Blackie and Sons Limited v Lothian Book Publishing Company Pty Ltd [1921] HCA 27

Walter v. Lane, (1900) A.C., 589 ; Leslie w. Young &: Sons, (1804) A.C 355 Savory Lid. v. World of Golf Ltd., (1914) 2 Ch, 566, followed.

'The object of the Copyright Act 1911 is not to accord protection to kas Dvut to the particular form of expression in which an author conveys his iat or information to the world.

In an annotated edition of the same play frst published in Australia in 198 hy the defendant, the asrangement of which was similar to, but not cop from, that of the plaintifs book, parts of the introduction and of the matt were taken from the plaintiff's book either under a colourable disguie verbatim,

Held, that in the circumstances the defendant had appropriated substantial and valuable portion of the plaintiff's book, and was liable in an action for infringement of copyright.

ook being capable of separation from the parts which were not so copied, the Court limited its order prohibiting the use of the defendant's book to the

'An action was brought in the High Court by Blackie & Sons Ltd, against the Lothian Book Publishing Co. Proprietary Ltd. for breach of copyright. 'The action was heard by Starke J., in whose judgment hereunder the material facts and the nature of the argu-

_ ments appear. Campbell K.C, and Latham, for the plaintift

Stanke J. delivered the following written judgment : - The plaintiff, Blackie & Sons Ltd., is a well-known English publishing company, and the defendant, the Lothian Book Publishing Co. Proprietary Ltd., is an Australian publishing company, 'The plain- {iff published a number of Shakespeare's dramatic works under the tame of "'The Warwick Shakespeare." One of the works so pub- lished was the historical play called "The Life of King Henry the Fifth." It was prepared for the plaintiff by Dr. G. C. Moore Smith, Professor of English Language and Literature in the Universit Shefield, and was first published in the United Kingdom on 26th December 1895. The defendant also published a number of Shakespeare's works, under the name of " 'The Australasian Shake- speare." One of the works so published by the defendant was also the historical play "The Life of King Henry the Fifth." It was Prepared for the defendant by Mr. J. Le Gay Brereton, B.A., who, 'tthe time of its preparation, was the librarian of the Fisher Library in the University of Sydney, and afterwards became Professor of English Literature in that University, 'This work was first pub- lished in Australia in the year 1918.

The object of the action was to obtain an injunction restraining _ the defendant from publishing and selling its book, and an account

'The parts of the defendant's book which were copied from the plaintif's H.C. oF A.

Bracre & Soxs Lro. Lormas 'Book Ponrrsinse Co. Pro- Lap.

of damages sustained by the plaintiff or of profits made by defendant, and other ancillary relief. 'The pleadings in the raise two points : one whether the plaintiff is entitled to eopyri in the book published by it, the other whether the defendant infringed that copyright. The first question depends upon the provisions of the Copyright Act 1912, which brought into force in the Commonwealth, as from Ist July 1912, the British Copyright da of 1911.

'The plaintiff's book is referred to in the pleadings as an annotated edition of Shakespeare's play called Henry the Fifth, It consists ofan introduction, the text of the play taken from the Globe Edition of Shakespeare's Works, notes upon the text of the play, upon the metrical form of composition used by Shakespeare, including pro- nunciation, and upon other matters, and a glossary. 'The plan of arrangement adopted in the plaintiff's book is not new, and, indeed, the book is largely gathered from the works of other authorities A vast mass of material - the industry of scholars over more than two centuries - is available for any commentator upon Shakespeare. 'These materials are well known to Shakespearian scholars, and are in the main, sourees of information open to all men, Professors Wallace and Brereton, in their evidence in this action, indicated some of the material available; such as concordanees, dictionaries, grammars, the "Chronicles of Holinshed," and various editions of and commentaries upon the play by other authors, An examination of the plaintiff's book makes it clear that Professor Moore Smith had resort to all this accumulation of information, and, indeed, in his preface he acknowledges his indebtedness to the labours of his predecessors, specially mentioning Mr. Aldis Wright and Mr. K. Deighton. But undoubtedly the compilation of the plaintiff's book involved much independent labour and research, 'The literary expression of the matter so collected was in some cases that of Professor Moore Smith, as in the general introduction to the play and the notes on prosody at the end of the book; whilst in other cases the expression was copied from other authors, as in many instances in the notes upon the play itself. 'The whole was com bined in the form of a book. It is not a mere copy of written matter

already published. Apart from the compilation, the work of Pro-

Thave no difficulty in deciding, on these facts, that the plaintiff 'vas entitled to copyright in its book under the law in force prior tothe passing of the British Copyright Act 1911, and is now entitled o the substituted right given by that Act (British Copyright Act 1911, seo. 24, sub-sec. 1; Walter v. Lane(1); Leslie v. Young dé Sons (2); Emerson v. Davies (3) ; Savory Ltd. v. World of Golf Led. (4) )

'The question whether the defendant has infringed that copyright

• is more difficult in the circumstances of this ease.

