Grapes of Roth, Part I-A: Duck-Rabbits in Equity

[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?

Continue ReadingGrapes of Roth, Part I-A: Duck-Rabbits in Equity

The Grapes of Roth

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.

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Kimo Ah Yun Describes His Path to Marquette’s Presidency—and the Path to Marquette’s Future

Kimo Ah YunKimo Ah Yun calls his personal history an “underdog story.” He was one of the large number of young people across the United States who had the ability to do big things, but who came from circumstances where doing them was rare.

A child of parents who did not graduate from high school, a native of low-income Compton, Calif., someone who learned lessons about life from pumping gas. He became a first-generation college graduate who didn’t really know what grad school was, but who had mentors who put him on paths to a master’s degree, a doctorate, a professorship, a deanship, a provostship, and, now, the presidency of Marquette University.

Ah Yun thinks about all those who didn’t make it the way he has. During a “Get to Know” program at Marquette Law School’s Eckstein Hall on Jan. 17, he described his own path. “I never expected to be sitting in this chair next to you,” he told the program’s moderator, Derek Mosley, director of the Law School’s Lubar Center for Public Policy Research and Civic Education. But Ah Yun added, “I think about all the people who could have had that opportunity, and for some reason could not see it.”

He recalled a woman who was a schoolmate of his. She was “a phenomenally brilliant person,” he said. “She was smarter than every one of us in school,” he said. “But she never saw it. . . . If you don’t see the pathway, you can never get there. She could have done anything she wanted to, but she did not ever see a pathway for her.”

One of his roles as the 25th president of Marquette is to help more people get on that pathway and to help all students, regardless of their backgrounds, to become the best people they can be. To Ah Yun, that is the heart of Catholic, Jesuit education and the heart of what he was inspired to do by his close friend and predecessor as president, Michael Lovell, who died in June 2024.

Ah Yun told an audience of about 200 that getting an education so you can get a job is important, but that’s far from all Marquette wants its students to set as a goal. Jesuit education means “changing fundamentally who you are as a person and how you interface with the world.” It means making sure you have a moral compass that tells you what is right and what is wrong. It means growing to be someone who cares about others and who is engaged in helping others. “A Jesuit education, to me, is positioning you to have a great life” and to make everyone around you better, Ah Yun said.

Of all the universities in America, Marquette, he said, has the highest percentage of students who are involved in public service. That was at the top of Ah Yun’s list of positive things about Marquette. Asked by Mosley what he most relishes about his job as president of Marquette, Ah Yun said, “Telling our story. We have a great story.”

But he also said that, like all universities, Marquette is facing headwinds as the world of higher education changes, including demographic trends that point to a smaller pool of students in coming years. “We’re going to have rethink things,” he said. While still focusing on students, Marquette is going to have to pull back on some things. For colleges as a whole, including Marquette, there will be “hard decisions, hard times, very disruptive,” Ah Yun said. He pointed to colleges in the United States that have closed in the last several years and mentioned Cardinal Stritch University in Fox Point as one of them.

Ah Yun’s path to Marquette is in itself a colorful story, even without reference to his challenging earlier years. He had been a professor in communications for two decades at California State College, Sacramento, where he got his bachelor’s degree. “I never thought I would ever leave there because it was home,” he said. But he was contacted by representatives of a search firm that was aiming to find a new dean for Marquette’s Diederich College of Communication. He put them off, saying he wasn’t interested. But they were persistent. They convinced him to at least visit Marquette. He agreed but, he said, “I didn’t bring a suit,” because he didn’t intend to take the job. And the night before his interview, he went to a Marquette basketball game rather than prepare for the next day’s session.

He described aspects of his conduct during the interview as somewhat “snarky.” He said, “I wasn’t trying to impress anyone.” But he was invited back for a second interview. He told the search firm representative he had no interest in the job and had a lot of personal reasons to stay in California. But they convinced him to come back and to bring his wife along. He began to take it more seriously.

The key turning point was when Ah Yun was taken to meet Lovell. “He was inspiring,” Ah Yun said. “We were aligned in thinking about a student-centered university that was focused on transforming the lives of our students.” His attitude changed, “I knew I could come work for Mike,” he said. And it went beyond that: “I said I could be a better person if I worked with a guy like that.”

Ah Yun became the communication dean and later the interim provost of the university and then the provost in 2019. After Lovell died, Ah Yun was named interim president and, in November 2024, in his ninth year with Marquette, he was named president.

Marquette needs to stick to its core competencies, he said. It’s not a university that aims to succeed by building online education. It’s an in-person university. “We engage and transform people,” he said. Marquette’s leaders will need to do things ahead that show how they care for the institution itself—but also show that the university has “a foundation where we teach people to love one another.”

Video of the one-hour conversation with Ah Yun may be viewed by clicking here.

Continue ReadingKimo Ah Yun Describes His Path to Marquette’s Presidency—and the Path to Marquette’s Future