The Authors Guild v. Google, Inc.
AMICUS BRIEF, on behalf of Amicus Curiae International Authors Forum, FILED. Service date 04/14/2014 by CM/ECF.  [13-4829]--[Edited 04/16/2014 by KG]
United States Court of Appeals
THE AUTHORS GUILD, BETTY MILES, JIM BOUTON, JOSEPH
GOULDEN, individually and on behalf of all others similarly situated,
HERBERT MITGANG, DANIEL HOFFMAN, individually and on behalf of
all others similarly situated, PAUL DICKSON, THE MCGRAW-HILL
COMPANIES, INC., PEARSON EDUCATION, INC., SIMON & SCHUSTER,
INC., ASSOCIATION OF AMERICAN PUBLISHERS, INC., CANADIAN
STANDARD ASSOCIATION, JOHN WILEY & SONS, INC., individually
and on behalf of all others similarly situated,
– v. –
ON APPEAL FROM THE UNITED STATES DISTRICT COURT
FOR THE SOUTHERN DISTRICT OF NEW YORK
BRIEF OF AMICUS CURIAE INTERNATIONAL AUTHORS FORUM
IN SUPPORT OF APPELLANTS
DAVID B. SUNSHINE
Attorney for Amicus Curiae
277 Park Avenue
New York, New York 10172
Rule 26.1 Disclosure Statement
The International Authors Forum (“IAF”) is a private company, limited by
guarantee, incorporated on April 19, 2013 under the United Kingdom Companies
Act 2006 with its registered office in England and Wales. IAF has no parent
corporation and no publicly held corporation owns 10% or more of its stock.
TABLE OF CONTENTS
One work, not millions ....................................................................................3
The purported benefits of the Library Project and Google Books ..................4
Facilitating access by visually impaired persons ..................................5
The four factors of fair use ..............................................................................6
Purpose and character of use .................................................................7
Nature of copyright works.....................................................................7
Amount and substantiality of portion used ...........................................9
Effect of use upon potential market or value ......................................10
Detriment to the author ..................................................................................11
CERTIFICATE OF COMPLIANCE .......................................................................14
CERTIFICATE OF SERVICE ................................................................................15
TABLE OF AUTHORITIES
Berman v. Parker,
348 US 26 (1954) .................................................................................................. 6
Campbell v. Acuff-Rose Music, Inc.,
510 U.S. 569 (1994) .............................................................................................. 9
Cartoon Network LP, LLLP v. CSC Holdings, Inc.,
536 F. 3d 121 (2d Cir. 2008) .............................................................................. 11
Harper & Row, Publishers, Inc. v. Nation Enterprises,
471 U.S. 539 (1985) (Brennan, J., dissenting) ...........................................8, 9, 10
Maxtone-Graham v. Burtchaell,
803 F.2d 1253 (2d Cir. 1986) ............................................................................... 9
New Era Publications Int’l. v. Carol Pub. Group,
904 F. 2d 152 (2d Cir. 1990) ................................................................................ 8
Ringgold v. Black Entertainment Television, Inc.,
126 F. 3d 70 (2d Cir. 1997) ................................................................................ 11
17 U.S.C. § 106(1) ................................................................................................... 11
17 U. S. C. § 106 & 107 ............................................................................................. 3
17 U.S.C. §107 .....................................................................................................3, 10
17 U.S.C. §121(1) .................................................................................................. 5, 6
Fed. R. App. P. 32(a)(5) ........................................................................................... 14
Fed. R. App. P. 32(a)(6) ........................................................................................... 14
Fed. R. App. P. 32(a)(7)(B) ..................................................................................... 14
Fed. R. App. P. 32(a)(7)(B)(iii) ............................................................................... 14
INTEREST OF AMICUS CURIAE1
The International Authors Forum (“IAF”) is a private company, limited by
guarantee, incorporated on April 19, 2013 under the United Kingdom Companies
Act 2006 with its registered office in England and Wales.
