Basic Case Law Series #1: Baker v. Selden

Introduction to Series

This series (“Basic Case Law Series”) serves as a precursor to another series in the pipeline (“Essential Framework Series”), wherein I will attempt to provide readers with a framework for understanding Intellectual Property law.

But before I can do that, I felt it would be beneficial to:

A. Have a repository of case summaries (of significant cases) that I can refer to in broader posts.

B. Provide readers with analyses of significant case laws that deal with the fundamentals.

You can use the tag “Basic Case Law Series” for more from this series.

Introduction to Case

Justice Bradley’s US SC judgment (1879), in the case of Baker v. Selden, establishes the distinction between the protection afforded by a Patent and a Copyright. It also, albeit inadvertently, touches upon the idea/expression divide, in conjunction with the merger doctrine.

Given that the judgment is of US origin, we need not be as concerned with the factual analysis, as much as we need to concern ourselves with the abstract interplay of ideas and arguments.

Basic Facts

Selden owned the copyright in a book that explained a particular accounting system through text and illustrations.

Baker published a book that contained blank copies of tables that were quite similar to the illustrations from Selden’s books. The book was meant to provide accountants with ready to use tables, which they would otherwise have had to draw themselves.

It is pertinent to note that there exists a distinction between the intended purposes of Selden’s and Baker’s books. While Selden’s was for purposes of explanation, Baker’s was for direct utilization.

With these basic facts, let us deconstruct the analysis.

Deconstruction

The court, siding with Baker, held that having copyright in a book that explains a particular system does not extend to protection against use of said system, as such protection lies within the exclusive domain of Patent law.

Please note that copyright does extend to protection against copying of the explanatory text or illustrations in another explanatory book, but does not extend to direct usage of the presented illustrations or text.

Court clarified that it didn’t matter whether the content used was textual or diagrammatic.

Let us look at the relevant excerpt:

“The difference between the two things, letters patent and copyright, may be illustrated by reference to the subjects just enumerated. Take the case of medicines. Certain mixtures are found to be of great value in the healing art. If the discoverer writes and publishes a book on the subject (as regular physicians generally do), he gains no exclusive right to the manufacture and sale of the medicine; he gives that to the public. If he desires to acquire such exclusive right, he must obtain a patent for the mixture as a new art, manufacture, or composition of matter. He may copyright his book if he pleases, but that only secures to him the exclusive right of printing and publishing his book. So of all other inventions or discoveries.”

…

“The copyright of a work on mathematical science cannot give to the author an exclusive right to the methods of operation which he propounds, or to the diagrams which he employs to explain them, so as to prevent an engineer from using them whenever occasion requires. The very object of publishing a book on science or the useful arts is to communicate to the world the useful knowledge which it contains. But this object would be frustrated if the knowledge could not be used without incurring the guilt of piracy of the book. And where the art it teaches cannot be used without employing the methods and diagrams used to illustrate the book, or such as are similar to them, such methods and diagrams are to be considered as necessary incidents to the art, and given therewith to the public — not given for the purpose of publication in other works explanatory of the art, but for the purpose of practical application.”

Given the rather uncontentious nature of the principle, one might wonder:

Where does the ambiguity lie?

The crux of the ambiguity arises as a consequence of the nature of the material in contention i.e. tables used in accounting. Allow me to explain.

Illustrations used to explain an accounting technique, could very well be directly used to carry out the activity of accounting itself. In that sense, there exists little to differentiate between diagrams that explain accounting and diagrams that can be used to do accounting.

In contrast, consider a diagram that explains a legal concept.

While the diagram could bolster the viewer’s knowledge on the subject, it cannot be directly used by a lawyer while handling a case involving the concept.

Selden’s counsel attempted to rely on a case, which held that a chart of patterns for tailoring clothes could be copyrighted. The court, in the present case, conceded that the chart was copyrightable, but clarified that only unauthorized dissemination of information was protected against and not the end use of the chart, i.e. cutting of cloth into those patterns.

One might see certain complications arising out of application of the patterns case on account of the artistic nature of the work, but we need not worry too much about the same as the court dealt with the issue only summarily.