During the trial particulars were delivered of the passages in the defendant's book which the plaintiff asserted were copied from the plaintif''s book. 'These particulars are to be found partly in a

~ copy of the defendant's book underlined in red ink, and partly in a

copy of the plaintiff's book marked with a pencil circle in the margin.

Tis, of course, clear that the plaintiff has not acquired the right to

"the materials which were common sources of information or the work of other authors, The defendant was free to use common materials as well as Professor Moore Smith and the work of authors other than Professor Moore Smith without infringing the plaintiff's 'copyright. 'The question is whether the defendant's book or any

substantial part thereof was copied from the plaintiff's book, or

whether it was the result of independent labour and research and

4 resort to sources of information that were open to all or from

| works other than the plaintiff's book ? "It is not sufficient," as

Mr. Justice Story said in Emerson v. Davies (5), " to show, that it "

(the defendant's book) " may have been suggested by " the plaintiff's

book, "or that some parts and pages of it have resemblances"

to the plaintiff's book. "It must be further shown, that the | Teemblances in those parts and pages are so close, so full, so | Uniform, so striking, as fairly to lead to the conclusion" that the | one was copied from the other in whole or in a substantial part. In the editor's note to the defendant's edition of Henry the Fifth Professor Brereton says that in its preparation he has made full use

() (900) a.c,, 530. (#) (1918) 2h. (2) (1804) AC) Story, at pret (6) 3 Story, at p.

H.C. oF A. of the labours of his predecessors, and was indebted particulaly 12h the edition of Henry the Fifth by Porter and Clarke (Ist fl, ey

Bracare & Moore Smith (Warwick edition) and Verity (Pitt Press), and

Lormias Popuisme are to be found in the defendant's book, but it adduced no futher fuinrany evidence. Unfortunately Professor Brereton has long sing 7. destroyed his manuscript notes, which might perhaps have afforded starkeJ. some help in solving the question of fact here involved, and unfortu- nately also his memory as to the precise sources of his notes and

comments is far from clear. But Professor Brereton is a scholar repute and well acquainted with Shakespearian literature, And have no doubt, and find as a fact, that the defendant's book was th result of some independent knowledge and considerable labour, research and skill on the part of Professor Brereton, Apart from his oath on the subject, which I accept, there is internal evidence in Professor Brereton's book that in its preparation he resorted the sources of information open to ail and to the works of othe authors just in the same manner as did Professor Moore Smith [His Honor referred to a few instances of this intemal evidenea) Nevertheless, without attributing the animus furandi to Prof Brereton, it is still possible, owing to ignorance of the copyright Jaw or carelessness, that he has made more use of the plaintiffs book than can be justified. This has led me to a detailed examin tion of the two books and a consideration of the various wotls which Professor Brereton in his evidence stated that he had com sulted. And for the purpose of this examination I took it to be clear that, as to literary works, the object of the Copyright Actis not to accord protection to ideas but to the particular form of expression in which an author conveys his ideas or information toth world. (See Hollinrake v. Truswell (1); University of London Pres Lid. v. University Tutorial Press Ltd. (2) ; Copinger on Copyright, th ed., p. 2.) It may be that Professor Brereton derived some of his ideas from Professor Moore Smith, but, as Mr. Dizon very propel said, it was legitimate for Professor Brereton in preparing his edition to acquaint himself with the views of scholars, including Profest (1) (1894) 3 Ch., 420, at p. 424. (2) (1916) 2 Ch., 601, at p. 608