IAF is a worldwide forum for organizations dedicated to the protection and
advancement of authors’ rights. Its stated goals are to:
Provide authors’ organizations worldwide with an international
platform to exchange information, develop positions and provide
support in authors’ rights matters;
Advocate the author’s role in society, pointing out the importance of
creation for cultural diversity and the economic value which authors
Promote and defend authors’ interests and authors’ rights including
both moral and economic rights;
Actively work in favor of balanced contractual legislation that
guarantees fair practices for authors and ensures that authors retain
their economic and moral rights against buyouts and other unfair
Promote the benefits of authors’ rights in general and of collective
management in particular in order to ensure that authors always
receive fair and equitable remuneration whenever their works are
exploited by third parties.
No party or party’s counsel has authored this brief in whole or in part, or contributed money that
was intended to fund preparing or submitting the brief. No person has contributed money that
was intended to fund preparing or submitting the brief, except that IAF paid the costs and
expenses involved in filing this brief.
As of March 2014, IAF had 28 member organizations from around the world
including countries in North America, Europe, Africa and Australasia. A list of
member organizations is set out at ADD-1.
IAF has also had interest in
membership and attendance at its meetings from organizations from countries in
Asia and South America.
IAF is a global organization representing authors and their interests. The
litigation between the Plaintiffs and the Defendant will define the rights of millions
of authors worldwide, many of whom will be members or affiliates of IAF’s
members. IAF has a significant interest in the outcome of the litigation.
This brief is supported by the International Federation of Reproduction
Rights Organisations (“IFRRO”).
IFRRO and its 143 member organizations
worldwide represent millions of authors and publishers, and work to increase the
lawful use of text- and image-based copyright works and to eliminate unauthorized
Reproduction Rights Organizations to complement authors’, publishers’ and other
right holders’ own activities. A letter confirming IFRRO’s support is attached at
All parties have consented to the filing of this brief.
“The super adding of ingenuity to robbery does not make the operation
justifiable.” Lord Justice Bowen - Wenham Gas Co Ltd v Champion Gas Lamp Co
(1892) 9 RPC 49 at 56, English Court of Appeal.
IAF supports the Authors Guild’s (“AG”) appeal against the judgment of the
District Court where it granted Google’s motion for summary judgment on the
issue of fair use and dismissed AG’s motion for summary judgment.
One work, not millions
The District Court erred by effectively treating the Library Project as a
single, collective entity, rather than individual books to be analyzed on their own.
Copyright protects a single work. Questions of infringement and with them
questions 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. The
special cases exception under Article 9 of the Berne Convention requires that
“such reproduction does not conflict with a normal exploitation of the work and
does not unreasonably prejudice the legitimate interests of the author” (emphasis
added). Article 10(2) of the WIPO Copyright Treaty, provides that limitations or
exceptions to rights under the Berne Convention should be confined to special
cases that do not conflict with a normal exploitation of the work and do not
unreasonably 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 it
from liability. Otherwise, where does it stop? Does infringement become fair use
when two works are taken? Three? Ten thousand? One million? Looking away
from Google for a moment, can it really be right that a prolific file-sharer would
have a better defense to copyright infringement than someone who shared one file
once? The answer should be no.
The purported benefits of the Library Project and Google Books
The District Court erred in considering the Library Project and Google
Books almost interchangeably. Moreover, it erred in not separating the infringing
works from the non-infringing works. The background to Google’s activities is set
out in the judgment of the District Court. In short, Google Books is a project to
digitize books and convert them into computer readable text via optical character
recognition technology. The computer-readable text is indexed to allow searching
via Google’s search engine. Content from the books is displayed in response to
keyword searches, subject to certain limitations as set out in the judgment. Google
Books comprises the Library Project, where the books supplied by partner
libraries, and the Partner Program, where books are supplied by rights holders with
their consent. The Library Project itself comprises both public domain works and
works subject to copyright protection.
When looking at the benefits of Google Books and the Library Project, the
District Court did not take into account the effect of removing in-copyright works
from the Library Project. If that occurred, Google Books and the public domain
Library Project would:
remain an essential research tool;
continue to make the process of interlibrary lending more efficient;
continue to facilitate finding and checking citations;
remain an important tool for researchers and librarians;
continue to permit humanities scholars to analysis massive amounts of
continue to permit researchers to analyze word frequencies, syntactic
patterns and thematic markers to consider how literary style has
changed over time;
continue to expand access to books;
continue to facilitate the identification and access of materials for
remote and underfunded libraries;
continue to help the preservation of books; and
(10) continue to benefit authors and publishers who wish to use the service
and give their consent.
