Folsom v. Marsh, 6 Hunt Mer. Mag.

175 (1841)
2 Story 100, 9 F.Cas. 342, No. 4901

been published or printed, and which the said Sparks had the
6 Hunt Mer. Mag. 175 exclusive right and privilege to print, publish, and sell. And
that many other parts of the piratical work are infringements
Case No. 4,901, 2 Story, 100;1 6 Hunt, Mer. Mag. 175
of the said Sparks's said copyright, whereby the plaintiffs
Circuit Court, D. Massachusetts.
have sustained great damage, and that the said Marsh, Capen
and Lyon still threaten to continue to print, publish and sell,
FOLSOM et al. copies of the said piratical work. In consideration whereof,
v. the plaintiffs pray that the defendants be decreed to render
MARSH et al. an account of the copies of the said piratical work, which
they have sold, and to pay over the profits thereof to the
Oct. Term, 1841. plaintiffs; to surrender and deliver up all the copies on hand,
and the stereotype plates of the said work, to an officer of the
Synopsis court, to be cancelled and destroyed; to pay the plaintiffs their
Bill in equity for piracy of the copyright of the writings of costs, and that they be restrained by injunction from selling
Washington. The bill in substance stated, that Jared Sparks or exposing to sale, or causing to be exposed to sale or sold,
was the author of a work entitled, ‘The Writings of George or otherwise of disposing of any copies of the said piratical
Washington, being his correspondence, addresses, messages, work, and for such other relief as shall seem meet, or as equity
and other papers, official and private, selected and published shall require.
from the original manuscripts, with a life of the author, notes,
and illustrations, by Jared Sparks,’ consisting of 12 volumes, The answer stated as follows: That the defendants, not
of all of which the copyright was duly taken out, the term confessing or acknowledging any of the matters and things
of which copyright has still more than eight years to run. alleged in the bill, are informed and believe that the said
That the plaintiffs, Charles Folsom, Thomas G. Wells and complainants are the publishers of the said Life and Writings
Lyman Thurston, printers and publishers, under the style of Washington, as alleged by the complainants, and that the
of Folsom, Wells and Thurston, had assumed a part of the said Sparks is author thereof. But that they totally deny that
risk and responsibility of publishing the said work, and that the said Sparks has, or has heretofore had, any copyright,
being in the receipt of large sums, the proceeds of the sale whereby he is entitled to any exclusive publication of the
of the said work, Bela Marsh, Nahum Capen, Thomas B. said writings, correspondence, addresses, messages, and other
Wabb, and Gardner P. Lyon, booksellers, under the firm papers. That the defendants did, on August the 5th, 1840,
of Marsh, Capen and Lyon, and Charles W. Upham, all publish and sell, and before and since have, without the
well knowing that the said Sparks held such copyright, and allowance and consent of the plaintiffs, published and sold
that the said Fulsom, Wells and Thurston, were interested copies of the said work, in two volumes, entitled a ‘Life of
as aforesaid, and deliberately, after due notice, intending Washington, in the Form of an Autobiography,’ but that the
to infringe upon the said copyright, at Boston, on August said work is not a copy from, nor a piracy of the said work,
5th, 1840, and at divers times before and since, without by the said Sparks. The defendants deny that any part of the
the allowance or consent of the orators, or either of them, said work, published by the defendants, is copied verbatim et
published, and exposed to sale, and sold, a book in two literatim from any portion of the said work by the said Sparks,
volumes, entitled ‘The Life of Washington in the Form to which he has any exclusive right and privilege to print, or
of an Autobiography, the narrative being to a great extent publish, or sell. But they aver, that they have, in the work
conducted by himself, in extracts and selections from his published by them, made such use as they might lawfully
own writings, with portraits and other engravings,’ consisting do, of the writings, correspondence, messages, addresses, and
of 866 pages, which they still continue to expose to sale, other papers, by George Washington, printed in the work
having had due notice, and well knowing, that the same is compiled by the said Sparks, and that they have copied
a copy from, and an infringement and piracy of, the said many pages of the said writings, from the original manuscript
Life and Writings of George Washington so published by the thereof, and from printed works, printed and published before
plaintiffs. That 388 pages of the said piratical book are copied the publication of the said work by the said Sparks, and that
verbatim et literatim from the said work compiled by the they have made such use thereof, as they might do in a work
said Sparks, consisting of matter published originally by the entirely distinct from and independent of the said work by
said Sparks, under his copyright, and which had never before the said Sparks, and they allege, that the said work published

