Case: 13-4829Document: 77Page: 104/14/201412017618013-4829-cvUnited States Court of Appealsfor theSecond CircuitTHE AUTHORS GUILD, BETTY MILES, JIM BOUTON, JOSEPHGOULDEN, individually and on behalf of all others similarly situated,Plaintiffs-Appellants,HERBERT MITGANG, DANIEL HOFFMAN, individually and on behalf ofall others similarly situated, PAUL DICKSON, THE MCGRAW-HILLCOMPANIES, INC., PEARSON EDUCATION, INC., SIMON & SCHUSTER,INC., ASSOCIATION OF AMERICAN PUBLISHERS, INC., CANADIANSTANDARD ASSOCIATION, JOHN WILEY & SONS, INC., individuallyand on behalf of all others similarly situated,Plaintiffs,– v. –GOOGLE, INC.Defendant-Appellee.ON APPEAL FROM THE UNITED STATES DISTRICT COURTFOR THE SOUTHERN DISTRICT OF NEW YORKBRIEF OF AMICUS CURIAE INTERNATIONAL AUTHORS FORUMIN SUPPORT OF APPELLANTSDAVID B. SUNSHINEAttorney for Amicus Curiae277 Park AvenueNew York, New York 10172(212) 883-4900Case: 13-4829Document: 77Page: 204/14/2014120176180Rule 26.1 Disclosure StatementThe International Authors Forum (“IAF”) is a private company, limited byguarantee, incorporated on April 19, 2013 under the United Kingdom CompaniesAct 2006 with its registered office in England and Wales. IAF has no parentcorporation and no publicly held corporation owns 10% or more of its stock.iCase: 13-4829Document: 77Page: 304/14/2014120176180TABLE OF CONTENTSPageARGUMENT .............................................................................................................2I.Introduction......................................................................................................3II.One work, not millions ....................................................................................3III.The purported benefits of the Library Project and Google Books ..................4IV.A.Generally ...............................................................................................4B.Facilitating access by visually impaired persons ..................................5The four factors of fair use ..............................................................................6A.Purpose and character of use .................................................................7B.Nature of copyright works.....................................................................7C.Amount and substantiality of portion used ...........................................9D.Effect of use upon potential market or value ......................................10V.Detriment to the author ..................................................................................11VI.Conclusion .....................................................................................................12CERTIFICATE OF COMPLIANCE .......................................................................14CERTIFICATE OF SERVICE ................................................................................15iiCase: 13-4829Document: 77Page: 404/14/2014120176180TABLE OF AUTHORITIESPage(s)CasesBerman v. Parker,348 US 26 (1954) .................................................................................................. 6Campbell v. Acuff-Rose Music, Inc.,510 U.S. 569 (1994) .............................................................................................. 9Cartoon Network LP, LLLP v. CSC Holdings, Inc.,536 F. 3d 121 (2d Cir. 2008) .............................................................................. 11Harper & Row, Publishers, Inc. v. Nation Enterprises,471 U.S. 539 (1985) (Brennan, J., dissenting) ...........................................8, 9, 10Maxtone-Graham v. Burtchaell,803 F.2d 1253 (2d Cir. 1986) ............................................................................... 9New Era Publications Int’l. v. Carol Pub. Group,904 F. 2d 152 (2d Cir. 1990) ................................................................................ 8Ringgold v. Black Entertainment Television, Inc.,126 F. 3d 70 (2d Cir. 1997) ................................................................................ 11Statutes17 U.S.C. § 106(1) ................................................................................................... 1117 U. S. C. § 106 & 107 ............................................................................................. 317 U.S.C. §107 .....................................................................................................3, 1017 U.S.C. §121(1) .................................................................................................. 5, 6Other AuthoritiesFed. R. App. P. 32(a)(5) ........................................................................................... 14Fed. R. App. P. 32(a)(6) ........................................................................................... 14iiiCase: 13-4829Document: 77Page: 504/14/2014120176180Fed. R. App. P. 32(a)(7)(B) ..................................................................................... 14Fed. R. App. P. 32(a)(7)(B)(iii) ............................................................................... 14ivCase: 13-4829Document: 77Page: 604/14/2014120176180INTEREST OF AMICUS CURIAE1The International Authors Forum (“IAF”) is a private company, limited byguarantee, incorporated on April 19, 2013 under the United Kingdom CompaniesAct 2006 with its registered office in England and Wales.IAF is a worldwide forum for organizations dedicated to the protection andadvancement of authors’ rights. Its stated goals are to:Provide authors’ organizations worldwide with an internationalplatform to exchange information, develop positions and providesupport in authors’ rights matters;Advocate the author’s role in society, pointing out the importance ofcreation for cultural diversity and the economic value which authorscreate;Promote and defend authors’ interests and authors’ rights includingboth moral and economic rights;Actively work in favor of balanced contractual legislation thatguarantees fair practices for authors and ensures that authors retaintheir economic and moral rights against buyouts and other unfairpractices;Promote the benefits of authors’ rights in general and of collectivemanagement in particular in order to ensure that authors alwaysreceive fair and equitable