While true that the Library Project would have fewer books available, the
number would still run into the millions.
It cannot be right that Google can deprive the author of a single work of his
exclusive 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 not
significant; it is meta-data. On the contrary, the work is significant to the author.
Facilitating access by visually impaired persons
Nobody would deny that it is a commendable goal to ensure that visually
impaired people and those with print disabilities have access to books. Indeed
legislatures and governments around the world have made express provision for
making accessible copies available without infringing copyright.
The United States has made such provision at 17 U.S.C. §121(1). The
United States is also a signatory to the Marrakesh Treaty to Facilitate Access to
Published Works for Persons Who Are Blind, Visually Impaired or Otherwise
Print Disabled which contains similar provisions. There are 2 mandatory features
of the §121(1) limitation and like provisions under the Marrakesh Treaty:
The copies must be exclusively for use by blind or other persons with
The limitation applies only to an authorized entity, defined as “a nonprofit organization or governmental agency that has a primary mission
to provide specialized services relating to training, education, or
adaptive reading or information access needs of blind or other persons
Google’s use of the works at issue is not exclusively limited for use by blind
or other persons with disabilities. Google is not a non-profit organization or
government agency and its primary mission is not the mission required by and
described in the legislation.
When considering the fair use limitation, it is not appropriate to consider
factors 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 terms
well-nigh conclusive. In such cases the legislature, not the judiciary, is the main
guardian of the public needs to be served by social legislation.”). In doing so, the
District Court erred.
The four factors of fair use
When viewed from the perspective of a single work, the District Court’s
analysis is not sustainable.
Purpose and character of use
A single book cannot be mined for useful data. It cannot be transformed into
anything other than an electronic format of itself.
The speed and power of
computers 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 of
aggregating millions of works together is most conspicuous. The cumulative effect
of millions of infringements may create new information but each individual does
not. 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 analysis
does 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 millions
of 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 a
user of Google’s blog service were to scan, convert by optical character
recognition, and upload the text of book in copyright to his blog, the book would
become searchable and mineable and would accrue all the other attributes
associated with electronic publication. It would still unquestionably infringe the
rights holder’s copyright; it could not be characterized as fair use.
For those reasons, the District Court erred when it concluded that the first
fair use factor strongly favored a finding of fair use.
Nature of copyright works
In its analysis of the nature of the copyright works, the District Court again
erred by starting its analysis from the point of view that those works could treated
as an amorphous mass. The nature of a copyright work depends upon the work
itself, not the company it keeps.
In the Judge’s analysis, he referred to the fact that the works are books. The
mere 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-fiction
works. But that does not mean use of a non-fiction work is fair use, merely
because the work is non-fiction. See e.g., New Era Publications Int’l. v. Carol
Pub. Group, 904 F. 2d 152, 158 (2d Cir. 1990) (noting that “creation of a
nonfiction work, even a compilation of pure fact, entails originality” deserving of
copyright protection) (internal punctuation and quotation marks omitted) (citations
The District Court also failed to analyze works of fiction and non-fiction
separately. Can it be right that a fiction author be denied his rights because the
infringer 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 distinction
between published and unpublished works. It may be correct that the distinction is
important in considering fair use. But merely because a work is published is not a
good 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 publication
dichotomy and noting case law wherein the Court held that “the fair use inquiry
could never be resolved on the basis of such a “two dimensional” categorical
approach”). Otherwise, copyright would be defeated entirely; authors would not
bother to publish and the arts and sciences would be deprived of their contribution.
The effect of the District Court analysis can be summed up as follows: if a
work is a non-fiction book which has been published, there is a presumption
towards finding fair use. That cannot be justified on its face. See id. When fiction
or unpublished works are caught in the same net, merely by their proximity, the
conclusion is self-evidently wrong.
