b'\x0cProperty: Volume 1\n\nChristian Turner\nAssistant Professor of Law\n\nUniversity of Georgia School of Law\n\neLangdell\xc2\xae Press 2012\n\n\x0cAbout the Author\nChristian Turner teaches courses in property, land use, legal theory,\nand the regulation of information. His research interests are in the\npublic/private distinction and institutional analysis. Drawing from\nhis mathematical training, he is interested in both the logic and\nillogic of the law\xe2\x80\x94 and in understanding seemingly complex and\ndiverse legal principles as consequences of basic, trans-substantive\nideas.\nPrior to joining the faculty at the University of Georgia, Christian\nwas a Visiting Assistant Professor at Fordham Law School,\nworked at Wiggin and Dana law firm in New Haven, and clerked\nfor Judge Guido Calabresi on the Second Circuit. He is a graduate\nof Stanford Law School and holds a Ph.D. in mathematics from\nTexas A&M University.\n\niii\n\n\x0cAbout eLangdell Press\nThe Center for Computer-Assisted Legal Instruction (CALI\xc2\xae) is: a\nnonprofit organization with over 200 member US law schools, an\ninnovative force pushing legal education toward change for the\nbetter. There are benefits to CALI membership for your school,\nfirm, or organization. eLangdell\xc2\xae is our electronic press with a\nmission to publish more open books for legal education.\nHow do we define "open?"\n\xef\x82\xb7\n\nCompatibility with devices like smartphones, tablets, and ereaders; as well as print.\n\n\xef\x82\xb7\n\nThe right for educators to remix the materials through\nmore lenient copyright policies.\n\n\xef\x82\xb7\n\nThe ability for educators and students to adopt the\nmaterials for free.\n\nFind available and upcoming eLangdell titles at elangdell.cali.org.\nShow support for CALI by following us on Facebook and Twitter,\nand by telling your friends and colleagues where you received your\nfree book.\n\niv\n\n\x0cNotices\nCarol M. Rose, Possession as the Origin of Property, 52 U Chi L\nRev 73 (1985), reprinted with permission of the University of\nChicago Law Review.\nLawrence Solum, Legal Theory Lexicon: Fit & Jusitfication http://lsolum.typepad.com/legal_theory_lexicon/2004/04/legal_t\nheory_le_1.html, reprinted with the permission of the author.This\nwork by Colin Millers licensed and published by CALI eLangdell\nPress under a Creative Commons Attribution-NonCommercialShareAlike 3.0 Unported License. CALI and CALI eLangdell Press\nreserve under copyright all rights not expressly granted by this\nCreative Commons license. CALI and CALI eLangdell Press do\nnot assert copyright in US Government works or other public\ndomain material included herein. 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The CALI graphical logo is a trademark and may\nnot be used without permission.\nShould you create derivative works based on the text of this book\nor other Creative Commons materials therein, you may not use this\n\nv\n\n\x0cbook\xe2\x80\x99s cover art and the aforementioned logos, or any derivative\nthereof, to imply endorsement or otherwise without written\npermission from CALI.\nThis material does not contain nor is intended to be legal advice. Users\nseeking legal advice should consult with a licensed attorney in their\njurisdiction. The editors have endeavored to provide complete and\naccurate information in this book. However, CALI does not warrant that\nthe information provided is complete and accurate. CALI disclaims all\nliability to any person for any loss caused by errors or omissions in this\ncollection of information.\nVersion 1: March 29, 2012\n\nvi\n\n\x0cTable of Contents\nProperty: Volume 1............................................................................................. 2\nAbout the Author .............................................................................................. iii\nAbout eLangdell Press ...................................................................................... iv\nNotices ................................................................................................................. v\nTable of Contents.............................................................................................. vii\nPreface ................................................................................................................. ix\n1. Introduction .................................................................................................... 1\n1.1. Finders vs. Landowners ........................................................................ 1\n1.2 Trespass .................................................................................................. 43\n1.2.1. What\'s at Stake .............................................................................. 43\n1.2.2. Initial Look at Exclusion\'s Limits .............................................. 55\n1.3 Nuisance ................................................................................................. 78\n1.3.1. Defined........................................................................................... 78\n1.3.2. Law and Economics ................................................................... 101\n1.3.3. Problems ...................................................................................... 109\n1.3.4. Application .................................................................................. 112\n1.3.5. Property Rules and Liability Rules: Theory ............................ 138\n1.3.6. Property Rules and Liability Rules: Practice........................... 145\n2. Acquisition by Possession......................................................................... 173\n2.1 Possession Generally .......................................................................... 173\n2.1.1. Wild Animals ............................................................................... 173\n2.1.2. Theory .......................................................................................... 190\n2.1.3. Sunken Ships, Baseballs, and Artifacts .................................... 212\n2.1.4. Problems ...................................................................................... 258\n2.2 Common Pool Resources .................................................................. 260\n2.2.1. The Problem and Theory .......................................................... 260\n2.2.2. Applications ................................................................................. 264\n2.3. Review .................................................................................................. 283\n\nvii\n\n\x0c3. Acquisition by Creation ............................................................................ 291\n3.1. Unfair Competition ............................................................................ 291\n3.2. Trademarks and Domain Names ..................................................... 339\n3.3. Patents .................................................................................................. 367\n3.4 Copyright .............................................................................................. 386\n3.4.1. Eligibility ...................................................................................... 386\n3.4.2. Calibration: Scope of Exclusion, a.k.a. Fair Use .................... 410\n3.4.3. Calibration: Length of Term ..................................................... 441\n3.4.4. Secondary Liability ..................................................................... 481\n3.4.4.1. Problems ................................................................................... 533\n3.5. Publicity Rights ................................................................................... 541\n4. Transfers ...................................................................................................... 605\n4.1. Gifts ...................................................................................................... 605\n4.2 Real Estate Transactions .................................................................... 614\n4.2.1. The Contract ............................................................................... 614\n4.2.2. The Deed ..................................................................................... 641\n4.3. Adverse Possession ............................................................................ 666\n\nviii\n\n\x0cPreface\nProperty is an odd subject. Typically a first-year, foundational\ncourse, it becomes apparent to beginning students rather quickly\nthat it differs greatly from Contracts, Torts, and Criminal\nLaw. Whereas those courses usually have a consistent rhythm, a\nmutually reinforcing structure, Property seems to be a grab bag of\ntopics. Worse, the cases one studies are generally tort and contract\ncases. Are there property cases? What is distinctive about them?\nTo understand what we\'re about to embark on, you must first\nunderstand what is happening in your other courses. I will give a\nvery brief overview here of my conception of the structure of legal\nsystems. I find that thinking broadly at first helps to show how the\nstudy of Property Law is different and also to explain the structure\nof a typical first-year curriculum. A fuller explanation, intended for\nnon-experts, can be found in a short series of blog posts at\n[http://hydratext.com/blog/category/laws-not-thathard](http://hydratext.com/blog/category/laws-not-that-hard).\nAn Atlas of Legal Systems\nContracts, Torts, and Criminal Law are substantive\nlaw. By that, I mean that they are basic categories\naction. They differ in the identity of the institution\nlawmaking\nand\n\nfields of the\nof causes of\nthat controls\nprosecution.\n\nContract Law is the set of laws that are created by private entities\n(often, but not always, through bilateral agreement) and enforced\nby private lawsuits. Tort Law is the set of laws that are created by\npublic entities (usually courts creating common law or legislatures)\nand enforced by private lawsuits. Criminal Law is the set of laws\nthat are created by public entities and enforced by public lawsuits\n(or\nprosecutions).\n\nix\n\n\x0cTo summarize:\n\nPrivately Made\n\nPublicly Made\n\nPrivately\nProsecuted\n\nContracts\n\nTorts\n\nPublicly\nProsecuted\n\nParens Patriae\n\nCriminal Law\n\nSo where is Property Law? Under this view, it does not exist as a\nsubstantive category. Indeed, a Property course consists of tort\ncases, contract cases, criminal cases, and a few cases nominally\nlabeled property cases but which are easily seen to be contract\ncases with different default rules and procedures. The chart simply\nmakes plain that it could not be otherwise.\nCan you see why the set of laws in the Parens Patriae category\nmight be a very small one?\nAnalyzing Cases\nLet\'s keep going for just a bit on the similarities among the\nsubstantive courses in order to discern a role for Property within a\nfirst-year education. While Contract, Tort, and Criminal Law differ\nin the nature of the institutions that make law and prosecute\nviolations, they are remarkably similar in how their causes of action\nwork. In each of these courses, you will learn an identical pattern\nfor analyzing a lawsuit: Duty, Breach, Causation, Defenses,\nDamages. These may be taken up in different orders. The steps\nmay even be given different names. But the essence is the same:\n1. Did the defendant owe a _duty_ that is the subject of the\n\nx\n\n\x0clawsuit? Duties are what me might causally think of as "the law,"\nthe things we must do or not do. They are created by legislatures,\ncontracts, or courts. In Contracts, you will be concerned with the\nprocedures for enacting duties (offer and acceptance, for example)\nand interpreting written contracts to determine what duties have\nbeen created. In Torts, you will primarily study judge-made duties\nand the policies behind them. While in Criminal Law, many\ntextbooks focus on the duties contained in the Model Penal Code.\n2. Did the defendant breach the duty owed? Duties are often\nstated in general terms, and the question of breach is whether the a\nduty was violated under the specific facts of the case -- an exercise\nthat often involves returning to the question of duty and gaining\nmore precision about what is and what is not against the law. If I\nowe a duty to avoid injuring others by driving a car using the\nordinary degree of care a reasonable and prudent person would\nunder the circumstances, whether I violated that duty by shifting\nmy attention to the air conditioning or heating while in heavy\ntraffic\nis\na\nquestion\nof\nbreach.\n3. Did the defendant\'s breach of a duty cause the result specified in\nthe law, typically an injury to the plaintiff or victim? As you\'ll see\nin your other classes, this step usually involves two separate\nquestions, one of logic and one of policy. First, was the\ndefendant\'s breach a logical or but-for cause of the injury, in the\nsense that no injury would have occurred but for the breach? This\nis necessary but not sufficient for liability. In each substantive area,\nwe also ask a policy question: was the breach a proximate cause of\nthe injury? This is a question of policy that asks whether the\nbreach was such that we think the defendant ought to be at least\npartially responsible, typically because the breach was a substantial\nfactor in bringing about the injury.\n4. Defenses, like proximate cause, are policy-based reasons to\nrefuse to find all or some liability.\n5. Damages, or remedy, actually varies quite a bit among the\nsubjects. Some Contract courses even begin with this step as a way\n\nxi\n\n\x0cof illustrating the distinctive purposes of the enforcement of\nprivate\nagreements.\nThis underlying structure is an important part of why Contracts,\nTort, and Criminal Law reinforce one another in the first-year\ncurriculum. These subjects, and thus courses, ask the same\nquestions, only with respect to lawmakers and prosecutors of\ndiffering types. Because the same concepts are repeated, learning\nabout\none\narea\nhelps\nto\nlearn\nabout\nothers.\nProperty\nProperty, as a vaguely defined collection of contract, tort, and\ncriminal cases, does not take on the natural structure of a\nsubstantive area of the law through the systematic study of duty,\nbreach, causation, defenses, and damages. Instead this textbook\nand most Property courses survey various topics in law with two\ngoals in mind. First, we will study a number of traditional property\ntopics, those where the issue of "ownership" and what that entails\nhave long been thought to be a central issue. Second, but most\nimportantly, our interdisciplinary study will introduce some of the\nmajor analytical techniques in law, from reasoning using precedent\nto law and economics to distributive justice. As we roam among\ntopics, our goal is always, relentlessly to ask, "Why?" "Why should\nthe law protect this party\'s interest?" These major techniques that\nwe will pick up along the way will help us provide better and better\nanswers\nto\nthis\nquestion.\nSubstance\nAs to our first goal, we will survey some of the major topics in the\ncommon law of land ownership as well as some highlights from the\nlaw of intellectual property. From trespass and nuisance, to land\ntransfers, to adverse possession, to future interests, easement,\ncovenants, and takings, there is quite a bit of fairly basic law that is\nnot ordinarily covered in torts or contracts. Common to many of\nthe topics we will cover are notions of "ownership" and\n\nxii\n\n\x0c"entitlement." We will see that these concepts are not selfdefining. Instead, what it means to own something will depend\nentirely on how we resolve cases in which owners\' rights are\ncontested. It will never be good enough to respond to an\nargument that, say, a landowner should be stopped from making\nsome use of his or her land by asserting that the landowner should\nwin because it\'s his or her property. Whether property ownership\nincludes a right to make such a use is the very issue being\ncontested.\nEven if it were more precise and dispositive, ownership could\nhardly be a unifying criterion for identifying a body of Property\nLaw. Ownership or entitlement is a critical element in just about\nevery legal dispute. In many cases, though, it doesn\'t come\nup. For example, in personal injury cases in torts, we rarely ask\nwhether the plaintiff owned the part of her body that was\ninjured. But the right to the integrity of that body part is indeed\nthe very entitlement the law protects. Just because a thing is so\nwell settled as not to be raised does not mean that it is not essential\nto the law. Moreover, there are cases in which the kind of\nownership of one\'s body that is asserted is not so obviously of a\nsort the law should recognize, and so the entitlement question\nbecomes important. (Do you own your body in the sense that you\ncan sell it? In what circumstances?) The point is only that the\nissue of entitlement or ownership is critical to just about every\ncontract, tort, and criminal case, even if it is often not\ndisputed. This textbook and course focus on areas of the law in\nwhich what it is that the law protects, what the entitlement is and\nwho has it, is at issue.\nThe Toolbox\nThe substantive topics we will study are all interesting in their own\nways, but we are not studying them to become practice\nexperts. The primary purpose of law school training, in my view, is\nnot to learn the law itself but to learn how to learn it. That is, you\n\nxiii\n\n\x0cneed to become familiar with the techniques of legal reasoning, the\nstructure of the legal system, and the major analytical tools of the\nlaw. With these in hand, it becomes possible to read judicial\nopinions and statutes quickly and to synthesize new arguments. In\npractice, you will work on cases raising issues you have not studied,\nand, even if have, you will do new research to understand the\nspecific state of the law as it applies to your case. Doing law is a\nprocess, not a recalling of memorized facts.\nWith this in mind, our second and most important purpose is to\nbuild a toolbox of big ideas that appear over and over again, across\nthe substantive categories. During this semester, we will focus on\nseveral,\nincluding:\n* Reasoning from bare precedent, using decided cases like puzzle\npieces that must be fit together;\n* Instrumentalism, the idea that legal rules should be crafted to\nattain some public purpose;\n* Law and economics, a huge and pervasive topic that we initially\nexplore using nuisance law;\n* The substantive and institutional differences between rules and\nstandards, which the cases involving possession nicely raise;\n* The distinction between natural law and positivist approaches;\n* Labor, possession, and communication theories of ownership;\n* The use of exclusion (property rights) or governance regimes to\nsolve coordination problems of users of common resources, which\nwe explore in the traditional context of oil and other common pool\nresources but also in how to design a system of property rights in\nideas and expression -- so-called intellectual property;\n* The legal process school\'s understanding that which institution,\nsay courts or legislatures, decides a question can be more important\nthan any arguments concerning the right answer.\n\nxiv\n\n\x0cThere are more, and which ones your instructor focuses on and the\norder in which he or she does so may vary. This book is only a\nsource from which this very important instruction in using the\ntools\nof\nthe\nlaw\ncan\nproceed.\nThis sort of study takes patience on your part. Lacking the\nreassuring order of duty, breach, causation, damages, and defenses,\nthis course will ask you, yes, to learn what the law is in a number of\nareas, but more importantly to deepen your understanding of law\'s\nreasons beyond the intuitions you may now have. You will be\nlearning new ways to argue, new ways to read arguments. In\nProperty Law, scanning across the whole field of law, we have the\nopportunity to learn not only law\'s "what" but law\'s "why."\n\nxv\n\n\x0c1. Introduction\n1.1. Finders vs. Landowners\nArmory v. Delamirie,\n1 Strange 505; 93 E.R. 664 (Court of King\xe2\x80\x99s Bench\n1722)\nPRATT, C.J.\nThe plaintiff being a chimney sweeper\xe2\x80\x99s boy found a jewel\nand carried it to the defendant\xe2\x80\x99s shop (who was a\ngoldsmith) to know what it was, and delivered it into the\nhands of the apprentice, who under pretence of weighing it,\ntook out the stones, and calling to the master to let him\nknow it came to three halfpence, the master offered the\nboy the money, who refused to take it, and insisted to have\nthe thing again; whereupon the apprentice delivered him\nback the socket without the stones. And now in trover\nagainst the master these points were ruled:\nThat the finder of a jewel, though he does not by such\nfinding acquire an absolute property or ownership, yet he\nhas such a property as will enable him to keep it against all\nbut the rightful owner, and subsequently may maintain\ntrover.\nThat the action well lay against the master, who gives a\ncredit to his apprentice, and is answerable for his neglect.\nAs to the value of the jewel several of the trade were\nexamined to prove what a jewel of the finest water that\nwould fit the socket would be worth; and the Chief Justice\ndirected the jury, that unless the defendant did produce the\njewel, and shew it not to be of the finest water, they should\npresume the strongest case against him, and make the value\nof the best jewels the measure of their damages: which they\naccordingly did.\n\n\x0cBridges v. Hawkesworth, 21 L.J. (Q.B.) 75\n(1851)(footnotes omitted and paragraph breaks added)\nThis was an appeal brought by the plaintiff from the\nWestminster County Court.\nThe plaintiff was a traveller for a large firm with which the\ndefendant, who was a shopkeeper, had dealings. On one\noccasion (October 1847) the plaintiff who had called at the\ndefendant\xe2\x80\x99s on business, on leaving the defendant\xe2\x80\x99s shop\nnoticed and picked up a small parcel which was lying an the\nshop floor. He immediately shewed it to the shopman, and\non opening it found it contained bank notes to the value of\n55 pounds. The plaintiff told the defendant who came in\nthat he had found a parcel of notes, and requested the\ndefendant to keep them to deliver to the owner. The\ndefendant advertised the finding of them in the\nnewspapers, stating that they should be restored to the\nowner on his properly describing them and paying the\nexpenses. Three years having elapsed and no owner\nappearing to claim them, the plaintiff applied to the\ndefendant for them, offering to pay the expense of the\nadvertisements, and to indemnify the defendant against any\nclaim in respect of them. The defendant refused to deliver\nthem up, and the plaintiff consequently brought a plaint in\nthe County Court of Westminster to recover the notes. The\nJudge decided that the defendant was entitled to keep them\nas against the plaintiff, and gave judgment for the\ndefendant. It was found in the case that the plaintiff when\nhe handed the notes over to the defendant to deliver to the\ntrue owner, did not intend to give up any title to them that\nhe might possess.\nJudgment was now delivered by PATTESON, J.\nThe notes which are the subject of this action were\nevidently dropped by mere accident in the shop of the\ndefendant by the owner of them. The facts do not warrant\nthe supposition that they had been deposited there\n\n2\n\n\x0cintentionally, nor has the case been at all put upon that\nground. The plaintiff found them on the floor, they being\nmanifestly lost by some one. The general right of the finder\nto any article which has been lost as against all the world\nexcept the true owner, was established in the case of Armory\nv. Delamirie, which has never been disputed. This right\nwould clearly have accrued to the plaintiff had the notes\nbeen picked up by him outside the shop of the defendant;\nand if he once had the right, the case finds that he did not\nintend by delivering the notes to the defendant to waive the\ntitle (if any) which he had to them, but they were handed to\nthe defendant merely for the purpose of delivering them to\nthe owner should he appear. Nothing that was done\nafterwards has altered this state of things; the\nadvertisements indeed in the newspapers referring to the\ndefendant had the same object: the plaintiff has tendered\nthe expense of those advertisements to the defendant, and\noffered him an indemnity against any claim to be made by\nthe real owner, and has demanded the notes.\nThe case, therefore, resolves itself into the single point, on\nwhich it appears that the learned Judge decided it: namely,\nwhether the circumstance of the notes being found inside\nthe defendant\xe2\x80\x99s shop, gives him, the defendant, the right to\nhave them as against the plaintiff who found them. There is\nno authority to be found in our law directly in point.\nPerhaps the nearest case is that of Merry v. Green, but it\ndiffers in many respects from the present. We were referred\nin the course of the argument to the learned work of Von\nSavigny, edited by Chief Justice Perry, but even this work,\nfull as it is of subtle distinctions and nice reasonings, does\nnot afford a solution of the present question.\nIt was well asked on the argument, if the defendant has the\nright, when did it accrue to him? If at all, it must have been\nantecedent to the finding by the plaintiff, for that finding\ncould not give the defendant any right. If the notes had\nbeen accidentally kicked into the street, and then found by\n\n3\n\n\x0csome one passing by, could it be contended that the\ndefendant was entitled to them, from the mere fact of their\nhaving been originally dropped in his shop? If the discovery\nhad not been communicated to the defendant, could the\nreal owner have had any cause of action against him,\nbecause they were found in his house? Certainly not. The\nnotes never were in the custody of the defendant, nor\nwithin the protection of his house before they were found,\nas they would have been had they been intentionally\ndeposited there, and the defendant has come under no\nresponsibility, except from the communication made to\nhim by the plaintiff, the finder, and the steps taken by way\nof advertisement. These steps were really taken by the\ndefendant as the agent of the plaintiff, and he has been\noffered an indemnity, the sufficiency of which is not\ndisputed.\nWe find therefore, no circumstances in this case to take it\nout of the general rule of law, that the finder of a lost article\nis entitled to it as against all parties except the real owner\nand we think that rule must prevail, and that the learned\nJudge was mistaken in holding that the place in which they\nwere found makes any legal difference. Our judgment\ntherefore is, that the plaintiff is entitled to these notes as\nagainst the defendant, and that the judgment of the Court\nbelow must be reversed, and judgment given for the\nplaintiff for 50 pounds. The plaintiff to have the costs of\nthe appeal.\nJudgment reversed.\nMcAvoy v. Medina, 11 Allen 548 (1866)\nA stranger in a shop who first sees a pocket-book which\nhas been accidentally left by another upon a table there is\nnot authorized to take and hold possession of it, as against\nthe shop-keeper.\nTORT to recover a sum of money found by the plaintiff in\nthe shop of the defendant.\n\n4\n\n\x0cAt the trial in the superior court, before Morton, J., it\nappeared that the defendant was a barber, and the plaintiff,\nbeing a customer in the defendant\xe2\x80\x99s shop, saw and took up\na pocket-book which was lying upon a table there, and said,\n\xe2\x80\x9cSee what I have found.\xe2\x80\x9d The defendant came to the table\nand asked where he found it. The plaintiff laid it back in the\nsame place and said, \xe2\x80\x9cI found it right there.\xe2\x80\x9d The defendant\nthen took it and counted the money, and the plaintiff told\nhim to keep it, and if the owner should come to give it to\nhim; and otherwise to advertise it; which the defendant\npromised to do. Subsequently the plaintiff made three\ndemands for the money, and the defendant never claimed\nto hold the same till the last demand. It was agreed that the\npocket-book was placed upon the table by a transient\ncustomer of the defendant and accidentally left there, and\nwas first seen and taken up by the plaintiff, and that the\nowner had not been found.\nThe judge ruled that the plaintiff could not maintain his\naction, and a verdict was accordingly returned for the\ndefendant; and the plaintiff alleged exceptions.\nDEWEY, J.\nIt seems to be the settled law that the finder of lost\nproperty has a valid claim to the same against all the world\nexcept the true owner, and generally that the place in which\nit is found creates no exception to this rule. 2 Parsons on\nCon. 97. Bridges v. Hawkesworth, 7 Eng. Law & Eq. R. 424.\nBut this property is not, under the circumstances, to be\ntreated as lost property in that sense in which a finder has a\nvalid claim to hold the same until called for by the true\nowner. This property was voluntarily placed upon a table in\nthe defendant\xe2\x80\x99s shop by a customer of his who accidentally\nleft the same there and has never called for it. The plaintiff\nalso came there as a customer, and first saw the same and\ntook it up from the table. The plaintiff did not by this\nacquire the right to take the property from the shop, but it\n\n5\n\n\x0cwas rather the duty of the defendant, when the fact became\nthus known to him, to use reasonable care for the safe\nkeeping of the same until the owner should call for it. In\nthe case of Bridges v. Hawkesworth the property, although\nfound in a shop, was found on the floor of the same, and\nhad not been placed there voluntarily by the owner, and the\ncourt held that the finder was entitled to the possession of\nthe same, except as to the owner. But the present case\nmore resembles that of Lawrence v. The State, 1 Humph.\n(Tenn.) 228, and is indeed very similar in its facts. The\ncourt there take a distinction between the case of property\nthus placed by the owner and neglected to be removed, and\nproperty lost. It was there held that \xe2\x80\x9cto place a pocketbook upon a table and to forget to take it away is not to\nlose it, in the sense in which the authorities referred to\nspeak of lost property.\xe2\x80\x9d\nWe accept this as the better rule, and especially as one\nbetter adapted to secure the rights of the true owner.\nIn view of the facts of this case, the plaintiff acquired no\noriginal right to the property, and the defendant\xe2\x80\x99s\nsubsequent acts in receiving and holding the property in the\nmanner he did does not create any.\nExceptions overruled.\nHamaker v. Blanchard, 90 Pa. 377 (1879)\nBefore SHARSWOOD, C. J., MERCUR, GORDON,\nPAXSON, WOODWARD, TRUNKEY and STERRETT,\nJJ.\nError to the Court of Common Pleas of Mifflin county: Of\nMay Term 1879, No. 57.\nAssumpsit by James Blanchard and Sophia, his wife, for the\nuse of the wife, against W. W. Hamaker.\nThis was an appeal from the judgment of a justice of the\npeace. The material facts were these: Sophia Blanchard was\na domestic servant in a hotel in Lewistown, of which the\n\n6\n\n\x0cdefendant was the proprietor. While thus employed, she\nfound in the public parlor of the hotel, three twenty-dollar\nbills. On finding the money, she went with it to Mr.\nHamaker, and informed him of the fact, and upon his\nremarking that he thought it belonged to a whip agent, a\ntransient guest of the hotel, she gave it to him, for the\npurpose of returning it to said agent. It was afterwards\nascertained that the money did not belong to the agent, and\nno claim was made for it by anyone. Sophia afterwards\ndemanded the money of defendant, who refused to deliver\nit to her. Defendant admitted that he still had the custody\nof the money.\nIn the general charge the court (Bucher, P. J.,) inter alia,\nsaid:\nIf you find that this was lost money,\nHamaker did not lose it, and that it\nnever belonged to him, but that it\nbelonged to some one else who has\nnot appeared to claim it, then you\nought to find for the plaintiff, on the\nprinciple that the finder of a lost\nchattel is entitled to the possession and\nuse of it as against all the world except\nthe true owner. * * * The counsel for\nthe defendant asks us to say that as the\ndefendant was the proprietor of a\nhotel and the money was found\ntherein, the presumption of law is that\nit belonged to a guest, who had lost it,\nand that the defendant has a right to\nretain it as against this woman, the\nfinder, to await the demand of the true\nowner. I decline to give you such\ninstructions; but charge you that under\nthe circumstances there is no\npresumption of law that this money\nwas lost by a guest at the hotel, and\nthat the defendant is entitled to keep it\n\n7\n\n\x0cas against this woman for the true\nowner.\nThe verdict was for the plaintiffs for $60, with interest, and\nafter judgment thereon, defendant took this writ and\nassigned for error the foregoing portions of the charge.\nH. J. Culbertson, for plaintiff in error. It is only in the\nabsence of all protection or responsibility in reference to a\nlost chattel, that the place in which a lost article is found\ndoes not constitute any exception to the general rule of law,\nthat the finder is entitled to it as against all persons except\nthe true owner: Bridges v. Hawkesworth, 7 Eng. Law and Eq.\nRep. 430; McAvoy v. Medina, 11 Allen (Mass.) 549. An\ninnkeeper is liable for the goods of his guest, including\nmoney, and if they are brought within the inn a\nresponsibility is created: Houser v. Tully, 12 P. F. Smith 92;\nPackard v. Northcraft\xe2\x80\x99s Administrators, 2 Metc. (Ky.) 439;\nBerkshire Woollen Co. v. Proctor, 7 Cush. 417; Edwards on\nBailments, 2d ed., sect. 459; Story on Bailments, sect. 471; Jones\non Bailments 95; Addison on Torts, Wood\xe2\x80\x99s ed., vol. 1, pp. 755\nand 752. He is bound to keep honest servants, and is\nresponsible for the honesty of his servants and his guests:\nHouser v. Tully, supra; Gile v. Libby & Whitney, 36 Barb. (N.\nY.) 70; Story on Bailments, supra. To allow servants to retain\nmoney found in an inn would encourage them to be\ndishonest. The better rule is to require them to deliver\nproperty so found to their employer, to be held for the true\nowner: Mathews v. Harsell, 1 E. D. Smith\xe2\x80\x99s Rep. (N. Y.) 394.\nAn innkeeper is held to a rigid responsibility in the care of\nhis guests\xe2\x80\x99 property, and it is a safe presumption of law that\nmoney found in an inn belonged to a guest, and that the\ninnkeeper has a right to the custody of it as against his\nservant, the finder, to await the true owner, and if the latter\ndoes not make claim thereto, then he should have the\nmoney who bears the responsibility.\n\n8\n\n\x0cJ. A. McKee, for defendants in error. There is no evidence\nthat the money belonged to a guest of the hotel.\nAn innkeeper is under no obligation to one who casually\nsteps into his house to transact business, using his parlor as\na matter of convenience, and the innkeeper under such\ncircumstances would not be liable for the loss of any\nproperty or money left there without his knowledge or\nconsent: Story on Bailments, sec. 477; 2 Kent\xe2\x80\x99s Com. 595.\nThere is no presumption of law that the money was lost by\na guest. If this money was found in such a situation as to\nclearly indicate that it was lost, and not voluntarily placed\nwhere it was found, by the owner, by mistake or\nforgetfulness, then the finder is entitled to it: McAvoy v.\nMedina, supra.\nMR. JUSTICE TRUNKEY delivered the opinion of the court,\nJune 9th 1879.\nIt seems to be settled law that the finder of lost property\nhas a valid claim to the same against all the world, except\nthe true owner, and generally that the place in which it is\nfound creates no exception to this rule. But property is not\nlost, in the sense of the rule, if it was intentionally laid on a\ntable, counter or other place, by the owner, who forgot to\ntake it away, and in such case the proprietor of the premises\nis entitled to retain the custody. Whenever the surroundings\nevidence that the article was deposited in its place, the\nfinder has no right of possession against the owner of the\nbuilding: McAvoy v. Medina, 11 Allen (Mass.) 548. An article\ncasually dropped is within the rule. Where one went into a\nshop, and as he was leaving picked up a parcel of bank\nnotes, which was lying on the floor, and immediately\nshowed them to the shopman, it was held that the facts did\nnot warrant the supposition that the notes had been\ndeposited there intentionally, they being manifestly lost by\nsome one, and there was no circumstance in the case to\ntake it out of the general rule of law, that the finder of a\n\n9\n\n\x0clost article is entitled to it as against all persons, except the\nreal owner: Bridges v. Hawkesworth, 7 Eng. Law & Eq. R. 424.\nThe decision in Mathews v. Harsell, 1 E. D. Smith (N. Y.)\n393, is not in conflict with the principle, nor is it an\nexception. Mrs. Mathews, a domestic in the house of Mrs.\nBarmore, found some Texas notes, which she handed to\nher mistress, to keep for her. Mrs. Barmore afterwards\nintrusted the notes to Harsell, for the purpose of\nascertaining their value, informing him that she was acting\nfor her servant, for whom she held the notes. Harsell sold\nthem, and appropriated the proceeds; whereupon Mrs.\nMathews sued him and recovered their value, with interest\nfrom date of sale. Such is that case. True, Woodruff, J.,\nsays:\nI am by no means prepared to hold\nthat a house-servant who finds lost\njewels, money or chattels, in the house\nof his or her employer, acquires any\ntitle even to retain possession against\nthe will of the employer. It will tend\nmuch more to promote honesty and\njustice to require servants in such cases\nto deliver the property so found to the\nemployer, for the benefit of the true\nowner.\nTo that remark, foreign to the case as understood by\nhimself, he added the antidote:\nAnd yet the Court of Queen\xe2\x80\x99s Bench\nin England have recently decided that\nthe place in which a lost article is\nfound, does not form the ground of\nany exception to the general rule of\nlaw, that the finder is entitled to it\nagainst all persons, except the owner.\n\n10\n\n\x0cHis views of what will promote honesty and justice are\nentitled to respect, yet many may think Mrs. Barmore\xe2\x80\x99s\nmethod of treating servants far superior.\nThe assignments of error are to so much of the charge as\ninstructed the jury that, if they found the money in question\nwas lost, the defendant had no right to retain it because\nfound in his hotel, the circumstances raising no\npresumption that it was lost by a guest, and their verdict\nought to be for the plaintiff. That the money was not\nvoluntarily placed where it was found, but accidentally lost,\nis settled by the verdict. It is admitted that it was found in\nthe parlor, a public place open to all. There is nothing to\nindicate whether it was lost by a guest, or a boarder, or one\nwho had called with or without business. The pretence that\nit was the property of a guest, to whom the defendant\nwould be liable, is not founded on an act or circumstance in\nevidence.\nMany authorities were cited, in argument, touching the\nrights, duties and responsibilities of an innkeeper in relation\nto his guests; these are so well settled as to be\nuncontroverted. In respect to other persons than guests, an\ninnkeeper is as another man. When money is found in his\nhouse, on the floor of a room common to all classes of\npersons, no presumption of ownership arises; the case is\nlike the finding upon the floor of a shop. The research of\ncounsel failed to discover authority that an innkeeper shall\nhave an article which another finds in a public room of his\nhouse, where there is no circumstance pointing to its loss\nby a guest. In such case the general rule should prevail. If\nthe finder be an honest woman, who immediately informs\nher employer, and gives him the article on his false pretence\nthat he knows the owner and will restore it, she is entitled\nto have it back and hold it till the owner comes. A rule of\nlaw ought to apply to all alike. Persons employed in inns\nwill be encouraged to fidelity by protecting them in equality\n\n11\n\n\x0cof rights with others. The learned judge was right in his\ninstructions to the jury.\nJudgment affirmed.\nMERCUR, J., dissents.\nLawrence Solum, Legal Theory Lexicon: Fit and Justification\nIntroduction\nIn 1975, Ronald Dworkin wrote Hard Cases (88 Harvard Law\nReview 1057 (1975) reprinted in Ronald Dworkin, Taking Rights\nSeriously ch 4 (Harvard University Press, 1977)). This is one of the\nmost famous and influential articles in contemporary legal theory,\nand I would put it very high on my recommended legal-theory\nreading list. Lot\xe2\x80\x99s of Dworkin\xe2\x80\x99s ideas are very controversial, but\none of his claims has become part of the way that most legal\nacademics think about the law in general and the enterprise of\njudging in particular. I am referring to Dworkin\xe2\x80\x99s distinction\nbetween \xe2\x80\x9cfit\xe2\x80\x9d and justification\xe2\x80\x9d and his claim that when judges\ndecide hard cases, they choose the interpretation of the law that\nbest fits and justifies the existing legal landscape\xe2\x80\x93the constitution,\nstatutes, regulations, and common law.\nAs always, the Legal Theory Lexicon is aimed at law students\n(especially first year law students) with an interest in legal theory. I\nknow you are all very busy at this time of year, so I will do my best\nto be concise.\nThe Basic Idea\nSuppose a judge is deciding a hard case. It could be a common law\ncase or a constitutional case or a statutory case. How do judges\napproach this task when they are confronted with a case in which\nthe law is up for grabs? That is, how do judges decide cases where\nthere is an unsettled question of law? Dworkin\xe2\x80\x99s basic idea is that\nthe process of deciding a hard case has two dimensions\xe2\x80\x93fit and\njustification. First, the judge might ask herself, \xe2\x80\x9cOf all the possible\ninterpretations of the law that I could adopt as the basis for my\ndecision, which one is consistent with the theory that best fits the\nexisting legal landscape. Of all the rules I could adopt in this case,\n\n12\n\n\x0cwhich ones are consistent with the relevant constitutional and\nstatutory provisions and with the precedent.\xe2\x80\x9d When the judge had\nidentified the alternatives that meet the criterion of fit, it is possible\nthat there will be more than one possibility that fits. If so, then the\njudge can go on to ask the question, \xe2\x80\x9cOf the interpretations of the\nexisting law that fit the constitution, statutes, and case law, which is\nthe best interpretation? Which of the possible legal rules that I\ncould adopt is most consistent with the normative theory that\nprovides the best justification for the law as a whole.\nFit\nWhat does it mean to say that a given rule fits the legal landscape?\nSuppose you are a judge deciding whether your jurisdiction will\nadopt the rule of contributory negligence or will choose instead to\nfollow the comparative negligence approach. It is possible that only\none of these two rules fits the existing law in your jurisdiction. For\nexample, if the legislature has mandated the contributory\nnegligence rule by statute, then as a judge (even a Supreme Court\njudge), you would be obliged to follow the statute and decide the\ncase before you on the basis of contributory negligence. On the\nother hand, suppose you are in a newly created jurisdiction. No\nstatute or binding precedent requires either comparative or\ncontributory negligence. Both rules fit the existing legal landscape.\nIn that case, Dworkin argues, you would need to decide a question\nof justification.\nJustification\nWhat does it mean to say that a judge might prefer one rule over\nanother on the basis of the criterion of justification? Let\xe2\x80\x99s continue\nwith our example of the choice between contributory and\ncomparative negligence. Since there is no statute or precedent that\ncompels (or strongly guides) the choice, the judge must turn to\nsome other basis in order to make her decision. She will need to get\nnormative, i.e., to consider the normative justifications for tort law.\nSimplifying greatly, let\xe2\x80\x99s suppose our judge decides that the tort of\nnegligence is best understood as a system of compensation and\n\xe2\x80\x9crisk spreading.\xe2\x80\x9d She might then reason that the comparative\n\n13\n\n\x0cnegligence rule does a better job of serving this purpose than does\na contributory negligence rule. Contributory negligence allows\nlosses to go uncompensated when the plaintiff (victim) caused any\nof her own loss; comparative negligence does a better job of\nspreading the risk of accidents. [I know that this is a very crude\nargument, and I\xe2\x80\x99m sure all of you can do better.]\nIn other words, the judge asks the question, \xe2\x80\x9cWhat normative\ntheory best justifies the existing law and negligence?\xe2\x80\x9d And then\nproceeds to the question, \xe2\x80\x9cGiven that justification of tort law,\nwhich of the alternative rules that I could apply to the case before\nme best serves the purposes of tort law?\xe2\x80\x9d\nTwo Kinds of Justification: Principle and Policy\nIn Hard Cases, Dworkin identified two different kinds of arguments\nthat can be used to justify the law. He called these two different\ntypes arguments of \xe2\x80\x9cprinciple\xe2\x80\x9d and \xe2\x80\x9cpolicy.\xe2\x80\x9d As understood by\nDworkin, arguments of principle are arguments that appeal to ideas\nabout fairness and rights. If you would like to know more about\narguments of principle, a good place to begin is with the Legal\nTheory Lexicon entry on Deontlogy.\nArguments of policy, on the other hand, appeal to consequences.\nFor example, if you argued that a comparative negligence rule is\nbetter than a contributory negligence rule because it provides\noptimal incentives for taking precautions against accidents, you\nwould have made an argument of policy in Dworkin\xe2\x80\x99s sense.\nIf you are interested in the theoretical basis for arguments of\npolicy, you could take a look at the Legal Theory Lexicon entry on\nUtilitarianism.\nDworkin himself argued that judges should consider arguments of\nprinciple and should not decide cases on the basis of arguments of\npolicy. That feature of his theory is hugely controversial\xe2\x80\x93as you\ncould guess if, like most law students, you\xe2\x80\x99ve heard endless\ndiscussion of policy in the classroom. But Dworkin could be right\nabout \xe2\x80\x9cfit and justification,\xe2\x80\x9d even if he is wrong that the dimension\nof justification is limited to principle and excludes policy.\n\n14\n\n\x0cConclusion\nIt is very difficult to generalize about law school exams; they vary\nenormously. But many standard issue spotting essay questions have\nbuilt into them a \xe2\x80\x9chard case,\xe2\x80\x9d an aspect of the fact pattern that is\nintended to trigger your discussion of the question, \xe2\x80\x9cWhat should\nthe rule be?,\xe2\x80\x9d with respect to some controversial legal issue. If you\ntry to answer the question, \xe2\x80\x9cWhat should the rule be?,\xe2\x80\x9d by telling\nyour instructor, \xe2\x80\x9cHere is the majority rule,\xe2\x80\x9d or \xe2\x80\x9cHere are two\nalternative rules; I don\xe2\x80\x99t know which one is the law, you will have\nmissed the point of the question!\nAnd that\xe2\x80\x99s where Dworkin comes in. You can use \xe2\x80\x9cfit and\njustification\xe2\x80\x9d as the basis for organizing your answer to a \xe2\x80\x9cWhat\nshould the law be?\xe2\x80\x9d question. Begin with fit. Which possible rules\nare consistent with the settled law? Then move to justification. Of\nthe rules that fit, which is the best rule? Now list the arguments of\nprinciple and policy for and against each of the plausible\ncandidates. Be sure to come to a conclusion. That is, end with\nsomething like, \xe2\x80\x9cAdopting a rule of comparative negligence is\nrequired by the theory that best fits and justifies the existing law of\ntorts.\xe2\x80\x9d\nHannah v. Peel, 1945 K.B. 509 (King\xe2\x80\x99s Bench Div.)\nACTION tried by Birkett J.\nOn December 13, 1938, the freehold of Gwernhaylod\nHouse, Overton-on-Dee, Shropshire, was conveyed to the\ndefendant, Major Hugh Edward Ethelston Peel, who from\nthat time to the end of 1940 never himself occupied the\nhouse and it remained unoccupied until October 5, 1939,\nwhen it was requisitioned, but after some months was\nreleased from requisition. Thereafter it remained\nunoccupied until July 18, 1940, when it was again\nrequisitioned, the defendant being compensated by a\npayment at the rate of 250\xc2\xa3 a year. In August, 1940, the\nplaintiff, Duncan Hannah, a lance-corporal, serving in a\nbattery of the Royal Artillery, was stationed at the house\nand on the 21st of that month, when in a bedroom, used as\n\n15\n\n\x0ca sick-bay, he was adjusting the black-out curtains when his\nhand touched something on the top of a window-frame,\nloose in a crevice, which he thought was a piece of dirt or\nplaster. The plaintiff grasped it and dropped it on the\noutside window ledge. On the following morning he saw\nthat it was a brooch covered with cobwebs and dirt. Later,\nhe took it with him when he went home on leave and his\nwife having told him it might be of value, at the end of\nOctober, 1940, he informed his commanding officer of his\nfind and, on his advice, handed it over to the police,\nreceiving a receipt for it. In August, 1942, the owner not\nhaving been found the police handed the brooch to the\ndefendant, who sold it in October, 1942, for 66\xc2\xa3, to\nMessrs. Spink & Son, Ltd., of London, who resold it in the\nfollowing month for 88\xc2\xa3. There was no evidence that the\ndefendant had any knowledge of the existence of the\nbrooch before it was found by the plaintiff. The defendant\nhad offered the plaintiff a reward for the brooch, but the\nplaintiff refused to accept this and maintained throughout\nhis right to the possession of the brooch as against all\npersons other than the owner, who was unknown. By a\nletter, dated October 5, 1942, the plaintiff\xe2\x80\x99s solicitors\ndemanded the return of the brooch from the defendant,\nbut it was not returned and on October 21, 1943, the\nplaintiff issued his writ claiming the return of the brooch,\nor its value, and damages for its detention. By his defence,\nthe defendant claimed the brooch on the ground that he\nwas the owner of Gwernhaylod House and in possession\nthereof.\nScott Cairns for plaintiff. The plaintiff, as the finder of this\nbrooch, is entitled to its possession as against all persons\nother than the owner, who is unknown: Armory v.\nDelamirie.1 The case of Bridges v. Hawkesworth2 is\n\n1\n\n(1722) 1 Str. 505.\n\n2\n\n(1851) 21 L. J. (Q. B.) 75; 15 Jur. 1079.\n\n16\n\n\x0cprecisely in point, for in that case the finder of a parcel of\nbank-notes found it on the floor of a shop. The defendant\nhere had no knowledge of the existence of the brooch, as\nthe shopkeeper in Bridges v. Hawkesworth3 had no\nknowledge of the existence of the parcel of banknotes. As\nProfessor A. L. Goodhart pointed out in his \xe2\x80\x9cThree Cases\non Possession,\xe2\x80\x9d in \xe2\x80\x9cEssays in Jurisprudence and the\nCommon Law\xe2\x80\x9d (1931), at pp. 76-90, Mr. Justice O. W.\nHolmes, Sir Frederick Pollock and Sir John Salmond all\nconsider the decision in Bridges v. Hawkesworth4 to be\ncorrect; Mr. Justice Holmes on the ground that \xe2\x80\x9cthe\nshopkeeper, not knowing of the thing, could not have the\nintent to appropriate it, and, having invited the public to his\nshop he could. not have the intent to exclude them from\nit\xe2\x80\x9d;5 Sir Frederick Pollock on the lack of de facto control by\nthe shopkeeper;6 and Sir John Salmond on the absence of\nthe animus possidendi.7 Lord Russell of Killowen C.J., in\nSouth Staffordshire Water Co. v. Sharman8 said that the\nground of the decision in Bridges v. Hawkesworth9 as was\npointed out by Patteson J. was that the notes, being\ndropped in the public part of the shop, were never in the\ncustody of the shopkeeper, or \xe2\x80\x9cwithin the protection of his\nhouse.\xe2\x80\x9d But that was not so, since Patteson J. said in the\nearlier case that the county court judge, whose decision was\nappealed, was mistaken in holding that the place in which\nthe parcel of notes was found made any difference.10 In\n\n3\n\n(1851) 21 L. J. (Q. B.) 75; 15 Jur. 1079.\n\n4\n\n(1851) 21 L. J. (Q. B.) 75; 15 Jur. 1079.\n\n5\n\nThe Common Law (1881) at p. 222.\n\n6\n\nPollock and Wright on Possession in the Common Law, at p. 37 and seq.\n\n7\n\nJurisprudence (9th ed.) 381-2.\n\n8\n\n2 Q. B. 44, 47.\n\n9\n\n(1851) 21 L. J. (Q. B.) 75; 15 Jur. 1079.\n\n10\n\n21 L. J. (Q. B.) 78.\n\n17\n\n\x0cSouth Staffordshire Water Co. v. Sharman11 the defendant\nwhile cleaning out, under the plaintiffs\xe2\x80\x99 orders, a pool of\nwater on their land, found two rings in the mud at the\nbottom of the pool. It was held that the plaintiffs were\nentitled to the possession of the rings. It is a sufficient\nexplanation of that case that Sharman, as the servant or\nagent of the water company, though he was the first to\nobtain the custody of the rings, obtained possession of\nthem for his employers, the water company, and could\nclaim no title to them for himself. It may be that a man\nowns everything which is attached to or under his land: see\nElwes v. Brigg Gas Co.12 But a man does not of necessity\nown or possess a chattel which is lying unattached on the\nsurface of his land. The defendant did not know of the\nexistence of this brooch and had never exercised any kind\nof control over it. The plaintiff, therefore, as its finder, is\nentitled to its possession.\nBinney for defendant. The defendant was entitled to the\npossession of the brooch because, when it was found, it\nwas on his land. Lord Russell of Killowen C.J. said in South\nStaffordshire Water Co. v. Sharman:13 \xe2\x80\x9cThe general\nprinciple seems to me to be that where a person has\npossession of house or land, with a manifest intention to\nexercise control over it and the things which may be upon\nit or in it, then, if something is found on that land, whether\nby an employee of the owner or by a stranger, the\npresumption is that the possession of that thing is in the\nowner of the locus in quo.\xe2\x80\x9d If that statement of law is\ncorrect, the defendant here should succeed. The owner of\nthis land does not lose his right to the chattels found on or\n\n11\n\n2 Q. B. 44, 47.\n\n12\n\n(1886) 33 Ch. D. 562.\n\n13\n\n2 Q. B. 44, 47.\n\n18\n\n\x0cin it by letting the land: Elwes v. Brigg Gas Co.14 The\nbrooch here was found in a crevice of masonry and the\nfacts are similar to those in South Staffordshire Water Co.\nv. Sharman.15 In neither case did the owner of the land\nknow of the existence of the thing found. Bridges v.\nHawkesworth16 can be distinguished on the ground that the\nparcel of notes was found in a part of the shop to which\nthe public had access - in effect they were found in a public\nplace. If Bridges v. Hawkesworth17 is not distinguishable, it\nhas been overruled by South Staffordshire Water Co. v.\nSharman18 and Elwes v. Briggs Gas Co.19\nCur. adv. vult.\nJune 13.\nBIRKETT J.\nThere is no issue of fact in this case between the parties. As\nto the issue in law, the rival claims of the parties can be\nstated in this way: The plaintiff says: \xe2\x80\x9cI claim the brooch as\nits finder and I have a good title against all the world, save\nonly the true owner.\xe2\x80\x9d The defendant says: \xe2\x80\x9cMy claim is\nsuperior to yours inasmuch as I am the freeholder. The\nbrooch was found on my property, although I was never in\noccupation, and my title, therefore, ousts yours and in the\nabsence of the true owner I am entitled to the brooch or its\nvalue.\xe2\x80\x9d Unhappily the law on this issue is in a very\nuncertain state and there is need of an authoritative\ndecision of a higher court. Obviously if it could be said\nwith certainty that this is the law, that the finder of a lost\n\n14\n\n(1886) 33 Ch. D. 562.\n\n15\n\n2 Q. B. 44, 47.\n\n16\n\n21 L. J. (Q. B.) 75; 15 Jur. 1079.\n\n17\n\n21 L. J. (Q. B.) 75; 15 Jur. 1079.\n\n18\n\n2 Q. B. 44, 47.\n\n19\n\n(1886) 33 Ch. D. 562.\n\n19\n\n\x0carticle, wherever found, has a good title against all the\nworld save the true owner, then, of course, all my\ndifficulties would be resolved; or again, if it could be said\nwith equal certainty that this is the law, that the possessor\nof land is entitled as against the finder to all chattels found\non the land, again my difficulties would be resolved. But,\nunfortunately, the authorities give some support to each of\nthese conflicting propositions.\nIn the famous case of Armory v. Delamirie,20 the plaintiff,\nwho was a chimney sweeper\xe2\x80\x99s boy, found a jewel and\ncarried it to the defendant\xe2\x80\x99s shop, who was a goldsmith, in\norder to know what it was, and he delivered it into the\nhands of the apprentice in the goldsmith\xe2\x80\x99s shop, who made\na pretence of weighing it and took out the stones and called\nto the master to let him know that it came to threehalfpence. The master offered the boy the money who\nrefused to take it and insisted on having the jewel again.\nWhereupon the apprentice handed him back the socket of\nthe jewel without the stones, and an action was brought in\ntrover against the master, and it was ruled \xe2\x80\x9cthat the finder\nof a jewel, though he does not by such finding acquire an\nabsolute property or ownership, yet he has such a property\nas will enable him to keep it against all but the rightful\nowner, and consequently may maintain trover.\xe2\x80\x9d The case of\nBridges v. Hawkesworth21 is in process of becoming almost\nequally as famous because of the disputation which has\nraged around it. The headnote in the Jurist is as follows:\n\xe2\x80\x9cThe place in which a lost article is found does not\nconstitute any exception to the general rule of law, that the\nfinder is entitled to it as against all persons except the\nowner.\xe2\x80\x9d The case was in fact an appeal against a decision of\nthe county court judge at Westminster. The facts appear to\nhave been that in the year 1847 the plaintiff, who was a\n\n20\n\n1 Str. 505.\n\n21\n\n21 L. J. (Q. B.) 75; 15 Jur. 1079.\n\n20\n\n\x0ccommercial traveller, called on a firm named Byfield &\nHawkesworth on business, as he was in the habit of doing,\nand as he was leaving the shop he picked up a small parcel\nwhich was lying on the floor. He immediately showed it to\nthe shopman, and opened it in his presence, when it was\nfound to consist of a quantity of Bank of England notes, to\nthe amount of 65\xc2\xa3. The defendant, who was a partner in\nthe firm of Byfield & Hawkesworth, was then called, and\nthe plaintiff told him he had found the notes, and asked the\ndefendant to keep them until the owner appeared to claim\nthem. Then various advertisements were put in the papers\nasking for the owner, but the true owner was never found.\nNo person having appeared to claim them, and three years\nhaving elapsed since they were found, the plaintiff applied\nto the defendant to have the notes returned to him, and\noffered to pay the expenses of the advertisements, and to\ngive an indemnity. The defendant refused to deliver them\nup to the plaintiff, and an action was brought in the county\ncourt of Westminster in consequence of that refusal. The\ncounty court judge decided that the defendant, the\nshopkeeper, was entitled to the custody of the notes as\nagainst the plaintiff, and gave judgment for the defendant.\nThereupon the appeal was brought which came before the\ncourt composed of Patteson J. and Wightman J. Patteson J.\nsaid: \xe2\x80\x9cThe notes which are the subject of this action were\nincidentally dropped, by mere accident, in the shop of the\ndefendant, by the owner of them. The facts do not warrant\nthe supposition that they had been deposited there\nintentionally, nor has the case been put at all upon that\nground. The plaintiff found them on the floor, they being\nmanifestly lost by someone. The general right of the finder\nto any article which has been lost, as against all the world,\nexcept the true owner, was established in the case of\nArmory v. Delamirie22 which has never been disputed. This\n\n22\n\n1 Str. 505.\n\n21\n\n\x0cright would clearly have accrued to the plaintiff had the\nnotes been picked up by him outside the shop of the\ndefendant and if he once had the right, the case finds that\nhe did not intend, by delivering the notes to the defendant,\nto waive the title (if any) which he had to them, but they\nwere handed to the defendant merely for the purpose of\ndelivering them to the owner should he appear.\xe2\x80\x9d Then a\nlittle later: \xe2\x80\x9cThe case, therefore, resolves itself into the\nsingle point on which it appears that the learned judge\ndecided it, namely, whether the circumstance of the notes\nbeing found inside the defendant\xe2\x80\x99s shop gives him, the\ndefendant, the right to have them as against the plaintiff,\nwho found them.\xe2\x80\x9d After discussing the cases, and the\nargument, the learned judge said: \xe2\x80\x9cIf the discovery had\nnever been communicated to the defendant, could the real\nowner have had any cause of action against him because\nthey were found in his house? Certainly not. The notes\nnever were in the custody of the defendant, nor within the\nprotection of his house, before they were found, as they\nwould have been had they been intentionally deposited\nthere; and the defendant has come under no responsibility,\nexcept from the communication made to him by the\nplaintiff, the finder, and the steps taken by way of\nadvertisement. \xe2\x80\xa6 We find, therefore, no circumstances in\nthis case to take it out of the general rule of law, that the\nfinder of a lost article is entitled to it as against all persons\nexcept the real owner, and we think that that rule must\nprevail, and that the learned judge was mistaken in holding\nthat the place in which they were found makes any legal\ndifference. Our judgment, therefore, is that the plaintiff is\nentitled to these notes as against the defendant.\xe2\x80\x9d\nIt is to be observed that in Bridges v. Hawkesworth23 which\nhas been the subject of immense disputation, neither\ncounsel put forward any argument on the fact that the\n\n23\n\n21 L. J. (Q. B.) 75; 15 Jur. 1079.\n\n22\n\n\x0cnotes were found in a shop. Counsel for the appellant\nassumed throughout that the position was the same as if\nthe parcel had been found in a private house, and the\nlearned judge spoke of \xe2\x80\x9cthe protection of his\xe2\x80\x9d (the\nshopkeeper\xe2\x80\x99s) \xe2\x80\x9chouse.\xe2\x80\x9d The case for the appellant was that\nthe shopkeeper never knew of the notes. Again, what is\ncurious is that there was no suggestion that the place where\nthe notes were found was in any way material; indeed, the\njudge in giving the judgment of the court expressly\nrepudiates this and said in terms \xe2\x80\x9cThe learned judge was\nmistaken in holding that the place in which they were\nfound makes any legal difference.\xe2\x80\x9d It is, therefore, a little\nremarkable that in South Staffordshire Water Co. v.\nSharman,24 Lord Russell of Killowen C.J. said: \xe2\x80\x9cThe case of\nBridges v. Hawkesworth25 stands by itself, and on special\ngrounds; and on those grounds it seems to me that the\ndecision in that case was right. Someone had accidentally\ndropped a bundle of banknotes in a public shop. The\nshopkeeper did not know they had been dropped, and did\nnot in any sense exercise control over them. The shop was\nopen to the public, and they were invited to come there.\xe2\x80\x9d\nThat might be a matter of some doubt. Customers were\ninvited there, but whether the public at large was, might be\nopen to some question. Lord Russell continued: \xe2\x80\x9cA\ncustomer picked up the notes and gave them to the\nshopkeeper in order that he might advertise them. The\nowner of the notes was not found, and the finder then\nsought to recover them from the shopkeeper. It was held\nthat he was entitled to do so, the ground of the decision\nbeing, as was pointed out by Patteson J., that the notes,\nbeing dropped in the public part of the shop, were never in\nthe custody of the shopkeeper, or \xe2\x80\x98within the protection of\nhis house\xe2\x80\x99.\xe2\x80\x9d Patteson J. never made any reference to the\n\n24\n\n2 Q. B. 47.\n\n25\n\n21 L. J. (Q. B.) 75; 15 Jur. 1079.\n\n23\n\n\x0cpublic part of the shop and, indeed, went out of his way to\nsay that the learned county court judge was wrong in\nholding that the place where they were found made any\nlegal difference.\nBridges v. Hawkesworth26 has been the subject of\nconsiderable comment by text-book writers and, amongst\nothers, by Mr. Justice Oliver Wendell Holmes, Sir Frederick\nPollock and Sir John Salmond. All three agree that the case\nwas rightly decided, but they differ as to the grounds on\nwhich it was decided and put forward grounds, none of\nwhich, so far as I can discover, were ever advanced by the\njudges who decided the case. Mr. Justice Oliver Wendell\nHolmes wrote:27 \xe2\x80\x9cCommon law judges and civilians would\nagree that the finder got possession first and so could keep\nit as against the shopkeeper. For the shopkeeper, not\nknowing of the thing, could not have the intent to\nappropriate it, and, having invited the public to his shop, he\ncould not have the intent to exclude them from it.\xe2\x80\x9d So he\nintroduces the matter of two intents which are not referred\nto by the judges who heard the case. Sir Frederick Pollock,\nwhilst he agreed with Mr. Justice Holmes that Bridges v.\nHawkesworth28 was properly decided wrote:29 \xe2\x80\x9cIn such a\ncase as Bridges v. Hawkesworth,30 where a parcel of\nbanknotes was dropped on the floor in the part of a shop\nfrequented by customers, it is impossible to say that the\nshopkeeper has any possession in fact. He does not expect\nobjects of that kind to be on the floor of his shop, and\nsome customer is more likely than the shopkeeper or his\nservant to see and take them up if they do come there.\xe2\x80\x9d He\n\n26\n\n21 L. J. (Q. B.) 75; 15 Jur. 1079.\n\n27\n\nThe Common Law (1881) at p. 222.\n\n28\n\n21 L. J. (Q. B.) 75; 15 Jur. 1079.\n\n29\n\nPossession in the Common Law (Pollock and Wright) at p. 39.\n\n30\n\n21 L. J. (Q. B.) 75; 15 Jur. 1079.\n\n24\n\n\x0cemphasizes the lack of de facto control on the part of the\nshopkeeper. Sir John Salmond wrote:31 \xe2\x80\x9cIn Bridges v.\nHawkesworth32 a parcel of banknotes was dropped on the\nfloor of the defendant\xe2\x80\x99s shop, where they were found by\nthe plaintiff, a customer. It was held that the plaintiff had a\ngood title to them as against the defendant. For the\nplaintiff, and not the defendant, was the first to acquire\npossession of them. The defendant had not the necessary\nanimus, for he did not know of their existence.\xe2\x80\x9d Professor\nGoodhart, in our own day, in his work \xe2\x80\x9cEssays in\nJurisprudence and the Common Law\xe2\x80\x9d (1931) has put\nforward a further view that perhaps Bridges v.\nHawkesworth33 was wrongly decided. It is clear from the\ndecision in Bridges v. Hawkesworth34 that an occupier of\nland does not in all cases possess an unattached thing on\nhis land even though the true owner has lost possession.\nWith regard to South Staffordshire Water Co. v. Sharman,35\nthe first two lines of the headnote are: \xe2\x80\x9cThe possessor of\nland is generally entitled, as against the finder, to chattels\nfound on the land.\xe2\x80\x9d I am not sure that this is accurate. The\nfacts were that the defendant Sharman, while cleaning out,\nunder the orders of the plaintiffs, the South Staffordshire\nWater Company, a pool of water on their land, found two\nrings embedded in the mud at the bottom of the pool. He\ndeclined to deliver them to the plaintiffs, but failed to\ndiscover the real owner. In an action brought by the\ncompany against Sharman in detinue it was held that the\ncompany were entitled to the rings. Lord Russell of\n\n31\n\nJurisprudence (9th ed.) 382.\n\n32\n\n21 L. J. (Q. B.) 75; 15 Jur. 1079.\n\n33\n\n21 L. J. (Q. B.) 75; 15 Jur. 1079.\n\n34\n\n21 L. J. (Q. B.) 75; 15 Jur. 1079.\n\n35\n\n2 Q. B. 44.\n\n25\n\n\x0cKillowen C.J. said:36 \xe2\x80\x9cThe plaintiffs are the freeholders of\nthe locus in quo, and as such they have the right to forbid\nanybody coming on their land or in any way interfering\nwith it. They had the right to say that their pool should be\ncleaned out in any way that they thought fit, and to direct\nwhat should be done with anything found in the pool in the\ncourse of such cleaning out. It is no doubt right, as the\ncounsel for the defendant contended, to say that the\nplaintiffs must show that they had actual control over the\nlocus in quo and the things in it; but under the\ncircumstances, can it be said that the Minster Pool and\nwhatever might be in that pool were not under the control\nof the plaintiffs? In my opinion they were. \xe2\x80\xa6 The principle\non which this case must be decided, and the distinction\nwhich must be drawn between this case and that of Bridges\nv. Hawkesworth,37 is to be found in a passage in Pollock\nand Wright\xe2\x80\x99s \xe2\x80\x98Essay on Possession in the Common Law,\xe2\x80\x99 p.\n41: \xe2\x80\x98The possession of land carries with it in general, by our\nlaw, possession of everything which is attached to or under\nthat land, and, in the absence of a better title elsewhere, the\nright to possess it also\xe2\x80\x99.\xe2\x80\x9d If that is right, it would clearly\ncover the case of the rings embedded in the mud of the\npool, the words used being \xe2\x80\x9cattached to or under that\nland.\xe2\x80\x9d Lord Russell continued: \xe2\x80\x9c\xe2\x80\x98And it makes no\ndifference that the possessor is not aware of the thing\xe2\x80\x99s\nexistence. \xe2\x80\xa6 It is free to anyone who requires a specific\nintention as part of a de facto possession to treat this as a\npositive rule of law. But it seems preferable to say that the\nlegal possession rests on a real de facto possession\nconstituted by the occupier\xe2\x80\x99s general power and intent to\nexclude unauthorized interference.\xe2\x80\x99 That is the ground on\nwhich I prefer to base my judgment. There is a broad\ndistinction between this case and those cited from\n\n36\n\nIbid. 46.\n\n37\n\n21 L. J. (Q. B.) 75; 15 Jur. 1079.\n\n26\n\n\x0cBlackstone. Those were cases in which a thing was cast into\na public place or into the sea - into a place, in fact, of which\nit could not be said that anyone had a real de facto\npossession, or a general power and intent to exclude\nunauthorized interference.\xe2\x80\x9d Then Lord Russell cited the\npassage which I read earlier in this judgment and\ncontinued: \xe2\x80\x9cIt is somewhat strange\xe2\x80\x9d - I venture to echo\nthose words - \xe2\x80\x9cthat there is no more direct authority on the\nquestion; but the general principle seems to me to be that\nwhere a person has possession of house or land, with a\nmanifest intention to exercise control over it and the things\nwhich may be upon or in it, then, if something is found on\nthat land, whether by an employee of the owner or by a\nstranger, the presumption is that the possession of that\nthing is in the owner of the locus in quo.\xe2\x80\x9d It is to be\nobserved that Lord Russell there is extending the meaning\nof the passage he had cited from Pollock and Wright\xe2\x80\x99s\nessay on \xe2\x80\x9cPossession in the Common Law,\xe2\x80\x9d where the\nlearned authors say that the possession of land carries with\nit possession of everything which is attached to or under\nthat land. Then Lord Russell adds possession of everything\nwhich may be on or in that land. South Staffordshire Water\nCo. v. Sharman38 which was relied on by counsel for the\ndefendant, has also been the subject of some discussion. It\nhas been said that it establishes that if a man finds a thing\nas the servant or agent of another, he finds it not for\nhimself, but for that other, and indeed that seems to afford\na sufficient explanation of the case. The rings found at the\nbottom of the pool were not in the possession of the\ncompany, but it seems that though Sharman was the first to\nobtain possession of them, he obtained them for his\nemployers and could claim no title for himself.\n\n38\n\n2 Q. B. 44.\n\n27\n\n\x0cThe only other case to which I need refer is Elwes v. Brigg\nGas Co.,39 in which land had been demised to a gas\ncompany for ninety-nine years with a reservation to the\nlessor of all mines and minerals. A pre-historic boat\nembedded in the soil was discovered by the lessees when\nthey were digging to make a gasholder. It was held that the\nboat, whether regarded as a mineral or as part of the soil in\nwhich it was embedded when discovered, or as a chattel,\ndid not pass to the lessees by the demise, but was the\nproperty of the lessor though he was ignorant of its\nexistence at the time of granting the lease. Chitty J. said:40\n\xe2\x80\x9cThe first question which does actually arise in this case is\nwhether the boat belonged to the plaintiff at the time of the\ngranting of the lease. I hold that it did, whether it ought to\nbe regarded as a mineral, or as part of the soil within the\nmaxim above cited, or as a chattel. If it was a mineral or\npart of the soil in the sense above indicated, then it clearly\nbelonged to the owners of the inheritance as part of the\ninheritance itself. But if it ought to be regarded as a chattel,\nI hold the property in the chattel was vested in the plaintiff,\nfor the following reasons.\xe2\x80\x9d Then he gave the reasons, and\ncontinued: \xe2\x80\x9cThe plaintiff then being thus in possession of\nthe chattel, it follows that the property in the chattel was\nvested in him. Obviously the right of the original owner\ncould not be established; it had for centuries been lost or\nbarred, even supposing that the property had not been\nabandoned when the boat was first left on the spot where it\nwas found. The plaintiff, then, had a lawful possession,\ngood against all the world, and therefore the property in the\nboat. In my opinion it makes no difference, in these\ncircumstances, that the plaintiff was not aware of the\nexistence of the boat.\xe2\x80\x9d\n\n39\n\n33 Ch. D. 562.\n\n40\n\nIbid. 568.\n\n28\n\n\x0cA review of these judgments shows that the authorities are\nin an unsatisfactory state, and I observe that Sir John\nSalmond in his book on Jurisprudence (9th ed., at p. 383),\nafter referring to the cases of Elwes v. Brigg Gas Co.41 and\nSouth Staffordshire Water Co. v. Sharman,42 said: \xe2\x80\x9cCases\nsuch as these, however, are capable of explanation on other\ngrounds, and do not involve any necessary conflict either\nwith the theory of possession or with the cases already\ncited, such as Bridges v. Hawkesworth43. The general\nprinciple is that the first finder of a thing has a good title to\nit against all but the true owner, even though the thing is\nfound on the property of another person,\xe2\x80\x9d and he cites\nArmory v. Delamirie44 and Bridges v. Hawkesworth45 in\nsupport of that proposition. Then he continues: \xe2\x80\x9cThis\nprinciple, however, is subject to important exceptions, in\nwhich, owing to the special circumstances of the case, the\nbetter right is in him on whose property the thing is\nfound,\xe2\x80\x9d and he names three cases as the principal ones:\n\xe2\x80\x9cWhen he on whose property the thing is found is already\nin possession not merely of the property, but of the thing\nitself; as in certain circumstances, even without specific\nknowledge, he undoubtedly may be.\xe2\x80\x9d The second limitation\nSir John Salmond puts is: \xe2\x80\x9cIf anyone finds a thing as the\nservant or agent of another he finds it not for himself, but\nfor his employer.\xe2\x80\x9d Then: \xe2\x80\x9cA third case in which a finder\nobtains no title is that in which he gets possession only\nthrough a trespass or other act of wrongdoing.\xe2\x80\x9d It is fairly\nclear from the authorities that a man possesses everything\nwhich is attached to or under his land. Secondly, it would\nappear to be the law from the authorities I have cited, and\n\n41\n\n33 Ch. D. 562.\n\n42\n\n2 Q. B. 44.\n\n43\n\n21 L. J. (Q. B.) 75; 15 Jur. 1079.\n\n44\n\n1 Str. 504.\n\n45\n\n21 L. J. (Q. B.) 75; 15 Jur. 1079.\n\n29\n\n\x0cparticularly from Bridges v. Hawkesworth,46 that a man\ndoes not necessarily possess a thing which is lying\nunattached on the surface of his land even though the thing\nis not possessed by someone else. A difficulty however,\narises, because the rule which governs things an occupier\npossesses as against those which he does not, has never\nbeen very clearly formulated in our law. He may possess\neverything on the land from which he intends to exclude\nothers, if Mr. Justice Holmes is right; or he may possess\nthose things of which he has a de facto control, if Sir\nFrederick Pollock is right.\nThere is no doubt that in this case the brooch was lost in\nthe ordinary meaning of that term, and I should imagine it\nhad been lost for a very considerable time. Indeed, from\nthis correspondence it appears that at one time the\npredecessors in title of the defendant were considering\nmaking some claim. But the moment the plaintiff\ndiscovered that the brooch might be of some value, he\ntook the advice of his commanding officer and handed it to\nthe police. His conduct was commendable and meritorious.\nThe defendant was never physically in possession of these\npremises at any time. It is clear that the brooch was never\nhis, in the ordinary acceptation of the term, in that he had\nthe prior possession. He had no knowledge of it, until it\nwas brought to his notice by the finder. A discussion of the\nmerits does not seem to help, but it is clear on the facts that\nthe brooch was \xe2\x80\x9clost\xe2\x80\x9d in the ordinary meaning of that\nword; that it was \xe2\x80\x9cfound\xe2\x80\x9d by the plaintiff in the ordinary\nmeaning of that word, that its true owner has never been\nfound, that the defendant was the owner of the premises\nand had his notice drawn to this matter by the plaintiff,\nwho found the brooch. In those circumstances I propose\n\n46\n\n21 L. J. (Q. B.) 75; 15 Jur. 1079.\n\n30\n\n\x0cto follow the decision in Bridges v. Hawkesworth,47 and to\ngive judgment in this case for the plaintiff for 66\xc2\xa3.\n\n47\n\n21 L. J. (Q. B.) 75; 15 Jur. 1079.\n\n31\n\n\x0cTerry v. Lock, 343 Ark. 452 (2001)\nMcHenry & McHenry Law Firm, by Donna McHenry,\nRobert McHenry, & Connie L. Grace, Little Rock, for\nappellants.\nGrady & Adkisson, P.A., by William C. Adkisson, Conway,\nConway, for appellees.\nRAY THORNTON, JUSTICE.\nOn February 1, 1999, appellants, Joe Terry and David\nStocks, were preparing the Best Western motel in Conway\nfor renovation. The motel was owned by appellee, Lock\nHospitality Inc., a corporation wholly owned by appellee,\nA.D. Lock and his wife. The appellants were removing the\nceiling tiles in room 118, with Mr. Lock also present in the\nroom. As the ceiling tiles were removed, a cardboard box\nwas noticed near the heating and air supply vent where it\nhad been concealed. Appellant Terry climbed a ladder to\nreach the box, opened it, and handed it to appellant Stocks.\nThe box was filled with old, dry and dusty currency in\nvarying denominations. Mr. Lock took the box and its\ncontents to his office. Later in the day, appellants contacted\nthe Conway Police Department and informed them of the\ndiscovery. The investigating officer contacted Mr. Lock,\nand the money was counted. The face value of the currency\nwas determined to be $38,310.00.\nAppellants filed a complaint in Faulkner County Chancery\nCourt, asserting that the currency \xe2\x80\x9cbeing old and fragile is\nunique and has numismatic or antique value and may have\na market value in excess of the totality of its denominations\nas collector\xe2\x80\x99s funds.\xe2\x80\x9d Appellants sought a temporary\nrestraining order and an injunction, directing appellees to\nrefrain from spending or otherwise depositing the found\nmoney and to pay all of the money to either appellants or\ninto the registry of the court. Appellants\xe2\x80\x99 complaint also\nurged that under the \xe2\x80\x9cclean-up doctrine,\xe2\x80\x9d the chancery\ncourt had authority to decide a number of charges\n\n32\n\n\x0csounding in tort. Appellants also sought an order finding\nthat appellees were holding the money in trust for\nappellants.\nOn the day the complaint was filed, the chancery court\nentered a temporary restraining order requiring appellees to\ndeposit the found money with the registry of the court. On\nFebruary 9, 1999, Mr. Lock and Lock Hospitality, Inc., filed\ntheir answer. Appellees raised the defenses of estoppel,\nlaches, failure of consideration, and fraud in their answer.\nEventually, all of the named appellees other than Mr. Lock\nand Lock Hospitality, Inc., were dismissed from the case.\nOn appeal, appellants now contend that the chancery court\ndid not have subject-matter jurisdiction to hear and resolve\nthe issues that they had asked the chancellor to resolve. We\nfind no merit in this argument and conclude that the\nchancery court had jurisdiction under the clean-up doctrine\nto resolve the merits of the matters relating to ownership of\nthe money.\nThe remaining issue for our review is whether the\nchancellor was clearly erroneous in characterizing the found\nmoney as \xe2\x80\x9cmislaid\xe2\x80\x9d property and consequently that the\ninterest of Lock Hospitality, Inc., as the owner of the\npremises, is superior to the interest of appellants as finders\nof the money. We conclude that the chancellor was not\nclearly erroneous in finding that the money was mislaid\nproperty, and we affirm.\nIn their first point on appeal, appellants argue that the trial\ncourt was wholly without subject-matter jurisdiction to\nadjudicate the issues involved in this case. We have\npreviously stated that parties may not consent to a court\xe2\x80\x99s\nsubject-matter jurisdiction where no such jurisdiction lies,\nnor may the jurisdiction be waived. Douthitt v. Douthitt, 326\nArk. 372, 930 S.W.2d 371 (1996). A court must determine if\nit has subject-matter jurisdiction of the case before it. Id.\nSubject-matter jurisdiction is always open, cannot be\n\n33\n\n\x0cwaived, can be questioned for the first time on appeal, and\ncan even be raised by this court. Hamaker v. Strickland, 340\nArk. 593, 12 S.W.3d 210 (2000). In fact, this court has a\nduty to determine whether or not we have jurisdiction of\nthe subject matter of an appeal. Id. Subject-matter\njurisdiction is determined from the pleadings; the\ncomplaint, answer, or cross-complaint. Maroney v. City of\nMalvern, 320 Ark. 671, 899 S.W.2d 476(1995). Subjectmatter jurisdiction is tested on the pleadings and not the\nproof. Id.\nA court of chancery or equity may obtain jurisdiction over\nmatters not normally within its purview pursuant to the\nclean-up doctrine, our long-recognized rule that once a\nchancery court acquires jurisdiction for one purpose, it may\ndecide all other issues. Douthitt, supra. Generally, the cleanup doctrine allows the chancery court, having acquired\njurisdiction for equitable purposes, to retain all claims in an\naction and grant all the relief, legal or equitable, to which\nthe parties in the lawsuit are entitled. See Fulcher v. Dierks\nLumber & Coal Co., 164 Ark. 261, 261 S.W. 645 (1924); see\nalso Bright v. Gass, 38 Ark.App. 71, 831 S.W.2d 149 (1992).\nIn Liles v. Liles, 289 Ark. 159, 711 S.W.2d 447 (1986), we\nnoted that \xe2\x80\x9cunless the chancery court has no tenable nexus\nwhatever to the claim in question we will consider the\nmatter of whether the claim should have been heard there\nto be one of propriety rather than one of subject-matter\njurisdiction.\xe2\x80\x9d Id.\nWe have further noted that an error in bringing a suit in\nequity when there is an adequate remedy at law is waived by\nfailure to move to transfer the cause to the circuit court;\nwhere the adequacy of the remedy at law is the only basis\nfor questioning equity jurisdiction the chancellor\xe2\x80\x99s decree is\nnot subject to reversal for failure to transfer the case, unless\nthe chancery court is wholly incompetent to grant the relief\nsought. Titan Oil & Gas, Inc. v. Shipley, 257 Ark. 278, 517\nS.W.2d 210 (1974). Some examples of courts granting relief\n\n34\n\n\x0cwhich they were \xe2\x80\x9cwholly without jurisdiction\xe2\x80\x9d to grant\nwould be a chancery court trying a criminal case or a\nchancery court hearing a probate matter. See Dugal Logging,\nInc. v. Arkansas Pulpwood Co., 66 Ark.App. 22, 988 S.W.2d\n25 (1999).\nWe have also noted that when the issue is whether the\nchancery court has jurisdiction because the plaintiff lacks\nan adequate remedy at law, we will not allow it to be raised\nfor the first time on appeal. Liles, supra. It is only when the\ncourt of equity is wholly incompetent to consider the\nmatter before it that we will permit the issue of competency\nto be raised for the first time on appeal. Finally, we have\nheld that it is a well-settled rule that one who has invoked\nthe assistance of equity cannot later object to equity\xe2\x80\x99s\njurisdiction unless the subject matter of the suit is wholly\nbeyond equitable cognizance. Leonards v. E.A. Martin\nMachinery Co., 321 Ark. 239, 900 S.W.2d 546 (1995).\nKeeping in mind the foregoing applicable principles of law,\nwe turn to the case now on review. In this case, appellants\nfiled their complaint in Faulkner County Chancery Court.\nLooking at the pleadings filed in this case, we conclude that\nthe chancery court properly had subject-matter jurisdiction\nto address the matter. The appellants\xe2\x80\x99 complaint sought the\nfollowing equitable remedies: (1) an injunction; (2) specific\nperformance; and (3) the imposition of a constructive trust.\nAdditionally, appellants asserted in their complaint that\nthey were seeking equitable relief. Specifically, their\ncomplaint states: \xe2\x80\x9cthe cash money, referred to herein\nabove, being old and fragile is unique and has numismatic\nor antique value and may have fair market value in excess\nof the totality of its denominations as collector\xe2\x80\x99s funds and\ntherefore plaintiffs move for specific performance \xe2\x80\xa6 .\xe2\x80\x9d\nFrom the pleadings, it appears that appellants sought\nequitable remedies in the chancery court. As a result, when\nthe chancery court addressed these remedies, that court\nthen acquired jurisdiction over the remaining tort claims\n\n35\n\n\x0cpursuant to the \xe2\x80\x9cclean-up doctrine.\xe2\x80\x9d Accordingly, we hold\nthat the trial court was not wholly without subject-matter\njurisdiction over this case.\nThe argument that the court should have transferred the\ncase to circuit court is one of propriety rather than one of\nsubject-matter jurisdiction. Appellants did not request that\ntheir case be transferred to circuit court at the trial court\nlevel. Because this issue was not raised below we may not\nconsider it now for the first time on appeal. See, Titan Oil &\nGas, supra; see also Liles, supra. Accordingly, the trial court is\naffirmed.\nIn their second point on appeal, appellants contend that the\ntrial court\xe2\x80\x99s finding that the property involved in this case\nwas \xe2\x80\x9cmislaid\xe2\x80\x9d property was erroneous. Specifically, the trial\ncourt found \xe2\x80\x9cthat the money in question was intentionally\nplaced where it was found\xe2\x80\x9d and that when \xe2\x80\x9cmoney is\nmislaid, the finders would acquire no rights.\xe2\x80\x9d The trial\ncourt then concluded that \xe2\x80\x9cLock Hospitality, Inc., as the\nowner of the premises is entitled to possession.\xe2\x80\x9d Appellants\nargue that the found property was not \xe2\x80\x9cmislaid property\xe2\x80\x9d\nbut instead was \xe2\x80\x9clost property,\xe2\x80\x9d \xe2\x80\x9cabandoned property,\xe2\x80\x9d or\n\xe2\x80\x9ctreasure trove\xe2\x80\x9d and that the trial court\xe2\x80\x99s finding that the\nmoney was \xe2\x80\x9cmislaid property\xe2\x80\x9d is clearly erroneous. We\ndisagree.\nThe standards governing our review of a chancery court\ndecision are well established. We review chancery cases de\nnovo on the record, and we do not reverse unless we\ndetermine that the chancery court\xe2\x80\x99s findings of fact were\nclearly erroneous. Newberry v. Scruggs, 336 Ark. 570, 986\nS.W.2d 853 (1999).\nWe have not previously analyzed the various distinctions\nbetween different kinds of found property but those\ndistinctions have been made in the common law, and have\nbeen analyzed in decisions from other jurisdictions. The\nSupreme Court of Iowa has explained that \xe2\x80\x9cunder the\n\n36\n\n\x0ccommon law, there are four categories of found property:\n(1) abandoned property, (2) lost property, (3) mislaid\nproperty, and (4) treasure trove.\xe2\x80\x9d Benjamin v. Lindner\nAviation, Inc., 534 N.W.2d 400 (Iowa 1995); see also Jackson v.\nSteinberg, 186 Or. 129, 200 P.2d 376 (1948). \xe2\x80\x9cThe rights of a\nfinder of property depend on how the found property is\nclassified.\xe2\x80\x9d Benjamin, supra. The character of the property\nshould be determined by evaluating all the facts and\ncircumstances present in the particular case. See Schley v.\nCouch, 155 Tex. 195, 284 S.W.2d 333 (1955) .\nWe next consider the classification of found property\ndescribed in Benjamin, supra.\nA. Abandoned property\nProperty is said to be \xe2\x80\x9cabandoned\xe2\x80\x9d when it is thrown away,\nor its possession is voluntarily forsaken by the owner, in\nwhich case it will become the property of the first\noccupant; or when it is involuntarily lost or left without the\nhope and expectation of again acquiring it, and then it\nbecomes the property of the finder, subject to the superior\nclaim of the owner. Eads v. Brazelton, 22 Ark. 499 (1861); see\nalso Crosson v. Lion Oil & Refining Co., 169 Ark. 561, 275\nS.W. 899 (1925).\nB. Lost property\n\xe2\x80\x9cLost property\xe2\x80\x9d is property which the owner has\ninvoluntarily parted with through neglect, carelessness, or\ninadvertence, that is, property which the owner has\nunwittingly suffered to pass out of his possession, and of\nwhos whereabouts he has no knowledge. Property is\ndeemed lost when it is unintentionally separated from the\ndominion of its owner. Popularly, property is lost when the\nowner does not know, and cannot ascertain, where it is, the\nessential test of lost property is whether the owner parted\nwith the possession of the property intentionally, casually\nor involuntarily; only in the latter contingency may it be lost\nproperty. Property is not \xe2\x80\x9clost\xe2\x80\x9d unless the owner parts with\n\n37\n\n\x0cit involuntarily and unintentionally, and does not, at any\ntime thereafter, know where to find it. A loss is always\ninvoluntary; there can be no intent to part with the\nownership of lost property. 1 AM.JUR.2d Abandoned,\nLost, Etc., Property s 4 (1994); see also Benjamin, supra; Ritz v.\nSelma United Methodist Church, 467 N.W.2d 266 (Iowa 1991);\nJackson, supra.\nThe finder of lost property does not acquire absolute\nownership, but acquires such property interest or right as\nwill enable him to keep it against all the world but the\nrightful owner. This rule is not affected by the place of\nfinding, as the finder of lost property has a right to\npossession of the article superior to that of the owner or\noccupant of the premises where it is found. 1 AM.JUR.2d\nAbandoned, Lost, Etc., Property s 18 (1994); see also Ritz,\nsupra.\nC. Mislaid property\n\xe2\x80\x9cMislaid property\xe2\x80\x9d is that which is intentionally put into a\ncertain place and later forgotten. The place where money or\nproperty claimed as lost is found is an important factor in\nthe determination of the question of whether it was lost or\nonly mislaid. But where articles are accidentally dropped in\nany public place, public thoroughfare, or street, they are\nlost in the legal sense. In short, property will not be\nconsidered to have been lost unless the circumstances are\nsuch that, considering the place where, and the conditions\nunder which, it is found, there is an inference that it was\nleft there unintentionally. 1 AM.JUR.2d Abandoned, Lost,\nEtc., Property s 6 (1994); see also Benjamin, supra; Ritz, supra;\nJackson, supra.\nA finder of mislaid property acquires no ownership rights\nin it, and, where such property is found upon another\xe2\x80\x99s\npremises, he has no right to its possession, but is required\nto turn it over to the owner of the premises. This is true\nwhether the finder is an employee or occupier of the\n\n38\n\n\x0cpremises on which the mislaid article is found or a\ncustomer of the owner or occupant.\nThe right of possession, as against all except the true\nowner, is in the owner or occupant of the premises where\nthe property is discovered, for mislaid property is presumed\nto have been left in the custody of the owner or occupier of\nthe premises upon which it is found. The result is that the\nproprietor of the premises is entitled to retain possession of\nthe thing, pending a search by him to discover the owner,\nor during such time as the owner may be considered to be\nengaged in trying to recover his property. When the owner\nof premises takes possession of mislaid personal property\nleft by an invitee he becomes a gratuitous bailee by\noperation of law, with a duty to use ordinary care to return\nit to the owner.\nThe finder of mislaid property must turn it over to the\nowner or occupier of the premises where it is found; it is\nthe latter\xe2\x80\x99s duty to keep mislaid property for the owner, and\nhe must use the care required of a gratuitous bailee for its\nsafekeeping until the true owner calls for it. As against\neveryone but the true owner, the owner of such premises\nhas the duty to defend his custody and possession of the\nmislaid property, and he is absolutely liable for a\nmisdelivery. 1 AM.JUR.2d Abandoned, Lost, Etc., Property\ns 24 (1994); see also Benjamin, supra; Ritz, supra; Schley, supra.\nD. Treasure trove\nAccording to the common law, treasure trove is any gold or\nsilver in coin, plate, or bullion, whose owner is unknown,\nfound concealed in the earth or in a house or other private\nplace, but not lying on the ground. Where the common-law\ntreasure trove doctrine has been applied to determine the\nownership of a find, property considered as treasure trove\nhas included gold or silver coin, and its paper\nrepresentatives, buried in the earth or hidden in some other\nprivate place, including a mattress, a cabinet sink, and a\n\n39\n\n\x0cpiano. It is not essential to its character as treasure trove\nthat the thing shall have been hidden in the ground; it is\nsufficient if it is found concealed in other articles, such as\nbureaus, safes, or machinery. While, strictly speaking,\ntreasure trove is gold or silver, it has been held to include\nthe paper representatives thereof, especially where found\nhidden with those precious metals. 1 AM.JUR.2d\nAbandoned, Lost, Etc., Property s 7 (1994); see also\nBenjamin, supra; Jackson, supra. \xe2\x80\x9cTreasure trove carries with it\nthe thought of antiquity; to be classed as treasure trove, the\ntreasure must have been hidden or concealed so long as to\nindicate that the owner is probably dead or unknown.\xe2\x80\x9d 1\nAM.JUR.2d Abandoned, Lost, Etc., Property s 8 (1994).\n\xe2\x80\x9cTitle to treasure trove belongs to the finder, against all the\nworld except the true owner.\xe2\x80\x9d 1 AM.JUR.2d Abandoned,\nLost, Etc., Property s 26 (1994); see also Ritz, supra.\nRemaining mindful of the various types of found property\nand the rights to possession of that property, we turn now\nto the case before us on review. Appellants were stripping\nmotel rooms at the Best Western Motel, which belongs to\nLock Hospitality Inc., on February 1, 1999. Their work, as\nindependent contractors, included removing sheet rock or\ndry wall, ceiling tiles, and other material to prepare the\nmotel for renovations. While working in room 118,\nappellants removed some ceiling tiles. Appellants found a\ncardboard box concealed on top of the heating and air vent\nthat became visible as a result of the removal of the ceiling\ntiles. Appellant Terry described the box as \xe2\x80\x9ccovered with\ndust.\xe2\x80\x9d Appellant Stocks stated in his affidavit that \xe2\x80\x9cthe box\nand its contents appeared to have been located at the site\nfor a very long time.\xe2\x80\x9d Mr. Lock testified that in 1988 a\nbeam was replaced in room 118 and the box was not\ndiscovered at that time. Upon opening the box, a large\namount of old, dusty currency was discovered. Both\nappellants and Mr. Lock were in the room when the box\nwas discovered. Neither appellants nor appellees claim to\n\n40\n\n\x0chave concealed the property in the ceiling. It is apparent\nthat the box was not lost. The circumstances suggest that it\nwas either abandoned property, mislaid property, or\ntreasure trove. Considering all of the facts as presented, we\ncannot say that the trial court\xe2\x80\x99s finding that the property\nwas mislaid property was clearly erroneous. Specifically, we\nhold that the trial court\xe2\x80\x99s findings that \xe2\x80\x9cthe money in\ncontroversy was intentionally placed where it was found for\nits security, in order to shield it from unwelcome eyes \xe2\x80\xa6\xe2\x80\x9d\nand that the \xe2\x80\x9cmoney was mislaid property\xe2\x80\x9d were not clearly\nerroneous.\nWe note that other jurisdictions have addressed similar fact\nsituations and have determined that the property at stake\nwas \xe2\x80\x9cmislaid\xe2\x80\x9d property. The Iowa Supreme Court\naddressed this issue in Benjamin, supra. In that case, a bank\nhired Benjamin to perform a routine service inspection on\nan airplane which it owned. During the inspection,\nBenjamin removed a panel from the wing. Id. The screws to\nthe panel were old and rusted and Benjamin had to use a\ndrill to remove them. Upon removal of the panel, Benjamin\ndiscovered packets of currency totaling $18,000. Both\nBenjamin and the bank, as the owner of the plane, claimed\nownership of the money. Id. The court reviewed the\nvarious types of property and determined that the money\nwas \xe2\x80\x9cmislaid\xe2\x80\x9d property. The court explained that \xe2\x80\x9cthe place\nwhere Benjamin found the money and the manner in which\nit was hidden are also important.\xe2\x80\x9d They further noted that\n\xe2\x80\x9cthe bills were carefully tied and wrapped and then\nconcealed in a location that was accessible only by\nremoving screws and a panel. These circumstances support\nan inference that the money was placed there intentionally.\nThis inference supports the conclusion that the money was\nmislaid.\xe2\x80\x9d Benjamin, supra. After reaching this conclusion, the\ncourt held \xe2\x80\x9cbecause the money discovered by Benjamin\nwas properly found to be mislaid property, it belongs to the\nowner of the premises where it was found.\xe2\x80\x9d Id. The\n\n41\n\n\x0ccircumstances in Benjamin are similar to those now before\nus, and we are persuaded that the reasoning of the Iowa\ncourt was sound.\nThe Oregon Supreme Court has also considered a case\ninvolving facts similar to the case now on review before\nthis court. In Jackson, supra., Mrs. Jackson, while working as\na chamber maid at Arthur Hotel, discovered $800\nconcealed under the paper lining of a dresser drawer. Id.\nThe court observed that \xe2\x80\x9cfrom the manner in which the\nbills in the instant case were carefully concealed beneath\nthe paper lining of the drawer, it must be presumed that the\nconcealment was effected intentionally and deliberately.\nThe bills, therefore, cannot be regarded as abandoned\nproperty.\xe2\x80\x9d Id. The court then held:\nThe natural assumption is that the\nperson who concealed the bills in the\ncase at bar was a guest of the hotel.\nTheir considerable value, and the\nmanner of their concealment, indicate\nthat the person who concealed them\ndid so for purposes of security, and\nwith the intention of reclaiming them.\nThey were, therefore, to be classified\nnot as lost, but as misplaced or\nforgotten property, and the defendant,\nas occupier of the premises where they\nwere found, had the right and duty to\ntake them into his possession and to\nhold them as a gratuitous bailee for the\ntrue owner.\nJackson, supra.\nThe case now before us presents circumstances similar to\nthose upon which Benjamin and Jackson were decided. The\ntrial court found that the original owner of the $38,310.00\nacted intentionally in concealing his property. The trial\ncourt also recognized that the found property did not have\n\n42\n\n\x0cthe characteristics of antiquity required for the classification\nas treasure trove. We cannot say that the trial court\xe2\x80\x99s\ndetermination that the box was mislaid property was clearly\nerroneous. We hold that the trial court did not err when it\nfound that the property in the present case was mislaid\nproperty and as such belongs to the owner of the premises\nin which the money was found. Accordingly, we affirm the\ntrial court.\nAffirmed.\n1.2 Trespass\n1.2.1. What\'s at Stake\nJacque v. Steenberg Homes, Inc., 209 Wis. 2d 605\n(1997)\nFor the plaintiffs-appellants there were briefs by Patrick A.\nDewane, Jr. and Dewane, Dewane, Kummer, Lambert &\nFox, Manitowoc, and oral argument by Patrick A. Dewane,\nJr.\nFor the defendant-respondent there were briefs by Mark J.\nMingo, Daniel L. Zitzer and Mingo & Yankala, S.C.,\nMilwaukee, and oral argument by Mark Mingo.\nWILLIAM A. BABLITCH,Justice.\nSteenberg Homes had a mobile home to deliver.\nUnfortunately for Harvey and Lois Jacque (the Jacques),\nthe easiest route of delivery was across their land. Despite\nadamant protests by the Jacques, Steenberg plowed a path\nthrough the Jacques\xe2\x80\x99 snow-covered field and via that path,\ndelivered the mobile home. Consequently, the Jacques sued\nSteenberg Homes for intentional trespass. At trial,\nSteenberg Homes conceded the intentional trespass, but\nargued that no compensatory damages had been proved,\nand that punitive damages could not be awarded without\ncompensatory damages. Although the jury awarded the\nJacques $1 in nominal damages and $100,000 in punitive\ndamages, the circuit court set aside the jury\xe2\x80\x99s award of\n\n43\n\n\x0c$100,000. The court of appeals affirmed, reluctantly\nconcluding that it could not reinstate the punitive damages\nbecause it was bound by precedent establishing that an\naward of nominal damages will not sustain a punitive\ndamage award. We conclude that when nominal damages\nare awarded for an intentional trespass to land, punitive\ndamages may, in the discretion of the jury, be awarded. We\nfurther conclude that the $100,000 awarded by the jury is\nnot excessive. Accordingly, we reverse and remand for\nreinstatement of the punitive damage award.\nI.\nThe relevant facts follow. Plaintiffs, Lois and Harvey\nJacques, are an elderly couple, now retired from farming,\nwho own roughly 170 acres near Wilke\xe2\x80\x99s Lake in the town\nof Schleswig. The defendant, Steenberg Homes, Inc.\n(Steenberg), is in the business of selling mobile homes. In\nthe fall of 1993, a neighbor of the Jacques purchased a\nmobile home from Steenberg. Delivery of the mobile home\nwas included in the sales price.\nSteenberg determined that the easiest route to deliver the\nmobile home was across the Jacques\xe2\x80\x99 land. Steenberg\npreferred transporting the home across the Jacques\xe2\x80\x99 land\nbecause the only alternative was a private road which was\ncovered in up to seven feet of snow and contained a sharp\ncurve which would require sets of \xe2\x80\x9crollers\xe2\x80\x9d to be used\nwhen maneuvering the home around the curve. Steenberg\nasked the Jacques on several separate occasions whether it\ncould move the home across the Jacques\xe2\x80\x99 farm field. The\nJacques refused. The Jacques were sensitive about allowing\nothers on their land because they had lost property valued\nat over $10,000 to other neighbors in an adverse possession\naction in the mid-1980\xe2\x80\x99s. Despite repeated refusals from\nthe Jacques, Steenberg decided to sell the mobile home,\nwhich was to be used as a summer cottage, and delivered it\non February 15, 1994.\n\n44\n\n\x0cOn the morning of delivery, Mr. Jacque observed the\nmobile home parked on the corner of the town road\nadjacent to his property. He decided to find out where the\nmovers planned to take the home. The movers, who were\nSteenberg employees, showed Mr. Jacque the path they\nplanned to take with the mobile home to reach the\nneighbor\xe2\x80\x99s lot. The path cut across the Jacques\xe2\x80\x99 land. Mr.\nJacque informed the movers that it was the Jacques\xe2\x80\x99 land\nthey were planning to cross and that Steenberg did not\nhave permission to cross their land. He told them that\nSteenberg had been refused permission to cross the\nJacques\xe2\x80\x99 land.\nOne of Steenberg\xe2\x80\x99s employees called the assistant manager,\nwho then came out to the Jacques\xe2\x80\x99 home. In the meantime,\nthe Jacques called and asked some of their neighbors and\nthe town chairman to come over immediately. Once\neveryone was present, the Jacques showed the assistant\nmanager an aerial map and plat book of the township to\nprove their ownership of the land, and reiterated their\ndemand that the home not be moved across their land.\nAt that point, the assistant manager asked Mr. Jacque how\nmuch money it would take to get permission. Mr. Jacque\nresponded that it was not a question of money; the Jacques\njust did not want Steenberg to cross their land. Mr. Jacque\ntestified that he told Steenberg to \xe2\x80\x9c[F]ollow the road, that is\nwhat the road is for.\xe2\x80\x9d Steenberg employees left the meeting\nwithout permission to cross the land.\nAt trial, one of Steenberg\xe2\x80\x99s employees testified that, upon\ncoming out of the Jacques\xe2\x80\x99 home, the assistant manager\nstated: \xe2\x80\x9cI don\xe2\x80\x99t give a \xe2\x80\x94 what [Mr. Jacque] said, just get the\nhome in there any way you can.\xe2\x80\x9d The other Steenberg\nemployee confirmed this testimony and further testified\nthat the assistant manager told him to park the company\ntruck in such a way that no one could get down the town\nroad to see the route the employees were taking with the\nhome. The assistant manager denied giving these\n\n45\n\n\x0cinstructions, and Steenberg argued that the road was\nblocked for safety reasons.\nThe employees, after beginning down the private road,\nultimately used a \xe2\x80\x9cbobcat\xe2\x80\x9d to cut a path through the\nJacques\xe2\x80\x99 snow-covered field and hauled the home across\nthe Jacques\xe2\x80\x99 land to the neighbor\xe2\x80\x99s lot. One employee\ntestified that upon returning to the office and informing the\nassistant manager that they had gone across the field, the\nassistant manager reacted by giggling and laughing. The\nother employee confirmed this testimony. The assistant\nmanager disputed this testimony.\nWhen a neighbor informed the Jacques that Steenberg had,\nin fact, moved the mobile home across the Jacques\xe2\x80\x99 land,\nMr. Jacque called the Manitowoc County Sheriff\xe2\x80\x99s\nDepartment. After interviewing the parties and observing\nthe scene, an officer from the sheriff\xe2\x80\x99s department issued a\n$30 citation to Steenberg\xe2\x80\x99s assistant manager.\nThe Jacques commenced an intentional tort action in\nManitowoc County Circuit Court, Judge Allan J. Deehr\npresiding, seeking compensatory and punitive damages\nfrom Steenberg. The case was tried before a jury on\nDecember 1, 1994. At the completion of the Jacques\xe2\x80\x99 case,\nSteenberg moved for a directed verdict under Wis. Stat. \xc2\xa7\n805.14(3). For purposes of the motion, Steenberg admitted\nto an intentional trespass to land, but asked the circuit\ncourt to find that the Jacques were not entitled to\ncompensatory damages or punitive damages based on\ninsufficiency of the evidence. The circuit court denied\nSteenberg\xe2\x80\x99s motion and the questions of punitive and\ncompensatory damages were submitted to the jury. The\njury awarded the Jacques $1 nominal damages and $100,000\npunitive damages. Steenberg filed post-verdict motions\nclaiming that the punitive damage award must be set aside\nbecause Wisconsin law did not allow a punitive damage\naward unless the jury also awarded compensatory damages.\nAlternatively, Steenberg asked the circuit court to remit the\n\n46\n\n\x0cpunitive damage award. The circuit court granted\nSteenberg\xe2\x80\x99s motion to set aside the award. Consequently, it\ndid not reach Steenberg\xe2\x80\x99s motion for remittitur.\nThis case presents three issues: (1) whether an award of\nnominal damages for intentional trespass to land may\nsupport a punitive damage award and, if so; (2) whether the\nlaw should apply to Steenberg or should only be applied\nprospectively and, if we apply the law to Steenberg; (3)\nwhether the $100,000 in punitive damages awarded by the\njury is excessive.\nThe first issue is a question of law which we review de\nnovo\xe2\x80\xa6 . .\nII.\nBefore the question of punitive damages in a tort action\ncan properly be submitted to the jury, the circuit court\nmust determine, as a matter of law, that the evidence will\nsupport an award of punitive damages. To determine\nwhether, as a matter of law, the question of punitive\ndamages should have been submitted to the jury, this court\nreviews the record de novo.\nSteenberg argues that, as a matter of law, punitive damages\ncould not be awarded by the jury because punitive damages\nmust be supported by an award of compensatory damages\nand here the jury awarded only nominal and punitive\ndamages. The Jacques contend that the rationale supporting\nthe compensatory damage award requirement is inapposite\nwhen the wrongful act is an intentional trespass to land. We\nagree with the Jacques.\nOur analysis begins with a statement of the rule and\nrationale supporting the rule. First, we consider\nindividual and societal interests implicated when\nintentional trespass to land occurs. Then, we analyze\nrationale supporting the rule in light of these interests.\n\n47\n\nthe\nthe\nan\nthe\n\n\x0cThe general rule was stated in Barnard v. Cohen, 165 Wis.\n417 (1917), where the question presented was: \xe2\x80\x9cIn an\naction for libel, can there be a recovery of punitory\ndamages if only nominal compensatory damages are\nfound?\xe2\x80\x9d With the bare assertion that authority and better\nreason supported its conclusion, the Barnard court said no.\nId. at. 418. Barnard continues to state the general rule of\npunitive damages in Wisconsin. The rationale for the\ncompensatory damage requirement is that if the individual\ncannot show actual harm, he or she has but a nominal\ninterest, hence, society has little interest in having the\nunlawful, but otherwise harmless, conduct deterred,\ntherefore, punitive damages are inappropriate.\nHowever, whether nominal damages can support a punitive\ndamage award in the case of an intentional trespass to land\nhas never been squarely addressed by this court.\nNonetheless, Wisconsin law is not without reference to this\nsituation. In 1854 the court established punitive damages,\nallowing the assessment of \xe2\x80\x9cdamages as a punishment to\nthe defendant for the purpose of making an example.\xe2\x80\x9d\nMcWilliams v. Bragg, 3 Wis. 424, 425 (1854).1 The McWilliams\ncourt related the facts and an illustrative tale from the\nEnglish case of Merest v. Harvey, 128 Eng. Rep. 761 (C.P.\n1814), to explain the rationale underlying punitive damages.\nIn Merest, a landowner was shooting birds in his field when\nhe was approached by the local magistrate who wanted to\nhunt with him. Although the landowner refused, the\nmagistrate proceeded to hunt. When the landowner\ncontinued to object, the magistrate threatened to have him\njailed and dared him to file suit. Although little actual harm\nhad been caused, the English court upheld damages of 500\npounds, explaining \xe2\x80\x9cin a case where a man disregards every\nprinciple which actuates the conduct of gentlemen, what is\n\nBecause McWilliams was an action of trespass for assault and battery, we cite it\nnot for its precedential value, but for its reasoning.\n1\n\n48\n\n\x0cto restrain him except large damages?\xe2\x80\x9d McWilliams, 3 Wis.\n424 at 428.\nTo explain the need for punitive damages, even where\nactual harm is slight, McWilliams related the hypothetical\ntale from Merest of an intentional trespasser:\nSuppose a gentleman has a paved walk\nin his paddock, before his window,\nand that a man intrudes and walks up\nand down before the window of his\nhouse, and looks in while the owner is\nat dinner, is the trespasser permitted to\nsay \xe2\x80\x9chere is a halfpenny for you which\nis the full extent of the mischief I have\ndone.\xe2\x80\x9d Would that be a compensation?\nI cannot say that it would be \xe2\x80\xa6 .\nMcWilliams, 3 Wis. at 428. Thus, in the case establishing\npunitive damages in this state, this court recognized that in\ncertain situations of trespass, the actual harm is not in the\ndamage done to the land, which may be minimal, but in the\nloss of the individual\xe2\x80\x99s right to exclude others from his or\nher property and, the court implied that this right may be\npunished by a large damage award despite the lack of\nmeasurable harm.\nSteenberg contends that the rule established in Barnard\nprohibits a punitive damage award, as a matter of law,\nunless the plaintiff also receives compensatory damages.\nBecause the Jacques did not receive a compensatory\ndamage award, Steenberg contends that the punitive\ndamage award must be set aside. The Jacques argue that the\nrationale for not allowing nominal damages to support a\npunitive damage award is inapposite when the wrongful act\ninvolved is an intentional trespass to land. The Jacques\nargue that both the individual and society have significant\ninterests in deterring intentional trespass to land, regardless\nof the lack of measurable harm that results. We agree with\n\n49\n\n\x0cthe Jacques. An examination of the individual interests\ninvaded by an intentional trespass to land, and society\xe2\x80\x99s\ninterests in preventing intentional trespass to land, leads us\nto the conclusion that the Barnard rule should not apply\nwhen the tort supporting the award is intentional trespass\nto land.\nWe turn first to the individual landowner\xe2\x80\x99s interest in\nprotecting his or her land from trespass. The United States\nSupreme Court has recognized that the private landowner\xe2\x80\x99s\nright to exclude others from his or her land is \xe2\x80\x9cone of the\nmost essential sticks in the bundle of rights that are\ncommonly characterized as property.\xe2\x80\x9d Dolan v. City of\nTigard, 512 U.S. 374, 384 (1994).2 This court has long\nrecognized \xe2\x80\x9c[e]very person[\xe2\x80\x99s] constitutional right to the\nexclusive enjoyment of his own property for any purpose\nwhich does not invade the rights of another person.\xe2\x80\x9d Diana\nShooting Club v. Lamoreux, 114 Wis. 44, 59 (1902) (holding\nthat the victim of an intentional trespass should have been\nallowed to take judgment for nominal damages and costs).\nThus, both this court and the Supreme Court recognize the\nindividual\xe2\x80\x99s legal right to exclude others from private\nproperty.\nYet a right is hollow if the legal system provides insufficient\nmeans to protect it. Felix Cohen offers the following\nanalysis summarizing the relationship between the\nindividual and the state regarding property rights:\n[T]hat is property to which the\nfollowing label can be attached:\nTo the world:\n\nWe refer to these cases only to emphasize the nature of the Jacques\xe2\x80\x99 interest and,\ncorrespondingly, Steenberg\xe2\x80\x99s violation.\n2\n\n50\n\n\x0cKeep off X unless you have my\npermission, which I may grant or\nwithhold.\nSigned: Private Citizen\nEndorsed: The state\nFelix S. Cohen, Dialogue on Private Property, IX Rutgers Law\nReview 357, 374 (1954). Harvey and Lois Jacque have the\nright to tell Steenberg Homes and any other trespasser,\n\xe2\x80\x9cNo, you cannot cross our land.\xe2\x80\x9d But that right has no\npractical meaning unless protected by the State. And, as this\ncourt recognized as early as 1854, a \xe2\x80\x9chalfpenny\xe2\x80\x9d award\ndoes not constitute state protection.\nThe nature of the nominal damage award in an intentional\ntrespass to land case further supports an exception to\nBarnard. Because a legal right is involved, the law recognizes\nthat actual harm occurs in every trespass. The action for\nintentional trespass to land is directed at vindication of the\nlegal right. W. Page Keeton, Prosser and Keeton on Torts,\n\xc2\xa7 13 (5th ed.1984). The law infers some damage from every\ndirect entry upon the land of another. Id.The law\nrecognizes actual harm in every trespass to land whether or\nnot compensatory damages are awarded. Id. Thus, in the\ncase of intentional trespass to land, the nominal damage\naward represents the recognition that, although\nimmeasurable in mere dollars, actual harm has occurred.\nThe potential for harm resulting from intentional trespass\nalso supports an exception to Barnard. A series of\nintentional trespasses, as the Jacques had the misfortune to\ndiscover in an unrelated action, can threaten the\nindividual\xe2\x80\x99s very ownership of the land. The conduct of an\nintentional trespasser, if repeated, might ripen into\nprescription or adverse possession and, as a consequence,\nthe individual landowner can lose his or her property rights\nto the trespasser. SeeWis. Stat. \xc2\xa7 893.28.\n\n51\n\n\x0cIn sum, the individual has a strong interest in excluding\ntrespassers from his or her land. Although only nominal\ndamages were awarded to the Jacques, Steenberg\xe2\x80\x99s\nintentional trespass caused actual harm. We turn next to\nsociety\xe2\x80\x99s interest in protecting private property from the\nintentional trespasser.\nSociety has an interest in punishing and deterring\nintentional trespassers beyond that of protecting the\ninterests of the individual landowner. Society has an\ninterest in preserving the integrity of the legal system.\nPrivate landowners should feel confident that wrongdoers\nwho trespass upon their land will be appropriately\npunished. When landowners have confidence in the legal\nsystem, they are less likely to resort to \xe2\x80\x9cself-help\xe2\x80\x9d remedies.\nIn McWilliams, the court recognized the importance of\n\xe2\x80\x9c\xe2\x80\x98prevent [ing] the practice of dueling, [by permitting] juries\n[ ] to punish insult by exemplary damages.\xe2\x80\x99\xe2\x80\x9d McWilliams, 3\nWis. at 428. Although dueling is rarely a modern form of\nself-help, one can easily imagine a frustrated landowner\ntaking the law into his or her own hands when faced with a\nbrazen trespasser, like Steenberg, who refuses to heed no\ntrespass warnings.\nPeople expect wrongdoers to be appropriately punished.\nPunitive damages have the effect of bringing to\npunishment types of conduct that, though oppressive and\nhurtful to the individual, almost invariably go unpunished\nby the public prosecutor. Kink v. Combs, 28 Wis. 2d 65\n(1965). The $30 forfeiture was certainly not an appropriate\npunishment for Steenberg\xe2\x80\x99s egregious trespass in the eyes\nof the Jacques. It was more akin to Merest\xe2\x80\x99s \xe2\x80\x9chalfpenny.\xe2\x80\x9d If\npunitive damages are not allowed in a situation like this,\nwhat punishment will prohibit the intentional trespass to\nland? Moreover, what is to stop Steenberg Homes from\nconcluding, in the future, that delivering its mobile homes\nvia an intentional trespass and paying the resulting Class B\nforfeiture, is not more profitable than obeying the law?\n\n52\n\n\x0cSteenberg Homes plowed a path across the Jacques\xe2\x80\x99 land\nand dragged the mobile home across that path, in the face\nof the Jacques\xe2\x80\x99 adamant refusal. A $30 forfeiture and a $1\nnominal damage award are unlikely to restrain Steenberg\nHomes from similar conduct in the future. An appropriate\npunitive damage award probably will.\nIn sum, as the court of appeals noted, the Barnard rule\nsends the wrong message to Steenberg Homes and any\nothers who contemplate trespassing on the land of another.\nIt implicitly tells them that they are free to go where they\nplease, regardless of the landowner\xe2\x80\x99s wishes. As long as\nthey cause no compensable harm, the only deterrent\nintentional trespassers face is the nominal damage award of\n$1, the modern equivalent of Merest\xe2\x80\x99s halfpenny, and the\npossibility of a Class B forfeiture under Wis. Stat. \xc2\xa7 943.13.\nWe conclude that both the private landowner and society\nhave much more than a nominal interest in excluding\nothers from private land. Intentional trespass to land causes\nactual harm to the individual, regardless of whether that\nharm can be measured in mere dollars. Consequently, the\nBarnard rationale will not support a refusal to allow punitive\ndamages when the tort involved is an intentional trespass to\nland. Accordingly, assuming that the other requirements for\npunitive damages have been met, we hold that nominal\ndamages may support a punitive damage award in an action\nfor intentional trespass to land.\nOur holding is supported by respected legal commentary.\nThe Restatement (Second) of Torts supports the\nproposition that an award of nominal damages will support\nan award of punitive damages in a trespass to land action:\nThe fact that the actor knows that his\nentry is without the consent of the\npossessor and without any other\nprivilege to do so, while not necessary\nto make him liable, may affect the\namount of damages recoverable\n\n53\n\n\x0cagainst him, by showing such a\ncomplete disregard of the possessor\xe2\x80\x99s\nlegally protected interest in the\nexclusive possession of his land as to\njustify the imposition of punitive in\naddition to nominal damages for even\na harmless trespass, or in addition to\ncompensatory damages for one which\nis harmful.\nRestatement (Second) of Torts \xc2\xa7 163 cmt. e (1979). The\nRestatement reiterates this position under the punitive\ndamages section: nominal damages support an award of\npunitive damages \xe2\x80\x9cwhen a tort, such as trespass to land, is\ncommitted for an outrageous purpose, but no significant\nharm has resulted.\xe2\x80\x9d Restatement (Second) of Torts \xc2\xa7 908\ncmt. c (1979).\nProsser also finds the compensatory damages prerequisite\nunsupportable:\nSince it is precisely in the cases of\nnominal damages that the policy of\nproviding an incentive for plaintiffs to\nbring petty outrages into court comes\ninto play, the view very much to be\npreferred appears to be that of the\nminority which have held that there is\nsufficient support for punitive\ndamages.\nPage Keeton, et. al., Prosser and Keeton on the Law of Torts \xc2\xa7 2,\nat 14 (5th ed.1984) (citations omitted). A minority of other\njurisdictions follow this approach. See, Annotation,\nSufficiency of Showing of Actual Damages to Support Award of\nPunitive Damages-Modern Cases, 40 A.L.R.4th 11, 36 (1985).\n\xe2\x80\xa6.\nIn conclusion, we hold that when nominal damages are\nawarded for an intentional trespass to land, punitive\n\n54\n\n\x0cdamages may, in the discretion of the jury, be awarded. Our\ndecision today shall apply to Steenberg Homes. Finally, we\nhold that the $100,000 punitive damages awarded by the\njury is not excessive. Accordingly, we reverse and remand\nto the circuit court for reinstatement of the punitive\ndamage award.\nReversed and remanded with directions.\n1.2.2. Initial Look at Exclusion\'s Limits\nPloof v. Putname, 81 Vt. 471 (1908)\nMartin S. Vilas and Cowles & Moulton, for plaintiff.\nBatchelder & Bates, for defendant.\nMUNSON, J.\nIt is alleged as the ground on recovery that on the 13th day\nof November 1904, the defendant was the owner of a\ncertain island in Lake Champlain, and of a certain dock\nattached thereto, which island and dock were then in\ncharge of the defendant\xe2\x80\x99s servant; that the plaintiff was\nthen possessed of and sailing upon said lake a certain\nloaded sloop, on which were the plaintiff and his wife and\ntwo minor children; that there then arose a sudden and\nviolent tempest, whereby the sloop and the property and\npersons therein were placed in great danger of destruction;\nthat, to save these from destruction or injury, the plaintiff\nwas compelled to, and did, moor the sloop to defendant\xe2\x80\x99s\ndock; that the defendant, by his servant, unmoored the\nsloop, whereupon it was driven upon the shore by the\ntempest, without the plaintiff\xe2\x80\x99s fault; and that the sloop and\nits contents were thereby destroyed, and the plaintiff and\nhis wife and children cast into the lake and upon the shore,\nreceiving injuries. This claim is set forth in two counts-one\nin trespass, charging that the defendant by his servant with\nforce and arms willfully and designedly unmoored the\nsloop; the other in case, alleging that it was the duty of the\ndefendant by his servant to permit the plaintiff to moor his\n\n55\n\n\x0csloop to the dock, and to permit it to remain so moored\nduring the continuance of the tempest, but that the\ndefendant by his servant, in disregard of this duty,\nnegligently, carelessly, and wrongfully unmoored the sloop.\nBoth counts are demurred to generally.\nThere are many cases in the books which hold that\nnecessity, and an inability to control movements\ninaugurated in the proper exercise of a strict right, will\njustify entries upon land and interferences with personal\nproperty that would otherwise have been trespasses. A\nreference to a few of these will be sufficient to illustrate the\ndoctrine. In Miller v. Fandrye, Poph. 161, trespass was\nbrought for chasing sheep, and the defendant pleaded that\nthe sheep were trespassing upon his land, and that he with\na little dog chased them out, and that, as soon as the sheep\nwere off his land, he called in the dog. It was argued that,\nalthough the defendant might lawfully drive the sheep from\nhis own ground with a dog, he had no right to pursue them\ninto the next ground; but the court considered that the\ndefendant might drive the sheep from his land with a dog,\nand that the nature of a dog is such that he cannot be\nwithdrawn in an instant, and that, as the defendant had\ndone his best to recall the dog, trespass would not lie. In\ntrespass of cattle taken in A., defendant pleaded that he was\nseised of C. and found the cattle there damage feasant, and\nchased them towards the pound, and they escaped from\nhim and went into A., and he presently retook them; and\nthis was held a good plea. 21 Edw. IV, 64; Vin. Ab.\nTrespass, H. a, 4, pl. 19. If one have a way over the land of\nanother for his beasts to pass, and the beasts, being\nproperly driven, feed the grass by morsels in passing, or run\nout of the way and are promptly pursued and brought back,\ntrespass will not lie. See Vin. Ab. Trespass, K. a, pl. 1. A\ntraveler on a highway who finds it obstructed from a\nsudden and temporary cause may pass upon the adjoining\nland without becoming a trespasser because of the\n\n56\n\n\x0cnecessity. Henn\xe2\x80\x99s Case, W. Jones, 296; Campbell v. Race, 7\nCush. (Mass.) 408, 54 Am. Dec. 728; Hyde v. Jamaica, 27 Vt.\n443 (459); Morey v. Fitzgerald, 56 Vt. 487, 48 Am. Rep. 811.\nAn entry upon land to save goods which are in danger of\nbeing lost or destroyed by water or fire is not a trespass. 21\nHen. VII, 27; Vin. Ab. Trespass, H. a, 4, pl. 24, K. a, pl. 3. In\nProctor v. Adams, 113 Mass. 376, 18 Am. Rep. 500, the\ndefendant went upon the plaintiff\xe2\x80\x99s beach for the purpose\nof saving and restoring to the lawful owner a boat which\nhad been driven ashore, and was in danger of being carried\noff by the sea; and it was held no trespass. See, also,\nDunwich v. Sterry, 1 B. & Ad. 831.\nThis doctrine of necessity applies with special force to the\npreservation of human life. One assaulted and in peril of\nhis life may run through the close of another to escape\nfrom his assailant. 37 Hen. VII, pl. 26. One may sacrifice\nthe personal property of another to save his life or the lives\nof his fellows. In Mouse\xe2\x80\x99s Case, 12 Co. 63, the defendant was\nsued for taking and carrying away the plaintiff\xe2\x80\x99s casket and\nits contents. It appeared that the ferryman of Gravesend\ntook 47 passengers into his barge to pass to London,\namong whom were the plaintiff and defendant; and the\nbarge being upon the water a great tempest happened, and\na strong wind, so that the barge and all the passengers were\nin danger of being lost if certain ponderous things were not\ncast out, and the defendant thereupon cast out the\nplaintiff\xe2\x80\x99s casket. It was resolved that in case of necessity, to\nsave the lives of the passengers, it was lawful for the\ndefendant, being a passenger, to cast the plaintiff\xe2\x80\x99s casket\nout of the barge; that, if the ferryman surcharge the barge,\nthe owner shall have his remedy upon the surcharge against\nthe ferryman, but that if there be no surcharge, and the\ndanger accrue only by the act of God, as by tempest,\nwithout fault of the ferryman, every one ought to bear his\nloss to safeguard the life of a man.\n\n57\n\n\x0cIt is clear that an entry upon the land of another may be\njustified by necessity, and that the declaration before us\ndiscloses a necessity for mooring the sloop. But the\ndefendant questions the sufficiency of the counts because\nthey do not negative the existence of natural objects to\nwhich the plaintiff could have moored with equal safety.\nThe allegations are, in substance, that the stress of a sudden\nand violent tempest compelled the plaintiff to moor to\ndefendant\xe2\x80\x99s dock to save his sloop and the people in it. The\naverment of necessity is complete, for it covers not only the\nnecessity of mooring to the dock; and the details of the\nsituation which created this necessity, whatever the legal\nrequirements regarding them, are matters of proof, and\nneed not be alleged. It is certain that the rule suggested\ncannot be held applicable irrespective of circumstance, and\nthe question must be left for adjudication upon\nproceedings had with reference to the evidence or the\ncharge.