remuneration whenever their works areexploited by third parties.1No party or party’s counsel has authored this brief in whole or in part, or contributed money thatwas intended to fund preparing or submitting the brief. No person has contributed money thatwas intended to fund preparing or submitting the brief, except that IAF paid the costs andexpenses involved in filing this brief.Case: 13-4829Document: 77Page: 704/14/2014120176180As of March 2014, IAF had 28 member organizations from around the worldincluding countries in North America, Europe, Africa and Australasia. A list ofmember organizations is set out at ADD-1.IAF has also had interest inmembership and attendance at its meetings from organizations from countries inAsia and South America.IAF is a global organization representing authors and their interests. Thelitigation between the Plaintiffs and the Defendant will define the rights of millionsof authors worldwide, many of whom will be members or affiliates of IAF’smembers. IAF has a significant interest in the outcome of the litigation.This brief is supported by the International Federation of ReproductionRights Organisations (“IFRRO”).IFRRO and its 143 member organizationsworldwide represent millions of authors and publishers, and work to increase thelawful use of text- and image-based copyright works and to eliminate unauthorizedcopying,bypromotingefficientcollectiverightsmanagementthroughReproduction Rights Organizations to complement authors’, publishers’ and otherright holders’ own activities. A letter confirming IFRRO’s support is attached atADD-2.All parties have consented to the filing of this brief.ARGUMENT“The super adding of ingenuity to robbery does not make the operationjustifiable.” Lord Justice Bowen - Wenham Gas Co Ltd v Champion Gas Lamp Co(1892) 9 RPC 49 at 56, English Court of Appeal.2Case: 13-4829I.Document: 77Page: 804/14/2014120176180IntroductionIAF supports the Authors Guild’s (“AG”) appeal against the judgment of theDistrict Court where it granted Google’s motion for summary judgment on theissue of fair use and dismissed AG’s motion for summary judgment.II.One work, not millionsThe District Court erred by effectively treating the Library Project as asingle, collective entity, rather than individual books to be analyzed on their own.Copyright protects a single work. Questions of infringement and with themquestions of fair use are wrapped up with that discrete unit.17 U.S.C. §107 is expressed in terms of fair use of a copyrighted work. Thespecial cases exception under Article 9 of the Berne Convention requires that“such reproduction does not conflict with a normal exploitation of the work anddoes not unreasonably prejudice the legitimate interests of the author” (emphasisadded). Article 10(2) of the WIPO Copyright Treaty, provides that limitations orexceptions to rights under the Berne Convention should be confined to specialcases that do not conflict with a normal exploitation of the work and do notunreasonably prejudice the legitimate interests of the author.”Unless Google establishes that its acts are fair use in relation to each work,then those acts infringe. See, e.g., 17 U. S. C. § 106 & 107.That Google has aggregated numerous works together should not absolve itfrom liability. Otherwise, where does it stop? Does infringement become fair usewhen two works are taken? Three? Ten thousand? One million? Looking awayfrom Google for a moment, can it really be right that a prolific file-sharer wouldhave a better defense to copyright infringement than someone who shared one fileonce? The answer should be no.3Case: 13-4829III.Document: 77Page: 904/14/2014120176180The purported benefits of the Library Project and Google BooksA.GenerallyThe District Court erred in considering the Library Project and GoogleBooks almost interchangeably. Moreover, it erred in not separating the infringingworks from the non-infringing works. The background to Google’s activities is setout in the judgment of the District Court. In short, Google Books is a project todigitize books and convert them into computer readable text via optical characterrecognition technology. The computer-readable text is indexed to allow searchingvia Google’s search engine. Content from the books is displayed in response tokeyword searches, subject to certain limitations as set out in the judgment. GoogleBooks comprises the Library Project, where the books supplied by partnerlibraries, and the Partner Program, where books are supplied by rights holders withtheir consent. The Library Project itself comprises both public domain works andworks subject to copyright protection.When looking at the benefits of Google Books and the Library Project, theDistrict Court did not take into account the effect of removing in-copyright worksfrom the Library Project. If that occurred, Google Books and the public domainLibrary Project would:(1)remain an essential research tool;(2)continue to make the process of interlibrary lending more efficient;(3)continue to facilitate finding and checking citations;(4)remain an important tool for researchers and librarians;(5)continue to permit humanities scholars to analysis massive amounts ofdata;4Case: 13-4829(6)Document: 77Page: 1004/14/2014120176180continue to permit researchers to analyze word frequencies, syntacticpatterns and thematic markers to consider how literary style haschanged over time;(7)continue to expand access to books;(8)continue to facilitate the identification and access of materials forremote and underfunded libraries;(9)continue to help the preservation of books; and(10) continue to benefit authors and publishers who wish to use the serviceand give their consent.While true that the Library Project would have fewer books available, thenumber would still run into the millions.It cannot be right that Google can deprive the author of a single work of hisexclusive rights simply by pointing at a huge mass of works and saying essentially:when compared to that substantial group of works , the individual work is notsignificant; it is meta-data. On the contrary, the work is significant to the author.It matters.B.Facilitating access by visually impaired personsNobody would deny that it is a commendable goal to