Amount and substantiality of portion used
Under this heading, the District Court concluded that the factor weighed
slightly against a finding of fair use. The finding that the Library Project was
treated as a single, collective entity, rather than individual books to be analyzed on
their own, seriously understated the use that Google is making of the individual
The District Court made that finding against the context of Google’s
necessary reproduction of the full work in order to offer full text search. The
District Court’s reasoning is flawed. The fact that something is necessary to an
infringement does not mean the infringement becomes fair use. Amount and
substantiality do not necessarily dictate a finding of fair use where the other fair
use 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 much
of 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 legitimate
simply 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 may
be a partial answer to the “amount” prong of the factor but not to the
“substantiality” prong. What is substantial imports a qualitative and quantitative
assessment that must be performed on a case-by-case basis. See, e.g. Campbell v.
Acuff-Rose Music, Inc., 510 U.S. 569, 586-589 (1994) (discussing how, when
evaluating 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 substantial
than some other chapters. The face in a portrait painting might have more value
than a section of the background. These are points that can be analyzed only on a
case-by-case basis. Harper & Row, 471 U.S. at 559 (“Section 107 requires a caseby-case determination whether a particular use is fair”).
Effect of use upon potential market or value
Once again, the District Court viewed the case through the incorrect lens.
When it held that a reasonable fact finder could only find that Google Books
enhances the sales of books to the benefit of copyright holders, he was considering
the mass of copyright works Google had misappropriated and not individual
The reason the rights of a copyright holder are exclusive are to give him the
freedom of choice of how, when, and whether to exploit his or her work. See
Harper & Row, 471 U.S. at 554-55. If a copyright holder is satisfied that Google
Books is a good way to commercialize his work, then he has the right to enroll it
into the Partner Program. On the other hand, if he is not satisfied, he should have
the same right to choose not to participate. That some rights holders might find an
advantage is irrelevant since they can choose to join the Partner Program if they
One person’s rights should not be deprived so others can benefit,
especially when the beneficiaries can make that choice anyway. It is an entirely
In finding that the fourth factor weighed strongly in favor of fair use, the
District Court started from the wrong point and came to the wrong conclusion.
Detriment to the author
An author is entitled to the benefits of his work.
The most obvious
economic 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 seek
royalties 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’s
use, coupled with the nebulous promise of increased sales from links, is something
that should be the owner’s choice.
The benefits do not end with book sales. A writer may be able to exploit his
work if a movie is based upon it for example.
In many cases, a writer can obtain an income stream from reproduction of
his work by others, an income stream that is expressly protected by the copyright
laws. 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 exclusive
right “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’s
permission and he is entitled to withhold permission if he wishes to prevent that
kind of reproduction. See Id. On a practical level, an individual author would find
it difficult to enforce those rights on a global basis since he simply would not have
the resources to monitor, let alone police, every photocopier in the world.
Fortunately, in most countries, there are licensing arrangements that deal
with the issue.
Many of these arrangements are provided by, for example,
members of IAF and IFRRO. For modest license fees, an institution can reproduce
copyright works, within specified limits, without worrying about infringing
copyright. The license fees are then distributed to authors and publishers.
For many authors, these license fees are a crucial source of income. This
might be particularly true for writers of academic and educational works for whom
license income has been proven to be critical to the process of creating new
material. A user of that work might not be able to justify purchasing the whole
book. But under a licensing system the author can confidently use the sections in
which his interest lies without worrying about infringement.
The author and
publisher benefit, the user benefits, society benefits.
These licensing arrangements demonstrably provide a pragmatic balance
between the rights of copyright holders and society’s need to advance the arts and
The Google Library Program has the potential to bypass these licensing
systems, causing considerable detriment to authors and publishers and, in turn,
reducing the pool of content available to users.
The District Court’s reasoning was flawed because it started from the wrong
point and erred in considering critical points in the analysis. Had it correctly
analyzed the factors from the correct starting point of looking at a single work, it
could only have concluded that the case in favor of infringement and against fair
use was overwhelming.
Ultimately, the issue comes down to this: an author asked about why he
wrote 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 he
will not say is that he wrote his book so it could be subsumed into a corporate
meta-database optimized for searching.
Talk of snippets and data-mining are sideshows to the real issue: Google’s
clever infringement scheme deprives authors and publishers of their rights. It
deprives them of income and exclusivity. It conflicts with the normal exploitation
of the books and unreasonably prejudice the legitimate interests of the authors.