\nThe defendant insists that the counts are defective, in that\nthey fail to show that the servant in casting off the rope\nwas acting within the scope of his employment. It is said\nthat the allegation that the island and dock were in charge\nof the servant does not imply authority to do an unlawful\nact, and that the allegations as a whole fairly indicate that\nthe servant unmoored the sloop for a wrongful purpose of\nhis own, and not by virtue of any general authority or\nspecial instruction received from the defendant. But we\nthink the counts are sufficient in this respect. The allegation\nis that the defendant did this by his servant. The words\n\xe2\x80\x9cwillfully, and designedly\xe2\x80\x9d in one count, and \xe2\x80\x9cnegligently,\ncarelessly, and wrongfully\xe2\x80\x9d in the other, are not applied to\nthe servant, but to the defendant acting through the\nservant. The necessary implication is that the servant was\nacting within the scope of his employment. 13 Ency. P. &\nPr. 922; Voegeli v. Pickel Marble, etc., Co., 49 Mo. App. 643;\nWabash Ry. Co. v. Savage, 110 Ind. 156, 9 N. E. 85. See, also,\n\n58\n\n\x0cPalmer v. St. Albans, 60 Vt. 427, 13 Atl. 569, 6 Am. St. Rep.\n125.\nJudgment affirmed and cause remanded.\nHinman v. Pacific Air Transport, 84 F.2d 755 (9th Cir.\n1936)\nBruce Murchison and M. L. Clopton, both of Los Angeles,\nCal., for appellants.\nNewlin & Ashburn, Gurney E. Newlin, Paul Sandmeyer,\nand George W. Tackabury, all of Los Angeles, Cal., for\nappellees.\nBefore WILBUR, MATHEWS, and HANEY, Circuit\nJudges.\nHANEY, Circuit Judge.\nFrom decrees sustaining motions to dismiss filed by\ndefendants in two suits, appellants appeal and bring for\nreview by this court the rights of a landowner in\nconnection with the flight of aircraft above his land.\nAppellant filed one bill against Pacific Air Transport, an\nOregon corporation, and another bill against United Air\nLines Transport Corporation, a Delaware corporation, in\neach of which the allegations are nearly identical. Although\ntwo appeals are before the court, briefs filed discuss both\ncases, and therefore we will consider them together.\nAppellants filed a first amended bill against Pacific Air\nTransport after a motion to dismiss the original bill had\nbeen sustained, and after a motion to dismiss the first\namended bill had been sustained, they filed their second\namended bill, which is the bill before this court. In the\nUnited Air Lines Transport Corporation case, the first\namended bill is before this court, there having been an\noriginal bill, which was dismissed.\nAppellants allege, in the bills under consideration, facts\nshowing diversity of citizenship and that the amount in\n\n59\n\n\x0ccontroversy exceeds $3,000 exclusive of interest and costs;\nthat they are the owners and in possession of 72 1/2 acres\nof real property in the city of Burbank, Los Angeles county,\nCal., \xe2\x80\x98together with a stratum of air-space superjacent to\nand overlying said tract * * * and extending upwards * * *\nto such an altitude as plaintiffs * * * may reasonably expect\nnow or hereafter to utilize, use or occupy said airspace.\nWithout limiting said altitude or defining the upward extent\nof said stratum of airspace or of plaintiff\xe2\x80\x99s ownership,\nutilization and possession thereof, plaintiffs allege that they\n* * * may reasonably expect now and hereafter to utilize,\nuse and occupy said airspace and each and every portion\nthereof to an altitude of not less than 150 feet above the\nsurface of the land * * * \xe2\x80\x98. The reasonable value of the\nproperty is alleged to be in excess of $300,000.\nIt is then alleged that defendants are engaged in the\nbusiness of operating a commercial air line, and that at all\ntimes \xe2\x80\x98after the month of May, 1929, defendants daily,\nrepeatedly and upon numerous occasions have disturbed,\ninvaded and trespassed upon the ownership and possession\nof plaintiffs\xe2\x80\x99 tract\xe2\x80\x99; that at said times defendants have\noperated aircraft in, across, and through said airspace at\naltitudes less than 100 feet above the surface; that plaintiffs\nnotified defendants to desist from trespassing on said\nairspace; and that defendants have disregarded said notice,\nunlawfully and against the will of plaintiffs, and continue\nand threaten to continue such trespasses.\nIt is further alleged: \xe2\x80\x98That in operating aircraft as aforesaid,\ndefendants followed and on substantially all occasions\nherein referred to have followed one of two courses, ways\nand paths in, across and through said airspace, which by\nreason of constant and repeated user by defendants have\nbecome and are well defined by constant user * * * .\xe2\x80\x99\nThereafter the first of such courses, designated \xe2\x80\x98A,\xe2\x80\x99 is\ndescribed with particularity with regard to the surface\nboundaries of plaintiffs\xe2\x80\x99 land; course \xe2\x80\x98A\xe2\x80\x99 is averred to be 75\n\n60\n\n\x0cyards wide over the north side of plaintiffs\xe2\x80\x99 land the place\nof entry, the lowest boundary of the course above the\nsurface to be 25 feet, and the highest boundary to be 175\nfeet above the surface. At the south side of plaintiffs\xe2\x80\x99 land,\nthe course is said to be 100 yards wide, the lowest boundary\nto be 5 feet above the surface, and the highest boundary to\nbe 45 feet above the surface.\nThe second course is also described particularly, and\nalthough there is some difference in the width of the\ncourse, the height above the surface is the same as course\nA.\nIt is alleged that the direction of the breeze determines\nwhich course defendants use on a particular occasion, and\nthat defendants have used such courses since the time of\nthe notice given them by plaintiffs, openly, notoriously, and\nunder claim of right adverse to plaintiffs.\nIn the last paragraph it is alleged that the remedy at law is\ninadequate; that unless defendants are enjoined they will\nrepeat the said trespasses and will impose a servitude upon\nplaintiffs\xe2\x80\x99 utilization, use, occupancy, and enjoyment of the\nsurface of their land to their irreparable injury; and that\ninjunctive relief is necessary to prevent a multiplicity of\nlegal proceedings.\nIn each bill under consideration, there is a second cause of\naction. The allegations of the first cause, except the last\nparagraph, are adopted in the second cause, and it is further\nalleged that the reasonable value of the utilization, use, and\noccupancy of said courses is $1,500 per month; that \xe2\x80\x98by\nreason of defendants\xe2\x80\x99 invasion and disturbance of and\ntrespass upon plaintiffs\xe2\x80\x99 ownership and possession of said\nairspace, plaintiffs have suffered damage\xe2\x80\x99 in the sum of\n$90,000.\nThe prayer asks an injunction restraining the operation of\nthe aircraft through the airspace over plaintiffs\xe2\x80\x99 property\nand for $90,000 damages in each of the cases.\n\n61\n\n\x0cAppellees contend that it is settled law in California that the\nowner of land has no property rights in superjacent\nairspace, either by code enactments or by judicial decrees\nand that the ad coelum doctrine does not apply in\nCalifornia. We have examined the statutes of California,\nparticularly California Civil Code, s 659 and s 829, as well\nas Grandona v. Lovdal, 78 Cal. 611, 21 P. 366, 12\nAm.St.Rep. 121. Wood v. Moulton, 146 Cal. 317, 80 P. 92;\nand Kafka v. Bozio, 191 Cal. 746, 218 P. 753, 29 A.L.R.\n833, but we find nothing therein to negative the ad coelum\nformula. Furthermore, if we should adopt this formula as\nbeing the law, there might be serious doubt as to whether a\nstate statute could change it without running counter to the\nFourteenth amendment to the Constitution of the United\nStates. If we could accept and literally construe the ad\ncoelum doctrine, it would simplify the solution of this case;\nhowever, we reject that doctrine. We think it is not the law,\nand that it never was the law.\nThis formula \xe2\x80\x98from the center of the earth to the sky\xe2\x80\x99 was\ninvented at some remote time in the past when the use of\nspace above land actual or conceivable was confined to\nnarrow limits, and simply meant that the owner of the land\ncould use the overlying space to such an extent as he was\nable, and that no one could ever interfere with that use.\nThis formula was never taken literally, but was a figurative\nphrase to express the full and complete ownership of land\nand the right to whatever superjacent airspace was\nnecessary or convenient to the enjoyment of the land.\nIn applying a rule of law, or construing a statute or\nconstitutional provision, we cannot shut our eyes to\ncommon knowledge, the progress of civilization, or the\nexperience of mankind. A literal construction of this\nformula will bring about an absurdity. The sky has no\ndefinite location. It is that which presents itself to the eye\nwhen looking upward; as we approach it, it recedes. There\n\n62\n\n\x0ccan be no ownership of infinity, nor can equity prevent a\nsupposed violation of an abstract conception.\nThe appellants\xe2\x80\x99 case, then, rests upon the assumption that\nas owners of the soil they have an absolute and present title\nto all the space above the earth\xe2\x80\x99s surface, owned by them,\nto such a height as is, or may become, useful to the\nenjoyment of their land. This height, the appellants assert in\nthe bill, is of indefinite distance, but not less than 150 feet.\nIf the appellants are correct in this premise, it would seem\nthat they would have such a title to the airspace claimed, as\nan incident to their ownership of the land, that they could\nprotect such a title as if it were an ordinary interest in real\nproperty. Let us then examine the appellants\xe2\x80\x99 premise. They\ndo not seek to maintain that the ownership of the land\nactually extends by absolute and exclusive title upward to\nthe sky and downward to the center of the earth. They\nrecognize that the space claimed must have some use,\neither present or contemplated, and connected with the\nenjoyment of the land itself.\nTitle to the airspace unconnected with the use of land is\ninconceivable. Such a right has never been asserted. It is a\nthing not known to the law.\nSince, therefore, appellants must confine their claim to 150\nfeet of the airspace above the land, to the use of the space\nas related to the enjoyment of their land, to what extent,\nthen, is this use necessary to perfect their title to the\nairspace? Must the use be actual, as when the owner claims\nthe space above the earth occupied by a building\nconstructed thereon; or does it suffice if appellants\nestablish merely that they may reasonably expect to use the\nairspace now or at some indefinite future time?\nThis, then, is appellants\xe2\x80\x99 premise, and upon this\nproposition they rest their case. Such an inquiry was never\npursued in the history of jurisprudence until the occasion is\nfurnished by the common use of vehicles of the air.\n\n63\n\n\x0cWe believe, and hold, that appellants\xe2\x80\x99 premise is unsound.\nThe question presented is applied to a new status and little\naid can be found in actual precedent. The solution is found\nin the application of elementary legal principles. The first\nand foremost of these principles is that the very essence\nand origin of the legal right of property is dominion over it.\nProperty must have been reclaimed from the general mass\nof the earth, and it must be capable by its nature of\nexclusive possession. Without possession, no right in it can\nbe maintained.\nThe air, like the sea, is by its nature incapable of private\nownership, except in so far as one may actually use it. This\nprinciple was announced long ago by Justinian. It is in fact\nthe basis upon which practically all of our so-called water\ncodes are based.\nWe own so much of the space above the ground as we can\noccupy or make use of, in connection with the enjoyment\nof our land. This right is not fixed. It varies with our\nvarying needs and is coextensive with them. The owner of\nland owns as much of the space above him as he uses, but\nonly so long as he uses it. All that lies beyond belongs to\nthe world.\nWhen it is said that man owns, or may own, to the heavens,\nthat merely means that no one can acquire a right to the\nspace above him that will limit him in whatever use he can\nmake of it as a part of his enjoyment of the land. To this\nextent his title to the air is paramount. No other person can\nacquire any title or exclusive right to any space above him.\nAny use of such air or space by others which is injurious to\nhis land, or which constitutes an actual interference with his\npossession or his beneficial use thereof, would be a trespass\nfor which he would have remedy. But any claim of the\nlandowner beyond this cannot find a precedent in law, nor\nsupport in reason.\n\n64\n\n\x0cIt would be, and is, utterly impracticable and would lead to\nendless confusion, if the law should uphold attempts of\nlandowners to stake out, or assert claims to definite, unused\nspaces in the air in order to protect some contemplated\nfuture use of it. Such a rule, if adopted, would constitute a\ndeparture never before attempted by mankind, and utterly\nat variance with the reason of the law. If such a rule were\nconceivable, how will courts protect the various\nlandowners in their varying claims of portions of the sky?\nHow enforce a right of ejectment or restitution? Such a rule\nis not necessary for the protection of the landowner in any\nright guaranteed him by the Constitution in the enjoyment\nof his property. If a right like this were recognized and\nupheld by the courts, it would cause confusion worse\nconfounded. It is opposed to common sense and to all\nhuman experience.\nWe cannot shut our eyes to the practical result of legal\nrecognition of the asserted claims of appellants herein, for\nit leads to a legal implication to the effect that any use of\nairspace above the surface owner of land, without his\nconsent would be a trespass either by the operator of an\nairplane or a radio operator. We will not foist any such\nchimerical concept of property rights upon the\njurisprudence of this country.\nWe now consider the allegation of the bill that appellees\xe2\x80\x99\nairplanes, in landing, glide through the air, within a distance\nof less than 100 feet to the surface of appellants\xe2\x80\x99 land, or\npossibly to a distance within five feet thereof, at one end of\nhis tract. This presents another question for discussion.\nWhether such close proximity to appellants\xe2\x80\x99 land may\nconstitute an impairment of his full enjoyment of the same\nis a question of fact. If it does, he may be entitled to relief\nin a proper case.\nAppellants are not entitled to injunctive relief upon the bill\nfiled here, because no facts are alleged with respect to\ncircumstances of appellants\xe2\x80\x99 use of the premises which will\n\n65\n\n\x0cenable this court to infer that any actual or substantial\ndamage will accrue from the acts of the appellees\ncomplained of.\nThe case differs from the usual case of enjoining a trespass.\nOrdinarily, if a trespass is committed upon land, the\nplaintiff is entitled to at least nominal damages without\nproving or alleging any actual damage. In the instant case,\ntraversing the airspace above appellants\xe2\x80\x99 land is not, of\nitself, a trespass at all, but it is a lawful act unless it is done\nunder circumstances which will cause injury to appellants\xe2\x80\x99\npossession.\nAppellants do not, therefore, in their bill state a case of\ntrespass, unless they allege a case of actual and substantial\ndamage. The bill fails to do this. It merely draws a naked\nconclusion as to damages without facts or circumstances to\nsupport it. It follows that the complaint does not state a\ncase for injunctive relief.\nWe should note appellants\xe2\x80\x99 contention that appellees\xe2\x80\x99\ncontinuous use of the airspace in question may or will ripen\ninto an easement.\nIn considering this particular question, it is necessary to\nconsider just what right appellees are attempting to acquire.\nIf the superincumbent airspace were merely space (speaking\nof space as a nonentity), it would be valueless to the\nappellees. In other words, if no air were present therein,\nappellees\xe2\x80\x99 planes could not navigate. The primary thing\nappellees are using would appear to be the air overlying\nappellants\xe2\x80\x99 land. It is generally held that an easement of or\nin the air may not be obtained by prescription.\nIt is said in 19 C.J. 903, Sec. 85: \xe2\x80\x98The English doctrine that\nan easement for light and air may be acquired by user or\nprescription has been very generally rejected in the United\nStates.\xe2\x80\x99 See, also, 1 Thompson on Real Property, p. 652,\nSec. 542; also, Case v. Minot, 158 Mass. 577, 33 N.E.\n700,22 L.R.A. 536, where many cases are cited in support\n\n66\n\n\x0cof this rule. We therefore hold that it is not legally possible\nfor appellees to obtain an easement by prescription through\nthe airspace above appellants\xe2\x80\x99 land. Portsmouth Harbor\nLand & Hotel Co. v. United States, 260 U.S. 327, 43 S.Ct.\n135, 67 L.Ed. 287, is not at variance with this holding, for\nin that case it is apparent that the use or occupancy of the\nairspace, if it can be so considered, was under such\ncircumstances as amounted to a taking of the surface also.\nSuch is not the case here.\nIt is necessary to note also appellants\xe2\x80\x99 further point,\nnamely, that the second cause of action in the bill is for\ndamages on account of trespass. No actual injury is alleged,\nother than the mere utilization of the airspace above\nappellants\xe2\x80\x99 land.\nIn Murray v. Pannaci (C.C.A. 3) 130 F. 529, at page 530, it\nwas said: \xe2\x80\x98The judge applied to the case the familiar rule,\nsettled by many decisions, that although a legal injury to a\nplaintiff is proven, yet if the extent of the injury is not\nshown, nor evidence given from which it can be inferred,\nnominal damages only can be recovered.\xe2\x80\x99 This rule is\nsupported by many decisions set out in 63 C.J. 1035, Sec.\n225. We hold under the allegations of the bill that in no\nevent could appellant be entitled to more than nominal\ndamages, and that being the case, an injunction was\nproperly denied.\nAppellants also complain in their third assignment of error\nas follows:\nThat the above entitled court erred in\nmaking and causing to be entered that\nportion of said order as follows, to-wit:\nThat \xe2\x80\x98in no case shall any amended\ncause of action be sufficient\ncompliance with this order if same\nmerely restates a case in trespass.\xe2\x80\x99\n\n67\n\n\x0cIn Truckee River General Electric Co. v. Benner, 211 F. 79,\n81, this court said: \xe2\x80\x98It has uniformly been held in those\n(federal) courts that the allowance or refusal of leave to\namend pleadings in actions at law is discretionary with the\ntrial court, and that its action is not reviewable except in\ncase of gross abuse of discretion.\xe2\x80\x99\nEquity Rule 28 (28 U.S.C.A.FOLLOWING section 723)\nprovides that: \xe2\x80\x98After pleading filed by any defendant,\nplaintiff may amend only by consent of the defendant or\nleave of the court or judge.\xe2\x80\x99\nIn the instant case, leave was granted to appellants twice to\namend their bill in one case, and once in the other. They\nfailed in each of the bills to allege an injury by trespass\nwhich would be legally sufficient. Under such\ncircumstances we are not prepared to say that the trial court\nabused its discretion.\nThe decree of the District Court is affirmed.\nMATHEWS, Circuit Judge, dissents.\nDesnick v. American Broadcasting Companies, Inc.,\n44 F.3d 1345 (7th Cir. 1995).\nDan K. Webb, Julie A. Bauer, Steven F. Molo (argued),\nWinston & Strawn, Chicago, IL, Rodney F. Page, Arent,\nFox, Kintner, Plotkin & Kahn, Washington, DC, for\nplaintiffs-appellants.\nMichael M. Conway (argued), Mary Kay McCalla, James M.\nFalvey, Hopkins & Sutter, Chicago, IL, for defendantsappellees.\nBefore POSNER, Chief Judge, and COFFEY and\nMANION, Circuit Judges.\nPOSNER, Chief Judge.\nThe plaintiffs\xe2\x80\x93an ophthalmic clinic known as the \xe2\x80\x9cDesnick\nEye Center\xe2\x80\x9d after its owner, Dr. Desnick, and two\nophthalmic surgeons employed by the clinic, Glazer and\n\n68\n\n\x0cSimon\xe2\x80\x93appeal from the dismissal of their suit against the\nABC television network, a producer of the ABC program\nPrimeTime Live named Entine, and the program\xe2\x80\x99s star\nreporter, Donaldson. The suit is for trespass, defamation,\nand other torts arising out of the production and broadcast\nof a program segment of PrimeTime Live that was highly\ncritical of the Desnick Eye Center. Federal jurisdiction is\nbased primarily on diversity of citizenship (though there is\none federal claim), with Illinois law, and to a lesser extent\nWisconsin and Indiana law, supplying the substantive rules\non which decision is to be based. The suit was dismissed\nfor failure to state a claim. See Desnick v. Capital Cities/ABC,\nInc., 851 F.Supp. 303 (N.D.Ill.1994). The record before us\nis limited to the complaint and to a transcript, admitted to\nbe accurate, of the complained-about segment.\nIn March of 1993 Entine telephoned Dr. Desnick and told\nhim that PrimeTime Live wanted to do a broadcast\nsegment on large cataract practices. The Desnick Eye\nCenter has 25 offices in four midwestern states and\nperforms more than 10,000 cataract operations a year,\nmostly on elderly persons whose cataract surgery is paid for\nby Medicare. The complaint alleges\xe2\x80\x93and in the posture of\nthe case we must take the allegations to be true, though of\ncourse they may not be\xe2\x80\x93that Entine told Desnick that the\nsegment would not be about just one cataract practice, that\nit would not involve \xe2\x80\x9cambush\xe2\x80\x9d interviews or \xe2\x80\x9cundercover\xe2\x80\x9d\nsurveillance, and that it would be \xe2\x80\x9cfair and balanced.\xe2\x80\x9d Thus\nreassured, Desnick permitted an ABC crew to videotape\nthe Desnick Eye Center\xe2\x80\x99s main premises in Chicago, to film\na cataract operation \xe2\x80\x9clive,\xe2\x80\x9d and to interview doctors,\ntechnicians, and patients. Desnick also gave Entine a\nvideotape explaining the Desnick Eye Center\xe2\x80\x99s services.\nUnbeknownst to Desnick, Entine had dispatched persons\nequipped with concealed cameras to offices of the Desnick\nEye Center in Wisconsin and Indiana. Posing as patients,\nthese persons\xe2\x80\x93seven in all\xe2\x80\x93requested eye examinations.\n\n69\n\n\x0cPlaintiffs Glazer and Simon are among the employees of\nthe Desnick Eye Center who were secretly videotaped\nexamining these \xe2\x80\x9ctest patients.\xe2\x80\x9d\nThe program aired on June 10. Donaldson introduces the\nsegment by saying, \xe2\x80\x9cWe begin tonight with the story of a\nso-called \xe2\x80\x98big cutter,\xe2\x80\x99 Dr. James Desnick\xe2\x80\xa6. [I]n our\nundercover investigation of the big cutter you\xe2\x80\x99ll meet\ntonight, we turned up evidence that he may also be a big\ncharger, doing unnecessary cataract surgery for the money.\xe2\x80\x9d\nBrief interviews with four patients of the Desnick Eye\nCenter follow. One of the patients is satisfied (\xe2\x80\x9cI was\nblessed\xe2\x80\x9d); the other three are not\xe2\x80\x93one of them says, \xe2\x80\x9cIf you\ngot three eyes, he\xe2\x80\x99ll get three eyes.\xe2\x80\x9d Donaldson then reports\non the experiences of the seven test patients. The two who\nwere under 65 and thus not eligible for Medicare\nreimbursement were told they didn\xe2\x80\x99t need cataract surgery.\nFour of the other five were told they did. Glazer and Simon\nare shown recommending cataract surgery to them.\nDonaldson tells the viewer that PrimeTime Live has hired a\nprofessor of ophthalmology to examine the test patients\nwho had been told they needed cataract surgery, and the\nprofessor tells the viewer that they didn\xe2\x80\x99t need it\xe2\x80\x93with\nregard to one he says, \xe2\x80\x9cI think it would be near malpractice\nto do surgery on him.\xe2\x80\x9d Later in the segment he denies that\nthis could just be an honest difference of opinion between\nprofessionals.\nAn ophthalmic surgeon is interviewed who had turned\ndown a job at the Desnick Eye Center because he would\nnot have been \xe2\x80\x9cable to screen who I was going to operate\non.\xe2\x80\x9d He claims to have been told by one of the doctors at\nthe Center (not Glazer or Simon) that \xe2\x80\x9cas soon as I reject\nthem [i.e., turn down a patient for cataract surgery], they\xe2\x80\x99re\ngoing in the next room to get surgery.\xe2\x80\x9d A former marketing\nexecutive for the Center says Desnick took advantage of\n\xe2\x80\x9cpeople who had Alzheimer\xe2\x80\x99s, people who did not know\nwhat planet they were on, people whose quality of life\n\n70\n\n\x0cwouldn\xe2\x80\x99t change one iota by having cataract surgery done.\xe2\x80\x9d\nTwo patients are interviewed who report miserable\nexperiences with the Center\xe2\x80\x93one claiming that the doctors\nthere had failed to spot an easily visible melanoma, another\nthat as a result of unnecessary cataract surgery her \xe2\x80\x9ceye\nruptured,\xe2\x80\x9d producing \xe2\x80\x9crunning pus.\xe2\x80\x9d A former employee\ntells the viewer that Dr. Desnick alters patients\xe2\x80\x99 medical\nrecords to show they need cataract surgery\xe2\x80\x93for example,\nchanging the record of one patient\xe2\x80\x99s vision test from 20/30\nto 20/80\xe2\x80\x93and that he instructs all members of his staff to\nuse pens of the same color in order to facilitate the\nalteration of patients\xe2\x80\x99 records.\nOne symptom of cataracts is that lights of normal\nbrightness produce glare. Glazer is shown telling a patient,\n\xe2\x80\x9cYou know, you\xe2\x80\x99re getting glare. I would say we could do\nsignificantly better [with an operation].\xe2\x80\x9d And Simon is\nshown asking two patients, \xe2\x80\x9cDo you ever notice any glare\nor blurriness when you\xe2\x80\x99re driving, or difficulty with the\nsigns?\xe2\x80\x9d Both say no, and immediately Donaldson tells the\nviewer that \xe2\x80\x9cthe Desnick Center uses a very interesting\nmachine, called an auto-refractor, to determine whether\nthere are glare problems.\xe2\x80\x9d Donaldson demonstrates the\nmachine, then says that \xe2\x80\x9cPaddy Kalish is an optometrist\nwho says that when he worked at the Desnick clinic from\n1987 to 1990, the machine was regularly rigged. He says he\nwatched a technician tamper with the machine, this way\xe2\x80\x9d\xe2\x80\x93\nand then Kalish gives a demonstration, adding, \xe2\x80\x9cThis\nhappened routinely for all the older patients that came in\nfor the eye exams.\xe2\x80\x9d Donaldson reveals that Dr. Desnick\nhas obtained a judgment against Kalish for defamation, but\nadds that \xe2\x80\x9cKalish is not the only one to tell us the machine\nmay have been rigged. PrimeTime talked to four other\nformer Desnick employees who say almost everyone failed\nthe glare test.\xe2\x80\x9d\nThere is more, including mention of a proceeding begun by\nthe Illinois Medical Board in which Dr. Desnick is charged\n\n71\n\n\x0cwith a number of counts of malpractice and deception\xe2\x80\x93and\nan \xe2\x80\x9cambush\xe2\x80\x9d interview. Donaldson accosts Desnick at\nO\xe2\x80\x99Hare Airport and cries, \xe2\x80\x9cIs it true, Doctor, that you\nchanged medical records to show less vision than your\npatients actually have? We\xe2\x80\x99ve been told, Doctor, that you\xe2\x80\x99ve\nchanged the glare machine so we have a different reading.\nIs that correct? Doctor, why won\xe2\x80\x99t you respond to the\nquestions?\xe2\x80\x9d\nThe plaintiffs\xe2\x80\x99 claims fall into two distinct classes. The first\narises from the broadcast itself, the second from the means\nby which ABC and Entine obtained the information that\nthey used in the broadcast. The first is a class of one. The\nbroadcast is alleged to have defamed the three plaintiffs by\ncharging that the glare machine is tampered with. No other\naspect of the broadcast is claimed to be tortious. The\ndefendants used excerpts from the Desnick videotape in\nthe broadcast, and the plaintiffs say that this was done\nwithout Dr. Desnick\xe2\x80\x99s permission. But they do not claim\nthat in showing the videotape without authorization the\ndefendants infringed copyright, cast the plaintiffs in a false\nlight, or otherwise invaded a right, although they do claim\nthat the defendants had obtained the videotape fraudulently\n(a claim in the second class). And they do not claim that\nany of the other charges in the broadcast that are critical of\nthem, such as that they perform unnecessary surgery or that\nDr. Desnick tampers with patients\xe2\x80\x99 medical records, are\nfalse.\nWe begin with the charge of defamation, which the parties\nagree is governed by Illinois law. [The court held that this\ncause of action could not be dismissed at this stage of\nlitigation.]\nThe second class of claims in this case concerns, as we said,\nthe methods that the defendants used to create the\nbroadcast segment. There are four such claims: that the\ndefendants committed a trespass in insinuating the test\npatients into the Wisconsin and Indiana offices of the\n\n72\n\n\x0cDesnick Eye Center, that they invaded the right of privacy\nof the Center and its doctors at those offices (specifically\nGlazer and Simon), that they violated federal and state\nstatutes regulating electronic surveillance, and that they\ncommitted fraud by gaining access to the Chicago office by\nmeans of a false promise that they would present a \xe2\x80\x9cfair\nand balanced\xe2\x80\x9d picture of the Center\xe2\x80\x99s operations and would\nnot use \xe2\x80\x9cambush\xe2\x80\x9d interviews or undercover surveillance.\nTo enter upon another\xe2\x80\x99s land without consent is a trespass.\nThe force of this rule has, it is true, been diluted somewhat\nby concepts of privilege and of implied consent. But there\nis no journalists\xe2\x80\x99 privilege to trespass. Prahl v. Brosamle, 98\nWis.2d 130, 295 N.W.2d 768, 780-81 (App.1980); Le\nMistral, Inc. v. Columbia Broadcasting System, 61 A.D.2d 491,\n402 N.Y.S.2d 815 (1978). And there can be no implied\nconsent in any nonfictitious sense of the term when express\nconsent is procured by a misrepresentation or a misleading\nomission. The Desnick Eye Center would not have agreed\nto the entry of the test patients into its offices had it known\nthey wanted eye examinations only in order to gather\nmaterial for a television expose of the Center and that they\nwere going to make secret videotapes of the examinations.\nYet some cases, illustrated by Martin v. Fidelity & Casualty\nCo., 421 So.2d 109, 111 (Ala.1982), deem consent effective\neven though it was procured by fraud. There must be\nsomething to this surprising result. Without it a restaurant\ncritic could not conceal his identity when he ordered a\nmeal, or a browser pretend to be interested in merchandise\nthat he could not afford to buy. Dinner guests would be\ntrespassers if they were false friends who never would have\nbeen invited had the host known their true character, and a\nconsumer who in an effort to bargain down an automobile\ndealer falsely claimed to be able to buy the same car\nelsewhere at a lower price would be a trespasser in the\ndealer\xe2\x80\x99s showroom. Some of these might be classified as\nprivileged trespasses, designed to promote competition.\n\n73\n\n\x0cOthers might be thought justified by some kind of implied\nconsent\xe2\x80\x93the restaurant critic for example might point by\nway of analogy to the use of the \xe2\x80\x9cfair use\xe2\x80\x9d defense by book\nreviewers charged with copyright infringement and argue\nthat the restaurant industry as a whole would be injured if\nrestaurants could exclude critics. But most such efforts at\nrationalization would be little better than evasions. The fact\nis that consent to an entry is often given legal effect even\nthough the entrant has intentions that if known to the\nowner of the property would cause him for perfectly\nunderstandable and generally ethical or at least lawful\nreasons to revoke his consent.\nThe law\xe2\x80\x99s willingness to give effect to consent procured by\nfraud is not limited to the tort of trespass. The Restatement\ngives the example of a man who obtains consent to sexual\nintercourse by promising a woman $100, yet (unbeknownst\nto her, of course) he pays her with a counterfeit bill and\nintended to do so from the start. The man is not guilty of\nbattery, even though unconsented-to sexual intercourse is a\nbattery. Restatement (Second) of Torts Sec. 892B,\nillustration 9, pp. 373-74 (1979). Yet we know that to\nconceal the fact that one has a venereal disease transforms\n\xe2\x80\x9cconsensual\xe2\x80\x9d intercourse into battery. Crowell v. Crowell, 180\nN.C. 516, 105 S.E. 206 (1920). Seduction, standardly\neffected by false promises of love, is not rape, Pletnikoff v.\nState, 719 P.2d 1039, 1043 (Alaska App.1986); intercourse\nunder the pretense of rendering medical or psychiatric\ntreatment is, at least in most states. Compare State v. Tizard,\n1994 WL 630498, * 8-10 (Tenn.Crim.App. Nov. 10, 1994),\nwith Boro v. Superior Court, 163 Cal.App.3d 1224, 210\nCal.Rptr. 122 (1985). It certainly is battery. Bowman v. Home\nLife Ins. Co., 243 F.2d 331 (3d Cir.1957); Commonwealth v.\nGregory, 132 Pa.Super. 507, 1 A.2d 501 (1938). Trespass\npresents close parallels. If a homeowner opens his door to\na purported meter reader who is in fact nothing of the\nsort\xe2\x80\x93just a busybody curious about the interior of the\n\n74\n\n\x0chome\xe2\x80\x93the homeowner\xe2\x80\x99s consent to his entry is not a\ndefense to a suit for trespass. See State v. Donahue, 93\nOr.App. 341, 762 P.2d 1022, 1025 (1988); Bouillon v. Laclede\nGaslight Co., 148 Mo.App. 462, 129 S.W. 401, 402 (1910).\nAnd likewise if a competitor gained entry to a business\nfirm\xe2\x80\x99s premises posing as a customer but in fact hoping to\nsteal the firm\xe2\x80\x99s trade secrets. Rockwell Graphic Systems, Inc. v.\nDEV Industries, Inc., 925 F.2d 174, 178 (7th Cir.1991); E.I.\nduPont deNemours & Co. v. Christopher, 431 F.2d 1012, 1014\n(5th Cir.1970).\nHow to distinguish the two classes of case\xe2\x80\x93the seducer\nfrom the medical impersonator, the restaurant critic from\nthe meter-reader impersonator? The answer can have\nnothing to do with fraud; there is fraud in all the cases. It\nhas to do with the interest that the torts in question, battery\nand trespass, protect. The one protects the inviolability of\nthe person, the other the inviolability of the person\xe2\x80\x99s\nproperty. The woman who is seduced wants to have sex\nwith her seducer, and the restaurant owner wants to have\ncustomers. The woman who is victimized by the medical\nimpersonator has no desire to have sex with her doctor; she\nwants medical treatment. And the homeowner victimized\nby the phony meter reader does not want strangers in his\nhouse unless they have authorized service functions. The\ndealer\xe2\x80\x99s objection to the customer who claims falsely to\nhave a lower price from a competing dealer is not to the\nphysical presence of the customer, but to the fraud that he\nis trying to perpetuate. The lines are not bright\xe2\x80\x93they are not\neven inevitable. They are the traces of the old forms of\naction, which have resulted in a multitude of artificial\ndistinctions in modern law. But that is nothing new.\nThere was no invasion in the present case of any of the\nspecific interests that the tort of trespass seeks to protect.\nThe test patients entered offices that were open to anyone\nexpressing a desire for ophthalmic services and videotaped\nphysicians engaged in professional, not personal,\n\n75\n\n\x0ccommunications with strangers (the testers themselves).\nThe activities of the offices were not disrupted, as in People\nv. Segal, 78 Misc.2d 944, 358 N.Y.S.2d 866 (Crim.Ct.1974),\nanother case of gaining entry by false pretenses. See also Le\nMistral, Inc. v. Columbia Broadcasting System, supra, 402\nN.Y.S.2d at 81 n. 1. Nor was there any \xe2\x80\x9cinva[sion of] a\nperson\xe2\x80\x99s private space,\xe2\x80\x9d Haynes v. Alfred A. Knopf, Inc., supra,\n8 F.3d at 1229, as in our hypothetical meter-reader case, as\nin the famous case of De May v. Roberts, 46 Mich. 160, 9\nN.W. 146 (1881) (where a doctor, called to the plaintiff\xe2\x80\x99s\nhome to deliver her baby, brought along with him a friend\nwho was curious to see a birth but was not a medical\ndoctor, and represented the friend to be his medical\nassistant), as in one of its numerous modern counterparts,\nMiller v. National Broadcasting Co., 187 Cal.App.3d 1463, 232\nCal.Rptr. 668, 679 (1986), and as in Dietemann v. Time, Inc.,\n449 F.2d 245 (9th Cir.1971), on which the plaintiffs in our\ncase rely. Dietemann involved a home. True, the portion\ninvaded was an office, where the plaintiff performed quack\nhealing of nonexistent ailments. The parallel to this case is\nplain enough, but there is a difference. Dietemann was not\nin business, and did not advertise his services or charge for\nthem. His quackery was private.\nNo embarrassingly intimate details of anybody\xe2\x80\x99s life were\npublicized in the present case. There was no eavesdropping\non a private conversation; the testers recorded their own\nconversations with the Desnick Eye Center\xe2\x80\x99s physicians.\nThere was no violation of the doctor-patient privilege.\nThere was no theft, or intent to steal, trade secrets; no\ndisruption of decorum, of peace and quiet; no noisy or\ndistracting demonstrations. Had the testers been\nundercover FBI agents, there would have been no violation\nof the Fourth Amendment, because there would have been\nno invasion of a legally protected interest in property or\nprivacy. United States v. White, 401 U.S. 745, 91 S.Ct. 1122,\n28 L.Ed.2d 453 (1971); Lewis v. United States, 385 U.S. 206,\n\n76\n\n\x0c211, 87 S.Ct. 424, 427-28, 17 L.Ed.2d 312 (1966); Forster v.\nCounty of Santa Barbara, 896 F.2d 1146, 1148-49 (9th\nCir.1990); Northside Realty Associates, Inc. v. United States, 605\nF.2d 1348, 1355 (5th Cir.1979). \xe2\x80\x9cTesters\xe2\x80\x9d who pose as\nprospective home buyers in order to gather evidence of\nhousing discrimination are not trespassers even if they are\nprivate persons not acting under color of law. Cf. id. at\n1355. The situation of the defendants\xe2\x80\x99 \xe2\x80\x9ctesters\xe2\x80\x9d is\nanalogous. Like testers seeking evidence of violation of\nanti-discrimination laws, the defendants\xe2\x80\x99 test patients\ngained entry into the plaintiffs\xe2\x80\x99 premises by misrepresenting\ntheir purposes (more precisely by a misleading omission to\ndisclose those purposes). But the entry was not invasive in\nthe sense of infringing the kind of interest of the plaintiffs\nthat the law of trespass protects; it was not an interference\nwith the ownership or possession of land. We need not\nconsider what if any difference it would make if the\nplaintiffs had festooned the premises with signs forbidding\nthe entry of testers or other snoops. Perhaps none, see\nUnited States v. Centennial Builders, Inc., 747 F.2d 678, 683\n(11th Cir.1984), but that is an issue for another day.\nWhat we have said largely disposes of two other claims\xe2\x80\x93\ninfringement of the right of privacy, and illegal wiretapping.\n[These claims were dismissed.]\nLast is the charge of fraud in the defendants\xe2\x80\x99 gaining entry\nto the Chicago office and being permitted while there to\ninterview staff and film a cataract operation, and in their\nobtaining the Desnick Eye Center\xe2\x80\x99s informational\nvideotape. [This claim was also dismissed.]\n\xe2\x80\xa6.\nAFFIRMED IN PART, REVERSED IN PART, AND\nREMANDED.\n\n77\n\n\x0c1.3 Nuisance\n1.3.1. Defined\nFountainebleau v. Forty-Five Twenty-Five, 114 So. 2d\n357 (Ct. App. Fl., 3d Dist., 1959)\nSibley, Grusmark, Barkdull & King, Miami Beach, for\nappellants.\nAnderson & Nadeau, Miami, for appellee.\nPER CURIAM\nThis is an interlocutory appeal from an order temporarily\nenjoining the appellants from continuing with the\nconstruction of a fourteen-story addition to the\nFontainebleau Hotel, owned and operated by the\nappellants. Appellee, plaintiff below, owns the Eden Roc\nHotel, which was constructed in 1955, about a year after\nthe Fontainebleau, and adjoins the Fontainebleau on the\nnorth. Both are luxury hotels, facing the Atlantic Ocean.\nThe proposed addition to the Fontainebleau is being\nconstructed twenty feet from its north property line, 130\nfeet from the mean high water mark of the Atlantic Ocean,\nand 76 feet 8 inches from the ocean bulkhead line. The 14story tower will extend 160 feet above grade in height and\nis 416 feet long from east to west. During the winter\nmonths, from around two o\xe2\x80\x99clock in the afternoon for the\nremainder of the day, the shadow of the addition will\nextend over the cabana, swimming pool, and sunbathing\nareas of the Eden Roc, which are located in the southern\nportion of its property.\nIn this action, plaintiff-appellee sought to enjoin the\ndefendants-appellants from proceeding with the\nconstruction of the addition to the Fontainebleau (it\nappears to have been roughly eight stories high at the time\nsuit was filed), alleging that the construction would\ninterfere with the light and air on the beach in front of the\nEden Roc and cast a shadow of such size as to render the\n\n78\n\n\x0cbeach wholly unfitted for the use and enjoyment of its\nguests, to the irreparable injury of the plaintiff; further, that\nthe construction of such addition on the north side of\ndefendants\xe2\x80\x99 property, rather than the south side, was\nactuated by malice and ill will on the part of the defendants\xe2\x80\x99\npresident toward the plaintiff\xe2\x80\x99s president; and that the\nconstruction was in violation of a building ordinance\nrequiring a 100-foot setback from the ocean. It was also\nalleged that the construction would interfere with the\neasements of light and air enjoyed by plaintiff and its\npredecessors in title for more than twenty years and\n\xe2\x80\x9cimpliedly granted by virtue of the acts of the plaintiff\xe2\x80\x99s\npredecessors in title, as well as under the common law and\nthe express recognition of such rights by virtue of Chapter\n9837, Laws of Florida 1923 * * *.\xe2\x80\x9d Some attempt was also\nmade to allege an easement by implication in favor of the\nplaintiff\xe2\x80\x99s property, as the dominant, and against the\ndefendants\xe2\x80\x99 property, as the servient, tenement.\nThe defendants\xe2\x80\x99 answer denied the material allegations of\nthe complaint, pleaded laches and estoppel by judgment.\nThe chancellor heard considerable testimony on the issues\nmade by the complaint and the answer and, as noted,\nentered a temporary injunction restraining the defendants\nfrom continuing with the construction of the addition. His\nreason for so doing was stated by him, in a memorandum\nopinion, as follows:\nIn granting the temporary injunction in\nthis case the Court wishes to make\nseveral things very clear. The ruling is\nnot based on any alleged presumptive\ntitle nor prescriptive right of the\nplaintiff to light and air nor is it based\non any deed restrictions nor recorded\nplats in the title of the plaintiff nor of\nthe defendant nor of any plat of\nrecord. It is not based on any zoning\n\n79\n\n\x0cordinance nor on any provision of the\nbuilding code of the City of Miami\nBeach nor on the decision of any\ncourt, nisi prius or appellate. It is\nbased solely on the proposition that no\none has a right to use his property to\nthe injury of another. In this case it is\nclear from the evidence that the\nproposed use by the Fontainebleau will\nmaterially damage the Eden Roc.\nThere is evidence indicating that the\nconstruction of the proposed annex by\nthe Fontainebleau is malicious or\ndeliberate for the purpose of injuring\nthe Eden Roc, but it is scarcely\nsufficient, standing alone, to afford a\nbasis for equitable relief.\nThis is indeed a novel application of the maxim sic utere tuo\nut alienum non laedas. This maxim does not mean that one\nmust never use his own property in such a way as to do any\ninjury to his neighbor. It means only that one must use his\nproperty so as not to injure the lawful rights of another. In\nReaver v. Martin Theatres, under this maxim, it was stated that\n\xe2\x80\x9cit is well settled that a property owner may put his own\nproperty to any reasonable and lawful use, so long as he\ndoes not thereby deprive the adjoining landowner of any\nright of enjoyment of his property which is recognized and\nprotected by law, and so long as his use is not such a one as the law\nwill pronounce a nuisance.\xe2\x80\x9d [Emphasis supplied.]\nNo American decision has been cited, and independent\nresearch has revealed none, in which it has been held that in the absence of some contractual or statutory obligation a landowner has a legal right to the free flow of light and air\nacross the adjoining land of his neighbor. Even at common\nlaw, the landowner had no legal right, in the absence of an\neasement or uninterrupted use and enjoyment for a period\nof 20 years, to unobstructed light and air from the\n\n80\n\n\x0cadjoining land. And the English doctrine of \xe2\x80\x9cancient lights\xe2\x80\x9d\nhas been unanimously repudiated in this country.\nThere being, then, no legal right to the free flow of light\nand air from the adjoining land, it is universally held that\nwhere a structure serves a useful and beneficial purpose, it\ndoes not give rise to a cause of action, either for damages\nor for an injunction under the maxim sic utere tuo ut alienum\nnon laedas, even though it causes injury to another by cutting\noff the light and air and interfering with the view that\nwould otherwise be available over adjoining land in its\nnatural state, regardless of the fact that the structure may\nhave been erected partly for spite.\nWe see no reason for departing from this universal rule. If,\nas contended on behalf of plaintiff, public policy demands\nthat a landowner in the Miami Beach area refrain from\nconstructing buildings on his premises that will cast a\nshadow on the adjoining premises, an amendment of its\ncomprehensive planning and zoning ordinance, applicable\nto the public as a whole, is the means by which such\npurpose should be achieved. (No opinion is expressed here\nas to the validity of such an ordinance, if one should be\nenacted pursuant to the requirements of law.) But to\nchange the universal rule - and the custom followed in this\nstate since its inception - that adjoining landowners have an\nequal right under the law to build to the line of their\nrespective tracts and to such a height as is desired by them\n(in in absence, of course, of building restrictions or\nregulations) amounts, in our opinion, to judicial legislation.\nAs stated in Musumeci v. Leonardo, \xe2\x80\x9cSo use your own as not\nto injure another\xe2\x80\x99s property is, indeed, a sound and salutary\nprinciple for the promotion of justice, but it may not and\nshould not be applied so as gratuitously to confer upon an\nadjacent property owner incorporeal rights incidental to his\nownership of land which the law does not sanction.\xe2\x80\x9d\nWe have also considered whether the order here reviewed\nmay be sustained upon any other reasoning, conformable\n\n81\n\n\x0cto and consistent with the pleadings, regardless of the\nerroneous reasoning upon which the order was actually\nbased. We have concluded that it cannot.\nThe record affirmatively shows that no statutory basis for\nthe right sought to be enforced by plaintiff exists. The socalled Shadow Ordinance enacted by the City of Miami\nBeach at plaintiff\xe2\x80\x99s behest was held invalid in City of Miami\nBeach v. State ex rel. Fontainebleau Hotel Corp. It also\naffirmatively appears that there is no possible basis for\nholding that plaintiff has an easement for light and air,\neither express or implied, across defendants\xe2\x80\x99 property, nor\nany prescriptive right thereto - even if it be assumed,\narguendo, that the common-law right of prescription as to\n\xe2\x80\x9cancient lights\xe2\x80\x9d is in effect in this state. And from what we\nhave said heretofore in this opinion, it is perhaps\nsuperfluous to add that we have no desire to dissent from\nthe unanimous holding in this country repudiating the\nEnglish doctrine of ancient lights.\n\xe2\x80\xa6.\nSince it affirmatively appears that the plaintiff has not\nestablished a cause of action against the defendants by\nreason of the structure here in question, the order granting\na temporary injunction should be and it is hereby reversed\nwith directions to dismiss the complaint.\nReversed with directions.\n[Author\'s\nNote:\nGo\nto: http://www.concurringopinions.com/archives\n/2005/11/what_next_googl.html for several pictures of the hotels\nand extension.]\nAdams v. Cleveland-Cliffs Iron Co., 602 N.W.2d 215\n(Mich. Ct. App. 1999).\nBridges and Bridges (by Caroline Bridges), Negaunee, for\nthe plaintiffs.\n\n82\n\n\x0cButzel Long (by John H. Dudley, Jr. and Ronald E.\nReynolds), Detroit, and Richard M. Graybill, Ishpeming,\nfor the defendants.\nBefore: WHITBECK,\nO\xe2\x80\x99CONNELL, JJ.\n\nP.J.,\n\nand\n\nMARKMAN\n\nand\n\nO\'CONNELL, J.\nDefendants appeal as of right from a jury verdict awarding\ndamages in trespass for invasions of plaintiffs\xe2\x80\x99 property by\nintrusions of dust, noise, and vibrations. The gravamen of\nthis appeal presents the question whether Michigan\nrecognizes a cause of action in trespass stemming from\ninvasions of these intangible agents. No published decision\nof an appellate court of this state is directly on point.\nBecause of the importance of this issue of first impression,\nwe will expound on it in some detail. Following a recitation\nof facts, we will examine the origins of the doctrines of\ntrespass to land and nuisance, observe recent developments\nof those doctrines in this and other jurisdictions, and then\nreaffirm for this state the traditional requirements for a\ncause of action in trespass.\nWe conclude that the law of trespass in Michigan does not\ncover airborne particulate, noise, or vibrations, and that a\ncomplaint alleging damages resulting from these irritants\nnormally sounds instead in nuisance.1\nI. Facts\nPlaintiffs brought suit seeking damages in both trespass and\nnuisance, complaining of dust, noise, and vibrations\nemanating from the Empire Mine, which is operated by\ndefendant Cleveland-Cliffs Iron Company and its\nsubsidiary, defendant Empire Iron Mining Partnership.\n\nThis Court has noted before that \xe2\x80\x9cclaims of trespass and nuisance are difficult to\ndistinguish and include overlapping concepts.\xe2\x80\x9d Traver Lakes Community\nMaintenance Ass\xe2\x80\x99n v. Douglas Co., 224 Mich.App. 335, 344, 568 N.W.2d 847\n(1997).\n1\n\n83\n\n\x0cThe Empire Mine is one of the nation\xe2\x80\x99s largest mines,\nproducing eight million tons of iron ore annually. The mine\noperates twenty-four hours a day, year round. At the time\nthis action was commenced, all but three plaintiffs lived\nnear the mine, in the village of Palmer in Marquette\nCounty. Cleveland-Cliffs, which also operates the nearby\nTilden Mine, employs approximately 2,200 persons, making\nit the area\xe2\x80\x99s largest civilian employer.\nThe Empire Mine was originally dug in the 1870s, then\nexpanded in the 1960s. A second pit was added in 1987,\nand a third in 1990-91.2 The mine engages in blasting\noperations approximately three times a week, year round,\nand the extraction and processing of the iron ore generates\na great deal of airborne dust. Plaintiffs complain that the\nblasting sends tremors through their property and that\ndefendants\xe2\x80\x99 dust constantly accumulates inside and outside\nplaintiffs\xe2\x80\x99 homes. Plaintiffs assert that these emanations\naggravate their need to clean and repaint their homes,\nreplace carpets and drapes, repair cracks in all masonry,\nreplace windows, and tend to cause plumbing leaks and\nbroken sewer pipes.\nAccording to the testimony, the dust from the mine is fine,\ngritty, oily, and difficult to clean. Some plaintiffs\ncomplained that they seldom opened their windows\nbecause of the dust, and virtually every plaintiff complained\nthat the snow in Palmer tended to be gray or black.\nEvidence presented at trial indicates that the emissions\nfrom the mining operations have consistently remained\nwithin applicable air-quality standards and that the amount\nof particulate matter accumulating over Palmer each month\n\nWith each expansion, surface material, also called \xe2\x80\x9coverburden,\xe2\x80\x9d consisting of\nsoil, subsoil, and rock was blasted loose then stockpiled at the edge of the mine\nproperty. As the mine was dug deeper, waste rock was likewise blasted loose and\nstockpiled. The resulting mass of overburden and waste rock is unsightly and so\nlarge that residents of Palmer have nicknamed it \xe2\x80\x9cMt. Palmer\xe2\x80\x9d and say that it\ncauses their town to have early sunsets.\n2\n\n84\n\n\x0camounts to less than the thickness of a sheet of paper, but\nthat this amount is nonetheless four times greater than\nwhat normally settles onto surrounding communities.\nIn addition to concerns about the dust, many plaintiffs\ntestified that the noise and vibrations from the blasts\ncaused them to suffer shock, nervousness, and\nsleeplessness. Finally, several plaintiffs asserted that these\nconditions diminished the value of their homes, in some\ncases to the point of rendering them unmarketable.\nAt the close of proofs, the trial court instructed the jury\nconcerning both trespass and nuisance. The jury found that\nthree of the plaintiffs were not entitled to recover under\neither theory. Concerning the remaining fifty-two plaintiffs,\nhowever, the jury was unable to agree on a verdict\nregarding the nuisance claim, but returned a verdict in favor\nof these plaintiffs with regard to the trespass claim,\nawarding damages totaling $599,199. The court denied\ndefendants\xe2\x80\x99 posttrial motions for a new trial or judgment\nnotwithstanding the verdict.\nThe sole issue that defendants raise on appeal is the\npropriety of the trial court\xe2\x80\x99s jury instruction concerning\nplaintiffs\xe2\x80\x99 trespass claim:\nEvery unauthorized intrusion onto the\nlands of another is a trespass upon\nthose lands, and it gives rise to a right\nto recover damages for the trespass, if\nany damages were caused by the\ntrespass. So a landowner who causes\nemissions, dust, vibration, noise from\nhis property onto another [sic]\nproperty assumes the risk of trespass,\nif the dust, vibration, noise affects the\nneighbor\xe2\x80\x99s property, or if he causes by\nhis actions, damages or invasion of his\nneighbor\xe2\x80\x99s land.\n\n85\n\n\x0cSo again, to repeat. A trespass is an unauthorized intrusion\ninto the lands of another.\nDefendants did not object on the record that the trial\ncourt\xe2\x80\x99s instruction improperly recognized a cause of action\nin trespass where the intrusion complained of consisted of\nairborne particulate, noise, or vibrations, nor did they\ninitially frame their issue on appeal that way. Nonetheless,\nin the interests of justice,3 and because the issue concerns a\nquestion of law and all the facts necessary for its resolution\nhave been presented,4 we will examine the related doctrines\nof trespass and nuisance and will determine how they bear\non the intrusions at issue in this case. See Frericks v.\nHighland Twp., 228 Mich.App. 575, 586, 579 N.W.2d 441\n(1998) (\xe2\x80\x9cthis Court may go beyond the issues raised on\nappeal and address issues that, in this Court\xe2\x80\x99s opinion,\njustice requires be considered and resolved\xe2\x80\x9d).5\nII. Trespass and Nuisance\nThe general concept of \xe2\x80\x9cproperty\xe2\x80\x9d comprises various\nrights-a \xe2\x80\x9cbundle of sticks,\xe2\x80\x9d as it is often called6 -which is\nusually understood to include \xe2\x80\x9c[t]he exclusive right of\npossessing, enjoying, and disposing of a thing.\xe2\x80\x9d Black\xe2\x80\x99s Law\nDictionary (6th ed., 1990), p. 1216. As this latter\ncharacterization suggests, the right to exclude others from\none\xe2\x80\x99s land and the right to quiet enjoyment of one\xe2\x80\x99s land\nhave customarily been regarded as separate sticks in the\n\n3\n\nSee Phinney v. Perlmutter, 222 Mich.App. 513, 557, 564 N.W.2d 532 (1997).\n\nSee Providence Hosp. v. Nat\xe2\x80\x99l Labor Union Health & Welfare Fund, 162\nMich.App. 191, 194-195, 412 N.W.2d 690 (1987).\n4\n\nBefore oral argument, this Court ordered, and the parties provided,\nsupplemental briefs addressing the issue, \xe2\x80\x9cshoulddoes Michigan recognize a cause\nof action in trespass for airborne particulate matter andor blastings.\xe2\x80\x9d\n5\n\nSome attribute the origins of this metaphor to a work by Benjamin N. Cardozo,\ndating from shortly before he ascended to the United States Supreme Court. See\nCardozo, The Paradoxes of Legal Science, p. 129 (\xe2\x80\x9cThe bundle of power and\nprivileges to which we give the name of ownership is not constant through the\nages. The faggots must be put together and rebound from time to time.\xe2\x80\x9d).\n6\n\n86\n\n\x0cbundle. E.g., Lucas v. South Carolina Coastal Council, 505\nU.S. 1003, 1044, 112 S.Ct. 2886, 120 L.Ed.2d 798 (1992)\n(Blackmun, J., dissenting) (addressing as separate\n\xe2\x80\x9cattributes of ownership\xe2\x80\x9d the rights of exclusion,\nalienation, and enjoyment); Biggs v. Comm\xe2\x80\x99r of Internal\nRevenue, 632 F.2d 1171, 1177 (C.A.5, 1980) (\xe2\x80\x9d \xe2\x80\x98title to real\nproperty \xe2\x80\xa6 is nothing more than a bundle of potential\ncauses of action: for trespass, to quiet title, for interference\nwith quiet enjoyment, and so on,\xe2\x80\x99 \xe2\x80\x9d quoting Starker v.\nUnited States, 602 F.2d 1341, 1355 [C.A.9, 1979] );\nLivingston, Public Access to Virginia\xe2\x80\x99s Tidelands: A\nFramework for Analysis of Implied Dedications and Public\nPrescriptive Rights, 24 Wm & Mary L R 669, 698 (1983)\n(\xe2\x80\x9cThe notion of fee simple ownership carries with it the\nidea that the owner may exclude all others from his\nproperty, shall have the quiet enjoyment of it, and shall be\nfree from unrecorded conflicting interests in it.\xe2\x80\x9d), citing\nCribbet, Principles of the Law of Property (2d ed., 1975),\npp. 263-332.7 Thus, possessory rights to real property\n\nA.M. Honore likewise distinguished between the rights of exclusion and of use\nand enjoyment, listing the incidents of ownership as follows:\n7\n\n(1) the right to exclusive possession;\n(2) the right to personal use and enjoyment;\n(3) the right to manage use by others;\n(4) the right to the income from use by others;\n(5) the right to the capital value, including alienation, consumption, waste, or\ndestruction;\n(6) the right to security (that is, immunity from expropriation);\n(7) the power of transmissibility by gift, devise, or descent;\n(8) the lack of any term on these rights;\n(9) the duty to refrain from using the object in ways that harm others;\n(10) the liability to execution for repayment of debts; and\n(11) residual rights on the reversion of lapsed ownership rights held by others.\n\n87\n\n\x0cinclude as distinct interests the right to exclude and the\nright to enjoy, violations of which give rise to the distinct\ncauses of action respectively of trespass and nuisance.\nProsser & Keeton, Torts (5 th ed.), s 87, p. 622.\nA. Historical Overview\n\xe2\x80\x9cAt common law, trespass was a form of action brought to\nrecover damages for any injury to one\xe2\x80\x99s person or property\nor relationship with another.\xe2\x80\x9d Black\xe2\x80\x99s Law Dictionary (6th\ned.), p. 1502. This broad usage of the term \xe2\x80\x9ctrespass\xe2\x80\x9d then\ngave way to a narrower usage, referring to intrusions upon\na person\xe2\x80\x99s \xe2\x80\x9ctangible property, real or personal.\xe2\x80\x9d Prosser &\nKeeton, supra at s 13, p. 67. Today, the general concept of\n\xe2\x80\x9ctrespass\xe2\x80\x9d has been refined into several specific forms of\ntrespass, see Black\xe2\x80\x99s Law Dictionary (6th ed.), pp. 15021504, and related doctrines known by various names.\nLandowners seeking damages or equitable relief in response\nto violations of their possessory rights to land now\ngenerally proceed under the common-law derivatives of\nstrict liability, negligence, nuisance, or trespass to land.8 It is\nthe latter two products of this evolution from the general\nconcept of trespass that are at issue in the present case.\n\xe2\x80\x9d\xe2\x80\x98[T]respass is an invasion of the plaintiff\xe2\x80\x99s interest in the\nexclusive possession of his land, while nuisance is an\ninterference with his use and enjoyment of it.\xe2\x80\x99 \xe2\x80\x9d Hadfield v.\nOakland Co. Drain Comm\xe2\x80\x99r, 430 Mich. 139, 151, 422\nN.W.2d 205 (1988) (Brickley, J., joined by Riley, C.J., and\nCavanagh, J.), quoting Prosser & Keeton, supra at s 87, p.\n622. Historically, \xe2\x80\x9c[e]very unauthorized intrusion upon the\n\nHeller, The Tragedy of the Anticommons: Property in the Transition from Marx\nto Markets, 111 Harv L R 621, 663, n. 187 (1998), citing Honore, Ownership, in\nOxford Essays in Jurisprudence (A.G. Guest ed., 1961), pp. 107, 112-128\n(emphasis added).\nSee generally Keeton, Trespass, Nuisance, and Strict Liability, 59 Columbia L R\n457, 459 (1959).\n8\n\n88\n\n\x0cprivate premises of another is a trespass\xe2\x80\xa6.\xe2\x80\x9d Giddings v.\nRogalewski, 192 Mich. 319, 326, 158 N.W. 951 (1916).\nBecause a trespass violated a landholder\xe2\x80\x99s right to exclude\nothers from the premises, the landholder could recover at\nleast nominal damages even in the absence of proof of any\nother injury. Id. Recovery for nuisance, however,\ntraditionally required proof of actual and substantial injury.9\nFurther, the doctrine of nuisance customarily called for\nbalancing the disturbance complained of against the social\nutility of its cause.10\nTraditionally, trespass required that the invasion of the land\nbe direct or immediate and in the form of a physical,\ntangible object. See, e.g., Williams v. Oeder, 103 Ohio\nApp.3d 333, 338, n. 2, 659 N.E.2d 379 (1995) (noting then\nabandoning those traditional requirements); Davis v.\nGeorgia-Pacific Corp., 251 Or. 239, 242, 445 P.2d 481\n(1968) (abandoning the traditional requirements); Norwood\nv. Eastern Oregon Land Co., 139 Or. 25, 37, 5 P.2d 1057\n(1931), modified 139 Or. 25, 7 P.2d 996 (1932) (wrongful\ndiversion of water onto another\xe2\x80\x99s land does not constitute\ntrespass to land). Under these principles, recovery in\ntrespass for dust, smoke, noise, and vibrations was\ngenerally unavailable because they were not considered\ntangible or because they came to the land via some\nintervening force such as wind or water. Instead, claims\nconcerning these irritants were generally pursued under a\nnuisance theory.\nB. Recent Trends\n\nTo put it another way, \xe2\x80\x9cTrespass was liability-producing regardless of the degree\nof harm the invasion caused, while nuisance required substantial harm as a liability\nthreshold.\xe2\x80\x9d Halper, Untangling the Nuisance Knot,26 B C Envt\xe2\x80\x99l Aff L R 89, 121122 (1998), citing 4 Restatement Torts, 1st, ch. 40, p. 225.\n9\n\nSee Halper, supra at 122 (\xe2\x80\x9cthe Restatement (First) expected plaintiffs to bear\nuncompensated harms that might, for them, be quite severe, if the utility of the\ndefendant\xe2\x80\x99s conduct to society at large was great enough\xe2\x80\x9d).\n10\n\n89\n\n\x0cPlaintiffs urge this Court to hold that they are entitled to\nrecover in trespass for invasions of their premises by\nintangible things without regard for how these annoyances\ncame to their land. Plaintiffs would have us follow the\nexample of certain courts from other jurisdictions, which\nhave eliminated the traditional requirements for trespass of\na direct intrusion by a tangible object, directing the inquiry\ninstead toward the nature of the interest harmed. These\ncourts have permitted recovery in trespass for indirect,\nintangible invasions that nonetheless interfered with\nexclusive possessory interests in the land. See 75 Am Jur\n2d, Trespass, s 33, p. 33 and cases cited. See also Mercer v.\nRockwell Int\xe2\x80\x99l Corp., 24 F.Supp.2d 735, 743 (W.D.Ky.,\n1998) (allowing an action in \xe2\x80\x9cnegligent trespass\xe2\x80\x9d\nconcerning intrusions of invisible polychlorinated biphenyls\n[PCBs] that actually harm the property); Williams, supra\n(airborne particulate matter from a sand and gravel\nprocessing facility, an asphalt plant, and a concrete plant\nconstituted trespass); Martin v. Reynolds Metals Co., 221\nOr. 86, 342 P.2d 790 (1959) (trespass may stem from\nfluoride compounds in the form of gases and particles). We\nagree with the characterization of cases of this sort found\nin Prosser & Keeton as being \xe2\x80\x9cin reality, examples of the\ntort of private nuisance or liability for harm resulting from\nnegligence,\xe2\x80\x9d not proper trespass cases. Prosser & Keeton,\nsupra at s 13, pp. 71-72 (concerning \xe2\x80\x9cdecisions finding a\ntrespass constituted by the entry of invisible gases and\nmicroscopic particles, but only if harm results\xe2\x80\x9d).\nAccordingly, we decline plaintiffs\xe2\x80\x99 invitation to strip the\ntort of trespass to land of its distinctive accouterments and\ncommingle its identity with other causes of action.\nAs stated above, the traditional view of trespass required a\ndirect entry onto the land by a tangible object. However,\nrecent trends have led to an erosion of these requirements.\nSome courts have eliminated the requirement of a direct\nentry onto the land. E.g., Bradley v. American Smelting &\n\n90\n\n\x0cRefining Co., 104 Wash.2d 677, 686, 709 P.2d 782 (1985);\nBorland v. Sanders Lead Co., Inc., 369 So.2d 523, 527 (Ala.,\n1979); Martin, supra at 101, 342 P.2d 790 (observing the\ntrend without deciding whether to join it), citing Prosser,\nTorts (2d ed.), p. 56; 1 Restatement, Torts, s 158, comment\nh. Some courts have likewise eliminated the requirement of\na tangible object. E.g., Bradley, supra at 686, 709 P.2d 782;\nBorland, supra at 529. See also Martin, supra at 100, 342\nP.2d 790 (trespass to land may be accomplished by \xe2\x80\x9ca ray\nof light, by an atomic particle, or by a particulate of\nfluoride\xe2\x80\x9d). In some cases the direct-and-tangible inquiry has\nbeen supplanted by an inquiry into the force and energy of\nthe intruding agent. E.g., Bradley, supra at 687, 709 P.2d\n782; Borland, supra at 527; Martin, supra at 93, 342 P.2d\n790.\nThe courts that have deviated from the traditional\nrequirements of trespass, however, have consequently\nfound troublesome the traditional principle that at least\nnominal damages are presumed in cases of trespass. Thus,\nunder the so-called modern view of trespass, in order to\navoid subjecting manufacturing plants to potential liability\nto every landowner on whose parcel some incidental\nresidue of industrial activity might come to rest, these\ncourts have grafted onto the law of trespass a requirement\nof actual and substantial damages. Bradley, supra at 692,\n709 P.2d 782; Borland, supra at 529. See also Martin, supra\nat 96, 342 P.2d 790 (observing that \xe2\x80\x9c[t]here are adjudicated\ncases which have refused to find a trespass where the\nintrusion is clearly established but where the court has felt\nthat the possessor\xe2\x80\x99s interest should not be protected\xe2\x80\x9d).\nLogically following from a requirement of substantial\ndamages is the weighing of those damages against the social\nutility of the activity causing them. Martin, supra at 97, 342\nP.2d 790 (balancing \xe2\x80\x9cthe intrusion \xe2\x80\xa6 against the socially\ndesirable conduct of the defendant\xe2\x80\x9d). See also Bradley,\nsupra at 685, 709 P.2d 782 (\xe2\x80\x9cWhile the strict liability origins\n\n91\n\n\x0cof trespass encourage courts to eschew a balancing test in\nname, there is authority for denying injunctive relief if\ndefendant has exhausted his technological opportunities for\ncontrol\xe2\x80\xa6. Acknowledging technological or economic\njustifications for trespassory invasions does away with the\nhistorically harsh treatment of conduct interfering with\nanother\xe2\x80\x99s possessory interests.\xe2\x80\x9d).11\nWe do not welcome this redirection of trespass law toward\nnuisance law. The requirement that real and substantial\ndamages be proved, and balanced against the usefulness of\nthe offending activity, is appropriate where the issue is\ninterference with one\xe2\x80\x99s use or enjoyment of one\xe2\x80\x99s land;\napplying it where a landowner has had to endure an\nunauthorized physical occupation of the landowner\xe2\x80\x99s land,\nhowever, offends traditional principles of ownership. The\nlaw should not require a property owner to justify\nexercising the right to exclude. To countenance the erosion\nof presumed damages in cases of trespass is to endanger\nthe right of exclusion itself.\nTo summarize, the effects of recent trends in the law of\ntrespass have included eliminating the requirements of a\ndirect invasion by a tangible object, requiring proof of\nactual and substantial damages, and weighing the plaintiff\xe2\x80\x99s\ndamages against the social utility of the operation causing\nthem. This so-called \xe2\x80\x9cmodern view of trespass\xe2\x80\x9d appears,\nwith all its nuances and add-ons, merely to replicate\ntraditional nuisance doctrine as recognized in Michigan.\nIndeed, the trends recognized or advanced by Bradley,\nBorland, Martin, and their kindred spirits have conflated\nnuisance with trespass to the point of rendering it difficult\n\nWe are of the opinion that this kind of analysis is generally only required in a\nnuisance case and that it is better to preserve that aspect of traditional trespass\nanalysis requiring no proof of actual injury because the invasion of the plaintiff\xe2\x80\x99s\nright to exclude was regarded as tortious by itself.\n11\n\n92\n\n\x0cto delineate the difference between the two theories of\nrecovery.\nWith all of these modern adjustments to traditional trespass\nlaw, it is little wonder that it has become difficult to\ndifferentiate between trespass and nuisance. These\nadjustments have caused some to observe that \xe2\x80\x9d \xe2\x80\x98the line\nbetween trespass and nuisance has become \xe2\x80\x9cwavering and\nuncertain,\xe2\x80\x9d \xe2\x80\x99 \xe2\x80\x9d Bradley, supra at 684, 709 P.2d 782, quoting\nRodgers, Environmental Law, s 2.13, p. 154 (1977). See\nalso Burke v. Briggs, 239 N.J.Super. 269, 272, 571 A.2d 296\n(1990) (the blurring of the distinction between the two\ncauses of action \xe2\x80\x9chas often led to results that are difficult to\nexplain\xe2\x80\x9d), citing Prosser & Keeton, supra at s 87, p. 622.\nIndeed, \xe2\x80\x9cit is apparent that the law of trespass and the law\nof nuisance come very close to merging.\xe2\x80\x9d Martin, supra at\n97, 342 P.2d 790. We prefer to preserve the separate\nidentities of trespass and nuisance.\nC. Adkins v. Thomas Solvent Co.\nAs stated above, no Michigan appellate court has squarely\nconfronted the question whether the law of trespass in this\nstate covers intrusions of intangible things or intrusions\nthat are effected by indirect means. However, plaintiffs\nargue that in Adkins v. Thomas Solvent Co., 440 Mich.\n293, 487 N.W.2d 715 (1992), the Michigan Supreme Court\nimpliedly eliminated the requirements that a trespass\ninvolve intrusions that are both direct and tangible. We\ndisagree.\nIn Adkins, the plaintiffs sought damages in nuisance from\nthe defendant chemical company, on the ground that public\nperceptions to the effect that the defendant\xe2\x80\x99s activities were\ncausing environmental contamination of the groundwater\ncaused depreciation of their property values, id. at 300, 487\nN.W.2d 715, even though the plaintiffs acknowledged that\nthe defendant\xe2\x80\x99s activities in fact did not harm their\n\n93\n\n\x0cgroundwater, id. at 318, 487 N.W.2d 715. Our Supreme\nCourt ruled that summary disposition was proper because\nunfounded fears of contamination did not constitute a\nsignificant interference with plaintiffs\xe2\x80\x99 use and enjoyment\nof their property and, thus, did not rise to the level of an\nactionable private nuisance claim. Id. at 318-319, 487\nN.W.2d 715.\nIn discussing the historical development of nuisance law,\nthe Court observed that the doctrine of nuisance evolved\nfrom that of trespass, id. at 307-308, 487 N.W.2d 715, and\nrecognized that traditionally in cases of trespass damage\nwas presumed whereas in nuisance substantial damage had\nto be proved:\nAny intentional and unprivileged entry\non land is a trespass without a showing\nof damage, since those who own land\nhave an exclusive right to its use; but\nan act that interferes with use but is\nnot in itself a use is not actionable\nwithout damage. The substantial\ninterference requirement is to satisfy\nthe need for a showing that the land is\nreduced in value because of the\ndefendant\xe2\x80\x99s conduct.\nId. at 304-305, 487 N.W.2d 715, quoting Prosser & Keeton,\nsupra at s 87, p. 623.\nHowever, in footnote 23, the Court recognized the recent\ndevelopments in other jurisdictions under which the\nrequirement for nuisance of substantial damage had crept\ninto trespass:\nThe common-law development of\ntrespass, like nuisance, is \xe2\x80\xa6 illustrative\nof a need to limit recovery to a proper\ncase. In Bradley [supra at] 690-691 \xe2\x80\xa6,\n709 P.2d 782, the court discussed the\n\n94\n\n\x0cmodern view of trespass, which\nallowed recovery for indirect invasions\nof property such as those caused by\nsmoke or air particles. Airborne\nparticles might also give rise to an\naction in nuisance. To avoid\n\xe2\x80\x9csanctioning actions in trespass by\nevery landowner within a hundred\nmiles of a manufacturing plant,\xe2\x80\x9d the\ncourt interposed the actual and\nsubstantial damages requirement. Id.,\nat p. 692, 709 P.2d 782. The\nsubstantial\ninterference\ndoctrine\nachieves the same purpose in nuisance\nlaw.\nAdkins, supra at 310, n. 23, 487 N.W.2d 715.\nPlaintiffs admit that Adkins was a nuisance case, but argue\nthat by way of the language quoted immediately above our\nSupreme Court adopted the \xe2\x80\x9cmodern view of trespass\xe2\x80\x9d\nallowing recovery for invasions of property such as those\nof which plaintiffs complain. However, we do not regard\ndicta from Adkins in which the Supreme Court referred to\na sister-state trespass case to illustrate a point of law\nregarding nuisance as effecting a merger of the two\ndoctrines in this regard. We have in fact found no case in\nthis state in which recovery in trespass was allowed merely\nfor intrusions of particulate matter, noise, or vibrations, and\nwe decline to inflect this state\xe2\x80\x99s jurisprudence in that\ndirection. Instead, we prefer to respect the traditional\nrequirement of a direct invasion and agree with Prosser and\nKeeton, supra at s 13, p. 72, that \xe2\x80\x9c[t]he historical\nrequirement of an intrusion by a person or some tangible\nthing seems the sounder way to go about protecting the\nexclusive right to the use of property.\xe2\x80\x9d\nIII. Holding\n\n95\n\n\x0cRecovery for trespass to land in Michigan is available only\nupon proof of an unauthorized direct or immediate\nintrusion of a physical, tangible object onto land over\nwhich the plaintiff has a right of exclusive possession. Once\nsuch an intrusion is proved, the tort has been established,\nand the plaintiff is presumptively entitled to at least\nnominal damages. Where the possessor of land is menaced\nby noise, vibrations, or ambient dust, smoke, soot, or\nfumes, the possessory interest implicated is that of use and\nenjoyment, not exclusion, and the vehicle through which a\nplaintiff normally should seek a remedy is the doctrine of\nnuisance. To prevail in nuisance, a possessor of land must\nprove significant harm resulting from the defendant\xe2\x80\x99s\nunreasonable interference with the use or enjoyment of the\nproperty. Cloverleaf Car Co. v. Phillips Petroleum Co., 213\nMich.App. 186, 193, 540 N.W.2d 297 (1995), citing Adkins,\nsupra at 304, 487 N.W.2d 715. Thus, in nuisance, the\nplaintiff must prove all damages, which may be awarded\nonly to the extent that the defendant\xe2\x80\x99s conduct was\n\xe2\x80\x9cunreasonable\xe2\x80\x9d according to a public-policy assessment of\nits overall value. In the present case, because the intrusions\nof which plaintiffs complained were intangible things, the\ntrial court erred in allowing the jury to award damages in\ntrespass. Instead, any award of damages would have had to\nproceed from plaintiffs\xe2\x80\x99 alternative but (as yet) unsuccessful\ntheory of nuisance.\nAs discussed above, we acknowledge that numerous courts\nin other jurisdictions have permitted the erosion of the\ntraditional elements of the tort of trespass to land, directing\ntheir inquiry instead toward whether the invasion\ncomplained of interferes with the exclusive possession of\nthe land generally without regard to whether the intrusion\nis direct or indirect, tangible or intangible. We prefer to\nretain the traditional elements, however, because they serve\nas gatekeepers-safeguarding genuine claims of trespass and\nkeeping the line between the torts of trespass and nuisance\n\n96\n\n\x0cfrom fading into a \xe2\x80\x9cwavering and uncertain\xe2\x80\x9d ambiguity.\nFurther, retaining the distinction between the two theories\nof recovery limits the possibilities for dual liability\nstemming from the same conduct and results. See\nReynolds, Distinguishing Trespass and Nuisance: A\nJourney Through a Shifting Borderland, 44 Okla LR227,\n229 (1991).\nThe trial court\xe2\x80\x99s instruction regarding trespass, as set forth\nabove, recognized a right to recover in trespass \xe2\x80\x9cif any\ndamages were caused by the trespass\xe2\x80\x9d and that the agents\npotentially causing the damages included \xe2\x80\x9cemissions, dust,\nvibration, noise.\xe2\x80\x9d Thus the trial court seems to have\nmirrored (and indeed gone beyond) the so-called modern\nview of trespass according to which intangible irritants\ncould constitute trespass. This instruction thus erroneously\nconflated trespass with nuisance and produced the\nanomalous result that the jury failed to reach agreement on\nthe nuisance claim while awarding damages for intrusions\nof intangible things pursuant to the trespass claim.\nA. Tangible\nBecause noise or vibrations are clearly not tangible objects,\nwe hold that they cannot give rise to an action in trespass in\nthis state.12 We further hold that dust must generally be\nconsidered intangible and thus not actionable in trespass.\nWe realize, of course, that dust particles are tangible objects\nin a strict sense that they can be touched and are comprised\nof physical elements. However, we agree with those\nauthorities that have recognized, for practical purposes,\n\nThis holds even if the noise or vibrations are so intense as to shatter all glass\nand fell all masonry or otherwise so persistent as to drive all persons from the\npremises. Although such hazards would indeed infringe on a landowner\xe2\x80\x99s\npossessory interest, it is the interest in use and enjoyment of the premises, not in\nexclusion from them, and therefore the cause of action lies not in trespass, but in\nnuisance or the related doctrines of negligence or strict liability.\n12\n\n97\n\n\x0cthat dust, along with other forms of airborne particulate,\ndoes not normally present itself as a significant physical\nintrusion. See anno: Recovery in trespass for injury to land\ncaused by airborne pollutants, 2 A.L.R.4th 1054, 1055\n(\xe2\x80\x9c[t]raditionally, an invasion of the exclusive possession of\nland by intangible substances, such as an airborne pollutant,\nwas usually held by the court not to constitute a trespass\xe2\x80\x9d);\nWilliams, supra, 103 Ohio App.3d at 338, n. 2, 659 N.E.2d\n379 (observing that some courts have held that a \xe2\x80\x9d \xe2\x80\x98tangible\ninvasion\xe2\x80\x99 or \xe2\x80\x98object\xe2\x80\x99 \xe2\x80\x9d must be \xe2\x80\x9cmore substantial than dust,\ngas, or fumes\xe2\x80\x9d), citing Bradley, supra at 686, 709 P.2d 782.\nDust particles do not normally occupy the land on which\nthey settle in any meaningful sense; instead they simply\nbecome a part of the ambient circumstances of that space.\nIf the quantity and character of the dust are such as to\ndisturb the ambiance in ways that interfere substantially\nwith the plaintiff\xe2\x80\x99s use and enjoyment of the land, then\nrecovery in nuisance is possible.\nB. Direct\n\xe2\x80\x9c[S]ome courts have held that if an intervening force, such\nas wind or water, carries pollutants onto the plaintiff\xe2\x80\x99s land,\nthen the entry is not \xe2\x80\x98direct.\xe2\x80\x99\xe2\x80\x9d Williams, supra at 338, n. 2,\n659 N.E.2d 379, citing Bradley, supra at 686, 709 P.2d 782.\nHowever, in order to avoid harsh results most courts have\navoided an overly strict distinction between direct and\nindirect invasions, see Prosser & Keeton, supra at s 13, pp.\n68-69. Still, \xe2\x80\x9c[t]he differentiation between direct and\nindirect results may not be absolutely dead.\xe2\x80\x9d Id. at 71.13\nPlaintiffs cite Littell v. Knorr, 24 Mich.App. 446, 180\nN.W.2d 337 (1970), for the proposition that the law of\ntrespass in this state does not concern itself with whether\nSee also Reynolds, supra at 228 (\xe2\x80\x9cthe old element of trespass that prescribed a\ndirect invasion of the plaintiff\xe2\x80\x99s interests still has significance\xe2\x80\x9d [emphasis in\noriginal]).\n13\n\n98\n\n\x0cthe invading agent comes to the land by foot, vehicle, air,\nor other means. However, Littell in fact does not stand for\nthat proposition. Although Littell states that \xe2\x80\x9cliability can\nresult from pounding, compacting soil, vibrations, etc.,\xe2\x80\x9d id.\nat 450, 180 N.W.2d 337, that amorphous statement does\nnot identify the pertinent theory or theories of recovery.\nWe hold that the direct invasion requirement for an action\nin trespass to land is still alive in Michigan. The question\nthen becomes, how strong must the connection between\ncause and effect be in order to satisfy this requirement?14\nWe agree with the Restatement view that \xe2\x80\x9c[i]t is enough\nthat an act is done with knowledge that it will to a\nsubstantial certainty result in the entry of the foreign\nmatter.\xe2\x80\x9d 1 Restatement Torts, 2d, s 158, comment i, p. 279.\nThus, a \xe2\x80\x9cdirect or immediate\xe2\x80\x9d invasion for purposes of\ntrespass is one that is accomplished by any means that the\noffender knew or reasonably should have known would\nresult in the physical invasion of the plaintiff\xe2\x80\x99s land.15\nC. Damages\nThe question of presumed damages hardly seems at issue in\nthis case. There can be little doubt that plaintiffs proved\n\nBecause we conclude that no trespass existed in the present case because the\nintrusions at issue were not tangible things, we need not decide whether\ndefendants caused those intrusions to enter plaintiffs\xe2\x80\x99 land by direct or immediate\nmeans for purposes of trespass law.\n14\n\nWe note that the Restatement itself presents its rule as a departure from the\ntraditional requirement of a direct or immediate invasion. 1 Restatement Torts,\n2d, s 158, comment i, pp. 278-279 (\xe2\x80\x9cit is not necessary that the foreign matter\nshould be thrown directly and immediately upon the other\xe2\x80\x99s land\xe2\x80\x9d). We would,\nhowever, adopt the Restatement\xe2\x80\x99s formulation as a liberalization, not a rejection,\nof the strictest sense of the traditional requirement for a direct or immediate\ninvasion. Accordingly, rather than reject this traditional requirement, we preserve\nthis requirement as something akin to proximate cause, meaning \xe2\x80\x9cthat which, in a\nnatural and continuous sequence, unbroken by any efficient intervening cause,\nproduces the injury and without which the accident could not have happened, if\nthe injury be one which might be reasonably anticipated or foreseen.\xe2\x80\x9d Black\xe2\x80\x99s Law\nDictionary (6th ed.), p. 1225.\n15\n\n99\n\n\x0cactual damages to the jury\xe2\x80\x99s satisfaction, albeit, for reasons\nset forth above, damages arguably flowing from nuisance,\nnot trespass. Nonetheless, because the jury instruction at\nissue did not recognize the principle of presumed damages,\nwe take this opportunity to reiterate this final distinction\nbetween trespass and nuisance.\nThe trial court told the jury that \xe2\x80\x9ctrespass \xe2\x80\xa6 gives rise to a\nright to recover damages for the trespass, if any damages\nwere caused by the trespass.\xe2\x80\x9d This instruction would be\nappropriate for nuisance, or negligence, under which\ntheories the plaintiff must prove all damages, but not for\ntrespass. A jury instruction with respect to the latter should\nannounce that because the violation of the right to exclude\ncauses cognizable injury in and of itself, a plaintiff proving\nthat violation is presumptively entitled to at least nominal\ndamages. The jury should be further instructed that beyond\nthe presumed damages, the plaintiff may recover any\nadditional, actual damages proved.\nThe distinction between presumed damages in cases of\ntrespass and the need to prove damages in cases of\nnuisance may well be reconciled with the Supreme Court\xe2\x80\x99s\nstatement in footnote 23 of Adkins that recovery in\n\xe2\x80\x9ctrespass, like nuisance\xe2\x80\x9d should be limited \xe2\x80\x9cto a proper\ncase.\xe2\x80\x9d We hold that recovery in trespass is appropriate for\nany appreciable intrusion onto land in violation of the\nplaintiff\xe2\x80\x99s right to exclude, while recovery in nuisance is\nappropriate for only substantial and unreasonable\ninterference with the plaintiff\xe2\x80\x99s right to quiet enjoyment.\nIV. Conclusion\nThere is no need to reformulate the traditional law of\ntrespass to accommodate the problems of airborne\npollution, noise, or vibrations, because the doctrines of\nnuisance and related causes of action have always stood\nready to provide remedies. Trespass in Michigan remains a\ndistinct doctrine providing a remedy for violation of a\n\n100\n\n\x0cdistinct property right. A possessor of land proving a direct\nor immediate intrusion of a physical, tangible object onto\nthe land is presumptively entitled to recover at least\nnominal damages even absent any proof of actual injury\nand may recover additional damages for any injuries\nactually proved.\nBecause Michigan does not recognize a cause of action in\ntrespass for airborne particulate, noise, or vibrations, we\nhereby vacate the jury verdict in this matter and remand\nthis case to the trial court for further proceedings\nconsistent with this opinion. We do not retain jurisdiction.\nReversed and remanded. We do not retain jurisdiction.\n1.3.2. Law and Economics\nFrom A. Mitchell Polinsky and Steven Shavell, Economic\nAnalysis of Law, in The New Palgrave Dictionary of\nEconomics (2d ed.)\nEconomic analysis of law seeks to identify the effects of legal rules\non the behavior of relevant actors and whether these effects are\nsocially desirable. The approach employed is that of economic\nanalysis generally: the behavior of individuals and firms is described\nassuming that they are forward looking and rational, and the\nframework of welfare economics is adopted to assess the social\ndesirability of outcomes. The field may be said to have begun with\nBentham (1789), who systematically examined how actors would\nbehave in the face of legal incentives (especially criminal sanctions)\nand who evaluated outcomes with respect to a clearly stated\nmeasure of social welfare (utilitarianism). His work was left\nessentially undeveloped until four important contributions were\nmade: Coase (1960) on externalities and liability, Becker (1968) on\ncrime and law enforcement, Calabresi (1970) on accident law, and\nPosner (1972) on economic analysis of law in general.\n\xe2\x80\xa6.\n1. PROPERTY LAW.\n\xe2\x80\xa6.\n\n101\n\n\x0cExternalities. When individuals use property, they may cause\nexternalities, namely, harm or benefit to others. As a general\nmatter, it is socially desirable for individuals to do more than is in\ntheir self-interest to reduce detrimental externalities and to act so as\nto increase beneficial externalities. The socially optimal resolution\nof harmful externalities often involves the behavior of victims as\nwell as that of injurers. If victims can do things to reduce the\namount of harm more cheaply than injurers (say install air filters to\navoid pollution), it is optimal for victims to do so. Moreover,\nvictims can sometimes alter their locations to reduce their exposure\nto harm.\nLegal intervention can ameliorate problems of externalities. A\nmajor form of intervention that has been studied is direct regulation,\nunder which the state restricts permissible behavior, such as\nrequiring factories to use smoke arrestors. Closely related is the\ninjunction, whereby a potential victim can enlist the power of the\nstate to force a potential injurer to take steps to prevent harm or to\ncease his activity. Society can also make use of financial incentives\nto induce injurers to reduce harmful externalities. Under the\ncorrective tax, a party pays the state an amount equal to the expected\nharm he causes, for example, the expected harm due to a discharge\nof a pollutant into a lake. There is also liability, a privately-initiated\nmeans of providing financial incentives, under which injurers pay\nfor harm done if sued by victims. These methods differ in the\ninformation that the state needs to apply them, in whether they\nrequire or harness information that victims have about harm, and\nin other respects, such that each may be superior to the other in\ndifferent circumstances (Shavell, 1993).\nParties affected by externalities will sometimes have the\nopportunity to make mutually beneficial agreements with those\nwho generate the externalities, as Coase (1960) stressed. But\nbargaining may not occur for many reasons: cost; collective action\nproblems (such as when many victims each face small harms); and\nlack of knowledge of harm (such as from an invisible carcinogen).\nIf bargaining does occur, it may not be successful, owing to\nasymmetric information. These difficulties often make bargaining a\n\n102\n\n\x0cproblematic solution to externality problems and imply that liability\nrules are needed, as discussed by Calabresi and Melamed (1972).\n\xe2\x80\xa6.\n6. CRITICISM OF ECONOMIC ANALYSIS OF LAW.\nMany observers, and particularly noneconomists, view economic\nanalysis of law with skepticism. We consider several such criticisms\nhere.\nDescription of behavior. It is sometimes claimed that individuals and\nfirms do not respond to legal rules as rational maximizers of their\nwell-being. For example, it is often asserted that decisions to\ncommit crimes are not governed by economists\xe2\x80\x99 usual assumptions.\nSome skeptics also suggest that, in predicting individuals\xe2\x80\x99 behavior,\ncertain standard assumptions are inapplicable. For example, in\npredicting compliance with a law, the assumption that preferences\nbe taken as given would be inappropriate if a legal rule would\nchange people\xe2\x80\x99s preferences, as some say was the case with civil\nrights laws and environmental laws. In addition, laws may frame\nindividuals\xe2\x80\x99 understanding of problems, which could affect their\nprobability assessments or willingness to pay. The emerging field of\nbehavioral economics, as well as work in various disciplines that\naddress social norms, is beginning to examine these sorts of issues\n(Jolls et al., 1998).\nDistribution of income. A frequent criticism of economic analysis of\nlaw concerns its focus on efficiency, to the exclusion of the\ndistribution of income. The claim of critics is that legal rules should\nbe selected in a manner that takes into account their effects on the\nrich and the poor. But achieving sought-after redistribution\nthrough income tax and transfer programs tends to be superior to\nredistribution through the choice of legal rules. This is because\nredistribution through legal rules and the tax-transfer system both\nwill distort individuals\xe2\x80\x99 labor-leisure decisions in the same manner,\nbut redistribution through legal rules often will require choosing an\ninefficient rule, which imposes an additional cost (Shavell, 1981;\nKaplow and Shavell, 1994b).\n\n103\n\n\x0cMoreover, it is difficult to redistribute income systematically\nthrough the choice of legal rules: many individuals are never\ninvolved in litigation; and for those who are, there is substantial\nincome heterogeneity among plaintiffs as well as among\ndefendants. Additionally, in contractual contexts, the choice of a\nlegal rule often will not have any distributional effect because\ncontract terms, notably, the price, will adjust so that any agreement\ninto which parties enter will continue to reflect the initial\ndistribution of bargaining power between them.\nConcerns for fairness. An additional criticism is that the conventional\neconomic approach slights important concerns about fairness,\njustice, and rights. Some of these notions refer implicitly to the\nappropriateness of the distribution of income and, accordingly, are\nencompassed by our preceding remarks. Also, to some degree, the\nnotions are motivated by instrumental concerns. For example, the\nattraction of paying fair compensation to victims must derive in\npart from the beneficial risk reduction effected by such payments,\nand the appeal of obeying contractual promises must rest in part on\nthe desirable consequences contract performance has on\nproduction and exchange. To some extent, therefore, critics\xe2\x80\x99\nconcerns are already taken into account in standard economic\nanalysis.\nHowever, many who promote fairness, justice, and rights do not\nregard these notions merely as some sort of proxy for attaining\ninstrumental objectives. Instead, they believe that satisfying these\nnotions is intrinsically valuable. This view also can be partially\nreconciled with the economic conception of social welfare: if\nindividuals have a preference for a legal rule or institution because\nthey regard it as fair, that should be credited in the determination\nof social welfare, just as any preference should.\nBut many commentators take the position that conceptions of\nfairness are important as ethical principles in themselves, without\nregard to any possible relationship the principles may have to\nindividuals\xe2\x80\x99 welfare. This opinion is the subject of longstanding\ndebate among moral philosophers. Some readers may be skeptical\nof normative views that are not grounded in individuals\xe2\x80\x99 well-being\n\n104\n\n\x0cbecause embracing such views entails a willingness to sacrifice\nindividuals\xe2\x80\x99 well-being. Indeed, consistently pursuing any nonwelfarist principle must sometimes result in everyone being made\nworse off; see Kaplow and Shavell (2001, 2002).\nEfficiency of judge-made law. Also criticized is the contention of some\neconomically-oriented legal academics, notably Posner (1972), that\njudge-made law tends to be efficient (in contrast to legislation,\nwhich is said to reflect the influence of special interest groups).\nSome critics believe that judge-made law is guided by notions of\nfairness, or is influenced by legal culture or judges\xe2\x80\x99 biases, and thus\nwill not necessarily be efficient. Whatever is the merit of the critics\xe2\x80\x99\nclaims, they are descriptive assertions about the law, and their\nvalidity does not bear on the power of economics to predict\nbehavior in response to legal rules or on the value of normative\neconomic analysis of law.\nRonald H. Coase , The Problem of Social Cost, 3 J. of Law\nand Econ. 1 (1960) (excerpted)\nThis paper is concerned with those actions of business firms which\nhave harmful effects on others. The standard example is that of a\nfactory the smoke from which has harmful effects on those\noccupying neighboring properties.\n...\nThe traditional approach has tended to obscure the nature of the\nchoice that has to be made. The question is commonly thought of\nas one in which A inflicts harm on B and what has to be decided is:\nhow should we restrain A? But this is wrong. We are dealing with a\nproblem of a reciprocal nature. To avoid the harm to B would\ninflict harm on A. The real question that has to be decided is:\nshould A be allowed to harm B or should B be allowed to harm A?\nThe problem is to avoid the more serious harm. I instanced in my\nprevious article the case of a confectioner the noise and vibrations\nfrom whose machinery disturbed a doctor in his work. To avoid\nharming the doctor would inflict harm on the confectioner....\n...[Consider] the contamination of a stream. If we assume that the\nharmful effect of the pollution is that it kills the fish, the question\n\n105\n\n\x0cto be decided is: is the value of the fish lost greater or less than the\nvalue of the product which the contamination of the stream makes\npossible. It goes almost without saying that this problem has to be\nlooked at in total and at the margin.\nI propose to start my analysis by examining a case in which most\neconomists would presumably agree that the problem would be\nsolved in a completely satisfactory manner: when the damaging\nbusiness has to pay for all damage caused and the pricing system\nworks smoothly (strictly this means that the operation of a pricing\nsystem is without cost).\nA good example of the problem under discussion is afforded by\nthe case of straying cattle which destroy crops growing on\nneighboring land\xe2\x80\xa6 . . I shall assume \xe2\x80\xa6 that the price of the crop\nis $1 per ton. Also, I assume that the relation between the number\nof cattle in the herd and the annual crop loss is as follows:\nNumber in Annual Crop Marginal Crop\nHerd\nLoss (tons) Loss (tons)\n1\n\n1\n\n1\n\n2\n\n3\n\n2\n\n3\n\n6\n\n3\n\n4\n10\n4\nGiven that the cattle-raiser is liable for the damage caused, the\nadditional annual cost imposed on the cattle-raiser if he increased\nhis herd from, say, two to three steers is $3 and in deciding on the\nsize of the herd, he will take this into account along with his other\ncosts. That is, he will not increase the size of the herd unless the\nvalue of the additional meat produced (assuming that the cattleraiser slaughters the cattle) is greater than the additional costs that\nthis will entail, including the value of the additional crops\ndestroyed\xe2\x80\xa6\n...\n...Assume initially that the value of the crop obtained from\ncultivating a given tract of land is $12 and that the cost incurred in\n\n106\n\n\x0ccultivating this tract of land is $10, the net gain from cultivating the\nland being $2. I assume for purposes of simplicity that the farmer\nowns the land. Now assume that the cattle-raiser starts operations\non the neighboring property and that the value of the crops\ndamaged is $l. In this case $11 is obtained by the farmer from sale\non the market and $1 is obtained from the cattle-raiser for damage\nsuffered and the net gain remains $2.\nNow suppose that the cattle-raiser finds it profitable to increase the\nsize of his herd, even though the amount of damage rises to $3;\nwhich means that the value of the additional meat production is\ngreater than the additional costs, including the additional $2\npayment for damage. But the total payment for damage is now $3.\nThe net gain to the farmer from cultivating the land is still $2. The\ncattle-raiser would be better off if the farmer would agree not to\ncultivate his land for any payment less than $3. The farmer would\nbe agreeable to not cultivating the land for any payment greater\nthan $2. There is clearly room for a mutually satisfactory bargain\nwhich would lead to the abandonment of cultivation\xe2\x80\xa6 . .\n...\n...A procedure which merely provided for payment for damage to\nthe crop caused by the cattle but which did not allow for the\npossibility of cultivation being discontinued would result in too\nsmall an employment of factors of production in cattle-raising and\ntoo large an employment of factors in cultivation of the crop. But\ngiven the possibility of market transactions, a situation in which\ndamage to crops exceeded the rent of the land would not endure.\nWhether the cattle-raiser pays the farmer to leave the land\nuncultivated or himself rents the land by paying the land-owner an\namount slightly greater than the farmer would pay (if the farmer\nwas him-self renting the land), the final result would be the same\nand would maximize the value of production\xe2\x80\xa6 . .\n...\nI now turn to the case in which, although the pricing system is\nassumed to work smoothly (that is, costlessly), the damaging\nbusiness is not liable for any of the damage which it causes. This\n\n107\n\n\x0cbusiness does not have to make a payment to those damaged by its\nactions\xe2\x80\xa6 ....I return to the case of the farmer and the cattle-raiser.\nThe farmer would suffer increased damage to his crop as the size\nof the herd increased. Suppose that the size of the cattle-raiser\xe2\x80\x99s\nherd is three steers (and that this is the size of the herd that would\nbe maintained if crop damage was not taken into account). Then\nthe farmer would be willing to pay up to $3 if the cattle-raiser\nwould reduce his herd to two steers, up to $5 if the herd were\nreduced to one steer and would pay up to $6 if cattle-raising was\nabandoned. The cattle-raiser would therefore receive $3 from the\nfarmer if he kept two steers instead of three. This $3 foregone is\ntherefore part of the cost incurred in keeping the third steer.\nWhether the $3 is a payment which the cattle-raiser has to make if\nhe adds the third steer to his herd (which it would be if the cattleraiser was liable to the farmer for damage caused to the crop) or\nwhether it is a sum of money which he would have received if he\ndid not keep a third steer (which it would be if the cattle-raiser was\nnot liable to the farmer for damage caused to the crop) does not\naffect the final result. In both cases $3 is part of the cost of adding\na third steer, to be included along with the other costs. If the\nincrease in the value of production in cattle-raising through\nincreasing the size of the herd from two to three is greater than the\nadditional costs that have to be incurred (including the $3 damage\nto crops), the size of the herd will be increased. Otherwise, it will\nnot. The size of the herd will be the same whether the cattle raiser\nis liable for damage caused to the crop or not.\n...\nIt is necessary to know whether the damaging-business is liable\nor not for damage caused since without the establishment of this\ninitial delimitation of rights there can be no marked transactions\nto transfer and recombine them. But the ultimate result (which\nmaximizes the value of production) is independent of the legal\nposition if the pricing system is assumed to work without cost.\n\xe2\x80\xa6\n\n108\n\n\x0c...Of course, if market transactions were costless, all that matters\n(questions of equity apart) is that the rights of the various parties\nshould be well-defined and the results of legal actions easy to\nforecast. But as we have seen, the situation is quite different when\nmarket transactions are so costly as to make it difficult to change\nthe arrangement of rights established by the law. In such cases, the\ncourts directly influence economic activity. It would therefore seem\ndesirable that the courts should understand the economic\nconsequences of their decisions and should, insofar as this is\npossible without creating too much uncertainty about the legal\nposition itself, take these consequences into account when making\ntheir decisions. Even when it is possible to change the legal\ndelimitation of rights through market transactions, it is obviously\ndesirable to reduce the need for such transactions and thus reduce\nthe employment of resources in carrying them out.\n1.3.3. Problems\nProblems\n1. True or false: To obtain nominal damages, a plaintiff must show\nat least some form of loss.\n2. True or false: Even if consent is obtained by fraud, it may negate\ntrespass.\n3. True or false: For the Adams court, vibrations interfering with\none\xe2\x80\x99s property would not be considered a nuisance unless they\nwere so intense that they physically damaged or destroyed\nstructures on the plaintiff\xe2\x80\x99s land.\n4. The Fountainebleau hotel extension would clearly harm the\nEden Roc hotel by casting a shadow over the pool area. The \xe2\x80\x9csic\nutere\xe2\x80\x9d formulation - that one\xe2\x80\x99s right to use one\xe2\x80\x99s property is limited\nonly to the extent a use would harm others - would seem to dictate\nthat Fountainebleau\xe2\x80\x99s harmful use not be allowed. How did the\ncourt deal with \xe2\x80\x9csic utere\xe2\x80\x9d?\n5. What are two externalities that arise from an individual\xe2\x80\x99s decision\nto drive across town to visit a friend? Are these problematic, and if\nso, what\xe2\x80\x99s one thing we could do to solve this problem?\n\n109\n\n\x0cAnswers\n1. To obtain nominal damages, a plaintiff must show at least some\nform of loss.\nFalse: It\xe2\x80\x99s impossible to avoid all ambiguity here, but nominal\ndamages are awarded for some causes of action (like trespass\nto land) even in the absence of any loss. While it\xe2\x80\x99s possible to\nconstrue \xe2\x80\x9closs\xe2\x80\x9d so broadly as to include bare violation of a\nlegal right, I don\xe2\x80\x99t think that\xe2\x80\x99s the most reasonable\nconstruction.\n2. Even if consent is obtained by fraud, it may negate trespass.\nTrue: This is Desnick. Note I used the word \xe2\x80\x9cmay\xe2\x80\x9d here.\nDesnick does not hold that any entrance to property obtained\nby lying about one\xe2\x80\x99s purpose is ok, only that dishonestly\nobtained consent does not amount to trespass where the entry\ndoes not cause the injuries against which trespass is designed\nto protect.\n3. For the Adams court, vibrations interfering with one\xe2\x80\x99s property\nwould not be considered a trespass unless they were so intense that\nthey physically damaged or destroyed structures on the plaintiff\xe2\x80\x99s\nland.\nFalse: See n.12. Such vibrations are obviously harmful, but\nthey aren\xe2\x80\x99t a violation of the landowners right to exclude but\nrather his or her right to use/enjoy the property, a right\nprotected in nuisance.\n4. The Fountainebleau hotel extension would clearly harm the\nEden Roc hotel by casting a shadow over the pool area. The \xe2\x80\x9csic\nutere\xe2\x80\x9d formulation - that one\xe2\x80\x99s right to use one\xe2\x80\x99s property is limited\nonly to the extent a use would harm others - would seem to dictate\nthat Fountainebleau\xe2\x80\x99s harmful use not be allowed. How did the\ncourt deal with \xe2\x80\x9csic utere\xe2\x80\x9d?\n\n110\n\n\x0cThe court said that the principle extends only to preventing\nuses of one\xe2\x80\x99s property that harm the rights of another. The\ncourt decided that the plaintiff had no legal right to receive\nsunlight through the property of a neighbor.\n5. What are two externalities that arise from an individual\xe2\x80\x99s decision\nto drive across town to visit a friend? Are these problematic, and if\nso, what\xe2\x80\x99s one thing we could do to solve this problem?\nYou should be looking for any of the aspects of driving that\nimpose costs the driver does not bear. For example pollution\nand congestion are marginally increased by one\xe2\x80\x99s driving. We\ngenerally do not bear, individually, the full cost of either. You\nmight also observe that the risk of injury to others may not be\npart of the private cost-benefit calculation that goes into\ndriving. It\xe2\x80\x99s true, though, that one\xe2\x80\x99s insurance premiums will\nincrease with an accident. And it is a cost to you that by\ndriving you risk an increase in your premiums. This cost,\nthough, might not reflect the true cost of the risk you impose\non others.\nHow to solve? Well, if we do like Pigou, we\xe2\x80\x99ll look for ways to\ninternalize these externalities. This generally means some kind\nof tax (whether you call it a toll, tax, surcharge, fee, etc.) or\npossibly regulation. So we may choose a gas tax meant to\ncharge an individual for the harm caused by pollution. We\nmight use some sort of toll system meant to charge an\nindividual for his or her marginal contribution to road\ncongestion. There are plenty of other ways to answer here, so\nlong as you identify a cost that\xe2\x80\x99s not internalized and make\nsome suggestion for how we should prevent an individual\nfrom making a distorted (i.e. selfishly smart but socially dumb)\neconomic decision.\n\n111\n\n\x0c1.3.4. Application\nPrah v. Maretti, 108 Wis. 2d 223 (1982)\nJohn F. Maloney, Milwaukee, argued, for plaintiff-appellant;\nJonathan A. Mulligan and Mulcahy & Wherry, S. C.,\nMilwaukee, on brief.\nJack C. Horth, Milwaukee, for defendant-respondent.\nCraig Gordon Smith, Milwaukee, and Alan S. Miller,\nWashington, D. C., amicus curiae for Natural Resources\nDefense Council.\nAnthony C. Liotta, Acting Asst. Atty. Gen., Land and\nNatural Resources Division, Washington, D. C., Joan F.\nKessler, U. S. Atty., E. D. Wis., Milwaukee, Kathryn A.\nOberly, Chief Energy Section, J. Vance Hughes, Chief, Sp.\nLitigation Section, Jacques B. Gelin and James P. Leape,\nAttys., U. S. Dept. of Justice, Washington, D. C., for\namicus curiae.\nABRAHAMSON, Justice.\n\xe2\x80\xa6 . This case \xe2\x80\xa6 involves a conflict between one\nlandowner (Glenn Prah, the plaintiff) interested in\nunobstructed access to sunlight across adjoining property\nas a natural source of energy and an adjoining landowner\n(Richard D. Maretti, the defendant) interested in the\ndevelopment of his land.\nThe circuit court concluded that the plaintiff presented no\nclaim upon which relief could be granted and granted\nsummary judgment for the defendant. We reverse the\njudgment of the circuit court and remand the cause to the\ncircuit court for further proceedings.\nI.\nAccording to the complaint, the plaintiff is the owner of a\nresidence which was constructed during the years 19781979. The complaint alleges that the residence has a solar\nsystem which includes collectors on the roof to supply\n\n112\n\n\x0cenergy for heat and hot water and that after the plaintiff\nbuilt his solar-heated house, the defendant purchased the\nlot adjacent to and immediately to the south of the\nplaintiff\xe2\x80\x99s lot and commenced planning construction of a\nhome. The complaint further states that when the plaintiff\nlearned of defendant\xe2\x80\x99s plans to build the house he advised\nthe defendant that if the house were built at the proposed\nlocation, defendant\xe2\x80\x99s house would substantially and\nadversely affect the integrity of plaintiff\xe2\x80\x99s solar system and\ncould cause plaintiff other damage. Nevertheless, the\ndefendant began construction. The complaint further\nalleges that the plaintiff is entitled to \xe2\x80\x9cunrestricted use of\nthe sun and its solar power\xe2\x80\x9d and demands judgment for\ninjunctive relief and damages.1\nAfter filing his complaint, the plaintiff moved for a\ntemporary injunction to restrain and enjoin construction by\nthe defendant. In ruling on that motion the circuit court\nheard testimony, received affidavits and viewed the site.\nThe record made on the motion reveals the following\nadditional facts: Plaintiff\xe2\x80\x99s home was the first residence\nbuilt in the subdivision, and although plaintiff did not build\nhis house in the center of the lot it was built in accordance\nwith applicable restrictions. Plaintiff advised defendant that\nif the defendant\xe2\x80\x99s home were built at the proposed site it\nwould cause a shadowing effect on the solar collectors\nwhich would reduce the efficiency of the system and\npossibly damage the system. To avoid these adverse effects,\nplaintiff requested defendant to locate his home an\nadditional several feet away from the plaintiff\xe2\x80\x99s lot line, the\nexact number being disputed. Plaintiff and defendant failed\n\n\xe2\x80\xa6 . For a discussion of protecting solar access, see Note, Obtaining Access to Solar\nEnergy: Nuisance, Water Rights, and Zoning Administration, 45 Bkyn. L. Rev. 357\n(1979); Comment, Obstruction of Sunlight as a Private Nuisance, 65 Cal. L. Rev.\n94-119 (1977); Comment, Solar Rights: Guaranteeing a Place in the Sun, 57 Ore. L.\nRev. 94 (1977); Note, The Allocation of Sunlight; Solar Rights and the Prior Appropriation\nDoctrine, 47 U. Colo. L. Rev. 421 (1976).\n1\n\n113\n\n\x0cto reach an agreement on the location of defendant\xe2\x80\x99s home\nbefore defendant started construction. The Architectural\nControl Committee and the Planning Commission of the\nCity of Muskego approved the defendant\xe2\x80\x99s plans for his\nhome, including its location on the lot. After such approval,\nthe defendant apparently changed the grade of the property\nwithout prior notice to the Architectural Control\nCommittee. The problem with defendant\xe2\x80\x99s proposed\nconstruction, as far as the plaintiff\xe2\x80\x99s interests are\nconcerned, arises from a combination of the grade and the\ndistance of defendant\xe2\x80\x99s home from the defendant\xe2\x80\x99s lot line.\nThe circuit court denied plaintiff\xe2\x80\x99s motion for injunctive\nrelief, declared it would entertain a motion for summary\njudgment and thereafter entered judgment in favor of the\ndefendant.\nII.\n\xe2\x80\xa6.\nIn this case there is some ambiguity whether the judgment\nwas based on the complaint or on factual matters outside\nthe pleadings which were presented to the circuit court in\nconnection with the motion for a temporary injunction.\nConsequently, we shall first test the sufficiency of the\ncomplaint and then determine whether the matters outside\nthe pleadings present disputed material facts sufficient to\njustify a trial.\nIII.\nIn testing the sufficiency of the complaint the facts pleaded\nby the plaintiff, and all reasonable inferences therefrom, are\naccepted as true. The pleadings are to be liberally construed\nwith a view to substantial justice to the parties, and the\ncomplaint should be dismissed as legally insufficient only if\n\xe2\x80\x9cit is quite clear that under no circumstances can the\nplaintiff recover.\xe2\x80\x9d\n\xe2\x80\xa6.\n\n114\n\n\x0cWe consider first whether the complaint states a claim for\nrelief based on common law private nuisance. This state\nhas long recognized that an owner of land does not have an\nabsolute or unlimited right to use the land in a way which\ninjures the rights of others. The rights of neighboring\nlandowners are relative; the uses by one must not\nunreasonably impair the uses or enjoyment of the other.2\nWhen one landowner\xe2\x80\x99s use of his or her property\nunreasonably interferes with another\xe2\x80\x99s enjoyment of his or\nher property, that use is said to be a private nuisance. Hoene\nv. Milwaukee, 17 Wis. 2d 209, 214 (1962); Metzger v. Hochrein,\n107 Wis. 267, 269 (1900). See also Prosser, Law of Torts sec.\n89, p. 591 (2d ed. 1971).\nThe private nuisance doctrine has traditionally been\nemployed in this state to balance the rights of landowners,\nand this court has recently adopted the analysis of private\n\nIn Abdella v. Smith, 34 Wis. 2d 393, 399 (1967), this court quoted with\napproval Dean Prosser\xe2\x80\x99s description of the judicial balancing of the\nreciprocal rights and privileges of neighbors in the use of their land:\n2\n\nMost of the litigation as to private nuisance has dealt with\nthe conflicting interests of landowners and the question of\nthe reasonableness of the defendant\xe2\x80\x99s conduct: The\ndefendant\xe2\x80\x99s privilege of making a reasonable use of his\nown property for his own benefit and conducting his\naffairs in his own way is no less important than the\nplaintiff\xe2\x80\x99s right to use and enjoy his premises. The two are\ncorrelative and interdependent, and neither is entitled to\nprevail entirely, at the expense of the other. Some balance\nmust be struck between the two. The plaintiff must be\nexpected to endure some inconvenience rather than curtail\nthe defendant\xe2\x80\x99s freedom of action, and the defendant\nmust so use his own property that he causes no\nunreasonable harm to the plaintiff. The law of private\nnuisance is very largely a series of adjustments to limit the\nreciprocal rights and privileges of both. In every case the\ncourt must make a comparative evaluation of the\nconflicting interests according to objective legal standards,\nand the gravity of the harm to the plaintiff must be\nweighed against the utility of the defendant\xe2\x80\x99s conduct.\n\nProsser, Law of Torts, sec. 89, p. 596 (2d ed. 1971) (Citations omitted).\n\n115\n\n\x0cnuisance set forth in the Restatement (Second) of Torts.\nThe Restatement defines private nuisance as \xe2\x80\x9ca\nnontrespassory invasion of another\xe2\x80\x99s interest in the private\nuse and enjoyment of land.\xe2\x80\x9d Restatement (Second) of Torts\nsec. 821D (1977). The phrase \xe2\x80\x9cinterest in the private use\nand enjoyment of land\xe2\x80\x9d as used in sec. 821D is broadly\ndefined to include any disturbance of the enjoyment of\nproperty. The comment in the Restatement describes the\nlandowner\xe2\x80\x99s interest protected by private nuisance law as\nfollows:\nThe phrase \xe2\x80\x9cinterest in the use and\nenjoyment of land\xe2\x80\x9d is used in this\nRestatement in a broad sense. It\ncomprehends not only the interests\nthat a person may have in the actual\npresent use of land for residential,\nagricultural, commercial, industrial and\nother purposes, but also his interests in\nhaving the present use value of the\nland unimpaired by changes in its\nphysical\ncondition.\nThus\nthe\ndestruction of trees on vacant land is\nas much an invasion of the owner\xe2\x80\x99s\ninterest in its use and enjoyment as is\nthe destruction of crops or flowers\nthat he is growing on the land for his\npresent use. \xe2\x80\x98Interest in use and\nenjoyment\xe2\x80\x99 also comprehends the\npleasure, comfort and enjoyment that\na person normally derives from the\noccupancy of land. Freedom from\ndiscomfort and annoyance while using\nland is often as important to a person\nas freedom from physical interruption\nwith his use or freedom from\ndetrimental change in the physical\ncondition of the land itself.\n\n116\n\n\x0cRestatement (Second) of Torts, Sec. 821D, Comment b, p.\n101 (1977)\nAlthough the defendant\xe2\x80\x99s obstruction of the plaintiff\xe2\x80\x99s\naccess to sunlight appears to fall within the Restatement\xe2\x80\x99s\nbroad concept of a private nuisance as a nontrespassory\ninvasion of another\xe2\x80\x99s interest in the private use and\nenjoyment of land, the defendant asserts that he has a right\nto develop his property in compliance with statutes,\nordinances and private covenants without regard to the\neffect of such development upon the plaintiff\xe2\x80\x99s access to\nsunlight. In essence, the defendant is asking this court to\nhold that the private nuisance doctrine is not applicable in\nthe instant case and that his right to develop his land is a\nright which is per se superior to his neighbor\xe2\x80\x99s interest in\naccess to sunlight. This position is expressed in the maxim\n\xe2\x80\x9ccujus est solum, ejus est usque ad coelum et ad infernos,\xe2\x80\x9d\nthat is, the owner of land owns up to the sky and down to\nthe center of the earth. The rights of the surface owner are,\nhowever, not unlimited. U. S. v. Causby, 328 U.S. 256, 260-1\n(1946).\nThe defendant is not completely correct in asserting that\nthe common law did not protect a landowner\xe2\x80\x99s access to\nsunlight across adjoining property. At English common law\na landowner could acquire a right to receive sunlight across\nadjoining land by both express agreement and under the\njudge-made doctrine of \xe2\x80\x9cancient lights.\xe2\x80\x9d Under the doctrine\nof ancient lights if the landowner had received sunlight\nacross adjoining property for a specified period of time, the\nlandowner was entitled to continue to receive unobstructed\naccess to sunlight across the adjoining property. Under the\ndoctrine the landowner acquired a negative prescriptive\n\n117\n\n\x0ceasement and could prevent the adjoining landowner from\nobstructing access to light.3\nAlthough American courts have not been as receptive to\nprotecting a landowner\xe2\x80\x99s access to sunlight as the English\ncourts, American courts have afforded some protection to\na landowner\xe2\x80\x99s interest in access to sunlight. American\ncourts honor express easements to sunlight. American\ncourts initially enforced the English common law doctrine\nof ancient lights, but later every state which considered the\ndoctrine repudiated it as inconsistent with the needs of a\ndeveloping country. Indeed, for just that reason this court\nconcluded that an easement to light and air over adjacent\nproperty could not be created or acquired by prescription\nand has been unwilling to recognize such an easement by\nimplication. Depner v. United States National Bank, 202 Wis.\n405, 408 (1930); Miller v. Hoeschler, 126 Wis. 263, 268-69\n(1905).\nMany jurisdictions in this country have protected a\nlandowner from malicious obstruction of access to light\n(the spite fence cases) under the common law private\nnuisance doctrine.4 If an activity is motivated by malice it\nlacks utility and the harm it causes others outweighs any\nsocial values. This court was reluctant to protect a\nlandowner\xe2\x80\x99s interest in sunlight even against a spite fence,\nonly to be overruled by the legislature. Shortly after this\ncourt upheld a landowner\xe2\x80\x99s right to erect a useless and\n\nPfeiffer, Ancient Lights: Legal Protection of Access to Solar Energy, 68 ABAJ 288\n(1982). No American common law state recognizes a landowner\xe2\x80\x99s right to acquire\nan easement of light by prescription. Comment, Solar Lights: Guaranteeing a Place in\nthe Sun, 57 Ore. L. Rev. 94, 112 (1977).\n3\n\nIn several of the spite fence cases, courts have recognized the property owner\xe2\x80\x99s\ninterest in sunlight. Hornsby v. Smith, 191 Ga. 491, 500 (1941) (\xe2\x80\x9cthe air and light no\nmatter from which direction they come are God-given, and are essential to the\nlife, comfort, and happiness of everyone\xe2\x80\x9d); Burke v. Smith, 69 Mich. 380, 389\n(1888) (\xe2\x80\x9cthe right to breathe the air and enjoy the sunshine, is a natural one\xe2\x80\x9d);\nBarger v. Barringer, 151 N.C. 433, 437 (1909) (\xe2\x80\x9clight and air are as much a necessity\nas water, and all are the common heritage of mankind\xe2\x80\x9d).\n4\n\n118\n\n\x0cunsightly sixteen-foot spite fence four feet from his\nneighbor\xe2\x80\x99s windows, Metzger v. Hochrein, 107 Wis. 267\n(1900), the legislature enacted a law specifically defining a\nspite fence as an actionable private nuisance.5 Thus a\nlandowner\xe2\x80\x99s interest in sunlight has been protected in this\ncountry by common law private nuisance law at least in the\nnarrow context of the modern American rule invalidating\nspite fences.\nThis court\xe2\x80\x99s reluctance in the nineteenth and early part of\nthe twentieth century to provide broader protection for a\nlandowner\xe2\x80\x99s access to sunlight was premised on three\npolicy considerations. First, the right of landowners to use\ntheir property as they wished, as long as they did not cause\nphysical damage to a neighbor, was jealously guarded.\nMetzger v. Hochrein, 107 Wis. 267, 272 (1900).\nSecond, sunlight was valued only for aesthetic enjoyment or\nas illumination. Since artificial light could be used for\nillumination, loss of sunlight was at most a personal\nannoyance which was given little, if any, weight by society.\nThird, society had a significant interest in not restricting or\nimpeding land development. Dillman v. Hoffman, 38 Wis.\n559, 574 (1875). This court repeatedly emphasized that in\nthe growth period of the nineteenth and early twentieth\ncenturies change is to be expected and is essential to\nproperty and that recognition of a right to sunlight would\nhinder property development. The court expressed this\nconcept as follows:\nAs the city grows, large grounds\nappurtenant to residences must be cut\nup to supply more residences\xe2\x80\xa6. The\ncistern, the outhouse, the cesspool,\nand the private drain must disappear in\n\nThe legislature specifically overruled Metzger, ch. 81, Laws of 1903; sec. 280.08\nStats. 1925. Cf. Steiger v. Nowakowski, 67 Wis. 2d 355 (1975).\n5\n\n119\n\n\x0cdeference to the public waterworks\nand sewer; the terrace and the garden,\nto the need for more complete\noccupancy\xe2\x80\xa6. Strict limitation [on the\nrecognition of easements of light and\nair over adjacent premises is] in accord\nwith the popular conception upon\nwhich real estate has been and is daily\nbeing conveyed in Wisconsin and to\nbe essential to easy and rapid\ndevelopment at least of our\nmunicipalities.\nMiller v. Hoeschler, supra, 126 Wis. at 268, 270; quoted with\napproval in Depner, supra, 202 Wis. at 409.\nConsidering these three policies, this court concluded that\nin the absence of an express agreement granting access to\nsunlight, a landowner\xe2\x80\x99s obstruction of another\xe2\x80\x99s access to\nsunlight was not actionable. Miller v. Hoeschler, supra, 126\nWis. at 271; Depner v. United States National Bank, supra, 202\nWis. at 410. These three policies are no longer fully\naccepted or applicable. They reflect factual circumstances\nand social priorities that are now obsolete.\nFirst, society has increasingly regulated the use of land by\nthe landowner for the general welfare. Euclid v. Ambler\nRealty Co., 272 U.S. 365 (1926); Just v. Marinette, 56 Wis. 2d 7\n(1972).\nSecond, access to sunlight has taken on a new significance\nin recent years. In this case the plaintiff seeks to protect\naccess to sunlight, not for aesthetic reasons or as a source\nof illumination but as a source of energy. Access to sunlight\nas an energy source is of significance both to the landowner\n\n120\n\n\x0cwho invests in solar collectors and to a society which has\nan interest in developing alternative sources of energy.6\nThird, the policy of favoring unhindered private\ndevelopment in an expanding economy is no longer in\nharmony with the realities of our society. State v. Deetz, 66\nWis. 2d 1 (1974). The need for easy and rapid development\nis not as great today as it once was, while our perception of\nthe value of sunlight as a source of energy has increased\nsignificantly.\nCourts should not implement obsolete policies that have\nlost their vigor over the course of the years. The law of\nprivate nuisance is better suited to resolve landowners\xe2\x80\x99\ndisputes about property development in the 1980\xe2\x80\x99s than is a\nrigid rule which does not recognize a landowner\xe2\x80\x99s interest\nin access to sunlight. As we said in Ballstadt v. Pagel, 202\nWis. 484, 489 (1930), \xe2\x80\x9cWhat is regarded in law as\nconstituting a nuisance in modern times would no doubt\nhave been tolerated without question in former times.\xe2\x80\x9d We\nread State v. Deetz, 66 Wis. 2d 1 (1974), as an endorsement\nof the application of common law nuisance to situations\ninvolving the conflicting interests of landowners and as\nrejecting per se exclusions to the nuisance law reasonable\nuse doctrine.\nIn Deetz the court abandoned the rigid common law\ncommon enemy rule with respect to surface water and\nadopted the private nuisance reasonable use rule, namely\nthat the landowner is subject to liability if his or her\ninterference with the flow of surface waters unreasonably\nState and federal governments are encouraging the use of the sun as a significant\nsource of energy. In this state the legislature has granted tax benefits to encourage\nthe utilization of solar energy. See Ch. 349, 350, Laws of 1979. See also Ch. 354,\nLaws of 1981 (eff. May 7, 1982) enabling legislation providing for local ordinances\nguaranteeing access to sunlight.\n6\n\nThe federal government has also recognized the importance of solar energy and\ncurrently encourages its utilization by means of tax benefits, direct subsidies and\ngovernment loans for solar projects. [citations omitted]\n\n121\n\n\x0cinvades a neighbor\xe2\x80\x99s interest in the use and enjoyment of\nland. Restatement (Second) of Torts, sec. 822, 826, 829\n(1977) This court concluded that the common enemy rule\nwhich served society \xe2\x80\x9cwell in the days of burgeoning\nnational expansion of the mid-nineteenth and earlytwentieth centuries\xe2\x80\x9d should be abandoned because it was\nno longer \xe2\x80\x9cin harmony with the realities of our society.\xe2\x80\x9d\nDeetz, supra, 66 Wis. 2d at 14-15. We recognized in Deetz\nthat common law rules adapt to changing social values and\nconditions.7\nYet the defendant would have us ignore the flexible private\nnuisance law as a means of resolving the dispute between\nthe landowners in this case and would have us adopt an\napproach, already abandoned in Deetz, of favoring the\nunrestricted development of land and of applying a rigid\nand inflexible rule protecting his right to build on his land\n\nThis court has recognized \xe2\x80\x9cthat the common law is susceptible of growth and\nadaptation to new circumstances and situations, and that courts have power to\ndeclare and effectuate what is the present rule in respect of a given subject\nwithout regard to the old rule\xe2\x80\xa6. The common law is not immutable, but flexible,\nand upon its own principles adapts itself to varying conditions.\xe2\x80\x9d Dimick v.\nSchiedt, 293 U.S. 474, 487, 55 S.Ct. 296, 301, 79 L.Ed. 603 (1935), quoted with\napproval in Schwanke v. Garlt, 219 Wis. 367, 371, 263 N.W. 176 (1935). In Bielski\nv. Schulze, 16 Wis. 2d 1, 11 (1962), this court said:\nInherent in the common law is a dynamic principle which\nallows it to grow and to tailor itself to meet changing\nneeds within the doctrine of stare decisis, which, if\ncorrectly understood, was not static and did not forever\nprevent the courts from reversing themselves or from\napplying principles of common law to new situations as\nthe need arose. If this were not so, we must succumb to a\nrule that a judge should let others \xe2\x80\x9clong dead and unaware\nof the problems of the age in which he lives, do his\nthinking for him.\xe2\x80\x9d Mr. Justice Douglas, Stare Decisis, 49\nColumbia Law Review (1949). 