ensure that visuallyimpaired people and those with print disabilities have access to books. Indeedlegislatures and governments around the world have made express provision formaking accessible copies available without infringing copyright.The United States has made such provision at 17 U.S.C. §121(1). TheUnited States is also a signatory to the Marrakesh Treaty to Facilitate Access toPublished Works for Persons Who Are Blind, Visually Impaired or Otherwise5Case: 13-4829Document: 77Page: 1104/14/2014120176180Print Disabled which contains similar provisions. There are 2 mandatory featuresof the §121(1) limitation and like provisions under the Marrakesh Treaty:(1)The copies must be exclusively for use by blind or other persons withdisabilities;(2)The limitation applies only to an authorized entity, defined as “a nonprofit organization or governmental agency that has a primary missionto provide specialized services relating to training, education, oradaptive reading or information access needs of blind or other personswith disabilities.”Google’s use of the works at issue is not exclusively limited for use by blindor other persons with disabilities. Google is not a non-profit organization orgovernment agency and its primary mission is not the mission required by anddescribed in the legislation.When considering the fair use limitation, it is not appropriate to considerfactors where the legislature has already make adequate provision. Cf. Berman v.Parker, 348 U.S. 26, 32 (1954) (“Subject to specific constitutional limitations,when the legislature has spoken, the public interest has been declared in termswell-nigh conclusive. In such cases the legislature, not the judiciary, is the mainguardian of the public needs to be served by social legislation.”). In doing so, theDistrict Court erred.IV.The four factors of fair useWhen viewed from the perspective of a single work, the District Court’sanalysis is not sustainable.6Case: 13-4829A.Document: 77Page: 1204/14/2014120176180Purpose and character of useA single book cannot be mined for useful data. It cannot be transformed intoanything other than an electronic format of itself.The speed and power ofcomputers today makes a search index for a single book a waste of time and space.When considering the purpose and character of use, the District Court’s error ofaggregating millions of works together is most conspicuous. The cumulative effectof millions of infringements may create new information but each individual doesnot. The question of fair use should not be judged by the audacity of the infringer.Moreover, substantive research in the form of data mining and text analysisdoes not require the entire corpus of the written word to be mined and analyzed.The Partner Program and the public domain Library Project works number millionsof texts, all available for those purposes without infringing anybody’s copyright.The character of the use should be assessed by looking at the use itself. If auser of Google’s blog service were to scan, convert by optical characterrecognition, and upload the text of book in copyright to his blog, the book wouldbecome searchable and mineable and would accrue all the other attributesassociated with electronic publication. It would still unquestionably infringe therights holder’s copyright; it could not be characterized as fair use.For those reasons, the District Court erred when it concluded that the firstfair use factor strongly favored a finding of fair use.B.Nature of copyright worksIn its analysis of the nature of the copyright works, the District Court againerred by starting its analysis from the point of view that those works could treatedas an amorphous mass. The nature of a copyright work depends upon the workitself, not the company it keeps.7Case: 13-4829Document: 77Page: 1304/14/2014120176180In the Judge’s analysis, he referred to the fact that the works are books. Themere fact that a work is a book cannot be either for or against a finding of fair use.It is entirely neutral.The Judge also recognized a distinction between fiction and non-fictionworks. But that does not mean use of a non-fiction work is fair use, merelybecause the work is non-fiction. See e.g., New Era Publications Int’l. v. CarolPub. Group, 904 F. 2d 152, 158 (2d Cir. 1990) (noting that “creation of anonfiction work, even a compilation of pure fact, entails originality” deserving ofcopyright protection) (internal punctuation and quotation marks omitted) (citationsomitted).The District Court also failed to analyze works of fiction and non-fictionseparately. Can it be right that a fiction author be denied his rights because theinfringer takes a mass of non-fiction at the same time? The answer must be no.Moreover, the District Court did not analyze in any detail the distinctionbetween published and unpublished works. It may be correct that the distinction isimportant in considering fair use. But merely because a work is published is not agood enough reason by itself to say its appropriation is fair use. See Harper &Row, Publishers, Inc. v. Nation Enterprises, 471 U.S. 539, 597 (1985) (Brennan, J.,dissenting) (disagreeing with majority’s reliance on prepublication-post publicationdichotomy and noting case law wherein the Court held that “the fair use inquirycould never be resolved on the basis of such a “two dimensional” categoricalapproach”). Otherwise, copyright would be defeated entirely; authors would notbother to publish and the arts and sciences would be deprived of their contribution.8Case: 13-4829Document: 77Page: 1404/14/2014120176180The effect of the District Court analysis can be summed up as follows: if awork is a non-fiction book which has been published, there is a presumptiontowards finding fair use. That cannot be justified on its face. See id. When fictionor unpublished works are caught in the same net, merely by their proximity, theconclusion is self-evidently wrong.C.Amount and substantiality of portion usedUnder this heading, the District Court concluded that the factor weighedslightly against a finding of fair use. The finding that the Library Project wastreated as a single, collective entity, rather than individual books to be analyzed ontheir own, seriously understated