in Cadell and Davies v. Robertson (1812) TheTimes, 7 March 1812.

42 Espinasse, I. (1824), A Treatise on the Law of Actions on Statutes … and on theStatutes Respecting Copyright, London.

43 Brooke v. Clarke (1818) 1 B&Ald 396.

Lords, he published them after the decision as An Argument in Defence ofLiterary Property.44 Hargrave, who was still living, had first published hisedition of the Institutes of the Laws in England in 1783, and had executed anassignment to the defendant the following year. In accordance with theprovisions in the 1709 Act the copyright in the work subsisted for the next 28years.45 On 12 February 1817 however, Hargrave executed a furtherassignment of the same work, this time to the plaintiff. When the defendantcontinued to publish the work, the plaintiff sought an injunction to preventthem from so doing, and the matter was referred by the Lord Chancellor toEllenborough CJ’s court. The plaintiff sought to rely upon the recently passedCopyright Act 1814, the first substantial revision of the Statute of Anne.46

Among other things, the new legislation provided that any new work,printed and published, would be protected for a single 28-year term, and thatshould the author of the work still be alive at the end of that period, he wouldenjoy the copyright in the work ‘for the residue of his natural life’.47 Moreover,the Act set out that:

[I]f the author of any book or books which have been already published shall beliving at the end of twenty eight years after the first publication of the said book orbooks, he or she shall for the remainder of his or her life have the sole right ofprinting and publishing the same.48

It was upon the basis of this provision that Hargrave sold the rights in his workto the plaintiff, the plaintiff arguing before the court that the provisionextended equally well to those works by living authors in which the copyrighthad previously expired, as to those works by living authors that were stillwithin their copyright term at the time of the passing of the Copyright Act1814. In a unanimous decision, Ellenborough CJ and the rest of the court heldon behalf of the defendant – the act did not operate retrospectively – thosecopyrights which had previously expired were not to be revived.49 Hargrave,


44 Hargrave, F. (1774), An Argument in Defence of Literary Property, London:Otridge, reprinted in Parks, S. (ed.) (1974), Four Tracts on Freedom of the Press,1790–1821, New York, US and London, UK: Garland Publishing; see also Deazley,supra n. 29, pp. 221–26.

45 Statute of Anne, ss. 1 and 11.46 Copyright Act 1814, 54 Geo. 3, c. 156.47 Ibid., s. 4.48 Supra n. 46, s. 9.49 Comparisons might be made with the changes implemented by the European

Directive harmonising the term of protection of copyright and certain related rights,93/98/EEC; see also the Duration of Copyright and Rights in Performances Regula-tions 1995, SI 1995/3297. For other of Lord Ellenborough’s decisions concerningcopyright see: Cary v. Kearsley (1803) 4 Esp 168; Hime v. Dale (1803) 11 East 244;Du Bost v. Beresford (1810) 2 Camp. 511; Power v. Walker (1814) 3 M&S 7.

himself an author, who in Donaldson had sought to establish the existence ofa perpetual common law copyright, and had argued so eloquently for the samein his treatise of that year, was denied a lifetime interest in his works a secondtime.

When Isaac Espinasse published his Treatise in 1824, Lord Kenyon’s court inBeckford,50 and Lord Ellenborough’s court in University of Cambridge andBrooke (1818), had presented two contrasting readings on the existence of anauthorial property right independent of the statute. In his chapter on copyright,entitled ‘Actions for the Infringement of the Copyright of Authors’,51

Espinasse opted for the former. The second section within that chapteraddressed the question as to ‘How far the Common Law Copyright is confinedor regulated by the Statute of Anne and subsequent Statutes, and how it standsat present’. In his opinion the author had ‘the sole right of printing andpublishing his own work … by common law … but the exercise of that rightwas by the operation of [the 1709 Act] limited and restrained to fourteen years,with an extension of a further fourteen years if the author was living at theexpiration of the first’. The result of the enactment of the Statute of Anne, hecontinued, was to give the author ‘an additional remedy by penalty, which hehad not before’ while leaving him ‘his common law right, limited to the termof twenty-eight years at the utmost’.52

In this, Espinasse was followed by Robert Maugham (later grandfather tothe writer W. Somerset Maugham) who produced the first substantial textentirely devoted to the law relating to copyright: A Treatise on the Laws ofLiterary Property (1828).53 Maugham, whose work incorporated a lengthy‘Historical View of the Law’,54 was much more strident in impressing upon hisreader that ‘an author was entitled to the exclusive enjoyment of his copyrightin perpetuity’.55 In introducing his text he acknowledged that ‘every personmay … be permitted to indulge his own opinion upon the propriety of the[present] law’,56 and one need read no further than his ‘Introductory

History II: 1774–1854 37

50 See also the observations of Abbot CJ in White v. Geroch that ‘[t]he object of theLegislature was, to confer upon authors, by the Act in question, a more durable interestin their compositions, than they had before … The 8 Anne, c. 19, gave to authors acopyright in works not only composed and printed, but composed and not printed; andI think that it was not the intention of the Legislature … to abridge authors of any oftheir former rights’; (1819) 2 B&Ald 298, pp. 300–01.

51 Espinasse, supra n. 42, pp. 72–148.52 Ibid., p. 89.53 Maugham, R. (1828), A Treatise on the Laws of Literary Property, London.54 Ibid., pp. 1–62.55 Supra n. 53, pp. 6–7.56 Ibid., p. viii.

Dissertation’ to appreciate the full weight of his partiality as regards thecommon law right. Drawing a comparison with the earlier ages of ‘semi-barbarism’ in which ‘the books of a scholar were … respected as sacredproperty’ and ‘every inducement [was] presented to the ingenious student forthe improvement of his faculties, and the cultivation of letters’, Maugham,with no little vitriol, lambasted the present era of ‘boasted enlightenment’which bore witness to hardly anything more than ‘the curtailment of rights,and the imposition of burthens [sic]’.57 He criticised the decision in Donaldsonas one in which ‘some one, with more technical ingenuity than love ofliterature, enjoyed “the bad eminence” of overthrowing the evident spirit andintention of the act, by the supposed ambiguity of its language’,58 and pressedthe familiar figures of Mansfield, William Blackstone and Kenyon into servicein support of his argument, seeking to remind each member of the public oftheir positive duty in promoting the adoption of just and fair principles, ‘sincethe mischief that is done to his neighbour today, may be perpetrated on himselftomorrow’.59

Between the publication of Maugham’s Treatise on the Laws of LiteraryProperty and the decision of the House of Lords in Jeffreys v. Boosey (1854)(Jeffreys) two further texts were produced that warrant some comment. Thefirst, An Historical Sketch of the Law of Copyright (1840), was written by JohnJ Lowndes and dedicated to Sergeant Thomas Noon Talfourd, who at the timewas engaged in trying to secure a legislative overhaul of the copyrightprotection for literary works (which efforts would eventually lead to theCopyright Act 1842).60

Lowndes, like Maugham, was unabashed about declaring his motives forlaying his work before the public. Its purpose was ‘to attempt to remove anymisapprehensions which prevail with regard to this species of property, bothas to its former existence, and as to the effect and expediency of the measureproposed by Sergeant Talfourd’. He further confessed that he should notconsider ‘the few leisure hours’ he had devoted to the writing of his work awaste ‘if, by the perusal of the following pages, the reader is convinced thatsuch a right as that known by the name of copyright did formerly exist at


57 Supra n. 53.58 Supra n. 53, p. xii. The ‘evident spirit and intent of the act’ Maugham described

as follows: ‘[T]hough the language of the statute limited the administration of justiceto fourteen years, (as modern ingenuity construed it) its spirit was understood to applyonly to the penal enactments against piracy, … leaving untouched the ancient remedyfor the recovery of actual damages’; p. xi.

59 Supra n. 53, p. xviii.60 In general see Seville, C. (1999), Literary Copyright Reform in Early Victorian

England: The Framing of the 1842 Copyright Act, Cambridge: Cambridge UniversityPress.

common law’.61 His text provided a synopsis of the history of copyright, fromthe invention of the printing press, through the sixteenth and seventeenthcenturies, to Millar, Donaldson and Beckford. As to Beckford, Lowndes wrote:

The Court, in this case, felt the difficulty in which they were placed by the Houseof Lords, on the appeal of Donaldson against Beckett and others, for they werebound to construe the statute 8 of Anne, c.19, as taking away a previously existingcommon-law right of the author; and yet they could not conceal from themselves,the injustice of such a construction, or reconcile it to the express language of the act.… They were therefore obliged to put what may almost be termed a forcedconstruction on the first section, to supply the remedy they felt necessary, and whichthey in vain sought for in the express provisions of the act.62

To this passage Lowndes appended a clumsily inconsistent, if perhaps notsurprising, observation, albeit in a footnote: ‘This fact alone seems to me astrong argument that the 8th of Anne, c. 19, did not take away the author’s pre-existing common-law right’.63

The second treatise appeared 7 years later, penned by the American GeorgeTicknor Curtis, and published on both sides of the Atlantic.64 To the historicaland doctrinal aspects of Lowndes’ and Espinasse’s work Curtis overlaid anextended essay on the ‘Theory of the Rights of Authors’ suggesting that,before entering ‘upon the field of municipal jurisprudence, it may be well topass through the more enlarged region of natural law’.65 His analysis wasfirmly rooted in the tradition of Blackstone, and earlier theorists such asGrotius and Puffendorff, taking the notion of occupancy as the foundation ofan individual’s property rights.

Eighty years previously, Blackstone had argued that there was a species ofproperty which:

[B]eing grounded on labour and invention, is more properly reducible to the headof occupancy than any other; since the right of occupancy itself is supposed by MrLocke, and many others, to be founded on the personal labour of the occupant. Andthis is the right, which an author may be supposed to have in his own originalliterary compositions.66

History II: 1774–1854 39

61 Lowndes, J.J. (1840), An Historical Sketch of the Law of Copyright, London,Preface.

62 Ibid., p. 62.63 Supra n. 61, p. 61.64 Curtis, G.T. (1847), A Treatise on the Law of Copyright, London, UK and

Boston, US: Maxwell & Son and Little and Brown.65 Ibid., 1.66 Blackstone, W. (1766), Commentaries on the Laws of England, vol. 2, reprinted

in (1979), A Facsimile of the First Edition of 1765–1769, Chicago, US and London,UK: University of Chicago Press, p. 405.

Employing almost identical sentiments, Curtis asserted that an author’s‘dominion over his written composition is perfect, since it is founded both inoccupancy or possession, and in invention or creation. No title can be morecomplete than this’.67 Equally clear was the fact that this property was‘incorporeal’ in nature, could not ‘be seized by creditors, to the effect ofentitling them to publish it’, and would pass to an author’s ‘personalrepresentatives, though neither the author nor his representatives have anymanuscript whatever of the work’.68 Moreover, his own historical analysis ledhim to the same conclusion. On Donaldson he noted:

It is sufficient to observe that the whole bench of judges, with one exception, heldthat at common law an exclusive right to publish the contents of a Manuscriptresided in the author, and that nine of them (including Lord Mansfield) did notconsider that publication made the literary composition publici juris.69

As was the case with the reasoning in Beckford and the synopsis of Donaldsonby Montefiore, the decision of the House of Lords was to pale intoinsignificance in light of the weight of judicial authority in support of thecommon law right. As to Millar in particular, Curtis exhorted that:

The great men concerned in this cause, the ability with which it was argued, and thedeliberation attending the decision, must forever give it a high value in theestimation of every lawyer. It was argued and adjudged with consummate learningand ability; Lord Mansfield’s judgment was worthy of his great name, and he wasassisted by two of his brethren in a manner that reflects upon them and him thehighest honor.70

‘It is clear’ he concluded ‘that there was such a thing as literary property inEngland, before the reign of Queen Anne’.71


67 Curtis, supra n. 64, p. 12.68 Ibid., pp. 85–86.69 Supra n. 64, p. 65. Between the two texts by Lowndes and Curtis, Peter Burke

published his Treatise on the Law of Copyright in which he began the first chapter,‘Copyright in Literature’, with this self same quote from Blackstone, before going onto recount the orthodox reading of Millar and Donaldson and their place in the debateupon the existence or not of the common law right; Burke, P. (1842), A Treatise on theLaw of Copyright in Literature, The Drama, Music, Engraving and Sculpture, London:Richards, pp. 1–4. Of the Copyright Act 1842 in particular, Burke wrote that the ‘labourof the brain, which in general estimation stands the most eminent, has security there’;ibid., p. v.

70 Curtis, supra n. 64, p. 55.71 Ibid., p. 75. In Wheaton v. Peters (1834) 33 US 591, the United States Supreme

Court were asked to decide whether the English common law copyright had beenadopted by Pennsylvania upon the formation of the state; in a majority decision thecourt concluded that it had not. For a commentary upon Wheaton see Abrams, H.

In the midst of all of this there was however one exception. In 1823, RichardGodson published the first edition of his A Practical Treatise on the Law ofPatents for Inventions and of Copyright.72 For Godson, there existed notheoretical and so no legal difference between the nature of a property in apatent or in a copyrighted work. In his Preface he set out that: ‘The laws whichprevent persons making machines or printing books, from in which bypurchase they have acquired a property, are in their nature restrictive; and giveto inventors and authors different kinds of Monopolies’.73 In this vein, he splithis work into three discrete sections, the first ‘On Monopolies’, the second‘On Patents for Inventions’, and the third ‘On Copyright’.74 IdeologicallyGodson’s position on copyright flew in the face of the predominant discourse:‘Supposing then that no right existed at common law … all literary propertyor copyright is either founded by construction on the statute of 8 Anne, orgiven by the positive provisions of other acts of parliament’.75 As for Millar,while he made reference to the ‘very elaborate’ opinions of Lord Mansfieldand the other majority judges, at the same time he stressed the ‘most profoundand eloquent opinion’ of Yates J ‘that an author had not such a common lawright’. In Donaldson he noted, ‘it was settled that if the right contended for didever exist’ it had ‘been abrogated by the statute of 8 Ann’.76 In the context ofthe times one might well criticise Godson in deliberately presenting a moreambivalent reading of both Millar and Donaldson than otherwise seemed to bewarranted; it was certainly one which distinguished him from that of hiscontemporaries. As we shall see however, Godson was not the only writerprone to letting his personal opinions influence the manner in which hearticulated the historical trajectory and contemporary parameters of the law.

In any event, through the various treatise writers of the early nineteenthcentury we can trace the emergence and rise of the cult of Millar.77 That they

History II: 1774–1854 41

(1983), ‘The Historic Foundation of American Copyright Law: Exploding the Myth ofCommon Law Copyright’, Wayne Law Review, p. 1119.

72 Godson, R. (1823), A Practical Treatise on the Law of Patents for Inventions andof Copyright, London: Butterworth and Son.

73 Ibid., p. vi.74 For Godson, that copyright should provide the substance for the third and last

book made perfect sense given that ‘many of the principles of Copyright can beillustrated by the reasoning on Patents’, supra n. 72, p. vi.

75 Supra n. 72, p. 207.76 Supra n. 72, pp. 204–205 (emphasis added).77 Similar opinions were also being disseminated in the specialised periodical

literature of the day. See for example: Anon. (1838), ‘The Law of Copyright’, LawMagazine, 19, p. 365, in which the author, noting that ‘[t]he general feeling of mankindmust favour the author in any question which relates to the full enjoyment of the profitsof his work’, recounts both Millar and Donaldson, relying upon Lord Mansfield andBlackstone as authorities upon the question of the common law right. Of these two in

should have gained a foothold within contemporary legal discourse should notperhaps surprise, given that the various doctrinal, historical and theoreticalstrands upon which they relied essentially replicated much of the substance ofthe argument that had been developed by the London monopolists nearly onehundred years previously, in the run up to the decision in Millar itself. Duringthat earlier period however, when the consequence of what was a very publicdebate concerned whether the copyright in any work would lie with abookseller in perpetuity, for every argument presented in favour of thecommon law right there was a counterargument, for every thesis, an antithesis– in many respects the very viability of the Scottish book trade depended uponit.78 Now however, it had been settled that the term of copyright protection wasto be defined by statute alone, the threat of a perpetual monopoly in anywriter’s work had long subsided, and the marketplace had adjustedaccordingly. Under these circumstances, so long as a common law right wasdefinitively supplanted by the legislation, there was no real reason for anybookseller to contest its existence or not (indeed there was probably much tobe gained in simply accepting the existence of the common law right). Thatthis was the case would appear to be evident in what is perhaps one of the mostremarkable aspects of the published writing on copyright at this time – that,Godson aside, Montefiore, Espinasse, Maugham, Lowndes and Curtis were allessentially ‘singing from the same sheet’, and that this historical andtheoretical orthodoxy as to the nature of copyright was being perpetuatedessentially unchallenged.

It was perhaps fitting that it should be an American author to write the lastsignificant copyright treatise to be published prior to the House of Lords’deliberations in Jeffreys (1854) given that,79 between the publication ofEspinasse’s work in 1824 and the conclusion of Jeffreys 30 years later, it wasthe issue of whether or not copyright subsisted in the work of foreign authorswhich provided the key catalyst for judicial consideration as to the existenceof a common law right (which issue would lead to the decision in Jeffreys


particular he continued: ‘let it be remembered that Mansfield and Blackstone … are notonly two names distinguished in legal history as reflecting splendour on theirprofession, but men whose minds travelled beyond that profession; deeply read in thecivil law on which they based their knowledge of the law of England; men of greatliterary attainments, and of extensive views; ibid., pp. 365, 367–68. See also: Anon.(1835), ‘Law of Copyright in America’, Law Magazine, 13, p. 331, in which‘Maugham on Literary Property’ is cited as an authority on point, and Anon. (1841),‘Copyright in Sermons’, Law Magazine, 25, p. 249.

78 In general see Deazley, supra n. 29, Chapters 5(1), 5(2) and 6.79 Jeffreys v. Boosey (1854) 4 HLC 815.

itself). Most of these cases involved allegations of the unlawful publication ofcopyright-protected musical works, a great number of which came before thecourts after Curtis had published his Treatise on the Law of Copyright(1847).80 The first recorded case however is that of Clementi v. Walker (1824)(Clementi) decided in the same year as Espinasse published his Treatise on theLaw of Actions on Statutes.81 In Clementi the German-born French pianistFriedrich Kalkbrenner had composed a popular air entitled Viva Henri Quatre,the rights to which he sold in France in June 1814 while at the same timereserving to himself the right of publication in England; this he sold to theplaintiffs in July of the same year. The initial agreement with the plaintiffshowever was an oral one only and would not be set out in writing until 1822.In the interim the defendant, having purchased a copy of the music in Paris,published it in December 1818. Upon the basis that the oral agreement in 1814did not amount to an assignment of the copyright in the work to the plaintiffs,82

the question for the court was whether the publication by the defendant in1818 amounted to an infringement of anyone’s rights? Put differently, couldan author whose work was first published abroad prevent someone fromreproducing the work in Britain? Campbell,83 arguing for the defendant,played a jingoistic masterstroke in stressing the role of the copyright statutesin encouraging ‘British industry and capital’. The strategy obviously struck achord with Bayley J who, holding for Walker, commented:

[T]he Legislature must be supposed to have legislated with a view to Britishinterests and the advancement of British learning. By confining the privilege toBritish printing, British capital, workmen and materials would be employed, and thework would be within the reach of the British public. By extending the privilege toforeign printing, the employment of British capital, workmen, and materials mightbe suspended, and the work might never find its way to the British public. Withoutvery clear words, therefore, to shew [sic] an intention to extend the privilege toforeign publications, I should think [the Statute of Anne] must be confined to booksprinted in this kingdom … To hold to the contrary would discourage Britishenterprise, and stop avenues to British knowledge.84

History II: 1774–1854 43

80 See for example: Boozey v. Tolkein (1848) 5 CB 476; Boosey v. Purday (1848)The Times, 30 June 1848; Cocks v. Purday (1848) 5 CB 860; Cocks v. Lonsdale (1849)The Times, 29 March 1849; Novello v. James (1851) The Times, 25 March 1851;Boosey v. Jeffreys (1851) 6 Ex Rep 580; Buxton v. James (1851) 5 DeG&S 80; Novellov. Sudlow (1852) 12 CBR 177; Jeffreys (1854).

81 Clementi v. Walker (1824) 2 B&C 861 (Clementi).82 Upon the basis that the statute required all assignments to be ‘in writing’; see

Power v. Walker (1814) 3 M&S 7.83 This was most likely John Campbell who would later become Lord Chief Justice

and hand down the decision of the court in Boosey v. Jeffreys (1851); infra n. 125 andaccompanying text.

84 Clementi, pp. 867–68, 870. See also Page v. Townsend (1832) 5 Sim 395,

This line was followed in Delondre v. Shaw (1828) (Delondre), whichinvolved the copyright in a label on a bottle of medicine. The medicine itself,a preparation of Peruvian bark called sulphate of quinine, had been inventedand was sold by the plaintiff in Great Britain, but was manufactured for theplaintiff by a French chemist, Pelletier, who had also designed the label.85

Shadwell VC refused to grant the injunction stating simply that ‘[t]he Courtdoes not protect the copyright of a foreigner’.86 Next came Guichard v. Mori(1831) (Guichard), again about a musical work, first published in Paris in1814, and subsequently published within Britain by the plaintiff in 1820.87

Deciding in the defendant’s favour Henry Brougham, now Lord Chancellor,stressed not so much the interests of industry and capital, but otherwise drewupon Bayley J’s theme on the ‘avenues to British knowledge’ in observing:

[I]t is sufficient to say that the legislature encourages the importation of foreignworks; it wishes to keep open the avenues of knowledge; and an author beyond thesea who desires to secure any privilege here, either to himself or any one to takeunder him, should publish here immediately … Could he come forward severalyears after publication abroad, and treat an intermediate publication in this countryas a piracy, many foreign works would never be published amongst us at all.88

In both Clementi and Guichard the works in question had been first publishedabroad; in D’Almaine v. Boosey (1835) (D’Almaine) the situation wassomewhat different.89 The composer Daniel François Esprit Auber wrote themusic for an opera, Lestocq (first performed in Paris in May 1834), and soldthe rights to publish the music in Britain to D’Almaine who registered and


concerning prints published in Paris 2 days before they were published in London, inwhich Shadwell VC commented: ‘It is plain that the object of the Legislature was toprotect those works which were designed, engraved, etched or worked in Great Britain,and not those which were designed, engraved, etched or worked abroad, and onlypublished in Great Britain’; ibid., p. 404.

85 Delondre v. Shaw (1828) 2 Sim 237.86 Ibid.87 Guichard v. Mori (1831) 2 Coopers 216; The Times, 23 March 1831.88 Ibid., p. 216. That Brougham should have stressed the role of the legislature in

keeping open ‘the avenues of knowledge’ should not surprise, given the extent to whichhe was involved in educational reform throughout his life. Described by one of hiscontemporaries as ‘the foremost advocate of popular education’ Brougham wasinvolved in the operation of Mechanic’s Institutes (which sought to encourage workingmen to educate themselves upon matters of philosophy and the natural sciences), andplayed a central role in the establishing of the Society for the Diffusion of UsefulKnowledge in 1826, as well as the founding of the University of London. Later in 1856,in his seventy-ninth year, he was instrumental in establishing the National Associationfor the Promotion of Social Science. In general see Stewart, R. (1986), HenryBrougham, His Public Career 1778–1868, London: The Bodley Head, pp. 183–204.

89 D’Almaine v. Boosey (1835) 1 Y&C 288.

published the work in June of that year. Auber, however, had also assigned theright to publish the work on the continent to a French publisher and, whilethere was some disagreement as to when he first published his edition of thework, it appears not to have been released in France until July, a few weeksafter D’Alamine’s edition appeared in London. Twiss, for the plaintiff, statedsimply that ‘[c]opyright exists at common law, and the power to transfer sucha right is recognized by the statute of Anne’ – the assignment of the work tohis client was then ‘valid at common law, if not under the act of Parliament’.90

Beames and Wood, for the defendant, relied upon Delondre in which case theysuggested ‘there is an express decision on the subject. In that case one of thegrounds of the Vice Chancellor’s judgment was, that a foreigner can have nocopyright which a Court of equity will protect.’ Abinger CB intervened:

What has that case to do with copyright? The substantial ground for the relief was,that the property of the plaintiff was injured by the sale of a spurious article byanother party. Am I to understand that, if a foreigner residing here were to inventand publish a work, and enter it at Stationers’ Hall, he would have no property inthat work?91

Counsel replied: ‘The present is not that case; but it is difficult to say that aforeigner so circumstanced would have any such property, for the object of theact was solely to encourage British skill and industry.’92 Lord Abingerdisagreed with the defendant’s reading of both Delondre and the legislation:

I have been struck with the authorities [Delondre] produced on behalf of thedefendant, and if the Vice Chancellor had decided expressly that a foreigner, quàforeigner, had no protection in England in regard to copyright, I confess I shouldhave doubted the correctness of that decision; … But the case which has been citedupon the subject does not go to that length; it is in principle not quite intelligible,but there was a clear ground for an injunction independent of the question ofcopyright. Besides, that was a case where one of the parties resided abroad; and all

History II: 1774–1854 45

90 Ibid., p. 293.91 Supra n. 89, p. 295. Lord Abinger (James Scarlett) had had plenty of previous

experience with copyright litigation having been counsel in various cases including:Murray v. Elliston (1822) 5 B&Ald 657; West v. Francis (1822) 5 B&Ald 737;Stockdale v. Onwhyn (1826) 5 B&C 174; Trustees of the British Museum v. Payne(1827) 4 Bing 540; Murray v. Limbird (1828) The Times, 10 December 1828; Murrayv. Heath (1831) 1 B&AD 804; Archbold v. Sweet (1832) The Times, 10 February 1832;Cumberland v. Planche (1834) 1 AD&E 580; and Dewar v. Purday (1834) The Times,18 June 1834. Indeed in Murray v. Elliston (1822), in argument before the court,Scarlett referred to the decision in Donaldson in the following terms: ‘[T]hat thoughthe decision in Burrow’s Reports, was against the copyright at common law, posterityhad attributed the weight of reason to the arguments of the minority [one presumes theaccount should read ‘majority’] of the judges’; The Times, 4 May 1822.

92 D’Almaine, p. 295.

the Vice Chancellor said was, that the publisher of a work at Paris could not protecthimself in a Court of justice in England.93

The question, Lord Abinger continued, had in fact been settled nearly 50 yearsearlier in Bach v. Longman (1777) (Bach) which, although an actionconcerning the question of whether music could be considered to be ‘writing’within the Statute of Anne, nevertheless involved a plaintiff who was Germanborn;94 the judge presiding was none other than Lord Mansfield.95 As to casebefore him he continued:

Early in 1834 the plaintiff purchased the manuscript of the opera in question fromAuber. At that time it was not published by any other person. The opera was indeedsoon afterwards represented in Paris; but that was no publication. No work was atthat time published abroad from which any other work of this nature might havebeen produced; and Auber, being abroad, sells his very work to the plaintiffs. Theplaintiffs, therefore, acquired a copyright in it before publication. They publish thework. After they have published it, comes out the publication of the defendant.96

Leaving to one side Abinger CB’s claims as to the relevance of Bach, thereseems no doubt that he could well have decided in the plaintiff’s favour basedupon the 1709 Act alone and in accordance with Bayley J and Brougham LC’sobservations in Clementi and Guichard. After all, D’Almaine, an Englishman,was the assignee of a book composed but not yet printed or published (eitherin England or abroad),97 and was the first to register and publish the work inaccordance with the statute;98 in this regard it made little difference where or


93 Ibid., p. 297.94 Bach v. Longman (1777) 2 Cowp 623.95 On this question of whether musical works fell within the protection of the Act

he continued: ‘From the expressions of Lord Mansfield it is clear that he consideredprinted music to be nothing more than a short-hand mode of representing what mightbe written in another manner at great length. In Hime v. Dale this doctrine was doubted.I was for the plaintiff in that action … and I remember that Lord Ellenborough doubted,not only whether music was within the provision of the statute, but also whether musicprinted on a single sheet was a book. Having to investigate the subject for the purposeof moving for a new trial, I spent three or four days at Stationers’ Hall in order toascertain what entries were made under the act of Parliament, and I found, not only thatshort publications on single sheets of paper were entered as books, but also a great dealof music. There is no doubt, therefore, that printed music, in whatever form it ispublished, is to be considered … as a book’. Of no small interest is that LordEllenborough should be the subject of the implicit criticism in Abinger CB’s remarks.

96 D’Almaine, pp. 299–300.97 This of course is to leave to one side Abinger CB’s observation that public

performance did not amount to publication.98 The Act states that ‘the author of any book or books already composed, and not

printed and published, or that shall hereafter be composed, and his assign or assigns

by whom the work was written.99 Moreover, it seems likely that Bayley J orBrougham LC would have decided the case in the same way. However, noteAbinger CB’s assertion that in purchasing the ‘manuscript of the opera’ theplaintiffs acquired ‘a copyright in it before publication’; for him, this was acase of ‘a copyright vested in the plaintiffs of a work protected by the statuteas well as the common law, and of a piracy committed in the publication of itafterwards by the defendant’.100

Despite Lord Abinger’s reliance upon both statute and common law inresolving D’Almaine, over the next 10 years there was little, if any, significantjudicial discussion of the existence or not of the common law right per se.101

Certainly, during this period, various counsel would refer to the issue inargument before the court,102 however there was nothing to indicate that theorthodoxy presented by writers such as Maugham and Lowndes was everunder question.103 Indeed, Abinger CB would reiterate it himself in the case of

History II: 1774–1854 47

shall have the sole liberty of printing and reprinting such book or books for the term of14 years, to commence from the day of the first publishing the same, and no longer’(s. 1).

99 On this point Abinger CB notes: ‘The point whether the copyright of a foreigneris protected at all in this country does not arise in the present case, because the plaintiffD’Almaine is not a foreigner. He could acquire the copyright of a publication as wellfrom a foreigner as an Englishman. If he is the owner of the work it makes nodifference whether he composed it himself or bought it from a foreigner’; D’Almaine,p. 300.

100 Ibid., pp. 299–300.101 In Pepoli v. Laporte (1837) The Times, 17 June 1837, protection was refused for

the libretto from the opera Malek Adel as the work had been first performed in Paris.In Bentley v. Foster (1839) 10 Sim 329, Shadwell VC was content to grant aninjunction against copyright infringment so long as the work, written by an Americanauthor, was first published in London; see also Boosey v. Lonsdale (1841) The Times,18 June 1841, concerning the reproduction of certain Arias from the Opera LaVeneziana Ossia Il Bravo, which according to the plaintiff had been previouslypublished ‘neither here nor abroad’.

102 See for example: Trustees of the British Museum v. Payne (1827) 4 Bing 540,in which the Attorney-General commented that prior to the Statute of Anne ‘it wasgenerally imagined that [authors] possessed rights which could not be encroachedupon; but the full extent of those rights was undefined’; Barnett v. Glossop (1835) 1Scott’s 621, in which Thomas, counsel for the defendant, suggested to the court that‘[t]here can be no copyright except by statute’; and Colburn v. Duncombe (1838) 9Simon’s Rep 151, in which the defendants argued that ‘[t]here was no such thing ascopyright at common law. It is a new species of property created by 8 Anne, c. 19’.

103 In Colburn v. Simms (1843) 2 Hare’s 543, concerning the availability of theremedy of delivery of copies in equity, Wigram VC commented as follows: ‘It may betrue that, if one writes or prints upon the paper of another, the writing or printingbecomes his to whom the paper belongs, but it does not necessarily follow that theconverse of that proposition would be true, – that one who writes or prints upon hisown paper the composition of another, has thereby so mixed his property with the

Chappell v. Purday (1841) (Chappell (1841)).104 Chappell (1841) involved anallegation of infringement in the overture to the opera Fra Diavolo, again byAuber, which had been completed and first performed in Paris prior to anassignment to the plaintiff of the right to publish the work in England. In thefirst instance an injunction was granted which Purday sought to havedissolved. It transpired, however, that while Chappell had purchased the workin 1830, no assignment in writing was actually executed until June 1836,105

during which time other booksellers had apparently imported and sold copiesof the work without any objection on Chappell’s part.

Without prejudicing the plaintiff’s right to pursue the claim at common law,Abinger CB dissolved the injunction,106 but given that the issue of copyrightin works by foreign authors had been raised, he took the opportunity to‘address a few words to that question’, and to Millar and Donaldson inparticular:

[W]hen I came to the profession I took a great interest in the case of Millar v.Taylor, and other cases of that sort. In that case Lord Mansfield and two of thejudges differed from Mr. Justice Yates, and I own I think that to the material partsof Mr. Justice Yates’s argument Lord Mansfield made a successful reply … LordMansfield said, … “That the reasons for supporting the author’s right beforepublication were equally applicable after publication;” and I think that was asuccessful reply.107

As for Donaldson, he noted that eight of the judges involved agreed with LordMansfield’s position and ‘[t]hat being the case, the law was then settled asregarded the common law right’.108


property of the author whose work he has copied, that he has lost his original title tothe material which he has so employed. There might have been some countenance forsuch a principle before the judgment of the House of Lords, in the case of Donaldsonv. Beckett, had confined the exclusive right of authors within the limits prescribed bythe statute, and thereby negatived the existence of that absolute common-law right intheir works which had been previously supposed to exist, and which the decision of theCourt of King’s Bench, in the case of Millar v. Taylor, had tended to affirm’; ibid., pp. 554–55.

104 Chappell v. Purday (1841) 4 Y&C 485.105 Chappell himself had died in 1834; it was his wife, and executrix, who secured

the assignment after his death.106 Abinger CB commented as follows: ‘[I]t is a question of considerable doubt,

and I cannot decide it on motion … The question is, whether a party who, before thecopyright had actually parted with to him (because at that time there was noconveyance), had permitted the books to be imported here, and sold withoutinterference, is afterwards to be at liberty to come forward and say, that no party shalldo the like again? It is an important question, and I think it is sufficiently doubtful toprevent any interference by injunction until it is decided’; Chappell (1841), p. 495.

107 Ibid., p. 494.108 Chappell (1841), p. 495.

Chappell did indeed bring the case at common law but by the time it came on to be heard, Abinger CB had been succeeded by Pollock CB (in April 1844). Unfortunately for Chappell, the new Chief Baron’s opinions on the question of the common law were somewhat different from those of the former. Pollock CB, in a passage which requires to be set out in full,observed:

Two questions of importance were raised in the course of the argument. The first is,whether, at common law, a foreigner, residing abroad, and composing a work, hasa copyright in England …

Upon the first question we do not feel any difficulty; and we are of the opinionthat a foreign author, residing abroad, and publishing a work there, has not by thecommon law of England any copyright here.

A copyright is the exclusive right of multiplying copies of an original work orcomposition, and consequently preventing others from so doing. The generalquestion, whether there was such a right at common law, was elaborately discussedin the great cases of Millar v. Taylor and Donaldson v. Beckett. In Millar v. Taylor,it was decided by Lord Mansfield, Mr Justice Aston, and Mr Justice Willes, that atcommon law such a right existed, and the judgment was given for the plaintiff; andin Donaldson v. Beckett, which was an injunction founded upon the judgment inMillar v. Taylor, the majority of the judges held that such a common-law rightexisted; but the majority also held that it was taken away by the Statute of Anne. Weare, however, all of opinion that no such right exists in a foreigner at the commonlaw, but that it is the creature of the municipal law of each country, and that inEngland it is altogether governed by the statutes which have been passed to createand regulate it, as in France it must be governed by the law of that country; but sucha law has no extraterritorial power, and cannot be enforced beyond the limits of thestate.109

Having dispensed with the argument at common law, Pollock CB proceededto consider whether a foreign author had any right under the existing statutoryregime. On this point he was unequivocal noting that the statutes were passed‘for the encouragement of learning and the arts, by ensuring to authors, artists,and inventors, the reward of their labours’, but continuing that ‘prima facie itmust be intended that a British Legislature means only to protect Britishsubjects, and to foster and encourage British industry and talent’.110 The courtconcluded:

Upon the whole, then, we think it doubtful whether a foreigner not resident here canhave an English copyright at all; and we think he certainly cannot, if he has firstpublished his work abroad before any publication in England … that as thepublication in Paris, by the composer or his assignee there, prevents a copyright

History II: 1774–1854 49

109 Chappell v. Purday (1845) 14 M&W 303, pp. 316–17; see also Chappell v.Purday (1843) 12 M&W 303.

110 Chappell (1845), pp. 317–18.

from being acquired under the statutes, and there being no right at common law, orunder the statutes, the rule for a nonsuit must be made absolute.111

At first blush there does appear to be some ambiguity about Pollock CB’sposition on the common law right. At times his observations do seem tosuggest that his judgment does no more than explore what rights foreignauthors alone did or did not have (‘that no such right exists in a foreigner atcommon law’),112 rather than calling into question the existence of the right fornational authors also (‘in England [copyright] is altogether governed by thestatutes which have been passed to create and regulate it’).113

However, given the position he would later adopt in Jeffreys (1854), anyambiguity must be dismissed in favour of the latter interpretation; put simply,Pollock CB did not consider a common law right existed no matter who theauthor and regardless of either Millar or what the majority of the common lawjudges had said in Donaldson.

Regardless of Pollock CB’s observations in Chappell (1845), on the face ofit the decision did not seem to compromise the ability of aggrieved litigants toseek relief in the courts whenever the work by the foreign author was firstpublished in England, or published simultaneously in England and abroad,114

in which cases the protection claimed seemed to fall squarely within thestatute. That even these works by foreign authors should receive protectionhowever was soon to be called into question, again by Pollock CB, in Booseyv. Purday (1849) (Boosey (1849)),115 which concerned the publication ofextracts from La Sonnambula (or, The Sleepwalker), an opera by the Italiancomposer Vincenzo Bellini.

In Milan in February 1831, Bellini had assigned his rights in the work to theItalian music publisher Giovanni Ricordi, who, while in London, subsequentlysold the right to publish the work within Great Britain to Boosey.116


111 Ibid., pp. 321–22 (emphasis added).112 Indeed in the later case of Boozey v. Tolkien (1848) 5 CB 476, counsel for the

plaintiff sought to bring an action upon the common law right, relying upon bothDonaldson and Chappell (1845) as authority; ibid., p. 479.

113 Emphasis added.114 See for example: Cocks v. Purday (1846) 2 Car&K 269, concerning Labitzky’s

Der Elfin Walzer; Boosey v. Davidson (1847) The Times, 22 June 1847, concerningBellini’s La Sonnambula; Fellowes v. Chapman (1848) The Times, 8 December 1848,concerning Wheaton’s Elements of International Law; Cocks v. Lonsdale (1849) TheTimes, 29 March 1849, concerning Labitzky’s La Victoria National Polka.

115 Boosey v. Purday (1849) 4 Ex Rep 145.116 Although Boosey suggests that the work was first published by him in June

1831, the holdings of the British Library indicate that while the work did first appearin English in 1831, it was actually first published by a T. Brettell and not by Boosey(Bellini, V. (1831), The Sleepwalker, London: Brettell). It is not until 1835 that variouseditions of La Sonnambula published by T. Boosey & Co. begin to appear.

In their pleadings, both counsel debated not just the correct interpretation ofthe statutes, but also the existence (or not) of the common law right – therewas a clear inconsistency between the positions of Abinger CB and PollockCB which needed resolution. Counsel for Boosey referred to the ‘doctrine ofexclusive property prior to publication’, suggesting that ‘[c]opyright existed atcommon law, and the statute of Anne was in affirmance of, though itcontrolled the common law right’, referring in support of the argument toMillar and Beckford,117 but not Donaldson. ‘Such being the true foundation ofcopyright’ they continued ‘it follows, that the right must exist as well in aforeigner as a native’.118 The defendant’s counsel did refer to the fact that theperception that Millar settled the issue of the common law right was ‘notstrictly correct’, however he dismissed the relevancy of the issue given that, inany case, ‘the common law right never applied to a foreigner’.119

Not surprisingly, Pollock CB resolved the conundrum in his own favour.Rejecting that any foreigner could have copyright in England by the commonlaw, as a result of which neither could the plaintiff,120 he continued that aproper construction of the statutes must bear in mind that they were ‘intendedfor the encouragement of British talent and industry, by giving to Britishauthors, or their assigns, a monopoly in their literary works’, and that theobject of the legislature was ‘to promote the cultivation of the intellect of itsown subjects, and, as the Act of Anne expressly states “to encourage learnedmen to compose and write useful books”’. As a result the court declared that‘a foreigner, by sending to and first publishing his work in Great Britain,acquires no copyright’.121

Less than a year later Boosey was again contesting his copyright in LaSonnambula, this time complaining of an infringement by Jeffreys. Rolfe B,who had been sitting with Pollock CB in Boosey (1849), directed the jury thatthe plaintiff had no claim to an exclusive copyright in the work under theStatute of Anne; as a result they found for the defendant and Booseyappealed.122

History II: 1774–1854 51

117 Beckford, p. 620.118 Boosey (1849), p. 152.119 Ibid., pp. 150–51.120 Supra n. 115, pp. 154–56. Pollock CB opened his judgment in the following

manner: ‘This Court, in the case of Chappell v. Purday, had previously intimated itsopinion, that the right of the plaintiff must depend upon the statute law of this country,the laws of foreign nations having no extra-territorial power, and the plaintiff no rightat common law’; ibid., p. 154.

121 Supra n. 115, pp. 155, 157. Following this decision Purday published a newedition of the contested work: Bellini, V. (1850), Beauties of Bellini: Trois amusements,pour le piano forte, sur la motifs favoris de l’opéra La Sonnambula, London: Purday.

122 Boosey v. Jeffreys (1851) 6 Ex Rep 580.

The appeal, upon a writ of error, alleged that Rolfe J’s direction to the juryhad been incorrect, and as a consequence the case was argued before seven ofthe common law judges: Campbell CJ, Patteson, Maule, Wightman,Cresswell, Erle, and Williams JJ – that is, almost all of the judges who had notbeen involved in Boosey (1849).123 Three days later the opinion of the courtwas handed down by Campbell CJ alone.124 Deciding that Rolfe B’s originaldirection to the jury had been incorrect and that Boosey did in fact hold thecopyright in the work, Campbell CJ remarked:

The first question discussed before us was, whether authors have a copyright in theirworks at common law. This is not essential for our determination of the presentcase. If it were, we are strongly inclined to agree with Lord Mansfield and the greatmajority of the Judges, who, in Millar v. Taylor and Donaldson v. Becket, declaredthemselves to be in favour of the common-law right of authors. But we rest ourjudgment on the statutes respecting literary property, which we clearly think entitlethe plaintiff to maintain this action upon the evidence which he adduced at thetrial.125

Considering the statutes, even if one accepted that the legislature ‘looked onlyto the enlightenment of the kingdom’, Campbell CJ rejected Pollock CB’sanalysis: ‘[M]ay it not be highly for the encouragement of learning in thiscountry, that foreigners should be induced to send their works composedabroad, either in English or in a foreign language, to be first published inLondon?’ He continued: ‘[W]e may without impropriety observe, that it hasbeen the uniform policy of Parliament to facilitate the importation of foreignliterature’.126 In any case, it is clear that Campbell CJ’s reading of the policybehind the legislation extended beyond this singular function of theenlightenment of the kingdom – the Acts were passed ‘for the protection ofliterary property’:

The right which [an author] has in England is the right of acquiring, upon certainconditions, a monopoly in England for a certain number of years in the sale of hiswork. But this right, which, though incorporeal, is in the nature of personal property,[the author] carries along with him wherever he is, and all that is to be done fully toenjoy it he can effectually do by another. Where then can be the necessity for [the


123 The only remaining common law judge not to be involved was Jervis CJ. Whilehis opinions on the question of copyright in the works of foreign authors would laterbe aired in Jeffreys (1854), he did provide some indication as to his thoughts on theexistence of the common law right in Novello v. Sudlow (1852) 12 CBR 177, insuggesting that the plaintiff ‘had better assume, for the purpose of your argument, thatthere is no copyright at common law’; ibid., p. 181.

124 Interestingly, Campbell CJ was Lord Abinger’s son-in-law, having marriedAbinger’s daughter in 1821.

125 Boosey (1851), pp. 592–93.126 Ibid., p. 594.

author’s] crossing from Calais to Dover, before giving directions for the publicationof his work, and entering it at Stationers’ Hall? The law of England will protect hisproperty, and recognize all his rights, and give him redress for any wrong inflictedupon him within our territory, although he never set foot upon it.127

Jeffreys of course appealed, again on a writ of error, to the House of Lords;when Jeffreys (1854) was finally resolved, Rolfe B, now Lord Cranworth, wassitting in attendance as Lord Chancellor and Speaker of the House.128

From the end of the eighteenth century, through the provenance of Beckford,Montefiore, Espinasse, Maugham, Lowndes and Curtis, we can trace theemergence and rise of what I have referred to as the cult of Millar and the re-branding of Donaldson. This new consensus which enveloped Donaldsonwas not however unanimous; Ellenborough CJ had, at the very least, exhibitedconsiderable scepticism as to the existence of the common law right.129 Neitherwas anything about this development inevitable. In this regard consider therecord of Fisher v. Folds (1834) in Jones’ Exchequer Reports for Ireland,130

first published in 1838, just one year after Talfourd had embarked upon hisparliamentary campaign to amend the existing law as regards literary works.

The allegation in this case was that the defendant, the publishers of theDublin Penny Journal, had pirated certain prints from the plaintiff’s work,Ireland Illustrated. The record of the defendant’s opening argument is asfollows: ‘No copyright exists at common law, Beckford v. Hood, Donellan v.Beckett, and this action can only be maintained upon the statute’.131 Theargument continued that what copyright protection existed in Ireland turnedupon the 1814 Act, which extended to books but not to prints; that in Irelandthere were no acts similar to those in England which provided protection forsuch prints; and that as a result the defendant’s reproduction of the engravedworks did not amount to infringement.132

History II: 1774–1854 53

127 Boosey (1851), pp. 593, 595.128 Rolfe B was appointed Lord Chancellor in December 1852, 7 months after

Campbell CJ’s decision; see Chapter 3 of this book. After Campbell CJ’s decision inBoosey (1851) work by foreign authors received the protection of the courts in bothBuxton v. James (1851) 5 DeG&S 80, and Novello v. Sudlow (1852) 12 CBR 177.