735, 736.\n7\n\nThe genius of the common law is its ability to adapt itself\nto the changing needs of society.\n\nMoran v. Quality Aluminum Casting Co., 34 Wis. 2d 542, 551 (1967). See also State v.\nEsser, 16 Wis. 2d 567, 581 (1962).\n\n122\n\n\x0cand disregarding any interest of the plaintiff in the use and\nenjoyment of his land. This we refuse to do.8\nPrivate nuisance law, the law traditionally used to adjudicate\nconflicts between private landowners, has the flexibility to\nprotect both a landowner\xe2\x80\x99s right of access to sunlight and\nanother landowner\xe2\x80\x99s right to develop land. Private nuisance\nlaw is better suited to regulate access to sunlight in modern\nsociety and is more in harmony with legislative policy and\nthe prior decisions of this court than is an inflexible\ndoctrine of non-recognition of any interest in access to\nsunlight across adjoining land.9\n\nDefendant\xe2\x80\x99s position that a landowner\xe2\x80\x99s interest in access to sunlight across\nadjoining land is not \xe2\x80\x9clegally enforceable\xe2\x80\x9d and is therefore excluded per se from\nprivate nuisance law was adopted in Fontainebleau Hotel Corp. v. Forty-five Twenty-five,\nInc., 114 So.2d 357 (Fla. App. 1959), cert. den. 117 So.2d 842 (Fla. 1960). The\nFlorida district court of appeals permitted construction of a building which cast a\nshadow on a neighboring hotel\xe2\x80\x99s swimming pool. The court asserted that nuisance\nlaw protects only those interests \xe2\x80\x9cwhich [are] recognized and protected by law,\xe2\x80\x9d\nand that there is no legally recognized or protected right to access to sunlight. A\nproperty owner does not, said the Florida court, in the absence of a contract or\nstatute, acquire a presumptive or implied right to the free flow of light and air\nacross adjoining land. The Florida court then concluded that a lawful structure\nwhich causes injury to another by cutting off light and air-whether or not erected\npartly for spite-does not give rise to a cause of action for damages or for an\ninjunction. See also People ex rel Hoogasian v. Sears, Roebuck & Co., 52 Ill. 2d 301\n(1972).\n8\n\nWe do not find the reasoning of Fountainebleau persuasive. The court leaped from\nrejecting an easement by prescription (the doctrine of ancient lights) and an\neasement by implication to the conclusion that there is no right to protection\nfrom obstruction of access to sunlight. The court\xe2\x80\x99s statement that a landowner\nhas no right to light should be the conclusion, not its initial premise. The court\ndid not explain why an owner\xe2\x80\x99s interest in unobstructed light should not be\nprotected or in what manner an owner\xe2\x80\x99s interest in unobstructed sunlight differs\nfrom an owner\xe2\x80\x99s interest in being free from obtrusive noises or smells or differs\nfrom an owner\xe2\x80\x99s interest in unobstructed use of water. The recognition of a per se\nexception to private nuisance law may invite unreasonable behavior.\nFor a discussion of nuisance law, see Ellickson, Alternatives to Zoning: Covenants,\nNuisance Rules, and Fines as Land Use Controls, 40 U. Chi. L. Rev. 681 (1973);\nComment, Nuisance as a Modern Mode of Land Use Control, 46 Wash. L. Rev. 47\n(1970).\n9\n\n123\n\n\x0cWe therefore hold that private nuisance law, that is, the\nreasonable use doctrine as set forth in the Restatement, is\napplicable to the instant case. Recognition of a nuisance\nclaim for unreasonable obstruction of access to sunlight\nwill not prevent land development or unduly hinder the use\nof adjoining land. It will promote the reasonable use and\nenjoyment of land in a manner suitable to the 1980\xe2\x80\x99s. That\nobstruction of access to light might be found to constitute\na nuisance in certain circumstances does not mean that it\nwill be or must be found to constitute a nuisance under all\ncircumstances. The result in each case depends on whether\nthe conduct complained of is unreasonable.\nAccordingly we hold that the plaintiff in this case has stated\na claim under which relief can be granted. Nonetheless we\ndo not determine whether the plaintiff in this case is\nentitled to relief. In order to be entitled to relief the\nplaintiff must prove the elements required to establish\nactionable nuisance, and the conduct of the defendant\nherein must be judged by the reasonable use doctrine.\nIV.\nThe defendant asserts that even if we hold that the private\nnuisance doctrine applies to obstruction of access to\nsunlight across adjoining land, the circuit court\xe2\x80\x99s granting of\nsummary judgment should be affirmed.\nAlthough the memorandum decision of the circuit court in\nthe instant case is unclear, it appears that the circuit court\nrecognized that the common law private nuisance doctrine\nwas applicable but concluded that defendant\xe2\x80\x99s conduct was\nnot unreasonable.10 The circuit court apparently attempted\n\nAs noted previously this court has adopted the reasonableness doctrine set\nforth in sec. 822 of the Restatement (Second) of Torts. CEW Mgmt. Corp. v. First\nFederal Savings & Loan Association, 88 Wis. 2d 631, 633 (1979). Sec. 822 provides as\nfollows:\nOne is subject to liability for a private nuisance if, but only\nif, his conduct is a legal cause of an invasion of another\xe2\x80\x99s\n10\n\n124\n\n\x0cto balance the utility of the defendant\xe2\x80\x99s conduct with the\ngravity of the harm. Sec. 826, Restatement (Second) of\nTorts (1977).11 The defendant urges us to accept the circuit\ncourt\xe2\x80\x99s balance as adequate. We decline to do so.\n\ninterest in the private use and enjoyment of land, and the\ninvasion is either\n(a) intentional and unreasonable, or\n(b) unintentional and otherwise actionable under the rules\ncontrolling liability for negligent or reckless conduct, or\nfor abnormally dangerous conditions or activities.\xe2\x80\x9d\n\nFurther, sec. 821F, Restatement (Second) of Torts (1977) provides as\nfollows:\nThere is liability for a nuisance only to those to whom it\ncauses significant harm, of a kind that would be suffered\nby a normal person in the community or by property in\nnormal condition and used for a normal purpose.\n\nThe factors involved in determining the gravity of the harm caused by\nthe conduct complained of are set out in sec. 827 of the Restatement as\nfollows:\n11\n\nSec. 827. Gravity of Harm-Factors Involved.\nIn determining the gravity of the harm from an intentional\ninvasion of another\xe2\x80\x99s interest in the use and enjoyment of\nland, the following factors are important:\n(a) The extent of the harm involved;\n(b) the character of the harm involved;\n(c) the social value that the law attaches to the type of use\nor enjoyment invaded;\n(d) the suitability of the particular use or enjoyment\ninvaded to the character of the locality; and\n(e) the burden on the person harmed of avoiding the\nharm.\nThe factors involved in determining the utility of conduct complained of\nare set out in sec. 828 of the Restatement as follows:\n\nSec. 828. Utility of Conduct-Factors Involved.\n\n125\n\n\x0cThe circuit court concluded that because the defendant\xe2\x80\x99s\nproposed house was in conformity with zoning regulations,\nbuilding codes and deed restrictions, the defendant\xe2\x80\x99s use of\nthe land was reasonable. This court has concluded that a\nlandowner\xe2\x80\x99s compliance with zoning laws does not\nautomatically bar a nuisance claim. Compliance with the\nlaw \xe2\x80\x9cis not the controlling factor, though it is, of course,\nentitled to some weight.\xe2\x80\x9d Bie v. Ingersoll, 27 Wis. 2d 490, 495\n(1965). The circuit court also concluded that the plaintiff\ncould have avoided any harm by locating his own house in\na better place. Again, plaintiff\xe2\x80\x99s ability to avoid the harm is\na relevant but not a conclusive factor. See secs. 826, 827,\n828, Restatement (Second) of Torts (1977).\nFurthermore, our examination of the record leads us to\nconclude that the record does not furnish an adequate basis\nfor the circuit court to apply the proper legal principles on\nsummary judgment. The application of the reasonable use\nstandard in nuisance cases normally requires a full\nexposition of all underlying facts and circumstances. Too\nlittle is known in this case of such matters as the extent of\nthe harm to the plaintiff, the suitability of solar heat in that\nneighborhood, the availability of remedies to the plaintiff,\nand the costs to the defendant of avoiding the harm.\nSummary judgment is not an appropriate procedural\nvehicle in this case when the circuit court must weigh\nevidence which has not been presented at trial.\n\xe2\x80\xa6.\nIn determining the utility of conduct that causes an\nintentional invasion of another\xe2\x80\x99s interest in the use and\nenjoyment of land, the following factors are important:\n(a) the social value that the law attaches to the primary\npurpose of the conduct;\n(b) the suitability of the conduct to the character of the\nlocality; and\n(c) the impracticability of preventing or avoiding the\ninvasion.\n\n126\n\n\x0cFor the reasons set forth, we reverse the judgment of the\ncircuit court dismissing the complaint and remand the\nmatter to circuit court for further proceedings not\ninconsistent with this opinion.\n\xe2\x80\xa6.\nCALLOW, Justice (dissenting).\nThe majority has adopted the Restatement\xe2\x80\x99s reasonable use\ndoctrine to grant an owner of a solar heated home a cause\nof action against his neighbor who, in acting entirely within\nthe applicable ordinances and statutes, seeks to design and\nbuild his home in such a location that it may, at various\ntimes during the day, shade the plaintiff\xe2\x80\x99s solar collector,\nthereby impeding the efficiency of his heating system12\nduring several months of the year. Because I believe the\nfacts of this case clearly reveal that a cause of action for\nprivate nuisance will not lie, I dissent.\nThe majority arrives at its conclusion that the common law\nprivate nuisance doctrine is applicable by analogizing this\nsituation with the spite fence cases which protect a\nlandowner from malicious obstruction of access to light. See\nPiccirilli v. Groccia, 114 R.I. 36, 39 (1974) (plaintiff must\nprove allegedly objectionable fence was erected solely for the\navowed purpose of damaging the abutting neighbor and\nnot for the advantage of the person who constructed the\nfence); Schorck v. Epperson, 74 Wyo. 286, 287-88 (1955)\n(doctrine of private nuisance founded on maxim that no\none should have a legal right to make a malicious use of his\nproperty for no benefit to himself but merely to injure\nanother). [citations omitted] Courts have likewise refused to\nlimit interference with television reception and other\nbroadcast signals. The People ex rel. Hoogasian v. Sears, Roebuck\nand Co., 52 Ill. 2d 301, 305 (1972). Clearly, the spite fence\nPlaintiff testified that he has a backup electrical system as required by law in this\nstate. Thus, if the solar system fails or loses efficiency, he may resort to the\nelectrical system.\n12\n\n127\n\n\x0ccases, as their name implies, require malice which is not\nclaimed in this case.\nThe majority then concludes that this court\xe2\x80\x99s past\nreluctance to extend protection to a landowner\xe2\x80\x99s access to\nsunlight beyond the spite fence cases is based on obsolete\npolicies which have lost their vigor over the course of the\nyears. The three obsolete policies cited by the majority are:\n(1) Right of landowners to use their property as they desire\nas long as no physical damage is done to a neighbor; (2) In\nthe past, sunlight was valued only for aesthetic value, not a\nsource of energy; and (3) Society has a significant interest in\nnot impeding land development. The majority has failed to\nconvince me that these policies are obsolete.\nIt is a fundamental principle of law that a \xe2\x80\x9clandowner owns\nat least as much of the space above the ground as he can\noccupy or use in connection with the land.\xe2\x80\x9d As stated in\nthe frequently cited and followed case of Fontainebleau Hotel\nCorp. v. Forty-Five Twenty-Five, Inc., 114 So.2d 357 (Fla. Dist.\nCt. App. 1959):\nThere being, then, no legal right to the\nfree flow of light and air from the\nadjoining land, it is universally held\nthat where a structure serves a useful\nand beneficial purpose, it does not give\nrise to a cause of action, either for\ndamages or for an injunction under the\nmaxim sic utere tuo ut alienum non laedas,\neven though it causes injury to another\nby cutting off the light and air and\ninterfering with the view that would\notherwise be available over adjoining\nland in its natural state, regardless of\nthe fact that the structure may have\nbeen erected partly for spite.\nId. at 359 (emphasis in original). I firmly believe that a\nlandowner\xe2\x80\x99s right to use his property within the limits of\n\n128\n\n\x0cordinances, statutes, and restrictions of record where such\nuse is necessary to serve his legitimate needs is a\nfundamental precept of a free society which this court\nshould strive to uphold.\nAs one commentator has suggested:\nIt is fashionable to dismiss such values\nas deriving from a bygone era in which\npeople valued development as a \xe2\x80\x98goal\nin itself,\xe2\x80\x99 but current market prices for\nreal estate, and more particularly the\npremiums paid for land whose zoning\npermits intensive use, suggest that\npeople still place very high values on\nsuch rights.\nWilliams, Solar Access and Property Rights: A Maverick Analysis,\n11 Conn. L. Rev. 430, 443 (1979) (footnote omitted). Cf.\nGoble, Solar Access and Property Rights: Reply to a \xe2\x80\x9cMaverick\xe2\x80\x9d\nAnalysis, 12 Conn. L. Rev. 270 (1980).\nThe majority cites two zoning cases, Village of Euclid v.\nAmbler Realty Company, 272 U.S. 365 (1926), and Just v.\nMarinette County, 56 Wis. 2d 7 (1972), to support the\nconclusion that society has increasingly regulated private\nland use in the name of public welfare. The cases involving\nthe use of police power and eminent domain are clearly\ndistinguishable from the present situation as they relate to\ninterference with a private right solely for the public health,\nsafety, morals, or welfare. In the instant case, we are dealing\nwith an action which seeks to restrict the defendant\xe2\x80\x99s\nprivate right to use his property, notwithstanding a\ncomplete lack of notice of restriction to the defendant and\nthe defendant\xe2\x80\x99s compliance with applicable ordinances and\nstatutes. The plaintiff who knew of the potential problem\nbefore the defendant acquired the land seeks to impose\nsuch use restriction to accommodate his personal, private\nbenefit-a benefit which could have been accommodated by\n\n129\n\n\x0cthe plaintiff locating his home in a different place on his\nproperty or by acquiring the land in question when it was\nfor sale prior to its acquisition by the defendant.\nI know of no cases repudiating policies favoring the right\nof a landowner to use his property as he lawfully desires or\nwhich declare such policies are \xe2\x80\x9cno longer fully accepted or\napplicable\xe2\x80\x9d in this context.13 The right of a property owner\nto lawful enjoyment of his property should be vigorously\nprotected, particularly in those cases where the adjacent\nproperty owner could have insulated himself from the\nalleged problem by acquiring the land as a defense to the\npotential problem or by provident use of his own property.\nThe majority concludes that sunlight has not heretofore\nbeen accorded the status of a source of energy, and\nconsequently it has taken on a new significance in recent\nyears. Solar energy for home heating is at this time\nsparingly used and of questionable economic value because\nsolar collectors are not mass produced, and consequently,\nthey are very costly. Their limited efficiency may explain the\nlack of production.\nRegarding the third policy the majority apparently believes\nis obsolete (that society has a significant interest in not\nrestricting land development), it cites State v. Deetz, 66 Wis.\n2d 1 (1974). I concede the law may be tending to recognize\nthe value of aesthetics over increased volume development\nand that an individual may not use his land in such a way as\nto harm the public. The instant case, however, deals with a\n\nPerhaps one reason courts have been hesitant to recognize a cause of action for\nsolar blockage is that such a suit would normally only occur between two abutting\nlandowners, and it is hoped that neighbors will compromise and reach agreement\nbetween themselves. This has, undoubtedly, been done in a large percentage of\ncases. To now recognize a cause of action for solar blockage may thwart a policy\nof compromise between neighbors. See Williams, Solar Access and Property Rights: A\nMaverick Analysis, 11 Conn. L. Rev. 430, 441-42 (1979). See also S. Kraemer, Solar\nLaw, 138 (1978) (\xe2\x80\x9c[a] deterring factor to the use of private nuisance to assure\naccess to direct sunlight is the resultant litigation between neighbors\xe2\x80\x9d).\n13\n\n130\n\n\x0cprivate benefit. I note that this court in Deetz stated: \xe2\x80\x9cThe\nreasonable use rule retains \xe2\x80\xa6 a policy of favoring land\nimprovement and development.\xe2\x80\x9d Id. at 20. See also id. at 15.\nI find it significant that community planners are dealing\nwith this country\xe2\x80\x99s continued population growth and\nbuilding revitalization where \xe2\x80\x9c[t]he number of households\nis expected to reach almost 100 million by the end of the\ndecade; that would be 34 percent higher than the number\nin 1970.\xe2\x80\x9d F. Strom, 1981 Zoning and Planning Law Handbook,\nsec. 22.02, 396 (1981). It is clear that community planners\nare acutely aware of the present housing shortages,\nparticularly among those two groups with limited financial\nresources, the young and the elderly. Id. While the\nmajority\xe2\x80\x99s policy arguments may be directed to a cause of\naction for public nuisance, we are presented with a private\nnuisance case which I believe is distinguishable in this\nregard.14\nI would submit that any policy decisions in this area are\nbest left for the legislature. \xe2\x80\x9cWhat is \xe2\x80\x98desirable\xe2\x80\x99 or\n\xe2\x80\x98advisable\xe2\x80\x99 or \xe2\x80\x98ought to be\xe2\x80\x99 is a question of policy, not a\nquestion of fact. What is \xe2\x80\x98necessary\xe2\x80\x99 or what is \xe2\x80\x98in the best\ninterest\xe2\x80\x99 is not a fact and its determination by the judiciary\nis an exercise of legislative power when each involves\npolitical considerations.\xe2\x80\x9d In re City of Beloit, 37 Wis. 2d 637,\n644 (1968). I would concur with these observations of the\ntrial judge: \xe2\x80\x9cWhile temptation lingers for the court to\n\nI am amused at the majority\xe2\x80\x99s contention that what constitutes a nuisance today\nwould have been accepted without question in earlier times. This calls to mind the\nfact that, in early days of travel by horses, the first automobiles were considered\nnuisances. Later, when automobile travel became developed, the horse became\nthe nuisance. Ellickson, Alternatives to Zoning: Covenants, Nuisance Rules, and Fines as\nLand Use Controls, 40 U. Chi. L. Rev. 681, 731 (1973). This makes me wonder if we\nare examining the proper nuisance in the case before us. In other words, could it\nbe said that the solar energy user is creating the nuisance when others must\nconform their homes to accommodate his use? I note that solar panel glare may\ntemporarily blind automobile drivers, reflect into adjacent buildings causing\nexcessive heat, and otherwise irritate neighbors. Certainly in these instances the\nsolar heating system constitutes the nuisance.\n14\n\n131\n\n\x0cdeclare by judicial fiat what is right and what should be\ndone, under the facts in this case, such action under our\nform of constitutional government where the three\nbranches each have their defined jurisdiction and power,\nwould be an intrusion of judicial egoism over legislative\npassivity.\xe2\x80\x9d\nThe legislature has recently acted in this area. Chapter 354,\nLaws of 1981 (effective May 7, 1982), was enacted to\nprovide the underlying legislation enabling local\ngovernments to enact ordinances establishing procedures\nfor guaranteeing access to sunlight. This court\xe2\x80\x99s intrusion\ninto an area where legislative action is being taken is\nunwarranted, and it may undermine a legislative scheme for\norderly development not yet fully operational.\n[Judge Callow excerpts statutory provisions prohibiting\ncertain light blockage but only according to a permit\nscheme and with notice to neighboring owners.] This\nlegislative scheme would deal with the type of problem\npresented in the present case and precludes the need for\njudicial activism in this area.\nI examine with interest the definition of nuisance as set out\nin the Restatement (Second) of Torts and adopted in the\nmajority opinion: \xe2\x80\x9cA private nuisance is a nontrespassory\ninvasion of another\xe2\x80\x99s interest in the private use and\nenjoyment of land.\xe2\x80\x9d Restatement (Second) of Torts sec.\n821D (1977) (emphasis added). The majority believes that\nthe defendant\xe2\x80\x99s obstruction of the plaintiff\xe2\x80\x99s access to\nsunlight falls within the broad definition of \xe2\x80\x9cuse and\nenjoyment of land.\xe2\x80\x9d Supra, at 187-188. I do not believe the\ndefendant\xe2\x80\x99s \xe2\x80\x9cobstruction\xe2\x80\x9d of the plaintiff\xe2\x80\x99s access to\nsunlight falls within the definition of \xe2\x80\x9cinvasion,\xe2\x80\x9d as it\napplies to the private use and enjoyment of land. Invasion\nis typically synonymous with \xe2\x80\x9centry,\xe2\x80\x9d \xe2\x80\x9cattack,\xe2\x80\x9d\n\xe2\x80\x9cpenetration,\xe2\x80\x9d \xe2\x80\x9chostile entrance,\xe2\x80\x9d \xe2\x80\x9cthe incoming or spread\nof something unusually hurtful.\xe2\x80\x9d Webster\xe2\x80\x99s Third International\nDictionary, 1188 (1966). Most of the nuisance cases arising\n\n132\n\n\x0cunder this definition involve noxious odors, smoke,\nblasting, flooding, or excessive light invading the plaintiff\xe2\x80\x99s\nright to the use of enjoyment of his property. See Prosser,\nLaw of Torts, sec. 89, 591-92 (4th ed. 1971).15 See Williams,\nSolar Access and Property Rights: A Maverick Analysis, 11 Conn.\nL. Rev. at 441 (there are significant practical differences\nbetween dust and noise, on the one hand, and solar access\nblockage on the other). Clearly, an owner who merely\nbuilds his home in compliance with all building code and\nmunicipal regulations is not \xe2\x80\x9cinvading\xe2\x80\x9d another\xe2\x80\x99s right to\nthe use and enjoyment of his property. To say so is to\nacknowledge that all construction may be an \xe2\x80\x9cinvasion\xe2\x80\x9d\nbecause all construction has some restrictive impact on\nadjacent land. A \xe2\x80\x9cview,\xe2\x80\x9d for example, is modified by any\nconstruction simply because it is there.\nIn order for a nuisance to be actionable in the instant case,\nthe defendant\xe2\x80\x99s conduct must be \xe2\x80\x9cintentional and\nunreasonable.\xe2\x80\x9d It is impossible for me to accept the\nmajority\xe2\x80\x99s conclusion that Mr. Maretti, in lawfully seeking\nto construct his home, may be intentionally and\nunreasonably interfering with the plaintiff\xe2\x80\x99s access to\nsunlight. In addressing the \xe2\x80\x9cunreasonableness\xe2\x80\x9d component\nof the actor\xe2\x80\x99s conduct, it is important to note that \xe2\x80\x9c[t]here\nis liability for a nuisance only to those to whom it causes\nsignificant harm, of a kind that would be suffered by a\nnormal person in the community or by property in normal\ncondition and used for a normal purpose.\xe2\x80\x9d Restatement\n(Second) of Torts sec. 821F (1979). The comments to the\nRestatement further reveal that \xe2\x80\x9c[if] normal persons in that\nlocality would not be substantially annoyed or disturbed by\nthe situation, then the invasion is not a significant one,\n\nDean Prosser also includes disturbances with peace of mind occasioned by\n\xe2\x80\x9cbawdy houses,\xe2\x80\x9d stored explosives, or fire hazards within the purview of the\ndefinition of nuisance. I submit these indicia of nuisance relate to a defendant\xe2\x80\x99s\nunreasonable or unlawful use of his property.\n15\n\n133\n\n\x0ceven though the idiosyncrasies of the particular plaintiff\nmay make it unendurable to him.\xe2\x80\x9d Id. Comment d.16\nI conclude that plaintiff\xe2\x80\x99s solar heating system is an\nunusually sensitive use. In other words, the defendant\xe2\x80\x99s\nproposed construction of his home, under ordinary\ncircumstances, would not interfere with the use and\nenjoyment of the usual person\xe2\x80\x99s property. See W. Prosser,\nsupra, sec. 87 at 578-79. \xe2\x80\x9cThe plaintiff cannot, by devoting\nhis own land to an unusually sensitive use, such as a drivein motion picture theater easily affected by light, make a\nnuisance out of conduct of the adjoining defendant which\nwould otherwise be harmless.\xe2\x80\x9d Id. at 579 (footnote\nomitted).17\n\nConsider, for example, the following illustrations provided in the\nRestatement:\n16\n\n2. A operates a race track, which is illuminated at night by\nflood lights directed downward. B operates next door an\nopen-air motion picture theater, screened off from the\nhighway. The reflection of A\xe2\x80\x99s lights, equivalent to the light\nof the full moon, would be harmless and unobjectionable to\nanyone making a normal use of adjoining land, but so\nseriously interferes with the operation of B\xe2\x80\x99s motion pictures\nthat B loses customers. B cannot recover from A for a private\nnuisance.\n3. A operates a slaughterhouse, which gives off highly\noffensive odors, sufficient to make life unendurable for any\nnormal person living near it. B, who lives next door is\nwithout any sense of smell, and is not personally troubled by\nthe odors. B can recover from A for a private nuisance.\n\nRestatement (Second) of Torts sec. 821F (1979). In my opinion, the instant case\nclearly fits under the first example.\n17Amicus\n\ncuriae United States of America in its brief to this court advances the\nproposition that even a sensitive use is entitled to protection from unreasonable\ninterference. Amicus analogizes to several \xe2\x80\x9cmink cases\xe2\x80\x9d which involve negligence\nactions. [citations omitted] A thorough reading of these decisions reveals that they\nare clearly distinguishable from the case at bar. No cases have been cited in this\njurisdiction which limit this.\nI note that the federal government supports the plaintiff\xe2\x80\x99s position in the instant\ncase. If solar energy is in the national interest, federal legislation should be\nenacted.\n\n134\n\n\x0cLooking solely at the defendant\xe2\x80\x99s conduct, the circuit court\nconcluded that the defendant\xe2\x80\x99s construction of a house did\nnot create a cause of action for nuisance because the\ndefendant\xe2\x80\x99s proposed home was in conformity with zoning\nregulations, building codes, deed restrictions, as well as the\nfact that the defendant\xe2\x80\x99s use of the land to build his home\nwas reasonable. The majority, however, cites Bie v. Ingersoll,\nsupra, for the proposition that compliance with the law is\nnot the controlling factor in evaluating a nuisance claim. I\nnote that Bie involved the operation of an asphalt plant\nfrom which dust and odors permeated the plaintiff\xe2\x80\x99s\nadjoining residence. The defendants asserted that, because\nthe property occupied by the asphalt plant was zoned for\nindustrial use, the plant could not constitute a nuisance.\nThis court concluded that the zoning classification was not\nthe controlling factor. \xe2\x80\x9cIt is rather \xe2\x80\x98the peculiar nature and\nthe location of the business, not the fact that it is a\nbusiness, that constitutes the private nuisance.\xe2\x80\x99\xe2\x80\x9d 27 Wis. 2d\nat 495. The Bie case is clearly distinguishable from the case\nat bar. Here, the defendant seeks to build his home in\ncompliance with all existing laws, and it will have no\n\xe2\x80\x9cpeculiar nature.\xe2\x80\x9d As I read the Bie case, the negative\nimplication from its facts is that a business which does not\nemit dust or odors (i.e., which has no peculiar nature) and\nwhich is in conformity with zoning regulations is not a\nprivate nuisance. I would hold under the facts of the instant\ncase that the defendant\xe2\x80\x99s conduct is not unreasonable per\nse, and consequently, a nuisance cause of action cannot\nstand.\nI further believe that the majority\xe2\x80\x99s conclusion that a cause\nof action exists in this case thwarts the very foundation of\nproperty law. Property law encompasses a system of filing\nand notice in a place for public records to provide\nprospective purchasers with any limitations on their use of\nthe property. Such a notice is not alleged by the plaintiff.\nOnly as a result of the majority\xe2\x80\x99s decision did Mr. Maretti\n\n135\n\n\x0cdiscover that a legitimate action exists which would require\nhim to defend the design and location of his home against a\nnuisance suit, notwithstanding the fact that he located and\nbegan to build his house within the applicable building,\nmunicipal, and deed restrictions.\nObviously, the legislature was cognizant of the importance\nof notice. In Chapter 354, Laws of 1981, secs. 66.032(5)\nand (6) deal with notice to an adjoining landowner.\n[statutory excerpt omitted]\nIn recognizing this common law cause of action, this\ncourt\xe2\x80\x99s decision is in direct conflict with the 1981 legislative\nprovisions for the granting of solar access permits. In a\nmunicipality which enacts the ordinance in conformity with\nthe statute, neighbors know their respective rights. Under\nthe majority decision, in a municipality which does not\nenact the ordinance, a common law cause of action for\nnuisance exists without any defined rights.\nI believe the facts of the instant controversy present the\nclassic case of the owner of a solar collector who fails to\ntake any action to protect his investment. There is nothing\nin the record to indicate that Mr. Prah disclosed his\nsituation to Mr. Maretti prior to Maretti\xe2\x80\x99s purchase of the\nlot or attempted to secure protection for his solar collector\nprior to Maretti\xe2\x80\x99s submission of his building plans to the\narchitectural committee. Such inaction should be\nconsidered a significant factor in determining whether a\ncause of action exists.\nThe majority\xe2\x80\x99s failure to recognize the need for notice may\nperpetuate a vicious cycle. Maretti may feel compelled to\nsell his lot because of Prah\xe2\x80\x99s solar collector\xe2\x80\x99s interference\nwith his plans to build his family home. If so, Maretti will\nnot be obliged to inform prospective purchasers of the\nproblem. Certainly, such information will reduce the value\nof his land. If the presence of collectors is sufficient notice,\nit cannot be said that the seller of the lot has a duty to\n\n136\n\n\x0cdisclose information peculiarly within his knowledge. I do\nnot believe that an adjacent lot owner should be obliged to\nexperience the substantial economic loss resulting from the\nlot being rendered unbuildable by the contour of the land\nas it relates to the location and design of the adjoining\nhome using solar collectors.18\nI am troubled by the majority\xe2\x80\x99s apparent retrospective\napplication of its decision. I note that the court in Deetz saw\nthe wisdom and fairness in rendering a prospective\ndecision. Surely, a decision such as this should be accorded\nprospective status. Creating the cause of action after the\nfact results in such unfair surprise and hardship to property\nowners such as Maretti.\nBecause I do not believe that the facts of the present case\ngive rise to a cause of action for private nuisance, I dissent.\n\nMr. Prah could have avoided this litigation by building his own home in the\ncenter of his lot instead of only ten feet from the Maretti lot line and/or by\npurchasing the adjoining lot for his own protection. Mr. Maretti has already\nmoved the proposed location of his home over an additional ten feet to\naccommodate Mr. Prah\xe2\x80\x99s solar collector, and he testified that moving the home\nany further would interfere with his view of the lake on which the property faces.\n18\n\n137\n\n\x0c1.3.5. Property Rules and Liability Rules: Theory\nCalabresi and Melamed\xe2\x80\x99s Cathedral\nCoase\xe2\x80\x99s article demonstrates that legal rules are immaterial in\nprivate litigation so long as bargaining after a judgment is both\npermitted and costless. Were there no transaction costs, all factors of\nproduction would be put to their highest and best uses. Private\nparties would bargain around court judgments that inefficiently\nentitled A to grow crops or B to raise cattle.\nBut as Coase acknowledges, transaction costs are omnipresent and\noften immense in the real world. It costs resources in order to\nstrike a deal. And yet, deals can indeed be struck. How should\ncourts impose legal obligations now that we wish to take into\naccount not just what should happen in the end but the much more\ncomplex question of what role courts should play knowing that\ntheir judgments will be only part of the social forces that\ndetermine what does happen.\nProperty Rules and Liability Rules\nIt is to this question that Guido Calabresi and A. Douglas\nMelamed attempted a partial answer in their famous article,\nProperty Rules, Liability Rules, and Inalienability: One View of the\nCathedral, 85 Harv. L. Rev. 1089 (1972). Calabresi and Melamed\xe2\x80\x99s\ncentral insight was that judicial resolution involved a two-fold\ndecision: whom to entitle and how to protect the entitlement.\nEither A or B will be adjudged the \xe2\x80\x9cwinner,\xe2\x80\x9d in the sense that\nthey are granted the disputed entitlement (the right to pollute or\nthe right to clean air, for example), but there is more to decide.\nHow is the entitlement they have been granted protected by a\ncourt? Calabresi and Melamed:\nAn entitlement is protected by a\nproperty rule to the extent that\nsomeone who wishes to remove the\nentitlement from its holder must buy it\nfrom him in a voluntary transaction in\nwhich the value of the entitlement is\n\n138\n\n\x0cagreed upon by the seller. It is the\nform of entitlement which gives rise to\nthe least amount of state intervention:\nonce the original entitlement is decided\nupon, the state does not try to decide\nits value. It lets each of the parties say\nhow much the entitlement is worth to\nhim, and gives the seller a veto if the\nbuyer does not offer enough. Property\nrules involve a collective decision as to\nwho is to be given an initial\nentitlement but not as to the value of\nthe entitlement.\nWhenever someone may destroy the\ninitial entitlement if he is willing to pay\nan objectively determined value for it,\nan entitlement is protected by a\nliability rule. This value may be what it\nis thought the original holder of the\nentitlement would have sold it for. But\nthe holder\xe2\x80\x99s complaint that he would\nhave demanded more will not avail\nhim once the objectively determined\nvalue is set. Obviously, liability rules\ninvolve an additional stage of state\nintervention: not only are entitlements\nprotected, but their transfer or\ndestruction is allowed on the basis of a\nvalue determined by some organ of the\nstate rather than by the parties\nthemselves.\nAn entitlement is inalienable to the\nextent that its transfer is not permitted\nbetween a willing buyer and a willing\nseller\xe2\x80\xa6 . .\nWhen a court awards damages, it is applying a liability rule, since\nthe court, rather than the winner of the lawsuit, determines the\nvalue of what was lost to the winner. When a court awards an\n\n139\n\n\x0cinjunction, it gives to the winner an absolute right to refuse the\nloser\xe2\x80\x99s request that he or she part with the subject of the\ninjunction. If the loser wants it, he or she must meet the price that\nthe winner sets to take the entitlement, even if that price is sky\nhigh.\nNote, too, that what we call our property is protected in different\nways in different situations. A home may be protected by a\nproperty rule against those who would trespass and take it. A court\nwill order the trespassers thrown out and give to the record owner\nthe right to insist on a price of his or her choosing to sell the\nhouse. But that same house may be protected only by a liability rule\nagainst the city in which it is located. The city, using its power of\neminent domain, may take the house from the owner so long as it\npays what a court determines is fair market value, irrespective of\nthe price the owner would want to charge.\nWe have now enlarged the apparent set of options a court has in\nresolving a dispute. It may award the disputed entitlement (the\nright to pollute or to be free from pollution, the right to enter\nproperty or the right to refuse entry, etc.) to A or to B, and it may\nprotect the entitlement it awards with a property, liability rule, or\ninalienability rule.\nChoosing a Rule\nHow and why might a court choose a winner of the entitlement\nand choose whether to protect the entitlement with a property or\nliability rule? (Let\xe2\x80\x99s exclude, for the moment, the inalienability rule.)\nAssume we have a plaintiff (P) suing a defendant (D) over an\nalleged nuisance. D wants to continue the nuisance, and P wants to\nstop it. The options confronting a court can be placed in a two by\ntwo chart, leading to four possible rules.\n\n140\n\n\x0cProperty Rule Protection\nP\nWins\n\n1: D must get P\xe2\x80\x99s consent to\ncontinue\n\nLiability Rule\nProtection\n2: D must pay damages\nto continue\n\nD\n4: P can force D to stop\n3: D must consent to stop\nWins\nby paying damages\nHow is a judge to choose among these rules? Calabresi and\nMelamed explain that courts base these decisions on various\ngrounds: economic efficiency (attempting to ensure that the\nentitlement is awarded so that it winds up, perhaps after market\ntransactions, so that no further transactions could be had without\nmaking someone worse off to a greater degree than others are\nmade better off),1 distributional goals (the preferences a society has\nfor the distribution of wealth and specific goods, like food and\nhealth care), and, perhaps, other justice goals.\nRestricting our attention to economic efficiency, we might at first\nwish to apply what we learned from Coase and assume that we\nshould always use property rules and that it does not matter\nwhether P or D wins the lawsuit. If we choose wrongly, for\nexample if we decide P wins even though the entitlement to pollute\nis worth more to D than the entitlement to be free of pollution is\nworth to P, the parties can always transact after the fact to correct\nour mistake. That was the essence of (the second part of) the socalled Coase Theorem. But, as Coase himself indicated, this does\nnot work if transaction costs are large. If the parties cannot easily\ncorrect our mistakes through post-judgment bargaining, then it\nmatters very much where we place the entitlement.\n\nThere are various criteria for economic efficiency. The one here implied is called\nKaldor-Hicks efficiency. The details do not concern us for the moment, beyond\nan understanding that this notion of efficiency applies to changes in the social\norder that provide more total gains to the winners than losses to the losers. At\nleast in theory, the winners in such a situation could fully compensate the losers\nand still come out ahead.\n1\n\n141\n\n\x0cFor example, transactions will be difficult if there are many\nindividuals on one side, as in the case of a polluting factory and a\ntown. For example, members of the town may act selfishly and\nrefuse to pay their share (believing others will pick up the slack) in\nthe event the entitlement was wrongly awarded to the factory. This\nis called free riding. If we erred the other way, wrongly awarding\nthe entitlement to the town when in fact the factory values\nproduction more than the town values clean air, then some town\nmembers may selfishly demand too much to permit the factory to\npollute. In other words, they may be hold-outs. If 10,000 people\neach have an individual right to stop a factory, so that the factory\nmust strike a deal with each person in order to go into production,\nthen it should be obvious that the factory faces a very expensive\ncontracting problem and is subject to hold-outs.\nLiability rules solve such problems. Replacing 10,000 individual\nnegotiations with a court-determined damages award solves the\nproblem of hold-outs and free riders. A court could, for example,\nfollowing Rule 2 from the boxes above, allow the factory pollute,\non the condition that it pay damages to the town members.\nBut the very thing that makes the liability rule so attractive, that it\neliminates potentially expensive, individualized negotiation with a\ncourt\xe2\x80\x99s determination of fair market values, also makes it\npotentially unattractive from an efficiency standpoint. It relies on\nthe court\xe2\x80\x99s ability to estimate the true values of the entitlement to\nthe parties. The court may not be good at this. The very foundation\nof free markets is the belief that, in general, individuals know better\nthan others how much things are worth to them. In setting\ndamages, courts may not arrive at amounts that reflect what parties\nwould pay or accept in the absence of transaction costs. That error\nrepresents an economic inefficiency and may lead to a shuttered\nfactory that would in fact be efficient or a polluting factory that is\ninefficient.\nActing in realm of uncertainty, perhaps courts should do as best\nthey can to put liability on (the opposite of grant the entitlement\nto) the party best positioned both to determine whether what that\nparty wants is worth the damages award or negotiation. The court\n\n142\n\n\x0cshould also consider whether placing liability on one party or the\nother makes transactions more likely. And, finally, if bargaining\nlooks particularly expensive and the court is reasonably well\npositioned to determine the value of the entitlement to each side,\nthen the court should consider a liability rule. Calabresi and\nMelamed summarize the efficiency concerns thusly:\n(1) that economic efficiency standing\nalone would dictate that set of\nentitlements\nwhich\nfavors\nknowledgeable choices between social\nbenefits and the social costs of\nobtaining them, and between social\ncosts and the social costs of avoiding\nthem; (2) that this implies, in the\nabsence of certainty as to whether a\nbenefit is worth its costs to society,\nthat the cost should be put on the\nparty or activity best located to make\nsuch a cost-benefit analysis; (3) that in\nparticular contexts like accidents or\npollution this suggests putting costs on\nthe party or activity which can most\ncheaply avoid them; (4) that in the\nabsence of certainty as to who that\nparty or activity is, the costs should be\nput on the party or activity which can\nwith the lowest transaction costs act in\nthe market to correct an error in\nentitlements by inducing the party who\ncan avoid social costs most cheaply to\ndo so; and (5) that since we are in an\narea where by hypothesis markets do\nnot work perfectly \xe2\x80\x93 there are\ntransaction costs \xe2\x80\x93 a decision will\noften have to be made on whether\nmarket transactions [property rule\nprotection] or collective fiat [liability\nrule protection] is most likely to bring\n\n143\n\n\x0cus closer to the [efficient] result the\n\xe2\x80\x9cperfect\xe2\x80\x9d market would reach.\nNuisance Law\nSuppose a plaintiff, P, sues a defendant, D, for committing what P\nbelieves is a nuisance. How should a court decide whether P should\nprevail and whether it should enjoin D\xe2\x80\x99s conduct or permit D\xe2\x80\x99s\nconduct with the payment of damages to P? Consider the example\nof the plaintiff Fontainebleau Hotel (building the shadow-casting\naddition) and the defendant Eden Roc Hotel (whose pool would\ncast in shade by the addition). The court must decide among the\nfour options in our grid.\nProperty Rule\nProtection\n\nLiability Rule\nProtection\n\nP\nWins\n\n1: Nuisance enjoined\n\n2: Damages for nuisance but D\ncan continue\n\nD\nWins\n\n3: No nuisance\n\n4: P can force D to stop by\npaying damages\n\nWhich of the parties is the cheapest cost avoider, the one best able\nto calculate the total social costs and benefits from the proposed\naddition? Arguably, it would be Fountainebleau, which probably\nhas better information about the costs of the addition and the\nrevenue benefits it would bring. Although, Eden Roc might be\nbetter positioned to understand how the shadowed pool area\nwould impact its business, that is the sort of damage that might not\nbe difficult to calculate for anyone in the hotel business in the area.\nSo perhaps we would be justified placing liability on the defendant,\nFountainebleau.\nShould we protect Eden Roc\xe2\x80\x99s entitlement with a property or\nliability rule? There are only two parties, and so we do not have\nmuch concern about free riders or hold-outs. Are we concerned\nabout strategic bargaining, the possibility that in negotiating Eden\nRoc would attempt to garner too much of the surplus for itself,\n\n144\n\n\x0cmistaken about Fountainebleau\xe2\x80\x99s willingness to pay \xe2\x80\x93 the kind of\nnegotiating difficulty that could derail a deal that would be better\nfor both sides if reached? Perhaps, and perhaps there\xe2\x80\x99s some\nanimosity on both sides \xe2\x80\x93 not to mention the fact that Eden Roc,\nas a competitor might have an unusual incentive to reduce the\nprofitability of Fountainebleau. While property rule protection is\nordinarily justified when there are a small number of commercial\nparties, liability rule protection does not seem like a bad option\nhere. The damage caused to Eden Roc by the shadowing of its\nproperty seems like the sort of discrete harm that could be\nestimated reasonably through manageable expert testimony.\nMoreover, sentimental attachment or other idiosyncratic valuation\nthat might not be captured by fair market value estimates is not\nrelevant here, in the case of a commercial property.\nThus, resort to Rule 1, as the court in fact chose on purely\nformalistic grounds, or Rule 2 appear to be reasonable choices. The\nnext two cases are ones in which the courts chose liability rules. As\nyou read them, ask yourself why they did.\n1.3.6. Property Rules and Liability Rules: Practice\nBoomer v. Atlantic Cement Co., 26 N.Y.2d 219 (1970)\nBERGAN, J.\nDefendant operates a large cement plant near Albany.\nThese are actions for injunction and damages by\nneighboring land owners alleging injury to property from\ndirt, smoke and vibration emanating from the plant. A\nnuisance has been found after trial, temporary damages\nhave been allowed; but an injunction has been denied.\nThe public concern with air pollution arising from many\nsources in industry and in transportation is currently\naccorded ever wider recognition accompanied by a growing\nsense of responsibility in State and Federal Governments to\ncontrol it. Cement plants are obvious sources of air\npollution in the neighborhoods where they operate.\n\n145\n\n\x0cBut there is now before the court private litigation in which\nindividual property owners have sought specific relief from\na single plant operation. The threshold question raised by\nthe division of view on this appeal is whether the court\nshould resolve the litigation between the parties now before\nit as equitably as seems possible; or whether, seeking\npromotion of the general public welfare, it should channel\nprivate litigation into broad public objectives.\nA court performs its essential function when it decides the\nrights of parties before it. Its decision of private\ncontroversies may sometimes greatly affect public issues.\nLarge questions of law are often resolved by the manner in\nwhich private litigation is decided. But this is normally an\nincident to the court\xe2\x80\x99s main function to settle controversy.\nIt is a rare exercise of judicial power to use a decision in\nprivate litigation as a purposeful mechanism to achieve\ndirect public objectives greatly beyond the rights and\ninterests before the court.\nEffective control of air pollution is a problem presently far\nfrom solution even with the full public and financial\npowers of government. In large measure adequate technical\nprocedures are yet to be developed and some that appear\npossible may be economically impracticable.\nIt seems apparent that the amelioration of air pollution will\ndepend on technical research in great depth; on a carefully\nbalanced consideration of the economic impact of close\nregulation; and of the actual effect on public health. It is\nlikely to require massive public expenditure and to demand\nmore than any local community can accomplish and to\ndepend on regional and interstate controls.\nA court should not try to do this on its own as a byproduct of private litigation and it seems manifest that the\njudicial establishment is neither equipped in the limited\nnature of any judgment it can pronounce nor prepared to\nlay down and implement an effective policy for the\n\n146\n\n\x0celimination of air pollution. This is an area beyond the\ncircumference of one private lawsuit. It is a direct\nresponsibility for government and should not thus be\nundertaken as an incident to solving a dispute between\nproperty owners and a single cement plant \xe2\x80\x93 one of many \xe2\x80\x93\nin the Hudson River valley.\nThe cement making operations of defendant have been\nfound by the court at Special Term to have damaged the\nnearby properties of plaintiffs in these two actions. That\ncourt, as it has been noted, accordingly found defendant\nmaintained a nuisance and this has been affirmed at the\nAppellate Division. The total damage to plaintiffs\xe2\x80\x99\nproperties is, however, relatively small in comparison with\nthe value of defendant\xe2\x80\x99s operation and with the\nconsequences of the injunction which plaintiffs seek.\nThe ground for the denial of injunction, notwithstanding\nthe finding both that there is a nuisance and that plaintiffs\nhave been damaged substantially, is the large disparity in\neconomic consequences of the nuisance and of the\ninjunction. This theory cannot, however, be sustained\nwithout overruling a doctrine which has been consistently\nreaffirmed in several leading cases in this court and which\nhas never been disavowed here, namely that where a\nnuisance has been found and where there has been any\nsubstantial damage shown by the party complaining an\ninjunction will be granted.\nThe rule in New York has been that such a nuisance will be\nenjoined although marked disparity be shown in economic\nconsequence between the effect of the injunction and the\neffect of the nuisance.\nThe problem of disparity in economic consequence was\nsharply in focus in Whalen v. Union Bag & Paper Co. (208 N.\nY. 1). A pulp mill entailing an investment of more than a\nmillion dollars polluted a stream in which plaintiff, who\nowned a farm, was \xe2\x80\x9ca lower riparian owner\xe2\x80\x9d. The economic\n\n147\n\n\x0closs to plaintiff from this pollution was small. This court,\nreversing the Appellate Division, reinstated the injunction\ngranted by the Special Term against the argument of the\nmill owner that in view of \xe2\x80\x9cthe slight advantage to plaintiff\nand the great loss that will be inflicted on defendant\xe2\x80\x9d an\ninjunction should not be granted (p. 2). \xe2\x80\x9cSuch a balancing\nof injuries cannot be justified by the circumstances of this\ncase\xe2\x80\x9d, Judge Werner noted (p. 4). He continued: \xe2\x80\x9cAlthough\nthe damage to the plaintiff may be slight as compared with\nthe defendant\xe2\x80\x99s expense of abating the condition, that is\nnot a good reason for refusing an injunction\xe2\x80\x9d (p. 5).\nThus the unconditional injunction granted at Special Term\nwas reinstated. The rule laid down in that case, then, is that\nwhenever the damage resulting from a nuisance is found\nnot \xe2\x80\x9cunsubstantial\xe2\x80\x9d, viz., $100 a year, injunction would\nfollow. This states a rule that had been followed in this\ncourt with marked consistency (McCarty v. Natural Carbonic\nGas Co., 189 N. Y. 40; Strobel v. Kerr Salt Co., 164 N. Y. 303;\nCampbell v. Seaman, 63 N. Y. 568).\nThere are cases where injunction has been denied. McCann\nv. Chasm Power Co. (211 N. Y. 301) is one of them. There,\nhowever, the damage shown by plaintiffs was not only\nunsubstantial, it was non-existent. Plaintiffs owned a rocky\nbank of the stream in which defendant had raised the level\nof the water. This had no economic or other adverse\nconsequence to plaintiffs, and thus injunctive relief was\ndenied. Similar is the basis for denial of injunction in\nForstmann v. Joray Holding Co. (244 N. Y. 22) where no\nbenefit to plaintiffs could be seen from the injunction\nsought (p. 32). Thus if, within Whalen v. Union Bag & Paper\nCo. (supra.;) which authoritatively states the rule in New\nYork, the damage to plaintiffs in these present cases from\ndefendant\xe2\x80\x99s cement plant is \xe2\x80\x9cnot unsubstantial\xe2\x80\x9d, an\ninjunction should follow.\nAlthough the court at Special Term and the Appellate\nDivision held that injunction should be denied, it was\n\n148\n\n\x0cfound that plaintiffs had been damaged in various specific\namounts up to the time of the trial and damages to the\nrespective plaintiffs were awarded for those amounts. The\neffect of this was, injunction having been denied, plaintiffs\ncould maintain successive actions at law for damages\nthereafter as further damage was incurred.\nThe court at Special Term also found the amount of\npermanent damage attributable to each plaintiff, for the\nguidance of the parties in the event both sides stipulated to\nthe payment and acceptance of such permanent damage as\na settlement of all the controversies among the parties. The\ntotal of permanent damages to all plaintiffs thus found was\n$185,000. This basis of adjustment has not resulted in any\nstipulation by the parties.\nThis result at Special Term and at the Appellate Division is\na departure from a rule that has become settled; but to\nfollow the rule literally in these cases would be to close\ndown the plant at once. This court is fully agreed to avoid\nthat immediately drastic remedy; the difference in view is\nhow best to avoid it.1\nOne alternative is to grant the injunction but postpone its\neffect to a specified future date to give opportunity for\ntechnical advances to permit defendant to eliminate the\nnuisance; another is to grant the injunction conditioned on\nthe payment of permanent damages to plaintiffs which\nwould compensate them for the total economic loss to\ntheir property present and future caused by defendant\xe2\x80\x99s\noperations. For reasons which will be developed the court\nchooses the latter alternative.\nIf the injunction were to be granted unless within a short\nperiod \xe2\x80\x93 e.g., 18 months \xe2\x80\x93 the nuisance be abated by\n\nRespondent\xe2\x80\x99s investment in the plant is in excess of $45,000,000. There are over\n300 people employed there.\n1\n\n149\n\n\x0cimproved methods, there would be no assurance that any\nsignificant technical improvement would occur.\nThe parties could settle this private litigation at any time if\ndefendant paid enough money and the imminent threat of\nclosing the plant would build up the pressure on defendant.\nIf there were no improved techniques found, there would\ninevitably be applications to the court at Special Term for\nextensions of time to perform on showing of good faith\nefforts to find such techniques.\nMoreover, techniques to eliminate dust and other annoying\nby-products of cement making are unlikely to be developed\nby any research the defendant can undertake within any\nshort period, but will depend on the total resources of the\ncement industry Nationwide and throughout the world.\nThe problem is universal wherever cement is made.\nFor obvious reasons the rate of the research is beyond\ncontrol of defendant. If at the end of 18 months the whole\nindustry has not found a technical solution a court would\nbe hard put to close down this one cement plant if due\nregard be given to equitable principles.\nOn the other hand, to grant the injunction unless defendant\npays plaintiffs such permanent damages as may be fixed by\nthe court seems to do justice between the contending\nparties. All of the attributions of economic loss to the\nproperties on which plaintiffs\xe2\x80\x99 complaints are based will\nhave been redressed.\nThe nuisance complained of by these plaintiffs may have\nother public or private consequences, but these particular\nparties are the only ones who have sought remedies and the\njudgment proposed will fully redress them. The limitation\nof relief granted is a limitation only within the four corners\nof these actions and does not foreclose public health or\nother public agencies from seeking proper relief in a proper\ncourt.\n\n150\n\n\x0cIt seems reasonable to think that the risk of being required\nto pay permanent damages to injured property owners by\ncement plant owners would itself be a reasonable effective\nspur to research for improved techniques to minimize\nnuisance.\nThe power of the court to condition on equitable grounds\nthe continuance of an injunction on the payment of\npermanent damages seems undoubted. (See, e.g., the\nalternatives considered in McCarty v. Natural Carbonic Gas\nCo., supra.;, as well as Strobel v. Kerr Salt Co., supra.;.)\nThe damage base here suggested is consistent with the\ngeneral rule in those nuisance cases where damages are\nallowed. \xe2\x80\x9cWhere a nuisance is of such a permanent and\nunabatable character that a single recovery can be had,\nincluding the whole damage past and future resulting\ntherefrom, there can be but one recovery\xe2\x80\x9d (66 C. J. S.,\nNuisances, s 140, p. 947). It has been said that permanent\ndamages are allowed where the loss recoverable would\nobviously be small as compared with the cost of removal of\nthe nuisance (Kentucky-Ohio Gas Co. v. Bowling, 264 Ky. 470,\n477).\nThe present cases and the remedy here proposed are in a\nnumber of other respects rather similar to Northern Indiana\nPublic Serv. Co. v. Vesey (210 Ind. 338) decided by the\nSupreme Court of Indiana. The gases, odors, ammonia and\nsmoke from the Northern Indiana company\xe2\x80\x99s gas plant\ndamaged the nearby Vesey greenhouse operation. An\ninjunction and damages were sought, but an injunction was\ndenied and the relief granted was limited to permanent\ndamages \xe2\x80\x9cpresent, past, and future\xe2\x80\x9d (p. 371).\nDenial of injunction was grounded on a public interest in\nthe operation of the gas plant and on the court\xe2\x80\x99s conclusion\n\xe2\x80\x9cthat less injury would be occasioned by requiring the\nappellant [Public Service] to pay the appellee [Vesey] all\ndamages suffered by it * * * than by enjoining the operation\n\n151\n\n\x0cof the gas plant; and that the maintenance and operation of\nthe gas plant should not be enjoined\xe2\x80\x9d (p. 349).\nThe Indiana Supreme Court opinion continued: \xe2\x80\x9cWhen the\ntrial court refused injunctive relief to the appellee upon the\nground of public interest in the continuance of the gas\nplant, it properly retained jurisdiction of the case and\nawarded full compensation to the appellee. This is upon the\ngeneral equitable principle that equity will give full relief in\none action and prevent a multiplicity of suits\xe2\x80\x9d (pp. 353354).\nIt was held that in this type of continuing and recurrent\nnuisance permanent damages were appropriate. See, also,\nCity of Amarillo v. Ware (120 Tex. 456) where recurring\noverflows from a system of storm sewers were treated as\nthe kind of nuisance for which permanent depreciation of\nvalue of affected property would be recoverable.\nThere is some parallel to the conditioning of an injunction\non the payment of permanent damages in the noted\n\xe2\x80\x9celevated railway cases\xe2\x80\x9d (Pappenheim v. Metropolitan El. Ry.\nCo., 128 N. Y. 436, and others which followed). Decisions\nin these cases were based on the finding that the railways\ncreated a nuisance as to adjacent property owners, but in\nlieu of enjoining their operation, the court allowed\npermanent damages.\nJudge Finch, reviewing these cases in Ferguson v. Village of\nHamburg (272 N. Y. 234, 239-240), said: \xe2\x80\x9cThe courts\ndecided that the plaintiffs had a valuable right which was\nbeing impaired, but did not grant an absolute injunction or\nrequire the railway companies to resort to separate\ncondemnation proceedings. Instead they held that a court\nof equity could ascertain the damages and grant an\ninjunction which was not to be effective unless the\ndefendant failed to pay the amount fixed as damages for\nthe past and permanent injury inflicted.\xe2\x80\x9d (See, also, Lynch v.\nMetropolitan El. Ry. Co., 129 N. Y. 274; Van Allen v. New\n\n152\n\n\x0cYork El. R. R. Co., 144 N. Y. 174; Cox v. City of New York,\n265 N. Y. 411, and similarly, Westphal v. City of New York,\n177 N. Y. 140.)\nThus it seems fair to both sides to grant permanent\ndamages to plaintiffs which will terminate this private\nlitigation. The theory of damage is the \xe2\x80\x9cservitude on land\xe2\x80\x9d\nof plaintiffs imposed by defendant\xe2\x80\x99s nuisance. (See United\nStates v. Causby, 328 U. S. 256, 261, 262, 267, where the term\n\xe2\x80\x9cservitude\xe2\x80\x9d addressed to the land was used by Justice\nDouglas relating to the effect of airplane noise on property\nnear an airport.)\nThe judgment, by allowance of permanent damages\nimposing a servitude on land, which is the basis of the\nactions, would preclude future recovery by plaintiffs or\ntheir grantees (see Northern Indiana Public Serv. Co. v. Vesey,\nsupra.;, p. 351).\nThis should be placed beyond debate by a provision of the\njudgment that the payment by defendant and the\nacceptance by plaintiffs of permanent damages found by\nthe court shall be in compensation for a servitude on the\nland.\nAlthough the Trial Term has found permanent damages as\na possible basis of settlement of the litigation, on remission\nthe court should be entirely free to re-examine this subject.\nIt may again find the permanent damage already found; or\nmake new findings.\nThe orders should be reversed, without costs, and the cases\nremitted to Supreme Court, Albany County to grant an\ninjunction which shall be vacated upon payment by\ndefendant of such amounts of permanent damage to the\nrespective plaintiffs as shall for this purpose be determined\nby the court.\nJASEN, J., Dissenting.\n\n153\n\n\x0cI agree with the majority that a reversal is required here, but\nI do not subscribe to the newly enunciated doctrine of\nassessment of permanent damages, in lieu of an injunction,\nwhere substantial property rights have been impaired by the\ncreation of a nuisance.\nIt has long been the rule in this State, as the majority\nacknowledges, that a nuisance which results in substantial\ncontinuing damage to neighbors must be enjoined. (Whalen\nv. Union Bag & Paper Co., 208 N. Y. 1; Campbell v. Seaman, 63\nN. Y. 568; see, also, Kennedy v. Moog Servocontrols, 21 N Y 2d\n966.) To now change the rule to permit the cement\ncompany to continue polluting the air indefinitely upon the\npayment of permanent damages is, in my opinion,\ncompounding the magnitude of a very serious problem in\nour State and Nation today.\nIn recognition of this problem, the Legislature of this State\nhas enacted the Air Pollution Control Act (Public Health\nLaw, ss1264\xe2\x80\x931299-m) declaring that it is the State policy to\nrequire the use of all available and reasonable methods to\nprevent and control air pollution (Public Health Law,\ns1265).2\nThe harmful nature and widespread occurrence of air\npollution have been extensively documented. Congressional\nhearings have revealed that air pollution causes substantial\nproperty damage, as well as being a contributing factor to a\nrising incidence of lung cancer, emphysema, bronchitis and\nasthma.3\nThe specific problem faced here is known as particulate\ncontamination because of the fine dust particles emanating\n\n2\n\nSee, also, Air Quality Act of 1967, 81 U. S. Stat. 485 (1967).\n\nSee U. S. Cong., Senate Comm. on Public Works, Special Subcomm. on Air and\nWater Pollution, Air Pollution 1966, 89th Cong., 2d Sess., 1966, at pp. 22-24; U. S.\nCong., Senate Comm. on Public Works, Special Subcomm. on Air and Water\nPollution, Air Pollution 1968, 90th Cong., 2d Sess., 1968, at pp. 850, 1084.\n3\n\n154\n\n\x0cfrom defendant\xe2\x80\x99s cement plant. The particular type of\nnuisance is not new, having appeared in many cases for at\nleast the past 60 years. (See Hulbert v. California Portland\nCement Co., 161 Cal. 239 .) It is interesting to note that\ncement production has recently been identified as a\nsignificant source of particulate contamination in the\nHudson Valley.4 This type of pollution, wherein very small\nparticles escape and stay in the atmosphere, has been\ndenominated as the type of air pollution which produces\nthe greatest hazard to human health.5 We have thus a\nnuisance which not only is damaging to the plaintiffs, 6 but\nalso is decidedly harmful to the general public.\nI see grave dangers in overruling our long-established rule\nof granting an injunction where a nuisance results in\nsubstantial continuing damage. In permitting the injunction\nto become inoperative upon the payment of permanent\ndamages, the majority is, in effect, licensing a continuing\nwrong. It is the same as saying to the cement company, you\nmay continue to do harm to your neighbors so long as you\npay a fee for it. Furthermore, once such permanent\ndamages are assessed and paid, the incentive to alleviate the\nwrong would be eliminated, thereby continuing air\npollution of an area without abatement.\nIt is true that some courts have sanctioned the remedy here\nproposed by the majority in a number of cases,7 but none\n\nNew York State Bureau of Air Pollution Control Services, Air Pollution Capital\nDistrict, 1968, at p. 8.\n4\n\nJ. Ludwig, Air Pollution Control Technology: Research and Development on\nNew and Improved Systems, 33 Law & Contemp. Prob., 217, 219 (1968).\n5\n\nThere are seven plaintiffs here who have been substantially damaged by the\nmaintenance of this nuisance. The trial court found their total permanent damages\nto equal $185,000.\n6\n\nSee United States v. Causby (328 U. S. 256); Kentucky-Ohio Gas Co. v. Bowling (284\nKy. 470, 477); Northern Indiana Public Serv. Co. v. Vesey (210 Ind. 338); City of\nAmarillo v. Ware (120 Tex. 456); Pappenheim v. Metropolitan El. Ry. Co. (128 N. Y.\n436); Ferguson v. Village of Hamburg (272 N. Y. 234).\n7\n\n155\n\n\x0cof the authorities relied upon by the majority are analogous\nto the situation before us. In those cases, the courts, in\ndenying an injunction and awarding money damages,\ngrounded their decision on a showing that the use to which\nthe property was intended to be put was primarily for the\npublic benefit. Here, on the other hand, it is clearly\nestablished that the cement company is creating a\ncontinuing air pollution nuisance primarily for its own\nprivate interest with no public benefit.\nThis kind of inverse condemnation (Ferguson v. Village of\nHamburg, 272 N. Y. 234 may not be invoked by a private\nperson or corporation for private gain or advantage.\nInverse condemnation should only be permitted when the\npublic is primarily served in the taking or impairment of\nproperty. (Matter of New York City Housing Auth. v. Muller,\n270 N. Y. 333, 343; Pocantico Water Works Co. v. Bird, 130 N.\nY. 249, 258.) The promotion of the interests of the\npolluting cement company has, in my opinion, no public\nuse or benefit.\nNor is it constitutionally permissible to impose servitude on\nland, without consent of the owner, by payment of\npermanent damages where the continuing impairment of\nthe land is for a private use. (See Fifth Ave. Coach Lines v.\nCity of New York, 11 N Y 2d 342, 347; Walker v. City of\nHutchinson, 352 U. S. 112.) This is made clear by the State\nConstitution (art. I, s 7, subd. [a]) which provides that\n\xe2\x80\x9c[p]rivate property shall not be taken for public use without\njust compensation\xe2\x80\x9d (emphasis added). It is, of course,\nsignificant that the section makes no mention of taking for\na private use.\nIn sum, then, by constitutional mandate as well as by\njudicial pronouncement, the permanent impairment of\nprivate property for private purposes is not authorized in\nthe absence of clearly demonstrated public benefit and use.\n\n156\n\n\x0cI would enjoin the defendant cement company from\ncontinuing the discharge of dust particles upon its\nneighbors\xe2\x80\x99 properties unless, within 18 months, the cement\ncompany abated this nuisance.8\nIt is not my intention to cause the removal of the cement\nplant from the Albany area, but to recognize the urgency of\nthe problem stemming from this stationary source of air\npollution, and to allow the company a specified period of\ntime to develop a means to alleviate this nuisance.\nI am aware that the trial court found that the most modern\ndust control devices available have been installed in\ndefendant\xe2\x80\x99s plant, but, I submit, this does not mean that\nbetter and more effective dust control devices could not be\ndeveloped within the time allowed to abate the pollution.\nMoreover, I believe it is incumbent upon the defendant to\ndevelop such devices, since the cement company, at the\ntime the plant commenced production (1962), was well\naware of the plaintiffs\xe2\x80\x99 presence in the area, as well as the\nprobable consequences of its contemplated operation. Yet,\nit still chose to build and operate the plant at this site.\nIn a day when there is a growing concern for clean air,\nhighly developed industry should not expect acquiescence\nby the courts, but should, instead, plan its operations to\neliminate contamination of our air and damage to its\nneighbors.\nAccordingly, the orders of the Appellate Division, insofar\nas they denied the injunction, should be reversed, and the\nactions remitted to Supreme Court, Albany County to grant\nan injunction to take effect 18 months hence, unless the\n\nThe issuance of an injunction to become effective in the future is not an entirely\nnew concept. For instance, in Schwarzenbach v. Oneonta Light & Power Co. (207 N. Y.\n671), an injunction against the maintenance of a dam spilling water on plaintiff\xe2\x80\x99s\nproperty was issued to become effective one year hence.\n8\n\n157\n\n\x0cnuisance is abated by improved techniques prior to said\ndate.\nSpur Industries, Inc. v. Del E. Webb Development\nCo., 494 P.2d 700 (Ariz. 1972)\nSnell & Wilmer, by Mark Wilmer, and John Lundin,\nPhoenix, for appellant and cross-appellee.\nL. Dennis Marlowe, Tempe, for appellee and crossappellant.\nCAMERON, Vice Chief Justice.\nFrom a judgment permanently enjoining the defendant,\nSpur Industries, Inc., from operating a cattle feedlot near\nthe plaintiff Del E. Webb Development Company\xe2\x80\x99s Sun\nCity, Spur appeals. Webb cross-appeals. Although\nnumerous issues are raised, we feel that it is necessary to\nanswer only two questions. They are:\n1. Where the operation of a business, such as a cattle\nfeedlot is lawful in the first instance, but becomes a\nnuisance by reason of a nearby residential area, may\nthe feedlot operation be enjoined in an action\nbrought by the developer of the residential area?\n2. Assuming that the nuisance may be enjoined, may\nthe developer of a completely new town or urban\narea in a previously agricultural area be required to\nindemnify the operator of the feedlot who must\nmove or cease operation because of the presence of\nthe residential area created by the developer?\nThe facts necessary for a determination of this matter on\nappeal are as follows. The area in question is located in\nMaricopa County, Arizona, some 14 to 15 miles west of the\nurban area of Phoenix, on the Phoenix-Wickenburg\nHighway, also known as Grand Avenue. About two miles\nsouth of Grand Avenue is Olive Avenue which runs east\nand west. 111th Avenue runs north and south as does the\n\n158\n\n\x0cAgua Fria River immediately to the west. See Exhibits A\nand B below.\nFarming started in this area about 1911. In 1929, with the\ncompletion of the Carl Pleasant Dam, gravity flow water\nbecame available to the property located to the west of the\nAgua Fria River, though land to the east remained\ndependent upon well water for irrigation. By 1950, the only\nurban areas in the vicinity were the agriculturally related\ncommunities of Peoria, El Mirage, and Surprise located\nalong Grand Avenue. Along 111th Avenue, approximately\none mile south of Grand Avenue and 1 1/2 miles north of\nOlive Avenue, the community of Youngtown was\ncommenced in 1954. Youngtown is a retirement\ncommunity appealing primarily to senior citizens.\nIn 1956, Spur\xe2\x80\x99s predecessors in interest, H. Marion\nWelborn and the Northside Hay Mill and Trading\nCompany, developed feed-lots, about 1/2 mile south of\nOlive Avenue, in an area between the confluence of the\nusually dry Agua Fria and New Rivers. The area is well\nsuited for cattle feeding and in 1959, there were 25 cattle\nfeeding pens or dairy operations within a 7 mile radius of\nthe location developed by Spur\xe2\x80\x99s predecessors. In April and\nMay of 1959, the Northside Hay Mill was feeding between\n6,000 and 7,000 head of cattle and Welborn approximately\n1,500 head on a combined area of 35 acres.\nIn May of 1959, Del Webb began to plan the development\nof an urban area to be known as Sun City. For this purpose,\nthe Marinette and the Santa Fe Ranches, some 20,000 acres\nof farmland, were purchased for $15,000,000 or $750.00\nper acre. This price was considerably less than the price of\nland located near the urban area of Phoenix, and along with\nthe success of Youngtown was a factor influencing the\ndecision to purchase the property in question.\nBy September 1959, Del Webb had started construction of\na golf course south of Grand Avenue and Spur\xe2\x80\x99s\n\n159\n\n\x0cpredecessors had started to level ground for more feedlot\narea. In 1960, Spur purchased the property in question and\nbegan a rebuilding and expansion program extending both\nto the north and south of the original facilities. By 1962,\nSpur\xe2\x80\x99s expansion program was completed and had\nexpanded from approximately 35 acres to 114 acres. See\nExhibit A above.\nAccompanied by an extensive advertising campaign, homes\nwere first offered by Del Webb in January 1960 and the\nfirst unit to be completed was south of Grand Avenue and\napproximately 2 1/2 miles north of Spur. By 2 May 1960,\nthere were 450 to 500 houses completed or under\nconstruction. At this time, Del Webb did not consider\nodors from the Spur feed pens a problem and Del Webb\ncontinued to develop in a southerly direction, until sales\nresistance became so great that the parcels were difficult if\nnot impossible to sell. Thomas E. Breen, Vice President\nand General Manager of the housing division of Del Webb,\ntestified at deposition as follows:\nQ Did you ever have any discussions\nwith Tony Cole at or about the time\nthe sales office was opened south of\nPeoria concerning the problem in sales\nas the development came closer\ntowards the feed lots?\nA Not at the time that that facility was\nopened. That was subsequent to that.\nQ All right, what is it that you recall\nabout conversations with Cole on that\nsubject?\nA Well, when the feed lot problem\nbecame a bigger problem, which,\nreally, to the best of my recollection,\ncommenced to become a serious\nproblem in 1963, and there was some\n\n160\n\n\x0ctalk about not developing that area\nbecause of sales resistance, and to my\nrecollection we shifted-we had planned\nat that time to the eastern portion of\nthe property, and it was a\nconsideration.\nQ Was any specific suggestion made\nby Mr. Cole as to the line of\ndemarcation that should be drawn or\nanything of that type exactly where the\ndevelopment should cease?\nA I don\xe2\x80\x99t recall anything specific as far\nas the definite line would be, other\nthan, you know, that it would be\nadvisable to stay out of the\nsouthwestern portion there because of\nsales resistance.\nQ And to the best of your recollection,\nthis was in about 1963?\nA That would be my recollection, yes.\nQ As you recall it, what was the reason\nthat the suggestion was not adopted to\nstop developing towards the southwest\nof the development?\nA Well, as far as I know, that decision\nwas made subsequent to that time.\nQ Right. But I mean at that time?\nA Well, at that time what I am really\nreferring to is more of a long-range\nplanning than immediate planning, and\nI think it was the case of just trying to\nfigure out how far you could go with it\nbefore you really ran into a lot of sales\n\n161\n\n\x0cresistance and found a necessity to\nshift the direction.\nQ So that plan was to go as far as you\ncould until the resistance got to the\npoint where you couldn\xe2\x80\x99t go any\nfurther?\nA I would say that is reasonable, yes.\nBy December 1967, Del Webb\xe2\x80\x99s property had extended\nsouth to Olive Avenue and Spur was within 500 feet of\nOlive Avenue to the north. See Exhibit B above. Del Webb\nfiled its original complaint alleging that in excess of 1,300\nlots in the southwest portion were unfit for development\nfor sale as residential lots because of the operation of the\nSpur feedlot.\nDel Webb\xe2\x80\x99s suit complained that the Spur feeding\noperation was a public nuisance because of the flies and the\nodor which were drifting or being blown by the prevailing\nsouth to north wind over the southern portion of Sun City.\nAt the time of the suit, Spur was feeding between 20,000\nand 30,000 head of cattle, and the facts amply support the\nfinding of the trial court that the feed pens had become a\nnuisance to the people who resided in the southern part of\nDel Webb\xe2\x80\x99s development. The testimony indicated that\ncattle in a commercial feedlot will produce 35 to 40 pounds\nof wet manure per day, per head, or over a million pounds\nof wet manure per day for 30,000 head of cattle, and that\ndespite the admittedly good feedlot management and good\nhousekeeping practices by Spur, the resulting odor and flies\nproduced an annoying if not unhealthy situation as far as\nthe senior citizens of southern Sun City were concerned.\nThere is no doubt that some of the citizens of Sun City\nwere unable to enjoy the outdoor living which Del Webb\nhad advertised and that Del Webb was faced with sales\nresistance from prospective purchasers as well as strong\n\n162\n\n\x0cand persistent complaints from the people who had\npurchased homes in that area.\nTrial was commenced before the court with an advisory\njury. The advisory jury was later discharged and the trial\nwas continued before the court alone. Findings of fact and\nconclusions of law were requested and given. The case was\nvigorously contested, including special actions in this court\non some of the matters. In one of the special actions before\nthis court, Spur agreed to, and did, shut down its operation\nwithout prejudice to a determination of the matter on\nappeal. On appeal the many questions raised were\nextensively briefed.\nIt is noted, however, that neither the citizens of Sun City\nnor Youngtown are represented in this lawsuit and the suit\nis solely between Del E. Webb Development Company and\nSpur Industries, Inc.\nMAY SPUR BE ENJOINED?\nThe difference between a private nuisance and a public\nnuisance is generally one of degree. A private nuisance is\none affecting a single individual or a definite small number\nof persons in the enjoyment of private rights not common\nto the public, while a public nuisance is one affecting the\nrights enjoyed by citizens as a part of the public. To\nconstitute a public nuisance, the nuisance must affect a\nconsiderable number of people or an entire community or\nneighborhood. City of Phoenix v. Johnson, 51 Ariz. 115, 75\nP.2d 30 (1938).\nWhere the injury is slight, the remedy for minor\ninconveniences lies in an action for damages rather than in\none for an injunction. Kubby v. Hammond, 68 Ariz. 17, 198\nP.2d 134 (1948). Moreover, some courts have held, in the\n\xe2\x80\x98balancing of conveniences\xe2\x80\x99 cases, that damages may be the\nsole remedy. See Boomer v. Atlantic Cement Co., 26 N.Y.2d\n219, 309 N.Y.S.2d 312, 257 N.E.2d 870, 40 A.L.R.3d 590\n(1970), and annotation comments, 40 A.L.R.3d 601.\n\n163\n\n\x0cThus, it would appear from the admittedly incomplete\nrecord as developed in the trial court, that, at most,\nresidents of Youngtown would be entitled to damages\nrather than injunctive relief.\nWe have no difficulty, however, in agreeing with the\nconclusion of the trial court that Spur\xe2\x80\x99s operation was an\nenjoinable public nuisance as far as the people in the\nsouthern portion of Del Webb\xe2\x80\x99s Sun City were concerned.\ns 36-601, subsec. A reads as follows:\ns 36-601. Public nuisances dangerous\nto public health\nA. The following conditions are\nspecifically\ndeclared\npublic\nnuisances dangerous to the public\nhealth:\nAny condition or place in\npopulous\nareas\nwhich\nconstitutes a breeding place\nfor\nflies,\nrodents,\nmosquitoes\nand\nother\ninsects which are capable of\ncarrying and transmitting\ndisease-causing organisms to\nany person or persons.\nBy this statute, before an otherwise lawful (and necessary)\nbusiness may be declared a public nuisance, there must be a\n\xe2\x80\x98populous\xe2\x80\x99 area in which people are injured:\n* * * (I)t hardly admits a doubt that, in\ndetermining the question as to whether\na lawful occupation is so conducted as\nto constitute a nuisance as a matter of\nfact, the locality and surroundings are\nof the first importance. (citations\nomitted) A business which is not per\n\n164\n\n\x0cse a public nuisance may become such\nby being carried on at a place where\nthe health, comfort, or convenience of\na populous neighborhood is affected. *\n* * What might amount to a serious\nnuisance in one locality by reason of\nthe density of the population, or\ncharacter of the neighborhood\naffected, may in another place and\nunder different surroundings be\ndeemed proper and unobjectionable. *\n* *.\nMacDonald v. Perry, 32 Ariz. 39, 49-50, 255 P. 494, 497\n(1927).\nIt is clear that as to the citizens of Sun City, the operation\nof Spur\xe2\x80\x99s feedlot was both a public and a private nuisance.\nThey could have successfully maintained an action to abate\nthe nuisance. Del Webb, having shown a special injury in\nthe loss of sales, had a standing to bring suit to enjoin the\nnuisance. Engle v. Clark, 53 Ariz. 472, 90 P.2d 994 (1939);\nCity of Phoenix v. Johnson, supra. The judgment of the trial\ncourt permanently enjoining the operation of the feedlot is\naffirmed.\nMUST DEL WEBB INDEMNIFY SPUR?\nA suit to enjoin a nuisance sounds in equity and the courts\nhave long recognized a special responsibility to the public\nwhen acting as a court of equity:\ns 104. Where public interest is\ninvolved.\nCourts of equity may, and\nfrequently do, go much further\nboth to give and withhold relief\nin furtherance of the public\ninterest than they are accustomed\nto go when only private interests\n\n165\n\n\x0care involved. Accordingly, the\ngranting or withholding of relief\nmay properly be dependent upon\nconsiderations of public interest.\n* * *.\n27 Am.Jur.2d, Equity, page 626.\nIn addition to protecting the public interest, however,\ncourts of equity are concerned with protecting the operator\nof a lawfully, albeit noxious, business from the result of a\nknowing and willful encroachment by others near his\nbusiness.\nIn the so-called \xe2\x80\x98coming to the nuisance\xe2\x80\x99 cases, the courts\nhave held that the residential landowner may not have relief\nif he knowingly came into a neighborhood reserved for\nindustrial or agricultural endeavors and has been damaged\nthereby:\nPlaintiffs chose to live in an area\nuncontrolled by zoning laws or\nrestrictive covenants and remote from\nurban development. In such an area\nplaintiffs cannot complain that\nlegitimate agricultural pursuits are\nbeing carried on in the vicinity, nor\ncan plaintiffs, having chosen to build\nin an agricultural area, complain that\nthe agricultural pursuits carried on in\nthe area depreciate the value of their\nhomes. The area being Primarily\nagricultural, and opinion reflecting the\nvalue of such property must take this\nfactor into account. The standards\naffecting the value of residence\nproperty in an urban setting, subject to\nzoning controls and controlled\nplanning techniques, cannot be the\nstandards by which agricultural\nproperties are judged.\n\n166\n\n\x0cPeople employed in a city who build\ntheir homes in suburban areas of the\ncounty beyond the limits of a city and\nzoning regulations do so for a reason.\nSome do so to avoid the high taxation\nrate imposed by cities, or to avoid\nspecial assessments for street, sewer\nand water projects. They usually build\non improved or hard surface highways,\nwhich have been built either at state or\ncounty expense and thereby avoid\nspecial\nassessments\nfor\nthese\nimprovements. It may be that they\ndesire to get away from the congestion\nof traffic, smoke, noise, foul air and\nthe many other annoyances of city life.\nBut with all these advantages in going\nbeyond the area which is zoned and\nrestricted to protect them in their\nhomes, they must be prepared to take\nthe disadvantages.\nDill v. Excel Packing Company, 183 Kan. 513, 525, 526, 331\nP.2d 539, 548, 549 (1958). See also East St. Johns Shingle Co.\nv. City of Portland, 195 Or. 505, 246 P.2d 554, 560-562\n(1952).\nAnd:\n* * * a party cannot justly call upon the\nlaw to make that place suitable for his\nresidence which was not so when he\nselected it. * * *.\nGilbert v. Showerman, 23 Mich. 448, 455, 2 Brown 158 (1871).\nWere Webb the only party injured, we would feel justified\nin holding that the doctrine of \xe2\x80\x98coming to the nuisance\xe2\x80\x99\nwould have been a bar to the relief asked by Webb, and, on\nthe other hand, had Spur located the feedlot near the\noutskirts of a city and had the city grown toward the\n\n167\n\n\x0cfeedlot, Spur would have to suffer the cost of abating the\nnuisance as to those people locating within the growth\npattern of the expanding city:\nThe case affords, perhaps, an example\nwhere a business established at a place\nremote from population is gradually\nsurrounded and becomes part of a\npopulous center, so that a business\nwhich formerly was not an\ninterference with the rights of others\nhas become so by the encroachment\nof the population * * *.\nCity of Ft. Smith v. Western Hide & Fur Co., 153 Ark. 99, 103,\n239 S.W. 724, 726 (1922).\nWe agree, however, with the Massachusetts court that:\nThe law of nuisance affords no rigid\nrule to be applied in all instances. It is\nelastic. It undertakes to require only\nthat which is fair and reasonable under\nall\nthe\ncircumstances.\nIn\na\ncommonwealth like this, which\ndepends for its material prosperity so\nlargely on the continued growth and\nenlargement of manufacturing of\ndiverse varieties, \xe2\x80\x98extreme rights\xe2\x80\x99\ncannot be enforced. * * *.\nStevens v. Rockport Granite Co., 216 Mass. 486, 488, 104 N.E.\n371, 373 (1914).\nThere was no indication in the instant case at the time Spur\nand its predecessors located in western Maricopa County\nthat a new city would spring up, full-blown, alongside the\nfeeding operation and that the developer of that city would\nask the court to order Spur to move because of the new\ncity. Spur is required to move not because of any\nwrongdoing on the part of Spur, but because of a proper\n\n168\n\n\x0cand legitimate regard of the courts for the rights and\ninterests of the public.\nDel Webb, on the other hand, is entitled to the relief\nprayed for (a permanent injunction), not because Webb is\nblameless, but because of the damage to the people who\nhave been encouraged to purchase homes in Sun City. It\ndoes not equitable or legally follow, however, that Webb,\nbeing entitled to the injunction, is then free of any liability\nto Spur if Webb has in fact been the cause of the damage\nSpur has sustained. It does not seem harsh to require a\ndeveloper, who has taken advantage of the lesser land\nvalues in a rural area as well as the availability of large tracts\nof land on which to build and develop a new town or city\nin the area, to indemnify those who are forced to leave as a\nresult.\nHaving brought people to the nuisance to the foreseeable\ndetriment of Spur, Webb must indemnify Spur for a\nreasonable amount of the cost of moving or shutting down.\nIt should be noted that this relief to Spur is limited to a\ncase wherein a developer has, with foreseeability, brought\ninto a previously agricultural or industrial area the\npopulation which makes necessary the granting of an\ninjunction against a lawful business and for which the\nbusiness has no adequate relief.\nIt is therefore the decision of this court that the matter be\nremanded to the trial court for a hearing upon the damages\nsustained by the defendant Spur as a reasonable and direct\nresult of the granting of the permanent injunction. Since\nthe result of the appeal may appear novel and both sides\nhave obtained a measure of relief, it is ordered that each\nside will bear its own costs.\nAffirmed in part, reversed in part, and remanded for\nfurther proceedings consistent with this opinion.\n\n169\n\n\x0cProblems\n1. Why might the Prah court have found no nuisance in the Boomer\ncase? Make the argument.\n2. Does the court invoke a property rule or liability rule in Boomer?\n(a) What additional or different facts could you add to that case\nthat might help you argue that the court should have used the\nother rule? Explain.\n(b) What additional or different facts would lead you to\nconclude the court should have used Rule 4 (as in Spur)?\nExplain.\nAnswers\n1. Why might the Prah court have found no nuisance in the Boomer\ncase? Make the argument.\nOnly a substantial and unreasonable interference with the\nplaintiff\xe2\x80\x99s use of his or her property will constitute a nuisance.\nThe Prah court held the Restatement\xe2\x80\x99s reasonable use doctrine\nshould be applied in nuisance cases. That doctrine requires\nthe court to balance the utility of the defendant\xe2\x80\x99s conduct\nagainst the harm to the plaintiff. In Boomer, the lower court\ndetermined that the value of the cement plant far exceeded\nthe costs to the plaintiffs. Thus, under the reasonable use\ndoctrine, there is (arguably) no nuisance.\n2. Does the court invoke a property rule or liability rule in Boomer?\nLiability rule. The Court awards permanent damages, meaning\ndamages that will compensate for all the harms complained of\nnow and in the future without further liability, allowing the\nplant to continue in operation.\n(a) What additional or different facts could you add to that case\nthat might help you argue that the court should have used the other\nrule? Explain.\n\n170\n\n\x0cThere are a number of possible answers here. Two main kinds\nof examples would be: (1) those in which we\xe2\x80\x99re certain who\ncan most cheaply avoid the costs (and so don\xe2\x80\x99t worry that a\ntransaction between the parties will be necessary after the\nlitigation) or (2) those in which we, for some reason, aren\xe2\x80\x99t\nworried that transactions will be expensive (and so if we\naward the wrong party with the entitlement, we\xe2\x80\x99re pretty sure\nthe parties will be able to bargain around it, a la Coase).\nAn example of (1): There exists a scrubber that would clean\nthe plant\xe2\x80\x99s emissions sufficiently to avoid almost all of the\nharm to the plaintiffs. And the cost of the scrubber is\nobviously less than the value of the harm to the plaintiffs.\nThere\xe2\x80\x99s no uncertainty or guesswork for the court. In this\ncase, we\xe2\x80\x99d just give an injunction to the plaintiffs (property\nrule protection of plaintiffs). Defendant plant would then\ninstall the scrubber.\nAn example of (2): Perhaps instead of a bunch of neighbors,\nwe have only one neighbor that is harmed, and it\xe2\x80\x99s a business.\nThough that business still might strategically attempt to hold\nout for a lot of cash, there is less danger of irrational holdouts than there is with 300 residents. In this case, we\xe2\x80\x99re more\nconfident a transaction between the parties will fix any error\nwe make in the initial entitlement. (To be clear, I mean that if,\nfor example, we say it\xe2\x80\x99s a nuisance and that plaintiff wins but\nin fact the use is more valuable to defendant than the injuries\nare costly to the plaintiffs, the parties will be able to work out\na deal afterwards that will allow defendant to continue.)\n(b) What additional or different facts would lead you to conclude\nthe court should have used Rule 4 (as in Spur)? Explain.\nOne possibility is that the neighbors could be posited to have\nmoved in after the cement company had begun operations.\nThis would be a \xe2\x80\x9ccoming to the nuisance\xe2\x80\x9d case like Spur.\nComing to the nuisance is usually a defense to nuisance,\nmeaning that it will give the court a reason to decide there\n\n171\n\n\x0cwasn\xe2\x80\x99t a nuisance at all. It didn\xe2\x80\x99t do that in Spur because of the\nmany people who now lived around the cattle operations. It\nhad become obvious that this land was more valuable as\nresidential area than cattle farming land. You could make up\nthese same facts here.\nAnother possibility, suggested by the Calabresi article, is that the\ncosts to the plaintiffs of the pollution are extremely difficult to value.\nSuppose the pollution is some kind of annoying dust, and there is a\ngreat diversity of uses in a neighboring residential/office/strip mall\narea. It will be costly to determine the amount of damages for each of\nthese differently situated users. It may be cheap, though, to figure out\nhow much the plant would be injured if it were shut down (or forced\nto install pollution control equipment). And so, on economic\nefficiency grounds, we might force the factory to shut down (or\ninstall the equipment) but only if the neighbors collectively paid the\n(easily calculated) cost. This would be a more realistic possibility if we\nfurther posited some sort of homeowner association or private\ngovernance mechanism that could eliminate holdouts among the\nneighbors.\n\n172\n\n\x0c2. Acquisition by Possession\n2.1 Possession Generally\n2.1.1. Wild Animals\nPierson v. Post, 3 Cai. R. 175 (NY 1805)\nArgument of Counsel\nMr. Sanford, for the now plaintiff. It is firmly settled that\nanimals, feroe naturoe, belong not to anyone. If, then, Post\nhad not acquired any property in the fox, when it was killed\nby Pierson, he had no right in it which could be the subject\nof injury. As, however, a property may be gained in such an\nanimal, it will be necessary to advert to the facts set forth,\nto see whether they are such as could give a legal interest in\nthe creature, that was the cause of the suit below. Finding,\nhunting, and pursuit, are all that the plaint enumerates. To\ncreate a title to an animal feroe naturor, occupancy is\nindispensable. It is the only mode recognized by our\nsystem. 2 Black. Com. 403. The reason of the thing shows\nit to be so. For whatever is not appropriated by positive\ninstitutions, can be exclusively possessed by natural law\nalone. Occupancy is the sole method this code\nacknowledges. Authorities are not wanting to this effect.\nJust. lib. 2, tit. 1, sec. 12. \xe2\x80\x9cFeroe igitur bestioe, simul atque\nab aliiquo captoe fuerint jure gentium statim illius esse\nincipiunt.\xe2\x80\x9d There must be a taking; and even that is not in\nall cases sufficient, for in the same section he observes,\n\xe2\x80\x9cQuicquid autem corum ceperis, eo usque tuum esse\nintelligitur, donec tua custodia coercetur; cum vero tuam\nevaserit custodiam, et in libertatem naturalem sese\nreceperit, tuam esse desinit, et rursus occumpantis fit.\xe2\x80\x9d It is\nadded also that this natural liberty may be regained even if\nin sight of the pursuer, \xe2\x80\x9cita sit, ut difficilis sit ejus\npersecutio.\xe2\x80\x9d In section 13, it is laid down, that even\nwounding will not give a right of property in an animal that\nis unreclaimed. For, notwithstanding the wound, \xe2\x80\x9cmulta\n\n173\n\n\x0caccidere soleant ut eam non capias,\xe2\x80\x9d and \xe2\x80\x9cnon aliter tuam\nesse quam si eam ceperis.\xe2\x80\x9d Fleta (b. 3, p. 175) and Bracton\n(b. 2, ch. 1, p. 86) are in unison with the Roman law-giver.\nIt is manifest, then, from the record, that there was no title\nin Post, and the action, therefore, not maintainable.\nMr. Colden, contra. I admit, with Fleta, that pursuit alone\ndoes not give a right of property in animals feroe naturoe,\nand I admit also that occupancy is to give a title to them.\nBut, then, what kind of occupancy? And here I shall\ncontend it is not such as is derived from manucaption\nalone. In Puffendorf\xe2\x80\x99s Law of Nature and of Nations (b.\n4, ch. 4, sec. 5, n. 6, by Barbeyrac), notice is taken of this\nprinciple of taking possession. It is there combatted, nay,\ndisproved; and in b. 4, ch. 6, sec. 2, n. 2. lbid. sec. 7, n. 2,\ndemonstrated that manucaption is only one of many\nmeans to declare the intention of exclusively appropriating\nthat which was before in a state of nature. Any continued\nact which does this, is equivalent to occupancy. Pursuit,\ntherefore, by a person who starts a wild animal, gives an\nexclusive right whilst it is followed. It is all the possession\nthe nature of the subject admits; it declares the intention\nof acquiring dominion, and is as much to be respected as\nmanucaption itself. The contrary idea, requiring actual\ntaking, proceeds, as Mr. Barbeyrac observes, in Puffendorf\n(b. 4, ch. 6, sec. 10), on a \xe2\x80\x9cfalse notion of possession.\xe2\x80\x9d\nMr. Sanford, in reply. The only authority relied on is that of\nan annotator. On the question now before the court, we\nhave taken our principles from the civil code, and nothing\nhas been urged to impeach those quoted from the authors\nreferred to.\nTOMPKINS, J. delivered the opinion of the court.\nThis cause comes before us on a return to a certiorari\ndirected to one of the justices of Queens county.\nThe question submitted by the counsel in this cause for our\ndetermination is, whether Lodowick Post, by the pursuit\n\n174\n\n\x0cwith his hounds in the manner alleged in his declaration,\nacquired such a right to, or property in, the fox, as will\nsustain an action against Pierson for killing and taking him\naway?\nThe cause was argued with much ability by the counsel on\nboth sides, and presents for our decision a novel and nice\nquestion. It is admitted that a fox is an animal ferae naturae,\nand that property in such animals is acquired by occupancy\nonly. These admissions narrow the discussion to the simple\nquestion of what acts amount to occupancy, applied to\nacquiring right to wild animals?\nIf we have recourse to the ancient writers upon general\nprinciples of law, the judgment below is obviously\nerroneous. Justinian\xe2\x80\x99s Institutes, lib. 2. tit. 1. s. 13. and\nFleta, lib. 3. c. 2. p. 175. adopt the principle, that pursuit\nalone vests no property or right in the huntsman; and that\neven pursuit, accompanied with wounding, is equally\nineffectual for that purpose, unless the animal be actually\ntaken. The same principle is recognised by Bracton, lib. 2.\nc. 1. p. 8.\nPuffendorf, lib. 4. c. 6. s. 2. and 10, defines occupancy of\nbeasts ferae naturae, to be the actual corporal possession of\nthem, and Bynkershoek is cited as coinciding in this\ndefinition. It is indeed with hesitation that Puffendorf\naffirms that a wild beast mortally wounded, or greatly\nmaimed, cannot be fairly intercepted by another, whilst the\npursuit of the person inflicting the wound continues. The\nforegoing authorities are decisive to show that mere pursuit\ngave Post no legal right to the fox, but that he became the\nproperty of Pierson, who intercepted and killed him.\nIt therefore only remains to inquire whether there are any\ncontrary principles, or authorities, to be found in other\nbooks, which ought to induce a different decision. Most of\nthe cases which have occurred in England, relating to\nproperty in wild animals, have either been discussed and\n\n175\n\n\x0cdecided upon the principles of their positive statute\nregulations, or have arisen between the huntsman and the\nowner of the land upon which beasts ferae naturae have\nbeen apprehended; the former claiming them by title of\noccupancy, and the latter ratione soli.Little satisfactory aid\ncan, therefore, be derived from the English reporters.\nBarbeyrac, in his notes on Puffendorf, does not accede to\nthe definition of occupancy by the latter, but, on the\ncontrary, affirms, that actual bodily seizure is not, in all\ncases, necessary to constitute possession of wild animals.\nHe does not, however, describe the acts which, according\nto his ideas, will amount to an appropriation of such\nanimals to private use, so as to exclude the claims of all\nother persons, by title of occupancy, to the same animals;\nand he is far from averring that pursuit alone is sufficient\nfor that purpose. To a certain extent, and as far as\nBarbeyrac appears to me to go, his objections to\nPuffendorf\xe2\x80\x99s definition of occupancy are reasonable and\ncorrect. That is to say, that actual bodily seizure is not\nindispensable to acquire right to, or possession of, wild\nbeasts; but that, on the contrary, the mortal wounding of\nsuch beasts, by one not abandoning his pursuit, may, with\nthe utmost propriety, be deemed possession of him; since,\nthereby, the pursuer manifests an unequivocal intention of\nappropriating the animal to his individual use, has deprived\nhim of his natural liberty, and brought him within his\ncertain control. So also, encompassing and securing such\nanimals with nets and toils, or otherwise intercepting them\nin such a manner as to deprive them of their natural liberty,\nand render escape impossible, may justly be deemed to give\npossession of them to those persons who, by their industry\nand labour, have used such means of apprehending them.\nBarbeyrac seems to have adopted, and had in view in his\nnotes, the more accurate opinion of Grotius, with respect\nto occupancy. That celebrated author, lib. 2. c. 8. s. 3. p.\n309. speaking of occupancy, proceeds thus: \xe2\x80\x9cRequiritur\n\n176\n\n\x0cautem corporalis quaedam possessio ad dominium\nadipiscendum; atque ideo, vulnerasse non sufficit.\xe2\x80\x9d But in\nthe following section he explains and qualifies this\ndefinition of occupancy: \xe2\x80\x9cSed possessio illa potest non solis\nmanibus, sed instrumentis, ut decipulis, retibus, laqueis\ndum duo adsint: primum ut ipsa instrumenta sint in nostra\npotestate, deinde ut fera, ita inclusa sit, ut exire inde\nnequeat.\xe2\x80\x9d This qualification embraces the full extent of\nBarbeyrac\xe2\x80\x99s objection to Puffendorf\xe2\x80\x99s definition, and allows\nas great a latitude to acquiring property by occupancy, as\ncan reasonably be inferred from the words or ideas\nexpressed by Barbeyrac in his notes. The case now under\nconsideration is one of mere pursuit, and presents no\ncircumstances or acts which can bring it within the\ndefinition of occupancy by Puffendorf, or Grotius, or the\nideas of Barbeyrac upon that subject.\nThe case cited from 11 Mod. 74\xe2\x80\x93130. I think clearly\ndistinguishable from the present; inasmuch as there the\naction was for maliciously hindering and disturbing the\nplaintiff in the exercise and enjoyment of a private\nfranchise; and in the report of the same case, 3 Salk. 9.\nHolt, Ch. J. states, that the ducks were in the plaintiff\xe2\x80\x99s\ndecoy pond, and so in his possession, from which it is\nobvious the court laid much stress in their opinion upon\nthe plaintiff\xe2\x80\x99s possession of the ducks, ratione soli.\nWe are the more readily inclined to confine possession or\noccupancy of beasts ferae naturae, within the limits\nprescribed by the learned authors above cited, for the sake\nof certainty, and preserving peace and order in society. If\nthe first seeing, starting, or pursuing such animals, without\nhaving so wounded, circumvented or ensnared them, so as\nto deprive them of their natural liberty, and subject them to\nthe control of their pursuer, should afford the basis of\nactions against others for intercepting and killing them, it\nwould prove a fertile source of quarrels and litigation.\n\n177\n\n\x0cHowever uncourteous or unkind the conduct of Pierson\ntowards Post, in this instance, may have been, yet his act\nwas productive of no injury or damage for which a legal\nremedy can be applied. We are of opinion the judgment\nbelow was erroneous, and ought to be reversed.\nLIVINGSTON, J.\nMy opinion differs from that of the court. Of six\nexceptions, taken to the proceedings below, all are\nabandoned except the third, which reduces the controversy\nto a single question.\nWhether a person who, with his own hounds, starts and\nhunts a fox on waste and uninhabited ground, and is on the\npoint of seizing his prey, acquires such an interest in the\nanimal, as to have a right of action against another, who in\nview of the huntsman and his dogs in full pursuit, and with\nknowledge of the chase, shall kill and carry him away?\nThis is a knotty point, and should have been submitted to\nthe arbitration of sportsmen, without poring over Justinian,\nFleta, Bracton, Puffendorf, Locke, Barbeyrac, or\nBlackstone, all of whom have been cited; they would have\nhad no difficulty in coming to a prompt and correct\nconclusion. In a court thus constituted, the skin and carcass\nof poor reynard would have been properly disposed of, and\na precedent set, interfering with no usage or custom which\nthe experience of ages has sanctioned, and which must be\nso well known to every votary of Diana.But the parties\nhave referred the question to our judgment, and we must\ndispose of it as well as we can, from the partial lights we\npossess, leaving to a higher tribunal, the correction of any\nmistake which we may be so unfortunate as to make. By\nthe pleadings it is admitted that a fox is a \xe2\x80\x9cwild and noxious\nbeast.\xe2\x80\x9d Both parties have regarded him, as the law of\nnations does a pirate, \xe2\x80\x9chostem humani generis,\xe2\x80\x9d and\nalthough \xe2\x80\x9cde mortuis nil nisi bonum,\xe2\x80\x9d be a maxim of our\nprofession, the memory of the deceased has not been\n\n178\n\n\x0cspared. His depredations on farmers and on barn yards,\nhave not been forgotten; and to put him to death wherever\nfound, is allowed to be meritorious, and of public benefit.\nHence it follows, that our decision should have in view the\ngreatest possible encouragement to the destruction of an\nanimal, so cunning and ruthless in his career. But who\nwould keep a pack of hounds; or what gentleman, at the\nsound of the horn, and at peep of day, would mount his\nsteed, and for hours together, \xe2\x80\x9csub jove frigido,\xe2\x80\x9d or a\nvertical sun, pursue the windings of this wily quadruped, if,\njust as night came on, and his stratagems and strength were\nnearly exhausted, a saucy intruder, who had not shared in\nthe honours or labours of the chase, were permitted to\ncome in at the death, and bear away in triumph the object\nof pursuit? Whatever Justinian may have thought of the\nmatter, it must be recollected that his code was compiled\nmany hundred years ago, and it would be very hard indeed,\nat the distance of so many centuries, not to have a right to\nestablish a rule for ourselves. In his day, we read of no\norder of men who made it a business, in the language of the\ndeclaration in this cause, \xe2\x80\x9cwith hounds and dogs to find,\nstart, pursue, hunt, and chase,\xe2\x80\x9d these animals, and that, too,\nwithout any other motive than the preservation of Roman\npoultry; if this diversion had been then in fashion, the\nlawyers who composed his institutes, would have taken\ncare not to pass it by, without suitable encouragement. If\nany thing, therefore, in the digests or pandects shall appear\nto militate against the defendant in error, who, on this\noccasion, was the foxhunter, we have only to say tempora\nmutantur; and if men themselves change with the times,\nwhy should not laws also undergo an alteration?\nIt may be expected, however, by the learned counsel, that\nmore particular notice be taken of their authorities. I have\nexamined them all, and feel great difficulty in determining,\nwhether to acquire dominion over a thing, before in\ncommon, it be sufficient that we barely see it, or know\n\n179\n\n\x0cwhere it is, or wish for it, or make a declaration of our will\nrespecting it; or whether, in the case of wild beasts, setting\na trap, or lying in wait, or starting, or pursuing, be enough;\nor if an actual wounding, or killing, or bodily tact and\noccupation be necessary. Writers on general law, who have\nfavoured us with their speculations on these points, differ\non them all; but, great as is the diversity of sentiment\namong them, some conclusion must be adopted on the\nquestion immediately before us. After mature deliberation,\nI embrace that of Barbeyrac, as the most rational, and least\nliable to objection. If at liberty, we might imitate the\ncourtesy of a certain emperor, who, to avoid giving offence\nto the advocates of any of these different doctrines,\nadopted a middle course, and by ingenious distinctions,\nrendered it difficult to say (as often happens after a fierce\nand angry contest) to whom the palm of victory belonged.\nHe ordained, that if a beast be followed with large dogs and\nhounds, he shall belong to the hunter, not to the chance\noccupant; and in like manner, if he be killed or wounded\nwith a lance or sword; but if chased with beagles only, then\nhe passed to the captor, not to the first pursuer. If slain\nwith a dart, a sling, or a bow, he fell to the hunter, if still in\nchase, and not to him who might afterwards find and seize\nhim.\nNow, as we are without any municipal regulations of our\nown, and the pursuit here, for aught that appears on the\ncase, being with dogs and hounds of imperial stature, we\nare at liberty to adopt one of the provisions just cited,\nwhich comports also with the learned conclusion of\nBarbeyrac, that property in animals ferae naturae may be\nacquired without bodily touch or manucaption, provided\nthe pursuer be within reach, or have a reasonable prospect\n(which certainly existed here) of taking, what he has thus\ndiscovered an intention of converting to his own use.\nWhen we reflect also that the interest of our husbandmen,\nthe most useful of men in any community, will be advanced\n\n180\n\n\x0cby the destruction of a beast so pernicious and incorrigible,\nwe cannot greatly err, in saying, that a pursuit like the\npresent, through waste and unoccupied lands, and which\nmust inevitably and speedily have terminated in corporal\npossession, or bodily seisin, confers such a right to the\nobject of it, as to make any one a wrongdoer, who shall\ninterfere and shoulder the spoil. The justice\xe2\x80\x99s judgment\nought, therefore, in my opinion, to be affirmed.\nGhen v. Rich, 8 F. 159 (D. Mass. 1881)\nH. M. Knowlton, for libellant.\nH. P. Harriman, for respondent.\nNELSON, D. J.\nThis is a libel to recover the value of a fin-back whale. The\nlibellant lives in Provincetown and the respondent in\nWellfleet. The facts, as they appeared at the hearing, are as\nfollows:\nIn the early spring months the easterly\npart of Massachusetts bay is\nfrequented by the species of whale\nknown as the fin-back whale.\nFishermen from Provincetown pursue\nthem in open boats from the shore,\nand shoot them with bomb-lances\nfired from guns made expressly for the\npurpose. When killed they sink at once\nto the bottom, but in the course of\nfrom one to three days they rise and\nfloat on the surface. Some of them are\npicked up by vessels and towed into\nProvincetown. Some float ashore at\nhigh water and are left stranded on the\nbeach as the tide recedes. Others float\nout to sea and are never recovered.\nThe person who happens to find them\non the beach usually sends word to\nProvincetown, and the owner comes\n\n181\n\n\x0cto the spot and removes the blubber.\nThe finder usually receives a small\nsalvage for his services. Try-works are\nestablished in Provincetown for trying\nout the oil. The business is of\nconsiderable extent, but, since it\nrequires skill and experience, as well as\nsome outlay of capital, and is attended\nwith great exposure and hardship, few\npersons engage in it. The average yield\nof oil is about 20 barrels to a whale. It\nswims with great swiftness, and for\nthat reason cannot be taken by the\nharpoon and line. Each boat\xe2\x80\x99s crew\nengaged in the business has its peculiar\nmark or device on its lances, and in\nthis way it is known by whom a whale\nis killed.\nThe usage on Cape Cod, for many\nyears, has been that the person who\nkills a whale in the manner and under\nthe circumstances described, owns it,\nand this right has never been disputed\nuntil this case. The libellant has been\nengaged in this business for ten years\npast. On the morning of April 9, 1880,\nin Massachusetts bay, near the end of\nCape Cod, he shot and instantly killed\nwith a bomb-lance the whale in\nquestion. It sunk immediately, and on\nthe morning of the 12th was found\nstranded on the beach in Brewster,\nwithin the ebb and flow of the tide, by\none Ellis, 17 Miles from the spot\nwhere it was killed. Instead of sending\nword to Provincetown, as is\ncustomary, Ellis advertised the whale\nfor sale at auction, and sold it ot the\nrespondent, who shipped off the\nblubber and tried out the oil. The\n\n182\n\n\x0clibellant heard of the finding of the\nwhale on the morning of the 15th, and\nimmediately sent one of his boat\xe2\x80\x99s\ncrew to the place and claimed it.\nNeither the respondent nor Ellis knew\nthe whale had been killed by the\nlibellant, but they knew or might have\nknown, if they had wished, that it had\nbeen shot and killed with a bomblance, by some person engaged in this\nspecies of business.\nThe libellant claims title to the whale under this usage. The\nrespondent insists that this usage is invalid. It was decided\nby Judge Sprague, in Taber v. Jenny, 1 Sprague, 315, that\nwhen a whale has been killed, and is anchored and left with\nmarks of appropriation, it is the property of the captors;\nand if it is afterwards found, still anchored, by another ship,\nthere is no usage or principle of law by which the property\nof the original captors is diverted, even though the whale\nmay have dragged from its anchorage. The learned judge\nsays:\nWhen the whale had been killed and\ntaken possession of by the boat of the\nHillman, (the first taker,) it became the\nproperty of the owners of that ship,\nand all was done which was the\npracticable in order to secure it. They\nleft it anchored, with unequivocal\nmarks of appropriation.\nIn Bartlett v. Budd, 1 Low. 223, the facts were these: The\nfirst officer of the libellant\xe2\x80\x99s ship killed a whale in the\nOkhotsk sea, anchored it, attached a waif to the body, and\nthen left it and went ashore at some distance for the night.\nThe next morning the boats of the respondent\xe2\x80\x99s ship found\nthe whale adrift, the anchor not holding, the cable coiled\nround the body, and no waif or irons attached to it. Judge\n\n183\n\n\x0cLowell held that, as the libellants had killed and taken actual\npossession of the whale, the ownership vested in them. In\nhis opinion the learned judge says:\nA whale, being ferae naturae, does not\nbecome property until a firm\npossession has been established by the\ntaker. But when such possession has\nbecome firm and complete, the right\nof property is clear, and has all the\ncharacteristics of property.\nHe doubted whether a usage set up but not proved by the\nrespondents, that a whale found adrift in the ocean is the\nproperty of the finder, unless the first taker should appear\nand claim it before it is cut in, would be valid, and\nremarked that \xe2\x80\x9cthere would be great difficulty in upholding\na custom that should take the property of A. and give it to\nB., under so very short and uncertain a substitute for the\nstatute of limitations, and one so open to fraud and deceit.\xe2\x80\x9d\nBoth the cases cited were decided without reference to\nusage, upon the ground that the property had been\nacquired by the first taker by actual possession and\nappropriation.\nIn Swift v. Gifford, 1 Low, 110, Judge Lowell decided that a\ncustom among whalemen in the Arctic seas, that the iron\nholds the whale was reasonable and valid. In that case a\nboat\xe2\x80\x99s crew from the resondent\xe2\x80\x99s ship pursued and struck a\nwhale in the Arctic ocean, and the harpoon and the line\nattached to it remained in the whale, but did not remain\nfast to the boat. A boat\xe2\x80\x99s crew from the libellant\xe2\x80\x99s ship\ncontinued the pursuit and captured the whale, and the\nmaster of the respondent\xe2\x80\x99s ship claimed it on the spot. It\nwas held by the learned judge that the whale belonged to\nthe respondents. It was said by Judge Sprague, in Bourne v.\nAshley, an unprinted case referred to by Judge Lowell in\nSwift v. Gifford, that the usage for the first iron, whether\n\n184\n\n\x0cattached to the boat or not, to hold the whale was fully\nestablished; and he added that, although local usages of a\nparticular port ought not to be allowed to set aside the\ngeneral maritime law, this objection did not apply to a\ncustom which embraced an entire business, and had been\nconcurred in for a long time by every one engaged in the\ntrade.\nIn Swift v. Gifford, Judge Lowell also said:\nThe rule of law invoked in this case is\none of very limited application. The\nwhale fishery is the only branch of\nindustry of any importance in which it\nis likely to be much used, and if a\nusage is found to prevail generally in\nthat business, it will not be open to the\nobjection that it is likely to disturb the\ngeneral understanding of mankind by\nthe interposition of an arbitrary\nexception.\nI see no reason why the usage proved in this case is not as\nreasonable as that sustained in the cases cited. Its\napplication must necessarily be extremely limited, and can\naffect but a few persons. It has been recognized and\nacquiesced in for many years. It requires in the first taker\nthe only act of appropriation that is possible in the nature\nof the case. Unless it is sustained, this branch of industry\nmust necessarily cease, for no person would engage in it if\nthe fruits of his labor could be appropriated by any chance\nfinder. It gives reasonable salvage for securing or reporting\nthe property. That the rule works well in practice is shown\nby the extent of the industry which has grown up under it,\nand the general acquiescence of a whole community\ninterested to dispute it. It is by means clear that without\nregard to usage the common law would not reach the same\nresult. That seems to be the effect of the decisions in Taber\nv. Jenny and Bartlett v. Budd. If the fisherman does all that is\n\n185\n\n\x0cpossible to do to make the animal his own, that would\nseem to be sufficient. Such a rule might well be applied in\nthe interest of trade, there being no usage or custom to the\ncontrary. Holmes, Com. Law, 217. But be that as it may, I\nhold the usage to be valid, and that the property in the\nwhale was in the libelant.\nThe rule of damages is the market value of the oil obtained\nfrom the whale, less the cost of trying it out and preparing\nit for the market, with interest on the amount so\nascertained from the date of conversion. As the question is\nnew and important, and the suit is contested on both sides,\nmore for the purpose of having it settled than for the\namount involved, I shall give no costs.\nDecree for libellant for $71.05, without costs.\nFrom Herman Melville, Moby Dick\nCHAPTER 89\nFast-Fish and Loose-Fish\nThe allusion to the waifs and waif-poles in the last chapter but one,\nnecessitates some account of the laws and regulations of the whale\nfishery, of which the waif may be deemed the grand symbol and\nbadge.\nIt frequently happens that when several ships are cruising in\ncompany, a whale may be struck by one vessel, then escape, and be\nfinally killed and captured by another vessel; and herein are\nindirectly comprised many minor contingencies, all partaking of\nthis one grand feature. For example,\xe2\x80\x93after a weary and perilous\nchase and capture of a whale, the body may get loose from the ship\nby reason of a violent storm; and drifting far away to leeward, be\nretaken by a second whaler, who, in a calm, snugly tows it\nalongside, without risk of life or line. Thus the most vexatious and\nviolent disputes would often arise between the fishermen, were\nthere not some written or unwritten, universal, undisputed law\napplicable to all cases.\n\n186\n\n\x0cPerhaps the only formal whaling code authorized by legislative\nenactment, was that of Holland. It was decreed by the StatesGeneral in A.D. 1695. But though no other nation has ever had any\nwritten whaling law, yet the American fishermen have been their\nown legislators and lawyers in this matter. They have provided a\nsystem which for terse comprehensiveness surpasses Justinian\xe2\x80\x99s\nPandects and the By-laws of the Chinese Society for the\nSuppression of Meddling with other People\xe2\x80\x99s Business. Yes; these\nlaws might be engraven on a Queen Anne\xe2\x80\x99s farthing, or the barb of\na harpoon, and worn round the neck, so small are they.\nI. A Fast-Fish belongs to the party fast to it.\nII. A Loose-Fish is fair game for anybody who can soonest catch it.\nBut what plays the mischief with this masterly code is the\nadmirable brevity of it, which necessitates a vast volume of\ncommentaries to expound it.\nFirst: What is a Fast-Fish? Alive or dead a fish is technically fast,\nwhen it is connected with an occupied ship or boat, by any medium\nat all controllable by the occupant or occupants,\xe2\x80\x93a mast, an oar, a\nnine-inch cable, a telegraph wire, or a strand of cobweb, it is all the\nsame. Likewise a fish is technically fast when it bears a waif, or any\nother recognized symbol of possession; so long as the party wailing\nit plainly evince their ability at any time to take it alongside, as well\nas their intention so to do.\nThese are scientific commentaries; but the commentaries of the\nwhalemen themselves sometimes consist in hard words and harder\nknocks\xe2\x80\x93 the Coke-upon-Littleton of the fist. True, among the\nmore upright and honorable whalemen allowances are always made\nfor peculiar cases, where it would be an outrageous moral injustice\nfor one party to claim possession of a whale previously chased or\nkilled by another party. But others are by no means so scrupulous.\nSome fifty years ago there was a curious case of whale-trover\nlitigated in England, wherein the plaintiffs set forth that after a\nhard chase of a whale in the Northern seas; and when indeed they\n(the plaintiffs) had succeeded in harpooning the fish; they were at\n\n187\n\n\x0clast, through peril of their lives, obliged to forsake not only their\nlines, but their boat itself. Ultimately the defendants (the crew of\nanother ship) came up with the whale, struck, killed, seized, and\nfinally appropriated it before the very eyes of the plaintiffs. And\nwhen those defendants were remonstrated with, their captain\nsnapped his fingers in the plaintiffs\xe2\x80\x99 teeth, and assured them that by\nway of doxology to the deed he had done, he would now retain\ntheir line, harpoons, and boat, which had remained attached to the\nwhale at the time of the seizure. Wherefore the plaintiffs now sued\nfor the recovery of the value of their whale, line, harpoons, and\nboat.\nMr. Erskine was counsel for the defendants; Lord Ellenborough\nwas the judge. In the course of the defence, the witty Erskine went\non to illustrate his position, by alluding to a recent crim. con. case,\nwherein a gentleman, after in vain trying to bridle his wife\xe2\x80\x99s\nviciousness, had at last abandoned her upon the seas of life; but in\nthe course of years, repenting of that step, he instituted an action to\nrecover possession of her. Erskine was on the other side; and he\nthen supported it by saying, that though the gentleman had\noriginally harpooned the lady, and had once had her fast, and only\nby reason of the great stress of her plunging viciousness, had at last\nabandoned her; yet abandon her he did, so that she became a\nloose-fish; and therefore when a subsequent gentleman reharpooned her, the lady then became that subsequent gentleman\xe2\x80\x99s\nproperty, along with whatever harpoon might have been found\nsticking in her.\nNow in the present case Erskine contended that the examples of\nthe whale and the lady were reciprocally illustrative of each other.\nThese pleadings, and the counter pleadings, being duly heard, the\nvery learned Judge in set terms decided, to wit,\xe2\x80\x93 That as for the\nboat, he awarded it to the plaintiffs, because they had merely\nabandoned it to save their lives; but that with regard to the\ncontroverted whale, harpoons, and line, they belonged to the\ndefendants; the whale, because it was a Loose-Fish at the time of\nthe final capture; and the harpoons and line because when the fish\nmade off with them, it (the fish) acquired a property in those\n\n188\n\n\x0carticles; and hence anybody who afterwards took the fish had a\nright to them. Now the defendants afterwards took the fish; ergo,\nthe aforesaid articles were theirs.\nA common man looking at this decision of the very learned Judge,\nmight possibly object to it. But ploughed up to the primary rock of\nthe matter, the two great principles laid down in the twin whaling\nlaws previously quoted, and applied and elucidated by Lord\nEllenborough in the above cited case; these two laws touching\nFast-Fish and Loose-Fish, I say, will on reflection, be found the\nfundamentals of all human jurisprudence; For notwithstanding its\ncomplicated tracery of sculpture, the Temple of the Law, like the\nTemple of the Philistines, has but two props to stand on.\nIs it not a saying in every one\xe2\x80\x99s mouth, Possession is half of the\nlaw: that is, regardless of how the thing came into possession? But\noften possession is the whole of the law. What are the sinews and\nsouls of Russian serfs and Republican slaves but Fast-Fish, whereof\npossession is the whole of the law? What to the rapacious landlord\nis the widow\xe2\x80\x99s last mite but a Fast-Fish? What is yonder undetected\nvillain\xe2\x80\x99s marble mansion with a doorplate for a waif; what is that\nbut a Fast-Fish? What is the ruinous discount which Mordecai, the\nbroker, gets from the poor Woebegone, the bankrupt, on a loan to\nkeep Woebegone\xe2\x80\x99s family from starvation; what is that ruinous\ndiscount but a Fast-Fish? What is the Archbishop of Savesoul\xe2\x80\x99s\nincome of 100,000 pounds seized from the scant bread and cheese\nof hundreds of thousands of broken-backed laborers (all sure of\nheaven without any of Savesoul\xe2\x80\x99s help) what is that globular\n100,000 but a Fast-Fish. What are the Duke of Dunder\xe2\x80\x99s hereditary\ntowns and hamlets but Fast-Fish? What to that redoubted\nharpooneer, John Bull, is poor Ireland, but a Fast-Fish? What to\nthat apostolic lancer, Brother Jonathan, is Texas but a Fast-Fish?\nAnd concerning all these, is not Possession the whole of the law?\nBut if the doctrine of Fast-Fish be pretty generally applicable, the\nkindred doctrine of Loose-Fish is still more widely so. That is\ninternationally and universally applicable.\n\n189\n\n\x0cWhat was America in 1492 but a Loose-Fish, in which Columbus\nstruck the Spanish standard by way of wailing it for his royal master\nand mistress? What was Poland to the Czar? What Greece to the\nTurk? What India to England? What at last will Mexico be to the\nUnited States? All Loose-Fish.\nWhat are the Rights of Man and the Liberties of the World but\nLoose-Fish? What all men\xe2\x80\x99s minds and opinions but Loose-Fish?\nWhat is the principle of religious belief in them but a Loose-Fish?\nWhat to the ostentatious smuggling verbalists are the thoughts of\nthinkers but Loose-Fish? What is the great globe itself but a LooseFish? And what are you, reader, but a Loose-Fish and a Fast-Fish,\ntoo?\n2.1.2. Theory\nFrom John Locke, The Second Treatise of Civil Government\n(1690)\nCHAP. V.\nOf Property.\nSec. 25. Whether we consider natural reason, which tells us, that\nmen, being once born, have a right to their preservation, and\nconsequently to meat and drink, and such other things as nature\naffords for their subsistence: or revelation, which gives us an\naccount of those grants God made of the world to Adam, and to\nNoah, and his sons, it is very clear, that God, as king David says,\nPsal. cxv. 16. has given the earth to the children of men; given it to\nmankind in common. But this being supposed, it seems to some a\nvery great difficulty, how any one should ever come to have a\nproperty in any thing: I will not content myself to answer, that if it\nbe difficult to make out property, upon a supposition that God\ngave the world to Adam, and his posterity in common, it is\nimpossible that any man, but one universal monarch, should have\nany property upon a supposition, that God gave the world to\nAdam, and his heirs in succession, exclusive of all the rest of his\nposterity. But I shall endeavour to shew, how men might come to\nhave a property in several parts of that which God gave to\n\n190\n\n\x0cmankind in common, and that without any express compact of all\nthe commoners.\nSec. 26. God, who hath given the world to men in common, hath\nalso given them reason to make use of it to the best advantage of\nlife, and convenience. The earth, and all that is therein, is given to\nmen for the support and comfort of their being. And tho\xe2\x80\x99 all the\nfruits it naturally produces, and beasts it feeds, belong to mankind\nin common, as they are produced by the spontaneous hand of\nnature; and no body has originally a private dominion, exclusive of\nthe rest of mankind, in any of them, as they are thus in their natural\nstate: yet being given for the use of men, there must of necessity be\na means to appropriate them some way or other, before they can\nbe of any use, or at all beneficial to any particular man. The fruit, or\nvenison, which nourishes the wild Indian, who knows no\nenclosure, and is still a tenant in common, must be his, and so his,\ni.e. a part of him, that another can no longer have any right to it,\nbefore it can do him any good for the support of his life.