the use that Google is making of the individualworks.The District Court made that finding against the context of Google’snecessary reproduction of the full work in order to offer full text search. TheDistrict Court’s reasoning is flawed. The fact that something is necessary to aninfringement does not mean the infringement becomes fair use. Amount andsubstantiality do not necessarily dictate a finding of fair use where the other fairuse factors militate against such a finding. See Maxtone-Graham v. Burtchaell,803 F.2d 1253, 1263 (2d Cir. 1986) (“There are no absolute rules as to how muchof a copyrighted work may be copied and still be considered a fair use”).Returning to the scenario of a file sharer, his activities do not become legitimatesimply because it is necessary to offer a whole work for download.Google’s limit to the amount of text displayed in response to a search maybe a partial answer to the “amount” prong of the factor but not to the“substantiality” prong. What is substantial imports a qualitative and quantitativeassessment that must be performed on a case-by-case basis. See, e.g. Campbell v.9Case: 13-4829Document: 77Page: 1504/14/2014120176180Acuff-Rose Music, Inc., 510 U.S. 569, 586-589 (1994) (discussing how, whenevaluating the substantiality prong of the fair use test, “context is everything”).The final chapter of the Harry Potter series might be said to be more substantialthan some other chapters. The face in a portrait painting might have more valuethan a section of the background. These are points that can be analyzed only on acase-by-case basis. Harper & Row, 471 U.S. at 559 (“Section 107 requires a caseby-case determination whether a particular use is fair”).D.Effect of use upon potential market or valueOnce again, the District Court viewed the case through the incorrect lens.When it held that a reasonable fact finder could only find that Google Booksenhances the sales of books to the benefit of copyright holders, he was consideringthe mass of copyright works Google had misappropriated and not individualworks.The reason the rights of a copyright holder are exclusive are to give him thefreedom of choice of how, when, and whether to exploit his or her work. SeeHarper & Row, 471 U.S. at 554-55. If a copyright holder is satisfied that GoogleBooks is a good way to commercialize his work, then he has the right to enroll itinto the Partner Program. On the other hand, if he is not satisfied, he should havethe same right to choose not to participate. That some rights holders might find anadvantage is irrelevant since they can choose to join the Partner Program if theychoose.One person’s rights should not be deprived so others can benefit,especially when the beneficiaries can make that choice anyway. It is an entirelyunnecessary infringement.In finding that the fourth factor weighed strongly in favor of fair use, theDistrict Court started from the wrong point and came to the wrong conclusion.10Case: 13-4829V.Document: 77Page: 1604/14/2014120176180Detriment to the authorAn author is entitled to the benefits of his work.The most obviouseconomic benefit to an author of course comes from royalties on the sale of books.See Ringgold v. Black Entertainment Television, Inc., 126 F. 3d 70, 73 (2d Cir.1997) (“[E]xclusive rights normally give a copyright owner the right to seekroyalties from others who wish to use the copyrighted work.”) (citations omitted).It should be up to the copyright owner how those rights are exploited. Google’suse, coupled with the nebulous promise of increased sales from links, is somethingthat should be the owner’s choice.The benefits do not end with book sales. A writer may be able to exploit hiswork if a movie is based upon it for example.In many cases, a writer can obtain an income stream from reproduction ofhis work by others, an income stream that is expressly protected by the copyrightlaws. See, e.g., Cartoon Network LP, LLLP v. CSC Holdings, Inc., 536 F. 3d 121,126 (2d Cir. 2008) (highlighting and discussing the copyright holder’s exclusiveright “to reproduce the copyrighted work in copies” under 17 U.S.C. § 106(1)).The photocopying of substantial portions of a book requires the author’spermission and he is entitled to withhold permission if he wishes to prevent thatkind of reproduction. See Id. On a practical level, an individual author would findit difficult to enforce those rights on a global basis since he simply would not havethe resources to monitor, let alone police, every photocopier in the world.Fortunately, in most countries, there are licensing arrangements that dealwith the issue.Many of these arrangements are provided by, for example,members of IAF and IFRRO. For modest license fees, an institution can reproduce11Case: 13-4829Document: 77Page: 1704/14/2014120176180copyright works, within specified limits, without worrying about infringingcopyright. The license fees are then distributed to authors and publishers.For many authors, these license fees are a crucial source of income. Thismight be particularly true for writers of academic and educational works for whomlicense income has been proven to be critical to the process of creating newmaterial. A user of that work might not be able to justify purchasing the wholebook. But under a licensing system the author can confidently use the sections inwhich his interest lies without worrying about infringement.The author andpublisher benefit, the user benefits, society benefits.These licensing arrangements demonstrably provide a pragmatic balancebetween the rights of copyright holders and society’s need to advance the arts andsciences.The Google Library Program has the potential to bypass these licensingsystems, causing considerable detriment to authors and publishers and, in turn,reducing the pool of content available to users.VI.ConclusionThe District Court’s reasoning was flawed because it started from the wrongpoint and erred in considering critical points in the analysis. Had it correctlyanalyzed the factors from the correct starting point of looking at a single work, itcould only have concluded that the case in favor of infringement and against fairuse was overwhelming.Ultimately, the issue comes down to this: an author asked