129 Similarly, in Colburn v. Duncombe (1838) 9 Simons’ Rep 151–52, a caseconcerning the validity of an assignment of copyright in a work not yet written, counselfor the defendants argued before the court that ‘[t]here was no such thing as copyrightat common law. It is a new species of property created by 8 Anne, c. 19’.

130 Fisher v. Folds (1834) 1 Jones’ Exchequer Reps 12 (Fisher).131 Ibid., p. 13.132 The Statute of Anne did not extend to Ireland; it was only with the passing of

the Copyright Act 1801, 41 Geo. 3, c. 107, that Irish publishers were brought into linewith their British counterparts. As to the Irish booksellers’ attitudes to the printing of

Counsel for the plaintiff did not mount an argument based upon any notionof natural rights of ownership over the engravings. Rather he sought to bringthem within the remit of the existing legislation in suggesting that they shouldbe considered to be ‘a part of the book’, reminding the court that the Englishjudges had given a liberal construction to the 1709 Act in extending itsprotection to ‘a piece of music, even on a single sheet of paper’.133 To this,counsel for the defendant replied:

The statutes in force in Ireland relate to the encouragement of learning only; thefine arts are not within the meaning of that term: they are not sciences, as music is,which is the reason why a musical composition was held to be protected as a book.The letter-press and the plates in the present book are two distinct works bydifferent authors, unconnected with each other, save so far as that they are bothconversant upon the same subject. Neither can derive any protection from theother.134

Joy CB agreed. The prints in question were upon distinct sheets interleafedthroughout the text, but did not constitute part of the book; therefore, therebeing no statute in Ireland protecting prints, they were free to be reproducedby the defendants.

The semiotician or literary theorist might make much of the re-presentationof Donaldson (1774) as Donellan in the Irish report, of the need to fracture andtransform the textual signifier (or if you prefer, the name of the case), in orderto strip away the myth which had begun to coalesce around the decision;however, I am neither a semiotician or literary theorist.

Rather, we continue with the more mundane if significant observation thatwhile copyright in Ireland seemed to have remained more clearly aphenomenon of institutional legislative fact, in Britain its theoreticalconception had drifted back towards that expounded by Lord Mansfield inMillar. By the time that Pollock CB had begun to set the cat amongst themusic-publishing pigeons he was doing so upon the basis that ‘in Donaldsonv. Beckett, which was an injunction founded upon the judgment in Millar v.


each others’ works throughout the eighteenth century, the marketplace operated upon an ad hoc, albeit reasonably effective, system. In essence, whichever Irishbookseller first publicly announced his intention to reprint a particular London imprintwas able to do so without competition. Moreover, this agreement was understood to apply, not only to the bookseller’s initial edition, but to future editions also. Ingeneral see: Pollard, M. (1989), Dublin’s Trade in Books, 1550–1800, Oxford:Clarendon Press, pp. 32–65, 165–226; Cole, R.C. (1986), Irish Booksellers and EnglishWriters, 1740–1800, Kent: Mansell Publishing Ltd/Humanities Press International, pp. 1–21.

133 See Bach v. Longman (1777) 2 Cowp 623.134 Fisher, pp. 13–16.

Taylor, the majority of the judges held that such a common-law right existed;but the majority also held that it was taken away by the statute of Anne’,without taking any cognizance of the reality of the actual decision of theHouse of Lords in that case.135

There are, no doubt, many reasons which explain why that drift should haveoccurred, but ranking high amongst these various factors must be the mannerin which Donaldson had been recorded and subsequently reported such thatthe vote of the Lords was taken to correspond with the (mis)reported opinionof the majority of the common law judges, as well as the fact that throughoutthe early part of the nineteenth century there emerged no obvious reason,within the book trade at least, to contest this reading.136 To these might beadded a burgeoning populace engaging with the practice of writing to anextent which greatly exceeded their predecessors’ experience,137 the recentexpansion of the copyright term to incorporate (under the right circumstances)the entirety of an author’s life,138 the domestication of literature and the rise ofthe ‘new’ novel in the 1820s,139 and much more. A fuller exploration as to theintermingling of these various social, cultural and legal impulses, and theirimpact upon contemporary copyright thought, must wait for another time.Suffice to note at this point that an intellectual drift had occurred, but that itwas brought to an abrupt halt with the pronouncements of Lords St Leonardsand Brougham in the decision of the House of Lords in Jeffreys (1854).

135 Chappell (1845), p. 316.136 Supra n. 78 and accompanying text.137 Sisken, C. (1998), The Work of Writing: Literature and Social Change in Britain

1700–1830, Baltimore, US and London, UK: John Hopkins University Press, pp.163–70 (Siskin).

138 Copyright Act 1814, 54 Geo. 3, c. 156.139 Siskin, supra n. 137, pp. 172–90.

History II: 1774–1854 55

3. History III: 1854–1912

There is a certain irony in the fact that by the time Jeffreys v. Boosey (1854)(Jeffreys)1 came to be decided before the House of Lords the question ofwhether, when and how foreign authors would receive copyright protectionwithin Great Britain had largely moved out of the courtroom. In 1844 theInternational Copyright Act was passed to empower Her Majesty, by means ofOrder in Council, to provide protection to the authors of books and works ofart first published in foreign jurisdictions (subject to British authors receivingreciprocal protections in those jurisdictions).2 The first of these bilateraltreaties were entered into with Prussia and Saxony in 1846, followed byBrunswick, the Thuringian Union, Hanover and Oldenberg in 1847, andFrance in 1851.3 When the House of Lords overturned the decision ofCampbell CJ et al., and reinstated Rolfe J’s original direction that the plaintiffhad no exclusive copyright in the Italian composer’s opera, the work of manyforeign (although not Italian) authors was being routinely protected withinBritain. Indeed compared with the 10 years prior to Jeffreys, when roughly one

56

1 Jeffreys v. Boosey (1854) 4 HLC 815. In Richardson v. Universities of Oxford andCambridge (1804) 3 Cooper’s Cases 564, the House of Lords had been called upon toadjudicate upon the nature and extent of the royal prerogative to grant exclusive patentsfor printing certain types of text. That however, had nothing to do with any question ofcopyright as delineated by the Statute of Anne 1709. For an earlier commentary onJeffreys see Barnes, J.J.B. (1974), Authors, Publishers and Politicians: The Quest foran Anglo-American Copyright Agreement 1815–1854, London: Routledge and KeganPaul, pp. 161–76.

2 An Act to Amend the Law Relating to International Copyright 1844, 7 & 8 Vict.,c. 12. This Act amended the previous Act for Securing to Authors in Certain Cases theBenefit of International Copyright 1838, 1 & 2 Vict., c. 59, under which all attempts atinternational negotiation had failed; the reason for this, as Sherman and Bently pointout ‘was that the protection offered by the 1838 International Copyright Act was muchnarrower than the equivalent provisions available in countries with which Britainhoped to develop reciprocal protection’. See Sherman, B. and Bently, L. (1999), TheMaking of Modern Intellectual Property Law, Cambridge: Cambridge UniversityPress, pp. 111–15.

3 After the treaty with France came Anhalt-Dessau, Anhalt-Bernbourg, andHamburg in 1853, Belgium in 1854, Spain in 1857, Sardinia in 1860, and HesseDarmstadt in 1861. In general, see Briggs, W. (1906), The Law of InternationalCopyright (with Special Sections on the Colonies and the USA), London: Stevens andHaynes; see also Sherman and Bently, supra n. 2, pp. 111–28.

quarter of all cases heard in the courts concerned works by foreign authors,4 inthe 10 years after Jeffreys there were only four such decisions, three of whichinvolved works by American authors.5

As noted, in Jeffreys the Lords overturned Campbell CJ’s decision inholding that Ricordi, as the assignee of the copyright in a work by a foreigncomposer, in a foreign jurisdiction, had no rights under British law to passonto Boosey. Had the work been first composed within England the situationmight have been different, but as things stood Ricordi, and thus Boosey, hadno rights in the work within the UK. Rolfe B, now sitting in the House ofLords as Lord Chancellor Cranworth and Speaker of the House, saw hisoriginal direction reinstated. However, he was not the only judge with aprevious connection to this protracted litigation to be present during theappeal. As was the case in Donaldson v. Becket (1774) (Donaldson),6 thecommon law judges were invited to give their opinions for the considerationof the peers before the House voted on the question at hand – in this case,should the decision of Campbell CJ and the Court of Exchequer be overturnedor not? Of the ten who spoke to the issue, six had previously heard argumentsas to the existence or not of the plaintiff’s copyright in La Sonnambula:Pollock CJ and Parke B,7 and Maule, Wightman, Erle and Williams JJ;8 theothers who spoke to the issue were Crompton and Coleridge JJ, Alderson B,and Jervis CJ.9 After the judges, three peers spoke: the Lord Chancellor

History III: 1854–1912 57

4 Boosey v. Davidson (1848) The Times, 7 June 1848; Boosey v. Purday (1848) TheTimes, 30 June 1848; Cocks v. Purday (1848) 2 Car&K 269; Fellowes v. Chapman(1848) The Times, 8 December 1848; Cocks v. Lonsdale (1849) The Times, 29 March1849; Boosey v. Purday (1849) 4 Ex Rep 145; Cocks v. Purday (1850) 12 Beav 451;Jeffreys v. Boosey (1850); Murray v. Bohn (1850) The Times, 8 August 1850; Ollendorfv. Black (1850) 4 Deg&S 209; Novello v. James (1851) The Times, 25 March 1851;Boosey v. Jeffreys (1851) 6 Ex Rep 580; Buxton v. James (1851) 5 DeG&S 80; Novellov. Sudlow (1852) 12 CBR 177; Murray v. Bogue (1852) 1 Drewry 353; Avonzo v.Mudie (1854) 10 Ex 203.

5 Lover v. Davidson (1856) 1 CB (NS) 182; Boucicault v. Delafield (1863) 1 H&M597; Low v. Routledge (1864) 10 LTR 838; the remaining case was Spiers v. Brown(1857) The Times, 11 December 1857. For a commentary on the history of Americanattitudes to international copyright protection at this time see Barnes, supra n. 1; seealso Khan, B.Z. (2002), Intellectual Property and Economic Development: Lessonsfrom American and European History, Study Paper for the Commission on IntellectualProperty Rights, available at: www.iprcommission.org/papers/pdfs/study_papers/sp1a_khan_study.pdf.

6 Donaldson v. Becket (1774) 4 Burr 2408.7 In Boosey v. Purday (1849).8 All four were present during the initial appeal in Boosey v. Jeffreys (1851).9 Crompton J also had considerable experience with this issue having been

involved, as counsel for the defendant, in Chappell v. Purday (1845) 14 M&W 303,Boosey v. Davidson (1848), and Boosey v. Purday (1849).

himself, Lord St Leonards,10 and Lord Brougham, the three law lords who ineffect carried out all the judicial business of the House at this time.11 Insummarising the judges’ and peers’ response to the question at hand, Jeffreysexhibits uncanny parallels with Donaldson. Of the ten judges who providedopinions, six agreed with Campbell CJ’s ruling that the direction that Rolfe Bhad given to the initial jury had been incorrect (Crompton, Williams, Erle,Wightman, Maule, and Coleridge JJ). By contrast, Lords Cranworth,Brougham and St Leonards were in agreement with the judges in the minority(Jervis CJ, Pollock CB, Alderson and Parke BB ) and, once again, it was thisposition which the House endorsed. This is not to say, however, that the peersvoted upon the issue in the same manner that they had in Donaldson. By themid-nineteenth century the manner in which the Lords carried out its appellatejurisdiction was very different than it had been at the end of the previouscentury. Indeed, since 1844 the lay peers had all but ceased to vote uponappeals to the House;12 instead the Lords simply exercised its judicial capacityin accordance with the law lords’ recommendation on any given issue.13

In Jeffreys the manner in which to read and understand Donaldson wasbrought to the fore, counsel for Boosey arguing the familiar point that theStatute of Anne was simply supplementary to the pre-existing common law


10 Lord St Leonards (Edward Burtenshaw Sugden) had held the position of LordChancellor briefly in 1852.

11 Stevens cites the following statistics: ‘In 1852, of 48 days of judicial business,Brougham sat for 32 and St. Leonards for 43. 1852–53: of 80 days of business –Cranworth, 67; Brougham, 40; St. Leonards, 36; 1854: of 78 days of business –Cranworth, 78; Brougham, 71; St. Leonards, 43. In 1854–55: of 83 days of business –Cranworth, 82; Brougham, 58; St. Leonards, 48’; Stevens, R. (1979), Law and Politics:The House of Lords as a Judicial Body, 1800–1976, London: Weidenfeld and Nicolson,p. 39.

12 See Stevens, ibid., pp. 32–33.13 In 1855 the Commons established a Select Committee to investigate the general

question of Appellate Jurisdiction. For Stevens this was as a result of then widespreaddissatisfaction as to the cost of appeals to the Lords, that the Court only sat during thelegislative term, and the absence of a regular supply of law lords and so the need to relyupon lay peers to get through the business of the appellate Court; Stevens, supra n. 11,pp. 39–40. The Committee reported to the House in May 1856 (1 HL Sessional Papers(1856) Rep. 46) and while it was strongly in favour of reform of the current system, itdid stop short of recommending the establishment of a discrete judicial committeewithin the House to deal with appeals. It was not until the passing of the AppellateJurisdiction Act 1876, Vict. 39 & 40, c. 59, that a court of the House of Lords wasestablished which performed an appellate function that was distinct from the work ofthe Lords as a legislative body. In general see Stevens, supra n. 11, pp. 37–76. See also:Turberville, A.S. (1913), The House of Lords in the Reign of William III, Oxford:Clarendon Press; Turberville, A.S. (1927), The House of Lords in the EighteenthCentury, Oxford: Clarendon Press; Turberville, A.S. (1958), The House of Lords in theAge of Reform, 1784–1837, London: Faber & Faber.

copyright, and that, as ‘there [was] nothing in the terms of the statute whichexpressly limits the right to a British subject’, Ricordi, and his assign Boosey,should by law be protected. Counsel for Jeffreys however countered that ‘thedoctrine in the case of Donaldson’ was that ‘no copyright in books existed atcommon law’, and that the Act created new rights rather than operating tocircumscribe a common law right.14 Of those judges who would have held inthe plaintiff’s favour only Erle, Wightman and Coleridge JJ spoke directly tothe issue of the common law right and the significance of the Donaldsondecision.15 Wightman J recounted that a majority of the judges in Donaldsonhad decided that ‘by the common law, an author of any literary compositionhad the sole right of first printing and publishing the same for sale’, that thisright was not lost upon publication of the work, but that ‘after publication, theright and the remedy for any infringement were regulated by the statute’.16

Thus he concluded, any author, including any alien, was possessed of the rightto publish according to the common law of England.17 Similarly, Coleridge Jfound Donaldson to be illustrative of the fact that ‘copyright for the author …exists by the common law, [until] taken away by the Statute of Anne, or somesucceeding statute’.18 Erle J, however, was slightly more guarded in hisinterpretation of the case. Donaldson, he commented, had concluded that ‘thestatute had restricted the right to the terms of years therein mentioned’; as tothe question of copyright at common law, he felt that Donaldson had left thepoint ‘undecided’, but nevertheless continued that numerous other authorities‘decidedly preponderate in favour of copyright at common law’.19

Providing a neat counterpoint to the comments of Erle, Wightman andColeridge JJ, of those judges who spoke in favour of the defendant, threespoke expressly against the existence of the right.20 Jervis CJ considered it ‘notnecessary to decide in this case whether a British author had copyright atcommon law’ but did concede that ‘the great majority of Judges … in Millar… and Donaldson … declared themselves to be in favour’ of the right. Hecontinued, however:


14 Jeffreys, pp. 821–24.15 Crompton J commented that it was not ‘necessary to enter into the much-

disputed question, as to whether the statute of Anne created a new right, or was anabridgment of an old one’; ibid., p. 846. Neither Williams nor Maule JJ made anyexplicit reference to Donaldson.

16 Jeffreys, pp. 884–85.17 Wightman J observed that ‘[t]he right of property is merely personal, and an

alien friend, by the common law, has as much capacity to acquire, possess, and enjoysuch personal right or property as a natural-born British subject’; ibid., p. 885.

18 Jeffreys, p. 903.19 Ibid., p. 872.20 Parke B, Pollock CB and Jervis CJ; Alderson B did not consider it ‘material for

the present case’ to decide upon the common law issue; Jeffreys, p. 912.

It is with extreme diffidence, therefore, that I express an opinion upon the subject,and declare that, in my judgment, a British author has not copyright at common law.I see nothing to distinguish the case of the author, as owner, of a book or manuscriptfrom that of the inventor or owner of a complicated and highly useful machine.21

Not surprisingly, neither Pollock CB nor Parke B deviated from their previousreading of the law in Boosey v. Purday (1849). While Parke B did not believeit ‘necessary to give an opinion’ he was, nevertheless, of the mind that ‘therational view of the subject is most clearly against the existence of this right’,proceeding that ‘the weight of authority, taking into consideration the opinionsexpressed since the decision of the great cases of Millar … and Donaldson …is likewise against it’.22 In this regard he drew upon the opinion of LordEllenborough in University of Cambridge v. Bryer (1812)23 and the slightlymore recent decision of the US Supreme Court in Wheaton v. Peters (1834).24

Similarly, Pollock CB observed ‘that the weight of mere authority, includingthe eminent persons who have expressed an opinion on the subject since thecase of Millar v. Taylor was argued, is very much against the doctrine of acopyright existing at Common Law’.25

The judges had delivered their opinions for the consideration of the Houseon 29 June 1854. When Lords Cranworth, Brougham and St Leonards spoketo the issue, they did so over a month later, on 1 August. Of these three onlyLord Brougham directly addressed the decision in Donaldson. He began asfollows:

In coming to a decision on this case, it is not necessary to assume that the much-vexed question of common-law right to literary property has been disposed of eitherway. Yet as a strong inclination of opinion has been manifested upon it, as thatleaning seems to pervade and influence some of the reasons of the learned Judges,and as the determination of it throws a useful light upon the subject now before us,I am unwilling to shrink away from expressing my opinion on the question, themore especially as I am aware that it does not coincide with the impressions whichgenerally prevail, at least, out of the profession.26


21 Ibid., pp. 944–45.22 Jeffreys, p. 920.23 University of Cambridge v. Bryer (1812) 16 East’s 317 (University of

Cambridge); see Chapter 2, n. 34 and accompanying text.24 Wheaton v. Peters (1834) 33 US 591.25 Jeffreys, p. 935.26 Ibid., p. 961 (emphasis added). It is tempting to presume that Lord Brougham,

in referring to the prevailing opinion coming ‘out of the profession’, was referring atleast in part to the substance of the opinions being disseminated in such texts as thoseby: Montefiore, J. (1802), The Law of Copyright, London; Espinasse, I. (1824), ATreatise on the Law of Actions on Statutes … and on the Statutes Respecting Copyright,London; Maugham, R. (1828), A Treatise on the Laws of Literary Property, London;

As for Donaldson in particular, Lord Brougham noted that the House of Lordsat that time had reversed the decree under appeal. However, like Erle J beforehim, he continued that ‘upon the general question of literary property atcommon law no judgment whatever was pronounced’.27

Leaving Donaldson to one side, as to the existence of the common law rightin the abstract, if Cranworth LC remained the most tentative of the peers uponthe issue,28 Brougham was the most strident in his rejection of the notion.Given Brougham’s earlier parliamentary opposition to Sergeant Talfourd’sefforts between 1837 and 1842 to reform the law of copyright (which includedthe proposal to provide a 60-year post-mortem term of protection forauthors),29 and the position he had previously espoused in Guichard v. Mori(1831),30 this should not surprise. Castigating those who argued in support ofthe right as relying upon ‘somewhat speculative, perhaps enthusiastic, views’and as having been ‘led away from strict, and especially from legal, reasoninginto rather declamatory courses’, he continued that an author:

[H]as the undisputed right to his manuscript; he may withhold or he maycommunicate it, and, communicating, he may limit the number of persons to whomit is imparted, and impose such restrictions as he pleases upon their use of it. … Butif he makes his composition public, can he retain the exclusive right which he hadbefore? … Has he such a property in his composition as extends universally anden[d]ures perpetually, the property continuing in him wheresoever and whensoeverthat composition may be found to exist? In other words, can his thoughts, or theresults of his mental labour, or the produce of his genius, be considered assomething fixed and defined, which belongs to him exclusively at all times and inall places?31

Lord Brougham considered that the author’s (or indeed the composer’s)thoughts could not be so defined:


Lowndes, J.J. (1840), An Historical Sketch of the Law of Copyright, London; Burke, P.(1842), A Treatise on the Law of Copyright in Literature, The Drama, Music,Engraving and Sculpture, London: Richards; and Curtis, G.T. (1847), A Treatise on theLaw of Copyright, London, UK and Boston, US: Maxwell & Son and Little and Brown;see Chapter 2 of this book.

27 Jeffreys, p. 961.28 The Lord Chancellor observed that copyright ‘if not the creature, as I believe it

to be, of our statute law, is now entirely regulated by it’; ibid., p. 954.29 On the various debates surrounding the passage of the 1842 Act see Seville, C.

(1999), Literary Copyright Reform in Early Victorian England: The Framing of the1842 Copyright Act, Cambridge: Cambridge University Press. On Brougham’s positionin these debates see, in particular, Jeffreys, pp. 51–59.

30 Guichard v. Mori (1831) 2 Coopers 216; see Chapter 2, n. 88 and accompanyingtext.

31 Jeffreys, p. 962.

That which was before incapable of being dealt with as property by the commonlaw, became clothed by the lawgiver’s acts with the qualities of property; and thusthe same authority of the law giver, but exercised righteously and wisely for alegitimate and beneficent purpose, gave to the produce of literary labour thatprotection which the common law refused it, ignorant of its existence; and thisprotection is, therefore, in my opinion, the mere creature of legislative enactment.32

As for Lord St Leonards he appears, at first glance, implicitly to concede theexistence of the common law right, beginning as he does with the admissionthat ‘no common law right exists after publication’ (the implication being thatbefore publication a common law right did exist). However his observationhas to be read in the context of the distinction that he, and the other Lords,33

had drawn between an author’s ‘right to his manuscript and to any copy whichhe may choose to make of it, as his property, just like any other personalchattel’ and ‘the right to multiply copies to the exclusion of every otherperson’. ‘Nothing’ he considered ‘can be more distinct than these two things’.The property in an author’s manuscript, as an item of tangible personalproperty, was one thing; the claim to copyright on the other hand was ‘a totallydifferent thing’.34 Lord St Leonards, in observing that no common law rightexists after publication was referring to the existence of a common law rightof property in the manuscript, the paper, and not a common law copyrightresiding with the author. Parke B had earlier expounded upon this distinctionin similar terms, observing that ‘[t]he term “copyright” may be understood intwo different senses’; he continued:

The author of a literary composition which he commits to paper belonging tohimself, has an undoubted right at common law to the piece of paper on which hiscomposition is written … This sense of the word “copyright” has nothing to do withthe present question, though, in the course of the argument, it has sometimes beenused in that sense, when it was convenient to do so, particularly when it wascontended that a copyright existed at common law. The other sense of that word is,the exclusive right of multiplying copies: the right of preventing all others fromcopying, by printing or otherwise, a literary work which the author has published.This must be carefully distinguished from the other sense of the word, and is alone


32 Ibid., p. 968. Like Parke B, Brougham made reference to Lord Ellenborough’sopinion as to the common law right in University of Cambridge (1812); again thisshould not surprise given that Brougham had been counsel for the defendant in thatcase.

33 See for example Lord Chancellor Cranworth’s observation that ‘it is proper tobear in mind that the right now in question … is not the right to publish, or to abstainfrom publishing a work not yet published at all, but the exclusive right of multiplyingcopies of a work already published, and first published by [Boosey] in this country’;Jeffreys, p. 954. Similarly, Lord Brougham noted that ‘[t]he right of the author beforepublication we may take to be unquestioned, and we may even assume that it neverwas, when accurately defined, denied’; ibid., p. 962 (emphasis added).

34 Jeffreys, pp. 977–79.

to be looked at in the discussion of this case, and it would tend to keep our ideasclear in determining the question, if, instead of copyright, it was called the exclusiveright of printing a published work, that being the ordinary mode of multiplyingcopies.35

After the law lords had spoken, the question for the House was whether theLord Chancellor’s original direction to the jury had been given in error.36 Allthree law lords considered that it had not been and recommended that theappellate decision of the Court of Exchequer be reversed; the House dulycomplied.

When Charles Clark produced his Digest of House of Lords Reports in1866, he noted in the Index that ‘[c]opyright commences by publication; if atthat time the foreign author is not in this country, he is not a person whom thestatute meant to protect’, and that ‘[p]er Lords Brougham and St. Leonards:Copyright did not exist at common law. It is the creature of statute’.37

Whatever ambiguities surrounded the decision in Donaldson, the position ofthe Lords in general, and of the law lords in particular, in Jeffreys is muchmore readily ascertainable. Indeed, when a report of the decision appeared inthe Law Magazine in February 1855, its writer noted that ‘[t]he questionwhether copyright existed at common law has long been regarded as a mootpoint by the Bench, and also by the profession generally; and it is thereforesatisfactory to find a decision upon it, pronounced by our highest Court ofjudicature’. He continued: ‘The three law lords, the Lord Chancellor, LordBrougham, and Lord St. Leonards, were unanimous in deciding that nocopyright did exist at common law, and thus have terminated this importantand long-contested question’.38

Further testament to this, were it needed, lies in the almost immediate andovertly critical response that the decision provoked from one contemporarylegal commentator. Less than 2 months after the decision, in September 1854,Montague Leverson published his treatise entitled Copyright and Patents, or,Property in Thought.39 Taking a cue from Lord St Leonards dictum, he


35 Ibid., pp. 919–20.36 Of the 51 peers who voted to overturn the decision of the lower court, and

reinstate the original direction of the Lord Chancellor, only 10 were present throughoutall of the proceedings; amongst these 10 were, of course, Lords Cranworth, Broughamand St Leonards. The remaining seven were Lords Somerhill, Monteagle, Sundridge,Newcastle, Derby, Shaftesbury and Sydney. Of the other 41 peers, only 33 had beenpresent to hear the opinion of the common law judges on 29 June.

37 Clark, C. (1866), Digest of House of Lords Reports, 1814–1866, London:Butterworths, p. 63.

38 Anon. (1855), ‘Notes of Leading Cases’, Law Magazine, 53, pp. 368, 371–73.39 Leverson, M.R. (1854), Copyright and Patents, or, Property in Thought,

London: Wildy & Sons.

asserted that ‘[c]opyright is not the right of multiplying copies, but the right tothe produce of a man’s labour, often of a kind the most prolific of all labour ofbenefit to society’. Rounding on the decision in Jeffreys he grieved that theLords might have ‘made the law’ in accordance with ‘what should be the rightsof property’. Instead, Leverson bemoaned, ‘[y]ou have made it to deny thelabourer the produce of his labour’.40 Leverson’s lament was for the fall of theLockean literary archetype.

And so, by the mid-nineteenth century, with Donaldson and Jeffreys, theHouse of Lords had twice handed down decisions that should have lain to restany notion that an author had, at common law, a property in his work akin tothe statutory protection first established by the Statute of Anne. How then toaccount for the fact that, when the eminent copyright practitioner and scholar,E.J. Macgillivray, produced the second of his eight volume collection ofCopyright Cases in 1911, no less than seven of the cases reported wereindexed as relating to the ‘[c]ommon law right’?41 Alternatively, how tounderstand the commentary of Cozens-Hardy MR in Monckton v. TheGramophone Company Limited (1912) to the effect that, prior to the 1911 Actan author had indeed a right in his ‘unpublished literary productions’, whichright was based ‘upon property’, and which property was ‘incorporeal’?Furthermore, this, Cozens-Hardy MR considered, was based upon the‘weighty authority’ of Donaldson itself. Moreover, what about the fact that thelegislature itself considered it necessary to make specific provision to ensurethat the perpetual copyright at common law in unpublished manuscripts wasbrought within the terms of the Copyright Act 1911?

After Leverson’s tract, the next three texts dedicated specifically to the law ofcopyright were published in 1863 in the wake of the International Exhibitionand the passing of the Copyright Act 1862: Chappell and Shoard’s A Handy-Book of the Law of Copyright,42 Charles Palmer Phillips’ The Law of


40 Ibid., pp. 12 and 19.41 The cases were: Fraser v. Edwards (1905) 2 MCC 10; The Exchange Telegraph

Co. v. Howard (1906) 22 TLR 375; MacMillan v. Dent [1907] 1 Ch 107; Philip v.Pennell (1907) 2 MCC 91; Mansell v. Valley Printing Co. [1908] 2 Ch 441; Cabburnv. Lloyds (Ltd) (1909) 2 MCC 215; Monckton v. The Gramophone Company Ltd(1911–12) 28 TLR 205. Macgillivray also included four American decisionsconcerning common law copyright: Caliga v. Inter-Ocean Newspaper Co. (1907);Savage v. Hoffman (1908); Frohman v. Ferris (1909); Stern v. Jerome H Remick(1910). For full references see Macgillivray’s (1911), Copyright Cases, 2, London:Publishers’ Association.

42 Chappell, F.P. and Shoard, J. (1863), A Handy-Book of the Law of Copyright,London: Henry Sweet.

Copyright in Works of Literature and Art,43 and E.M. Underdown’s The Lawof Art Copyright.44 In the first, the authors were somewhat circumspect in theiropinion as to the existence or not of the common law right: ‘It seems clear that,since the case of Donaldson v Becket in the House of Lords, the property ofauthors in their published productions depends entirely upon statutory enact-ment, and that no common law privilege remains, even supposing that it everexisted’.45 Phillips, on the other hand, made explicit the distinction that hadbeen drawn out in Jeffreys:

The term copyright, in its popular, if not its legal acceptation, includes two rights,which differ widely in their origin, nature and extent. The frequent application ofthe term to each of them indiscriminately seems to have tended to an occasionalinaccuracy of language in reference to one or other of them, and perhaps tomisapprehension of both. They are, it must always be remembered, distinct andseveral rights. Copyright-before-publication is the more ancient of the two. It is theexclusive privilege of first publishing any original and material product ofintellectual labour. Its basis is property; a violation of it is an invasion of property,and it depends entirely upon the Common Law; the privilege is simply a right ofuser, incidental to the property exclusively vested in the absolute and lawfulpossessor of the material product.46

First publishing in this sense is more akin to the civil law concept of droit dedivulgation, albeit grounded in the lawful ownership of the manuscript itself.It did not carry any of the rights of economic exploitation which the copyrightlegislation confers.


43 Phillips, C.P. (1863), The Law of Copyright in Works of Literature and Art andin the Application of Designs, London.

44 Underdown, E.M. (1863), The Law of Art Copyright, London: Crockford.45 Chappell and Shoard, supra n. 42, p. 1 (emphasis added). Three years before the

publication of the work by both Chappell and Shoard, and that by Phillips, JamesFraser had published a text on patent and copyright law (but primarily patent law) inwhich he evidenced the same circumspection in commenting that in Donaldson ‘it wassettled that, if the right contended for ever did exist, it was abridged by the statute ofAnne’; Fraser, J. (1860), A Handy-Book of Patent and Copyright Law, London:Samson Low, p. 181 (emphasis added). See also the later commentary of John Shorttwhen he observed that, as to whether any common law right survived publication,‘widely different views have been entertained by some of our ablest lawyers living atdifferent times’. Shortt provided a brief synopsis of these various opinions from themid-eighteenth century through to the present time and continued that ‘[o]n whateverbasis of natural right the title of an author to the sole property in the products of hismental facilities may rest in the last resort, it is now clear that copyright afterpublication … is a territorial monopoly, the creation of our municipal law’, at whichpoint he inserts a footnote with the following: ‘In the elaborate opinions given by thejudges to the House of Lords in this case the arguments for and against the existenceof copyright at common law are fully stated’; Shortt, J. (1871), The Law Relating toWorks of Literature and Art, London: Cox, p. 65.

46 Phillips, supra n. 43, pp. 1–2 (emphasis added).

The other type of copyright, ‘copyright-after-publication’, was both entirelydistinct from the first and entirely dependent upon the legislation. Phillips’touchstone in understanding the nature of the author’s right in his manuscriptprior to publication was neither Blackstone nor Mansfield but ‘the law lords inJeffreys v. Boosey, and … some of the judges in Millar v. Taylor’. In fact herelied upon only one of the judges from Millar in this regard – the dissentingYates J – whom he cited at length:

[I]deas are indeed free but while the author confines them to his study; they are likebirds in a cage, which none but he can have a right to let fly, for till he thinks properto emancipate them they are under his own dominion. It is certain every man has aright to keep his own sentiments if he pleases. He has certainly a right to judgewhether he will make them public, or commit them only to the sight of his friends:in that state a manuscript is in every sense his peculiar property, and no man cantake it from him, or make any use of it which he has not authorised, without beingguilty of a violation of his property.47

Once published then, in the absence of statutory protections, the author couldexert no further control over his work. It was in this same sense that Perrott Bin Donaldson had observed that:

An author certainly had a right to his manuscript; he might line his trunk with it, orhe might print it. After publication, any man might do the same ... if a manuscriptwas surreptitiously obtained, an action at common law would certainly lie for thecorporeal part of it, the paper. So if a friend to whom it is lent, or a person whofound it, multiplied copies, having surrendered the original manuscript, he hadsurrendered all that the author had any common law right to claim.48

Lord Brougham, put it slightly differently in Jeffreys when he stated that ‘theright of the author before publication we may take to be unquestioned, and wemay even assume that it never was, when accurately defined, denied’. Whatwas this right when accurately defined? The author had the freedom to‘withhold’ or ‘communicate’ his work, and in communicating it ‘he may limitthe number of persons to whom it is imparted, and impose such restrictions ashe pleases upon their use of it’.49 However, should the work be made public,what rights an author had in a work could only ever be conferred by thelegislature.

As for Underdown, although his work was more specifically directedtowards the arts, he too acknowledged the significance of the opinions of thelaw lords in Jeffreys concerning the common law right in literary works,


47 Ibid., pp. 2–3.48 Cobbett, W. (1813), Parliamentary History from the Norman Conquest, in 1066,

to the Year 1803 (44 vols), 17, p. 983.49 Jeffreys, pp. 962 (emphasis added).

although he was less than enthusiastic about their decision. Indeed, havingacknowledged that ‘it was decided by the House of Lords that no copyright atcommon law exists’, he continued:

But the weight of that opinion is much lessened when we remember the admirablejudgment of Mr. Justice Erle, who, in the minority, sustained an opposite opinion,viz., that authors have a property at common law as well as before the statute asafter it, and that copyright is not a privilege but a property. I would refer all whomight be interested in an abstract question of law to read this remarkablejudgment.50

Certainly then, with Phillips and Underdown, we get an explicit recognition ofthe fact that the Lords in Jeffreys denied the existence of the common lawright,51 and in Phillips we find the first author of a copyright treatise toaccurately capture the impact of Donaldson upon Millar, albeit through thelens of Jeffreys. However, Phillips’ analysis was to be short-lived, andUnderdown’s direction to the dicta of Erle J would prove in time to beuncannily prescient. Montague Leverson need not have worried, for, in spiteof Phillips’ warning that property rights in a physical manuscript and thestatutory right to exclusively print a work after first publication should alwaysbe remembered as distinct and separate rights, the process of conflating thetwo began within a generation.

If the question of the copyright in foreign works allowed a platform forpontificating upon the common law right prior to Jeffreys, afterwards anumber of disputes concerning theatrical productions provided the debate witha new stage upon which competing conceptions might be cast. In Shepherd v.Conquest (1856) (Shepherd) the plaintiffs had employed an author, Courtney,to visit Paris to see what French plays might be adapted for the London stage.52


50 Underdown, supra n. 44, p. 151.51 See also the comments by an unnamed author in the Law Magazine and Review

in 1869 that in Jeffreys the House laid down ‘that copyright is a monopoly bounded andregulated by the Copyright Act, and not a property derived from or carved out of ageneral right of property’, and then later that in Jeffreys ‘[t]he highest court of appealthen decided that copyright is the creature of municipal law, and partakes of the natureof a monopoly granted by statute for a limited period’; and this despite the author’s ownopinion that copyright should be considered a ‘sacred indefensible right’; Anon.(1869), ‘Anglo-American Copyright’, Law Magazine and Review, 26, pp. 49, 55–58.

52 Shepherd v. Conquest (1856) 17 CB 427. That these works would not fall foul of the Order in Council of 1851 extending copyright protections to works by French authors was assured by the fact that works in translation were considered to be new works, and not a copy of the original play. The process of trans-lating an existing work was perceived as involving considerable ‘intellectual

Courtney adapted a Parisian farce, renaming it Old Joe and Young Joe, andagreed with the plaintiffs that they could have the sole right of representing theplay in London. A year later he sold the copyright in the work to the defendantwho produced the play at his own theatre, the Grecian Saloon. The main issuefor the court to decide concerned the nature and effect of the employer-employee relationship between the plaintiffs and Courtney.

The court decided in the defendant’s favour, holding that the plaintiffs couldnot be considered to be the authors of the work and, as the agreement as to theright to perform the work was not in writing (as was required by the DramaticCopyright Act 1833),53 that neither could they be considered to be theassignees of the work. The relationship of employment per se made nodifference; the plaintiffs had nothing upon which to hang their claim.

The plaintiffs had tried to rely upon a series of cases in which it had beenheld that, whenever someone is hired for the express purpose of developing aninvention, the resultant work belongs to and is patentable by the employer.54

To this, however, Jervis CJ replied:

[That] literary productions stand upon a different and higher ground from thatoccupied by mechanical inventions; that the intention of the legislature in theenactments relating to copyright was, to elevate and protect literary men; that suchan intention could only be effectuated by holding that the actual composer of thework was the author and proprietor of the copyright, and that no relationshipexisting between him and an employer who took no intellectual part in theproduction of the work, could without an assignment in writing vest theproprietorship of it in the latter. To this might be added, as to literary property andpatents for inventions, that they are both creatures of the statutes …55

While the substance of Jervis CJ’s latter observation comes as no surprise, itis perhaps curious that he should make the point at all; certainly it wasunnecessary within the context of the case before him. In this regard, it istempting to think that Jervis CJ merely sought to underline the position whichhad been adopted in Jeffreys 2 years before, perhaps all the more so given thatsitting with him on the bench was Williams J.56

Williams J was also involved in the next pertinent decision, that of Reade v.Conquest (1861) (Reade). However, now he was sitting alongside the newlyappointed Chief Justice of the Court of Common Pleas – Erle CJ.57 Reade, an


labour’, impressing a ‘new character’ upon the original work; see Jervis CJ, ibid., p. 444.

53 Dramatic Copyright Act 1833, 3 & 4 Will. 4, c. 15.54 Bloxam v. Elsee (1827) 6 B&C 169; Allen v. Rawson (1845) 1 CB 551.55 Shepherd, p. 444 (emphasis added).56 Ibid., p. 435.57 Reade v. Conquest (1861) 9 CB (NS) 755; Erle J was elevated to the position of

Chief Justice of the Common Pleas in June 1859.

author, had published a novel, It is Never Too Late to Mend, upon which thedefendant based a play performed once again in the Grecian Saloon. As the1833 Act only extended protection to any ‘tragedy, comedy, play, opera, farce,or any other dramatic piece or entertainment’,58 the plaintiff sought to relyupon his common law right of property in the novel itself.

Lush, counsel for the defendant, seemingly taking a cue from Jervis CJ inShepherd, opened with the observation that ‘[c]opyright, whatever it mayformerly have been, is now only the creature of statute’, at which point ErleCJ interjected: ‘Two noble and learned lords gave elaborate opinions to thateffect in Jeffreys v. Boosey; but that was not the adjudication of the House’.59

Again Lush pressed: ‘It is too late now to say that copyright existed atcommon law’; again Erle CJ observed: ‘In Donaldson v. Beckett eight of thejudges (against four) thought there was’.60 In any case, Lush continued:

The complaint is, that the defendant has dramatized the story and caused it to berepresented at his theatre. There is no authority for saying that this was any offenceat common law, or any invasion of the plaintiff’s common-law right: and it is clearthat the representing on the stage is no infringement of the plaintiff’s right under thestatute: Coleman v. Wathen.61

On this point at least the Court was in agreement. Williams J delivering thejudgment, commented as follows:

[I]t is not necessary, in order to decide the present case, to consider the questionupon which so much learning has been exhausted, viz. whether anterior to thestatute of Anne there existed a copyright at common law in published books moreextensive in its nature and duration than the right conferred or expressed by thatstatute. There can, we think, be no doubt that the weight of authority in the time ofLord Mansfield was in favour of the existence of such a right; although the doctrinehas found less favour in modern times: but the continued existence of any such rightafter the passing of the statute of Anne was distinctly denied by the majority ofjudges in the celebrated case of Donaldson v. Beckett: and the case itself expresslydecides that no such right exists after the expiration of the period prescribed by theact.

The question, therefore, seems narrowed to this, namely, whether the statute ofAnne, having confessedly put an end to such a right (if it ever existed) after theperiod it prescribes, has yet preserved it during the currency of such period. That ithas done so is a proposition which we think it difficult for the plaintiff to maintain.That a common-law right of action attaches upon an invasion of the copyrightcreated by statute, was decided in Beckford v. Hood … But we are not aware of anycase, since Millar v. Taylor was over-ruled by the House of Lords, which decides or


58 Section 1.59 Reade, p. 757.60 Ibid., p. 763.61 Reade, p. 764.

recognizes that an author of a published work has any other than the statutablecopyright therein.62

Reade was followed by Coyne v. Maxwell (1865), in which the plaintiff, theauthor of the dramatic work The Woman in Red, complained not of anunlawful performance of his work by the defendant but of its publication.63 Forthis the plaintiff relied upon the premise that previous authorisedperformances of the play did not amount to publication, and that as the workremained unpublished, he was entitled to the protection of the court as to hisproperty at common law. Cockburn CJ, sitting with Crompton,64 Blackburnand Shee JJ, asked counsel for Coyne to ‘cite cases in which the right ofproperty in unpublished works had been recognised at common law’. Theplaintiff’s counsel duly obliged, referring to a number of cases includingJeffreys ‘where the whole question was most elaborately discussed by thejudges and law lords’; referring to both Lord Chief Justice Erle and Lord StLeonards, they concluded that the cases established the doctrine ‘that so longas a person had not published a work of literature or art he had a common lawproperty in it quite independently of copyright by statute’.65 Cockburn CJ,after hearing the defendant’s arguments against the right, considered that asthe ‘main question’ of the existence or not of the common law right ‘was onein which the decision might be uncertain, it would be better to state the factsin the form of a special case, and thus raise the question for the opinion of theCourt’.66 The report of the decision continues that ‘[i]n the result it was soarranged’; however, the ‘special case’ appears never to have been heard.

Whatever Jeffreys may have contributed towards the evident uncertainty as tothe existence of the common law right in the observations from both WilliamsJ and Cockburn CJ, there were, as was the case with Eyre CJ in Reade, otherjudicial pronouncements from this period which appeared to take its existenceas a matter of fact. In Boucicault v. Delafield (1863), in the same year in which


62 Ibid., pp. 766–7.63 Coyne v. Maxwell (1865) The Times, 7 and 10 June 1865 (Coyne).64 Crompton J, of course, had been involved in Jeffreys.65 Coyne, 7 June 1865. In making out his argument, counsel for the plaintiff

paraphrased a passage from Erle J in Jeffreys: ‘If an author chooses to keep his writingsprivate, he has a right of property analogous to that of property in personalty; he mayrestrain publication, he may require back any copies. If he even chooses to impart hismanuscript to others without any liberty of general publication, he still retains theserights of property. He may lend it to others with or without the liberty of transcription,and if with the liberty of transcription, he may limit the exercise of that right and thenumber of copies to be made’; see Jeffreys, pp. 867–68.

66 Coyne, 10 June 1865.

Phillips published his Law of Copyright, Wood VC reminded counsel for thedefendant that in Donaldson ‘the Judges were 8 to 3 in favour of the existenceof the common law right, and 6 to 5 in favour of its being taken away by thestatute of Anne’.67 Similarly in Platt v. Walter (1867), concerning whether ornot copyright might subsist in newspaper reports, the then Lord ChancellorChelmsford, finding it difficult to comprehend ‘the meaning of the word“copyright” in its application to a newspaper’, nevertheless observed thatcopyright was a protection ‘given by common and statute law’.68 Before thedecade was out however Jeffreys would be revisited once again in the Houseof Lords with the case of Routledge v. Low (1868) (Routledge).69

The interest in the Routledge litigation lies not with any commentary uponthe common law right per se (indeed it is the absence of such commentarywhich is of note), but rather in the impact it seems to have had upon thecurrency and relevancy of the determination in Jeffreys at that time, as well asin the manner in which the Lords addressed the nature of copyright in general.In brief, Low & Co. Booksellers, the plaintiffs, had purchased the copyright inHaunted Hearts, a novel by Maria Cummins, an American author. In anattempt to secure copyright protection in Britain, Cummins travelled toMontreal – where she resided for 2 months in 1864 while she assigned thework to the plaintiffs, and they subsequently registered and published it inLondon.