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Folsom v. Marsh, 6 Hunt Mer. Mag. 175 (1841)
2 Story 100, 9 F.Cas. 342, No. 4901

by them, is entirely a distinct and independent work from the of ‘official’ letters and papers, I class the following: Letters
work by the said Sparks. addressed by Washington, as commander-in-chief, to the
president of congress. Official letters to governors of states
The general replication being filed, the cause was referred and speakers of legislative bodies. Circular letters. General
to George Hillard, Esq., master in chancery, to ascertain and orders. Communications (official) addressed as president to
report the facts to the court. His report in substance stated as his cabinet. Letter accepting the command of the army, on our
follows: The work, of which the plaintiffs are the proprietors, expected war with France. All others I class as ‘private.’
is comprised in twelve octavo volumes, varying in length
from five hundred and forty to five hundred and ninety- The cause was argued upon the master's report, (no exception
two pages, and containing in the whole six thousand seven having been filed thereto,) by Mr. Robbins and Willard
hundred and sixty-three pages, including one hundred and Phillips for the plaintiffs, and by R. Rantoul for the
fifty-eight pages of index in the twelfth volume. The first defendants.
volume consists of an original life of Washington by Mr.
Sparks, one of the plaintiffs, and the remaining eleven, of the The points made by the defendants were as follows:
writings and correspondence of Washington, with editorial
notes and illustrations by Mr. Sparks. The work, of which the I. The papers of George Washington are not subjects of
defendants are the proprietors, is in two volumes, duodecimo. copyright. 1. They are manuscripts of a deceased person, not
The first volume consists of four hundred and forty-three injured by publication of them. 2. They are not literary, and,
pages, including forty-one pages of glossary and index. The therefore, are not literary property. 3. They are public in their
second volume consists of four hundred and twenty-three nature, and, therefore, are not private property. 4. They were
pages, including thirty-five pages of glossary and index. The meant by the author for public use.
whole amount of pages of the two volumes, is, therefore,
eight hundred and sixty-six, including seventy-six pages of II. Mr. Sparks is not the owner of these papers, but they belong
glossary and index. I find the whole number of pages in the to the United States, and may be published by any one.
two volumes of the defendants' work, which correspond with
the passages in the plaintiffs' work, and are identical with III. An author has a right to quote, select, extract or abridge
them, to be (discarding fractions) three hundred and fifty- from another, in the composition of a work essentially new.
three. Of these pages, three hundred and nineteen have never
appeared in print before the publication of the plaintiffs' work,
and I accordingly report them to have been copied by the
West Headnotes (6)
defendants from the work of the plaintiffs. The remaining
thirty-four pages have appeared before, in various other
publications, with the variations hereinbefore stated. In view [1] Copyrights and Intellectual
of these variations, and also in consideration of the fact, that Property Extracts and quotations
these passages in the defendants' work, generally speaking, F. published a “Life of Washington,” containing
differ in punctuation and other typographical peculiarities 866 pages, of which 353 pages were copied from
from the same passages as contained in works, other than Sparks' “Life and Writings of Washington,” 64
that of the plaintiffs, I find that these thirty-nine pages were pages being official letters and documents, and
taken by the defendants from the plaintiffs' work, and none 255 pages being private letters of Washington,
other. The whole of these three hundred and fifty-three pages, originally published by Sparks, under a contract
in the two volumes of the defendants' work, are taken from with the owners of the original papers of
the last eleven volumes of the work of the plaintiffs. Of the
Washington. Held, that the work by F. was an
three hundred and nineteen pages, above mentioned, which
invasion of the copyright of Sparks.
are in the work of the defendants, and which have not been
published in any other work than that of the plaintiffs, I 10 Cases that cite this headnote
report sixty-four pages to be official letters and documents,
and two hundred and fifty-five pages to be private. Of the
[2] Copyrights and Intellectual
remaining thirty-four pages, I report fifteen pages to be
Property Extracts and quotations
private, and nineteen pages to be official. Under the head

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Folsom v. Marsh, 6 Hunt Mer. Mag. 175 (1841)
2 Story 100, 9 F.Cas. 342, No. 4901