\nSec. 27. Though the earth, and all inferior creatures, be common to\nall men, yet every man has a property in his own person: this no\nbody has any right to but himself. The labour of his body, and the\nwork of his hands, we may say, are properly his. Whatsoever then\nhe removes out of the state that nature hath provided, and left it in,\nhe hath mixed his labour with, and joined to it something that is his\nown, and thereby makes it his property. It being by him removed\nfrom the common state nature hath placed it in, it hath by this\nlabour something annexed to it, that excludes the common right of\nother men: for this labour being the unquestionable property of the\nlabourer, no man but he can have a right to what that is once\njoined to, at least where there is enough, and as good, left in\ncommon for others.\nSec. 28. He that is nourished by the acorns he picked up under an\noak, or the apples he gathered from the trees in the wood, has\ncertainly appropriated them to himself. No body can deny but the\nnourishment is his. I ask then, when did they begin to be his? when\nhe digested? or when he eat? or when he boiled? or when he\nbrought them home? or when he picked them up? and it is plain, if\n\n191\n\n\x0cthe first gathering made them not his, nothing else could. That\nlabour put a distinction between them and common: that added\nsomething to them more than nature, the common mother of all,\nhad done; and so they became his private right. And will any one\nsay, he had no right to those acorns or apples, he thus\nappropriated, because he had not the consent of all mankind to\nmake them his? Was it a robbery thus to assume to himself what\nbelonged to all in common? If such a consent as that was\nnecessary, man had starved, notwithstanding the plenty God had\ngiven him. We see in commons, which remain so by compact, that\nit is the taking any part of what is common, and removing it out of\nthe state nature leaves it in, which begins the property; without\nwhich the common is of no use. And the taking of this or that part,\ndoes not depend on the express consent of all the commoners.\nThus the grass my horse has bit; the turfs my servant has cut; and\nthe ore I have digged in any place, where I have a right to them in\ncommon with others, become my property, without the assignation\nor consent of any body. The labour that was mine, removing them\nout of that common state they were in, hath fixed my property in\nthem.\nSec. 29. By making an explicit consent of every commoner,\nnecessary to any one\xe2\x80\x99s appropriating to himself any part of what is\ngiven in common, children or servants could not cut the meat,\nwhich their father or master had provided for them in common,\nwithout assigning to every one his peculiar part. Though the water\nrunning in the fountain be every one\xe2\x80\x99s, yet who can doubt, but that\nin the pitcher is his only who drew it out? His labour hath taken it\nout of the hands of nature, where it was common, and belonged\nequally to all her children, and hath thereby appropriated it to\nhimself.\nSec. 30. Thus this law of reason makes the deer that Indian\xe2\x80\x99s who\nhath killed it; it is allowed to be his goods, who hath bestowed his\nlabour upon it, though before it was the common right of every\none. And amongst those who are counted the civilized part of\nmankind, who have made and multiplied positive laws to determine\nproperty, this original law of nature, for the beginning of property,\n\n192\n\n\x0cin what was before common, still takes place; and by virtue thereof,\nwhat fish any one catches in the ocean, that great and still\nremaining common of mankind; or what ambergrise any one takes\nup here, is by the labour that removes it out of that common state\nnature left it in, made his property, who takes that pains about it.\nAnd even amongst us, the hare that any one is hunting, is thought\nhis who pursues her during the chase: for being a beast that is still\nlooked upon as common, and no man\xe2\x80\x99s private possession;\nwhoever has employed so much labour about any of that kind, as\nto find and pursue her, has thereby removed her from the state of\nnature, wherein she was common, and hath begun a property.\nSec. 31. It will perhaps be objected to this, that if gathering the\nacorns, or other fruits of the earth, &c. makes a right to them, then\nany one may ingross as much as he will. To which I answer, Not\nso. The same law of nature, that does by this means give us\nproperty, does also bound that property too. God has given us all\nthings richly, 1 Tim. vi. 12. is the voice of reason confirmed by\ninspiration. But how far has he given it us? To enjoy. As much as\nany one can make use of to any advantage of life before it spoils, so\nmuch he may by his Tabour fix a property in: whatever is beyond\nthis, is more than his share, and belongs to others. Nothing was\nmade by God for man to spoil or destroy. And thus, considering\nthe plenty of natural provisions there was a long time in the world,\nand the few spenders; and to how small a part of that provision the\nindustry of one man could extend itself, and ingross it to the\nprejudice of others; especially keeping within the bounds, set by\nreason, of what might serve for his use; there could be then little\nroom for quarrels or contentions about property so established.\nSec. 32. But the chief matter of property being now not the fruits\nof the earth, and the beasts that subsist on it, but the earth itself; as\nthat which takes in and carries with it all the rest; I think it is plain,\nthat property in that too is acquired as the former. As much land as\na man tills, plants, improves, cultivates, and can use the product of,\nso much is his property. He by his labour does, as it were, inclose it\nfrom the common. Nor will it invalidate his right, to say every body\nelse has an equal title to it; and therefore he cannot appropriate, he\n\n193\n\n\x0ccannot inclose, without the consent of all his fellow-commoners,\nall mankind. God, when he gave the world in common to all\nmankind, commanded man also to labour, and the penury of his\ncondition required it of him. God and his reason commanded him\nto subdue the earth, i.e. improve it for the benefit of life, and\ntherein lay out something upon it that was his own, his labour. He\nthat in obedience to this command of God, subdued, tilled and\nsowed any part of it, thereby annexed to it something that was his\nproperty, which another had no title to, nor could without injury\ntake from him.\nSec. 33. Nor was this appropriation of any parcel of land, by\nimproving it, any prejudice to any other man, since there was still\nenough, and as good left; and more than the yet unprovided could\nuse. So that, in effect, there was never the less left for others\nbecause of his enclosure for himself: for he that leaves as much as\nanother can make use of, does as good as take nothing at all. No\nbody could think himself injured by the drinking of another man,\nthough he took a good draught, who had a whole river of the same\nwater left him to quench his thirst: and the case of land and water,\nwhere there is enough of both, is perfectly the same.\nSec. 34. God gave the world to men in common; but since he gave\nit them for their benefit, and the greatest conveniencies of life they\nwere capable to draw from it, it cannot be supposed he meant it\nshould always remain common and uncultivated. He gave it to the\nuse of the industrious and rational, (and labour was to be his title to\nit;) not to the fancy or covetousness of the quarrelsome and\ncontentious. He that had as good left for his improvement, as was\nalready taken up, needed not complain, ought not to meddle with\nwhat was already improved by another\xe2\x80\x99s labour: if he did, it is plain\nhe desired the benefit of another\xe2\x80\x99s pains, which he had no right to,\nand not the ground which God had given him in common with\nothers to labour on, and whereof there was as good left, as that\nalready possessed, and more than he knew what to do with, or his\nindustry could reach to.\n\n194\n\n\x0cFrom Jeremy Bentham, Principles of the Civil Code\nPart 1: Objects of the Civil Law.\nChapter 8: Of Property.\nThat we may more completely estimate the advantage of the law,\nlet us endeavour to form a clear idea of property. We shall see that\nthere is no natural property\xe2\x80\x94that property is entirely the creature\nof law.\nProperty is only a foundation of expectation\xe2\x80\x94the expectation of\nderiving certain advantages from the thing said to be possessed, in\nconsequence of the relations in which one already stands to it.\nThere is no form, or colour, or visible trace, by which it is possible\nto express the relation which constitutes property. It belongs not to\nphysics, but to metaphysics: it is altogether a creature of the mind.\nTo have the object in one\xe2\x80\x99s hand\xe2\x80\x94to keep it, to manufacture it, to\nsell it, to change its nature, to employ it\xe2\x80\x94all these physical\ncircumstances do not give the idea of property. A piece of cloth\nwhich is actually in the Indies may belong to me, whilst the dress\nwhich I have on may not be mine. The food which is incorporated\nwith my own substance may belong to another, to whom I must\naccount for its use.\nThe idea of property consists in an established expectation\xe2\x80\x94in the\npersuasion of power to derive certain advantages from the object,\naccording to the nature of the case.\nBut this expectation, this persuasion, can only be the work of the\nlaw. I can reckon upon the enjoyment of that which I regard as my\nown, only according to the promise of the law, which guarantees it\nto me. It is the law alone which allows me to forget my natural\nweakness: it is from the law alone that I can enclose a field and give\nmyself to its cultivation, in the distant hope of the harvest.\nBut it may be said, What has served as a base to the law for the\ncommencement of the operation, when it adopted the objects\nwhich it promised to protect under the name of property? In the\nprimitive state, had not men a natural expectation of enjoying\n\n\x0ccertain things\xe2\x80\x94an expectation derived from sources anterior to the\nlaw?\nYes: they have had from the beginning, there have always been\ncircumstances in which a man could secure by his own means the\nenjoyment of certain things- but the catalogue of these cases is very\nlimited. The savage, who has hidden his prey, may hope to keep it\nfor himself so long as his cave is not discovered; so long as he is\nawake to defend it; whilst he is stronger than his rivals: but this is\nall. How miserable and precarious is this method of possession!\xe2\x80\x94\nSuppose, then, the slightest agreement among these savages\nreciprocally to respect each other\xe2\x80\x99s booty: this is the introduction,\nof a principle, to which you can only give the name of law. A feeble\nand momentary expectation only results from time to time, from\npurely physical circumstances; a strong and permanent expectation\nresults from law alone: that which was only a thread in a state of\nnature, becomes a cable, so to speak, in a state of society.\nProperty and law are born and must die together. Before the laws,\nthere was no property: take away the laws, all property ceases. With\nrespect to property, security consists in no shock or derangement\nbeing given to the expectation which has been founded on the\nlaws, of enjoying a certain portion of good. The legislator owes the\ngreatest respect to these expectations to which he has given birth:\nwhen he does not interfere with them, he does all that is essential\nto the happiness of society; when he injures them, he always\nproduces a proportionate sum of evil.\nChapter 9: Answer to an Objection.\nBut perhaps the laws relating to property may be good for those\nwho possess it, but oppressive to those who have none;\xe2\x80\x94the poor\nare perchance more miserable than they would be without them.\nThe laws, in creating property, have created wealth; but with\nrespect to poverty, it is not the work of the laws\xe2\x80\x94it is the primitive\ncondition of the human race. The man who lives only from day to\nday, is precisely the man in a state of nature. The savage, the poor\nin society, I acknowledge, obtain nothing but by painful labour; but\nin a state of nature, what could he obtain but at the price of his\n\n196\n\n\x0ctoil? Has not hunting its fatigues, fishing its dangers, war its\nuncertainties? And if man appear to love this adventurous life\xe2\x80\x94if\nhe have an instinct greedy of these kinds of perils\xe2\x80\x94if the savage\nrejoice in the delights of an idleness so dearly purchased\xe2\x80\x94ought it\nto be concluded that he is more happy than our day labourers? No:\nthe labour of these is more uniform, but the reward is more certain\n; the lot of the woman is more gentle, infancy and old age have\nmore resources; the species multiplies in a proportion a thousand\ntimes greater, and this alone would suffice to show on which side is\nthe superiority of happiness. Hence the laws, in creating property,\nhave been benefactors to those who remain in their original\npoverty. They participate more or less in the pleasures, advantages,\nand resources of civilized society: their industry and labour place\nthem among the candidates for fortune: they enjoy the pleasures of\nacquisition: hope mingles with their labours. The security which the\nlaw gives them, is this of little importance? Those who look from\nabove at the inferior ranks, see all objects less than they really are;\nbut at the base of the pyramid, it is the summit which disappears in\nits turn. So far from making these comparisons, they dream not of\nthem; they are not tormented with impossibilities: so, that all things\nconsidered, the protection of the laws contributes as much to the\nhappiness of the cottage, as to the security of the palace. It is\nsurprising that so judicious a writer as Beccaria should have\ninserted, in a work dictated by the soundest philosophy, a doubt\nsubversive of the social order. The right of property, says he, is a terrible\nright, and may not perhaps be necessary. Upon this right, tyrannical and\nsanguinary laws have been founded. It has been most frightfully\nabused; but the right itself presents only ideas of pleasure, of\nabundance, and of security. It is this right which has overcome the\nnatural aversion, to labour which has bestowed on man the empire\nof the earth\xe2\x80\x94which has led nations to give up their wandering\nhabits\xe2\x80\x94which has created a love of country and of posterity. To\nenjoy quickly\xe2\x80\x94to enjoy without punishment,\xe2\x80\x94this is the universal\ndesire of man; this is the desire which is terrible, since it arms all\nthose who possess nothing, against those who possess any thing.\nBut the law, which restrains this desire, is the most splendid\ntriumph of humanity over itself.\n\n197\n\n\x0cChapter 10: Analysis of the Evils Resulting from Attacks upon\nProperty.\nWe have already seen, that subsistence depends upon the laws,\nwhich secure to the labourers the products of their labour; but it\nwould be proper more exactly to analyze the evils which result\nfrom violations of property. They may be reduced to four heads:\xe2\x80\x94\n1. Evil of Non-possession.\xe2\x80\x94If the acquisition of a portion of riches be\na good, the non-possession of it must be an evil; though a negative\nevil, and nothing more. Hence, although men in the condition of\nprimitive poverty may not have felt the special privation of wealth,\nwhich was unknown to them, it is clear that they at least had not all\nthe happiness which results from it, and of which we are in the\nenjoyment.\nThe loss of a portion of good, should it even remain always\nunknown, would yet be a loss. If by calumny you prevent my friend\nfrom conferring a benefit upon me which I did not expect, do you\nnot do me an injury? In what consists this injury? In the negative\nevil which results to me, of not possessing what I otherwise should\nhave possessed but for your calumny.\n2. Pain of Loss.\xe2\x80\x94Every thing which I actually possess, or which I\nought to possess, I consider in my imagination as about to belong\nto me for ever: I make it the foundation of my expectation\xe2\x80\x94of the\nexpectation of those who depend upon me, and the support of my\nplan of life. Each part of my property may possess, in my\nestimation, besides its intrinsic value, a value in affection\xe2\x80\x94as the\ninheritance of my ancestors, the reward of my labours, or the\nfuture benefit of my heirs. Every thing may recall to me that\nportion of myself which I have spent there\xe2\x80\x94my cares, my\nindustry, my economy\xe2\x80\x94which put aside present pleasures, in order\nto extend them over the future; so that our property may become,\nas it were, part of ourselves, and cannot be taken from us without\nwounding us to the quick.\n3. Fear of Loss.\xe2\x80\x94To regret for what is lost, uneasiness respecting\nwhat is possessed joins itself, and even for what it is possible to\nacquire; for most of the objects which are necessary for subsistence\n\n198\n\n\x0cand abundance, being perishable matters, future acquisitions form a\nnecessary supplement to present possessions.\nWhen insecurity reaches a certain point, the fear of loss hinders the\nenjoyment of what is possessed. The care of preserving condemns\nus to a thousand sad and painful precautions, always liable to fail.\nTreasures fly away, or are buried: enjoyment becomes sombre,\nstealthy, and solitary: it fears, by the exhibition of itself, to direct\ncupidity to its prey.\n4. Destruction of Industry.\xe2\x80\x94If I despair of enjoying the fruits of my\nlabour, I shall only think of living from day to day: I shall not\nundertake labours which will only benefit my enemies. But besides\nthis, in order to the existence of labour, the will alone is not\nsufficient: instruments are wanting: whilst these are being provided,\nsubsistence is necessary. A single loss may render me unable to act,\nwithout depriving me of the disposition to labour\xe2\x80\x94without having\nparalyzed my will. Hence the three first of these evils affect the\npassive faculties of the individual, whilst the fourth extends to his\nactive faculties, and strikes them with numbness.\nIt is perceived in this analysis, that the two first of these evils do\nnot extend beyond the individual injured; but the two latter expand\nthemselves, and occupy an indefinite space in society. An attack\nmade upon the property of one individual spreads alarm among the\nother proprietors: this feeling is communicated from one to\nanother, and the contagion may at last spread over the whole body\nof the state.\nFor the development of industry, the union of power and will is\nrequired. Will depends upon encouragement\xe2\x80\x94power upon\nmeans.\xe2\x80\x94These means are called, in the language of political\neconomy, productive capital.\xe2\x80\x94With regard to a single individual,\nhis capital may be destroyed, without his industrious disposition\nbeing destroyed, or even weakened. With regard to a nation, the\ndestruction of its productive capital is impossible: but long before\nthis fatal term arrives, the mischief would have reached the will;\nand the spirit of industry would fall under a terrible marasmus, in\nthe midst of the natural resources presented by a rich and fertile\n\n199\n\n\x0csoil. The will, however, is excited by so many stimulants, that it\nresists a multitude of discouragements and losses: a passing\ncalamity, how great soever it may be, does not destroy the spirit of\nindustry. This has been seen springing up again after destructive\nwars, which have impoverished nations, like a robust oak, which in\na few years repairs the injuries, inflicted by the tempest, and covers\nitself with new branches. Nothing less is requisite for freezing up\nindustry, than the operation of a permanent domestic cause, such\nas a tyrannical government, a bad legislation, an intolerant religion\nwhich repels men from each other, or a minute superstition which\nterrifies them.\nThe first act of violence will produce a certain degree of\napprehension\xe2\x80\x94there are already some timid minds discouraged: a\nsecond outrage, quickly succeeding, will spread a more considerable\nalarm. The most prudent will begin to contract their enterprises,\nand by degrees to abandon an uncertain career. In proportion as\nthese attacks are repeated, and the system of oppression assumes\nan habitual character, the dispersion augments: those who have fled\nare not replaced; those who remain fall into a state of langour. It is\nthus that, after a time, the field of industry being beaten down by\nstorms, becomes at last a desert.\nAsia Minor, Greece, Egypt, the coasts of Africa, so rich in\nagriculture, commerce, and population, whilst the Roman Empire\nflourished\xe2\x80\x94what have they become under the absurd despotism of\nthe Turk? The palaces are changed into cabins, and the cities into\nsmall towns: this government, hateful to all persons of reflection,\nhas never understood that a state can never become rich but by an\ninviolable respect for property. It has possessed only two secrets\nfor governing\xe2\x80\x94to drain and to brutify its subjects. Hence the\nfinest countries in the world, wasted, barren, or almost abandoned,\ncan scarcely be recognised in the hands of their barbarous\nconquerors. For these evils need not be attributed to remote\ncauses: civil wars, invasions, the scourges of nature\xe2\x80\x94these might\nhave dissipated the wealth, put the arts to flight, and swallowed up\nthe cities; but the ports which have been filled up, would have been\nreopened, the communications re-established, the manufactures\n\n200\n\n\x0crevived, the towns rebuilt, and all these ravages repaired in time, if\nthe men had continued to be men. But they are not so, in these\nunhappy countries: despair, the slow but fatal effect of longcontinued insecurity, has destroyed all the active powers of their\nsouls.\nIf we trace the history of this contagion, we shall see that its first\nattacks fall upon the richest part of society. Wealth was the first\nobject of depredation. Superfluity vanished by little and little:\nabsolute necessity must still be provided for, notwithstanding\nobstacles\xe2\x80\x94man must live; but when he limits his efforts to mere\nexistence, the state languishes, and the torch of industry furnishes\nbut a few dying sparks. Besides, abundance is never so distinct\nfrom subsistence, that the one can be injured without a dangerous\nattack upon the other: whilst some lose only what is superfluous,\nothers lose what is necessary. From the infinitely complicated\nsystem of economical relations, the wealth of one part of the\ncitizens is uniformly the source from which a more numerous party\nderives its subsistence.\nBut another, and more smiling picture, may be traced, and not less\ninstructive, of the progress of security, and prosperity, its\ninseparable companion. North America presents the most striking\ncontrast of these two states: savage nature is there placed by the\nside of civilization. The interior of this immense region presents\nonly a frightful solitude: impenetrable forests or barren tracts,\nstanding waters, noxious exhalations, venomous reptiles,\xe2\x80\x94such is\nthe land left to itself. The barbarous hordes who traverse these\ndeserts, without fixed habitation, always occupied in the pursuit of\ntheir prey, and always filled with implacable rivalry, only meet to\nattack and to destroy each other; so that the wild beasts are not so\ndangerous to man, as man himself. But upon the borders of these\nsolitudes, what a different prospect presents itself! One could\nalmost believe that one saw, at one view, the two empires of good\nand evil. The forests have given place to cultivated fields; the\nmorass is dried up; the land has become solid\xe2\x80\x94is covered with\nmeadows, pastures, domestic animals, smiling and healthy\nhabitations; cities have risen upon regular plans; wide roads are\n\n201\n\n\x0ctraced between them: every thing shows that men are seeking the\nmeans of drawing near to one another; they no longer dread, or\nseek to murder each other. The seaports are filled with vessels\nreceiving all the productions of the earth, and serving to exchange\nits riches. A countless multitude, living in peace and abundance\nupon the fruits of their labours, has succeeded to the nations of\nhunters who were always struggling between war and famine. What\nhas produced these wonders? what has renovated the surface of the\nearth? what has given to man this dominion over embellished,\nfruitful, and perfectionated nature? The benevolent genius is\nSecurity. It is security which has wrought out this great\nmetamorphosis. How rapid have been its operations! It is scarcely\ntwo centuries since William Penn reached these savage wilds with a\ncolony of true conquerors; for they were men of peace, who sullied\nnot their establishment by force, and who made themselves\nrespected only by acts of benevolence and justice.\nCarol M. Rose, Possession as the Origin of Property, 52 U.\nChi. L. Rev. 73 (1985)\nHow do things come to be owned? This is a fundamental puzzle\nfor anyone who thinks about property. One buys things from other\nowners, to be sure, but how did the other owners get those things?\nAny chain of ownership or title must have a first link. Someone\nhad to do something to anchor that link. The law tells us what\nsteps we must follow to obtain ownership of things, but we need a\ntheory that tells us why these steps should do the job.\nJohn Locke\xe2\x80\x99s view, once described as \xe2\x80\x9cthe standard bourgeois\ntheory,\xe2\x80\x9d is probably the one most familiar to American students.\nLocke argued that an original owner is one who mixes his or her\nlabor with a thing and, by commingling that labor with the thing,\nestablishes ownership of it. This labor theory is appealing because\nit appears to rest on \xe2\x80\x9cdesert,\xe2\x80\x9d but it has some problems. First,\nwithout a prior theory of ownership, it is not self-evident that one\n\n202\n\n\x0cowns even the labor that is mixed with something else.1 Second,\neven if one does own the labor that one performs, the labor theory\nprovides no guidance in determining the scope of the right that one\nestablishes by mixing one\xe2\x80\x99s labor with something else. Robert\nNozick illustrates this problem with a clever hypothetical. Suppose\nI pour a can of tomato juice into the ocean: do I now own the\nseas?2\nA number of thinkers more or less contemporary to Locke\nproposed another theory of the basis of ownership. According to\nthis theory, the original owner got title through the consent of the\nrest of humanity (who were, taken together, the first recipients\nfrom God, the genuine original owner). Locke himself identified\nthe problems with this theory; they involve what modern law-andeconomics writers would call \xe2\x80\x9cadministrative costs.\xe2\x80\x9d How does\neveryone get together to consent to the division of things among\nindividuals?\nThe common law has a third approach, which shares some\ncharacteristics with the labor and consent theories but is distinct\nenough to warrant a different label. For the common law, possession\nor \xe2\x80\x9coccupancy\xe2\x80\x9d is the origin of property. This notion runs through\na number of fascinating old cases with which teachers of property\nlaw love to challenge their students. Such inquiries into the\nLocke\xe2\x80\x99s assertion that one owns one\xe2\x80\x99s labor is quite cryptic and appears to rest\non the equally cryptic assertion that one owns one\xe2\x80\x99s body and thus the products\nof the body\xe2\x80\x99s exertions. See J. LOCKE, supra note 2, s 27, at 329, s 28, at 330.\nRichard Epstein argues that for Locke, the reason one owns one\xe2\x80\x99s body is that\none occupies or possesses it; thus, this labor theory of property rests on a right\nestablished by first possession. See Epstein, Possession as the Root of Title, 13\nGA. L. REV. 1221, 1227-28 (1979). But Locke himself did not argue that\nownership of the body and its labors rests on possession. Indeed, the view that\none owns one\xe2\x80\x99s body would be equally compatible with the theory that ownership\nof one\xe2\x80\x99s body or labor rests on the consent of mankind. Locke himself did reject\nthe idea that property was based on the express consent of humanity. See J.\nLOCKE, supra note 2, s 25, at 327, s 29, at 331. For a discussion of the consent\ntheory, see infra notes 6-7 and accompanying text.\n1\n\nROBERT NOZICK, ANARCHY, STATE AND UTOPIA 175 (1974). The\nexample rests on the argument that Locke\xe2\x80\x99s labor theory of property means that\none acquires property by mixing what one owns (one\xe2\x80\x99s labor) with what one does\nnot own. Nozick substitutes the can of tomato juice for one\xe2\x80\x99s labor.\n2\n\n203\n\n\x0cacquisition of title to wild animals and abandoned treasure may\nseem purely academic; how often, after all, do we expect to get into\ndisputes about the ownership of wild pigs or long-buried pieces of\neight? These cases are not entirely silly, though. People still do find\ntreasure-laden vessels, and statesmen do have to consider whether\nsomeone\xe2\x80\x99s acts might support a claim to own the moon, for\nexample, or the mineral nodes at the bottom of the sea. Moreover,\nanalogies to the capture of wild animals show up time and again\nwhen courts have to deal on a nonstatutory basis with some\n\xe2\x80\x9cfugitive\xe2\x80\x9d resource that is being reduced to property for the first\ntime, such as oil, gas, groundwater, or space on the spectrum of\nradio frequencies.\nWith these more serious claims in mind, then, I turn to the maxim\nof the common law: first possession is the root of title. Merely to\nstate the proposition is to raise two critical questions: what counts\nas possession, and why is it the basis for a claim to title? In\nexploring the quaint old cases\xe2\x80\x99 answers to these questions, we hit\non some fundamental views about the nature and purposes of a\nproperty regime.\nConsider Pierson v. Post, a classic wild-animal case from the early\nnineteenth century. Post was hunting a fox one day on an\nabandoned beach and almost had the beast in his gunsight when an\ninterloper appeared, killed the fox, and ran off with the carcass.\nThe indignant Post sued the interloper for the value of the fox on\nthe theory that his pursuit of the fox had established his property\nright to it.\nThe court disagreed. It cited a long list of learned authorities to the\neffect that \xe2\x80\x9coccupancy\xe2\x80\x9d or \xe2\x80\x9cpossession\xe2\x80\x9d went to the one who killed\nthe animal, or who at least wounded it mortally or caught it in a\nnet. These acts brought the animal within the \xe2\x80\x9ccertain control\xe2\x80\x9d that\ngives rise to possession and hence a claim to ownership.\nPossession thus\nunderstands that\nappropriating the\nsort should be\n\nmeans a clear act, whereby all the world\nthe pursuer has \xe2\x80\x9can unequivocal intention of\nanimal to his individual use.\xe2\x80\x9d A clear rule of this\napplied, said the court, because it prevents\n\n204\n\n\x0cconfusion and quarreling among hunters (and coincidentally makes\nthe judges\xe2\x80\x99 task easier when hunters do get into quarrels).\nThe dissenting judge commented that the best way to handle this\nmatter would be to leave it to a panel of sportsmen, who\npresumably would have ruled against the interloper. In any event,\nhe noted that the majority\xe2\x80\x99s rule would discourage the useful\nactivity of fox hunting: who would bother to go to all the trouble\nof keeping dogs and chasing foxes if the reward were up for grabs\nto any \xe2\x80\x9csaucy intruder\xe2\x80\x9d? If we really want to see that foxes don\xe2\x80\x99t\noverrun the countryside, we will allocate a property right-and thus\nthe ultimate reward-to the hunter at an earlier moment, so that he\nwill undertake the useful investment in keeping hounds and the\nuseful labor in flushing the fox.\nThe problem with assigning \xe2\x80\x9cpossession\xe2\x80\x9d prior to the kill is, of\ncourse, that we need a principle to tell us when to assign it. Shall\nwe assign it when the hunt begins? When the hunter assembles his\ndogs for the hunt? When the hunter buys his dogs?\nPierson thus presents two great principles, seemingly at odds, for\ndefining possession: (1) notice to the world through a clear act, and\n(2) reward to useful labor. The latter principle, of course, suggests a\nlabor theory of property. The owner gets the prize when he \xe2\x80\x9cmixes\nin his labor\xe2\x80\x9d by hunting. On the other hand, the former principle\nsuggests at least a weak form of the consent theory: the community\nrequires clear acts so that it has the opportunity to dispute claims,\nbut may be thought to acquiesce in individual ownership where the\nclaim is clear and no objection is made.\nOn closer examination, however, the two positions do not seem so\nfar apart. In Pierson, each side acknowledged the importance of the\nother\xe2\x80\x99s principle. Although the majority decided in favor of a clear\nrule, it tacitly conceded the value of rewarding useful labor. Its rule\nfor possession would in fact reward the original hunter most of the\ntime, unless we suppose that the woods are thick with \xe2\x80\x9csaucy\nintruders.\xe2\x80\x9d On the other side, the dissenting judge also wanted\nsome definiteness in the rule of possession. He was simply insisting\nthat the acts that sufficed to give notice should be prescribed by\n\n205\n\n\x0cthe relevant community, namely hunters or \xe2\x80\x9csportsmen.\xe2\x80\x9d Perhaps,\nthen, there is some way to reconcile the clear-act and reward-tolabor principles.\nThe clear-act principle suggests that the common law defines acts\nof possession as some kind of statement. As Blackstone said, the acts\nmust be a declaration of one\xe2\x80\x99s intent to appropriate.\n[Rose canvasses a few areas involving possession of land and\nargues they involve a search for effective communication of one\xe2\x80\x99s\nclaim.] \xe2\x80\xa6 .\nPossession as the basis of property ownership, then, seems to\namount to something like yelling loudly enough to all who may be\ninterested. The first to say, \xe2\x80\x9cThis is mine,\xe2\x80\x9d in a way that the public\nunderstands, gets the prize, and the law will help him keep it\nagainst someone else who says, \xe2\x80\x9cNo, it is mine.\xe2\x80\x9d But if the original\ncommunicator dallies too long and allows the public to believe the\ninterloper, he will find that the interloper has stepped into his\nshoes and has become the owner.\nSimilar ideas of the importance of communication, or as it is more\ncommonly called, \xe2\x80\x9cnotice,\xe2\x80\x9d are implicit in our recording statutes\nand in a variety of other devices that force a property claimant to\nmake a public record of her claims on pain of losing them\naltogether. Indeed, notice plays a part in the most mundane\nproperty-like claims to things that the law does not even recognize\nas capable of being reduced to ownership. \xe2\x80\x9cWould you please save\nmy place?\xe2\x80\x9d one says to one\xe2\x80\x99s neighbor in the movie line, in order to\nensure that others in line know that one is coming back and not\nrelinquishing one\xe2\x80\x99s claim. In my home town of Chicago, one may\nchoose to shovel the snow from a parking place on the street, but\nin order to establish a claim to it one must put a chair or some\nother object in the cleared space. The useful act of shoveling snow\ndoes not speak as unambiguously as the presence of an object that\nblocks entry.\nWhy, then, is it so important that property owners make and keep\ntheir communications clear? Economists have an answer: clear\ntitles facilitate trade and minimize resource-wasting conflict. If I am\n\n206\n\n\x0ccareless about who comes on to a corner of my property, I invite\nothers to make mistakes and to waste their labor on improvements\nto what I have allowed them to think is theirs. I thus invite a freefor-all over my ambiguously held claims, and I encourage\ncontention, insecurity, and litigation-all of which waste everyone\xe2\x80\x99s\ntime and energy and may result in overuse or underuse of\nresources. But if I keep my property claims clear, others will know\nthat they should deal with me directly if they want to use my\nproperty. We can bargain rather than fight; through trade, all items\nwill come to rest in the hands of those who value them most. If\nproperty lines are clear, then, anyone who can make better use of\nmy property than I can will buy or rent it from me and turn the\nproperty to his better use. In short, we will all be richer when\nproperty claims are unequivocal, because that unequivocal status\nenables property to be traded and used at its highest value.\nThus, it turns out that the common law of first possession, in\nrewarding the one who communicates a claim, does reward useful\nlabor; the useful labor is the very act of speaking clearly and\ndistinctly about one\xe2\x80\x99s claims to property. Naturally, this must be in\na language that is understood, and the acts of \xe2\x80\x9cpossession\xe2\x80\x9d that\ncommunicate a claim will vary according to the audience. Thus,\nreturning to Pierson v. Post, the dissenting judge may well have\nthought that fox hunters were the only relevant audience for a\nclaim to the fox; they are the only ones who have regular contact\nwith the subject matter. By the same token, the midnineteenthcentury California courts gave much deference to the\nmining-camp customs in adjudicating various Gold Rush claims;\nthe Forty-Niners themselves, as those most closely involved with\nthe subject, could best communicate and interpret the signs of\n\n207\n\n\x0cproperty claims and would be particularly well served by a stable\nsystem of symbols that would enable them to avoid disputes.3\nThe point, then, is that \xe2\x80\x9cacts of possession\xe2\x80\x9d are, in the now\nfashionable term, a \xe2\x80\x9ctext,\xe2\x80\x9d and that the common law rewards the\nauthor of that text. But, as students of hermeneutics know, the\nclearest text may have ambiguous subtexts. In connection with the\ntext of first possession, there are several subtexts that are especially\nworthy of note. One is the implication that the text will be \xe2\x80\x9cread\xe2\x80\x9d\nby the relevant audience at the appropriate time. It is not always\neasy to establish a symbolic structure in which the text of first\npossession can be \xe2\x80\x9cpublished\xe2\x80\x9d at such a time as to be useful to\nanyone. Once again, Pierson v. Post illustrates the problem that\noccurs when a clear sign (killing the fox) comes only relatively late\nin the game, after the relevant parties may have already expended\noverlapping efforts and embroiled themselves in a dispute. Very\nsimilar problems occurred in the whaling industry in the nineteenth\ncentury: the courts expended a considerable amount of mental\nenergy in finding signs of \xe2\x80\x9cpossession\xe2\x80\x9d that were comprehensible\nto whalers from their own customs and that at the same time came\nearly enough in the chase to allow the parties to avoid wasted\nefforts and the ensuing mutual recriminations.\nSome objects of property claims do seem inherently incapable of\nclear demarcation-ideas, for example. In order to establish\nownership of such disembodied items we find it necessary to\ntranslate the property claims into sets of secondary symbols that\nour culture understands. In patent and copyright law, for example,\none establishes an entitlement to the expression of an idea by\ntranslating it into a written document and going through a\n\nSee McCurdy, Stephen J. Field and Public Land Law Development in California,\n1850-1866: A Case Study of Judicial Resource Allocation in Nineteenth-Century\nAmerica, 10 LAW & SOC\xe2\x80\x99Y REV. 235, 239-41 (1976). McCurdy also notes,\nhowever, that there were implicit conflicts between first arrivals and latecomers to\nthe mining areas and that the courts had to devise rules for deciding cases where\none or the other group attempted to change mining-district rules to its own\nadvantage. Id. at 242-46; cf. Umbeck, A Theory of Contract Choice and the\nCalifornia Gold Rush, 20 J.L. & ECON. 421, 422-28 (1977) (economic analysis of\nthe types of claim agreements made by miners).\n3\n\n208\n\n\x0cregistration process-though the unending litigation over ownership\nof these expressions, and over which expressions can even be\nsubject to patent or copyright, might lead us to conclude that these\nparticular secondary symbolic systems do not always yield widely\nunderstood \xe2\x80\x9cmarkings.\xe2\x80\x9d4 We also make up secondary symbols for\nphysical objects that would seem to be much easier to mark out\nthan ideas; even property claims in land, that most tangible of\nthings, are now at their most authoritative in the form of written\nrecords.\nIt is expensive to establish and maintain these elaborate structures\nof secondary symbols, as indeed it may be expensive to establish a\nstructure of primary symbols of possession. The economists have\nonce again performed a useful service in pointing out that there are\ncosts entailed in establishing any property system. These costs\nmight prevent the development of any system at all for some\nobjects, where our need for secure investment and trade is not as\ngreat as the cost of creating the necessary symbols of possession.\nThere is a second and perhaps even more important subtext to the\n\xe2\x80\x9ctext\xe2\x80\x9d of first possession: the tacit supposition that there is such a\nthing as a \xe2\x80\x9cclear act,\xe2\x80\x9d unequivocally proclaiming to the universe\none\xe2\x80\x99s appropriation-that there are in fact unequivocal acts of\npossession, which any relevant audience will naturally and easily\ninterpret as property claims. Literary theorists have recently written\nFor an extreme example of the failure of the copyright system to give clear\nnotice of ownership of songs, see Arnstein v. Porter, 154 F.2d 464 (2d Cir. 1946),\nin which the court, in an opinion by Judge Frank, held that the author of \xe2\x80\x9cThe\nLord Is My Shepherd\xe2\x80\x9d was entitled to a trial on the merits of whether Cole\nPorter\xe2\x80\x99s \xe2\x80\x9cBegin the Beguine\xe2\x80\x9d infringed his copyright! Cf. Apple Computer, Inc. v.\nFranklin Computer Corp., 714 F.2d 1240 (3d Cir. 1983), cert. dismissed, 104 S. Ct.\n690 (1984) (computer operating system software may be copyrighted). In the case\nof computer software, it has been suggested that the invention might better have\nbeen handled as a patent, except that the lead time for patents is so long that it\nwould make the \xe2\x80\x9cproperty\xe2\x80\x9d right useless in such a rapidly changing field-hence the\nchoice of the more rapid copyright system. See Sanger, The Gavel Comes Down\non Computer Copycats, N.Y. Times, Oct. 23, 1983, s 3, at 8, col. 1. The Apple\nComputer analysis further suggests that secondary systems for establishing rights\nin \xe2\x80\x9cuncatchable\xe2\x80\x9d property may not be immune from the disputes and overlapping\nuse that often accompany unclear property claims. See supra note 39 and\naccompanying text.\n4\n\n209\n\n\x0ca great deal about the relativity of texts. They have written too\nmuch for us to accept uncritically the idea that a \xe2\x80\x9ctext\xe2\x80\x9d about\nproperty has a natural meaning independent of some audience\nconstituting an \xe2\x80\x9cinterpretive community\xe2\x80\x9dor independent of a range\nof other \xe2\x80\x9ctexts\xe2\x80\x9d and cultural artifacts that together form a symbolic\nsystem in which a given text must be read. It is not enough, then,\nfor the property claimant to say simply, \xe2\x80\x9cIt\xe2\x80\x99s mine\xe2\x80\x9d through some\nact or gesture; in order for the \xe2\x80\x9cstatement\xe2\x80\x9d to have any force, some\nrelevant world must understand the claim it makes and take that\nclaim seriously.\nThus, in defining the acts of possession that make up a claim to\nproperty, the law not only rewards the author of the \xe2\x80\x9ctext\xe2\x80\x9d; it also\nputs an imprimatur on a particular symbolic system and on the\naudience that uses this system. Audiences that do not understand\nor accept the symbols are out of luck. For Pierson\xe2\x80\x99s dissenting judge,\nwho would have made the definition of first possession depend on\na decision of hunters, the rule of first possession would have put\nthe force of law behind the mores of a particular subgroup. The\nmajority\xe2\x80\x99s \xe2\x80\x9cclear act\xe2\x80\x9d rule undoubtedly referred to a wider audience\nand a more widely shared set of symbols. But even under the\nmajority\xe2\x80\x99s rule, the definition of first possession depended on a\nparticular audience and its chosen symbolic context; some\naudiences win, others lose.\n[Rose discusses the case of Johnson v. M\xe2\x80\x99Intosh, which we will\ncover later in the course.]\nBut perhaps the deepest aspect of the common law text of\npossession lies in the attitude that this text strikes with respect to\nthe relationship between human beings and nature. At least some\nIndians professed bewilderment at the concept of owning the land.\nIndeed they prided themselves on not marking the land but rather\non moving lightly through it, living with the land and with its\ncreatures as members of the same family rather than as strangers\nwho visited only to conquer the objects of nature. The doctrine of\nfirst possession, quite to the contrary, reflects the attitude that\nhuman beings are outsiders to nature. It gives the earth and its\n\n210\n\n\x0ccreatures over to those who mark them so clearly as to transform\nthem, so that no one else will mistake them for unsubdued nature.\nWe may admire nature and enjoy wildness, but those sentiments\nfind little resonance in the doctrine of first possession. Its texts are\nthose of cultivation, manufacture, and development. We cannot\nhave our fish both loose and fast, as Melville might have said,5 and\nthe common law of first possession makes a choice. The common\nlaw gives preference to those who convince the world that they\nhave caught the fish and hold it fast. This may be a reward to\nuseful labor, but it is more precisely the articulation of a specific\nvocabulary within a structure of symbols approved and understood\nby a commercial people. It is this commonly understood and\nshared set of symbols that gives significance and form to what\nmight seem the quintessentially individualistic act: the claim that\none has, by \xe2\x80\x9cpossession,\xe2\x80\x9d separated for oneself property from the\ngreat commons of unowned things.\n\nHERMAN MELVILLE, MOBY DICK ch. 89 (\xe2\x80\x9cFast-Fish and Loose-Fish\xe2\x80\x9d)\n(1st ed. London 1851). This chapter describes some litigation over ownership of a\nwhale that had been harpooned but got away, harpoon and all, only to be\nharpooned and taken by a second crew. The legal question involved the point at\nwhich the whale stopped being a \xe2\x80\x9cloose-fish\xe2\x80\x9d and became a \xe2\x80\x9cfast-fish\xe2\x80\x9d-that is, the\npoint at which the whale became someone\xe2\x80\x99s property. Melville goes on to describe\na number of items (including serfs and mortgages) as \xe2\x80\x9cfast-fish\xe2\x80\x9d and a number of\nother items (America at Columbus\xe2\x80\x99 arrival, ideas, the rights of man) as \xe2\x80\x9cloosefish.\xe2\x80\x9d\n5\n\n211\n\n\x0c2.1.3. Sunken Ships, Baseballs, and Artifacts\nEads v. Brazelton, 22 Ark. 499 (1861)\nAppeal from Mississippi Circuit Court in Chancery. Hon.\nGeorge W. Beazley, Circuit Judge.\nFowler & Stillwell, for the appellant.\nWatkins & Gallagher, for appellee.\nFAIRCHILD, J.\nWhen things that become property from being\nappropriated are the property of nobody, are in a state of\nnegative community, the first finder may reduce them to\npossession, which is a good claim, and under the name of\ntitle by occupancy is regarded as the foundation of all\nproperty. 2 Blk\xe2\x80\x99s Com. 3, 258; 1 Bouv. Am. L. 194, No. 491;\nPothier Droit De Propriete, Nos. 20, 21; La. Civil Code, Art\xe2\x80\x99s\n3375, 3376.\nHence, wild animals, that are not property in their natural\ncondition, may be captured, will belong to the first taker by\noccupancy, and will so belong while in the keeping of the\ntaker, or person claiming under him, or while in\ndomestication. 2 Kent. 348; Coop. Just. Lib. II, Tit. I. sec. 12;\n1 Bouv. Am. L. 194, No. 492; La. Civil Code, Art. 3379.\nSo, the finder of things that have never been appropriated,\nor that have been abandoned by a former occupant, may\ntake them into his possession as his own property; and the\nfinder of anything casually lost is its rightful occupant\nagainst all but the real owner.\n\xe2\x80\xa6.\nFrom what is before us it may be taken as shown in the\ncase that, in November, 1827, the boat named sank in the\nMississippi river, within the limits of Mississippi county;\nthat, of her cargo, shot and bundles of bar lead of an\nunascertained quantity, and lead in pigs to about the\nnumber of three thousand, remained in the river, wholly\n\n\x0cabandoned by the owners; that Brazelton, having\ninformation of the place where the boat sank, proceeded, in\nDecember, 1854, to ascertain its exact locality in the bed of\nthe river, with the view of raising the sunken lead; that, in\nJanuary, 1855, he arrived at the vicinity of the wreck, with\nhis diving boat, to carry out his intention, and fastened a\nbuoy to a weight that rested upon the wreck, with the\nexpectation of putting his boat over it the next day, but that\nhe was detained by other business, and by the difficulties\nand dangers of the work in the existing state of water, with\nboats like his, and by the necessity for making repairs upon\nhis boat, and apparatus for raising the cargo, till the\ndefendants, upon the 28th of September, 1855, caused one\nof their boats to stop at the shore near the wreck, to search\nfor and find it, to place their boat over it, and to commence\nraising the lead.\nThe quantity of lead raised by the defendants was stated in\ntheir answer, and applying the price thereto, as shown by\nthe evidence, its value was found to be four thousand, five\nhundred and seven dollars and ninety-six cents, for which\nsum the court below gave a decree, perpetuated the\npreliminary injunction which was granted at the beginning\nof the suit, and which arrested the defendants in their labor\nupon the lead.\nAfter the injunction had been served, and the defendants,\nin obedience there-to, had withdrawn their boat from the\nwreck, and while the plaintiff in his turn, was engaged in\nbringing up the lead left by the defendants, they brought\ntheir boat back near to the plaintiff\xe2\x80\x99s boat and anchored,\nthereby obstructing his operations, for which two of the\ndefendants that were within the jurisdiction of the court,\nwere brought before it for contempt in disobeying the\ninjunction, and were fined one thousand dollars, which\nwas, by order of the court, paid to the plaintiff for his\ndamages from the obstruction.\n\xe2\x80\xa6.\n\n213\n\n\x0cWhen Brazelton found the wreck he traced lines to it from\ndifferent points on the Arkansas side of the river, so that\ntheir intersection would show the situation of the wreck,\nand the lines were indicated by marks upon the trees. It was\nupon the return of Brazelton from St. Louis with his bell\nboat that a float or buoy was placed by Brazelton over the\nwreck, and this was done with the intention of signifying\nthe place to which the diving boat was to be dropped the\nnext morning. It was not to be expected that such objects\nwould remain permanent fixtures, as the wreck was in the\nmain channel of the river, and it is evident that Brazelton\nconsidered them as guides to the situation of the wreck, as\nthe marked trees were, as he stated to Seth Daniel, in the\npresence of Reese Bowen, that it would make no difference\nif they should be washed away, as he could find the wreck\nfrom the ranges of his lines. Brazelton does not pretend to\nhave put his boat over the wreck, or to have had any claim\nto the wreck but by occupancy, which depended upon his\nfinding it, upon his providing means for easy approaches to\nit by landmarks, and floats upon water, and upon his being\nin the neighborhood of the wreck from January to the last\nof September, without any other appropriation of the\nwreck, but with a continual assertion of his claim, and with\nthe intention of making it good by future action. This,\ndoubtless, he would have done in the winter of 1855, had\nnot the sinking of the steamboat Eliza afforded the\nopportunity of other work to which he confined himself till\nJune. Then he would have applied himself to the America,\nbut the periodical rise of the river at that season prevented\nhim from so doing, and when he was nearly ready, with his\nboat and machinery in order for effective labor, with\nfavorable water for work, safe from rafts and flat and coal\nboats, the Submarine, No. 4, belonging to the defendants,\npassed him on the 28th of September, and within two days\nwas placed over the wreck, and thenceforward the\ndefendants were its occupants in fact, and claimed to be so\nby right.\n\n214\n\n\x0c\xe2\x80\xa6.\nNeither the sinking of the America nor its locality seems to\nhave been so obscurely remembered as the bill supposes.\nCaptain Eads, one of the defendants, told the witness,\nCunningham in 1843, according to his recollection that the\nAmerica was under the tow head often mentioned in the\ncase, which the witness afterwards was satisfied to have\nbeen the fact, from his acquaintance with the wreck after\nthe tow head and island were washed away, and the wreck\nwas left in the main river. Cunningham, in 1853, sounded\nfor the wreck, and found it as he believed. Captain Swan,\nwho was upon the America when she sunk, and who had\nbeen familiar with the river at the place of the sinking from\nthat time, in 1827, till 1854, and who communicated to\nBrazelton his information of the situation of the wreck,\ndeposed that the bank has in all the time mentioned\nchanged but very little, though the bars have been\ncontinually changing, and that from marks upon the bank\nhe knew where the America was, and after the island which\nhad covered the wreck about twenty years, was washed\naway, he is of the impression that, from the break of water\nwhere he supposed the America to be, he could upon a\nclear bright day have pointed out the situation of the wreck.\nFrom the description of the place given by Captain Swan to\nBrazelton, he was able to find the wreck, as he afterwards\ntold Swan that his supposition that the break in the water\nwas caused by the wreck, had been verified. And Captain\nSwan further said that the pilots of the present time were as\nwell advised, as a matter of news, of the loss of the America\nin the vicinity where the wreck lay, as the pilots were when\nshe sunk.\n[Several others testified that they too were able to locate the\nwreck based solely on information other than Brazelton\xe2\x80\x99s\nmarks.]\nFrom these facts, and from everything in the case, we think\nthere could have been but little difficulty in finding the\n\n215\n\n\x0cwreck after the island that had so long concealed it, was\nwashed away, and the labor or good fortune of Brazelton in\nascertaining its locality affords no reason for assigning it to\nhim as his property, aside from the legal consequences of\nits possession, even if courts had the power of such\nassignment, which we disclaim, and which we do not\nunderstand Brazelton to claim but by implication.\nWith reference to the tree marks of Brazelton it may be\nsaid that there is no satisfactory evidence that they were\nused on the part of the defendants in finding the wreck.\n\xe2\x80\xa6.\nNotwithstanding the point made by the defendant, that\nBrazelton had no right to the lead which the law would\nprotect, it being the property of the original owners of the\ncargo, there is no room for doubt that the lead was\nabandoned by its owners; and even without the positive\ntestimony of an owner of the boat and cargo in affirmation\nof the fact, the law would so imply from the term of the\nloss, and from the fact of its having been covered by an\nisland formed upon it, which sustained trees grown to the\nheight of thirty or forty feet. All reasonable hope of\nacquiring the property must have been given up from the\nnature of the case; and the evidence shows that during the\ntwo years that intervened between the sinking of the boat\nand its being covered by the tow head and island, no effort\nwas made or design entertained to save the part of the\ncargo that was abandoned when the high water interrupted\nthe labor of saving it, that was prosecuted for two weeks\nafter the loss of the boat, save that an excluded deposition\nmentions that one hundred and sixteen pigs of lead were\nafterwards got out by residents of the neighborhood.\nHaving saved the specie that was on board belonging to the\nUnited States, the furs and one-half of the six hundred pigs\nof lead, and a part of the shot, with which articles the boat\nwas laden, and the boilers and machinery of the boat, the\nowners of the America seem to have contented themselves\n\n216\n\n\x0ctherewith; and to have wholly abandoned the remaining\nshot and lead.\nUnlike The Barefoot, 1 Eng. Law & Eq. Rep. 664, which was\nthe loss of lead and iron in smacks, in which Dr.\nLushington held, that the property was left but not\nabandoned, because the place of the property was well\nknown, and because the property was unmovable until\nrecovered by human skill, this case, from the length of time\nthat had passed, from the shifting nature of the bars and\nchannel of the river in Plumb Point bend, as well as from\nthe testimony of Captain Swan and Sellers, of William H.\nJohnson, and of Mr. Ruble, an owner of the boat, shows\nnot only that the lead in the wreck was left, but that it was\nabandoned. But whether the property when saved would\nhave been the property of Brazelton, or of an occupant, or\nof the owner, would not give right to the defendants to\nresist the suit of Brazelton: for if he were a finder of the\nwreck, as such he would be entitled to the property as\nowner, or to its possession as salvor; and would be\nprotected from the interference of the defendants or other\npersons. And for this reason decisions in admiralty upon\nthe conflicting claims of salvors to the possession of\ndeserted property are authorities to be considered in the\nsettlement of the pending controversy.\nProperty is said to be abandoned when it is thrown away,\nor its possession is voluntarily forsaken by the owner, in\nwhich case it will become the property of the first\noccupant; or when it is involuntarily lost or left without the\nhope and expectation of again acquiring it, and then it\nbecomes the property of the finder, subject to the superior\nclaim of the owner; except that in salvage cases, by the\nadmiralty law, the finder may hold possession until he is\npaid his compensation, or till the property is submitted to\nlegal jurisdiction for the ascertainment of the\ncompensation. 2 Blk. Com. 9; 1 Bouv. Am. L. 195, No. 494;\nCoop. Just. Lib. 11, Tit. I. S. 46; Abbott on Shipping 555, Am.\n\n217\n\n\x0cnote; Woolrych on Waters 15; Rowe v. Berg, 1 Mass. 373; Lewis\nv. The Elizabeth & Jane, Ware\xe2\x80\x99s Rep. 43; The Bee, Id. 344, 345;\nThe St. Petre, Bee\xe2\x80\x99s adm. 82; The Mary, 2 Whea. 126 and note\n(A.); Steamboat J. P. Leathers and cargo, Newb. A. D. 325;\nMarvin on Wreck and Salvage, s. 124, 125.\nSome authorities refer to things found at sea as belonging\nto the finder, in distinction from wreck, that is, goods lost\nat sea and floated to land, or in general terms excluding the\nsense of derelict as used in maritime cases, or as\ndistinguished from custom and statutory law, and in\nextreme cases property wholly derelict and abandoned has\nbeen held to belong to the finder against the former owner.\nWoolrych on Waters 14; Constable\xe2\x80\x99s Case, 5 Coke 108, b; Marvin\non Wreck and Salvage, sec. 131, note; 1 Bouv. Am. L. 196, No.\n496; Wyman v. Hurlburt, 12 Ohio 87.\nThe occupation or possession of property lost, abandoned\nor without an owner, must depend upon an actual taking of\nthe property and with the intent to reduce it to possession.\nThe intent may not be that this possession shall be absolute\nor perpetual appropriation of the property to the use of the\nfinder, it may be subject to the claim of the real owner, the\npossession may be taken for his exclusive good, or it may\nbe taken as a means of subsistence or accumulation,\naccording to the course of business of the parties to this\nsuit. But in this case title by occupancy must rest upon\nintentional actual possession of the thing occupied.\nSuch is the meaning of the commentaries, from which are\nthe following extracts:\nThe acquisition of things tangible by\noccupancy must be made corpore et\nanimo, that is, by an outward act\nsignifying an intention to possess. The\nnecessity of an outward act to\ncommence holding a thing in\ndominion is founded on the principle\n\n218\n\n\x0cthat a will or intention can not have\nlegal effect without an outward act\ndeclaring that intention; and on the\nother hand, no man can be said to\nhave the dominion over a thing which\nhe has no intention of possessing as\nhis. Therefore a man can not deprive\nothers of their right to take possession\nof vacant property by merely\nconsidering it as his, without actually\nappropriating it to himself; and if he\npossesses it without any will of\nappropriating it to himself, as in the\ncase of an idiot, it can not be\nconsidered as having ceased to be res\nnullius. The outward act or possession\nneed not, however, be manual; for any\nspecies of possession, or as the\nancients expressed it, custodia, is in\ngeneral a sufficient appropriation.\n1 Bouv. Am. L. No. 495. Possession in the civil law\nimplies three things; a just cause of\npossessing as master, the intention to\npossess in this quality, and detention *\n* without the intention there is no\npossession * * * *. Without the\ndetention the intention is useless, and\ndoes not make the possession.\n1 Domat\xe2\x80\x99s Civil Law, by Cushing 859, No. 2, 161.\nThe possession of the things which we\nacquire by their falling into our hands,\nsuch as that which we find * * * * is\nacquired by the bare fact of our laying\nour hands upon them\xe2\x80\x9d\nId. No. 2,162. \xe2\x80\x9cFound-means, not merely discovered, but\ntaken up.\xe2\x80\x9d Notes to Coop. Just. 458. \xe2\x80\x9cTreasures naturally\n\n219\n\n\x0cbelong to the finder; that is to him who moves them from\nthe place where they are, and secures them.\xe2\x80\x9d Id 461.\nThe law is happily stated in the code of Louisiana thus: \xe2\x80\x9cTo\nbe able to acquire possession of a property, two distinct\nthings are requisite: 1. The intention of possessing as\nowner; 2. The corporeal possession of the thing.\xe2\x80\x9d La. Civil\nCode, Art. 3399.\nPothier, with his characteristic accuracy and perspicuity, has\nfully stated the law upon this subject, and the rule as stated\nby him is to this effect; that to acquire possession of a thing\nthere must be a desire to possess it, joined to a prehension\nof the thing. See in full Nos. 39 to 42 & No. 55 of his Traite\nDe La. Possession, and Nos. 63 & 64 of his Traite Du Droit De\nPropriete; Marvin on Wreck & Salvage s. 127.\nSuch are the doctrines of the Louisiana code, of the\ncommentators upon the Common, Roman, French and\nAdmiralty law, and applying them to the facts of this case,\nwe hold that Brazelton never attained to the possession of\nthe wreck of the America, that he therefore had no title to\nit by occupancy, had no right upon which judicial\nprotection could operate, none which the court below\nshould have recognized. He had considered the wreck as\nhis as its finder, but had not actually appropriated it to\nhimself; his intention to possess was useless without\ndetention of the property; he had not found the lead in the\nrequired sense of discovering it, and taking it up; he was\nnot a finder, in that he had not moved the wrecked\nproperty, or secured it; he had the intention of possessing it\nas owner, but did not acquire its corporeal possession; to\nhis desire to possess there was not joined a prehension of\nthe thing.\nBrazelton\xe2\x80\x99s act of possession need not have been manual,\nhe was not obliged to take the wreck or the lead between\nhis hands, he might take such possession of them as their\nnature and situation permitted; but that his circumstances\n\n220\n\n\x0cshould give a legal character to his acts, making that to be\npossession which the law declares not to be possession,\nassume more than a court can sanction. Marking trees that\nextended across the wreck, affixing temporary buoys to it\nwere not acts of possession; they only indicated Brazelton\xe2\x80\x99s\ndesire or intention to appropriate the property. Placing his\nboat over the wreck, with the means to raise its valuables,\nand with persistent efforts directed to raising the lead,\nwould have been keeping the only effectual guard over it,\nwould have been the only warning that intruders, that is,\nother longing occupants would be obliged to regard, would\nhave been such acts of possession as the law would notice\nand protect. If Brazelton in the winter of 1855, deferred\nraising the lead to wreck the steamboat Eliza, he was free to\ndo so, but must abide the legal consequences of his choice.\nIf afterwards he could not work in the main channel of the\nriver, owing to high water, strong wind, or to damaged\nboats and rigging, his ill fortune could not bend the law to\nhis circumstances, nor could he with right warn off the\ndefendants from the occupancy of the America, when they\nwere as willing and more able than himself to raise the lead\nin her hold.\nThe following adjudged cases may have a bearing upon this\ncase, and illustrate the general principles of the last cited\nauthorities:\nIn Pierson v. Post, 3 Caines Rep., the plaintiff was pursuing a\nfox and had not got it within his control; and the defendant\nwas held not to be liable for killing it. The plaintiff had\nestablished no claim by occupancy. His intention against\nthe fox was unmistakable, but his act of possession was\nincomplete.\nMarking a bee-tree was a more emphatic claim against the\nbees than Brazelton\xe2\x80\x99s marks were upon the wreck, but was\nnot sufficient to vest a right in the finder. Gillet v. Mason, 7\nJhs. 17.\n\n221\n\n\x0cAnd when one had found bees and had got leave of the\nowner of the tree in which they were to cut it, and take the\nbees, he acquired no property in the bees, he had not taken\npossession of them. Ferguson v. Miller, 1 Cow. 244.\nIt is not trespass to take wild bees or honey. Wallace v.\nMease, 3 Binn. 553.\nA deer had been wounded and followed with dogs for six\nmiles, and the pursuit was given over for the night by the\nplaintiff, though his dogs continued the chase; the\ndefendant and the plaintiff seized the deer together, but,\nbecause this did not show an occupancy of the deer by the\nplaintiff, he could not recover the skin and venison of the\ndefendant, who killed the deer. Buster v. Newkirk, 20 Jhs. 75.\nThe next authority is from an accomplished admiralty\njudge, several of whose decisions are cited in this opinion:\nThe title which is acquired to property\nby finding, is a species of occupation;\nand it is laid down as a rule of law, by\nthe civilians, that the mere discovery\nand sight of the thing, is not sufficient\nto vest in the finder a right of property\nin the thing found. Pothier, Traite de la\nPropriete No. 63. This title is acquired\nby possession, and this must be an\nactual possession. He cannot take and\nkeep possession by an act of the will,\noculis et affectu, as he may when property\nis transferred by consent and the\npossession given by a symbolical\ndelivery. To consummate his title there\nmust be a corporeal prehension of the\nthing.\nThe Amethyst, Davies Rep. 23.\nFrom the foregoing quotation may be seen the\ninapplicability of the citation from Parson\xe2\x80\x99s Merc. Laws, in\n\n222\n\n\x0cthe argument for Brazelton, as it relates to the delivery of\nbulky articles, the right of which is passed by sale.\nThe reference to the next case, except the extract from the\nopinion of the chancellor, is taken from the printed brief\nfurnished for the defendant.\nThe case of Deklyn v. Davis is like the present case. About\nthe year 1781, the British frigate \xe2\x80\x9cThe Hussar\xe2\x80\x9d sank in the\nEast river in sixty or seventy feet of water.\nThe bill averred that she \xe2\x80\x9cwas abandoned and derelict,\xe2\x80\x9d and\nthat \xe2\x80\x9cwith much labor and expense\xe2\x80\x9d the complainants, in\nthe summer of 1823, had discovered the \xe2\x80\x9cprecise situation\nof the ship-had fastened chains around her, which they\nsecured to floating timbers, and raised her about ten feet\nfrom her bed, and perfectly occupied the vessel, and\ncontinued their occupancy, by which she became their\nproperty. That at the approach of winter they desisted from\ntheir labors, by reason of the weather, designing to resume\nthe work in the following season. That the occupancy of\nthe complainants continued until the defendants, with\nknowledge of complainant\xe2\x80\x99s rights, on the twenty-second\nof March, with vessel, etc., moored and anchored over and\naround the sunken ship. \xe2\x80\x9cAn injunction was granted,\nrestraining the defendants \xe2\x80\x9cfrom the further interruption of\nthe complainants\xe2\x80\x9d and also enjoining them \xe2\x80\x9cforthwith to\nremove the sloops.\xe2\x80\x9d\n\xe2\x80\x9cThe defendants set up that the property was not\nabandoned or derelict when complainants took possession\nin 1823; that defendants, at great cost, had made\npreparation to raise the vessel; that they had ascertained the\nprecise situation and position of said frigate, took\npossession thereof, and to occupy the same, made their\nmarks and ranges on the adjoining shore so as to identify\nthe spot and enable them to commence their operations\nthereupon at the opening of the following season.\xe2\x80\x9d That\nthe complainants, \xe2\x80\x9cin the absence of the defendants and\n\n223\n\n\x0ctheir men, fraudulently and forcibly took possession of the\nfrigate;\xe2\x80\x9d and afterwards Davis, in the absence of Deklyn\nand his men, took possession of the frigate by anchoring\nsloops over her and surrounding her with machinery. \xe2\x80\x9cThe\nright claimed by each of the contending parties is the right\nof occupancy. Both parties have prepared means and have\ntaken measures to raise the sunken frigate; neither party has\nyet effected that object; and such being the state of the\nfacts, the court says: Neither party has yet obtained an actual or\nexclusive possession of the derelict subject. * * * The complainants\nallege in their bill that their acts of occupancy have\nobtained for them a title; and the defendants, by their\nanswer, insist that their acts preparatory to an actual\npossession, have been such as to give them a prior and\nsuperior right.\xe2\x80\x9d\nBut if the acts of the complainant Deklyn did not constitute\nany \xe2\x80\x9cactual or exclusive occupancy,\xe2\x80\x9d and if the acts of the\ndefendant Davis were merely \xe2\x80\x9d prepatory to an actual\npossession,\xe2\x80\x99 much less did the acts of Brazelton constitute\nsuch occupancy. Hopkins, Ch. Rep. 135.\nThe next two cases referred to, and from one of which a\nlengthy extract is given, were decided by Judge Betts of\nNew York, a very high authority in the matters treated\nupon: \xe2\x80\x9c* * * but it is in consonance with the established\nprinciples of maritime law to hold those beginning a\nsalvage service, and who are in the successful prosecution\nof it entitled to be regarded as the meritorious salvors of\nwhatever is preserved, and entitled to the sole possession of\nthe property.\xe2\x80\x9d The Brig John Gilpin, Olcott\xe2\x80\x99s Rep. Adm. 86.\nAn impression seems to have\nobtained, that one who finds derelict\nproperty under water or afloat,\nacquires a right to it by discovery,\nwhich can be maintained by a kind of\ncontinued claim, without keeping it in\npossession or applying constant\n\n224\n\n\x0cexertions for its preservation and\nrescue. There is no foundation for\nsuch notion. The right of a salvor\nresults from the fact that he has held\nin actual possession, or has kept near\nwhat was lost or abandoned by the\nowner, or placed in a dangerous\nexposure to destruction, with the\nmeans at command to preserve and\nsave it, and that he is actually\nemploying those means to that end.\nThe finder thus becomes the legal\npossessor, and acquires a privilege\nagainst the property for his salvage\nservices which takes precedence of all\nother title.\nLewis v. The Elizabeth & Jane, Ware, 41; The Bee, Ware, 332;\nThe St. Peter, Bee, 82.\n* * * The fact that property is found at\nsea or on the coast in peril, without the\npresence of anyone to protect it, gives\nthe finder a right to take it in his\npossession; and the law connects with\nsuch right the obligation to use the\nmeans he has at control, and with all\nreasonable promptitude, to save it for\nthe owner. He can therefore be no\notherwise clothed with the character of\nsalvor than whilst he is in the\noccupancy of the property, and\nemploying the necessary means for\nsaving it.\nNotorious possession, with the avowal\nof the object of such possession, are\ncardinal requisites to the creation or\nmaintenance of the privileges of a\nsalvor; where they do not exist, any\n\n225\n\n\x0cother person may take the property\nwith all the advantages of the first\nfinder.\nThe Schooner John Wurtz, Olcott Rep. Adm. 469-471. Marvin\non Wreck and Salvage, s. 128.\nNo reasoning, no comment can make more imperative the\naction of this court than it is made by the foregoing cases\nand authorities, taken in connection with the facts of the\ncase, or with the allegations of the bill alone.\nThe decree of the circuit court of Mississippi county sitting\nin chancery is reversed \xe2\x80\xa6 .\nPopov v. Hayashi, No. 400545, 2002 WL 31833731 (Cal.\nSuperior, Dec. 18, 2002)\nMCCARTHY, J.\nFACTS\nIn 1927, Babe Ruth hit sixty home runs. That record stood\nfor thirty four years until Roger Maris broke it in 1961 with\nsixty one home runs. Mark McGwire hit seventy in 1998.\nOn October 7, 2001, at PacBell Park in San Francisco,\nBarry Bonds hit number seventy three. That\naccomplishment set a record which, in all probability, will\nremain unbroken for years into the future.\nThe event was widely anticipated and received a great deal\nof attention.\nThe ball that found itself at the receiving end of Mr. Bond\xe2\x80\x99s\nbat garnered some of that attention. Baseball fans in\ngeneral, and especially people at the game, understood the\nimportance of the ball. It was worth a great deal of money1\n\nIt has been suggested that the ball might sell for something in excess of\n$1,000,000\n1\n\n226\n\n\x0cand whoever caught it would bask, for a brief period of\ntime, in the reflected fame of Mr. Bonds.\nWith that in mind, many people who attended the game\ncame prepared for the possibility that a record setting ball\nwould be hit in their direction. Among this group were\nplaintiff Alex Popov and defendant Patrick Hayashi. They\nwere unacquainted at the time. Both men brought baseball\ngloves, which they anticipated using if the ball came within\ntheir reach.\nThey, along with a number of others, positioned\nthemselves in the arcade section of the ballpark. This is a\nstanding room only area located near right field. It is in this\ngeneral area that Barry Bonds hits the greatest number of\nhome runs.2 The area was crowded with people on October\n7, 2001 and access was restricted to those who held tickets\nfor that section.\nBarry Bonds came to bat in the first inning. With nobody\non base and a full count, Bonds swung at a slow\nknuckleball. He connected. The ball sailed over the rightfield fence and into the arcade.\nJosh Keppel, a cameraman who was positioned in the\narcade, captured the event on videotape. Keppel filmed\nmuch of what occurred from the time Bonds hit the ball\nuntil the commotion in the arcade had subsided. He was\nstanding very near the spot where the ball landed and he\nrecorded a significant amount of information critical to the\ndisposition of this case.\nIn addition to the Keppel tape, seventeen percipient\nwitnesses testified as to what they saw after the ball came\ninto the stands. The testimony of these witnesses varied on\nmany important points. Some of the witnesses had a good\n\nThe Giants\xe2\x80\x99 website contains a page which shows where each of Bonds\xe2\x80\x99 home\nruns landed in 2001. This page was introduced into evidence and is part of the\nrecord. It shows that most of the balls are clustered in the arcade area.\n2\n\n227\n\n\x0cvantage point and some did not. Some appeared\ndisinterested in the outcome of the litigation and others had\na clear bias. Some remembered the events well and others\ndid not. Some were encumbered by prior inconsistent\nstatements which diminished their credibility.\nThe factual findings in this case are the result of an analysis\nof the testimony of all the witnesses as well as a detailed\nreview of the Keppel tape. Those findings are as follows:\nWhen the seventy-third home run ball went into the arcade,\nit landed in the upper portion of the webbing of a softball\nglove worn by Alex Popov. While the glove stopped the\ntrajectory of the ball, it is not at all clear that the ball was\nsecure. Popov had to reach for the ball and in doing so,\nmay have lost his balance.\nEven as the ball was going into his glove, a crowd of\npeople began to engulf Mr. Popov.3 He was tackled and\nthrown to the ground while still in the process of\nattempting to complete the catch. Some people\nintentionally descended on him for the purpose of taking\nthe ball away, while others were involuntarily forced to the\nground by the momentum of the crowd.\nEventually, Mr. Popov was buried face down on the\nground under several layers of people. At one point he had\ntrouble breathing. Mr. Popov was grabbed, hit and kicked.\nPeople reached underneath him in the area of his glove.\nNeither the tape nor the testimony is sufficient to establish\n\nTed Kobayashi, a defense expert, testified that there was insufficient reaction\ntime for the crowd to descend on Mr. Popov. This opinion is completely\nunconvincing. It is premised on the assumption that people did not begin to react\nuntil the ball hit Mr. Popov\xe2\x80\x99s glove. A number of witnesses testified that they\nbegan reacting while the ball was in the air. People rushed to the area where they\nthought the ball would land. If people were unable to anticipate where a ball will\nland while it is still in the air, no outfielder would ever catch a ball unless it was hit\ndirectly to him or her. Moreover, the tape itself shows people descending on Mr.\nPopov even as he was attempting to catch the ball.\n3\n\n228\n\n\x0cwhich individual members of the crowd were responsible\nfor the assaults on Mr. Popov.\nThe videotape clearly establishes that this was an out of\ncontrol mob, engaged in violent, illegal behavior. Although\nsome witnesses testified in a manner inconsistent with this\nfinding, their testimony is specifically rejected as being false\non a material point.4\nMr. Popov intended at all times to establish and maintain\npossession of the ball. At some point the ball left his glove\nand ended up on the ground. It is impossible to establish\nthe exact point in time that this occurred or what caused it\nto occur.\nMr. Hayashi was standing near Mr. Popov when the ball\ncame into the stands. He, like Mr. Popov, was involuntarily\nforced to the ground. He committed no wrongful act.5\nWhile on the ground he saw the loose ball. He picked it up,\nrose to his feet and put it in his pocket.\nAlthough the crowd was still on top of Mr. Popov, security\nguards had begun the process of physically pulling people\noff. Some people resisted those efforts. One person argued\nwith an official and another had to be pulled off by his hair.\nMr. Hayashi kept the ball hidden. He asked Mr. Keppel to\npoint the camera at him. At first, Mr. Keppel did not\ncomply and Mr. Hayashi continued to hide the ball. Finally\nafter someone else in the crowd asked Mr. Keppel to point\nthe camera at Mr. Hayashi, Mr. Keppel complied. It was\nonly at that point that Mr. Hayashi held the ball in the air\n\nBecause the probability of truth does not favor the testimony of any of these\nwitnesses in other particulars, their entire testimony is rejected. BAJI 2.22 This\nfinding does not apply to Mr. Hayashi.\n4\n\nPlaintiff argues that the Keppel tape shows Mr. Hayashi biting the leg of Brian\nShepard. The tape does not support such a conclusion. The testimony which\nsuggests that a bite occurred is equally unconvincing. In addition, there is\ninsufficient evidence that Mr. Hayashi assaulted or attempted to take the ball away\nfrom Mr. Popov.\n5\n\n229\n\n\x0cfor others to see. Someone made a motion for the ball and\nMr. Hayashi put it back in his glove. It is clear that Mr.\nHayashi was concerned that someone would take the ball\naway from him and that he was unwilling to show it until\nhe was on videotape. Although he testified to the contrary,\nthat portion of his testimony is unconvincing.\nMr. Popov eventually got up from the ground. He made\nseveral statements while he was on the ground and shortly\nafter he got up which are consistent with his claim that he\nhad achieved some level of control over the ball and that he\nintended to keep it. Those statements can be heard on the\naudio portion of the tape. When he saw that Mr. Hayashi\nhad the ball he expressed relief and grabbed for it. Mr.\nHayashi pulled the ball away.6 Security guards then took\nMr. Hayashi to a secure area of the stadium.7\nIt is important to point out what the evidence did not and\ncould not show. Neither the camera nor the percipient\nwitnesses were able to establish whether Mr. Popov\nretained control of the ball as he descended into the crowd.\nMr. Popov\xe2\x80\x99s testimony on this question is inconsistent on\nseveral important points, ambiguous on others and, on the\nwhole, unconvincing. We do not know when or how Mr.\nPopov lost the ball.\nPerhaps the most critical factual finding of all is one that\ncannot be made. We will never know if Mr. Popov would\nhave been able to retain control of the ball had the crowd\n\nDefense counsel has attempted to characterize this encounter as one in which\nMr. Popov congratulates Mr. Hayashi for getting the ball and offers him a high\nfive. This is an argument that only a true advocate could embrace.\n6\n\nTestimony was also received about events which occurred after baseball officials\nescorted Mr. Hayashi to a secure area. This evidence was admitted to allow\ncounsel to explore the possibility that Major League Baseball retained constructive\npossession of the ball after it landed in the stands and later gifted it to Mr.\nHayashi. Defense counsel has properly abandoned this theory. There is no\nevidence to support it.\n7\n\n230\n\n\x0cnot interfered with his efforts to do so. Resolution of that\nquestion is the work of a psychic, not a judge\nLEGAL ANALYSIS\nPlaintiff has pled causes of actions for conversion, trespass\nto chattel, injunctive relief and constructive trust.\nConversion is the wrongful exercise of dominion over the\npersonal property of another.8 There must be actual\ninterference with the plaintiff\xe2\x80\x99s dominion.9 Wrongful\nwithholding of property can constitute actual interference\neven where the defendant lawfully acquired the property. If\na person entitled to possession of personal property\ndemands its return, the unjustified refusal to give the\nproperty back is conversion.10\nThe act constituting conversion must be intentionally done.\nThere is no requirement, however, that the defendant know\nthat the property belongs to another or that the defendant\nintends to dispossess the true owner of its use and\nenjoyment. Wrongful purpose is not a component of\nconversion 11\nThe injured party may elect to seek either specific recovery\nof the property or monetary damages.12\nTrespass to chattel, in contrast, exists where personal\nproperty has been damaged or where the defendant has\ninterfered with the plaintiff\xe2\x80\x99s use of the property. Actual\n\nSee generally, Witkin, Summary of California Law, Ninth Edition, section 610. See\nalso, Fresno Air Service v. Wood (1965) 232 Cal.App.2d 801, 806, 43 Cal.Rptr. 276.\n8\n\n9\n\nJordan v. Talbot (1961) 55 Cal.2d 597, 610, 12 Cal.Rptr. 488, 361 P.2d 20.\n\nEdwards v. Jenkins (1932)214 Cal. 713, 720, 7 P.2d 702, Witkin, supra, at section\n622.\n10\n\nHenderson v. Security National Bank (1977) 72 Cal.App.3d 764, 771, 140 Cal.Rptr.\n388; Witkin, supra at section 624.\n11\n\n12\n\nWitkin, supra, at section 611.\n\n231\n\n\x0cdispossession is not an element of the tort of trespass to\nchattel.13\nIn the case at bar, Mr. Popov is not claiming that Mr.\nHayashi damaged the ball or that he interfered with Mr.\nPopov\xe2\x80\x99s use and enjoyment of the ball. He claims instead\nthat Mr. Hayashi intentionally took it from him and refused\nto give it back. There is no trespass to chattel. If there was\na wrong at all, it is conversion.\nConversion does not exist, however, unless the baseball\nrightfully belongs to Mr. Popov. One who has neither title\nnor possession, nor any right to possession, cannot sue for\nconversion.14 The deciding question in this case then, is\nwhether Mr. Popov achieved possession or the right to\npossession as he attempted to catch and hold on to the ball.\nThe parties have agreed to a starting point for the legal\nanalysis. Prior to the time the ball was hit, it was possessed\nand owned by Major League Baseball. At the time it was hit\nit became intentionally abandoned property.15 The first\nperson who came in possession of the ball became its new\nowner. 16\nThe parties fundamentally disagree about the definition of\npossession. In order to assist the court in resolving this\ndisagreement, four distinguished law professors\n\n13\n\nZaslow v. Kroenert (1946) 29 Cal.2d 541, 551, 176 P.2d 1.\n\nMetropolitan Life Insurance Company v. San Francisco Bank (1943) 58 Cal.App.2d\n528, 534, 136 P.2d 853; Witkin, supra, at section 617.\n14\n\nSee generally, Fugitive Baseballs and Abandoned Property: Who Owns the Home Run\nBall?, Cardozo Law Review, May 2002, Paul Finkelman, (Chapman Distinguished\nProfessor of Law).\n15\n\nSee generally, Past and Future: The Temporal Dimension in the Law of Property, (1986)\n64:667;. Washington U.L. Quarterly, Professor Richard A. Epstein (James Parker\nHall Professor of Law, University of Chicago; Irwin v. Phillips (1855) 5 Cal. 140;\nPotter v. Knowles (1855) 5 Cal. 87.\n16\n\n232\n\n\x0cparticipated in a forum to discuss the legal definition of\npossession.17 The professors also disagreed.\nThe disagreement is understandable. Although the term\npossession appears repeatedly throughout the law, its\ndefinition varies depending on the context in which it is\nused.18 Various courts have condemned the term as vague\nand meaningless.19\nThis level of criticism is probably unwarranted.\nWhile there is a degree of ambiguity built into the term\npossession, that ambiguity exists for a purpose. Courts are\noften called upon to resolve conflicting claims of\npossession in the context of commercial disputes. A stable\neconomic environment requires rules of conduct which are\nunderstandable and consistent with the fundamental\ncustoms and practices of the industry they regulate.\nWithout that, rules will be difficult to enforce and\neconomic instability will result. Because each industry has\ndifferent customs and practices, a single definition of\npossession cannot be applied to different industries without\ncreating havoc.\nThis does not mean that there are no central principles\ngoverning the law of possession. It is possible to identify\n\nThey are Professor Brian E. Gray, University of California, Hastings College of\nthe Law; Professor Roger Bernhardt, Golden Gate University School of Law;\nProfessor Paul Finkelman, The Chapman Distinguished Professor of Law, The\nUniversity of Tulsa School of Law; and Professor Jan Stiglitz, California Western\nSchool of Law.\n17\n\nThe discussion was held during an official session of the court convened at The\nUniversity of California, Hastings College of the Law. The session was attended\nby a number of students and professors including one first year property law class\nwhich used this case as vehicle to understand the law of possession.\nBrown, The Law on Personal Property (Callaghan and Company, 3rd Edition, 1975)\nsection 2.6, page 19.\n18\n\nKramer v. United States, 408 F.2d 837, 840 (C.A.8th.1969); State v. Strutt (1967) 4\nConn.Cir.Ct. 501, 236 A.2d 357, 359.\n19\n\n233\n\n\x0ccertain fundamental concepts that are common to every\ndefinition of possession.\nProfessor Roger Bernhardt20 has recognized that\n\xe2\x80\x9c[p]ossession requires both physical control over the item\nand an intent to control it or exclude others from it. But\nthese generalizations function more as guidelines than as\ndirect determinants of possession issues. Possession is a\nblurred question of law and fact.\xe2\x80\x9d21\nProfessor Brown argues that \xe2\x80\x9c[t]he orthodox view of\npossession regards it as a union of the two elements of the\nphysical relation of the possessor to the thing, and of\nintent. This physical relation is the actual power over the\nthing in question, the ability to hold and make use of it. But\na mere physical relation of the possessor to the thing in\nquestion is not enough. There must also be manifested an\nintent to control it.\xe2\x80\x9d22\nThe task of this court is to use these principles as a starting\npoint to craft a definition of possession that applies to the\nunique circumstances of this case.\nWe start with the observation that possession is a process\nwhich culminates in an event. The event is the moment in\ntime that possession is achieved. The process includes the\nacts and thoughts of the would be possessor which lead up\nto the moment of possession.\nThe focus of the analysis in this case is not on the thoughts\nor intent of the actor. Mr. Popov has clearly evidenced an\nintent to possess the baseball and has communicated that\n\nProfessor Bernhardt is the author of the textbook Property, Cases and Statutes,\npublished by the West Group as well as the co-author of Real Property in a Nutshell\nwith Professor Ann M. Burkhart.\n20\n\nReal Property in a Nutshell, Roger Bernhardt and Ann M. Burkhart, chapter one,\npage 3\n21\n\nBrown, The Law on Personal Property (Callaghan and Company, 3rd Edition, 1975)\nsection 2.6, page 21.\n22\n\n234\n\n\x0cintent to the world.23 The question is whether he did\nenough to reduce the reduce the ball to his exclusive\ndominion and control. Were his acts sufficient to create a\nlegally cognizable interest in the ball?\nMr. Hayashi argues that possession does not occur until the\nfan has complete control of the ball. Professor Brian Gray,\nsuggests the following definition \xe2\x80\x9d A person who catches a\nbaseball that enters the stands is its owner. A ball is caught\nif the person has achieved complete control of the ball at\nthe point in time that the momentum of the ball and the\nmomentum of the fan while attempting to catch the ball\nceases. A baseball, which is dislodged by incidental contact\nwith an inanimate object or another person, before\nmomentum has ceased, is not possessed. Incidental contact\nwith another person is contact that is not intended by the\nother person. The first person to pick up a loose ball and\nsecure it becomes its possessor.\xe2\x80\x9d24\nMr. Popov argues that this definition requires that a person\nseeking to establish possession must show unequivocal\ndominion and control, a standard rejected by several\nleading cases.25 Instead, he offers the perspectives of\nProfessor Bernhardt and Professor Paul Finkelman26 who\nsuggest that possession occurs when an individual intends\nto take control of a ball and manifests that intent by\nstopping the forward momentum of the ball whether or\nnot complete control is achieved.\n\n23\n\nLiterally.\n\n24\n\nThis definition is hereinafter referred to as Gray\xe2\x80\x99s Rule.\n\nPierson v. Post, 3 Caines R. (N.Y.1805); Young v. Hitchens, 6 Q.B. 606 (1844); State\nv. Shaw, (1902) 67 Ohio St. 157, 65 N.E. 875.\n25\n\nProfessor Finkelman is the author of the definitive law review article on the\ncentral issue in this case, Fugitive Baseballs and Abandoned Property: Who Owns the\nHome Run Ball?, Cardozo Law Review, May 2002, Paul Finkelman, (Chapman\nDistinguished Professor of Law).\n26\n\n235\n\n\x0cProfessors Finkelman and Bernhardt have correctly pointed\nout that some cases recognize possession even before\nabsolute dominion and control is achieved. Those cases\nrequire the actor to be actively and ably engaged in efforts\nto establish complete control.27 Moreover, such efforts\nmust be significant and they must be reasonably calculated\nto result in unequivocal dominion and control at some\npoint in the near future.28\nThis rule is applied in cases involving the hunting or fishing\nof wild animals29 or the salvage of sunken vessels.30 The\nhunting and fishing cases recognize that a mortally\nwounded animal may run for a distance before falling. The\nhunter acquires possession upon the act of wounding the\nanimal not the eventual capture. Similarly, whalers acquire\npossession by landing a harpoon, not by subduing the\nanimal.31\n\nThe degree of control necessary to establish possession varies from\ncircumstance to circumstance. \xe2\x80\x9cThe law \xe2\x80\xa6 does not always require that one who\ndiscovers lost or abandoned property must actually have it in hand before he is\nvested with a legally protected interest. The law protects not only the title acquired\nby one who finds lost or abandoned property but also the right of the person who\ndiscovers such property, and is actively and ably engaged in reducing it to\npossession, to complete this process without interference from another. The\ncourts have recognized that in order to acquire a legally cognizable interest in lost\nor abandoned property a finder need not always have manual possession of the\nthing. Rather, a finder may be protected by taking such constructive possession of\nthe property as its nature and situation permit.\xe2\x80\x9d Treasure Salvors Inc. v. The Unidentified\nWrecked and Abandoned Sailing Vessel (1981) 640 F.2d 560, 571 (emphasis added).\n27\n\nBrady v. S.S. African Queen, 179 F.Supp. 321 (E.D.Va., 1960); Eads v. Brazelton,\n(1861) 22 Ark. 499; Treasure Salvors Inc., id. at 571.\n28\n\nLiesner v. Wanie (1914) 156 Wis. 16, 145 N.W. 374; Ghen v. Rich, 8 F. 159\n(D.Mass.1881); Pierson v. Post, 3 Caines R. (N.Y.1805); Young v. Hitchens, 6 Q.B. 606\n(1844); State v. Shaw (1902) 67 Ohio St. 157, 65 N.E. 875. See also Herbert\nHovenkamp and Sheldon Kurtz, The Law of Property (5th ed. West Group 2001) at\npage 2.\n29\n\nIndian River Recovery Company v. The China, 645 F.Supp. 141, 144 (D.Del.1986);\nTreasure Salvors Inc. v. The Unidentified Wrecked and Abandoned Sailing Vessel,\n(1981)640 F.2d 560; Richard v. Pringle, 293 F.Supp. 981 (S.D.N.Y.1968).\n30\n\n31\n\nSwift v. Gifford, 23 F. Cas. 558 (D.Mass.1872)\n\n236\n\n\x0cIn the salvage cases, an individual may take possession of a\nwreck by exerting as much control \xe2\x80\x9cas its nature and\nsituation permit\xe2\x80\x9d.32 Inadequate efforts, however, will not\nsupport a claim of possession. Thus, a \xe2\x80\x9csailor cannot assert\na claim merely by boarding a vessel and publishing a notice,\nunless such acts are coupled with a then present intention\nof conducting salvage operations, and he immediately\nthereafter proceeds with activity in the form of constructive\nsteps to aid the distressed party.\xe2\x80\x9d33\nThese rules are contextual in nature. The are crafted in\nresponse to the unique nature of the conduct they seek to\nregulate. Moreover, they are influenced by the custom and\npractice of each industry. The reason that absolute\ndominion and control is not required to establish\npossession in the cases cited by Mr. Popov is that such a\nrule would be unworkable and unreasonable. The \xe2\x80\x9cnature\nand situation\xe2\x80\x9d of the property at issue does not immediately\nlend itself to unequivocal dominion and control. It is\nimpossible to wrap ones arms around a whale, a fleeing fox\nor a sunken ship.\nThe opposite is true of a baseball hit into the stands of a\nstadium. Not only is it physically possible for a person to\nacquire unequivocal dominion and control of an\nabandoned baseball, but fans generally expect a claimant to\nhave accomplished as much. The custom and practice of\nthe stands creates a reasonable expectation that a person\nwill achieve full control of a ball before claiming\npossession. There is no reason for the legal rule to be\ninconsistent with that expectation. Therefore Gray\xe2\x80\x99s Rule is\nadopted as the definition of possession in this case.\nThe central tenant of Gray\xe2\x80\x99s Rule is that the actor must\nretain control of the ball after incidental contact with\n\n32\n\nSee note 27.\n\n33\n\nBrady v. S.S. African Queen, 179 F.Supp. 321, 324 (E.D.Va., 1960)\n\n237\n\n\x0cpeople and things. Mr. Popov has not established by a\npreponderance of the evidence that he would have retained\ncontrol of the ball after all momentum ceased and after any\nincidental contact with people or objects. Consequently, he\ndid not achieve full possession.\nThat finding, however, does not resolve the case. The\nreason we do not know whether Mr. Popov would have\nretained control of the ball is not because of incidental\ncontact. It is because he was attacked. His efforts to\nestablish possession were interrupted by the collective\nassault of a band of wrongdoers.34\nA decision which ignored that fact would endorse the\nactions of the crowd by not repudiating them. Judicial\nrulings, particularly in cases that receive media attention,\naffect the way people conduct themselves. This case\ndemands vindication of an important principle. We are a\nnation governed by law, not by brute force.35\nAs a matter of fundamental fairness, Mr. Popov should\nhave had the opportunity to try to complete his catch\nunimpeded by unlawful activity. To hold otherwise would\nbe to allow the result in this case to be dictated by violence.\nThat will not happen.\n\nProfessor Gray has suggested that the way to deal with this problem is to\ndemand that Mr. Popov sue the people who assaulted him. This suggestion is\nunworkable for a number of reasons. First, it was an attack by a large group of\npeople. It is impossible to separate out the people who were acting unlawfully\nfrom the people who were involuntarily pulled into the mix. Second, in order to\nprove damages related to the loss of the ball, Mr. Popov would have to prove that\nbut for the actions of the crowd he would have achieved possession of the ball.\nAs noted earlier, this is impossible.\n34\n\nThere are a number of ways courts can enforce the rule of law. Major League\nBaseball, as well as each individual team has a duty to provide security against\nforeseeable violence in the stands. The failure to provide that security, or worse,\nthe tacit acceptance of some level of violence, will inevitable lead to lawsuits\nagainst the teams and the parent organization.\n35\n\n238\n\n\x0cFor these reasons, the analysis cannot stop with the valid\nobservation that Mr. Popov has not proved full\npossession.36\nThe legal question presented at this point is whether an\naction for conversion can proceed where the plaintiff has\nfailed to establish possession or title. It can An action for\nconversion may be brought where the plaintiff has title,\npossession or the right to possession.37\nHere Mr. Popov seeks, in effect, a declaratory judgment\nthat he has either possession or the right to possession. In\naddition he seeks the remedies of injunctive relief and a\nconstructive trust. These are all actions in equity. A court\nsitting in equity has the authority to fashion rules and\nremedies designed to achieve fundamental fairness.\nConsistent with this principle, the court adopts the\nfollowing rule. Where an actor undertakes significant but\nincomplete steps to achieve possession of a piece of\nabandoned personal property and the effort is interrupted\nby the unlawful acts of others, the actor has a legally\ncognizable pre-possessory interest in the property. That\npre-possessory interest constitutes a qualified right to\npossession which can support a cause of action for\nconversion.\nPossession can be likened to a journey down a path. Mr.\nPopov began his journey unimpeded. He was fast\napproaching a fork in the road. A turn in one direction\nwould lead to possession of the ball he would complete the\ncatch. A turn in the other direction would result in a failure\nto achieve possession he would drop the ball. Our problem\nis that before Mr. Popov got to the point where the road\n\nThe court is indebted to Professor Jan Stiglitz of California Western School of\nLaw for his valuable insights and suggestions on this issue.\n36\n\n37\n\nSee note 14.\n\n239\n\n\x0cforked, he was set upon by a gang of bandits, who\ndislodged the ball from his grasp.\nRecognition of a legally protected pre-possessory interest,\nvests Mr. Popov with a qualified right to possession and\nenables him to advance a legitimate claim to the baseball\nbased on a conversion theory. Moreover it addresses the\nharm done by the unlawful actions of the crowd.\nIt does not, however, address the interests of Mr. Hayashi.\nThe court is required to balance the interests of all parties.\nMr. Hayashi was not a wrongdoer. He was a victim of the\nsame bandits that attacked Mr. Popov. The difference is\nthat he was able to extract himself from their assault and\nmove to the side of the road. It was there that he\ndiscovered the loose ball. When he picked up and put it in\nhis pocket he attained unequivocal dominion and control.\nIf Mr. Popov had achieved complete possession before Mr.\nHayashi got the ball, those actions would not have divested\nMr. Popov of any rights, nor would they have created any\nrights to which Mr. Hayashi could lay claim. Mr. Popov,\nhowever, was able to establish only a qualified prepossessory interest in the ball. That interest does not\nestablish a full right to possession that is protected from a\nsubsequent legitimate claim.\nOn the other hand, while Mr. Hayashi appears on the\nsurface to have done everything necessary to claim full\npossession of the ball, the ball itself is encumbered by the\nqualified pre-possessory interest of Mr. Popov. At the time\nMr. Hayashi came into possession of the ball, it had, in\neffect, a cloud on its title.\nAn award of the ball to Mr. Popov would be unfair to Mr.\nHayashi. It would be premised on the assumption that Mr.\nPopov would have caught the ball. That assumption is not\nsupported by the facts. An award of the ball to Mr. Hayashi\nwould unfairly penalize Mr. Popov. It would be based on\n\n240\n\n\x0cthe assumption that Mr. Popov would have dropped the\nball. That conclusion is also unsupported by the facts.\nBoth men have a superior claim to the ball as against all the\nworld. Each man has a claim of equal dignity as to the\nother. We are, therefore, left with something of a dilemma.\nThankfully, there is a middle ground.\nThe concept of equitable division was fully explored in a\nlaw review article authored by Professor R.H. Helmholz in\nthe December 1983 edition of the Fordham Law Review.38\nProfessor Helmholz addressed the problems associated\nwith rules governing finders of lost and mislaid property.\nFor a variety of reasons not directly relevant to the issues\nraised in this case, Helmholz suggested employing the\nequitable remedy of division to resolve competing claims\nbetween finders of lost or mislaid property and the owners\nof land on which the property was found.\nThere is no reason, however, that the same remedy cannot\nbe applied in a case such as this, where issues of property,\ntort and equity intersect.\nThe concept of equitable division has its roots in ancient\nRoman law.39 As Helmholz points out, it is useful in that it\n\xe2\x80\x9cprovides an equitable way to resolve competing claims\nwhich are equally strong.\xe2\x80\x9d Moreover, \xe2\x80\x9c[i]t comports with\nwhat one instinctively feels to be fair\xe2\x80\x9d.40\nAlthough there is no California case directly on point,\nArnold v. Producers Fruit Company (1900) 128 Cal. 637, 61 P.\n283 provides some insight. There, a number of different\nprune growers contracted with Producer\xe2\x80\x99s Fruit Company\nEquitable Division and the Law of Finders, (1983) Fordham Law Review, Professor\nR.H. Helmholz, University of Chicago School of Law. This article built on a\nstudent comment published in 1939. Lost, Mislaid and Abandoned Property (1939) 8\nFordham Law Review 222.\n38\n\n39\n\nHelmholz at fn. 14.\n\n40\n\nId. at 315.\n\n241\n\n\x0cto dry and market their product. Producers did a bad job.\nThey mixed fruit from many different growers together in a\nsingle bin and much of the fruit rotted because it was\nimproperly treated.\nWhen one of the plaintiffs offered proof that the fruit in\ngeneral was rotten, Producers objected on the theory that\nthe plaintiff could not prove that the prunes he contributed\nto the mix were the same prunes that rotted. The court\nconcluded that it did not matter. After the mixing was\ndone, each grower had an undivided interest in the whole,\nin proportion to the amount of fruit each had originally\ncontributed.\nThe principle at work here is that where more than one\nparty has a valid claim to a single piece of property, the\ncourt will recognize an undivided interest in the property in\nproportion to the strength of the claim.\nApplication of the principle of equitable division is\nillustrated in the case of Keron v. Cashman (1896) 33 A. 1055.\nIn that case, five boys were walking home along a railroad\ntrack in the city of Elizabeth New Jersey. The youngest of\nthe boys came upon an old sock that was tied shut and\ncontained something heavy. He picked it up and swung it.\nThe oldest boy took it away from him and beat the others\nwith it. The sock passes from boy to boy. Each controlled\nit for a short time. At some point in the course of play, the\nsock broke open and out spilled $775 as well as some rags,\ncloths and ribbons.\nThe court noted that possession requires both physical\ncontrol and the intent to reduce the property to one\xe2\x80\x99s\npossession. Control and intent must be concurrent. None\nof the boys intended to take possession until it became\napparent that the sock contained money. Each boy had\nphysical control of the sock at some point before that\ndiscovery was made.\n\n242\n\n\x0cBecause none could present a superior claim of concurrent\ncontrol and intent, the court held that each boy was entitled\nto an equal share of the money. Their legal claims to the\nproperty were of equal quality, therefore their entitlement\nto the property was also equal.\nHere, the issue is not intent, or concurrence. Both men\nintended to possess the ball at the time they were in\nphysical contact with it. The issue, instead, is the legal\nquality of the claim. With respect to that, neither can\npresent a superior argument as against the other.\nMr. Hayashi\xe2\x80\x99s claim is compromised by Mr. Popov\xe2\x80\x99s prepossessory interest. Mr. Popov cannot demonstrate full\ncontrol. Albeit for different reasons, they stand before the\ncourt in exactly the same legal position as did the five boys.\nTheir legal claims are of equal quality and they are equally\nentitled to the ball.\nThe court therefore declares that both plaintiff and\ndefendant have an equal and undivided interest in the ball.\nPlaintiff\xe2\x80\x99s cause of action for conversion is sustained only\nas to his equal and undivided interest. In order to effectuate\nthis ruling, the ball must be sold and the proceeds divided\nequally between the parties.\nThe parties are ordered to meet and confer forthwith\nbefore Judge Richard Kramer to come to an agreement as\nto how to implement this decision. If no decision is made\nby December 30, 2002, the parties are directed to appear\nbefore this court on that date at 9:00 am.\nThe court retains jurisdiction to issue orders consistent\nwith this decision. The ball is to remain in the custody of\nthe court until further order.\nA Dissection of the Popov Case\nAs I\xe2\x80\x99ve said in class on a number of occasions, we\xe2\x80\x99re doing several\nthings in this course with the material we cover. First, we\xe2\x80\x99re trying\n\n243\n\n\x0cto understand in each case what the court has done. They\xe2\x80\x99re\nwriting to explain why they\xe2\x80\x99ve decided as they have. Our job is to\nunderstand the language in which they\xe2\x80\x99re writing and to \xe2\x80\x9cdecode\xe2\x80\x9d\nthe cases. Knowing the court\xe2\x80\x99s reasons will allow us to use the case\nto make arguments in a future case.\nSecond, we\xe2\x80\x99re gradually becoming familiar with a number of\nconcepts that are used repeatedly in many substantive areas of the\nlaw. Knowing these concepts (most of which we\xe2\x80\x99re pulling out and\ndescribing as Big Ideas) will help us read the language of cases and\nto use and to criticize cases.\nThird, we\xe2\x80\x99re assembling a sketch of several areas of the law that are\ncommonly lumped together and called \xe2\x80\x9cproperty law.\xe2\x80\x9d The goal\nhere is to know enough about these areas so that if confronted in\npractice with a real case, we\xe2\x80\x99d have an appreciation for the doctrine\nas a whole and therefore some immediate understanding when we\nstarted to dig into the cases in our jurisdiction covering the specific\nissue of interest. So far, we\xe2\x80\x99ve covered Finders vs. Landowners,\nTrespass to Land, Nuisance, and a bit of the doctrine of acquisition\nby first possession.\nPursuant to our first goal \xe2\x80\x93 simply to understand what the courts\nhave done in a case \xe2\x80\x93 here\xe2\x80\x99s my outline of the decision in Popov. I\ngive the first few words of the sentence where the new heading\nwould begin, so scan through the case as you follow along.\nThe first, roughly, three pages summarize the Facts.\n\xe2\x80\x9cPlaintiff has pled causes of \xe2\x80\xa6\xe2\x80\x9d This\nparagraph lists the claims. Here\xe2\x80\x99s what the\nfight is about.\n\xe2\x80\x9cConversion is the \xe2\x80\xa6\xe2\x80\x9d up through fn. 13:\nThe court defines two of the claims, stating\nmore particularly what must be shown in\norder to prove them.\n\xe2\x80\x9cIn the case at bar,\xe2\x80\x9d: A HERE section. The\napplication of the law to the facts disposes\nof one claim right away.\n\n244\n\n\x0c\xe2\x80\x9cConversion does not exist\xe2\x80\xa6\xe2\x80\x9d Further\ndefinition of conversion, setting up another\nlegal question, so that we can get to another\nHERE section, applying this law to the\nfacts.\n\xe2\x80\x9cThe parties have agreed\xe2\x80\xa6\xe2\x80\x9d Role of and\ndefinition of possession. (Having identified\nthe body of law applicable to resolve the\nfight, the court must canvas that body of\nlaw and extract \xe2\x80\x93 and reconcile \xe2\x80\x93 the rules\nwe\xe2\x80\x99ll apply to the facts here.) The court\ngradually refines the question to one of\nwhat physical act is required to achieve legal\npossession.\n\xe2\x80\x9cMr. Hayashi argues \xe2\x80\xa6\xe2\x80\x9d Two competing\nrules are introduced to define possession.\nWe\xe2\x80\x99re still reconciling the body of law that\nthat we will apply to our facts.\n\xe2\x80\x9cThese rules are contextual in nature\xe2\x80\xa6\xe2\x80\x9d up\nto \xe2\x80\x9cTherefore Gray\xe2\x80\x99s Rule is adopted \xe2\x80\xa6.\xe2\x80\x9d\nArgument for the adoption of a particular\nrule for possession. [it\xe2\x80\x99s possible to achieve\nfull control, fans expect that\xe2\x80\x99s the rule\n(Rose)] Now we have law to apply.\n\xe2\x80\x9cThe central tenant sic of Gray\xe2\x80\x99s Rule \xe2\x80\xa6\xe2\x80\x9d\nHERE \xe2\x80\x93 but there\xe2\x80\x99s a problem. The law we\nsynthesized when applied to these facts\nreveals a problem \xe2\x80\x93 a result we don\xe2\x80\x99t want.\n\xe2\x80\x9cA decision which ignored that fact\xe2\x80\xa6\xe2\x80\x9d\nPolicy that needs to be furthered.\n\xe2\x80\x9cThe\nlegal\nquestion\npresented\xe2\x80\xa6\xe2\x80\x9d\nJustification of court\xe2\x80\x99s POWER to do\nsomething different in this case than has\nbeen done before [note, this is different\nthan a logical or policy-based justification]\n\xe2\x80\x9cConsistent with this principle\xe2\x80\xa6\xe2\x80\x9d Synthesis\n[The court takes the rule it has adopted for\n\n245\n\n\x0cpossession of baseballs generally and\nmodifies it for cases of interruption by\nunlawful act]\n\xe2\x80\x9cPossession can be likened to a journey\xe2\x80\xa6\xe2\x80\x9d\nHERE [The court applies its new rule to\nthis case.]\n\xe2\x80\x9cAn award of the ball to Mr. Popov would\nbe unfair\xe2\x80\xa6\xe2\x80\x9d Problem \xe2\x80\x93 unmodified\napplication of the rule adopted would be\nunfair to Hayashi.\n\xe2\x80\x9cThankfully, there is a middle ground\xe2\x80\xa6\xe2\x80\x9d\nBody of law potentially applicable to this\nproblem.\n\xe2\x80\x9cHere, the issue is not intent\xe2\x80\xa6\xe2\x80\x9d He\xe2\x80\x99s\nmaking it too easy for me\xe2\x80\xa6 but anyway:\nHERE.\nIn condensed form, we have:\nFacts Fight identification Review of law applicable to fight\nHERE (one claim goes away, another is unclear) Review of\nlaw applicable to further elaborated understanding of fight\n(possession)\nSurvey two possible resolutions of uncertainty in law\n(specific def\xe2\x80\x99n of possession in this case) Argue for the\nadoption of one of these rules\nHERE But, application reveals policy problem Justification of\ncourt\xe2\x80\x99s power to modify law and address policy Synthesis of\nnew rule HERE But, application reveals fairness problem\nReview of law applicable to this problem HERE\nNote that this is a conceptual outline of what\xe2\x80\x99s going on in the\ncase, meant to help us better understand how legal arguments are\nconstructed. Seeing enough cases and thinking about how they\xe2\x80\x99re\nput together will help us talk the same language as courts and\n\n246\n\n\x0clawyers do. That will help us write our own arguments and more\nquickly read and extract information from the writings of others.\nMy substantive notes on Popov, if I were making an outline, might\nbe something more like: Popov (Cal. Super. Ct. 2002) - Bonds\nhomerun ball case. Popov \xe2\x80\x9ccatches,\xe2\x80\x9d but Hayashi winds up with it,\nafter \xe2\x80\x9cillegal\xe2\x80\x9d violence to Popov but not perpetrated by Hayashi.\nConversion - so issue is whether Popov possessed. Intent+phys\nposs. Physical possession unclear. Ct. considers Finkelman\xe2\x80\x99s rule\n(stopping momentum) and Gray\xe2\x80\x99s (complete control after stop,\nincidental contact dislodging vitiates possession), decides on\nGray\xe2\x80\x99s. But Popov deprived of chance to possess because of illegal\ncontact - so \xe2\x80\x9cqualified right to possession,\xe2\x80\x9d right to try to achieve\npossession unimpeded. But unfair to Hayashi - so split.\nIt would probably be a bit shorter than that when all was said and\ndone. But others will want a much longer description of the facts\nand law in the case than appears in my capsule here. What kind of\nnotes you want depends on how much and what kind of\ndescription you need to enable you to use Popov to make an\nargument in another case.\n\n247\n\n\x0cCharrier v. Bell, 496 So. 2d 601 (La. App. 1 Cir. 1986)\nJ. Arthur Smith, III, Baton Rouge, for plaintiff-appellant.\nDonald Juneau, Arlinda Locklear, Richard Dauphinais,\nNative American Rights Fund, Washington, D.C., for\nTunica-Biloxi Tribe.\nFred G. Benton, Jr., Baton Rouge, for defendantsappellees.\nBefore EDWARDS, WATKINS and PONDER1 , JJ.\nPONDER, Judge, retired.\nPlaintiff appealed the trial court\xe2\x80\x99s judgment denying both\nhis claim as owner of Indian artifacts and his request for\ncompensation for his excavation work in uncovering those\nartifacts under the theory of unjust enrichment. We affirm.\nPlaintiff is a former Corrections Officer at the Louisiana\nState Penitentiary in Angola, Louisiana, who describes\nhimself as an \xe2\x80\x9camateur archeologist\xe2\x80\x9d. After researching\ncolonial maps, records and texts, he concluded that\nTrudeau Plantation,2 near Angola, was the possible site of\nan ancient village of the Tunica Indians. He alleges that in\n1967 he obtained the permission of Mr. Frank Hoshman,\nSr., who he believed was the owner of Trudeau Plantation,\nto survey the property with a metal detector for possible\nburial locations. After locating and excavating\napproximately 30 to 40 burial plots, lying in a circular\npattern, plaintiff notified Mr. Hoshman that he had located\nthe Tunica village. Although the evidence is contradictory,\nplaintiff contends that it was at that time that Mr. Hoshman\n\nJudge, Elven E. Ponder, retired, has been assigned temporarily to this court by\nthe Supreme Court of Louisiana to fill the vacancy created by the election of\nJustice Luther F. Cole to the Supreme Court.\n1\n\nTrudeau Plantation consists of approximately 150 acres located on a bluff in the\nsoutheast quadrant of the meeting of the Mississippi River and Tunica Bayou.\nAngola is on the other side of the bayou.\n2\n\n\x0cfirst advised that he was the caretaker, not the owner, of\nthe property.\nPlaintiff continued to excavate the area for the next three\nyears until he had located and excavated approximately 150\nburial sites, containing beads, European ceramics,\nstoneware, glass bottles; iron kettles, vessels and skillets;\nknives, muskets, gunflints, balls and shots; crucifixes, rings\nand bracelets; and native pottery. The excavated artifacts\nare estimated to weigh two to two and one-half tons.\nIn search of a buyer for the collection, plaintiff talked to\nDr. Robert S. Neitzel of Louisiana State University, who, in\nturn, informed Dr. Jeffrey D. Brain of Harvard University.\nDr. Brain, who was involved in a survey of archeology\nalong the lower Mississippi River, viewed the artifacts and\nbegan discussions of their sale to the Peabody Museum of\nHarvard University. The discussions resulted in the lease of\nthe artifacts to the Museum, where they were inventoried,\ncatalogued and displayed.\nPlaintiff initially informed Dr. Neitzel and Dr. Brain that he\nhad found the artifacts in a cave in Mississippi, so as to\nconceal their source; later he did disclose the actual site of\nthe find to Dr. Brain, who had expressed his concern over\nthe title of the artifacts. Dr. Brain then obtained permission\nfrom the landowners to do further site testing and\nconfirmed that it was the true source of the artifacts.\nConfronted with the inability to sell the collection because\nhe could not prove ownership, plaintiff filed suit against the\nsix nonresident landowners of Trudeau Plantation,\nrequesting declaratory relief confirming that he was the\nowner of the artifacts. Alternatively, plaintiff requested that\nhe be awarded compensation under the theory of unjust\nenrichment for his time and expenses.\nThe State of Louisiana intervened in the proceeding on\nnumerous grounds, including its duty to protect its citizens\nin the absence of the lawful heirs of the artifacts. In 1978,\n\n249\n\n\x0cthe State purchased Trudeau Plantation and the artifacts\nfrom the six landowners and agreed to defend, indemnify\nand hold the prior owners harmless from any and all\nactions.3\nIn 1981 the Tunica and Biloxi Indians were recognized as\nan American Indian Tribe by the Bureau of Indian Affairs\nof the Department of the Interior. The Tunica-Biloxi\nIndians of Louisiana, Inc. intervened in the instant suit\nseeking title to the artifacts and the site of the burial\nground. At the same time, the tribe removed the action to\nfederal district court, where they also filed a parallel action\nseeking title to the artifacts. The federal district court, on\nSeptember 8, 1982, remanded the matter to state court and\nstayed the parallel action. Charrier v. Bell, 547 F.Supp. 580\n(M.D.La.1982). The Tunicas then withdrew, without\nprejudice, their claim to the property where the artifacts\nwere located and the State subordinated its claim of title or\ntrust status over the artifacts in favor of the Tunicas.\nThe trial judge held that the Tunica-Biloxi Tribe is the\nlawful owner of the artifacts, finding that plaintiff was not\nentitled to the artifacts under La.C.C. art. 3423 as it read\nprior to amendment by Act No. 187 of 1982, which\nrequired discovery \xe2\x80\x9cby chance\xe2\x80\x9d. The judge also found that\nplaintiff had no claim to the artifacts on the basis of\nabandonment under La.C.C. art. 3421, as it read prior to\nthe amendment by Act No. 187 of 1982, because the legal\nconcept of abandonment does not extend to burial goods.\nThe trial court also denied relief under the theory of unjust\nenrichment, finding that any impoverishment claimed by\nplaintiff was a result of his attempts \xe2\x80\x9cfor his own gain\xe2\x80\x9d and\nthat his presence and actions on the property of a third\n\nPlaintiff filed a motion for litigous redemption which was granted by the trial\ncourt, but rejected by this court. The matter was remanded for trial. Charrier v. Bell,\n380 So.2d 155 (La.App. 1st Cir.1979).\n3\n\n250\n\n\x0cparty placed him in a \xe2\x80\x9cprecarious position, if not in legal\nbad faith.\xe2\x80\x9d\nThe issues before this court are the adequacy of proof that\nthe Tunica-Biloxi Indians are descendants of the\ninhabitants of Trudeau, the ownership of the artifacts, and\nthe applicability of the theory of unjust enrichment.\nPlaintiff first argues that the evidence that the members of\nthe Tunica-Biloxi Indians of Louisiana, Inc., are legal\ndescendants of the inhabitants of Trudeau Plantation was\ninsufficient to entitle them to the artifacts. He asserts that\nfederal recognition of the tribe \xe2\x80\x9cmerely proves that the\nTribe is the best representative of the Tunica Indians for\npurposes of receiving federal benefits,\xe2\x80\x9d and points to\nevidence of intermixing by the Tunica tribe with other\ntribes.\nThe fact that members of other tribes are intermixed with\nthe Tunicas does not negate or diminish the Tunicas\xe2\x80\x99\nrelationship to the historical tribe. Despite the fact that the\nTunicas have not produced a perfect \xe2\x80\x9cchain of title\xe2\x80\x9d back\nto those buried at Trudeau Plantation, the tribe is an\naccumulation of the descendants of former Tunica Indians\nand has adequately satisfied the proof of descent. This is\nevident from the \xe2\x80\x9cFinal Determination for Federal\nAcknowledgment of the Tunica-Biloxi Indian Tribe of\nLouisiana\xe2\x80\x9d, Fed. Reg. Vol. 46, No. 143, p. 38411 (July 27,\n1981), which specifically found that the \xe2\x80\x9d contemporary\nTunica-Biloxi Indian Tribe is the successor of the historical\nTunica, Ofa and Avoyel tribes, and part of the Biloxi tribe\xe2\x80\x9d.\nThe evidence supports the finding that at least some\nportion of the Tunica tribe resided at Trudeau Plantation\nfrom 1731-1764. No contrary evidence, other than that\nsuggesting intermixing, was presented at the trial of this\ncase. Plaintiff\xe2\x80\x99s argument is without merit.\nPlaintiff next argues that the Indians abandoned the\nartifacts when they moved from Trudeau Plantation, and\n\n251\n\n\x0cthe artifacts became res nullius until found and reduced to\npossession by plaintiff who then became the owner.\nPlaintiff contends that he has obtained ownership of the\nproperty through occupancy, which is a \xe2\x80\x9cmode of acquiring\nproperty by which a thing which belongs to nobody,\nbecomes the property of the person who took possession\nof it, with the intention of acquiring a right of ownership\nupon it.\xe2\x80\x9d La.C.C. art. 3412, prior to amendment by Act No.\n187 of 1982.4\nOne of the five methods of acquiring property by\noccupancy is \xe2\x80\x9cBy finding (that is, by discovering precious\nstones on the sea shore, or things abandoned, or a\ntreasure.)\xe2\x80\x9d La.C.C. art. 3414, prior to amendment by Act\nNo. 187 of 1982. Plaintiff contends that the artifacts were\nabandoned by the Tunicas and that by finding them he\nbecame the owner.\n\nLa.C.C. art. 3412, 3414 and 3421 cited herein were repealed by Acts 1982, No.\n187, \xc2\xa7 1, effective January 1, 1984. The provisions replacing those articles\nreproduce their substance. Although the language has changed, they do not\nchange the law. See specifically La.C.C. art. 3412 and 3418, as adopted by Acts\n1982, No. 187, \xc2\xa7 1 and the comments. The articles previously read as follow:\n4\n\nLa.C.C. art. 3412\nOccupancy is a mode of acquiring property by which a\nthing which belongs to nobody, becomes the property\nof the person who took possession of it, with the\nintention of acquiring a right of ownership upon it.\nLa.C.C. art. 3414\nThere are five ways of acquiring property by\noccupancy, to wit: By hunting. By fowling. By fishing.\nBy finding (that is, by discovering precious stones on\nthe sea shore, or things abandoned, or a treasure.)\nLa.C.C. 3421.\n\nHe who finds a thing which is abandoned; that is,\nwhich its owner has let [left] with the intention not to\nkeep it any longer, becomes master of it in the same\nmanner as if it had never belonged to any body.\n\n252\n\n\x0cBoth sides presented extensive expert testimony on the\nhistory of the Tunica Indians, the French, English and\nSpanish occupation of the surrounding territory and the\npresence or absence of duress causing the Tunicas to\nabandon the Trudeau site.\nHowever, the fact that the descendents or fellow tribesmen\nof the deceased Tunica Indians resolved, for some\ncustomary, religious or spiritual belief, to bury certain items\nalong with the bodies of the deceased, does not result in a\nconclusion that the goods were abandoned. While the\nrelinquishment of immediate possession may have been\nproved, an objective viewing of the circumstances and\nintent of the relinquishment does not result in a finding of\nabandonment. Objects may be buried with a decedent for\nany number of reasons. The relinquishment of possession\nnormally serves some spiritual, moral, or religious purpose\nof the descendant/owner, but is not intended as a means of\nrelinquishing ownership to a stranger. Plaintiff\xe2\x80\x99s argument\ncarried to its logical conclusion would render a grave\nsubject to despoliation either immediately after interment\nor definitely after removal of the descendants of the\ndeceased from the neighborhood of the cemetery.\nAlthough plaintiff has referred to the artifacts as res nullius,\nunder French law, the source of Louisiana\xe2\x80\x99s occupancy law,\nthat term refers specifically to such things as wild game and\nfish, which are originally without an owner. The term res\nderelictae refers to \xe2\x80\x9cthings voluntarily abandoned by their\nowner with the intention to have them go to the first\nperson taking possession.\xe2\x80\x9d P. Esmein, Aubry & Rau Droit\nCivil Francais, Vol. II, \xc2\xa7 168, p. 46 (7th Ed.1966). Some\nexamples of res derelictae given by Aubry and Rau include\nthings left on public ways, in the cities or to be removed by\ngarbage collectors.\nThe artifacts fall into the category of res derelictae, if subject\nto abandonment. The intent to abandon res derelictae must\ninclude the intent to let the first person who comes along\n\n253\n\n\x0cacquire them. Obviously, such is not the case with burial\ngoods.\nFrench sources have generally held that human remains and\nburial goods located in cemeteries or burial grounds are not\n\xe2\x80\x9ctreasure\xe2\x80\x9d under article 716 of the French Civil Code and\nthereby not subject to occupancy upon discovery. Blancherot\nv. Couilhy, Bordeaux, 6 Aug. 1806, 38 Dalloz Jurisprudence\nG ene rale, \xc2\xa7 186 n. (1), p. 230 (1857). The reasoning has\nbeen that any contrary decision would lead to and promote\ncommercial speculation and despoilment of burial grounds.\nThe French commentator Demolombe noted the special\ntreatment that should be given to burial goods, stating that\nsuch objects \xe2\x80\x9chave not been placed underground with the\nsame intention which informs the deposit of what is called\ntreasure, which in the latter case is, for a temporary\nperiod\xe2\x80\xa6. Rather, they are an emplacement for a perpetual\nresidence therein\xe2\x80\xa6.\xe2\x80\x9d 13 C. Demolombe, Cours de Code\nNapoleon \xc2\xa7 37, pp. 45-46 (2c ed. 1862).\nThe same reasoning that the French have used to treat\nburial goods applies in determining if such items can be\nabandoned. The intent in interring objects with the\ndeceased is that they will remain there perpetually, and not\nthat they are available for someone to recover and possess\nas owner.\nFor these reasons, we do not uphold the transfer of\nownership to some unrelated third party who uncovers\nburial goods. The trial court concluded that La.C.C. art.\n3421, as it read prior to passage of Act No. 187 of 1982,\nwas not intended to require that objects buried with the\ndead were abandoned or that objects could be acquired by\nobtaining possession over the objections of the\ndescendants. We agree with this conclusion.\nThe cases cited by plaintiff are distinguishable.\nIn Touro Synagogue v. Goodwill Industries of New Orleans Area,\nInc., 233 La. 26, 96 So.2d 29 (1957), the court found that a\n\n254\n\n\x0ccemetery had been abandoned for burial purposes and the\nowner had the right to sell the property; however, the court\nconditioned the sale on the disinterment and reinterment\n(in another cemetery) of the remains of the deceased.