The argument on the plaintiff’s behalf was that the provisions of theCopyright Act 1842 extended protection to any author resident in the Britishdominions at the time of first publication in England. Kindersley VC allowedthe injunction, which decree was upheld on appeal by Turner and KnightBruce LJJ.70 When Routledge appealed again, all of the Lords were in


67 Boucicault v. Delafield (1863) 1 H&M 597, p. 598.68 Platt v. Walter (1867) 17 LTR 157, p. 159.69 Routledge v. Low (1868) 3 LTR 100. For a contemporary commentary on

Routledge see Anon., ‘Anglo-American Copyright’, supra n. 51.70 Low v. Routledge (1864) 10 LTR 838 (Low (1864)); Low v. Routledge (1865) 1

LR (Ch App) 42 (Low (1865)). In both the High Court and the Court of Appeal it wasdecided that the protections of the 1842 Act extended to the author by virtue of herresidency in Canada at the time of publication within the UK. However, in the HighCourt, Kindersley VC also observed as follows: ‘If it were an open question whether itwas expedient or beneficial that the law should be that an alien, whether resident hereor not, by first publishing a work here, acquired a copyright, certainly strong argumentsmight be adduced in support of the affirmative of that proposition. Every copyright[has] for its end and object the encouragement of learning by holding out to men oflearning and genius advantages to arise from composition and publication, theconsideration being a monopoly, although a limited one, and the public feeling that,although such monopoly was per se an evil, it might be compensated for by theinducement held out to such men to produce works that should be useful. That being

agreement that the appeal should be dismissed and the decree affirmed,however not all were in agreement as to why. Lord Chancellor Cairns gave thefirst judgment. Jeffreys, he commented, was decided not upon the 1842 Act butupon the Statute of Anne, the ratio decendi of which, in his opinion,‘proceeded mainly, if not exclusively, on the wording of the preamble … andon a consideration of the general character and scope of the Legislature inGreat Britain at that period’. That is, the Act was passed to benefit Britishsubjects only. Britain, however, had sired an Empire, and the aspirations of the1842 Act were much broader in scope given that it sought to ‘afford greaterencouragement to the production of literary works of lasting benefit to theworld’. Who should receive the protection of the Act? The Lord Chancellorcontinued, in a passage which deserves to be set out in full:

In my opinion the protection is given to every author who publishes in the UnitedKingdom, wheresoever that author may be resident or of whatever state he may bethe subject. The intention of the Act is to obtain a benefit for the people of thiscountry by the publication to them of works of learning, of utility, of amusement.The benefit is obtained in the opinion of the Legislature by offering a certainamount of protection to the author, but it is a benefit given, not for the sake of theauthor of the work, but for the sake of those to whom the work is communicated.The aim of the Legislature is to increase the common stock of the literature of thecountry, and if that stock can be increased by the publication for the first time hereof a new and valuable work composed by an alien, who never has been in thecountry, I see nothing in the wording of the Act which prevents, nothing in thepolicy of the Act which should prevent, and everything in the professed object ofthe Act, and in its wide and general provisions, which should entitle, such a personto the protection of the Act in return and compensation for the addition he has madeto the literature of the country. I am glad to be able to entertain no doubt that aconstruction of the Act, so consistent with a wise and liberal policy, is the properconstruction to be placed upon it.71

Lord Westbury was of the same mind, considering the Act to be ‘auxiliary tothe advancement of learning in this country’ in providing ‘an invitation to menof learning in every country to make the United Kingdom the place of firstpublication of their works’; ‘[t]he benefit of the foreign author’ he continued‘is incidental only to the benefit of the British public’.72


the modus operandi in every Copyright Act, if it were an open question whether itwould tend to the object which the Acts had in view that a foreign author not residenthere should be encouraged to publish works in this country, it would seem that, if therewere two works of equal value published simultaneously, one by a British subject here,the other by a foreigner living abroad, if it would be expedient to accord to a Britishsubject such benefit, it would be equally expedient that a foreigner should have the likeconsideration’; Low (1864), pp. 838–39.

71 Routledge, p. 876.72 Ibid.

In contrast, two of the Lords gave the Copyright Act 1842 a much narrowerreading: Lord Chelmsford and Lord Cranworth. Both decided that to benefitunder the legislation the author whose work was first published within the UKhad themselves to be resident within the area ‘over which the copyrightextended and to which it was limited’; in this case, either within the UK or itsdominions.73 That Cummins was resident in Montreal ensured her protectionunder the statute. As to the reading which the Lord Chancellor and LordWestbury wished to place upon the Act, Lord Chelmsford could not help butentertain a doubt as to whether it was entirely ‘well founded’. Nevertheless, hecontinued, ‘it is unnecessary to consider this question more fully with a viewto the determination of the present case’.74 For Lord Cranworth, noting the‘decision of your Lordships’ house in Jeffreys v. Boosey, according to theopinions of all the noble Lords who advised the House on that occasion’, notsurprisingly it was:

[D]ifficult to concur with the [Lord Chancellor] in the opinion that the presentstatute extends its protection to foreigners without saying that the case of Jeffreys v.Boosey is not good law, a conclusion at which I should be very unwilling to comeas to any case decided in this House, more especially as to one so elaboratelyconsidered as that of Jeffreys.75

Instead, twice stressing that he was not in agreement with the Lord Chancellorupon the broader issue, he sought ‘to keep my judgment open on the point’should the issue arise for decision in the House.76

The fifth member of the court, Lord Colonsay, remained firmly on the fenceas to the ‘more liberal view of the statute’ which had been suggested: ‘[A]fterthe difference of opinion that I have heard expressed with regard to it, nothaving considered … that a judgment upon that point was necessary to thesolution of the question now before the House, I respectfully beg to abstainfrom expressing any opinion upon it’.77 However, when the issue arose againjust over 2 months later in Low v. Ward (1868), it was the narrower readingwhich was to be preferred.78 In this subsequent case the author who travelledto Montreal before publishing his book (Guardian Angel) in Britain was none


73 Routledge, per Lord Chelmsford, p. 877. 74 Ibid., p. 878.75 Routledge, p. 876 (emphasis added).76 Ibid., p. 877.77 Routledge, p. 879. Nevertheless, he did continue: ‘[A]lthough I can easily see

that there is very little benefit to be gained to British authors by refusing to extend theprotection of copyright in the manner suggested, because nothing can be more shadowythan a distinction depending upon the circumstances of a few hours’ or a few days’residence within some part of the widely-extended dominions of Her Majesty’; ibid.

78 Low v. Ward (1868) 6 LR (Eq) 415 (Low (1868)).

other than Oliver Wendell Holmes. Giffard VC commented: ‘I have not theslightest doubt about this case. It is settled by Low v. Routledge that anAmerican who chooses to go across the frontier into Canada, and thenpublished his work in the United Kingdom, acquires exactly the same rights asif he had been a British subject’.79

Routledge then had two significant effects. In the first place it sent out amessage that Jeffreys was pertinent to litigation concerning only those literaryworks first published before the passing of the 1842 Act. In this respect, asmore and more time passed, and the copyright in works from this earlierperiod began to expire (if they had not already done so), the relevancy ofJeffreys would appear to become increasingly redundant.80

Secondly, in providing American (and other foreign) authors with amechanism for ensuring protection of their works within the UK (and indeedthroughout the British empire) the need to argue that such works should beprotected (whether under the legislation or at common law) was renderedsimilarly irrelevant – the simple fact was that now they could.81 Indeed, in the20 or so years which followed Routledge, bringing us to the time of theimplementation of the Berne Convention within the UK,82 the only copyrightcases involving works by foreign authors to come before the courts addressedquestions as to which types of actions could be equated with the ‘publication’of a dramatic work so as to denude its author of any rights of representationunder the 1833 Act,83 or whether the work in question had been registered in


79 Ibid., p. 418.80 There were only a handful of cases decided between Routledge and the time of

the implementation of the Berne Convention within the UK (infra n. 82), whichinvolved works created prior to 1842: Levy v. Rutley (1871) 6 LR (CP) 1870–71, p. 523, which concerned a play protected under the Dramatic Copyright Act 1833;Marzials v. Gibbons (1874) 9 LR (ChApp) (1873–74), p. 518, which concerned theapplication of s. 4 of the 1842 Act to a corporate owner (The Wesleyan Conference) ofthe copyright in a book of hymns first published in 1831; and Re The MusicalCompositions ‘Kathleen Mavourneen’ and ‘Dermot Astore’, ex p. Hutchins and Romer(1879) 4 QBD 483, in which the retrospective effect of s. 20 of the 1842 Act wasconsidered in relation to the performance right in two songs composed in 1835–36.Jeffreys was not referred to in any of these decisions.

81 See for example the observation of Richard Bowker (then editor of Publishers’Weekly and of the Library Journal, as well as vice-president of the American (Authors)Copyright League) that, as a result of Routledge, ‘American authors had beenaccustomed to make a day’s stay in Montreal on the date of the English publication oftheir books’; Bowker, R.R. (1912), Copyright: Its History and Its Law, Boston andNew York: Houghton Mifflin Company, p. 374.

82 International Copyright Act 1886, 49 & 50 Vict., c. 33; Order in Council (28November 1887).

83 See Boucicault v. Chatterton (1876) 35 LTR 541, in which the question waswhether the performance of a play in the US, prior to its performance in the UK,

accordance with the requirements of the legislation.84 No more would be saidas to the existence or not of the common law right.

The further irony in all of this is that, as with the Lords in Jeffreys, thosespeaking in Routledge itself were clearly no apologists for a common lawright. Indeed, the Lord Chancellor’s observations were utilitarian andinstrumentalist in the extreme. Again: the benefit conveyed by the legislation‘is a benefit given, not for the sake of the author of the work, but for the sakeof those to whom the work is communicated’.85 If Routledge did contribute toa process whereby the relevancy of Jeffreys became increasingly marginalised,it was certainly not because the Lords were adverse to the concept thatcopyright was no more nor less than a creature of statute.86 In any event, inassessing the manner in which Jeffreys became increasingly eclipsedthroughout the remainder of the nineteenth century, alongside the impact ofRoutledge, we pause here to consider the role which the writers of copyrighttexts in the late nineteenth century also played in this process.

In 1870, Walter Arthur Copinger, barrister, bibliographer and antiquary,published the first in a long line of what would become for some considerabletime the authoritative text on copyright. In his first chapter, the ‘HistoricalView of the Copyright Laws’, Copinger begins with a conceit straight out ofBlackstone’s Commentaries (or indeed Curtis’ Treatise): ‘What property couldbe more emphatically a man’s own than his literary works?’87 Relying uponexactly the same commentary from Yates J as did Phillips, Copinger drawsfrom it the principle that ‘every man has the right at common law to the first


amounted to a prior publication under the 1833 Act. See also Chappell v. Boosey(1882) 21 ChD 232, in which the question was whether the publication in print of asong prior to its first public performance would prevent its author from claiming a rightof representation under the 1833 Act.

84 Boosey v. Fairlie (1877) 4 AC 711; Osbourne v. Vitzelly (1885) 1 TLR 17; Reidv. Maxwell (1886) 2 TLR 790. For similar litigation after 1886 see Fishburn v.Hollingshead (1891) 2 Ch 371.

85 Routledge, p. 876.86 The only law lord to perhaps register a note of ambiguity as to the source of

copyright in law was Westbury with his observation that ‘when a statute is passedwhich creates or gives peculiar protection to a particular kind of property which itdeclares shall be deemed personal property, and does not exclude the alien, why is heto be deprived of his ordinary right of possessing such property, or being entitled tosuch protection?’; ibid., p. 878.

87 Copinger, W.A. (1870), The Law of Copyright in Works of Literature and Art,London: Stevens & Haynes, p. 5. Five years later the American author Morgan wouldask: ‘What can be more emphatically a man’s own than his own ideas?’; Morgan, J.A.(1875), The Law of Literature, New York: Cockcroft & Co., p. 4.

publication of his own manuscript’.88 So far, so good. However, it is at thispoint that the ambiguity surrounding the nature of Apsley LC’s first questionin Donaldson resurfaces, with its attendant opportunities for confusing andconflating the notion of a copyright at common law with the type of right towhich Yates J, Perrott B, Lord Brougham and Phillips were alluding.89

Copinger proceeds, as Phillips had done, to consider the effect of publicationupon that right, noting that ‘[a]t one time it was contended that by publicationthe author or proprietor lost any right he might have had at common law to theproperty in the work published’. His initial response to this (by implication,now redundant) suggestion is one not of law, but of opinion:

[I]t would be hard indeed if publication, the one and necessary act to make the workuseful and profitable were construed to be destructive at once of the author’sconfessed original property against his expressed will. For the right of the author tothe property while in manuscript is freely admitted. But he is ready to admit hiscontemporaries and posterity into a participation in the result of his labours.Without publication the work would be useless to the author, because without profit;and property, without the power of use and disposal, is an empty source. Publicationtherefore is the necessary act and only method of rendering this avowed propertyserviceable to mankind and profitable to the owner.90

For Copinger, on publication of the manuscript ‘no more passes to the publicthan the unlimited use of every advantage that the purchaser can reap from thedoctrine and sentiments which the work contains. The property in thecomposition does not pass’.91

Having established his proposition both in law (relying upon Yates J, noless) and upon principle, Copinger next develops the historical provenance ofthe common law right through the establishment of the Stationers’ Company,the Star Chamber decrees, the Licensing Act 1662, and finally the Statute ofAnne.92 Following the 1709 Act, Copinger draws upon the injunctions granted


88 This, he contends, is supported by a number of decisions concerning injunctionswhich were granted to prevent the publication of an unpublished manuscript. These cases include: Webb v. Rose (1732) PRO c. 11 1881/156, Forrester v. Waller (1741) PRO C 11 867/54, Pope v. Curl (1741) 2 Atk 342, Queensbury v.Shebbeare (1758) 2 Eden 328, Macklin v. Richardson (1771) Amb 694 and Donaldsonitself. For a commentary on these cases: Deazley, R. (2004), On the Origin of the Rightto Copy: Charting the Movement of Copyright Law in Eighteenth-Century Britain,1695–1775, Oxford: Hart Publishing, pp. 51–86. Copinger at this point also makesbrief reference to Albert v. Strange (1849) 1 M&G 25 (Albert v. Strange); infra n. 157.

89 Chapter 1, n. 23 and accompanying text.90 Copinger, supra n. 87, pp. 9–10.91 Ibid., p. 10.92 Supra n. 87, pp. 11–15.

in a number of cases concerning works no longer within the copyright term asevidence of the existence of the common law right,93 before turning to Millarand Donaldson. He writes as follows:

The common law right was at length disputed and fully discussed in the celebratedcase of Millar v. Taylor when judgment was given for the plaintiff on the groundthat the common law right to copyright was unaffected by the statute of Anne.However in a case determined on the authority of the last mentioned, the defendantappealed to the House of Lords, on which occasion the following questions werepropounded to the judges …94

At this point Copinger sets out only the first three of the five questions whichthe judges were asked to comment upon; Lord Camden’s two questions areomitted.95 He continues:

Eleven judges delivered their opinions seriatim; eight to three for the affirmative onthe first question, four to seven on the second, and six to five on the third; so that itwas declared that, although an author had by common law an exclusive right to printhis works, and does not lose it by the mere act of publication, yet the statute of Annehad completely deprived him of the right.96

This, of course, is the traditional reading that perpetuates the Donaldson myth,which reading had been previously disseminated by Montefiore, Espinasse,Maugham and others.97

However, it is not just the substance of Copinger’s position that is of interesthere, but also the manner in which he sets out his commentary. While themarginalia to this passage reads ‘[t]he celebrated cases of Millar v. Taylor andDonaldson v. Becket’, Donaldson itself has slipped from the main body of thetext, referred to only as ‘a case’, having been relegated to that academichinterland that is the footnote. Donaldson, it appears, only has relevance as anadjunct to Millar itself. The footnote in question reads as follows:


93 Eyre v. Walker (1735) 1 Black W 331; Motte v. Faulkner (1735) 1 Black W 331;Walthoe v. Walker (1737) 1 Black W 331 and Tonson v. Walker (1739) 1 Black W 331;for a commentary on these cases see Deazley, supra n. 88, pp. 51–86.

94 Supra n. 87, pp. 16–17.95 As to why Copinger decided to omit Lord Camden’s questions, one can only

speculate. The omission is, however, significant in that while Apsley LC’s questionsdrew attention to the plight and position of the author, omitting any overt reference tothe fact that the common law right claimed was one which lasted in perpetuity, whereasLord Camden’s questions drew attention to the situation of the author’s ‘assigns’, thatis, the publishing industry, as well as the perpetual nature of the right underconsideration.

96 Supra n. 87, p. 17.97 In general see Chapter 2.

Donaldson v. Becket, 4 Burr. 2408; 2 Bro. Parl. Cas. 129. Lord Kenyon expresseda decided opinion that no such right existed; Beckford v. Hood, 7 T.R. 620. LordEllenborough inclined to the same view: Cambridge Univ. v. Bryer, 16 East, 317;and a majority of the judges in Wheaton v. Peters, 8 Peters (Amer.) 591, arrived atthe same conclusion. See Jeffreys v. Boosey, 4 H.L.C. 815.98

What is immediately compelling is that this particular footnote contains muchmore than just the Donaldson case name and citation; buried within it is thevery counterpoint to the myth of Donaldson and the cult of Millar. Copingeris evidently not ignorant of that counterpoint; rather he seeks to obscure, or atthe very least, demote it. With three bland words, ‘See Jeffreys v. Boosey’, hisanalysis operates to destabilise and dissolve any import that either LordBrougham or St Leonards (or indeed the rest of the House of Lords) mightpreviously have had within this debate.

Rather fittingly, 7 years later, when Charles Purday published his work,Copyright: A Sketch of its Rise and Progress,99 the relevancy of thecommentary from Jeffreys on the common law right was simply overlooked,the author writing that in Donaldson it was held that ‘the Act of Anne tookaway the common-law right’ which decision he noted ‘has never beenreversed, although admitted to be unjust’.100 In 1890, when the first manual


98 Supra n. 87, p. 17. On Copinger’s comment on Lord Kenyon’s opinion seeChapter 2, n. 27.

99 Purday, C.H. (1877), Copyright: A Sketch of its Rise and Progress, London.100 Ibid., pp. 22–23. Purday does draw upon Jeffreys, but only in the context of

whether and when foreign authors were entitled to copyright protection under the UKlegislation.

The year after Purday published his work a Royal Commission established in 1875to ‘make inquiry with regard to the laws and regulations relating to home, colonial andinternational copyright’ presented its report to Parliament; Report of the CopyrightCommissioners (1878) Sessional Papers, xxiv, c. 2036. As to the copyright in‘unpublished documents or works of art’, they recommended no alteration in the law,and while noting that ‘[t]he common law principles which lie at the root of the law havenever been settled’ and that ‘[t]he well known cases of Millar v. Taylor, Donaldson v.Becket, and Jeffries v. Boosey, ended in a difference of opinion amongst many of themost eminent judges who have ever sat upon the Bench’, they continue, at the start ofthe Report with the following statement:

With reference to copyright generally, we do not propose to enter upon the historyof Copyright Laws, nor to discuss the various questions that have from time to timebeen raised in connexion with the principle involved in those laws. It is sufficient forthe present purpose to refer to the above mentioned cases of Millar v. Taylor,Donaldson v. Becket, and Jeffries v. Boosey, and to the debates that have taken placein Parliament, in which the arguments on one side and the other are fully set forth.Taking the law as it stands, we entertain no doubt that the interest of authors and of

devoted to the law of copyright in musical works was published, the samereading is evident. The 1709 Act, Cutler writes, ‘was held in the case ofDonaldson v. Becket (which stands out as a conspicuous landmark in thehistory of copyright) to have extinguished by implication the natural orinherent right of property in an author’s work; and to cut him down to the right… which he might have by positive enactment’.101

Briggs, writing in rather dramatic fashion in 1900, set out that ‘[b]efore theAct of 1709 the author had a perpetual, though uncertain copyright; and hisclaim to perpetuity continued for some time alongside and beyond the rightgiven by the statute, until it finally met its death-blow in Donaldson v.Becket’.102 Following Briggs, we come to E.J. Macgillivray and his Treatiseupon the Law of Copyright.103 On unpublished works he writes:

The author and his assignees have the right of first publication; this right at commonlaw is unaffected by the Copyright Acts, and is a right in perpetuity. The right inliterary matter in manuscript is clearly one of property, and is independent of anyconfidential or contractual relation between the author and those who interfere withhis property without authority.104

Macgillivray, while speaking of a right of first publication, like Copinger in1870, grounded this right upon the author’s property in the literary content andnot upon his rights to the manuscript itself. When discussing the right of firstpublication at common law, he engages in the same transformative processwhich Copinger pursued, albeit pronounced with greater rhetorical vigour:


the public alike requires that some specific protection should be afforded bylegislation to owners of copyright; and we have arrived at the conclusion thatcopyright should continue to be treated as a proprietary right. (Ibid., pp. iii–ix)

The reluctance of the Commissioners to engage with the issue is neatly captured inSir James Stephen’s Digest of the Law of Copyright, which was appended to theirReport. In the Digest, Stephen set out that ‘[t]he author or owner of any literarycomposition or work of art has a right, so long as it remains unpublished, to prevent thepublication of any copy of it by any other person’; this was followed with the tellingobservation that ‘[t]here is (probably) no copyright after publication in any [suchworks] except such copyright as is given by the express words of the statutes herein-after referred to’; ibid., pp. lxv–lxvi (emphasis added).

101 Cutler, E. (1890), The Law of Musical and Dramatic Copyright, London:Cassell & Co., p. 3.

102 Briggs, W. (1900), The Law of Literary Copyright: Parts I to IV on the Origin,History and Nature of Copyright, London: Clive, p. 76. See also Briggs’ introductorychapters on ‘The Nature and Origin of Copyright’, where he sets out the traditionalargument as to labour providing title to property, and that copyright is based uponlabour, in support of which, amongst other sources, he relies upon the opinion of ErleJ from Jeffreys; ibid., pp. 1–16 and 14.

103 Macgillivray, E.J. (1902), A Treatise Upon the Law of Copyright, London:Murray.

104 Ibid., p. 220.

‘The right of an author to his unpublished work is of a much wider and moreexclusive nature than his right to published matter. It probably extends toprohibit any kind of interference whatsoever’.105 In support of this suppositionhe cites, of course, Millar v. Taylor.106 Purday, Cutler and Macgillivrayprovide only a small sample of the numerous authors producing commentariesupon the law of copyright throughout the latter stages of the nineteenthcentury.107 They are, however, largely representative of the manner in whichthese authors positioned themselves in relation to the existence of a copyrightat common law.108


105 Supra n. 103, p. 221.106 See also Macgillivray’s tract on copyright in private correspondence which was

privately printed for the Publishers’ Association; Macgillivray, E.J. (1907), Copyrightin Letters, London: Publishers’ Association.

107 For example: Jerrold, S. (1881), A Handbook of English and Foreign Copyright,London: Chatto and Windus; Thompson, G.C. (1883), Remarks on the Law of LiteraryProperty in Different Countries, London: National Press Agency; Slater, J.H. (1884),The Law Relating to Copyright and Trade Marks, London: Stevens and Sons; Bowker,R.R. (1886), Copyright: Its Law and its Literature, London: Sampson Law & Co.;Howard, A. (1887), Copyright; A Manual for Authors and Publishers, London:Griffith, Farran & Co.; Putnam, G.H. (1891), The Question of Copyright: A Summaryof the Copyright Laws at Present in Force in the Chief Countries of the World, NewYork & London: Putnam; Bewes, W.A. (1891), Copyright, Patents, Designs, TradeMarks, etc.: A Manual of Practical Law, London: Black; Cooke, P.J. (1895), AHandbook of The Drama, Westminster: Roxburghe Press; Chamier, D. (1895), LawRelating to Literary Copyright, London: Effingham Wilson.

108 The most significant American authors writing on copyright during this periodtook a different line. James Morgan wrote the first dedicated copyright text since Curtishad published his in 1847. In it Morgan set out that an incorporeal right did exist atcommon law but that that right was lost upon publication of the text; supra n. 87, pp.383–89. In a similar vein, Eaton Drone commented that ‘[a]ll the great writers onnatural law agree in placing the origin of property in preoccupancy’, that‘[p]reoccupancy is first possession; and this is given by creation, by production’, that‘the creator is the first possessor of that which he creates’ and so ‘in labour, then, isfound the origin of the right to property. Occupancy implies labour’. Like Curtis beforehim, by such steps, he ‘endeavoured to show that the ownership of literary property isperpetual by common law’. Unlike Curtis however, Drone continued that:

Property in intellectual productions is recognized and protected … both by thecommon law and by the statute … The two rights do not co-exist in the samecomposition; when the statutory right begins, the common-law right ends. Both maybe defeated by publication. Thus when a work is published in print, the owner’scommon law rights are lost; and unless the publication be in accordance with therequirements of the statute, the statutory right is not secured. (Drone, E.S. (1879), ATreatise on the Law of Property in Intellectual Productions, Boston: Little Brownand Company, pp. 1–20 and 100)

See also Spalding, H.M. (1878), The Law of Copyright, Philadelphia: Ziegler & Co., p. 113.

Amongst this tumult of consensus there were, however, a number ofdissenting voices.109 The most significant was that of Thomas EdwardScrutton, academic, barrister and, in due course, Lord Justice of the Court ofAppeal, who published his first copyright treatise, The Laws of Copyright, in1883.110 This work, which was revised in 1890, 1896 and for the last time in1903, was subtitled: An Examination of the Principles which should regulateLiterary and Artistic Property in England and other Countries.111 In his firstedition, Scrutton set out a lengthy historical treatment of the development ofcopyright which sought to answer two questions: ‘did copyright at commonlaw exist before the Statute of Anne?’, and if so ‘what was the effect on thecommon law right of the Statute of Anne?’112 Beginning with the introductionof printing into England by Caxton he summarises the historical developmentup to the 1709 Act in the following way:

There was then prior to the Statute of Anne no statute expressly creating, or judicial


109 See for example, the comments of the publisher John Hotten who set out thatcopyright is ‘the creation of public law, and that in the absence of such law and rightsthere can be no infringement’, that ‘the rights of the public as against those of authorshave occasionally been overlooked among us’, and that ‘[i]n any attempt that may bemade to improve and consolidate our copyright law, both the rights of the public andthe rights of authors should be duly considered’; Hotten, J.C. (1871), LiteraryCopyright: Seven Letters, London: Hotten, pp. 25, 105 and 133. See also the commentsin the first chapter of Winslow, R. (1889), The Law of Artistic Copyright, London:Clowes & Sons, which draws heavily upon Lord Brougham’s commentary in Jeffreys.Between these two, in 1879, Macfie published an edited collection of materialsconcerning copyright and patents in which, in the preface, he set out that copyright‘was originally a privilege conceded in order to warrant and induce authors and printersto publish. The idea of recognising or even of constituting property was alien to thewhole proceeding’; Macfie, R.A. (1879), Copyright and Patents for Inventions,Edinburgh: T&T Clark, p. ix. See also: Hinkson, H.A. (1903), Copyright Law, London:Bullen, pp. 1–4; Edmunds, L. and Bentwich, H. (1908), The Law of Copyright inDesigns, 2nd edn, London: Sweet & Maxwell, pp. 52–55.

110 Scrutton had a remarkable career, which began with his studies at the Universityof London where he took the degrees of BA, MA and LLB in 1882. In that same yearhe won the Yorke Prize at Cambridge for his legal essay upon copyright law whichwould form the basis for his 1883 book. He won the Yorke Prize three further times, in1884, 1885 and 1886, a feat which no-one had previously, or has subsequently,achieved. He also had the privilege of contributing the first essay to the first edition ofthe Cambridge Law Journal in 1921 entitled ‘The Work of the Commercial Courts’(1921), Cambridge Law Journal, p. 6. Called to the bar in 1882, he was made King’sCounsel in 1901. During this period he was a Professor of Constitutional Law andLegal History at University College London. In 1910, he was appointed a judge of theKing’s Bench and in 1916 was made a Lord Justice of the Court of Appeal and swornof the Privy Council.

111 Scrutton, T.E. (1883), The Laws of Copyright, London: Murray.112 Ibid., p. 68.

decision expressly recognising, copyright; there was such constant usage amongauthors and printers, recognised indirectly by statutes and judicial decisions, thatwhen the question arose for decision, a Court of Law might reasonably recogniseliterary property both before and after publication, as part of the Common Law; andsuch was the opinion of three judges in Millar v. Taylor, and of eight judges againstfour in Donaldson v. Beckett.113

Although more measured in his language, there is nothing here to distinguishScrutton’s point of view from that of Copinger. Before closing his historicalsketch, however, he concedes that ‘something must be said of the great case ofJefferies v. Boosey, which, though more directly concerned with internationalcopyright … yet raised a question as to the existence and nature of commonlaw copyright’.114 The ‘Law Lords’ in that case were, he writes, ‘unanimousagainst a copyright at common law’, citing Campbell LC (incorrectly) andLords Brougham and St Leonards. Returning to Jeffreys a number of timesthroughout his text, it is clear that for Scrutton ‘all the dicta … are addressedto the proposition that copyright after publication rests entirely on the statutelaw’ while ‘the common-law property before publication is unhesitatinglyadmitted’.115

At what point then does Scrutton begin to depart from this orthodoxy? Itoccurs when he brings out the second edition of his work in 1890, now entitledThe Law of Copyright.116 Having substantially revised the layout of hisprevious treatise, Scrutton also readjusts his analysis of Jeffreys and thecommon law right:

Copyright, or the exclusive right of multiplying copies of a literary or artistic workalready published, is now the creature of statute.117 The various rights possessed byauthors at common law, though in effect they may prevent the multiplication ofcopies of a work, cannot rightly be called “copyright,” but are merely common lawincidents of property.118

The relevant dicta in Jeffreys no longer concerns post-publication rights only.Instead, Lord Brougham’s observations upon the ‘undisputed right to [a]manuscript’ take centre-place.119


113 Supra n. 111, p. 94.114 Ibid., pp. 111–12.115 Supra n. 111, p. 224 (emphasis added).116 Scrutton, T.E. (1890), The Law of Copyright, London: Clowes and Sons.117 At this point in his text Scrutton inserts the following footnote: ‘Jefferies v.

Boosey, 4 H.L.C., at p. 954. Cf. per Lindley, L.J., in Tuck v. Priester, 19 Q.B.D. 640’;ibid., p. 52.

118 Ibid.119 Supra n. 117, pp. 52 and 60. Note also his reliance upon the commentary of

Yates J in Millar, that an author’s ‘manuscript is in every sense his peculiar property,

Three years prior to the publication of this second edition on copyright,Scrutton had published a treatise on Commons and Common Fields, or TheHistory and Policy of the Laws Relating to Commons and Enclosures inEngland remarking:

The importance of the question of open spaces to England of today, still more to theEngland of the future, can hardly be exaggerated. It is hoped that the followingpages may assist the public understanding of the problem, and add in however smalldegree to the forces at work to keep the land of England from becoming closed tothe people of England.120

While it is tempting to read these observations as a forerunner to the work ofJamie Boyle and others who write on the intellectual commons, the opensource phenomenon and the relevancy and significance of maintaining ahealthy and meaningful public domain,121 the reason for Scrutton’s change inapproach almost certainly lay with a number of decisions handed down in1887.

Tuck & Sons v. Priester (1887) (Tuck) concerned the assignees of thecopyright in a water-colour (Sounding the Charge) who, in January 1884,employed the defendant, a printer in Berlin, to produce 2000 copies of thepainting.122 The defendant supplied the copies, but also produced some forhimself, which were subsequently imported for sale into England. After thisthe plaintiffs registered their copyright in the painting on 21 January 1886.Upon discovering that the defendant was selling copies of the work theycommenced their action for an injunction as well as both penalties (s. 6) anddamages (s. 11) under the Copyright Act 1862.123 Counsel for the defendantargued that the plaintiffs were not entitled to recover, as at the time of makingthe copies the work had not been registered in accordance with thelegislation.124 Sir Edward Clarke, the Solicitor General, countered that inmaking copies prior to registration the defendant had infringed the plaintiffs’copyright at common law, that such copies were thus ‘unlawful’ copies withinthe meaning of both ss 6 and 11, and so the plaintiffs were entitled to recover.Although the preamble to the 1862 Act set out that ‘[w]hereas by law, as nowestablished, the authors of paintings, drawings, and photographs have no


and no man can take it away from him, or make any use of it which he has notauthorised’; ibid., p. 60.

120 Scrutton, T.E. (1887), Commons and Common Fields, or The History andPolicy of the Laws Relating to Commons and Enclosures in England, Cambridge:Cambridge University Press, p. 8.

121 See Chapter 4.122 Tuck v. Priester (1887) 19 QBD 48 (Tuck).123 Copyright Act 1862, 25 & 26 Vict., c. 68.124 Ibid., s. 4.

copyright in such their works, and it is expedient that the law should in thatrespect be amended’, Clarke argued that ‘[t]here is a copyright at commonlaw’ and that ‘the recital in the preamble … that authors had no copyright intheir works [was] incorrect’.125 In support of his argument he cited, amongstothers, Millar, Donaldson and Jeffreys.126

Grove J dismissed the plaintiffs’ claims. As to the argument upon thecommon law right he observed:

I think that the term “copyright” applies to the statutory right to a monopoly afterpublication. It is an exclusive right to copy and to assign the right, lasting only fora limited time, and in my opinion it does not apply to what I think is erroneouslycalled common law copyright. The word, so far as I am aware, did not exist asdescriptive of any right at common law, though for convenience’ sake it hassometimes been used to describe such a right.127

He continues with an examination of the positions set out by both LordsBrougham and St Leonards in Jeffreys; as regards the latter, he summarises hisposition thus: ‘What he says is, that there is no copyright at common law, orin other words, that the common law right is not copyright.’128 When theappeal came on to be heard, just over 2 months later, Scrutton had joinedClarke as counsel for the plaintiff.129

Reversing the previous decision, Lord Esher MR considered that theplaintiffs were in any event entitled to an injunction and damages as a result of a breach of an implied term of the contract existing between the parties. However, did they have the same rights under the statute? EsherMR began: ‘I will assume it to be true that no “copyright” in works of art existed before the Act’. He continued that as the defendants had continuedto sell their copies after registration by the plaintiffs they were equally liable under s. 11 of the Act. Lindley LJ, coming to the same conclusion, was nevertheless in agreement with Grove J’s reading of Jeffreys as well as his assessment of the nature of the common law right: ‘[T]hat which is called “copyright” at common law has been shewn by the decision of the House of Lords in Jefferys [sic] … to be an incident of property andnothing more.’ Copyright on the other hand, was ‘something far beyond


125 Tuck, pp. 48 and 51.126 Ibid.127 Tuck, p. 53.128 Ibid., pp. 56–57 (emphasis added).129 Tuck, p. 629. They opened that ‘[w]hatever may be the true construction of the

different Copyright Acts, the plaintiffs independently of those statutes are entitled to aninjunction and damages’ suggesting that the statement in the preamble ‘is incorrect,unless indeed the word “copyright” is used in the limited sense of “the exclusive rightof reproduction after publication”’; ibid., p. 632.

that: it is the exclusive right of multiplying copies of a work alreadypublished’.130

Perhaps as important as Scrutton’s involvement in the Tuck litigation wasthe fact that, sandwiched between the two stages of that case, the issue of thecommon law right had also been revisited by the House of Lords in Caird v. Sime (1887) (Caird).131 John Caird was a professor at the University ofGlasgow complaining of the printing and publication of certain of his lectureson moral philosophy, which had been compiled by one of the studentsattending his classes. Lord Watson, speaking in the majority, neatly aligned thecase within the division identified in Jeffreys. ‘Copyright’ he explained ‘theexclusive privilege of multiplying copies after publication, is the creature ofstatute, and with that right we have nothing to do in the present case’. Instead,he asserted that ‘[t]he author of a lecture on moral philosophy, or any otheroriginal composition, retains a right of property in his work which entitles himto prevent its publication by others until it has, with his consent, beencommunicated to the public.’ As was settled in Jeffreys, he continued, ‘uponsuch communication being made to the public, whether orally or by circulationof written or printed copies of the work, the author’s right of property ceasesto exist’.132 The question was not whether the lecturer in question had acommon law copyright in his lectures; rather it turned upon whether he couldbe considered to have communicated the same to the public.

Lord Watson referred to the earlier analogous decision of Abernethy v.Hutchinson (1825) in which Lord Eldon, granting an injunction against thepublication of lectures that had been delivered at St. Bartholomew’s Hospital,did so, not on copyright grounds, but on the understanding that ‘all the personswho attended these lectures were under an implied contract not to publishwhat they had heard, although they might take it down for their owninstruction and use’.133 In the present case, Lord Watson conceded that while


130 Ibid., p. 640. This was an opinion which Lindley LJ would reiterate in the Courtof Appeal in Walter v. Lane (1899) 2 Ch 729 (Walter (1899)), when he observed: ‘The[1842 Copyright] Act … confers copyright on the authors of books first published inthis country. There can be no copyright in what is not published in a book … The authorof an unpublished manuscript has no copyright in it, but he has a right to acquirecopyright in it; and this right may impliedly transfer to anyone to whom he sells orgives the manuscript’; ibid., pp. 769–70. Although Lindley LJ’s decision in Walter(1899) was subsequently overturned by the House of Lords it was upon grounds otherthan his views upon the relationship between the common law right and the statutorycopyright; see Walter v. Lane (1900) AC 539 (Walter (1900)). It is worth noting thatScrutton was also involved in the Walter v. Lane litigation, acting as counsel for thedefendants.

131 Caird v. Sime (1887) 12 AC 326.132 Ibid., p. 343.133 Abernethy v. Hutchinson (1825) 1 H & TW 28.

there was nothing ‘in the nature of a contract between the professor and hisstudents’, nevertheless the students could not ‘with propriety be said torepresent the general public; of course they are, each and all of them, membersof the public; but they do not attend the professor’s lectures in that capacity’.134

When Scrutton published the second edition of his work, noting that whatrights an author may have at common law ‘cannot rightly be called“copyright”, but are merely common law incidents of property’,135 theinfluence of Grove J and Lindley LJ in Tucker and of the decision of the Lordsin Caird can be clearly identified.

It was similarly evident in Exchange Telegraph Company Limited v.Gregory & Co. [1896] when Scrutton, with Bigham and Shearman, argued onbehalf of the plaintiff that ‘[t]he principle stated in Jefferys [sic] v. Boosey andaffirmed in Caird v. Sime applies – that an author had a right of property in hiswork which entitles him to prevent its publication by others until it has, withhis consent been communicated to the public’.136 Again, when Scrutton gaveevidence to the House of Lords Select Committee on the proposed CopyrightBill of 1898, he was questioned as to the nature of, and relationship between,the common law and the statutory right:

Lord Thring.Why do we have a copyright law at all; if the common law copyright would protectin perpetuity, why is the copyright law substituted?– Because as soon as publication takes place then there is no longer the commonlaw right.How do you lose it; under what law?– Under the common law.Where do you find that?– In two decisions of the House of Lords; in Jeffries [sic] v. Boosey, and in Caird v.Sime.


134 Caird, p. 348. Lord Fitzgerald, dissenting, considered that ‘the delivery of the lectures was a publication to the public at large, and that being such, the pursuer has abandoned to the public the exclusive rights which he otherwise had, and theprotection which the common law would otherwise have afforded him’; ibid., p. 353.Interestingly, Brougham had appeared as counsel for the defendants in Abernethy andwas also responsible for the passage of the Copyright Lectures Act 1835. Sevilleexplains his involvement with the 1835 Act in the following manner: ‘Brougham wasinvolved with the organisation of educational lectures at various Mechanics’ Institutes,and presumably baulked at the thought of their being published at a profit by apublisher with less laudable aims than those of the SDUK [the Society for the Diffusionof Useful Knowledge which Brougham had been instrumental in founding]’; Seville,supra n. 29, pp. 53–56.

135 Supra n. 118 and accompanying text.136 Exchange Telegraph Company Limited v. Gregory & Co. [1896] 1 QB 147,

p. 151. See also Scrutton’s comments on Caird and the nature of an author’s rights atcommon law in argument in Walter (1899), p. 749.

The publication of any work artistic or literary deprives you of the common lawright?– Yes.That is decided by the House of Lords?– Yes.Chairman [Lord Herschell].So that after that your reliance must be on the statutory right?– On the statutory right, if any.137

In any event, like the decision in Jeffreys itself, commentaries like Scrutton’swere to be subsequently eclipsed, and it seemed that Caird was to be subjectto similar processes of re-interpretation and re-presentation as Donaldson andJeffreys, given that by the time Monckton v. The Gramophone Company Ltd(1912) (Monckton)138 was decided, the supremacy and dominance of theDonaldson myth was all but a fait accompli.

In Monckton, a case which straddled the coming into force of the CopyrightAct 1911,139 the plaintiff had composed a song called Moonstruck which wasfirst published in February 1909. The defendant company printed and soldgramophone records of the song for private consumption. With the emergenceof new sound recording technology the analogy between the song and thebook had, of course, broken down and the existing legislation contained noprovision for preventing these oral (as opposed to printed) reproductions.140

The plaintiff claimed that he was solely entitled to make or authorise themaking of such gramophone records, based not upon the existing statutorycopyright, but upon the ‘common law right of proprietorship in his own work’.The action was dismissed before Joyce J and the plaintiff appealed.

The appeal was heard after the passing of the 1911 Act (which had sinceimplemented provisions protecting the copyright owners of musicalcompositions from unauthorised use of their works on mechanical instrumentssuch as records and perforated rolls).141 However, as to the position under the


137 Report from the Select Committee of the House of Lords on the Copyright Billand the Copyright (Amendment) Bill, Session 1898, p. 229.

138 Monckton v. The Gramophone Company Ltd (1911–12) 28 TLR 205.139 Copyright Act 1911, 1 & 2 Geo. 5, c. 46. This statute represented the first

significant attempt, within the UK, to draw together and codify the various, existingstrands of copyright legislation within one parent Act.

140 In Newark v. National Phonographic (1907) 23 TLR 439, Sutton J had earlierconcluded that a phonographic record was not a ‘sheet of music’ within the meaning ofthe Copyright Act 1842. Similarly see Mabe v. Connor (1909) 1 KB 505, whichconcerned perforated piano rolls.

141 Section 19(1) provided that ‘[i]t shall not be deemed to be an infringement ofcopyright in any musical work for any person to make … records, perforated rolls, or

previous legislation, Cozens-Hardy MR, observing that this ‘was not a case ofthe rights of the plaintiff before publication’, and referring to both Donaldsonand Jeffreys, asserted that such rights at common law as did exist, were limiteduntil and ceased upon publication. He dismissed the plaintiff’s appeal.

In the course of his judgment, Cozens-Hardy MR made reference to anearlier Court of Appeal decision of his own which had also addressed the issueof copyright at common law: Mansell v. Valley Printing Co. [1908](Mansell).142 The question for the court in Mansell, one of the seven casesconcerning the ‘common law right’ referred to in Macgillivray’s CopyrightCases,143 was whether someone could be liable for damages for printing apirate edition of an unpublished picture. The plaintiff had commissioned anartist to produce two pictures and designs for him to be used in an advertisingcampaign. However, another artist in the plaintiff’s employ made copies of thepictures and then sold them as original drawings to the defendant companybefore the plaintiff had registered the works in accordance with thelegislation.144 The record of part of the plaintiff’s argument before the Court ofAppeal runs as follows:

It is clear from Caird v. Sime and Donaldsons v. Becket that there is a proprietaryright in an unpublished literary production, and the owner of an unpublished pictureis in the same position: Prince Albert v. Strange. In Jeffreys v. Boosey the rights ofan author before publication are treated as unquestioned. The nature of this commonlaw right before publication, and the remedy for the violation of that right, wereconsidered in Millar v. Taylor. It is clear that the common law recognized in anauthor a property in his composition, so long as he kept it to himself, i.e., propertyin the abstract thing as distinguished from the concrete thing, the words written onthe paper.145

Here we have Caird, Donaldson, Jeffreys and of course Millar all pressedtowards the same end – the acknowledgement of ‘property in the abstract thingas distinguished from the concrete thing’.

In holding for the plaintiff, Cozens-Hardy MR set out his position on thecommon law right in a manner in which he felt was subsequently unnecessary


other contrivances by means of which the work may be mechanically performed, ifsuch person proves (a) that such contrivances have previously been made by, or withthe consent or acquiescence of, the owner of the copyright in the work; and (b) that hehas given the prescribed notice of his intention to make the contrivances, and has paidin the prescribed manner to, or for the benefit of, the owner of the copyright in the workroyalties in respect of all contrivances sold by him’.

142 Mansell v. Valley Printing Company [1908] 2 Ch 441.143 Supra n. 41.144 Copyright Act 1862, 25 & 26 Vict., c. 68.145 Mansell, pp. 443–44.

in Monckton. As to the ‘common law right of an author before publication’ heconsidered there was ‘no uncertainty in the law’. It could not be denied that anauthor had a right in his ‘unpublished literary productions’, which right hesuggested was based ‘upon property’. Moreover, he asserted that such rights‘[do] not depend upon property in the paper or the MS. It is an incorporealproperty’. The ‘weighty authority’ of Donaldson he considered was ‘decisiveof the present appeal’.146

In explicitly recognising an author’s proprietary common law rights aswholly dislocated from his manuscript, Cozens-Hardy MR, without makingany reference to Jeffreys v. Boosey at all,147 engineered a tidy inversion of theposition previously elaborated by Lords Brougham and St Leonards. Themanuscript as the focus of pre-publication rights was definitively jettisoned infavour of a conceit endorsing the author’s natural and inherent right to controlthe printing and reprinting of what literary, artistic or musical works he mightcreate. Whether Cozens-Hardy MR did so wittingly or not must remain a mootpoint.148 However, a likely explanation for the substance of his commentarylies in the fact that in the 10 years prior to Mansell a considerable number oftexts on the law of copyright, including the fourth edition of Copinger,149 werepropagating the very same conception of copyright at common law. What’smore, this collective analysis drew upon a compelling historical provenanceleading directly back to that most eminent of legal thinkers and commercialinnovators: Lord Mansfield.150 Further still, all this took place at a time


146 Ibid., pp. 444–45; Mansell was subsequently applied in Bowden Brothers v.Amalgamated Pictorials Ltd [1911] 1 Ch 386.

147 Or indeed to the comments of Grove J or Lindley LJ in Tuck; supra n. 122 andaccompanying text.

148 Farwell LJ, sitting with Cozens-Hardy MR, commented that ‘[T]he onlyquestion is what is the extent and nature of an author’s right at common law in his ownwork before publication, apart from any title to the corporeal paper or canvas uponwhich it is written or delineated. I am of opinion that it is an incorporeal right ofproperty giving to the author the fullest rights not only of exclusion, but also of actualenjoyment so far as they are compatible with non-publication. All his rights arecommon law are limited until and cease upon publication … The very question arguedin this case appears to me to have been decided not only in Millar v. Taylor, but is alsostated to be the law by eight out of eleven judges who advised the House of Lords inDonaldsons v. Becket’; Mansell, p. 447.