To constitute a piracy of an original work, it is

not necessary that the whole or the larger part of [6] Copyrights and Intellectual
it should be taken, but it is only necessary that Property Right to control disposition or
so much should be taken as sensibly to diminish use in general
the value of the original work, or substantially to Though the government may have a right to
appropriate the labors of the author. publish official letters addressed to it, or to any
of its departments, by public officers, no private
53 Cases that cite this headnote person has such a right, without the sanction of
the government.
[3] Copyrights and Intellectual
4 Cases that cite this headnote
Property Abridgments, condensations, and
digests
Copyrights and Intellectual
Property Amount and Substantiality of
Opinion
Portion Used
An abridgment in which there is a substantial STORY, Circuit Justice.
condensation of the materials of the original
work, and which requires intellectual labor This is one of those intricate and embarrassing questions,
and judgment, does not constitute a piracy arising in the administration of civil justice, in which it is
of copyright; but an abridgment consisting of not, from the peculiar nature and character of the controversy,
extracts of the essential or most valuable portions easy to arrive at any satisfactory conclusion, or to lay down
of the original work is a piracy. any general principles applicable to all cases. Patents and
copyrights approach, nearer than any other class of cases
46 Cases that cite this headnote belonging to forensic discussions, to what may be called
the metaphysics of the law, where the distinctions are, or
at least may be, very subtile and refined, and, sometimes,
[4] Copyrights and Intellectual
almost evanescent. In many cases, indeed, what constitutes an
Property Right to control disposition or
infringement of a patented invention, is sufficiently clear and
use in general
obvious, and stands upon broad and general agreements and
The general rule of a writer's ownership in his differences; but, in other cases, the lines approach very near
own letters is subject to the exception that the to each other, and, sometimes, become almost evanescent,
receiver thereof may publish them in his own or melt into each other. So, in cases of copyright, it is often
vindication. exceedingly obvious, that the whole substance of one work
has been copied from another, with slight omissions and
2 Cases that cite this headnote
formal differences only, which can be treated in no other
way than as studied evasions; whereas, in other cases, the
[5] Copyrights and Intellectual identity of the two works in substance, and the question of
Property Right to control disposition or piracy, often depend upon a nice balance of the comparative
use in general use made in one of the materials of the other; the nature,
An author of letters or papers of whatever extent, and value of the materials thus used; the objects of
kind, whether they be letters of business, each work; and the degree to which each writer may be fairly
or private letters, or literary compositions, presumed to have resorted to the same common sources of
has a qualified property therein, unless he information, or to have exercised the same common diligence
unequivocally dedicate them to the public, or to in the selection and arrangement of the materials. Thus, for
some private person; and no person has any right example, no one can doubt that a reviewer may fairly cite
to publish them without his consent. largely from the original work, if his design be really and truly
to use the passages for the purposes of fair and reasonable
8 Cases that cite this headnote criticism. On the other hand, it is as clear, that if he thus cites
the *345 most important parts of the work, with a view,

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Folsom v. Marsh, 6 Hunt Mer. Mag. 175 (1841)
2 Story 100, 9 F.Cas. 342, No. 4901

