10 thoughts on “WIPO World IP Day

  1. I presume that nothing IP-related is off-topic on this posting!

    I would like to pose a question that only occurred to me within the past hour (arising out of my recent obsessive commenting on the subject of that pesky old Limey law, together with whatever Seventh Amendment implications arise out of it).

    This I would describe as more a reverse Seventh Amendment question. Here is the question:

    Was the CAFC correct in law to remand Oracle v. Google to the district court for a jury verdict on fair use?

    Maybe there is precedent for jury verdicts in questions of fair use under copyright law? Nevertheless…

    Here is the train of thought. Injunctions are governed by equity, not common law. Therefore (as SCOTUS made clear in eBay v. MercExchange) the courts cannot introduce a per se rule governing the granting of injunctions, such as a rule that anyone who proves infringement of their patent is automatically entitled to an injunction. There is a four-factor test. District courts must decide on injunctions on principles of equity. This is stated explicitly in Title 35, 283, but, independently, I note that, in the English legal system, injunctions fall under equity, not common law.

    Then it occurred to me, the test for “fair use” under US copyright law is surely the mother of all open-ended multifactor tests. And indeed it is not even judge-made law, given that it is written into the US Code as Title 17, 107. Weighing against my proposition that “fair use” is an equitable doctrine would be the fact that fair use, according to the statute, is “not an infringement of copyright”.

    Nevertheless I did a web search and went to the Wikipedia article. Quoting Wikipedia:

    “The Statute of Anne did not provide for legal unauthorized use of material protected by copyright. In Gyles v Wilcox,[3] the Court of Chancery established the doctrine of “fair abridgement,” which permitted unauthorized abridgement of copyrighted works under certain circumstances. Over time, this doctrine evolved into the modern concepts of fair use and fair dealing. Fair use was a common-law doctrine in the U.S. until it was incorporated into the Copyright Act of 1976, 17 U.S.C. § 107.”

    Thus saith Wikipedia. I would question whether it should be accurately described as a “common-law doctrine” or an “equitable doctrine”, given its origins.

    There is a very full Wikipedia article on Gyles v. Wilcox (1740), with a substantial list of references. As explained there, the Lord Chancellor could not put the issue to a jury, as courts of equity did not empanel juries, and also decided not to refer to the common law courts, but instead appointed two legal experts to compare the two books and report their findings to the court. This case is said to be the starting point of a fair abridgment doctrine</i. which developed into the US fair use doctrine.

    It seems to me that, under Seventh Amendment principles, there is no reason to refer fact finding on fair use to juries. I suppose that the Seventh Amendment does not on its face prohibit fact finding by juries when courts are sitting in equity.

    Anyway, that is my screwball question for the day.

    1. Here is another old book, referenced on the Wikipedia page for Gyles v. Wilcox, available on Google:

      Richard Newcombe Gresley, A Treatise on the Law of Evidence in Courts of Equity (2nd Edition, 1847)

      link to books.google.ie

      I haven’t checked its contents, but presumably, in addition to cases on “fair abridgment” in copyright cases, it might also contain material on rules followed in patent cases (which presumably concern injunctions, and reckoning of profits).

      1. Here is the first edition of Gresley’s A Treatise on the Law of Evidence in Courts of Equity) (1st edition, 1836):

        link to books.google.ie

        My web search also found this:

        I.N. Whiting The Practice in Civil Actions at Law, in Ohio, and Precedents in Pleading, with Practical Notes (1845)

        link to books.google.ie

        It has a list of law books at the end (including Gresley), which might be useful for anyone trying to research old books.

        Gresley is also referenced in here:

        Samuel March Phillips, A Treatise on the Law of Evidence, Volume 3 (5th American, from the 7th and 8th London Editions, 1843)

        link to books.google.ie

        Finally, here is a deep link to a review of Gresley in The Law Magazine, 1837. Skimming through part of it, I note that it was courts of equity that had the power to compel parties to discover documents relevant to the case, not courts of law.

        link to books.google.ie

        1. Reporting briefly on Gresley.

          Chapter V is entitled Where the Court requires further Information.

          It seems that the Court of Chancery in England typically obtained evidence by orders compelling discovery, and by commissioning masters and examiners to depose witnesses.

          But sometimes they did need fact finding by a jury in a common law court, either at one of the courts in Westminster Hall, or else at assizes down in the country.

          What they did calls to mind the “artificial act of infringement” in the “patent dance”.

          A court of law could not decide a purely factual question without a case or controversy, so this is what typically happened (Gresley, 2nd edition p. 525.) The issue of fact to be decided would be stated. Then

          “When a special question has been stated for an issue, as in the form above, the usual mode of proceeding is, that the party who is made plaintiff in his declaration avers, and the party who is made defendant admits, that a wager has been laid, on the truth of that statement; and on this feigned issue they proceed to trial.”

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