The mere fact that Google’s infringement scheme is clever should not make
it permissible under the law.
Dated: April 14, 2014
s/ David B. Sunshine
David B. Sunshine
277 Park Avenue
New York, New York 10172
Attorneys for Amicus Curiae
International Authors Forum
CERTIFICATE OF COMPLIANCE
This 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 used
to prepare the brief (Microsoft Word), this brief contains 3,245 words, excluding
the 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 this
brief has been prepared in a proportionally spaced typeface using Microsoft Word
in 14-point Times New Roman.
s/ David B. Sunshine
Attorneys for Amicus Curiae
International Authors Forum
CERTIFICATE OF SERVICE
I hereby certify that on April 14, 2014, I electronically filed the foregoing
with the Clerk of the Court for the United States Court of Appeals for the Second
Circuit by using the CM/ECF system. I certify that all participants in the case are
registered CM/ECF users and that service will be accomplished by the CM/ECF
s/ David B. Sunshine
Attorneys for Amicus Curiae
International Authors Forum
Academic and Non-fiction Authors’ Association of South Africa (ANFASA), South Africa
American Society of Media Photographers, USA
Association of Swedish Illustrators and Graphic Designers, Sweden
Authors’ Licensing & Collecting Society Ltd, UK
BUS Visual Arts Copyright Society in Sweden
Design and Artists Copyright Society (DACS)
European Council of Literary Translators’ Associations (CEATL), Europe
Graphic Artists Guild, USA
Malawi Writers Union, Malawi
MISZJE, Hungarian Literary Collecting Society
Platform Makers, The Netherlands
Society of Authors, UK
The Authors Guild, USA
The Finnish Association of Non-fiction Writers
The Writers’ Union of Canada
Union des écrivaines et des écrivains québécois (UNEQ), Canada
National Writers Union, USA
Pictoright, The Netherlands
Authors Coalition of America, USA
Australian Society of Authors, Australia
Science Fiction and Fantasy Writers of America, USA
Text and Academic Authors Association, USA
Writers’ Guild of Great Britain, UK
Tanzania Writers Association, Tanzania
American Photographic Artists, Inc.
Initiative Urheberrecht, Germany
Artists Rights Society, USA
Mr Owen Atkinson
IAF Steering Committee
International Authors Forum
The Writers’ House
13 Haydon Street
London, EC3N 1DB
Rue Joseph II, 9-13
CHIEF EXECUTIVE & SECRETARY GENERAL
Brussels, 27 March 2014
IFRRO LETTER OF SUPPORT TO IAF’S AMICUS CURIAE BRIEF IN THE CASE THE AUTHORS
GUILD ET AL V. GOOGLE INC.
We refer to your letter of 25 March 2014 and are pleased to confirm herewith that, in the
case The Authors Guild vs. Google Inc., IFRRO supports the filing of an amicus curiae
brief by the International Authors Forum (IAF).
The International Federation of Reproduction Rights Organisations (IFRRO), based in
Brussels, and its 143 member organisations worldwide, representing millions of authors
and publishers, work to increase the lawful use of text- and image-based copyright works
and to eliminate unauthorised copying, by promoting efficient collective rights
management through Reproduction Rights Organisations (RROs) to complement authors’,
publishers’ and other rightholders’ own activities. IFRRO has no parent corporation and no
publicly held corporation owns 10% or more of its stock.
Chief Executive and Secretary General
IFRRO AISBL • RPM Bruxelles N° D’ENTERPRISE 464622872
2 234 62 60 FAX +32 2 234 62 69 EMAIL firstname.lastname@example.org
Vol. IX., No.8.]
AND TRADE .MARK OASES.
The vVenham Gees Company, Ld. v. The Champion Gas Lamp Company.
IN THE COURT OF APPE.AL.
LORDS JUSTICES LINDLEY, BOWEN, AND FRY.
November Gth and 7th, 1891.