149 Birrell, A. (1899), Copyright in Books, London: Cassell & Co.; Briggs (1900),supra n. 102; Macgillivray, supra n. 103; Copinger (1904), The Law of Copyright, 4thedn, London: Stevens & Haynes; Cutler, E. (1905), A Manual of Musical CopyrightLaw, London: Simpkin et al.; Macgillivray, E.J. (1906), A Digest of the Law ofCopyright, London: Butterworth & Co.; Colles, W.M. and Hardy, H. (1906), Playrightand Copyright in all Countries, London: MacMillan & Co.; Briggs (1906), supra n. 3.

150 Other writers have drawn attention to the mushrooming of legal texts in the latenineteenth century and their influence upon subsequent developments in legal doctrine;

when the legal treatise had begun to assume a new significance for theprofession.

With the emergence of the law school proper in the late nineteenth century,a new academic interest in the law provoked the emergence of legal textsdesigned to explore and set out what principles underpinned different areas ofthe law itself.151 Snell’s Principles of Equity was first published in 1868;Buckley on the Companies Act in 1873. Following these came Underhill’s LawRelating to Trusts and Trustees (1878), Dicey’s Law of the Constitution (1885)and Clerk on Torts (1889). In 1876 Pollock published his Principles ofContract, after which followed Anson’s Law of Contract (1879). Two yearsbefore Anson, Stephens published his masterly Digest of the Criminal Law(1877), and in 1886 Scrutton himself published what would become thedefinitive text on Charterparties. Pollock and Maitland, of course, completedtheir History of English Law in 1895; not surprisingly, given that it wasconcerned with ‘Anglo-Saxon legal antiquities’ the authors had nothing to sayon the subject of copyright. By comparison, when Holdsworth published thesixth volume in his History of English Law, upon the question of copyright atcommon law, he observed: ‘[I]t can hardly be doubted that the view taken bythe majority of judges, both in [Jeffreys] and in the majority of cases in theeighteenth century, that [copyright] existed at common law, is historicallycorrect’.152 What had once been so heatedly contested, and rejected, not oncebut twice by the House of Lords, was now quite simply an understood andaccepted orthodoxy.


see for example Milsom, S.F.C. (1981), Historical Foundations of the Common Law,London: Butterworths, in which the author attributes the creation of the modern law ofnegligence to legal writers ‘whose struggle through the centuries to classify actions onthe case … eventually made negligence into ‘a’ tort’; ibid., p. 399. See also Simpson,A.W.B. (1975), ‘Innovation in Nineteenth-Century Contract Law’, Law QuarterlyReview, pp. 247 and 264–5, on the influence of Pollock upon the development of themodern law of contract. On the influence of late nineteenth-century legal writing (andin particular, that of Pollock) upon twentieth-century legal academic scholarship seeDuxbury, N. (2000), ‘When We Were Young: Notes in the Law Quarterly Review,1885–1925’, Law Quarterly Review, p. 474.

151 In general see Fifoot, C.H.S. (1859), Judge and Jurist in the Reign of Victoria,London: Stevens & Sons, pp. 24–30; see also Duxbury, N. (2001), Judges and Jurists:An Essay on Influence, Oxford: Hart Publishing. On the history of the legal treatise seeSimpson, A.W.B. (1983), ‘The Legal Treatise and Legal Theory’, in Ives, E.W. andManchester, A.H. (eds), Law, Litigants and the Legal Profession, London: RoyalHistorical Society, pp. 11–29.

152 Holdsworth, W.S. (1924), A History of English Law, VI, London: Methuen &Co., p. 379. Holdsworth continues: ‘Many of these judgments, and notably thejudgment of Erle J., in Jeffreys v. Boosey, display a remarkable historical insight intothe origins and mode of development of this branch of the law. As Erle J., points out,and as the history which I have just related shows, the fact that there are hardly any

In concluding this chapter we turn once again to Copinger’s Law of Copyright,of interest not just because it became and has remained one of the key pointsof reference as to the current state of the law of copyright (and is certainly thetext exhibiting the greatest authority by dint of longevity), not just because itbecame the text which many other authors at the time would expresslyacknowledge as central in their own explorations of the law,153 and not justbecause it seemed to be the text to which counsel and judges alike would mostreadily refer in cases of alleged copyright infringement,154 but because that texthas itself, necessarily, moved through a number of different writers. Consideragain Copinger’s starting point in the first edition of his text: ‘What propertycould be more emphatically a man’s own than his literary works’?155 In hissecond edition the question remains, however Copinger does modify his‘Historical View’ in a number of interesting ways.

In addition to a lengthy exposition of Prince Albert v. Strange (1841),156 andan expanded historical sweep,157 Copinger also modified his account of


common law actions for infringement of copyright before the Act of 1709, is notconclusive against the existence of copyright at common law. Their absence is fullyaccounted for by the fact that more convenient remedies then existed which plaintiffsnaturally employed’; ibid.

153 See for example the acknowledgments as to the reliance upon Copinger’s workin: Newton, A.V. (1884), An Analysis of the Patent and Copyright Laws, London:Trübner & Co.; Jerrold, supra n. 107; Cutler, supra n. 149; Singer, B. (1909), CopyrightLaws of the World, Chicago: Singer; Bowker, supra n. 81.

154 See for example the various references to Copinger in: Levy v. Rutley (1871) 6LR (CP) 1870–71 523; Chatterton and Webster v. Cave (1875) 10 LR (CP) 1874–75572; Adams v. Clementson (1879) 12 LR (Ch) 714; Thomas v. Turner (1886) 23 ChD292; Aflalo and Cook v. Lawrence and Bullen (1902) 1 Ch 318.

155 Supra n. 87, p. 5.156 Copinger, The Law of Copyright, 2nd edn, pp. 10–17. Copinger’s purpose in

relying upon Albert v. Strange was to lend force to the argument that every person hada right at common law to the ‘first publication of his own manuscript’; supra n. 88. InAlbert v. Strange, of course, one of the arguments put by counsel on behalf of theplaintiff (one of whom was none other than Sergeant Talfourd), was that the publicationof the etchings was akin to the publication of a man’s unpublished manuscript. TheVice Chancellor, Lord Knight Bruce, having considered both Donaldson and Millar,concluded that the principle behind this position was that the common law ‘shelters theprivacy and seclusion of thoughts and sentiments committed to writing, and desired bythe author to remain not generally known’. This principle, he considered, could not beconfined simply to ‘literary subjects’ but would extend to any situation ‘[w]herever theproduce of labour is liable to invasion in an analogous manner’; that is, it would extendto the etchings of the Prince Consort. To rely upon Albert v. Strange, decided 5 yearsbefore Jeffreys, seems, from this point of view, less than sound. Indeed, when Eastoncame to publish the fifth edition of Copinger’s work, he located Albert v. Strangewithin its more traditional context as evidencing an example of publication in breachof confidence.

157 Ibid., pp. 19–24.

Donaldson (still as yet referred to as simply ‘a case’ in the main body of thetext), now including the fourth and fifth questions put to the House by LordCamden, as well as altering his record of the votes cast by the common lawjudges upon the first and second questions.158 He now also incorporated anexposition of Jeffreys, placing it within the parameters of a discussionconcerning the existence of a common law right after publication, and citingLord St Leonards (but not Lord Brougham) at length.159 Following this,Copinger wrote:

Notwithstanding the admission that the general current of opinion is against thecommon law right, there can be no doubt that until 1774 when the case ofDonaldson v. Becket was decided, the universal opinion was the other way, and ithas the support of some of the ablest judges who ever adorned the bench.160

One of the judges to whom Copinger refers is without doubt Lord Mansfield.Indeed, earlier in the chapter, he also introduced some noteworthy additionalcommentary.

In the first edition, following his reference to Yates J’s analogising asbetween ideas and birds, Copinger wrote ‘[t]hus we see that every man has theright at common law to the first publication of his own manuscript’.161 To this,in the second edition, he adds:

[I]t cannot without his consent be even seized by his creditors as property. He hasin fact, supreme control over his own productions, and may either exclude othersfrom their enjoyment, or may dispose of them as he pleases. He may limit thenumber of persons to whom they shall be imparted, and impose such restrictions ashe pleases upon their use. He may annex conditions, and proceed to enforce them,and for their breach claim compensation.162

In support of this additional commentary Copinger cites Lord Mansfield(albeit in a footnote) who ‘described his right as “an incorporeal right to printa set of intellectual ideas, or modes of thinking, communicated in a set ofwords, or sentences, and modes of expression. It is equally detached from themanuscript, or any other physical evidence whatsoever”’.163 In a similar vein


158 Supra n. 156, p. 30. In the first edition, Copinger recorded the judges’ votes onthe first two questions as follows: ‘[E]ight to three for the affirmative on the firstquestion, four to seven on the second’; in the second edition his record is as follows:‘[T]en to one for the affirmative on the first question; eight to three for the negative onthe second question’; ibid.

159 Supra n. 156, pp. 31–32.160 Ibid.161 Supra n. 87, p. 7.162 Supra n. 156, p. 7.163 Ibid.

he also places greater reliance upon the opinion of Erle J from Jeffreys (one ofthe judges who the Lords of course opted to vote against), in citing a lengthypassage (again in a footnote) which begins, ‘[t]he nature of a right of an authorin his works is analogous to the rights of ownership in other personalproperty’, and finishes, ‘[a]bout the rights of an author before publication atcommon law, all are agreed’.164

This version of the text would only be substantially revised when Eastonpublished the fifth edition of the work, in 1915,165 five years after Copingerhimself had died.166 Copinger’s first chapter on the ‘Historical View of theCopyright Laws’ became Part I of the treatise as a whole, split into twochapters, the first concerning the ‘Nature of Copyright’167 and the secondpresenting an ‘Historical View of the Copyright Laws in England’.168

Moreover, a considerable portion of the commentary was moved into Part II,169

the first chapter of which concerned ‘Unpublished works, and herein ofpublication’.170 Within the first few pages of the text, concerning the ‘Natureof Copyright’, Copinger’s question (albeit rhetorical), ‘[w]hat property couldbe more emphatically a man’s own than his literary works?’, has become astatement of fact: ‘[N]othing can with greater propriety be called a man’sproperty than the fruit of his brains’.171 ‘It has’ Easton observes ‘nevertheless,been a matter of frequent controversy whether copyright is a natural right orone entirely dependent upon statute’. This controversy he continues ‘camebefore the House of Lords in the famous case of Donaldson v. Becket’, andrecounting, once again, only the first three of the five questions consideredbefore the House, he concludes that ‘the common law right which an authorhad to copyright in his works became merged in the statutory right conferredby the Copyright Act then in force’.172

Jeffreys is also referred to in Easton’s four page dissection as to the natureof copyright but now performing an altogether novel function. Having set outthe decision in Donaldson, he continues:

Although, from time to time, there have been cases in which the contrary has beenstrenuously argued [Jeffreys], this case [Donaldson] must be taken to have finally


164 Supra n. 156, p. 8.165 Easton, J.M. (1915), Copinger: The Law of Copyright, 5th edn, London:

Stevens & Haynes.166 Copinger died in 1910, aged 62, as a result of pneumonia, following an attack

of influenza.167 Supra n. 165, pp. 1–4.168 Ibid., pp. 5–21.169 ‘The General Law of Copyright’.170 Supra n. 165, pp. 22–48.171 Ibid., p. 3.172 Supra n. 165, p. 4.

decided that publication put an end to the common law perpetual right, and that afterpublication an author had to base his claim for protection upon the statutory right.173

Once more relegated to a footnote, Jeffreys no longer reads as a challenge tothe existence of a copyright at common law, but rather operates to call intoquestion the appropriateness of the decision in Donaldson that an authorshould lose his common law copyright post-publication.

The pertinent commentary in Jeffreys is no longer that of Lords Broughamor St Leonards, but rather Erle, Wightman and Coleridge JJ. In any case,Easton concludes that ‘[c]opyright, therefore, at the present day is, in England,purely a statutory right’. Easton was, of course, writing an absolute truism, for,at this point in time, the Copyright Act 1911 had specifically provided for theabrogation of the common law right. Section 31 set out as follows:

No person shall be entitled to copyright or any similar right in any literary, dramatic,musical or artistic work, whether published or unpublished, otherwise than underand in accordance with the provisions of this Act, or of any other statutoryenactment for the time being in force.

Having been written into a critical mass of leading copyright texts by the endof the nineteenth century, and then adopted within a number of significantjudicial decisions by the start of the twentieth, the notion of a common lawcopyright was finally written into the legislation itself – albeit only so that thelegislature could deny its relevancy. As a consequence, Easton’s section on thehistory of copyright now only needed to focus upon its statutory developmentalone.174 Thus, with the fifth edition, the ‘law’, at least in relation to theconcept of a common law copyright, had all but ossified into one compellingnarrative thread; in effect, the argument concerning the existence or not of acopyright at common law had ceased to become part of the story of copyright’shistory at all.

When the next editor, F.E. Skone James, took over responsibility for thesixth edition in 1927, as if to draw a line under the process which Easton hadbegun, he no longer opened the chapter on ‘Unpublished Works’ with Yates J’sdicta from his dissenting opinion in Millar, but rather began with Erle J fromJeffreys and an analogy that was considerably different from that of Yates J’scaged birds seeking release:

The nature of the right of an author in his works is analogous to the rights ofownership in other personal property, and is far more extensive than the control ofcopyright after publication in print, which is the limited meaning of copyright in its


173 Ibid.174 Supra n. 165, pp. 5–21.

common acceptance, and which is the right of an author to which the statute of Annerelates. Thus, if after composition the author chooses to keep his writings private,he has the remedies for wrongful abstraction of copies analogous to those of anowner of personalty in the like case.175

This was, of course, the same passage that Copinger had introduced (in afootnote) into the second edition of his work,176 and with it copyright atcommon law, now divorced from the manuscript, underwent a subsequent andfinal process of reification – a property right to be understood as with anyother form of personalty (tangible or not).

Upon the publication of the seventh edition of Copinger’s work, in 1936, thesupremacy and dominance of the Copinger analysis was rendered complete.On 7 December 1934, the same year in which Scrutton died, the Court ofAppeal handed down their decision in the matter of In Re Dickens, Dickens v.Hawksley (In Re Dickens).177 The case concerned the last will and testament ofCharles Dickens, who had died in 1870, the same year in which Copinger firstpublished his treatise on copyright. In his will Dickens had left all of his realand personal estate (including his copyrights) to John Forster and GeorginaHogarth upon trust for his children. In addition he left Ms Hogarth ‘all of myprivate papers whatsoever and wheresoever’.

Among the private papers that Hogarth received was a manuscript of anunpublished work, originally written for the instruction of Dickens’ children,The Life of Christ, at least one other copy of which had been made and givenby Dickens to his son, Charles. Hogarth, in her will, bequeathed themanuscript to her nephew Henry Fielding Dickens, who, having died in 1933,subsequently left it to his wife, Marie Therese Dickens, the appellant.178 On 6 February 1934 the appellant assigned the copyright in the work to


175 Skone James, F.E. (1927), Copinger on the Law of Copyright, 6th edn, London:Sweet & Maxwell, p. 21.

176 Supra n. 164.177 In Re Dickens, Dickens v. Hawksley [1935] Ch 267.178 The terms of Henry Fielding Dickens’ will of 1930 read as follows: ‘I give and

bequeath to my wife the original manuscript of my father’s ‘Life of our Lord’ whichwas bequeathed to my aunt Georgina Hogarth in my father’s will and given by her tome to hold on the following trusts: Being his son I have felt myself constrained to actupon my father’s expressed desire that as it was not intended as a literary effort itshould not be published; but I do not think it right that I should bind my children byany such view, especially as I can find no specific injunction against such publication.I therefore direct that my wife and my children should consider this question quiteunfettered by any view of mine; and if by a majority they decide that the manuscriptshould not be published I direct my wife to deposit it with the trustees of the BritishMuseum upon the usual terms; but if they decide by a majority that it should bepublished then I direct my wife to sell the same in trust to divide the net proceeds ofsuch sale among my wife and all my children in equal shares’; ibid., pp. 270–71.

Associated Newspapers Limited. The residuary legatees of the Dickens estatesought the proceeds of the sale, arguing that the copyright in the work did notpass with the manuscript to Georgina Hogarth in 1870. Interestingly it wasSkone James who appeared with Croom-Johnson on behalf of Marie Theresearguing that, at common law, what rights subsisted in an unpublished workadhered to the manuscript, relying as an authority for this proposition not uponCopinger but upon the fourth edition of Scrutton on Copyright.179 Evershedand the aforementioned Macgillivray appeared for the residuary estate, anddrawing upon the Mansell decision, countered that copyright in anunpublished work was an incorporeal right of property which subsistedindependently of the actual manuscript. On this point the court unanimouslyheld in the respondent’s favour.

The influence and spirit of Lord Mansfield flows through all threeopinions,180 but the most interesting perhaps is that of Maugham LJ, olderbrother to the author William Somerset Maugham, and grandson to RobertMaugham whose Treatise had been published just over 100 years previously.As to the argument proffered by Croom-Johnson and Skone James he noted:

The late Sir Thomas Scrutton, it is true, said … that the common law right cannotrightly be called “copyright” (Scrutton on Copyright, cap. II.), and he cited LordBrougham in Jeffreys v. Boosey. In my opinion this is too broadly stated, and I thinkLord Brougham did not express that opinion.181

It is fitting in the extreme, that this case, concerning a manuscript by perhapsthe greatest English author of the nineteenth century, and one who was also anearnest and active advocate upon issues concerning authors’ rights andinternational copyright protection, should resolve any lingering doubt as to thenature of the common law right arising out of the competing readings inCopinger and Scrutton. Even more appropriate is the fact that when SkoneJames produced the seventh edition of Copinger’s work in 1936, having lostthe argument before the Court of Appeal, he began the chapter concerningunpublished works, not with Yates J, or with Erle J, but with In Re Dickens:

The nature of this common law right protection was fully discussed in the recentcase of Re Dickens, in which the question at issue was whether the common lawright in an unpublished manuscript passed under a bequest, taking effect before thepassing of the Act of 1911, of “all my private papers”. The Court of Appeal, after


179 Scrutton, T.E. (1903), The Law of Copyright, 4th edn, London: Clowes andSons.

180 For example, Romer LJ, commenting upon Millar observed: ‘The observationsmade by Lord Mansfield in delivering judgment in [that] case are of the greatestimportance as they are of the highest authority’; In Re Dickens, pp. 292–93.

181 Ibid., p. 305.

considering the judgments in the cases of Millar v. Taylor, Mansell v. ValleyPrinting Co., and MacMillan & Co. v. Dent, were unanimously of the opinion thatthe right was an incorporeal right existing independently of the property in themanuscript … The new act has, however, abolished common law copyright, andconfers statutory copyright upon all works as from the date upon which they aremade.182

182 Skone James, F.E. (1936), Copinger on the Law of Copyright, 7th edn, London:Sweet & Maxwell, p. 21.


‘In almost every case in which the law does anything for a man’s benefit or advantage, men are apt to

speak of it, on some occasion or other, as conferring on him a sort of property …’

Jeremy Bentham, Introduction to the Principles of Moralsand Legislation

‘The right of first publication arises out of the nature of the thing …’

Horace Ball, The Law of Copyright and Literary Property

4. Theory I: what copyright isn’t … or, conceiving the public domain

INTRODUCING THE PUBLIC DOMAIN

In his work exploring the psychology of the way in which we look at andengage with visual art, Darian Leader begins by recounting the story of thetheft of the Mona Lisa on 21 August 1911.1 On this Monday morning (Mondaybeing the day on which the Louvre closed every week), Vincenzo Peruggia, anemployee of the museum, left with the painting concealed under his smock.News of the theft generated sustained national and international attention forover 2 years, during which the whereabouts of the painting remained amystery. It was finally recovered when, in November 1913, Peruggia sent aletter to the Italian art dealer, Alfredo Geri, offering to sell him the work. Hetravelled to Florence to complete the transaction, was captured, and thepainting was returned to the Louvre on 20 December 1913.

More remarkable than the length of time it took to recover the painting, isthe fact that, during the time the image was absent from the museum, hugecrowds flocked to see, not the painting, but the space upon the wall whereLeonardo’s work once hung. Hoards of people, many of whom had never beento the Louvre before, nor indeed had ever seen the Mona Lisa, came not to seethe painting but to see its absence, or as Le Figaro put it, the ‘enormous,horrific, gaping void’.2

For Leader, the fact that the painting was no longer there encouraged peopleto look at things differently, to see things anew.

Leader draws upon Jacques Lacan and his work on the relevance ofsublimation in positing a zone of emptiness, a void that is constitutive of ourbecoming human; that is, a place which is always beyond that which we canrepresent or give meaning to. He writes:

There are … two sides to Lacan’s concept. On the one hand, the idea of a traumaticaspect to early experience that we cannot grasp directly in terms of representations

101

1 Leader, D. (2002), Stealing the Mona Lisa: What Art Stops us from Seeing,London: Faber & Faber.

2 Le Figaro, 5 January 1914, quoted in ibid., p. 67.

or meanings; and, on the other, the idea of an empty space created by this failure atthe level of representations and meanings. If the first aspect means we don’t wantto go there, the second aspect means that we are none the less drawn towards it. Theempty space comes to incarnate what we are separated from, what we have lost inour passage through infancy and childhood. Our desires will circle it, and the lesswe can grasp it, the more powerful its gravitational pull.3

This, of course, is no more than a fancy way of introducing a chapter on howwe think about and define that which is not copyright. Copyright in any givenwork we know comes into existence from the point of creation. For literary,dramatic, musical and artistic works, the term of protection lasts for thelifetime of the author plus 70 years after his death.4 Following this period,more often than not, we talk about the copyright expiring, or coming to an end;that is, copyright, as property right, no longer exists. We are left with a workabsent copyright protection. When this happens the work is often said to enterthe public domain and it is this concept with which this chapter is primarilyconcerned. Two questions then: (1) what is the nature of the public domain andhow can (or should) we describe it?, and, (2) why bother trying to describe it,or rather why is it significant?

The emergence of contemporary scholarship on the public domain can betraced to the publication of David Lange’s seminal work ‘Recognizing thePublic Domain’.5 In that piece, Lange makes no real attempt to define thepublic domain per se (leaving that to such scholarship as might follow) butdoes note that ‘the public domain tends to appear amorphous and vague, withlittle more of substance in it than is invested in patriotic or religious sloganson paper currency’.6 This ‘impression of insubstantiality’ has been remarkedupon by others, neatly summarised by Pamela Samuelson’s recentobservations that the public domain resembles an:

[U]ncharted terrain. Sometimes it seems an undifferentiated blob of unnamed sizeand dimensions … a vast and diverse assortment of contents. The public domain is,moreover, different sizes at different times in different countries … The publicdomain also has some murky areas. For example, some intellectual creations are, intheory, in the public domain, but for all practical purposes, do not really residethere.7


3 Supra n. 1, p. 59.4 Copyright Designs and Patents Act 1988, c. 48 (hereafter CDPA), s. 12.5 Lange, D. (1981), ‘Recognizing the Public Domain’, Law & Contemp. Probs,

p. 147. See, however, the earlier work of Krasilovsky, M.W. (1967), ‘Observations onPublic Domain’, Bulletin of the Copyright Society, p. 205.

6 Lange, supra n. 5, p. 177.7 Samuelson, P. (2003), ‘Mapping the Public Domain: Threats and Opportunities’,

Law & Contemp. Probs, pp. 147 and 148.

This conceit of the public domain as nebulae, a space without form or clearlydefined boundaries, is perhaps to be expected. After all, as a concept, thepublic domain rarely receives any attention from intellectual propertylawyers,8 and even when it does, it often amounts to no more than anafterthought (literally) – it is that which is left when intellectual propertiesexpire or are abandoned – a negative space, a ‘legal residue drained of positiveproprietary rights’.9

To return to Leader (and so to Lacan) the empty space, the void, is often thatwhich we cannot represent. This lack of conceptual clarity is compounded bythe fact that many who write about the public domain often do so withoutattempting to provide any definition of their subject matter,10 as well as bythose who use the phrase (albeit knowingly) interchangeably with otherequally imprecise and/or undefined terms such as the ‘commons’ (withvariations on the theme: the ‘commons of the mind’, the ‘intellectualcommons’, and the ‘informational commons’) or simply the ‘public sphere’.11

Theory I: what copyright isn’t 103

8 Jessica Litman, in her influential work on the public domain, notes that‘[a]lthough the public domain is implicit in all commentary on intellectual property, itrarely takes center stage. Most of the writing on the public domain focuses on otherissues: Should the duration of copyright be extended? Should we recognize newspecies of intellectual property rights? Should federal intellectual property law cut abroad preemptive swathe or a narrow one? Copyright commentary emphasizes thatwhich is protected more than it discusses that which is not’; Litman, J. (1990), ‘ThePublic Domain’, Emory Law Journal, pp. 965 and 977.

9 Sherman B. and Thomas, J. (1998), ‘Introduction’, Journal of Law andInformation Science (Special Edition), p. 5.

10 See for example: Cramer, E.M. and Block, L. (1991–92), ‘Public Domain:Available but not Always Free’, Fordham Ent. Media & Intellectual Property Law F.,p. 1; Akoi, K. (1993–94), ‘Authors, Inventors and Trademark Owners: PrivateIntellectual Property and the Public Domain, Part I’, Columbia Journal of Law and theArts, p. 1; Akoi, K. (1993–94), ‘Authors, Inventors and Trademark Owners: PrivateIntellectual Property and the Public Domain, Part II’, Columbia Journal of Law and theArts, p. 191; Schiffman, S.M. (1996), ‘Movies in the Public Domain: A ThreatenedSpecies’, Columbia Journal of Law and the Arts, p. 663; Bott, C.M. (1998–99),‘Protection of Information Products: Balancing Commercial Reality and the PublicDomain’, U. Cin. L. Rev., p. 237; Griffiths, J. (2000), ‘Copyright in English Literature:Denying the Public Domain’, European Intellectual Property Review, p. 150; Rose,C.M. (2003), ‘Romans, Roads, and Romantic Creators: Traditions of Public Propertyin the Information Age’, Law & Contemp. Probs, p. 89.

11 See for example: Litman, supra n. 8; Jaszi, P. (1996), ‘Goodbye to all that – AReluctant (and perhaps premature) Adieu to a Constitutionally-Grounded Discourse ofPublic Interest in Copyright Law’, Vand J Transnat’l L, p. 595; Van Caenegem, W.(2002), ‘The Public Domain: Scientia Nullius?’, European Intellectual PropertyReview, p. 324; Oddi, A.S. (2002–03), ‘The Tragicomedy of the Public Domain inIntellectual Property Law’, Hastings Comm. & Ent. Law Journal, p. 1; Boyle, J.(2003), ‘The Second Enclosure Movement and the Construction of the Public Domain’,

There are, however, those who have attempted to provide the public domainwith some definitional boundaries, whether in relation to copyright inparticular, or intellectual property in general. Perhaps the most common (andleast complicated) is that which resonates with the notion of the public domainas negative space, that which is left over when intellectual properties cease tobe; that is, it consists of works that are no longer in the copyright term,12 the‘sphere in which contents are free from intellectual property rights’,13 or thatwhich is ‘left over after intellectual property had finished satisfying itsappetite’.14

Others have provided more subtle (and arguably more accurate) definitions,that move beyond those works that no longer receive legal protection andincorporate those aspects of works which intellectual property doctrine doesnot protect. In relation to copyright, these might include an insubstantial partof a work,15 or the statutorily defined ‘acts permitted in relation to copyrightworks’,16 and so on.17 Still others have suggested that to adopt such an overtlylegalistic approach is, perhaps, to miss the point about what the public domainshould be. For Lange, for example, ‘it should be a place of sanctuary forindividual creative expression, a sanctuary conferring affirmative protectionagainst the forces of private appropriation that threatened such expression’.18


Law & Contemp. Probs, p. 33; Lange, D. (2003), ‘Reimagining the Public Domain’,Law & Contemp. Probs, p. 463.

12 Samuels, E. (1993), ‘The Public Domain in Copyright Law’, Journal of theCopyright Society of the USA, p. 137; Hall, J.L. (1995), ‘Blues and the Public Domain– No More Dues to Pay?’, Journal of the Copyright Society of the USA, p. 215; Martin,S.M. (2002), ‘The Mythology of the Public Domain: Exploring the Myths BehindAttacks on the Duration of Copyright Protection’, Loyola of Los Angeles Law Review,p. 253; Van Caenegem, supra n. 11, p. 324.

13 Samuelson, supra n. 7, p. 149.14 Lange, supra n. 11, p. 465.15 CDPA s. 16(3)(a).16 CDPA ss 28–76.17 Litman, supra n. 8. See also: Hawkins, C. (1998), ‘Technological Measures:

Saviour or Saboteur of the Public Domain?’, Journal of Law and Information Science,p. 45; Uhlir, P. (2003), Draft Policy Guidelines for the Development and Promotion ofPublic Domain Information, Paris: UNESCO; Benkler, Y. (1999), ‘Free as the Air toCommon Use: First Amendment Constraints on Enclosure of the Public Domain’, NewYork University Law Review, p. 354. Benkler, for example, defines the public domainin the following terms: ‘The public domain is the range of uses of information that anyperson is privileged to make absent individualized facts that make a particular use bya particular person unprivileged’; ibid., p. 362. For an excellent summary of thepositions these various scholars have adopted, and the differences between them, seegenerally Boyle, supra n. 11.

18 Lange, supra n. 11, p. 466. He continues: ‘Intellectual property can go on beingintellectual property, reformed or otherwise. Meanwhile, the public domain can andshould be envisioned as a thing apart, and strengthened accordingly’; ibid., p. 474. See

One response to this variety of definitional approaches is to acknowledge,as Jamie Boyle does, that the public domain is ‘a concept that is considerablymore slippery than many of us realize’, and that as such it ‘will change itsshape according to the hopes it embodies, the fears it tries to lay to rest, andthe implicit vision of creativity on which it rests’. In short, ‘there is not onepublic domain, but many’.19 No doubt Boyle is correct in this regard; there areprobably as many ways to conceive of, and engage with the notion of thepublic domain as there are ways of reading that famously enigmatic smilewhich to this day hangs behind bullet-proof glass in a museum in Paris.20

Rather than try to grapple with various conflicting or complementaryinterpretations of the public domain, Boyle suggests that we consider thepublic domain in the abstract, as symbolic of many and varied individualfights, unified by concerns about recent trends in intellectual propertyexpansionism as well as hopes for the future of the creative process.21

Patterson and Lindberg, in their work The Nature of Copyright: A Law ofUser’s Rights, made a similar appeal just over 10 years previously, when theyencouraged us to consider the public domain not as a ‘territory’ but rather as aconcept: ‘[T]here are certain materials – the air we breathe, sunlight, rain,ideas, words, numbers – not subject to private ownership. The materials thatcompose our cultural heritage must be free for all to use no less than matternecessary for biological survival’.22 That is all well and good; however, tochampion the public domain as an abstract if powerful and necessary conceptruns the risk of reaffirming the already prevalent perspective of the publicdomain as chimera, as too slippery, too imprecise to warrant any coherent anddetailed consideration.

What follows then, is not an exegesis of the public domain in Boyle’smould, but rather a commentary which, drawing upon the work of others,takes as its point of departure the relationship between the public domain andone branch of intellectual property law only – copyright. Consider for examplea simple if fundamental difference between patent and copyright protection:with patents, what receives protection is the new and inventive idea; by


also Oddi’s conception of the public domain as being in the first instance a ‘source ofsensory stimuli (which will be termed the “public-domain-as-stimuli” thesis) and onlysecondarily as some sort of “intellectual commons”, where all may freely exploit itscontents’; Oddi, supra n. 11, p. 8.

19 Boyle, supra n. 11, pp. 52 and 62.20 In April 2005 the painting was moved to a new exhibition space – an airtight

unbreakable glass case set into one of the walls within the Louvre’s recentlyrefurbished Salle des Etats.

21 Boyle, supra n. 11, p. 73.22 Patterson L.R. and Linberg, S.W. (1991), The Nature of Copyright: A Law of

User’s Rights, Athens, US and London, UK: University of Georgia Press, p. 51.

contrast, one of the fundamental doctrines of copyright law is that copyrightsubsists not in ideas but only in the expression of those ideas. From this verybasic doctrinal point of view, patent law’s public domain and copyright law’spublic domain remain entirely at odds with one another. The intellectualproperty lawyer may well argue that one should consider the public domain inthe round, but as suggested above, to do so may simply prove too problematic.Instead, to break our investigation of the public domain into variousconstituent parts (corresponding with various intellectual properties, or indeedother areas of the law, such as breach of confidence) allows for a moreaccurate conception of what is meant by the public domain within theseseparate, if related, contexts. It should also throw up some insights into theparticular intellectual property under investigation, as well as allowing us toexplore, with greater clarity and precision, the nature of, and interplaybetween, various related concepts such as the public domain itself, that whichis in the public interest, and what might be more broadly described as theintellectual commons. Again then: how to describe the public domain? We cansplit this into two separate enquiries: (1) what does it mean to speak of a workbeing in the public domain?, and (2) what works, or indeed aspects of a work,are in the public domain?

UNDERSTANDING COPYRIGHT’S PUBLIC DOMAIN

Setting Lange’s concerns about an overly legalistic approach to conceiving thepublic domain (that is a text primarily for lawyers after all),23 we might wellbegin with the proposition that copyright as an institutional phenomenonfunctions by conferring upon the owner of the copyright in a work a bundle ofrights (referred to within the UK as the ‘acts restricted by copyright’), whichrights enable that owner to prevent others from using the work, in certainways,24 without first asking for permission to do so. Such is the position for solong as the work remains in copyright. This might usefully be described as theprivate domain of that which is copyright protected,25 and if copyright


23 Supra n. 18 and accompanying text.24 At present this involves reproducing, distributing, renting, performing, and

communicating the work, or making an adaptation of the work, or doing any of theabove in relation to an adaptation of the work; CDPA s. 16(1); it is important toremember, however, that not all uses are prohibited in relation to every type ofcopyright protected work.

25 Obviously any type of use which does fall with the acts restricted by copyrightcannot be considered to fall within the private domain – that is, the copyright ownerhas no legal authority to prevent anyone using their work in that particular way. To takea relatively recent example: with the implementation of the Rental Rights Directive

regulates the ability to make use of the work, then the public domainrepresents that area wherein no one individual can claim any better right to useor control any given intangible work. This then provides us with our firsttouchstone for understanding copyright’s public domain: that is, if theinstitution of copyright necessitates permission before use, then the publicdomain allows for use without the need for permission (Figure 4.1).26

This is not to say however, as some have suggested, that with the creationof a private domain of copyright protection, so the public domain was


(92/100/EEC) in the UK, the acts restricted by copyright were extended to include theability of the copyright owner to prevent anyone renting or lending literary, dramatic,musical or artistic works to the public; CDPA, s. 16(1)(ba). Prior to this, the rental rightdid not exist in relation to this category of copyright works.

26 Clearly this would include those works which, for whatever reason, fail toqualify as copyright protected in the first place. For example, in relation to works ofliterature, music, drama and art, the work may not attract copyright protection as it doesnot satisfy the threshold of originality set out in CDPA s. 1(1)(a).

We should, of course, acknowledge at this point that there are owners of copyrightmaterials who dedicate their work to the public; that is, they willingly waive whatrights they have to control the use of the copyright work. As such, although the worksare still legally within the private domain, de facto they fall within the public domain(indeed one might well refer to this as the de facto public domain). Consider forexample the success of the OpenSource movement or the Creative Commons project(www.creativecommons.org). It is important to remember, however, that thesematerials only reside within the public domain as a result of a wide-ranging a prioripermission – there is no need to ask for permission to use, as permission has alreadybeen granted. In this way the concept of use without the need for permission remainsthe appropriate touchstone, in terms of legal doctrine, for distinguishing between theprivate and the public domain.

Copyright Protected Public Domain

Figure 4.1

simultaneously brought into existence.27 While the rhetoric of copyright andthe public domain may well be interdependent, if historically contingent,28 theactuality of the public domain did in fact pre-date copyright. Consider forexample the 15 years between the lapse of the seventeenth-century LicensingActs in Britain (May 1695) and the passing of the Statute of Anne (April1710). During this time there existed no legal regulation of works of literatureat all (within the context of intellectual property).29 Three hundred years ago, in 1706, no-one needed to ask anyone else for permission to reprint,publish, sell, or indeed do anything with any given literary text; every workalready in existence, and every work created at this time (and people did stillcreate regardless of the absence of any legal protections for their work) werefree for all to use.30 In short, the public domain did exist prior to the


27 For example, Mark Rose, in his excellent piece on the rhetoric of the publicdomain, suggests that ‘[c]opyright and the public domain were born together’; Rose,M. (2003), ‘Nine-Tenths of the Law: The English Copyright Debates and the Rhetoricof the Public Domain’, Law & Contemp. Probs, p. 75. Rose is, of course, right to warnus against ‘projecting into the past an idyll of communality from which we havesupposedly declined’; ibid. It is certainly the case that the circulation of printedmaterial was from the time of the establishment of the Stationers’ Company in 1557until the lapse of the Licensing Act 1662 (in 1695) subject to some form of regulation.Again, this simply illustrates that, absent some form of parliamentary or sovereignintervention, intellectual goods, such as works of literature, art, and so on, wouldotherwise exist within the public domain. That is, as was the case between May 1695and April 1710, prior to the establishment of the Stationers’ Company by Royal Charterin 1557, printed materials were public domain. In general see also Boyle, J. (2003),‘The Opposite of Property?’, Law & Contemp. Probs, p. 1.

28 For a commentary upon the history of the use and significance of the term‘public domain’ within American legal jurisprudence see Ochoa, T.T. (2002–03),‘Origins and Meanings of the Public Domain’, University of Dayton Law Review, p. 215.

29 For more on this period see Deazley, R. (2004), On the Origin of the Right toCopy: Charting the Movement of Copyright Law in Eighteenth-Century Britain,1695–1775, Oxford: Hart Publishing. See also: Patterson, L.R. (1968), Copyright inHistorical Perspective, Nashville: Vanderbilt University Press; Ransom, H. (1956), TheFirst Copyright Statute, Austin: University of Texas; Rose, M. (1993), Authors andOwners: The Invention of Copyright, London: Harvard University Press; LoewensteinJ. (2002), The Author’s Due: Printing and the Prehistory of Copyright, London:University of Chicago Press; Crist, T. (1979), ‘Government Control of the Press Afterthe Expiration of the Printing Act in 1679’, Publishing History, p. 49; Astbury, R.(1978), ‘The renewal of the Licensing Act in 1693 and its Lapse in 1695’, The Library,p. 296; Treadwell, M. (2002), ‘The Stationers and the Printing Acts at the End of theSeventeenth Century’, in Barnard J. and McKenzie, D.F. (eds), The Cambridge Historyof the Book in Britain, Volume IV, 1557–1695, Cambridge: Cambridge UniversityPress, pp. 755–76.

30 Subject, that is, to whatever other (non-legal) pressures those printers andbooksellers who dominated the book trade could bring to bear upon book productionin general.

introduction of a legal mechanism for controlling use in the guise of the 1709Act.

One obvious problem with this initial conceit of use without permission isthat it fails to accommodate the fact that once a work has been published itnecessarily enters a public arena; that is, it has ceased to exist within theindividual realm of the author and instead has entered a public cultural space(let us call this the intellectual commons).

The distinction outlined above turns upon the notion of the ability to makeany use of a work without permission. This second consideration touches notupon freedom to use a work, but upon the work being publicly accessible. Anauthor’s book may be public in the sense that we now have the ability to accessand engage with the work (whether at a financial cost or not) and yet we mayremain restricted in terms of how we are able to make use of that work in thatthe rules of copyright will still operate to prevent us from freely copying,distributing, renting, performing, broadcasting or adapting the work. As such,it is useful to distinguish between that which has been made public (in thesense of residing within the intellectual commons) and that which is publicdomain. A work may have been made public but it will also be either copyrightprotected or public domain (Figure 4.2).

Maintaining this distinction between the public domain and the intellectualcommons turns upon a coherent appreciation of the difference between the tworelated concepts of access to and use of a work. Implicit in this distinction,however, is the fact that there will also remain a realm of material that maynever enter the intellectual commons at all (let us call this the undiscloseddomain). An example might be that of someone who keeps a diary; their


Copyright Protected Public Domain

THE INTELLECTUAL COMMONS

Figure 4.2

personal entries in the diary would almost certainly be copyright protected, butare almost equally certain never to be made public.

To use another example: take a blank page and a pencil; draw something onthe page, perhaps a cat or a hat, a fox or some socks. Then, photograph thepage with the drawing on it, remove the film from the camera, seal it in awatertight box and bury it in the garden. Finally, destroy the page upon whichthe original drawing was made. Here we have arguably two copyright works(the original drawing and the photograph of the drawing)31 that are copyrightprotected from the point of creation, in around 150 countries worldwide,32

which nevertheless may never see the light of day. From the point of creationthey will be copyright protected for the lifetime of the author plus a 70-yearpost mortem term (at the time of writing at least – there is surely no guaranteethat the copyright term may not be subsequently extended). After this periodhas expired the works will pass into the public domain.33 However, at no pointwill they necessarily fall within the intellectual commons. The material doesnot enter the intellectual commons because it is never disclosed. It remainsalways private to the individual (or lost, forgotten, destroyed, and so on). Inthis regard the intellectual commons concerns only that which has been madepublic, while the public domain embraces both published and unpublishedworks (Figure 4.3).

This initial set of distinctions articulated in Figure 4.3, between that whichcan be used without permission and that which cannot, and that which ispublished and that which is not, can perhaps be said to best represent thepredominant conception of the public domain – that which falls ‘outside’ theprivate domain of the intellectual property system.34

In this conception, the public domain will consist of two types of work: (1)those works which fail to meet whatever threshold requirements have beenstipulated before protection will be attributed to them (or more simply, thosewhich do not qualify for protection in the first place) – in the case of copyright,


31 On the question of the copyright in photographs of two-dimensional works of artsee Garnett, K. (2000), ‘Copyright in Photographs’, European Intellectual PropertyReview, p. 229 and Deazley, R. (2001), ‘Photographing Paintings in the PublicDomain: A Response to Garnett’, European Intellectual Property Review, p. 179.

32 As a result of the principle of national treatment; see A.5 of the BerneConvention.

33 Note, however, the protection for previously unpublished works provided for inthe European Copyright Duration Directive, 93/98/EEC, which sets out in A.4 that:‘Any person who, after the expiry of copyright protection, for the first time lawfullypublishes or lawfully communicates to the public a previously unpublished work, shallbenefit from a protection equivalent to the economic rights of the author. The term ofprotection of such rights shall be 25 years from the time when the work was firstlawfully published or lawfully communicated to the public’.

34 Supra n. 12 and accompanying text.

the non-original literary, dramatic, musical or artistic work;35 and (2), for thoseintellectual properties that are time-limited, such as copyright, those workswhose periods of protection have expired.36 As a working description ofcopyright’s public domain however, these distinctions are overly simplistic. Inrelation to copyright works, if the touchstone of the public domain is usewithout permission then, as Litman reminds us,37 the public domain must alsoincorporate those aspects or features of a copyright protected work thatnevertheless do not require permission prior to such use.38 The question now


Copyright Protected

Undisclosed

Public Domain

Undisclosed


Figure 4.3

35 CDPA s. 1(1)(a).36 Of course different copyright protected works have different terms of copyright

protection; compare for example the protection for an original literary work (CDPA s.12) with that for the typographical arrangement of a published edition (CDPA s. 15).

37 Supra n. 8.38 Naturally, not everyone agrees with this analysis. Edward Samuels writes that

‘[i]t is a misapplication of the concept of the public domain to think of every limitationupon the exclusive rights of copyright as creating a limited public domain. Indeed, oneof the commonly recognized aspects of the public domain is that it represents a bodyof works that the public is free to use. The right to make limited use of a work that isotherwise subject to restrictions is the hallmark of copyrighted works: after all, everycopyright is only a set of rights subject to the right of the public to make at least someuse of the work. For example, the public has a right to make what would be a fair useof a copyrighted work: that does not create a separate “public domain”. What this doesis recognize a public interest even in copyrighted works, which interest can berecognized by the creation of limits upon the exclusive rights of copyright’; Samuels,supra n. 12, p. 166.

is: which aspects of a copyright protected work is any individual free to usewithout having to ask the copyright owner for permission?