\nIn Ternant v. Boudreau, 6 Rob. 488 (1844), jewelry interred\nwith the decedent was stolen and recovered. The plaintiff\nclaimed the ownership of all such goods on the basis that\nhe purchased the decedent\xe2\x80\x99s succession from defendant\nwho was the heir. The court found that the plaintiff was the\nlawful owner of the jewelry since there had been a valid sale\nfrom the descendant. The sale evidenced an express intent\nby the descendant not to retain ownership of the burial\ngoods.\nThe court in McEnery v. Pargoud, 10 La.Ann. 497 (1855)\nfound that the temporary use of land as a cemetery, from\n1794 to 1800, did not exclude it from commerce. There\nwas no mention of the abandonment of the remains of the\ndead or the burial goods and there is no inconsistency in\nthat decision and the opinion stated herein.\nHumphreys v. Bennett Oil Corporation, 195 La. 531, 197 So. 222\n(1940) merely acknowledges that descendants have a cause\nof action against a person who disturbs a cemetery.\nPlaintiff strongly argues that a finding that Indians did not\nabandon the artifacts will necessarily require the federal\ncourt to conclude that the Tunicas did not abandon the real\nproperty at Trudeau Plantation and could work havoc with\nthe stability of Louisiana land titles. However, the question\nof the abandonment of the real property was excluded\nfrom the case. This opinion should not be interpreted as\nmaking any expression thereon.\nPlaintiff next argues that he is entitled to recover a sum of\nmoney to compensate his services and expenses on the\nbasis of an actio de in rem verso.\nThe five criteria of such a claim de in rem verso are:\n\n255\n\n\x0c1. there must be an enrichment,\n2. there must be an impoverishment,\n3. there must be a connection between the enrichment\nand resulting impoverishment,\n4. there must be an absence of justification or cause\nfor the enrichment and impoverishment, and\n5. there must be no other remedy at law available to\nplaintiff.\nCreely v. Leisure Living, Inc., 437 So.2d 816 (La.1983);\nEdmonston v. A-Second Mortgage Company of Slidell Inc., 289\nSo.2d 116 (La.1974).\nWe first question whether there has been an enrichment.\nWhile the nonresident landowners were \xe2\x80\x9cenriched\xe2\x80\x9d by the\nsale of the property to the state, the ultimate owners of the\nartifacts presented substantial evidence that the excavation\ncaused substantial upset over the ruin of \xe2\x80\x9cancestrial burial\ngrounds,\xe2\x80\x9d rather than any enrichment.\nEven if the Indians have been enriched, plaintiff has failed\nto prove that he has sustained the type impoverishment for\nwhich de in rem verso, may be used. His alleged loss resulted\nfrom the hours he spent excavating the artifacts, the greater\nportion of which activity was done at a time when plaintiff\nknew he was on property without the consent of the\nlandowner. While contradictory testimony was presented\nregarding whether plaintiff initially had permission to go on\nthe property, and whether that permission was adequate, by\nhis own admission, plaintiff was informed by Hoshman\nthat he did not own the property before the cessation of\nthe excavating. Plaintiff\xe2\x80\x99s knowledge is further evidenced\nby his attempts to keep the location of his work secret; he\ndid not identify Trudeau Plantation as the location of the\nfind for almost five years after his discovery and he failed\nto seek out the landowners of the property until it was\nrequired for sale negotiations, although he removed two\n\n256\n\n\x0cand one half tons of artifacts from their property. Plaintiff\nfurther acknowledges that he knew that the Tunica Indians\nmight object to his excavations.\nThe actio de in rem verso, explained by the Louisiana Supreme\nCourt in Minyard v. Curtis Products, Inc., 251 La. 624, 205\nSo.2d 422 (1967) and derived from the similar French\naction, is influenced greatly by French Civil Code articles\nfrom which our own are copied. Minyard, 205 So.2d 432.\nThe impoverishment element in French law is met only\nwhen the factual circumstances show that it was not a result\nof the plaintiff\xe2\x80\x99s own fault or negligence or was not\nundertaken at his own risk. Comment, Actio De In Rem\nVerso in Louisiana; Minyard v. Curtis Products, Inc., 43\nTul.L.Rev. 263, 286 (1969); Brignac v. Boisdore, 288 So.2d 31,\n35 n. 2 (La.1973). Obviously the intent is to avoid awarding\none who has helped another through his own negligence or\nfault or through action taken at his own risk. Plaintiff was\nacting possibly out of his own negligence, but more\nprobably knowingly and at his own risk. Under these\ncircumstances, plaintiff has not proven the type of\nimpoverishment necessary for a claim of unjust\nenrichment.\nAdditionally, plaintiff has failed to show that any\nenrichment was unjustified, entitling him to an action to\nrecover from the enriched party. An enrichment will be\nunjustified \xe2\x80\x9conly if no legal justification for it exists by\nreason of a contract or provision of law intended to permit\nthe enrichment or the impoverishment or to bar attack\nupon the enrichment.\xe2\x80\x9d Justice A. Tate, The Louisiana Action\nfor Unjustified Enrichment, 50 Tul.L.Rev. 883, 904 (1976). Any\nenrichment received by the Tribe was justified. Humphreys v.\nBennett Oil Corp., 195 La. 531, 197 So. 222 (1940); Choppin v.\nLaBranche, 48 La.Ann. 1217, 20 So. 681 (1896). In\nHumphreys, the court recognized a right of action to recover\ndamages for mental anguish and pain and suffering for\ndesecration of a cemetery, while Choppin allowed injunctive\n\n257\n\n\x0crelief against a tomb owner threatening to remove remains\nof the dead. Thus, descendants have a right to enjoin the\ndisinterment of their deceased relatives, as well as to receive\ndamages for the desecration involved. Such a right would\nbe subverted if descendants were obliged to reimburse for\nthe expenses of the excavation. See V & S Planting Company\nv. Red River Waterway Commission, 472 So.2d 331 (La.App.\n3rd Cir. 1985), writ denied, 475 So.2d 1106 (1985); G.\nWoodward Jackson Co., Inc. v. Crispens, 414 So.2d 855\n(La.App. 4th Cir. 1982). There is a legal justification for any\nenrichment received by the Tribe and plaintiff is not\nentitled to invoke the equitable theory.\nFor these reasons the judgment of the trial court is affirmed\nat appellant\xe2\x80\x99s costs.\nAFFIRMED.\n2.1.4. Problems\nProblems\n1. What legal conclusion must be reached before we decide, as in\nPopov, that the first possessor of an object is its legal owner?\n2. Explain why in Charrier it is difficult to decide whether the buried\nartifacts had been abandoned.\n3. Suppose you are the judge in Eads but that you will order the\nsame remedy as in Popov. Give your argument for doing so. That is,\ngive a very brief discussion of the rule of law applicable to the\ndispute and a \xe2\x80\x9cHERE\xe2\x80\x9d section, applying that law to the facts in\nEads and reaching the conclusion the court reached in Popov.\nAnswers\n1. What legal conclusion must be reached before we decide, as in\nPopov, that the first possessor of an object is its legal owner?\nThe court must first conclude that the object is \xe2\x80\x9cup for\ngrabs,\xe2\x80\x9d for example by having been abandoned.\n\n258\n\n\x0c2. Explain why in Charrier it is difficult to decide whether the buried\nartifacts had been abandoned.\nThe difficulty concerns whether the original owners of the\nartifacts, those who buried them, intended to abandon the\nartifacts. An intent to abandon might be defined as an intent\nnever to recover objects left behind. If this is what we mean\nby intent, then the original owners abandoned the artifacts.\nOn the other hand, the Charrier court defined an intent to\nabandon as an intent that an object left behind will be taken\nand owned by others. Under this definition, the original\nowners almost certainly did not intend to abandon the\nartifacts.\n3. Suppose you are the judge in Eads but that you will order the\nsame remedy as in Popov. Give your argument for doing so. That is,\ngive a very brief discussion of the rule of law applicable to the\ndispute and a \xe2\x80\x9cHERE\xe2\x80\x9d section, applying that law to the facts in\nEads and reaching the conclusion the court reached in Popov.\nThis case concerns two salvage operations that each claim\nexclusive rights to an abandoned, sunken ship. Usually the\ncourt would identify one or the other as having obtained first\npossession, and thus ownership, of the abandoned property.\nHowever, where it would be inequitable to award the property\nentirely to one party, the court should, proceeding in equity,\nrecognize the equal strength of the parties\xe2\x80\x99 claims by awarding\nequal rights in the disputed property.\nB\xe2\x80\x99s claim stems from the incomplete acts he took toward\npossession. Possession is defined, generally, as the intent to\nappropriate an object as one\xe2\x80\x99s own combined with an\nadequate physical manifestation of that intent. What sort of\nphysical act is required depends on the circumstances, and in\nparticular what acts will unambiguously alert others of the\npossessor\xe2\x80\x99s claim. In this context, clear marking, such as\nplacing a salvage boat over the wreck would be enough.\n\n259\n\n\x0cHere, however, B placed buoys and marked trees on the\nshore. The buoys broke free and the markings were\ninadequate clearly to identify the wreck as the salvage\noperation of B. B did not do enough to obtain possession.\nHowever, the physical act of possession is a process, not an\ninstantaneous occurrence, and B took substantial steps toward\npossession. He located and marked, after much research and\ntoil, the location of a wreck that had, despite its valuable\ncargo, not been salvaged after nearly three decades at the\nbottom of the Mississippi River.\nThough he did not immediately begin salvage operations, this\ncase would not have arisen but for a prudent delay caused by\nseason rises in water levels. If the law required salvage in\nunsafe conditions in order to guarantee the fruits of the labor\nand toil of discovery, loss of life and damage to property\nmight result. We believe that B did enough to earn the right to\nobtain possession - an interest that would protect his ability to\nsalvage without requiring him to engage in hasty and perilous\nrecovery operations.\nOn the other hand, E did nothing wrong. The facts\ndemonstrate he found the wreck without making use of any\nof B\xe2\x80\x99s markings. E put his boat over the wreck and did\neverything the law requires to obtain title through possession.\nTheir claims being of equal quality and weight, E and B\nshould be awarded equal interests in the salvage.\n2.2 Common Pool Resources\n2.2.1. The Problem and Theory\nMcConico v. Singleton, 2 Mill Const. 244, 9 S.C.L. 244\n(1818)\nThis was an action of trespass, quare clausum fregit, and to\nsupport it the plaintiff proved, that he had warned and\nordered the defendant not to hunt on his lands, and that\nthe defendant had, notwithstanding, rode over, and hunted\ndeer on his unenclosed and unimproved lands. The verdict\n\n260\n\n\x0cof the jury was, that each party should pay their own costs;\nand the plaintiff now moves for a new trial on the grounds:\n1st. Because the riding over the unenclosed and\nunimproved lands is in law a trespass, for which an action\nwill lie, when it is contrary to the express orders of the\nowner.\n2d. Because the verdict is in itself a nullity.\nJOHNSON, J. delivered the opinion of the court.\nUntil the bringing of this action, the right to hunt on\nunenclosed and uncultivated lands has never been disputed,\nand it is well known that it has been universally exercised\nfrom the first settlement of the country up to the present\ntime; and the time has been, when, in all probability,\nobedient as our ancestors were to the laws of the country, a\ncivil war would have been the consequence of an attempt,\neven by the legislature, to enforce a restraint on this\nprivilege. It was the source from whence a great portion of\nthem derived their food and raiment, and was, to the\ndevoted huntsman, (disreputable as the life now is,) a\nsource of considerable profit. The forest was regarded as a\ncommon, in which they entered at pleasure, and exercised\nthe privilege; and it will not be denied that animals, ferae\nnaturae, are common property, and belong to the first taker.\nIf, therefore, usage can make law, none was ever better\nestablished. This usage is also clearly recognized as a right\nby the several acts of the legislature on the subject;\nparticularly the act of 1769, (Pub. Laws, 276,) which\nrestrains the right to hunt within seven miles of the\nresidence of the hunter. Now if the right to hunt beyond\nthat, did not before exist, this act was nugatory; and it,\ncanuot be believed that it was only intended to apply to\nsuch as owned a tract of land, the diameter of which would\nbe fourteen miles. It appears to me also, that there is no\nrule of the English common law, at variance with this\nprinciple; but, it is said, that every entry on the lands of\n\n261\n\n\x0canother is a trespass, and the least injury, as treading down\ngrass, and the like, will support it. (1 Esp. Dig. Tit.\nTrespass, 221.) But there must be some actual injury to\nsupport the action. Now it will not be pretended that riding\nover the soil is an injury; and the forest being the common,\nin which the cattle of all are used to range at large, the\ngrass, if perchance there be any, may also be regarded as\ncommon property; and surely no action will lie against a\ncommoner for barely riding over the common. The right to\nhunt on unenclosed lands, I think, therefore, clearly\nestablished; but if it were doubtful, I should be strongly\ninclined to support it. Large standing armies are, perhaps,\nwisely considered as dangerous to our free institutions; the\nmilitia, therefore, necessarily constitutes our greatest\nsecurity against aggression; our forest is the great field in\nwhich, in the pursuit of game, they learn the dexterous use\nand consequent certainty of firearms, the great and decided\nadvantages of which have been seen and felt on too many\noccasions to be forgotten, or to require a recurrence to.\nHaving come to the conclusion, that it is the right of the\ninhabitants to hunt on unenclosed lands, I need not\nattempt to prove that the dissent or disapprobation of the\nowner cannot deprive him of it; for I am sure it never yet\nentered the mind of any man, that a right which the law\ngives, can be defeated at the mere will and caprice of an\nindividual.\n\xe2\x80\xa6.\nGRIMKE, COLCOCK, CHEVES, and NOTT, Js.\nconcurred. GANTT, J. dissented.\nGarrett Hardin, The Tragedy of the Commons, 162 Science\n1243 (1968) (excerpt)\nThe tragedy of the commons develops in this way. Picture a\npasture open to all. It is to be expected that each herdsman will try\nto keep as many cattle as possible on the commons. Such an\narrangement may work reasonably satisfactorily for centuries\n\n262\n\n\x0cbecause tribal wars, poaching, and disease keep the numbers of\nboth man and beast well below the carrying capacity of the land.\nFinally, however, comes the day of reckoning, that is, the day when\nthe long-desired goal of social stability becomes a reality. At this\npoint, the inherent logic of the commons remorselessly generates\ntragedy.\nAs a rational being, each herdsman seeks to maximize his gain.\nExplicitly or implicitly, more or less consciously, he asks, \xe2\x80\x9cWhat is\nthe utility to me of adding one more animal to my herd?\xe2\x80\x9d This\nutility has one negative and one positive component.\n1. The positive component is a function of the increment of\none animal. Since the herdsman receives all the proceeds\nfrom the sale of the additional animal, the positive utility is\nnearly +1.\n2. The negative component is a function of the additional\novergrazing created by one more animal. Since, however,\nthe effects of overgrazing are shared by all the herdsmen,\nthe negative utility for any particular decision-making\nherdsman is only a fraction of -1.\nAdding together the component partial utilities, the rational\nherdsman concludes that the only sensible course for him to\npursue is to add another animal to his herd. And another; and\nanother\xe2\x80\xa6. But this is the conclusion reached by each and every\nrational herdsman sharing a commons. Therein is the tragedy. Each\nman is locked into a system that compels him to increase his herd\nwithout limit\xe2\x80\x93in a world that is limited. Ruin is the destination\ntoward which all men rush, each pursuing his own best interest in a\nsociety that believes in the freedom of the commons. Freedom in a\ncommons brings ruin to all.\n\xe2\x80\xa6.\nThe National Parks present another instance of the working out of\nthe tragedy of the commons. At present, they are open to all,\nwithout limit. The parks themselves are limited in extent\xe2\x80\x93there is\nonly one Yosemite Valley\xe2\x80\x93whereas population seems to grow\n\n263\n\n\x0cwithout limit. The values that visitors seek the parks are steadily\neroded. Plainly, we must soon cease to treat the parks as commons\nor they will be of no value anyone.\nWhat shall we do? We have several options. We might sell them off\nas private property. We might keep them as public property, but\nallocate the right enter them. The allocation might be on the basis\nof wealth, by the use of an auction system. It might be on the basis\nmerit, as defined by some agreed-upon standards. It might be by\nlottery. Or it might be on a first-come, first-served basis,\nadministered to long queues. These, I think, are all the reasonable\npossibilities. They are all objectionable. But we must choose\xe2\x80\x93or\nacquiesce in the destruction of the commons that we call our\nNational Parks.\n2.2.2. Applications\nYoung v. Ethyl Corp., 521 F.2d 771 (8th Cir. 1975)\nRobert J. Moffatt, Shreveport, La., for appellant.\nRobert J. Malinak, Houston, Tex., for appellees.\nBefore HEANEY and WEBSTER, Circuit Judges, and\nNANGLE, District Judge.1\nHEANY, Circuit Judge.\nIn this diversity action, plaintiff-appellant Young seeks an\ninjunction and damages or an accounting for the\ndefendants\xe2\x80\x99 actions in forcibly removing valuable minerals\nfrom beneath his land by means of injection and\nproduction wells on surrounding property. The District\nCourt dismissed his complaint after a trial on the merits.\nYoung v. Ethyl Corp., 382 F.Supp. 769 (W.D.Ark.1974).\nThe defendants hold mineral leases on approximately\n16,000 acres of land overlying the \xe2\x80\x9cSmackover Limestone\nFormation\xe2\x80\x9d in Columbia County, Arkansas. Their saltwater recycling operation brings salt water brine from a\nJOHN F. NANGLE, District Judge, Eastern District of Missouri, sitting by\ndesignation\n1\n\n264\n\n\x0cdepth of 8,000 feet to the surface by means of production\nwells. Valuable bromine is extracted from the brine, and the\ndebrominated water is then injected back into the ground\nthrough injection wells in a process which forces the\nsubterranean brine toward the production wells.\nYoung\xe2\x80\x99s land, consisting of approximately 180 acres, is\nsurrounded by land controlled by the defendants. The\ndefendants attempted to acquire a salt water lease from\nYoung, but were rebuffed because Young believed the\nterms to be onerous. Defendants\xe2\x80\x99 production well number\n23 is located immediately to the north and west of Young\xe2\x80\x99s\nland, and their production wells numbers 18 and 18A are\nadjacent to the north and east of his land. Their injection\nwell number 13 is located adjacent to and south of Young\xe2\x80\x99s\nland. The District Court found that\nIt is established, and undisputed, that\nthe injection of debrominated waters\nfrom the defendants\xe2\x80\x99 plant through\nwell numbered 13, under high\npressure, displaces the brine waters in\nthe formation underlying the plaintiff\xe2\x80\x99s\nlands, forcing it to move toward, and\neventually produce through wells\nnumbered 18 and 23. The salt water,\nby means of this artificially induced\nmovement beneath the lands of Mr.\nYoung, is carried to the processing\nplant * * *.\nId. at 772.\nThe District Court ruled that the action was governed by\nArkansas law, and this ruling is not contested on appeal. In\ndismissing the action, the court declared that the decision\nof the Arkansas Supreme Court in Budd v. Ethyl Corp.,\n\n265\n\n\x0c251 Ark. 639, 474 S.W.2d 411 (1971),2 provided a \xe2\x80\x9cclear,\nconcise and unambiguous determination of the law\xe2\x80\x9d to be\napplied. Young v. Ethyl Corp., supra, 382 F.Supp. at 774.\nRelying on that decision as controlling, the District Court\nheld that the common law rule of \xe2\x80\x9ccapture,\xe2\x80\x9d as interpreted\nby the Arkansas Supreme Court, precluded relief.\nWe cannot agree that the Arkansas Supreme Court decided\nin Budd that the rule of capture protects one who, by force,\npushes minerals out from under the land of another when\nthe minerals would remain in place without the application\nof such force. On the contrary, we conclude that the\nmanner in which the Arkansas court dealt with the\nplaintiff\xe2\x80\x99s contentions in Budd indicates that that court\ndeclined to rule on the precise issue before us.\nIn Budd, the plaintiff sought an accounting for bromides\nremoved from beneath two nonadjacent tracts of land. The\nArkansas Supreme Court treated the two tracts separately,\ndismissing the cause of action as to each tract for different\nreasons. The first tract considered by the court was a 240acre tract in which Budd owned an undivided interest in the\nminerals. The court found that this 240-acre tract was\noutside of the recycling area, although adjacent to it.\nRelying on the rule of capture, the court rejected Budd\xe2\x80\x99s\ncontention that the drainage of valuable minerals from\nbeneath the tract stated a cause of action. In support of its\nposition, the court quoted the following language from\nOsborn v. Arkansas Territorial Oil & Gas Co., 103 Ark.\n175, 146 S.W. 122, 124 (1912):\n* * * \xe2\x80\x9cPetroleum, gas and oil are\nsubstances of a peculiar character. * *\n* They belong to the owner of land,\nand are part of it so long as they are\nThat case involved the same recycling project and the same defendants.\nHowever, as will be seen from our discussion, infra, we find significant factual\ndistinctions between that case and the case sub judice\n2\n\n266\n\n\x0cpart of it or in it or subject to his\ncontrol; but when they escape and go\ninto other land or come under\nanother\xe2\x80\x99s control, the title of the\nformer owner is gone. If an adjoining\nowner drills his own land and taps a\ndeposit of oil or gas extending under\nhis neighbor\xe2\x80\x99s field, so that it comes\ninto his well, it becomes his property.\xe2\x80\x9d\n***\n(Quoting Brown v. Spilman, 155 U.S. 665, 15 S.Ct. 245, 39\nL.Ed. 304 (1895)). Budd v. Ethyl Corp., supra, 474 S.W.2d\nat 412.\nSince Young\xe2\x80\x99s tract is within the recycling area, the state\ncourt\xe2\x80\x99s disposition of Budd\xe2\x80\x99s cause of action with respect\nto the 240-acre tract is not controlling.\nHaving disposed of the cause of action with respect to the\ntract lying outside of the recycling area, the Arkansas court\nturned to Budd\xe2\x80\x99s second cause of action, which was based\non a 40-acre tract which the court found to be within the\nrecycling area that is, within the defendants\xe2\x80\x99 circle of\ninjection wells. Budd owned only an undivided leasehold\ninterest in the 40-acre tract, and the defendants owned all\nthe rest of the tract comprising the fee simple and the\nremaining leasehold. Although the court could once again\nhave relied on the law of capture, it did not do so. 3 Instead,\nit denied relief because of Budd\xe2\x80\x99s limited interest in the\nproperty. The court stressed that Budd owned only an\n\xe2\x80\x9cinchoate\xe2\x80\x9d interest in the 40-acre tract: the right to drill for\nminerals if he wished to do so. \xe2\x80\x9cThus there is no trespass\n\nThe dissenter spoke as if he thought that the majority was applying the law of\ncapture to the tract within the recycling unit. See Budd v. Ethyl Corp., 251 Ark.\n639, 474 S.W.2d 411, 414 (1971) (Byrd, J., dissenting). We do not read the\nmajority opinion to have done so.\n3\n\n267\n\n\x0cupon a vested existing property right * * * .\xe2\x80\x9d4 Id. 474\nS.W.2d at 413. Since Young owns title to his tract in fee\nsimple, the state court\xe2\x80\x99s disposition of Budd\xe2\x80\x99s cause of\naction with respect to the 40-acre tract is not controlling.\nWhen pressed on the issue in oral argument, counsel for\nthe defendants conceded that the Arkansas Supreme Court\nhas not yet held that relief for an owner in fee simple is\nbarred by the rule of capture when minerals beneath his\nland are forced to migrate to the property of another by\nmeans of the other\xe2\x80\x99s injection wells. Accordingly, the\nDistrict Court\xe2\x80\x99s conclusion that the Arkansas law\ncontrolling the issue is \xe2\x80\x9cclear, concise and unambiguous,\xe2\x80\x9d\nwas error. Since the issue has not been determined by the\nhighest court of the state, it is our task to rule as we believe\nthe Arkansas Supreme Court would rule, were the matter\nsquarely presented to it.5\n\nAgain, the court quoted from Osborn v. Arkansas Territorial Oil & Gas Co., 103\nArk. 175, 146 S.W. 122 (1912):\n* * * \xe2\x80\x9cA gas lease, such as is involved in this case, is a\ncontract granting to the lessee the right to explore the land\nand to produce therefrom the gas therein discovered. It is\nnot a present sale or transfer of title to the gas, but, on\naccount of its vagrant nature, the gas does not become\nactually owned until actually possessed. As is said in the\ncase of Williamson v. Jones, 39 W.Va. 231, 19 S.E. 436:\n\xe2\x80\x98The title is dependent on finding the gas by the purchaser\nin a limited time,\xe2\x80\x99 and is inchoate.\xe2\x80\x9d\n4\n\nBudd v. Ethyl Corp., supra, 474 S.W.2d at 413.\nWe have previously declared that \xe2\x80\x9c(t)he responsibility of the federal courts, in\nmatters of local law, is not to formulate the legal mind of the state, but merely to\nascertain and apply it.\xe2\x80\x9d Yoder v. Nu-Enamel Corp., 117 F.2d 488, 489 (8th Cir.\n1941). This task becomes most difficult when state law is uncertain, but we must\nnot shun the responsibility:\nWhen the rights of a litigant are dependent on the law of a\nparticular state, the court of the forum must do its best\n(not its worst) to determine what that law is. It must use\nits judicial brains, not a pair of scissors and a paste pot.\nOur judicial process is not mere syllogistic deduction,\nexcept as its worst. At its best, it is the wise and\nexperienced use of many sources in combination statutes,\n5\n\n268\n\n\x0cIn our view, if the Supreme Court of Arkansas were faced\nwith this record, it would hold that the rule of capture does\nnot apply, and that the defendants\xe2\x80\x99 actions in forcibly\nremoving valuable minerals from beneath Young\xe2\x80\x99s land\nconstitute an actionable trespass. We have reached this\nconclusion for two reasons.\nFirst, we do not believe that the Arkansas Supreme Court\nwould extend a rule developed in the field of oil and gas to\nthe forced migration of minerals of different physical\nproperties. The rule of capture has been applied\nexclusively,6 so far as we know, to the escape, seepage, or\ndrainage7 of \xe2\x80\x9cfugacious\xe2\x80\x9d8 minerals which occurs as an\n\njudicial opinions, treatises, prevailing mores, custom,\nbusiness practices; it is history and economics and\nsociology, and logic, both inductive and deductive. Shall a\nlitigant, by the accident of diversity of citizenship, be\ndeprived of the advantages of this judicial process? * * *\nWe must not forget that a litigant has only one day in\ncourt. * * *\n* * * Each litigant, whether in the federal or the state\ncourts, has a right that his case shall be a part of this\nevolution a live cell in the tree of justice. * * *\n\nCorbin, The Laws of the Several States, 50 Yale L.J. 762, 775-776 (1941).\nAs an example of a case where the forcing out of minerals was permitted, the\ndefendants cite Railroad Commission of Texas v. Manziel, 361 S.W.2d 560\n(Tex.1962). The secondary recovery (injection) operation sustained in that case\nhad been ordered by a state agency to further the public policy of maximizing oil\nrecovery. Obviously, the authority of private actors is not coextensive with the\npowers available to a state in exercising its police powers\n6\n\nI Summers, The Law of Oil and Gas \xc2\xa7\xc2\xa7 61-65 (1954), and the cases cited therein,\nconsistently speak of \xe2\x80\x9cdrainage\xe2\x80\x9d when discussing the rule of capture. See, e. g.,\nElliff v. Texon Drilling Co., 146 Tex. 575, 210 S.W.2d 558, 562 (1948): \xe2\x80\x9cIt must\nbe conceded that under the law of capture there is no liability for reasonable and\nlegitimate drainage from the common pool.\xe2\x80\x9d\n7\n\nThe Oxford English Dictionary (1971), defines \xe2\x80\x9cfugacious\xe2\x80\x9d as meaning \xe2\x80\x9c(a)pt to\nflee away or flit,\xe2\x80\x9d and \xe2\x80\x9cfugacity\xe2\x80\x9d as meaning \xe2\x80\x9cvolatile.\xe2\x80\x9d\n8 * * * Because of the liquid and volatile nature of oil and\ngas and their existence in the earth in sealed strata subject\nto great pressures, one landowner in a common source of\nsupply cannot produce oil or gas therefrom without\n8\n\n269\n\n\x0cinevitable result of the tapping of a common reservoir. The\nrule was adopted near the turn of the century primarily as a\nrule of necessity when courts concluded that the amount of\noil and gas which drained toward a production well from\nneighboring tracts was incapable of measurement. See\ngenerally I Summers, The Law of Oil and Gas \xc2\xa7 63 & n. 37\n(1954). With the development of more sophisticated\nknowledge of geology and a greater ability to measure the\namount of drainage, the absolutism with which some courts\ncontinue to apply the rule of capture to oil and gas has\nbeen criticized. See, e. g., id. at \xc2\xa7 63. We agree with the\ndefendants that the Arkansas Supreme Court foreclosed\nsuch arguments with respect to the drainage of minerals\nfrom adjacent lands. But Young does not claim that he is\nlosing minerals due to seepage or drainage toward the\ndefendants\xe2\x80\x99 production wells. Rather, he asserts, and has\nestablished to the satisfaction of the District Court, that the\nbrine solution under his land would not migrate to the\ndefendants\xe2\x80\x99 production wells but for the force exerted by\nthe injection wells; in other words, that the brine is\nprimarily \xe2\x80\x9cnon-fugacious.\xe2\x80\x9d We believe that it would be\nunwise to extend the rule to situations in which nonfugacious minerals are forced from beneath a landowner\xe2\x80\x99s\nproperty. Our conclusion in this respect is consistent with\n\nactually or theoretically causing some displacement of the\noil or gas under his neighbor\xe2\x80\x99s land. * * *\n\nI Summers, The Law of Oil and Gas \xc2\xa7 62 at 157 (1954).\n9 * * * The term \xe2\x80\x9ccorrelative rights\xe2\x80\x9d is merely a\nconvenient metas legal privileges as against other owners\nof land therein to take oil and gas therefras legal privileges\nas against other owners of land therein to take oil and gas\ntherefrom by lawful operations conducted on his own\nland limited, however, by duties to other owners not to\ninjure the source of supply and by duties not to take an\nundue proportion of the oil and gas. In addition, of\ncourse, to this aggregate of legal relations, each landowner\nhas duties to the public not to waste the oil and gas.\nI Summers, The Law of Oil and Gas \xc2\xa7 63 at 180-181 (1954).\n\n270\n\n\x0cthe fact that the Arkansas Supreme Court did not apply the\nrule of capture to the 40-acre tract in Budd.\nSecond, even accepting the defendants\xe2\x80\x99 contention that the\nbrine beneath Young\xe2\x80\x99s land must be treated no differently\nthan would oil or gas, the common law rule of capture is\nnot a license to plunder. Rather, it has an important\ncorollary in the doctrine of \xe2\x80\x9ccorrelative rights.\xe2\x80\x9d This\ndoctrine allows owners of land to extract oil or gas from a\ncommon pool, but posits two duties which limit the right\nof a landowner to drain oil and gas from beneath adjacent\nlands: (1) the duty to other owners not to injure the source\nof supply; and (2) the duty not to take an undue proportion\nof the oil and gas from the common pool. See I Summers,\nThe Law of Oil and Gas \xc2\xa7 63 at 180-181 (1954). To violate\nthose duties is to abuse one\xe2\x80\x99s correlative rights. This\ncorollary to the rule of capture has been codified in\nArk.Stat.Ann. \xc2\xa7 53-109(I) (3), which prohibits, as an abuse\nof correlative rights, \xe2\x80\x9cwithdrawals causing undue drainage\nbetween tracts of land.\xe2\x80\x9d9 If causing undue drainage is an\nabuse of correlative rights, then a fortiori forcing static\nminerals under one\xe2\x80\x99s neighbor\xe2\x80\x99s land to migrate amounts to\nan abuse of those rights. The defendants would have us\nignore \xc2\xa7 53-109(I)(3) by urging that salt water brine is not\ngoverned by oil and gas law. They cannot have their cake\nand eat it too; if the rule of capture is to be applied to salt\n\n9\n\nArk.Stat.Ann. \xc2\xa7 53-110 provides:\nWaste of oil or gas as defined in this act is hereby\nprohibited.\n\nSection 53-109(I) provides:\n\xe2\x80\x9cWaste\xe2\x80\x9d in addition to its ordinary meaning, shall mean\n\xe2\x80\x9cphysical waste\xe2\x80\x9d as that term is generally understood in\nthe oil and gas industry. It shall include:\n(3) Abuse of the correlative rights and opportunities of\neach owner of oil and gas in a common reservoir due to\nnonuniform, disproportionate, and unratable withdrawals\ncausing undue drainage between tracts of land.\n\n271\n\n\x0cwater brine, the doctrine of correlative rights must likewise\nbe applied.\nWe conclude that the Supreme Court of Arkansas would\nnot apply the rule of capture to this situation and, hence,\nwould not need to proceed to the alternative question of\ncorrelative rights. Accordingly, the appellant has a vested\nexisting property right in the brominated salt water\nunderlying his land, and the action of the defendants in\nforcibly removing that solution by means of injection and\nproduction wells on surrounding property constitutes an\nactionable trespass. It was improper for the District Court\nto dismiss the action. The order of dismissal is reversed,\nand the cause remanded for further proceedings as to the\nrelief to be granted.\nElliff v. Texon Drilling Co., 210 S.W.2d 558 (Tex. 1948)\nBoone, Boone & Davis, Kemp, Lewright, Dyer, Wilson &\nSorrell, and J. M. Wilson, all of Corpus Christi, for\npetitioners.\nTarlton, Koch & Hale and McCampbell, Wood &\nKirkham, all of Corpus Christi, for respondents.\nFOLLEY, Justice.\nThis is a suit by the petitioners, Mrs. Mabel Elliff, Frank\nElliff, and Charles C. Elliff, against the respondents, Texon\nDrilling Company, a Texas corporation, Texon Royalty\nCompany, a Texas corporation, Texon Royalty Company, a\nDelaware corporation, and John L. Sullivan, for damages\nresulting from a \xe2\x80\x9cblowout\xe2\x80\x9d gas well drilled by respondents\nin the Agua Dulce Field in Nueces County.\nThe petitioners owned the surface and certain royalty\ninterests in 3054.9 acres of land in Nueces County, upon\nwhich there was a producing well known as Elliff No. 1.\nThey owned all the mineral estate underlying the west 1500\nacres of the tract, and an undivided one-half interest in the\n\n272\n\n\x0cmineral estate underlying the east 1554.9 acres. Both tracts\nwere subject to oil and gas leases, and therefore their\nroyalty interest in the west 1500 acres was one-eighth of the\noil or gas, and in the east 1554.9 acres was one-sixteenth of\nthe oil and gas.\nIt was alleged that these lands overlaid approximately fifty\nper cent of a huge reservoir of gas and distillate and that\nthe remainder of the reservoir was under the lands owned\nby Mrs. Clara Driscoll, adjoining the lands of petitioners on\nthe east. Prior to November 1936, respondents were\nengaged in the drilling of Driscoll-Sevier No. 2 as an offset\nwell at a location 466 feet east of petitioners\xe2\x80\x99 east line. On\nthe date stated, when respondents had reached a depth of\napproximately 6838 feet, the well blew out, caught fire and\ncratered. Attempts to control it were unsuccessful, and\nhuge quantities of gas, distillate and some oil were blown\ninto the air, dissipating large quantities from the reservoir\ninto which the offset well was drilled. When the DriscollSevier No. 2 well blew out, the fissure or opening in the\nground around the well gradually increased until it\nenveloped and destroyed Elliff No. 1. The latter well also\nblew out, cratered, caught fire and burned for several years.\nTwo water wells on petitioners\xe2\x80\x99 land became involved in\nthe cratering and each of them blew out. Certain damages\nalso resulted to the surface of petitioners\xe2\x80\x99 lands and to their\ncattle thereon. The cratering process and the eruption\ncontinued until large quantities of gas and distillate were\ndrained from under petitioners\xe2\x80\x99 land and escaped into the\nair, all of which was alleged to be the direct and proximate\nresult of the negligence of respondents in permitting their\nwell to blow out. The extent of the emissions from the\nDriscoll-Sevier No. 2 and Elliff No. 1, and the two water\nwells on petitioners\xe2\x80\x99 lands, was shown at various times\nduring the several years between the blowout in November\n1936, and the time of the trial in June 1946. There was also\nexpert testimony from petroleum engineers showing the\n\n273\n\n\x0cextent of the losses from the underground reservior, which\ncomputations extended from the date of the blowout only\nup to June 1938. It was indicated that it was not feasible to\ncalculate the losses subsequent thereto, although lesser\nemissions of gas continued even up to the time of the trial.\nAll the evidence with reference to the damages included all\nlosses from the reservoir beneath petitioners\xe2\x80\x99 land without\nregard to whether they were wasted and dissipated from\nabove the Driscoll land or from petitioners\xe2\x80\x99 land.\nThe jury found that respondents were negligent in failing to\nuse drilling mud of sufficient weight in drilling their well,\nand that such negligence was the proximate cause of the\nwell blowing out. It also found that petitioners had suffered\n$4620 damage to sixty acres of the surface, and $1350 for\nthe loss of 27 head of cattle. The damages for the gas and\ndistillate wasted \xe2\x80\x9cfrom and under\xe2\x80\x9d the lands of petitioners,\ndue to respondents\xe2\x80\x99 negligence, was fixed by the jury at\n$78,580.46 for the gas, and $69,967.73 for the distillate.\nThese figures were based upon the respective fractional\nroyalty interests of petitioners in the whole amount wasted\nunder their two tracts of land, and at a value, fixed by the\ncourt without objection by the parties, of two cents per\n1000 cubic feet for the gas and $1.25 per barrel for the\ndistillate.\nThe findings as to the amount of drainage of gas and\ndistillate from beneath petitioners\xe2\x80\x99 lands were based\nprimarily upon the testimony of petitioners\xe2\x80\x99 expert witness,\nC. J. Jennings, a petroleum engineer. He obtained his\ninformation from drilling records and electric logs from the\nhigh pressure Agua Dulce Field. He was thereby enabled to\nfairly estimate the amount of gas and distillate. He had\ndefinite information as to porosity and bottom-hole\npressure both before and after the blowout. He was able to\nestimate the amount of gas wasted under the Elliff tract by\ncalculating the volume of the strata of sands and the voids\nwhich were occupied by gas. Under his method of\n\n274\n\n\x0ccalculation the determining factor was the decrease in\nbottom-hole pressures of the sands caused by the blowout.\nHe estimated that 13,096,717,000 cubic feet of gas had\nbeen drained from the west 1500 acres of the Elliff land,\nand that 57,625,728,000 cubic feet had been drained from\nthe east 1554.9 acres as a result of the blowout. The\ndistillate loss was calculated by taking the gas and distillate\nratio from the records of the Railroad Commission.\nJennings estimated that 195,713 barrels had been drained\nfrom the west 1500 acres and 802,690 barrels from the east\n1554.9 acres, as a result of the blowout.\nOn the findings of the jury the trial court rendered\njudgment for petitioners for $154,518.19, which included\n$148,548.19 for the gas and distillate, and $5970 for\ndamages to the land and cattle. The Court of Civil Appeals\nreversed the judgment and remanded the cause. 210 S.W.2d\n553.\nThe reversal by the Court of Civil Appeals rests upon two\ngrounds. The first was that since substantially all of the gas\nand distillate which was drained from under petitioners\xe2\x80\x99\nlands was lost through respondents\xe2\x80\x99 blowout well,\npetitioners could not recover because under the law of\ncapture they had lost all property rights in the gas or\ndistillate which had migrated from their lands. The second\ntheory was that the recovery cannot stand because the trial\ncourt had submitted the wrong measure of damages in that\npetitioners\xe2\x80\x99 claim \xe2\x80\x9cis for trespass in and to a freehold estate\nin land and the proper measure of damage is the reasonable\ncash market value before and after the occurrence\ncomplained of.\xe2\x80\x9d\nIn our opinion the Court of Civil Appeals was without\nauthority to pass upon the propriety of the measure of\ndamages adopted by the trial court for the simple reason\nthat no such assignment was presented to that court.\nAlthough such an objection was raised in the trial court, we\ndo not find an intimation of it brought forward to the\n\n275\n\n\x0cCourt of Civil Appeals. The question is therefore not\nbefore us, and our subsequent conclusions as to the rights\nof the parties are without reference to the correctness of\nthe measure of damages, and we express no opinion on\nthat question.\nConsequently, our attention will be confined to the sole\nquestion as to whether the law of capture absolves\nrespondents of any liability for the negligent waste or\ndestruction of petitioners\xe2\x80\x99 gas and distillate, though\nsubstantially all of such waste or destruction occurred after\nthe minerals had been drained from beneath petitioners\xe2\x80\x99\nlands.\nWe do not regard as authoritative the three decisions by the\nSupreme Court of Louisiana to the effect that an adjoining\nowner is without right of action for gas wasted from the\ncommon pool by his neighbor, because in that state only\nqualified ownership of oil and gas is recognized, no\nabsolute ownership of minerals in place exists, and the\nunqualified rule is that under the law of capture the\nminerals belong exclusively to the one that produces them.\nLouisiana Gas & Fuel Co. v. White Bros., 157 La. 728, 103 So.\n23; McCoy v. Arkansas Naturals Gas Co., 175 La. 487, 143 So.\n383, 85 A.L.R. 1147, certiorari denied 287 U.S. 661, 53 S.Ct.\n220, 77 L.Ed. 570; McCoy v. Arkansas Natural Gas Co., 184\nLa. 101, 165 So. 632. Moreover, from an examination of\nthose cases it will be seen that the decisions rested in part\non the theory that \xe2\x80\x9cthe loss complained of was, manifestly,\nmore a matter of uncertainty and speculation than of fact\nor estimate.\xe2\x80\x9d In the more recent trend of the decisions of\nour state, with the growth and development of scientific\nknowledge of oil and gas, it is now recognized \xe2\x80\x9cthat when\nall oil field has been fairly tested and developed, experts can\ndetermine approximately the amount of oil and gas in place\nin a common pool, and can also equitably determine the\namount of oil and gas recoverable by the owner of each\ntract of land under certain operating conditions.\xe2\x80\x9d Brown v.\n\n276\n\n\x0cHumble Oil & Refining Co., 126 Tex. 296, 83 S.W.2d 935,\n940,87 S.W.2d 1069,99 A.L.R. 1107,101 A.L.R. 1393.\nIn Texas, and in other jurisdictions, a different rules exists\nas to ownership. In our state the landowner is regarded as\nhaving absolute title in severalty to the oil and gas in place\nbeneath his land. Lemar v. Garner, 121 Tex. 502, 50 S.W.2d\n769; Humphreys-Mexia Co. v. Gammon, 113 Tex. 247, 254\nS.W. 296, 29 A.L.R. 607; Waggoner Estate v. Sigler Oil Co., 118\nTex. 509, 19 S.W.2d 27; Texas Co. v. Daugherty, 107 Tex.\n226, 176 S.W. 717, L.R.A. 1917F, 989. The only\nqualification of that rule of ownership is that it must be\nconsidered in connection with the law of capture and is\nsubject to police regulations. Brown v. Humble Oil & Refining\nCo., supra. The oil and gas beneath the soil are considered a\npart of the realty. Each owner of land owns separately,\ndistinctly and exclusively all the oil and gas under his land\nand is accorded the usual remedies against trespassers who\nappropriate the minerals or destroy their market value.\nPeterson v. Grayce Oil Co., Tex.Civ.App., 37 S.W.2d 367,\naffirmed 128 Tex. 550, 98 S.W.2d 781; Comanche Duke Oil\nCo. v. Texas Pac. Coal & Oil Co., Tex.Com.App., 298 S.W.\n554; Calor Oil & Gas Co. v. Franzell, 128 Ky. 715, 109 S.W.\n328; Louisville Gas Co. v. Kentucky Heating Co., 117 Ky. 71, 77\nS.W. 368, 70 L.R.A. 558, 111 Am.St.Rep. 225; Id., 132 Ky.\n435, 111 S.W. 374; Ross v. Damm, 278 Mich. 388, 270 N.W.\n722; 31A Tex.Jur. 911, Sec. 530; Id. 924, Sec. 537; 24\nAm.Jur. 641, Sec. 159.\nThe conflict in the decisions of the various states with\nreference to the character of ownership is traceable to some\nextent to the divergent views entertained by the courts,\nparticularly in the earlier cases, as to the nature and\nmigratory character of oil and gas in the soil. 31A Tex.Jur.\n24, Sec. 5. In the absence of common law precedent, and\nowing to the lack of scientific information as to the\nmovement of these minerals, some of the courts have\nsought by analogy to compare oil and gas to other types of\n\n277\n\n\x0cproperty such as wild animals, birds, subterranean waters\nand other migratory things, with reference to which the\ncommon law had established rules denying any character of\nownership prior to capture. However, as was said by\nProfessor A. W. Walker, Jr., of the School of Law of the\nUniversity of Texas: \xe2\x80\x9cThere is no oil or gas producing state\ntoday which follows the wild-animal analogy to its logical\nconclusion that the landowner has no property interest in\nthe oil and gas in place.\xe2\x80\x9d 16 T.L.R. 370, 371. In the light of\nmodern scientific knowledge these early analogies have\nbeen disproven, and courts generally have come to\nrecognize that oil and gas, as commonly found in\nunderground reservoirs, are securely entrapped in a static\ncondition in the original pool, and, ordinarily, so remain\nuntil disturbed by penetrations from the surface. It is\nfurther established, nevertheless, that these minerals will\nmigrate across property lines towards any low pressure area\ncreated by production from the common pool. This\nmigratory character of oil and gas has given rise to the socalled rule or law of capture. That rule simply is that the\nowner of a tract of land acquires title to the oil or gas which\nhe produces from wells on his land, though part of the oil\nor gas may have migrated from adjoining lands. He may\nthus appropriate the oil and gas that have flowed from\nadjacent lands without the consent of the owner of those\nlands, and without incurring liability to him for drainage.\nThe non-liability is based upon the theory that after the\ndrainage the title or property interest of the former owner\nis gone. This rule, at first blush, would seem to conflict\nwith the view of absolute ownership of the minerals in\nplace, but it was otherwise decided in the early case of\nStephens County v. Mid-Kansas Oil & Gas Co., 1923, 113 Tex.\n160, 254 S.W. 290, 29 A.L.R. 566. Mr. Justice Greenwood\nthere stated, 113 Tex. 167, 254 S.W. 292, 29 A.L.R. 566:\nThe objection lacks substantial\nfoundation that gas or oil in a certain\n\n278\n\n\x0ctract of land cannot be owned in place,\nbecause subject to appropriation,\nwithout the consent of the owner of\nthe tract, through drainage from wells\non adjacent lands. If the owners of\nadjacent lands have the right to\nappropriate, without liability, the gas\nand oil underlying their neighbor\xe2\x80\x99s\nland, then their neighbor has the\ncorrelative right to appropriate,\nthrough like methods of drainage, the\ngas and oil underlying the tracts\nadjacent to his own.\nThus it is seen that, notwithstanding the fact that oil and\ngas beneath the surface are subject both to capture and\nadministrative regulation, the fundamental rule of absolute\nownership of the minerals in place is not affected in our\nstate. In recognition of such ownership, our courts, in\ndecisions involving well-spacing regulations of our Railroad\nCommission, have frequently announced the sound view\nthat each landowner should be afforded the opportunity to\nproduce his fair share of the recoverable oil and gas\nbeneath his land, which is but another way of recognizing\nthe existence of correlative rights between the various\nlandowners over a common reservoir of oil or gas.\nIt must be conceded that under the law of capture there is\nno liability for reasonable and legitimate drainage from the\ncommon pool. The landowner is privileged to sink as many\nwells as he desires upon his tract of land and extract\ntherefrom and appropriate all the oil and gas that he may\nproduce, so long as he operates within the spirit and\npurpose of conservation statutes and orders of the Railroad\nCommission. These laws and regulations are designed to\nafford each owner a reasonable opportunity to produce his\nproportionate part of the oil and gas from the entire pool\nand to prevent operating practices injurious to the common\nreservoir. In this manner, if all operators exercise the same\n\n279\n\n\x0cdegree of skill and diligence, each owner will recover in\nmost instances his fair share of the oil and gas. This\nreasonable opportunity to produce his fair share of the oil\nand gas is the landowner\xe2\x80\x99s common law right under our\ntheory of absolute ownership of the minerals in place. But\nfrom the very nature of this theory the right of each land\nholder is qalified, and is limited to legitimate operations.\nEach owner whose land overlies the basin has a like\ninterest, and each must of necessity exercise his right with\nsome regard to the rights of others. No owner should be\npermitted to carry on his operations in reckless or lawless\nirresponsibility, but must submit to such limitations as are\nnecessary to enable each to get his own. Hague v. Wheeler,\n157 Pa. 324, 27 A. 714, 717,22 L.R.A. 141, 37 Am.St.Rep.\n736.\nWhile we are cognizant of the fact that there is a certain\namount of reasonable and necessary waste incident to the\nproduction of oil and gas to which the non-liability rule\nmust also apply, we do not think this immunity should be\nextended so as to include the negligent waste or destruction\nof the oil and gas.\nIn 1 Summers, Oil and Gas, Perm. Ed., s 63 correlative\nrights of owners of land in a common source of supply of\noil and gas are discussed and described in the following\nlanguage:\nThese existing property relations,\ncalled the correlative rights of the\nowners of land in the common source\nof supply, were not created by the\nstatute, but held to exist because of the\npeculiar physical facts of oil and gas.\nThe term \xe2\x80\x9ccorrelative rights\xe2\x80\x9d is merely\na convenient method of indicating that\neach owner of land in a common\nsource of supply of oil and gas has\nlegal privileges as against other owners\n\n280\n\n\x0cof land therein to take oil or gas\ntherefrom by lawful operations\nconducted on his own land; that each\nsuch owner has duties to the other\nowners not to exercise his privileges of\ntaking so as to injure the common\nsource of supply; and that each such\nowner has rights that other owners not\nexercise their privileges of taking so as\nto injure the common source of\nsupply.\nIn 85 A.L.R. 1156, in discussing the case of Hague v.\nWheeler, supra, the annotator states:\n* * * The fact that the owner of the\nland has a right to take and to use gas\nand oil, even to the diminution or\nexhaustion of the supply under his\nneighbor\xe2\x80\x99s land, does not give him the\nright to waste the gas. His property in\nthe gas underlying his land consists of\nthe right to appropriate the same, and\npermitting the gas to escape into the\nair is not an appropriation thereof in\nthe proper sense of the term.\nIn like manner, the negligent waste and destruction of\npetitioners\xe2\x80\x99 gas and distillate was neither a legitimate\ndrainage of the minerals from beneath their lands nor a\nlawful or reasonable appropriation of them. Consequently,\nthe petitioners did not lose their right, title and interest in\nthem under the law of capture. At the time of their removal\nthey belonged to petitioners, and their wrongful dissipation\ndeprived these owners of the right and opportunity to\nproduce them. That right is forever lost, the same cannot\nbe restored, and petitioners are without an adequate legal\nremedy unless we allow a recovery under the same\ncommon law which governs other actions for damages and\n\n281\n\n\x0cunder which the property rights in oil and gas are vested.\nThis remedy should not be denied.\nIn common with others who are familiar with the nature of\noil and gas and the risks involved in their production, the\nrespondents had knowledge that a failure to use due care in\ndrilling their well might result in a blowout with the\nconsequent waste and dissipation of the oil, gas and\ndistillate from the common reservoir. In the conduct of\none\xe2\x80\x99s business or in the use and exploitation of one\xe2\x80\x99s\nproperty, the law imposes upon all persons the duty to\nexercise ordinary care to avoid injury or damage to the\nproperty of others. Thus under the common law, and\nindependent of the conservation statutes, the respondents\nwere legally bound to use due care to avoid the negligent\nwaste or destruction of the minerals imbedded in\npetitioners\xe2\x80\x99 oil and gas-bearing strata. This common-law\nduty the respondents failed to discharge. For that omission\nthey should be required to respond in such damages as will\nreasonably compensate the injured parties for the loss\nsustained as the proximate result of the negligent conduct.\nThe fact that the major portion of the gas and distillate\nescaped from the well on respondents\xe2\x80\x99 premises is\nimmaterial. Irrespective of the opening from which the\nminerals escaped, they belonged to the petitioners and the\nloss was the same. They would not have been dissipated at\nany opening except for the wrongful conduct of the\nrespondents. Being responsible for the loss they are in no\nposition to deny liability because the gas and distillate did\nnot escape through the surface of petitioners\xe2\x80\x99 lands.\nWe are therefore of the opinion the Court of Civil Appeals\nerred in holding that under the law of caputre the\npetitioners cannot recover for the damages resulting from\nthe wrongful drainage of the gas and distillate from beneath\ntheir lands. However, we cannot affirm the judgment of the\ntrial court because there is an assignment of error in the\nCourt of Civil Appeals challenging the sufficiency of the\n\n282\n\n\x0cevidence to support the findings of the jury on the amount\nof the damages, and another charging that the verdict was\nexcessive. We have no jurisdiction of those assignments,\nand, since they have not been passed upon, the judgment\nof the Court of civil Appeals is reversed and the cause\nremanded to that court for consideration of all assignments\nexcept those herein decided. McKenzie Construction Co. v. City\nof San Antonio, 131 Tex. 474, 115 S.W.2d 617; Ritchie v.\nAmerican Surety Co. of New York, 145 Tex. 422, 198 S.W.2d\n85, and authorities cited.\n2.3. Review\nReview Problems\n1. Now that we have read cases defining the concept of possession,\nreturn to the case of Bridges v. Hawkesworth. Argue, contrary to the\ncourt\xe2\x80\x99s decision in that case, that the shop owner is the first\npossessor, and thus owner, of the notes that were found on his\nshop floor.\n2. Which of the following most directly rebuts a \xe2\x80\x9cLockean labor\ntheory\xe2\x80\x9d argument that a litigant, call him A, should be declared the\nowner of an object: (a) A committed a moral wrong in the course\nof acquiring the object, (b) A is richer than B, who has a much\ngreater need for the object, or (c) granting rights to A would create\nincentives for conduct that is more harmful than beneficial. Why?\n(Points awarded only for the explanation.)\n3. In Terry v. Lock, the appellate court decides that the trial court\xe2\x80\x99s\ndecision that the found money was mislaid was not \xe2\x80\x9cclearly\nerroneous.\xe2\x80\x9d We\xe2\x80\x99ve seen that appellate courts generally review legal\ndeterminations of trial courts \xe2\x80\x9cde novo,\xe2\x80\x9d that is without any\ndeference to the trial court\xe2\x80\x99s determination or reasoning. Why is\nthis more deferential standard used in Terry, and why might it be\njustified?\n4. Is the \xe2\x80\x9csubstantial and unreasonable\xe2\x80\x9d test, used to determine\nwhether there is a nuisance, a rule or a standard? Argue against this\ntest based only the test\xe2\x80\x99s status as a rule or standard. (That is, act\nlike you\xe2\x80\x99re a litigant attacking the test, and make an argument that,\n\n283\n\n\x0cif translated, would work as well against any rule or any standard,\ndepending on which you think the nuisance test is.)\n5. Would you need to show evidence of harm to sue successfully a\njet engine test facility operating near a residential neighborhood\nthat routinely emits sound above levels safe for human ears?\nWould you need to show evidence of harm to sue successfully such\na facility if it were silent but leaked small quantities of jet fuel onto\nsome of the residences? Explain.\n6. Take Garrett Hardin\xe2\x80\x99s classic example of a pasture open, say, to\nsix unrelated herdsmen. If Coase\xe2\x80\x99s Theorem applies in this\nsituation, will there be a tragedy of the commons? Why or why\nnot? If your answer is yes, explain how. If your answer is no,\nexplain which element necessary for the tragedy to occur would not\nbe present. What would change if we assumed that the pasture was\ncontinuously open to new herdsmen, beyond the original six?\nExplain.\n7. If I move into a residence in an industrial area in which there are\nalmost no other residences, and I sue in nuisance a large factory\nthat is both extremely loud and covering my property in significant\nlevels of smoke, will I be able to get an injunction? Will I be able to\ndo so if I pay damages to the factory? Explain.\nEssay Problem\nAccording to legend, the pirate Gorefiend was killed shortly before\nhis ship ran ashore in what is now the state of Carolorgia. His\nfellow pirates buried Gorefiend well upland from the beach, up in\nthe dunes. Because they could not agree on how to divide\nGorefiend\xe2\x80\x99s valuables, the story goes, they buried him with a fair\nnumber of gold and silver objects. Within days, the pirates were\ncaptured. Some were sentenced to death and others to long prison\nterms.\nAlfonso Allen stumbled onto the two-hundred-year-old story while\nworking as a tour guide at a historical fort, where some of\nGorefiend\xe2\x80\x99s crew had been held. Among the many documents and\nartifacts in the museum\xe2\x80\x99s store rooms was a book that had caught\nAlfonso\xe2\x80\x99s eye and had occupied all of his spare time since. Through\n\n284\n\n\x0cexhaustive research, Alfonso was able to decipher the notations in\nthe book, finally concluding that it pinpointed the location of\nGorefiend\xe2\x80\x99s burial. Using software to model beach erosion and\ncoastline changes, Alfonso generated a map showing the current\nlocation of the site: a forested area of Beach Bum Billy\xe2\x80\x99s, a private\nbeach club not far away from the fort.\nThough Billy\xe2\x80\x99s was a private and invitation-only club, once each\nyear on March 17 the club invited the public to join a beachside\nfundraiser for the local children\xe2\x80\x99s hospital. Seizing the chance,\nAlfonso showed up, paid the entrance fee, grabbed a drink at the\ncabana, and under cover of darkness headed toward the forested\nsouthern corner of the club.\nAmong the trees, Alfonso was shocked to find an exposed\nskeleton, apparently eroded out of the ground, with scraps of old\nleather clothing tying the corpse to Gorefiend\xe2\x80\x99s era. Alfonso spied\nseveral gold doubloons and silver jewelry, tarnished but visible\namongst the bones. Unprepared to map the site and inventory the\nfind, Alfonso placed markers on nearby trees displaying his name\nand phone number, with a message that this historically significant\nfind should not be disturbed. With that, he headed home, and\nexcitedly posted an article describing his find (but withholding the\nprecise location) on an internet site dedicated to amateur\narchaeology.\nUnbeknownst to Alfonso, he had been followed by another visitor\nto the club, Craig Crawford, who suspected from Alfonso\xe2\x80\x99s haste\nthat something unusual was up. Craig hid in the bushes and later\nmade off with as much gold as he could carry without raising\nsuspicions. Everything unravelled, though, when a Billy\xe2\x80\x99s employee\nspotted Craig\xe2\x80\x99s overstuffed pockets. Upon being caught, he\nreluctantly handed over the gold and the location of the find.\nAfter much back and forth, in which Alfonso was made aware of\nwhat had happened and after all concerned had spoken with\nlawyers, Craig sued Billy\xe2\x80\x99s for ownership of the gold. Alfonso\nintervened and sued Craig and Billy\xe2\x80\x99s. Fully analyze the possible\nclaims and defenses of these three parties.\n\n285\n\n\x0cAnswers\n1. Now that we have read cases defining the concept of possession,\nreturn to the case of Bridges v. Hawkesworth. Argue, contrary to the\ncourt\xe2\x80\x99s decision in that case, that the shop owner is the first\npossessor, and thus owner, of the notes that were found on his\nshop floor.\nWhatever additional claims the shop owner in Bridges may\nhave to the money as a landowner, he should be declared the\nowner as the first possessor of the lost property. Possession is\ndefined as the intent to possess or control an object together\nwith physical actions manifesting that intent. Precisely what\nacts are required varies with context. A landowner should be\ndeemed to intend to possess all lost goods on his or her\nproperty, because most landowner do indeed intend to\ncontrol the objects on their land \xe2\x80\x93 even if they are unaware of\nthe objects\xe2\x80\x99 whereabouts or even existence at any given\nmoment. In any event, an intent to control access to the land\nis sufficient intent to control access to things on the land. The\nlandowner maintains physical control over the land by\ncontrolling entry and setting the terms on which one is\nallowed to stay on the land. Even if a landowner opens up to\nthe general public, he or she is not required to do this and\nmay revoke consent at any time. The physical control the\nlandowner in this case clearly exerted over the land is\nsufficient to communicate an intent to control all of the\nproperty contained on the land, including lost property.\n2. Which of the following most directly rebuts a \xe2\x80\x9cLockean labor\ntheory\xe2\x80\x9d argument that a litigant, call him A, should be declared the\nowner of an object: (a) A committed a moral wrong in the course\nof acquiring the object, (b) A is richer than B, who has a much\ngreater need for the object, or (c) granting rights to A would create\nincentives for conduct that is more harmful than beneficial. Why?\n(Points awarded only for the explanation.)\n\n286\n\n\x0cLocke\xe2\x80\x99s labor theory asserts that one has a natural right to the\nfruits of one\xe2\x80\x99s labors. This is a matter of justice and flows\nfrom the inalienable, god-given right to one\xe2\x80\x99s body and thus\none\xe2\x80\x99s labors. The commission of a moral wrong in the course\nof acquiring an object most directly negatives what would\notherwise be the moral justification for recognizing ownership\nby virtue of the acquisition. That is, if the reason we give\nlaborers the fruits of their labors is because it is morally\nrequired, proof that an acquisition was immoral would most\nclearly negate that reason.\n3. In Terry v. Lock, the appellate court decides that the trial court\xe2\x80\x99s\ndecision that the found money was mislaid was not \xe2\x80\x9cclearly\nerroneous.\xe2\x80\x9d We\xe2\x80\x99ve seen that appellate courts generally review legal\ndeterminations of trial courts \xe2\x80\x9cde novo,\xe2\x80\x9d that is without any\ndeference to the trial court\xe2\x80\x99s determination or reasoning. Why is\nthis more deferential standard used in Terry, and why might it be\njustified?\nThe clearly erroneous standard is used to review the factual\nfindings of the lower court. The court that actually heard and\nsaw the evidence is, the theory goes, in a better position to\nevaluate that evidence and reach conclusions about its validity.\nCourts generally, though not always, review legal\ndeterminations of trial courts de novo, without any deference,\nbecause appellate courts are at no comparative disadvantage in\ndetermining what the law is or should be.\n4. Is the \xe2\x80\x9csubstantial and unreasonable\xe2\x80\x9d test, used to determine\nwhether there is a nuisance, a rule or a standard? Argue against this\ntest based only the test\xe2\x80\x99s status as a rule or standard. (That is, act\nlike you\xe2\x80\x99re a litigant attacking the test, and make an argument that,\nif translated, would work as well against any rule or any standard,\ndepending on which you think the nuisance test is.)\nThe substantial and unreasonable test is well over on the\n\xe2\x80\x9cstandards\xe2\x80\x9d end of the rule-standard spectrum. It does not\nprovide an objective, non-controversial measure of what is\n\n287\n\n\x0cand what is not a nuisance. One might argue this is a bad\nthing, because it fails to provide people with clear notice of\nwhat will be considered a nuisance. This harms planning, by\nleading people mistakenly to avoid uses that in fact would not\nbe considered nuisances or perhaps to make uses that will be\nconsidered nuisances.\n5. Would you need to show evidence of harm to sue successfully a\njet engine test facility operating near a residential neighborhood\nthat routinely emits sound above levels safe for human ears?\nWould you need to show evidence of harm to sue successfully such\na facility if it were silent but leaked small quantities of jet fuel onto\nsome of the residences? Explain.\nBecause noise would be considered \xe2\x80\x9cintangible\xe2\x80\x9d by most\ncourts, loud noise, if actionable, will be regulated as a\nnuisance. To prove a nuisance, one needs to show harm. By\ncontrast, jet fuel, even in small quantities, is a tangible object.\nLeaks onto the property of another would constitute a\ntrespass, which does not require a showing of harm.\n6. Take Garrett Hardin\xe2\x80\x99s classic example of a pasture open, say, to\nsix unrelated herdsmen. If Coase\xe2\x80\x99s Theorem applies in this\nsituation, will there be a tragedy of the commons? Why or why\nnot? If your answer is yes, explain how. If your answer is no,\nexplain which element necessary for the tragedy to occur would not\nbe present. What would change if we assumed that the pasture was\ncontinuously open to new herdsmen, beyond the original six?\nExplain.\nIf we assume Coase\xe2\x80\x99s Theorem applies, it means that the\nparties will negotiate an efficient result whatever the external\nlegal rules governing their conduct happen to be. A tragedy\nwill not occur in such a scenario, because the parties are\ncooperating through their negotiation. If the pasture were\ncontinually open to new entrants, it is hard to imagine that\nthis cooperation could last. Each new entrant would need to\nbe paid off, eventually exhausting the resources of existing\n\n288\n\n\x0cherdsmen. Indeed, new people would show up, if they had a\nlegal right to use the pasture, simply to get a pay-off. In\naddition, as the number of herdsmen increases, the costs of\nbargaining increase as well. Eventually, without sophisticated\ngovernance mechanisms, these transaction costs would\nbecome too unwieldy to reach a deal.\n7. If I move into a residence in an industrial area in which there are\nalmost no other residences, and I sue in nuisance a large factory\nthat is both extremely loud and covering my property in significant\nlevels of smoke, will I be able to get an injunction? Will I be able to\ndo so if I pay damages to the factory? Explain.\nIf the factory were there first, most courts would decide that I\nhad \xe2\x80\x9ccome to the nuisance.\xe2\x80\x9d This is a defense to nuisance,\nmeaning that courts will generally hold there is no nuisance at\nall under such facts. Going further, most courts would not, in\nthis case, give me the Spur remedy: the ability to shut down\nthe factory if I pay damages (in Calabresi language: protection\nof the factory, but only with a liability rule). Unlike in Spur,\nthere are not many other residences impacted by the factory.\nRather there are a great many other industrial concerns. Thus,\nit is unlikely that a court would decide that the costs of the\nfactory\xe2\x80\x99s activities (to both me and unrepresented third parties\n- like the residents of Sun City in Spur) greatly exceed its\nbenefits. Given that, it would not make sense to order the\nfactory shut down, even on payment of damages.\nEssay Answer\nOn a recent test, I assigned points for this problem as follows:\nDiscussion of abandonment / treasure\ntrove status of property: 2 Clearly\nstated definition of possession and setup to argue: 2 Argument leading to a\n\xe2\x80\x9ccontextualized\xe2\x80\x9d\ndefinition\nof\npossession:\n3\nApplication\nof\ncontextualized possession rule to facts:\n\n289\n\n\x0c2 Discussion of landowner claims to\nobjects based on mere ownership and\nembedded: 3 Argument concerning\npossible different treatment as burial\ngoods: 2 Argument that landowner\nwould win if finder(s) declared\ntrespassers: 1 Spotting a trespass issue\nand stating the law of trespass: 1\nRecognizing consent as the difficult\nissue and establishing the principle: 2\nApplication of consent rule to facts: 1\nObviously, there are other issues and arguments that could be\nmade, and to the extent decent arguments are made, I reflect them\non the score sheet.\n\n290\n\n\x0c3. Acquisition by Creation\n3.1. Unfair Competition\nInternational News Service v. Associated Press, 248\nU.S. 215 (1918)\nMessrs. Samuel Untermyer, of New York City, Hiram W.\nJohnson, of San Francisco, Cal., and Henry A. Wise and\nWilliam A De Ford, both of New York City, for petitioner.\nMr. Frederic W. Lehmann, of St. Louis, Mo., for respondent.\nMR. JUSTICE PITNEY delivered the opinion of the Court.\nThe parties are competitors in the gathering and\ndistribution of news and its publication for profit in\nnewspapers throughout the United States. The Associated\nPress, which was complainant in the District Court, is a cooperative\norganization,\nincorporated\nunder\nthe\nMembership Corporations Law of the state of New York,\nits members being individuals who are either proprietors or\nrepresentatives of about 950 daily newspapers published in\nall parts of the United States. That a corporation may be\norganized under that act for the purpose of gathering news\nfor the use and benefit of its members and for publication\nin newspapers owned or represented by them, is recognized\nby an amendment enacted in 1901 (Laws N. Y. 1901, c.\n436). Complainant gathers in all parts of the world, by\nmeans of various instrumentalities of its own, by exchange\nwith its members, and by other appropriate means, news\nand intelligence of current and recent events of interest to\nnewspaper readers and distributes it daily to its members\nfor publication in their newspapers. The cost of the service,\namounting approximately to $3,500,000 per annum, is\nassessed upon the members and becomes a part of their\ncosts of operation, to be recouped, presumably with profit,\nthrough the publication of their several newspapers. Under\ncomplainant\xe2\x80\x99s by-laws each member agrees upon assuming\nmembership that news received through complainant\xe2\x80\x99s\n\n\x0cservice is received exclusively for publication in a particular\nnewspaper, language, and place specified in the certificate\nof membership, that no other use of it shall be permitted,\nand that no member shall furnish or permit any one in his\nemploy or connected with his newspaper to furnish any of\ncomplainant\xe2\x80\x99s news in advance of publication to any person\nnot a member. And each member is required to gather the\nlocal news of his district and supply it to the Associated\nPress and to no one else.\nDefendant is a corporation organized under the laws of the\nstate of New Jersey, whose business is the gathering and\nselling of news to its customers and clients, consisting of\nnewspapers published throughout the United States, under\ncontracts by which they pay certain amounts at stated times\nfor defendant\xe2\x80\x99s service. It has widespread news-gathering\nagencies; the cost of its operations amounts, it is said, to\nmore than $2,000,000 per annum; and it serves about 400\nnewspapers located in the various cities of the United\nStates and abroad, a few of which are represented, also, in\nthe membership of the Associated Press.\nThe parties are in the keenest competition between\nthemselves in the distribution of news throughout the\nUnited States; and so, as a rule, are the newspapers that\nthey serve, in their several districts.\nComplainant in its bill, defendant in its answer, have set\nforth in almost identical terms the rather obvious\ncircumstances and conditions under which their business is\nconducted. The value of the service, and of the news\nfurnished, depends upon the promptness of transmission,\nas well as upon the accuracy and impartiality of the news; it\nbeing essential that the news be transmitted to members or\nsubscribers as early or earlier than similar information can\nbe furnished to competing newspapers by other news\nservices, and that the news furnished by each agency shall\nnot be furnished to newspapers which do not contribute to\n\n292\n\n\x0cthe expense of gathering it. And further, to quote from the\nanswer:\nPrompt knowledge and publication of\nworldwide news is essential to the\nconduct of a modern newspaper, and\nby reason of the enormous expense\nincident to the gathering and\ndistribution of such news, the only\npractical way in which a proprietor of\na newspaper can obtain the same is,\neither through co-operation with a\nconsiderable number of other\nnewspaper proprietors in the work of\ncollecting and distributing such news,\nand the equitable division with them\nof the expenses thereof, or by the\npurchase of such news from some\nexisting agency engaged in that\nbusiness.\nThe bill was filed to restrain the pirating of complainant\xe2\x80\x99s\nnews by defendant in three ways: First, by bribing employes\nof newspapers published by complainant\xe2\x80\x99s members to\nfurnish Associated Press news to defendant before\npublication, for transmission by telegraph and telephone to\ndefendant\xe2\x80\x99s clients for publication by them; second, by\ninducing Associated Press members to violate its by-laws\nand permit defendant to obtain news before publication;\nand, third, by copying news from bulletin boards and from\nearly editions of complainant\xe2\x80\x99s newspapers and selling this,\neither bodily or after rewriting it, to defendant\xe2\x80\x99s customers.\nThe District Court, upon consideration of the bill and\nanswer, with voluminous affidavits on both sides, granted a\npreliminary injunction under the first and second heads, but\nrefused at that stage to restrain the systematic practice\nadmittedly pursued by defendant, of taking news bodily\nfrom the bulletin boards and early editions of complainant\xe2\x80\x99s\n\n293\n\n\x0cnewspapers and selling it as its own. The court expressed\nitself as satisfied that this practice amounted to unfair trade,\nbut as the legal question was one of first impression it\nconsidered that the allowance of an injunction should await\nthe outcome of an appeal. 240 Fed. 983, 996. Both parties\nhaving appealed, the Circuit Court of Appeals sustained the\ninjunction order so far as it went, and upon complainant\xe2\x80\x99s\nappeal modified it and remanded the cause, with directions\nto issue an injunction also against any bodily taking of the\nwords or substance of complainant\xe2\x80\x99s news until its\ncommercial value as news had passed away. 245 Fed. 244,\n253. The present writ of certiorari was then allowed. 245 U.\nS. 644.\nThe only matter that has been argued before us is whether\ndefendant may lawfully be restrained from appropriating\nnews taken from bulletins issued by complainant or any of\nits members, or from newspapers published by them, for\nthe purpose of selling it to defendant\xe2\x80\x99s clients. Complainant\nasserts that defendant\xe2\x80\x99s admitted course of conduct in this\nregard both violates complainant\xe2\x80\x99s property right in the\nnews and constitutes unfair competition in business. And\nnotwithstanding the case has proceeded only to the stage of\na preliminary injunction, we have deemed it proper to\nconsider the underlying questions, since they go to the very\nmerits of the action and are presented upon facts that are\nnot in dispute. As presented in argument, these questions\nare: (1) Whether there is any property in news; (2) Whether,\nif there be property in news collected for the purpose of\nbeing published, it survives the instant of its publication in\nthe first newspaper to which it is communicated by the\nnews-gatherer; and (3) whether defendant\xe2\x80\x99s admitted course\nof conduct in appropriating for commercial use matter\ntaken from bulletins or early editions of Associated Press\npublications constitutes unfair competition in trade.\nThe federal jurisdiction was invoked because of diversity of\ncitizenship, not upon the ground that the suit arose under\n\n294\n\n\x0cthe copyright or other laws of the United States.\nComplainant\xe2\x80\x99s news matter is not copyrighted. It is said\nthat it could not, in practice, be copyrighted, because of the\nlarge number of dispatches that are sent daily; and,\naccording to complainant\xe2\x80\x99s contention, news is not within\nthe operation of the copyright act. Defendant, while\napparently conceding this, nevertheless invokes the\nanalogies of the law of literary property and copyright,\ninsisting as its principal contention that, assuming\ncomplainant has a right of property in its news, it can be\nmaintained (unless the copyright act by complied with) only\nby being kept secret and confidential, and that upon the\npublication with complainant\xe2\x80\x99s consent of uncopyrighted\nnews of any of complainant\xe2\x80\x99s members in a newspaper or\nupon a bulletin board, the right of property is lost, and the\nsubsequent use of the news by the public or by defendant\nfor any purpose whatever becomes lawful.\nA preliminary objection to the form in which the suit is\nbrought may be disposed of at the outset. It is said that the\nCircuit Court of Appeals granted relief upon considerations\napplicable to particular members of the Associated Press,\nand that this was erroneous because the suit was brought\nby complainant as a corporate entity, and not by its\nmembers; the argument being that their interests cannot be\nprotected in this proceeding any more than the individual\nrights of a stockholder can be enforced in an action\nbrought by the corporation. From the averments of the bill,\nhowever, it is plain that the suit in substance was brought\nfor the benefit of complainant\xe2\x80\x99s members, and that they\nwould be proper parties, and, except for their numbers,\nperhaps necessary parties. Complainant is a proper party to\nconduct the suit as representing their interest; and since no\nspecific objection, based upon the want of parties, appears\nto have been made below, we will treat the objection as\nwaived. See Equity Rules 38, 43, 44 (33 Sup. Ct. xxix, xxx).\n\n295\n\n\x0cIn considering the general question of property in news\nmatter, it is necessary to recognize its dual character,\ndistinguishing between the substance of the information\nand the particular form or collocation of words in which\nthe writer has communicated it.\nNo doubt news articles often possess a literary quality, and\nare the subject of literary property at the common law; nor\ndo we question that such an article, as a literary production,\nis the subject of copyright by the terms of the act as it now\nstands. In an early case at the circuit Mr. Justice Thompson\nheld in effect that a newspaper was not within the\nprotection of the copyright acts of 1790 (1 Stat. 124) and\n1802 (2 Stat. 171). Clayton v. Stone, 2 Paine, 382. But the\npresent act is broader; it provides that the works for which\ncopyright may be secured shall include \xe2\x80\x98all the writings of\nan author,\xe2\x80\x99 and specifically mentions \xe2\x80\x98periodicals, including\nnewspapers.\xe2\x80\x99 Act of March 4, 1909, c. 320, \xc2\xa7\xc2\xa7 4 and 5, 35\nStat. 1075, 1076. Evidently this admits to copyright a\ncontribution to a newspaper, notwithstanding it also may\nconvey news; and such is the practice of the copyright\noffice, as the newspapers of the day bear witness. See\nCopyright Office Bulletin No. 15 (1917) pp. 7, 14, 16, 17.\nBut the news element \xe2\x80\x93 the information respecting current\nevents contained in the literary production \xe2\x80\x93 is not the\ncreation of the writer, but is a report of matters that\nordinarily are publici juris; it is the history of the day. It is\nnot to be supposed that the framers of the Constitution,\nwhen they empowered Congress \xe2\x80\x98to promote the progress\nof science and useful arts, by securing for limited times to\nauthors and inventors the exclusive right to their respective\nwritings and discoveries\xe2\x80\x99 (Const. art. 1, \xc2\xa7 8, par. 8), intended\nto confer upon one who might happen to be the first to\nreport a historic event the exclusive right for any period to\nspread the knowledge of it.\nWe need spend no time, however, upon the general\nquestion of property in news matter at common law, or the\n\n296\n\n\x0capplication of the copyright act, since it seems to us the\ncase must turn upon the question of unfair competition in\nbusiness. And, in our opinion, this does not depend upon\nany general right of property analogous to the common-law\nright of the proprietor of an unpublished work to prevent\nits publication without his consent; nor is it foreclosed by\nshowing that the benefits of the copyright act have been\nwaived. We are dealing here not with restrictions upon\npublication but with the very facilities and processes of\npublication. The peculiar value of news is in the spreading\nof it while it is fresh; and it is evident that a valuable\nproperty interest in the news, as news, cannot be\nmaintained by keeping it secret. Besides, except for matters\nimproperly disclosed, or published in breach of trust or\nconfidence, or in violation of law, none of which is\ninvolved in this brance of the case, the news of current\nevents may be regarded as common property. What we are\nconcerned with is the business of making it known to the\nworld, in which both parties to the present suit are engaged.\nThat business consists in maintaining a prompt, sure,\nsteady, and reliable service designed to place the daily\nevents of the world at the breakfast table of the millions at\na price that, while of trifling moment to each reader, is\nsufficient in the aggregate to afford compensation for the\ncost of gathering and distributing it, with the added profit\nso necessary as an incentive to effective action in the\ncommercial world. The service thus performed for\nnewspaper readers is not only innocent but extremely\nuseful in itself, and indubitably constitutes a legitimate\nbusiness. The parties are competitors in this field; and, on\nfundamental principles, applicable here as elsewhere, when\nthe rights or privileges of the one are liable to conflict with\nthose of the other, each party is under a duty so to conduct\nits own business as not unnecessarily or unfairly to injure\nthat of the other. Hitchman Coal & Coke Co. v. Mitchell,\n245 U. S. 229, 254.\n\n297\n\n\x0cObviously, the question of what is unfair competition in\nbusiness must be determined with particular reference to\nthe character and circumstances of the business. The\nquestion here is not so much the rights of either party as\nagainst the public but their rights as between themselves.\nSee Morison v. Moat, 9 Hare, 241, 258. And, although we\nmay and do assume that neither party has any remaining\nproperty interest as against the public in uncopyrighted\nnews matter after the moment of its first publication, it by\nno means follows that there is no remaining property\ninterest in it as between themselves. For, to both of them\nalike, news matter, however little susceptible of ownership\nor dominion in the absolute sense, is stock in trade, to be\ngathered at the cost of enterprise, organization, skill, labor,\nand money, and to be distributed and sold to those who\nwill pay money for it, as for any other merchandise.\nRegarding the news, therefore, as but the material out of\nwhich both parties are seeking to make profits at the same\ntime and in the same field, we hardly can fail to recognize\nthat for this purpose, and as between them, it must be\nregarded as quasi property, irrespective of the rights of\neither as against the public.\n\xe2\x80\xa6.\nThe question, whether one who has gathered general\ninformation or news at pains and expense for the purpose\nof subsequent publication through the press has such an\ninterest in its publication as may be protected from\ninterference, has been raised many times, although never,\nperhaps, in the precise form in which it is now presented.\nBoard of Trade v. Christie Grain & Stock Co., 198 U. S.\n236, 250, related to the distribution of quotations of prices\non dealings upon a board of trade, which were collected by\nplaintiff and communicated on confidential terms to\nnumerous persons under a contract not to make them\npublic. This court held that, apart from certain special\nobjections that were overruled, plaintiff\xe2\x80\x99s collection of\n\n298\n\n\x0cquotations was entitled to the protection of the law; that,\nlike a trade secret, plaintiff might keep to itself the work\ndone at its expense, and did not lose its right by\ncommunicating the result to persons, even if many, in\nconfidential relations to itself, under a contract not to make\nit public; and that strangers should be restrained from\ngetting at the knowledge by inducing a breach of trust.\nIn National Tel. News Co. v. Western Union Tel. Co., 119\nFed. 294, the Circuit Court of Appeals for the Seventh\nCircuit dealt with news matter gathered and transmitted by\na telegraph company, and consisting merely of a notation\nof current events having but a transient value due to quick\ntransmission and distribution; and, while declaring that this\nwas not copyrightable although printed on a tape by tickers\nin the offices of the recipients, and that it was a commercial\nnot a literary product, nevertheless held that the business of\ngathering and communicating the news \xe2\x80\x93 the service of\npurveying it was a legitimate business, meeting a distinctive\ncommercial want and adding to the facilities of the business\nworld, and partaking of the nature of property in a sense\nthat entitled it to the protection of a court of equity against\npiracy.\nOther cases are cited, but none that we deem it necessary\nto mention.\nNot only do the acquisition and transmission of news\nrequire elaborate organization and a large expenditure of\nmoney, skill, and effort; not only has it an exchange value\nto the gatherer, dependent chiefly upon its novelty and\nfreshness, the regularity of the service, its reputed reliability\nand thoroughness, and its adaptability to the public needs;\nbut also, as is evident, the news has an exchange value to\none who can misappropriate it.\nThe peculiar features of the case arise from the fact that,\nwhile novelty and freshness form so important an element\nin the success of the business, the very processes of\n\n299\n\n\x0cdistribution and publication necessarily occupy a good deal\nof time. Complainant\xe2\x80\x99s service, as well as defendant\xe2\x80\x99s, is a\ndaily service to daily newspapers; most of the foreign news\nreaches this country at the Atlantic seaboard, principally at\nthe city of New York, and because of this, and of time\ndifferentials due to the earth\xe2\x80\x99s rotation, the distribution of\nnews matter throughout the country is principally from east\nto west; and, since in speed the telegraph and telephone\neasily outstrip the rotation of the earth, it is a simple matter\nfor defendant to take complainant\xe2\x80\x99s news from bulletins or\nearly editions of complainant\xe2\x80\x99s members in the eastern\ncities and at the mere cost of telegraphic transmission cause\nit to be published in western papers issued at least as warly\nas those served by complainant. Besides this, and\nirrespective of time differentials, irregularities in telegraphic\ntransmission on different lines, and the normal\nconsumption of time in printing and distributing the\nnewspaper, result in permitting pirated news to be placed in\nthe hands of defendant\xe2\x80\x99s readers sometimes simultaneously\nwith the service of competing Associated Press papers,\noccasionally even earlier.\nDefendant insists that when, with the sanction and\napproval of complainant, and as the result of the use of its\nnews for the very purpose for which it is distributed, a\nportion of complainant\xe2\x80\x99s members communicate it to the\ngeneral public by posting it upon bulletin boards so that all\nmay read, or by issuing it to newspapers and distributing it\nindiscriminately, complainant no longer has the right to\ncontrol the use to be made of it; that when it thus reaches\nthe light of day it becomes the common possession of all to\nwhom it is accessible; and that any purchaser of a\nnewspaper has the right to communicate the intelligence\nwhich it contains to anybody and for any purpose, even for\nthe purpose of selling it for profit to newspapers published\nfor profit in competition with complainant\xe2\x80\x99s members.\n\n300\n\n\x0cThe fault in the reasoning lies in applying as a test the right\nof the complainant as against the public, instead of\nconsidering the rights of complainant and defendant,\ncompetitors in business, as between themselves. The right\nof the purchaser of a single newspaper to spread knowledge\nof its contents gratuitously, for any legitimate purpose not\nunreasonably interfering with complainant\xe2\x80\x99s right to make\nmerchandise of it, may be admitted; but to transmit that\nnews for commercial use, in competition with complainant\n\xe2\x80\x93 which is what defendant has done and seeks to justify \xe2\x80\x93 is\na very different matter. In doing this defendant, by its very\nact, admits that it is taking material that has been acquired\nby complainant as the result of organization and the\nexpenditure of labor, skill, and money, and which is salable\nby complainant for money, and that defendant in\nappropriating it and selling it as its own is endeavoring to\nreap where it has not sown, and by disposing of it to\nnewspapers that are competitors of complainant\xe2\x80\x99s members\nis appropriating to itself the harvest of those who have\nsown. Stripped of all disguises, the process amounts to an\nunauthorized interference with the normal operation of\ncomplainant\xe2\x80\x99s legitimate business precisely at the point\nwhere the profit is to be reaped, in order to divert a\nmaterial portion of the profit from those who have earned\nit to those who have not; with special advantage to\ndefendant in the competition because of the fact that it is\nnot burdened with any part of the expense of gathering the\nnews. The transaction speaks for itself and a court of equity\nought not to hesitate long in characterizing it as unfair\ncompetition in business.\n\xe2\x80\xa6.\nThe contention that the news is abandoned to the public\nfor all purposes when published in the first newspaper is\nuntenable. Abandonment is a question of intent, and the\nentire organization of the Associated Press negatives such a\npurpose. The cost of the service would be prohibited if the\n\n301\n\n\x0creward were to be so limited. No single newspaper, no\nsmall group of newspapers, could sustain the expenditure.\nIndeed, it is one of the most obvious results of defendant\xe2\x80\x99s\ntheory that, by permitting indiscriminate publication by\nanybody and everybody for purposes of profit in\ncompetition with the news-gatherer, it would render\npublication profitless, or so little profitable as in effect to\ncut off the service by rendering the cost prohibitive in\ncomparison with the return. The practical needs and\nrequirements of the business are reflected in complainant\xe2\x80\x99s\nby-laws which have been referred to. Their effect is that\npublication by each member must be deemed not by any\nmeans an abandonment of the news to the world for any\nand all purposes, but a publication for limited purposes; for\nthe benefit of the readers of the bulletin or the newspaper\nas such; not for the purpose of making merchandise of it as\nnews, with the result of depriving complainant\xe2\x80\x99s other\nmembers of their reasonable opportunity to obtain just\nreturns for their expenditures.\nIt is to be observed that the view we adopt does not result\nin giving to complainant the right to monopolize either the\ngathering or the distribution of the news, or, without\ncomplying with the copyright act, to prevent the\nreproduction of its news articles, but only postpones\nparticipation by complainant\xe2\x80\x99s competitor in the processes\nof distribution and reproduction of news that it has not\ngathered, and only to the extent necessary to prevent that\ncompetitor from reaping the fruits of complainant\xe2\x80\x99s efforts\nand expenditure, to the partial exclusion of complainant.\nand in violation of the principle that underlies the maxim\n\xe2\x80\x98sic utere tuo,\xe2\x80\x99 etc.\nIt is said that the elements of unfair competition are lacking\nbecause there is no attempt by defendant to palm off its\ngoods as those of the complainant, characteristic of the\nmost familiar, if not the most typical, cases of unfair\ncompetition. Howe Scale Co. v. Wyckoff, Seamans, etc.,\n\n302\n\n\x0c198 U. S. 118, 140. But we cannot concede that the right to\nequitable relief is confined to that class of cases. In the\npresent case the fraud upon complainant\xe2\x80\x99s rights is more\ndirect and obvious. Regarding news matter as the mere\nmaterial from which these two competing parties are\nendeavoring to make money, and treating it, therefore, as\nquasi property for the purposes of their business because\nthey are both selling it as such, defendant\xe2\x80\x99s conduct differs\nfrom the ordinary case of unfair competition in trade\nprincipally in this that, instead of selling its own goods as\nthose of complainant, it substitutes misappropriation in the\nplace of misrepresentation, and sells complainant\xe2\x80\x99s goods\nas its own.\nBesides the misappropriation, there are elements of\nimitation, of false pretense, in defendant\xe2\x80\x99s practices. The\ndevice of rewriting complainant\xe2\x80\x99s news articles, frequently\nresorted to, carries its own comment. The habitual failure\nto give credit to complainant for that which is taken is\nsignificant. Indeed, the entire system of appropriating\ncomplainant\xe2\x80\x99s news and transmitting it as a commercial\nproduct to defendant\xe2\x80\x99s clients and patrons amounts to a\nfalse representation to them and to their newspaper readers\nthat the news transmitted is the result of defendant\xe2\x80\x99s own\ninvestigation in the field. But these elements, although\naccentuating the wrong, are not the essence of it. It is\nsomething more than the advantage of celebrity of which\ncomplainant is being deprived.\nThe doctrine of unclean hands is invoked as a bar to relief;\nit being insisted that defendant\xe2\x80\x99s practices against which\ncomplainant seeks an injunction are not different from the\npractice attributed to complainant, of utilizing defendant\xe2\x80\x99s\nnews published by its subscribers. At this point it becomes\nnecessary to consider a distinction that is drawn by\ncomplainant, and, as we understand it, was recognized by\ndefendant also in the submission of proofs in the District\nCourt, between two kinds of use that may be made by one\n\n303\n\n\x0cnews agency of news taken from the bulletins and\nnewspapers of the other. The first is the bodily\nappropriation of a statement of fact or a news article, with\nor without rewriting, but without independent investigation\nor other expense. This form of pirating was found by both\ncourts to have been pursued by defendant systematically\nwith respect to complainant\xe2\x80\x99s news, and against it the\nCircuit Court of Appeals granted an injunction. This\npractice complainant denies having pursued and the denial\nwas sustained by the finding of the District Court. It is not\ncontended by defendant that the finding can be set aside,\nupon the proofs as they now stand. The other use is to take\nthe news of a rival agency as a \xe2\x80\x98tip\xe2\x80\x99 to be investigated, and if\nverified by independent investigation the news thus\ngathered is sold. This practice complainant admits that it\nhas pursued and still is willing that defendant shall employ.\nBoth courts held that complainant could not be debarred\non the ground of unclean hands upon the score of pirating\ndefendant\xe2\x80\x99s news, because not shown to be guilty of\nsanctioning this practice.\nAs to securing \xe2\x80\x98tips\xe2\x80\x99 from a competing news agency the\nDistrict Court (240 Fed. 991, 995), while not sanctioning\nthe practice, found that both parties had adopted it in\naccordance with common business usage, in the belief that\ntheir conduct was technically lawful, and hence did not find\nin it any sufficient ground for attributing unclean hands to\ncomplainant. The Circuit Court of Appeals (245 Fed. 247,\n157) found that the tip habit, though discouraged by\ncomplainant, was \xe2\x80\x98incurably journalistic,\xe2\x80\x99 and that there was\n\xe2\x80\x98no difficulty in discriminating between the utilization of\ntips and the bodily appropriation of another\xe2\x80\x99s labor in\naccumulating and stating information.\xe2\x80\x99\nWe are inclined to think a distinction may be drawn\nbetween the utilization of tips and the bodily appropriation\nof news matter, either in its original form or after rewriting\nand without independent investigation and verification;\n\n304\n\n\x0cwhatever may appear at the final hearing, the proofs as they\nnow stand recognize such a distinction; both parties\navowedly recognize the practice of taking tips, and neither\nparty alleges it to be unlawful or to amount to unfair\ncompetition in business. In a line of English cases a\nsomewhat analogous practice has been held not to amount\nto an infringement of the copyright of a directory or other\nbook containing compiled information. In Kelly v. Morris,\nL. R. 1 Eq. 697, 701, 702, Vice Chancellor Sir William Page\nWood (afterwards Lord Hatherly), dealing with such a case,\nsaid that defendant was\nnot entitled to take one word of the\ninformation previously published\nwithout independently working out the\nmatter for himself, so as to arrive at\nthe same result from the same\ncommon sources of information, and\nthe only use that he can legitimately\nmake of a previous publication is to\nverify his own calculations and results\nwhen obtained.\nThis was followed by Vice Chancellor Giffard in Morris v.\nAshbee, L. R. 7 Eq. 34, where he said:\nIn a case such as this no one has a\nright to take the results of the labour\nand expense incurred by another for\nthe purposes of a rival publication, and\nthereby save himself the expense and\nlabour of working out and arriving at\nthese results by some independent\nroad.\nA similar view was adopted by Lord Chancellor Hatherly\nand the former Vice Chancellor, then Giffard, L. J., in Pike\nv. Nicholas, L. R. 5 Ch. App. Cas. 251, and shortly\nafterwards by the latter judge in Morris v. Wright, L. R. 5\n\n305\n\n\x0cCh. App. Cas. 279, 287, where he said, commenting upon\nPike v. Nicholas:\nIt was a perfectly legitimate course for\nthe defendant to refer to the plaintiff\xe2\x80\x99s\nbook, and if, taking that book as his\nguide, he went to the original\nauthorities and compiled his book\nfrom them, he made no unfair or\nimproper use of the plaintiff\xe2\x80\x99s book;\nand so here, if the fact be that Mr.\nWright used the plaintiff\xe2\x80\x99s book in\norder to guide himself to the persons\non whom it would be worth his while\nto call, and for no other purpose, he\nmade a perfectly legitimate use of the\nplaintiff\xe2\x80\x99s book.\nA like distinction was recognized by the Circuit Court of\nAppeals for the Second Circuit in Edward Thompson Co.\nv. American Law Book Co., 122 Fed. 922 and in West Pub.\nCo. v. Edward Thompson Co., 176 Fed. 833, 838.\nIn the case before us, in the present state of the pleadings\nand proofs, we need go no further than to hold, as we do,\nthat the admitted pursuit by complainant of the practice of\ntaking news items published by defendant\xe2\x80\x99s subscribers as\ntips to be investigated, and, if verified, the result of the\ninvestigation to be sold \xe2\x80\x93 the practice having been followed\nby defendant also, and by news agencies generally \xe2\x80\x93 is not\nshown to be such as to constitute an unconscientious or\ninequitable attitude towards its adversary so as to fix upon\ncomplainant the taint of unclean hands, and debar it on this\nground from the relief to which it is otherwise entitled.\nThere is some criticism of the injunction that was directed\nby the District Court upon the going down of the mandate\nfrom the Circuit Court of Appeals. In brief, it restrains any\ntaking or gainfully using of the complainant\xe2\x80\x99s news, either\nbodily or in substance from bulletins issued by the\n\n306\n\n\x0ccomplainant or any of its members, or from editions of\ntheir newspapers, \xe2\x80\x99until its commercial value as news to the\ncomplainant and all of its members has passed away.\xe2\x80\x99 The part\ncomplained of is the clause we have italicized; but if this be\nindefinite, it is no more so than the criticism. Perhaps it\nwould be better that the terms of the injunction be made\nspecific, and so framed as to confine the restraint to an\nextent consistent with the reasonable protection of\ncomplainant\xe2\x80\x99s newspapers, each in its own area and for a\nspecified time after its publication, against the competitive\nuse of pirated news by defendant\xe2\x80\x99s customers. But the case\npresents practical difficulities; and we have not the\nmaterials, either in the way of a definite suggestion of\namendment, or in the way of proofs, upon which to frame\na specific injunction; hence, while not expressing approval\nof the form adopted by the District Court, we decline to\nmodify it at this preliminary stage of the case, and will leave\nthat court to deal with the matter upon appropriate\napplication made to it for the purpose.\nThe decree of the Circuit court of Appeals will be\nAffirmed.\nMr. Justice CLARKE took no part in the consideration or\ndecision of this case.\nMR. JUSTICE HOLMES, dissenting.\nWhen an uncopyrighted combination of words is published\nthere is no general right to forbid other people repeating\nthem \xe2\x80\x93 in other words there is no property in the\ncombination or in the thoughts or facts that the words\nexpress. Property, a creation of law, does not arise from\nvalue, although exchangeable \xe2\x80\x93 a matter of fact. Many\nexchangeable values may be destroyed intentionally without\ncompensation. Property depends upon exclusion by law\nfrom interference, and a person is not excluded from using\nany combination of words merely because some one has\nused it before, even if it took labor and genius to make it. If\n\n307\n\n\x0ca given person is to be prohibited from making the use of\nwords that his neighbors are free to make some other\nground must be found. One such ground is vaguely\nexpressed in the phrase unfair trade. This means that the\nwords are repeated by a competitor in business in such a\nway as to convey a misrepresentation that materially injures\nthe person who first used them, by appropriating credit of\nsome kind which the first user has earned. The ordinary\ncase is a representation by device, appearance, or other\nindirection that the defendant\xe2\x80\x99s goods come from the\nplaintiff. But the only reason why it is actionable to make\nsuch a representation is that it tends to give the defendant\nan advantage in his competition with the plaintiff and that\nit is thought undesirable that an advantage should be gained\nin that way. Apart from that the defendant may use such\nunpatented devices and uncopyrighted combinations of\nwords as he likes. The ordinary case, I say, is palming off\nthe defendant\xe2\x80\x99s product as the plaintiff\xe2\x80\x99s but the same evil\nmay follow from the opposite falsehood \xe2\x80\x93 from saying\nwhether in words or by implication that the plaintiff\xe2\x80\x99s\nproduct is the defendant\xe2\x80\x99s, and that, it seems to me, is what\nhas happened here.\nFresh news is got only by enterprise and expense. To\nproduce such news as it is produced by the defendant\nrepresents by implication that it has been acquired by the\ndefendant\xe2\x80\x99s enterprise and at its expense. When it comes\nfrom one of the great news collecting agencies like the\nAssociated Press, the source generally is indicated, plainly\nimporting that credit; and that such a representation is\nimplied may be inferred with some confidence from the\nunwillingness of the defendant to give the credit and tell\nthe truth. If the plaintiff produces the news at the same\ntime that the defendant does, the defendant\xe2\x80\x99s presentation\nimpliedly denies to the plaintiff the credit of collecting the\nfacts and assumes that credit to the defendant. If the\nplaintiff is later in Western cities it naturally will be\n\n308\n\n\x0csupposed to have obtained its information from the\ndefendant. The falsehood is a little more subtle, the injury,\na little more indirect, than in ordinary cases of unfair trade,\nbut I think that the principle that condemns the one\ncondemns the other. It is a question of how strong an\ninfusion of fraud is necessary to turn a flavor into a poison.\nThe does seems to me strong enough here to need a\nremedy from the law. But as, in my view, the only ground\nof complaint that can be recognized without legislation is\nthe implied misstatement, it can be corrected by stating the\ntruth; and a suitable acknowledgment of the source is all\nthat the plaintiff can require. I think that within the limits\nrecognized by the decision of the Court the defendant\nshould be enjoined from publishing news obtained from\nthe Associated Press for hours after publication by the\nplaintiff unless it gives express credit to the Associated\nPress; the number of hours and the form of\nacknowledgment to be settled by the District Court.\nMr. Justice McKENNA concurs in this opinion.\nMR. JUSTICE BRANDEIS, dissenting.\nThere are published in the United States about 2,500 daily\npapers. More than 800 of them are supplied with domestic\nand foreign news of general interest by the Associated\nPress \xe2\x80\x93 a corporation without capital stock which does not\nsell news or earn or seek to earn profits, but serves merely\nas an instrumentality by means of which these papers\nsupply themselves at joint expense with such news. Papers\nnot members of the Associated Press depend for their\nnews of general interest largely upon agencies organized for\nprofit. Among these agen cies is the International News\nService which supplies news to about 400 subscribing\npapers. It has, like the Associated Press, bureaus and\ncorrespondents in this and foreign countries; and its annual\nexpenditures in gathering and distributing news is about\n$2,000,000. Ever since its organization in 1909, it has\nincluded among the sources from which it gathers news,\n\n309\n\n\x0ccopies (purchased in the open market of early editions of\nsome papers published by members of the Associated Press\nand the bulletins publicly posted by them. These items,\nwhich constitute but a small part of the news transmitted to\nits subscribers, are generally verified by the International\nNews Service before transmission; but frequently items are\ntransmitted without verification; and occasionally even\nwithout being re-written. In no case is the fact disclosed\nthat such item was suggested by or taken from a paper or\nbulletin published by an Associated Press member.\nNo question of statutory copyright is involved. The sole\nquestion for our consideration is this: Was the International\nNews Service properly enjoined from using, or causing to\nbe used gainfully, news of which it acquired knowledge by\nlawful means (namely, by reading publicly posted bulletins\nor papers purchased by it in the open market) merely\nbecause the news had been originally gathered by the\nAssociated Press and continued to be of value to some of\nits members, or because it did not reveal the source from\nwhich it was acquired?\nThe \xe2\x80\x98ticker\xe2\x80\x99 cases, the cases concerning literary and artistic\ncompositions, and cases of unfair competition were relied\nupon in support of the injunction. But it is admitted that\nnone of those cases affords a complete analogy with that\nbefore us. The question presented for decision is new, and\nit is important.\nNews is a report of recent occurrences. The business of the\nnews agency is to gather systematically knowledge of such\noccurrences of interest and to distribute reports thereof.\nThe Associated Press contended that knowledge so\nacquired is property, because it costs money and labor to\nproduce and because it has value for which those who have\nit not are ready to pay; that it remains property and is\nentitled to protection as long as it has commercial value as\nnews; and that to protect it effectively, the defendant must\nbe enjoined from making, or causing to be made, any\n\n310\n\n\x0cgainful use of it while it retains such value. An essential\nelement of individual property is the legal right to exclude\nothers from enjoying it. If the property is private, the right\nof exclusion may be absolute; if the property is affected\nwith a public interest, the right of exclusion is qualified. But\nthe fact that a product of the mind has cost its producer\nmoney and labor, and has a value for which others are\nwilling to pay, is not sufficient to ensure to it this legal\nattribute of property. The general rule of law is, that the\nnoblest of human productions \xe2\x80\x93 knowledge, truths\nascertained, conceptions, and ideas \xe2\x80\x93 became, after\nvoluntary communication to others, free as the air to\ncommon use. Upon these incorporeal productions the\nattribute of property is continued after such\ncommunication only in certain classes of cases where public\npolicy has seemed to demand it. These exceptions are\nconfined to productions which, in some degree, involve\ncreation, invention, or discovery. But by no means all such\nare endowed with this attribute of property. The creations\nwhich are recognized as property by the common law are\nliterary, dramatic, musical, and other artistic creations; and\nthese have also protection under the copyright statutes. The\ninventions and discoveries upon which this attribute of\nproperty is conferred only by statute, are the few comprised\nwithin the patent law. There are also many other cases in\nwhich courts interfere to prevent curtailment of plaintiff\xe2\x80\x99s\nenjoyment of incorporal productions; and in which the\nright to relief is often called a property right, but is such\nonly in a special sense. In those cases, the plaintiff has no\nabsolute right to the protection of his production; he has\nmerely the qualified right to be protected as against the\ndefendant\xe2\x80\x99s acts, because of the special relation in which\nthe latter stands or the wrongful method or means\nemployed in acquiring the knowledge or the manner in\nwhich it is used. Protection of this character is afforded\nwhere the suit is based upon breach of contract or of trust\nor upon unfair competition.\n\n311\n\n\x0cThe knowledge for which protection is sought in the case\nat bar is not of a kind upon which the law has heretofore\nconferred the attributes of property; nor is the manner of\nits acquisition or use nor the purpose to which it is applied,\nsuch as has heretofore been recognized as entitling a\nplaintiff to relief.\nFirst. Plaintiff\xe2\x80\x99s principal reliance was upon the \xe2\x80\x98ticker\xe2\x80\x99\ncases; but they do not support its contention. The leading\ncases on this subject rest the grant of relief, not upon the\nexistence of a general property right in news, but upon the\nbreach of a contract or trust concerning the use of news\ncommunicated; and that element is lacking here\xe2\x80\xa6 . .\n\xe2\x80\xa6.\nIf the news involved in the case at bar had been posted in\nviolation of any agreement between the Associated Press\nand its members, questions similar to those in the \xe2\x80\x98ticker\xe2\x80\x99\ncases might have arisen. But the plaintiff does not contend\nthat the posting was wrongful or that any papers were\nwrongfully issued by its subscribers. On the contrary it is\nconceded that both the bulletins and the papers were issued\nin accordance with the regulations of the plaintiff. Under\nsuch circumstances, for a reader of the papers purchased in\nthe open market, or a reader of the bulletins publicly\nposted, to procure and use gainfully, information therein\ncontained, does not involve inducing any one to commit a\nbreach either of contract or of trust, or committing or in\nany way abetting a breach of confidence.\nSecond. Plaintiff also relied upon the cases which hold that\nthe common law right of the producer to prohibit copying\nis not lost by the private circulation of a literary\ncomposition, the delivery of a lecture, the exhibition of a\npainting, or the performance of a dramatic or musical\ncomposition. These cases rest upon the ground that the\ncommon law recognizes such productions as property\nwhich, despite restricted communication, continues until\n\n312\n\n\x0cthere is a dedication to the public under the copyright\nstatutes or otherwise. But they are inapplicable for two\nreasons: (1) At common law, as under the copyright acts,\nintellectual productions are entitled to such protection only\nif there is underneath something evincing the mind of a\ncreator or originator, however modest the requirement.\nThe mere record of isolated happenings, whether in words\nor by photographs not involving artistic skill, are denied\nsuch protection. (2) At common law, as under the\ncopyright acts, the element in intellectual productions\nwhich secures such protection, is not the knowledge, truths,\nideas, or emotions which the composition expresses, but\nthe form or sequence in which they are expressed; that is,\n\xe2\x80\x98some new collocation of visible or audible points \xe2\x80\x93 of\nlines, colors, sounds, or words.\xe2\x80\x99 See White-Smith Music Co.\nv. Apollo Co., 209 U. S. 1, 19; Kalem Co. v. Harper Bros.,\n222 U. S. 55, 63. An author\xe2\x80\x99s theories, suggestions, and\nspeculations, or the systems, plans, methods, and\narrangements of an originator, derive no such protection\nfrom the statutory copyright of the book in which they are\nset forth; and they are likewise denied such protection at\ncommon law.\nThat news is not property in the strict sense is illustrated by\nthe case of Sports and General Press Agency, Ltd., v. \xe2\x80\x98Our\nDogs\xe2\x80\x99 Publishing Co., Ltd., [1916] 2 K. B. 880, where the\nplaintiff, the assignee of the right to photograph the\nexhibits at a dog show, was refused an injunction against\ndefendant who had also taken pictures of the show and was\npublishing them. The court said that, except in so far as the\npossession of the land occupied by the show enabled the\nproprietors to exclude people or permit them on condition\nthat they agree not to take photographs (which condition\nwas not imposed in that case), the proprietors had no\nexclusive right to photograph the show and could therefore\ngrant no such right. And it was further stated that, at any\nrate, no matter what conditions might be imposed upon\n\n313\n\n\x0cthose entering the grounds, if the defendant had been on\ntop of a house or in some position where he could\nphotograph the show without interfering with the physical\nproperty of the plaintiff, the plaintiff would have no right\nto stop him. If, when the plaintiff creates the event\nrecorded, he is not entitled to the exclusive first publication\nof the news (in that case a photograph) of the event, no\nreason can be shown why he should be accorded such\nprotection as to events which he simply records and\ntransmits to other parts of the world, though with great\nexpenditure of time and money.\nThird. If news be treated as possessing the characteristics\nnot of a trade secret, but of literary property, then the\nearliest issue of a paper of general circulation or the earliest\npublic posting of a bulletin which embodies such news\nwould, under the established rules governing literary\nproperty, operate as a publication, and all property in the\nnews would then cease. Resisting this conclusion, plaintiff\nrelied upon the cases which hold that uncopyrighted\nintellectual and artistic property survives private circulation\nor a restricted publication; and it contended that in each\nissue of each paper, a restriction is to be implied, that the\nnews shall not be used gainfully in competition with the\nAssociated Press or any of its members. There is no basis\nfor such an implication. But it is, also, well settled that\nwhere the publication is in fact a general one \xe2\x80\x93 even\nexpress words of restriction upon use are inoperative. In\nother words, a general publication is effective to dedicate\nliterary property to the public, regardless of the actual\nintent of its owner. In the cases dealing with lectures,\ndramatic and musical performances, and art exhibitions,\nupon which plaintiff relied, there was no general\npublication in print comparable to the issue of daily\nnewspapers or the unrestricted public posting of bulletins.\nThe principles governing those cases differ more or less in\napplication, if not in theory, from the principles governing\n\n314\n\n\x0cthe issue of printed copies; and in so far as they do differ,\nthey have no application to the case at bar.\nFourth. Plaintiff further contended that defendant\xe2\x80\x99s\npractice constitutes unfair competition, because there is\n\xe2\x80\x98appropriation without cost to itself of values created by\xe2\x80\x99\nthe plaintiff; and it is upon this ground that the decision of\nthis court appears to be based. To appropriate and use for\nprofit, knowledge and ideas produced by other men,\nwithout making compensation or even acknowledgment,\nmay be inconsistent with a finer sense of propriety; but,\nwith the exceptions indicated above, the law has heretofore\nsanctioned the practice. Thus it was held that one may\nordinarily make and sell anything in any form, may copy\nwith exactness that which another has produced, or may\notherwise use his ideas without his consent and without the\npayment of compensation, and yet not inflict a legal injury;\nand that ordinarily one is at perfect liberty to find out, if he\ncan by lawful means, trade secrets of another, however\nvaluable, and then use the knowledge so acquired gainfully,\nalthough it cost the original owner much in effort and in\nmoney to collect or produce.\nSuch taking and gainful use of a product of another which,\nfor reasons of public policy, the law has refused to endow\nwith the attributes of property, does not become unlawful\nbecause the product happens to have been taken from a\nrival and is used in competition with him. The unfairness in\ncompetition which hitherto has been recognized by the law\nas a basis for relief, lay in the manner or means of\nconducting the business; and the manner or means held\nlegally unfair, involves either fraud or force or the doing of\nacts otherwise prohibited by law. In the \xe2\x80\x98passing off\xe2\x80\x99 cases\n(the typical and most common case of unfair competition),\nthe wrong consists in fraudulently representing by word or\nact that defendant\xe2\x80\x99s goods are those of plaintiff. See\nHanover Milling Co. v. Metcalf, 240 U. S. 403, 412, 413. In\nthe other cases, the diversion of trade was effected through\n\n315\n\n\x0cphysical or moral coercion, or by inducing breaches of\ncontract or of trust or by enticing away employes. In some\nothers, called cases of simulated competition, relief was\ngranted because defendant\xe2\x80\x99s purpose was unlawful; namely,\nnot competition but deliberate and wanton destruction of\nplaintiff\xe2\x80\x99s business.\nThat competition is not unfair in a legal sence, merely\nbecause the profits gained are unearned, even if made at the\nexpense of a rival, is shown by many cases besides those\nreferred to above. He who follows the pioneer into a new\nmarket, or who engages in the manufacture of an article\nnewly introduced by another, seeks profits due largely to\nthe labor and expense of the first adventurer; but the law\nsanctions, indeed encourages, the pursuit. He who makes a\ncity known through his product, must submit to sharing the\nresultant trade with others who, perhaps for that reason,\nlocate there later. Canal Co. v. Clark, 13 Wall. 311; Elgin\nNational Watch Co. v. Illinois Watch Co., 179 U. S. 665,\n673. He who has made his name a guaranty of quality,\nprotests in vain when another with the same name engages,\nperhaps for that reason, in the same lines of business;\nprovided, precaution is taken to prevent the public from\nbeing deceived into the belief that what he is selling, was\nmade by his competitor. One bearing a name made famous\nby another is permitted to enjoy the unearned benefit\nwhich necessarily flows from such use, even though the use\nproves harmful to him who gave the name value. Brown\nChemical Co. v. Meyer, 139 U. S. 540, 544 [other citations\nomitted].\nThe means by which the International News Service\nobtains news gathered by the Associated Press is also\nclearly unobjectionable. It is taken from papers bought in\nthe open market or from bulletins publicly posted. No\nbreach of contract such as the court considered to exist in\nHitchman Coal & Coke Co. v. Mitchell, 245 U. S. 229, 254,\nor of trust such as was present in Morison v. Moat, 9 Hare,\n\n316\n\n\x0c241, and neither fraud nor force is involved. The manner of\nuse is likewise unobjectionable. No reference is made by\nword or by act to the Associated Press, either in\ntransmitting the news to subscribers or by them in\npublishing it in their papers. Neither the International\nNews Service nor its subscribers is gaining or seeking to\ngain in its business a benefit from the reputation of the\nAssociated Press. They are merely using its product without\nmaking compensation. See Bamforth v. Douglass Post\nCard & Machine Co. (C. C.) 158 Fed. 355; Tribune Co. of\nChicago v. Associated Press (C. C.) 116 Fed. 126. That they\nhave a legal right to do, because the product is not\nproperty, and they do not stand in any relation to the\nAssociated Press, either of contract or of trust, which\notherwise precludes such use. The argument is not\nadvanced by characterizing such taking and use a\nmisappropriation.\nIt is also suggested that the fact that defendant does not\nrefer to the Associated Press as the source of the news may\nfurnish a basis for the relief. But the defendant and its\nsubscribers, unlike members of the Associated Press, were\nunder no contractual obligation to disclose the source of\nthe news; and there is no rule of law requiring\nacknowledgment to be made where uncopyrighted matter is\nreproduced. The International News Service is said to\nmislead its subscribers into believing that the news\ntransmitted was originally gathered by it and that they in\nturn mislead their readers. There is, in fact, no\nrepresentation by either of any kind. Sources of\ninformation are sometimes given because required by\ncontract; sometimes because naming the source gives\nauthority to an otherwise incredible statement; and\nsometimes the source is named because the agency does\nnot wish to take the responsibility itself of giving currency\nto the news. But no representation can properly be implied\nfrom omission to mention the source of information\n\n317\n\n\x0cexcept that the International News Service is transmitting\nnews which it believes to be credible.\nNor is the use made by the International News Service of\nthe information taken from papers or bulletins of\nAssociated Press members legally objectionable by reason\nof the purpose for which it was employed. The acts here\ncomplained of were not done for the purpose of injuring\nthe business of the Associated Press. Their purpose was\nnot even to divert its trade, or to put it at a disadvantage by\nlessening defendant\xe2\x80\x99s necessary expenses. The purpose was\nmerely to supply subscribers of the International News\nService promptly with all available news. The suit is, as this\ncourt declares, in substance one brought for the benefit of\nthe members of the Associated Press, who would be\nproper, and except for their number perhaps necessary,\nparties; and the plaintiff conducts the suit as representing\ntheir interests. It thus appears that the protection given by\nthe injunction is not actually to the business of the\ncomplainant news agency; for this agency does not sell\nnews nor seek to earn profits, but is a mere instrumentality\nby which 800 or more newspapers collect and distribute\nnews. It is these papers severally which are protected; and\nthe protection afforded is not from competition of the\ndefendant, but from possible competition of one or more\nof the 400 other papers which receive the defendant\xe2\x80\x99s\nservice. Furthermore, the protection to these Associated\nPress members consists merely in denying to other papers\nthe right to use as news, information which by authority of\nall concerned, had theretofore been given to the public by\nsome of those who joined in gathering it; and to which the\nlaw denies the attributes of property. There is in\ndefendant\xe2\x80\x99s purpose nothing on which to base a claim for\nrelief.\nIt is further said that, while that for which the Associated\nPress spends its money is too fugitive to be recognized as\nproperty in the common-law courts, the defendant cannot\n\n318\n\n\x0cbe heard to say so in a court of equity, where the question\nis one of unfair competition. The case presents no elements\nof equitable title or of breach of trust. The only possible\nreason for resort to a court of equity in a case like this is\nthat the remedy which the law gives is inadequate. If the\nplaintiff has no legal cause of action, the suit necessarily\nfails. Levy v. Walker, L. R. 10 Ch. D. 436, 449. There is\nnothing in the situation of the parties which can estop the\ndefendant from saying so.\nFifth. The great development of agencies now furnishing\ncountry-wide distribution of news, the vastness of our\nterritory, and improvements in the means of transmitting\nintelligence, have made it possible for a news agency or\nnewspapers to obtain, without paying compensation, the\nfruit of another\xe2\x80\x99s efforts and to use news so obtained\ngainfully in competition with the original collector. The\ninjustice of such action is obvious. But to give relief against\nit would involve more than the application of existing rules\nof law to new facts. It would require the making of a new\nrule in analogy to existing ones. The unwritten law\npossesses capacity for growth; and has often satisfied new\ndemands for justice by invoking analogies or by expanding\na rule or principle. This process has been in the main wisely\napplied and should not be discontinued. Where the\nproblem is relatively simple, as it is apt to be when private\ninterests only are involved, it generally proves adequate. But\nwith the increasing complexity of society, the public\ninterest tends to become omnipresent; and the problems\npresented by new demands for justice cease to be simple.\nThen the creation or recognition by courts of a new private\nright may work serious injury to the general public, unless\nthe boundaries of the right are definitely established and\nwisely guarded. In order to reconcile the new private right\nwith the public interest, it may be necessary to prescribe\nlimitations and rules for its enjoyment; and also to provide\nadministrative machinery for enforcing the rules. It is\n\n319\n\n\x0clargely for this reason that, in the effort to meet the many\nnew demands for justice incident to a rapidly changing\ncivilization, resort to legislation has latterly been had with\nincreasing frequency.\nThe rule for which the plaintiff contends would effect an\nimportant extension of property rights and a corresponding\ncurtailment of the free use of knowledge and of ideas; and\nthe facts of this case admonish us of the danger involved in\nrecognizing such a property right in news, without\nimposing upon news-gatherers corresponding obligations.