not to criticise, but to supersede the use of the original work, identical with the passages in Mr. Sparks's work, are three
and substitute the review for it, such a use will be deemed in hundred and fifty-three pages out of eight hundred and sixty-
law a piracy. A wide interval might, of course, exist between six, a fraction more than one third of the two volumes of
these two extremes, calling for great caution and involving the defendants. Of these three hundred and fifty-three pages,
great difficulty, where the court is approaching the dividing the report finds that three hundred and nineteen pages consist
middle line which separates the one from the other. So, it of letters of Washington, which have been taken from Mr.
has been decided that a fair and bonb̂ona fide abridgment Sparks's work, and have never been published before; namely,
of an original work, is not a piracy of the copyright of the sixty-four pages are official letters and documents, and two
author. See Dodsley v. Kinnersley, 1 Amb. 403; Whittingham hundred and fifty-five pages are private letters of Washington.
v. Wooler, 2 Swanst. 428, 430, 431, note; Tonson v. Walker, The question, therefore, upon this admitted state of the facts,
3 Swanst. 672-679, 681. But, then, what constitutes a fair resolves itself into the point, whether such a use, in the
and bonb̂ona fide abridgment, in the sense of the law, is one defendants' work, of the letters of Washington, constitutes a
of the most difficult points, under particular circumstances, piracy of the work of Mr. Sparks.
which can well arise for judicial discussion. It is clear, that
a mere selection, or different arrangement of parts of the It is objected, in the first place, on behalf of the defendants,
original work, so as to bring the work into a smaller compass, that the letters of Washington are not, in the sense of the
will not be held to be such an abridgment. There must be law, proper subjects of copyright, for several reasons: (1)
real, substantial condensation of the materials, and intellectual Because they are the manuscripts of a deceased person, not
labor and judgment bestowed thereon; and not merely the injured by the publication thereof; (2) because they are not
facile use of the scissors; or extracts of the essential parts, literary compositions, and, therefore, not susceptible of being
constituting the chief value of the original work. See Gyles v. literary property, nor esteemed of value by the author; (3)
Wilcox, 2 Atk. 141. because they are, in their nature and character, either public or
official letters, or private letters of business; and (4) because
In the present case, the work alleged to be pirated, is the they were designed by the author for public use, and not
Writings of President Washington, in twelve volumes, royal for copyright, or private property. Now, in relation to the
octavo, containing nearly seven thousand pages, of which the last objection, it is most manifest, that President Washington
first volume contains a life of Washington, by the learned deemed them his own private property, and bequeathed them
editor, Mr. Sparks, in respect to which no piracy is asserted to his nephew, the late Mr. Justice Washington, through whom
or proved. The other eleven volumes consist of the letters the late Mr. Chief Justice Marshall and Mr. Sparks acquired
of Washington, private and official, and his messages and an interest therein; and, as appears from the contract between
other public acts, with explanatory notes and occasional these gentlemen, annexed to the report, the publication of
illustrations by the editor. That the original work is of very these writings was undertaken by Mr. Sparks, as editor, for
great, and, I may almost say, of inestimable value, as the their joint benefit; and the work itself has been accomplished
repository of the thoughts and opinions of that great man, at great expense and labor, and after great intellectual efforts,
no one pretends to doubt. The work of the defendants is in and very patient and comprehensive researches, both at home
two volumes, duodecimo, containing eight hundred and sixty- and abroad. The publication of the defendants, therefore, to
six pages. It consists of a Life of Washington, written by the some extent, must be injurious to the rights of property of
learned defendant, (the Rev. Charles W. Upham), which is the representatives and assignees of President Washington.
formed upon a plan different from that of Mr. Sparks, and Indeed, as we shall presently see, congress have actually
in which Washington is made mainly to tell the story of his purchased these very letters and manuscripts, at a great
own life, by inserting therein his letters and his messages, price, for the benefit of the nation, from their owner and
and other written documents, with such connecting lines in possessor under the will of Mr. Justice Washington, as private
the narrative, as may illustrate and explain the times and and most valuable property. That President Washington,
circumstances, and occasions of writing them. Now, as I have therefore, intended them exclusively for public use, as a
already said, there is no complaint, that Mr. Upham has taken donation to the public, or did not esteem them of value as
his narrative part, substantially, from the Life by Mr. Sparks. his own private property, appears to me to be a proposition,
The gravamen is, that he has used the letters of Washington, completely disproved by the evidence. Unless, indeed, there
and inserted, verbatim, copies thereof from the collection of be a most unequivocal dedication of private letters and papers
Mr. Sparks. The master finds, by his report, that the whole by the *346 author, either to the public, or to some private
number of pages in Mr. Upham's work, corresponding and person, I hold, that the author has a property therein, and

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Folsom v. Marsh, 6 Hunt Mer. Mag. 175 (1841)
2 Story 100, 9 F.Cas. 342, No. 4901