In the first place we need to make mention of the oft-cited doctrine thatcopyright does not subsist in ideas but only in the manner in which those ideasare expressed. This idea–expression dichotomy has never received explicitmention within copyright’s legislative framework (within the UK at least),39

but rather grew out of the various debates in the mid-eighteenth century as tothe nature of property, as well as the manner in which copyright sat within thatbroader context. In the words of one commentator from that time:

[H]e who obtaineth my copy may appropriate my stock of ideas, and by opposingmy sentiments, may give birth to a new doctrine; or he may coincide with mynotions, and by employing different illustrations, may place my doctrine in anotherpoint of view: and in either case he aquireth an exclusive title to his copy, withoutinvading my property: for though he may be said to build on my foundation, yet herears a different superstructure.40

Implicit then, within the very concept of copyright, is the fact that the ideasexpressed within any author’s work are not copyright protected, and so fallwithin the public domain. This then brings us to one of the primary virtues ofthe public domain itself. Again, as Litman comments:

All works of authorship, even the most creative, include some elements adaptedfrom raw material that the author first encountered in someone else’s work … Ifeach author’s claim to own everything embodied in her work were enforceable incourt, almost every work could be enjoined by the owner of the copyright in another… Because we have a public domain, we can permit authors to avoid the harsh light


39 Compare the US copyright provisions which make express reference to thisdichotomy; 17 USC §102(b) states: ‘In no case does copyright protection for anoriginal work of authorship extend to any idea, procedure, process, system, method ofoperation, concept, principle, or discovery, regardless of the form in which it isdescribed, explained, illustrated, or embodied in such a work’.

40 Anon. (1762), A Vindication of the Exclusive Right of Authors, to their ownworks: A subject now under consideration before the 12 judges of England, London:Griffiths. Similarly, Francis Hargrave wrote as follows: ‘Every man has a mode ofcombining and expressing his ideas peculiar to himself … The same doctrines, the same opinions, never come from two persons, or even from the same person atdifferent times, clothed wholly in the same language … there is such an infinite varietyin the modes of thinking and writing, as well as in the extent and connection of ideas,as in the use and arrangement of words, that a literary work really original, like thehuman face, will always have some singularities, some lines, some features, tocharacterize it, and to fix and establish its identity’; Hargrave, F. (1774), An Argumentin Defence of Literary Property, reprinted in Parks, S. (ed.) (1974), Four Tracts onFreedom of the Press, 1790–1821, New York, US and London, UK: GarlandPublishing.

of a genuine search for provenance, and thus maintain the illusion that their worksare indeed their own creations.41

That is, in ensuring that ideas, generic plots, themes and so on, as well ascertain unoriginal materials,42 remain outside the private domain, the publicdomain enables the very process of authorial creation itself. If, as Sir HughLaddie pithily observes, ‘the whole of human development is derivative’,43

without the public domain copyright itself would not be viable.As to the remaining types of use without permission, these can be separated

into two main categories: such uses as are set out within the copyright’sstatutory regime; and those uses which are not, but which are otherwisepermissible as a result of judicial intervention with that statutory regime.

As to the first category, within the UK, there are two types of use to bear inmind: first, use of an insubstantial part of a work;44 and secondly, any usewhich falls within the statutorily defined ‘acts permitted in relation tocopyright works’.45 The latter category is clearly the more significant of thetwo, allowing for use without permission in a wide range of different andvaried contexts. For example: for non-commercial research;46 for private


41 Litman, supra n. 8, pp. 1011–12. Yates J in Millar v. Taylor (1768) 4 Burr 2303worried about the potential impact a perpetual common law right might have upon thecreative process, and the continued production of literature, in noting ‘the dangeroussnares which this ideal property will lay, as it carries no proprietary marks in itself; andis not bound to any formal stipulations. So obscure a property (especially after the workhas been along while published) might lead many booksellers into many litigations;and in such litigations, many doubtful questions might arise … Disputes might alsoarise among authors themselves – “whether the works of one author were or were notthe same with those of another author; or whether there were only colourabledifferences:” – (a question that would be liable to great uncertainties and doubts) … Iwish as sincerely as any man, that learned men may have all the encouragements thatare consistent with the general right and good of mankind. But if the monopoly nowclaimed be contrary to the great laws of property … if it will tend to embroil the peaceof society, with frequent contentions; – (contentions most highly disfiguring [to] theface of literature, and highly disgusting to a liberal mind;) if it will hinder and suppressthe advancement of learning and knowledge … I can never concur in establishing sucha claim’; ibid., p. 2394.

42 Jaszi writes that the originality requirement ‘can be understood to represent anaspect of the fundamental notion of a public domain, guaranteeing the existence of aninformational commons of accessible material beyond the reach of copyright’; Jazsi,supra n. 11, p. 605. See also Smith, Marlin H. (1992–93), ‘The Limits of Copyright:Property, Parody, and the Public Domain’, Duke Law Journal, p. 1233.

43 Laddie, H. (1996), ‘Copyright: Over-strength, Over-regulated, Over-rated?’,European Intellectual Property Review, pp. 253 and 259.

44 CDPA s. 16(3)(a).45 CDPA ss 28–76.46 CDPA s. 29(1).

study;47 for the purposes of criticism or review,48 or for reporting currentevents;49 in certain educational contexts,50 to facilitate library and archivalwork,51 in the interests of public administration,52 as well as a range ofadditional miscellaneous situations.53

Moreover, while a number of these permitted uses pertain only to a part of the copyright work,54 or mandate that the use be considered to be fairdealing,55 some categories simply allow for the use of the work in its entirety.56 Of course, it goes without saying that the parameters of thesestatutorily defined permitted acts do not remain static. For instance, considersome of the changes implemented by the Copyright and Related RightsRegulations 2003.57 Whereas, on 30 October 2003, copying certain material58

in the course of instruction (or in preparing a course of instruction) did not infringe so long as the copying was performed by someone either giving or receiving instruction, and was not by way of a reprographicprocess,59 on 31 October 2003, where the material being copied had been madeavailable to the public, then the person copying the work also had to establishthat their use was fair dealing and accompany the reproduction with asufficient acknowledgement.60 Similarly, fair dealing with a work for thepurpose of criticism or review was altered so that it is now only permissible in relation to works that have been made available to the public.61 Clearly,


47 CDPA s. 29(1C).48 CDPA s. 30(1).49 CDPA s. 30(2).50 For example, for the purposes of instruction or examination; CDPA s. 32.51 For example, in supplying copies of periodical articles to library users engaged

in research or private study; CDPA s. 38.52 For example, for the purposes of parliamentary or judicial proceedings; CDPA

s. 45.53 For example, to facilitate public recitations from literary or dramatic works or

the representation of certain artistic works on public display; CDPA ss 59 and 62.54 CDPA s. 39.55 CDPA s. 30(1).56 For example, performing a literary, dramatic or musical work before an audience

of teachers and pupils at an educational establishment; CDPA s. 34.57 Copyright and Related Rights Regulations 2003, SI 2003/2498; these

Regulations were designed to implement the provisions of the European InformationSociety Directive, 2001/29/EC.

58 In this case: literary, dramatic, musical and artistic works.59 CDPA s. 32(1), pre 31 October 2003.60 CDPA s. 32(2A).61 CDPA, s. 30(1). In this regard, whether a work has been made available to the

public, includes: ‘(a) the issue of copies to the public; (b) making the work availableby means of an electronic retrieval system; (c) the rental or lending of copies of thework to the public; (d) the performance, exhibition, playing or showing the work inpublic; (e) the communication to the public of the work’; s. 30(1A).

as the statutory regime shifts, so too do the boundaries of the public domain.62

Turning to the second general category of use without permission – thoseuses which are permissible as a result of judicial intervention with thatstatutory regime – we can, once again identify two different types of use tobear in mind: use of works which the courts refuse to protect on grounds ofpublic policy; and any use of copyright protected works which, while they donot fall within the permitted acts, are nevertheless considered to be in thepublic interest. The first category is of long-standing tradition; the secondrepresents a more recent innovation.

With regard to the first category, following the Statute of Anne, one of thefirst copyright cases to come before the courts was that of Burnet v. Chetwood(1721) (Burnet) which concerned an English edition of Dr Thomas Burnet’slatin treatise Archaeologia Philosophica. Merivale, reporting the case nearlyone hundred years after it first came to Court, notes that the defendant’sargument turned on the fact that ‘a translation of a book was not within theintent of’ the statute.63 Lord Chancellor Macclesfield was sympathetic to theargument that a translation of a work was not an infringement within the termsof the 1709 Act. However, he continued that the book contained ‘strange notions’ which should not be made available in the ‘vulgar’ tongue (that is, inEnglish). Rather, he considered it should remain in Latin only ‘in whichlanguage it could not do much hurt, the learned being better able to judge’the work. Asserting that the court had ‘a superintendency over all books, and might in a summary way restrain the printing or publishing any that


Consider for example one of the twentieth century’s most quotable copyright casespar excellence: Hubbard v. Vosper [1977] 2 QB 84. If the fact situation in that casewere to reoccur under the current statutory regime so that the defendant had beenrequired to establish that the works in question (various bulletins and letters written byL Ron Hubbard, the founder of the Church of Scientology, and circulated to a limitednumber of members of that order) had been ‘made available to the public’ it seemsmuch less likely that the statutory defence would succeed.

For various commentaries upon the Information Society Directive see: Bainbridge,D. (2002), ‘Implementing the Directive on Copyright in the Information Society’,Intellectual Property and Information Technology Law, p. 9; Hart, M. (2002), ‘TheCopyright in the Information Society Directive: An Overview’, European IntellectualProperty Review, p. 58; Heide, T. (2002), ‘The Approach to Innovation Under theProposed Copyright Directive: Time for Mandatory Exceptions?’, Intellectual PropertyQuarterly, p. 215; Kretschmer, M. (2003), ‘Digital Copyright: The End of an Era’,European Intellectual Property Review, p. 333; Vinje, T. (2000), ‘Should We BeginDigging Copyright’s Grave?’, European Intellectual Property Review, p. 551; Wiese,H. (2002), ‘The Justification of the Copyright System in the Digital Age’, EuropeanIntellectual Property Review, p. 387.

62 See Chapter 5 n. 33–79 and accompanying text.63 Burnet v. Chetwood (1721) 2 Mer 441.

contained reflections on religion or morality’, he granted the plaintiff hisinjunction.64

Since this time the courts, within the UK at least, have ever assumed theability to adjudicate upon the dissemination and protection of copyrightmaterial in a manner which functions outside the bounds of the statute, butfalls within their inherent jurisdiction at common law. In Burnet this took theunusual form of granting an injunction to prevent the publication of a workthat did not in fact infringe the copyright in any other work. More typically,the courts have tended to exercise this inherent jurisdiction by refusing aclaimant relief on the grounds that the content of the claimant’s work isobscene or sexually immoral, defamatory, blasphemous or irreligious.65 Thesomewhat counterintuitive result of this judicial refusal to protect what wouldbe otherwise copyright protected,66 is that anyone is free to make use of suchmaterials without permission, safe in the knowledge that the courts will notgrant relief to author of those materials – de facto, they reside within the publicdomain.

As to the second category, the notion that the courts can authorise the use of a work which would otherwise amount to copyright infringement (so long as that use can be considered to be in the public interest) dates from themore contemporary, if somewhat tentative, foundations laid down in LionLaboratories v. Evans [1985].67 It has, however, recently received a moresubstantive and coherent rationale with the coming into force of the HumanRights Act 199868 and the decision of the Court of Appeal in Ashdown v.Telegraph Group [2002] (Ashdown).69

In short, within the context of a discussion concerning the balance between


64 Ibid.65 See for example: Southey v. Sherwood (1817) 2 Mer 435 (Southey); Murray v.

Benbow (1822) The Times, 2 February 1822; Lawrence v. Smith (1822) Jacob 471;Murray v. Dugdale (1823) The Times, 22 July 1823; Stockdale v. Onwhyn (1826) 5B&C 174; Norton v. Churton (1835) The Times, 16 July 1835; Glynn v. Weston FeatureFilms [1916] 1 Ch 261; AG v Guardian (No. 2) [1990] 1 AC 109; Hyde Park v. Yelland[2001] Ch 143.

66 Lord Chancellor Eldon recognised as much in Southey: ‘It is very true that, insome cases, [the decision] may operate so as to multiply copies of mischievouspublications by the refusal of the Court to interfere by restraining them; but to this myanswer is, that, sitting here as a Judge upon a mere question of property, I have nothingto do with the nature of the property, nor with the conduct of the parties except as itrelates to their civil interests; and if the publication be mischievous, either on the partof the author, or of the bookseller, it is not my business to interfere with it’; ibid., pp.439–40.

67 Lion Laboratories v. Evans [1985] QB 526.68 Human Rights Act 1998, c. 42.69 Ashdown v. Telegraph Group [2002] Ch 149.

securing a copyright owner’s property rights, as against the right for copyrightusers to freely express themselves, Phillips MR in Ashdown first accepted thatcopyright amounts to a restriction on the ability of individuals to freelyexpress themselves (albeit using the words of another).70 He then continuedthat while ‘in most circumstances, the principle of freedom of expression willbe sufficiently protected if there is a right to publish information and ideas setout in another’s literary work, without copying the very words which thatperson has employed to convey the information or express the ideas’,71

nevertheless:

There will be occasions when it is in the public interest not merely that informationshould be published, but that the public should be told the very words used by aperson, notwithstanding that the author enjoys copyright in them. On occasions,indeed, it is the form and not the content of a document which is of interest.72

That is, ‘rare circumstances’ might arise where someone’s right to freelyexpress themselves may well conflict with the copyright owner’s rightsnotwithstanding the existence of the various permitted acts set out within the copyright legislation, and when they do the court is free to considerwhether an individual’s right to freedom of expression is being properlyaccommodated.

Should such ‘rare circumstances’ arise, Phillips MR considered that thereexisted no reason as to why these might not fall under the rubric of use withinthe common law public interest defence.73 He did stress, however, that thesesituations would not arise with any great frequency: ‘We do not see thisleading to a flood of litigation’.74


70 Phillips MR commented in the following terms: ‘The infringement of copyrightconstitutes interference with “the peaceful enjoyment of possessions”. It is,furthermore, the interference with a right arising under a statute which confers rightsrecognised under international convention and harmonised under European law …There is thus no question but that restriction of the right of freedom of expression canbe justified where necessary in a democratic society in order to protect copyright. Theprotection afforded to copyright under the 1988 Act is, however, itself subject toexceptions. Thus both the right of freedom of expression and copyright are qualified.This appeal raises the question of how the two rights fall to be balanced, when they arein conflict’; Ashdown, pp. 162–63.

71 Ibid., p. 165.72 Ashdown, p. 166.73 He commented: ‘In the rare case where it is in the public interest that the words

in respect of which another has copyright should be published without any sanction, wehave been concerned to consider why this should not be permitted under the “publicinterest” exception, the possibility of which is recognised by section 171(3)’ of theCDPA; ibid., p. 167.

74 Ibid. See also Phillips MR’s observation that: ‘We do not consider that thisconclusion will lead to a flood of cases where freedom of expression is invoked as a

To summarise thus far: within the context of UK law, copyright’s publicdomain incorporates those works which do not qualify for copyrightprotection, those works which do but are out of the copyright term,75 as wellas such use of those works which fall on the right side of the idea-expressionline, which are allowed for within the statutory framework (use of aninsubstantial part, the permitted acts), or which are permissible as a result ofjudicial intervention with that regime at common law (on public policygrounds, or as being in the public interest) (Figure 4.4).

There is, however, one last gloss that we should perhaps consider at this point in relation to the various distinctions detailed in Figure 4.4. In ‘Freeas the Air’, when discussing the nature of the public domain, Benklerobserves:

In analyzing copyright or related property rights in information, what matters ishow rules affect people’s baseline assumptions about what they may and may notdo with information. The particular weakness of the traditional definition of thepublic domain is that it evokes an intuition about the baseline, while not in factcompletely describing it.76

In other words, when considering the public domain we need to bear in mindthe manner in which its limits and operation are commonly perceived;regardless of the actuality of the public domain, in practice the manner inwhich it functions is bound up in individual perceptions of the way in whichpeople can or cannot use those cultural products to which they have access.


defence to a claim for breach of copyright. It will be very rare for the public interest tojustify the copying of the form of a work to which copyright attaches’; ibid., p. 170.

For more on the Ashdown decision see: Griffiths, J. (2002), ‘Copyright Law afterAshdown – Time to Deal Fairly with the Public?’, Intellectual Property Quarterly, p. 240; Birnhack, M. (2003), ‘Acknowledging the Conflict between Copyright Law andFreedom of Expression under the Human Rights Act’, Entertainment Law Review, p. 24. On the interface between copyright and human rights in general see: Birnhack,M. (2003), ‘The Copyright Law and Free Speech Affair: Making-Up and Breaking-Up’, IDEA: The Journal of Law and Technology, p. 233, and the references therein;Pinto, T. (2002), ‘The Influence of the ECHR on Intellectual Property Rights’,European Intellectual Property Review, p. 209; Rushton, M. (2002), ‘Copyright andFreedom of Expression: An Economic Analysis’, in Towse, R. (ed.), Copyright in theCultural Industries, Cheltenham, UK and Northampton, US: Edward Elgar Publishing,pp. 51–62. See also: Griffiths J. and Suthersanen, U. (eds) (2005), Copyright and FreeSpeech: Comparative and International Analyses, Oxford: Oxford University Press;Torremans, P.L.C. (ed.) (2004), Copyright and Human Rights: Freedom of Expression– Intellectual Property – Privacy, The Hague, Amsterdam, London, UK and New York,US: Kluwer Law International.

75 Again, we might take note of those works in relation to which permission to usehas been granted by the copyright owners a priori; supra n. 26.

76 Benkler, supra n. 17, pp. 361–62.

119


Public DomainCopyright ProtectedIdeas

InsubstantialParts

PermittedActs

Public Policy andPublic Interest

The Undisclosed Domain

Figure 4.4

This is the difference between the public domain and the perceived publicdomain.

This distinction is a useful one, but again does not change the legal realityof the public domain; rather, it highlights the need for, and value of, publiceducation in this regard. The need for increased public education concerningintellectual property is one which has been advocated by other scholars,although rarely do they suggest education about anything other thanintellectual properties per se. Consider for example Adrian Sterling’s recentsuggestion that:

The principles of protection of copyright and related rights should be taught at theprimary, secondary and tertiary levels of education. Children in primary schools areamong the major customers of protected material, and early teaching of theprinciples of respect for rights of others can lay a good foundation for developingawareness in this area as the educational process continues. In the final analysis,intellectual property rights will only survive if the public considers that such rightsshould be maintained, and the inculcation of awareness of the justification of therights should begin at as early an age as possible.77

Children, customers, respect, inculcate; setting aside the misgivings one mayhave about the appropriateness of teaching the principles of intellectualproperty to children at all,78 such sentiments hardly hold out the promise of aneducation as to when individuals (whether children or not) are free to use suchproperties without permission.

In a similar vein, in February 2002, Anthony Murphy (then Director of theUK Patent Office) spoke to the Oxford Intellectual Property Research Centreabout the implementation of the European Information Society Directivewarning that ‘legislation alone is not enough’ – ‘what’s needed is thedevelopment of a new attitude to copyright’. ‘It’s clear’ he observed ‘thatwe’re living in an age when respect for copyright, and understanding of thepart copyright has to play in supporting creativity, is at a low ebb – perhaps aslow as it has ever been since 1709’.

The response for Murphy lies in the education of secondary school children.‘We are trying’ he continued:

[T]o bring knowledge and understanding of copyright, and of intellectual propertyrights in general, into the heart of the National Curriculum, working with partners


77 Sterling, A.J. (2003), World Copyright Law, London: Sweet & Maxwell, p. 926.78 Lange writes: ‘I think it fundamentally wrong to insist that children internalize

the proprietary and moral values of the copyright system. I fear the encroachment uponthe formation and growth of creativity that these values represent when they are notsuitably constrained – as we cannot count upon them to be in our time … It is wrongto challenge school children with responsibility for copyright’; Lange, supra n. 11, p. 482.

like the Institute for Citizenship and the National Consumer Council, and leadingplayers in the music and leisure software industries, to develop new teachingmaterials in readiness for the introduction of Citizenship into our secondaryschools.79

With that in mind, consider the first two sentences from the Patent Office’sweb-page on the history of copyright: ‘It was not until the 1709 Statute ofAnne … that copyright in books and other writings gained protection of an Actof Parliament. Prior to this, disputes over the rights to the publishing of bookscould be enforced by common law’.80 When the national education system isinvoked to instil ‘authoritative’, albeit incorrect, truths as to the history (andsocial function) of copyright, increased public awareness and the need foreducation about the nature of the public domain assumes an ever increasingimportance;81 without it, there can never be anything close to a meaningful


79 Murphy, A. (2002), ‘Queen Anne and Anarchists: can Copyright survive in theDigital Age?’, Electronic Journal of Intellectual Property Rights, available atwww.oiprc.ox.ac.uk/EJWP0202.html.

One manifestation of this goal has been the production of various educationalresources packs (THINK kit® and THINK kit® 2) which, in the parlance of the PatentOffice website, aspire to ensure that ‘children learn how important it is for business toprotect their creativity in an ever expanding global economy’. The materials includevarious case studies, like that endorsed by the UK R&B star Jamelia, which provideinteresting sound-bites such as: ‘Jamelia’s debut album ‘Drama’ was a big success. Assoon as Jamelia had made her recordings, her songs were protected by copyright. No-one could copy her music without her permission … [She] can continue making anddeveloping her music, confident in the fact that her music cannot be copied andexploited, as she is protected by copyright.’ Similarly, the resource pack sets out that‘[a]nyone who has a new or creative or innovative idea then has the right to benefitfrom it’, that ‘[t]he owner of intellectual property has control over it and would expectto be rewarded for its development and use’, and that ‘[w]e would never hear newmusic or enjoy the performances of new artists if they did not have the security ofknowing that their work could not be copied’. To be fair, as regards copyright, thematerials do note in passing that ‘[m]ost uses of copyright material require permissionfrom the copyright owner’, however, not surprisingly, the materials fail to expand uponwhich uses might not. Indeed, the remainder of the commentary within the ‘Music CaseStudy’ implies quite the reverse: ‘Everything about music CDs is protected bycopyright. The images and text on the cover and the writing inside are all creations intheir own right and cannot be used or copied without permission’. See THINK kit® 2(emphasis added). At the time of writing the Patent Office estimates that about 70% of UK secondary schools have requested copies of the THINK kit® materials; see www.patent.gov.uk/about/marketing/thinkkit/index.htm. In a similar vein, see the Copyright Society of the USA’s online resource for ‘copyright kids’:www.copyrightkids.org.

80 See www.patent.gov.uk/copy/history/index.htm.81 On public perceptions of copyright and the copyright regime see Litman J.

(1991), ‘Copyright as Myth’, University of Pittsburgh Law Review, p. 235.

synergy between that which is public domain and that which is perceived to bepublic domain.

EXTERNALITIES AND COPYRIGHT’S PUBLIC DOMAIN

Moving from the basic relationship between copyright and the public domain,it would be foolish not to acknowledge that not only is the line between thetwo phenomena subject to doctrinal (or internal) development and change, butthat it can also be profoundly affected by various external considerations. Forour purposes these fall into two main categories: (1) physical and/ortechnological barriers which impact upon individuals’ opportunities formeaningful access to, and use of that which is, public domain; and (2) anincreasing reliance upon the law of contract in requiring individuals to‘contract out’ of that which they are otherwise free to do without permission(Figure 4.5).

These various externalities, when overlaid upon the existing copyrightregime, have considerable potential to significantly affect (that is, reduce) theshape and operation of the public domain, a prospect which has led somecommentators to call for the introduction of much stronger users’ rights thanhave hitherto been set out within traditional copyright regimes.82

Consider first the question of meaningful access. Again, there are two main aspects to this issue: regulating physical access to public domain works;and, the impact of technological protection measures (TPMs). The firstsituation might involve works which lie within the intellectual commons, areno longer copyright protected, but which are, nevertheless, a scarce intellec-tual resource (think of a text published in the eighteenth century, the onlyknown copy of which resides within the Advocate’s Library in Edinburgh), or are difficult to access (perhaps a seventeenth-century masterpiece owned


82 See for example: Ginsberg, J. (2003), ‘From Having Copies to ExperiencingWorks: The Development of an Access Right in US Copyright Law’, Journal of theCopyright Society of the USA, p. 113; Heide, T. (2003), ‘Copyright, Contract and theLegal Protection of Technological Measures – Not “The Old Fashioned Way”:Providing a Rationale to the Copyright Exceptions Interface’, Journal of the CopyrightSociety of the USA, p. 315; Loren, L.P. (2002), ‘Technological Protections in CopyrightLaw: Is More Legal Protection Needed?’, International Review of Law Computers &Technology, p. 133. In this respect one might well draw inspiration from the past;consider for example the provision included in the Fine Arts Copyright Bills of 1868and 1869 which articulated the ‘right of any person to copy or imitate any work of fineart in which, or in the design whereof, there shall be no subsisting copyright; or torepresent any scene or object, notwithstanding that there may be a subsisting copyrightin some previous imitation of such work, or in some previous representation of somesuch scene or object’ (emphasis added).

123


Public DomainCopyright ProtectedIdeas

InsubstantialParts

PermittedActs

Public Policy andPublic Interest

The Undisclosed Domain

Interference either as a result of exclusivecontrol over the physical object,

technological protection measures(TPMs), or contractual regulation

Figure 4.5

by Bill Gates), or indeed both (consider for example the Dead Sea Scrolls).83

Clearly there is significant opportunity for interplay between the ownershipof the physical object, whether manuscript, book or painting, and the ability tocontrol the subsequent use and dissemination of the text or image.84

The second, and more significant issue, has its origins in theimplementation of the WIPO Copyright Treaty (WCT) Article 11 of which setsout that:

Contracting Parties shall provide adequate legal protection and effective legalremedies against the circumvention of effective technological measures that areused by authors in connection with the exercise of their rights under this Treaty orthe Berne Convention and that restrict acts, in respect of their works, which are notauthorised by the authors concerned or permitted by law.85

In Europe, the WCT provided one of the catalysts which led to the InformationSociety Directive,86 A.6 of which addresses the question of TPMs,87 and, as


83 See: Birnhack, M.D. (2001), ‘The Dead Sea Scrolls: Who is an Author?’,European Intellectual Property Review, p. 128; Carson, C.A. (1995), ‘Raiders of theLost Scrolls: The Right of Scholarly Access to the Content of Historic Documents’,Michigan Journal of International Law, p. 299; Weinstein, L.M. (1994),‘AncientWorks, Modern Dilemmas: The Dead Sea Scrolls Copyright Case’, The AmericanUniversity Law Review, p. 1637.

84 See for example Deazley, supra n. 31.85 See also Art. 18 of the WIPO Performances and Phonograms Treaty (WPPT).86 Information Society Directive (2001/29/EC).87 Article 6 states:

6.1. Member States shall provide adequate legal protection against thecircumvention of any effective technological measures, which the person concernedcarries out in the knowledge, or with reasonable grounds to know, that he or he ispursuing that objective;

6.2. Member States shall provide adequate legal protection against the manufacture,import, distribution, sale, rental, advertisement for sale or rental, or possession forcommercial purposes of devices, products or components or the provision ofservices which:

(a) are promoted, advertised or marketed for the purpose of circumvention of, or (b) have only a limited commercially significant purpose or use other than to

circumvent, or(c) are primarily designed, produced, adapted or performed for the purpose of

enabling or facilitating the circumvention of, any effective technologicalmeasures.

For a general commentary on the Information Society Directive and its implementationwithin the UK, see Cook, T. and Brazell, L. (2004), The Copyright Directive: UKImplementation, Bristol: Jordan Publishing.

mentioned above, the Directive was subsequently implemented within the UKwith the passing of the Copyright and Related Rights Regulations 2003 (SI2003/2498).88

In effect, these provisions prohibit the circumvention of any effectivetechnological measures (such as encryption, scrambling or copy controlmechanisms) designed to prevent a user unlawfully accessing any copyrightwork, or performing any of the acts restricted by copyright in relation to acopyright work. Moreover, any person doing anything to circumvent suchmeasures is guilty of infringing the copyright in the work as if he hadpublished or communicated the work to the public.

The particular threat posed by TPMs to the public domain is of two kinds.In the first place they could be used by content providers to technologicallylock-up works which are no longer within the copyright term.89 Secondly, inrelation to works that are copyright protected, these TPMs will also interferewith any user’s ability to engage in lawful reproduction from the work whetherin accordance with the various permitted acts, whether set out in the legislationor at common law (how do you make copies from a work, whether substantialor insubstantial, fair or unfair, in the public interest or not, whenever themedium itself is copy-protected?).

The 2003 Regulations do address this latter concern, in line with therequirements of the Directive,90 in providing that ‘where the application of any


88 Supra n. 24; see also Chapter 5 nn. 74–79 and accompanying text. For the US implementation of A.11 of the WCT see the Digital Millennium Copyright Act 1998, 17 USC § 1201 (DMCA). To summarise, s. 1201 divides technologicalmeasures into two categories: measures that prevent unauthorised access to acopyrighted work and measures that prevent unauthorised copying of a copyrightedwork. Making or selling devices or services that are used to circumvent either category of technological measure is prohibited in certain circumstances. As to the act of circumvention itself, the provision prohibits circumventing the first category oftechnological measures, but not the second. For an excellent account of the enact-ment of the DMCA see Litman J. (2001), Digital Copyright, New York: PrometheusBooks.

89 As Samuelson notes: ‘Technical measures will, unless programmed otherwise,persist after copyrights expire, thereby undermining new entrants to the digital publicdomain’; Samuelson, supra n. 7, pp. 160–61.

90 Article 6(4) of the Directive sets out that: ‘Notwithstanding the legal protectionprovided for in paragraph 1, in the absence of voluntary measures taken byrightholders, including agreements between rightholders and other parties concerned,Member States shall take appropriate measures to ensure that rightholders makeavailable to the beneficiary of an exception or limitation provided for in national lawin accordance with Article 5(2)(a), (2)(c), (2)(d), (2)(e), (3)(a), (3)(b) or (3)(e) themeans of benefiting from that exception or limitation, to the extent necessary to benefitfrom that exception or limitation and where that beneficiary has legal access to theprotected work or subject-matter concerned’.

effective technological measure … prevents a person from carrying out apermitted act in relation to that work’ that person can issue a notice ofcomplaint to the Secretary of State who has available to him a number ofpossible courses of action to remedy the situation.91

However, ignoring the fact that the onus is placed upon the copyright userto ensure the owner is not using such TPMs to impinge upon otherwise lawfulactions under the legislation,92 as well as the abysmally weak nature of themechanism for addressing such complaints (with its emphasis on developingvoluntary measures between owner and user to address the problem),93 theprovision does not in any event apply to all of the permitted acts set out withinthe Copyright Designs and Patents Act (CDPA). The list of permitted acts towhich the remedy pertains is set out in Part 1 of Schedule 5A of theRegulations, and does not, for example, include fair dealing with a work forthe purpose of criticism or review, or for reporting current events. In relationto these types of permitted use the Secretary of State need do nothing at all.Moreover, even in relation to those types of permitted act for which apresumption of non-interference does exist, where the copyright work hasbeen ‘made available to the public on agreed contractual terms in such a waythat members of the public may access them from a place and at a timeindividually chosen by them’ (that is, online and on-demand), then again theSecretary of State need do nothing,94 an exception which will have increasing


91 Regulation 24, putting in place CDPA s. 296ZE(2). The Secretary of State ‘maygive to the owner of that copyright work … such directions as appear to the Secretaryof State to be requisite or expedient for the purpose of – (a) establishing whether anyvoluntary measure or agreement relevant to the copyright work the subject of thecomplaint subsists; or (b) (where it is established that there is no voluntary measure ofagreement) ensuring that the owner … makes available to the complainant the meansof carrying out the permitted act the subject of the complaint to the extent necessary toso benefit from that permitted act’; s. 296ZE(3).

92 Parallels might be drawn with the complaints procedure set out in s. 4 of theStatute of Anne 1709 for regulating the price of books – a way in which the publiccould keep in check the activities of the book trade. The section never seems to havebeen invoked and was subsequently repealed in 1739.

93 The Directive only requires Member States to act in the absence of any‘voluntary measures taken by rightholders, including agreements between rightholdersand other parties concerned’ (or in other words, the existence of an appropriatelicensing scheme); A.6(4). This is in line with the preamble to the Directive which setsout at para. 45 that the existence of the permitted acts ‘should not … prevent thedefinition of contractual relations designed to ensure fair compensation for therightholders insofar as permitted by national law’.

94 CDPA, s. 296ZE(9). A.6(4) of the Directive sets out that: ‘The provisions of thefirst and second subparagraphs shall not apply to works or other subjectmatter madeavailable to the public on agreed contractual terms in such a way that members of thepublic may access them from a place and at a time individually chosen by them’.

relevance as more and more copyright owners begin to rely upon the Internetfor delivery of their copyright content (think of the recent exponential growthof lawful music downloads from providers such as iTunes, Napster, and soon).95

The interaction between the law of copyright and the law of contract throwsup some equally problematic concerns as regards the public domain. Consider,for example, an art correspondent seeking to review a current photographyexhibition. The correspondent may well wish to draw upon certain of the moresignificant images to illustrate and accompany the review. Access to theimages is often conditional upon contractual terms that seek to circumscribethe ability of the reviewer to use the images as he or she otherwise might wish.The following clause is fairly typical in such gallery agreements: ‘The …image cannot be reproduced in any other context, format, or venue, includingthe Internet, without prior written consent from [the Gallery].’96 That is, inexchange for access to the photograph, the reviewer is required to contract outof any uses of the image he might otherwise engage in within the parametersof the copyright regime. What if, however, the reviewer wanted to critique, notthe exhibition and the place of the image within it, but simply the image itself(perhaps one month after the exhibition ended)? The provisions of the CDPA(s. 30(1)) would allow him to do so. However, decoupled from the context ofthe gallery show, the provisions of the contract securing access to the image


95 For a discussion of these various issues, see: Heide, supra n. 82; Braun, N.(2003), ‘The Interface between the Protection of Technological Measures and theExercise of Exceptions to Copyright and Related Rights: Comparing the Situation inthe United States and in the European Community’, European Intellectual PropertyReview, p. 496; Loren, supra n. 82; Dusollier, S. (2003), ‘Exceptions and technologicalmeasures in the European Copyright Directive of 2001 – an empty promise’,International Review of Industrial Property and Copyright Law, p. 62.

96 For a more specific example consider the notice which accompanied the releaseof certain images from the recent Diane Arbus exhibition at the V&A (13 October 2005– 15 January 2006): ‘The Diane Arbus image/s attached are lent for the sole purpose ofeditorial publicity related to the V&A’s Arbus exhibition. The following are therequirements/limitations regarding the reproduction of the photograph(s) by DianeArbus: 1. The image(s) may not be cropped or surprinted. 2. The image(s) may only bereproduced in print media. 3. Reproduction of each photograph must be accompaniedby the copyright notice that appears at the bottom of the photograph. 4. The photographmay only be used in connection with the press relating specifically and exclusively tothe exhibition Diane Arbus Revelations at the V&A and in no event later than 15January 2006. This photograph may NOT be reproduced for any other purpose withoutthe written permission of the Estate of Diane Arbus, LLC. 5. The digital file containingthe Arbus photograph must be destroyed following its intended use. The file may notbe stored, copied or transmitted to any third party by any means, unless related to theuses set forth in paragraph 4. Any other reproduction of transmission will be deemedcopyright infringement’.

would not. The Gallery may never have intended to impose such restrictionsupon the proposed reproduction of the image in question, however the de factoresult remains the same. This interplay between contract law and copyrightcarries with it the potential for all sorts of cultural or political censorialpractices: ‘Of course you can review the work, even criticise it … but only ifyou can afford to’; or again, ‘Of course you can review the work, even criticiseit … but only if you write for the Daily Mail’.

The previous example involved a one-to-one contract negotiation, however,as the online delivery of copyright protected works becomes increasinglycommonplace so too does the use of ever more generic click-wrap licensingagreements,97 the terms of which end-users rarely ever read (for example,should you access material on Westlaw or Lexis-Nexis (or any otherinformation database), are you legally entitled to read that material on-screenonly?, or does the licence also authorise you to print a hard copy of the work?,or save it on your computer’s hard-drive?).

There are, of course, various principles of common law98 and equity,99

which operate to limit the enforceability of certain types of contractualprovision; however, whether any of these strategies would have any relevancefor the end-user is doubtful to say the least.100 Neither does any of the currentdomestic consumer protection legislation seem to have any relevance giventhat the Unfair Contract Terms Act 1977 does not apply to copyrightcontracts,101 and that the Unfair Terms in Consumer Contracts Regulations1999 sets out that ‘the assessment of fairness of a term shall not relate … tothe definition of the main subject matter of the contract’.102 Given that the


97 The edict which accompanied Adobe’s e-book version of Alice in Wonderlandby Lewis Carroll (a work in the public domain) that ‘[t]his book cannot be read aloud’is almost too infamous to repeat here.

98 The various common law mechanisms for restricting the operation ofcontractual provisions include: duress, undue influence, restraint of trade, and publicpolicy concerns (such as provisions promoting sexual immorality, restricting thefreedom to marry, perverting the course of justice, and so on).

99 Equity will provide relief against bargains which it considers to beunconscionable.

100 Certainly when the Australian Copyright Law Review Committee consideredthis issue (within the parameters of the Australian legal system), while on the one handthey did not regard the enforceability of such contractual terms to be settled ‘as a matterof domestic law’, they did accept that such agreements were ‘prima facie enforceable’.Copyright Law Review Committee (2001) Copyright and Contract, pp. 148 and 258,available at www.ag.gov.au/agd/WWW/clrhome.nsf/AllDocs/092E76FE8AF2501CCA256C44001FFC28?OpenDocument

101 Unfair Contract Terms Act 1977, c. 50. Its scope of application is excluded fromany contract so far as it relates to the creation or transfer of a right or interest incopyright or relates to the termination of such interest or right; Sch. 1 s. 1(2)(c).

102 SI 1999/2083, reg. 6(2).

drafters of the Broadcasting Act 1996 considered it necessary to specificallyprovide that ‘[a]ny provision in an agreement is void in so far as it purports toprohibit or restrict relevant dealing with a broadcast or cable programme inany circumstances where by virtue of section 30(2) of the [CDPA] …copyright in the broadcast or cable programme is not infringed’, theenforceability of such ‘contracting out’ provisions seems all the morecertain.103 In the absence of any similar general statutory provision renderingnull and void those contractual provisions which purport to exclude or modifythe operation of (at least certain of) what are otherwise permissible acts,104

then, as is the case with TPMs, the potential for contract law to impact uponthe public domain seems equally significant.

CRITIQUES OF COPYRIGHT’S PUBLIC DOMAIN

There are, naturally, various issues that may legitimately be raised about theappropriateness or even the value of this snapshot of copyright’s publicdomain presented above. One such objection is that raised by Van Caenegem,in his article ‘The Public Domain: Scientia Nullius?’,105 that as intellectualproperty interests have been developed and defined in accordance withwestern ideologies of authorship and ownership, then similarly any concept ofthe public domain which operates in relation to those intellectual properties,may function to justify a misappropriation, or dispossession, of traditionalknowledge (whether literary, artistic, technological and so on). In his words, awestern-modelled notion of the public domain ‘may inadvertently justify thedenial of the otherwise legitimate claims of indigenous peoples to controlintangibles’.106 The point is well taken, and Van Caenegem is certainly right in


103 Broadcasting Act 1996, c. 55, s. 137. See also CDPA ss 50A and 50B, whichsafeguard a lawful copyright user’s right to make a back-up copy of a computerprogram, as well as decompiling that computer program, under certain circumstances,regardless of any condition of agreement purporting to restrict his ability to do so.These provisions were introduced into the CDPA as a result of the implementation ofthe European Software Directive 91/250/EEC, A.5, 6 and 9.

104 Indeed, this is exactly what the Australian Copyright Law Review Committeehave recommended – that Australia’s copyright legislation be amended to ensure thatany agreement ‘that excludes or modifies, or has the effect of excluding or modifying,the operation of [the permitted acts], has no effect’; Copyright Law ReviewCommittee, supra n. 100, p. 274.

105 Van Caenegem, supra n. 11. See also Coombe, Rosemary J. (2002–03), ‘Fear,Hope and Longing for the Future of Authorship and a Revitalized Public Domain inGlobal Regimes of Intellectual Property’, DePaul Law Review, p. 1171.

106 Van Caenegem, supra n. 11, p. 325. He writes: ‘To coin a phrase, the publicdomain is the scientia nullius of intellectual property law; just as the now discredited

that the public domain, described herein, is a historically, geographically,culturally, socially and politically contingent concept, as are all intellectualproperties. However, this does not mean that the concept of the public domain,albeit contingent, is not of value. Again, recall the period immediately prior tothe passing of the Statute of Anne – a period when anyone was free to use,without the need for permission, any literary work of the time. Absent anyform of legal regulation, all works lie within the public domain (whetherdisclosed or not). It is the existence of the statutory protections which definethat which is removed from the original state of the public domain into theprivate domain of copyright protection by locating the exclusive control ofcertain types of use in any given individual albeit for a certain period of time.It could equally well ascribe such controls to any given community,indigenous or not, for whatever period of time as is considered appropriate,should the political will to do so exist.

A related issue, concerns not the way in which proselytising the virtues ofthe public domain might operate to occlude the interests of indigenouscommunities, but rather that it may entrench the status quo of intellectualproperties as they currently exist, regardless of significant differences in theintellectual property interests and needs of developed, developing and leastdeveloped countries. In 2002, for example, the UK Commission onIntellectual Property Rights, established by Clare Short (then Secretary ofState for Overseas Development), made a number of recommendationsconcerning the manner in which intellectual properties might play a moresubstantial role in more effectively addressing the international community’saspiration to reduce poverty and hunger, improve health and education, andfacilitate sustained economic growth and development throughout thedeveloping world.107 This, however, is not a question of the public domain per


theory of terra nullius was really a theory justifying unwarranted dispossession of land,the theory of scientia nullius can be conceived as a justification for the dispossessionof knowledge’; ibid., p. 329. In a similar vein, Coombe writes that ‘[a] cultural publicdomain framed entirely by American legal principles, without consideration of thelegal circumstances in which most of the world’s peoples find themselves runs thedanger of appearing to be both self-serving and imperialist. To the extent that we arecommitted to the cultural public domain, we need to consider a wider range ofactivities and practices than those that copyright law traditionally recognized as acts ofauthorship and those most characteristic of Western creators. A vibrant cultural publicdomain will also requires consideration of means to maintain cultural diversity andongoing dialogue across and between cultural traditions’; Coombe, supra n. 105, p. 1181.

107 See in general the Commission on Intellectual Property Rights (2002),Integrating Intellectual Property Rights and Development Policy, London: CIPR. Inrelation to copyright see in particular ‘Chapter 5: Copyright, Software and the Internet’,ibid.

se, but of what is considered to be in the public interest as regards thosedeveloping and least developed countries, and as a consequence whether thepublic domain should mean the same thing for everyone in equal measure.

In point of fact, different public domains already exist for different interestgroups. Within the UK, that which librarians can do with copyright protectedworks is different from that which teachers can do, or that which thoseworking in public administration can do, and so on.108 There is no reason whythe boundary between that which is copyright protected and that which ispublic domain should not vary for other such interested parties, whether theyare represented by the Royal National Institute for the Blind,109 or by thegovernment of a less-developed country. For example, additional cost-neutralpermissions might well be negotiated in an attempt to redress existingimbalances and inequities as to the manner in which the internationalintellectual property regime impacts differentially upon various nation states.In reality, these would amount to no more than another set of ‘acts permittedby copyright’ (albeit within an international context), and again, they aresimply matters of political will and institutional fact.

That the nature of the public domain may differ depending upon whichinterested party wishes to make use of any given work is not, in itself,problematic. It does, however, throw into sharp relief the fact that should wetry and detail the nature and extent of the public domain in any given nationaljurisdiction (never mind within a regional or an international context) then theexercise is bound to fail. That is, not only do permitted acts vary acrossdifferent interest groups, as well as across jurisdictions, but as there cannotexist any bright line test for determining that which is mere idea as opposed toan expression of an idea (or that which is insubstantial, fair, non-commercial,immoral, or in the public interest, and so on), it will always remain impossibleto determine with accuracy, at any given time, that which is public domain andthat which is not. However, that it is impossible to accurately articulate thepublic domain in this way does not mean that there is no value in accuratelyconceptualising the legal parameters of the public domain. It is to beremembered that the private domain of copyright and copyright’s publicdomain necessarily share the same boundary – that which is not copyrightprotected is public domain and vice versa – and that the actual limits andextent of that which is copyright protected is no more readily identifiable andsubject to coherent and complete articulation than that which is public domain.The boundary between the two is, and always will be, inherently unstable andunknowable, but that it is unstable and unknowable does not operate toconceptually discredit either phenomenon.


108 Supra n. 46–62, and accompanying text.109 Copyright (Visually Impaired Persons) Act 2002, c. 33.

What is perhaps more important is that acknowledging that the publicdomain can never be accurately captured functions to remind us that copyrightis an extraordinary type of property in the sense that its boundaries are equallyimprecise. If, indeed, the public domain is ‘an undifferentiated blob ofunnamed size and dimensions’, ‘a vast and diverse assortment of contents’, ifit is murky and unknowable, then so to is the private domain that is copyright.Many academics have of late commented upon an unsettling and unwarranted‘reification’ of copyright – the tendency to think of copyright as equivalent toany other ordinary (tangible) property.