about why hewrote what he did may give many answers. He may say that it was a labor of love.He may say that it was to make a living. He may say many things. But what he12Case: 13-4829Document: 77Page: 1804/14/2014120176180will not say is that he wrote his book so it could be subsumed into a corporatemeta-database optimized for searching.Talk of snippets and data-mining are sideshows to the real issue: Google’sclever infringement scheme deprives authors and publishers of their rights. Itdeprives them of income and exclusivity. It conflicts with the normal exploitationof the books and unreasonably prejudice the legitimate interests of the authors.The mere fact that Google’s infringement scheme is clever should not makeit permissible under the law.Dated: April 14, 2014Respectfully submitted,s/ David B. SunshineDavid B. SunshineCOZEN O’CONNOR277 Park AvenueNew York, New York 10172(212) 883-4900Attorneys for Amicus CuriaeInternational Authors Forum13Case: 13-4829Document: 77Page: 1904/14/2014120176180CERTIFICATE OF COMPLIANCEThis brief complies with the type-volume limitation of Fed. R. App. P.32(a)(7)(B) because based on the word count of the word-processing system usedto prepare the brief (Microsoft Word), this brief contains 3,245 words, excludingthe part of the brief exempted by Fed. R. App. P. 32(a)(7)(B)(iii).This brief complies with the typeface requirements of Fed. R. App. P.32(a)(5) and the type style requirements of Fed. R. App. P. 32(a)(6) because thisbrief has been prepared in a proportionally spaced typeface using Microsoft Wordin 14-point Times New Roman.s/ David B. SunshineAttorneys for Amicus CuriaeInternational Authors Forum14Case: 13-4829Document: 77Page: 2004/14/2014120176180CERTIFICATE OF SERVICEI hereby certify that on April 14, 2014, I electronically filed the foregoingwith the Clerk of the Court for the United States Court of Appeals for the SecondCircuit by using the CM/ECF system. I certify that all participants in the case areregistered CM/ECF users and that service will be accomplished by the CM/ECFsystem.s/ David B. SunshineAttorneys for Amicus CuriaeInternational Authors ForumLEGAL\18716220\215Case: 13-4829 Document: 77 Page: 21 04/14/2014 1201761 80ADDENDUMCase: 13-4829Document: 77Page: 2204/14/2014120176180IAF MembersAcademic and Non-fiction Authors’ Association of South Africa (ANFASA), South AfricaAmerican Society of Media Photographers, USAAssociation of Swedish Illustrators and Graphic Designers, SwedenAuthors’ Licensing & Collecting Society Ltd, UKBUS Visual Arts Copyright Society in SwedenDesign and Artists Copyright Society (DACS)European Council of Literary Translators’ Associations (CEATL), EuropeGraphic Artists Guild, USAMalawi Writers Union, MalawiMISZJE, Hungarian Literary Collecting SocietyPlatform Makers, The NetherlandsSociety of Authors, UKThe Authors Guild, USAThe Finnish Association of Non-fiction WritersThe Writers’ Union of CanadaUnion des écrivaines et des écrivains québécois (UNEQ), CanadaNational Writers Union, USAPictoright, The NetherlandsAuthors Coalition of America, USAAustralian Society of Authors, AustraliaScience Fiction and Fantasy Writers of America, USAText and Academic Authors Association, USAPyramide, EuropeWriters’ Guild of Great Britain, UKTanzania Writers Association, TanzaniaAmerican Photographic Artists, Inc.Initiative Urheberrecht, GermanyArtists Rights Society, USAADD-1Case: 13-4829Document: 77Page: 2304/14/2014120176180Mr Owen AtkinsonIAF Steering CommitteeInternational Authors ForumThe Writers’ House13 Haydon StreetLondon, EC3N 1DBUnited KingdomRue Joseph II, 9-13B-1000 BrusselsBelgiumPRESIDENTRainer JUSTCHIEF EXECUTIVE & SECRETARY GENERALOlav STOKKMOBrussels, 27 March 2014IFRRO LETTER OF SUPPORT TO IAF’S AMICUS CURIAE BRIEF IN THE CASE THE AUTHORSGUILD ET AL V. GOOGLE INC.Dear Owen,We refer to your letter of 25 March 2014 and are pleased to confirm herewith that, in thecase The Authors Guild vs. Google Inc., IFRRO supports the filing of an amicus curiaebrief by the International Authors Forum (IAF).The International Federation of Reproduction Rights Organisations (IFRRO), based inBrussels, and its 143 member organisations worldwide, representing millions of authorsand publishers, work to increase the lawful use of text- and image-based copyright worksand to eliminate unauthorised copying, by promoting efficient collective rightsmanagement through Reproduction Rights Organisations (RROs) to complement authors’,publishers’ and other rightholders’ own activities. IFRRO has no parent corporation and nopublicly held corporation owns 10% or more of its stock.Yours sincerely,Olav StokkmoChief Executive and Secretary GeneralIFRRO AISBL • RPM Bruxelles N° D’ENTERPRISE 4646228722 234 62 60 FAX +32 2 234 62 69 EMAIL secretariat@ifrro.orgPHONE +32ADD-2ifrro.orgCase: 13-4829Document: 77Vol. IX., No.8.]Page: 2404/14/20141201761AND TRADE .MARK OASES.8049The vVenham Gees Company, Ld. v. The Champion Gas Lamp Company.IN THE COURT OF APPE.AL.BeforeLORDS JUSTICES LINDLEY, BOWEN, AND FRY.November Gth and 7th, 1891.THE WENHAM GAS COMPANY, LIMITED5v.THE CHAMPION GAS LAMPCOMPANY.Patent.-Action fm· infringement.-Combination.-Subordinate integers.. Infringement denied.-Alleged want of novelty.-Alleged ccnticipation.-Allegedwant of subject-matter.-Const?·uction of Specification.-Pith and marrow of. invention taken. .···The owners of a patent fo1' an improved lamp brought an action fo1'1:nj1ing_ement. The Plaintiffs. claimed in thei1· Specif!cation a combination andsubm·dmate pa1·ts. The Defendants dented mfnngement and alleged thein validity of the patent on the g1'otcnds of want of novelty and of anticipation,and also by amendment at the t1·ial, on the g1·ound that the invent~on was not15 of such a me1'itorious character as to be patentable. Previmcsly to the date.ofthe Plaintiffs' mvention 8. had published the impo1·tance of b1·inging heated airto an incandescen~ flame, and of heating the gas befo1'8 it ?'cached the bu1·ne~·.The1'8 we~·e diffm·ences between the Plaintiffs' lamp and that of the Defendants,and the Plaintiffs had recently used a burner different f1•om that described in20 their Specification, ccnd more like the Defendants' bu1·nm·..Held on the evidence .that the Defendants' lamp was not matm'iq,lly differentfrom the Plaintiffs', the diffm·ence between the two having not been put to thewitnesses, but only pointed vut by counsel in argument; secondly, that .noanticipation was shown of the. whole combination• 01' the subordinctte pa1.