that the copyright thereof exclusively belongs to him. Then 419. Thus, a person may justifiably use and publish, in a suit
as to the supposed distinction between letters of business, or at law or in equity, such letter or letters as are necessary and
of a mere private or domestic character, and letters, which, proper, to establish his right to maintain the suit, or defend
from their character and contents, are to be treated as literary the same. So, if he be aspersed or misrepresented by the
compositions, I am not prepared to admit its soundness or writer, or accused of improper conduct, in a public manner,
propriety. It is extremely difficult to say, what letters are or are he may publish such parts of such letter or letters, but no
not literary compositions. In one sense, all letters are literary, more, as may be necessary to vindicate his character and
for they consist of the thoughts and language of the writer reputation, or free him from unjust obloquy and reproach. If
reduced to written characters, and show his style and his mode he attempt to publish such letter or letters on other occasions,
of constructing sentences, and his habits of composition. not justifiable, a court of equity will prevent the publication
Many letters of business also embrace critical remarks and by an injunction, as a breach of private confidence or contract,
expressions of opinion on various subjects, moral, religious, or of the rights of the author; and a fortiori, if he attempt to
political and literary. What is to be done in such cases? publish them for profit; for then it is not a mere breach of
Even in compositions confessedly literary, the author may confidence or contract, but it is a violation of the exclusive
not intend, nay, often does not intend them for publication; copyright of the writer. In short, the person, to whom letters
and yet, no one on that account doubts his right of property are addressed, has but a limited right, or special property, (if
therein, as a subject of value to himself and to his posterity. I may so call it), in such letters, as a trustee, or bailee, for
If subsequently published by his representatives, would they particular purposes, either of information or of protection,
not have a copyright therein? It is highly probable, that neither or of support of his own rights and character. The general
Lord Chesterfield, nor Lord Orford, nor the poet Gray, nor property, and the general rights incident to property, belong
Cowper, nor Lady Russell, nor Lady Montague, ever intended to the writer, whether the letters are literary compositions,
their letters for publication as literary compositions, although or familiar letters, or details of facts, or letters of business.
they abound with striking remarks, and elegant sketches, The general property in the manuscripts remains in the writer
and sometimes with the most profound, as well as affecting, and his representatives, as well as the general copyright. A
exhibitions of close reflection, and various knowledge and fortiori, third persons, standing in no privity with either party,
experience, mixed up with matters of business, personal are not entitled to publish them, to subserve their own private
anecdote, and family gossip. purposes of interest, or curiosity, or passion. If the case of
Perceval v. Phipps, 2 Ves. & B. 21, 28, before the then vice
There is no small confusion in the books, in reference to the chancellor (Sir Thomas Plumer), contains a different doctrine,
question of copyright in letters. Some of the dicta seem to all I can say is, that I do not accede to its authority; and I
suppose that no copyright can exist, except in letters which fall back upon the more intelligible and reasonable doctrine
are professedly literary; while others again recognize a much of Lord Hardwicke, in Pope v. Curl, 2 Atk. 342, and Lord
more enlarged and liberal doctrine. See Gods. Pat. (Ed. 1840, Apsley, in the case of Thompson v. Stanhope, Amb. 737, and
London) pp. 327–“332; Gee v. Pritchard, 2 Swanst. 403, 405, of Lord Keeper Henley, in the case of Duke of Queensberry v.
426, 427; Perceval v. Phipps, 2 Ves. & B. 19, 24, 25, 28. Sheffeare, 2 Eden, 329 (cited 4 Burrows, 2329), which Lord
Without attempting to reconcile, or even to comment upon the Eldon has not scrupled to hold to be binding authorities upon
language of the authorities on this head, I wish to state what I the point in Gee v. Pritchard, 2 Swanst. 403, 414, 415, 419,
conceive to be the true doctrine upon the whole subject. In the 426, 427. But I do not understand that Sir Thomas Plumer did,
first place, I hold, that the author of any letter or letters, (and in Perceval v. Phipps, deny the right of property of the writer
his representatives,) whether they are literary compositions, in his own letters; and so he was understood by Lord Eldon in
or familiar letters, or letters of business, possess the sole and Gee v. Pritchard; who, however, said, that that case admitted
exclusive copyright therein; and that no persons, neither those of much remark. Indeed, if the doctrine were otherwise, that
to whom they are addressed, nor other persons, have any right no person, or his representatives, could have a copyright in
or authority to publish the same upon their own account, or his own private or familiar letters, written to friends, upon
for their own benefit. But, consistently with this right, the interesting political and other occasions, *347 or containing
persons to whom they are addressed, may have, nay, must, by details of facts and occurrences, passing before the writer, it
implication, possess, the right to publish any letter or letters would operate as a great discouragement upon the collection
addressed to them, upon such occasions, as require, or justify, and preservation thereof; and the materials of history would
the publication or public use of them; but this right is strictly become far more scanty, than they otherwise would be. What
limited to such occasions. Gee v. Pritchard, 2 Swanst. 415,

