All the Forgotten IP Cases, Where Do they All Come From…

Two years ago last month, I was reading the trial court opinion from White-Smith v. Apollo from 1905 (the player piano case), and I noticed a cite to a 1878 Supreme Court case I hadn’t heard of before, Perris v. Hexamer.  I gave the decision a read and found that it was about the copyrightability – or rather lack of copyrightability – of using specific colors and shapes to denote features on a map, where the alleged infringing map was of a different city (and thus obviously not copied).  At this time I was about to close out a year as the Abraham L. Kaminstein Scholar in Residence at the U.S. Copyright Office, and I was a bit loathe to admit that I’d never even heard of a Supreme Court case on copyrightability.  So, instead, I asked the coterie of IP professors I’m friends with on Facebook “why don’t people talk about Perris v. Hexamer more?” (the story continues after the jump)

Forty-seven comments later, it became clear that no-one had heard of this case before, and that the case had something to add to contemporary thought about copyright – and the question of why Perris isn’t remembered is itself a relevant one to answer.  On further discussion other such examples of cases came up, and it was decided to try to do a symposium on forgotten IP cases.  The Syracuse Law Review agreed to publish the symposium, and also to host an in-person meeting to discuss our work.  As Shubha Ghosh notes in his introduction to this symposium, “blame Zvi Rosen.”  It gives me inordinate pleasure that phrase is now part of the legal canon.

As you’d expect, then, my contribution to this symposium was a piece on Perris v. Hexamer, in which I sought to do three things – explore the background and holding in the case, explore how the case has been cited and why it has been forgotten, and to explain how the case still has much to offer in the 21st century.  What I found pretty quickly is that the case was actually about two separate claims for infringement – the first was that the use of colors and symbols in both maps to mean the same thing was copyright infringement.  The second claim, not made entirely clear in the all-too-brief written decision, is that the defendant Hexamer’s literal copying of the map legend constituted sufficient copying to amount to infringement.

The Court disposed of both issues succinctly, holding that to commit copyright infringement, “a substantial copy of the whole or of a material part must be” copied.  The alleged infringing map of Philadelphia and original map of New York were “not only not copies of each other, but they do not convey the same information.”  Regarding the map key, the plaintiffs had “no more an exclusive right to use the form of the characters they employ to express their ideas upon the face of the map than they have to use the form of type they select to print the key.”

There’s a lot to unpack there (the whole decision is a bit longer, but not much).  The court is finding a lack of substantial similarity, using a key element of copyright analysis usually credited more to the 20th century than 19th.  The Court is using a de minimis test for copyright infringment as well, at least arguably.  And the Court is holding that individual symbols or colors cannot be copyrighted, even if unique and creative.  The Court is ruling that copying the map legend essentially verbatim does not constitute copyright infringement, either under a substantial similarity or de minimis argument.  And all in just a few paragraphs.

At first Perris v. Hexamer was cited fairly extensively, at least in the late nineteenth and early 20th century.  But Baker v. Selden, decided a year later, would come to stand for many of the same premises Perris stands for, and continues to be cited heavily in decisions and pleadings, while Perris had not been cited by a Court in 30 years before being cited in 2016 by the 9th Circuit.  In my contribution to the symposium I took some approaches to answering why, including an analysis of how decision length correlates to citations.

Ultimately, difference for a case between being forgotten and being canonic can be surprisingly arbitrary, but those forgotten cases likewise have something important to say, giving greater context to the cases we remember, and often much more.  As part of the symposium we had a raft of excellent pieces, focusing not just on long-forgotten decisions but on the intersection of slavery and patent law in the late 1850s, and how recusal twice frustrated efforts to clarify fair use before the Supreme Court.  In addition, pieces focused on Westinghouse v. Boyden Power Brake Co. and the demise of the doctrine of equivalentsE. Bement & Sons v. National Harrow Company and the relationship between antitrust and patent lawhow Wallpaper Manufacturers, Ltd. v. Crown Wallcovering Corp.has been reduced to four words and its holding largely forgotten, and how Daly v. Palmer remains the origin of the ordinary observer test in copyright infringement, even though it is no longer usually cited for that test.

There remains a lot of stories of untold cases and incidents in the history of IP, this volume barely scratches the surface.  And yet, I hope people enjoy it – I’m really proud that a question I asked on a whim became such a great symposium, even if I can’t quite believe it.

Leave a Reply