[This is the second in series of posts summarizing my new article, “The Grapes of Roth.” Here is the introduction.]

Why did courts become enamored with the inane verbiage of the “total concept and feel” test in the 1980s? The story starts with Learned Hand.

Learned Hand, as I’ve mentioned before, is one of the giants of copyright law. His opinions in Nichols v. Universal Pictures, Sheldon v. Metro-Goldwyn, and Peter Pan Fabrics v. Martin Weiner have been mainstays in copyright textbooks and cited in caselaw and treatises for decades. But one of the reasons why is not often appreciated. Take a look at any copyright decision from Hand’s heyday, such as his district court opinion in Fred Fisher v. Dillingham (S.D.N.Y. 1924):

The most important line is the first: “In Equity.” Up through 1938, when the Federal Rules of Civil Procedure were adopted, and even for decades after that time, judges were used to resolving certain disputes based on considerations of fairness and justice — suits brought in equity. Not just any claim could be filed in equity; the complainant had to be requesting some sort of relief that was not available to them “at law,” either because that relief was only equitable (discovery, injunctions, rescission, etc.) or because there was some sort of gap or loophole in the law that needed filling. The judge hearing a dispute in equity would resolve the issue without a jury and based on principles of fairness, such as those encapsulated in the maxims of equity.

Most copyright cases–indeed, most intellectual property cases–before 1938 were brought in equity, because typically the primary relief being sought was an injunction. Indeed, well after the merger of law and equity in 1938, courts still heard copyright cases claiming injunctive relief in an equitable fashion, without a jury; and even after the Supreme Court nixed that practice whenever damages were alleged in 1959’s Beacon Theatres v. Westover, juries were rarely requested in copyright cases until the 1980s. The result was that throughout the middle decades of the twentieth century, judges were quite used to making infringement decisions on their own, based on their impressions of the two works at issue.

This was in many ways fortunate, because an infringement determination in non-exact copying cases involves a tricky balance of three disparate inquiries. First, there is a question of amount: how much of the plaintiff’s material wound up in the defendant’s work? Second, there is a legal determination to be made: was the borrowed material the sort that the law should categorize as protected? And finally, there is a question of line-drawing: where is the threshold of impermissible borrowing, and did the defendant cross it?

My latest article, “The Grapes of Roth,” has just come out in print in the Washington Law Review. In it, I argue that copyright law passed through at least three important phases over the course of the last century, in which judges struggled in different ways with the process of how to determine whether two works are infringing. This periodization of copyright decision-making is, I believe, insufficiently appreciated; copyright lawyers, scholars, and students tend to read cases from any era as going about the decision-making process in the same way. The goal of the article is to focus more attention on how decision-making has varied over time, and to at least begin the discussion of which era’s procedure is closer to optimal.

The title is a reference to the old copyright chestnut Roth Greeting Cards v. United Card Co., in which the majority concluded that infringement was the right call based on the shared “total concept and feel” of the plaintiff’s and defendant’s greeting cards. The “total concept and feel” standard from Roth is one that copyright lawyers love to hate. The phrase is nearly meaningless: concepts are explicitly excluded from protection under 17 U.S.C. § 102(b), and copyrighted works are distinct from any physical embodiment, meaning they have no “feel.” The influential Nimmer treatise has for decades reproached the standard as “invit[ing] an abdication of analysis.”

So why is it so popular? Judges seem to have no qualms about using it, no matter what the commentariat says. They have cited it regularly as the standard for infringement in cases involving non-identical works from the 1980s to the present day. Indeed, it has found its way into jury instructions: juries are commonly told, without further elaboration, that two works are infringing if one was copied from the other and they share the same “total concept and feel.” The answer to this puzzle, I argue, sheds light on the transition from the first phase to the second, and reveals the trap sprung (or the “grapes” pressed) in the third.

Over the next several days I’m going to serialize the article here. I’ll cover in somewhat less detail (but with more images!) the three historical phases I identify, and then wrap up with a concluding post on whether those phases are limited to copyright law.