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Folsom v. Marsh, 6 Hunt Mer. Mag. 175 (1841)
2 Story 100, 9 F.Cas. 342, No. 4901

descendant, or representative of the deceased author, would by another bookseller, perhaps to the ruin of the original
undertake to publish, at his own risk and expense, any such publisher and editor. Before my mind arrives at such a
papers; and what editor would be willing to employ his own conclusion, I must have clear and positive lights to guide my
learning, and judgment, and researches, in illustrating such judgment, or to bind me in point of authority. However, it is
works, if, the moment they were successful, and possessed the not necessary, in this case, to dispose of this point, because,
substantial patronage of the public, a rival bookseller might of the letters and documents published by the defendants, not
republish them, either in the same, or in a cheaper form, and more than one fifth part are of an official character.
thus either share with him, or take from him the whole profits?
It is the supposed exclusive copyright in such writings, which Another and distinct objection urged on behalf of the
now encourages their publication thereof, from time to time, defendants, is, that congress have purchased the manuscripts
after the author has passed to the grave. To this we owe, not of these letters and documents, and they have become public
merely, the publication of the writings of Washington, but property, and may be published by any one. An answer, in
of Franklin, and Jay, and Jefferson and Madison, and other part, has been already given to this objection. Congress have,
distinguished statesmen of our own country. It appears to indeed, authorized the purchase of these manuscripts from
me, that the copyright act of 1831, c. 16, § 9, [4 Stat. 436], the owner and possessor thereof, and paid the liberal price of
fully recognizes the doctrine for which I contend. It gives by 25,000 dollars therefor; and they have thus become national
implication to the author, or legal proprietor of any manuscript property. But it is an entirely inadmissible conclusion that,
whatever, the sole right to print and publish the same, and therefore, every private person has a right to use them, and
expressly authorizes the courts of equity of the United States publish them. It might be contended, with as much force
to grant injunctions to restrain the publication thereof, by any and correctness, that every private person had an equal right
person or persons, without his consent. to use any other national property at his pleasure, such as
the arms, the ammunition, the ships, or the custom houses,
In respect to official letters, addressed to the government, or belonging to the government. But a reason, which is entirely
any of its departments, by public officers, so far as the right conclusive upon this point, is, that the government purchased
of the government extends, from principles of public policy, the manuscripts, subject to the copyright already acquired by
to withhold them from publication, or to give them publicity, the plaintiffs in the publication thereof. The vendor took them
there may be a just ground of distinction. It may be doubtful, subject to that copyright, and could convey no title which
whether any public officer is at liberty to publish them, at he did not himself possess, or beyond what he possessed.
least, in the same age, when secrecy may be required by the Nor is there any pretence to say that he either did convey, or
public exigencies, without the sanction of the government. On intended to convey, to the government, the property in these
the other hand, from the nature of the public service, or the manuscripts, except subject to the copyright already acquired.
character of the documents, embracing historical, military, or
diplomatic information, it may be the right, and even the duty, The next and leading objection is, that the defendants had
of the government, to give them publicity, even against the a right to abridge and select, and use the materials which
will of the writers. But this is an exception in favor of the they have taken for their work, which, though it embraces the
government, and stands upon principles allied to, or nearly number of letters above stated, is an original and new work,
similar to, the rights of private individuals, to whom letters and that it constitutes, in no just sense, a piracy of the work
are addressed by their agents, to use them, and publish them, of the plaintiffs. This, in truth, is the real hinge of the whole
upon fit and justifiable occasions. But assuming the right of controversy, and involves the entire merits of the suit. It is
the government to publish such official letters and papers, certainly true, that the defendants' work cannot properly be
under its own sanction, and for public purposes, I am not treated as an abridgment of that of the plaintiffs; neither is
prepared to admit, that any private persons have a right to it strictly and wholly a mere compilation from the latter. So
publish the same letters and papers, without the sanction of far as the narrative goes, it is either original, or derived (at
the government, for their own private profit and advantage. least as far as the matter has been brought before the court)
Recently the Duke of Wellington's despatches have (I believe) from common sources of information, open to all authors.
been published, by an able editor, with the consent of the *348 It is not even of the nature of a collection of beauties
noble duke, and under the sanction of the government. It of an author; for it does not profess to give fugitive extracts,
would be a strange thing to say, that a compilation involving or brilliant passages from particular letters. It is a selection
so much expense, and so much labor to the editor, in collecting of the entire contents of particular letters, from the whole
and arranging the materials, might be pirated and republished collection or mass of letters of the work of the plaintiffs.