THE WENHAM GAS COMPANY, LIMITED
THE CHAMPION GAS LAMP
Patent.-Action fm· infringement.-Combination.-Subordinate integers.. Infringement denied.-Alleged want of novelty.-Alleged ccnticipation.-Alleged
want 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 and
subm·dmate pa1·ts. The Defendants dented mfnngement and alleged the
in 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 not
15 of such a me1'itorious character as to be patentable. Previmcsly to the date.of
the Plaintiffs' mvention 8. had published the impo1·tance of b1·inging heated air
to 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 in
20 their Specification, ccnd more like the Defendants' bu1·nm·.
.Held on the evidence .that the Defendants' lamp was not matm'iq,lly different
from the Plaintiffs', the diffm·ence between the two having not been put to the
witnesses, but only pointed vut by counsel in argument; secondly, that .no
anticipation was shown of the. whole combination• 01' the subordinctte pa1.·ts
25 claimed; thi1·dly, tlwt the Plaintiffs' combination, consisting of old ·and new
elements, was a combination a1·1·iving at an old1·estclt by new means, and wa.s
meritorious 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 of
30 heated a-i1· to a pm·ticular point, tlwmid,dle, of the flame, by which they obtained
an improved 1·esult, and in a secondct?'Y deg1·ee of the add'ition of a cooling
cu1'1·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 and
ma1'1'0W of the invention, it bein[t·inimccterial that they might hcwe made
Appeal dismissed with costs.'
On the 1st of July 1881 (a patent No. 2869 of 18R1) was granted to Fmnk
William Cla1·k for "Improvements in railway parriage, street, and other gas
lamps or. lanterns." The Specification was amended on the 14th of December
40 1886, and again on the 6th of February 1888, and as so amended stated as
follows (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, a
50 " suitable case to which X adapt two concentric tubes of suitable section with a
"space.b'lJI.ween 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·mecl by the
REPORTS OF PATENT, DESIGN,
[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 in
AND TRADE MARR:. CASES.
The 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 accompanying
5 "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.
On the 4th of October, 1890, the Wenham Company, commenced an action
against The Champion Gas Lamp Company and JJfessrs. 'l'odtenhanpt and Co.
for infringement of this patent, claiming the usual relief. The Particulars
of the Breaches complained of by the· Plaintiffs were that the Defendants
had infringed by using or applying in or to gas lamps or lanterns certain
mechanism or arrangements the same, or substantially the same, as the
mechanism or arrangements described in the Plaintiffs' amended Specification
and 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 the
3rd 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 lamp
complained of by the Plaintiffs was an infringement (which they denied) the
Plaintiffs' patent was invalid on the grounds stated in the Particulars of
Objections. By their Particulars they relied on the following objections to
validity: 1. That the alleged invention was not new.. Before the date of the
Plaintiffs' patent regenerative gas lighting, -i.e., heating the gas to be consumed
and t,he air to support the combustion on their way to the burner by the escaping
products of combustion, and leading the heated air to the upper or inner surface
30 of the flames through perforations or otherwise, was generally and commonly
known 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, and
Sanita1·y Improvement, published 13th of January, 1880, in an article " On
Regenerative Gas Lighting by Herr F. Siemens. (b) In vol. 33, p. 3, of the
35 English Mechanic and Wm·ld of Sci9nce, published 11th of March, 1~81, in an
article entitled" The Hygienic Lamp:" ''(c) In'the Specificatipn of Frederick
Siemens, No. 2231 of 1879, p. 4, line 4, to p: 6, line 18, and in the 1st, 2nd, and 3rd
claiming clauses thereof and in the drawings referred to in the said portions of
the said Specification and the said Claiming clauses. (d) In the Specification of
40 Richa1·d Arckibald B1·ooman, No. 1712 Of 1856. (e) In the Specification of
G. J. Pwfitt, No. 1244 of 1859, p. 3, lines 17 to 22, p. 4, line 17 to line 22, and
p. 5, line 12 to line 14, and Fig. 1. (f) In the Provisional Specification of
J. F. Wr-ight and G. E. Wri,qltt, No. 4857 Of 1879.
The action was heard wlth ·wunesses before Mr. Justice Williams who held
45 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 (instructed
by J. H. Johnson, S~n, and EU-is) appeared for the Plaintiffs; MaTton Daniel
and C. E. Jenkins (instructed by F. S. Pm·lcs) for the Defendants, the Appellants.
Daniel and Jenkins for the Appellants.
