[This is the third in series of posts summarizing my new article, “The Grapes of Roth.”]
Introduction
Part I-A: Duck-Rabbits in Equity

In yesterday’s post, I summarized how infringement determinations were made in the age of equity, in the early to mid-twentieth century: judges compared the plaintiff’s and defendant’s works as an ordinary observer would, then mentally pared down the similarities by considering only protected expression. Based on that filtered comparison, the judge would arrive at a conclusion about whether the protected similarities were substantial enough to warrant an infringement determination.

That method put a lot of faith in the ability of federal judges to exercise aesthetic, legal, and policy discretion to reliably arrive at just outcomes involving infringement. But by the early 1960s, that faith was waning. Several factors were behind this shift. The first was simply generational: the active bench of the Second Circuit, the leading copyright appellate court in the mid-twentieth century, experienced a nearly complete turnover between 1951 and 1957, and by 1964, all nine active judges had been appointed within the last ten years. Learned Hand and the cadre of judges who served with him–judges who were used to equitable decision-making–were gone, replaced by judges such as Edward Lumbard, Henry Friendly, Irving Kaufman, and Thurgood Marshall. This new generation of judges had a very different conception of the judicial role, one considerably more wary of open exercises of judicial discretion.

There were several reasons for this, many of which are briefly elaborated in my article, and a full account of which could occupy its own article or even a book. I’ll just briefly list them here. Legal realism and Lochner–era judicial review had desanctified the judicial decisionmaking process in the eyes of many. The rise of the administrative state and an explosion of statutes moved the conceptual center of the law away from courts, and away from the common law, and placed it instead with legislatures and statutory text. The Erie decision reinforced that view by locating law in the command of a government, not a transcendent body of principles. Equity was fading as a familiar decision-making procedure. The federal courts and federal caseload exploded, putting pressure on lower courts to better explain their decisions for more efficient review.

The result was a revolution in legal ideology, the foundational axioms of which were encapsulated by a theory that briefly flourished at Harvard Law School in the 1950s and ’60s, and was laid out in a set of teaching materials titled “The Legal Process.” Legal Process theory had two significant components to it. First was the principle of “institutional settlement,” meaning the way in which different sorts of decisions were parceled out to different institutional players. With the rise of statutes and regulations, the content of the law was no longer mostly in the hands of judges, but rather to a large degree was the responsibility of legislatures and administrative agencies. Once it was settled who had primary authority over the content of some provision of law, that institutions decision should govern the other players–including courts. (For more on how “institutional settlement” may have influenced copyright law, see Shyam Balganesh’s article Copyright as Legal Process.)

The second component was the principle of “reasoned elaboration.” Judicial decisions are legitimate, according to this principle, only because they are explained in a series of steps that “build the bridge between the authorities they cite and the results they decree.” The 1960s witnessed a surge of multi-step tests and multi-factor balancing frameworks. Judge Hand’s statement in Sinram v. Pennsylvania R.R. that ultimately every judicial decision rests on fiat was cast aside.

[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.