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Folsom v. Marsh, 6 Hunt Mer. Mag. 175 (1841)
2 Story 100, 9 F.Cas. 342, No. 4901

From the known taste and ability of Mr. Upham, it cannot be entire value of the volume. The case of Mawman v. Tegg, 2
doubted, that these letters are the most instructive, useful and Russ. 385, is to this purpose. There was no pretence in that
interesting to be found in that large collection. case, that all the articles of the encyclopedia of the plaintiffs
had been copied into that of the defendants; but large portions
The question, then, is, whether this is a justifiable use of of the materials of the plaintiffs' work had been copied. Lord
the original materials, such as the law recognizes as no Eldon, upon that occasion, held, that there might be a piracy
infringement of the copyright of the plaintiffs. It is said, that of part of a work, which would entitle the plaintiffs to a full
the defendant has selected only such materials, as suited his remedy and relief in equity. In prior cases, he had affirmed
own limited purpose as a biographer. That is, doubtless, true; the like doctrine. In Wilkins v. Aikin, 17 Ves. 422, 424, he
and he has produced an exceedingly valuable book. But that said: ‘There is no doubt, that a man cannot, under the pretence
is no answer to the difficulty. It is certainly not necessary, of quotation, publish either the whole or a part of another's
to constitute an invasion of copyright, that the whole of a book, though he may use, what in all cases it is difficult to
work should be copied, or even a large portion of it, in form define, fair quotation.’ In Roworth v. Wilkes, 1 Camp. 94,
or in substance. If so much is taken, that the value of the Lord Ellenborough said: ‘A review will not, in general, serve
original is sensibly diminished, or the labors of the original as a substitute for the book reviewed; and even there, if so
author are substantially to an injurious extent appropriated much is extracted, that it communicates the same knowledge
by another, that is sufficient, in point of law, to constitute a with the original work, it is an actionable violation of literary
piracy pro tanto. The entirety of the copyright is the property property. The intention to pirate is not necessary in an action
of the author; and it is no defence, that another person has of this sort; it is enough, that the publication complained of
appropriated a part, and not the whole, of any property. is in substance a copy, whereby a work vested in another is
Neither does it necessarily depend upon the quantity taken, prejudiced. A compilation of this kind (an encyclopedia) may
whether it is an infringement of the copyright or not. It is often differ from a treatise published by itself; but there must be
affected by other considerations, the value of the materials certain limits fixed to its transcripts; it must not be allowed to
taken, and the importance of it to the sale of the original sweep up all modern works, or an encyclopedia would be a
work. Lord Cottenham, in the recent cases of Bramwell v. recipe for completely breaking down literary property.’ The
Halcomb, 3 Mylne & C. 737, 738, and Saunders v. Smith, Id. vice chancellor (Sir L. Shadwell), in Sweet v. Shaw, 1 Jur.
711, 736, 737, adverting to this point, said: ‘When it comes (London) 212 [3 Jur. 217], referring to the remarks of Lord
to a question of quantity, it must be very vague. One writer Ellenborough, cited by counsel, said: ‘That does not mean a
might take all the vital part of another's book, though it might substitute for the whole work. From what you state, suppose
be but a small proportion of the book in quantity. It is not a book to contain one hundred articles, and ninety-nine were
only quantity, but value, that is always looked to. It is useless taken, still it would not be a substitute.’ And in this very case
to refer to any particular cases, as to quantity.’ In short, we he granted an injunction, being of opinion, that there was
must often, in deciding questions of this sort, look to the primp̂rima facie, at law, an invasion of the plaintiffs' right;
nature and objects of the selections made, the quantity and not only an injury, but also a damage to the plaintiffs, in
value of the materials used, and the degree in which the use copying from several volumes of Reports, published by the
may prejudice the sale, or diminish the profits, or supersede plaintiffs, although eleven only had been copied verbatim, but
the objects, of the original work. Many mixed ingredients a considerable number of what were called ‘abridged cases,’
enter into the discussion of such questions. In some cases, were, in truth, copies of the plaintiffs' volumes, with little, or
a considerable portion of the materials of the original work trifling, alterations. It is manifest, also, from what fell from
may be fused, if I may use such an expression, into another Lord Chancellor Cottenham, in Saunders v. Smith, 3 Mylne
work, so as to be undistinguishable in the mass of the latter, & C. 711, that he entertained no doubt, (although he did
which has other professed and obvious objects, and cannot not decide the point,) that there might be a violation of the
fairly be treated as a piracy; or they may be inserted as a sort copyright of volumes of Reports, by copying *349 verbatim
of distinct and mosaic work, into the general texture of the a part only of the cases reported. Much must, in such cases,
second work, and constitute the peculiar excellence thereof, depend upon the nature of the new work, the value and extent
and then it may be a clear piracy. If a person should, under of the copies, and the degree in which the original authors
color of publishing ‘Elegant Extracts' of poetry, include all may be injured thereby. In Lewis v. Fullarton, 2 Jur. (London)
the best pieces at large of a favorite poet, whose volume was 127 [3 Jur. 669], 2 Beav. 6, Lord Langdale, in the case of a
secured by a copyright, it would be difficult to say why it topographical dictionary, held, that largely copying from the
was not an invasion of that right, since it might constitute the