'Moore Smith, and to allow those views to influence him in annotating jis edition of Henry the Fifth. It would be unreasonable in this judgment to deal specifically with every passage in the defendant's 'hook which has been challenged, though I have considered each of them, And I can do justice to the parties by indicating in general terms my findings in point of fact. 'The plan and arrangement of the defendant's book was not copied from the plaintiff's book. It js a common form (see Deighton's and Verity's editions of Henry the Fifth), but it was really adopted from the plan pursued by Professor Wallace, the general editor of "The Australasian Shakespeare," in his annotated edition of Twelfth Night, which was the first of the series of Shakespeare's plays published by the defendant. 'The text of the play was not copied from the plaintifi's book. It isfounded on the first folio edition, and was an independent selection by Professor Brereton, Parts of the general introduction to the defendant's book are taken from the plaintiff's book under a colour- able disguise, but the rest of the introduction was gathered from various sources. The part that was taken commences with the words "The source from which Shakespeare drew the historical 'material for his play" on page vir. of the defendant's book and ends with the words "They have sealed their own doom " on page xz, I do not say that Professor Brereton was not to some extent assisted by his own knowledge and by other sources of information in this part of the introduction, but the internal evidence satisfies me that the defendant's illustrations of Shakespeare's divergence or deviation from history were taken from the plaintiff's book. Mr. Boswell Stone, in his edition of Henry the Fifth, had no doubt collected all the illustrations mentioned by Professor Brereton, and Mr. Verity has noted some with acknowledgment to Mr. Stone, 'but the plaintiff's book and not these authors was the source from Which Professor Brereton took his illustrations and developed this Part of his introduction. [His Honor in an appendix set forth the Yeemblances which led him to the conclusion already stated.] 'The introductory comments to Act I., Scene 1., beginning with the words "This scene" and ending with the words "charm of his eloquence " are also taken under colourable disguise from the plain- tiffs book. The arrangement of the note, the use of the words

H.C. or A. "main theme" for "main action," "many sided genius" for 12k genius," "charm of his eloquence" for "his charm of spa" Bracks & and the identical words "moral reformation" are coincidences

Soxs Lt». which the fact that both authors were giving a short summary of

Lommax the same scene does not explain. The appendices A, B and (

Pusuissixo and the glossary in the defendant's book were not copied from the vaterany plaintiff's book. I am satisfied that Professor Brereton resorted in 4°" the main for his glossary to Schmidt's Lexicon, to the Shakespearian Stare. glossary by Mr. Onians and to the new English Dictionary edited by Sir James Murray. I ought, perhaps, to note the word " gross" in the defendant's glossary. There is an erroneous reference to line 106 which also appears in the plaintiff's book. 'The reference was probably taken from the plaintiff's book, and much stress was placed upon the fact. It is an isolated instance, and trivial in itself, 'The notes upon the text remain for consideration, Here the resem- blances between the plaintiff's and the defendant's books are cet- tainly remarkable. Some of these resemblances arise from the nature of the case, namely, the fact that two scholarly men were expounding the meaning of some word or passage in simple lan guage for the use of students, I am convinced, however, that the reat bulk of these resemblances ari8e from the fact that Professor Moore Smith and Brereton resorted to many of the same authorities, 'though it must be mentioned, in passing, that Professor Brereton had also the advantage of Mr. Verity's annotated edition of Henry the Fifth, which was not published when Professor Moore Smith prepared his book. Still, Professor Brereton did take either verbatim orunder colourable disguise some notes from the plaintiff's book, 'The internal evidence of some of the notes satisfies me of this fact. [In an appendix his Honor set out these cases side by side] As to the rest of the notes I find that they were not taken from the plaintiff's book. 'Ought I on these facts to hold that the defendant has infringed the plaintiff's right? Has the defendant, to use the words of the statute reproduced a substantial part of the plaintiff's book (see Chatterton v. Cave (1) ; Leslie v. Young & Sons (2)); or, as Page Wood V-C. said in Jarrold v, Houlston (3), has an unfair or undue use been made

(1) 8 App. Cas, 483, (2) (1894) A.C, at p. SHI. (8) 3K. & J., 708, at p. 714,

OF AUSTRALIA. "of the work protected by copyright? The question is, in truth, 'one of fact and not of Jaw: "it is a question of degree, which must depend upon the circumstances of each partielar case" (Sweet v. "Benning (1), per Jervis C.J. ; Chatterton v. Cave (2)). Moffatt & Paige 'i. v. Gill (3) was much relied upon for the plaintiff, but the decision "affords but little assistance in the present case. The facts in the two 'eacesarequite dissimilar, Itis undoubted that the books in question 'ereare in direct competition for use in schools and for students in the Universities of Australia, and were intended so to be. The chioice 'of Professors in Australian Universities as editors of the defendant's seties of Shakespeare's plays was well calculated to assist the defendant in that competition. Even the remuneration of Professor Brereton depends upon the successful sale of the book prepared by him, In these circumstances it was the special duty of the defendant and its editor to avoid the appropriation of the labour and research of its rivals, 'The defendant did, in my opinion, appropriate a substantial and valuable portion of the plaintiff's general intro- duction to its book. It is true, but nothing to the point, to say that the information could have been derived from other sources. ~ A-considerable amount of labour and independent research was thus saved, and a useful and interesting addition was made to the general introduction of the defendant's book. 'The notes cannot be considered apart from the introductory comments for the pur- Poses of infringement. The quantity of notes taken is not very considerable, and, taken by themselves, these notes are not, in my pinion, of any outstanding value. From about 110 pages of notes