·ts25 claimed; thi1·dly, tlwt the Plaintiffs' combination, consisting of old ·and newelements, was a combination a1·1·iving at an old1·estclt by new means, and wa.smeritorious and useful. Judgment was givenjor the Pla1:ntijj's.The Defendants appealed.H~ld, that (1) the Plaintiffs' inventwn was ct method of bringing a supply of30 heated a-i1· to a pm·ticular point, tlwmid,dle, of the flame, by which they obtainedan improved 1·esult, and in a secondct?'Y deg1·ee of the add'ition of a coolingcu1'1·ent of cti1· round the lamp, and that the invention was good S1~bject-matte1•,and .had not been anticipated; (2}'¥7wt the Defendants had taken the pith andma1'1'0W of the invention, it bein[t·inimccterial that they might hcwe made35 imp1·ovem,ents..·'Appeal dismissed with costs.'On the 1st of July 1881 (a patent No. 2869 of 18R1) was granted to FmnkWilliam Cla1·k for "Improvements in railway parriage, street, and other gaslamps or. lanterns." The Specification was amended on the 14th of December40 1886, and again on the 6th of February 1888, and as so amended stated asfollows (the recent amendments being shown in erased and italic type):" This Invention relates to an impl'Cived construction of railway carriage, street" and other gas lamps or lanterns where heated air is introduced in sufficient" quantities to supply the flame or flameP so as to produce more perfect com45 " bustion than hitherto, the quantity of heated air introducecl being easily" regulated according to the quality ancl quantity of the gas to be coriilmhed; ,by" my improved construction of lamp, the gas to be burned is itself also heatild" before it reaches the point of ignition. A suitable arrangement for carryiJlg" out my invention is as follows :-The lamp or lantem body is formed of, a50 " suitable case to which X adapt two concentric tubes of suitable section with a"space.b'lJI.w.. een them ;the. inner tube. which forms the' chimney for carrying" off jib,~oducts of combustion extends above and below (or only above) the" outcf tube, which serves for the inlet of the air into chambers. ·foi·meclbythe.HADD-3Case: 13-482950Document: 77Page: 2504/14/2014REPORTS OF PATENT, DESIGN,120176180[Feb. 24, 1892.The Wenham Gas Company, Ld. v .. The Champion Gas Lamp Company." body of the lamp and the hereinbefore described tubes, ·and suitably closed;" from these chambers the air previously heated in its passage between the" two tubes and case or body is conveyed to the gas burner or burners or gas" flame or flames, the said hot air passing either outside or inside the gas flame" or flames as required. The g·as is supplied to the burner or burners by a" coiled pipe within the said chamber or between the two tubes so that the gas" also becomes heated in its passage thl'Ough the coil to the burner or"burners. Instead of the arrangement hereinbefore described it will be" evident that the inner tube may be arranged to serve for the air inlet and"the space between the two tubes for the chimney. ." The action of the improved lamp is as follows : ."The gas entering" through the inlet pipe t, passes into the coil 1<, and thence to the burner" by the pipe w; upon the gas being ignited a draught is formed in the" chimney, and the air will enter the lamp through the inlets k, ancl j," and will pass into the chambers/, and h ; the air which passes through the" chamber/, becomes heated in its passage and passes in the heated state to" the flame through the ·tubes x, x; the air from the chamber h, passes" through the opening y, and ronnel the glass b, and under the reflector g, and" serves to keep the glass b, and reflector g, from becoming too hot, the said" air itself thereby becoming warmed before it reaches the flame. From this" construction and arrangement of lamp it will be understo~d that the gas" before it reaches the burner will be heated by passing through the coil in the" hot air chamber j, and the air for· the combustion being also heated, a more" economical light will be obtained. In cases where it is required to enrich" the gas before it passes to the burner, it may be caused to pass through a" suitable carburetter, conveniently placed in the hot air chamber f. In figures" 5 and 6 of the drawing I have shown the arrangement of lamp I prefer to" adopt when the inner concentric tube serves for the air inlet, a lamp of this" construction being specially suited for use as a street lamp. a, is the lamp" body; b, the glass ; c, the cover ; d and e, the concentric tubes ; g, the" reflector ; h, the chamber formed by the lamp body a, and the outer tube e ;" i, cover to same; f, f, air inlets ; k, k, the air inlets in the outer tube c ; u, is" the gas supply pipe which I use in this arrangement instead of -a coil as" hereinbefore described ; between the inner tube d, and the gas pipe n, I" provide an additional pipe d', the space between the two tubes forming the" chimney, and the space between the tube d', ancl the gas pipe u,, forming the" heated air chamber corresponding with the chamber/, in the arrangement"hereinbefore described, and shown in,, Figures 1 to 4. In this arrangement" a ring, or' fiR-a¥g!Mlc4--eF-eth€l'-sffitable-l:mBHll'-e¥-l:Htffie¥s-v, circulcw bu1ry~M·"of the kind shown in the drawing and marked v, may be employed ; e', is an" earthenware or metal continuation of the t,ube d', such tube e', being per" forated if found desirable for causing a portion of the heated air to be more" equally supplied to the interior surface of the flame. The action of this lamp" will be· understoocl without further description it being substantially the" same as that of the lamp' hereinbefore described and shewn in Figures 1 to 4." The arrows shew the direction of the passage of the air which as will be ·seen" by the arrows is supplied in a heated state to the interior surface of the flame." If the gas is to be carburetted the supply pipe u, passes through a carburetter" placed in any convenient position. In cases where· it is not required to" carburet and heat the gas before burning, the gas may be supplied from below" instead of from above as hereinbefore describecl and shewn. Having thus" described my said invention and the best means with which I am acquainterl" for carrying the same into effect I would have it unclerstood that I do not" confine myself to the precise details herein !aiel down and shewn in the" Drawing as the same may be varied without departing from the peculiar" character of my invention but what I clo claim is :-'Firstly. The general" arrangement and construction of the improved lamp hereinbefore described" and represented in Figures 1 to 4 of the accompanying Drawing. Secondly." 