© 2023 Thomson Reuters. No claim to original U.S. Government Works. 7

Folsom v. Marsh, 6 Hunt Mer. Mag. 175 (1841)
2 Story 100, 9 F.Cas. 342, No. 4901

of property of the plaintiffs, if the copying of parts of a work,

work in another book having a similar object, was a violation
not constituting a major part, can ever be a violation thereof;
of that copyright, although the same information might have
as upon principle and authority, I have no doubt it may be.
been (but, in fact, was not) obtained from common sources,
If it had been the case of a fair and bona fide abridgment of
open to all persons. On that occasion, he said: ‘None are
the work of the plaintiffs, it might have admitted of a very
entitled to save themselves trouble and expense, by availing
different consideration.
themselves, for their own profit, of other men's works, still
entitled to the protection of copyright;’ and, accordingly, in I have come to this conclusion, not without some regret, that
that case, he granted an injunction as to the parts pirated, it may interfere, in some measure, with the very meritorious
although it was admitted, on all hands, that there was much labors of the defendants, in their great undertaking of a series
which was original in the new work. of works adapted to school libraries. But a judge is entitled in
this case, as in others, only to know and to act upon his duty. I
In the present case, I have no doubt whatever, that there is an
hope, however, that some means may be found, to produce an
invasion of the plaintiffs' copyright; I do not say designedly,
amicable settlement of this unhappy controversy. The report
or from bad intentions; on the contrary, I entertain no doubt,
that it was deemed a perfectly lawful and justifiable use of the of the master must stand confirmed, and a perpetual injunction
be awarded, restraining the defendants, their agents, servants
plaintiffs' work. But if the defendants may take three hundred
and salesmen, from farther printing, publishing, selling, or
and nineteen letters, included in the plaintiffs' copyright, and
disposing of any copy or copies of the work complained of;
exclusively belonging to them, there is no reason why another
the ‘Life of Washington,’ by the Rev. Charles W. Upham,
bookseller may not take other five hundred letters, and a third,
containing any of the three hundred and nineteen letters of
one thousand letters, and so on, and thereby the plaintiffs'
Washington, stated in the report of the master, and never
copyright be totally destroyed. Besides; every one must see,
before published; and that it be referred to a master, to take an
that the work of the defendants is mainly founded upon these
account of the profits made by the defendants, in the premises;
letters, constituting more than one third of their work, and
with leave for either party to apply to the court for farther
imparting to it its greatest, nay, its essential value. Without
directions.
those letters, in its present form the work must fall to the
ground. It is not a case, where abbreviated or select passages
are taken from particular letters; but the entire letters are All Citations
taken, and those of most interest and value to the public, as
illustrating the life, the acts, and the character of Washington. 6 Hunt Mer. Mag. 175, 2 Story 100, 9 F.Cas. 342, No. 4901
It seems to me, therefore, that it is a clear invasion of the right

Footnotes
1 Reported by William W. Story, Esq.

End of Document © 2023 Thomson Reuters. No claim to original U.S.

Government Works.

© 2023 Thomson Reuters. No claim to original U.S. Government Works. 8