\nA large majority of the newspapers and perhaps half the\nnewspaper readers of the United States are dependent for\ntheir news of general interest upon agencies other than the\nAssociated Press. The channel through which about 400 of\nthese papers received, as the plaintiff alleges, \xe2\x80\x98a large\namount of news relating to the European war of the\ngreatest importance and of intense interest to the\nnewspaper reading public\xe2\x80\x99 was suddenly closed. The closing\nto the International News Service of these channels for\nforeign news (if they were closed) was due not to\nunwillingness on its part to pay the cost of collecting the\nnews, but to the prohibitions imposed by foreign\ngovernments upon its securing news from their respective\ncountries and from using cable or telegraph lines running\ntherefrom. For aught that appears, this prohibition may\nhave been wholly undeserved; and at all events the 400\npapers and their readers may be assumed to have been\ninnocent. For aught that appears, the International News\nService may have sought then to secure temporarily by\narrangement with the Associated Press the latter\xe2\x80\x99s foreign\nnews service. For aught that appears, all of the 400\nsubscribers of the International News Service would gladly\nhave then become members of the Associated Press, if they\ncould have secured election thereto. It is possible, also, that\na large part of the readers of these papers were so situated\nthat they could not secure prompt access to papers served\n\n320\n\n\x0cby the Associated Press. The prohibition of the foreign\ngovernments might as well have been extended to the\nchannels through which news was supplied to the more\nthan a thousand other daily papers in the United States not\nserved by the Associated Press; and a large part of their\nreaders may also be so located that they cannot procure\nprompt access to papers served by the Associated Press.\nA Legislature, urged to enact a law by which one news\nagency or newspaper may prevent appropriation of the\nfruits of its labors by another, would consider such facts\nand possibilities and others which appropriate inquiry\nmight disclose. Legislators might conclude that it was\nimpossible to put an end to the obvious injustice involved\nin such appropriation of news, without opening the door to\nother evils, greater than that sought to be remedied. Such\nappears to have been the opinion of our Senate which\nreported unfavorably a bill to give news a few hours\xe2\x80\x99\nprotection; and which ratified, on February 15, 1911, the\nconvention adopted at the Fourth International American\nConference; and such was evidently the view also of the\nsignatories to the International Copyright Union of\nNovember 13, 1908, as both these conventions expressly\nexclude news from copyright protection.\nOr legislators dealing with the subject might conclude, that\nthe right to news values should be protected to the extent\nof permitting recovery of damages for any unauthorized\nuse, but that protection by injunction should be denied, just\nas courts of equity ordinarily refuse (perhaps in the interest\nof free speech) to restrain actionable libels, and for other\nreasons decline to protect by injunction mere political\nrights;and as Congress has prohibited courts from\nenjoining the illegal assessment or collection of federal\ntaxes. If a Legislature concluded to recognize property in\npublished news to the extent of permitting recovery at law,\nit might, with a view to making the remedy more certain\n\n321\n\n\x0cand adequate, provide a fixed measure of damages, as in the\ncase of copyright infringement.\nOr again, a Legislature might conclude that it was unwise to\nrecognize even so limited a property right in published\nnews as that above indicated; but that a news agency\nshould, on some conditions, be given full protection of its\nbusiness; and to that end a remedy by injunction as well as\none for damages should be granted, where news collected\nby it is gainfully used without permission. If a Legislature\nconcluded (as at least one court has held, New York and\nChicago Grain and Stock Exchange v. Board of Trade, 127\nIll. 153) that under certain circumstances news-gathering is\na business affected with a public interest; it might declare\nthat, in such cases, news should be protected against\nappropriation, only if the gatherer assumed the obligation\nof supplying it at resonable rates and without\ndiscrimination, to all papers which applied therefor. If\nlegislators reached that conclusion, they would probably go\nfurther, and prescribe the conditions under which and the\nextent to which the protection should be afforded; and they\nmight also provide the administrative machinery necessary\nfor insuring to the public, the press, and the news agencies,\nfull enjoyment of the rights so conferred.\nCourts are ill-equipped to make the investigations which\nshould precede a determination of the limitations which\nshould be set upon any property right in news or of the\ncircumstances under which news gathered by a private\nagency should be deemed affected with a public interest.\nCourts would be powerless to prescribe the detailed\nregulations essential to full enjoyment of the rights\nconferred or to introduce the machinery required for\nenforcement of such regulations. Considerations such as\nthese should lead us to decline to establish a new rule of\nlaw in the effort to redress a newly disclosed wrong,\nalthough the propriety of some remedy appears to be clear.\n\n322\n\n\x0cOutline of INS v. AP\nThree opinions: Pitney (majority); Holmes; Brandeis\nIn a nutshell:\nPitney: AP has relative title to news it gathers such that it can\nprevent competitors from free riding for some period after it\nis first reported. This is in order to keep alive the incentive to\ngather news.\nHolmes: The harm here is only that INS is publishing news\nunder its name that in fact was gathered by the AP potentially misleading consumers about the source of the\nnews. INS should be required to credit AP but no more.\nBrandeis: Just because there is value in news does not mean\nthat the initial gatherer should receive the legal right to\nexclude others from using and reporting that news. There is\nvalue in free riding, at least where, as here, the public isn\xe2\x80\x99t\nconfused about the source of news. The law does not protect\ncreators of value in every case, only in certain areas (patent\nand copyright, for example). And in any event, establishing\nexclusion rights in news is a change that will affect the\ninterests of the general public and getting the balance right\nwill require careful review of the industry and, perhaps,\nadministrative machinery that courts are not in the best\nposition to provide. This issue should be left to the legislature.\nMajority opinion\nI. Background and posture of the case\n\xef\x82\xb7\n\nBackground on industry and organization of INS and AP.\n\n\xef\x82\xb7\n\nAllegations: Injury exists in taking the advantage of\nfreshness\n\n\xef\x82\xb7\n\nProcedural history - we\xe2\x80\x99re here on an an interlocutory\nappeal from the grant of a preliminary injunction.\n\n\x0c\xef\x82\xb7\n\nOnly issue is whether INS can use news published by AP,\non bulletin boards or in papers, as the sole basis for its own\nstories.\n\n\xef\x82\xb7\n\nThis is a case raising only state law issues of unfair\ncompetition (the parties are diverse, coming from different\nstates, thus giving fed courts jurisdiction) - not copyright.\nCopyright would only protect the expression, the literary\nquality or wording of news stories, not the facts that form\nthe basis of the stories. And the facts are all that was taken\nhere.\n\nII. Positive Legal Analysis\n\xef\x82\xb7\n\nNews is valuable because it is, well, new. Those in the news\nbusiness compete to report facts first, or at least timely.\n\n\xef\x82\xb7\n\nAs business competitors they are under a legal duty, when\nconflict between them is likely, to \xe2\x80\x9cconduct their business\nas not unnecessarily or unfairly to injure the of the other.\xe2\x80\x9d\nIf there is a right to exclude here, it is only relative\n(RELATIVE TITLE). Each may have a right to exclude\nthe other, but not the general public, who may do with the\nnews what they wish.\n\n\xef\x82\xb7\n\nSo is there such a right?\n\n\xef\x82\xb7\n\nCanvass precedent - two cases suggesting that finding\nrelative title to news would fit with existing law.\n\n\xef\x82\xb7\n\nJustification - news is valuable to those who gather it and to\nthose who would appropriate it. HERE, The time\ndifference between the East and West coast allows a\ncompetitor to appropriate that value, publishing nearly\nsimultaneously with the gatherer on the West Coast.\n\n\xef\x82\xb7\n\nSince news is expensive to gather, an interloper should not\nbe allowed to reap what he has not sown. (Argument that\nproperty rights, at least as between competitors, should be\nawarded to protect labor. Contra Pierson v. Post.) That\xe2\x80\x99s\nhappened here, so liability.\n\n324\n\n\x0cIII. Rebuttals to arguments against\n\xef\x82\xb7\n\nNews is not \xe2\x80\x9cabandoned\xe2\x80\x9d when published. There\xe2\x80\x99s no\nintent to abandon, as is evidenced by the organizational\nstructure of the AP. They couldn\xe2\x80\x99t stay in business if they\ncouldn\xe2\x80\x99t profit from publication of the news. Their bylaws\nattempt to prevent transmission to competitors before\npublication.\n\n\xef\x82\xb7\n\nThe holding does not create a monopoly of gathering and\ndistributing news, but only partially keeps out competitors\nwho would \xe2\x80\x9creproduce\xe2\x80\x9d AP\xe2\x80\x99s news and only for long\nenough to give AP enough value to keep alive its incentive\nto gather news.\n\n\xef\x82\xb7\n\nThe harm here is not (only) in the fraud upon consumers,\nthe reverse palming off of AP\xe2\x80\x99s news as coming from INS.\nAnd so INS\xe2\x80\x99s giving credit would not fix the problem.\n\n\xef\x82\xb7\n\nAP uses other organizations\xe2\x80\x99 news stories as leads or tips\nthat are independently verified before publication. But this\ndoes not mean that AP is guilty of that of which they\naccuse INS (which guilt might establish the equitable\ndefense of unclean hands).\n\nHolmes\nIn general, the law does not prevent one from repeating what\nothers have said. The news is not copyrighted and so is free to be\nused by others, including competitors. But here, using AP\xe2\x80\x99s news\nand publishing it at the same time AP papers publish it, in the west,\namounts to a kind of fraud. INS should be required to name the\nsource.\nBrandeis\n\xef\x82\xb7\n\nFacts\n\n\xef\x82\xb7\n\nFraming the question: Can AP enjoin a competitor from\nusing AP-published news that the competitor lawfully\nacquires? No cases answer this question.\n\n325\n\n\x0c\xef\x82\xb7\n\nThe background rule is that \xe2\x80\x9ca product of the mind,\xe2\x80\x9d even\nif it requires laborious effort to produce, is free to be\nripped off by others. There are exceptions to this only\nwhere public policy requires it - as in patent, copyright, and\ncertain cases where the relationship between the parties\ndemands it.\n\n\xef\x82\xb7\n\nThis is not such a case (rebuts arguments one by one):\n1. Distinguish precedent - not like cases where the\nappropriation involved a breach of contract or\ntrust. No such relationship here.\n2. Distinguish adverse precedent based on a kind of\ncommon law copyright by using a Feist rationale to have such a cause of action, the expression must\nevince at least some originality, not a bare recitation\nof facts.\n3. There was a general publication here, and so once\npublished, the news is not protectable literary\nproperty (don\xe2\x80\x99t worry about this).\n4. Rebuts the bare argument that it\xe2\x80\x99s unfair\ncompetition to free-ride. But unfair competition\ndoesn\xe2\x80\x99t protect against free-riding, only against\nfraud or force or other legal violations used to gain\na competitive edge. No such unfair means were\nused here (papers were bought in the open market).\nAnd the law generally sanctions and even\nencourages free riders, those who follow pioneers.\nAlso, Brandeis disagrees that a failure to attribute is\nmisleading. Doesn\xe2\x80\x99t think people assume the\npublisher is the source of all the news it publishes.\n5. (LEGAL PROCESS) Technological change and the\n\xe2\x80\x9cvastness of our territory\xe2\x80\x9d do threaten to erode the\nincentive to engage in the worthwhile endeavor of\nnews gathering and dissemination. But we\xe2\x80\x99d need to\ndevelop new law to deal with this, and doing so\n\n326\n\n\x0cwould affect the public at large, perhaps adversely.\nCourts won\xe2\x80\x99t do a good job, and so should leave\nthis for the legislature (which can take broader\nevidence about the problem and produce more\nfinely tuned rules enforceable by administrative\nmachinery).\nCheney Bros. V. Doris Silk Corporation, 35 F.2d 279\n(SDNY, 1929)\nHarry D. Nims, of New York City (Minturn DeS. Verdi\nand Wallace H. Martin, both of New York City, on the\nbrief), for appellant.\nEpstein & Bros., of New York City (Arthur J. Brothers, of\nNew York City, of counsel), for appellee.\nBefore MANTON, L. HAND, and SWAN, Circuit Judges.\nL. HAND, CIRCUIT JUDGE\nThe plaintiff, a corporation, is a manufacturer of silks,\nwhich puts out each season many new patterns, designed to\nattract purchasers by their novelty and beauty. Most of\nthese fail in that purpose, so that no much more than a\nfifth catch the public fancy. Moreover, they have only a\nshort life, for the most part no more than a single season of\neight or nine months. It is in practice impossible, and it\nwould be very onerous if it were not, to secure design\npatents upon all of these; it would also be impossible to\nknow in advance which would sell well, and patent only\nthose. Besides, it is probable that for the most part they\nhave no such originality as would support a design patent.\nAgain, it is impossible to copyright them under the\nCopyright Act (17 USCA s 1 et seq.), or at least so the\nauthorities of the Copyright Office hold. So it is easy for\nany one to copy such as prove successful, and the plaintiff,\nwhich is put to much ingenuity and expense in fabricating\nthem, finds itself without protection of any sort for its\npains.\n\n327\n\n\x0cTaking advantage of this situation, the defendant copied\none of the popular designs in the season beginning in\nOctober, 1928, and undercut the plaintiff\xe2\x80\x99s price. This is\nthe injury of which it complains. The defendant, though it\nduplicated the design in question, denies that it knew it to\nbe the plaintiff\xe2\x80\x99s, and there thus arises an issue which might\nbe an answer to the motion. However, the parties wish a\ndecision upon the equity of the bill, and, since it is within\nour power to dismiss it, we shall accept its allegation, and\ncharge the defendant with knowledge.\nThe plaintiff asks for protection only during the season,\nand needs no more, for the designs are all ephemeral. It\nseeks in this way to disguise the extent of the proposed\ninnovation, and to persuade us that, if we interfere only a\nlittle, the solecism, if there be one, may be pardonable. But\nthe reasoning which would justify any interposition at all\ndemands that it cover the whole extent of the injury. A man\nwhose designs come to harvest in two years, or in five, has\nprima facie as good right to protection as one who deals\nonly in annuals. Nor could we consistently stop at designs;\nprocesses, machines, and secrets have an equal claim. The\nupshot must be that, whenever any one has contrived any\nof these, others may be forbidden to copy it. That is not\nthe law. In the absence of some recognized right at\ncommon law, or under the statutes- and the plaintiff claims\nneither- a man\xe2\x80\x99s property is limited to the chattels which\nembody his invention. Others may imitate these at their\npleasure. Flagg Mfg. Co. v. Holway, 178 Mass. 83, 59 N.E.\n667; Keystone Co. v. Portland Publishing Co., 186 F. 690 (C.C.A.\n1); Heide v. Wallace, 135 F. 346 (C.C.A. 3); Upjohn Co. v.\nMerrell Co., 269 F. 209 (C.C.A. 6); Hudson Co. v. Apco Co.\n(D.C.) 288 F. 871; Crescent Tool Co. v. Kilborn & Bishop Co.,\n247 F. 299 (C.C.A. 2); Hamilton Co. v. Tubbs Co. (D.C.) 216\nF. 401; Montegut v. Hickson, 178 App.Div. 94, 164 N.Y.S.\n858.\n\n328\n\n\x0cThis is confirmed by the doctrine of \xe2\x80\x98non-functional\xe2\x80\x99\nfeatures, under which it is held that to imitate these is to\nimpute to the copy the same authorship as the original.\nEnterprise Co. v. Landers, 131 F. 240 (C.C.A. 2); Yale & Towne\nCo. v. Adler, 154 F. 37 (C.C.A. 2); Rushmore v. Manhattan Co.,\n163 F. 939, 19 L.R.A.(N.S.) 269 (C.C.A. 2); Rushmore v.\nBadger Co., 198 F. 379 (C.C.A. 2); Fox v. Glynn, 191 Mass.\n344, 78 N.E. 89, 9 L.R.A.(N.S.) 1096, 114 Am.St.Rep. 619.\nThese decisions imply that, except as to these elements, any\none may copy the original at will. Unless, therefore, there\nhas been some controlling authority to the contrary, the bill\nat bar stands upon no legal right and must fail.\nOf the cases on which the plaintiff relies, the chief is\nInternational News Service v. Associated Press, 248 U.S. 215, 39\nS.Ct. 68, 63 L.Ed. 211, 2 A.L.R. 293. Although that\nconcerned another subject-matter- printed news\ndispatches- we agree that, if it meant to lay down a general\ndoctrine, it would cover this case; at least, the language of\nthe majority opinion goes so far. We do not believe that it\ndid. While it is of course true that law ordinarily speaks in\ngeneral terms, there are cases where the occasion is at once\nthe justification for, and the limit of, what is decided. This\nappears to us such an instance; we think that no more was\ncovered than situations substantially similar to those then at\nbar. The difficulties of understanding it otherwise are\ninsuperable. We are to suppose that the court meant to\ncreate a sort of common-law patent or copyright for\nreasons of justice. Either would flagrantly conflict with the\nscheme which Congress has for more than a century\ndevised to cover the subject-matter.\nQua patent, we should at least have to decide, as tabula\nrasa, whether the design or machine was new and required\ninvention; further, we must ignore the Patent Office whose\naction has always been a condition upon the creation of\nthis kind of property. Qua copyright, although it would be\nsimpler to decide upon the merits, we should equally be\n\n329\n\n\x0cobliged to dispense with the conditions imposed upon the\ncreation of the right. Nor, if we went so far, should we\nknow whether the property so recognized should be limited\nto the periods prescribed in the statutes, or should extend\nas long as the author\xe2\x80\x99s grievance. It appears to us incredible\nthat the Supreme Court should have had in mind any such\nconsequences. To exclude others from the enjoyment of a\nchattel is one thing; to prevent any imitation of it, to set up\na monopoly in the plan of its structure, gives the author a\npower over his fellows vastly greater, a power which the\nConstitution allows only Congress to create.\nThe other cases are easily distinguishable. Board of Trade v.\nChristie, 198 U.S. 236, 25 S.Ct. 637, 49 L.Ed. 1031, went\nupon the fact that the defendants had procured their\ninformation through a breach of contract between the\nplaintiff and its subscribers, or some surreptitious and\ndishonest conduct. Hunt v. N.Y. Cotton Exchange, 205 U.S.\n322, 27 S.Ct. 529, 51 L.Ed. 821, was another instance of the\nsame kind. There is, indeed, language in National Tel. News\nCo. v. West Un. Tel. Co., 119 F. 294, 60 L.R.A. 805 (C.C.A.\n7), which goes further, but we take it that the authoritative\nstatement of the doctrine must be found in Board of Trade v.\nChristie 221 F. 305 (C.C.A. 2). Though the limitations there\nimposed have indeed been extended in International News\nService v. Associated Press, they still comprise no more than\ncases involving news and perhaps market quotations. PrestO-Lite v. Bogen (C.C.) 209 F. 915, and Prest-O-Lite v. Davis\n(D.C.) 209 F. 917, were cases of passing off. In Kiernan v.\nManhattan Co., 50 How.Prac.(N.Y.) 194, Dodge v. Construction\nCo., 183 Mass. 63, 66 N.E. 204, 60 L.R.A. 810, 97\nAm.St.Rep. 412; Exchange Co. v. Gregory, L.R. (1896) 1 Q.B.\n147 (C.A.) and Exchange Co. v. Central News, L.R. (1897) 2\nCh. 48, again, either there was a breach of contract between\nthe plaintiff and its subscriber, or the defendant had\ndishonestly procured the information. They are like Board of\nTrade v. Christie.\n\n330\n\n\x0cTrue, it would seem as though the plaintiff had suffered a\ngrievance for which there should be a remedy, perhaps by\nan amendment of the Copyright Law, assuming that this\ndoes not already cover the case, which is not urged here. It\nseems a lame answer in such a case to turn the injured party\nout of court, but there are larger issues at stake than his\nredress. Judges have only a limited power to amend the law;\nwhen the subject has been confided to a Legislature, they\nmust stand aside, even though there be an hiatus in\ncompleted justice. An omission in such cases must be taken\nto have been as deliberate as though it were express,\ncertainly after long-standing action on the subject-matter.\nIndeed, we are not in any position to pass upon the\nquestions involved, as Brandeis, J., observed in International\nNews Service v. Associated Press. We must judge upon records\nprepared by litigations, which do not contain all that may\nbe relevant to the issues, for they cannot disclose the\nconditions of this industry, or of the others which may be\ninvolved. Congress might see its way to create some sort of\ntemporary right, or it might not. Its decision would\ncertainly be preceded by some examination of the result\nupon the other interests affected. Whether these would\nprove paramount we have no means of saying; it is not for\nus to decide. Our vision is inevitably contracted, and the\nwhole horizon may contain much which will compose a\nvery different picture.\nThe order is affirmed, and, as the bill cannot in any event\nsucceed, it may be dismissed, if the defendant so desires.\nNational Basketball Association v. Motorola, Inc., 105\nF.3d 841\nBefore: VAN GRAAFEILAND,\nALTIMARI, Circuit Judges.\nWINTER, Circuit Judge:\n\xe2\x80\xa6.\n\n331\n\nWINTER,\n\nand\n\n\x0cI. BACKGROUND\nThe facts are largely undisputed. Motorola manufactures\nand markets the SportsTrax paging device while STATS\nsupplies the game information that is transmitted to the\npagers. The product became available to the public in\nJanuary 1996, at a retail price of about $200. SportsTrax\xe2\x80\x99s\npager has an inch-and-a-half by inch-and-a-half screen and\noperates in four basic modes: \xe2\x80\x9ccurrent,\xe2\x80\x9d \xe2\x80\x9cstatistics,\xe2\x80\x9d \xe2\x80\x9cfinal\nscores\xe2\x80\x9d and \xe2\x80\x9cdemonstration.\xe2\x80\x9d It is the \xe2\x80\x9ccurrent\xe2\x80\x9d mode that\ngives rise to the present dispute. In that mode, SportsTrax\ndisplays the following information on NBA games in\nprogress: (i) the teams playing; (ii) score changes; (iii) the\nteam in possession of the ball; (iv) whether the team is in\nthe free-throw bonus; (v) the quarter of the game; and (vi)\ntime remaining in the quarter. The information is updated\nevery two to three minutes, with more frequent updates\nnear the end of the first half and the end of the game.\nThere is a lag of approximately two or three minutes\nbetween events in the game itself and when the information\nappears on the pager screen.\nSportsTrax\xe2\x80\x99s operation relies on a \xe2\x80\x9cdata feed\xe2\x80\x9d supplied by\nSTATS reporters who watch the games on television or\nlisten to them on the radio. The reporters key into a\npersonal computer changes in the score and other\ninformation such as successful and missed shots, fouls, and\nclock updates. The information is relayed by modem to\nSTATS\xe2\x80\x99s host computer, which compiles, analyzes, and\nformats the data for retransmission. The information is\nthen sent to a common carrier, which then sends it via\nsatellite to various local FM radio networks that in turn\nemit the signal received by the individual SportsTrax\npagers.\nAlthough the NBA\xe2\x80\x99s complaint concerned only the\nSportsTrax device, the NBA offered evidence at trial\nconcerning STATS\xe2\x80\x99s America On-Line (\xe2\x80\x9cAOL\xe2\x80\x9d) site.\nStarting in January, 1996, users who accessed STATS\xe2\x80\x99s\n\n332\n\n\x0cAOL site, typically via a modem attached to a home\ncomputer, were provided with slightly more comprehensive\nand detailed real-time game information than is displayed\non a SportsTrax pager. On the AOL site, game scores are\nupdated every 15 seconds to a minute, and the player and\nteam statistics are updated each minute. The district court\xe2\x80\x99s\noriginal decision and judgment, National Basketball Ass\xe2\x80\x99n v.\nSports Team Analysis and Tracking Sys. Inc., 931 F. Supp. 1124\n(S.D.N.Y. 1996), did not address the AOL site, because\n\xe2\x80\x9cNBA\xe2\x80\x99s complaint and the evidence proffered at trial were\ndevoted largely to SportsTrax.\xe2\x80\x9d National Basketball Ass\xe2\x80\x99n v.\nSports Team Analysis and Tracking Sys. Inc., 939 F.Supp. 1071,\n1074 n. 1 (S.D.N.Y. 1996). Upon motion by the NBA,\nhowever, the district court amended its decision and\njudgment and enjoined use of the real-time game\ninformation on STATS\xe2\x80\x99s AOL site. Id. at 1075 n. 1.\nBecause the record on appeal, the briefs of the parties, and\noral argument primarily addressed the SportsTrax device,\nwe similarly focus on that product. However, we regard the\nlegal issues as identical with respect to both products, and\nour holding applies equally to SportsTrax and STATS\xe2\x80\x99s\nAOL site.\nThe NBA\xe2\x80\x99s complaint asserted six claims for relief: (i) state\nlaw unfair competition by misappropriation; (ii) false\nadvertising under Section 43(a) of the Lanham Act, 15\nU.S.C. \xc2\xa7 1125(a); (iii) false representation of origin under\nSection 43(a) of the Lanham Act; (iv) state and common\nlaw unfair competition by false advertising and false\ndesignation of origin; (v) federal copyright infringement;\nand (vi) unlawful interception of communications under\nthe Communications Act of 1934, 47 U.S.C. \xc2\xa7 605.\nMotorola counterclaimed, alleging that the NBA unlawfully\ninterfered with Motorola\xe2\x80\x99s contractual relations with four\nindividual NBA teams that had agreed to sponsor and\nadvertise SportsTrax.\n\n333\n\n\x0cThe district court dismissed all of the NBA\xe2\x80\x99s claims except\nthe first-misappropriation under New York law. The court\nalso dismissed Motorola\xe2\x80\x99s counterclaim. Finding Motorola\nand STATS liable for misappropriation, Judge Preska\nentered the permanent injunction, reserved the calculation\nof damages for subsequent proceedings, and stayed\nexecution of the injunction pending appeal. Motorola and\nSTATS appeal from the injunction \xe2\x80\xa6 .\n\xe2\x80\xa6.\nC. The State-Law Misappropriation Claim\n\xe2\x80\xa6.\nIn our view, the elements central to an INS claim are: (i)\nthe plaintiff generates or collects information at some cost\nor expense; (ii) the value of the information is highly timesensitive; (iii) the defendant\xe2\x80\x99s use of the information\nconstitutes free-riding on the plaintiff\xe2\x80\x99s costly efforts to\ngenerate or collect it; (iv) the defendant\xe2\x80\x99s use of the\ninformation is in direct competition with a product or\nservice offered by the plaintiff; (v) the ability of other\nparties to free-ride on the efforts of the plaintiff would so\n\n334\n\n\x0creduce the incentive to produce the product or service that\nits existence or quality would be substantially threatened.1\nINS is not about ethics; it is about the protection of\nproperty rights in time-sensitive information so that the\ninformation will be made available to the public by profit\nseeking entrepreneurs. If services like AP were not assured\nof property rights in the news they pay to collect, they\nwould cease to collect it. The ability of their competitors to\nappropriate their product at only nominal cost and thereby\nto disseminate a competing product at a lower price would\ndestroy the incentive to collect news in the first place. The\nnewspaper-reading public would suffer because no one\nwould have an incentive to collect \xe2\x80\x9chot news.\xe2\x80\x9d\nWe therefore find the extra elements-those in addition to\nthe elements of copyright infringement-that allow a\n\xe2\x80\x9chotnews\xe2\x80\x9d claim to survive preemption are: (i) the timesensitive value of factual information, (ii) the free-riding by\na defendant, and (iii) the threat to the very existence of the\nproduct or service provided by the plaintiff.\n2 . The Legality of SportsTrax\nSome authorities have labeled this element as requiring direct competition\nbetween the defendant and the plaintiff in a primary market. \xe2\x80\x9dIn most of the small\nnumber of cases in which the misappropriation doctrine has been determinative,\nthe defendant\xe2\x80\x99s appropriation, like that in INS, resulted in direct competition in\nthe plaintiffs\xe2\x80\x99 primary market \xe2\x80\xa6 Appeals to the misappropriation doctrine are\nalmost always rejected when the appropriation does not intrude upon the\nplaintiff\xe2\x80\x99s primary market.\xe2\x80\x9d, Restatement (Third) of Unfair Competition, \xc2\xa7 38 cmt.\nc, at 412-13; see also National Football League v. Governor of State of Delaware, 435 F.\nSupp. 1372 (D. Del. 1977). In that case, the NFL sued Delaware over the state\xe2\x80\x99s\nlottery game which was based on NFL games. In dismissing the wrongful\nmisappropriation claims, the court stated: \xe2\x80\x9cWhile courts have recognized that one\nhas a right to one\xe2\x80\x99s own harvest, this proposition has not been construed to\npreclude others from profiting from demands for collateral services generated by\nthe success of one\xe2\x80\x99s business venture.\xe2\x80\x9d Id. at 1378. The court also noted, \xe2\x80\x9cIt is\ntrue that Delaware is thus making profits it would not make but for the existence\nof the NFL, but I find this difficult to distinguish from the multitude of charter\nbus companies who generate profit from servicing those of plaintiffs\xe2\x80\x99 fans who\nwant to go to the stadium or, indeed, the sidewalk popcorn salesman who services\nthe crowd as it surges towards the gate.\xe2\x80\x9d Id.\n1\n\n335\n\n\x0cWe conclude that Motorola and STATS have not engaged\nin unlawful misappropriation under the \xe2\x80\x9chot-news\xe2\x80\x9d test set\nout above. To be sure, some of the elements of a \xe2\x80\x9chotnews\xe2\x80\x9d INS claim are met. The information transmitted to\nSportsTrax is not precisely contemporaneous, but it is\nnevertheless time-sensitive. Also, the NBA does provide, or\nwill shortly do so, information like that available through\nSportsTrax. It now offers a service called \xe2\x80\x9cGamestats\xe2\x80\x9d that\nprovides official play-by-play game sheets and half-time and\nfinal box scores within each arena. It also provides such\ninformation to the media in each arena. In the future, the\nNBA plans to enhance Gamestats so that it will be\nnetworked between the various arenas and will support a\npager product analogous to SportsTrax. SportsTrax will of\ncourse directly compete with an enhanced Gamestats.\nHowever, there are critical elements missing in the NBA\xe2\x80\x99s\nattempt to assert a \xe2\x80\x9chot-news\xe2\x80\x9d INS-type claim. As framed\nby the NBA, their claim compresses and confuses three\ndifferent informational products. The first product is\ngenerating the information by playing the games; the\nsecond product is transmitting live, full descriptions of\nthose games; and the third product is collecting and\nretransmitting strictly factual information about the games.\nThe first and second products are the NBA\xe2\x80\x99s primary\nbusiness: producing basketball games for live attendance\nand licensing copyrighted broadcasts of those games. The\ncollection and retransmission of strictly factual material\nabout the games is a different product: e.g., box-scores in\nnewspapers, summaries of statistics on television sports\nnews, and real-time facts to be transmitted to pagers. In our\nview, the NBA has failed to show any competitive effect\nwhatsoever from SportsTrax on the first and second\nproducts and a lack of any free-riding by SportsTrax on the\nthird.\nWith regard to the NBA\xe2\x80\x99s primary products-producing\nbasketball games with live attendance and licensing\n\n336\n\n\x0ccopyrighted broadcasts of those games-there is no evidence\nthat anyone regards SportsTrax or the AOL site as a\nsubstitute for attending NBA games or watching them on\ntelevision. In fact, Motorola markets SportsTrax as being\ndesigned \xe2\x80\x9cfor those times when you cannot be at the arena,\nwatch the game on TV, or listen to the radio \xe2\x80\xa6\xe2\x80\x9d\nThe NBA argues that the pager market is also relevant to a\n\xe2\x80\x9chot-news\xe2\x80\x9d INS-type claim and that SportsTrax\xe2\x80\x99s future\ncompetition with Gamestats satisfies any missing element.\nWe agree that there is a separate market for the real-time\ntransmission of factual information to pagers or similar\ndevices, such as STATS\xe2\x80\x99s AOL site. However, we disagree\nthat SportsTrax is in any sense free-riding off Gamestats.\nAn indispensable element of an INS \xe2\x80\x9chot-news\xe2\x80\x9d claim is\nfree riding by a defendant on a plaintiff\xe2\x80\x99s product, enabling\nthe defendant to produce a directly competitive product for\nless money because it has lower costs. SportsTrax is not\nsuch a product. The use of pagers to transmit real-time\ninformation about NBA games requires: (i) the collecting of\nfacts about the games; (ii) the transmission of these facts on\na network; (iii) the assembling of them by the particular\nservice; and (iv) the transmission of them to pagers or an\non-line computer site. Appellants are in no way free-riding\non Gamestats. Motorola and STATS expend their own\nresources to collect purely factual information generated in\nNBA games to transmit to SportsTrax pagers. They have\ntheir own network and assemble and transmit data\nthemselves.\nTo be sure, if appellants in the future were to collect facts\nfrom an enhanced Gamestats pager to retransmit them to\nSportsTrax pagers, that would constitute free-riding and\nmight well cause Gamestats to be unprofitable because it\nhad to bear costs to collect facts that SportsTrax did not. If\nthe appropriation of facts from one pager to another pager\nservice were allowed, transmission of current information\non NBA games to pagers or similar devices would be\n\n337\n\n\x0csubstantially deterred because any potential transmitter\nwould know that the first entrant would quickly encounter\na lower cost competitor free-riding on the originator\xe2\x80\x99s\ntransmissions.2\nHowever, that is not the case in the instant matter.\nSportsTrax and Gamestats are each bearing their own costs\nof collecting factual information on NBA games, and, if\none produces a product that is cheaper or otherwise\nsuperior to the other, that producer will prevail in the\nmarketplace. This is obviously not the situation against\nwhich INS was intended to prevent: the potential lack of\nany such product or service because of the anticipation of\nfree-riding.\nFor the foregoing reasons, the NBA has not shown any\ndamage to any of its products based on free-riding by\nMotorola and STATS, and the NBA\xe2\x80\x99s misappropriation\nclaim based on New York law is preempted.\n\xe2\x80\xa6.\n\nIt may well be that the NBA\xe2\x80\x99s product, when enhanced, will actually have a\ncompetitive edge because its Gamestats system will apparently be used for a\nnumber of in-stadium services as well as the pager market, resulting in a certain\namount of cost sharing. Gamestats might also have a temporal advantage in\ncollecting and transmitting official statistics. Whether this is so does not affect our\ndisposition of this matter, although it does demonstrate the gulf between this case\nand INS, where the free-riding created the danger of no wire service being viable.\n2\n\n338\n\n\x0c3.2. Trademarks and Domain Names\nQualitex Co. v. Jacobson Products Co., 514 U.S. 159\n(1995)\nJUSTICE BREYER delivered the opinion of the Court.\nThe question in this case is whether the Lanham\nTrademark Act of 1946 (Lanham Act), 15 U.S.C. \xc2\xa7\xc2\xa7 10511127 (1988 ed. and Supp. V), permits the registration of a\ntrademark that consists, purely and simply, of a color. We\nconclude that, sometimes, a color will meet ordinary legal\ntrademark requirements. And, when it does so, no special\nlegal rule prevents color alone from serving as a trademark.\nThe case before us grows out of petitioner Qualitex\nCompany\xe2\x80\x99s use (since the 1950\xe2\x80\x99s) of a special shade of\ngreen-gold color on the pads that it makes and sells to dry\ncleaning firms for use on dry cleaning presses. In 1989\nrespondent Jacobson Products (a Qualitex rival) began to\nsell its own press pads to dry cleaning firms; and it colored\nthose pads a similar green-gold. In 1991 Qualitex registered\nthe special green-gold color on press pads with the Patent\nand Trademark Office as a trademark. Registration No.\n1,633,711 (Feb. 5, 1991). Qualitex subsequently added a\ntrademark infringement count, 15 U.S.C. \xc2\xa7 1114(1), to an\nunfair competition claim, \xc2\xa7 1125(a), in a lawsuit it had\nalready filed challenging Jacobson\xe2\x80\x99s use of the green-gold\ncolor.\nQualitex won the lawsuit in the District Court. 21\nU.S.P.Q.2d 1457, 1991 WL 318798 (CD Cal.1991). But, the\nCourt of Appeals for the Ninth Circuit set aside the\njudgment in Qualitex\xe2\x80\x99s favor on the trademark\ninfringement claim because, in that Circuit\xe2\x80\x99s view, the\nLanham Act does not permit Qualitex, or anyone else, to\nregister \xe2\x80\x9ccolor alone\xe2\x80\x9d as a trademark. 13 F.3d 1297, 1300,\n1302 (1994).\nThe courts of appeals have differed as to whether or not\nthe law recognizes the use of color alone as a trademark.\n\n\x0cCompare NutraSweet Co. v. Stadt Corp., 917 F.2d 1024, 1028\n(CA7 1990) (absolute prohibition against protection of\ncolor alone), with In re Owens-Corning Fiberglas Corp., 774\nF.2d 1116, 1128 (CA Fed.1985) (allowing registration of\ncolor pink for fiberglass insulation), and Master Distributors,\nInc. v. Pako Corp., 986 F.2d 219, 224 (CA8 1993) (declining\nto establish per se prohibition against protecting color alone\nas a trademark). Therefore, this Court granted certiorari.\n512 U.S. \xe2\x80\x94-, 115 S.Ct. 40, 129 L.Ed.2d 935 (1994). We\nnow hold that there is no rule absolutely barring the use of\ncolor alone, and we reverse the judgment of the Ninth\nCircuit.\nII\nThe Lanham Act gives a seller or producer the exclusive\nright to \xe2\x80\x9cregister\xe2\x80\x9d a trademark, 15 U.S.C. \xc2\xa7 1052 (1988 ed.\nand Supp. V), and to prevent his or her competitors from\nusing that trademark, \xc2\xa7 1114(1). Both the language of the\nAct and the basic underlying principles of trademark law\nwould seem to include color within the universe of things\nthat can qualify as a trademark. The language of the\nLanham Act describes that universe in the broadest of\nterms. It says that trademarks \xe2\x80\x9cinclude any word, name,\nsymbol, or device, or any combination thereof.\xe2\x80\x9d \xc2\xa7 1127.\nSince human beings might use as a \xe2\x80\x9csymbol\xe2\x80\x9d or \xe2\x80\x9cdevice\xe2\x80\x9d\nalmost anything at all that is capable of carrying meaning,\nthis language, read literally, is not restrictive. The courts and\nthe Patent and Trademark Office have authorized for use\nas a mark a particular shape (of a Coca-Cola bottle), a\nparticular sound (of NBC\xe2\x80\x99s three chimes), and even a\nparticular scent (of plumeria blossoms on sewing thread).\nSee, e.g., Registration No. 696,147 (Apr. 12, 1960);\nRegistration Nos. 523,616 (Apr. 4, 1950) and 916,522 (July\n13, 1971); In re Clarke, 17 U.S.P.Q.2d 1238, 1240 (TTAB\n1990). If a shape, a sound, and a fragrance can act as\nsymbols why, one might ask, can a color not do the same?\n\n340\n\n\x0cA color is also capable of satisfying the more important\npart of the statutory definition of a trademark, which\nrequires that a person \xe2\x80\x9cuse\xe2\x80\x9d or \xe2\x80\x9cintend to use\xe2\x80\x9d the mark\n\xe2\x80\x9cto identify and distinguish his or her\ngoods, including a unique product,\nfrom those manufactured or sold by\nothers and to indicate the source of\nthe goods, even if that source is\nunknown.\xe2\x80\x9d 15 U.S.C. \xc2\xa7 1127.\nTrue, a product\xe2\x80\x99s color is unlike \xe2\x80\x9cfanciful,\xe2\x80\x9d \xe2\x80\x9carbitrary,\xe2\x80\x9d or\n\xe2\x80\x9csuggestive\xe2\x80\x9d words or designs, which almost automatically\ntell a customer that they refer to a brand. Abercrombie &\nFitch Co. v. Hunting World, Inc., 537 F.2d 4, 9-10 (CA2 1976)\n(Friendly, J.); see Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S.\n\xe2\x80\x94-, \xe2\x80\x94-, 112 S.Ct. 2753, 2757, 120 L.Ed.2d 615 (1992). The\nimaginary word \xe2\x80\x9cSuntost,\xe2\x80\x9d or the words \xe2\x80\x9cSuntost\nMarmalade,\xe2\x80\x9d on a jar of orange jam immediately would\nsignal a brand or a product \xe2\x80\x9csource\xe2\x80\x9d; the jam\xe2\x80\x99s orange color\ndoes not do so. But, over time, customers may come to\ntreat a particular color on a product or its packaging (say, a\ncolor that in context seems unusual, such as pink on a\nfirm\xe2\x80\x99s insulating material or red on the head of a large\nindustrial bolt) as signifying a brand. And, if so, that color\nwould have come to identify and distinguish the goods \xe2\x80\x93 i.e.\n\xe2\x80\x9cto \xe2\x80\x9cindicate\xe2\x80\x9d their \xe2\x80\x9csource\xe2\x80\x9d \xe2\x80\x93 much in the way that\ndescriptive words on a product (say, \xe2\x80\x9cTrim\xe2\x80\x9d on nail\nclippers or \xe2\x80\x9cCar-Freshner\xe2\x80\x9d on deodorizer) can come to\nindicate a product\xe2\x80\x99s origin. See, e.g., J. Wiss & Sons Co. v.\nW.E. Bassett Co., 59 C.C.P.A. 1269, 1271 (Pat.), 462 F.2d\n567, 569 (1972); Car-Freshner Corp. v. Turtle Wax, Inc., 268\nF.Supp. 162, 164 (SDNY 1967). In this circumstance,\ntrademark law says that the word (e.g., \xe2\x80\x9cTrim\xe2\x80\x9d), although\nnot inherently distinctive, has developed \xe2\x80\x9csecondary\nmeaning.\xe2\x80\x9d See Inwood Laboratories, Inc. v. Ives Laboratories, Inc.,\n456 U.S. 844, 851, n. 11, 102 S.Ct. 2182, 2187, n. 11, 72\nL.Ed.2d 606 (1982) (\xe2\x80\x9csecondary meaning\xe2\x80\x9d is acquired when\n\n341\n\n\x0c\xe2\x80\x9cin the minds of the public, the primary significance of a\nproduct feature \xe2\x80\xa6 is to identify the source of the product\nrather than the product itself\xe2\x80\x9d). Again, one might ask, if\ntrademark law permits a descriptive word with secondary\nmeaning to act as a mark, why would it not permit a color,\nunder similar circumstances, to do the same?\nWe cannot find in the basic objectives of trademark law any\nobvious theoretical objection to the use of color alone as a\ntrademark, where that color has attained \xe2\x80\x9csecondary\nmeaning\xe2\x80\x9d and therefore identifies and distinguishes a\nparticular brand (and thus indicates its \xe2\x80\x9csource\xe2\x80\x9d). In\nprinciple, trademark law, by preventing others from\ncopying a source-identifying mark, \xe2\x80\x9creduces the customer\xe2\x80\x99s\ncosts of shopping and making purchasing decisions,\xe2\x80\x9d 1 J.\nMcCarthy, McCarthy on Trademarks and Unfair\nCompetition \xc2\xa7 2.012, p. 2-3 (3d ed. 1994) (hereinafter\nMcCarthy), for it quickly and easily assures a potential\ncustomer that this item \xe2\x80\x93 the item with this mark \xe2\x80\x93 is made\nby the same producer as other similarly marked items that\nhe or she liked (or disliked) in the past. At the same time,\nthe law helps assure a producer that it (and not an imitating\ncompetitor) will reap the financial, reputation-related\nrewards associated with a desirable product. The law\nthereby \xe2\x80\x9cencourages the production of quality products,\xe2\x80\x9d\nibid., and simultaneously discourages those who hope to sell\ninferior products by capitalizing on a consumer\xe2\x80\x99s inability\nquickly to evaluate the quality of an item offered for sale.\nSee, e.g., 3 L. Altman, Callmann on Unfair Competition,\nTrademarks and Monopolies \xc2\xa7 17.03 (4th ed. 1983); Landes\n& Posner, The Economics of Trademark Law, 78 T.M.\nRep. 267, 271-272 (1988); Park \xe2\x80\x98N Fly, Inc. v. Dollar Park and\nFly, Inc., 469 U.S. 189, 198, 105 S.Ct. 658, 663, 83 L.Ed.2d\n582 (1985); S.Rep. No. 100-515, p. 4 (1988) U.S.Code\nCong. & Admin.News, 1988, pp. 5577, 5580. It is the\nsource-distinguishing ability of a mark \xe2\x80\x93 not its ontological\nstatus as color, shape, fragrance, word, or sign \xe2\x80\x93 that\n\n342\n\n\x0cpermits it to serve these basic purposes. See Landes &\nPosner, Trademark Law: An Economic Perspective, 30\nJ.Law & Econ. 265, 290 (1987). And, for that reason, it is\ndifficult to find, in basic trademark objectives, a reason to\ndisqualify absolutely the use of a color as a mark.\nNeither can we find a principled objection to the use of\ncolor as a mark in the important \xe2\x80\x9cfunctionality\xe2\x80\x9d doctrine of\ntrademark law. The functionality doctrine prevents\ntrademark law, which seeks to promote competition by\nprotecting a firm\xe2\x80\x99s reputation, from instead inhibiting\nlegitimate competition by allowing a producer to control a\nuseful product feature. It is the province of patent law, not\ntrademark law, to encourage invention by granting\ninventors a monopoly over new product designs or\nfunctions for a limited time, 35 U.S.C. \xc2\xa7\xc2\xa7 154, 173, after\nwhich competitors are free to use the innovation. If a\nproduct\xe2\x80\x99s functional features could be used as trademarks,\nhowever, a monopoly over such features could be obtained\nwithout regard to whether they qualify as patents and could\nbe extended forever (because trademarks may be renewed\nin perpetuity). See Kellogg Co. v. National Biscuit Co., 305 U.S.\n111, 119-120, 59 S.Ct. 109, 113-114, 83 L.Ed. 73 (1938)\n(Brandeis, J.); Inwood Laboratories, Inc., supra, 456 U.S., at 863,\n102 S.Ct., at 2193 (White, J., concurring in result) (\xe2\x80\x9cA\nfunctional characteristic is \xe2\x80\x98an important ingredient in the\ncommercial success of the product,\xe2\x80\x99 and, after expiration of\na patent, it is no more the property of the originator than\nthe product itself\xe2\x80\x9d) (citation omitted). Functionality\ndoctrine therefore would require, to take an imaginary\nexample, that even if customers have come to identify the\nspecial illumination-enhancing shape of a new patented\nlight bulb with a particular manufacturer, the manufacturer\nmay not use that shape as a trademark, for doing so, after\nthe patent had expired, would impede competition \xe2\x80\x93 not by\nprotecting the reputation of the original bulb maker, but by\nfrustrating competitors\xe2\x80\x99 legitimate efforts to produce an\n\n343\n\n\x0cequivalent illumination-enhancing bulb. See, e.g., Kellogg Co.,\nsupra, 305 U.S., at 119-120, 59 S.Ct., at 113-114 (trademark\nlaw cannot be used to extend monopoly over \xe2\x80\x9cpillow\xe2\x80\x9d\nshape of shredded wheat biscuit after the patent for that\nshape had expired). This Court consequently has explained\nthat, \xe2\x80\x9din general terms, a product feature is functional,\xe2\x80\x9d and\ncannot serve as a trademark, \xe2\x80\x9cif it is essential to the use or\npurpose of the article or if it affects the cost or quality of\nthe article,\xe2\x80\x9d that is, if exclusive use of the feature would put\ncompetitors at a significant non-reputation-related\ndisadvantage. Inwood Laboratories, Inc., 456 U.S., at 850, n.\n10, 102 S.Ct., at 2186, n. 10. Although sometimes color\nplays an important role (unrelated to source identification)\nin making a product more desirable, sometimes it does not.\nAnd, this latter fact \xe2\x80\x93 the fact that sometimes color is not\nessential to a product\xe2\x80\x99s use or purpose and does not affect\ncost or quality \xe2\x80\x93 indicates that the doctrine of\n\xe2\x80\x9cfunctionality\xe2\x80\x9d does not create an absolute bar to the use of\ncolor alone as a mark. See Owens-Corning, 774 F.2d, at 1123\n(pink color of insulation in wall \xe2\x80\x9cperforms no\nnontrademark function\xe2\x80\x9d).\nIt would seem, then, that color alone, at least sometimes,\ncan meet the basic legal requirements for use as a\ntrademark. It can act as a symbol that distinguishes a firm\xe2\x80\x99s\ngoods and identifies their source, without serving any other\nsignificant function. See U.S. Dept. of Commerce, Patent\nand Trademark Office, Trademark Manual of Examining\nProcedure \xc2\xa7 1202.04(e), p. 1202-13 (2d ed. May, 1993)\n(hereinafter PTO Manual) (approving trademark\nregistration of color alone where it \xe2\x80\x9chas become distinctive\nof the applicant\xe2\x80\x99s goods in commerce,\xe2\x80\x9d provided that\n\xe2\x80\x9cthere is no competitive need for colors to remain available\nin the industry\xe2\x80\x9d and the color is not \xe2\x80\x9cfunctional\xe2\x80\x9d); see also\n1 McCarthy \xc2\xa7\xc2\xa7 3.011, 7.26 (\xe2\x80\x9crequirements for qualification\nof a word or symbol as a trademark\xe2\x80\x9d are that it be (1) a\n\xe2\x80\x9csymbol,\xe2\x80\x9d (2) \xe2\x80\x9cused \xe2\x80\xa6 as a mark,\xe2\x80\x9d (3) \xe2\x80\x9cto identify and\n\n344\n\n\x0cdistinguish the seller\xe2\x80\x99s goods from goods made or sold by\nothers,\xe2\x80\x9d but that it not be \xe2\x80\x9cfunctional\xe2\x80\x9d). Indeed, the\nDistrict Court, in this case, entered findings (accepted by\nthe Ninth Circuit) that show Qualitex\xe2\x80\x99s green-gold press\npad color has met these requirements. The green-gold color\nacts as a symbol. Having developed secondary meaning (for\ncustomers identified the green-gold color as Qualitex\xe2\x80\x99s), it\nidentifies the press pads\xe2\x80\x99 source. And, the green-gold color\nserves no other function. (Although it is important to use\nsome color on press pads to avoid noticeable stains, the\ncourt found \xe2\x80\x9cno competitive need in the press pad industry\nfor the green-gold color, since other colors are equally\nusable.\xe2\x80\x9d 21 U.S.P.Q.2d, at 1460, 1991 WL 318798.)\nAccordingly, unless there is some special reason that\nconvincingly militates against the use of color alone as a\ntrademark, trademark law would protect Qualitex\xe2\x80\x99s use of\nthe green-gold color on its press pads.\nIII\nRespondent Jacobson Products says that there are four\nspecial reasons why the law should forbid the use of color\nalone as a trademark. We shall explain, in turn, why we,\nultimately, find them unpersuasive.\nFirst, Jacobson says that, if the law permits the use of color\nas a trademark, it will produce uncertainty and unresolvable\ncourt disputes about what shades of a color a competitor\nmay lawfully use. Because lighting (morning sun, twilight\nmist) will affect perceptions of protected color, competitors\nand courts will suffer from \xe2\x80\x9cshade confusion\xe2\x80\x9d as they try to\ndecide whether use of a similar color on a similar product\ndoes, or does not, confuse customers and thereby infringe a\ntrademark. Jacobson adds that the \xe2\x80\x9cshade confusion\xe2\x80\x9d\nproblem is \xe2\x80\x9cmore difficult\xe2\x80\x9d and \xe2\x80\x9cfar different from\xe2\x80\x9d the\n\xe2\x80\x9cdetermination of the similarity of words or symbols.\xe2\x80\x9d\nBrief for Respondent 22.\n\n345\n\n\x0cWe do not believe, however, that color, in this respect, is\nspecial. Courts traditionally decide quite difficult questions\nabout whether two words or phrases or symbols are\nsufficiently similar, in context, to confuse buyers. They\nhave had to compare, for example, such words as\n\xe2\x80\x9cBonamine\xe2\x80\x9d\nand\n\xe2\x80\x9cDramamine\xe2\x80\x9d\n(motion-sickness\nremedies); \xe2\x80\x9cHuggies\xe2\x80\x9d and \xe2\x80\x9cDougies\xe2\x80\x9d (diapers); \xe2\x80\x9cCheracol\xe2\x80\x9d\nand \xe2\x80\x9cSyrocol\xe2\x80\x9d (cough syrup); \xe2\x80\x9cCyclone\xe2\x80\x9d and \xe2\x80\x9cTornado\xe2\x80\x9d\n(wire fences); and \xe2\x80\x9cMattres\xe2\x80\x9d and \xe2\x80\x9c1-800-Mattres\xe2\x80\x9d (mattress\nfranchisor telephone numbers). See, e.g., G.D. Searle & Co.\nv. Chas. Pfizer & Co., 265 F.2d 385, 389 (CA7 1959);\nKimberly-Clark Corp. v. H. Douglas Enterprises, Ltd., 774 F.2d\n1144, 1146-1147 (CA Fed.1985); Upjohn Co. v. Schwartz, 246\nF.2d 254, 262 (CA2 1957); Hancock v. American Steel & Wire\nCo., 40 C.C.P.A. of New Jersey, 931, 935 (Pat.), 203 F.2d\n737, 740-741 (1953); Dial-A-Mattress Franchise Corp. v. Page,\n880 F.2d 675, 678 (CA2 1989). Legal standards exist to\nguide courts in making such comparisons. See, e.g., 2\nMcCarthy \xc2\xa7 15.08; 1 McCarthy \xc2\xa7\xc2\xa7 11.24-11.25 (\xe2\x80\x9dStrong\xe2\x80\x9d\nmarks, with greater secondary meaning, receive broader\nprotection than \xe2\x80\x9cweak\xe2\x80\x9d marks). We do not see why courts\ncould not apply those standards to a color, replicating, if\nnecessary, lighting conditions under which a colored\nproduct is normally sold. See Ebert, Trademark Protection\nin Color: Do It By the Numbers!, 84 T.M.Rep. 379, 405\n(1994). Indeed, courts already have done so in cases where\na trademark consists of a color plus a design, i.e., a colored\nsymbol such as a gold stripe (around a sewer pipe), a yellow\nstrand of wire rope, or a \xe2\x80\x9cbrilliant yellow\xe2\x80\x9d band (on\nampules). See, e.g., Youngstown Sheet & Tube Co. v. Tallman\nConduit Co., 149 U.S.P.Q. 656, 657 (TTAB 1966); Amsted\nIndustries, Inc. v. West Coast Wire Rope & Rigging Inc., 2\nU.S.P.Q.2d 1755, 1760 (TTAB 1987); In re Hodes-Lange\nCorp., 167 U.S.P.Q. 255, 256 (TTAB 1970).\nSecond, Jacobson argues, as have others, that colors are in\nlimited supply. See, e.g., NutraSweet Co., 917 F.2d, at 1028;\n\n346\n\n\x0cCampbell Soup Co. v. Armour & Co., 175 F.2d 795, 798 (CA3\n1949). Jacobson claims that, if one of many competitors\ncan appropriate a particular color for use as a trademark,\nand each competitor then tries to do the same, the supply\nof colors will soon be depleted. Put in its strongest form,\nthis argument would concede that \xe2\x80\x9dhundreds of color\npigments are manufactured and thousands of colors can be\nobtained by mixing.\xe2\x80\x9d L. Cheskin, Colors: What They Can\nDo For You 47 (1947). But, it would add that, in the\ncontext of a particular product, only some colors are\nusable. By the time one discards colors that, say, for\nreasons of customer appeal, are not usable, and adds the\nshades that competitors cannot use lest they risk infringing\na similar, registered shade, then one is left with only a\nhandful of possible colors. And, under these circumstances,\nto permit one, or a few, producers to use colors as\ntrademarks will \xe2\x80\x9cdeplete\xe2\x80\x9d the supply of usable colors to the\npoint where a competitor\xe2\x80\x99s inability to find a suitable color\nwill put that competitor at a significant disadvantage.\nThis argument is unpersuasive, however, largely because it\nrelies on an occasional problem to justify a blanket\nprohibition. When a color serves as a mark, normally\nalternative colors will likely be available for similar use by\nothers. See, e.g., Owens-Corning, 774 F.2d, at 1121 (pink\ninsulation). Moreover, if that is not so \xe2\x80\x93 if a \xe2\x80\x9ccolor\ndepletion\xe2\x80\x9d or \xe2\x80\x9ccolor scarcity\xe2\x80\x9d problem does arise \xe2\x80\x93 the\ntrademark doctrine of \xe2\x80\x9cfunctionality\xe2\x80\x9d normally would seem\navailable to prevent the anticompetitive consequences that\nJacobson\xe2\x80\x99s argument posits, thereby minimizing that\nargument\xe2\x80\x99s practical force.\nThe functionality doctrine, as we have said, forbids the use\nof a product\xe2\x80\x99s feature as a trademark where doing so will\nput a competitor at a significant disadvantage because the\nfeature is \xe2\x80\x9cessential to the use or purpose of the article\xe2\x80\x9d or\n\xe2\x80\x9caffects its cost or quality.\xe2\x80\x9d Inwood Laboratories, Inc., 456\nU.S., at 850, n. 10, 102 S.Ct., at 2186, n. 10. The\n\n347\n\n\x0cfunctionality doctrine thus protects competitors against a\ndisadvantage (unrelated to recognition or reputation) that\ntrademark protection might otherwise impose, namely their\ninability reasonably to replicate important non-reputationrelated product features. For example, this Court has\nwritten that competitors might be free to copy the color of\na medical pill where that color serves to identify the kind of\nmedication (e.g., a type of blood medicine) in addition to its\nsource. See id., at 853, 858, n. 20, 102 S.Ct., at 2188, 2190,\nn. 20 (\xe2\x80\x9dSome patients commingle medications in a\ncontainer and rely on color to differentiate one from\nanother\xe2\x80\x9d); see also J. Ginsburg, D. Goldberg, & A.\nGreenbaum, Trademark and Unfair Competition Law 194195 (1991) (noting that drug color cases \xe2\x80\x9chave more to do\nwith public health policy\xe2\x80\x9d regarding generic drug\nsubstitution \xe2\x80\x9cthan with trademark law\xe2\x80\x9d). And, the federal\ncourts have demonstrated that they can apply this doctrine\nin a careful and reasoned manner, with sensitivity to the\neffect on competition. Although we need not comment on\nthe merits of specific cases, we note that lower courts have\npermitted competitors to copy the green color of farm\nmachinery (because customers wanted their farm\nequipment to match) and have barred the use of black as a\ntrademark on outboard boat motors (because black has the\nspecial functional attributes of decreasing the apparent size\nof the motor and ensuring compatibility with many\ndifferent boat colors). See Deere & Co. v. Farmhand, Inc., 560\nF.Supp. 85, 98 (SD Iowa 1982), aff\xe2\x80\x99d, 721 F.2d 253 (CA8\n1983); Brunswick Corp. v. British Seagull Ltd., 35 F.3d 1527,\n1532 (CA Fed.1994), cert. pending, No. 94-1075; see also\nNor-Am Chemical v. O.M. Scott & Sons Co., 4 U.S.P.Q.2d\n1316, 1320, 1987 WL 13742 (ED Pa.1987) (blue color of\nfertilizer held functional because it indicated the presence\nof nitrogen). The Restatement (Third) of Unfair\nCompetition adds that, if a design\xe2\x80\x99s \xe2\x80\x9caesthetic value\xe2\x80\x9d lies in\nits ability to \xe2\x80\x9cconfer a significant benefit that cannot\npractically be duplicated by the use of alternative designs,\xe2\x80\x9d\n\n348\n\n\x0cthen the design is \xe2\x80\x9cfunctional.\xe2\x80\x9d Restatement (Third) of\nUnfair Competition \xc2\xa7 17, Comment c, pp. 175-176 (1995).\nThe \xe2\x80\x9cultimate test of aesthetic functionality,\xe2\x80\x9d it explains, \xe2\x80\x9cis\nwhether the recognition of trademark rights would\nsignificantly hinder competition.\xe2\x80\x9d Id., at 176.\nThe upshot is that, where a color serves a significant\nnontrademark function \xe2\x80\x93 whether to distinguish a heart pill\nfrom a digestive medicine or to satisfy the \xe2\x80\x9cnoble instinct\nfor giving the right touch of beauty to common and\nnecessary things,\xe2\x80\x9d G.K. Chesterton, Simplicity and Tolstoy\n61 (1912) \xe2\x80\x93 courts will examine whether its use as a mark\nwould permit one competitor (or a group) to interfere with\nlegitimate (nontrademark-related) competition through\nactual or potential exclusive use of an important product\ningredient. That examination should not discourage firms\nfrom creating aesthetically pleasing mark designs, for it is\nopen to their competitors to do the same. See, e.g., W.T.\nRogers Co. v. Keene, 778 F.2d 334, 343 (CA7 1985) (Posner,\nJ.). But, ordinarily, it should prevent the anticompetitive\nconsequences of Jacobson\xe2\x80\x99s hypothetical \xe2\x80\x9ccolor depletion\xe2\x80\x9d\nargument, when, and if, the circumstances of a particular\ncase threaten \xe2\x80\x9ccolor depletion.\xe2\x80\x9d\nThird, Jacobson points to many older cases \xe2\x80\x93 including\nSupreme Court cases \xe2\x80\x93 in support of its position. In 1878,\nthis Court described the common-law definition of\ntrademark rather broadly to \xe2\x80\x9cconsist of a name, symbol,\nfigure, letter, form, or device, if adopted and used by a\nmanufacturer or merchant in order to designate the goods\nhe manufactures or sells to distinguish the same from those\nmanufactured or sold by another.\xe2\x80\x9d McLean v. Fleming, 96\nU.S. 245, 254, 24 L.Ed. 828. Yet, in interpreting the\nTrademark Acts of 1881 and 1905, 21 Stat. 502, 33 Stat.\n724, which retained that common-law definition, the Court\nquestioned \xe2\x80\x9dwhether mere color can constitute a valid\ntrade-mark,\xe2\x80\x9d A. Leschen & Sons Rope Co. v. Broderick &\nBascom Rope Co., 201 U.S. 166, 171, 26 S.Ct. 425, 426, 50\n\n349\n\n\x0cL.Ed. 710 (1906), and suggested that the \xe2\x80\x9cproduct\nincluding the coloring matter is free to all who make it.\xe2\x80\x9d\nCoca-Cola Co. v. Koke Co. of America, 254 U.S. 143, 147, 41\nS.Ct. 113, 114, 65 L.Ed. 189 (1920). Even though these\nstatements amounted to dicta, lower courts interpreted\nthem as forbidding protection for color alone. See, e.g.,\nCampbell Soup Co., 175 F.2d, at 798, and n. 9; Life Savers\nCorp. v. Curtiss Candy Co., 182 F.2d 4, 9 (CA7 1950) (quoting\nCampbell Soup ).\nThese Supreme Court cases, however, interpreted\ntrademark law as it existed b efore 1946, when Congress\nenacted the Lanham Act. The Lanham Act significantly\nchanged and liberalized the common law to \xe2\x80\x9cdispense with\nmere technical prohibitions,\xe2\x80\x9d S.Rep. No. 1333, 79th Cong.,\n2d Sess., 3 (1946), most notably, by permitting trademark\nregistration of descriptive words (say, \xe2\x80\x9cU-Build-It\xe2\x80\x9d model\nairplanes) where they had acquired \xe2\x80\x9csecondary meaning.\xe2\x80\x9d\nSee Abercrombie & Fitch Co., 537 F.2d, at 9 (Friendly, J.).\nThe Lanham Act extended protection to descriptive marks\nby making clear that (with certain explicit exceptions not\nrelevant here),\n\xe2\x80\x9cnothing \xe2\x80\xa6 shall prevent the\nregistration of a mark used by the\napplicant which has become distinctive\nof the applicant\xe2\x80\x99s goods in\ncommerce.\xe2\x80\x9d 15 U.S.C. \xc2\xa7 1052(f) (1988\ned., Supp. V).\nThis language permits an ordinary word, normally used for\na nontrademark purpose (e.g., description), to act as a\ntrademark where it has gained \xe2\x80\x9csecondary meaning.\xe2\x80\x9d Its\nlogic would appear to apply to color as well. Indeed, in\n1985, the Federal Circuit considered the significance of the\nLanham Act\xe2\x80\x99s changes as they related to color and held that\ntrademark protection for color was consistent with the\n\n350\n\n\x0c\xe2\x80\x9cjurisprudence under the Lanham Act\ndeveloped in accordance with the\nstatutory principle that if a mark is\ncapable of being or becoming\ndistinctive of the applicant\xe2\x80\x99s goods in\ncommerce, then it is capable of serving\nas a trademark.\xe2\x80\x9d Owens-Corning, 774\nF.2d, at 1120.\nIn 1988 Congress amended the Lanham Act, revising\nportions of the definitional language, but left unchanged\nthe language here relevant. \xc2\xa7 134, 102 Stat. 3946, 15 U.S.C.\n\xc2\xa7 1127. It enacted these amendments against the following\nbackground: (1) the Federal Circuit had decided OwensCorning; (2) the Patent and Trademark Office had adopted a\nclear policy (which it still maintains) permitting registration\nof color as a trademark, see PTO Manual \xc2\xa7 1202.04(e) (at p.\n1200-12 of the January 1986 edition and p. 1202-13 of the\nMay 1993 edition); and (3) the Trademark Commission had\nwritten a report, which recommended that \xe2\x80\x9cthe terms\n\xe2\x80\x98symbol, or device\xe2\x80\x99 \xe2\x80\xa6 not be deleted or narrowed to\npreclude registration of such things as a color, shape, smell,\nsound, or configuration which functions as a mark,\xe2\x80\x9d The\nUnited States Trademark Association Trademark Review\nCommission Report and Recommendations to USTA\nPresident and Board of Directors, 77 T.M.Rep. 375, 421\n(1987) (hereinafter Trademark Commission); see also 133\nCong.Rec. 32812 (1987) (statement of Sen. DeConcini)\n(\xe2\x80\x9cThe bill I am introducing today is based on the\nCommission\xe2\x80\x99s report and recommendations\xe2\x80\x9d). This\nbackground strongly suggests that the language \xe2\x80\x9cany word,\nname, symbol, or device,\xe2\x80\x9d 15 U.S.C. \xc2\xa7 1127, had come to\ninclude color. And, when it amended the statute, Congress\nretained these terms. Indeed, the Senate Report\naccompanying the Lanham Act revision explicitly referred\nto this background understanding, in saying that the\n\xe2\x80\x9crevised definition intentionally retains \xe2\x80\xa6 the words\n\xe2\x80\x98symbol or device\xe2\x80\x99 so as not to preclude the registration of\n\n351\n\n\x0ccolors, shapes, sounds or configurations where they\nfunction as trademarks.\xe2\x80\x9d S.Rep. No. 100-515, at 44\nU.S.Code Cong. & Admin.News, 1988, p. 5607. (In\naddition, the statute retained language providing that \xe2\x80\x9dno\ntrademark by which the goods of the applicant may be\ndistinguished from the goods of others shall be refused\nregistration \xe2\x80\xa6 on account of its nature\xe2\x80\x9d (except for certain\nspecified reasons not relevant here). 15 U.S.C. \xc2\xa7 1052 (1988\ned., Supp. V)).\nThis history undercuts the authority of the precedent on\nwhich Jacobson relies. Much of the pre-1985 case law\nrested on statements in Supreme Court opinions that\ninterpreted pre-Lanham Act trademark law and were not\ndirectly related to the holdings in those cases. Moreover, we\nbelieve the Federal Circuit was right in 1985 when it found\nthat the 1946 Lanham Act embodied crucial legal changes\nthat liberalized the law to permit the use of color alone as a\ntrademark (under appropriate circumstances). At a\nminimum, the Lanham Act\xe2\x80\x99s changes left the courts free to\nreevaluate the preexisting legal precedent which had\nabsolutely forbidden the use of color alone as a trademark.\nFinally, when Congress re-enacted the terms \xe2\x80\x9cword, name,\nsymbol, or device\xe2\x80\x9d in 1988, it did so against a legal\nbackground in which those terms had come to include\ncolor, and its statutory revision embraced that\nunderstanding.\nFourth, Jacobson argues that there is no need to permit\ncolor alone to function as a trademark because a firm\nalready may use color as part of a trademark, say, as a\ncolored circle or colored letter or colored word, and may\nrely upon \xe2\x80\x9ctrade dress\xe2\x80\x9d protection, under \xc2\xa7 43(a) of the\nLanham Act, if a competitor copies its color and thereby\ncauses consumer confusion regarding the overall\nappearance of the competing products or their packaging,\nsee 15 U.S.C. \xc2\xa7 1125(a) (1988 ed., Supp. V). The first part\nof this argument begs the question. One can understand\n\n352\n\n\x0cwhy a firm might find it difficult to place a usable symbol\nor word on a product (say, a large industrial bolt that\ncustomers normally see from a distance); and, in such\ninstances, a firm might want to use color, pure and simple,\ninstead of color as part of a design. Neither is the second\nportion of the argument convincing. Trademark law helps\nthe holder of a mark in many ways that \xe2\x80\x9ctrade dress\xe2\x80\x9d\nprotection does not. See 15 U.S.C. \xc2\xa7 1124 (ability to\nprevent importation of confusingly similar goods); \xc2\xa7 1072\n(constructive notice of ownership); \xc2\xa7 1065 (incontestible\nstatus); \xc2\xa7 1057(b) (prima facie evidence of validity and\nownership). Thus, one can easily find reasons why the law\nmight provide trademark protection in addition to trade\ndress protection.\nIV\nHaving determined that a color may sometimes meet the\nbasic legal requirements for use as a trademark and that\nrespondent Jacobson\xe2\x80\x99s arguments do not justify a special\nlegal rule preventing color alone from serving as a\ntrademark (and, in light of the District Court\xe2\x80\x99s here\nundisputed findings that Qualitex\xe2\x80\x99s use of the green-gold\ncolor on its press pads meets the basic trademark\nrequirements), we conclude that the Ninth Circuit erred in\nbarring Qualitex\xe2\x80\x99s use of color as a trademark. For these\nreasons, the judgment of the Ninth Circuit is\nReversed.\nVirtual Works, Inc. v. Volkswagen of America, Inc.,\n238 F.3d 264 (4th Cir. 2001)\nWilliam Herbert Bode, BODE & BECKMAN, L.L.P.,\nWashington, D.C., for Appellant.\nThomas Rex Lee, HOWARD, PHILLIPS & ANDERSEN,\nP.C., Salt Lake City, Utah, for Appellees.\n\n353\n\n\x0cBefore WILKINSON, Chief Judge, and MICHAEL and\nTRAXLER, Circuit Judges.\nWILKINSON, Chief Judge:\nVolkswagen challenges Virtual Works, Inc.\xe2\x80\x99s use of the\ndomain name vw.net under the 1999 Anticybersquatting\nConsumer Protection Act (ACPA). Volkswagen claims that\nVirtual Works registered vw.net with the purpose of one\nday selling it to Volkswagen. The district court agreed,\nholding that Virtual Works had a bad faith intent to profit\nfrom the vw.net domain name and that its use of vw.net\ndiluted and infringed upon the VW mark. Virtual Works,\nInc. v. Network Solutions, Inc., 106 F. Supp.2d 845 (E.D.\nVa. 2000). The district court therefore ordered Virtual\nWorks to relinquish to Volkswagen the rights to vw.net.\nBecause the district court did not err in holding that Virtual\nWorks violated the ACPA, we affirm the judgment.\nI.\nOn October 23, 1996, Virtual Works registered the domain\nname vw.net with Network Solutions, Inc. (NSI). At that\ntime, NSI was the only company authorized by the\ngovernment to serve as a registrar for Internet domain\nnames. A domain name tells users where they can find a\nparticular web page, much like a street address tells people\nwhere they can find a particular home or business. Domain\nnames consist of two parts: the top level domain name\n(TLD) and secondary level domain name (SLD). The TLD\nis the suffix, identifying the nature of the site. The SLD is\nthe prefix, identifying the site\xe2\x80\x99s owner. Thus in the domain\nname Duke.edu, \xe2\x80\x9c.edu\xe2\x80\x9d is the TLD, identifying the site as\naffiliated with an educational institution. \xe2\x80\x9cDuke\xe2\x80\x9d is the\nSLD, identifying the owner as Duke University. There are\nvarious other TLDs. The most common are .com, .net, and\n.org for commercial users and .gov for governmental\nentities. At one point there was a distinction between the\n\n354\n\n\x0c.com, .org, and .net TLDs. The .net TLD was reserved for\nInternet service providers (ISPs). The .org TLD was\nreserved for non-commercial or non-profit users. In\nSeptember 1995, however, NSI stopped enforcing these\ndistinctions. Thus, after 1995, commercial businesses could\nregister domain names with the .net, .org, or .com TLD.\nAt the time Virtual Works registered vw.net, two of its\nprincipals, Christopher Grimes and James Anderson, were\naware that some Internet users might think that vw.net was\naffiliated with Volkswagen. According to Grimes, he and\nAnderson \xe2\x80\x9ctalked about Volkswagen and decided that\n[they] would use the domain name for [the] company, but if\nVolkswagen offered to work out a deal for services or\nproducts, that [they] would sell it to [Volkswagen] for a lot\nof money.\xe2\x80\x9d When Virtual Works registered vw.net , many\nother domain names were available for its use. For instance,\nvwi.net, vwi.org, virtual works. net, and virtual works. org,\nwere still available.\nVirtual Works used the vw.net domain name for\napproximately two years as a part of its ISP business. In\nDecember 1998, various Volkswagen dealerships contacted\nVirtual Works and expressed an interest in purchasing the\nrights to the vw.net domain name. Virtual Works, in turn,\ncalled Volkswagen, offering to sell vw.net. The terms of\nVirtual Works\xe2\x80\x99 offer, however, were somewhat unusual.\nAnderson left a voice mail message for Linda Scipione in\nVolkswagen\xe2\x80\x99s trademark department. In the message,\nAnderson stated that he owned the rights to vw.net. He\nalso said that unless Volkswagen bought the rights to\nvw.net, Virtual Works would sell the domain name to the\nhighest bidder. Anderson gave Volkswagen twenty-four\nhours to respond.\nIn response to what it perceived as a threat to the VW\nmark, Volkswagen invoked NSI\xe2\x80\x99s dispute resolution\nprocedure. NSI in turn told Virtual Works that Virtual\nWorks would lose the vw.net domain name unless it filed a\n\n355\n\n\x0cdeclaratory judgment action against Volkswagen. Virtual\nWorks\ncomplied.\nVolkswagen\nsubsequently\ncounterclaimed, alleging trademark dilution, infringement,\nand cybersquatting under the ACPA. 15 U.S.C. \xc2\xa7 1125(d).\nThe district court granted Volkswagen\xe2\x80\x99s motion for\nsummary judgment on its cybersquatting, dilution, and\ninfringement counterclaims and dismissed Virtual Works\xe2\x80\x99\ncross-motions on the same. Accordingly, the district court\nordered Virtual Works to relinquish to Volkswagen the\nrights to the vw.net domain name. Virtual Works appeals.\nII.\nA.\nThe ACPA was enacted in 1999 in response to concerns\nover the proliferation of cybersquatting -the Internet\nversion of a land grab. According to the Senate Report\naccompanying the Act: \xe2\x80\x9cTrademark owners are facing a\nnew form of piracy on the Internet caused by acts of\n\xe2\x80\x98cybersquatting,\xe2\x80\x99 which refers to the deliberate, bad-faith,\nand abusive registration of Internet domain names in\nviolation of the rights of trademark owners.\xe2\x80\x9d S. Rep. No.\n106-140, at 4 (1999). Cybersquatting is the practice of\nregistering \xe2\x80\x9cwell-known brand names as Internet domain\nnames\xe2\x80\x9d in order to force the rightful owners of the marks\n\xe2\x80\x9cto pay for the right to engage in electronic commerce\nunder their own brand name.\xe2\x80\x9d Id. at 5. See also H.R. Rep.\nNo. 106-412, at 5-7 (1999). Cybersquatting is profitable\nbecause while it is inexpensive for a cybersquatter to\nregister the mark of an established company as a domain\nname, such companies are often vulnerable to being forced\ninto paying substantial sums to get their names back.\nSporty\xe2\x80\x99s Farm, L.L.C. v. Sportsman\xe2\x80\x99s Market, Inc., 202 F.3d\n489, 493 (2d Cir. 2000).\nCongress viewed the practice of cybersquatting as harmful\nbecause it threatened \xe2\x80\x9cthe continued growth and vitality of\n\n356\n\n\x0cthe Internet as a platform\xe2\x80\x9d for \xe2\x80\x9ccommunication, electronic\ncommerce, education, entertainment, and countless other\nyet-to-be-determined uses.\xe2\x80\x9d S. Rep. No. 106-140, at 8. New\nlegislation was required to address this situation because\nthen-current law did not expressly prohibit the act of\ncybersquatting and cybersquatters had started to take the\nnecessary precautions to insulate themselves from liability\nunder the Federal Trademark Dilution Act. Id. at 7.\nAccordingly, Congress passed, and the President signed,\nthe ACPA in 1999. Pub. L. No. 106-113, 113 Stat. 1536\n(codified at 15 U.S.C. \xc2\xa7 1125(d)).\nB.\nUnder the ACPA, a person alleged to be a cybersquatter is\nliable to the owner of a protected mark if that person:\n(i) has a bad faith intent to profit from\nthat mark \xe2\x80\xa6; and\n(ii) registers, traffics in, or uses a\ndomain name that-(I) in the case of a\nmark that is distinctive \xe2\x80\xa6, is identical\nor confusingly similar to that mark;(II)\nin the case of a famous mark \xe2\x80\xa6, is\nidentical or confusingly similar to or\ndilutive of that mark;\n15 U.S.C. \xc2\xa7 1125(d)(1)(A). With respect to the bad faith\ndetermination, the statute provides that:\n(B)(i) In determining whether a person\nhas a bad faith intent \xe2\x80\xa6 a court may\nconsider factors such as, but not\nlimited to\n(I) the trademark or other\nintellectual property rights of the\nperson, if any, in the domain\nname;\n\n357\n\n\x0c(II) the extent to which the\ndomain name consists of the legal\nname of the person or a name\nthat is otherwise commonly used\nto identify that person;\n(III) the person\xe2\x80\x99s prior use, if any,\nof the domain name in\nconnection with the bona fide\noffering of any goods or services;\n(IV) the person\xe2\x80\x99s bona fide\nnoncommercial or fair use of the\nmark in a site accessible under the\ndomain name;\n(V) the person\xe2\x80\x99s intent to divert\nconsumers from the mark\nowner\xe2\x80\x99s online location to a site\n\xe2\x80\xa6 that could harm the goodwill\nrepresented by the mark, either\nfor commercial gain or with the\nintent to tarnish or disparage the\nmark \xe2\x80\xa6;\n(VI) the person\xe2\x80\x99s offer to\ntransfer, sell, or otherwise assign\nthe domain name to the mark\nowner or any third party for\nfinancial gain without having\nused \xe2\x80\xa6 the domain name in the\nbona fide offering of any goods\nor services \xe2\x80\xa6;\n(VII) the person\xe2\x80\x99s provision of\nmaterial and misleading false\ncontact\ninformation\nwhen\napplying for the registration of\nthe domain name \xe2\x80\xa6;\n\n358\n\n\x0c(VIII) the person\xe2\x80\x99s registration or\nacquisition of multiple domain\nnames which the person knows\nare identical or confusingly\nsimilar to marks of others \xe2\x80\xa6; and\n(IX) the extent to which the mark\nincorporated in the person\xe2\x80\x99s\ndomain name registration is or is\nnot distinctive and famous \xe2\x80\xa6 .\n15 U.S.C. \xc2\xa7 1125(d)(1)(B)(i). In addition to listing these nine\nfactors, the Act contains a safe harbor. The safe harbor\nprovision states that bad faith intent \xe2\x80\x9cshall not be found in\nany case in which the court determines that the person\nbelieved and had reasonable grounds to believe that the use\nof the domain name was fair use or otherwise lawful.\xe2\x80\x9d 15\nU.S.C. \xc2\xa7 1225(d)(1)(B)(ii).\nA court is not limited to considering these nine factors\nwhen determining the presence or absence of bad faith. 15\nU.S.C. \xc2\xa7 1125(d)(1)(B)(i). The Second Circuit, in the first\ncourt of appeals case addressing the ACPA, noted that the\nmost important grounds for finding bad faith \xe2\x80\x9care the\nunique circumstances of th[e] case, which do not fit neatly\ninto the specific factors enumerated by Congress but may\nnevertheless be considered under the statute.\xe2\x80\x9d Sporty\xe2\x80\x99s\nFarm, 202 F.3d at 499.\nThe remedies available under the ACPA depend on when\nthe unlawful activity took place. A person who unlawfully\nregisters, traffics in, or uses a domain name after the\nACPA\xe2\x80\x99s date of enactment, November 29, 1999, can be\nliable for monetary damages under 15 U.S.C. \xc2\xa7 1117(d) and\ncan have the domain name transferred to the owner of the\nmark or canceled under 15 U.S.C. \xc2\xa7 1125(d)(2)(D)(i). The\nonly remedy available for ACPA violations that occurred\nbefore November 29, 1999, however, is to have the domain\nname transferred to the owner of the mark or canceled.\n\n359\n\n\x0cAnticybersquatting Consumer Protection Act, Pub. L. No.\n106-113, \xc2\xa7 3010, 113 Stat. 1536. Since Virtual Works\xe2\x80\x99\nalleged cybersquatting occurred before the ACPA\xe2\x80\x99s date of\nenactment, Volkswagen sought only the right to use vw.net\nfor itself.\nIII.\nHaving discussed the statutory purpose and framework of\nthe ACPA, we must now determine whether Virtual Works\nviolated the Act. The district court found that a number of\nthe ACPA\xe2\x80\x99s nine bad faith factors supported Volkswagen\xe2\x80\x99s\nclaim that Virtual Works\xe2\x80\x99 registration of vw.net constituted\ncybersquatting under the Act. Virtual Works, 106 F.\nSupp.2d at 848. With respect to the first and second\nfactors, for example, the district court held that Virtual\nWorks had no right to or interest in the VW mark and that\nVirtual Works had never been referred to or done business\nunder the name VW. Id. at 847. With respect to the fifth\nfactor, the district court held that the disparaging\ncomments posted by Virtual Works harmed the goodwill of\nthe VW mark. Id. Finally, the district court found that,\nunder the ninth factor, the famousness of the VW mark\nalso favored Volkswagen. Id. The district court thus\ngranted summary judgment to Volkswagen, which we\nreview de novo.\nA.\nThe first inquiry under the ACPA is whether Virtual Works\nacted with a bad faith intent to profit from a protected\nmark. 15 U.S.C. \xc2\xa7 1125(d)(1)(A)(i). Virtual Works claims\nthat the district court erred in holding that it did. We need\nnot, however, march through the nine factors seriatim\nbecause the ACPA itself notes that use of the listed criteria\nis permissive. As the Second Circuit noted in Sporty\xe2\x80\x99s\nFarms, the factors are \xe2\x80\x9cexpressly described as indicia that\n\n360\n\n\x0c\xe2\x80\x98may\xe2\x80\x99 be considered along with other facts.\xe2\x80\x9d 202 F.3d at\n498 (citing 15 U.S.C. \xc2\xa7 1125(d)(1)(B)(i)).\nWe are mindful that the instant case comes to us on\nsummary judgment and involves a contested determination\nof Virtual Works\xe2\x80\x99 intent. Unfortunately for Virtual Works,\nhowever, there is both circumstantial and direct evidence\nestablishing bad faith. The following uncontested facts all\nprovide circumstantial evidence of Virtual Works\xe2\x80\x99 bad faith\nwith respect to the VW mark: 1) the famousness of the VW\nmark; 2) the similarity of vw.net to the VW mark; 3) the\nadmission that Virtual Works never once did business as\nVW nor identified itself as such; and 4) the availability of\nvwi.org and vwi.net at the time Virtual Works registered\nvw.net. Notably, either of these domain names would have\nsatisfied Virtual Works\xe2\x80\x99 own stated criterion of registering a\ndomain name that used only two or three letters and would\nhave eliminated any risk of confusion with respect to the\nVW mark.\nWe consider such circumstantial factors cautiously,\nhowever. We do not suggest that these four facts would\nalone resolve the question of Virtual Works\xe2\x80\x99 intent on\nsummary judgment. The fact that a domain resembles a\nfamous trademark, for example, hardly in and of itself\nestablishes bad faith. Moreover, domain names that are\nabbreviations of a company\xe2\x80\x99s formal name are quite\ncommon. To view the use of such names as tantamount to\nbad faith would chill Internet entrepreneurship with the\nprospect of endless litigation.\nVolkswagen, however, points to direct evidence regarding\nVirtual Works\xe2\x80\x99 intent -the statements made at registration.\nGrimes\xe2\x80\x99 deposition reveals that when registering vw.net, he\nand Anderson specifically acknowledged that vw.net might\nbe confused with Volkswagen by some Internet users. They\nnevertheless decided to register the address for their own\nuse, but left open the possibility of one day selling the site\nto Volkswagen \xe2\x80\x9cfor a lot of money.\xe2\x80\x9d Volkswagen claims\n\n361\n\n\x0cthat this is sufficient to establish bad faith registration in\nviolation of the ACPA.\nViewing the facts in the light most favorable to Virtual\nWorks, as we must on summary judgment, the statement at\nregistration establishes that Virtual Works had a dual\npurpose in selecting vw.net. Contrary to Virtual Works\xe2\x80\x99\nclaim, the fact that it used vw.net for two years as a part of\nan ISP business is not dispositive of the question of intent.\nVirtual Works chose vw.net over other domain names not\njust because \xe2\x80\x9cvw\xe2\x80\x9d reflected the company\xe2\x80\x99s own initials, but\nalso because it foresaw the ability to profit from the natural\nassociation of vw.net with the VW mark. Indeed, it is\nobvious even to a casual observer that the similarity\nbetween vw.net and the VW mark is overwhelming.\nMoreover, the facts in the summary judgment record\naffirmatively support the claim that Virtual Works had a\nbad faith intent to profit when it attempted to sell vw.net to\nVolkswagen. It is true that a mere offer to sell a domain\nname is not itself evidence of unlawful trafficking. H.R.\nConf. Rep. No. 106-464, at 111 (1999). The ACPA was not\nenacted to put an end to the sale of all domain names. This\ncase, however, involves much more than a plain vanilla\noffer to sell a domain name.\nIndeed, the second piece of direct evidence regarding\nVirtual Works\xe2\x80\x99 intent is the terms of its offer to\nVolkswagen. Virtual Works told Volkswagen that vw.net\nwould be sold to the highest bidder if Volkswagen did not\nmake an offer within twenty-four hours. Virtual Works also\nstated that others would jump at the chance to own a\nvaluable domain name like vw.net because Internet users\nwould instinctively associate the site with Volkswagen.\nVirtual Works knew, both when it registered vw.net and\nwhen it offered to sell the site, that consumers would\nassociate vw.net with Volkswagen. It sought to maximize\nthe advantage of this association by threatening to auction\noff the site. And it hoped that in an effort to protect its\n\n362\n\n\x0cmark, Volkswagen would respond with a hefty offer of its\nown.\nLikewise, Virtual Works cannot take refuge in the ACPA\xe2\x80\x99s\nsafe harbor provision. The safe harbor is only available\nwhen the defendant both \xe2\x80\x9cbelieved and had reasonable\ngrounds to believe that the use of the domain name was\nfair use or otherwise lawful.\xe2\x80\x9d 15 U.S.C. \xc2\xa7 1125(d)(1)(B)(ii).\nThe openly admitted hope of profiting from consumer\nconfusion of vw.net with the VW mark disqualifies Virtual\nWorks from the ACPA\xe2\x80\x99s safe harbor. A defendant who acts\neven partially in bad faith in registering a domain name is\nnot, as a matter of law, entitled to benefit from the Act\xe2\x80\x99s\nsafe harbor provision. Virtual Works knew it was\nregistering a domain name bearing strong resemblance to a\nfederally protected trademark. And it did so, at least in part,\nwith the idea of selling the site \xe2\x80\x9cfor a lot of money\xe2\x80\x9d to the\nmark\xe2\x80\x99s owner.\nJust as we are reluctant to interpret the ACPA\xe2\x80\x99s liability\nprovisions in an overly aggressive manner, we decline to\nconstrue the safe harbor so broadly as to undermine the\nrest of the statute. All but the most blatant cybersquatters\nwill be able to put forth at least some lawful motives for\ntheir behavior. To hold that all such individuals may qualify\nfor the safe harbor would frustrate Congress\xe2\x80\x99 purpose by\nartificially limiting the statute\xe2\x80\x99s reach. We do not think\nCongress intended the safe harbor to protect defendants\noperating, at least in part, with unlawful intent.\nThe ACPA allows a court to view the totality of the\ncircumstances in making the bad faith determination. 15\nU.S.C.S 1125(d)(1)(B)(i). Here, that means looking at the\npurely circumstantial indicia of bad faith, as well as the\ndirect evidence of the statements made at the time of\nregistration and the direct evidence regarding terms of the\nsale. Whether our decision would be the same in the\nabsence of any particular piece of evidence is a question we\nneed not address. Viewed in its totality, the evidence\n\n363\n\n\x0cestablishes that at the time Virtual Works proposed to sell\nvw.net to Volkswagen, it was motivated by a bad faith\nintent to profit from the famousness of the VW mark. This\nis the sort of misconduct that Congress sought to\ndiscourage.\nB.\nThe second inquiry under the ACPA is whether Virtual\nWorks 1) registered, trafficked in, or used a domain name;\n2) that is identical or confusingly similar to a distinctive\nmark; or 3) is identical, confusingly similar to, or dilutive of\na famous mark. 15 U.S.C. \xc2\xa7 1125(d)(1)(A)(ii). There is no\ndispute that Virtual Works registered, trafficked in, and\nused vw.net. There is also no dispute that the VW mark is\nfamous. The sole point of contention is whether vw.net is\nidentical, confusingly similar to, or dilutive of Volkswagen\xe2\x80\x99s\nfamous VW mark.\nVirtual Works claims it is not similar because there is a\ndistinction between the .net and .com TLD. According to\nVirtual Works, Volkswagen could not have registered\nvw.net in October of 1996 because it is an automaker and\nnot an Internet service provider. This claim, however, is\nunavailing in light of the fact that NSI stopped enforcing\nthe .com/.net distinction over a year before Virtual Works\nregistered vw.net. The claim is also undermined by Virtual\nWorks\xe2\x80\x99 admission that at the time of registration it was\naware of the potential confusion with the VW mark, and by\nits statement to Volkswagen that users would instinctively\nuse the vw.net address to link to Volkswagen\xe2\x80\x99s web site. Cf.\nShade\xe2\x80\x99s Landing, Inc. v. Williams , 76 F. Supp.2d 983, 990\n(D. Minn. 1999) (\xe2\x80\x9cBecause all domain names include one\nof these extensions, the distinction between a domain name\nending with \xe2\x80\x98.com\xe2\x80\x99 and the same name ending with \xe2\x80\x98.net\xe2\x80\x99 is\nnot highly significant.\xe2\x80\x9d). The district court was correct,\ntherefore, in holding that vw.net is confusingly similar to\nthe famous VW mark.\n\n364\n\n\x0cIV.\nThe remedy that Volkswagen sought in district court was\nthe right to use vw.net for itself. The ACPA allows a court\nto order \xe2\x80\x9cthe transfer of the domain name to the owner of\nthe mark\xe2\x80\x9d if the Act is violated. 15 U.S.C. \xc2\xa7\n1125(d)(2)(D)(i). Because Virtual Works\xe2\x80\x99 violation of the\nACPA supports the remedy Volkswagen seeks, we need\nnot address Volkswagen\xe2\x80\x99s claims of trademark infringement\nor dilution.\nThe ACPA was not enacted to give companies the right to\nfence off every possible combination of letters that bears\nany similarity to a protected mark. Rather, it was enacted to\nprevent the expropriation of protected marks in cyberspace\nand to abate the consumer confusion resulting therefrom.\nThe resolution of this case turns on the unique facts and\ncircumstances which it presents. Ultimately, we believe the\nevidence is sufficient to establish that, as a matter of law,\nVirtual Works attempted to profit in bad faith from\nVolkswagen\xe2\x80\x99s famous mark. 15 U.S.C. \xc2\xa7 1125(d)(1)(A). The\ndistrict court thus did not err in ordering Virtual Works to\nturn over vw.net to Volkswagen. For the foregoing reasons,\nwe affirm the judgment.\nProblems\nIf Qualitex developed a new material for their dryer pads that\nfeatured distinctive, small bumps that aid in the evenness of drying,\nQualitex \xe2\x80\xa6 (For each answer, state whether the resulting statement\nis true or false, with a very, very brief explanation.)\n(a) could trademark the bumpy pad.\n(b) would be barred from trademark because a bumpy texture is\nnot a word, name, symbol or device.\n(c) would be barred from trademark under the functionality\ndoctrine.\n\n365\n\n\x0c(d) would be barred from obtaining a patent for the texture itself,\nbecause the bumps aren\xe2\x80\x99t a \xe2\x80\x9cprocess,\xe2\x80\x9d under the patent statutes.\n(e) might be able to patent the process for creating the material\neven if materials featuring a similar texture are already on the\nmarket.\nAnswers\n(a) could trademark the bumpy pad.\nFalse. This is just a pure application of the functionality\ndoctrine - see below.\n(b) would be barred from trademark because a bumpy texture is\nnot a word, name, symbol or device.\nFalse. As Breyer stated in Qualitex, \xe2\x80\x9c[s]ince human beings\nmight use as a \xe2\x80\x98symbol\xe2\x80\x99 or \xe2\x80\x98device\xe2\x80\x99 almost anything at all that\nis capable of carrying meaning, this language, read literally, is\nnot restrictive.\xe2\x80\x9d Indeed, a bumpy texture is capable of carrying\nmeaning. Even the more demanding part of the statute might\nbe met here, since the bumpy texture quite possibly could be\nused to distinguish Qualitex as the source of the pads.\n(c) would be barred from trademark under the functionality\ndoctrine.\nTrue. The texture \xe2\x80\x9caid[s] in the evenness of drying.\xe2\x80\x9d Because\nthe texture results in a better performing pad, and thus\n\xe2\x80\x9caffects the \xe2\x80\xa6 quality\xe2\x80\x9d of the pad, the functionality doctrine\nwould bar trademark registration of the texture.\n(d) would be barred from obtaining a patent for the texture itself,\nbecause the bumps aren\xe2\x80\x99t a \xe2\x80\x9cprocess,\xe2\x80\x9d under the patent statutes.\nFalse. Even if the bumps aren\xe2\x80\x99t a \xe2\x80\x9cprocess,\xe2\x80\x9d they might be a\n\xe2\x80\x9cmanufacture\xe2\x80\x9d or \xe2\x80\x9ccomposition of matter,\xe2\x80\x9d and thus\npatentable subject matter under \xc2\xa7101 of the Patent Act. The\nAct allows one to patent inventions other than processes.\n\n366\n\n\x0c(e) might be able to patent the process for creating the material\neven if materials featuring a similar texture are already on the\nmarket.\nTrue. If similar materials are on the market already, then one\nwould not be able to patent the material itself. This is because\nthe material would not be novel, which is required to obtain a\npatent. However, if Qualitex has invented a new process for\ncreating a known material and that process otherwise meets\nthe novel and non-obvious requirements, then the process may\nbe patentable.\n3.3. Patents\nDiamond v. Chakrabarty, 447 U.S. 303 (1980)\nLawrence G. Wallace, Washington, D. C., for petitioner.\nEdward F. McKie, Jr., Washington, D. C., for respondent.\nMR. CHIEF JUSTICE BURGER delivered the opinion of the\nCourt.\nWe granted certiorari to determine whether a live, humanmade micro-organism is patentable subject matter under 35\nU.S.C. \xc2\xa7 101.\n\n367\n\n\x0cI\nIn 1972, respondent Chakrabarty, a microbiologist, filed a\npatent application, assigned to the General Electric Co. The\napplication asserted 36 claims related to Chakrabarty\xe2\x80\x99s\ninvention of \xe2\x80\x9ca bacterium from the genus Pseudomonas\ncontaining therein at least two stable energy-generating\nplasmids, each of said plasmids providing a separate\nhydrocarbon degradative pathway.\xe2\x80\x9d1 This human-made,\ngenetically engineered bacterium is capable of breaking\ndown multiple components of crude oil. Because of this\nproperty, which is possessed by no naturally occurring\nbacteria, Chakrabarty\xe2\x80\x99s invention is believed to have\nsignificant value for the treatment of oil spills.2\nChakrabarty\xe2\x80\x99s patent claims were of three types: first,\nprocess claims for the method of producing the bacteria;\nsecond, claims for an inoculum comprised of a carrier\nmaterial floating on water, such as straw, and the new\nbacteria; and third, claims to the bacteria themselves. The\npatent examiner allowed the claims falling into the first two\ncategories, but rejected claims for the bacteria. His decision\nrested on two grounds: (1) that micro-organisms are\n\nPlasmids are hereditary units physically separate from the chromosomes of the\ncell. In prior research, Chakrabarty and an associate discovered that plasmids\ncontrol the oil degradation abilities of certain bacteria. In particular, the two\nresearchers discovered plasmids capable of degrading camphor and octane, two\ncomponents of crude oil. In the work represented by the patent application at\nissue here, Chakrabarty discovered a process by which four different plasmids,\ncapable of degrading four different oil components, could be transferred to and\nmaintained stably in a single Pseudomonas bacterium, which itself has no capacity\nfor degrading oil.\n1\n\nAt present, biological control of oil spills requires the use of a mixture of\nnaturally occurring bacteria, each capable of degrading one component of the oil\ncomplex. In this way, oil is decomposed into simpler substances which can serve\nas food for aquatic life. However, for various reasons, only a portion of any such\nmixed culture survives to attack the oil spill. By breaking down multiple\ncomponents of oil, Chakrabarty\xe2\x80\x99s micro-organism promises more efficient and\nrapid oil-spill control.\n2\n\n368\n\n\x0c\xe2\x80\x9cproducts of nature,\xe2\x80\x9d and (2) that as living things they are\nnot patentable subject matter under 35 U.S.C. \xc2\xa7 101.\nChakrabarty appealed the rejection of these claims to the\nPatent Office Board of Appeals, and the Board affirmed\nthe Examiner on the second ground.3 Relying on the\nlegislative history of the 1930 Plant Patent Act, in which\nCongress extended patent protection to certain asexually\nreproduced plants, the Board concluded that \xc2\xa7 101 was not\nintended to cover living things such as these laboratory\ncreated micro-organisms.\nThe Court of Customs and Patent Appeals, by a divided\nvote, reversed on the authority of its prior decision in In re\nBergy, 563 F.2d 1031, 1038 (1977), which held that \xe2\x80\x9cthe fact\nthat microorganisms \xe2\x80\xa6 are alive \xe2\x80\xa6 [is] without legal\nsignificance\xe2\x80\x9d for purposes of the patent law.4 Subsequently,\nwe granted the Acting Commissioner of Patents and\nTrademarks\xe2\x80\x99 petition for certiorari in Bergy, vacated the\njudgment, and remanded the case \xe2\x80\x9cfor further\nconsideration in light of Parker v. Flook, 437 U.S. 584, [98\nS.Ct. 2522, 57 L.Ed.2d 451] (1978).\xe2\x80\x9d 438 U.S. 902, 98 S.Ct.\n3119, 57 L.Ed.2d 1145 (1978). The Court of Customs and\nPatent Appeals then vacated its judgment in Chakrabarty\nand consolidated the case with Bergy for reconsideration.\nAfter re-examining both cases in the light of our holding in\nFlook, that court, with one dissent, reaffirmed its earlier\njudgments. 596 F.2d 952 (1979).\nThe Commissioner of Patents and Trademarks again\nsought certiorari, and we granted the writ as to both Bergy\nand Chakrabarty. 444 U.S. 924, 100 S.Ct. 261, 62 L.Ed.2d\n\nThe Board concluded that the new bacteria were not \xe2\x80\x9cproducts of nature,\xe2\x80\x9d\nbecause Pseudomonas bacteria containing two or more different energy-generating\nplasmids are not naturally occurring.\n3\n\nBergy involved a patent application for a pure culture of the micro-organism\nStreptomyces vellosus found to be useful in the production of lincomycin, an\nantibiotic.\n4\n\n369\n\n\x0c180 (1979). Since then, Bergy has been dismissed as moot,\n444 U.S. 1028, 100 S.Ct. 696, 62 L.Ed.2d 664 (1980),\nleaving only Chakrabarty for decision.\nII\nThe Constitution grants Congress broad power to legislate\nto \xe2\x80\x9cpromote the Progress of Science and useful Arts, by\nsecuring for limited Times to Authors and Inventors the\nexclusive Right to their respective Writings and\nDiscoveries.\xe2\x80\x9d Art. I, \xc2\xa7 8, cl. 8. The patent laws promote this\nprogress by offering inventors exclusive rights for a limited\nperiod as an incentive for their inventiveness and research\nefforts. Kewanee Oil Co. v. Bicron Corp., 416 U.S. 470, 480481, 94 S.Ct. 1879, 1885-1886, 40 L.Ed.2d 315 (1974);\nUniversal Oil Co. v. Globe Co., 322 U.S. 471, 484, 64 S.Ct.\n1110, 1116, 88 L.Ed. 1399 (1944). The authority of\nCongress is exercised in the hope that \xe2\x80\x9c[t]he productive\neffort thereby fostered will have a positive effect on society\nthrough the introduction of new products and processes of\nmanufacture into the economy, and the emanations by way\nof increased employment and better lives for our citizens.\xe2\x80\x9d\nKewanee, supra, 416 U.S., at 480, 94 S.Ct., at 1885-86.\nThe question before us in this case is a narrow one of\nstatutory interpretation requiring us to construe 35 U.S.C. \xc2\xa7\n101, which provides:\nWhoever invents or discovers any new\nand\nuseful\nprocess,\nmachine,\nmanufacture, or composition of\nmatter, or any new and useful\nimprovement thereof, may obtain a\npatent therefor, subject to the\nconditions and requirements of this\ntitle.\n\n370\n\n\x0cSpecifically, we must determine whether respondent\xe2\x80\x99s\nmicro-organism constitutes a \xe2\x80\x9cmanufacture\xe2\x80\x9d or\n\xe2\x80\x9ccomposition of matter\xe2\x80\x9d within the meaning of the statute.5\nIII\nIn cases of statutory construction we begin, of course, with\nthe language of the statute. Southeastern Community College v.\nDavis, 442 U.S. 397, 405, 99 S.Ct. 2361, 2366, 60 L.Ed.2d\n980 (1979). And \xe2\x80\x9cunless otherwise defined, words will be\ninterpreted as taking their ordinary, contemporary common\nmeaning.\xe2\x80\x9d Perrin v. United States, 444 U.S. 37, 42, 100 S.Ct.\n311, 314, 62 L.Ed.2d 199 (1979). We have also cautioned\nthat courts \xe2\x80\x9cshould not read into the patent laws limitations\nand conditions which the legislature has not expressed.\xe2\x80\x9d\nUnited States v. Dubilier Condenser Corp., 289 U.S. 178, 199, 53\nS.Ct. 554, 561, 77 L.Ed. 1114 (1933).\nGuided by these canons of construction, this Court has\nread the term \xe2\x80\x9cmanufacture\xe2\x80\x9d in \xc2\xa7 101 in accordance with its\ndictionary definition to mean \xe2\x80\x9cthe production of articles for\nuse from raw or prepared materials by giving to these\nmaterials new forms, qualities, properties, or combinations,\nwhether by hand-labor or by machinery.\xe2\x80\x9d American Fruit\nGrowers, Inc. v. Brogdex Co., 283 U.S. 1, 11, 51 S.Ct. 328, 330,\n75 L.Ed. 801 (1931). Similarly, \xe2\x80\x9ccomposition of matter\xe2\x80\x9d has\nbeen construed consistent with its common usage to\ninclude \xe2\x80\x9call compositions of two or more substances and\n\xe2\x80\xa6 all composite articles, whether they be the results of\nchemical union, or of mechanical mixture, or whether they\nbe gases, fluids, powders or solids.\xe2\x80\x9d Shell Development Co. v.\nWatson, 149 F.Supp. 279, 280 (D.C.1957) (citing 1 A.\nDeller, Walker on Patents \xc2\xa7 14, p. 55 (1st ed. 1937)). In\nchoosing such expansive terms as \xe2\x80\x9cmanufacture\xe2\x80\x9d and\n\xe2\x80\x9ccomposition of matter,\xe2\x80\x9d modified by the comprehensive\nThis case does not involve the other \xe2\x80\x9cconditions and requirements\xe2\x80\x9d of the\npatent laws, such as novelty and nonobviousness. 35 U.S.C. \xc2\xa7\xc2\xa7 102, 103.\n5\n\n371\n\n\x0c\xe2\x80\x9cany,\xe2\x80\x9d Congress plainly contemplated that the patent laws\nwould be given wide scope.\nThe relevant legislative history also supports a broad\nconstruction. The Patent Act of 1793, authored by Thomas\nJefferson, defined statutory subject matter as \xe2\x80\x9cany new and\nuseful art, machine, manufacture, or composition of matter,\nor any new or useful improvement [thereof].\xe2\x80\x9d Act of Feb.\n21, 1793, \xc2\xa7 1, 1 Stat. 319. The Act embodied Jefferson\xe2\x80\x99s\nphilosophy that \xe2\x80\x9cingenuity should receive a liberal\nencouragement.\xe2\x80\x9d 5 Writings of Thomas Jefferson 75-76\n(Washington ed. 1871). See Graham v. John Deere Co., 383\nU.S. 1, 7-10, 86 S.Ct. 684, 688-690, 15 L.Ed.2d 545 (1966).\nSubsequent patent statutes in 1836, 1870, and 1874\nemployed this same broad language. In 1952, when the\npatent laws were recodified, Congress replaced the word\n\xe2\x80\x9cart\xe2\x80\x9d with \xe2\x80\x9cprocess,\xe2\x80\x9d but otherwise left Jefferson\xe2\x80\x99s language\nintact. The Committee Reports accompanying the 1952 Act\ninform us that Congress intended statutory subject matter\nto \xe2\x80\x9cinclude anything under the sun that is made by man.\xe2\x80\x9d\nS.Rep.No.1979, 82d Cong., 2d Sess., 5 (1952);\nH.R.Rep.No.1923, 82d Cong., 2d Sess., 6 (1952).6\nThis is not to suggest that \xc2\xa7 101 has no limits or that it\nembraces every discovery. The laws of nature, physical\nphenomena, and abstract ideas have been held not\npatentable. See Parker v. Flook, 437 U.S. 584, 98 S.Ct. 2522,\n57 L.Ed.2d 451 (1978); Gottschalk v. Benson, 409 U.S. 63, 67,\n93 S.Ct. 253, 255, 34 L.Ed.2d 273 (1972); Funk Brothers Seed\nCo. v. Kalo Inoculant Co., 333 U.S. 127, 130, 68 S.Ct. 440, 441,\n92 L.Ed. 588 (1948); O\xe2\x80\x99Reilly v. Morse, 15 How. 62, 112-121,\n14 L.Ed. 601 (1854); Le Roy v. Tatham, 14 How. 156, 175,\n\nThis same language was employed by P. J. Federico, a principal draftsman of the\n1952 recodification, in his testimony regarding that legislation: \xe2\x80\x9c[U]nder section\n101 a person may have invented a machine or a manufacture, which may include\nanything under the sun that is made by man\xe2\x80\xa6 . \xe2\x80\x9d Hearings on H.R. 3760 before\nSubcommittee No. 3 of the House Committee on the Judiciary, 82d Cong., 1st\nSess., 37 (1951).\n6\n\n372\n\n\x0c14 L.Ed. 367 (1853). Thus, a new mineral discovered in the\nearth or a new plant found in the wild is not patentable\nsubject matter. Likewise, Einstein could not patent his\ncelebrated law that E=mc7; nor could Newton have\npatented the law of gravity. Such discoveries are\n\xe2\x80\x9cmanifestations of \xe2\x80\xa6 nature, free to all men and reserved\nexclusively to none.\xe2\x80\x9d Funk, supra, 333 U.S., at 130, 68 S.Ct.,\nat 441.\nJudged in this light, respondent\xe2\x80\x99s micro-organism plainly\nqualifies as patentable subject matter. His claim is not to a\nhitherto unknown natural phenomenon, but to a\nnonnaturally occurring manufacture or composition of\nmatter \xe2\x80\x93 a product of human ingenuity \xe2\x80\x9chaving a distinctive\nname, character [and] use.\xe2\x80\x9d Hartranft v. Wiegmann, 121 U.S.\n609, 615, 7 S.Ct. 1240, 1243, 30 L.Ed. 1012 (1887). The\npoint is underscored dramatically by comparison of the\ninvention here with that in Funk. There, the patentee had\ndiscovered that there existed in nature certain species of\nroot-nodule bacteria which did not exert a mutually\ninhibitive effect on each other. He used that discovery to\nproduce a mixed culture capable of inoculating the seeds of\nleguminous plants. Concluding that the patentee had\ndiscovered \xe2\x80\x9conly some of the handiwork of nature,\xe2\x80\x9d the\nCourt ruled the product non-patentable:\n\n7\n\nThe Plant Patent Act of 1930, 35 U.S.C. \xc2\xa7 161, provides in relevant part:\nWhoever invents or discovers and asexually reproduces\nany distinct and new variety of plant, including cultivated\nsports, mutants, hybrids, and newly found seedlings, other\nthan a tuber propogated plant or a plant found in an\nuncultivated state, may obtain a patent therefor \xe2\x80\xa6 .\n\nThe Plant Variety Protection Act of 1970, provides in relevant part:\nThe breeder of any novel variety of sexually reproduced\nplant (other than fungi, bacteria, or first generation\nhybrids) who has so reproduced the variety, or his\nsuccessor in interest, shall be entitled to plant variety\nprotection therefor \xe2\x80\xa6 .\n84 Stat. 1547, 7 U.S.C. \xc2\xa7 2402(a). See generally, 3 A. Deller, Walker on Patents, ch.\nIX (2d ed. 1964); R. Allyn, The First Plant Patents (1934).\n\n373\n\n\x0cEach of the species of root-nodule\nbacteria contained in the package\ninfects the same group of leguminous\nplants which it always infected. No\nspecies acquires a different use. The\ncombination of species produces no\nnew bacteria, no change in the six\nspecies of bacteria, and no\nenlargement of the range of their\nutility. Each species has the same\neffect it always had. The bacteria\nperform in their natural way. Their use\nin combination does not improve in\nany way their natural functioning. They\nserve the ends nature originally\nprovided and act quite independently\nof any effort of the patentee.\n333 U.S., at 131, 68 S.Ct., at 442.\nHere, by contrast, the patentee has produced a new\nbacterium with markedly different characteristics from any\nfound in nature and one having the potential for significant\nutility. His discovery is not nature\xe2\x80\x99s handiwork, but his\nown; accordingly it is patentable subject matter under \xc2\xa7\n101.\nIV\nTwo contrary arguments are advanced, neither of which we\nfind persuasive.\n(A)\nThe petitioner\xe2\x80\x99s first argument rests on the enactment of\nthe 1930 Plant Patent Act, which afforded patent\nprotection to certain asexually reproduced plants, and the\n1970 Plant Variety Protection Act, which authorized\nprotection for certain sexually reproduced plants but\n\n374\n\n\x0cexcluded bacteria from its protection.8 In the petitioner\xe2\x80\x99s\nview, the passage of these Acts evidences congressional\nunderstanding that the terms \xe2\x80\x9cmanufacture\xe2\x80\x9d or\n\xe2\x80\x9ccomposition of matter\xe2\x80\x9d do not include living things; if\nthey did, the petitioner argues, neither Act would have been\nnecessary.\nWe reject this argument. Prior to 1930, two factors were\nthought to remove plants from patent protection. The first\nwas the belief that plants, even those artificially bred, were\nproducts of nature for purposes of the patent law. This\nposition appears to have derived from the decision of the\npatent office in Ex parte Latimer, 1889 Dec.Com.Pat. 123, in\nwhich a patent claim for fiber found in the needle of the\nPinus australis was rejected. The Commissioner reasoned\nthat a contrary result would permit \xe2\x80\x9cpatents [to] be\nobtained upon the trees of the forest and the plants of the\nearth, which of course would be unreasonable and\nimpossible.\xe2\x80\x9d Id., at 126. The Latimer case, it seems, came to\n\xe2\x80\x9cse[t] forth the general stand taken in these matters\xe2\x80\x9d that\nplants were natural products not subject to patent\nprotection. Thorne, Relation of Patent Law to Natural\nProducts, 6 J. Pat.Off.Soc. 23, 24 (1923).9 The second\nobstacle to patent protection for plants was the fact that\nplants were thought not amenable to the \xe2\x80\x9cwritten\ndescription\xe2\x80\x9d requirement of the patent law. See 35 U.S.C. \xc2\xa7\n112. Because new plants may differ from old only in color\n\nWriting three years after the passage of the 1930 Act, R. Cook, Editor of the\nJournal of Heredity, commented: \xe2\x80\x9cIt is a little hard for plant men to understand\nwhy [Art. I, \xc2\xa7 8] of the Constitution should not have been earlier construed to\ninclude the promotion of the art of plant breeding. The reason for this is probably\nto be found in the principle that natural products are not patentable.\xe2\x80\x9d Florists\nExchange and Horticultural Trade World, July 15, 1933, p. 9.\n8\n\nIn 1873, the Patent Office granted Louis Pasteur a patent on \xe2\x80\x9cyeast, free from\norganic germs of disease, as an article of manufacture.\xe2\x80\x9d And in 1967 and 1968,\nimmediately prior to the passage of the Plant Variety Protection Act, that Office\ngranted two patents which, as the petitioner concedes, state claims for living\nmicro-organisms. See Reply Brief for Petitioner 3, and n. 2.\n9\n\n375\n\n\x0cor perfume, differentiation by written description was often\nimpossible. See Hearings on H.R.11372 before the House\nCommittee on Patents, 71st Cong., 2d Sess. 7 (1930)\n(memorandum of Patent Commissioner Robertson).\nIn enacting the Plant Patent Act, Congress addressed both\nof these concerns. It explained at length its belief that the\nwork of the plant breeder \xe2\x80\x9cin aid of nature\xe2\x80\x9d was patentable\ninvention. S.Rep.No.315, 71st Cong., 2d Sess., 6-8 (1930);\nH.R.Rep.No.1129, 71st Cong., 2d Sess., 7-9 (1930). And it\nrelaxed the written description requirement in favor of \xe2\x80\x9ca\ndescription \xe2\x80\xa6 as complete as is reasonably possible.\xe2\x80\x9d 35\nU.S.C. \xc2\xa7 162. No Committee or Member of Congress,\nhowever, expressed the broader view, now urged by the\npetitioner, that the terms \xe2\x80\x9cmanufacture\xe2\x80\x9d or \xe2\x80\x9ccomposition\nof matter\xe2\x80\x9d exclude living things. The sole support for that\nposition in the legislative history of the 1930 Act is found\nin the conclusory statement of Secretary of Agriculture\nHyde, in a letter to the Chairmen of the House and Senate\nCommittees considering the 1930 Act, that \xe2\x80\x9cthe patent laws\n\xe2\x80\xa6 at the present time are understood to cover only\ninventions or discoveries in the field of inanimate nature.\xe2\x80\x9d\nSee S.Rep.No.315, supra, at Appendix A; H.R.Rep.No.1129,\nsupra, at Appendix A. Secretary Hyde\xe2\x80\x99s opinion, however, is\nnot entitled to controlling weight. His views were solicited\non the administration of the new law and not on the scope\nof patentable subject matter \xe2\x80\x93 an area beyond his\ncompetence. Moreover, there is language in the House and\nSenate Committee Reports suggesting that to the extent\nCongress considered the matter it found the Secretary\xe2\x80\x99s\ndichotomy unpersuasive. The Reports observe:\nThere is a clear and logical distinction\nbetween the discovery of a new variety of plant\nand of certain inanimate things, such, for\nexample, as a new and useful natural\nmineral. The mineral is created wholly\nby nature unassisted by man\xe2\x80\xa6 . On\n\n376\n\n\x0cthe other hand, a plant discovery\nresulting from cultivation is unique,\nisolated, and is not repeated by nature,\nnor can it be reproduced by nature\nunaided by man\xe2\x80\xa6 .\nS.Rep.No.315, supra, at 6; H.R.Rep.No.1129,supra, at 7\n(emphasis added).\nCongress thus recognized that the relevant distinction was\nnot between living and inanimate things, but between\nproducts of nature, whether living or not, and human-made\ninventions. Here, respondent\xe2\x80\x99s micro-organism is the result\nof human ingenuity and research. Hence, the passage of the\nPlant Patent Act affords the Government no support.\nNor does the passage of the 1970 Plant Variety Protection\nAct support the Government\xe2\x80\x99s position. As the\nGovernment acknowledges, sexually reproduced plants\nwere not included under the 1930 Act because new\nvarieties could not be reproduced true-to-type through\nseedlings. Brief for Petitioner 27, n. 31. By 1970, however,\nit was generally recognized that true-to-type reproduction\nwas possible and that plant patent protection was therefore\nappropriate. The 1970 Act extended that protection. There\nis nothing in its language or history to suggest that it was\nenacted because \xc2\xa7 101 did not include living things.\nIn particular, we find nothing in the exclusion of bacteria\nfrom plant variety protection to support the petitioner\xe2\x80\x99s\nposition. See n. 7, supra. The legislative history gives no\nreason for this exclusion. As the Court of Customs and\nPatent Appeals suggested, it may simply reflect\ncongressional agreement with the result reached by that\ncourt in deciding In re Arzberger, 27 C.C.P.A. (Pat.) 1315,\n112 F.2d 834 (1940), which held that bacteria were not\nplants for the purposes of the 1930 Act. Or it may reflect\nthe fact that prior to 1970 the Patent Office had issued\n\n377\n\n\x0cpatents for bacteria under \xc2\xa7 101.10 In any event, absent\nsome clear indication that Congress \xe2\x80\x9cfocused on [the]\nissues \xe2\x80\xa6 directly related to the one presently before the\nCourt,\xe2\x80\x9d SEC v. Sloan, 436 U.S. 103, 120-121, 98 S.Ct. 1702,\n1713, 56 L.Ed.2d 148 (1978), there is no basis for reading\ninto its actions an intent to modify the plain meaning of the\nwords found in \xc2\xa7 101. See TVA v. Hill, 437 U.S. 153, 189193, 98 S.Ct. 2279, 2299-2301, 57 L.Ed.2d 117 (1978);\nUnited States v. Price, 361 U.S. 304, 313, 80 S.Ct. 326, 331, 4\nL.Ed.2d 334 (1960).\n(B)\nThe petitioner\xe2\x80\x99s second argument is that micro-organisms\ncannot qualify as patentable subject matter until Congress\nexpressly authorizes such protection. His position rests on\nthe fact that genetic technology was unforeseen when\nCongress enacted \xc2\xa7 101. From this it is argued that\nresolution of the patentability of inventions such as\nrespondent\xe2\x80\x99s should be left to Congress. The legislative\nprocess, the petitioner argues, is best equipped to weigh the\ncompeting economic, social, and scientific considerations\ninvolved, and to determine whether living organisms\nproduced by genetic engineering should receive patent\nprotection. In support of this position, the petitioner relies\non our recent holding in Parker v. Flook, 437 U.S. 584, 98\nS.Ct. 2522, 57 L.Ed.2d 451 (1978), and the statement that\nthe judiciary \xe2\x80\x9cmust proceed cautiously when \xe2\x80\xa6 asked to\nextend patent rights into areas wholly unforeseen by\nCongress.\xe2\x80\x9d Id., at 596, 98 S.Ct. at 2529.\n\nEven an abbreviated list of patented inventions underscores the point: telegraph\n(Morse, No. 1,647); telephone (Bell, No. 174,465); electric lamp (Edison, No.\n223,898); airplane (the Wrights, No. 821,393); transistor (Bardeen & Brattain, No.\n2,524,035); neutronic reactor (Fermi & Szilard, No. 2,708,656); laser (Schawlow &\nTownes, No. 2,929,922). See generally Revolutionary Ideas, Patents & Progress in\nAmerica, United States Patent and Trademark Office (1976).\n10\n\n378\n\n\x0cIt is, of course, correct that Congress, not the courts, must\ndefine the limits of patentability; but it is equally true that\nonce Congress has spoken it is \xe2\x80\x9cthe province and duty of\nthe judicial department to say what the law is.\xe2\x80\x9d Marbury v.\nMadison, 1 Cranch 137, 177, 2 L.Ed. 60 (1803). Congress\nhas performed its constitutional role in defining patentable\nsubject matter in \xc2\xa7 101; we perform ours in construing the\nlanguage Congress has employed. In so doing, our\nobligation is to take statutes as we find them, guided, if\nambiguity appears, by the legislative history and statutory\npurpose. Here, we perceive no ambiguity. The subjectmatter provisions of the patent law have been cast in broad\nterms to fulfill the constitutional and statutory goal of\npromoting \xe2\x80\x9cthe Progress of Science and the useful Arts\xe2\x80\x9d\nwith all that means for the social and economic benefits\nenvisioned by Jefferson. Broad general language is not\nnecessarily ambiguous when congressional objectives\nrequire broad terms.\nNothing in Flook is to the contrary. That case applied our\nprior precedents to determine that a \xe2\x80\x9cclaim for an\nimproved method of calculation, even when tied to a\nspecific end use, is unpatentable subject matter under \xc2\xa7\n101.\xe2\x80\x9d 437 U.S., at 595, n. 18, 98 S.Ct., at 2528, n. 18. The\nCourt carefully scrutinized the claim at issue to determine\nwhether it was precluded from patent protection under\n\xe2\x80\x9cthe principles underlying the prohibition against patents\nfor \xe2\x80\x98ideas\xe2\x80\x99 or phenomena of nature.\xe2\x80\x9d Id., at 593, 98 S.Ct. at\n2527. We have done that here. Flook did not announce a\nnew principle that inventions in areas not contemplated by\nCongress when the patent laws were enacted are\nunpatentable per se.\nTo read that concept into Flook would frustrate the\npurposes of the patent law. This Court frequently has\nobserved that a statute is not to be confined to the\n\xe2\x80\x9cparticular application[s] \xe2\x80\xa6 contemplated by the\nlegislators.\xe2\x80\x9d Barr v. United States, 324 U.S. 83, 90, 65 S.Ct.\n\n379\n\n\x0c522, 525, 89 L.Ed. 765 (1945). Accord, Browder v. United\nStates, 312 U.S. 335, 339, 61 S.Ct. 599, 601, 85 L.Ed. 862\n(1941); Puerto Rico v. Shell Co., 302 U.S. 253, 257, 58 S.Ct.\n167, 169, 82 L.Ed. 235 (1937). This is especially true in the\nfield of patent law. A rule that unanticipated inventions are\nwithout protection would conflict with the core concept of\nthe patent law that anticipation undermines patentability.\nSee Graham v. John Deere Co., 383 U.S., at 12-17, 86 S.Ct., at\n691-693. Mr. Justice Douglas reminded that the inventions\nmost benefiting mankind are those that \xe2\x80\x9cpush back the\nfrontiers of chemistry, physics, and the like.\xe2\x80\x9d Great A. & P.\nTea Co. v. Supermarket Corp., 340 U.S. 147, 154, 71 S.Ct. 127,\n131, 95 L.Ed. 162 (1950) (concurring opinion). Congress\nemployed broad general language in drafting \xc2\xa7 101 precisely\nbecause such inventions are often unforeseeable.11\nTo buttress his argument, the petitioner, with the support\nof amicus, points to grave risks that may be generated by\nresearch endeavors such as respondent\xe2\x80\x99s. The briefs present\na gruesome parade of horribles. Scientists, among them\nNobel laureates, are quoted suggesting that genetic research\nmay pose a serious threat to the human race, or, at the very\nleast, that the dangers are far too substantial to permit such\nresearch to proceed apace at this time. We are told that\ngenetic research and related technological developments\nmay spread pollution and disease, that it may result in a loss\nWe are not to be understood as suggesting that the political branches have been\nlaggard in the consideration of the problems related to genetic research and\ntechnology. They have already taken action. In 1976, for example, the National\nInstitutes of Health released guidelines for NIH-sponsored genetic research which\nestablished conditions under which such research could be performed. 41\nFed.Reg. 27902. In 1978 those guidelines were revised and relaxed. 43 Fed.Reg.\n60080, 60108, 60134. And Committees of the Congress have held extensive\nhearings on these matters. See, e. g., Hearings on Genetic Engineering before the\nSubcommittee on Health of the Senate Committee on Labor and Public Welfare,\n94th Cong., 1st Sess. (1975); Hearings before the Subcommittee on Science,\nTechnology, and Space of the Senate Committee on Commerce, Science, and\nTransportation, 95th Cong., 1st Sess. (1977); Hearings on H.R. 4759 et al. before\nthe Subcommittee on Health and the Environment of the House Committee on\nInterstate and Foreign Commerce, 95th Cong., 1st Sess. (1977).\n11\n\n380\n\n\x0cof genetic diversity, and that its practice may tend to\ndepreciate the value of human life. These arguments are\nforcefully, even passionately, presented; they remind us\nthat, at times, human ingenuity seems unable to control\nfully the forces it creates \xe2\x80\x93 that with Hamlet, it is\nsometimes better \xe2\x80\x9cto bear those ills we have than fly to\nothers that we know not of.\xe2\x80\x9d\nIt is argued that this Court should weigh these potential\nhazards in considering whether respondent\xe2\x80\x99s invention is\npatentable subject matter under \xc2\xa7 101. We disagree. The\ngrant or denial of patents on micro-organisms is not likely\nto put an end to genetic research or to its attendant risks.\nThe large amount of research that has already occurred\nwhen no researcher had sure knowledge that patent\nprotection would be available suggests that legislative or\njudicial fiat as to patentability will not deter the scientific\nmind from probing into the unknown any more than\nCanute could command the tides. Whether respondent\xe2\x80\x99s\nclaims are patentable may determine whether research\nefforts are accelerated by the hope of reward or slowed by\nwant of incentives, but that is all.\nWhat is more important is that we are without competence\nto entertain these arguments \xe2\x80\x93 either to brush them aside as\nfantasies generated by fear of the unknown, or to act on\nthem. The choice we are urged to make is a matter of high\npolicy for resolution within the legislative process after the\nkind of investigation, examination, and study that legislative\nbodies can provide and courts cannot. That process\ninvolves the balancing of competing values and interests,\nwhich in our democratic system is the business of elected\nrepresentatives. Whatever their validity, the contentions\nnow pressed on us should be addressed to the political\n\n381\n\n\x0cbranches of the Government, the Congress and the\nExecutive, and not to the courts.12\nWe have emphasized in the recent past that \xe2\x80\x9c[o]ur\nindividual appraisal of the wisdom or unwisdom of a\nparticular [legislative] course \xe2\x80\xa6 is to be put aside in the\nprocess of interpreting a statute.\xe2\x80\x9d TVA v. Hill, 437 U.S., at\n194, 98 S.Ct., at 2302. Our task, rather, is the narrow one of\ndetermining what Congress meant by the words it used in\nthe statute; once that is done our powers are exhausted.\nCongress is free to amend \xc2\xa7 101 so as to exclude from\npatent protection organisms produced by genetic\nengineering. Cf. 42 U.S.C. \xc2\xa7 2181(a), exempting from\npatent protection inventions \xe2\x80\x9cuseful solely in the utilization\nof special nuclear material or atomic energy in an atomic\nweapon.\xe2\x80\x9d Or it may chose to craft a statute specifically\ndesigned for such living things. But, until Congress takes\nsuch action, this Court must construe the language of \xc2\xa7 101\nas it is. The language of that section fairly embraces\nrespondent\xe2\x80\x99s invention.\nAccordingly, the judgment of the Court of Customs and\nPatent Appeals is\nAffirmed.\nMR. JUSTICE BRENNAN, with whom MR. JUSTICE WHITE,\nMR. JUSTICE MARSHALL, AND MR. JUSTICE POWELL\njoin, dissenting.\nI agree with the Court that the question before us is a\nnarrow one. Neither the future of scientific research, nor\neven, the ability of respondent Chakrabarty to reap some\nmonopoly profits from his pioneering work, is at stake.\nPatents on the processes by which he has produced and\nemployed the new living organism are not contested. The\n\nI read the Court to admit that the popular conception, even among advocates\nof agricultural patents, was that living organisms were unpatentable. See ante, at\n311-312, and n. 8.\n12\n\n382\n\n\x0conly question we need decide is whether Congress,\nexercising its authority under Art. I, \xc2\xa7 8, of the\nConstitution, intended that he be able to secure a\nmonopoly on the living organism itself, no matter how\nproduced or how used. Because I believe the Court has\nmisread the applicable legislation, I dissent.\nThe patent laws attempt to reconcile this Nation\xe2\x80\x99s deep\nseated antipathy to monopolies with the need to encourage\nprogress. Deepsouth Packing Co. v. Laitram Corp., 406 U.S.\n518, 530-531, 92 S.Ct. 1700, 1707-1708, 32 L.Ed.2d 273\n(1972); Graham v. John Deere Co., 383 U.S. 1, 7-10, 86 S.Ct.\n684, 668-690, 15 L.Ed.2d 545 (1966). Given the complexity\nand legislative nature of this delicate task, we must be\ncareful to extend patent protection no further than\nCongress has provided. In particular, were there an absence\nof legislative direction, the courts should leave to Congress\nthe decisions whether and how far to extend the patent\nprivilege into areas where the common understanding has\nbeen that patents are not available.13 Cf. Deepsouth Packing\nCo. v. Laitram Corp., supra.\nIn this case, however, we do not confront a complete\nlegislative vacuum. The sweeping language of the Patent\nAct of 1793, as re-enacted in 1952, is not the last\n\nBut even if I agreed with the Court that the 1930 and 1970 Acts were\nnot dispositive, I would dissent. This case presents even more cogent\nreasons than Deepsouth Packing Co. not to extend the patent monopoly in\nthe face of uncertainty. At the very least, these Acts are signs of legislative\nattention to the problems of patenting living organisms, but they give no\naffirmative indication of congressional intent that bacteria be patentable.\nThe caveat of Parker v. Flook, 437 U.S. 584, 596, 90 S.Ct. 2522, 2529, 57\nL.Ed.2d 451 (1978), an admonition to \xe2\x80\x9cproceed cautiously when we are\nasked to extend patent rights into areas wholly unforeseen by Congress,\xe2\x80\x9d\ntherefore becomes pertinent. I should think the necessity for caution is\nthat much greater when we are asked to extend patent rights into areas\nCongress has foreseen and considered but has not resolved.\n13\n\n383\n\n\x0cpronouncement Congress has made in this area. In 1930\nCongress enacted the Plant Patent Act affording patent\nprotection to developers of certain asexually reproduced\nplants. In 1970 Congress enacted the Plant Variety\nProtection Act to extend protection to certain new plant\nvarieties capable of sexual reproduction. Thus, we are not\ndealing \xe2\x80\x93 as the Court would have it \xe2\x80\x93 with the routine\nproblem of \xe2\x80\x9cunanticipated inventions.\xe2\x80\x9d Ante, at 316. In\nthese two Acts Congress has addressed the general problem\nof patenting animate inventions and has chosen carefully\nlimited language granting protection to some kinds of\ndiscoveries, but specifically excluding others. These Acts\nstrongly evidence a congressional limitation that excludes\nbacteria from patentability.2\nFirst, the Acts evidence Congress\xe2\x80\x99 understanding, at least\nsince 1930, that \xc2\xa7 101 does not include living organisms. If\nnewly developed living organisms not naturally occurring\nhad been patentable under \xc2\xa7 101, the plants included in the\nscope of the 1930 and 1970 Acts could have been patented\nwithout new legislation. Those plants, like the bacteria\ninvolved in this case, were new varieties not naturally\noccurring.14 Although the Court, ante, at 311, rejects this\nline of argument, it does not explain why the Acts were\nnecessary unless to correct a pre-existing situation.15 I\ncannot share the Court\xe2\x80\x99s implicit assumption that Congress\nwas engaged in either idle exercises or mere correction of\nthe public record when it enacted the 1930 and 1970 Acts.\nThe Court refers to the logic employed by Congress in choosing not to\nperpetuate the \xe2\x80\x9cdichotomy\xe2\x80\x9d suggested by Secretary Hyde. Ante, at 313. But by this\nlogic the bacteria at issue here are distinguishable from a \xe2\x80\x9cmineral \xe2\x80\xa6 created\nwholly by nature\xe2\x80\x9d in exactly the same way as were the new varieties of plants. If a\nnew Act was needed to provide patent protection for the plants, it was equally\nnecessary for bacteria. Yet Congress provided for patents on plants but not on\nthese bacteria. In short, Congress decided to make only a subset of animate\n\xe2\x80\x9chuman-made inventions,\xe2\x80\x9d ibid., patentable.\n14\n\nIf the 1930 Act\xe2\x80\x99s only purpose were to solve the technical problem of\ndescription referred to by the Court, ante, at 312, most of the Act, and in particular\nits limitation to asexually reproduced plants, would have been totally unnecessary.\n15\n\n384\n\n\x0cAnd Congress certainly thought it was doing something\nsignificant. The Committee Reports contain expansive\nprose about the previously unavailable benefits to be\nderived from extending patent protection to plants.16 H.R.\nRep. No. 91-1605, pp. 1-3 (1970), U.S.Code Cong. &\nAdmin.News 1970, p. 5082; S.Rep.No.315, 71st Cong., 2d\nSess., 1-3 (1930). Because Congress thought it had to\nlegislate in order to make agricultural \xe2\x80\x9chuman-made\ninventions\xe2\x80\x9d patentable and because the legislation Congress\nenacted is limited, it follows that Congress never meant to\nmake items outside the scope of the legislation patentable.\nSecond, the 1970 Act clearly indicates that Congress has\nincluded bacteria within the focus of its legislative concern,\nbut not within the scope of patent protection. Congress\nspecifically excluded bacteria from the coverage of the 1970\nAct. 7 U.S.C. \xc2\xa7 2402(a). The Court\xe2\x80\x99s attempts to supply\nexplanations for this explicit exclusion ring hollow. It is\ntrue that there is no mention in the legislative history of the\nexclusion, but that does not give us license to invent\nreasons. The fact is that Congress, assuming that animate\nobjects as to which it had not specifically legislated could\nnot be patented, excluded bacteria from the set of\npatentable organisms.