'rhe modified construction of lamp hereinbefore described and representecl inADD-45101~202530354045505~Case: 13-4829Document: 77Page: 2604/14/2014AND TRADE MARR:. CASES.1201761805tThe 1Venhcun Gas Company, Ld. v. The. Champion Gas Lamp Company.;'" Figures 5 and 6 of the accompanying Drawing. 1'hirdly. The method of" supplying heated air to the inner surface of the flame by causing such air to" pass through the chimney in its passage to the flame substantially as herein" before described and represented in Figures 5, and 6, of the accompanying5 "Drawing. Fourthly. The employment of the perforated continuation e1 from" the chimney for distributing the heated air over the interioi· surface of the" flame as hereinbefore de~cribed and represented in Figure 5, of the accom" parrying Drawing."This patent was assigned to The TVenham Gas Company, Limited.10On the 4th of October, 1890, the Wenham Company, commenced an actionagainst The Champion Gas Lamp Company and JJfessrs. 'l'odtenhanpt and Co.for infringement of this patent, claiming the usual relief. The Particularsof the Breaches complained of by the· Plaintiffs were that the Defendantshad infringed by using or applying in or to gas lamps or lanterns certainmechanism or arrangements the same, or substantially the same, as themechanism or arrangements described in the Plaintiffs' amended Specificationand claimed in the 2nd, 3rd, and 4th claiming clauses thereof, and the Plaintiffs complained of a gas lamp sold by the Defenclants at their works on the3rd of October, 1890, to Messn. Wentworth and Co. and invoiced as" 1 Lamp,No. 3, Granite."· .1'he Defendants denied infringement and alternatiYely they said that if,according to the true construction of the Plaintiffs' Specification, the lampcomplained of by the Plaintiffs was an infringement (which they denied) thePlaintiffs' patent was invalid on the grounds stated in the Particulars ofObjections. By their Particulars they relied on the following objections tovalidity: 1. That the alleged invention was not new.. Before the date of thePlaintiffs' patent regenerative gas lighting, -i.e., heating the gas to be consumedand t,he air to support the combustion on their way to the burner by the escapingproducts of combustion, and leading the heated air to the upper or inner surface30 of the flames through perforations or otherwise, was generally and commonlyknown and practised. 2. That the alleged invention was previously published.(a) In vol. 35, p. 60, of the Journal of Gas Li,qhting, Water Supply, andSanita1·y Improvement, published 13th of January, 1880, in an article " OnRegenerative Gas Lighting by Herr F. Siemens. (b) In vol. 33, p. 3, of the35 English Mechanic and Wm·ld of Sci9nce, published 11th of March, 1~81, in anarticle entitled" The Hygienic Lamp:" ''(c) In'the Specificatipn of FrederickSiemens, No. 2231 of 1879, p. 4, line 4, to p: 6, line 18, and in the 1st, 2nd, and 3rdclaiming clauses thereof and in the drawings referred to in the said portions ofthe said Specification and the said Claiming clauses. (d) In the Specification of40 Richa1·d Arckibald B1·ooman, No. 1712 Of 1856. (e) In the Specification ofG. J. Pwfitt, No. 1244 of 1859, p. 3, lines 17 to 22, p. 4, line 17 to line 22, andp. 5, line 12 to line 14, and Fig. 1. (f) In the Provisional Specification ofJ. F. Wr-ight and G. E. Wri,qltt, No. 4857 Of 1879.The action was heard wlth ·wunesses before Mr. Justice Williams who held45 that the Defendants had infrmged and that the patent was valid.*'rbe Defendants appealed.Sir Richa1'd Webstm·, A. G., Aston, Q.C., Moulton, Q.C., and Lawson (instructedby J. H. Johnson, S~n, and EU-is) appeared for the Plaintiffs; MaTton Danieland C. E. Jenkins (instructed by F. S. Pm·lcs) for the Defendants, the Appellants.50Daniel and Jenkins for the Appellants.The Defendants dispute the novelty of the Plaintiffs' alleged invention andthey submit there is no infringement. The burner of the Defendants is notthe same as the Plaintiffs'. It is admitted that the Plaintiffs' patent is merelyfor a combination ; the Defendants have substantially a different combination,55 and the part which both have in common, i.e., regeneration is not new. TheDefendants have done away with the large chamber; they have an enlarged:gas tube before the burner ; this has recently been copied by the Plaintiffs. The• See Report$ R. P.ADD-56., 313.Case: 13-482952Document: 77Page: 2704/14/2014REPORTS OF PATENT, DESIGN,120176180[Feb. 24, i892.The lVenham Gas Company, Ld. v. The Champion Gas Lct1np Company.Defendants have not the extension e1 of the Plaintiffs, and ihat is imperfectlydescribed in their Specification. Claim 2 of the Plaintiffs is anticipated by Siemens.Claim 1 is for the particular lamp described, the essential features of whichaccording to Sir F. Bramwell's evidence, are (1) the introduction of the heatecl. air to the inner surface of the flame ; (2) the introduction of the cooling current 5of air, but this latter is not claimed and the Specification is insufficient. Foxwellv. Bostock, 4 De G. J. ancl S. 298. 'rhe inventor ought to have distinguished thecombination from what had gone before. [Aston, Q.C.·-There is no plea of insufficiency. J Daniel then· applied to be allowed to adduce fresh evidence on theground that the Defendants were taken by surprise at the trial by the construction 10put on the Specification by the Plaintiffs.The application was refused.Daniel.