The Defendants dispute the novelty of the Plaintiffs' alleged invention and
they submit there is no infringement. The burner of the Defendants is not
the same as the Plaintiffs'. It is admitted that the Plaintiffs' patent is merely
for a combination ; the Defendants have substantially a different combination,
55 and the part which both have in common, i.e., regeneration is not new. The
Defendants 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.
REPORTS OF PATENT, DESIGN,
[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 imperfectly
described in their Specification. Claim 2 of the Plaintiffs is anticipated by Siemens.
Claim 1 is for the particular lamp described, the essential features of which
according 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 5
of air, but this latter is not claimed and the Specification is insufficient. Foxwell
v. Bostock, 4 De G. J. ancl S. 298. 'rhe inventor ought to have distinguished the
combination 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 the
ground that the Defendants were taken by surprise at the trial by the construction 10
put on the Specification by the Plaintiffs.
The application was refused.
Daniel.-The third claim which is for applying the hot air to the upper surface
of the flame is merely an analogous application and is not subject matter of a
patent : for Siemens had told the world how to bring down the heated air to the 15
flame, and to bl'ing it to a pm·ticular part as the Plaintiffs have done is not subject
matter 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 20
an 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 of
objection, on the ground of insufficient specification. That gets rid of a good deal
of discussion which might possibly ha.ve arisen. Apart from that the main con- 25
troversy is that the patent is bad, and that there is no infringement. Now, as to
whether the patent is bad.either from want of novelty or utility, or from want of
subject-matter we must ascertain as far as we can what was known at the time
the patent was taken out, and in particular our attention has been drawn, and
very properly, to Siemens' inventions. The particular patent with which we are 30
dealing 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 35
burner, 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 ho
brought the feeding current of heated (tir through the chimney in the way
described in his letterpress and in the di'a\vings. That idea is seized upon, or
adopted, naturally, by the Plaintiff, who is a later inventor-a very valuable idea, 40
because it seems obvious, now that we know all about it, that it was a very
important and a very valuable suggestion. Siemens' mind was addressed to that
which I have mentioned-the importance of burning gas·by bringing a hot air
current to the flame, and by heating the gas before it reached the burner. That
is what his mind was upon; his mind >Vas not on the particular method of 45
bringing hot air to any particular shaped flame; that was not what he wail about
at all. Clcwk's mind was just the other way. His mind was addressed to
the particular method of bringing a supply of heated air to particular places on
the flame, His is a step in advance of Siemens'; he takes Siemens' as far as it
goes, and modifies that, anrl produces a new and very valuable result--a bl'ighter 50
flame and a much better result. 'rhe hot air current which feeds the flame in
Siemens' 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. In
Clw·lc's patent it is just the other way. He so arranges his concentric ring, or
machinery, O!' tubes, as to bring his hot current clown to the middle of 55
the pm'ticular kind of flame which he selects for the purpose of his lamp. In
addition. 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 glass
down, and prevented cracking, and so on.
nt., No. 11.]
A:ND 'l'RAb:E M:Anrr CASES.
1'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 8wmens
had, we must look at what Clctrlc has told us.
He has told us in his
Amended Specification, which: is the one with which I will deal (and I will
5 only refer to those partg which have been commented upon, and in particular I
will refer to the dra.wing, because that is common knowledge ; and in >tny
observations I may make I shall take the enlargecl ell-awing of Fig. 5, which has
been so much commentecl upon), he says-after describing generally the mode in
which 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 obvious
that the bottom of his supply tube must be perforatecl ; otherwise these arrows
are of no use at all; and if yon minutely examine the drawings or that tube, of
the bottom of it, you will see that what is meant is that there should be a plate
20 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 it
that what is meant is a perforated plate.
Now, his description says that in addition to that which is obvious enough
from 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 all
cases, 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, and
look 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 little
30 exceeding in size, the bottom of the tube. There is nothing to show that that
was essential-I do not know whether it was or not. Tlien there are nipples
shewn coming out of that ·bnrne.r. Now, those nipples, if you take into
consideration what is told yon in the Specification, · are to ILY mind
important. They show that the jets of gas which form the flame' when it is
3!i lighted are to come out of the burner in a horizontal dir
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