\n\nSecretary Hyde\xe2\x80\x99s letter was not the only explicit indication in the legislative\nhistory of these Acts that Congress was acting on the assumption that legislation\nwas necessary to make living organisms patentable. The Senate Judiciary\nCommittee Report on the 1970 Act states the Committee\xe2\x80\x99s understanding that\npatent protection extended no further than the explicit provisions of these Acts:\nUnder the patent law, patent protection is limited to those\nvarieties of plants which reproduce asexually, that is, by\nsuch methods as grafting or budding. No protection is\navailable to those varieties of plants which reproduce\nsexually, that is, generally by seeds.\n16\n\nS.Rep.No.91-1246, p. 3 (1970).\nSimilarly, Representative Poage, speaking for the 1970 Act, after noting the\nprotection accorded asexually developed plants, stated that \xe2\x80\x9cfor plants produced\nfrom seed, there has been no such protection.\xe2\x80\x9d 116 Cong.Rec. 40295 (1970).\n\n385\n\n\x0cThe Court protests that its holding today is dictated by the\nbroad language of \xc2\xa7 101, which cannot \xe2\x80\x9cbe confined to the\n\xe2\x80\x98particular application[s] \xe2\x80\xa6 contemplated by the\nlegislators.\xe2\x80\x99 \xe2\x80\x9d Ante, at 315, quoting Barr v. United States, 324\nU.S. 83, 90, 65 S.Ct. 522, 525, 89 L.Ed. 765 (1945). But as I\nhave shown, the Court\xe2\x80\x99s decision does not follow the\nunavoidable implications of the statute. Rather, it extends\nthe patent system to cover living material even though\nCongress plainly has legislated in the belief that \xc2\xa7 101 does\nnot encompass living organisms. It is the role of Congress,\nnot this Court, to broaden or narrow the reach of the\npatent laws. This is especially true where, as here, the\ncomposition sought to be patented uniquely implicates\nmatters of public concern.\n3.4 Copyright\n3.4.1. Eligibility\nFeist Publications, Inc. v. Rural Telephone Service\nCo., 499 U.S. 340 (1991)\nO\xe2\x80\x99CONNOR J., delivered the opinion of the Court, in\nwhich REHNQUIST, C.J., and WHITE, MARSHALL,\nSTEVENS, SCALIA, KENNEDY, and SOUTER, JJ.,\njoined. BLACKMUN, J., concurred in the judgment.\nKyler Knobbe, Cimarron, Kan., for petitioner.\nJames M. Caplinger, Jr., Topeka, Kan., for respondent.\nJUSTICE O\xe2\x80\x99CONNOR delivered the opinion of the Court.\nThis case requires us to clarify the extent of copyright\nprotection available to telephone directory white pages.\nI\nRural Telephone Service Company, Inc., is a certified\npublic utility that provides telephone service to several\ncommunities in northwest Kansas. It is subject to a state\nregulation that requires all telephone companies operating\n\n386\n\n\x0cin Kansas to issue annually an updated telephone directory.\nAccordingly, as a condition of its monopoly franchise,\nRural publishes a typical telephone directory, consisting of\nwhite pages and yellow pages. The white pages list in\nalphabetical order the names of Rural\xe2\x80\x99s subscribers,\ntogether with their towns and telephone numbers. The\nyellow pages list Rural\xe2\x80\x99s business subscribers alphabetically\nby category and feature classified advertisements of various\nsizes. Rural distributes its directory free of charge to its\nsubscribers, but earns revenue by selling yellow pages\nadvertisements.\nFeist Publications, Inc., is a publishing company that\nspecializes in area-wide telephone directories. Unlike a\ntypical directory, which covers only a particular calling area,\nFeist\xe2\x80\x99s area-wide directories cover a much larger\ngeographical range, reducing the need to call directory\nassistance or consult multiple directories. The Feist\ndirectory that is the subject of this litigation covers 11\ndifferent telephone service areas in 15 counties and\ncontains 46,878 white pages listings \xe2\x80\x93 compared to Rural\xe2\x80\x99s\napproximately 7,700 listings. Like Rural\xe2\x80\x99s directory, Feist\xe2\x80\x99s\nis distributed free of charge and includes both white pages\nand yellow pages. Feist and Rural compete vigorously for\nyellow pages advertising.\nAs the sole provider of telephone service in its service area,\nRural obtains subscriber information quite easily. Persons\ndesiring telephone service must apply to Rural and provide\ntheir names and addresses; Rural then assigns them a\ntelephone number. Feist is not a telephone company, let\nalone one with monopoly status, and therefore lacks\nindependent access to any subscriber information. To\nobtain white pages listings for its area-wide directory, Feist\napproached each of the 11 telephone companies operating\nin northwest Kansas and offered to pay for the right to use\nits white pages listings.\n\n387\n\n\x0cOf the 11 telephone companies, only Rural refused to\nlicense its listings to Feist. Rural\xe2\x80\x99s refusal created a problem\nfor Feist, as omitting these listings would have left a gaping\nhole in its area-wide directory, rendering it less attractive to\npotential yellow pages advertisers. In a decision subsequent\nto that which we review here, the District Court\ndetermined that this was precisely the reason Rural refused\nto license its listings. The refusal was motivated by an\nunlawful purpose \xe2\x80\x9cto extend its monopoly in telephone\nservice to a monopoly in yellow pages advertising.\xe2\x80\x9d Rural\nTelephone Service Co. v. Feist Publications, Inc., 737 F.Supp. 610,\n622 (Kan.1990).\nUnable to license Rural\xe2\x80\x99s white pages listings, Feist used\nthem without Rural\xe2\x80\x99s consent. Feist began by removing\nseveral thousand listings that fell outside the geographic\nrange of its area-wide directory, then hired personnel to\ninvestigate the 4,935 that remained. These employeesveri\nfied the data reported by Rural and sought to obtain\nadditional information. As a result, a typical Feist listing\nincludes the individual\xe2\x80\x99s street address; most of Rural\xe2\x80\x99s\nlistings do not. Notwithstanding these additions,\nhowever,1,309 of the 46,878 listings in Feist\xe2\x80\x99s 1983\ndirectory were identical to listings in Rural\xe2\x80\x99s 1982-1983\nwhite pages. App. 54 (\xc2\xb6 15-16), 57. Four of these were\nfictitious listings that Rural had inserted into its directory to\ndetect copying.\nRural sued for copyright infringement in the District Court\nfor the District of Kansas taking the position that Feist, in\ncompiling its own directory, could not use the information\ncontained in Rural\xe2\x80\x99s white pages. Rural asserted that Feist\xe2\x80\x99s\nemployees were obliged to travel door-to-door or conduct\na telephone survey to discover the same information for\nthemselves. Feist responded that such efforts were\neconomically impractical and, in any event, unnecessary\nbecause the information copied was beyond the scope of\ncopyright protection. The District Court granted summary\n\n388\n\n\x0cjudgment to Rural, explaining that \xe2\x80\x9c[c]ourts have\nconsistently held that telephone directories are\ncopyrightable\xe2\x80\x9d and citing a string of lower court decisions.\n663 F.Supp. 214, 218 (1987). In an unpublished opinion,\nthe Court of Appeals for the Tenth Circuit affirmed \xe2\x80\x9cfor\nsubstantially the reasons given by the district court.\xe2\x80\x9d App.\nto Pet. for Cert. 4a, judgt. order reported at 916 F.2d 718\n(1990). We granted certiorari, 498 U.S. 808, 111 S.Ct. 40,\n112 L.Ed.2d 17 (1990), to determine whether the copyright\nin Rural\xe2\x80\x99s directory protects the names, towns, and\ntelephone numbers copied by Feist.\nII\nA.\nThis case concerns the interaction of two well-established\npropositions. The first is that facts are not copyrightable;\nthe other, that compilations of facts generally are. Each of\nthese propositions possesses an impeccable pedigree. That\nthere can be no valid copyright in facts is universally\nunderstood. The most fundamental axiom of copyright law\nis that \xe2\x80\x9c[n]o author may copyright his ideas or the facts he\nnarrates.\xe2\x80\x9d Harper & Row, Publishers, Inc. v. Nation Enterprises,\n471 U.S. 539, 556, 105 S.Ct. 2218, 2228, 85 L.Ed.2d 588\n(1985). Rural wisely concedes this point, noting in its brief\nthat \xe2\x80\x9c[f]acts and discoveries, of course, are not themselves\nsubject to copyright protection.\xe2\x80\x9d Brief for Respondent 24.\nAt the same time, however, it is beyond dispute that\ncompilations of facts are within the subject matter of\ncopyright. Compilations were expressly mentioned in the\nCopyright Act of 1909, and again in the Copyright Act of\n1976.\nThere is an undeniable tension between these two\npropositions. Many compilations consist of nothing but\nraw data i.e., wholly factual information not accompanied\nby any original written expression. On what basis may one\n\n389\n\n\x0cclaim a copyright in such a work? Common sense tells us\nthat 100 uncopyrightable facts do not magically change\ntheir status when gathered together in one place. Yet\ncopyright law seems to contemplate that compilations that\nconsist exclusively of facts are potentially within its scope.\nThe key to resolving the tension lies in understanding why\nfacts are not copyrightable. The sine qua non of copyright is\noriginality. To qualify for copyright protection, a work must\nbe original to the author. See Harper & Row, supra, at 547549, 105 S.Ct., at 2223-2224. Original, as the term is used in\ncopyright, means only that the work was independently\ncreated by the author (as opposed to copied from other\nworks), and that it possesses at least some minimal degree\nof creativity. 1 M. Nimmer & D. Nimmer, Copyright \xc2\xa7\xc2\xa7\n2.01[A], [B] (1990) (hereinafter Nimmer). To be sure, the\nrequisite level of creativity is extremely low; even a slight\namount will suffice. The vast majority of works make the\ngrade quite easily, as they possess some creative spark, \xe2\x80\x9cno\nmatter how crude, humble or obvious\xe2\x80\x9d it might be. Id., \xc2\xa7\n1.08[C][1]. Originality does not signify novelty; a work may\nbe original even though it closely resembles other works so\nlong as the similarity is fortuitous, not the result of copying.\nTo illustrate, assume that two poets, each ignorant of the\nother, compose identical poems. Neither work is novel, yet\nboth are original and, hence, copyrightable. See Sheldon v.\nMetro-Goldwyn Pictures Corp., 81 F.2d 49, 54 (CA2 1936).\nOriginality is a constitutional requirement. The source of\nCongress\xe2\x80\x99 power to enact copyright laws is Article I, \xc2\xa7 8, cl.\n8, of the Constitution, which authorizes Congress to\n\xe2\x80\x9csecur[e] for limited Times to Authors \xe2\x80\xa6 the exclusive\nRight to their respective Writings.\xe2\x80\x9d In two decisions from\nthe late 19th century The Trade-Mark Cases, 100 U.S. 82, 25\nL.Ed. 550 (1879); and Burrow-Giles Lithographic Co. v. Sarony,\n111 U.S. 53, 4 S.Ct. 279, 28 L.Ed. 349 (1884) \xe2\x80\x93 this Court\ndefined the crucial terms \xe2\x80\x9cauthors\xe2\x80\x9d and \xe2\x80\x9cwritings.\xe2\x80\x9d In so\n\n390\n\n\x0cdoing, the Court made it unmistakably clear that these\nterms presuppose a degree of originality.\nIn The Trade-Mark Cases, the Court addressed the\nconstitutional scope of \xe2\x80\x9cwritings.\xe2\x80\x9d For a particular work to\nbe classified \xe2\x80\x9cunder the head of writings of authors,\xe2\x80\x9d the\nCourt determined, \xe2\x80\x9coriginality is required.\xe2\x80\x9d 100 U.S., at 94.\nThe Court explained that originality requires independent\ncreation plus a modicum of creativity: \xe2\x80\x9c[W]hile the word\nwritings may be liberally construed, as it has been, to include\noriginal designs for engraving, prints, &c., it is only such as\nare original, and are founded in the creative powers of the\nmind. The writings which are to be protected are the fruits of\nintellectual labor, embodied in the form of books, prints,\nengravings, and the like.\xe2\x80\x9d Ibid. (emphasis in original).\nIn Burrow-Giles, the Court distilled the same requirement\nfrom the Constitution\xe2\x80\x99s use of the word \xe2\x80\x9cauthors.\xe2\x80\x9d The\nCourt defined \xe2\x80\x9cauthor,\xe2\x80\x9d in a constitutional sense, to mean\n\xe2\x80\x9che to whom anything owes its origin; originator; maker.\xe2\x80\x9d\n111 U.S., at 58, 4 S.Ct., at 281 (internal quotation marks\nomitted). As in The Trade-Mark Cases, the Court emphasized\nthe creative component of originality. It described\ncopyright as being limited to \xe2\x80\x9coriginal intellectual\nconceptions of the author,\xe2\x80\x9d 111 U.S., at 58, 4 S.Ct., at 281,\nand stressed the importance of requiring an author who\naccuses another of infringement to prove \xe2\x80\x9cthe existence of\nthose facts of originality, of intellectual production, of\nthought, and conception.\xe2\x80\x9d Id., at 59-60, 4 S.Ct., at 281-282.\nThe originality requirement articulated in The Trade-Mark\nCases and Burrow-Giles remains the touchstone of copyright\nprotection today. See Goldstein v. California, 412 U.S. 546,\n561-562, 93 S.Ct. 2303, 2312, 37 L.Ed.2d 163 (1973). It is\nthe very \xe2\x80\x9cpremise of copyright law.\xe2\x80\x9d Miller v. Universal City\nStudios, Inc., 650 F.2d 1365, 1368 (CA5 1981). Leading\nscholars agree on this point. As one pair of commentators\nsuccinctly puts it: \xe2\x80\x9cThe originality requirement is\nconstitutionally mandated for all works.\xe2\x80\x9d Patterson & Joyce,\n\n391\n\n\x0cMonopolizing the Law: The Scope of Copyright Protection\nfor Law Reports and Statutory Compilations, 36 UCLA\nL.Rev. 719, 763, n. 155 (1989) (emphasis in original)\n(hereinafter Patterson & Joyce). Accord, id., at 759-760, and\nn. 140; Nimmer \xc2\xa7 1.06[A] (\xe2\x80\x9c[O]riginality is a statutory as\nwell as a constitutional requirement\xe2\x80\x9d); id., \xc2\xa7 1.08[C][1] (\xe2\x80\x9c[A]\nmodicum of intellectual labor \xe2\x80\xa6 clearly constitutes an\nessential constitutional element\xe2\x80\x9d).\nIt is this bedrock principle of copyright that mandates the\nlaw\xe2\x80\x99s seemingly disparate treatment of facts and factual\ncompilations. \xe2\x80\x9cNo one may claim originality as to facts.\xe2\x80\x9d\nId., \xc2\xa7 2.11[A], p. 2-157. This is because facts do not owe\ntheir origin to an act of authorship. The distinction is one\nbetween creation and discovery: The first person to find\nand report a particular fact has not created the fact; he or\nshe has merely discovered its existence. To borrow from\nBurrow-Giles, one who discovers a fact is not its \xe2\x80\x9cmaker\xe2\x80\x9d or\n\xe2\x80\x9coriginator.\xe2\x80\x9d 111 U.S., at 58, 4 S.Ct., at 281. \xe2\x80\x9cThe\ndiscoverer merely finds and records.\xe2\x80\x9d Nimmer \xc2\xa7 2.03[E].\nCensus takers, for example, do not \xe2\x80\x9ccreate\xe2\x80\x9d the population\nfigures that emerge from their efforts; in a sense, they copy\nthese figures from the world around them. Denicola,\nCopyright in Collections of Facts: A Theory for the\nProtection of Nonfiction Literary Works, 81 Colum.L.Rev.\n516, 525 (1981) (hereinafter Denicola). Census data\ntherefore do not trigger copyright because these data are\nnot \xe2\x80\x9coriginal\xe2\x80\x9d in the constitutional sense. Nimmer \xc2\xa7\n2.03[E]. The same is true of all facts \xe2\x80\x93 scientific, historical,\nbiographical, and news of the day. \xe2\x80\x9c[T]hey may not be\ncopyrighted and are part of the public domain available to\nevery person.\xe2\x80\x9d Miller, supra, at 1369.\nFactual compilations, on the other hand, may possess the\nrequisite originality. The compilation author typically\nchooses which facts to include, in what order to place\nthem, and how to arrange the collected data so that they\nmay be used effectively by readers. These choices as to\n\n392\n\n\x0cselection and arrangement, so long as they are made\nindependently by the compiler and entail a minimal degree\nof creativity, are sufficiently original that Congress may\nprotect such compilations through the copyright laws.\nNimmer \xc2\xa7\xc2\xa7 2.11[D], 3.03; Denicola 523, n. 38. Thus, even a\ndirectory that contains absolutely no protectible written\nexpression, only facts, meets the constitutional minimum\nfor copyright protection if it features an original selection\nor arrangement. See Harper & Row, 471 U.S., at 547, 105\nS.Ct., at 2223. Accord, Nimmer \xc2\xa7 3.03.\nThis protection is subject to an important limitation. The\nmere fact that a work is copyrighted does not mean that\nevery element of the work may be protected. Originality\nremains the sine qua non of copyright; accordingly, copyright\nprotection may extend only to those components of a work\nthat are original to the author. Patterson & Joyce 800-802;\nGinsburg, Creation and Commercial Value: Copyright\nProtection of Works of Information, 90 Colum.L.Rev.\n1865, 1868, and n. 12 (1990) (hereinafter Ginsburg). Thus,\nif the compilation author clothes facts with an original\ncollocation of words, he or she may be able to claim a\ncopyright in this written expression. Others may copy the\nunderlying facts from the publication, but not the precise\nwords used to present them. In Harper & Row, for example,\nwe explained that President Ford could not prevent others\nfrom copying bare historical facts from his autobiography,\nsee 471 U.S., at 556-557, 105 S.Ct., at 2228-2229, but that\nhe could prevent others from copying his \xe2\x80\x9csubjective\ndescriptions and portraits of public figures.\xe2\x80\x9d Id., at 563, 105\nS.Ct., at 2232. Where the compilation author adds no\nwritten expression but rather lets the facts speak for\nthemselves, the expressive element is more elusive. The\nonly conceivable expression is the manner in which the\ncompiler has selected and arranged the facts. Thus, if the\nselection and arrangement are original, these elements of\nthe work are eligible for copyright protection. See Patry,\n\n393\n\n\x0cCopyright in Compilations of Facts (or Why the \xe2\x80\x9cWhite\nPages\xe2\x80\x9d Are Not Copyrightable), 12 Com. & Law 37, 64\n(Dec. 1990) (hereinafter Patry). No matter how original the\nformat, however, the facts themselves do not become\noriginal through association. See Patterson & Joyce 776.\nThis inevitably means that the copyright in a factual\ncompilation is thin. Notwithstanding a valid copyright, a\nsubsequent compiler remains free to use the facts contained\nin another\xe2\x80\x99s publication to aid in preparing a competing\nwork, so long as the competing work does not feature the\nsame selection and arrangement. As one commentator\nexplains it: \xe2\x80\x9c[N]o matter how much original authorship the\nwork displays, the facts and ideas it exposes are free for the\ntaking\xe2\x80\xa6 . [T]he very same facts and ideas may be divorced\nfrom the context imposed by the author, and restated or\nreshuffled by second comers, even if the author was the\nfirst to discover the facts or to propose the ideas.\xe2\x80\x9d\nGinsburg 1868.\nIt may seem unfair that much of the fruit of the compiler\xe2\x80\x99s\nlabor may be used by others without compensation. As\nJustice Brennan has correctly observed, however, this is not\n\xe2\x80\x9csome unforeseen byproduct of a statutory scheme.\xe2\x80\x9d\nHarper & Row, 471 U.S., at 589, 105 S.Ct., at 2245\n(dissenting opinion). It is, rather, \xe2\x80\x9cthe essence of\ncopyright,\xe2\x80\x9d ibid., and a constitutional requirement. The\nprimary objective of copyright is not to reward the labor of\nauthors, but \xe2\x80\x9c[t]o promote the Progress of Science and\nuseful Arts.\xe2\x80\x9d Art. I, \xc2\xa7 8, cl. 8. Accord, Twentieth Century\nMusic Corp. v. Aiken, 422 U.S. 151, 156, 95 S.Ct. 2040, 2044,\n45 L.Ed.2d 84 (1975). To this end, copyright assures\nauthors the right to their original expression, but\nencourages others to build freely upon the ideas and\ninformation conveyed by a work. Harper & Row, supra, 471\nU.S., at 556-557, 105 S.Ct., at 2228-2229. This principle,\nknown as the idea/expression or fact/expression\ndichotomy, applies to all works of authorship. As applied to\n\n394\n\n\x0ca factual compilation, assuming the absence of original\nwritten expression, only the compiler\xe2\x80\x99s selection and\narrangement may be protected; the raw facts may be copied\nat will. This result is neither unfair nor unfortunate. It is the\nmeans by which copyright advances the progress of science\nand art.\nThis Court has long recognized that the fact/expression\ndichotomy limits severely the scope of protection in factbased works. More than a century ago, the Court observed:\n\xe2\x80\x9cThe very object of publishing a book on science or the\nuseful arts is to communicate to the world the useful\nknowledge which it contains. But this object would be\nfrustrated if the knowledge could not be used without\nincurring the guilt of piracy of the book.\xe2\x80\x9d Baker v. Selden,\n101 U.S. 99, 103, 25 L.Ed. 841 (1880). We reiterated this\npoint in Harper & Row:\n[N]o author may copyright facts or\nideas. The copyright is limited to those\naspects of the work \xe2\x80\x93 termed\n\xe2\x80\x98expression\xe2\x80\x99 \xe2\x80\x93 that display the stamp of\nthe author\xe2\x80\x99s originality. [C]opyright\ndoes not prevent subsequent users\nfrom copying from a prior author\xe2\x80\x99s\nwork those constituent elements that\nare not original \xe2\x80\x93 for example \xe2\x80\xa6 facts,\nor materials in the public domain \xe2\x80\x93 as\nlong as such use does not unfairly\nappropriate the author\xe2\x80\x99s original\ncontributions.\n471 U.S., at 547-548, 105 S.Ct., at 2223-2224 (citation\nomitted).\nThis, then, resolves the doctrinal tension: Copyright treats\nfacts and factual compilations in a wholly consistent\nmanner. Facts, whether alone or as part of a compilation,\nare not original and therefore may not be copyrighted. A\nfactual compilation is eligible for copyright if it features an\n\n395\n\n\x0coriginal selection or arrangement of facts, but the copyright\nis limited to the particular selection or arrangement. In no\nevent may copyright extend to the facts themselves.\nB.\nAs we have explained, originality is a constitutionally\nmandated prerequisite for copyright protection. The\nCourt\xe2\x80\x99s decisions announcing this rule predate the\nCopyright Act of 1909, but ambiguous language in the 1909\nAct caused some lower courts temporarily to lose sight of\nthis requirement.\nThe 1909 Act embodied the originality requirement, but\nnot as clearly as it might have. See Nimmer \xc2\xa7 2.01. The\nsubject matter of copyright was set out in \xc2\xa7\xc2\xa7 3 and 4 of the\nAct. Section 4 stated that copyright was available to \xe2\x80\x9call the\nwritings of an author.\xe2\x80\x9d 35 Stat. 1076. By using the words\n\xe2\x80\x9cwritings\xe2\x80\x9d and \xe2\x80\x9cauthor\xe2\x80\x9d \xe2\x80\x93 the same words used in Article I,\n\xc2\xa7 8, of the Constitution and defined by the Court in The\nTrade-Mark Cases and Burrow-Giles \xe2\x80\x93 the statute necessarily\nincorporated the originality requirement articulated in the\nCourt\xe2\x80\x99s decisions. It did so implicitly, however, thereby\nleaving room for error.\nSection 3 was similarly ambiguous. It stated that the\ncopyright in a work protected only \xe2\x80\x9cthe copyrightable\ncomponent parts of the work.\xe2\x80\x9d It thus stated an important\ncopyright principle, but failed to identify the specific\ncharacteristic originality \xe2\x80\x93 that determined which\ncomponent parts of a work were copyrightable and which\nwere not.\nMost courts construed the 1909 Act correctly,\nnotwithstanding the less-than-perfect statutory language.\nThey understood from this Court\xe2\x80\x99s decisions that there\ncould be no copyright without originality. See Patterson &\nJoyce 760-761. As explained in the Nimmer treatise: \xe2\x80\x9cThe\n1909 Act neither defined originality, nor even expressly\n\n396\n\n\x0crequired that a work be \xe2\x80\x98original\xe2\x80\x99 in order to command\nprotection. However, the courts uniformly inferred the\nrequirement from the fact that copyright protection may\nonly be claimed by \xe2\x80\x98authors\xe2\x80\x99\xe2\x80\xa6 . It was reasoned that since\nan author is \xe2\x80\x98the \xe2\x80\xa6 creator, originator\xe2\x80\x99 it follows that a\nwork is not the product of an author unless the work is\noriginal.\xe2\x80\x9d Nimmer \xc2\xa7 2.01 (footnotes omitted) (citing cases).\nBut some courts misunderstood the statute. See, e.g., Leon v.\nPacific Telephone & Telegraph Co., 91 F.2d 484 (CA9 1937);\nJeweler\xe2\x80\x99s Circular Publishing Co. v. Keystone Publishing Co., 281 F.\n83 (CA2 1922). These courts ignored \xc2\xa7\xc2\xa7 3 and 4, focusing\ntheir attention instead on \xc2\xa7 5 of the Act. Section 5,\nhowever, was purely technical in nature: It provided that a\nperson seeking to register a work should indicate on the\napplication the type of work, and it listed 14 categories\nunder which the work might fall. One of these categories\nwas \xe2\x80\x9c[b]ooks, including composite and cyclopaedic works,\ndirectories, gazetteers, and other compilations.\xe2\x80\x9d \xc2\xa7 5(a).\nSection 5 did not purport to say that all compilations were\nautomatically copyrightable. Indeed, it expressly disclaimed\nany such function, pointing out that \xe2\x80\x9cthe subject-matter of\ncopyright [i]s defined in section four.\xe2\x80\x9d Nevertheless, the\nfact that factual compilations were mentioned specifically in\n\xc2\xa7 5 led some courts to infer erroneously that directories and\nthe like were copyrightable per se, \xe2\x80\x9cwithout any further or\nprecise showing of original \xe2\x80\x93 personal \xe2\x80\x93 authorship.\xe2\x80\x9d\nGinsburg 1895.\nMaking matters worse, these courts developed a new theory\nto justify the protection of factual compilations. Known\nalternatively as \xe2\x80\x9csweat of the brow\xe2\x80\x9d or \xe2\x80\x9cindustrious\ncollection,\xe2\x80\x9d the underlying notion was that copyright was a\nreward for the hard work that went into compiling facts.\nThe classic formulation of the doctrine appeared in Jeweler\xe2\x80\x99s\nCircular Publishing Co., 281 F., at 88:\n\n397\n\n\x0cThe right to copyright a book upon\nwhich one has expended labor in its\npreparation does not depend upon\nwhether the materials which he has\ncollected consist or not of matters\nwhich are publici juris, or whether\nsuch materials show literary skill or\noriginality, either in thought or in\nlanguage, or anything more than\nindustrious collection. The man who\ngoes through the streets of a town and\nputs down the names of each of the\ninhabitants, with their occupations and\ntheir street number, acquires material\nof which he is the author.\n(emphasis added).\nThe \xe2\x80\x9csweat of the brow\xe2\x80\x9d doctrine had numerous flaws, the\nmost glaring being that it extended copyright protection in\na compilation beyond selection and arrangement \xe2\x80\x93 the\ncompiler\xe2\x80\x99s original contributions \xe2\x80\x93 to the facts themselves.\nUnder the doctrine, the only defense to infringement was\nindependent creation. A subsequent compiler was \xe2\x80\x9cnot\nentitled to take one word of information previously\npublished,\xe2\x80\x9d but rather had to \xe2\x80\x9cindependently wor[k] out the\nmatter for himself, so as to arrive at the same result from\nthe same common sources of information.\xe2\x80\x9d Id., at 88-89\n(internal quotations omitted). \xe2\x80\x9cSweat of the brow\xe2\x80\x9d courts\nthereby eschewed the most fundamental axiom of\ncopyright law \xe2\x80\x93 that no one may copyright facts or ideas.\nSee Miller v. Universal City Studios, Inc., 650 F.2d, at 1372\n(criticizing \xe2\x80\x9csweat of the brow\xe2\x80\x9d courts because \xe2\x80\x9censur[ing]\nthat later writers obtain the facts independently \xe2\x80\xa6 is\nprecisely the scope of protection given \xe2\x80\xa6 copyrighted\nmatter, and the law is clearthat facts are not entitled to such\nprotection\xe2\x80\x9d).\n\n398\n\n\x0cDecisions of this Court applying the 1909 Act make clear\nthat the statute did not permit the \xe2\x80\x9csweat of the brow\xe2\x80\x9d\napproach. The best example is International News Service v.\nAssociated Press, 248 U.S. 215, 39 S.Ct. 68, 63 L.Ed. 211\n(1918). In that decision, the Court stated unambiguously\nthat the 1909 Act conferred copyright protection only on\nthose elements of a work that were original to the author.\nInternational News Service had conceded taking news\nreported by Associated Press and publishing it in its own\nnewspapers. Recognizing that \xc2\xa7 5 of the Act specifically\nmentioned \xe2\x80\x9d \xe2\x80\x98periodicals, including newspapers,\xe2\x80\x99 \xe2\x80\x9d \xc2\xa7 5(b),\nthe Court acknowledged that news articles were\ncopyrightable. Id., at 234, 39 S.Ct., at 70. It flatly rejected,\nhowever, the notion that the copyright in an article\nextended to the factual information it contained: \xe2\x80\x9c[T]he\nnews element \xe2\x80\x93 the information respecting current events\ncontained in the literary production \xe2\x80\x93 is not the creation of\nthe writer, but is a report of matters that ordinarily are\npublici juris; it is the history of the day.\xe2\x80\x9d Ibid.1\nWithout a doubt, the \xe2\x80\x9csweat of the brow\xe2\x80\x9d doctrine flouted\nbasic copyright principles. Throughout history, copyright\nlaw has \xe2\x80\x9crecognize[d] a greater need to disseminate factual\nworks than works of fiction or fantasy.\xe2\x80\x9d Harper & Row, 471\nU.S., at 563, 105 S.Ct., at 2232. Accord, Gorman, Fact or\nFancy: The Implications for Copyright, 29 J. Copyright Soc.\n560, 563 (1982). But \xe2\x80\x9csweat of the brow\xe2\x80\x9d courts took a\ncontrary view; they handed out proprietary interests in facts\nand declared that authors are absolutely precluded from\nsaving time and effort by relying upon the facts contained\nin prior works. In truth, \xe2\x80\x9c[i]t is just such wasted effort that\nthe proscription against the copyright of ideas and facts \xe2\x80\xa6\n\nThe Court ultimately rendered judgment for Associated Press on noncopyright\ngrounds that are not relevant here. See 248 U.S., at 235, 241-242, 39 S.Ct., at 71,\n73-74.\n1\n\n399\n\n\x0c[is] designed to prevent.\xe2\x80\x9d Rosemont Enterprises, Inc. v. Random\nHouse, Inc., 366 F.2d 303, 310 (CA2 1966), cert. denied 385\nU.S. 1009, 87 S.Ct. 714, 17 L.Ed.2d 546 (1967). \xe2\x80\x9cProtection\nfor the fruits of such research \xe2\x80\xa6 may in certain\ncircumstances be available under a theory of unfair\ncompetition. But to accord copyright protection on this\nbasis alone distorts basic copyright principles in that it\ncreates a monopoly in public domain materials without the\nnecessary justification of protecting and encouraging the\ncreation of \xe2\x80\x98writings\xe2\x80\x99 by \xe2\x80\x98authors.\xe2\x80\x99 \xe2\x80\x9d Nimmer \xc2\xa7 3.04, p. 3-23\n(footnote omitted).\nC.\n\xe2\x80\x9cSweat of the brow\xe2\x80\x9d decisions did not escape the attention\nof the Copyright Office. When Congress decided to\noverhaul the copyright statute and asked the Copyright\nOffice to study existing problems, see Mills Music, Inc. v.\nSnyder, 469 U.S. 153, 159, 105 S.Ct. 638, 642, 83 L.Ed.2d\n556 (1985), the Copyright Office promptly recommended\nthat Congress clear up the confusion in the lower courts as\nto the basic standards of copyrightability. The Register of\nCopyrights explained in his first report to Congress that\n\xe2\x80\x9coriginality\xe2\x80\x9d was a \xe2\x80\x9cbasic requisit[e]\xe2\x80\x9d of copyright under the\n1909 Act, but that \xe2\x80\x9cthe absence of any reference to\n[originality] in the statute seems to have led to\nmisconceptions as to what is copyrightable matter.\xe2\x80\x9d Report\nof the Register of Copyrights on the General Revision of\nthe U.S. Copyright Law, 87th Cong., 1st Sess., p. 9 (H.\nJudiciary Comm. Print 1961). The Register suggested\nmaking the originality requirement explicit. Ibid.\nCongress took the Register\xe2\x80\x99s advice. In enacting the\nCopyright Act of 1976, Congress dropped the reference to\n\xe2\x80\x9call the writings of an author\xe2\x80\x9d and replaced it with the\nphrase \xe2\x80\x9coriginal works of authorship.\xe2\x80\x9d 17 U.S.C. \xc2\xa7 102(a).\nIn making explicit the originality requirement, Congress\nannounced that it was merely clarifying existing law: \xe2\x80\x9cThe\n\n400\n\n\x0ctwo fundamental criteria of copyright protection [are]\noriginality and fixation in tangible form\xe2\x80\xa6 . The phrase\n\xe2\x80\x98original works of authorship,\xe2\x80\x99 which is purposely left\nundefined, is intended to incorporate without change the\nstandard of originality established by the courts under the present\n[1909] copyright statute.\xe2\x80\x9d H.R.Rep. No. 94-1476, p. 51 (1976)\n(emphasis added) (hereinafter H.R.Rep.); S.Rep. No. 94473, p. 50 (1975), U.S.Code Cong. & Admin.News 1976,\npp. 5659, 5664 (emphasis added) (hereinafter S.Rep.). This\nsentiment was echoed by the Copyright Office: \xe2\x80\x9cOur\nintention here is to maintain the established standards of\noriginality\xe2\x80\xa6 .\xe2\x80\x9d Supplementary Report of the Register of\nCopyrights on the General Revision of U.S. Copyright Law,\n89th Cong., 1st Sess., pt. 6, p. 3 (H. Judiciary Comm. Print\n1965) (emphasis added).\nTo ensure that the mistakes of the \xe2\x80\x9csweat of the brow\xe2\x80\x9d\ncourts would not be repeated, Congress took additional\nmeasures. For example, \xc2\xa7 3 of the 1909 Act had stated that\ncopyright protected only the \xe2\x80\x9ccopyrightable component\nparts\xe2\x80\x9d of a work, but had not identified originality as the\nbasis for distinguishing those component parts that were\ncopyrightable from those that were not. The 1976 Act\ndeleted this section and replaced it with \xc2\xa7 102(b), which\nidentifies specifically those elements of a work for which\ncopyright is not available: \xe2\x80\x9cIn no case does copyright\nprotection for an original work of authorship extend to any\nidea, procedure, process, system, method of operation,\nconcept, principle, or discovery, regardless of the form in\nwhich it is described, explained, illustrated, or embodied in\nsuch work.\xe2\x80\x9d Section 102(b) is universally understood to\nprohibit any copyright in facts. Harper & Row, supra, at 547,\n556, 105 S.Ct., at 2223, 2228. Accord, Nimmer \xc2\xa7 2.03[E]\n(equating facts with \xe2\x80\x9cdiscoveries\xe2\x80\x9d). As with \xc2\xa7 102(a),\nCongress emphasized that \xc2\xa7 102(b) did not change the law,\nbut merely clarified it: \xe2\x80\x9cSection 102(b) in no way enlarges\nor contracts the scope of copyright protection under the\n\n401\n\n\x0cpresent law. Its purpose is to restate \xe2\x80\xa6 that the basic\ndichotomy between expression and idea remains\nunchanged.\xe2\x80\x9d H.R.Rep., at 57; S.Rep., at 54, U.S.Code Cong.\n& Admin.News 1976, p. 5670.\nCongress took another step to minimize confusion by\ndeleting the specific mention of \xe2\x80\x9cdirectories \xe2\x80\xa6 and other\ncompilations\xe2\x80\x9d in \xc2\xa7 5 of the 1909 Act. As mentioned, this\nsection had led some courts to conclude that directories\nwere copyrightable per se and that every element of a\ndirectory was protected. In its place, Congress enacted two\nnew provisions. First, to make clear that compilations were\nnot copyrightable per se, Congress provided a definition of\nthe term \xe2\x80\x9ccompilation.\xe2\x80\x9d Second, to make clear that the\ncopyright in a compilation did not extend to the facts\nthemselves, Congress enacted \xc2\xa7 103.\nThe definition of \xe2\x80\x9ccompilation\xe2\x80\x9d is found in \xc2\xa7 101 of the\n1976 Act. It defines a \xe2\x80\x9ccompilation\xe2\x80\x9d in the copyright sense\nas \xe2\x80\x9ca work formed by the collection and assembling of\npreexisting materials or of data that are selected,\ncoordinated, or arranged in such a way that the resulting work\nas a whole constitutes an original work of authorship\xe2\x80\x9d\n(emphasis added).\nThe purpose of the statutory definition is to emphasize that\ncollections of facts are not copyrightable per se. It conveys\nthis message through its tripartite structure, as emphasized\nabove by the italics. The statute identifies three distinct\nelements and requires each to be met for a work to qualify\nas a copyrightable compilation: (1) the collection and\nassembly of pre-existing material, facts, or data; (2) the\nselection, coordination, or arrangement of those materials;\nand (3) the creation, by virtue of the particular selection,\ncoordination, or arrangement, of an \xe2\x80\x9coriginal\xe2\x80\x9d work of\nauthorship. \xe2\x80\x9c[T]his tripartite conjunctive structure is selfevident, and should be assumed to \xe2\x80\x98accurately express the\nlegislative purpose.\xe2\x80\x99 \xe2\x80\x9d Patry 51, quoting Mills Music, 469\nU.S., at 164, 105 S.Ct., at 645.\n\n402\n\n\x0cAt first glance, the first requirement does not seem to tell\nus much. It merely describes what one normally thinks of\nas a compilation \xe2\x80\x93 a collection of pre-existing material,\nfacts, or data. What makes it significant is that it is not the\nsole requirement. It is not enough for copyright purposes\nthat an author collects and assembles facts. To satisfy the\nstatutory definition, the work must get over two additional\nhurdles. In this way, the plain language indicates that not\nevery collection of facts receives copyright protection.\nOtherwise, there would be a period after \xe2\x80\x9cdata.\xe2\x80\x9d\nThe third requirement is also illuminating. It emphasizes\nthat a compilation, like any other work, is copyrightable\nonly if it satisfies the originality requirement (\xe2\x80\x9can original\nwork of authorship\xe2\x80\x9d). Although \xc2\xa7 102 states plainly that the\noriginality requirement applies to all works, the point was\nemphasized with regard to compilations to ensure that\ncourts would not repeat the mistake of the \xe2\x80\x9csweat of the\nbrow\xe2\x80\x9d courts by concluding that fact-based works are\ntreated differently and measured by some other standard.\nAs Congress explained it, the goal was to \xe2\x80\x9cmake plain that\nthe criteria of copyrightable subject matter stated in section\n102 apply with full force to works \xe2\x80\xa6 containing preexisting\nmaterial.\xe2\x80\x9d H.R.Rep., at 57; S.Rep., at 55, U.S.Code Cong. &\nAdmin.News 1976, p. 5670.\nThe key to the statutory definition is the second\nrequirement. It instructs courts that, in determining\nwhether a fact-based work is an original work of\nauthorship, they should focus on the manner in which the\ncollected facts have been selected, coordinated, and\narranged. This is a straightforward application of the\noriginality requirement. Facts are never original, so the\ncompilation author can claim originality, if at all, only in the\nway the facts are presented. To that end, the statute dictates\nthat the principal focus should be on whether the selection,\ncoordination, and arrangement are sufficiently original to\nmerit protection.\n\n403\n\n\x0cNot every selection, coordination, or arrangement will pass\nmuster. This is plain from the statute. It states that, to merit\nprotection, the facts must be selected, coordinated, or\narranged \xe2\x80\x9cin such a way\xe2\x80\x9d as to render the work as a whole\noriginal. This implies that some \xe2\x80\x9cways\xe2\x80\x9d will trigger\ncopyright, but that others will not. See Patry 57, and n. 76.\nOtherwise, the phrase \xe2\x80\x9cin such a way\xe2\x80\x9d is meaningless and\nCongress should have defined \xe2\x80\x9ccompilation\xe2\x80\x9d simply as \xe2\x80\x9ca\nwork formed by the collection and assembly of preexisting\nmaterials or data that are selected, coordinated, or\narranged.\xe2\x80\x9d That Congress did not do so is dispositive. In\naccordance with \xe2\x80\x9cthe established principle that a court\nshould give effect, if possible, to every clause and word of a\nstatute,\xe2\x80\x9d Moskal v. United States, 498 U.S. 103, 109-110, 111\nS.Ct. 461, 466, 112 L.Ed.2d 449 (1990) (internal quotation\nmarks omitted), we conclude that the statute envisions that\nthere will be some fact-based works in which the selection,\ncoordination, and arrangement are not sufficiently original\nto trigger copyright protection.\nAs discussed earlier, however, the originality requirement is\nnot particularly stringent. A compiler may settle upon a\nselection or arrangement that others have used; novelty is\nnot required. Originality requires only that the author make\nthe selection or arrangement independently (i.e., without\ncopying that selection or arrangement from another work),\nand that it display some minimal level of creativity.\nPresumably, the vast majority of compilations will pass this\ntest, but not all will. There remains a narrow category of\nworks in which the creative spark is utterly lacking or so\ntrivial as to be virtually nonexistent. See generally Bleistein v.\nDonaldson Lithographing Co., 188 U.S. 239, 251, 23 S.Ct. 298,\n300, 47 L.Ed. 460 (1903) (referring to \xe2\x80\x9cthe narrowest and\nmost obvious limits\xe2\x80\x9d). Such works are incapable of\nsustaining a valid copyright. Nimmer \xc2\xa7 2.01[B].\nEven if a work qualifies as a copyrightable compilation, it\nreceives only limited protection. This is the point of \xc2\xa7 103\n\n404\n\n\x0cof the Act. Section 103 explains that \xe2\x80\x9c[t]he subject matter\nof copyright \xe2\x80\xa6 includes compilations,\xe2\x80\x9d \xc2\xa7 103(a), but that\ncopyright protects only the author\xe2\x80\x99s original contributions \xe2\x80\x93\nnot the facts or information conveyed:\nThe copyright in a compilation \xe2\x80\xa6\nextends only to the material\ncontributed by the author of such\nwork, as distinguished from the\npreexisting material employed in the\nwork, and does not imply any\nexclusive right in the preexisting\nmaterial.\n\xc2\xa7 103(b).\nAs \xc2\xa7 103 makes clear, copyright is not a tool by which a\ncompilation author may keep others from using the facts or\ndata he or she has collected. \xe2\x80\x9cThe most important point\nhere is one that is commonly misunderstood today:\ncopyright \xe2\x80\xa6 has no effect one way or the other on the\ncopyright or public domain status of the preexisting\nmaterial.\xe2\x80\x9d H.R.Rep., at 57; S.Rep., at 55, U.S.Code Cong. &\nAdmin. News 1976, p. 5670. The 1909 Act did not require,\nas \xe2\x80\x9csweat of the brow\xe2\x80\x9d courts mistakenly assumed, that\neach subsequent compiler must start from scratch and is\nprecluded from relying on research undertaken by another.\nSee, e.g., Jeweler\xe2\x80\x99s Circular Publishing Co., 281 F., at 88-89.\nRather, the facts contained in existing works may be freely\ncopied because copyright protects only the elements that\nowe their origin to the compiler \xe2\x80\x93 the selection,\ncoordination, and arrangement of facts.\nIn summary, the 1976 revisions to the Copyright Act leave\nno doubt that originality, not \xe2\x80\x9csweat of the brow,\xe2\x80\x9d is the\ntouchstone of copyright protection in directories and other\nfact-based works. Nor is there any doubt that the same was\ntrue under the 1909 Act. The 1976 revisions were a direct\nresponse to the Copyright Office\xe2\x80\x99s concern that many\n\n405\n\n\x0clower courts had misconstrued this basic principle, and\nCongress emphasized repeatedly that the purpose of the\nrevisions was to clarify, not change, existing law. The\nrevisions explain with painstaking clarity that copyright\nrequires originality, \xc2\xa7 102(a); that facts are never original, \xc2\xa7\n102(b); that the copyright in a compilation does not extend\nto the facts it contains, \xc2\xa7 103(b); and that a compilation is\ncopyrightable only to the extent that it features an original\nselection, coordination, or arrangement, \xc2\xa7 101.\nThe 1976 revisions have proven largely successful in\nsteering courts in the right direction. A good example is\nMiller v. Universal City Studios, Inc., 650 F.2d, at 1369-1370:\n\xe2\x80\x9cA copyright in a directory \xe2\x80\xa6 is properly viewed as resting\non the originality of the selection and arrangement of the\nfactual material, rather than on the industriousness of the\nefforts to develop the information. Copyright protection\ndoes not extend to the facts themselves, and the mere use\nof information contained in a directory without a\nsubstantial copying of the format does not constitute\ninfringement\xe2\x80\x9d (citation omitted). Additionally, the Second\nCircuit, which almost 70 years ago issued the classic\nformulation of the \xe2\x80\x9csweat of the brow\xe2\x80\x9d doctrine in Jeweler\xe2\x80\x99s\nCircular Publishing Co., has now fully repudiated the\nreasoning of that decision. See, e.g., Financial Information, Inc.\nv. Moody\xe2\x80\x99s Investors Service, Inc., 808 F.2d 204, 207 (CA2\n1986), cert. denied, 484 U.S. 820, 108 S.Ct. 79, 98 L.Ed.2d\n42 (1987); Financial Information, Inc. v. Moody\xe2\x80\x99s Investors Service,\nInc., 751 F.2d 501, 510 (CA2 1984) (Newman, J.,\nconcurring); Hoehling v. Universal City Studios, Inc., 618 F.2d\n972, 979 (CA2 1980). Even those scholars who believe that\n\xe2\x80\x9cindustrious collection\xe2\x80\x9d should be rewarded seem to\nrecognize that this is beyond the scope of existing\ncopyright law. See Denicola 516 (\xe2\x80\x9c[T]he very vocabulary of\ncopyright is ill suited to analyzing property rights in works\nof nonfiction\xe2\x80\x9d); id., at 520-521, 525; Ginsburg 1867, 1870.\nIII\n\n406\n\n\x0cThere is no doubt that Feist took from the white pages of\nRural\xe2\x80\x99s directory a substantial amount of factual\ninformation. At a minimum, Feist copied the names, towns,\nand telephone numbers of 1,309 of Rural\xe2\x80\x99s subscribers.\nNot all copying, however, is copyright infringement. To\nestablish infringement, two elements must be proven: (1)\nownership of a valid copyright, and (2) copying of\nconstituent elements of the work that are original. See\nHarper & Row, 471 U.S., at 548, 105 S.Ct., at 2224. The first\nelement is not at issue here; Feist appears to concede that\nRural\xe2\x80\x99s directory, considered as a whole, is subject to a valid\ncopyright because it contains some foreword text, as well as\noriginal material in its yellow pages advertisements. See\nBrief for Petitioner 18; Pet. for Cert. 9.\nThe question is whether Rural has proved the second\nelement. In other words, did Feist, by taking 1,309 names,\ntowns, and telephone numbers from Rural\xe2\x80\x99s white pages,\ncopy anything that was \xe2\x80\x9coriginal\xe2\x80\x9d to Rural? Certainly, the\nraw data does not satisfy the originality requirement. Rural\nmay have been the first to discover and report the names,\ntowns, and telephone numbers of its subscribers, but this\ndata does not \xe2\x80\x9d \xe2\x80\x98ow[e] its origin\xe2\x80\x99 \xe2\x80\x9d to Rural. Burrow-Giles,\n111 U.S., at 58, 4 S.Ct., at 281. Rather, these bits of\ninformation are uncopyrightable facts; they existed before\nRural reported them and would have continued to exist if\nRural had never published a telephone directory. The\noriginality requirement \xe2\x80\x9crule[s] out protecting \xe2\x80\xa6 names,\naddresses, and telephone numbers of which the plaintiff by\nno stretch of the imagination could be called the author.\xe2\x80\x9d\nPatterson & Joyce 776.\nRural essentially concedes the point by referring to the\nnames, towns, and telephone numbers as \xe2\x80\x9cpreexisting\nmaterial.\xe2\x80\x9d Brief for Respondent 17. Section 103(b) states\nexplicitly that the copyright in a compilation does not\nextend to \xe2\x80\x9cthe preexisting material employed in the work.\xe2\x80\x9d\n\n407\n\n\x0cThe question that remains is whether Rural selected,\ncoordinated, or arranged these uncopyrightable facts in an\noriginal way. As mentioned, originality is not a stringent\nstandard; it does not require that facts be presented in an\ninnovative or surprising way. It is equally true, however,\nthat the selection and arrangement of facts cannot be so\nmechanical or routine as to require no creativity\nwhatsoever. The standard of originality is low, but it does\nexist. See Patterson & Joyce 760, n. 144 (\xe2\x80\x9cWhile this\nrequirement is sometimes characterized as modest, or a low\nthreshold, it is not without effect\xe2\x80\x9d) (internal quotation\nmarks omitted; citations omitted). As this Court has\nexplained, the Constitution mandates some minimal degree\nof creativity, see The Trade-Mark Cases, 100 U.S., at 94; and\nan author who claims infringement must prove \xe2\x80\x9cthe\nexistence of \xe2\x80\xa6 intellectual production, of thought, and\nconception.\xe2\x80\x9d Burrow-Giles, supra, 111 U.S., at 59-60, 4 S.Ct.,\nat 281-282.\nThe selection, coordination, and arrangement of Rural\xe2\x80\x99s\nwhite pages do not satisfy the minimum constitutional\nstandards for copyright protection. As mentioned at the\noutset, Rural\xe2\x80\x99s white pages are entirely typical. Persons\ndesiring telephone service in Rural\xe2\x80\x99s service area fill out an\napplication and Rural issues them a telephone number. In\npreparing its white pages, Rural simply takes the data\nprovided by its subscribers and lists it alphabetically by\nsurname. The end product is a garden-variety white pages\ndirectory, devoid of even the slightest trace of creativity.\nRural\xe2\x80\x99s selection of listings could not be more obvious: It\npublishes the most basic information \xe2\x80\x93 name, town, and\ntelephone number \xe2\x80\x93 about each person who applies to it\nfor telephone service. This is \xe2\x80\x9cselection\xe2\x80\x9d of a sort, but it\nlacks the modicum of creativity necessary to transform\nmere selection into copyrightable expression. Rural\nexpended sufficientef fort to make the white pages\n\n408\n\n\x0cdirectory useful, but insufficient creativity to make it\noriginal.\nWe note in passing that the selection featured in Rural\xe2\x80\x99s\nwhite pages may also fail the originality requirement for\nanother reason. Feist points out that Rural did not truly\n\xe2\x80\x9cselect\xe2\x80\x9d to publish the names and telephone numbers of its\nsubscribers; rather, it was required to do so by the Kansas\nCorporation Commission as part of its monopoly franchise.\nSee 737 F.Supp., at 612. Accordingly, one could plausibly\nconclude that this selection was dictated by state law, not\nby Rural.\nNor can Rural claim originality in its coordination and\narrangement of facts. The white pages do nothing more\nthan list Rural\xe2\x80\x99s subscribers in alphabetical order. This\narrangement may, technically speaking, owe its origin to\nRural; no one disputes that Rural undertook the task of\nalphabetizing the names itself. But there is nothing\nremotely creative about arranging names alphabetically in a\nwhite pages directory. It is an age-old practice, firmly\nrooted in tradition and so commonplace that it has come to\nbe expected as a matter of course. See Brief for\nInformation Industry Association et al. as Amici Curiae 10\n(alphabetical arrangement \xe2\x80\x9cis universally observed in\ndirectories published by local exchange telephone\ncompanies\xe2\x80\x9d). It is not only unoriginal, it is practically\ninevitable. This time-honored tradition does not possess\nthe minimal creative spark required by the Copyright Act\nand the Constitution.\nWe conclude that the names, towns, and telephone\nnumbers copied by Feist were not original to Rural and\ntherefore were not protected by the copyright in Rural\xe2\x80\x99s\ncombined white and yellow pages directory. As a\nconstitutional matter, copyright protects only those\nconstituent elements of a work that possess more than a de\nminimis quantum of creativity. Rural\xe2\x80\x99s white pages, limited\nto basic subscriber information and arranged alphabetically,\n\n409\n\n\x0cfall short of the mark. As a statutory matter, 17 U.S.C. \xc2\xa7\n101 does not afford protection from copying to a collection\nof facts that are selected, coordinated, and arranged in a\nway that utterly lacks originality. Given that some works\nmust fail, we cannot imagine a more likely candidate.\nIndeed, were we to hold that Rural\xe2\x80\x99s white pages pass\nmuster, it is hard to believe that any collection of facts\ncould fail.\nBecause Rural\xe2\x80\x99s white pages lack the requisite originality,\nFeist\xe2\x80\x99s use of the listings cannot constitute infringement.\nThis decision should not be construed as demeaning\nRural\xe2\x80\x99s efforts in compiling its directory, but rather as\nmaking clear that copyright rewards originality, not effort.\nAs this Court noted more than a century ago, \xe2\x80\x9d \xe2\x80\x98great praise\nmay be due to the plaintiffs for their industry and\nenterprise in publishing this paper, yet the law does not\ncontemplate their being rewarded in this way.\xe2\x80\x99 \xe2\x80\x9d Baker v.\nSelden, 101 U.S., at 105.\nThe judgment of the Court of Appeals is\nReversed.\nJustice BLACKMUN concurs in the judgment.\n3.4.2. Calibration: Scope of Exclusion, a.k.a. Fair Use\nSuntrust Bank v. Houghton Mifflin Co., 268 F.3d 1257\n(11th Cir. 2001)\nJoseph M. Beck, Miles J. Alexander, Jerry Bailey Swann,\nKilpatrick Stockton & Cody, Atlanta, Georgia, for\nAppellant.\nRichard Kurnit, New York City, William B. Smith, Ralph R.\nMorrison, Anne Moody Johnson, Jones, Day, Reavis &\nPogue, Atlanta, Georgia, for Appellee.\nLeon Friedman, New York City, for Pen American Ctr.,\nAmerican Booksellers Foundation for Freedom of Exp.,\nFreedom to Read Foundation, Washington Lawyers\xe2\x80\x99 for\n\n410\n\n\x0cthe Arts, The First Amendment Project and National\nCoalition Against Censorship, Amicus Curiae,.\nE. Edward Bruce, Covington & Burling, Washington, DC,\nfor Microsoft Corp., Amicus Curiae,.\nHollie Manheimer, Decatur, Georgia, for Amicus Curiae.\nBefore BIRCH, MARCUS and WOOD1, Circuit Judges.\nBIRCH, Circuit Judge:\nIn this opinion, we decide whether publication of The\nWind Done Gone (\xe2\x80\x9cTWDG\xe2\x80\x9d), a fictional work admittedly\nbased on Margaret Mitchell\xe2\x80\x99s Gone With the Wind\n(\xe2\x80\x9cGWTW\xe2\x80\x9d), should be enjoined from publication based on\nalleged copyright violations. The district court granted a\npreliminary injunction against publication of TWDG\nbecause it found that Plaintiff-Appellee SunTrust Bank\n(\xe2\x80\x9cSunTrust\xe2\x80\x9d) met the four-part test governing preliminary\ninjunctions. We VACATE the injunction and REMAND\nfor consideration of the remaining claims.\nI. BACKGROUND\nA. Procedural History\nSunTrust is the trustee of the Mitchell Trust, which holds\nthe copyright in GWTW. Since its publication in 1936,\nGWTW has become one of the best-selling books in the\nworld, second in sales only to the Bible. The Mitchell Trust\nhas actively managed the copyright, authorizing derivative\nworks and a variety of commercial items. It has entered\ninto a contract authorizing, under specified conditions, a\nsecond sequel to GWTW to be published by St. Martin\xe2\x80\x99s\n\nHonorable Harlington Wood, Jr., U.S. Circuit Judge for the Seventh Circuit,\nsitting by designation.\n1\n\n411\n\n\x0cPress. The Mitchell Trust maintains the copyright in all of\nthe derivative works as well. See 17 U.S.C. \xc2\xa7 103.2\nAlice Randall, the author of TWDG, persuasively claims\nthat her novel is a critique of GWTW\xe2\x80\x99s depiction of slavery\nand the Civil-War era American South. To this end, she\nappropriated the characters, plot and major scenes from\nGWTW into the first half of TWDG. According to\nSunTrust, TWDG \xe2\x80\x9c(1) explicitly refers to [GWTW] in its\nforeword; (2) copies core characters, character traits, and\nrelationships from [GWTW]; (3) copies and summarizes\nfamous scenes and other elements of the plot from\n[GWTW]; and (4) copies verbatim dialogues and\ndescriptions from [GWTW].\xe2\x80\x9d SunTrust Bank v. Houghton\nMifflin Co., 136 F. Supp. 2d 1357, 1364 (N.D.Ga. 2001),\nvacated, 252 F.3d 1165 (11th Cir. 2001). DefendantAppellant Houghton Mifflin, the publisher of TWDG, does\nnot contest the first three allegations,3 but nonetheless\nargues that there is no substantial similarity between the\ntwo works or, in the alternative, that the doctrine of fair use\nprotects TWDG because it is primarily a parody of\nGWTW.\nAfter discovering the similarities between the books,\nSunTrust asked Houghton Mifflin to refrain from\npublication or distribution of TWDG, but Houghton\nMifflin refused the request. Subsequently, SunTrust filed an\naction alleging copyright infringement, violation of the\nLanham Act, and deceptive trade practices, and\nimmediately filed a motion for a temporary restraining\norder and a preliminary injunction.\nAfter a hearing, the district court granted the motion,\npreliminarily enjoining Houghton Mifflin from \xe2\x80\x9cfurther\nHereafter, the Copyright Act of 1976 shall be referred to by only the section\nnumber of the Act.\n2\n\nHoughton Mifflin denies that there are passages from GWTW copied verbatim\nin TWDG.\n3\n\n412\n\n\x0cproduction, display, distribution, advertising, sale, or offer\nfor sale of\xe2\x80\x9d TWDG. SunTrust Bank, 136 F. Supp. 2d at\n1386. In a thorough opinion, the court found that \xe2\x80\x9cthe\ndefendant\xe2\x80\x99s publication and sale of [TWDG would]\ninfringe the plaintiff\xe2\x80\x99s copyright interests as protected\nunder the copyright laws.\xe2\x80\x9d Id. Houghton Mifflin appealed.\nAt oral argument, we issued an order vacating the\ninjunction on the grounds that it was an unconstitutional\nprior restraint. SunTrust Bank v. Houghton Mifflin Co.,\n252 F. 3d 1165 (11th Cir. 2001). We now vacate that order\nand issue this more comprehensive opinion.\nB. Standard of Review\n\xe2\x80\x9cWe review the district court\xe2\x80\x99s grant of a preliminary\ninjunction for abuse of discretion.\xe2\x80\x9d Warren Pub., Inc. v.\nMicrodos Data Corp., 115 F.3d 1509, 1516 (11th Cir. 1997)\n(en banc). We review decisions of law de novo and findings\nof fact for clear error. Mitek Holdings, Inc. v. Arce Eng\xe2\x80\x99g\nCo., Inc., 89 F.3d 1548, 1554 (11th Cir. 1996).\nII. DISCUSSION\nOur primary focus at this stage of the case is on the\nappropriateness of the injunctive relief granted by the\ndistrict court. In our analysis, we must evaluate the merits\nof SunTrust\xe2\x80\x99s copyright infringement claim, including\nHoughton Mifflin\xe2\x80\x99s affirmative defense of fair use.4 As we\nassess the fair-use defense, we examine to what extent a\n\nI believe that fair use should be considered an affirmative right under the 1976\nAct, rather than merely an affirmative defense, as it is defined in the Act as a use\nthat is not a violation of copyright. See Bateman v. Mneumonics, Inc., 79 F.3d\n1532, 1542 n.22 (11th Cir. 1996). However, fair use is commonly referred to an\naffirmative defense, see Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 590,\n114 S. Ct. 1164, 1177 (1994), and, as we are bound by Supreme Court precedent,\nwe will apply it as such. See also David Nimmer, A Riff on Fair Use in the Digital\nMillennium Copyright Act, 148 U. Pa. L. Rev. 673, 714 n. 227 (2000) (citing\nBateman). Nevertheless, the fact that the fair use right must be procedurally\nasserted as an affirmative defense does not detract from its constitutional\nsignificance as a guarantor to access and use for First Amendment purposes.\n4\n\n413\n\n\x0ccritic may use a work to communicate her criticism of the\nwork without infringing the copyright in that work. To\napproach these issues in the proper framework, we should\ninitially review the history of the Constitution\xe2\x80\x99s Copyright\nClause and understand its relationship to the First\nAmendment.\nA. History and Development of the Copyright Clause\nThe Copyright Clause finds its roots in England, where, in\n1710, the Statute of Anne \xe2\x80\x9cwas designed to destroy the\nbooksellers\xe2\x80\x99 monopoly of the booktrade and to prevent its\nrecurrence.\xe2\x80\x9d L. Ray Patterson, Understanding the\nCopyright Clause, 47 J. Copyright Soc\xe2\x80\x99y USA 365, 379\n(2000). This Parliamentary statute assigned copyright in\nbooks to authors, added a requirement that only a new\nwork could be copyrighted, and limited the duration, which\nhad been perpetual, to two fourteen-year terms. It is clear\nthat the goal of the Statute of Anne was to encourage\ncreativity and ensure that the public would have free access\nto information by putting an end to \xe2\x80\x9cthe continued use of\ncopyright as a device of censorship.\xe2\x80\x9d Patterson at 379.5 The\nFramers of the U.S. Constitution relied on this statute\nwhen drafting the Copyright Clause of our Constitution,\nwhich reads,\nThe Congress shall have Power \xe2\x80\xa6 to\npromote the Progress of Science \xe2\x80\xa6 by\nsecuring for limited Times to Authors\n\xe2\x80\xa6 the exclusive Right to their\nrespective Writings \xe2\x80\xa6 .\n\nThe Statute of Anne providing for copyright is introduced as \xe2\x80\x9c[a]n act for the\nencouragement of learning,\xe2\x80\x9d and has a preamble that states one of the purposes as\n\xe2\x80\x9cthe encouragement of learned men to compose and write useful books.\xe2\x80\x9d 8 Anne,\nC.19 (1710), reprinted in 8 Nimmer \xc2\xa7 7-5.\n5\n\n414\n\n\x0cU.S. Const. art. 1, \xc2\xa7 8, cl. 8. Congress directly transferred\nthe principles from the Statute of Anne into the copyright\nlaw of the United States in 1783, first through a\nrecommendation to the states to enact similar copyright\nlaws, and then in 1790, with the passage of the first\nAmerican federal copyright statute.\nThe Copyright Clause was intended \xe2\x80\x9cto be the engine of\nfree expression.\xe2\x80\x9d Harper & Row Publishers, Inc. v. Nation\nEnters., 471 U.S. 539, 558 (1985). To that end, copyright\nlaws have been enacted achieve the three main goals: the\npromotion of learning, the protection of the public domain,\nand the granting of an exclusive right to the author.\n1. Promotion of Learning\nIn the United States, copyright has always been used to\npromote learning by guarding against censorship.\nThroughout the nineteenth century, the copyright in\nliterature was limited to the right \xe2\x80\x9cto publish and vend\nbooks.\xe2\x80\x9d Patterson, at 383. The term \xe2\x80\x9ccopy\xe2\x80\x9d was interpreted\nliterally; an author had the right only to prevent others\nfrom copying and selling her particular literary work. See\nStowe v. Thomas, 23 F. Cas. 201 (C.C.E.D. Pa. 1853)\n(holding that a translation of Uncle Tom\xe2\x80\x99s Cabin into\nGerman was not a copyright infringement because it was\nnot a copy of the work as it was published).6 This limited\nright ensured that a maximum number of new works would\nbe created and published. It was not until the 1909 Act,\nwhich codified the concept of a derivative work, that an\nauthor\xe2\x80\x99s right to protect his original work against imitation\nwas established. This change more closely represents\n\nUnder modern copyright, such a right to translate would enjoy protection as a\n\xe2\x80\x9cderivative work.\xe2\x80\x9d \xc2\xa7\xc2\xa7 101 and 106. In Folsom v. Marsh, 9 F.Cas. 342 (C.C.Mass.\n1841), Justice Story created the concept of \xe2\x80\x9cfair use,\xe2\x80\x9d which actually expanded the\ncopyright monopoly, since until that time a translation or abridgement was not\nconsidered an infringement.\n6\n\n415\n\n\x0ccurrent statutory copyright law and is consistent with\ncopyright\xe2\x80\x99s constitutional mandate.\nAs a further protection of the public interest, until 1976,\nstatutory copyright law required that a work be published\nbefore an author was entitled to a copyright in that work.\nTherefore, in order to have the sole right of publication for\nthe statutory period, the author was first required to make\nthe work available to the public. In 1976, copyright was\nextended to include any work \xe2\x80\x9cfixed in any tangible\nmedium of expression\xe2\x80\x9d in order to adapt the law to\ntechnological advances. \xc2\xa7 102(a). Thus, the publication\nrequirement was removed, but the fair use right was\ncodified to maintain the constitutionally mandated balance\nto ensure that the public has access to knowledge.\nThe Copyright Act promotes public access to knowledge\nbecause it provides an economic incentive for authors to\npublish books and disseminate ideas to the public. Harper\n& Row, 471 U.S. at 558 (\xe2\x80\x9cBy establishing a marketable right\nto the use of one\xe2\x80\x99s expression, copyright supplies the\neconomic incentive to create and disseminate ideas.\xe2\x80\x9d). The\nSupreme Court has recognized that \xe2\x80\x9c[t]he monopoly\ncreated by copyright thus rewards the individual author in\norder to benefit the public.\xe2\x80\x9d Id. at 546. Without the limited\nmonopoly, authors would have little economic incentive to\ncreate and publish their work. Therefore, by providing this\nincentive, the copyright law promotes the public access to\nnew ideas and concepts.\n2. Protection of the Public Domain\nThe second goal of the Copyright Clause is to ensure that\nworks enter the public domain after an author\xe2\x80\x99s rights,\nexclusive, but limited, have expired. Parallel to the patent\nregime, the limited time period of the copyright serves the\ndual purpose of ensuring that the work will enter the public\ndomain and ensuring that the author has received \xe2\x80\x9ca fair\n\n416\n\n\x0creturn for [her] labors.\xe2\x80\x9d Harper & Row, 471 U.S. at 546.\nThis limited grant \xe2\x80\x9cis intended to motivate the creative\nactivity of authors \xe2\x80\xa6 by the provision of a special reward,\nand to allow the public access to the products of their\ngenius after the limited period of exclusive control has\nexpired.\xe2\x80\x9d Sony, 464 U.S. at 429. The public is protected in\ntwo ways: the grant of a copyright encourages authors to\ncreate new works, as discussed in section II.A.1., and the\nlimitation ensures that the works will eventually enter the\npublic domain, which protects the public\xe2\x80\x99s right of access\nand use.\n3. Exclusive Rights of the Author\nFinally, the Copyright Clause grants the author limited\nexclusive rights in order to encourage the creation of\noriginal works. Before our copyright jurisprudence\ndeveloped, there were two separate theories of copyright in\nEngland - the natural law copyright, which was the right of\nfirst publication, and the statutory copyright, which was the\nright of continued publication. The natural law copyright,\nwhich is not a part of our system, implied an ownership in\nthe work itself, and thus was preferred by the booksellers\nand publishers striving to maintain their monopoly over\nliterature as well as by the Crown to silence \xe2\x80\x9cseditious\xe2\x80\x9d\nwritings. Even after passage of the Statute of Anne, the\npublishers and booksellers resisted the loss of their\nmonopoly in the courts for more than sixty years. Finally,\nin 1774, the House of Lords ruled that the natural law\ncopyright, that is, the ownership of the work itself, expires\nupon publication of the book, when the statutory copyright\nattaches. Patterson at 382.\nThis bifurcated system was carried over into our copyright\nlaw. As of the 1909 Act, an author had \xe2\x80\x9cstate common law\nprotection [that] persisted until the moment of general\npublication.\xe2\x80\x9d Estate of Martin Luther King, Jr. v. CBS, Inc.,\n194 F.3d 1211, 1214 (11th Cir. 1999). After the work was\n\n417\n\n\x0cpublished, the author was entitled to federal statutory\ncopyright protection if she had complied with certain\nfederal requirements (i.e. publication with notice). If not,\nthe work was released into the public domain. Id. The\nsystem illustrates that the author\xe2\x80\x99s ownership is in the\ncopyright, and not in the work itself, for if the author had\nan ownership interest in the work itself, she would not lose\nthat right if she published the book without complying with\nfederal statutory copyright requirements. Compliance with\nthe copyright law results in the guarantee of copyright to\nthe author for a limited time, but the author never owns the\nwork itself. \xc2\xa7 202 (\xe2\x80\x9cOwnership of a copyright, or of any of\nthe exclusive rights under a copyright, is distinct from\nownership of any material object in which the work is\nembodied.\xe2\x80\x9d).\nThis has an important impact on modern interpretation of\ncopyright, as it emphasizes the distinction between\nownership of the work, which an author does not possess,\nand ownership of the copyright, which an author enjoys for\na limited time. In a society oriented toward property\nownership, it is not surprising to find many that\nerroneously equate the work with the copyright in the work\nand conclude that if one owns the copyright, they must also\nown the work. However, the fallacy of that understanding\nis exposed by the simple fact that the work continues to\nexist after the term of copyright associated with the work\nhas expired. \xe2\x80\x9cThe copyright is not a natural right inherent\nin authorship. If it were, the impact on market values\nwould be irrelevant; any unauthorized taking would be\nobnoxious.\xe2\x80\x9d Pierre Leval, Towards a Fair Use Standard,\n105 Harv. L. Rev. 1105, 1124 (1990).\nB. The Union of Copyright and the First Amendment\n\n418\n\n\x0cThe Copyright Clause and the First Amendment, while\nintuitively in conflict,7 were drafted to work together to\nprevent censorship; copyright laws were enacted in part to\nprevent private censorship and the First Amendment was\nenacted to prevent public censorship. There are\n\xe2\x80\x9c[c]onflicting interests that must be accommodated in\ndrawing a definitional balance\xe2\x80\x9d between the Copyright\nClause and the First Amendment. 1 Nimmer \xc2\xa7 1.10[B][1].\nIn establishing this balance \xe2\x80\x9c[o]n the copyright side,\neconomic encouragement for creators must be preserved\nand the privacy of unpublished works recognized. Freedom\nof speech[, on the other hand,] requires the preservation of\na meaningful public or democratic dialogue, as well as the\nuses of speech as a safety valve against violent acts, and as\nan end in itself.\xe2\x80\x9d Id.\nIn copyright law, the balance between the First\nAmendment and copyright is preserved, in part, by the\nidea/expression dichotomy and the doctrine of fair use.\n1. The Idea/Expression Dichotomy\nCopyright cannot protect an idea, only the expression of\nthat idea. The result is that \xe2\x80\x9ccopyright assures authors the\nright to their original expression, but encourages others to\nbuild freely upon the ideas and information conveyed by\nthe work.\xe2\x80\x9d Feist, 499 U.S. at 349-50. It is partly through\nthis idea/expression dichotomy that copyright law\nembodies the First Amendment\xe2\x80\x99s underlying goal of\nencouraging open debate and the free exchange of ideas.\nHolding an infringer liable in copyright for copying the\nexpression of another author\xe2\x80\x99s ideas does not impede First\nAmendment goals because the public purpose has been\nserved - the public already has access to the idea or the\n\nWhile the First Amendment disallows laws that abridge the freedom of speech,\nthe Copyright Clause calls specifically for such a law.\n7\n\n419\n\n\x0cconcepts. A new author may use or discuss the idea, but\nmust do so using her own original expression.\n2. Fair Use\nFirst Amendment privileges are also preserved through the\ndoctrine of fair use. Until codification of the fair-use\ndoctrine in the 1976 Act, fair use was a judge-made right\ndeveloped to preserve the constitutionality of copyright\nlegislation by protecting First Amendment values. Had fair\nuse not been recognized as a right under the 1976 Act, the\nstatutory abandonment of publication as a condition of\ncopyright that had existed for over 200 years would have\njeopardized the constitutionality of the new Act because\nthere would be no statutory guarantee that new ideas, or\nnew expressions of old ideas, would be accessible to the\npublic. Included in the definition of fair use are \xe2\x80\x9cpurposes\nsuch as criticism, comment, news reporting, teaching \xe2\x80\xa6,\nscholarship, or research.\xe2\x80\x9d \xc2\xa7 107. The exceptions carved out\nfor these purposes are at the heart of fair use\xe2\x80\x99s protection\nof the First Amendment, as they allow later authors to use\na previous author\xe2\x80\x99s copyright to introduce new ideas or\nconcepts to the public. Therefore, within the limits of the\nfair-use test, any use of a copyright is permitted to fulfill\none of the important purposes listed in the statute.\nBecause of the First Amendment principles built into\ncopyright law through the idea/expression dichotomy and\nthe doctrine of fair use, courts often need not entertain\nrelated First Amendment arguments in a copyright case.\n[citations omitted]\nThe case before us calls for an analysis of whether a\npreliminary injunction was properly granted against an\nalleged infringer who, relying largely on the doctrine of fair\nuse, made use of another\xe2\x80\x99s copyright for comment and\ncriticism. As discussed herein, copyright does not\nimmunize a work from comment and criticism. Therefore,\n\n420\n\n\x0cthe narrower question in this case is to what extent a critic\nmay use the protected elements of an original work of\nauthorship to communicate her criticism without infringing\nthe copyright in that work. As will be discussed below, this\nbecomes essentially an analysis of the fair use factors. As\nwe turn to the analysis required in this case, we must\nremain cognizant of the First Amendment protections\ninterwoven into copyright law.\nC. Appropriateness of Injunctive Relief\n\xe2\x80\x9cThe chief function of a preliminary injunction is to\npreserve the status quo until the merits of the controversy\ncan be fully and fairly adjudicated.\xe2\x80\x9d The Copyright Act\nspecifically vests the federal courts with power to grant\ninjunctions \xe2\x80\x9cto prevent or restrain infringement of a\ncopyright.\xe2\x80\x9d \xc2\xa7 502(a). While injunctive relief may be\nparticularly appropriate in cases involving simple copying\nor \xe2\x80\x9cpiracy\xe2\x80\x9d of a copyrighted work, the Supreme Court has\ncautioned that such relief may not be consistent with the\ngoals of copyright law in cases in which the alleged\ninfringer of the copyright has a colorable fair-use defense.\nThe basic framework for our analysis remains, however, the\nstandard test governing the issuance of preliminary\ninjunctions. SunTrust is not entitled to relief in the form of\na preliminary injunction unless it has proved each of the\nfollowing four elements: \xe2\x80\x9c(1) a substantial likelihood of\nsuccess on the merits, (2) a substantial threat of irreparable\ninjury if the injunction were not granted, (3) that the\nthreatened injury to the plaintiff outweighs the harm an\ninjunction may cause the defendant, and (4) that granting\nthe injunction would not disserve the public interest.\xe2\x80\x9d\n\n421\n\n\x0c1. Substantial Likelihood of Success on the Merits\na. Prima Facie Copyright Infringement\nThe first step in evaluating the likelihood that SunTrust will\nsucceed on the merits is to determine whether it has\nestablished the prima facie elements of a copyright\ninfringement claim: (1) that SunTrust owns a valid\ncopyright in GWTW and (2) that Randall copied original\nelements of GWTW in TWDG. The district court found\nthat SunTrust had carried its burden on both of these\nelements.\nThe first element, SunTrust\xe2\x80\x99s ownership of a valid\ncopyright in GWTW, is not disputed. Houghton Mifflin\ndoes assert, however, that SunTrust did not establish the\nsecond element of infringement, that TWDG appropriates\ncopyright-protected expression from GWTW. In order to\nprove copying, SunTrust was required to show a\n\xe2\x80\x9csubstantial similarity\xe2\x80\x9d between the two works such that\n\xe2\x80\x9can average lay observer would recognize the alleged copy\nas having been appropriated from the copyrighted work.\xe2\x80\x9d\nNot all copying of a work is actionable, however, for, as\ndiscussed in section II.B.1., \xe2\x80\x9cno author may copyright facts\nor ideas. The copyright is limited to those aspects of the\nwork-termed \xe2\x80\x98expression\xe2\x80\x99-that display the stamp of the\nauthor\xe2\x80\x99s originality.\xe2\x80\x9d Thus, we are concerned with\nsubstantial similarities between TWDG and GWTW only\nto the extent that they involve the copying of original,\nprotected expression.8\n\nOriginally the word \xe2\x80\x9ccopie\xe2\x80\x9d was a noun, indicating the manuscript. Ownership\nof the \xe2\x80\x9ccopie\xe2\x80\x9d thus meant ownership of the manuscript for the purposes of\npublishing it. Today, \xe2\x80\x9ccopy\xe2\x80\x9d has become a verb, meaning the act of reproduction\nof a work. But in the development of copyright law it was intended to be a term\nof art, indicating a reproduction of a work for publication. Failure to understand\nand apply this distinction has confused many courts (assisted by overzealous\nadvocates) into too expansive a view of the scope of the copyright monopoly.\n8\n\n422\n\n\x0cThere is no bright line that separates the protectable\nexpression from the nonprotectable idea in a work of\nfiction. While often referred to as a test for distinguishing\nthe idea from the expression, Judge Learned Hand\xe2\x80\x99s\nfamous statement in Nichols v. Universal Pictures Corp.,\n45 F.2d 119 (2d Cir. 1930), is actually nothing more than a\nconcise restatement of the problem facing the courts:\nUpon any work, and especially upon a play, a great\nnumber of patterns of increasing generality will fit\nequally well, as more and more of the incident is left\nout. The last may perhaps be no more than the most\ngeneral statement of what the play is about, and at\ntime might consist only of its title; but there is a point\nin this series of abstractions where they are no longer\nprotected, since otherwise the playwright could\nprevent the use of his \xe2\x80\x98ideas,\xe2\x80\x99 to which, apart from\ntheir expression, his property is never extended.\nId. at 121. At one end of the spectrum, scenes a faire \xe2\x80\x93 the\nstock scenes and hackneyed character types that \xe2\x80\x9cnaturally\nflow from a common theme\xe2\x80\x9d \xe2\x80\x93 are considered \xe2\x80\x9cideas,\xe2\x80\x9d and\ntherefore are not copyrightable. Beal v. Paramount Pictures\nCorp., 20 F.3d 454, 459-60 (11th Cir. 1994). But as plots\nbecome more intricately detailed and characters become\nmore idiosyncratic, they at some point cross the line into\n\xe2\x80\x9cexpression\xe2\x80\x9d and are protected by copyright.\nAfter conducting a thorough comparison of the two works,\nthe district court found that TWDG copied far more than\nunprotected scenes a faire from GWTW: \xe2\x80\x9c[TWDG] uses\nfifteen fictional characters from [GWTW], incorporating\ntheir physical attributes, mannerisms, and the distinct\nfeatures that Ms. Mitchell used to describe them, as well as\ntheir complex relationships with each other. Moreover, the\nvarious [fictional] locales, \xe2\x80\xa6 settings, characters, themes,\nand plot of [TWDG] closely mirror those contained in\n[GWTW].\xe2\x80\x9d SunTrust, 136 F.Supp.2d at 1367.\n\n423\n\n\x0cOur own review of the two works reveals substantial use of\nGWTW. TWDG appropriates numerous characters,\nsettings, and plot twists from GWTW. For example,\nScarlett O\xe2\x80\x99Hara, Rhett Butler, Bonnie Butler, Melanie\nWilkes, Ashley Wilkes, Gerald O\xe2\x80\x99Hara, Ellen O\xe2\x80\x99Hara,\nMammy, Pork, Dilcey, Prissy, Belle Watling, Carreen\nO\xe2\x80\x99Hara, Stuart and Brenton Tarleton, Jeems, Philippe, and\nAunt Pittypat, all characters in GWTW, appear in TWDG.\nMany of these characters are renamed in TWDG: Scarlett\nbecomes \xe2\x80\x9cOther,\xe2\x80\x9d Rhett Butler becomes \xe2\x80\x9cR.B.,\xe2\x80\x9d Pork\nbecomes \xe2\x80\x9cGarlic,\xe2\x80\x9d Prissy becomes \xe2\x80\x9cMiss Priss,\xe2\x80\x9d Philippe\nbecomes \xe2\x80\x9cFeleepe,\xe2\x80\x9d Aunt Pittypat becomes \xe2\x80\x9cAunt\nPattypit,\xe2\x80\x9d etc. In several instances, Randall renamed\ncharacters using Mitchell\xe2\x80\x99s descriptions of those characters\nin GWTW: Ashley becomes \xe2\x80\x9cDreamy Gentleman,\xe2\x80\x9d\nMelanie becomes \xe2\x80\x9cMealy Mouth,\xe2\x80\x9d Gerald becomes\n\xe2\x80\x9cPlanter.\xe2\x80\x9d The fictional settings from GWTW receive a\nsimilarly transparent renaming in TWDG: Tara becomes\n\xe2\x80\x9cTata,\xe2\x80\x9d Twelve Oaks Plantation becomes \xe2\x80\x9cTwelve Slaves\nStrong as Trees.\xe2\x80\x9d TWDG copies, often in wholesale\nfashion, the descriptions and histories of these fictional\ncharacters and places from GWTW, as well as their\nrelationships and interactions with one another. TWDG\nappropriates or otherwise explicitly references many aspects\nof GWTW\xe2\x80\x99s plot as well, such as the scenes in which\nScarlett kills a Union soldier and the scene in which Rhett\nstays in the room with his dead daughter Bonnie, burning\ncandles. After carefully comparing the two works, we agree\nwith the district court that, particularly in its first half,\nTWDG is largely \xe2\x80\x9can encapsulation of [GWTW] [that]\nexploit[s] its copyrighted characters, story lines, and settings\nas the palette for the new story.\xe2\x80\x9d SunTrust, 136 F.Supp.2d\nat 1367.\nHoughton Mifflin argues that there is no substantial\nsimilarity between TWDG and GWTW because the\nretelling of the story is an inversion of GWTW: the\n\n424\n\n\x0ccharacters, places, and events lifted from GWTW are often\ncast in a different light, strong characters from the original\nare depicted as weak (and vice-versa) in the new work, the\ninstitutions and values romanticized in GWTW are exposed\nas corrupt in TWDG. While we agree with Houghton\nMifflin that the characters, settings, and plot taken from\nGWTW are vested with a new significance when viewed\nthrough the character of Cynara9 in TWDG, it does not\nchange the fact that they are the very same copyrighted\ncharacters, settings, and plot.\nb. Fair Use\nRandall\xe2\x80\x99s appropriation of elements of GWTW in TWDG\nmay nevertheless not constitute infringement of SunTrust\xe2\x80\x99s\ncopyright if the taking is protected as a \xe2\x80\x9cfair use.\xe2\x80\x9d The\ncodification of the fair-use doctrine in the Copyright Act\nprovides:\nNotwithstanding the provisions of\nsections 106 and 106A, the fair use of\na copyrighted work \xe2\x80\xa6 for purposes\nsuch as criticism, comment, news\nreporting, teaching (including multiple\ncopies for classroom use), scholarship,\nor research, is not an infringement of\ncopyright. In determining whether the\nuse made of a work in any particular\ncase is a fair use the factors to be\nconsidered shall include\n(1) the purpose and character of\nthe use, including whether such\nuse is of a commercial nature or\nis for nonprofit educational\npurposes;\n\n\xe2\x80\x9cCynara\xe2\x80\x9d is the name of the poem by Ernest Dowson, from which GWTW\xe2\x80\x99s\ntitle is derived (\xe2\x80\x9cI have forgot much, Cynara! gone with the wind, \xe2\x80\xa6\xe2\x80\x9d).\n9\n\n425\n\n\x0c(2) the nature of the copyrighted\nwork;\n(3) the amount and substantiality\nof the portion used in relation to\nthe copyrighted work as a whole;\nand\n(4) the effect of the use upon the\npotential market for or value of\nthe copyrighted work.\n\xc2\xa7 107. In assessing whether a use of a copyright is a fair use\nunder the statute, we bear in mind that the examples of\npossible fair uses given are illustrative rather than exclusive,\nand that \xe2\x80\x9c[a]ll [of the four factors] are to be explored, and\nthe results weighed together in light of the purposes of\ncopyright.\xe2\x80\x9d Campbell, 510 U.S. at 577-78. In light of the\ndiscussion in \xc2\xa7\xc2\xa7 IIA and B, one of the most important\npurposes to consider is the free flow of ideas - particularly\ncriticism and commentary.\nHoughton Mifflin argues that TWDG is entitled to fair-use\nprotection as a parody of GWTW. In Campbell, the\nSupreme Court held that parody, although not specifically\nlisted in \xc2\xa7 107, is a form of comment and criticism that may\nconstitute a fair use of the copyrighted work being\nparodied. Id. at 579. Parody, which is directed toward a\nparticular literary or artistic work, is distinguishable from\nsatire, which more broadly addresses the institutions and\nmores of a slice of society. Id. at 580-81, 581 n.15. Thus,\n\xe2\x80\x9c[p]arody needs to mimic an original to make its point, and\nso has some claim to use the creation of its victim\xe2\x80\x99s \xe2\x80\xa6\nimagination, whereas satire can stand on its own two feet\nand so requires justification for the very act of borrowing.\xe2\x80\x9d\nId. at 580-81.\nThe fact that parody by definition must borrow elements\nfrom an existing work, however, does not mean that every\n\n426\n\n\x0cparody is shielded from a claim of copyright infringement\nas a fair use. \xe2\x80\x9cThe [Copyright] Act has no hint of an\nevidentiary preference for parodists over their victims, and\nno workable presumption for parody could take account of\nthe fact that parody often shades into satire when society is\nlampooned through its creative artifacts, or that a work\nmay contain both parodic and nonparodic elements.\xe2\x80\x9d Id. at\n581. Therefore, Houghton Mifflin\xe2\x80\x99s fair-use defense of\nparody, like any other claim of fair use, must be evaluated\nin light of the factors set out in \xc2\xa7 107 and the constitutional\npurposes of copyright law. Id..\nBefore considering a claimed fair-use defense based on\nparody, however, the Supreme Court has required that we\nensure that \xe2\x80\x9ca parodic character may reasonably be\nperceived\xe2\x80\x9d in the allegedly infringing work. Id. at 582. The\nSupreme Court\xe2\x80\x99s definition of parody in Campbell,\nhowever, is somewhat vague. On the one hand, the Court\nsuggests that the aim of parody is \xe2\x80\x9ccomic effect or\nridicule,\xe2\x80\x9d but it then proceeds to discuss parody more\nexpansively in terms of its \xe2\x80\x9ccommentary\xe2\x80\x9d on the original.\nId. at 580. In light of the admonition in Campbell that\ncourts should not judge the quality of the work or the\nsuccess of the attempted humor in discerning its parodic\ncharacter, we choose to take the broader view. For\npurposes of our fair-use analysis, we will treat a work as a\nparody if its aim is to comment upon or criticize a prior\nwork by appropriating elements of the original in creating a\nnew artistic, as opposed to scholarly or journalistic, work.\nUnder this definition, the parodic character of TWDG is\nclear. TWDG is not a general commentary upon the CivilWar-era American South, but a specific criticism of and\nrejoinder to the depiction of slavery and the relationships\nbetween blacks and whites in GWTW. The fact that\nRandall chose to convey her criticisms of GWTW through\na work of fiction, which she contends is a more powerful\nvehicle for her message than a scholarly article, does not, in\n\n427\n\n\x0cand of itself, deprive TWDG of fair-use protection. We\ntherefore proceed to an analysis of the four fair-use factors.\ni. Purpose and Character of the Work\nThe first factor in the fair-use analysis, the purpose and\ncharacter of the allegedly infringing work, has several\nfacets. The first is whether TWDG serves a commercial\npurpose or nonprofit educational purpose. \xc2\xa7 107(1).\nDespite whatever educational function TWDG may be able\nto lay claim to, it is undoubtedly a commercial product. As\nthe Supreme Court has stated, \xe2\x80\x9c[t]he crux of the\nprofit/nonprofit distinction is not whether the sole motive\nof the use is monetary gain but whether the user stands to\nprofit from exploitation of the copyrighted material\nwithout paying the customary price.\xe2\x80\x9d Harper & Row, 471\nU.S. at 562. The fact that TWDG was published for profit\nis the first factor weighing against a finding of fair use.\nHowever, TWDG\xe2\x80\x99s for-profit status is strongly\novershadowed and outweighed in view of its highly\ntransformative use of GWTC\xe2\x80\x99s copyrighted elements.\n\xe2\x80\x9c[T]he more transformative the new work, the less will be\nthe significance of other factors, like commercialism, that\nmay weigh against a finding of fair use.\xe2\x80\x9d Campbell, 510\nU.S. at 579. \xe2\x80\x9c[T]he goal of copyright, to promote science\nand the arts, is generally furthered by the creation of\ntransformative works.\xe2\x80\x9d Id. A work\xe2\x80\x99s transformative value is\nof special import in the realm of parody, since a parody\xe2\x80\x99s\naim is, by nature, to transform an earlier work.\nThe second factor in the \xe2\x80\x9cpurpose and character\xe2\x80\x9d analysis\nrelevant to this case is to what extent TWDG\xe2\x80\x99s use of\ncopyrighted elements of GWTW can be said to be\n\xe2\x80\x9ctransformative.\xe2\x80\x9d The inquiry is \xe2\x80\x9cwhether the new work\nmerely supersedes the objects of the original creation, or\ninstead adds something new, with a further purpose or\ndifferent character, altering the first with new expression,\nmeaning, or message.\xe2\x80\x9d Campbell, 510 U.S. at 579. The issue\n\n428\n\n\x0cof transformation is a double-edged sword in this case. On\nthe one hand, the story of Cynara and her perception of the\nevents in TWDG certainly adds new \xe2\x80\x9cexpression, meaning,\n[and] message\xe2\x80\x9d to GWTW. From another perspective,\nhowever, TWDG\xe2\x80\x99s success as a pure work of fiction\ndepends heavily on copyrighted elements appropriated\nfrom GWTW to carry its own plot forward.\nHowever, as noted above, TWDG is more than an abstract,\npure fictional work. It is principally and purposefully a\ncritical statement that seeks to rebut and destroy the\nperspective, judgments, and mythology of GWTW.\nRandall\xe2\x80\x99s literary goal is to explode the romantic, idealized\nportrait of the antebellum South during and after the Civil\nWar. In the world of GWTW, the white characters\ncomprise a noble aristocracy whose idyllic existence is upset\nonly by the intrusion of Yankee soldiers, and, eventually, by\nthe liberation of the black slaves. Through her characters as\nwell as through direct narration, Mitchell describes how\nboth blacks and whites were purportedly better off in the\ndays of slavery: \xe2\x80\x9cThe more I see of emancipation the more\ncriminal I think it is. It\xe2\x80\x99s just ruined the darkies,\xe2\x80\x9d says\nScarlett O\xe2\x80\x99Hara. GWTW at 639. Free blacks are described\nas \xe2\x80\x9ccreatures of small intelligence \xe2\x80\xa6 [l]ike monkeys or\nsmall children turned loose among treasured objects whose\nvalue is beyond their comprehension, they ran wild - either\nfrom perverse pleasure in destruction or simply because of\ntheir ignorance.\xe2\x80\x9d Id. at 654. Blacks elected to the legislature\nare described as spending \xe2\x80\x9cmost of their time eating\ngoobers and easing their unaccustomed feet into and out of\nnew shoes.\xe2\x80\x9d Id. at 904.\nAs the district court noted: \xe2\x80\x9cThe earlier work is a thirdperson epic, whereas the new work is told in the firstperson as an intimate diary of the life of Cynara.\nThematically, the new work provides a different viewpoint\nof the antebellum world.\xe2\x80\x9d 136 F. Supp. 2d at 1367. While\ntold from a different perspective, more critically, the story\n\n429\n\n\x0cis transformed into a very different tale, albeit much more\nabbreviated. Cynara\xe2\x80\x99s very language is a departure from\nMitchell\xe2\x80\x99s original prose; she acts as the voice of Randall\xe2\x80\x99s\ninversion of GWTW. She is the vehicle of parody; she is its\nmeans - not its end. It is clear within the first fifty pages of\nCynara\xe2\x80\x99s fictional diary that Randall\xe2\x80\x99s work flips GWTW\xe2\x80\x99s\ntraditional race roles, portrays powerful whites as stupid or\nfeckless, and generally sets out to demystify GWTW and\nstrip the romanticism from Mitchell\xe2\x80\x99s specific account of\nthis period of our history. Approximately the last half of\nTWDG tells a completely new story that, although\ninvolving characters based on GWTW characters, features\nplot elements found nowhere within the covers of GWTW.\nWhere Randall refers directly to Mitchell\xe2\x80\x99s plot and\ncharacters, she does so in service of her general attack on\nGWTW. In GWTW, Scarlett O\xe2\x80\x99Hara often expresses\ndisgust with and condescension towards blacks; in TWDG,\nOther, Scarlett\xe2\x80\x99s counterpart, is herself of mixed descent. In\nGWTW, Ashley Wilkes is the initial object of Scarlett\xe2\x80\x99s\naffection; in TWDG, he is homosexual. In GWTW, Rhett\nButler does not consort with black female characters and is\nportrayed as the captain of his own destiny. In TWDG,\nCynara ends her affair with Rhett\xe2\x80\x99s counterpart, R., to begin\na relationship with a black Congressman; R. ends up a\nwashed out former cad. In TWDG, nearly every black\ncharacter is given some redeeming quality - whether depth,\nwit, cunning, beauty, strength, or courage - that their\nGWTW analogues lacked.\nIn light of this, we find it difficult to conclude that Randall\nsimply tried to \xe2\x80\x9cavoid the drudgery in working up\nsomething fresh.\xe2\x80\x9d Campbell, 510 U.S. at 580. It is hard to\nimagine how Randall could have specifically criticized\nGWTW without depending heavily upon copyrighted\nelements of that book. A parody is a work that seeks to\ncomment upon or criticize another work by appropriating\nelements of the original. \xe2\x80\x9cParody needs to mimic an\n\n430\n\n\x0coriginal to make its point, and so has some claim to use the\ncreation of its victim\xe2\x80\x99s (or collective victims\xe2\x80\x99) imagination.\xe2\x80\x9d\nCampbell, 510 U.S. at 580-81. Thus, Randall has fully\nemployed those conscripted elements from GWTW to\nmake war against it. Her work, TWDG, reflects\ntransformative value because it \xe2\x80\x9ccan provide social benefit,\nby shedding light on an earlier work, and, in the process,\ncreating a new one.\xe2\x80\x9d Campbell, 510 U.S. at 579.\nWhile \xe2\x80\x9ctransformative use is not absolutely necessary for a\nfinding of fair use, \xe2\x80\xa6 the more transformative the new\nwork, the less will be the significance of other factors.\xe2\x80\x9d Id.\nIn the case of TWDG, consideration of this factor certainly\nmilitates in favor of a finding of fair use, and, informs our\nanalysis of the other factors, particularly the fourth, as\ndiscussed below.\nii. Nature of the Copyrighted Work\nThe second factor, the nature of the copyrighted work,\nrecognizes that there is a hierarchy of copyright protection\nin which original, creative works are afforded greater\nprotection than derivative works or factual compilations.\nId. at 586. GWTW is undoubtedly entitled to the greatest\ndegree of protection as an original work of fiction. This\nfactor is given little weight in parody cases, however, \xe2\x80\x9csince\nparodies almost invariably copy publicly known, expressive\nworks.\xe2\x80\x9d Campbell, 510 U.S. at 586.\niii. Amount and Substantiality of the\nPortion Used\nThe third fair-use factor is \xe2\x80\x9cthe amount and substantiality\nof the portion used in relation to the copyrighted work as a\nwhole.\xe2\x80\x9d \xc2\xa7 107(3). It is at this point that parody presents\nuniquely difficult problems for courts in the fair-use\ncontext, for \xe2\x80\x9c[p]arody\xe2\x80\x99s humor, or in any event its\ncomment, necessarily springs from recognizable allusion to\n\n431\n\n\x0cits object through distorted imitation\xe2\x80\xa6 . When parody\ntakes aim at a particular original work, the parody must be\nable to \xe2\x80\x98conjure up\xe2\x80\x99 at least enough of that original to make\nthe object of its critical wit recognizable.\xe2\x80\x9d Campbell, 510\nU.S. at 588. Once enough has been taken to \xe2\x80\x9cconjure up\xe2\x80\x9d\nthe original in the minds of the readership, any further\ntaking must specifically serve the new work\xe2\x80\x99s parodic aims.\nGWTW is one of the most famous, popular, and enduring\nAmerican novels ever written. Given the fame of the work\nand its primary characters, SunTrust argues that very little\nreference is required to conjure up GWTW. As we have\nalready indicated in our discussion of substantial similarity,\nTWDG appropriates a substantial portion of the protected\nelements of GWTW. Houghton Mifflin argues that TWDG\ntakes nothing from GWTW that does not serve a parodic\npurpose, the crux of the argument being that a large\nnumber of characters had to be taken from GWTW\nbecause each represents a different ideal or stereotype that\nrequires commentary, and that the work as a whole could\nnot be adequately commented upon without revisiting\nsubstantial portions of the plot, including its most famous\nscenes. Houghton Mifflin\xe2\x80\x99s argument is similar to that\nmade by the defendants in Harper & Row, who argued for\n\xe2\x80\x9cexpanding the doctrine of fair use to create what amounts\nto a public figure exception to copyright.\xe2\x80\x9d 471 U.S. at 560.\nTo the extent Houghton Mifflin argues for extra latitude in\ncopying from GWTW because of its fame, the Supreme\nCourt has squarely foreclosed any such privilege:\nIt is fundamentally at odds with the\nscheme of copyright to accord lesser\nrights in those works that are of\ngreatest importance to the public\xe2\x80\xa6 .\nTo propose that fair use be imposed\nwhenever the social value of\ndissemination outweighs any detriment\nto the artist, would be to propose\n\n432\n\n\x0cdepriving copyright owners of their\nright in the property precisely when\nthey encounter those users who could\nafford to pay for it.\nId. at 559, 105 S. Ct. at 2229-30 (internal quotations and\npunctuation omitted). Notably, however, the Court did not\ngo so far as to grant well-known works a special, higher\ncopyright status either.\nThere are numerous instances in which TWDG\nappropriates elements of GWTW and then transforms\nthem for the purpose of commentary. TWDG uses several\nof GWTW\xe2\x80\x99s most famous lines, but vests them with a\ncompletely new significance\xe2\x80\xa6 . .\nOn the other hand, however, we are told that not all of\nTWDG\xe2\x80\x99s takings from GWTW are clearly justified as\ncommentary. We have already determined that TWDG is a\nparody, but not every parody is a fair use. SunTrust\ncontends that TWDG, at least at the margins, takes more\nof the protected elements of GWTW than was necessary to\nserve a parodic function.\nFor example, in a sworn declaration to the district court,\nRandall stated that she needed to reference the scene from\nGWTW in which Jeems is given to the Tarleton twins as a\nbirthday present because she considers it \xe2\x80\x9cperhaps the\nsingle most repellent paragraph in Margaret Mitchell\xe2\x80\x99s\nnovel: a black child given to two white children as a\nbirthday present \xe2\x80\xa6 as if the buying and selling of children\nthus had no moral significance.\xe2\x80\x9d Clearly, such a scene is fair\ngame for criticism. However, in this instance, SunTrust\nargues that TWDG goes beyond commentary on the\noccurrence itself, appropriating such nonrelevant details as\nthe fact that the twins had red hair and were killed at\nGettysburg. There are several other scenes from GWTW\n\xe2\x80\xa6 that are retold or alluded to without serving any\napparent parodic purpose. Similar taking of the descriptions\n\n433\n\n\x0cof characters and the minor details of their histories and\ninteractions that arguably are not essential to the parodic\npurpose of the work recur throughout\xe2\x80\xa6 . .\nThe Supreme Court in Campbell did not require that\nparodists take the bare minimum amount of copyright\nmaterial necessary to conjure up the original work. Parody\n\xe2\x80\x9cmust be able to conjure up at least enough of [the] original\nto make the object of its critical wit recognizable.\xe2\x80\x9d\nCampbell, 510 U.S. at 588 (emphasis added; quotations\nomitted). \xe2\x80\x9cParody frequently needs to be more than a\nfleeting evocation of an original in order to make its\nhumorous point\xe2\x80\xa6 . [E]ven more extensive use [than\nnecessary to conjure up the original] would still be fair use,\nprovided the parody builds upon the original, using the\noriginal as a known element of modern culture and\ncontributing something new for humorous effect or\ncommentary.\xe2\x80\x9d Elsmere Music, Inc. v. National Broad\xe2\x80\x99g Co.,\n623 F.2d 252, 253 n. 1 (2d Cir. 1980).\nA use does not necessarily become infringing the moment\nit does more than simply conjure up another work. Rather,\n\xe2\x80\x9c[o]nce enough has been taken to assure identification, how\nmuch more is reasonable will depend, say, [1] on the extent\nto which the [work\xe2\x80\x99s] overriding purpose and character is to\nparody the original or, in contrast, [2] the likelihood that\nthe parody may serve as a market substitute for the\noriginal.\xe2\x80\x9d Campbell, 510 U.S. at 588. As to the first point, it\nis manifest that TWDG\xe2\x80\x99s raison d\xe2\x80\x99etre is to parody\nGWTW. The second point indicates that any material we\nsuspect is \xe2\x80\x9cextraneous\xe2\x80\x9d to the parody is unlawful only if it\nnegatively effects the potential market for or value of the\noriginal copyright. Based upon this record at this juncture,\nwe cannot determine in any conclusive way whether \xe2\x80\x9c\xe2\x80\x98the\nquantity and value of the materials used\xe2\x80\x99\xe2\x80\x9d are reasonable in\nrelation to the purpose of the copying.\xe2\x80\x99\xe2\x80\x9d Id., 510 U.S. at\n586.\n\n434\n\n\x0civ. Effect on the Market Value of the\nOriginal\nThe final fair-use factor requires us to consider the effect\nthat the publication of TWDG will have on the market for\nor value of SunTrust\xe2\x80\x99s copyright in GWTW, including the\npotential harm it may cause to the market for derivative\nworks based on GWTW. Campbell, 510 U.S. at 590. In\naddressing this factor, we must \xe2\x80\x9cconsider not only the\nextent of market harm caused by the particular actions of\nthe alleged infringer, but also whether unrestricted and\nwidespread conduct of the sort engaged in by the\ndefendant [] would result in a substantially adverse impact\non the potential market.\xe2\x80\x9d Id., 114 S. Ct. at 1177 (quotations\nomitted). More specifically, the Campbell Court continued:\n\xe2\x80\x9c[T]he only harm to derivatives that need concern us \xe2\x80\xa6 is\nthe harm of market substitution. The fact that a parody\nmay impair the market for derivative uses by the very\neffectiveness of its critical commentary is no more relevant\nunder copyright that the like threat to the original market.\xe2\x80\x9d\nId., 510 U.S. at 593.\nAs for the potential market, SunTrust proffered evidence in\nthe district court of the value of its copyright in GWTW.\nSeveral derivative works of GWTW have been authorized,\nincluding the famous movie of the same name and a book\ntitled Scarlett: The Sequel. GWTW and the derivative\nworks based upon it have generated millions of dollars for\nthe copyright holders. SunTrust has negotiated an\nagreement with St. Martin\xe2\x80\x99s Press permitting it to produce\nanother derivative work based on GWTW, a privilege for\nwhich St. Martin\xe2\x80\x99s paid \xe2\x80\x9cwell into seven figures.\xe2\x80\x9d Part of\nthis agreement was that SunTrust would not authorize any\nother derivative works prior to the publication of St.\nMartin\xe2\x80\x99s book.\nAn examination of the record, with its limited development\nas to relevant market harm due to the preliminary\n\n435\n\n\x0cinjunction status of the case, discloses that SunTrust\nfocuses on the value of GWTW and its derivatives, but fails\nto address and offers little evidence or argument to\ndemonstrate that TWDG would supplant demand for\nSunTrust\xe2\x80\x99s licensed derivatives. However, the Supreme\nCourt and other appeals courts have made clear that,\nparticularly in cases of parody, evidence of harm to the\npotential market for or value of the original copyright is\ncrucial to a fair use determination. \xe2\x80\x9c[E]vidence about\nrelevant markets\xe2\x80\x9d is also crucial to the fair use analysis.\nCampbell, 510 U.S. at 590. \xe2\x80\x9cEvidence of substantial harm\nto [a derivative market] would weigh against a finding of\nfair use.\xe2\x80\x9d Id. at 593. \xe2\x80\x9cWhat is necessary is a showing by a\npreponderance of the evidence that some meaningful\nlikelihood of future harm exits.\xe2\x80\x9d Sony, 464 U.S. at 451\xe2\x80\xa6 . .\nIn contrast, the evidence proffered in support of the fair\nuse defense specifically and correctly focused on market\nsubstitution and demonstrates why Randall\xe2\x80\x99s book is\nunlikely to displace sales of GWTW. Thus, we conclude,\nbased on the current record, that SunTrust\xe2\x80\x99s evidence falls\nfar short of establishing that TWDG or others like it will\nact as market substitutes for GWTW or will significantly\nharm its derivatives. Accordingly, the fourth fair use factor\nweighs in favor of TWDG.\nc. Summary of the Merits\nWe reject the district court\xe2\x80\x99s conclusion that SunTrust has\nestablished its likelihood of success on the merits. To the\ncontrary, based upon our analysis of the fair use factors we\nfind, at this juncture, TWDG is entitled to a fair-use\ndefense.\n2. Irreparable Injury\n\xe2\x80\xa6.\n\n436\n\n\x0c[A] lack of irreparable injury to SunTrust, together with the\nFirst Amendment concerns regarding comment and\ncriticism and the likelihood that a fair use defense will\nprevail, make injunctive relief improper and we need not\naddress the remaining factors, except to stress that the\npublic interest is always served in promoting First\nAmendment values and in preserving the public domain\nfrom encroachment. Accordingly, we vacate the district\ncourt\xe2\x80\x99s injunction.\nIII. CONCLUSION\nIn this case, we have found that to the extent SunTrust\nsuffers injury from TWDG\xe2\x80\x99s putative infringement of its\ncopyright in GWTW, such harm can adequately be\nremedied through an award of monetary damages.\nMoreover, under the present state of the record, it appears\nthat a viable fair use defense is available. Thus, the issuance\nof the injunction was at odds with the shared principles of\nthe First Amendment and the copyright law, acting as a\nprior restraint on speech because the public had not had\naccess to Randall\xe2\x80\x99s ideas or viewpoint in the form of\nexpression that she chose.\nWe REVERSE the judgment of the district court and\nREMAND the case for further proceedings consistent with\nthis opinion.\nMARCUS, Circuit Judge, specially concurring:\nI concur in Judge Birch\xe2\x80\x99s thoughtful and thorough opinion\nbut write separately to emphasize that, on this limited\nrecord, SunTrust has fallen well short of establishing a\nlikelihood of success on its copyright infringement claim. I\nstress three points. First, the district court erred by finding\nthat the critical or parodic element of The Wind Done\nGone is anything but clear-cut. Far from amounting to\n\xe2\x80\x9cunabated piracy,\xe2\x80\x9d 136 F.Supp.2d 1357, 1369 (N.D. Ga.\n2001), The Wind Done Gone is unequivocally parody, as\nboth Judge Birch and the Supreme Court in Campbell v.\n\n437\n\n\x0cAcuff-Rose Music, Inc., 510 U.S. 569 (1994), define that\nterm\xe2\x80\xa6 . . Moreover, the Mitchell estate seems to have\nmade a specific practice of refusing to license just the sort\nof derivative use Randall has undertaken \xe2\x80\x93 a factor that\nfurther undermines SunTrust\xe2\x80\x99s copyright claim.\n\xe2\x80\xa6.\nFinally, I wish to highlight a factor significant to the market\nharm inquiry: SunTrust\xe2\x80\x99s apparent practice of placing\ncertain editorial restrictions on the authors of its licensed\nderivatives. Pat Conroy, the author of The Prince of Tides\nand Beach Music, among other novels, attested to the sorts\nof constraints the Mitchell estate sought to place on him as\na potential author of a sequel to Gone With the Wind:\nI wrote an introduction to the sixtieth\nanniversary edition of [Gone With the\nWind] \xe2\x80\xa6 After the appearance of my\nintroduction[,] which included my own\ndeep appreciation for the artistry of\nGWTW, the estate of Margaret\nMitchell contacted my agent, Julian\nBach, in New York and asked if I\nwould be interested in doing a sequel\nto GWTW\xe2\x80\xa6 . When Julian Bach\ncalled me, he issued a strange decree\nfrom the estate that Julian said was\nnon-negotiable\xe2\x80\xa6 . He said, \xe2\x80\x9cYou\xe2\x80\x99re\nnot going to like this, but the estate\nwill require you to sign a pledge that\nsays you will under no circumstances\nwrite anything about miscegenation or\nhomosexuality.\xe2\x80\x9d10\n\nIn a piece of documentary evidence submitted by SunTrust (Thomas Hal\nClarke, attorney and member of the committee established by the trust\ninstruments to direct the plaintiff SunTrust Bank), Conroy again indicates that the\nMitchell Estate was loath to license a derivative work that contained such\nelements:\n10\n\n438\n\n\x0cIn light of this, the The Wind Done Gone\xe2\x80\x99s transformation\nof Ashley Wilkes into a homosexual, its depiction of\ninterracial sex, and its multiple mulatto characters take on\nadditional relevance. The Supreme Court in Campbell\nexplained how a copyright holder\xe2\x80\x99s reluctance to license\ncertain kinds of derivatives affects the market harm\nanalysis:\nThe market for potential derivative\nuses includes only those that creators\nof original works would in general\ndevelop or license others to develop.\nYet the unlikelihood that creators of\nimaginative works will license critical\nreviews or lampoons of their own\nproductions removes such uses from\nthe very notion of a potential licensing\nmarket.\n510 U.S. at 592.\nOther courts have echoed the principle that \xe2\x80\x9c\xe2\x80\x98only\ntraditional, reasonable, or likely to be developed markets\xe2\x80\x99\xe2\x80\x9d\nought to be considered when assessing the effect of a\nchallenged use upon a potential market. [citations omitted]\n\xe2\x80\x9cIn the cases where we have found the fourth factor to\nfavor a defendant, the defendant\xe2\x80\x99s work filled a market\nniche that the plaintiff simply had no interest in\noccupying.\xe2\x80\x9d Twin Peaks Prods., Inc. v. Publications Int\xe2\x80\x99l,\nLtd., 996 F.2d 1366, 1377 (2d Cir. 1993).\nThe preliminary record does not indicate why SunTrust\nsought to impose editorial restrictions on Conroy. To the\nextent that SunTrust may have done so to preserve Gone\nAll my resistance to your restrictions \xe2\x80\x93 all of them, and I\ninclude miscegenation, homosexuality, the rights of review\nand approval \xe2\x80\x93 I do because they begin inching toward the\nprecincts of censorship.\n\nFax to Owen Laster from Pat Conroy, Nov. 10, 1998.\n\n439\n\n\x0cWith the Wind\xe2\x80\x99s reputation, or protect its story from\n\xe2\x80\x9ctaint,\xe2\x80\x9d however, it may not now invoke copyright to\nfurther that goal. Of course, SunTrust can choose to license\nits derivatives however it wishes and insist that those\nderivatives remain free of content it deems disreputable.\nSunTrust may be vigilant of Gone With the Wind\xe2\x80\x99s public\nimage \xe2\x80\x93 but it may not use copyright to shield Gone With\nthe Wind from unwelcome comment, a policy that would\nextend intellectual property protection \xe2\x80\x9cinto the precincts\nof censorship,\xe2\x80\x9d in Pat Conroy\xe2\x80\x99s words. \xe2\x80\x9cBecause the social\ngood is served by increasing the supply of criticism \xe2\x80\x93 and\nthus, potentially, of truth \xe2\x80\x93 creators of original works\ncannot be given the power to block the dissemination of\ncritical derivative works.\xe2\x80\x9d Leibovitz, 137 F.3d at 115 n.3.\n\xe2\x80\x9cCopyright law is not designed to stifle critics. Destructive\nparodies play an important role in social and literary\ncriticism and thus merit protection even though they may\ndiscourage or discredit an original author.\xe2\x80\x9d Fisher, 794 F.2d\nat 438 (citation and internal quotation marks omitted).\nThe law grants copyright holders a powerful monopoly in\ntheir expressive works. It should not also afford them\nwindfall damages for the publication of the sorts of works\nthat they themselves would never publish, or worse, grant\nthem a power of indirect censorship.\nFinally, Appellee warns that our decision in this case will\nprompt an endless parade of litigants to test the boundaries\nof the rule we establish here. This is at least possible, but\nsuch a phenomenon is not exactly alien to our common law\ntradition. And to the extent authors and publishers will be\nencouraged to experiment with new and different forms of\nstorytelling, copyright\xe2\x80\x99s fundamental purpose, \xe2\x80\x9c[t]o\npromote the Progress of Science and useful Arts,\xe2\x80\x9d will have\nbeen served. U.S. Const. Art. 1, \xc2\xa7 8, cl. 8.\n\n440\n\n\x0cProblem\nSuppose that Rural\xe2\x80\x99s compilation of phone numbers had been\ndetermined to be copyrightable in Feist. In other words, suppose\nFeist had come out the other way. Go through the factors to argue\nwhether Feist\xe2\x80\x99s use was a fair use.\n3.4.3. Calibration: Length of Term\nEldred v. Ashcroft, 537 U.S. 186 (2003)\nLawrence Lessig argued the cause for petitioners. With him\non the briefs were Kathleen M. Sullivan, Alan B. Morrison,\nEdward Lee, Charles Fried, Geoffrey S. Stewart, Donald B. Ayer,\nRobert P. Ducatman, Daniel H. Bromberg, Charles R. Nesson, and\nJonathan L. Zittrain.\nSolicitor General Olson argued the cause for respondent. With\nhim on the brief were Assistant Attorney General McCallum,\nDeputy Solicitor General Wallace, Jeffrey A. Lamken, William\nKanter, and John S. Koppel.1\nJUSTICE GINSBURG delivered the opinion of the Court.\nThis case concerns the authority the Constitution assigns to\nCongress to prescribe the duration of copyrights. The\nCopyright and Patent Clause of the Constitution, Art. I, \xc2\xa7 8,\ncl. 8, provides as to copyrights: \xe2\x80\x9cCongress shall have Power\n\xe2\x80\xa6 [t]o promote the Progress of Science \xe2\x80\xa6 by securing [to\nAuthors] for limited Times \xe2\x80\xa6 the exclusive Right to their\n\xe2\x80\xa6 Writings.\xe2\x80\x9d In 1998, in the measure here under\n\n[The court listed the amici in this case. Among those for reversal were the\nAmerican Association of Law Libraries, the College Art Association, the Eagle\nForum Education & Legal Defense Fund, the Free Software Foundation, groups\nof intellectual property and constitutional law professors, and the Internet\nArchive. Among those writing in support of affirmance were the American\nIntellectual Property Law Association, the American Society of Composers,\nAuthors and Publishers (ASCAP), Amsong, Inc., AOL Time Warner, the\nAssociation of American Publishers, the Bureau of National Affairs, the Directors\nGuild of America, Dr. Seuss Enterprises, the Motion Picture Association of\nAmerica, the Recording Artists Coalition, the Recording Industry Association of\nAmerica (RIAA), the Songwriters Guild of America, Senator Orrin G. Hatch, and\nRepresentative F. James Sensenbrenner, Jr.]\n1\n\n\x0cinspection, Congress enlarged the duration of copyrights by\n20 years. Copyright Term Extension Act (CTEA), Pub. L.\n105-298, \xc2\xa7\xc2\xa7 102(b) and (d), 112 Stat. 2827-2828 (amending\n17 U.S.C. \xc2\xa7\xc2\xa7 302, 304). As in the case of prior extensions,\nprincipally in 1831, 1909, and 1976, Congress provided for\napplication of the enlarged terms to existing and future\ncopyrights alike.\nPetitioners are individuals and businesses whose products\nor services build on copyrighted works that have gone into\nthe public domain. They seek a determination that the\nCTEA fails constitutional review under both the Copyright\nClause\xe2\x80\x99s \xe2\x80\x9climited Times\xe2\x80\x9d prescription and the First\nAmendment\xe2\x80\x99s free speech guarantee. Under the 1976\nCopyright Act, copyright protection generally lasted from\nthe work\xe2\x80\x99s creation until 50 years after the author\xe2\x80\x99s death.\nUnder the CTEA, most copyrights now run from creation\nuntil 70 years after the author\xe2\x80\x99s death. Petitioners do not\nchallenge the \xe2\x80\x9clife-plus-70-years\xe2\x80\x9d timespan itself. \xe2\x80\x9cWhether\n50 years is enough, or 70 years too much,\xe2\x80\x9d they\nacknowledge, \xe2\x80\x9cis not a judgment meet for this Court.\xe2\x80\x9d2\nCongress went awry, petitioners maintain, not with respect\nto newly created works, but in enlarging the term for\npublished works with existing copyrights. The \xe2\x80\x9climited\nTim[e]\xe2\x80\x9d in effect when a copyright is secured, petitioners\nurge, becomes the constitutional boundary, a clear line\nbeyond the power of Congress to extend. As to the First\nAmendment, petitioners contend that the CTEA is a\ncontent-neutral regulation of speech that fails inspection\nunder the heightened judicial scrutiny appropriate for such\nregulations.\nIn accord with the District Court and the Court of Appeals,\nwe reject petitioners\xe2\x80\x99 challenges to the CTEA. In that 1998\n\nJUSTICE BREYER\xe2\x80\x99s dissent is not similarly restrained. He makes no effort\nmeaningfully to distinguish existing copyrights from future grants. Under his\nreasoning, the CTEA\xe2\x80\x99s 20-year extension is globally unconstitutional.\n2\n\n442\n\n\x0clegislation, as in all previous copyright term extensions,\nCongress placed existing and future copyrights in parity. In\nprescribing that alignment, we hold, Congress acted within\nits authority and did not transgress constitutional\nlimitations.\nI\nA.\nWe evaluate petitioners\xe2\x80\x99 challenge to the constitutionality of\nthe CTEA against the backdrop of Congress\xe2\x80\x99 previous\nexercises of its authority under the Copyright Clause. The\nNation\xe2\x80\x99s first copyright statute, enacted in 1790, provided a\nfederal copyright term of 14 years from the date of\npublication, renewable for an additional 14 years if the\nauthor survived the first term. The 1790 Act\xe2\x80\x99s renewable\n14-year term applied to existing works (i. e., works already\npublished and works created but not yet published) and\nfuture works alike. Congress expanded the federal\ncopyright term to 42 years in 1831 (28 years from\npublication, renewable for an additional 14 years), and to 56\nyears in 1909 (28 years from publication, renewable for an\nadditional 28 years). Both times, Congress applied the new\ncopyright term to existing and future works; to qualify for\nthe 1831 extension, an existing work had to be in its initial\ncopyright term at the time the Act became effective.\nIn 1976, Congress altered the method for computing\nfederal copyright terms. For works created by identified\nnatural persons, the 1976 Act provided that federal\ncopyright protection would run from the work\xe2\x80\x99s creation,\nnot \xe2\x80\x93 as in the 1790, 1831, and 1909 Acts \xe2\x80\x93 its publication;\nprotection would last until 50 years after the author\xe2\x80\x99s death.\nIn these respects, the 1976 Act aligned United States\ncopyright terms with the then-dominant international\nstandard adopted under the Berne Convention for the\nProtection of Literary and Artistic Works. For anonymous\n\n443\n\n\x0cworks, pseudonymous works, and works made for hire, the\n1976 Act provided a term of 75 years from publication or\n100 years from creation, whichever expired first.\nThese new copyright terms, the 1976 Act instructed,\ngoverned all works not published by its effective date of\nJanuary 1, 1978, regardless of when the works were created.\nFor published works with existing copyrights as of that\ndate, the 1976 Act granted a copyright term of 75 years\nfrom the date of publication, a 19-year increase over the\n56-year term applicable under the 1909 Act.\nThe measure at issue here, the CTEA, installed the fourth\nmajor duration extension of federal copyrights.3 Retaining\nthe general structure of the 1976 Act, the CTEA enlarges\nthe terms of all existing and future copyrights by 20 years.\nFor works created by identified natural persons, the term\nnow lasts from creation until 70 years after the author\xe2\x80\x99s\ndeath. This standard harmonizes the baseline United States\ncopyright term with the term adopted by the European\nUnion in 1993. For anonymous works, pseudonymous\nworks, and works made for hire, the term is 95 years from\npublication or 120 years from creation, whichever expires\nfirst.\nParalleling the 1976 Act, the CTEA applies these new\nterms to all works not published by January 1, 1978. For\nworks published before 1978 with existing copyrights as of\nthe CTEA\xe2\x80\x99s effective date, the CTEA extends the term to\n95 years from publication. Thus, in common with the 1831,\n\nAsserting that the last several decades have seen a proliferation of copyright\nlegislation in departure from Congress\xe2\x80\x99 traditional pace of legislative amendment\nin this area, petitioners cite nine statutes passed between 1962 and 1974, each of\nwhich incrementally extended existing copyrights for brief periods. As respondent\n(Attorney General Ashcroft) points out, however, these statutes were all\ntemporary placeholders subsumed into the systemic changes effected by the 1976\nAct.\n3\n\n444\n\n\x0c1909, and 1976 Acts, the CTEA\xe2\x80\x99s new terms apply to both\nfuture and existing copyrights.4\nB.\nThe [District] court held that the CTEA does not violate\nthe \xe2\x80\x9climited Times\xe2\x80\x9d restriction of the Copyright Clause\nbecause the CTEA\xe2\x80\x99s terms, though longer than the 1976\nAct\xe2\x80\x99s terms, are still limited, not perpetual, and therefore fit\nwithin Congress\xe2\x80\x99 discretion. The court also held that \xe2\x80\x9cthere\nare no First Amendment rights to use the copyrighted\nworks of others.\xe2\x80\x9d\nThe Court of Appeals for the District of Columbia Circuit\naffirmed. \xe2\x80\xa6 .\nWe granted certiorari to address two questions: whether the\nCTEA\xe2\x80\x99s extension of existing copyrights exceeds Congress\xe2\x80\x99\npower under the Copyright Clause; and whether the\nCTEA\xe2\x80\x99s extension of existing and future copyrights violates\nthe First Amendment. 534 U.S. 1126 and 1160 (2002). We\nnow answer those two questions in the negative and affirm.\nII\nA.\nWe address first the determination of the courts below that\nCongress has authority under the Copyright Clause to\nextend the terms of existing copyrights. Text, history, and\nprecedent, we conclude, confirm that the Copyright Clause\nempowers Congress to prescribe \xe2\x80\x9climited Times\xe2\x80\x9d for\n\nPetitioners argue that the 1790 Act must be distinguished from the later Acts on\nthe ground that it covered existing works but did not extend existing copyrights. The\nparties disagree on the question whether the 1790 Act\xe2\x80\x99s copyright term should be\nregarded in part as compensation for the loss of any then existing state- or\ncommon-law copyright protections. Without resolving that dispute, we\nunderscore that the First Congress clearly did confer copyright protection on\nworks that had already been created.\n4\n\n445\n\n\x0ccopyright protection and to secure the same level and\nduration of protection for all copyright holders, present and\nfuture.\nThe CTEA\xe2\x80\x99s baseline term of life plus 70 years, petitioners\nconcede, qualifies as a \xe2\x80\x9climited Tim[e]\xe2\x80\x9d as applied to future\ncopyrights.5 Petitioners contend, however, that existing\ncopyrights extended to endure for that same term are not\n\xe2\x80\x9climited.\xe2\x80\x9d \xe2\x80\xa6 .\nTo comprehend the scope of Congress\xe2\x80\x99 power under the\nCopyright Clause, \xe2\x80\x9ca page of history is worth a volume of\nlogic.\xe2\x80\x9d New York Trust Co. v. Eisner, 256 U.S. 345, 349\n(1921) (Holmes, J.). History reveals an unbroken\ncongressional practice of granting to authors of works with\nexisting copyrights the benefit of term extensions so that all\nunder copyright protection will be governed evenhandedly\nunder the same regime. As earlier recounted, the First\nCongress accorded the protections of the Nation\xe2\x80\x99s first\nfederal copyright statute to existing and future works alike.\nSince then, Congress has regularly applied duration\nextensions to both existing and future copyrights.6\n\xe2\x80\xa6.\nThe CTEA reflects judgments of a kind Congress typically\nmakes, judgments we cannot dismiss as outside the\nLegislature\xe2\x80\x99s domain. As respondent describes, a key factor\nWe note again that JUSTICE BREYER makes no such concession. He does not\ntrain his fire, as petitioners do, on Congress\xe2\x80\x99 choice to place existing and future\ncopyrights in parity. Moving beyond the bounds of the parties\xe2\x80\x99 presentations, and\nwith abundant policy arguments but precious little support from precedent, he\nwould condemn Congress\xe2\x80\x99 entire product as irrational.\n5\n\nMoreover, the precise duration of a federal copyright has never been fixed at the\ntime of the initial grant. The 1790 Act provided a federal copyright term of 14\nyears from the work\xe2\x80\x99s publication, renewable for an additional 14 years if the\nauthor survived and applied for an additional term. \xc2\xa7 1. Congress retained that\napproach in subsequent statutes. Similarly, under the method for measuring\ncopyright terms established by the 1976 Act and retained by the CTEA, the\nbaseline copyright term is measured in part by the life of the author, rendering its\nduration indeterminate at the time of the grant.\n6\n\n446\n\n\x0cin the CTEA\xe2\x80\x99s passage was a 1993 European Union (EU)\ndirective instructing EU members to establish a copyright\nterm of life plus 70 years. Consistent with the Berne\nConvention, the EU directed its members to deny this\nlonger term to the works of any non-EU country whose\nlaws did not secure the same extended term. By extending\nthe baseline United States copyright term to life plus 70\nyears, Congress sought to ensure that American authors\nwould receive the same copyright protection in Europe as\ntheir European counterparts.7 The CTEA may also provide\ngreater incentive for American and other authors to create\nand disseminate their work in the United States.8\nIn addition to international concerns,9 Congress passed the\nCTEA in light of demographic, economic, and\ntechnological changes,10 and rationally credited projections\nthat longer terms would encourage copyright holders to\n\nResponding to an inquiry whether copyrights could be extended \xe2\x80\x9cforever,\xe2\x80\x9d\nRegister of Copyrights Marybeth Peters emphasized the dominant reason for the\nCTEA: \xe2\x80\x9cThere certainly are proponents of perpetual copyright: We heard that in\nour proceeding on term extension. The Songwriters Guild suggested a perpetual\nterm. However, our Constitution says limited times, but there really isn\xe2\x80\x99t a very\ngood indication on what limited times is. The reason why you\xe2\x80\x99re going to lifeplus-70 today is because Europe has gone that way \xe2\x80\xa6 .\xe2\x80\x9d\n7\n\nThe author of the law review article cited in text, Shira Perlmutter, currently a\nvice president of AOL Time Warner, was at the time of the CTEA\xe2\x80\x99s enactment\nAssociate Register for Policy and International Affairs, United States Copyright\nOffice.\n8\n\nSee also Austin, Does the Copyright Clause Mandate Isolationism?, 26 Colum. J. L. &\nArts 17, 59 (2002) (cautioning against \xe2\x80\x9can isolationist reading of the Copyright\nClause that is in tension with \xe2\x80\xa6 America\xe2\x80\x99s international copyright relations over\nthe last hundred or so years\xe2\x80\x9d)\n9\n\nMembers of Congress expressed the view that, as a result of increases in human\nlongevity and in parents\xe2\x80\x99 average age when their children are born, the pre-CTEA\nterm did not adequately secure \xe2\x80\x9cthe right to profit from licensing one\xe2\x80\x99s work\nduring one\xe2\x80\x99s lifetime and to take pride and comfort in knowing that one\xe2\x80\x99s children\n\xe2\x80\x93 and perhaps their children \xe2\x80\x93 might also benefit from one\xe2\x80\x99s posthumous\npopularity.\xe2\x80\x9d Also cited was \xe2\x80\x9cthe failure of the U.S. copyright term to keep pace\nwith the substantially increased commercial life of copyrighted works resulting\nfrom the rapid growth in communications media.\xe2\x80\x9d\n10\n\n447\n\n\x0cinvest in the restoration and public distribution of their\nworks.11\nIn sum, we find that the CTEA is a rational enactment; we\nare not at liberty to second-guess congressional\ndeterminations and policy judgments of this order, however\ndebatable or arguably unwise they may be. Accordingly, we\ncannot conclude that the CTEA \xe2\x80\x93 which continues the\nunbroken congressional practice of treating future and\nexisting copyrights in parity for term extension purposes \xe2\x80\x93\nis an impermissible exercise of Congress\xe2\x80\x99 power under the\nCopyright Clause.\nB.\nPetitioners\xe2\x80\x99 Copyright Clause arguments rely on several\nnovel readings of the Clause. We next address these\narguments and explain why we find them unpersuasive.\nJUSTICE BREYER urges that the economic incentives accompanying\ncopyright term extension are too insignificant to \xe2\x80\x9cmov[e]\xe2\x80\x9d any author with a\n\xe2\x80\x9crational economic perspective.\xe2\x80\x9d Calibrating rational economic incentives,\nhowever, like \xe2\x80\x9cfashion[ing] \xe2\x80\xa6 new rules [in light of] new technology,\xe2\x80\x9d is a task\nprimarily for Congress, not the courts. Congress heard testimony from a number\nof prominent artists; each expressed the belief that the copyright system\xe2\x80\x99s\nassurance of fair compensation for themselves and their heirs was an incentive to\ncreate. See, e. g., House Hearings 233-239 (statement of Quincy Jones); Copyright\nTerm Extension Act of 1995: Hearing before the Senate Committee on the\nJudiciary, 104th Cong., 1st Sess., 55-56 (1995) (statement of Bob Dylan); id., at 5657 (statement of Don Henley); id., at 57 (statement of Carlos Santana). We would\nnot take Congress to task for crediting this evidence which, as JUSTICE\nBREYER acknowledges, reflects general \xe2\x80\x9cpropositions about the value of\nincentives\xe2\x80\x9d that are \xe2\x80\x9cundeniably true.\xe2\x80\x9d\n11\n\nCongress also heard testimony from Register of Copyrights Marybeth Peters and\nothers regarding the economic incentives created by the CTEA. According to the\nRegister, extending the copyright for existing works \xe2\x80\x9ccould \xe2\x80\xa6 provide additional\nincome that would finance the production and publication of new works.\xe2\x80\x9d House\nHearings 158. \xe2\x80\x9cAuthors would not be able to continue to create,\xe2\x80\x9d the Register\nexplained, \xe2\x80\x9cunless they earned income on their finished works. The public\nbenefits not only from an author\xe2\x80\x99s original work but also from his or her further\ncreations. Although this truism may be illustrated in many ways, one of the best\nexamples is Noah Webster[,] who supported his entire family from the earnings\non his speller and grammar during the twenty years he took to complete his\ndictionary.