-The third claim which is for applying the hot air to the upper surfaceof the flame is merely an analogous application and is not subject matter of apatent : for Siemens had told the world how to bring down the heated air to the 15flame, and to bl'ing it to a pm·ticular part as the Plaintiffs have done is not subjectmatter of invsntion.Sil· R. Webster, A. G., for the Respondents, maintained that the decision of J\IIr.Justice Williams was right.LINDLEY, L.J.-This is an appeal from the decision of Mr ..Justice Williams in 20an action brought by patentees for the infringement of a patent relating to lamps.The usual points are raised by way of defence, with one exception, which I notice,as I think it is important to bear it in mind : that there is no plea, or particular ofobjection, on the ground of insufficient specification. That gets rid of a good dealof discussion which might possibly ha.ve arisen. Apart from that the main con- 25troversy is that the patent is bad, and that there is no infringement. Now, as towhether the patent is bad.either from want of novelty or utility, or from want ofsubject-matter we must ascertain as far as we can what was known at the timethe patent was taken out, and in particular our attention has been drawn, andvery properly, to Siemens' inventions. The particular patent with which we are 30dealing is ()lark's patent, which I shall have occasion to comment upon presently.'It was taken out in December 1881; it was amended in. 1888, and it is for" Improvements in railway carriage, street, and other gas lamps, or lanterns." J\IIr.Siemens had discovered the importance of having heated air brought to an incandescent flame, arid also the iJ:!lportance of heating the gas before it reached the 35burner, and in his invention he described a method of accomplishing those .objects. He showed the advantages of it, and he showed how to do it, and hobrought the feeding current of heated (tir through the chimney in the waydescribed in his letterpress and in the di'a\vings. That idea is seized upon, oradopted, naturally, by the Plaintiff, who is a later inventor-a very valuable idea, 40because it seems obvious, now that we know all about it, that it was a veryimportant and a very valuable suggestion. Siemens' mind was addressed to thatwhich I have mentioned-the importance of burning gas·by bringing a hot aircurrent to the flame, and by heating the gas before it reached the burner. Thatis what his mind was upon; his mind >Vas not on the particular method of 45bringing hot air to any particular shaped flame; that was not what he wail aboutat all. Clcwk's mind was just the other way. His mind was addressed tothe particular method of bringing a supply of heated air to particular places onthe flame, His is a step in advance of Siemens'; he takes Siemens' as far as itgoes, and modifies that, anrl produces a new and very valuable result--a bl'ighter 50flame and a much better result. 'rhe hot air current which feeds the flame inSiemens' case is not brought down next to the gas pipe, but at a distance from it.It is the ascending current in Siemens' case which. makes .the gas cunent. InClw·lc's patent it is just the other way. He so arranges his concentric ring, ormachinery, O!' tubes, as to bring his hot current clown to the middle of 55the pm'ticular kind of flame which he selects for the purpose of his lamp. Inaddition. to this Cla·rlc has availed himself of what Siemens did not, that I!mow of, that is the cooling current which kept the temperature of the glassdown, and prevented cracking, and so on.ADD-6Case: 13-4829Vol.Document: 77nt., No. 11.]Page: 2804/14/2014A:ND 'l'RAb:E M:Anrr CASES.120176180531'he Wenham Gets Company, Lcl. v. 1'1ui Chcw~pion Gas Lamp Company.Now, that being the state of things, and that being, .in a few words, the ideas,and the difference between the ideas which Clw·/c had, anrl which 8wmenshad, we must look at what Clctrlc has told us.He has told us in hisAmended Specification, which: is the one with which I will deal (and I will5 only refer to those partg which have been commented upon, and in particular Iwill refer to the dra.wing, because that is common knowledge ; and in >tnyobservations I may make I shall take the enlargecl ell-awing of Fig. 5, which hasbeen so much commentecl upon), he says-after describing generally the mode inwhich he arranges his tubes and apparatus for proclucing the desired result :10 "In this arrangement a ring or circubr burner of the kind shewn in the" drawing, and marked v, may be ,employed ; e 1 is an earthenware or metal".continuation of the tube ell, such tube, e', being perforated if found desirable'~ for causing a portion of the heated air to be more equally supplied to the" interior surface of the flame.".15 Now, when you look at the Specification, and the enlarged drawing Fig. 5,·and notice the arrows which are inserted above the burner B, it is quito obviousthat the bottom of his supply tube must be perforatecl ; otherwise these arrowsare of no use at all; and if yon minutely examine the drawings or that tube, ofthe bottom of it, you will see that what is meant is that there should be a plate20 through which air can'pass. 'l'he perforations ara not shewn as perforations,hut the arrows make it pm·fectly plain to anybody who applies his eyes fo itthat what is meant is a perforated plate.Now, his description says that in addition to that which is obvious enoughfrom the drawing itself the tube itself may he perforatecl if it is found desirable.· 25 The drawing does not show any perforations in that tube, nor are they in allcases, as I understand, esser:tial ; but if th~y are desirable they may be used.Now, before passing to the claims, I will call attention to the burner B, andlook at it with reference to the object of this invention, and see what it shows.It shows, as Mr. Daniel has pointed out, a burner equal to, or possibly a little30 exceeding in size, the bottom of the tube. There is nothing to show that thatwas essential-I do not know whether it was or not. Tlien there are nipplesshewn coming out of that ·bnrne.r. Now, those nipples, if you take intoconsideration what is told yon in the Specification, · are to ILY mindimportant. They show that the jets of gas which form the flame' when it is3!i lighted are to come out of the burner in a horizontal dir