In 1999, Benkler neatly captured this sentiment in remarking upon the wayin which copyrights, patents, et al, have within the last 50 years becomesubsumed within the umbrella term of ‘intellectual property’,110 which‘semantic umbrella has infused these laws with the conceptual attitudes wehave toward property in physical things’.111 Over 30 years earlier, Ben Kaplanwrote in the following terms:

I find one temptation easy to resist, and that is to sum up copyright with just theword “property” or “personality” or any one of the other essences to which scholars,foreign and domestic, have been trying to reduce the subject since before the timeof Mansfield. To say that copyright is “property”, although a fundamentallyunhistorical statement, would not be baldly misdescriptive if one were prepared toacknowledge that there is property and property, with few if any legal consequencesextending uniformly to all species and that in practice the lively questions are likelyto be whether certain consequences ought to attach to a given piece of so-calledproperty in given circumstances.112

Kaplan continued: ‘Copyright law wants to give any necessary support andencouragement to the creation and dissemination of fresh signals or messagesto stir human intelligence and sensibilities’.113

To accept that copyright as a phenomenon is, in all practical terms, asnebulous as the public domain, is to remind ourselves that copyright is notequivalent to other forms of property, and to prompt us to guard against thatotherwise beguiling, if problematic, process of assimilation with the tangible.This, perhaps, represents one of the greatest benefits of contemplating the


110 The consistent use of the term ‘intellectual property’ can perhaps be traced tothe publication of Plant, S.A. (1953), The New Commerce in Ideas and IntellectualProperty, London: Athlone Press.

111 Benkler, supra n. 17, p. 355. In a similar vein, see also: Lemley, M.A. (1997),‘Romantic Authorship and the Rhetoric of Property’, Texas Law Review, p. 873; andVaver, D. (2000), ‘Intellectual Property: The State of the Art’, Law Quarterly Review,p. 621.

112 Kaplan, B. (1967), An Unhurried View of Copyright, New York, US andLondon, UK: Columbia University Press, p. 74.

113 Ibid.

nature and dimensions of the public domain – not what it tells us about thepublic domain itself, but what it reminds us as regards copyright.

CONCLUSION

The parameters and aims of this particular chapter have been modest indeed.At no point have I attempted to set out some economically predeterminedperfect balance between that which is copyright protected and that whichpublic domain (I leave that for the legal economists), or even to comment uponthe recent shifts in legal policy and legislative fact that have altered whatbalance exists between the two phenomena (I leave that for another time).Rather, in a very simplistic fashion I have sought to do little more than tointroduce the reader to the institution of copyright first and foremost throughthe prism of the public domain, and in so doing to provide some useful, ifbasic, conceptual distinctions for articulating the nature and significance of therelationship between the two.114

Litman has observed that ‘[a]lthough the public domain is implicit in allcommentary on intellectual property, it rarely takes center stage’,115 and she iscorrect. Part of the reason for this state of affairs no doubt lies in the distinctionwhich Mark Rose has drawn between ‘the fact of the public domain’ and ‘thediscourse of the public domain’. Drawing upon the copyright debates of themid-eighteenth century, Rose argues that while those debates did give rise toa robust rhetoric of copyright as property right, they failed to produce ‘a legaldiscourse of public rights strong enough to balance the discourse of propertyrights’,116 a position which was sustained throughout the nineteenth centuryand which, by and large, still remains true today. Open any standard treatiseconcerning copyright in particular, or intellectual property in general, and youwill find little if any commentary upon the public domain (in the sense inwhich it has been discussed within this chapter).

However, thinking about copyright within the context of the public domainhas considerable value, not only in what it reveals about the manner in whichthe public domain facilitates the operation of the copyright regime,117 but alsoin that it provides a fruitful opportunity for exploring the fundamental nature


114 Including those significant forces external to the copyright regime which exhibitconsiderable potential to impact detrimentally upon that public domain.

115 Litman, supra n. 8, p. 977.116 Rose, supra n. 27, p. 86. He continues: ‘[A]s we attempt to argue for the value

of the public domain, we need to understand that we are fashioning a rhetoric as wellas a politics of the public domain’; ibid., p. 87.

117 Supra n. 41, and accompanying text; see in particular Litman, supra n. 8.

of copyright as a constantly evolving, artificial and institutional construct.That is, in better understanding the nature and relevance of the public domainwe begin to better understand the nature of copyright including both its limitsand its limitations.


5. Theory II: what is copyright? … or,the case for intellectual propertyfreedoms and privileges (and in that order)

ON COPYRIGHT AND INTELLECTUAL PROPERTYRIGHTS

The Charter of the Fundamental Rights of the European Union (2000)(Charter) represents a curious if significant landmark in the story ofintellectual properties such as copyright. Article 17.1 sets out the ‘Right toProperty’.1 By comparison with Article 1 of the First Protocol to the EuropeanConvention on Human Rights,2 the provision concerning property within theCharter is considerably more robust. For one thing it is referred to as a right(whatever that may mean), whereas the Convention addresses the protectionof property. For another, whereas the First Protocol measure confirms that noone shall be deprived of their possessions ‘except in the public interest andsubject to the conditions provided for by law’, the Charter adds that thedeprivation of an individual’s possessions will also be accompanied by ‘fair

135

1 Article 17.1 sets out that:

Everyone has the right to own, use, dispose of and bequeath his or her lawfullyacquired possessions. No one may be deprived of his or her possessions, except inthe cases and under the conditions provided for by law, subject to fair compensationbeing paid in good time for their loss. The use of property may be regulated by lawin so far as is necessary for the general interest.2 Article 1 of the First Protocol sets out that:

Every natural or legal person is entitled to the peaceful enjoyment of his possessions.No one shall be deprived of his possessions except in the public interest and subjectto the conditions provided for by law and by the general principles of internationallaw.

The preceding provisions shall not, however, in any way impair the right of a Stateto enforce such laws as it deems necessary to control the use of property inaccordance with the general interest or to secure the payment of taxes or othercontributions or penalties.

compensation being paid in good time’. More important in the present contextis the fact that the Charter also states in Article 17.2 that ‘Intellectual Propertyshall be protected’. Article 17.2 says nothing more – simply those fiveremarkable words.3 This is the first time that any international human rightsdocument has made explicit reference to the protection of intellectual property.Certainly other instruments have made reference to the protection of anindividual’s material interests in cultural or scientific productions. Forexample, Article 27.2 of the Universal Declaration of Human Rights sets outthat ‘[e]veryone has the right to the protection of the moral and materialinterests resulting from any scientific, literary or artistic production of whichhe is an author’.4 Similarly, Article 15.1 of the International Covenant onEconomic, Social and Cultural Rights provides:

The States Parties to the present Covenant recognize the right of everyone: (a) totake part in cultural life (b) to enjoy the benefits of scientific progress and itsapplications (c) to benefit from the protection of the moral and material interestsresulting from any scientific, literary or artistic production of which he is theauthor.5

To date, however, the Charter is the first such document to make reference tointellectual property qua intellectual property.6 If they didn’t before, the


3 In relation to Article 17 the Updated Explanations relating to the text of theCharter of Fundamental Rights (Conv 828/1/03) sets out as follows:

This Article is based on Article 1 of the Protocol to the ECHR … This is afundamental right common to all national constitutions. It has been recognised onnumerous occasions by the case law of the Court of Justice, initially in the Hauerjudgment (13 December 1979, ECR [1979] 3727). The wording has been updatedbut, in accordance with Article 52(3), the meaning and scope of the right are thesame as those of the right guaranteed by the ECHR and the limitations may notexceed those provided for there.

Protection of intellectual property, one aspect of the right of property, is explicitlymentioned in paragraph 2 because of its growing importance and Communitysecondary legislation. Intellectual property covers not only literary and artisticproperty but also inter alia patent and trademark rights and associated rights. Theguarantees laid down in paragraph 1 shall apply as appropriate to intellectualproperty.4 A.27.1 states that ‘[e]veryone has the right to freely participate in the cultural life

of the community, to enjoy the arts and to share in scientific advancement and itsbenefits’.

5 Omitting any specific reference to an individuals ‘material interests’ the ArabCharter on Human Rights sets out that ‘[e]veryone has the right to participate incultural life, as well as enjoy literary and artistic works and to be given opportunitiesto develop his artistic, intellectual and creative talents’; A.36.

6 Article 13 of the Charter also sets out that ‘[t]he arts and scientific research shallbe free of constraint. Academic freedom shall be respected’.

protection of intellectual properties such as copyright would now appear toconstitute a fundamental human right.7

The year after the content of the Charter was finalised, the UN Committeeon Economic, Social and Cultural Rights issued a general statementconcerning ‘Human Rights and Intellectual Property Issues’, only the secondstatement ever issued by that Committee. In its statement the Committeeacknowledged ‘the far-reaching importance and complexity of integratinghuman rights into the development of intellectual property regimes’, anddrawing a clear distinction between human rights on the one hand and the‘legal rights recognized in intellectual property systems’ on the other, theysuggested that intellectual properties should be understood as a purelyinstrumental phenomenon, a social product with a social function, ‘a means bywhich States seek to provide incentives for inventiveness and creativity fromwhich society benefits’. The difference in approach between the EuropeanCharter and the UN Committee’s general statement could not be more striking– the one espousing intellectual property as fundamental right, the othercategorising it as no more than a useful means to a social end. What then isintellectual property? What is it that we think of when we talk aboutintellectual property in general?, or of copyrights, patents or trade marks inparticular?

In the 50 or so years that policy makers, lawyers, judges and academicshave been discussing intellectual property (as intellectual property) there hasnot yet developed any consensus as to its fundamental nature or justification.Of course, the nature of intellectual property as property, and the justificationsas to the existence of intellectual property constitute two different (albeitrelated) enquiries. The first prompts us to consider what we mean in speakingof intellectual property. The latter concerns the whys and the wherefores ofintellectual property – why have (or tolerate) it at all?, what is its purpose?, isit a good or a bad thing?, and so on. In the context of copyright much writingin this regard has tended to focus upon the latter, at the expense of the former;that is, the literature in the main has tended to ask why do we have copyright,rather than what is copyright?

Turning in brief to the first of these questions, the theoretical justificationsinvoked in support of copyright are many and varied. The context and contentof the first three chapters of this book concerned the movement of the debatewithin eighteenth- and nineteenth-century Britain as to whether copyright

Theory II: what is copyright? 137

7 On the legal standing of the Charter and its relationship to the ECHR, as well asits relevance for the European Court of Justice, see Krüger, H.C. (2004), ‘TheEuropean Charter of Fundamental Rights and the European Convention on HumanRights: An Overview’ in Peers, S. and Ward, A., The European Union Charter ofFundamental Rights, Oxford: Hart Publishing, pp. xvii–xxvii.

existed at common law or was purely a creation of the legislature. Broadlyspeaking, the various proponents in that debate might be described as havingadopted a natural (or moral) rights approach on the one hand, as against aninstrumentalist (or consequentialist) approach on the other; we might easilyplace Mansfield, Eyre and Copinger in the former camp, and Yates, Broughamand Scrutton in the latter. To restrict our investigation of the variousjustifications for copyright to this historical period and within this particularjurisdiction, however, is to overlook other theoretical foundations upon whicha system of copyright protection might be based. For example, whenMansfield et al. expounded upon the natural rights of the author to the benefitsof his work, they were drawing heavily upon the political theory of JohnLocke and the notions of occupancy and labour as the foundation for aproperty system; in Mansfield’s words: ‘it is just, that an Author should reapthe pecuniary Profits of his own Ingenuity and Labour’.8 William Blackstone,writing around the same time, put the argument in this way: ‘When a man bythe exertion of his rational powers has produced an original work as he pleases… any attempt to take it from him, or vary the disposition he has made of it,is an invasion of his right of property’.9 This, of course, is a peculiarly Anglo-centric approach to the natural rights thesis.

Under the general rubric of a natural rights approach we might equally wellturn to the moral rights basis favoured in various civil law jurisdictions; thatis, that an intellectual property such as copyright exists in accordance with theFrench conceit of droit d’auteur or as an outgrowth of Kantian and Hegeliannotions of personality.10 In a similar vein, the approach of those who adheredto a more instrumentalist approach, such as Brougham and Scrutton, might becategorised as broadly utilitarian in nature. Again though, one might equallywell develop arguments under the instrumentalist umbrella based, not uponutilitarian principles, but upon grounds of economic efficiency,11 or ofindividual autonomy, freedom and democratic participation.12 The merits anddemerits of these various competing (and sometimes complementary)theoretical underpinnings constitutes its own significant body of literature


8 Millar v. Taylor (1768) 4 Burr 2303, p. 2398 (Millar).9 Blackstone W. (1766), Commentaries on the Laws of England, vol. 2, reprinted

in (1979), A Facsimile of the First Edition of 1765–1769, Chicago, US and London,UK: University of Chicago Press, pp. 405–6.

10 In general see Davies G. (2002), Copyright and the Public Interest, 2nd edn,London: Sweet & Maxwell.

11 Towse, R. and Holzhauer, R. (eds) (2002), The Economics of IntellectualProperty, vols. I–IV, Cheltenham, UK and Northampton, US: Edward ElgarPublishing.

12 See for example Netanel, N. (1996), ‘Copyright and a Democratic CivilSociety’, Yale Law Journal, p. 283.

which we will not dwell upon at length here. It is suffice to note that thesevarious justifications exist, and as arguments they are historically,geographically and politically contingent in themselves. However, again, toreturn to our main concern: when we speak of copyright what do we mean?

ON COPYRIGHT AS PROPERTY

When Jeremy Waldron produced his seminal text on The Right to PrivateProperty he chose to limit his exploration to the individual’s right to materialresources, ‘resources like minerals, forests, water, land, as well asmanufactured objects of all sorts’;13 as to such things as ideas, inventions,reputations, or copyright, he suggested the postponement of ‘the analysis ofconcepts and arguments about incorporeal property … until we have clearconcepts of property and private property for material objects’.14

Waldron gives us our first point of departure in this regard: before we canunderstand what it means to speak of intellectual property in general orcopyright in particular we must turn first to the equally fundamental (andequally contested) question: what is property? What is property, and what doesit mean to speak of property rights? The legal and philosophical literature onthis question is extensive to say the least, and this is not the place forembarking upon an equally extensive review of the same. Instead, we can takea cue from Underkuffler’s recent work on The Idea of Property and her usefulsynopsis that, broadly speaking, literature in this area falls into three maingroups:

1. that property is simply ‘things’ (the ‘layman’s view’);

2. that property is best understood as a constellation of claim-rights,privileges, powers and immunities (the Hohfeldian analysis);15

3. that property involves legal relations between persons with respect tothings (the ‘rights plus’ approach).16


13 Waldron, J. (1988), The Right to Private Property, Oxford: Oxford UniversityPress, p. 33.

14 Ibid., p. 35. Although he does not consider intellectual property in The Right toPrivate Property he does return to the issue at a later date: Waldron, J. (1993), ‘FromAuthor to Copiers: Individual Rights and Social Values in Intellectual Property’,Chicago-Kent Law Review, p. 841.

15 For an excellent analysis of copyright as property within the Hohfeldian modelsee Waldron, ibid.

16 Underkuffler, L.S. (2003), The Idea of Property: Its Meaning and Power,Oxford: Oxford University Press, pp. 11-15.

One of the latest and most provocative treatments falling within this thirdtradition, that is, the property as rights in and to things approach, is JamesPenner’s work The Idea of Property in Law.17 Penner’s analysis, although notwithout its critics, provides a useful starting point for a fuller exploration ofintellectual property in the round. His theory of property runs as follows. Inthe first place, he considers, a right in a thing exists when a duty of non-interference is imposed in law upon others in relation to that thing. The natureof this right, he continues, can be understood in terms of the familiar conceptof exclusion – that the right holder can exclusively determine the use of thething. The use of a thing, for Penner, provides a justification for having aproperty right, whereas it is the notion of exclusion which provides the formalessence of the right. This exclusion thesis characterises property as a‘protected sphere of indefinite and undefined activity in which the owner maydo anything with the thing that he owns’.18 The duty imposed upon others inthis context is the duty to exclude oneself from the property in question – aduty in rem not to interfere.

The exclusion thesis however provides only one half of the equation whenresolving the nature of a property right. On its own it does not answer thequestion as to what things should be treated as property. For example, theargument goes, one can obviously exclude another from interfering with one’spersonality, but that does not mean that one’s personality should be treated asproperty; that is, the existence of an ability to exclude does not of itself implythat a property exists. The second half of the equation is supplied by the factthat tied to this idea of exclusion is the notion of alienability. For Penner,having a property right in a thing must include the ability to abandon, to share,to licence, and to give that thing away in its entirety; that is, a property rightmust not just be contingently ours, but that it might just as well be someoneelse’s.19 This notion lies at the heart of his separability thesis which, combinedwith the exclusion thesis, provides the foundation for Penner’s theory ofproperty.20

Penner also goes on to explain why certain intangible constructs, such asshares and debts, are not precluded from his general theory of property. Suchchoses in action, he explains ‘are rights in respect of the property of other legalowners which the law is happy to allow their holders to treat as ‘things’ in their


17 Penner, J. (1997), The Idea of Property in Law, Oxford: Oxford University Press.18 Ibid., p. 72.19 Supra n. 17, p. 112.20 In determining the ‘thinghood’ of objects of property Penner’s separability thesis

contrasts those things which lack personality (such as a tangible object or an intangibledebt) from those things which are bound up in personality-rich relationships with otherpeople and suggests that only the former should be considered to be property; ibid., pp. 129–32.

own right’.21 While Penner acknowledges that they are technically rights inpersonam (that is the right to require a certain individual to perform a certainact – in this case, the transfer of money), nevertheless it is the impersonalityof the relationship between the two parties, which facilitates the application ofthe criterion of separability to such ‘things’. By contrast with other types ofrelationship, for example, a contract of employment, which are personality-rich,22 there are certain relationships in personam, which, as a result of their‘personality poverty’, can otherwise be regarded as property rights. What thenof intellectual properties? How does Penner handle these ‘things’?

He acknowledges, quite correctly, that intellectual properties do not fiteasily within his classification of property. On the one hand, they are akin tochoses in action, in that they are abstract legal rights with no direct connectionto any particular thing; that is, they are not rights in rem. On the other hand,neither do they represent a claim to receive some share or amount of another’spre-existing property, as does a chose in action. Further, while they are notrights in rem, they do however operate like rights in rem in imposing a dutyof non-interference on all subjects within the legal system.23 This duty of non-interference does not, of course, pertain to material objects, but rather to anoriginal expression, a novel and inventive idea, or a well-known mark.

In short, for Penner, intellectual properties are not property rights per se;rather they are ‘rights directly to a practice of exclusion … correlating toduties in rem’. They are not property, but rather must be considered to beinstitutional monopolies created by the state; things akin to choses in actionthat nevertheless function like rights in rem.24 That is, they are neither more


21 Ibid., pp. 129–30.22 That is, where ‘the quality of the personal performances of the parties’ provides

‘the essence of the legal relationship itself, and thus of the rights and duties it defines’;supra n. 17, p. 130.

23 By contrast, rights in personam impose a duty upon specific individuals only,and not the world at large.

24 Penner rightly observes that ‘[w]hatever rights the artist has, whenever we startspeaking of property rights in artistic works things begin to lose sense’. The differencesbetween that which we traditionally conceive of as property, and intellectual property,is also evident in the range of uses which an intellectual property rights holder can puthis property – by contrast with a book, or a parcel of land, wherein the uses are limitedonly by the imagination of its owner, intellectual property rights can only be exercisedin those manners described by law. That is, the uses to which intellectual property canbe put are of a different order to the uses to which tangible property (that is ‘things’)can be put.

Again, it is useful to keep in mind that we are not discussing whether or why the stateshould create such monopolies. Neither are we concerned with the legitimacy of thestate’s actions in so doing: Cahir, J. (2005), ‘The Moral Preference for DRM OrderedMarkets in the Digitally Networked Environment’, in Macmillan F. (ed.), NewDirections in Copyright Law, vol. I, Cheltenham, UK and Northampton, US: Edward

nor less than a monopoly granted by the state in an abstract object imposingan obligation of non-interference upon all legal subjects within that state, aconclusion which precludes any adherence to a coherent natural rights thesisof copyright.25

In this respect, Penner’s observations on intellectual properties are in linewith those of the UN Committee on Economic, Social and Cultural Rights, ofNeil MacCormick,26 Peter Drahos,27 and other contemporary academics whocan be described as adhering to the instrumentalist school of intellectualproperty thought.28

However, this is not (primarily) the reason for bringing Penner’s analysis tothe fore. As we saw with the development and ultimate conclusion of thehistorical debate as to the existence or not of copyright at common law (inChapter 3), the position adopted by Brougham and others was to be subvertedand then obscured in the way in which the debate was subsequently recountedin the dominant texts of the late nineteenth century. Similarly, we can identifya comparable pathology in which Penner himself subverts his own conclusionsas to intellectual property. Consider his following assertion:

While patents are not property rights in ideas, nor copyrights property rights inexpressions, nor again trade marks property rights in symbols or words, in generalit does no harm to speak of rights in ideas, or in manuscripts,[29]or in marks, anymore than it does to refer to one’s rights in one’s labour.30


Elgar Publishing, pp. 24–53. The enquiry here is not about why we should or shouldnot tolerate intellectual property, but what we mean in speaking of intellectual property.

25 Moreover, as we have seen in earlier chapters, they are observations which havea strong measure of historical resonance within the UK.

26 MacCormick, N. (2002), ‘On the Very Idea of Intellectual Property: an Essayaccording to the Institutional Theory of Law’, Intellectual Property Quarterly, p. 227.

27 Drahos, P. (1999), ‘Intellectual Property and Human Rights’, IntellectualProperty Quarterly, p. 349.

28 The reader may no doubt suspect something ‘Copinger-esque’ in my relianceupon Penner in this regard; he is of course only one of many writers that can bedescribed as falling within Underkuffler’s third category of property rights theorists, andhe is not without his critics (indeed Underkuffler herself would not agree with hiscommentary upon intellectual properties). And yet, the prisms of ‘excludability’ and‘separability’, which form the basis of his thesis, appear, to me at least, to be eminentlyuseful concepts through which to explore and understand the nature of both property andintellectual property; and certainly they are concepts which provided a focus for muchof the mid-eighteenth-century debate concerning copyright in the run up to the decisionsof Millar and Donaldson v. Becket (1774) 4 Burr 2408 (Donaldson). In general seeDeazley, R. (2004), On the Origin of the Right to Copy: Charting the Movement ofCopyright Law in Eighteenth-Century Britain 1695–1775, Oxford: Hart Publishing.

29 One presumes that Penner actually means rights in an original expression ratherthan rights in a manuscript; again however this slip illustrates the ease with which it ispossible to conflate the tangible with the intangible, the manuscript and the text.

30 Penner, supra n. 17, p. 119 (emphasis added).

That is: intellectual properties are not properly property rights, they aremonopoly grants, but for the sake of convenience let us refer to them asproperty rights; after all, it does no harm. In this however I would suggest thatPenner is wrong: to elide the different concepts of receiving and holding amonopoly in an intangible and abstract object with the notion that thatintangible abstract object is property can and does cause considerable harm.

ON COPYRIGHT’S TRAJECTORY, LANGUAGE AND DISCOURSE

Why call a monopoly granted by the state a property right? Why not call it amonopoly or indeed a privilege? One answer might be found in thecorrespondence between John Freke, a barrister and close friend of EdwardClarke (MP for Taunton), and John Locke discussing the progress of a Bill forthe Better Regulating of Printing and Printing Presses through the House ofCommons in March 1695. The Bill, which Clarke had been charged with thetask of preparing, was brought before the House in anticipation of theimminent lapse of the Licensing Act 1662 in May of that same year. It failedfor a number of reasons, although uppermost was the fact that it did notprovide any security for the book trade – that is, the proposed legislation hadomitted to afford the existing publishers and booksellers any exclusive rightsof printing and selling books, as had been the case under the terms of theLicensing Act 1662.31 There was much talk of the need to provide thebooksellers’ with a property in books, and of that discussion, Freke wrote toLocke as follows:

[W]hen they are asked what they mean [by property] they can none of them giveany good answer and if they would all speak out they (every party) mean differently.The Court means that it would be allowed the power of granting patents. TheStationers mean that they would have the regulation of property and disposal of itby making their Register the standard of it … The Bishops mean I know not whatbut they Chime in with the other two because they think property a very popularword, which Licensor is not.32


31 For accounts of the prehistory of the Statute of Anne 1709, 8 Anne, c. 19, see:Patterson, L.R. (1968), Copyright in Historical Perspective, Nashville: VanderbiltUniversity Press; Ransom, H. (1956), The First Copyright Statute, Austin: Universityof Texas; Rose, M. (1993), Authors and Owners: The Invention of Copyright, London:Harvard University Press; Loewenstein, J. (2002), The Author’s Due: Printing and thePrehistory of Copyright, London: University of Chicago Press.

32 John Freke and Edward Clarke to Locke, 14 March 1695, in De Beer, E.S. (ed.)(1978), The Correspondence of John Locke, in Eight Volumes, 5, Oxford: ClarendonPress, p. 291.

One of the ironies of the orthodox conception of copyright within the UK is that John

‘Property’ certainly is a popular word, which ‘licensor’ is not; the same mightbe said of ‘monopoly’. Certainly the World Organisation for Monopolies inIntangible Goods (WOMIG) has less caché than the World IntellectualProperty Organisation (WIPO). Perhaps the founding fathers of WIPO realisedas much when they launched the process of inculcating a now almostubiquitous international discourse on all aspects of intellectual property rights. And yet, the phrase ‘intellectual property rights’ (or IPRs) is a usefuland catchy umbrella term with which to capture an increasingly diverse andrapidly changing area of law; so, as Penner suggests, wherein lies the harm?

The harm lies in the creeping reification of the intellectual property domainwhich such language facilitates, as well as the dangerous and damagingconceptual closure that is endemic within that process. Let us briefly considerthe historical trajectory of copyright. At the beginning of the eighteenthcentury, copyright was a comparatively uncomplicated phenomenon. It existedin written works alone and operated to prevent others from reprinting,importing, selling, publishing or exposing for sale unauthorised copies of the work.33 Any use of the copyright work which did not fall squarely withinthe legislation itself, for example, publishing a translation or a fair abridge-ment of a text,34 were not considered to infringe the rights of the copyrightowner.

Over the next two hundred years, the protection of the legislature wasextended to enable the creators (and purchasers) of other cultural artefacts,such as engravings, works of sculpture and dramatic works, to commerciallyexploit their works, free from market interference.35 At the same time,however, the courts developed a complementary jurisprudence concerning the


Locke himself did not consider that his theory of property extended to intellectualproperties such as copyrights and patents. In response to this letter from Freke, Lockesuggested that Parliament might secure the ‘Author’s property in his copy’ by eitherincluding some provision that would allow a right to reprint those works which borethe name of the author or publisher upon them, or by issuing a ‘receit’ upon delivery ofthree copies of any printed work for the use of the King’s library and the twouniversities which would ‘vest a priviledg in the Author of the said book his executorsadministrators and assignes of solely reprinting and publishing the said book for ____years from the first edition thereof’; ibid., pp. 795–96 (emphasis added).

33 Statute of Anne 1709, s. 1.34 Burnet v. Chetwood (1721) 2 Mer 441; Gyles v. Wilcox (1741) 2 Atk 141.35 See for example: Engraving Copyright Act 1735, 8 Geo. 2, c. 13; Engraving

Copyright Act 1767, 7 Geo. 3, c. 38; Prints Copyright Act 1776, 17 Geo. 3, c. 57;Sculpture Copyright Act 1814, 54 Geo. 3, c. 56; Dramatic Copyright Act 1833, 3 & 4Will. 4, c. 15; Lectures Copyright Act 1835, 5 & 6 Will. 4, c. 65; Copyright Act 1842,5 & 6 Vict., c. 45; Fine Arts Copyright Act 1862, Vict., c. 68; Copyright (MusicalCompositions) Act 1882, 45 & 46 Vict. c. 40; Musical Copyright Act 1906, 6 Edw. 7,c. 36.

fair use of such works without the need for prior authorisation from, orpayment to, the copyright owner.36

By the start of the twentieth century, with the need to adhere to internationalobligations concerning copyright provision in the guise of the BerneConvention,37 as well as the appreciation that the existing law on copyrightwas ‘wholly destitute of any sort of arrangement, incomplete, often obscure,and even when it [was] intelligible upon long study, it [was] in many parts soill-expressed that no one who does not give such study to it can expect tounderstand it’,38 it was considered appropriate to consolidate and refine thelaw of copyright within one legislative provision: the Copyright Act 1911.39

When the 1911 Act was passed, the dimensions and make-up of the law of copyright were far removed from the manner in which the law was first conceived in 1710. The scope of protected works was now larger,incorporating ‘every original literary, dramatic, musical and artistic work’,40

as well as ‘records, perforated rolls, and other contrivances by means of which sounds may be mechanically produced’.41 The term of protection had also increased considerably, now operating to protect a work for thelifetime of the author plus a 50-year post-mortem period.42 Moreover, theprotection of the legislation had been expanded to prevent the reproduc-tion, publication and public performance of the copyright work (or anytranslation of the work),43 as well as granting certain copyright owners rights concerning the adaptation and recording of their work.44 In short,


36 See for example Burrell, R. (2001), ‘Reigning in Copyright Law: Is fair use theanswer?’, Intellectual Property Quarterly, p. 361.

37 On the Berne Convention in general see Ricketson, S. (1987), Berne Conventionfor the Protection of Literary and Artistic Works 1886–1987, London: Centre forCommercial Law Queen Mary College/Kluwer.

38 Royal Commission on Copyright (1878), Report of the Commissioners, London:HMSO, p. vii.

39 Copyright Act 1911, 1 & 2 Geo. 5, c. 46. The copyright regime was at this timehowever under review. The Gregory Committee had been established to investigateinto the state of the law and had issued its Report in 1952 (Cmd 8662).

40 Section 1; for the definition of both dramatic and artistic works see s. 35(1).41 Section 19(1).42 Section 3; records and other mechanical recordings were protected for ‘fifty

years from the making of the original plate from which the contrivance was derived’(s. 19(1)). As for photographic works, see infra n. 45.

43 Section 1(2)(a).44 For example: the owner of the copyright in a dramatic work had the right to

convert it into a novel or non-dramatic work; the owner of the copyright in a novel orother non-dramatic work or of an artistic work (but not a musical work) was grantedthe right to convert it into a dramatic work; the owner of the copyright in a literary,dramatic or musical work (but not an artistic work) was granted the right to record andfilm their work; see s. 1(2)(b)(c)(d) and s. 2(2)(3).

the rights of copyright owners had been comprehensively enlarged andstrengthened.45

There were, however, various features to the then current legislative regimewhich sought to safeguard the interests of the individual user of a work inparticular, as well as the public in general. The legislation allowed the use ofinsubstantial amounts of copyright works,46 as well as attempting to codify thevarious incidents of fair use which had been developed by the judiciarythroughout the eighteenth and nineteenth centuries.47 The most significant ofthese were set out in s. 2(1)(i) which provided that ‘any fair dealing with anywork for the purposes of private study, research, criticism, review ornewspaper summary’ would not constitute an infringement of the copyright inthe original work.48 In addition, following the death of the author of anyliterary, dramatic or musical work which had previously been published orperformed in public, a compulsory licence could be obtained, from the JudicialCommittee of the Privy Council, for the publication or performance of anysuch work, should the owner of the copyright in the work refuse to grant one.49

Significantly the legislation also provided that, should anyone wish toreproduce and sell any published work during the last 25 years of the post-mortem period of copyright protection, they were free to do so provided they


45 Photographs proved to be the exception in this regard. Under the Copyright Act1862 the ‘author of any painting, drawing and photograph’ received copyrightprotection in the work for the lifetime of the author plus an additional 7 years after hisdeath. Under the 1911 Act however photographs, unlike other artistic works, were tobe protected for 50 years only ‘from the making of the original negative from whichthe photograph was derived’, and the ‘author’ of the photograph was defined as the‘owner of [the] negative at the time when such negative was made’ (s. 21). Moreover,when the Gregory Committee reported upon the current state of UK copyright law in1952 they recommended that copyright protection for photographic works be reducedfrom 50 to 25 years ‘from the date upon which the photograph was taken’. For moreon photography and copyright in nineteenth- and early twentieth-century Britain seeDeazley, R. (2003), ‘Struggling with Authority: The Photograph in British LegalHistory’, History of Photography, p. 236.

46 Section 1(2) set out that copyright operated to protect the work ‘or anysubstantial part thereof’; by implication it was considered acceptable to perform any ofthe acts restricted by copyright in relation to an insubstantial part of the work inquestion.

47 For a commentary on the fair dealing provisions within the 1911 Act and theirrelationship with the nineteenth-century case-law see Burrell, supra n. 36.

48 To complement this fair dealing provision concerning newspaper summary, theAct also set out that ‘it shall not be an infringement of copyright in an address of apolitical nature delivered at a public meeting to publish a report thereof in anewspaper’; s. 20.

49 1911 Act, s. 4. No doubt the purpose behind this provision was a willingness toensure that no copyright owner would use the legislation to suppress the disseminationof the work in question and withhold it from public consumption.

gave sufficient notice to the owners thereof and this was accompanied by astatutorily agreed royalty payment.50

By the turn of the following century, the copyright regime had undergonetwo substantial legislative revisions in the guise of the Copyright Act 195651

and the Copyright Designs and Patents Act 1988 (hereafter, the CDPA), thesecond of which now underpins the current order.52 By comparison with the 37sections of the 1911 statute, the provisions within the CDPA concerningcopyright had increased five fold. Works protected now include broadcastsand cable programmes,53 computer programs,54 preparatory design material forcomputer programs,55 databases (whether paper or electronic),56 and thetypographical arrangement of published editions.57 The copyright term fororiginal literary dramatic, musical and artistic works, as well as films,58 hadbeen extended to include a 70-year post mortem term.59 The nature of the actswhich the copyright owner could prevent others from engaging in (that is, theacts restricted by copyright) were once again expanded to incorporate the rightto reproduce, publish, rent or lend, perform or broadcast copyright material, orto perform any of these acts in relation to an adaptation of the copyrightwork.60 Moreover, certain moral rights were created in relation to original


50 Ibid., s. 3.51 Copyright Act 1956, c. 74.52 Copyright Designs and Patents Act 1988, c. 48. 53 Section 1(1)(b).54 Section 3(1)(b).55 Section 3(1)(c).56 Sections 3(1)(d) and 3A.57 Section 1(1)(c).58 The term of protection for films was in most cases simply 50 years from the year

of first publication; see the 1956 Act s. 13 for further details. There is currently norequirement that a film be original before it will attract copyright protection, only thatit not be ‘a copy taken from a previous film’; CDPA s. 5B(4). The relevant lives fordetermining when the 70-year post mortem term begins in relation to a film are definedas including the principal director, the author of the screenplay, the author of thedialogue, or the composer of music specially created for and used in the film; CDPAs. 13B.

59 The change was implemented by the Duration of Copyright and Rights inPerformances Regulations 1995, SI 1995/3297, to ensure the UK’s compliance with theEuropean Council Directive 93/98/EEC of 29 October 1993 harmonising the term ofprotection of copyright and certain related rights.

60 CDPA s. 16. In practice not all of these exclusive rights applied to all types ofcopyright work. For example, while the distribution right extended to all types ofcopyright work (s. 18(1)), the rental right did not apply to broadcasts, cable programsor the typographical arrangement of published editions (s. 18A(1)). For an excellentsummary of the structure of the CDPA at this time see Christie, A. (2001), ‘A Proposalfor Simplifying United Kingdom Copyright Law’, European Intellectual PropertyReview, p. 26.

literary, dramatic, musical and artistic works, as well as films, such as the rightto be identified as the author of the work in question, as well as the right toobject to the derogatory treatment of the work.61

Turning to the copyright user, the nature of the acts permitted by thelegislation without the need for permission from the copyright owner hadundergone significant transformation also. The five uses set out in s. 2(1)(i) ofthe 1911 Act were now set out in two separate sections, ss 29 and 30. Fairdealing for the purpose of research and private study no longer extended to anycopyright work, but only to literary, dramatic, musical and artistic works.62

Fair dealing for the purpose of criticism or review (of the copyright work inquestion or another work) was permitted in relation to any copyright work, solong as the use was accompanied by a sufficient acknowledgement.63 Finally,the exception relating to ‘newspaper summary’ had been altered to allow fairdealing with any copyright work, other than a photograph, for the purpose of‘reporting current events’, once again, so long as the use was accompanied bya sufficient acknowledgement.64

While the provisions within the 1911 Act relating to compulsory andautomatic licences had been abandoned with the enactment of the 1956 Act, araft of additional more specific permitted acts had been introduced, both in1956 and 1988, to allow for the use of copyright material in certaineducational contexts (for example, for the purposes of instruction orexamination),65 to facilitate library and archival work (for example, insupplying copies of periodical articles to library users engaged in research orprivate study),66 in the interests of public administration (for example, for thepurposes of parliamentary or judicial proceedings),67 as well as a range ofadditional miscellaneous situations (for example, to facilitate publicrecitations from literary or dramatic works, or the representation of certainartistic works on public display).68

Since 2000, there have been a number of further alterations to the copyright


61 Sections 77–83; the other moral rights introduced by the CDPA into UKcopyright law included the right to object to the false attribution of work (s. 84) and theright of privacy in certain photographs and films (s. 85). As to the subsistence andexercise of these moral rights see ss 86–89.

62 Section 29(1); note that this section does also set out that fair dealing for suchpurposes would not infringe the typographical arrangement of a published edition.

63 Section 30(1); ‘sufficient acknowledgement’ is defined in s. 178.64 Section 30(2); in this regard the Act set out that no acknowledgement was

required in connection with the reporting of current events by means of a soundrecording, film, broadcast or cable programme; s. 30(3).

65 CDPA, s. 32.66 CDPA, s. 38.67 1956 Act s. 6(4); CDPA s. 45.68 1956 Act ss 6(5) and 9; CDPA ss 59 and 62.

regime. They touch upon a range of matters including: the conditions underwhich educational establishments are able to make recordings of broadcastsand cable programmes;69 ensuring that the provisions of Part I of the CDPA arecompatible with the requirements of the European E-commerce Directive(2000/31/EC);70 the coming into force of the Copyright (Visually ImpairedPersons) Act 2002;71 and the operation of Part I of the CDPA in Bermuda,72 aswell as in various countries who have recently acceded to the BerneConvention, such as Armenia, Jordan and Tonga.73 Of greatest importhowever, are the changes implemented by the recent Copyright and RelatedRights Regulations 2003,74 which came into force on 31 October 2003. TheseRegulations were enacted to implement the provisions of the EuropeanInformation Society Directive (the Information Society Directive),75 whichsought, amongst other goals, to address the various challenges and threats thatthe emergence of digital technology and information exchange on the internetgenerated for copyright owners.76

The restricted act of broadcasting a copyright work has been replaced by aright to prevent the communication of the work to the public, whether by wayof broadcast, or in simply making it available to the public by electronictransmission in a manner which allows members of the public to access the


69 See the Copyright (Certification of Licensing Scheme for EducationalRecording or Broadcasts) (Open University) Order 2003, SI 2003/187, the Copyright(Certification of Licensing Scheme for Educational Recording of Broadcasts and CableProgrammes) (Educational Recording Agency Limited) (Amendment) Order 2003, SI2003/188, and the Copyright and Related Rights Regulations 2003, SI 2003/2498.

70 Electronic Commerce (EC Directive) (Extension) (No. 2) Regulations 2003, SI2003/2500.

71 Copyright (Visually Impaired Persons) Act 2002 (Commencement) Order 2003,SI 2003/2499. The 2002 Act enables the transfer of works to formats which areaccessible to visually impaired persons without infringing the copyright in the originalwork; Copyright (Visually Impaired Persons) Act 2002, c. 33.

72 Copyright (Bermuda) Order 2003, SI 2003/1517.73 Copyright (Application to Other Countries) (Amendment) Order 2003, SI

2003/774. See also: the Legal Deposit Libraries Act 2003, c. 28; the Legal DepositLibraries Act (Commencement) Order 2004, SI 2004/145; the Copyright (Certificationof Licensing Scheme for Educational Recording of Broadcasts) (EducationalRecording Agency Limited) Order 2005, SI 2005/222; the Copyright (EducationalEstablishments) Order 2005, SI 2005/223; the Copyright and Performances(Application to Other Countries) Order 2005, SI 2005/852; and the Copyright(Gibraltar) Order 2005, SI 2005/853.

74 Copyright and Related Rights Regulations 2003, SI 2003/2498.75 Directive on the harmonisation of certain aspects of copyright and related rights

in the information society, 2001/29/EC.76 For a general overview of the various issues concerning intellectual property and

the internet see WIPO, ‘Intellectual Property on the Internet: A Survey of the Issues’,available at www.ecommerce.wipo.org.

work from a place and at a time chosen by them.77 This new communicationright comes accompanied by an equally new criminal offence ofcommunicating works in the course of a business or, if not in the course of abusiness, then in a manner which prejudicially affects the owner of thecopyright.78 At the same time as bolstering the position of the copyright owner,the Regulations also further circumscribe the availability of certain of the actspermitted within the CDPA for the copyright user.79

This brief exposition of copyright’s historical trajectory is instructive in twobasic respects. In the first place it operates to clearly reveal the trulycontingent nature of copyright as property. For example, prior to 1 December1996, a copyright owner could not prevent the lawful owners of copies of hiswork renting those copies to others; after that date, the copyright owner coulddo so.80 Again, on 30 October 2003, any academic (or indeed anyone else)wishing to fairly deal with another’s copyright work to further their ownresearch agenda was free to do so; the next day the same academic could onlydo so if that research agenda was of a non-commercial nature.81 Otherexamples might be drawn upon,82 but there hardly seems any need.

The second reason for revisiting this heavily truncated history is that theactual trajectory itself lays bare a story of an expanding process ofproprietarianist enclosure of the public domain, both in terms of those abstractthings which can be copyright works, as well as the heightened nature of theburden of non-interference vis-à-vis those abstract things being placed uponthe public at large. Of late, as the rights of the copyright owner have increased,so the freedoms of the lawful copyright user have beaten a retreat. Moreover,underpinning this movement is an increasingly powerful process of conceptualreification, and the emergence of a ubiquitous discourse of property rights


77 Regulation 6, amending CDPA s. 20.78 At present, anyone guilty of this new criminal offence can face up to 2 years

imprisonment if convicted on indictment; reg. 26, amending CDPA s. 107.79 Concerning the permitted acts set out in the CDPA, the Regulations affect the

operation of ss 28 (making of temporary copies), 29 (research and private study), 30(criticism, review and news reporting), 32 (things done for the purposes of instructionor examination), 35 (recordings by educational establishments of broadcasts), 36(reprographic copying by educational establishments), 38 and 39 (copying bylibrarians), 50 (observing, studying and testing computer programs), 61 (recordings offolksongs), 63 (advertising artistic works for sale), 67 (playing sound recordings forclubs, societies, etc.), 70 (recording for the purpose of time-shifting), 71 (photographsof broadcasts), 72 (public showing or playing of broadcasts), 73 (concerning thereception and retransmission of broadcasts), and 74 (sub-titling copies of broadcasts).See Chapter 4 nn. 57–62, and accompanying text.

80 Copyright and Related Rights Regulations 1996, SI 1996/2967.81 Copyright and Related Rights Regulations 2003, SI 2003/2498.82 See for example Chapter 4, n. 60, and accompanying text.

(and so, human rights) which operates to naturalise that very movement,destabilise any meaningful opposition thereto, and so render it seeminglyinevitable. This is not to say that changes to the law of copyright have not beenneeded in the face of the challenges which digital technology and thedistributive power of the internet have laid down before those working in thecreative industries.83 Rather it simply suggests that to rely upon the rubric ofthe protection of fundamental property rights as one of the main justificationsfor change, while certainly effective, is both misplaced and misleading.84

The emergence of such rhetoric can be traced with relative ease through thelanguage which the legislation itself adopts: in 1911 the statute referred to thefact that ‘copyright shall subsist … in every original literary, dramatic, musicaland artistic work’;85 the 1956 Act provided the same,86 but added that‘copyright shall be transmissible by assignment, by testamentary disposition,or by operation of law, as personal or moveable property’;87 by 1988 thelegislation set out, quite unequivocally, that ‘[c]opyright is a property right’.88

This illustration may be overly simplistic, but the point remains validnevertheless. Similarly, consider the preamble to the Information SocietyDirective in providing that ‘[t]he proposed harmonisation will help toimplement the four freedoms of the internal market and relates to compliancewith the fundamental principles of law and especially of property, includingintellectual property, and freedom of expression and the public interest’.89

Elsewhere the preamble notes that high levels of protection for intellectualproperties are ‘crucial to intellectual creation’ given that they ‘ensure themaintenance and development of creativity in the interests of authors,performers, producers, consumers, culture, industry and the public at large’ –thus has intellectual property been recognised ‘as an integral part ofproperty’.90 The most overt recognition of intellectual property as fundamentalproperty right can be found, of course, in the provisions of the Charterfinalised the previous year. To speak of the state granting longer, more


83 Nor, however, does it mean that the changes which have in fact beenimplemented are necessarily appropriate.

84 See for example the comments in: Benkler, Y. (1999), ‘Free as the Air toCommon Use: First Amendment Constraints on Enclosure of the Public Domain’, NewYork University Law Review, p. 354; Lemley, M.A. (1997), ‘Romantic Authorship andthe Rhetoric of Property’, Texas Law Review, p. 873; and Vaver, D. (2000), ‘IntellectualProperty: The State of the Art’, Law Quarterly Review, p. 621.

85 1911 Act, s. 1(1).86 1956 Act, s. 2(1).87 1956 Act, s. 36(2) (emphasis added).88 CDPA, s. 1(1) (emphasis added).89 Directive on the harmonisation of certain aspects of copyright and related rights

in the information society, 2001/29 EC, para. 3. 90 Ibid., para. 9.

extensive and more robust monopolies is one thing; to legislate in defence ofa fundamental human right is another thing altogether.