the defendant has taken about 50 separate notes, The notes in

the defendant's book cover about 89 pages. The material and

'sometimes the very note taken from the plaintiff is intermixed with

material the result of Professor Brereton's own knowledge or of

independent labour and research on his part. In some cases in the

'notes acknowledgment is made to Professor Moore Smith, but this

'is the exception and not the rule. The defendant's book is by no 'means a "servile imitation " of the plaintiff's work, and is largely "compilation from other common or independent sources"

Bc. 59, at nas. (3) 86 L.T., 465, )3-App. Gas, a {9 3 stary, at pp. 799-704,

Giving, however, the fullest consideration to all these facts, appropriation by the defendant of the plaintiff's labour and research is, I find, on the whole, substantial and material, and beyond w was a fair and legitimate use of the plaintiff's book in all the di. cumstances of the case. The extracts were made, T do not doubt, for the purpose of enhancing the value of the defendant's book, and. I see no reason for saying that the defendant did not achieve its purpose. Further, these extracts saved the defendant and its eit some labour and research, Te is not for the Court to make the way of the taker of eopyright matter easy. It is a sound prineiple of copyright law that the Court should not allow one man to take away the result " of 'man's labour, or, in other words, his property," unless it is satisfied that the part taken is "so slight, and the effect upon the total com- position was so small," "as to render the taking perfectly imma- terial," or, what is much the same thing, that the part taken is 'unsubstantial part (Hogg v. Scott (1); Chatterton v. Cave (2)).

The extent of the relief that should be given in this ease is some what important. A great deal of the defendant's book was not copied from the plaintiff's book, and the defendant should not prohibited from using it so far as it lawfully can. If only part of a work has been copied and that part can be separated from the rest of the book, the Court can limit its order to the parts that have been copied (Jarrold v. Houlston (3); Leslie v. Young & Sons (2); Lamb v. Evans (5)). Such an order may render the use of the rest of the book difficult or impracticable, but the party who is in fault cannot complain, and must suffer from the consequences of his own wrongdoing (Mawman v. Tegg (6) ). The offending passages cat, T think, be easily and clearly separated in the present case.

I am not disposed to order the destruction of the defendant's book or any part of it. The plaintiff may have an inquiry a8 t damages at its own risk as to costs, but I would suggest that the plaintiff, in its own interest, waive this right.

(1) LR. 18 Eq, 444, at p. 458, ( (1800 AG. at p ME (2) 3 App. Cas., at pp. 400, 495, (5) (1892) 3 Ch. @ 3K -& J, 208. (6) 2 Buss, 389, ab p. 301.

1. Order that the defendant, its editors, managers, H.C. ov A. canvassers, agents, workmen and clerks, be '9. perpetually restrained from further printing, Bracnne & publishing, selling, delivering or otherwise 8°81? disposing of or causing or permitting to be varmax published, printed, sold, delivered or other- Posies wise disposed of, a book in the statement of rnteramy claim called " The Australasian Shakespeare ¥™- Henry the Fifth" containing the following passages or notes or any or either of them 'or any part of them respectively : - {a) The passage in the general introduction to the defendant's book on page vit. beginning with the words "The source from which Shakespeare drew the historical material" to and inclusive of the words on page X11. : "They have sealed their own doom." (b) The introductory comments to Act I., Scene t., ; 'on page 114 of the defendants book beginning : with the words " This. scene introduces the main theme of the play" to and inclusive of the words "the charm of his eloquence." (6) Thetertual notes : - {The particular notes were set out.) |

2. Order that an inquiry be taken (at the risk of the plaintiff) of what damages have been sustained by the plaintiff by reason of the sale of books containing the passages and notes aforesaid.

3. Order that the defendant do pay to the plaintiff its costs of this action (including costs of discovery if any) such costs to be taxed.

Co., Sydney. = Solicitor for the defendant, S. A. Ralph. BLL.