Here are a few relevant excerpts:

“The plausibility of the claim put forward by the complainant in this case arises from a confusion of ideas produced by the peculiar nature of the art described in the books which have been made the subject of copyright. In describing the art, the illustrations and diagrams employed happen to correspond more closely than usual with the actual work performed by the operator who uses the art. Those illustrations and diagrams consist of ruled lines and headings of accounts, and it is similar ruled lines and headings of accounts which, in the application of the art, the bookkeeper makes with his pen, or the stationer with his press, whilst in most other cases the diagrams and illustrations can only be represented in concrete forms of wood, metal, stone, or some other physical embodiment. But the principle is the same in all. The description of the art in a book, though entitled to the benefit of copyright, lays no foundation for an exclusive claim to the art itself. The object of the one is explanation; the object of the other is use. The former may be secured by copyright. The latter can only be secured, if it can be secured at all, by letters patent.”

“In Drury v. Ewing, 1 Bond, 540, which is much relied on by the complainant, a copyright was claimed in a chart of patterns for cutting dresses and basques for ladies, and coats, jackets, &c., for boys. It is obvious that such designs could only be printed and published for information, and not for use in themselves. Their practical use could only be exemplified in cloth on the tailor’s board and under his shears — in other words, by the application of a mechanical operation to the cutting of cloth in certain patterns and forms. Surely the exclusive right to this practical use was not reserved to the publisher by his copyright of the chart. Without undertaking to say whether we should or should not concur in the decision in that case, we think it cannot control the present.”

Finally, the court clarified that the above observations did not apply to “ornamental designs or pictorial illustrations” as, unlike explanatory works, their final end did not lie in application or use. Meaning, an infringer cannot take the defense of using an ornamental work.

The relevant excerpt is as follows:

“Of course these observations are not intended to apply to ornamental designs or pictorial illustrations addressed to the taste. Of these it may be said that their form is their essence, and their object, the production of pleasure in their contemplation. This is their final end. They are as much the product of genius and the result of composition as are the lines of the poet or the historian’s period. On the other hand, the teachings of science and the rules and methods of useful art have their final end in application and use, and this application and use are what the public derive from the publication of a book which teaches them. But as embodied and taught in a literary composition or book, their essence consists only in their statement. This alone is what is secured by the copyright. The use by another of the same methods of statement, whether in words or illustrations, in a book published for teaching the art would undoubtedly be an infringement of the copyright.”

Persisting Concerns

Does the above analysis apply only in cases where the end users have no other option, but to utilize explanatory illustrations in their work? Or are end users also allowed to utilize explanatory material in their work in cases where such usage is not absolutely essential?

The concern arises because of this excerpt:

“And where the art it teaches cannot be used without employing the methods and diagrams used to illustrate the book, or such as are similar to them, such methods and diagrams are to be considered as necessary incidents to the art, and given therewith to the public…”

While a literal interpretation of the above excerpt would suggest that the analysis only applies to instances where usage is unavoidable, the general spirit of the judgment does not seem to contemplate such a narrow application.

Further, I do not see any policy reason to restrict end usage of copyrighted material, even when an alternative exists. Such restrictions should only be made possible through Patent law.

Does this judgment provide insights on either the idea/expression dichotomy, or the merger doctrine?

For the uninitiated:

            Idea/Expression Dichotomy:

                        Only expression is copyrightable. Not the more abstract ideas.

            Merger Doctrine:

When one cannot refer to an idea without using a certain form of expression, said expression cannot be the subject of copyright. E.g. In a case, bee shaped jewellery was restricted from being copyrighted on account of there being limited ways of representing a bee in jewellery.

Seldon’s counsel contended that because use of the system was impossible without copying the illustrations, copyright in the explanatory material would translate into protection against use of the system as well.

The court, as noted above, rejected this argument by stating that any implications on the use of the system would fall exclusively within the domain of Patent law and not even an ancillary effect of copyright protection could infringe upon its domain.

Though tempted to claim that there are elements of the idea/expression dichotomy and the merger doctrine in the above judgment, I would argue that this case is more about the distinction between the domains of Copyright and Patent, than anything else.

Takeaway

Just note the central concept:

When the application of explanatory material results in copying of the said material, such “copying” would not be considered to infringe upon the copyright over the explanatory material.

Post Script

As a psychological experiment, check if you view the above analysis differently after learning of the following background facts:

Selden came up with the accounting system and invested heavily in it.

He couldn’t sell well enough and fell into debt.

Baker, a much better salesman, used the system to reap major profits.

Selden died prematurely, leaving his widow with heavy debts and a child.

It was the widow who approached the US SC for infringement damages.

Image from here.
Cover Image by Prateek Surisetti.