What is being suggested here is that the conceit and language of intellectualproperty as natural property right has provided one of the key foundations forthe rampant expansionism which is the story of copyright law throughout thetwentieth and into the twenty-first century. Consider, for example, the decisionof the Court of Appeal in Ashdown v. Telegraph Group [2002] (Ashdown)91 –a case which concerned questions as to the existence and nature of a non-statutory public interest defence to allegations of copyright infringement, aswell as the import of the coming into force of the Human Rights Act 1998upon that issue.92

The decision of the Court of Appeal delivered by Phillips MR was asfollows: that at common law there did exist as a public interest defence; thatthe court could envisage a situation in which an individual’s right to freedomof expression might in effect ‘trump’ the rights of a copyright owner; and thatthe public interest defence could provide the mechanism for accommodatingjust such a situation.93 The decision has been discussed at length elsewhere andwill not be dwelt upon here.94 Of note, however, is the conceptual model ofcopyright that underpins the court’s decision. In a brief aside on ‘[t]he natureof copyright’ the Master of the Rolls baldly (and as we have seen, incorrectly)asserts that ‘[c]opyright has its origins in the common law, but is now derivedfrom the provision of the 1988 Act’;95 that is, before any statute there existedcopyright, in much the same way as there existed land, foxes, and valuablejewels.96 In less than 20 words Phillips MR positions the nature and history of copyright squarely within Mansfield’s conception of copyright as anindependent authorial property right subject to subsequent statutoryqualification.


91 Ashdown v. Telegraph Group Ltd [2002] 1 Ch 149. 92 Chapter 4, n. 69, and accompanying text.93 Phillips MR commented in the following terms: ‘Now that the Human Rights

Act 1998 is in force, there is the clearest public interest in giving effect to the right tofreedom of expression in those rare cases where this right trumps the rights conferredby the 1988 Act. In such circumstances we consider that s. 171(3) of the Act permitsthe defence of public interest to be raised’; Ashdown, pp. 170–71. This did howevercome with a word of warning: ‘We do not consider that this conclusion will lead to aflood of cases where the freedom of expression is invoked as a defence to a claim fora breach of copyright’; ibid., p. 170.

94 See for example: Griffiths, J. (2002), ‘Copyright law after Ashdown – Time toDeal Fairly with the Public’, Intellectual Property Quarterly, p. 240; Birnhack, M.(2003), ‘Acknowledging the Conflict between Copyright Law and Freedom ofExpression under the Human Rights Act’, Entertainment Law Review, p. 24.

95 Ashdown, p. 163.96 See Williams, J. (1998), ‘The Rhetoric of Property’, Iowa Law Review, pp. 277

and 284–90.

The implications of Phillips MR’s observation go even further than thishowever. Consider, for example, the exclusive right to perform a work inpublic today, which right is currently set out in ss 16(1) and 19 of the CDPA.Its origins lie in the mid-nineteenth century with the Act to Amend the Lawsrelating to Dramatic Literary Property 1833, which provided that from the dateof its passing ‘the author of any tragedy, comedy, play, opera, farce or otherdramatic piece or entertainment, composed, and not printed and published bythe author thereof or his assignee … shall have as his own property the soleliberty or representing, or causing to be represented, at any place of dramaticentertainment whatsoever’; should the author ‘print and publish’ the work thenhe was to have the same right of representation but only for 28 years from theday of publication, or if he was still living at the end of that time, for the‘residue of his natural life’.97

That the legislation confers a presumably perpetual right to perform a workso long as that work is never made public in print is interesting if notsurprising.98 In Macklin v. Richardson (1770) (Macklin), decided after Millarbut before Donaldson, the plaintiff was the author of a farce entitled Love a laMode which had never been printed or published.99 The defendants did notperform the work, but rather published it (having employed someone to attenda performance of the play and transcribe it) in their periodical the CourtMiscellany, or Gentleman and Lady’s Magazine. Whether one sided withMansfield or Yates in Millar, or with Blackstone or Camden in Donaldson, allwere in agreement that the publishing of a previously unpublished work wasan act that infringed an author’s rights at common law.100

The significant aspect of Macklin was that the performance of the work wasnot considered to be a publication of the work such as to denude the author ofthe right to first publication in print. Perhaps even more significantly, in the


97 An Act to Amend the Laws relating to Dramatic Literary Property 1833, 3 & 4Will., c. 15, s. 1.

98 As to whether the first performance of a play abroad could amount topublication under the 1833 Act see: Boucicault v. Delafield (1863) 1 H&M 597;Boucicault v. Chatterton (1876) 35 LTR 541; Boucicault v. Chatterton (1876) 5 LR(Ch) 267.

99 Macklin v. Richardson (1770) Amb 694. Indeed, the plaintiff jealously guardedthe manuscript copy of his play; the report reads: ‘[The play] was performed, by hisparticular permission, at the different theatres, several times in 1760, and the followingyears, but was never printed or published by him. And it appeared in evidence, That itnever was acted but by his permission: That when the farce was over, he used to takethe copy away from the prompter: That two of the actors applied to him, to have itperformed at their benefits; and that he made them pay, once 20 guineas, and at anothertime 30 guineas, for one night’s performance of it’; ibid., p. 694.

100 Of course these various jurists and judges were not in agreement as to why thiswas the case, as we have seen.

50 years following the decision, there appears to have been only twosubsequent cases brought before the courts concerning dramatic works. Thefirst of these was Coleman v. Wathen (1793), which we have previouslyconsidered.101 The second was Whittingham v. Wooler (1817) and thecorrectness of the decision in Macklin was simply not called into question.102

But again, the important factor in all of this, rightly or wrongly, was that theplays had not been published in print.103

As to the right to perform the work after it had been published, this was something entirely new, and even the most ardent advocates of copyrightat common law thought nothing of accepting that a post-publicationperformance right was entirely a creature of statute. Marsh v. Conquest(1864) concerned whether an assignment under the 1833 Act, which had notbeen registered in accordance with the provisions of the Copyright Act


101 Coleman v. Wathen (1793) 5 D&E 245; see Chapter 2, n. 15 and accompanyingtext.

102 Whittingham v. Wooler (1817) 2 Swan 428 (Whittingham). Whittinghamprovides an interesting early nineteenth-century exposition of the fair user doctrine. Init the defendants argued that they were only reproducing such passages from theplaintiff’s play as was necessary to review and critique the piece in their magazine TheStage; Grant MR agreed with them: ‘[The Defendant] says that the publication is in thenature of a magazine or review, consisting of criticisms, and extracts to serve as afoundation for the criticisms; and, on a motion to dissolve the injunction, the questionwould have been, Whether the Defendant had transgressed certain allowed limits whichare not easily defined? I should think, in such a case, that he had not transgressed thoselimits. It may, perhaps, be fair enough to say, that if the Defendant had inserted in onenumber a criticism, and in a following number mere specimens, that would have beenthe case of an unprotected plagiarism; but here the Defendant has given no entire act or scene, but only broken and detached fragments of the piece in question’; ibid., p. 431.

103 Contrast Murray v. Elliston (1822) 5 B&Ald 657 in which Byron’s workMarino Foliero, Doge of Venice had been published before being performed at thedefendant’s theatre the Theatre Royal, Drury Lane. The court held that in thecircumstances no action could be maintained by the plaintiff.

For an interesting consideration of the nature of the performance right, including anexploration of the English case-law on copyright at common law, as well as Macklin,see the US case of Keene v. Wheatley (1860) 14 F.Cas. 180. In this decisionCadwalader J also accurately captures the significance of Jeffreys v. Boosey (1854) 4HLC 815 (Jeffreys) in noting that in England opinions upon the common law right‘continued to differ until 1854, when the preponderance of authority was theredetermined, conformably to the opinion of the supreme court of the United States [thatis, in Wheaton v. Peters (1834) 33 US 591]. This preponderance was thus determinedin England by the concurring opinions of Lords Cranworth, Brougham and StLeonards, in the house of lords, against the views which a majority of the judges of thecourts of law again expressed … In cases not legislatively provided for, the publiccirculation of a literary composition thus authorizes any person to republish it from anycopy so circulated’; Keene, pp. 203–204.

1842,104 was nevertheless sufficient to enable the assignee to claim for thestatutory penalties for an unlawful performance of the work. In holding thatthe plaintiff could recover under the legislation, none other than Erle CJobserved:

It is true that the sole right of representation did not exist at common law … [b]ut,the statute having made that a property, is it not subject to all the incidents ofproperty, one of which is that it shall be assignable? Unless there be anything in thestatute to prohibit it, I am prepared to hold that the power to assign the right ofrepresentation does exist.105

Clearly, historically speaking, the performance right in a published work wasnever contemplated as anything that could be protected at common law. Yet,whether intentionally or not, Phillips MR’s comment grounds copyright asdefined today within the tradition of Mansfield. Absent further qualification,Phillips MR implies that the full range of protected subject-matter, as well asthe protections provided within today’s legislation, have some earlier


104 An Act to Amend the Law of Copyright 1842, 5 & 6 Vict., c. 45; s. 22 of the1842 Act provided that ‘no assignment of the copyright of any book consisting of orcontaining a dramatic piece or musical composition shall be holden to convey to theassignee the right of representing or performing such dramatic piece or musical work,unless an entry in the said registry book shall be made of such an assignment’.

105 Marsh v. Conquest (1864) 17 CB (NS) 418, p. 426. In Toole v. Young (1874) 9LR (QB) 523, the question for the court was whether an author who dramatised his own novel, could prevent another playwright from dramatising it also. In holding forthe defendant, Cockburn CJ (who was at least ambivalent as to the existence of acommon law copyright in Coyne v. Maxwell (1865), The Times, 7 and 10 June 1865,see Chapter 3) here commented: ‘The author of a novel is not protected against havinghis novel put into the form of a drama by different persons, and it seems to make nodifference that he himself has dramatised it. When an author has once given his novelto the world, he cannot take away from other persons the right to dramatise it byhimself transforming it into a drama, subject to this, that they must not borrow from hisdrama but only from his novel. The author of a drama is not protected by the commonlaw, and what the defendant has done is not forbidden by any statute’; ibid., p. 527. InLacy v. Rhys (1864) 4 B&S 873 Cockburn CJ was careful to distinguish between thecopyright in a dramatic piece and the ‘right of acting’ provided by the 1833 Act; ibid.,pp. 883–84. In the same decision, Crompton J reminded the litigants that ‘[t]heassignment of the copyright [in a dramatic piece] is treated as a distinct matter from theright of representing or performing the dramatic piece’; ibid., p. 885.

In Cumberland v. Copeland (1861) 7 H&N 118, Pollock CB observed that the rightin question ‘is a right under the 3 & 4 Wm. 4, c. 15, which created a new species ofproperty’ and continues that once created ‘it is as much a property as the authorship ofa book. The statute says that the author of any dramatic piece, or his assignee, “shallhave as his own property the sole liberty of representing” it’; ibid., p. 127. GivenPollock CB’s earlier opinions upon a common law copyright, his comments hereshould not surprise.

foundation at common law. Without proper context, this otherwise throwawayobservation provides the expanded boundaries of the current copyright regimewith an unwarranted weight of pre-legislative historical provenance, which initself only serves to underline the naturalness and inevitability of the regime.

This is further compounded when Phillips MR later states that anyinterference with copyright, in the interests of the right of free expression,‘should not normally carry with it the right to make free use of another’swork’.106 Put another way, the interference with an individual’s property rightshould, in the ordinary course of things, carry fair compensation. For thosewho advocate the toleration of the statutory permitted acts only as aneconomically efficient response to a situation of market failure, suchobservations are sure to be welcomed. Paul Goldstein is one such advocate,arguing recently that ‘[t]o press for free use of copyrighted expression as alegal norm is to overlook that fair use is the exception to copyright and not itsrule’.107 The inability to exclude others from using the abstract object is not thenorm; rather, it is the protection of the abstract object as property,incorporating a model of legitimate compensation for almost everyconceivable use.

Leaving for the moment the obvious and substantial historical challengewhich could be brought to bear upon Goldstein’s assertion, traces of hisaspiration of pay-per-use are evident in the more recent proliferation ofcopyright collecting societies within the last 25 years,108 a development whichwas positively encouraged with the enactment of the CDPA,109 as well asproviding one of the foundations of the vision which the Information SocietyDirective (Directive) (and so the Copyright Regulations) propounds.


106 Ashdown, p. 167.107 Goldstein, P. (2003), ‘Fair Use in a Changing World’, Journal of the Copyright

Society of the USA, pp. 133 and 148.108 For example: the Authors Licensing and Collecting Society was established in

1977; the Publishers Licensing Society was established in 1981; the CopyrightLicensing Agency was established in 1982; the Design and Artists Copyright Societywas established in 1984; the Educational Recording Agency was established in 1990;Open University Worldwide was established in 1990; Christian Copyright LicensingInternational was established in 1991 (although it was first established within the USin 1988); the Newspaper Licensing Agency was established in 1996; VideoPerformance Limited was established in 2000.

109 A number of the ‘permitted acts’ first introduced by the CDPA wereaccompanied by the proviso that should a licensing scheme exist to regulate theidentified use, then the exception provided within the legislation would not apply. Seefor example: s. 35, recording by educational establishments of broadcasts and cableprogrammes; s. 36, reprographic copying by educational establishments of passagesfrom published works; s. 60, abstracts of scientific or technical articles; s. 74, provisionof sub-titled copies of broadcasts or cable programme for the deaf or hard of hearing.

While noting that the Directive ‘should seek to promote learning and cultureby protecting works and other subject-matter while permitting exceptions orlimitations in the public interest for the purpose of education and teaching’,110

its preamble continues that ‘the objective of proper support for thedissemination of culture must not be achieved by sacrificing strict protectionof rights’.111 One of the problems which the Directive sought to address wasthe ‘negative effect’ which the nationally divergent permitted acts were havingupon the functioning of the internal market; the goal was that ‘such exceptionsand limitations should be defined more harmoniously’.112 To this extent theDirective introduced two types of permitted act. The first and only compulsoryexception relates to the transient or incidental reproduction of a work, as partof a technological process, whose sole purpose was to enable either atransmission in a network between third parties by an intermediary, or someother lawful use, so long as the reproduction has no independent economicsignificance.113 Articles 5(2) and (3), by contrast, provide an exhaustive list ofexceptions which Member States may adopt in relation to the reproductionright, so long as they are only applied in ‘certain special cases’ which do notconflict with the ‘normal exploitation of the work’ and ‘do not unreasonablyprejudice the legitimate interests of the rightholder’.114 These range fromcopies made by individuals for private non-commercial purposes,115 or theincidental inclusion of a work in other materials,116 through to the use of worksfor the benefit of individuals with a disability,117 or by the media in reportingcurrent events.118 As to these exceptions however, the preamble sets out thatthey ‘should not … prevent the definition of contractual relations designed toensure fair compensation for the rightholders insofar as permitted by nationallaw’.119

In short, the Directive envisages the possibility of collective or individuallicensing schemes designed to ensure payment (fair compensation) to thecopyright owners for any of these permitted acts other than that set out inA.5(1) (that is, transient or incidental reproduction of no independenteconomic significance).

The philosophy of the Directive is even more transparent when one


110 Information Society Directive, para. 14.111 Paragraph 22.112 Paragraph 31.113 A.5(1).114 A.5(5), otherwise known as the three-step test.115 A.5(2)(b).116 A.5(3)(i).117 A.5(3)(b).118 A.5(3)(c).119 Paragraph 45.

considers the protections for technological protection measures (TPMs)120

which it sets in place,121 as well as the way in which the Directive addressespotential conflicts between such TPMs and the existing statutory permittedacts. As was discussed in Chapter 4, the Directive sets out that Members Statesshould ‘take appropriate measures’ to ensure that the TPMs do not interferewith any lawful user’s enjoyment of certain of the permitted acts but not all ofthem.122 As for those not included, such as use of a copyright work for thepurpose of criticism or review,123 the Member State need do nothing.124

Moreover, even in relation to those permitted acts which enjoy this presump-tion of non-interference, the Member State only has an obligation to act in theabsence of any ‘voluntary measures taken by rightholders, including agree-ments between rightholders and other parties concerned’ (or in other words,the existence of an appropriate licensing scheme).125 Further still, the Directiveestablishes that no presumption of non-interference exists whatsoever inrelation to copyright material supplied to the user on-demand and online.126


120 That is, a technological measure which a copyright owner relies upon toregulate the manner in which users both access and copy the owner’s material. Thesemight include any method of encrypting, scrambling or otherwise transforming thecopyright material should anyone attempt to unlawfully access the material or copyfrom it (whether lawfully or unlawfully accessed).

121 Information Society Directive, A.6(1)(2)(3). See also Copyright and RelatedRights Regulations 2003, reg. 24 introducing CDPA s. 296ZA–296ZF; the CDPA didpreviously protect such copy-protection measures but only in relation to copyrightworks issued to the public in electronic form (CDPA s. 296, as it was before 31 October2003).

122 See A.5(2)(a)(c)(d)(e) and A.5(3)(a)(b)(e); the list of permitted acts to whichthis obligation applies can also be found in Part 1 of Sch. 5A of the Copyright andRelated Rights Regulations 2003. The Copyright Regulations set out that ‘where theapplication of any effective technological measure … prevents a person from carryingout a permitted act in relation to that work’ that person can issue a notice of complaintto the Secretary of State who has available to him a number of possible courses ofaction to remedy the situation; reg. 24, implementing s. 296ZE(2). The Secretary ofState ‘may give to the owner of that copyright work … such directions as appear to theSecretary of State to be requisite or expedient for the purpose of – (a) establishingwhether any voluntary measure or agreement relevant to the copyright work the subjectof the complaint subsists; or (b) (where it is established that there is no voluntarymeasure of agreement) ensuring that the owner … makes available to the complainantthe means of carrying out the permitted act the subject of the complaint to the extentnecessary to so benefit from that permitted act’; s. 296ZE(3).

123 A.5(3)(d).124 A.6(4).125 Ibid.126 A.6(4) states: ‘The provisions of the first and second subparagraphs shall not

apply to works or other subjectmatter made available to the public on agreedcontractual terms in such a way that members of the public may access them from aplace and at a time individually chosen by them’.

Comment upon these provisions within the Directive has been extensive;127

Dusollier, for one, astutely describes the Directive as representing a shift from‘copyright as public law to copyright as a regime of private orderings’.128 It issuffice for our purposes to observe that the Directive, epitomizing theculmination of copyright’s trajectory throughout the twentieth century,evidences an almost breathtaking inversion of the social compact at the centreof copyright doctrine in the reign of Queen Anne.129 At that time, Parliamentlegislated with the primary purpose of encouraging ‘learned men to composeand write useful books’,130 as well as bringing a degree of security andregulation to a book trade in supposed turmoil following the collapse of theLicensing Act 1662.131 The booksellers had petitioned that an author had an‘indisputable right of publishing’ his work at common law, and indeed thepreamble to the first draft of the Bill did make reference to the recent libertiestaken with authors’ works ‘in whom the undoubted Property of such Booksand Writings, as the Product of their Learning and Labour, remains’; thisrhetoric however was subsequently dropped as the Bill passed through theHouse of Commons. Thus, that early model of granting a time-limitedprivilege, to print, distribute and sell books free from market interference, inthe interest of the marketplace of ideas and, by extension, the public at large,has slowly but surely been subsequently transformed into a self-evident, self-justifying raison d’étre for reducing almost all copyright owner-userinteractions to a commerce baseline.132


127 See for example: Braun, N. (2003), ‘The Interface between the Protection ofTechnological Measures and the Exercise of Exceptions to Copyright and RelatedRights: Comparing the Situation in the United States and in the European Community’,European Intellectual Property Review, p. 496; Elkin-Koren, N. (2001), ‘A public-regarding approach to contracting over copyrights’, in Dreyfuss, R., Zimmerman, D.L.and First, H., Expanding the Boundaries of Intellectual Property: Innovation Policy forthe Knowledge Society, Oxford: Oxford University Press, pp. 191–221; Heide, T.(2002), ‘The Approach to Innovation Under the Proposed Copyright Directive: Timefor Mandatory Exceptions?’, Intellectual Property Quarterly, p. 215; Heide, T. (2003),‘Copyright, Contract and the Legal Protection of Technological Measures – Not “TheOld Fashioned Way”: Providing a Rationale to the Copyright exceptions Interface’,Journal of the Copyright Society of the USA, p. 315; Loren, L.P. (2002), ‘TechnologicalProtections in Copyright Law: Is More Legal Protection Needed?’, InternationalReview of Law Computers & Technology, p. 133.

128 Dusollier, S. (2003), ‘Exceptions and technological measures in the EuropeanCopyright Directive of 2001 – an empty promise’, International Review of IndustrialProperty and Copyright Law, p. 62.

129 Deazley, supra n. 28.130 Statute of Anne, Preamble.131 See for example Patterson and Rose, supra n. 31.132 Imagine for example, being unable to recite passages from Ulysses, by Joyce,

perhaps the twentieth century’s greatest work of literature, in the home town of the

Moreover, as we continue to embrace this reification of copyright, with itsrhetorical paradigm of copyright as property right qua human right, and allowit to dominate copyright’s future trajectory, we lose the opportunity to engagein other, arguably more appropriate forms of copyright discourse. One of theprofoundly undesirable results of this conceptual juggernaut is that it operatesto occlude other models of conceiving of, and talking about, intellectualproperty, at least within the realms of the policymaker, the legislature, and thejudiciary. In short, it precludes what Waldron has referred to as any form of‘oppositional analysis’,133 despite that, as we have seen, it has little defensiblehistorical or theoretical provenance. Historically, the conceit of common lawcopyright was definitively rejected not once but twice. From a theoreticalperspective, as argued above, if copyright is anything, it is a thing which isakin to a chose in action that nevertheless functions like a property right in rem– an institutional fact determining the existence of a state sanctionedmonopoly. It adheres to no rational understanding of the notion ofexcludability in that once publicised (whether orally or captured in tangibleform) it is beyond the power of an author to exclude others from making useof his or her original expression; nor will use by another exhaust the originalexpression or prevent either the author (or indeed anyone else) making anexactly identical and concurrent use of the same.134 Neither does it accord withany sensible concept of separability. An author’s original expression, bydefinition, cannot be given, traded or licensed to another so as to become theoriginal expression of that other – the original expression must always becontingent upon, and so linked to, its originating author.

Both historical and theoretical analyses suggest that the logical manner inwhich to discuss intellectual property is not that the user (or the state on behalfof the user) should have to articulate, defend and pay for every action whichencroaches upon the author’s property, but rather that the author or owner (orthe state on behalf of the same) should have to articulate and defend everymonopoly use of the intangible good which encroaches upon the public’sfreedom to engage with that intangible good. This, of course, is not the currentcopyright paradigm; nor is it an analysis for which the language of current


author’s birth, to mark the centenary celebration of Bloomsbury, without having tomake payment to the author’s grandson for the privilege of doing so; ‘Copyright rowthreat to “Ulysses” centenary’, The Independent on Sunday, 16 June 2004.

For an excellent account of the historical trajectory of the development of patents(from ‘privileges’ to ‘rights’) see Bracha, O. (2004), ‘The Commodification of Patents1600–1836: How Patents Became Rights and Why We Should Care’, Loyola of LosAngeles Law Review, p. 177.

133 Waldron, supra n. 14, p. 887.134 Use by another, such as the publication of the original expression, may

undermine the value of that original expression to the author, but that is not in point.

copyright discourse allows sufficient room. What is needed is a newterminology.

ON INTELLECTUAL PROPERTY FREEDOMS AND INTELLECTUAL PROPERTY PRIVILEGES

The argument sketched out above runs as follows: that the Charter of theFundamental Rights of the European Union encapsulates what might bedescribed as the dominant copyright paradigm; that one of the main reasonswhy this paradigm exerts such powerful intellectual and legal force lies withthe rhetoric which underpins it – that of copyright as natural property right,and of property right as fundamental human right. Moreover, this rhetoric,prevalent in almost every aspect of contemporary intellectual propertydiscourse, is problematic in that it functions to both drive the development ofcopyright doctrine, as well as preclude other forms of historically andtheoretically more defensible (indeed accurate) ways of discussing bothcopyright and copyright’s future progress; that is, the current rhetoric ofcopyright defines what it means to speak of copyright. Finally, it is suggestedthat what is needed is a more accurate and articulate language (one mightsuggest a more value-neutral language) with which to discuss and definecopyright policy. What is proffered instead is the language of IntellectualProperty Freedoms (IPFs) and Intellectual Property Privileges (IPPs), and inthat order.135

Three hundred years ago copyright did not exist. Daniel Defoe had,however, just penned and published his An Essay on the Regulation of thePress in which, at the same time as attacking the notion of reintroducing a pre-publication licensing system to censor the press, he exhorted that Parliamentmight pass a law to prevent an abuse upon authors which he considered ‘everyjot as unjust as lying with their wives, and breaking up their houses’: ‘press-piracy’.136 The publication of Defoe’s tract signalled the start of hisinvolvement in the campaign which would ultimately result in the passing ofthe Statute of Anne 6 years later.137 However, while those 6 years elapsed,anyone who published a book did so in the knowledge that there was nothing


135 One might also ponder whether flowing from these various IPFs and IPPs theremight (or indeed should) also exist Intellectual Property Duties but that is a debate foranother time.

136 Defoe, D. (1704), An Essay on the Regulation of the Press, reprinted by theLuttrell Society (1958), Oxford: Blackwell, p. 27.

137 The Act was passed in April 1710 but, as was the convention at the time, wasconsidered to have effect as if it had been passed at the start of the regnal year, that isin September 1709.

that could be done to prevent any one else reprinting and publishing the same(other than to rely upon the operation of the pre-existing, informal, pressure-bearing structures within the publishing trade). During this time not one singlecase was brought before the common law courts to prevent such ‘press-piracy’. Authors and the publishers to whom they sold their manuscripts hadno property upon which to base a claim; they had no rights in rem. There didnot exist any duty of non-interference on the part of the public – they were freeto do with the abstract object, the text, as they wished. In the absence ofstatutory intervention all were, and would still be today, free to do with thework as they wished (other than to claim that original expression as their own)– a state of IPFs.

With the intervention of the legislature (in 1710) and the introduction of atime-limited monopoly to exploit the abstract object, vested (in the first place)in the original author of the same, there now exists, as a matter of institutionalfact, a duty placed upon others to exclude themselves from certain statutorilydefined uses of the text (in this case printing, publishing and selling the text).This interference with the existing IPFs requires justification; this justificationtakes the form of the broadly utilitarian argument concerning theencouragement of education, an increased production of ‘useful books’, theregulation of the booksellers’ marketplace, and a more buoyant marketplace ofideas.

Thus, we now have IPFs (the freedom to make such uses as are notprohibited by statute, or any use in relation to those works in which the time-limited privilege has elapsed) co-existing alongside IPPs (the ability to use(exploit) in certain ways free from market interference, supported by stateintervention). Just as was the case with this first intervention, any furtherlimitations upon the existing IPFs will and should require further justification.It is in accordance with this paradigm that copyright policy should develop,rather than the model presently adopted, which model is bolstered by thecurrent dominant discourse.

As a concept however, this is hardly new or original; others have in the past made similar observations. Drahos, in 1996, published A Philosophy of Intellectual Property (A Philosophy) setting out his instrumentalist agenda.Referring to intellectual properties as ‘liberty-inhibiting privileges’, withhistorical roots embedded in the seventeenth century, he observes that ‘[o]neof the reasons why intellectual property rights are no longer thought of in this way is that they are continually referred to by the aggregated term of rights. Through that process of reference they have become deeply entrenchedin the discourse of private property rights’.138 ‘[T]alk about rights in


138 Drahos, P. (1996), A Philosophy of Intellectual Property, Aldershot: Ashgate, p. 213.

intellectual property’ he suggests ‘should be replaced with talk aboutprivilege’.139

One hundred years prior to Drahos, Thomas Edward Scrutton published histhird edition of The Laws of Copyright. As we have seen, of all the commen-tators on copyright in nineteenth-century Britain, Scrutton was arguablyunique in rejecting an understanding of copyright which drew upon theLockean discourse of natural property rights, in favour of one which stressedthe fact that while ‘literary and artistic productions are treated as property’that property is ‘created in, and limited by, the interests of the community’. InScrutton’s opinion, copyright was and should be ‘communistic’ in character.140

He might well be considered the founding father of the modern academicinstrumentalist school.

If Scrutton founded the school, Drahos is certainly one of its most stridentand vocal contemporary acolytes. Consider however Information Feudalism:Who Owns the Knowledge Economy? (Information Feudalism)141 his mostsignificant work since A Philosophy. Given the earlier plea to move ‘to an old-fashioned way of talking’, that is, to the language of ‘monopoly privileges’,142

it is somewhat curious to read through the introductory chapter to InformationFeudalism without coming across one single use of the term, as compared withthe 34 references to ‘intellectual property rights’ (not to mention the 41 usesof TRIPS which, of course, is shorthand for the Agreement on Trade-RelatedAspects of Intellectual Property Rights143). This is naturally a rather glib andsuperficial point to make, given the nature and substance of the work, and yetit does indicate the difficulty in critiquing an existing system, withoutembracing the language of that system, which language represents part of thereason for the system existing in its current form. In Information Feudalismthere is an uneasy admixture of traditional intellectual-property-rights-speak,alongside the earlier rhetorical positioning of A Philosophy; would that therewere another way.

ON WHAT WE TALK ABOUT, WHEN WE TALK ABOUTINTELLECTUAL PROPERTY144

To conclude this chapter we turn to a tale of Phil Collins – that’s right, Phil


139 Ibid., p. 200.140 Scrutton, T.E. (1890), The Law of Copyright, London: Clowes and Sons, p. 290.141 Drahos P. (with Braithwaite J.) (2002), Information Feudalism: Who Owns the

Knowledge Economy?, London: Earthscan.142 Drahos, supra n. 138, p. 223.143 One might well ask why the TRIPS acronym does not simply refer to the

Agreement on Trade-Related Aspects of Intellectual Property, absent the Rights.144 With apologies to Raymond Carver.

Collins the photographer. Phil was born in 1970 the same year in which theother one, the musician, was, with the other members of Genesis, selling usTrespass.145 Throughout his life Phil has found himself the subject of muchbanter (often good-natured, sometimes not) based upon the simple fact that heshares his name with the other one, the musician; but not so in Vrsvac. At theYugoslav Biennial of Young Artists in 2004 Phil (the photographer) wasadopted by the people of Vrsvac as their ‘Official Phil Collins’.146 For Phil,Vrsvac is just the first step. With sufficient grassroots support (elsewhere thanin Vrsvac) he hopes to begin to challenge the place of the other one, themusician, as the first point of cultural reference whenever the name ‘PhilCollins’ is invoked.147 The goal, in Phil’s mind, is that in time, when the nextPhil Collins comes along he will have to suffer the ignominy of associationwith the photographer,148 and not the musician. Phil may or may not succeed


145 Genesis (1970), Trespass, London: Stratsong.146 ‘sign here please’, Permanent installation, Untitled (As Yet), the Yugoslav

Biennial of Young Artists, Vrsvac Town Hall, Vrsvac 2004, reproduced in Collins, P.(2005), yeah ….. you, baby you, Hove: Shady Lane Publications. The plaque erected inPhil’s honour at the Town Hall reads as follows (in translation):

WE/The Good People of Vrsvac/In Honour of this Poor Kid/Phil Collins/Isn’t TheRelentless Human Atrocity We Call Daily Life Difficult Enough Already/WithoutThis?/I Mean, Imagine!/Waking Up Every Morning/And Having To Say Your NameWas Tina Turner/Every Day/All Day Long/To Everybody You Meet/Hello! MyName Is Tina Turner!/Or: Tanita Tikaram, Here, How May I Help You?/(ExceptShe’s Not That Famous So It Doesn’t Count)/Try Ordering A Hawaiian Pizza/AndCalling Yourself Pat Benatar/Try Saying It/(Without Feeling Like You’re About ToThrow Up)/It Honest To God Does Not Bear Thinking About/What This Would DoTo A Person./No Wonder He Turned Out like He Did:/1. Ugly (Although Can LookOK From A Distance)/2. Heavy Social Drinker (i.e. Completely Alcoholic)/3.Homosexual And Worse Still – An Indiscriminate Drug-Taker/4. Irritating InabilityTo Be Serious/5. Very Short Attention Span/(For Instance Starts Books But IsUnable To Finish Them)

On Account Of This And Other Things Besides/(Too Numerous To Go Into HereOn This Plaque)/We/The Good People Of Vrsvac/Promise To Henceforth Adopt HimAs/Our Own/OFFICIAL PHIL COLLINS/Give Him Some Hope/And A Place HeCan Always Call Home/This Beautiful Ceremonial Plaque Honours/Our Own VrsvacPhil Collins/So/Lots Of Love Phil/And Sorry For Everything/Remember!/You haveSome Good Friends Here!/And If You Ever Want To Talk About It/You Know WhereWe Are/We Love You Phil Collins/xxx/The People of Vrsvac (i.e. Everybody Here)

P.S. You Don’t Look Anything Like The Picture You Gave Us/It’s Obviously AnOld One When You Were Looking Younger

P.P.S. And Slimmer.’147 Anyone reading this text can help Phil out in this regard: anytime you hear or

make reference to the name Phil Collins, try to think of Phil as the first referent, and,if appropriate, say (and encourage others to say) ‘Oh yes, Phil Collins thephotographer’.

148 Supra n. 146.

– the task of subverting the place of the musician as primary cultural referentis a tall order indeed – the sheer weight of the collective national andinternational consciousness, with its embedded system of cultural signifiersand signified, presents a substantial challenge.

The same, however, need not necessarily be said of the community ofintellectual property lawyers within the UK (or indeed within the internationalarena). The possibility of embracing a new language of Intellectual PropertyFreedoms and Intellectual Property Privileges, amongst this considerablysmaller cross-section of the public, seems a less daunting prospect. Earlier Isuggested that what is required is a new terminology, however, a newterminology in itself will not do. What is needed is a new terminology thattakes root in the various legal cultures of the academic, practitioner, judge, andpolicy maker. That is, a terminology that achieves sufficient critical masswithin the predominant discourse, so as to subvert that dominant discourse.The question however, is how that is to be achieved?

A good place to begin would be to re-examine the manner in which we write, teach, argue and talk about intellectual property. Looking throughthe academic literature of the last decade, it would seem that, regardless of the argument presented by Drahos in A Philosophy, little has changed.149

This is certainly true for the standard introductory and practitioners’ textswithin the intellectual property field, which by and large avoid any meaningfulengagement with the implications of the interface between intellectualproperty and the concept of monopoly, subject to one or two exceptions. One such text, by Cornish and Llewelyn, does so in a way that (implicitly)dismisses the conception of intellectual property presented within this chapter. They observe that ‘[a]ll intellectual property consists in the exclusiveright to perform some defined activity, in the main productive or com-mercial. But this is not at all the same thing as the ability to exert monopolypower within a market’.150 Their point is that an ability to exploit an individualbook for example, does not amount to an ability to control the marketplace for printed literature; true. And yet that does not mean that the ability to exploit any particular combination of original expressions for a limited term,free from market interference, is no less a monopoly viz a viz that arrangementof original expressions; other factors may impact upon the success (or value) of one’s exploitation, such as competing product or the dictates of


149 It is perhaps significant that in the same year the two WIPO treaties wereconcluded, providing a new focus for the next wave of developments in internationalintellectual property law, culminating in such measures as the Information SocietyDirective.

150 Cornish, W. and Llewelyn D. (2003), Intellectual Property: Patents, Copyright, Trade Marks and Allied Rights, 5th edn, London: Sweet & Maxwell, pp. 1–45.

fashion, but again that does not affect the nature of the market privilegegranted to the copyright owner.151

A second text, and one which positions itself within the instrumentalisttradition, is that of Phillips and Firth in which they consistently write of‘intellectual property’ and ‘intellectual property law’ as opposed to‘intellectual property rights’.152 Phillips and Firth begin their work bydiscussing the legal protection of intellectual property in terms of fiveidentifiable paradigms, the first three of which are ‘an absolute monopoly ofthe market’ (the patent, or the trade mark), ‘a qualified monopoly’ (such as theprotection for topographies of semi-conductor chips), and ‘the monopoly ofthe use of one’s creation within the market’ or alternatively ‘the relativemonopoly’ (copyright).153 What’s more, they have been doing so, long beforeDrahos made his appeal. Proof indeed (if proof were needed) that one canembrace such a discourse and still be considered an eminent intellectualproperty lawyer and scholar. This is ‘Chicken Licken’ proved wrong – if wespeak not of intellectual property rights, but of intellectual property, and ofintellectual property freedoms and intellectual property privileges, the sky willnot fall. Moreover, in terms of historical and theoretical probity, as well as thepotential for developing a more appropriate discourse with which to guide thefuture movement of intellectual property policy, there is much to be gained.

151 For another commentary upon the relationship between various aspects ofmonopoly, competition law and intellectual property see Torremans, P. (2005), Holyoak& Torremans: Intellectual Property Law, 4th edn, Oxford: Oxford University Press, pp. 12–20.

152 Subject that is to a brief use of the terminology of IPRs in the context of theUniversal Declaration of Human Rights: Phillips J. and Firth, A. (2001), Introductionto Intellectual Property Law, 4th edn, London: Butterworths, p. 9. It is interesting tonote that, by the publication of the 3rd edition of the text in 1995, any reference to‘Intellectual Property Rights’ had been dropped from the index to the work.

153 Ibid., 4th edn, pp. 12–16.


6. Conclusion

During the 1930s the Gramophone Company, now EMI Records, made aseries of recordings in England of classical pieces by three world-renownedartists, Yehudi Menuhin, Pablo Casals, and Edwin Fischer, the copyright ofwhich, under UK law had expired by 1990.1 In 1996, EMI (the parentcompany of Capitol Records) agreed that Capitol would have an exclusivelicence to exploit these earlier recordings in the US. At the same time, thebudget price classical music publisher, Naxos, located copies of theserecordings, and having undertaken its own restoration process, made themavailable for sale in 1999. Capitol commenced an action alleging infringementof their common law copyright in the recordings, as well as unfaircompetition, misappropriation and unjust enrichment. The District Courtgranted a summary judgment to Naxos.

On appeal, the Second Circuit considered that the case raised severalunsettled issues of New York law, and noting that under federal law ‘it isentirely up to New York to determine the scope of its common law copyrightwith respect to pre-1972 sound recordings’, certified the following question tothe Court of Appeals: ‘[I]s Naxos entitled to defeat Capitol’s claim forinfringement of common law copyrights in the original recordings?’2 InCapitol Records v. Naxos of America (2005) (Capitol Records) the Court ofAppeals considered that Naxos could not.3 There are many points of interestwithin the case worthy of exploration, however, central to the decision is thequestion of the existence and nature of the common law copyright upon whichthe plaintiffs based their claim.

In the recent US Supreme Court decision of Eldred v. Ashcroft (2003)(Eldred), Ginsberg J, delivering the opinion of the majority of the courtalluded to this very issue, in a footnote, albeit dodging the same:

167

1 Copyright Act 1911, 1 & 2 Geo. 5, c. 46, s. 19.2 The Court was also asked to answer the following: (1) Does the expiration of the

term of a copyright in the country of origin terminate a common law copyright in NewYork?; (2) Does a cause of action for common law copyright infringement includesome or all of the elements of unfair competition?; (3) Is a claim of common lawcopyright infringement defeated by a defendant’s showing that the work has slight ifany current market and that the defendant’s work, although using components of theplaintiff’s work, is fairly to be regarded as a “new product”?

3 Capitol Records v. Naxos of America (2005) 4 NY3d 540.

The parties disagree on the question whether the 1790 Act’s copyright term shouldbe regarded in part as compensation for the loss of any then existing state- orcommon-law copyright protections. … Without resolving that dispute, weunderscore that the First Congress clearly did confer copyright protection on worksthat had already been created.4

Graffeo J, delivering the judgment of the Court of Appeals, exhibited nosimilar ambivalence. Drawing upon the English copyright debates of theeighteenth century, and in particular upon Millar v. Taylor (1768) (Millar)5 andDonaldson v. Becket (1774) (Donaldson),6 she summarised as follows: that itwas considered that copyright existed at common law, that it extended beyondfirst publication into perpetuity, but that the common law right wassubsequently abrogated, as to the duration of copyright protection, by thepassing of the Statute of Anne 1709. Thus ‘the supremacy of statutory timelimitations for copyright protection’ was ‘firmly established in English law’.7

At this point Graffeo J adds her own footnote, which is worth replicating infull:

The precise ruling by the House of Lords is the subject of scholarly debate.Professor Nimmer, among other commentators, takes the position that the House ofLords voted to overrule Millar only with regard to the abrogation question (see 1Nimmer on Copyright §4.02[B], at 4-14 and n 12; see also Bowker, Copyright ItsHistory and Its Laws, at 7 [1912]; Patterson, Copyright in Historical Perspective, at174 [“The actual holding of the Donaldson case is that the author’s common-lawright to the sole printing, publishing, and vending of his works, a right which hecould assign in perpetuity, is taken away and supplanted by the Statute of Anne”];Burger, The Berne Convention: its History and its Key Role in the Future, 3 J. Law& Tech 1, 6 n 25 [1988]; Cambridge Research Institute, Omnibus CopyrightRevision, Comparative Analysis of the Issues, at 6 [1973]). It has been argued,however, that the House of Lords actually held that the common law never providedany copyright protection and that the rights of authors and publishers were solelystatutory in nature (see Abrams, The Historic Foundation of American CopyrightLaw: Exploding the Myth of Common Law Copyright, 29 Wayne L. Rev. 1119, 1164[Spring 1983]; Deazley, Re-Reading Donaldson [1774] in the Twenty-First Centuryand Why it Matters, 25[6] Eur. Intell. Prop. Rev. 270, 274 [2003]; Brown, Kaplanand Brown’s Copyright, at 53 and n 32 [2d ed. 1974]). The controversy stems fromthe lack of any contemporaneous report of the opinions of the Lords, because at thattime it was “contempt punishable by imprisonment to publish any statements madeby a Member of Parliament in the course of parliamentary business” (Abrams,supra, at 1159).8


4 Eldred v. Ashcroft (2003) 537 US 186, n. 3.5 Millar v. Taylor (1768) 4 Burr 2303.6 Donaldson v. Becket (1774) 4 Burr 2408.7 Capitol Records, pp. 549–50.8 Ibid.

Like Copinger’s reference to Jeffreys in the first edition of his series oncopyright, this footnote allows Graffeo J to acknowledge the existence of theargument which writers such as Abrams have made about the implications ofthe Donaldson decision as regards the existence of the common law rightwithout ever having to engage with it in any meaningful sense. However,given that the financial implications of the decision run into billions ofdollars,9 and that these recordings are now effectively ring-fenced from thepublic domain until 2067,10 one might have expected a little more.

And yet this should perhaps not surprise, in that it stands testament to thelong shadow which the orthodox (and erroneous) accounts of Millar andDonaldson still cast upon current copyright doctrine and discourse. Moreover,the treatise upon which Graffeo J draws most heavily is naturally Nimmer onCopyright. It is also Graffeo J’s reliance upon this work which explains theabsence of Jeffreys v. Boosey (1854) (Jeffreys)11 from her historical synopsisof the development of the law of copyright.

Any discussion as to the existence (or not) of copyright at common law within American jurisprudence must take place within the context of the Supreme Court decision of Wheaton v. Peters (1834), (Wheaton) decided20 years prior to Jeffreys itself.12 In Wheaton the Supreme Court, in a majority decision, established that whatever rights subsisted in a manu-script work (prior to publication), were lost upon publication, and that whatrights an author had in his work thereafter were entirely dictated by thelegislation.13

For McLean J, who handed down the majority opinion of the Court, whatrights did exist prior to publication? In a manner that foreshadowed the

Conclusion 169

9 During her judgment Graffeo J makes reference to the earlier decision of LaCienega Music Co. v. ZZ Top [1995] 516 US 927, which undermined the notion thatstate common law could provide copyright protection for pre-1972 sound recordings.‘It was estimated’ she notes ‘that the ruling, if allowed to stand, would cause musicians,composers and publishers to lose over a billion dollars in annual revenue’. In any eventCongress responded to the ruling by amending s. 303 to clarify that ‘the distributionbefore January 1, 1978, of a phonorecord shall not for any purpose constitute apublication of the musical work embodied therein’, 17 USC § 303[b].

10 Capitol Records, p. 558.11 Jeffreys v. Boosey (1854) 4 HLC 815.12 Wheaton v. Peters (1834) 33 US 591.13 Nimmer describes the effect of the Wheaton decision in the following way:

‘Wheaton v. Peters is a significant landmark not because of its analysis of Pennsylvaniacommon law, but rather because it established the American view that publication ipsofacto divested an author of common law copyright protection … [resting] on the simplebasis that no common law copyright for published works had ever been recognized inPennsylvania (or, by implication, in the rest of the United States) and consequently anauthor may protect published works, if at all, only under the federal copyright statute’;Nimmer on Copyright, § 4.02[C].

distinction elaborated by Lord St Leonards and Parke B in Jeffreys, heacknowledged:

That an author, at common law, has a property in his manuscript, and may obtainredress against any one who deprives him of it, or by improperly obtaining a copyendeavours to realize a profit by its publication, cannot be doubted; but this is a verydifferent right from that which asserts a perpetual and exclusive property in thefuture publication of the work, after the author shall have published it to the world.14

This right he continued ‘is presumed to be the copyright recognized in the act,and which was intended to be protected by its provisions’; this presumption herejected: ‘Congress … by this act, instead of sanctioning an existing right, ascontended for, created it’.15 For McLean J, as for the House of Lords inJeffreys, as well as Lord Camden, Lord Chancellor Apsley and the judges inthe minority in Donaldson, the right an author had at common law was, inessence, the right of determining when and by whom, if ever, a manuscriptmight be first published – something entirely different and distinct from thatof copyright.16

This distinction between the right of first publication at common law andthe statutory copyright which McLean had been careful to articulate wasacknowledged in Horace Ball’s The Law of Copyright and Literary Property,17

as was the place of Jeffreys itself in the history of British copyright law. ‘Theright of first publication’ he notes ‘arises out of the nature of the thing’;‘copyright after publication’ however, ‘does not arise out of the nature of thething, but is a special privilege which exists solely by virtue of the statute’.18

Furthermore, as to the history of copyright within the UK, Ball writes that inthe ‘century following the decision of Millar v. Taylor … the weight ofauthority was strongly opposed to the doctrine of perpetual copyright atcommon law’,19 at which point he cites Jeffreys (albeit in a footnote).20


14 Wheaton, p. 657.15 Ibid., p. 661.16 The irony of Wheaton in this regard is that McLean J’s judgment both entrenches

the then orthodox reading of Millar and Donaldson, while at the same expressing anopinion as to the nature of the common law right which allies itself with that of theminority judges and the majority of peers who spoke to the issue in Donaldson itself.

17 Ball, Horace G. (1944), The Law of Copyright and Literary Property, New York:Banks and Company.

18 Ibid., pp. 26–27.19 Supra n. 17, p. 25.20 Ibid. Elsewhere Ball writes: ‘The origin of the expression “common-law

copyright” can be traced to the presumptuous pretensions of the London booksellers inthe first half of the eighteenth century, who, in the hope of maintaining their monopolyof the book-publishing business in certain well known works which had been publishedoriginally long before the statute of Anne (1710) was passed, claimed an exclusive and

In this respect, however, he cuts an even more isolated figure than didScrutton.21

Apart from Ball, the key copyright texts produced in the US, prior toNimmer on Copyright, were by Morgan, Drone and Bowker. James Morgan’sThe Law of Literature was the first extensive treatment of US copyright lawsince Curtis’s Treatise of 1847.22 A rambling, repetitive and often inconsistenttext, Morgan, on the one hand, writes at length about the property inmanuscripts (in ‘literary composition before publication’) in a manner whichresonates with the observations of Lord St Leonards and Parke B from Jeffreysand with Charles Phillips writing thereafter (indeed it is almost Phillips wordfor word):23

[The] right of an author to his manuscripts is often alluded to as “copyright beforepublication”, and is often so spoken of by writers upon literary property. Thiscopyright before publication is the more ancient of the two. It is the exclusiveprivilege of first publishing any original material product of intellectual labor. Itsbasis is property, and it depends entirely upon the common law.24

Later however, and with no evident sense of contradiction, Morgan continuesthat ‘[t]he author only has given him, by law, what in morality, equity andgood conscience, he had before. Or, to speak more accurately, the law giveshim a method of asserting and protecting his right. Statutes of copyright onlyshift the burden of proof in favor of the author’,25 and:

[I]t can hardly be maintained that, because an author gives up a fragment of hisnatural rights in order that the law may more completely and fully protect theremainder, he has no natural rights at all. The right of a man to the offspring of hisown brain is a natural and moral right, secured to him by the unwritten law; and if

Conclusion 171

perpetual right under the common law to copy and reprint such works indefinitely – aclaim which was subsequently supported by the decision of the King’s bench in thefamous case of Millar v. Taylor, 4 Burr 2303. Even though such a right did exist by thecommon law of England, it was not adopted as part of the common law of any of thestates in this country, where the common law of literary property is the result ofmodifications of the English rules by American legislation and judicial decisions. …The common law protects the author in the original ownership of his manuscript, butdoes not extend to a multiplication of copies by republication to the exclusion ofothers’; ibid., pp. 470–71.

21 See in general Chapter 3.22 Morgan, J.A. (1875), The Law of Literature, vols 1 & 2, New York: Cockcroft &

Co.23 Phillips, C.P. (1863), The Law of Copyright in Works of Literature and Art and

in the Application of Designs, London; see Chapter 3, n. 46 and accompanying text. Tobe fair, Morgan does cite Phillips at this point in his text.

24 Morgan, supra n. 22, 1, p. 386.25 Morgan, supra n. 22, 2, p. 3.

the constitution of the United States, or any other written law, attempts to abrogatenatural and moral right and unwritten law – except as punishment for crime – thatwritten law, whatever it is, and by whomsoever enacted it, is, in just so far, null andvoid.26

Happily, he concludes, ‘it is hardly to be supposed that the constitution doesany such thing’.27 Whatever the inconsistencies, the overall tenor of Morgan’scommentary falls in line with that of Copinger et al. Indeed, in his introductoryessay he recasts Copinger’s rhetorical question (‘What property could be moreemphatically a man’s own than his literary works?’) in not too dissimilar form:‘What can be more emphatically a man’s own than his own ideas?’28

Morgan’s treatment of copyright’s historical development is peppered withreferences to and citations from the judges in the majority in Millar (and inparticular Willes J), from Maugham’s Treatise on the Laws of LiteraryProperty,29 and from Copinger itself.30 ‘Intellectual Property – that is, theproperty existing in Thought, Expression, Sentiment, and Language, - in likemanner with all other kinds of property, - must find its origin in Natural Law’;the clearest exponent of the principles of natural law in this regard were ofcourse Blackstone and Locke.31 Jeffreys, and indeed Wheaton, remain by andlarge absent, confined to the occasional footnote.32

Drone picked up where Morgan left off and, while both share the same zealfor the conceit of copyright at common law, if Morgan’s text rambles, Drone’scommentary is direct, well-structured and powerfully delivered.33 For Drone,literary property ‘both before and after publication, is founded on the sameprinciples, has the same essential attributes, is the same in every respect, asordinary property’, is ‘perpetual by the common law’, ‘cannot rightly be takenaway or abridged by the legislature’, and ‘like all property, has its origin innatural law, and not in legislation; it is, therefore, a natural and not an artificial


26 Ibid.27 Morgan, supra n. 22, 2, p. 79. Elsewhere, writing about the Statute of Anne, he

comments that ‘[i]f the statute right had opposed the moral right, it would have beentime to protest. As it did not, – but only, by superceding, confirmed and declared it, –it is to be praised and accepted’; ibid., 2, p. 4.

28 Morgan, supra n. 22, 1, p. 4.29 Maugham, R. (1828), A Treatise on the Laws of Literary Property, London.30 See generally Morgan, supra n. 22, 2, pp. 1–59.31 Ibid., 1, pp. 1–6.32 Wheaton only features in the main body of Morgan’s text as authority for the

proposition that ‘the decision of courts are a sort of common property, which may beappropriated and printed by whoever wishes to do so’; Morgan, supra n. 22, 2, p. 565.Apart from this Wheaton appears only sporadically and always in a footnote.

33 Drone, E.S. (1879), A Treatise on the Law of Property in IntellectualProductions, Boston: Little Brown and Company.

right’.34 Drone acknowledges the reality that as regards ‘intellectualproductions … when the statutory right begins, the common-law right ends’.35

However, Donaldson is to be criticized (in particular Lord Camden’s ‘speciousharangue’), as are the ‘groundless theories’ of Yates J, as was Wheaton, whichsimply ‘followed the doubtful and disputed precedent of the House of Lords[in Donaldson], without testing its soundness’ (which, Drone considered,‘deprive[s] Wheaton v. Peters of much of its weight as an authority’).36

Of the dissenting judgments in Wheaton, Drone writes: ‘In opposing theopinion of the majority, Justices Thompson and Baldwin expounded the trueprinciples governing literary property, with a clearness and force, that recallthe great arguments on this question by Sir William Blackstone, LordMansfield, and Justices Aston and Willes.’37 And so he goes on. As forJeffreys, not confined to the footnote as is the case with Morgan, Drone bringsit clearly to the fore:

The judgment rendered by the House of Lords in 1774 has continued to representthe law; but its soundness has been questioned by very high authorities. Indelivering the opinion of the full bench of the Court of Exchequer in 1851, inBoosey v. Jefferys, Lord Campbell said: “The first question discussed before us waswhether authors have a copyright in their works at common law. This is notessential for our determination of the present case. If it were, we are stronglyinclined to agree with Lord Mansfield and the great majority of judges, who, in

Conclusion 173

34 Ibid., pp. 16–17, 20 and 26. See also Drone’s comments from his introductoryessay on the ‘Origin and Nature of Literary Property’ that: ‘The principle is as old asproperty itself, that what a man creates by his own labor, out of his own materials, ishis to enjoy to the exclusion of all others. It is based not only on natural right, but alsoon the necessities of society, being essential to the promotion of industry’; and ‘thatbefore publication an author has, in the fruits of his intellectual labor, a property aswhole and as inviolable as that which exists in material possessions; that he hassupreme control over such productions, may exclude others from their enjoyment, maydispose of them as he pleases … If by publication this species of property is lost to theowner, it must be on the principle of abandonment or contract. No other theory hasbeen, and no other theory can be, advanced’; and again, that ‘[c]an it, then, be a soundprinciple of law, of ethics, of reason, that property is lost by the very act which alonegives it value? … Such reasoning is a burlesque, which might be entertaining if it wereconfined to theory; but reduced to practice, as it has been, it becomes grievouslyserious. It is a ridiculous doctrine which recognizes the existence of a species ofproperty, and yet pronounces its only use unlawful and self-destructive. If the propertyis recognized a mode of use must be conceded. To say that authors have rights ofproperty in their literary productions, and that they are lost by publication, which istheir only source of value is absurd. It is destructive of the first principles, the essence,the very notion of the right of property’; and so on.

35 Ibid., p. 100.36 Drone, supra n. 33, pp. 39 and 48.37 Ibid., p. 44.

Millar v. Taylor and Donaldson v. Becket, declared themselves to be in favour of thecommon-law right of authors.” And when the same case came before the House ofLords, in 1854, although the consideration of the subject was not essential to thedetermination of the issue before the house, Mr. Justice Erle delivered an elaborateargument in support of the doctrine maintained by Lord Mansfield. Mr. JusticeColeridge gave expression to similar views, and added: “If there was one subjectmore than any other upon which the great and varied learning of Lord Mansfield,his special familiarity with it, and the philosophical turn of his intellect, could givejudgment particular weight, it was this. I require no higher authority for aproposition which seems to me in itself reasonable and just”.38

The selectivity is breath-taking. As would be the case with Easton nearly 30years later,39 Jeffreys is invoked as a counterfoil to Donaldson, but whereasEaston was tentative in his use of the case to this end (confining it to a footnoteof course) Drone is ballsy, brash and unapologetic.

It is no doubt difficult for the modern lawyer to contemplate just exactlyhow Drone could be so cavalier in his handling of Jeffreys. However, he wasno doubt familiar with the first edition of Copinger’s treatise, published just 9years before, and the treatment which Jeffreys had received therein. One alsohas to remember that, Morgan’s work aside, Drone was the first authoritativeAmerican treatise on copyright law since Curtis, which had been publishedover 30 years before, and his work would remain the central (indeed sole) texton the subject for the next 30 years; Drone on Copyright was at that time theseminal work of American copyright scholarship.40

When Bowker published Copyright: Its History and Its Law in 1912, in theforeward to his work, he made sure to acknowledge his debt (within theacceptable limits of fair use naturally) to ‘the best law-book writers, especiallyDrone’ as well as (not Scrutton, but) ‘Copinger, Colles and Hardy andMacgillivray’.41 Written in the wake of new legislation in both the US and theUK, Bowker began by defining ‘copyright’ as meaning ‘the right to copy, tomake plenty’, ‘to multiply copies of those products of the human brain knownas literature and art’.42 He did continue by identifying another meaning of the


38 Drone, supra n. 33, pp. 42–43.39 Easton, J.M. (1915), The Law of Copyright, 5th edn, London: Stevens & Haynes;

see Chapter 3, n. 172 and accompanying text.40 Indeed, when Herbert Howell came to write his 1942 treatise on The Copyright

Law, in setting out his brief synopsis of the historical development copyright law inboth the UK and the US, he seems to rely almost exclusively on Drone; Howell, H.A.(1942), The Copyright Law: An Analysis of the Law of the United States GoverningRegistration and Protection of Copyright Works, Including Prints and Labels,Washington: The Bureau of National Affairs, pp. 1–6.

41 Bowker, R.R. (1912), Copyright: Its History and Its Law, Boston and New York:Houghton Mifflin Company, p. vii.

42 Ibid., p. 1.

word ‘much emphasized by several English justices’, that is, the ‘right in copymade’ (or rather the right in the manuscript), citing Lord St Leonards inJeffreys.43 However, Bowker’s work is about copyright in the former sense,and, given the debt already acknowledged, it comes as no surprise that whatfollows is an exegesis of Blackstone’s philosophy of copyright, of that naturalproperty which is ‘the creation of the individual brain’. Here, were it possible,Bowker is almost more adventurous in his use of Jeffreys than was Drone.With no apparent irony, he relies not on Erle J or Campbell CJ but uponcomments from Parke B to establish that a ‘[p]roperty right in unpublishedworks has never been effectively questioned – a fact which in itself confirmsthe view that intellectual property is a natural inherent right’.44 To this end,with the passing of the Statute of Anne and the decision in Donaldson, Bowkerbemoans that: ‘Literary and like property to this extent lost the character ofcopy-right, and became the subject of copy-privilege, depending on legalenactment for the security of the private owner’.45

And so we come to Nimmer on Copyright, upon which Graffeo Junderstandably places so much reliance. When Nimmer begins his section on‘The Subject Matter of Common Law Copyright’ he does so with theobservation that:

Until the advent of the Copyright Act of 1976, the American law of copyright hadbeen the subject of a dichotomy between federal and state law. Unpublished workswere automatically protected by state law, referred to somewhat inaccurately ascommon law copyright.46

Despite this warning concerning the inaccurate nature of the terminology,Nimmer nevertheless continues to use the term ‘common law copyright’throughout the rest of his exposition of the subject. Indeed, in the context of adiscussion as to whether such common law copyright (under state law)subsists in works which are not ‘fixed in a tangible medium of expression’, heseems to fly in the face of his own advice in writing:

It seems much preferable to view the underlying rationale for common lawcopyright (ie, the recognition that a property status should attach to the fruits of

Conclusion 175

43 Bowker, supra n. 41.44 Ibid., p. 4. Bowker does also refer to Jeffreys in the context of ‘Copyright

Throughout the British Empire’ noting that ‘[u]nder the Statute of Anne, it was decidedby the Law Lords, in the case of Jeffreys v. Boosey (overruling Boosey v. Jeffreys) thata person not a British subject or resident was not entitled to copyright because of firstpublication in England, but the statute of 1842 was construed to alter this’, ibid., pp.373–74, but this is the only other time he makes reference to the House of Lordsdecision.

45 Bowker, supra n. 41, p. 7.46 Nimmer on Copyright, § 2.02 and 2–18 (emphasis added).

intellectual labor) as applicable, regardless of whether such labor assumes tangibleform. … Assuming, as sometimes happens, that the writer has never reduced thestory to written form and that he orally relates the entire story (not just an abstractidea), there would seem to be no reason to accord to the story any less of a propertystatus than if the story had been reduced to writing. Situations where such a problemmight arise are perhaps rare … [h]owever, when such situations do arise, the creatorshould be able to claim the protection of common law copyright.47

At this point Nimmer inserts the following footnote:

The notion … that nothing is property which cannot be earmarked, and recoveredin detinue or trover, may be true in an early stage of society, when property is in itssimple form, and the remedies for violation of it also simple, but is not true in acivilized state, when the relations of life and the interests arising therefrom arecomplicated.

The quote is from Erle J in Jeffreys.48 Indeed, in his short 10-page commentaryupon the subject matter of common law copyright, in which Nimmer makesno less than seven references to the fact that Nimmer on Copyright has beencited or quoted in relevant case-law in this area,49 this quotation from Erle Jproves to be the only reference to Jeffreys, a fact which surely also explainswhy it is that this decision of the English House of Lords, which provided oneof the seminal critiques upon the concept of copyright at common law withinnineteenth-century Anglo-American jurisprudence, should be absent fromGraffeo J’s account of the history of that jurisprudence.50

Bluntly put, Jeffreys is irrelevant to Graffeo J because Jeffreys is irrelevantto Nimmer (except of course as a footnote in support of a rationale forcopyright at common law, which the House of Lords in Jeffreys explicitly


47 Ibid., pp. 2–26.48 Jeffreys, p. 868.49 See generally Nimmer on Copyright, § 2-18–2-27.50 As to Wheaton, Graffeo J notes: ‘[t]he majority acknowledged that the common

law insured copyright protection prior to publication but believed that in the absence offederal common law under our constitutional system, a party seeking common lawprotection must look to the state where the controversy arose’; Capitol Records, p. 551.McLean J, of course, explicitly rejected that what common law rights existed in a workwere to be understood as similar in nature to statutory copyright, a point which evenCopinger was willing to accept in noting that ‘a majority of the judges in Wheaton’were of the opinion that ‘no such right existed’; Copinger, W.A. (1870), The Law ofCopyright in Works of Literature and Art, London: Stevens & Haynes, p. 17. WhatMcLean J did acknowledge was that an author had rights in his or her manuscript, butagain, this was not to be understood (or referred to) as copyright. Here then we seeGraffeo J engaging in an all too familiar process of blurring the lines between the twodiscrete concepts of a common law right in a manuscript (which ensures an author hasthe right of first publication of that manuscript) and copyright at common law.

rejected). Instead, we have Graffeo J relying upon Nimmer on Copyright,which provides an exposition of the law relating to copyright at common lawwhich refers to Nimmer on Copyright in support thereof, a chain of reasoningwhich can be described as nothing other than Orwellian.

The temptation to finish with Orwell was strong indeed, however traditiondemands some cursory concluding comments and the Capitol Records episodeprovides an almost too-perfect hook upon which to hang the same. Thedecision and the commentary therein offer up powerful resonances with thenumerous preoccupations of this book. Here we have a decision which throwsinto sharp relief the staggering commercial and cultural consequences thatdepend on how the boundary between that which is copyright protected andthat which is public domain is drawn,51 which bears witness to the manner inwhich discrete legal phenomena can be so easily, yet so significantly,collapsed into one another, and which re-presents the orthodox history of thedevelopment of copyright incorporating the familiar myth of Donaldson andthe cult of Millar. In this regard of course, the decision does not take placewithin a vacuum. Graffeo J’s judgment also brings to the fore the various textsupon which she relies, with their specific historical and theoretical leanings, aswell as their various rhetorical nuances, and is testament to the process bywhich those practitioners and academics who write about the law can come todefine and determine the contemporary parameters of the law. And if wespeculate as to the relevance of Graffeo J’s decision in 20, or 50, or 100 yearstime? If this work has suggested anything it is that whether Capitol Recordsbecomes subsumed within the mainstream of doctrinal copyright law orinstead finds itself no more than a footnote in the history of copyright turns notsimply upon the manner in which the law itself might subsequently develop,but upon which treatise writer decides to write about the decision, what theyhave to say, how they say it, and why.

51 As a result of the decision in Capitol Records, Naxos have recently settled thelawsuit, agreeing to discontinue all US sales of classical recordings within the CapitolRecords portfolio. See www.billboard.biz/bb/biz/newsroom/legal_management/article-display.jsp?vnu_content_id=1001806497.

Conclusion 177

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Williams, J. (1998), ‘The Rhetoric of Property’, Iowa Law Review, 277.Winslow, R. (1889), The Law of Artistic Copyright, London: Clowes & Sons.WIPO, ‘Intellectual Property on the Internet: A Survey of the Issues’, available

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References190

Abernethy v. Hutchinson 85–6Abrams, H. 17, 40abridged works 26, 27access to work, concept 109Act to Amend the Law of Copyright

1842 155Act to Amend the Law Relating to

International Copyright 1844 56‘acts permitted in relation to copyright

works’ 113, 131‘acts restricted by copyright’ 106Adams, J.N. 1The Agreeable Surprise (play) 29Alexander, I. 1alienability 140American authors 57

protection of works in UK 74An Analysis of the Patent and Copyright

Laws (Newton) 91anti-monopoly movement 8Appellate Jurisdiction 58Arab Charter on Human Rights 136Archaeologica Philosophica 115An Argument in Defence of Literary

Property (Hargrave) 36, 112Art & Copyright (Stokes) 1The Art of Defence on Foot (Rowarth)

35Ashdown v. Telegraph Group 116, 117,

118, 152–3Australian Copyright Law Review

Committee 128, 129The Author’s Due (Loewenstein) 13authors 4–5

American 57, 74common law rights 37copyright for entirety of life 55foreign 48, 49–50natural rights of 24, 25property in the literary content of

manuscripts 79

right to control printing and reprinting89

right to unpublished works 80rights after publication 66rights before publication 65, 66rights of 16, 22, 23, 34, 39–40, 47, 61unpublished manuscript, perpetual

common law copyright 24works of foreign authors 43–7, 48–9,

51–3, 56–7, 63, 67–70, 71–2, 74Authors and Owners (Rose) 17Authors, Publishers and Politicians

(Barnes) 56

Bach v. Longman 29, 46, 54Bainbridge, D. 4, 5, 6, 115Ball, H.G. 99, 170Barnes, J.J.B. 56Barnett v. Glossop 47‘battle of the booksellers’ 5, 14Beckford v. Hood 29, 30, 32, 33, 37, 40,

53and common law copyright 31

Benkler, Y. 7, 118, 132Bentham, J. 99Bentley v. Foster 47Bently, L. 56Bentwich, H. 81Berne Convention 74, 110, 145, 149Bill for the Better Regulating of Printing

and Printing Presses 1695 143Bill for the Relief of Booksellers 21Blackstone, W. 39, 138book trade 13–14, 143

monopolistic abuse on 13Scottish 14, 21, 42

booksellerscopyright in perpetuity 42London, petition for legislation 20rights of 16, 19

Boosey v. Jeffreys 43, 51

191

Index

Boosey v. Lonsdale 47Boosey v. Purday 50, 60Boozey v. Tolkien 50Boucicault v. Chatterton 74–5Boucicault v. Delafield 70–71Bowker, R.R. 72, 174–5Boyle, J. 7, 105, 108Brazell, L. 124Briggs, W. 56, 79Britton, J. 34broadcasting 149–50Broadcasting Act 1996 129Brooke v. Clarke 35, 37Brooke v. Milliken 29Brook v. Wenworth 29Broughton, H. 444Brydges, E. 34Buckley on the Companies Act 90Budd, A. 1Burke, P. 40, 61Burnet v. Chetwood 115–16

Cadell and Davies v. Robertson 35Caird v. Sime 85, 86, 88Cambridge Law Journal 81Campbell, J. 43Capitol Records v. Naxos of America

167, 176–7Carnan v. Bowles 29Carter, H. 22Cary v. Kearsley 36Cary v. Longman 31The Case Stated between The Public

Libraries and the Booksellers(Cochrane) 34

Centre for Intellectual Property Policyand Management 1

Chappel, F.P. 64, 65Chappell v. Purday 48, 49–50, 55Charter of the Fundamental Rights of the

European Union (2000) 135–6, 151,161

Charterparties (Scrutton) 90choses in action 140–41Clark, C. 63Clementi v. Walker 43, 46click-wrap licensing agreements 128Cobbett, W. 17, 19, 66Cochrane, J.G. 34Cocks v. Purday 50

Colburn v. Duncombe 47, 53Colburn v. Simms 47Cole, R.C. 54Coleman v. Wathen 29, 32, 154

and the Statute of Anne 30Collins, P. 164–5Colston, C. 6Columbia Journal of Law & The Arts 8Commentaries on the Laws of England,

vol. 2 (Blackstone) 39, 138Commission on Intellectual Property

Rights, UK 130common good 23common law

courts of 14inherent jurisdiction at 116and literary property 61mechanisms for restricting the

operation of contractual provisions 128

and statutory right 86and unpublished works 70

common law copyrightarguments as to existence 47, 50, 51,

53, 62, 65, 67, 69, 80and Beckford 31before publication 88and Donaldson 16, 17, 18–20, 23and foreign authors 50and foreign works 67–70and Jeffreys 65in literary works 66perpetual common law copyright,

author’s unpublished manuscript24

post-publication 30, 62and Statute of Anne 19, 20, 21, 23–4,

32and Tuck 83–4

common law public interest defence 117

common law rights 5, 6, 7, 14, 21–2, 27,35, 38, 40, 64

Commons and Common Fields(Scrutton) 83

constitutive power, of legal writing 28contract, see law of contractCook, T. 124Copinger: The Law of Copyright

(Easton) 93

Index192

Copinger on the Law of Copyright(Skone James) 97

Copinger and Skone James on Copyright(Garnett, Davies and Harbottle) 3,23, 95

Copinger, W.A. 31, 75–8, 91Copyright: A Sketch of its Rise and

Progress (Purday) 78Copyright: Its History and Its Law

(Bowker) 74, 174–5copyright

before publication 65for entirety of author’s life 55European Directive on 36expiring 102historical trajectory 144–50as a human right 137infringement of 9, 117as an institutional phenomenon 106as an intangible property right 18and the interests of society 23and labour 79as a natural property right 161and newspaper reports 71in perpetuity 42as property 139–43as a proprietary right 79as the right of multiplying copies

62–3, 64theoretical justifications 137–8

Copyright Act 1801, and Ireland 53–4Copyright Act 1816 36Copyright Act 1842 38, 72, 73

debates surrounding passage 61Copyright Act 1862 83Copyright Act 1911 6, 87, 94, 145

and unpublished manuscripts 64Copyright Act 1956 147‘copyright-after-publication’ 66Copyright Bill 1898 86Copyright Cases (Macgillivray) 64copyright collecting societies 156Copyright Designs and Patents Act 1988

102, 113, 114, 126, 129, 147, 148permitted acts 150, 156

The Copyright Directive (Cook andBrazell) 124

Copyright in Historical Perspective(Patterson) 13, 108

Copyright Law (Hinkson) 81

Copyright Laws of the World (Singer) 91Copyright Lectures Act 1835 86Copyright in Letters (Macgillivray) 80copyright libraries 34Copyright and Patents for Inventions

(Macfie) 81Copyright and Patents, or, Property in

Thought (Leverson) 63Copyright and the Public Interest

(Davies) 138Copyright and Related Rights

Regulations 2003 114, 125, 149Copyright Society of the USA 17Copyright (Visually Impaired Persons)

Act 2002 131, 149copyright’s public domain 106–22Cornell Journal of Law and Public

Policy 7Cornish, W. 5, 6, 165The Correspondence of John Locke (De

Beer) 143Court of Chancery 14, 15, 20Court of Exchequer 63Court of Kings Bench 15Courtney, J. 67–8courts of common law 14Coyne v. Maxwell 70Creative Commons project 107criticism or review 114, 127–8Cumberland v. Copeland 155Cummins, M. 71, 73Curtis, G.T. 39, 40, 43Cutler, E. 79

D’Almaine v. Boosey 44–5, 46, 47Davies, G. 23, 138Dead Sea Scrolls 124Deazley, R. 1, 2, 5, 17, 32, 76, 108,

110De Beer, E.S. 143Defoe, D. 161Delondre v. Shaw 44, 45de novo rights 14DePaul Law Review 129Designers Guild v. Russell Williams 2, 3,

6De Trusler v. Murray 29, 31Dicey, A.V. 90Digest of the Criminal Law (Stephens)

90

Index 193

Digest of House of Lords Reports (Clark)63

Digest of the Law of Copyright(Stephen) 79, 90

Digital Copyright (Litman) 125Digital Copyright (Stokes) 1Digital Millennium Copyright Act 1998

125dominant copyright paradigm 161Donaldson v. Becket 5, 6, 15–24, 26, 30,

31, 32, 34, 35, 38, 40, 41, 48, 51,54, 88, 92, 94, 168, 170

and common law copyright 16, 17,18–20, 23

Copinger on 77decision of the House of Lords 17, 63impact upon Millar 67and Jeffreys 58–9, 60judges in case 17misreporting of decision 18, 24, 55petitions for legislation following case

20–21Purday on 78questions to House of Lords 16and Reade 69re-branding of 53reports of case 17–18

Donellan v. Beckett 53Doupe, M. 28Drahos, P. 142, 162, 163Dramatic Copyright Act 1833 68, 74dramatic works 154Dreyfuss, R. 9Dr Hawkesworth’s Voyages 26droit d’auteur 138droit de divulgation 65Drone, E.S. 80, 172–4Dublin Penny Journal 53Dublin’s Trade in Books, 1550–1800

(Pollard) 54Du Bost v. Beresford 36Duke Law Journal 113Duration of Copyright and Rights in

Performances Regulations 1995 36,147

Duxbury, N. 90

Easton, J.M. 93, 174The Economics of Intellectual Property

(Towse and Holzhauer) 138

Edmunds, L. 81education 13, 23, 44, 52, 120–21, 149educational resource packs 121Eldred v. Ashcroft 167–8Electronic Journal of Intellectual

Property Rights 121Elements of International Law

(Wheaton) 50EMI Records 167Emory Law Journal 103engravers/engraving 31, 53–4Engraving Copyright Acts (1734, 1767)

31, 35, 144Entertainment Law Review 1Espinasse, I. 35, 37, 60An Essay on the Regulation of the Press

(Defoe) 161etchings 91European Copyright Duration Directive

36unpublished works 110

European E-commerce Directive 149European Information Society Directive

114, 115, 124, 149, 151, 156–9European Intellectual Property Review

110, 113, 127European Software Directive 129The European Union Charter of

Fundamental Rights (Peers andWard) 137

Exchange Telegraph Company v.Gregory & Co. 86

exclusion thesis 140Expanding the Boundaries of Intellectual

Property (Dreyfuss) 9externalities, and copyright’s public

domain 122–9Eyre v. Carnan 29Eyre v. Walker 14

fair use 145Feather, J. 13Fifoot, C.H.S. 90Le Figaro 101films, term of protection 147Fine Arts Copyright Bills of 1868 and

1869 122The First Copyright Statute (Ransom) 13First, H. 9Firth, A. 166

Index194

Fisher v. Folds 53foreign works 43–7, 48–9, 51–3, 56–7,

63, 74and common law right 67–70, 71–2

Four Tracts on the Freedom of the Press(Parks) 36, 112

Fraser, J. 65

Garnet, K. 5, 6, 23Ginsberg, J.C. 8Godson, R. 41Goldstein, P. 156Guichard v. Mori 44, 46, 61Gummow, W.M.C. 1

A Handbook of English and ForeignCopyright (Jerrold) 80

A Handy-Book of the Law of Copyright(Chappell and Shoard) 64

A Handy-Book of Patent and CopyrightLaw (Fraser) 65

Harbottle, G. 23Hargrave, F. 35, 36, 112Haunted Hearts (novel) 71Hawkesworth v. Newbery 26, 29Henry Broughton, His Public Career

1778–1868 (Stewart) 44Hime v. Dale 36, 46Hinkson, H.A. 81Historical Foundations of the Common

Law (Milsom) 90An Historical Sketch of the Law of

Copyright (Lowndes) 38, 39, 61historical trajectory of copyright 144–50history of copyright

1710–1774 13–251774–1854 26–551854–1912 56–97

History of English Law (Holdsworth) 90History of English Law (Pollock and

Maitland) 90A History of the Oxford University Press

(Carter) 22Hohfeldian analysis 139Holdsworth, W.S. 90Holyoak & Torremans: Intellectual

Property Law (Torremans) 6Holzhauer, R. 138Hotten, J.C. 81Hubbard v. Vosper 115

human right, copyright as 137human rights 8, 151–2Human Rights Act 1998 116, 152

idea–expression dichotomy 112The Idea of Property (Underkuffler) 139The Idea of Property in Law (Penner)

140ideas 66, 112, 117impersonality 141indigenous communities 130–31Information Feudalism (Drahos) 163infringement of copyright 9, 117inherent jurisdiction, at common law 116In Re Dickens, Dickens v. Hawksley

95–7Institutes of the Laws in England 35, 36instrumentalist (or consequentialist)

approach 138, 163, 166insubstantiality 146intellectual commons 83, 103, 109, 110,

111, 119, 122, 123and the public domain 109–10

intellectual property 4, 9, 103, 108, 132,163–6

as a natural property right 152nature or justification 137Penner on 142–3protection 136–7time-limited 111

Intellectual Property (Bainbridge) 4Intellectual Property (Cornish and

Llewelyn) 6, 165Intellectual Property and Economic

Development (Khan) 57Intellectual Property and Information

Technology Law (Bainbridge) 115intellectual property freedoms 161–3,

165intellectual property privileges 161–3,

165Intellectual Property Quarterly 142intellectual property rights 162–3

as human rights 8interest groups, and the public domain

131International Copyright Act 1844 56International Copyright Act 1886 74International Covenant on Economic,

Social and Cultural Rights 136

Index 195

International Review of IndustrialProperty and Copyright Law(Dusollier) 127

internet 151Introduction to Intellectual Property Law

(Phillips and Firth) 166Introduction to Principles of Morals and

Legislation (Bentham) 99Iowa Law Review 152Ireland, and Copyright Act 1801 53–4Ireland Illustrated 53Irish Booksellers and English Writers,

1740–1800 (Cole) 54It is Never Too Late to Mend (novel) 69Ives, E.W. 28

Jaszi, P. 113Jeffreys v. Boosey 24–5, 31, 38, 42, 50,

53, 55, 56–64, 66, 93, 94, 169, 170,174, 175

and common law copyright 65and Donaldson 58–9, 60and the House of Lords 67Nimmer on 176opinions of common law judges 57–8and Routledge 71, 75Scrutton on 82, 86–7and Tuck 84and works published before 1842 74

Jerrold, S. 80Jones’ Exchequer Reports 53Journal of the Copyright Society of the

USA 8, 156Journal of Law and Information Science

103Judge and Jurist in the Reign of Victoria

(Fifoot) 90Judges and Jurists (Duxbury) 90Judicial Committee of the Privy Council

146

Kalkbrenner, F. 43Kaplan, B. 132Khan, B.Z. 57Kings College Law Review 28Koenigsberg, F. 8Krasilovsy, M.W. 102

labour 4, 138and copyright 79, 80

‘labour theory’ 4, 5Lacan, J. 101Laddie, H. 113Lange, D. 102, 104, 120language 7–8

of legislation 151, 161The Law of Art Copyright (Underdown)

65The Law of Artistic Copyright (Winslow)

81Law of the Constitution (Dicey) 90Law and Contemporary Problems 102,

108law of contract 122

and copyright 127–8Law of Contracts (Anson) 90The Law of Copyright (Easton) 174The Law of Copyright (Montefiore) 32,

60The Law of Copyright (Scrutton) 82,

96The Law of Copyright (Spalding) 80The Law of Copyright and Literary

Property (Ball) 99, 170The Law of Copyright in Designs

(Bentwich) 81The Law of Copyright in Works of

Literature and Art (Copinger) 31,75–8, 91

The Law of Copyright in Works ofLiterature and Art and in theApplication of Designs (Phillips)65, 71, 171

The Law of International Copyright(Briggs) 56

The Law of Literary Copyright (Briggs)79

The Law of Literature (Morgan) 75, 171

Law, Litigants and the Legal Profession(Ives and Manchester) 28

Law Magazine 41, 42, 63Law Magazine and Review 67The Law of Musical and Dramatic

Copyright (Cutler) 79Law Quarterly Review 8, 90Law Relating to Trusts and Trustees

(Underhill) 90The Law Relating to Works of Literature

and Art (Shortt) 65

Index196

law schools 90The Laws of Copyright (Scrutton) 81,

163Leader, D. 101lectures, and copyright 85–6legal literature, history and development

28legal treatises 28, 90legal writing, constitutive power 28Lemley, M.A. 7Lestocq (opera) 44Leverson, M.R. 63libraries 131, 148library deposit provision 33, 35Licensing Act 1662 13, 76, 108, 143,

159licensing schemes 157–8Linberg, S.W. 105Lion Laboratories v. Evans 116Literary Copyright: Seven Letters

(Hotten) 81Literary Copyright Reform in Early

Victorian England (Seville) 38, 61literary property 18, 40

and common law 61literary works 113

common law right in 66as property 75, 91protection for 38

Litman, J. 103, 111, 112, 113, 121, 125,133

Liverpool Law Review 28Llewelyn, D. 5, 6, 165Locke, J. 3, 4, 5, 138, 143–4Loewenstein, J. 13Lofft, C. 26, 27, 28Lowndes, J.J. 38–9, 61Low v. Routledge 71Low v. Ward 73–4

MacCormick, N. 142Macfie, R.A. 81Macgillivray, E.J. 64, 79–80, 88Macklin v. Richardson 153–4Maitland, F.W. 90The Making of Modern Intellectual

Property Law (Sherman andBently) 56

Manchester, A.H. 28Mansell v. Valley Printing Co. 88

The Mansfield Manuscripts and theGrowth of English Law in theEighteenth Century (Oldham) 29

manuscripts 79lawful ownership 65ownership of 18perpetual common law copyright,

author’s unpublished manuscript 24

Marsh v. Conquest 154, 155Maugham, R. 37, 38, 60Mechanics Institutes 44medicine, copyright to labels 44Michigan Law Review 4Middleton, K. 6Midwinter v. Hamilton 14Millar v. Kincaird 14Millar v. Taylor 5, 6, 15, 26, 30, 35, 40,

41, 48, 51, 54–5, 66, 113, 138, 168and common law copyright 15Copinger on 77cult of 53decision in 15impact of Donaldson 67

Milsom, S.F.C. 90Modern Intellectual Property Law

(Colston and Middleton) 6Monckton v. The Gramophone Company

Ltd 64, 87–9monopolies 41, 42, 71, 143–4, 166

time-limited 162Montefiore, J. 32, 60Moonstruck (song) 87moral rights 147–8Morgan, J.A. 75, 80, 171–2Motte v. Faulkner 14multiplying copies, and copyright 62–3,

64, 85Murphy, A. 121Murray v. Elliston 32, 45musical works

and Statute of Anne 46, 54unlawful publication 43

National Association for the Promotionof Social Science 44

natural (or moral) rights approach 138natural property right

copyright as 161intellectual property as 152

Index 197

The Nature of Copyright (Patterson andLinberg) 105

Newark v. National Phonographic 87The New Commerce in Ideas and

Intellectual Property (Plant) 132Newman, J.O. 9newspaper reports, and copyright 71Newton, A.V. 91New York University Law Review 8Nimmer, D. 169, 175–6Nimmer, M.B. 169, 175–6Nimmer on Copyright (Nimmer and

Nimmer) 169, 175–6non-interference, duty of 141Novello v. Sudlow 52

occupancy, and property rights 39–40,138

Ochoa, T.T. 108Oddi, A.S. 105Oldham, J. 29On the Origin of the Right to Copy

(Deazley) 5, 6, 8, 17, 32, 76, 108OpenSource movement 107opera 47, 50

allegation of infringement 48oppositional analysis 160ownership 124

of manuscript 18

Page v. Townsend 43Parks, S. 36, 112Parliamentary History from the Norman

Conquest (Cobbett) 66Patent Office, on history of copyright

121patents 41, 105Patterson, L.R. 13, 16, 105, 108Peers, S. 137Penner, J. 140Penner’s theory of property 140–42Pepoli v. Laporte 47perceived public domain 120performance rights 154–5periodical literature 41perpetual common law copyright 30,

37in author’s unpublished manuscript 24

perpetual copyright 22–3, 24, 35perpetuity, copyright in 42

personal or moveable property 151personality, notions of 138, 141Phillips, C.P. 64, 65, 71, 171Phillips, J. 166A Philosophy of Intellectual Property

(Drahos) 162photography 110, 127–8, 146plagiarism 27Plant, S.A. 132Platt v. Walter 71plays 32–3Pollard, M. 54Pollock, F. 90post-publication, common law copyright

30Power v. Walker 36, 43A Practical Treatise on the Law of

Patents for Invention and ofCopyright (Godson) 41

Prince Albert v. Strange 91Principles of Contract (Pollock) 90Principles of Equity (Snell) 90property 81, 132

in the abstract thing 88copyright as 139–43definitions of 139–40literary and artistic productions treated

as 163literary works as 75, 91in a patent or copyrighted work 41personal or moveable 151protection of 135right to 135

property rightscopyright as an intangible property

right 18and occupancy 39–40

protectionfor literary works 38of property 135

publicationinjunctions to prevent 76and loss of rights 76right of first publication 18–19, 79

public domain 101–6concept of 105copyright’s public domain 106–22critiques of copyright’s public domain

129–33definitions of 104–5

Index198

externalities, and copyright’s publicdomain 122–9

and intellectual commons 109–10and interest groups 131origin and meanings 108perceived 120relationship with copyright 2

public interest 117, 118, 131, 135Publishing, Piracy and Politics (Feather)

13Purday, C. 78

Ransom, H. 13Reade v. Conquest 68–70

and Donaldson 69Reasons for a Modification of the Act of

Anne (Turner) 34Rental Rights Directive 106Report of the Copyright Commissioners

(1878) 78Reports of Cases adjudged in the Court

of the King’s Bench (Lofft) 26, 27,28

rhetoric 8Richardson v. Universities of Oxford and

Cambridge 56right of first publication 18–19, 79The Right of Literature (Britton) 34right to perform a work in public 153–5The Right to Private Property (Waldron)

139right to property 135rights

of authors 16of booksellers 16

rights in rem 141, 162Rose, M. 17, 108, 133Routledge v. Low 71–2, 75

and Jeffreys 71, 75Rowarth, C. 35Rowarth v. Wilkes 35Royal National Institute for the Blind

131royalty payments 147Ryan, M. 7

Salter, M. 28Samuels, E. 111Samuelson, P. 102, 125Sayre v. Moore 29

Scarlett, J. (Lord Abinger) 45, 46Scotland, book trade 14, 21, 42Scrutton, T.E. 81–3, 90, 96, 163The Seasons (Thomson) 15Second Treatise on Government (Locke)

3, 4Select Essays in Anglo-American Legal

History (Veeder) 29separability thesis 140–41Seville, C. 38, 61Shamans, Software, & Spleens (Boyle) 7Shepherd v. Conquest 67–8Sherman, B. 56, 103Shoard, J. 64, 65Shortt, J. 65Simpson, A.W.B. 28Singer, B. 91Sisken, C. 55Skone James, F.E. 94, 95, 97The Sleepwalker (opera) 50, 51, 57–8Snell, E.H.T. 90Society for the Diffusion of Useful

Knowledge 44Sounding the Charge (painting) 83sound recording 87–8Southey v. Sherwood 116Spalding, H.M. 80Star Chamber decrees 76Stationers’ Company 76, 108Statute of Anne, 1709 5, 6, 23, 39, 76,

108, 161, 168attempts to secure replacement act 14and Coleman 30and common law copyright 19, 20, 21,

23–4, 33, 81complaints procedure 126and music 46, 54revision 36statutory periods of protection 14, 31,

48terms of 13

statutory right, and common law 86Stealing the Mona Lisa (Leader) 101Stephen, J. 79Stephens, J.F. 90Sterk, S.E. 4, 7Sterling, A.J. 120Stewart, R. 44Stokes, S. 1Storace v. Longman 29

Index 199

A Summary Statement of the GreatGrievance imposed on Authors andPublishers (Brydges) 34

Talfourd, T.N. 53technological protection measures

(TPMs) 122, 125–6, 129, 158Texas Law Review 7, 132theatrical productions, and common law

copyright 67–8‘thinghood’ of objects 140Thomas, G. 103The Times 45, 47, 50, 57, 70Tonson v. Collins 14, 32Tonson v. Walker 14Torremans, P.L.C. 5, 6Towse, R. 138tragedy of the commons 4Treatise on the Law of Actions on

Statutes (Espinasse) 35, 43, 60Treatise on the Law of Copyright

(Burke) 40A Treatise on the Law of Copyright

(Curtis) 39, 43, 61A Treatise on the Law of Copyright in

Literature (Burke) 40, 61A Treatise on the Law of Property in

Intellectual Productions (Drone) 80,172–3

A Treatise on the Laws of LiteraryProperty (Maugham) 37, 38, 60

A Treatise Upon the Law of Copyright(Macgillivray) 79

TRIPS (Agreement on Trade-RelatedAspects on Intellectual PropertyRights) 163

Trustees of the British Museum v. Payne47

Tuck & Sons v. Priester 83–4and common law copyright 83–4and Jeffreys 84

Turner, S. 34

UN Committee on Economic, Social andCultural Rights 137, 142

Underdown, E.M. 65, 66Underhill, A. 90Underkuffler, L.S. 139undisclosed domain 109–10Unfair Contract Terms Act 1977 128

Unfair Terms in Consumer ContractsRegulations 1999 128

An Unhurried View of Copyright(Kaplan) 132

Universal Declaration of Human Rights136

universitiesOxford and Cambridge

perpetual right to reprint 22–3petition for legislation 20

Universities Act 1775 22–3University of Cambridge v. Bryer 33,

34–5, 37, 60University of Dayton Law Review 108University of Pittsburg Law Review 121unpublished manuscripts

and Copyright Act 1911 64injunctions to prevent publication 76

unpublished pictures 88unpublished works

and common law 70, 79, 94European Copyright Duration

Directive 110right of authors to 80

USA 169attitudes to international copyright 57authors 57, 74copyright and idea-expression

dichotomy 112use without permission 109, 111, 115use of a work, concept 109

Van Caenegem, W. 129Vaver, D. 8, 27Veeder, V.V. 29A Vindication of the Exclusive Right of

Authors, to use their own works(Anon.) 112

Viva Henri Quatre (music) 43

Waldron, J. 139Walker v. Lane 85wallpaper manufacturers, unlawful

copying 2–3Walthoe v. Walker 14Ward, A. 137Wayne Law Review 17, 41Wheaton, H. 50Wheaton v. Peters 40, 60, 169, 170, 176Whicher, J. 17

Index200

White v. Geroch 37Whittingham v. Wooler 154Winslow, R. 81WIPO Copyright Treaty (WCT) Article

11 124The Woman in Red (play) 70The Work of Writing (Siskin) 55works made available to the public 114

works not yet written 53World Copyright Law (Sterling) 120World Intellectual Property Organisation

(WIPO) 144

Yates, J. 41

Zimmerman, D.L. 9

Index 201

DEAZLEY, Ronan [Rethinking Copyright. History, Theory, Language]

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Transcript of DEAZLEY, Ronan [Rethinking Copyright. History, Theory, Language]