\xe2\x80\x9d Id., at 165.\n\n448\n\n\x0c1\nPetitioners contend that even if the CTEA\xe2\x80\x99s 20-year term\nextension is literally a \xe2\x80\x9climited Tim[e],\xe2\x80\x9d permitting\nCongress to extend existing copyrights allows it to evade\nthe \xe2\x80\x9climited Times\xe2\x80\x9d constraint by creating effectively\nperpetual copyrights through repeated extensions. We\ndisagree.\nAs the Court of Appeals observed, a regime of perpetual\ncopyrights \xe2\x80\x9cclearly is not the situation before us.\xe2\x80\x9d Nothing\nbefore this Court warrants construction of the CTEA\xe2\x80\x99s 20year term extension as a congressional attempt to evade or\noverride the \xe2\x80\x9climited Times\xe2\x80\x9d constraint.12 Critically, we\n\nJUSTICE BREYER agrees that \xe2\x80\x9cCongress did not intend to act\nunconstitutionally\xe2\x80\x9d when it enacted the CTEA, yet in his very next breath, he\nseems to make just that accusation. What else is one to glean from his selection of\nscattered statements from individual Members of Congress? He does not identify\nany statement in the statutory text that installs a perpetual copyright, for there is\nnone. But even if the statutory text were sufficiently ambiguous to warrant\nrecourse to legislative history, JUSTICE BREYER\xe2\x80\x99S selections are not the sort to\nwhich this Court accords high value: \xe2\x80\x9cIn surveying legislative history we have\nrepeatedly stated that the authoritative source for finding the Legislature\xe2\x80\x99s intent\nlies in the Committee Reports on the bill, which \xe2\x80\x98represen[t] the considered and\ncollective understanding of those [Members of Congress] involved in drafting and\nstudying proposed legislation.\xe2\x80\x99\xe2\x80\x9d The House and Senate Reports accompanying the\nCTEA reflect no purpose to make copyright a forever thing. Notably, the Senate\nReport expressly acknowledged that the Constitution \xe2\x80\x9cclearly precludes Congress\nfrom granting unlimited protection for copyrighted works,\xe2\x80\x9d and disclaimed any\nintent to contravene that prohibition. Members of Congress instrumental in the\nCTEA\xe2\x80\x99s passage spoke to similar effect.\n12\n\nJUSTICE BREYER nevertheless insists that the \xe2\x80\x9ceconomic effect\xe2\x80\x9d of the CTEA\nis to make the copyright term \xe2\x80\x9cvirtually perpetual.\xe2\x80\x9d Relying on formulas and\nassumptions provided in an amicus brief supporting petitioners, he stresses that the\nCTEA creates a copyright term worth 99.8% of the value of a perpetual\ncopyright. If JUSTICE BREYER\xe2\x80\x99S calculations were a basis for holding the\nCTEA unconstitutional, then the 1976 Act would surely fall as well, for \xe2\x80\x93 under\nthe same assumptions he indulges \xe2\x80\x93 the term set by that Act secures 99.4% of the\nvalue of a perpetual term. Indeed, on that analysis even the \xe2\x80\x9climited\xe2\x80\x9d character of\nthe 1909 (97.7%) and 1831 (94.1%) Acts might be suspect. JUSTICE BREYER\nseveral times places the Founding Fathers on his side. It is doubtful, however, that\nthose architects of our Nation, in framing the \xe2\x80\x9climited Times\xe2\x80\x9d prescription,\nthought in terms of the calculator rather than the calendar.\n\n449\n\n\x0cagain emphasize, petitioners fail to show how the CTEA\ncrosses a constitutionally significant threshold with respect\nto \xe2\x80\x9climited Times\xe2\x80\x9d that the 1831, 1909, and 1976 Acts did\nnot. Those earlier Acts did not create perpetual copyrights,\nand neither does the CTEA.13\n2\n\xe2\x80\xa6 . Petitioners contend that the CTEA\xe2\x80\x99s extension of\nexisting copyrights (1) overlooks the requirement of\n\xe2\x80\x9coriginality,\xe2\x80\x9d (2) fails to \xe2\x80\x9cpromote the Progress of Science,\xe2\x80\x9d\nand (3) ignores copyright\xe2\x80\x99s quid pro quo. Petitioners\xe2\x80\x99\n\xe2\x80\x9coriginality\xe2\x80\x9d argument draws on Feist Publications, Inc. v.\nRural Telephone Service Co., 499 U.S. 340 (1991). [The Court\nturned aside the argument that existing works are not\noriginal and therefore not eligible for further protection,\narguing that the originality requirement is not relevant to\ninterpreting the \xe2\x80\x9climited Times\xe2\x80\x9d language.]\n\xe2\x80\xa6.\nMore forcibly, petitioners contend that [t]he CTEA\xe2\x80\x99s\nextension of existing copyrights categorically fails to\n\xe2\x80\x9cpromote the Progress of Science\xe2\x80\x9d \xe2\x80\xa6, because it does not\nstimulate the creation of new works but merely adds value\nto works already created.\n\xe2\x80\xa6.\n\nRespondent notes that the CTEA\xe2\x80\x99s life-plus-70-years baseline term is expected\nto produce an average copyright duration of 95 years, and that this term\n\xe2\x80\x9cresembles some other long-accepted durational practices in the law, such as 99year leases of real property and bequests within the rule against perpetuities.\xe2\x80\x9d\nWhether such referents mark the outer boundary of \xe2\x80\x9climited Times\xe2\x80\x9d is not before\nus today. JUSTICE BREYER suggests that the CTEA\xe2\x80\x99s baseline term extends\nbeyond that typically permitted by the traditional rule against perpetuities. The\ntraditional common-law rule looks to lives in being plus 21 years. Under that rule,\nthe period before a bequest vests could easily equal or exceed the anticipated\naverage copyright term under the CTEA. If, for example, the vesting period on a\ndeed were defined with reference to the life of an infant, the sum of the\nmeasuring life plus 21 years could commonly add up to 95 years.\n13\n\n450\n\n\x0cWe have \xe2\x80\xa6 stressed, however, that it is generally for\nCongress, not the courts, to decide how best to pursue the\nCopyright Clause\xe2\x80\x99s objectives. The justifications we earlier\nset out for Congress\xe2\x80\x99 enactment of the CTEA provide a\nrational basis for the conclusion that the CTEA\n\xe2\x80\x9cpromote[s] the Progress of Science.\xe2\x80\x9d\nOn the issue of copyright duration, Congress, from the\nstart, has routinely applied new definitions or adjustments\nof the copyright term to both future works and existing\nworks not yet in the public domain.14 Such consistent\ncongressional practice is entitled to \xe2\x80\x9cvery great weight, and\nwhen it is remembered that the rights thus established have\nnot been disputed during a period of [over two] centur[ies],\nit is almost conclusive.\xe2\x80\x9d Indeed, \xe2\x80\x9c[t]his Court has\nrepeatedly laid down the principle that a contemporaneous\nlegislative exposition of the Constitution when the\nfounders of our Government and framers of our\nConstitution were actively participating in public affairs,\nacquiesced in for a long term of years, fixes the\nconstruction to be given [the Constitution\xe2\x80\x99s] provisions.\xe2\x80\x9d\nCongress\xe2\x80\x99 unbroken practice since the founding generation\nthus overwhelms petitioners\xe2\x80\x99 argument that the CTEA\xe2\x80\x99s\nextension of existing copyrights fails per se to \xe2\x80\x9cpromote the\nProgress of Science.\xe2\x80\x9d\nClosely related to petitioners\xe2\x80\x99 preambular argument, or a\nvariant of it, is their assertion that the Copyright Clause\n\xe2\x80\x9cimbeds a quid pro quo.\xe2\x80\x9d They contend, in this regard, that\nCongress may grant to an \xe2\x80\x9cAutho[r]\xe2\x80\x9d an \xe2\x80\x9cexclusive Right\xe2\x80\x9d\n\nAs we have noted, petitioners seek to distinguish the 1790 Act from those that\nfollowed. They argue that by requiring authors seeking its protection to surrender\nwhatever rights they had under state law, the 1790 Act enhanced uniformity and\ncertainty and thus \xe2\x80\x9cpromote[d] \xe2\x80\xa6 Progress.\xe2\x80\x9d This account of the 1790 Act simply\nconfirms, however, that the First Congress understood it could \xe2\x80\x9cpromote \xe2\x80\xa6\nProgress\xe2\x80\x9d by extending copyright protection to existing works. Every subsequent\nadjustment of copyright\xe2\x80\x99s duration, including the CTEA, reflects a similar\nunderstanding.\n14\n\n451\n\n\x0cfor a \xe2\x80\x9climited Tim[e],\xe2\x80\x9d but only in exchange for a\n\xe2\x80\x9cWritin[g].\xe2\x80\x9d Congress\xe2\x80\x99 power to confer copyright\nprotection, petitioners argue, is thus contingent upon an\nexchange: The author of an original work receives an\n\xe2\x80\x9cexclusive Right\xe2\x80\x9d for a \xe2\x80\x9climited Tim[e]\xe2\x80\x9d in exchange for a\ndedication to the public thereafter. Extending an existing\ncopyright without demanding additional consideration,\npetitioners maintain, bestows an unpaid-for benefit on\ncopyright holders and their heirs, in violation of the quid pro\nquo requirement.\nWe can demur to petitioners\xe2\x80\x99 description of the Copyright\nClause as a grant of legislative authority empowering\nCongress \xe2\x80\x9cto secure a bargain \xe2\x80\x93 this for that.\xe2\x80\x9d But the\nlegislative evolution earlier recalled demonstrates what the\nbargain entails. Given the consistent placement of existing\ncopyright holders in parity with future holders, the author\nof a work created in the last 170 years would reasonably\ncomprehend, as the \xe2\x80\x9cthis\xe2\x80\x9d offered her, a copyright not only\nfor the time in place when protection is gained, but also for\nany renewal or extension legislated during that time.\nCongress could rationally seek to \xe2\x80\x9cpromote \xe2\x80\xa6 Progress\xe2\x80\x9d\nby including in every copyright statute an express guarantee\nthat authors would receive the benefit of any later\nlegislative extension of the copyright term. Nothing in the\nCopyright Clause bars Congress from creating the same\nincentive by adopting the same position as a matter of\nunbroken practice.\nWe note, furthermore, that patents and copyrights do not\nentail the same exchange, and that our references to a quid\npro quo typically appear in the patent context. This is\nunderstandable, given that immediate disclosure is not the\nobjective of, but is exacted from, the patentee. It is the price\npaid for the exclusivity secured. For the author seeking\ncopyright protection, in contrast, disclosure is the desired\nobjective, not something exacted from the author in\n\n452\n\n\x0cexchange for the copyright. Indeed, since the 1976 Act,\ncopyright has run from creation, not publication.\nFurther distinguishing the two kinds of intellectual\nproperty, copyright gives the holder no monopoly on any\nknowledge. A reader of an author\xe2\x80\x99s writing may make full\nuse of any fact or idea she acquires from her reading. The\ngrant of a patent, on the other hand, does prevent full use\nby others of the inventor\xe2\x80\x99s knowledge. In light of these\ndistinctions, one cannot extract from language in our patent\ndecisions \xe2\x80\x93 language not trained on a grant\xe2\x80\x99s duration \xe2\x80\x93\ngenuine support for petitioners\xe2\x80\x99 bold view. Accordingly, we\nreject the proposition that a quid pro quo requirement stops\nCongress from expanding copyright\xe2\x80\x99s term in a manner that\nputs existing and future copyrights in parity.15\n\xe2\x80\xa6.\nIII\nPetitioners separately argue that the CTEA is a contentneutral regulation of speech that fails heightened judicial\nreview under the First Amendment. We reject petitioners\xe2\x80\x99\nplea for imposition of uncommonly strict scrutiny on a\ncopyright scheme that incorporates its own speechprotective purposes and safeguards. \xe2\x80\xa6 .\nIV\nIf petitioners\xe2\x80\x99 vision of the Copyright Clause held sway, it\nwould do more than render the CTEA\xe2\x80\x99s duration\nextensions unconstitutional as to existing works. Indeed,\npetitioners\xe2\x80\x99 assertion that the provisions of the CTEA are\n\nThe fact that patent and copyright involve different exchanges does not, of\ncourse, mean that we may not be guided in our \xe2\x80\x9climited Times\xe2\x80\x9d analysis by\nCongress\xe2\x80\x99 repeated extensions of existing patents. If patent\xe2\x80\x99s quid pro quo is more\nexacting than copyright\xe2\x80\x99s, then Congress\xe2\x80\x99 repeated extension of existing patents\nwithout constitutional objection suggests even more strongly that similar\nlegislation with respect to copyrights is constitutionally permissible.\n15\n\n453\n\n\x0cnot severable would make the CTEA\xe2\x80\x99s enlarged terms\ninvalid even as to tomorrow\xe2\x80\x99s work. The 1976 Act\xe2\x80\x99s time\nextensions, which set the pattern that the CTEA followed,\nwould be vulnerable as well.\nAs we read the Framers\xe2\x80\x99 instruction, the Copyright Clause\nempowers Congress to determine the intellectual property\nregimes that, overall, in that body\xe2\x80\x99s judgment, will serve the\nends of the Clause. Beneath the facade of their inventive\nconstitutional interpretation, petitioners forcefully urge that\nCongress pursued very bad policy in prescribing the\nCTEA\xe2\x80\x99s long terms. The wisdom of Congress\xe2\x80\x99 action,\nhowever, is not within our province to second-guess.\nSatisfied that the legislation before us remains inside the\ndomain the Constitution assigns to the First Branch, we\naffirm the judgment of the Court of Appeals.\nIt is so ordered.\nJUSTICE STEVENS, dissenting.\n\xe2\x80\xa6 . [I]nsofar as the 1998 Sonny Bono Copyright Term\nExtension Act, 112 Stat. 2827, purported to extend the life\nof unexpired copyrights, it is invalid. Because the majority\xe2\x80\x99s\ncontrary conclusion rests on the mistaken premise that this\nCourt has virtually no role in reviewing congressional\ngrants of monopoly privileges to authors, inventors, and\ntheir successors, I respectfully dissent.\nI\nThe authority to issue copyrights stems from the same\nClause in the Constitution that created the patent power. It\nprovides:\nCongress shall have Power \xe2\x80\xa6 To\npromote the Progress of Science and\nuseful Arts, by securing for limited\nTimes to Authors and Inventors the\n\n454\n\n\x0cexclusive Right to their respective\nWritings and Discoveries.\nArt. I, \xc2\xa7 8, cl. 8.\nIt is well settled that the Clause is \xe2\x80\x9cboth a grant of power\nand a limitation\xe2\x80\x9d and that Congress \xe2\x80\x9cmay not overreach the\nrestraints imposed by the stated constitutional purpose.\xe2\x80\x9d As\nwe have made clear in the patent context, that purpose has\ntwo dimensions. Most obviously the grant of exclusive\nrights to their respective writings and discoveries is\nintended to encourage the creativity of \xe2\x80\x9cAuthors and\nInventors.\xe2\x80\x9d But the requirement that those exclusive grants\nbe for \xe2\x80\x9climited Times\xe2\x80\x9d serves the ultimate purpose of\npromoting the \xe2\x80\x9cProgress of Science and useful Arts\xe2\x80\x9d by\nguaranteeing that those innovations will enter the public\ndomain as soon as the period of exclusivity expires:\nOnce the patent issues, it is strictly\nconstrued, it cannot be used to secure\nany monopoly beyond that contained\nin the patent, \xe2\x80\xa6 and especially\nrelevant here, when the patent expires\nthe monopoly created by it expires,\ntoo, and the right to make the article \xe2\x80\x93\nincluding the right to make it in\nprecisely the shape it carried when\npatented \xe2\x80\x93 passes to the public.\nSears, Roebuck & Co. v. Stiffel Co., 376 U. S. 230 (1964).\nIt is that ultimate purpose that explains why a patent may\nnot issue unless it discloses the invention in such detail that\none skilled in the art may copy it. Complete disclosure as a\nprecondition to the issuance of a patent is part of the quid\npro quo that justifies the limited monopoly for the inventor\nas consideration for full and immediate access by the public\nwhen the limited time expires.\n\n455\n\n\x0cAlmost two centuries ago the Court plainly stated that\npublic access to inventions at the earliest possible date was\nthe essential purpose of the Clause:\nWhile one great object was, by holding\nout a reasonable reward to inventors\nand giving them an exclusive right to\ntheir inventions for a limited period, to\nstimulate the efforts of genius; the\nmain object was \xe2\x80\x98to promote the\nprogress of science and useful arts;\xe2\x80\x99\nand this could be done best, by giving\nthe public at large a right to make,\nconstruct, use, and vend the thing\ninvented, at as early a period as\npossible, having a due regard to the\nrights of the inventor. If an inventor\nshould be permitted to hold back from\nthe knowledge of the public the secrets\nof his invention; if he should for a\nlong period of years retain the\nmonopoly, and make, and sell his\ninvention publicly, and thus gather the\nwhole profits of it, relying upon his\nsuperior skill and knowledge of the\nstructure; and then, and then only,\nwhen the danger of competition\nshould force him to secure the\nexclusive right, he should be allowed\nto take out a patent, and thus exclude\nthe public from any farther use than\nwhat should be derived under it during\nhis fourteen years; it would materially\nretard the progress of science and the\nuseful arts, and give a premium to\nthose, who should be least prompt to\ncommunicate their discoveries.\nPennock v. Dialogue, 2 Pet. 1, 18 (1829).\n\n456\n\n\x0cPennock held that an inventor could not extend the period\nof patent protection by postponing his application for the\npatent while exploiting the invention commercially. As we\nrecently explained, \xe2\x80\x9cimplicit in the Patent Clause itself\xe2\x80\x9d is\nthe understanding \xe2\x80\x9cthat free exploitation of ideas will be\nthe rule, to which the protection of a federal patent is the\nexception. Moreover, the ultimate goal of the patent system\nis to bring new designs and technologies into the public\ndomain through disclosure.\xe2\x80\x9d\nNeither the purpose of encouraging new inventions nor the\noverriding interest in advancing progress by adding\nknowledge to the public domain is served by retroactively\nincreasing the inventor\xe2\x80\x99s compensation for a completed\ninvention and frustrating the legitimate expectations of\nmembers of the public who want to make use of it in a free\nmarket. Because those twin purposes provide the only\navenue\nfor\ncongressional\naction\nunder\nthe\nCopyright/Patent Clause of the Constitution, any other\naction is manifestly unconstitutional.\nII\nWe have recognized that these twin purposes of\nencouraging new works and adding to the public domain\napply to copyrights as well as patents. Thus, with regard to\ncopyrights on motion pictures, we have clearly identified\nthe overriding interest in the \xe2\x80\x9crelease to the public of the\nproducts of [the author\xe2\x80\x99s] creative genius.\xe2\x80\x9d United States v.\nParamount Pictures, Inc., 334 U. S. 131, 158 (1948). And, as\nwith patents, we have emphasized that the overriding\npurpose of providing a reward for authors\xe2\x80\x99 creative activity\nis to motivate that activity and \xe2\x80\x9cto allow the public access\nto the products of their genius after the limited period of\nexclusive control has expired.\xe2\x80\x9d Sony Corp. of America v.\nUniversal City Studios, Inc., 464 U. S. 417, 429 (1984). Ex post\nfacto extensions of copyrights result in a gratuitous transfer\nof wealth from the public to authors, publishers, and their\n\n457\n\n\x0csuccessors in interest. Such retroactive extensions do not\neven arguably serve either of the purposes of the\nCopyright/Patent Clause. The reasons why such extensions\nof the patent monopoly are unconstitutional apply to\ncopyrights as well.\nRespondent, however, advances four arguments in support\nof the constitutionality of such retroactive extensions: (1)\nThe first Copyright Act enacted shortly after the\nConstitution was ratified applied to works that had already\nbeen produced; (2) later Congresses have repeatedly\nauthorized extensions of copyrights and patents; (3) such\nextensions promote the useful arts by giving copyright\nholders an incentive to preserve and restore certain\nvaluable motion pictures; and (4) as a matter of equity,\nwhenever Congress provides a longer term as an incentive\nto the creation of new works by authors, it should provide\nan equivalent reward to the owners of all unexpired\ncopyrights. None of these arguments is persuasive. [Justice\nStevens argues that both reason and the history of\nCopyright and Patent statutes contradict these arguments.]\nVII\nThe express grant of a perpetual copyright would\nunquestionably violate the textual requirement that the\nauthors\xe2\x80\x99 exclusive rights be only \xe2\x80\x9cfor limited Times.\xe2\x80\x9d\nWhether the extraordinary length of the grants authorized\nby the 1998 Act are invalid because they are the functional\nequivalent of perpetual copyrights is a question that need\nnot be answered in this case because the question presented\nby the certiorari petition merely challenges Congress\xe2\x80\x99 power\nto extend retroactively the terms of existing copyrights.\nAccordingly, there is no need to determine whether the\ndeference that is normally given to congressional policy\njudgments may save from judicial review its decision\nrespecting the appropriate length of the term. It is\nimportant to note, however, that a categorical rule\n\n458\n\n\x0cprohibiting retroactive extensions would effectively\npreclude perpetual copyrights. More importantly, as the\nHouse of Lords recognized when it refused to amend the\nStatute of Anne in 1735, unless the Clause is construed to\nembody such a categorical rule, Congress may extend\nexisting monopoly privileges ad infinitum under the\nmajority\xe2\x80\x99s analysis.\nBy failing to protect the public interest in free access to the\nproducts of inventive and artistic genius \xe2\x80\x93 indeed, by\nvirtually ignoring the central purpose of the\nCopyright/Patent Clause \xe2\x80\x93 the Court has quitclaimed to\nCongress its principal responsibility in this area of the law.\nFairly read, the Court has stated that Congress\xe2\x80\x99 actions\nunder the Copyright/Patent Clause are, for all intents and\npurposes, judicially unreviewable. That result cannot be\nsquared with the basic tenets of our constitutional\nstructure. It is not hyperbole to recall the trenchant words\nof Chief Justice John Marshall: \xe2\x80\x9cIt is emphatically the\nprovince and duty of the judicial department to say what\nthe law is.\xe2\x80\x9d Marbury v. Madison, 1 Cranch 137, 177 (1803).\nWe should discharge that responsibility as we did in Chadha.\nI respectfully dissent.\nJUSTICE BREYER, dissenting.\nThe Constitution\xe2\x80\x99s Copyright Clause grants Congress the\npower to \xe2\x80\x9dpromote the Progress of Science \xe2\x80\xa6 by securing for\nlimited Times to Authors \xe2\x80\xa6 the exclusive Right to their\nrespective Writings.\xe2\x80\x9d Art. I, \xc2\xa7 8, cl. 8 (emphasis added). The\nstatute before us, the 1998 Sonny Bono Copyright Term\nExtension Act, extends the term of most existing\ncopyrights to 95 years and that of many new copyrights to\n70 years after the author\xe2\x80\x99s death. The economic effect of\nthis 20-year extension \xe2\x80\x93 the longest blanket extension since\nthe Nation\xe2\x80\x99s founding \xe2\x80\x93 is to make the copyright term not\nlimited, but virtually perpetual. Its primary legal effect is to\ngrant the extended term not to authors, but to their heirs,\n\n459\n\n\x0cestates, or corporate successors. And most importantly, its\npractical effect is not to promote, but to inhibit, the\nprogress of \xe2\x80\x9cScience\xe2\x80\x9d \xe2\x80\x93 by which word the Framers meant\nlearning or knowledge.\nThe majority believes these conclusions rest upon practical\njudgments that at most suggest the statute is unwise, not\nthat it is unconstitutional. Legal distinctions, however, are\noften matters of degree. And in this case the failings of\ndegree are so serious that they amount to failings of\nconstitutional kind. Although the Copyright Clause grants\nbroad legislative power to Congress, that grant has limits.\nAnd in my view this statute falls outside them.\nI\nThe \xe2\x80\x9cmonopoly privileges\xe2\x80\x9d that the Copyright Clause\nconfers \xe2\x80\x9care neither unlimited nor primarily designed to\nprovide a special private benefit.\xe2\x80\x9d Sony Corp. of America v.\nUniversal City Studios, Inc., 464 U. S. 417, 429 (1984); cf.\nGraham v. John Deere Co. of Kansas City, 383 U. S. 1, 5 (1966).\nThis Court has made clear that the Clause\xe2\x80\x99s limitations are\njudicially enforceable. E. g., Trade-Mark Cases, 100 U. S. 82,\n93-94 (1879). And, in assessing this statute for that\npurpose, I would take into account the fact that the\nConstitution is a single document, that it contains both a\nCopyright Clause and a First Amendment, and that the two\nare related.\nThe Copyright Clause and the First Amendment seek\nrelated objectives \xe2\x80\x93 the creation and dissemination of\ninformation. When working in tandem, these provisions\nmutually reinforce each other, the first serving as an\n\xe2\x80\x9cengine of free expression,\xe2\x80\x9d Harper & Row, Publishers, Inc. v.\nNation Enterprises, 471 U. S. 539, 558 (1985), the second\nassuring that government throws up no obstacle to its\ndissemination. At the same time, a particular statute that\nexceeds proper Copyright Clause bounds may set Clause\n\n460\n\n\x0cand Amendment at cross-purposes, thereby depriving the\npublic of the speech-related benefits that the Founders,\nthrough both, have promised.\nConsequently, I would review plausible claims that a\ncopyright statute seriously, and unjustifiably, restricts the\ndissemination of speech somewhat more carefully than\nreference to this Court\xe2\x80\x99s traditional Copyright Clause\njurisprudence might suggest. There is no need in this case\nto characterize that review as a search for \xe2\x80\x9c\xe2\x80\x98congruence and\nproportionality,\xe2\x80\x99\xe2\x80\x9d or as some other variation of what this\nCourt has called \xe2\x80\x9cintermediate scrutiny.\xe2\x80\x9d Rather, it is\nnecessary only to recognize that this statute involves not\npure economic regulation, but regulation of expression, and\nwhat may count as rational where economic regulation is at\nissue is not necessarily rational where we focus on\nexpression \xe2\x80\x93 in a Nation constitutionally dedicated to the\nfree dissemination of speech, information, learning, and\nculture. In this sense only, and where line-drawing among\nconstitutional interests is at issue, I would look harder than\ndoes the majority at the statute\xe2\x80\x99s rationality \xe2\x80\x93 though less\nhard than precedent might justify.\nThus, I would find that the statute lacks the constitutionally\nnecessary rational support (1) if the significant benefits that\nit bestows are private, not public; (2) if it threatens seriously\nto undermine the expressive values that the Copyright\nClause embodies; and (3) if it cannot find justification in\nany significant Clause-related objective. Where, after\nexamination of the statute, it becomes difficult, if not\nimpossible, even to dispute these characterizations,\nCongress\xe2\x80\x99 \xe2\x80\x9cchoice is clearly wrong.\xe2\x80\x9d\nII\nA.\nBecause we must examine the relevant statutory effects in\nlight of the Copyright Clause\xe2\x80\x99s own purposes, we should\n\n461\n\n\x0cbegin by reviewing the basic objectives of that Clause. The\nClause authorizes a \xe2\x80\x9ctax on readers for the purpose of\ngiving a bounty to writers.\xe2\x80\x9d Why? What constitutional\npurposes does the \xe2\x80\x9cbounty\xe2\x80\x9d serve?\nThe Constitution itself describes the basic Clause objective\nas one of \xe2\x80\x9cpromot[ing] the Progress of Science,\xe2\x80\x9d i. e.,\nknowledge and learning. The Clause exists not to \xe2\x80\x9cprovide\na special private benefit,\xe2\x80\x9d Sony, supra, at 429, but \xe2\x80\x9cto\nstimulate artistic creativity for the general public good.\xe2\x80\x9d It\ndoes so by \xe2\x80\x9cmotivat[ing] the creative activity of authors\xe2\x80\x9d\nthrough \xe2\x80\x9cthe provision of a special reward.\xe2\x80\x9d Sony, supra, at\n429. The \xe2\x80\x9creward\xe2\x80\x9d is a means, not an end. And that is why\nthe copyright term is limited. It is limited so that its\nbeneficiaries \xe2\x80\x93 the public \xe2\x80\x93 \xe2\x80\x9cwill not be permanently\ndeprived of the fruits of an artist\xe2\x80\x99s labors.\xe2\x80\x9d\nThat is how the Court previously has described the Clause\xe2\x80\x99s\nobjectives. And, in doing so, the Court simply has\nreiterated the views of the Founders.\nMadison, like Jefferson and others in the founding\ngeneration, warned against the dangers of monopolies.\nMadison noted that the Constitution had \xe2\x80\x9climited them to\ntwo cases, the authors of Books, and of useful inventions.\xe2\x80\x9d\nMadison on Monopolies 756. He thought that in those two\ncases monopoly is justified because it amounts to\n\xe2\x80\x9ccompensation for\xe2\x80\x9d an actual community \xe2\x80\x9cbenefit\xe2\x80\x9d and\nbecause the monopoly is \xe2\x80\x9ctemporary\xe2\x80\x9d \xe2\x80\x93 the term originally\nbeing 14 years (once renewable). Madison concluded that\n\xe2\x80\x9cunder that limitation a sufficient recompence and\nencouragement may be given.\xe2\x80\x9d But he warned in general\nthat monopolies must be \xe2\x80\x9cguarded with strictness agst\nabuse.\xe2\x80\x9d\nMany Members of the Legislative Branch have expressed\nthemselves similarly. Those who wrote the House Report\non the landmark Copyright Act of 1909, for example, said\nthat copyright was not designed \xe2\x80\x9cprimarily\xe2\x80\x9d to \xe2\x80\x9cbenefit\xe2\x80\x9d\n\n462\n\n\x0cthe \xe2\x80\x9cauthor\xe2\x80\x9d or \xe2\x80\x9cany particular class of citizens, however\nworthy.\xe2\x80\x9d Rather, under the Constitution, copyright was\ndesigned \xe2\x80\x9cprimarily for the benefit of the public,\xe2\x80\x9d for \xe2\x80\x9cthe\nbenefit of the great body of people, in that it will stimulate\nwriting and invention.\xe2\x80\x9d And were a copyright statute not\n\xe2\x80\x9cbelieved, in fact, to accomplish\xe2\x80\x9d the basic constitutional\nobjective of advancing learning, that statute \xe2\x80\x9cwould be\nbeyond the power of Congress\xe2\x80\x9d to enact. Similarly, those\nwho wrote the House Report on legislation that\nimplemented the Berne Convention for the Protection of\nLiterary and Artistic Works said that \xe2\x80\x9c[t]he constitutional\npurpose of copyright is to facilitate the flow of ideas in the\ninterest of learning.\xe2\x80\x9d H. R. Rep. No. 100-609, p. 22 (1988)\n(internal quotation marks omitted). They added:\nUnder the U. S. Constitution, the\nprimary objective of copyright law is\nnot to reward the author, but rather to\nsecure for the public the benefits\nderived from the authors\xe2\x80\x99 labors. By\ngiving authors an incentive to create,\nthe public benefits in two ways: when\nthe original expression is created and\n\xe2\x80\xa6 when the limited term \xe2\x80\xa6 expires\nand the creation is added to the public\ndomain.\nId., at 17.\nFor present purposes, then, we should take the following as\nwell established: that copyright statutes must serve public,\nnot private, ends; that they must seek \xe2\x80\x9cto promote the\nProgress\xe2\x80\x9d of knowledge and learning; and that they must\ndo so both by creating incentives for authors to produce\nand by removing the related restrictions on dissemination\nafter expiration of a copyright\xe2\x80\x99s \xe2\x80\x9climited Tim[e]\xe2\x80\x9d \xe2\x80\x93 a time\nthat (like \xe2\x80\x9ca limited monarch\xe2\x80\x9d) is \xe2\x80\x9crestrain[ed]\xe2\x80\x9d and\n\xe2\x80\x9ccircumscribe[d],\xe2\x80\x9d \xe2\x80\x9cnot [left] at large,\xe2\x80\x9d 2 S. Johnson, A\nDictionary of the English Language 1151 (4th rev. ed. 1773). I\n\n463\n\n\x0cwould examine the statute\xe2\x80\x99s effects in light of these wellestablished constitutional purposes.\nB.\nThis statute, like virtually every copyright statute, imposes\nupon the public certain expression-related costs in the form\nof (1) royalties that may be higher than necessary to evoke\ncreation of the relevant work, and (2) a requirement that\none seeking to reproduce a copyrighted work must obtain\nthe copyright holder\xe2\x80\x99s permission. The first of these costs\ntranslates into higher prices that will potentially restrict a\nwork\xe2\x80\x99s dissemination. The second means search costs that\nthemselves may prevent reproduction even where the\nauthor has no objection. Although these costs are, in a\nsense, inevitable concomitants of copyright protection,\nthere are special reasons for thinking them especially\nserious here.\nFirst, the present statute primarily benefits the holders of\nexisting copyrights, i. e., copyrights on works already\ncreated. And a Congressional Research Service (CRS) study\nprepared for Congress indicates that the added royaltyrelated sum that the law will transfer to existing copyright\nholders is large. E. Rappaport, CRS Report for Congress,\nCopyright Term Extension: Estimating the Economic\nValues (1998) (hereinafter CRS Report). In conjunction\nwith official figures on copyright renewals, the CRS Report\nindicates that only about 2% of copyrights between 55 and\n75 years old retain commercial value \xe2\x80\x93 i. e., still generate\nroyalties after that time. But books, songs, and movies of\nthat vintage still earn about $400 million per year in\nroyalties. Hence, (despite declining consumer interest in any\ngiven work over time) one might conservatively estimate\nthat 20 extra years of copyright protection will mean the\ntransfer of several billion extra royalty dollars to holders of\nexisting copyrights \xe2\x80\x93 copyrights that, together, already will\nhave earned many billions of dollars in royalty \xe2\x80\x9creward.\xe2\x80\x9d\n\n464\n\n\x0cThe extra royalty payments will not come from thin air.\nRather, they ultimately come from those who wish to read\nor see or hear those classic books or films or recordings\nthat have survived. Even the $500,000 that United Airlines\nhas had to pay for the right to play George Gershwin\xe2\x80\x99s\n1924 classic Rhapsody in Blue represents a cost of doing\nbusiness, potentially reflected in the ticket prices of those\nwho fly. See Ganzel, Copyright or Copywrong?, 39 Training 36,\n42 (Dec. 2002). Further, the likely amounts of extra royalty\npayments are large enough to suggest that unnecessarily\nhigh prices will unnecessarily restrict distribution of classic\nworks (or lead to disobedience of the law) \xe2\x80\x93 not just in\ntheory but in practice. Cf. CRS Report 3 (\xe2\x80\x9c[N]ew, cheaper\neditions can be expected when works come out of\ncopyright\xe2\x80\x9d); Brief for College Art Association et al. as Amici\nCuriae 24 (One year after expiration of copyright on Willa\nCather\xe2\x80\x99s My Antonia, seven new editions appeared at prices\nranging from $2 to $24); Ganzel, supra, at 40-41, 44\n(describing later abandoned plans to charge individual Girl\nScout camps $257 to $1,439 annually for a license to sing\nsongs such as God Bless America around a campfire).\nA second, equally important, cause for concern arises out\nof the fact that copyright extension imposes a\n\xe2\x80\x9cpermissions\xe2\x80\x9d requirement \xe2\x80\x93 not only upon potential users\nof \xe2\x80\x9cclassic\xe2\x80\x9d works that still retain commercial value, but\nalso upon potential users of any other work still in copyright.\nAgain using CRS estimates, one can estimate that, by 2018,\nthe number of such works 75 years of age or older will be\nabout 350,000. See Brief for Petitioners 7. Because the\nCopyright Act of 1976 abolished the requirement that an\nowner must renew a copyright, such still-in-copyright\nworks (of little or no commercial value) will eventually\nnumber in the millions.\nThe potential users of such works include not only movie\nbuffs and aging jazz fans, but also historians, scholars,\nteachers, writers, artists, database operators, and researchers\n\n465\n\n\x0cof all kinds \xe2\x80\x93 those who want to make the past accessible\nfor their own use or for that of others. The permissions\nrequirement can inhibit their ability to accomplish that task.\nIndeed, in an age where computer-accessible databases\npromise to facilitate research and learning, the permissions\nrequirement can stand as a significant obstacle to\nrealization of that technological hope.\nThe reason is that the permissions requirement can inhibit\nor prevent the use of old works (particularly those without\ncommercial value): (1) because it may prove expensive to\ntrack down or to contract with the copyright holder, (2)\nbecause the holder may prove impossible to find, or (3)\nbecause the holder when found may deny permission either\noutright or through misinformed efforts to bargain. The\nCRS, for example, has found that the cost of seeking\npermission \xe2\x80\x9ccan be prohibitive.\xe2\x80\x9d CRS Report 4. And amici,\nalong with petitioners, provide examples of the kinds of\nsignificant harm at issue.\nThus, the American Association of Law Libraries points\nout that the clearance process associated with creating an\nelectronic archive, Documenting the American South,\n\xe2\x80\x9cconsumed approximately a dozen man-hours\xe2\x80\x9d per work.\nThe College Art Association says that the costs of\nobtaining permission for use of single images, short\nexcerpts, and other short works can become prohibitively\nhigh; it describes the abandonment of efforts to include, e.\ng., campaign songs, film excerpts, and documents exposing\n\xe2\x80\x9chorrors of the chain gang\xe2\x80\x9d in historical works or archives;\nand it points to examples in which copyright holders in\neffect have used their control of copyright to try to control\nthe content of historical or cultural works. \xe2\x80\xa6 . Petitioners\npoint to music fees that may prevent youth or community\norchestras, or church choirs, from performing early 20thcentury music. Brief for Petitioners 3-5; see also App. 16-17\n(Copyright extension caused abandonment of plans to sell\nsheet music of Maurice Ravel\xe2\x80\x99s Alborada Del Gracioso).\n\n466\n\n\x0cAmici for petitioners describe how electronic databases tend\nto avoid adding to their collections works whose copyright\nholders may prove difficult to contact, see, e. g., Arms,\nGetting the Picture: Observations from the Library of Congress on\nProviding Online Access to Pictorial Images, 48 Library Trends\n379, 405 (1999) (describing how this tendency applies to\nthe Library of Congress\xe2\x80\x99 own digital archives).\nAs I have said, to some extent costs of this kind accompany\nany copyright law, regardless of the length of the copyright\nterm. But to extend that term, preventing works from the\n1920\xe2\x80\x99s and 1930\xe2\x80\x99s from falling into the public domain, will\ndramatically increase the size of the costs just as \xe2\x80\x93\nperversely \xe2\x80\x93 the likely benefits from protection diminish.\nThe older the work, the less likely it retains commercial\nvalue, and the harder it will likely prove to find the current\ncopyright holder. The older the work, the more likely it will\nprove useful to the historian, artist, or teacher. The older\nthe work, the less likely it is that a sense of authors\xe2\x80\x99 rights\ncan justify a copyright holder\xe2\x80\x99s decision not to permit\nreproduction, for the more likely it is that the copyright\nholder making the decision is not the work\xe2\x80\x99s creator, but,\nsay, a corporation or a great-grandchild whom the work\xe2\x80\x99s\ncreator never knew. Similarly, the costs of obtaining\npermission, now perhaps ranging in the millions of dollars,\nwill multiply as the number of holders of affected\ncopyrights increases from several hundred thousand to\nseveral million. The costs to the users of nonprofit\ndatabases, now numbering in the low millions, will multiply\nas the use of those computer-assisted databases becomes\nmore prevalent. See, e. g., Brief for Internet Archive et al. as\nAmici Curiae 2, 21, and n. 37 (describing nonprofit Project\nGutenberg). And the qualitative costs to education,\nlearning, and research will multiply as our children become\never more dependent for the content of their knowledge\nupon computer-accessible databases \xe2\x80\x93 thereby condemning\nthat which is not so accessible, say, the cultural content of\n\n467\n\n\x0cearly 20th-century history, to a kind of intellectual\npurgatory from which it will not easily emerge.\nThe majority \xe2\x80\xa6 invokes the \xe2\x80\x9cfair use\xe2\x80\x9d exception, and it\nnotes that copyright law itself is restricted to protection of a\nwork\xe2\x80\x99s expression, not its substantive content. Neither the\nexception nor the restriction, however, would necessarily\nhelp those who wish to obtain from electronic databases\nmaterial that is not there \xe2\x80\x93 say, teachers wishing their\nstudents to see albums of Depression Era photographs, to\nread the recorded words of those who actually lived under\nslavery, or to contrast, say, Gary Cooper\xe2\x80\x99s heroic portrayal\nof Sergeant York with filmed reality from the battlefield of\nVerdun. Such harm, and more will occur despite the 1998\nAct\xe2\x80\x99s exemptions and despite the other \xe2\x80\x9cFirst Amendment\nsafeguards\xe2\x80\x9d in which the majority places its trust.\nI should add that the Motion Picture Association of\nAmerica also finds my concerns overstated, at least with\nrespect to films, because the extension will sometimes\nmake it profitable to reissue old films, saving them from\nextinction. Other film preservationists note, however, that\nonly a small minority of the many films, particularly silent\nfilms, from the 1920\xe2\x80\x99s and 1930\xe2\x80\x99s have been preserved. 1\nReport of the Librarian of Congress, Film Preservation\n1993, pp. 3-4 (Half of all pre-1950 feature films and more\nthan 80% of all such pre-1929 films have already been lost);\ncf. Brief for Hal Roach Studios et al. as Amici Curiae 18\n(Out of 1,200 Twenties Era silent films still under\ncopyright, 63 are now available on digital video disc). They\nseek to preserve the remainder. See, e. g., Brief for Internet\nArchive et al. as Amici Curiae 22 (Nonprofit database\ndigitized 1,001 public-domain films, releasing them online\nwithout charge); 1 Film Preservation 1993, supra, at 23\n(reporting well over 200,000 titles held in public archives).\nAnd they tell us that copyright extension will impede\npreservation by forbidding the reproduction of films within\ntheir own or within other public collections.\n\n468\n\n\x0cBecause this subsection concerns only costs, not\ncountervailing benefits, I shall simply note here that, with\nrespect to films as with respect to other works, extension\ndoes cause substantial harm to efforts to preserve and to\ndisseminate works that were created long ago. And I shall\nturn to the second half of the equation: Could Congress\nreasonably have found that the extension\xe2\x80\x99s toll-related and\npermissions-related harms are justified by extension\xe2\x80\x99s\ncountervailing preservationist incentives or in other ways?\nC.\nWhat copyright-related benefits might justify the statute\xe2\x80\x99s\nextension of copyright protection? First, no one could\nreasonably conclude that copyright\xe2\x80\x99s traditional economic\nrationale applies here. The extension will not act as an\neconomic spur encouraging authors to create new works.\nSee Mazer, 347 U. S., at 219 (The \xe2\x80\x9ceconomic philosophy\xe2\x80\x9d\nof the Copyright Clause is to \xe2\x80\x9cadvance public welfare\xe2\x80\x9d by\n\xe2\x80\x9cencourag[ing] individual effort\xe2\x80\x9d through \xe2\x80\x9cpersonal gain\xe2\x80\x9d).\nNo potential author can reasonably believe that he has\nmore than a tiny chance of writing a classic that will survive\ncommercially long enough for the copyright extension to\nmatter. After all, if, after 55 to 75 years, only 2% of all\ncopyrights retain commercial value, the percentage\nsurviving after 75 years or more (a typical pre-extension\ncopyright term) \xe2\x80\x93 must be far smaller. See CRS Report 7\n(estimating that, even after copyright renewal, about 3.8%\nof copyrighted books go out of print each year). And any\nremaining monetary incentive is diminished dramatically by\nthe fact that the relevant royalties will not arrive until 75\nyears or more into the future, when, not the author, but\ndistant heirs, or shareholders in a successor corporation,\nwill receive them. Using assumptions about the time value\nof money provided us by a group of economists (including\nfive Nobel prize winners), it seems fair to say that, for\nexample, a 1% likelihood of earning $100 annually for 20\n\n469\n\n\x0cyears, starting 75 years into the future, is worth less than seven\ncents today.\nWhat potential Shakespeare, Wharton, or Hemingway\nwould be moved by such a sum? What monetarily\nmotivated Melville would not realize that he could do\nbetter for his grandchildren by putting a few dollars into an\ninterest-bearing bank account? The Court itself finds no\nevidence to the contrary. It refers to testimony before\nCongress (1) that the copyright system\xe2\x80\x99s incentives\nencourage creation, and (2) (referring to Noah Webster)\nthat income earned from one work can help support an\nartist who \xe2\x80\x9c\xe2\x80\x98continue[s] to create.\xe2\x80\x99\xe2\x80\x9d But the first of these\namounts to no more than a set of undeniably true\npropositions about the value of incentives in general. And\nthe applicability of the second to this Act is mysterious.\nHow will extension help today\xe2\x80\x99s Noah Webster create new\nworks 50 years after his death? Or is that hypothetical\nWebster supposed to support himself with the extension\xe2\x80\x99s\npresent discounted value, i. e., a few pennies? Or (to change\nthe metaphor) is the argument that Dumas fils would have\nwritten more books had Dumas pere\xe2\x80\x99s Three Musketeers\nearned more royalties?\nRegardless, even if this cited testimony were meant more\nspecifically to tell Congress that somehow, somewhere,\nsome potential author might be moved by the thought of\ngreat-grandchildren receiving copyright royalties a century\nhence, so might some potential author also be moved by\nthe thought of royalties being paid for two centuries, five\ncenturies, 1,000 years, \xe2\x80\x9c\xe2\x80\x98til the End of Time.\xe2\x80\x9d And from a\nrational economic perspective the time difference among\nthese periods makes no real difference. The present extension\nwill produce a copyright period of protection that, even\nunder conservative assumptions, is worth more than 99.8%\nof protection in perpetuity (more than 99.99% for a\nsongwriter like Irving Berlin and a song like Alexander\xe2\x80\x99s\nRagtime Band). The lack of a practically meaningful\n\n470\n\n\x0cdistinction from an author\xe2\x80\x99s ex ante perspective between (a)\nthe statute\xe2\x80\x99s extended terms and (b) an infinite term makes\nthis latest extension difficult to square with the\nConstitution\xe2\x80\x99s insistence on \xe2\x80\x9climited Times.\xe2\x80\x9d\nI am not certain why the Court considers it relevant in this\nrespect that \xe2\x80\x9c[n]othing \xe2\x80\xa6 warrants construction of the\n[1998 Act\xe2\x80\x99s] 20-year term extension as a congressional\nattempt to evade or override the \xe2\x80\x98limited Times\xe2\x80\x99\nconstraint.\xe2\x80\x9d Of course Congress did not intend to act\nunconstitutionally. But it may have sought to test the\nConstitution\xe2\x80\x99s limits. After all, the statute was named after a\nMember of Congress, who, the legislative history records,\n\xe2\x80\x9cwanted the term of copyright protection to last forever.\xe2\x80\x9d\n144 Cong. Rec. H9952 (daily ed. Oct. 7, 1998) (statement\nof Rep. Mary Bono). See also Copyright Term, Film\nLabeling, and Film Preservation Legislation: Hearings on\nH. R. 989 et al. before the Subcommittee on Courts and\nIntellectual Property of the House Judiciary Committee,\n104th Cong., 1st Sess., 94 (1995) (hereinafter House\nHearings) (statement of Rep. Sonny Bono) (questioning\nwhy copyrights should ever expire); ibid. (statement of Rep.\nBerman) (\xe2\x80\x9cI guess we could \xe2\x80\xa6 just make a permanent\nmoratorium on the expiration of copyrights\xe2\x80\x9d); id., at 230\n(statement of Rep. Hoke) (\xe2\x80\x9cWhy 70 years? Why not\nforever? Why not 150 years?\xe2\x80\x9d); cf. ibid. (statement of the\nRegister of Copyrights) (In Copyright Office proceedings,\n\xe2\x80\x9c[t]he Songwriters Guild suggested a perpetual term\xe2\x80\x9d); id.,\nat 234 (statement of Quincy Jones) (\xe2\x80\x9dI\xe2\x80\x99m particularly\nfascinated with Representative Hoke\xe2\x80\x99s statement\xe2\x80\xa6 . [W]hy\nnot forever?\xe2\x80\x9d); id., at 277 (statement of Quincy Jones) (\xe2\x80\x9cIf\nwe can start with 70, add 20, it would be a good start\xe2\x80\x9d).\nAnd the statute ended up creating a term so long that (were\nthe vesting of 19th-century real property at issue) it would\ntypically violate the traditional rule against perpetuities. See\n10 R. Powell, Real Property \xc2\xa7\xc2\xa7 71.02[2]-[3], p. 71-11 (M.\nWolf ed. 2002) (traditional rule that estate must vest, if at\n\n471\n\n\x0call, within lives in being plus 21 years); cf. id., \xc2\xa7 71.03, at 7115 (modern statutory perpetuity term of 90 years, 5 years\nshorter than 95-year copyright terms).\nIn any event, the incentive-related numbers are far too\nsmall for Congress to have concluded rationally, even with\nrespect to new works, that the extension\xe2\x80\x99s economicincentive effect could justify the serious expression-related\nharms earlier described. See Part II-B, supra. And, of\ncourse, in respect to works already created \xe2\x80\x93 the source of\nmany of the harms previously described \xe2\x80\x93 the statute creates\nno economic incentive at all.\nSecond, the Court relies heavily for justification upon\ninternational uniformity of terms. Ante, at 196, 205-206.\nAlthough it can be helpful to look to international norms\nand legal experience in understanding American law, in this\ncase the justification based upon foreign rules is\nsurprisingly weak. Those who claim that significant\ncopyright-related benefits flow from greater international\nuniformity of terms point to the fact that the nations of the\nEuropean Union have adopted a system of copyright terms\nuniform among themselves. And the extension before this\nCourt implements a term of life plus 70 years that appears\nto conform with the European standard. But how does\n\xe2\x80\x9cuniformity\xe2\x80\x9d help to justify this statute?\nDespite appearances, the statute does not create a uniform\nAmerican-European term with respect to the lion\xe2\x80\x99s share of\nthe economically significant works that it affects \xe2\x80\x93 all works\nmade \xe2\x80\x9cfor hire\xe2\x80\x9d and all existing works created prior to\n1978. \xe2\x80\xa6 .\nWhat benefit, then, might this partial future uniformity\nachieve? The majority refers to \xe2\x80\x9cgreater incentive for\nAmerican and other authors to create and disseminate their\nwork in the United States,\xe2\x80\x9d and cites a law review article\nsuggesting a need to \xe2\x80\x9c\xe2\x80\x98avoid competitive disadvantages.\xe2\x80\x99\xe2\x80\x9d\nThe Solicitor General elaborates on this theme, postulating\n\n472\n\n\x0cthat because uncorrected disuniformity would permit\nEurope, not the United States, to hold out the prospect of\nprotection lasting for \xe2\x80\x9clife plus 70 years\xe2\x80\x9d (instead of \xe2\x80\x9clife\nplus 50 years\xe2\x80\x9d), a potential author might decide to publish\ninitially in Europe, delaying American publication. And the\nstatute, by creating a uniformly longer term, corrects for the\ndisincentive that this disuniformity might otherwise\nproduce.\nThat disincentive, however, could not possibly bring about\nserious harm of the sort that the Court, the Solicitor\nGeneral, or the law review author fears. \xe2\x80\xa6 . As we have\nseen, the present commercial value of any such difference\namounts at most to comparative pennies. And a\ncommercial decision that turned upon such a difference\nwould have had to have rested previously upon a knife edge\nso fine as to be invisible. A rational legislature could not\ngive major weight to an invisible, likely nonexistent\nincentive-related effect.\nBut if there is no incentive-related benefit, what is the\nbenefit of the future uniformity that the statute only\npartially achieves? Unlike the Copyright Act of 1976, this\nstatute does not constitute part of an American effort to\nconform to an important international treaty like the Berne\nConvention. \xe2\x80\xa6 .\nIn sum, the partial, future uniformity that the 1998 Act\npromises cannot reasonably be said to justify extension of\nthe copyright term for new works. And concerns with\nuniformity cannot possibly justify the extension of the new\nterm to older works, for the statute there creates no\nuniformity at all.\nThird, several publishers and filmmakers argue that the\nstatute provides incentives to those who act as publishers to\nrepublish and to redistribute older copyrighted works. This\nclaim cannot justify this statute, however, because the\nrationale is inconsistent with the basic purpose of the\n\n473\n\n\x0cCopyright Clause \xe2\x80\x93 as understood by the Framers and by\nthis Court. The Clause assumes an initial grant of\nmonopoly, designed primarily to encourage creation,\nfollowed by termination of the monopoly grant in order to\npromote dissemination of already-created works. It\nassumes that it is the disappearance of the monopoly grant,\nnot its perpetuation, that will, on balance, promote the\ndissemination of works already in existence. This view of\nthe Clause does not deny the empirical possibility that grant\nof a copyright monopoly to the heirs or successors of a\nlong-dead author could on occasion help publishers resurrect\nthe work, say, of a long-lost Shakespeare. But it does deny\nCongress the Copyright Clause power to base its actions\nprimarily upon that empirical possibility \xe2\x80\x93 lest copyright\ngrants become perpetual, lest on balance they restrict\ndissemination, lest too often they seek to bestow benefits\nthat are solely retroactive.\n[Justice Breyer reviews the history and text of the clause to\nbuttress this view of the Clause.]\n[This view] finds empirical support in sources that\nunderscore the wisdom of the Framers\xe2\x80\x99 judgment. See CRS\nReport 3 (\xe2\x80\x9c[N]ew, cheaper editions can be expected when\nworks come out of copyright\xe2\x80\x9d); see also Part II-B, supra.\nAnd it draws logical support from the endlessly selfperpetuating nature of the publishers\xe2\x80\x99 claim and the\ndifficulty of finding any kind of logical stopping place were\nthis Court to accept such a uniquely publisher-related\nrationale. (Would it justify continuing to extend copyrights\nindefinitely, say, for those granted to F. Scott Fitzgerald or\nhis lesser known contemporaries? Would it not, in\nprinciple, justify continued protection of the works of\nShakespeare, Melville, Mozart, or perhaps Salieri, Mozart\xe2\x80\x99s\ncurrently less popular contemporary? Could it justify yet\nfurther extension of the copyright on the song Happy\nBirthday to You (melody first published in 1893, song\ncopyrighted after litigation in 1935), still in effect and\n\n474\n\n\x0ccurrently owned by a subsidiary of AOL Time Warner? See\nProfitable \xe2\x80\x9cHappy Birthday,\xe2\x80\x9d Times of London, Aug. 5,\n2000, p. 6.)\nGiven this support, it is difficult to accept the conflicting\nrationale that the publishers advance, namely, that\nextension, rather than limitation, of the grant will, by\nrewarding publishers with a form of monopoly, promote,\nrather than retard, the dissemination of works already in\nexistence. Indeed, given these considerations, this rationale\nseems constitutionally perverse \xe2\x80\x93 unable, constitutionally\nspeaking, to justify the blanket extension here at issue.\nFourth, the statute\xe2\x80\x99s legislative history suggests another\npossible justification. That history refers frequently to the\nfinancial assistance the statute will bring the entertainment\nindustry, particularly through the promotion of exports. \xe2\x80\xa6\n. I can find nothing in the Copyright Clause that would\nauthorize Congress to enhance the copyright grant\xe2\x80\x99s\nmonopoly power, likely leading to higher prices both at\nhome and abroad, solely in order to produce higher foreign\nearnings. That objective is not a copyright objective. Nor,\nstanding alone, is it related to any other objective more\nclosely tied to the Clause itself. Neither can higher\ncorporate profits alone justify the grant\xe2\x80\x99s enhancement.\nThe Clause seeks public, not private, benefits.\nFinally, the Court mentions as possible justifications\n\xe2\x80\x9cdemographic, economic, and technological changes\xe2\x80\x9d \xe2\x80\x93 by\nwhich the Court apparently means the facts that today\npeople communicate with the help of modern technology,\nlive longer, and have children at a later age. The first fact\nseems to argue not for, but instead against, extension. See\nPart II-B, supra. The second fact seems already corrected\nfor by the 1976 Act\xe2\x80\x99s life-plus-50 term, which automatically\ngrows with lifespans. And the third fact \xe2\x80\x93 that adults are\nhaving children later in life \xe2\x80\x93 is a makeweight at best,\nproviding no explanation of why the 1976 Act\xe2\x80\x99s term of 50\nyears after an author\xe2\x80\x99s death \xe2\x80\x93 a longer term than was\n\n475\n\n\x0cavailable to authors themselves for most of our Nation\xe2\x80\x99s\nhistory \xe2\x80\x93 is an insufficient potential bequest. The weakness\nof these final rationales simply underscores the conclusion\nthat emerges from consideration of earlier attempts at\njustification: There is no legitimate, serious copyrightrelated justification for this statute.\nIII\nThe Court is concerned that our holding in this case not\ninhibit the broad decisionmaking leeway that the Copyright\nClause grants Congress. It is concerned about the\nimplications of today\xe2\x80\x99s decision for the Copyright Act of\n1976 \xe2\x80\x93 an Act that changed copyright\xe2\x80\x99s basic term from 56\nyears (assuming renewal) to life of the author plus 50 years.\nIt is concerned about having to determine just how many\nyears of copyright is too many \xe2\x80\x93 a determination that it\nfears would require it to find the \xe2\x80\x9cright\xe2\x80\x9d constitutional\nnumber, a task for which the Court is not well suited.\nI share the Court\xe2\x80\x99s initial concern, about intrusion upon the\ndecisionmaking authority of Congress. But I do not believe\nit intrudes upon that authority to find the statute\nunconstitutional on the basis of (1) a legal analysis of the\nCopyright Clause\xe2\x80\x99s objectives; (2) the total implausibility of\nany incentive effect; and (3) the statute\xe2\x80\x99s apparent failure to\nprovide significant international uniformity. Nor does it\nintrude upon congressional authority to consider rationality\nin light of the expressive values underlying the Copyright\nClause, related as it is to the First Amendment, and given\nthe constitutional importance of correctly drawing the\nrelevant Clause/Amendment boundary. We cannot avoid\nthe need to examine the statute carefully by saying that\n\xe2\x80\x9cCongress has not altered the traditional contours of\ncopyright protection,\xe2\x80\x9d for the sentence points to the\nquestion, rather than the answer. Nor should we avoid that\nexamination here. That degree of judicial vigilance \xe2\x80\x93 at the\nfar outer boundaries of the Clause \xe2\x80\x93 is warranted if we are\n\n476\n\n\x0cto avoid the monopolies and consequent restrictions of\nexpression that the Clause, read consistently with the First\nAmendment, seeks to preclude. And that vigilance is all the\nmore necessary in a new century that will see intellectual\nproperty rights and the forms of expression that underlie\nthem play an ever more important role in the Nation\xe2\x80\x99s\neconomy and the lives of its citizens.\nI do not share the Court\xe2\x80\x99s concern that my view of the\n1998 Act could automatically doom the 1976 Act. Unlike\nthe present statute, the 1976 Act thoroughly revised\ncopyright law and enabled the United States to join the\nBerne Convention \xe2\x80\x93 an international treaty that requires the\n1976 Act\xe2\x80\x99s basic life-plus-50 term as a condition for\nsubstantive protections from a copyright\xe2\x80\x99s very inception,\nBerne Conv. Art. 7(1). Consequently, the balance of\ncopyright-related harms and benefits there is far less one\nsided. The same is true of the 1909 and 1831 Acts, which,\nin any event, provided for maximum terms of 56 years or\n42 years while requiring renewal after 28 years, with most\ncopyrighted works falling into the public domain after that\n28-year period, well before the putative maximum terms\nhad elapsed. Regardless, the law provides means to protect\nthose who have reasonably relied upon prior copyright\nstatutes. And, in any event, we are not here considering,\nand we need not consider, the constitutionality of other\ncopyright statutes.\nNeither do I share the Court\xe2\x80\x99s aversion to line-drawing in\nthis case. Even if it is difficult to draw a single clear bright\nline, the Court could easily decide (as I would decide) that\nthis particular statute simply goes too far. And such\nexamples \xe2\x80\x93 of what goes too far \xe2\x80\x93 sometimes offer better\nconstitutional guidance than more absolute-sounding rules.\nIn any event, \xe2\x80\x9cthis Court sits\xe2\x80\x9d in part to decide when a\nstatute exceeds a constitutional boundary. In my view,\n\xe2\x80\x9c[t]ext, history, and precedent,\xe2\x80\x9d support both the need to\n\n477\n\n\x0cdraw lines in general and the need to draw the line here\nshort of this statute.\nFinally, the Court complains that I have not \xe2\x80\x9crestrained\xe2\x80\x9d\nmy argument or \xe2\x80\x9ctrain[ed my] fire, as petitioners do, on\nCongress\xe2\x80\x99 choice to place existing and future copyrights in\nparity.\xe2\x80\x9d The reason that I have not so limited my argument\nis my willingness to accept, for purposes of this opinion,\nthe Court\xe2\x80\x99s understanding that, for reasons of \xe2\x80\x9c[j]ustice,\npolicy, and equity\xe2\x80\x9d \xe2\x80\x93 as well as established historical\npractice \xe2\x80\x93 it is not \xe2\x80\x9ccategorically beyond Congress\xe2\x80\x99\nauthority\xe2\x80\x9d to \xe2\x80\x9cexten[d] the duration of existing copyrights\xe2\x80\x9d\nto achieve such parity. I have accepted this view, however,\nonly for argument\xe2\x80\x99s sake \xe2\x80\x93 putting to the side, for the\npresent, JUSTICE STEVENS\xe2\x80\x99 persuasive arguments to the\ncontrary. And I make this assumption only to emphasize\nthe lack of rational justification for the present statute. A\ndesire for \xe2\x80\x9cparity\xe2\x80\x9d between A (old copyrights) and B (new\ncopyrights) cannot justify extending A when there is no\nrational justification for extending B. At the very least (if I\nput aside my rationality characterization), to ask B to\nsupport A here is like asking Tom Thumb to support Paul\nBunyan\xe2\x80\x99s ox. Where the case for extending new copyrights\nis itself so weak, what \xe2\x80\x9cjustice,\xe2\x80\x9d what \xe2\x80\x9cpolicy,\xe2\x80\x9d what\n\xe2\x80\x9cequity\xe2\x80\x9d can warrant the tolls and barriers that extension of\nexisting copyrights imposes?\nIV\nThis statute will cause serious expression-related harm. It\nwill likely restrict traditional dissemination of copyrighted\nworks. It will likely inhibit new forms of dissemination\nthrough the use of new technology. It threatens to interfere\nwith efforts to preserve our Nation\xe2\x80\x99s historical and cultural\nheritage and efforts to use that heritage, say, to educate our\nNation\xe2\x80\x99s children. It is easy to understand how the statute\nmight benefit the private financial interests of corporations\nor heirs who own existing copyrights. But I cannot find any\n\n478\n\n\x0cconstitutionally legitimate, copyright-related way in which\nthe statute will benefit the public. Indeed, in respect to\nexisting works, the serious public harm and the virtually\nnonexistent public benefit could not be more clear.\nI have set forth the analysis upon which I rest these\njudgments. This analysis leads inexorably to the conclusion\nthat the statute cannot be understood rationally to advance\na constitutionally legitimate interest. The statute falls\noutside the scope of legislative power that the Copyright\nClause, read in light of the First Amendment, grants to\nCongress. I would hold the statute unconstitutional.\nI respectfully dissent.\nAPPENDIX TO OPINION OF BREYER, J.\nA\nThe text\xe2\x80\x99s estimates of the economic value of 1998 Act\ncopyrights relative to the economic value of a perpetual\ncopyright as well as the incremental value of a 20-year\nextension of a 75-year term rest upon the conservative\nfuture value and discount rate assumptions set forth in the\nbrief of economist amici. Brief for George A. Akerlof et al.\nas Amici Curiae 5-7. Under these assumptions, if an author\nexpects to live 30 years after writing a book, the copyright\nextension (by increasing the copyright term from \xe2\x80\x9clife of\nthe author plus 50 years\xe2\x80\x9d to \xe2\x80\x9clife of the author plus 70\nyears\xe2\x80\x9d) increases the author\xe2\x80\x99s expected income from that\nbook \xe2\x80\x93 i. e., the economic incentive to write \xe2\x80\x93 by no more\nthan about 0.33%.\nThe text assumes that the extension creates a term of 95\nyears (the term corresponding to works made for hire and\nfor all existing pre-1978 copyrights). Under the economists\xe2\x80\x99\nconservative assumptions, the value of a 95-year copyright\nis slightly more than 99.8% of the value of a perpetual\ncopyright. If a \xe2\x80\x9clife plus 70\xe2\x80\x9d term applies, and if an author\nlives 78 years after creation of a work (as with Irving Berlin\n\n479\n\n\x0cand Alexander\xe2\x80\x99s Ragtime Band), the same assumptions\nyield a figure of 99.996%.\nThe most unrealistically conservative aspect of these\nassumptions, i. e., the aspect most unrealistically favorable\nto the majority, is the assumption of a constant future\nincome stream. In fact, as noted in the text, uncontested\ndata indicate that no author could rationally expect that a\nstream of copyright royalties will be constant forever.\nIndeed, only about 2% of copyrights can be expected to\nretain commercial value at the end of 55 to 75 years. Thus,\nin the overwhelming majority of cases, the ultimate value of\nthe extension to copyright holders will be zero, and the\neconomic difference between the extended copyright and a\nperpetual copyright will be zero.\nNonetheless, there remains a small 2% or so chance that a\ngiven work will remain profitable. The CRS Report\nsuggests a way to take account of both that likelihood and\nthe related \xe2\x80\x9cdecay\xe2\x80\x9d in a work\xe2\x80\x99s commercial viability: Find\nthe annual decay rate that corresponds to the percentage of\nworks that become commercially unavailable in any given\nyear, and then discount the revenue for each successive\nyear accordingly. See CRS Report 7. Following this\napproach, if one estimates, conservatively, that a full 2% of\nall works survives at the end of 75 years, the corresponding\nannual decay rate is about 5%. I instead (and again\nconservatively) use the 3.8% decay rate the CRS has applied\nin the case of books whose copyrights were renewed\nbetween 1950 and 1970. Using this 3.8% decay rate and the\neconomist amici\xe2\x80\x99s proposed 7% discount rate, the value of a\n95-year copyright is more realistically estimated not as\n99.8%, but as 99.996% of the value of a perpetual\ncopyright. The comparable \xe2\x80\x9cIrving Berlin\xe2\x80\x9d figure is\n99.99999%. (With a 5% decay rate, the figures are 99.999%\nand 99.999998%, respectively.) Even these figures seem\nlikely to be underestimates in the sense that they assume\n\n480\n\n\x0cthat, if a work is still commercially available, it earns as\nmuch as it did in a year shortly after its creation.\nB\nConclusions regarding the economic significance of \xe2\x80\x9cworks\nmade for hire\xe2\x80\x9d are judgmental because statistical\ninformation about the ratio of \xe2\x80\x9cfor hire\xe2\x80\x9d works to all works\nis scarce. But we know that, as of 1955, copyrights on \xe2\x80\x9cfor\nhire\xe2\x80\x9d works accounted for 40% of newly registered\ncopyrights. We also know that copyrights on works\ntypically made for hire \xe2\x80\x93 feature-length movies \xe2\x80\x93 were\nrenewed, and since the 1930\xe2\x80\x99s apparently have remained\ncommercially viable, at a higher than average rate. Further,\nwe know that \xe2\x80\x9charmonization\xe2\x80\x9d looks to benefit United\nStates exports and that films and sound recordings account\nfor the dominant share of export revenues earned by new\ncopyrighted works of potential lasting commercial value (i.\ne., works other than computer software). It also appears\ngenerally accepted that, in these categories, \xe2\x80\x9cfor hire\xe2\x80\x9d\nworks predominate. Taken together, these circumstances\nsupport the conclusion in the text that the extension fails to\ncreate uniformity where it would appear to be most\nimportant \xe2\x80\x93 pre-1978 copyrighted works nearing the end of\ntheir pre-extension terms, and works made for hire.\n3.4.4. Secondary Liability\nSony Corp. of America v. Universal City Studios, 464\nU.S. 417 (1983)\nDean C. Dunlavey, Los Angeles, Cal., for petitioners.\nStephen A. Kroft, Beverly Hills, Cal., for respondents.\nJUSTICE STEVENS delivered the opinion of the Court.\nPetitioners manufacture and sell home video tape\nrecorders. Respondents own the copyrights on some of the\ntelevision programs that are broadcast on the public\nairwaves. Some members of the general public use video\n\n481\n\n\x0ctape recorders sold by petitioners to record some of these\nbroadcasts, as well as a large number of other broadcasts.\nThe question presented is whether the sale of petitioners\xe2\x80\x99\ncopying equipment to the general public violates any of the\nrights conferred upon respondents by the Copyright Act.\nRespondents commenced this copyright infringement\naction against petitioners in the United States District\nCourt for the Central District of California in 1976.\nRespondents alleged that some individuals had used\nBetamax video tape recorders (VTR\xe2\x80\x99s) to record some of\nrespondents\xe2\x80\x99 copyrighted works which had been exhibited\non commercially sponsored television and contended that\nthese individuals had thereby infringed respondents\xe2\x80\x99\ncopyrights. Respondents further maintained that petitioners\nwere liable for the copyright infringement allegedly\ncommitted by Betamax consumers because of petitioners\xe2\x80\x99\nmarketing of the Betamax VTR\xe2\x80\x99s. Respondents sought no\nrelief against any Betamax consumer. Instead, they sought\nmoney damages and an equitable accounting of profits\nfrom petitioners, as well as an injunction against the\nmanufacture and marketing of Betamax VTR\xe2\x80\x99s.\nAfter a lengthy trial, the District Court denied respondents\nall the relief they sought and entered judgment for\npetitioners. 480 F.Supp. 429 (1979). The United States\nCourt of Appeals for the Ninth Circuit reversed the\nDistrict Court\xe2\x80\x99s judgment on respondent\xe2\x80\x99s copyright claim,\nholding petitioners liable for contributory infringement and\nordering the District Court to fashion appropriate relief.\n659 F.2d 963 (1981). We granted certiorari; since we had\nnot completed our study of the case last Term, we ordered\nreargument. We now reverse.\nAn explanation of our rejection of respondents\xe2\x80\x99\nunprecedented attempt to impose copyright liability upon\nthe distributors of copying equipment requires a quite\ndetailed recitation of the findings of the District Court. In\nsummary, those findings reveal that the average member of\n\n482\n\n\x0cthe public uses a VTR principally to record a program he\ncannot view as it is being televised and then to watch it\nonce at a later time. This practice, known as \xe2\x80\x9ctimeshifting,\xe2\x80\x9d enlarges the television viewing audience. For that\nreason, a significant amount of television programming\nmay be used in this manner without objection from the\nowners of the copyrights on the programs. For the same\nreason, even the two respondents in this case, who do\nassert objections to time-shifting in this litigation, were\nunable to prove that the practice has impaired the\ncommercial value of their copyrights or has created any\nlikelihood of future harm. Given these findings, there is no\nbasis in the Copyright Act upon which respondents can\nhold petitioners liable for distributing VTR\xe2\x80\x99s to the general\npublic. The Court of Appeals\xe2\x80\x99 holding that respondents are\nentitled to enjoin the distribution of VTR\xe2\x80\x99s, to collect\nroyalties on the sale of such equipment, or to obtain other\nrelief, if affirmed, would enlarge the scope of respondents\xe2\x80\x99\nstatutory monopolies to encompass control over an article\nof commerce that is not the subject of copyright\nprotection. Such an expansion of the copyright privilege is\nbeyond the limits of the grants authorized by Congress.\nI\nThe two respondents in this action, Universal Studios, Inc.\nand Walt Disney Productions, produce and hold the\ncopyrights on a substantial number of motion pictures and\nother audiovisual works. In the current marketplace, they\ncan exploit their rights in these works in a number of ways:\nby authorizing theatrical exhibitions, by licensing limited\nshowings on cable and network television, by selling\nsyndication rights for repeated airings on local television\nstations, and by marketing programs on prerecorded\nvideotapes or videodiscs. Some works are suitable for\nexploitation through all of these avenues, while the market\nfor other works is more limited.\n\n483\n\n\x0cPetitioner Sony manufactures millions of Betamax video\ntape recorders and markets these devices through\nnumerous retail establishments, some of which are also\npetitioners in this action. Sony\xe2\x80\x99s Betamax VTR is a\nmechanism consisting of three basic components: (1) a\ntuner, which receives electromagnetic signals transmitted\nover the television band of the public airwaves and\nseparates them into audio and visual signals; (2) a recorder,\nwhich records such signals on a magnetic tape; and (3) an\nadapter, which converts the audio and visual signals on the\ntape into a composite signal that can be received by a\ntelevision set.\nSeveral capabilities of the machine are noteworthy. The\nseparate tuner in the Betamax enables it to record a\nbroadcast off one station while the television set is tuned to\nanother channel, permitting the viewer, for example, to\nwatch two simultaneous news broadcasts by watching one\n\xe2\x80\x9clive\xe2\x80\x9d and recording the other for later viewing. Tapes may\nbe reused, and programs that have been recorded may be\nerased either before or after viewing. A timer in the\nBetamax can be used to activate and deactivate the\nequipment at predetermined times, enabling an intended\nviewer to record programs that are transmitted when he or\nshe is not at home. Thus a person may watch a program at\nhome in the evening even though it was broadcast while\nthe viewer was at work during the afternoon. The Betamax\nis also equipped with a pause button and a fast-forward\ncontrol. The pause button, when depressed, deactivates the\nrecorder until it is released, thus enabling a viewer to omit a\ncommercial advertisement from the recording, provided, of\ncourse, that the viewer is present when the program is\nrecorded. The fast forward control enables the viewer of a\npreviously recorded program to run the tape rapidly when a\nsegment he or she does not desire to see is being played\nback on the television screen.\n\n484\n\n\x0cThe respondents and Sony both conducted surveys of the\nway the Betamax machine was used by several hundred\nowners during a sample period in 1978. Although there\nwere some differences in the surveys, they both showed\nthat the primary use of the machine for most owners was\n\xe2\x80\x9ctime-shifting,\xe2\x80\x9d \xe2\x80\x93 the practice of recording a program to\nview it once at a later time, and thereafter erasing it. Timeshifting enables viewers to see programs they otherwise\nwould miss because they are not at home, are occupied\nwith other tasks, or are viewing a program on another\nstation at the time of a broadcast that they desire to watch.\nBoth surveys also showed, however, that a substantial\nnumber of interviewees had accumulated libraries of tapes.1\nSony\xe2\x80\x99s survey indicated that over 80% of the interviewees\nwatched at least as much regular television as they had\nbefore owning a Betamax.2 Respondents offered no\n\nAs evidence of how a VTR may be used, respondents offered the testimony of\nWilliam Griffiths. Griffiths, although named as an individual defendant, was a\nclient of plaintiffs\xe2\x80\x99 law firm. The District Court summarized his testimony as\nfollows:\nHe owns approximately 100 tapes. When Griffiths bought\nhis Betamax, he intended not only to time-shift (record,\nplay-back and then erase) but also to build a library of\ncassettes. Maintaining a library, however, proved too\nexpensive, and he is now erasing some earlier tapes and\nreusing them. Griffiths copied about 20 minutes of a\nUniversal motion picture called \xe2\x80\x98Never Give An Inch,\xe2\x80\x99 and\ntwo episodes from Universal television series entitled \xe2\x80\x98Baa\nBaa Black Sheep\xe2\x80\x99 and \xe2\x80\x98Holmes and Yo Yo.\xe2\x80\x99 He would\nhave erased each of these but for the request of plaintiffs\xe2\x80\x99\ncounsel that it be kept. Griffiths also testified that he had\ncopied but already erased Universal films called \xe2\x80\x98Alpha\nCaper\xe2\x80\x99 (erased before anyone saw it) and \xe2\x80\x98Amelia Earhart.\xe2\x80\x99\nAt the time of his deposition Griffiths did not intend to\nkeep any Universal film in his library. Griffiths has also\nrecorded documentaries, news broadcasts, sporting events\nand political programs such as a rerun of the\nNixon/Kennedy debate.\n1\n\n480 F.Supp., at 436-437. Four other witnesses testified to having engaged in\nsimilar activity.\n2\n\nThe District Court summarized some of the findings in these surveys as follows:\n\n485\n\n\x0cevidence of decreased television viewing by Betamax\nowners.3\nSony introduced considerable evidence describing\ntelevision programs that could be copied without objection\nfrom any copyright holder, with special emphasis on sports,\nreligious, and educational programming. For example, their\nsurvey indicated that 7.3% of all Betamax use is to record\nsports events, and representatives of professional baseball,\nfootball, basketball, and hockey testified that they had no\nobjection to the recording of their televised events for\nhome use.\nRespondents offered opinion evidence concerning the\nfuture impact of the unrestricted sale of VTR\xe2\x80\x99s on the\ncommercial value of their copyrights. The District Court\nfound, however, that they had failed to prove any\nlikelihood of future harm from the use of VTR\xe2\x80\x99s for timeshifting. Id., at 469.\n\xe2\x80\xa6.\nIII\nThe Copyright Act does not expressly render anyone liable\nfor infringement committed by another. In contrast, the\nAccording to plaintiffs\xe2\x80\x99 survey, 75.4% of the VTR owners\nuse their machines to record for time-shifting purposes\nhalf or most of the time. Defendants\xe2\x80\x99 survey showed that\n96% of the Betamax owners had used the machine to\nrecord programs they otherwise would have missed. When\nplaintiffs asked interviewees how many cassettes were in\ntheir library, 55.8% said there were 10 or fewer. In\ndefendants\xe2\x80\x99 survey, of the total programs viewed by\ninterviewees in the past month, 70.4% had been viewed\nonly that one time and for 57.9%, there were no plans for\nfurther viewing.\n\n480 F.Supp., at 438.\n\xe2\x80\x9c81.9% of the defendants\xe2\x80\x99 interviewees watched the same amount or more of\nregular television as they did before owning a Betamax. 83.2% reported their\nfrequency of movie going was unaffected by Betamax.\xe2\x80\x9d 480 F.Supp., at 439.\n3\n\n486\n\n\x0cPatent Act expressly brands anyone who \xe2\x80\x9cactively induces\ninfringement of a patent\xe2\x80\x9d as an infringer, 35 U.S.C. \xc2\xa7\n271(b), and further imposes liability on certain individuals\nlabeled \xe2\x80\x9ccontributory\xe2\x80\x9d infringers, id., \xc2\xa7 271(c). The absence\nof such express language in the copyright statute does not\npreclude the imposition of liability for copyright\ninfringements on certain parties who have not themselves\nengaged in the infringing activity. For vicarious liability is\nimposed in virtually all areas of the law, and the concept of\ncontributory infringement is merely a species of the\nbroader problem of identifying the circumstances in which\nit is just to hold one individual accountable for the actions\nof another.\n\xe2\x80\xa6.\nWhen a charge of contributory infringement is predicated\nentirely on the sale of an article of commerce that is used\nby the purchaser to infringe a patent, the public interest in\naccess to that article of commerce is necessarily implicated.\nA finding of contributory infringement does not, of course,\nremove the article from the market altogether; it does,\nhowever, give the patentee effective control over the sale of\nthat item. Indeed, a finding of contributory infringement is\nnormally the functional equivalent of holding that the\ndisputed article is within the monopoly granted to the\npatentee.4\nFor that reason, in contributory infringement cases arising\nunder the patent laws the Court has always recognized the\n\nIt seems extraordinary to suggest that the Copyright Act confers upon all\ncopyright owners collectively, much less the two respondents in this case, the\nexclusive right to distribute VTR\xe2\x80\x99s simply because they may be used to infringe\ncopyrights. That, however, is the logical implication of their claim. The request for\nan injunction below indicates that respondents seek, in effect, to declare VTR\xe2\x80\x99s\ncontraband. Their suggestion in this Court that a continuing royalty pursuant to a\njudicially created compulsory license would be an acceptable remedy merely\nindicates that respondents, for their part, would be willing to license their claimed\nmonopoly interest in VTR\xe2\x80\x99s to petitioners in return for a royalty.\n4\n\n487\n\n\x0ccritical importance of not allowing the patentee to extend\nhis monopoly beyond the limits of his specific grant. These\ncases deny the patentee any right to control the distribution\nof unpatented articles unless they are \xe2\x80\x9cunsuited for any\ncommercial noninfringing use.\xe2\x80\x9d Dawson Chemical Co. v. Rohm\n& Hass Co., 448 U.S. 176, 198 (1980). Unless a commodity\n\xe2\x80\x9chas no use except through practice of the patented\nmethod,\xe2\x80\x9d ibid, the patentee has no right to claim that its\ndistribution constitutes contributory infringement. \xe2\x80\x9cTo\nform the basis for contributory infringement the item must\nalmost be uniquely suited as a component of the patented\ninvention.\xe2\x80\x9d P. Rosenberg, Patent Law Fundamentals \xc2\xa7\n17.02[2] (1982). \xe2\x80\x9c[A] sale of an article which though\nadapted to an infringing use is also adapted to other and\nlawful uses, is not enough to make the seller a contributory\ninfringer. Such a rule would block the wheels of\ncommerce.\xe2\x80\x9d Henry v. A.B. Dick Co., 224 U.S. 1, 48 (1912).\nWe recognize there are substantial differences between the\npatent and copyright laws. But in both areas the\ncontributory infringement doctrine is grounded on the\nrecognition that adequate protection of a monopoly may\nrequire the courts to look beyond actual duplication of a\ndevice or publication to the products or activities that make\nsuch duplication possible. The staple article of commerce\ndoctrine must strike a balance between a copyright holder\xe2\x80\x99s\nlegitimate demand for effective \xe2\x80\x93 not merely symbolic \xe2\x80\x93\nprotection of the statutory monopoly, and the rights of\nothers freely to engage in substantially unrelated areas of\ncommerce. Accordingly, the sale of copying equipment, like\nthe sale of other articles of commerce, does not constitute\ncontributory infringement if the product is widely used for\nlegitimate, unobjectionable purposes. Indeed, it need\nmerely be capable of substantial noninfringing uses.\nIV\n\n488\n\n\x0cThe question is thus whether the Betamax is capable of\ncommercially significant noninfringing uses. In order to\nresolve that question, we need not explore all the different\npotential uses of the machine and determine whether or\nnot they would constitute infringement. Rather, we need\nonly consider whether on the basis of the facts as found by\nthe district court a significant number of them would be\nnon-infringing. Moreover, in order to resolve this case we\nneed not give precise content to the question of how much\nuse is commercially significant. For one potential use of the\nBetamax plainly satisfies this standard, however it is\nunderstood: private, noncommercial time-shifting in the\nhome. It does so both (A) because respondents have no\nright to prevent other copyright holders from authorizing it\nfor their programs, and (B) because the District Court\xe2\x80\x99s\nfactual findings reveal that even the unauthorized home\ntime-shifting of respondents\xe2\x80\x99 programs is legitimate fair\nuse.\nA. Authorized Time Shifting\nEach of the respondents owns a large inventory of valuable\ncopyrights, but in the total spectrum of television\nprogramming their combined market share is small. The\nexact percentage is not specified, but it is well below 10%.5\nIf they were to prevail, the outcome of this litigation would\nhave a significant impact on both the producers and the\nviewers of the remaining 90% of the programming in the\nNation. No doubt, many other producers share\nrespondents\xe2\x80\x99 concern about the possible consequences of\nunrestricted copying. Nevertheless the findings of the\nDistrict Court make it clear that time-shifting may enlarge\nthe total viewing audience and that many producers are\nThe record suggests that Disney\xe2\x80\x99s programs at the time of trial consisted of\napproximately one hour a week of network television and one syndicated series.\nUniversal\xe2\x80\x99s percentage in the Los Angeles market on commercial television\nstations was under 5%. See Tr. 532-533, 549-550.\n5\n\n489\n\n\x0cwilling to allow private time-shifting to continue, at least\nfor an experimental time period.\nThe District Court found:\nEven if it were deemed that home-use\nrecording of copyrighted material\nconstituted infringement, the Betamax\ncould still legally be used to record\nnoncopyrighted material or material\nwhose owners consented to the\ncopying. An injunction would deprive\nthe public of the ability to use the\nBetamax for this noninfringing offthe-air recording. * * * Defendants\nintroduced considerable testimony at\ntrial about the potential for such\ncopying\nof\nsports,\nreligious,\neducational and other programming.\nThis included testimony from\nrepresentatives of the Offices of the\nCommissioners of the National\nFootball, Basketball, Baseball and\nHockey Leagues and Associations, the\nExecutive Director of National\nReligious Broadcasters and various\neducational communications agencies.\nPlaintiffs attack the weight of the\ntestimony offered and also contend\nthat an injunction is warranted because\ninfringing uses outweigh noninfringing\nuses. Whatever the future percentage\nof legal versus illegal home-use\nrecording might be, an injunction\nwhich seeks to deprive the public of\nthe very tool or article of commerce\ncapable of some noninfringing use\nwould be an extremely harsh remedy,\nas well as one unprecedented in\ncopyright law.\n\n490\n\n\x0c480 F.Supp., at 468.\nAlthough the District Court made these statements in the\ncontext of considering the propriety of injunctive relief, the\nstatements constitute a finding that the evidence\nconcerning \xe2\x80\x9csports, religious, educational, and other\nprogramming\xe2\x80\x9d was sufficient to establish a significant\nquantity of broadcasting whose copying is now authorized,\nand a significant potential for future authorized copying.\nThat finding is amply supported by the record. In addition\nto the religious and sports officials identified explicitly by\nthe District Court, two items in the record deserve specific\nmention.\nFirst is the testimony of John Kenaston, the station\nmanager of Channel 58, an educational station in Los\nAngeles affiliated with the Public Broadcasting Service. He\nexplained and authenticated the station\xe2\x80\x99s published guide to\nits programs. For each program, the guide tells whether\nunlimited home taping is authorized, home taping is\nauthorized subject to certain restrictions (such as erasure\nwithin seven days), or home taping is not authorized at all.\nThe Spring 1978 edition of the guide described 107\nprograms. Sixty-two of those programs or 58% authorize\nsome home taping. Twenty-one of them or almost 20%\nauthorize unrestricted home taping.\nSecond is the testimony of Fred Rogers, president of the\ncorporation that produces and owns the copyright on Mr.\nRogers\xe2\x80\x99 Neighborhood. The program is carried by more public\ntelevision stations than any other program. Its audience\nnumbers over 3,000,000 families a day. He testified that he\nhad absolutely no objection to home taping for\nnoncommercial use and expressed the opinion that it is a\n\n491\n\n\x0creal service to families to be able to record children\xe2\x80\x99s\nprograms and to show them at appropriate times.6\nIf there are millions of owners of VTR\xe2\x80\x99s who make copies\nof televised sports events, religious broadcasts, and\neducational programs such as Mister Rogers\xe2\x80\x99 Neighborhood,\nand if the proprietors of those programs welcome the\npractice, the business of supplying the equipment that\nmakes such copying feasible should not be stifled simply\nbecause the equipment is used by some individuals to make\nunauthorized reproductions of respondents\xe2\x80\x99 works. The\nrespondents do not represent a class composed of all\ncopyright holders. Yet a finding of contributory\ninfringement would inevitably frustrate the interests of\nbroadcasters in reaching the portion of their audience that\nis available only through time-shifting.\nOf course, the fact that other copyright holders may\nwelcome the practice of time-shifting does not mean that\nrespondents should be deemed to have granted a license to\ncopy their programs. Third party conduct would be wholly\nirrelevant in an action for direct infringement of\nrespondents\xe2\x80\x99 copyrights. But in an action for contributory\ninfringement against the seller of copying equipment, the\ncopyright holder may not prevail unless the relief that he\nseeks affects only his programs, or unless he speaks for\nvirtually all copyright holders with an interest in the\n\n\xe2\x80\x9cSome public stations, as well as commercial stations, program the\n\xe2\x80\x98Neighborhood\xe2\x80\x99 at hours when some children cannot use it. I think that it\xe2\x80\x99s a real\nservice to families to be able to record such programs and show them at\nappropriate times. I have always felt that with the advent of all of this new\ntechnology that allows people to tape the \xe2\x80\x98Neighborhood\xe2\x80\x99 off-the-air, and I\xe2\x80\x99m\nspeaking for the \xe2\x80\x98Neighborhood\xe2\x80\x99 because that\xe2\x80\x99s what I produce, that they then\nbecome much more active in the programming of their family\xe2\x80\x99s television life.\nVery frankly, I am opposed to people being programmed by others. My whole\napproach in broadcasting has always been \xe2\x80\x98You are an important person just the\nway you are. You can make healthy decisions.\xe2\x80\x99 Maybe I\xe2\x80\x99m going on too long, but I\njust feel that anything that allows a person to be more active in the control of his\nor her life, in a healthy way, is important.\xe2\x80\x9d T.R. 2920-2921. See also Def. Exh. PI,\np. 85.\n6\n\n492\n\n\x0coutcome. In this case, the record makes it perfectly clear\nthat there are many important producers of national and\nlocal television programs who find nothing objectionable\nabout the enlargement in the size of the television audience\nthat results from the practice of time-shifting for private\nhome use. The seller of the equipment that expands those\nproducers\xe2\x80\x99 audiences cannot be a contributory infringer if,\nas is true in this case, it has had no direct involvement with\nany infringing activity.\nB. Unauthorized Time Shifting\nEven unauthorized uses of a copyrighted work are not\nnecessarily infringing. An unlicensed use of the copyright is\nnot an infringement unless it conflicts with one of the\nspecific exclusive rights conferred by the copyright statute.\nTwentieth Century Music Corp. v. Aiken, 422 U.S. 151, 154-155,\n95 S.Ct. 2040, 2043, 45 L.Ed.2d 84. Moreover, the\ndefinition of exclusive rights in \xc2\xa7 106 of the present Act is\nprefaced by the words \xe2\x80\x9csubject to sections 107 through\n118.\xe2\x80\x9d Those sections describe a variety of uses of\ncopyrighted material that \xe2\x80\x9care not infringements of\ncopyright notwithstanding the provisions of \xc2\xa7 106.\xe2\x80\x9d The\nmost pertinent in this case is \xc2\xa7 107, the legislative\nendorsement of the doctrine of \xe2\x80\x9cfair use.\xe2\x80\x9d\nThat section identifies various factors7 that enable a Court\nto apply an \xe2\x80\x9cequitable rule of reason\xe2\x80\x9d analysis to particular\n\n7\n\nSection 107 provides:\n\n493\n\n\x0cclaims of infringement. Although not conclusive, the first\nfactor requires that \xe2\x80\x9cthe commercial or nonprofit character\nof an activity\xe2\x80\x9d be weighed in any fair use decision. If the\nBetamax were used to make copies for a commercial or\nprofit-making purpose, such use would presumptively be\nunfair. The contrary presumption is appropriate here,\nhowever, because the District Court\xe2\x80\x99s findings plainly\nestablish that time-shifting for private home use must be\ncharacterized as a noncommercial, nonprofit activity.\nMoreover, when one considers the nature of a televised\ncopyrighted audiovisual work, see 17 U.S.C. \xc2\xa7 107(2), and\nthat timeshifting merely enables a viewer to see such a work\nwhich he had been invited to witness in its entirety free of\ncharge, the fact that the entire work is reproduced, see id.,\nat \xc2\xa7 107(3), does not have its ordinary effect of militating\nagainst a finding of fair use.\nThis is not, however, the end of the inquiry because\nCongress has also directed us to consider \xe2\x80\x9cthe effect of the\nuse upon the potential market for or value of the\ncopyrighted work.\xe2\x80\x9d Id., at \xc2\xa7 107(4). The purpose of\ncopyright is to create incentives for creative effort. Even\ncopying for noncommercial purposes may impair the\ncopyright holder\xe2\x80\x99s ability to obtain the rewards that\nCongress intended him to have. But a use that has no\nNotwithstanding the provisions of section 106, the fair\nuse of a copyrighted work, including such use by\nreproduction in copies or phonorecords or by any other\nmeans specified by that section, for purposes such as\ncriticism, comment, news reporting, teaching (including\nmultiple copies for classroom use), scholarship, or\nresearch, is not an infringement of copyright. In\ndetermining whether the use made of a work in any\nparticular case is a fair use the factors to be considered\nshall include \xe2\x80\x93\n\n(1) the purpose and character of the use, including whether such use is of a\ncommercial nature or is for nonprofit educational purposes; (2) the nature of the\ncopyrighted work; (3) the amount and substantiality of the portion used in relation\nto the copyrighted work as a whole; and (4) the effect of the use upon the\npotential market for or value of the copyrighted work.\xe2\x80\x9d 17 U.S.C. \xc2\xa7 107.\n\n494\n\n\x0cdemonstrable effect upon the potential market for, or the\nvalue of, the copyrighted work need not be prohibited in\norder to protect the author\xe2\x80\x99s incentive to create. The\nprohibition of such noncommercial uses would merely\ninhibit access to ideas without any countervailing benefit.\nThus, although every commercial use of copyrighted\nmaterial is presumptively an unfair exploitation of the\nmonopoly privilege that belongs to the owner of the\ncopyright, noncommercial uses are a different matter. A\nchallenge to a noncommercial use of a copyrighted work\nrequires proof either that the particular use is harmful, or\nthat if it should become widespread, it would adversely\naffect the potential market for the copyrighted work. Actual\npresent harm need not be shown; such a requirement\nwould leave the copyright holder with no defense against\npredictable damage. Nor is it necessary to show with\ncertainty that future harm will result. What is necessary is a\nshowing by a preponderance of the evidence that some\nmeaningful likelihood of future harm exists. If the intended\nuse is for commercial gain, that likelihood may be\npresumed. But if it is for a noncommercial purpose, the\nlikelihood must be demonstrated.\nIn this case, respondents failed to carry their burden with\nregard to home time-shifting. The District Court described\nrespondents\xe2\x80\x99 evidence as follows:\nPlaintiffs\xe2\x80\x99 experts admitted at several\npoints in the trial that the time-shifting\nwithout librarying would result in \xe2\x80\x98not\na great deal of harm.\xe2\x80\x99 Plaintiffs\xe2\x80\x99\ngreatest concern about time-shifting is\nwith \xe2\x80\x98a point of important philosophy\nthat transcends even commercial\njudgment.\xe2\x80\x99 They fear that with any\nBetamax usage, \xe2\x80\x98invisible boundaries\xe2\x80\x99\nare passed: \xe2\x80\x98the copyright owner has\nlost control over his program.\xe2\x80\x99\n\n495\n\n\x0c480 F.Supp., at 467.\nLater in its opinion, the District Court observed:\nMost of plaintiffs\xe2\x80\x99 predictions of harm\nhinge on speculation about audience\nviewing patterns and ratings, a\nmeasurement system which Sidney\nSheinberg, MCA\xe2\x80\x99s president, calls a\n\xe2\x80\x98black art\xe2\x80\x99 because of the significant\nlevel of imprecision involved in the\ncalculations.\nId., at 469.\nThere was no need for the District Court to say much\nabout past harm. \xe2\x80\x9cPlaintiffs have admitted that no actual\nharm to their copyrights has occurred to date.\xe2\x80\x9d Id., at 451.\nOn the question of potential future harm from timeshifting, the District Court offered a more detailed analysis\nof the evidence. It rejected respondents\xe2\x80\x99 \xe2\x80\x9cfear that persons\n\xe2\x80\x98watching\xe2\x80\x99 the original telecast of a program will not be\nmeasured in the live audience and the ratings and revenues\nwill decrease,\xe2\x80\x9d by observing that current measurement\ntechnology allows the Betamax audience to be reflected. Id.,\nat 466. It rejected respondents\xe2\x80\x99 prediction \xe2\x80\x9cthat live\ntelevision or movie audiences will decrease as more people\nwatch Betamax tapes as an alternative,\xe2\x80\x9d with the\nobservation that \xe2\x80\x9c[t]here is no factual basis for [the\nunderlying] assumption.\xe2\x80\x9d Ibid. It rejected respondents\xe2\x80\x99 \xe2\x80\x9cfear\nthat time-shifting will reduce audiences for telecast reruns,\xe2\x80\x9d\nand concluded instead that \xe2\x80\x9cgiven current market practices,\nthis should aid plaintiffs rather than harm them.\xe2\x80\x9d Ibid. And\nit declared that respondents\xe2\x80\x99 suggestion \xe2\x80\x9cthat theater or\nfilm rental exhibition of a program will suffer because of\ntime-shift recording of that program\xe2\x80\x9d \xe2\x80\x9clacks merit.\xe2\x80\x9d 480\nF.Supp., at 467.\n\n496\n\n\x0cAfter completing that review, the District Court restated its\noverall conclusion several times, in several different ways.\n\xe2\x80\x9cHarm from time-shifting is speculative and, at best,\nminimal.\xe2\x80\x9d Ibid. \xe2\x80\x9cThe audience benefits from the timeshifting capability have already been discussed. It is not\nimplausible that benefits could also accrue to plaintiffs,\nbroadcasters, and advertisers, as the Betamax makes it\npossible for more persons to view their broadcasts.\xe2\x80\x9d Ibid.\n\xe2\x80\x9cNo likelihood of harm was shown at trial, and plaintiffs\nadmitted that there had been no actual harm to date.\xe2\x80\x9d Id., at\n468-469. \xe2\x80\x9cTestimony at trial suggested that Betamax may\nrequire adjustments in marketing strategy, but it did not\nestablish even a likelihood of harm.\xe2\x80\x9d Id., at 469. \xe2\x80\x9cTelevision\nproduction by plaintiffs today is more profitable than it has\never been, and, in five weeks of trial, there was no concrete\nevidence to suggest that the Betamax will change the\nstudios\xe2\x80\x99 financial picture.\xe2\x80\x9d Ibid.\nThe District Court\xe2\x80\x99s conclusions are buttressed by the fact\nthat to the extent time-shifting expands public access to\nfreely broadcast television programs, it yields societal\nbenefits. Earlier this year, in Community Television of Southern\nCalifornia v. Gottfried, \xe2\x80\x94 U.S. \xe2\x80\x94-, \xe2\x80\x94- - \xe2\x80\x94-, n. 12, 103 S.Ct.\n885, 891-892, 74 L.Ed.2d 705 (1983), we acknowledged the\npublic interest in making television broadcasting more\navailable. Concededly, that interest is not unlimited. But it\nsupports an interpretation of the concept of \xe2\x80\x9cfair use\xe2\x80\x9d that\nrequires the copyright holder to demonstrate some\nlikelihood of harm before he may condemn a private act of\ntime-shifting as a violation of federal law.\nWhen these factors are all weighed in the \xe2\x80\x9cequitable rule of\nreason\xe2\x80\x9d balance, we must conclude that this record amply\nsupports the District Court\xe2\x80\x99s conclusion that home timeshifting is fair use. In light of the findings of the District\nCourt regarding the state of the empirical data, it is clear\nthat the Court of Appeals erred in holding that the statute\nas presently written bars such conduct.\n\n497\n\n\x0cIn summary, the record and findings of the District Court\nlead us to two conclusions. First, Sony demonstrated a\nsignificant likelihood that substantial numbers of copyright\nholders who license their works for broadcast on free\ntelevision would not object to having their broadcasts timeshifted by private viewers. And second, respondents failed\nto demonstrate that time-shifting would cause any\nlikelihood of nonminimal harm to the potential market for,\nor the value of, their copyrighted works. The Betamax is,\ntherefore, capable of substantial noninfringing uses. Sony\xe2\x80\x99s\nsale of such equipment to the general public does not\nconstitute contributory infringement of respondent\xe2\x80\x99s\ncopyrights.\nV\n\xe2\x80\x9cThe direction of Art. I is that Congress shall have the power\nto promote the progress of science and the useful arts.\nWhen, as here, the Constitution is permissive, the sign of\nhow far Congress has chosen to go can come only from\nCongress.\xe2\x80\x9d Deepsouth Packing Co. v. Laitram Corp., 406 U.S.\n518, 530, 92 S.Ct. 1700, 1707, 32 L.Ed.2d 273 (1972).\nOne may search the Copyright Act in vain for any sign that\nthe elected representatives of the millions of people who\nwatch television every day have made it unlawful to copy a\nprogram for later viewing at home, or have enacted a flat\nprohibition against the sale of machines that make such\ncopying possible.\nIt may well be that Congress will take a fresh look at this\nnew technology, just as it so often has examined other\ninnovations in the past. But it is not our job to apply laws\nthat have not yet been written. Applying the copyright\nstatute, as it now reads, to the facts as they have been\ndeveloped in this case, the judgment of the Court of\nAppeals must be reversed.\nIt is so ordered.\n\n498\n\n\x0cJUSTICE BLACKMUN, with whom JUSTICE MARSHALL,\nJUSTICE POWELL, AND JUSTICE REHNQUIST join, dissenting.\n\xe2\x80\xa6.\nThe fair use doctrine must strike a balance between the\ndual risks created by the copyright system: on the one hand,\nthat depriving authors of their monopoly will reduce their\nincentive to create, and, on the other, that granting authors\na complete monopoly will reduce the creative ability of\nothers. The inquiry is necessarily a flexible one, and the\nendless variety of situations that may arise precludes the\nformulation of exact rules. But when a user reproduces an\nentire work and uses it for its original purpose, with no\nadded benefit to the public, the doctrine of fair use usually\ndoes not apply. There is then no need whatsoever to\nprovide the ordinary user with a fair use subsidy at the\nauthor\xe2\x80\x99s expense.\nThe making of a videotape recording for home viewing is\nan ordinary rather than a productive use of the Studios\xe2\x80\x99\ncopyrighted works. The District Court found that\n\xe2\x80\x9cBetamax owners use the copy for the same purpose as the\noriginal. They add nothing of their own.\xe2\x80\x9d 480 F.Supp., at\n453. Although applying the fair use doctrine to home VTR\nrecording, as Sony argues, may increase public access to\nmaterial broadcast free over the public airwaves, I think\nSony\xe2\x80\x99s argument misconceives the nature of copyright.\nCopyright gives the author a right to limit or even to cut off\naccess to his work. Fox Film Corp. v. Doyal, 286 U.S. 123,\n127, 52 S.Ct. 546, 547, 76 L.Ed. 1010 (1932). A VTR\nrecording creates no public benefit sufficient to justify\nlimiting this right. Nor is this right extinguished by the\ncopyright owner\xe2\x80\x99s choice to make the work available over\nthe airwaves. Section 106 of the 1976 Act grants the\ncopyright owner the exclusive right to control the\nperformance and the reproduction of his work, and the fact\nthat he has licensed a single television performance is really\nirrelevant to the existence of his right to control its\n\n499\n\n\x0creproduction. Although a television broadcast may be free\nto the viewer, this fact is equally irrelevant; a book\nborrowed from the public library may not be copied any\nmore freely than a book that is purchased.\nIt may be tempting, as, in my view, the Court today is\ntempted, to stretch the doctrine of fair use so as to permit\nunfettered use of this new technology in order to increase\naccess to television programming. But such an extension\nrisks eroding the very basis of copyright law, by depriving\nauthors of control over their works and consequently of\ntheir incentive to create. Even in the context of highly\nproductive educational uses, Congress has avoided this\ntemptation; in passing the 1976 Act, Congress made it clear\nthat off-the-air videotaping was to be permitted only in\nvery limited situations. See 1976 House Report 71; 1975\nSenate Report 64. And, the Senate report adds, \xe2\x80\x9c[t]he\ncommittee does not intend to suggest \xe2\x80\xa6 that off-the-air\nrecording for convenience would under any circumstances,\nbe considered \xe2\x80\x98fair use.\xe2\x80\x99 \xe2\x80\x9d Id., at 66. I cannot disregard these\nadmonitions.\n\xe2\x80\xa6.\nI recognize, nevertheless, that there are situations where\npermitting even an unproductive use would have no effect\non the author\xe2\x80\x99s incentive to create, that is, where the use\nwould not affect the value of, or the market for, the\nauthor\xe2\x80\x99s work. Photocopying an old newspaper clipping to\nsend to a friend may be an example; pinning a quotation on\none\xe2\x80\x99s bulletin board may be another. In each of these cases,\nthe effect on the author is truly de minimis. Thus, even\nthough these uses provide no benefit to the public at large,\nno purpose is served by preserving the author\xe2\x80\x99s monopoly,\nand the use may be regarded as fair.\nCourts should move with caution, however, in depriving\nauthors of protection from unproductive \xe2\x80\x9cordinary\xe2\x80\x9d uses.\nAs has been noted above, even in the case of a productive\n\n500\n\n\x0cuse, \xc2\xa7 107(4) requires consideration of \xe2\x80\x9cthe effect of the\nuse upon the potential market for or value of the\ncopyrighted work\xe2\x80\x9d (emphasis added). \xe2\x80\x9c[A] particular use\nwhich may seem to have little or no economic impact on\nthe author\xe2\x80\x99s rights today can assume tremendous\nimportance in times to come.\xe2\x80\x9d Register\xe2\x80\x99s Supplementary\nReport 14. Although such a use may seem harmless when\nviewed in isolation, \xe2\x80\x9c[i]solated instances of minor\ninfringements, when multiplied many times, become in the\naggregate a major inroad on copyright that must be\nprevented.\xe2\x80\x9d 1975 Senate Report 65.\nI therefore conclude that, at least when the proposed use is\nan unproductive one, a copyright owner need prove only a\npotential for harm to the market for or the value of the\ncopyrighted work. See 3 M. Nimmer, Copyright \xc2\xa7\n13.05[E][4][c], p. 13-84 (1982). Proof of actual harm, or\neven probable harm, may be impossible in an area where\nthe effect of a new technology is speculative, and requiring\nsuch proof would present the \xe2\x80\x9creal danger \xe2\x80\xa6 of confining\nthe scope of an author\xe2\x80\x99s rights on the basis of the present\ntechnology so that, as the years go by, his copyright loses\nmuch of its value because of unforeseen technical\nadvances.\xe2\x80\x9d Register\xe2\x80\x99s Supplementary Report 14.\nInfringement thus would be found if the copyright owner\ndemonstrates a reasonable possibility that harm will result\nfrom the proposed use. When the use is one that creates no\nbenefit to the public at large, copyright protection should\nnot be denied on the basis that a new technology that may\nresult in harm has not yet done so.\nThe Studios have identified a number of ways in which\nVTR recording could damage their copyrights. VTR\nrecording could reduce their ability to market their works in\nmovie theaters and through the rental or sale of prerecorded videotapes or videodiscs; it also could reduce their\nrerun audience, and consequently the license fees available\nto them for repeated showings. Moreover, advertisers may\n\n501\n\n\x0cbe willing to pay for only \xe2\x80\x9clive\xe2\x80\x9d viewing audiences, if they\nbelieve VTR viewers will delete commercials or if rating\nservices are unable to measure VTR use; if this is the case,\nVTR recording could reduce the license fees the Studios are\nable to charge even for first-run showings. Library-building\nmay raise the potential for each of the types of harm\nidentified by the Studios, and time-shifting may raise the\npotential for substantial harm as well.8\n\nA VTR owner who has taped a favorite movie for repeated viewing will be less\nlikely to rent or buy a tape containing the same movie, watch a televised rerun, or\npay to see the movie at a theater. Although time-shifting may not replace theater\nor rerun viewing or the purchase of prerecorded tapes or discs, it may well replace\nrental usage; a VTR user who has recorded a first-run movie for later viewing will\nhave no need to rent a copy when he wants to see it. Both library-builders and\ntime-shifters may avoid commercials; the library builder may use the pause control\nto record without them, and all users may fast-forward through commercials on\nplayback. The Studios introduced expert testimony that both time-shifting and\nlibrarying would tend to decrease their revenue from copyrighted works. See 480\nF.Supp., at 440. The District Court\xe2\x80\x99s findings also show substantial librarybuilding and avoidance of commercials. Both sides submitted surveys showing\nthat the average Betamax user owns between 25 and 32 tapes. The Studios\xe2\x80\x99 survey\nshowed that at least 40% of users had more than 10 tapes in a \xe2\x80\x9clibrary\xe2\x80\x9d; Sony\xe2\x80\x99s\nsurvey showed that more than 40% of users planned to view their tapes more\nthan once; and both sides\xe2\x80\x99 surveys showed that commercials were avoided at least\n25% of the time. Id., at 438-439.\n8\n\n502\n\n\x0cMetro-Goldwyn-Mayer Studios Inc. v. Grokster, Ltd.,\n545 U.S. 913 (2005)\nJUSTICE SOUTER delivered the opinion of the Court.\nThe question is under what circumstances the distributor of\na product capable of both lawful and unlawful use is liable\nfor acts of copyright infringement by third parties using the\nproduct. We hold that one who distributes a device with\nthe object of promoting its use to infringe copyright, as\nshown by clear expression or other affirmative steps taken\nto foster infringement, is liable for the resulting acts of\ninfringement by third parties.\nI\nA\nRespondents, Grokster, Ltd., and StreamCast Networks,\nInc., defendants in the trial court, distribute free software\nproducts that allow computer users to share electronic files\nthrough peer-to-peer networks, so called because users\xe2\x80\x99\ncomputers communicate directly with each other, not\nthrough central servers. The advantage of peer-to-peer\nnetworks over information networks of other types shows\nup in their substantial and growing popularity. Because they\nneed no central computer server to mediate the exchange\nof information or files among users, the high-bandwidth\ncommunications capacity for a server may be dispensed\nwith, and the need for costly server storage space is\neliminated. Since copies of a file (particularly a popular one)\nare available on many users\xe2\x80\x99 computers, file requests and\nretrievals may be faster than on other types of networks,\nand since file exchanges do not travel through a server,\ncommunications can take place between any computers\nthat remain connected to the network without risk that a\nglitch in the server will disable the network in its entirety.\nGiven these benefits in security, cost, and efficiency, peerto-peer networks are employed to store and distribute\n\n\x0celectronic files by universities, government agencies,\ncorporations, and libraries, among others.1\nOther users of peer-to-peer networks include individual\nrecipients of Grokster\xe2\x80\x99s and StreamCast\xe2\x80\x99s software, and\nalthough the networks that they enjoy through using the\nsoftware can be used to share any type of digital file, they\nhave prominently employed those networks in sharing\ncopyrighted music and video files without authorization. A\ngroup of copyright holders (MGM for short, but including\nmotion picture studios, recording companies, songwriters,\nand music publishers) sued Grokster and StreamCast for\ntheir users\xe2\x80\x99 copyright infringements, alleging that they\nknowingly and intentionally distributed their software to\nenable users to reproduce and distribute the copyrighted\nworks in violation of the Copyright Act, 17 U.S.C. \xc2\xa7 101 et\nseq. MGM sought damages and an injunction.\nDiscovery during the litigation revealed the way the\nsoftware worked, the business aims of each defendant\ncompany, and the predilections of the users. Grokster\xe2\x80\x99s\neponymous software employs what is known as FastTrack\ntechnology, a protocol developed by others and licensed to\nGrokster. StreamCast distributes a very similar product\nexcept that its software, called Morpheus, relies on what is\nknown as Gnutella technology. A user who downloads and\ninstalls either software possesses the protocol to send\nrequests for files directly to the computers of others using\nsoftware compatible with FastTrack or Gnutella. On the\nFastTrack network opened by the Grokster software, the\nuser\xe2\x80\x99s request goes to a computer given an indexing\n\nPeer-to-peer networks have disadvantages as well. Searches on peer-to-peer\nnetworks may not reach and uncover all available files because search requests\nmay not be transmitted to every computer on the network. There may be\nredundant copies of popular files. The creator of the software has no incentive to\nminimize storage or bandwidth consumption, the costs of which are borne by\nevery user of the network. Most relevant here, it is more difficult to control the\ncontent of files available for retrieval and the behavior of users.\n1\n\n504\n\n\x0ccapacity by the software and designated a supernode, or to\nsome other computer with comparable power and capacity\nto collect temporary indexes of the files available on the\ncomputers of users connected to it. The supernode (or\nindexing computer) searches its own index and may\ncommunicate the search request to other supernodes. If the\nfile is found, the supernode discloses its location to the\ncomputer requesting it, and the requesting user can\ndownload the file directly from the computer located. The\ncopied file is placed in a designated sharing folder on the\nrequesting user\xe2\x80\x99s computer, where it is available for other\nusers to download in turn, along with any other file in that\nfolder.\nIn the Gnutella network made available by Morpheus, the\nprocess is mostly the same, except that in some versions of\nthe Gnutella protocol there are no supernodes\xe2\x80\xa6 . .\nAlthough Grokster and StreamCast do not therefore know\nwhen particular files are copied, a few searches using their\nsoftware would show what is available on the networks the\nsoftware reaches. MGM commissioned a statistician to\nconduct a systematic search, and his study showed that\nnearly 90% of the files available for download on the\nFastTrack system were copyrighted works.2 Grokster and\nStreamCast dispute this figure, raising methodological\nproblems and arguing that free copying even of\ncopyrighted works may be authorized by the rightholders.\nThey also argue that potential noninfringing uses of their\nsoftware are significant in kind, even if infrequent in\npractice. Some musical performers, for example, have\ngained new audiences by distributing their copyrighted\nworks for free across peer-to-peer networks, and some\ndistributors of unprotected content have used peer-to-peer\n\nBy comparison, evidence introduced by the plaintiffs in A&M Records, Inc. v.\nNapster, Inc., 239 F.3d 1004 (C.A.9 2001), showed that 87% of files available on\nthe Napster file-sharing network were copyrighted, id., at 1013.\n2\n\n505\n\n\x0cnetworks to disseminate files, Shakespeare being an\nexample. Indeed, StreamCast has given Morpheus users the\nopportunity to download the briefs in this very case,\nthough their popularity has not been quantified.\nAs for quantification, the parties\xe2\x80\x99 anecdotal and statistical\nevidence entered thus far to show the content available on\nthe FastTrack and Gnutella networks does not say much\nabout which files are actually downloaded by users, and no\none can say how often the software is used to obtain copies\nof unprotected material. But MGM\xe2\x80\x99s evidence gives reason\nto think that the vast majority of users\xe2\x80\x99 downloads are acts\nof infringement, and because well over 100 million copies\nof the software in question are known to have been\ndownloaded, and billions of files are shared across the\nFastTrack and Gnutella networks each month, the probable\nscope of copyright infringement is staggering.\nGrokster and StreamCast concede the infringement in most\ndownloads, and it is uncontested that they are aware that\nusers employ their software primarily to download\ncopyrighted files, even if the decentralized FastTrack and\nGnutella networks fail to reveal which files are being\ncopied, and when. From time to time, moreover, the\ncompanies have learned about their users\xe2\x80\x99 infringement\ndirectly, as from users who have sent e-mail to each\ncompany with questions about playing copyrighted movies\nthey had downloaded, to whom the companies have\nresponded with guidance. And MGM notified the\ncompanies of 8 million copyrighted files that could be\nobtained using their software.\nGrokster and StreamCast are not, however, merely passive\nrecipients of information about infringing use. The record\nis replete with evidence that from the moment Grokster\nand StreamCast began to distribute their free software, each\none clearly voiced the objective that recipients use it to\ndownload copyrighted works, and each took active steps to\nencourage infringement.\n\n506\n\n\x0cAfter the notorious file-sharing service, Napster, was sued\nby copyright holders for facilitation of copyright\ninfringement, A&M Records, Inc. v. Napster, Inc., 114\nF.Supp.2d 896 (N.D.Cal.2000), aff\xe2\x80\x99d in part, rev\xe2\x80\x99d in part,\n239 F.3d 1004 (C.A.9 2001), StreamCast gave away a\nsoftware program of a kind known as OpenNap, designed\nas compatible with the Napster program and open to\nNapster users for downloading files from other Napster\nand OpenNap users\xe2\x80\x99 computers. Evidence indicates that\n\xe2\x80\x9c[i]t was always [StreamCast\xe2\x80\x99s] intent to use [its OpenNap\nnetwork] to be able to capture email addresses of [its] initial\ntarget market so that [it] could promote [its] StreamCast\nMorpheus interface to them,\xe2\x80\x9d App. 861; indeed, the\nOpenNap program was engineered \xe2\x80\x9c\xe2\x80\x98to leverage Napster\xe2\x80\x99s\n50 million user base.\xe2\x80\x99\xe2\x80\x9d\nStreamCast monitored both the number of users downloading its OpenNap program and the number of music\nfiles they downloaded. It also used the resulting OpenNap\nnetwork to distribute copies of the Morpheus software and\nto encourage users to adopt it. Internal company\ndocuments indicate that StreamCast hoped to attract large\nnumbers of former Napster users if that company was shut\ndown by court order or otherwise, and that StreamCast\nplanned to be the next Napster. A kit developed by\nStreamCast to be delivered to advertisers, for example,\ncontained press articles about StreamCast\xe2\x80\x99s potential to\ncapture former Napster users, and it introduced itself to\nsome potential advertisers as a company \xe2\x80\x9cwhich is similar\nto what Napster was.\xe2\x80\x9d It broadcast banner advertisements\nto users of other Napster-compatible software, urging them\nto adopt its OpenNap. An internal e-mail from a company\nexecutive stated: \xe2\x80\x9c\xe2\x80\x98We have put this network in place so\nthat when Napster pulls the plug on their free service \xe2\x80\xa6 or\nif the Court orders them shut down prior to that \xe2\x80\xa6 we will\nbe positioned to capture the flood of their 32 million users\nthat will be actively looking for an alternative.\xe2\x80\x99\xe2\x80\x9d\n\n507\n\n\x0cThus, StreamCast developed promotional materials to\nmarket its service as the best Napster alternative. One\nproposed advertisement read: \xe2\x80\x9cNapster Inc. has announced\nthat it will soon begin charging you a fee. That\xe2\x80\x99s if the\ncourts don\xe2\x80\x99t order it shut down first. What will you do to\nget around it?\xe2\x80\x9d Another proposed ad touted StreamCast\xe2\x80\x99s\nsoftware as the \xe2\x80\x9c# 1 alternative to Napster\xe2\x80\x9d and asked\n\xe2\x80\x9c[w]hen the lights went off at Napster \xe2\x80\xa6 where did the\nusers go?\xe2\x80\x9d3 StreamCast even planned to flaunt the illegal\nuses of its software; when it launched the OpenNap\nnetwork, the chief technology officer of the company\naverred that \xe2\x80\x9c[t]he goal is to get in trouble with the law and\nget sued. It\xe2\x80\x99s the best way to get in the new[s].\xe2\x80\x9d\nThe evidence that Grokster sought to capture the market\nof former Napster users is sparser but revealing, for\nGrokster launched its own OpenNap system called\nSwaptor and inserted digital codes into its Web site so that\ncomputer users using Web search engines to look for\n\xe2\x80\x9cNapster\xe2\x80\x9d or \xe2\x80\x9c[f]ree filesharing\xe2\x80\x9d would be directed to the\nGrokster Web site, where they could download the\nGrokster software. And Grokster\xe2\x80\x99s name is an apparent\nderivative of Napster.\nStreamCast\xe2\x80\x99s executives monitored the number of songs by\ncertain commercial artists available on their networks, and\nan internal communication indicates they aimed to have a\nlarger number of copyrighted songs available on their\nnetworks than other file-sharing networks. The point, of\ncourse, would be to attract users of a mind to infringe, just\nas it would be with their promotional materials developed\nshowing copyrighted songs as examples of the kinds of files\navailable through Morpheus. Morpheus in fact allowed\n\nThe record makes clear that StreamCast developed these promotional materials\nbut not whether it released them to the public. Even if these advertisements were\nnot released to the public and do not show encouragement to infringe, they\nilluminate StreamCast\xe2\x80\x99s purposes.\n3\n\n508\n\n\x0cusers to search specifically for \xe2\x80\x9cTop 40\xe2\x80\x9d songs, which were\ninevitably copyrighted. Similarly, Grokster sent users a\nnewsletter promoting its ability to provide particular,\npopular copyrighted materials.\nIn addition to this evidence of express promotion,\nmarketing, and intent to promote further, the business\nmodels employed by Grokster and StreamCast confirm that\ntheir principal object was use of their software to download\ncopyrighted works. Grokster and StreamCast receive no\nrevenue from users, who obtain the software itself for\nnothing. Instead, both companies generate income by\nselling advertising space, and they stream the advertising to\nGrokster and Morpheus users while they are employing the\nprograms. As the number of users of each program\nincreases, advertising opportunities become worth more.\nWhile there is doubtless some demand for free\nShakespeare, the evidence shows that substantive volume is\na function of free access to copyrighted work. Users\nseeking Top 40 songs, for example, or the latest release by\nModest Mouse, are certain to be far more numerous than\nthose seeking a free Decameron, and Grokster and\nStreamCast translated that demand into dollars.\nFinally, there is no evidence that either company made an\neffort to filter copyrighted material from users\xe2\x80\x99 downloads\nor otherwise impede the sharing of copyrighted files.\nAlthough Grokster appears to have sent e-mails warning\nusers about infringing content when it received threatening\nnotice from the copyright holders, it never blocked anyone\nfrom continuing to use its software to share copyrighted\nfiles. StreamCast not only rejected another company\xe2\x80\x99s offer\nof help to monitor infringement, but blocked the Internet\nProtocol addresses of entities it believed were trying to\nengage in such monitoring on its networks.\n\xe2\x80\xa6.\nII\n\n509\n\n\x0cA\nMGM and many of the amici fault the Court of Appeals\xe2\x80\x99s\nholding for upsetting a sound balance between the\nrespective values of supporting creative pursuits through\ncopyright protection and promoting innovation in new\ncommunication technologies by limiting the incidence of\nliability for copyright infringement. The more artistic\nprotection is favored, the more technological innovation\nmay be discouraged; the administration of copyright law is\nan exercise in managing the trade-off. See Sony Corp. v.\nUniversal City Studios, supra, at 442, 104 S.Ct. 774; see\ngenerally Ginsburg, Copyright and Control Over New\nTechnologies of Dissemination, 101 Colum. L.Rev. 1613\n(2001); Lichtman & Landes, Indirect Liability for Copyright\nInfringement: An Economic Perspective, 16 Harv. J.L. &\nTech. 395 (2003).\nThe tension between the two values is the subject of this\ncase, with its claim that digital distribution of copyrighted\nmaterial threatens copyright holders as never before,\nbecause every copy is identical to the original, copying is\neasy, and many people (especially the young) use filesharing software to download copyrighted works. This very\nbreadth of the software\xe2\x80\x99s use may well draw the public\ndirectly into the debate over copyright policy, Peters, Brace\nMemorial Lecture: Copyright Enters the Public Domain, 51\nJ. Copyright Soc. 701, 705-717 (2004) (address by Register\nof Copyrights), and the indications are that the ease of\ncopying songs or movies using software like Grokster\xe2\x80\x99s and\nNapster\xe2\x80\x99s is fostering disdain for copyright protection, Wu,\nWhen Code Isn\xe2\x80\x99t Law, 89 Va. L.Rev. 679, 724-726 (2003).\nAs the case has been presented to us, these fears are said to\nbe offset by the different concern that imposing liability,\nnot only on infringers but on distributors of software based\non its potential for unlawful use, could limit further\ndevelopment of beneficial technologies. See, e.g., Lemley &\nReese, Reducing Digital Copyright Infringement Without\n\n510\n\n\x0cRestricting Innovation, 56 Stan. L.Rev. 1345, 1386-1390\n(2004).\nThe argument for imposing indirect liability in this case is,\nhowever, a powerful one, given the number of infringing\ndownloads that occur every day using StreamCast\xe2\x80\x99s and\nGrokster\xe2\x80\x99s software. When a widely shared service or\nproduct is used to commit infringement, it may be\nimpossible to enforce rights in the protected work\neffectively against all direct infringers, the only practical\nalternative being to go against the distributor of the\ncopying device for secondary liability on a theory of\ncontributory or vicarious infringement.\nOne infringes contributorily by intentionally inducing or\nencouraging direct infringement, see Gershwin Pub. Corp.\nv. Columbia Artists Management, Inc., 443 F.2d 1159, 1162\n(C.A.2 1971), and infringes vicariously by profiting from\ndirect infringement while declining to exercise a right to\nstop or limit it, Shapiro, Bernstein & Co. v. H.L. Green\nCo., 316 F.2d 304, 307 (C.A.2 1963).4 Although \xe2\x80\x9c[t]he\nCopyright Act does not expressly render anyone liable for\ninfringement committed by another,\xe2\x80\x9d Sony Corp. v.\nUniversal City Studios, 464 U.S., at 434, these doctrines of\nsecondary liability emerged from common law principles\nand are well established in the law, id., at 486 (Blackmun, J.,\ndissenting).\n\nWe stated in Sony Corp. of America v. Universal City Studios, Inc., 464 U.S. 417\n(1984), that \xe2\x80\x9c\xe2\x80\x98the lines between direct infringement, contributory infringement\nand vicarious liability are not clearly drawn\xe2\x80\x99\xe2\x80\xa6.[R]easoned analysis of [the Sony\nplaintiffs\xe2\x80\x99 contributory infringement claim] necessarily entails consideration of\narguments and case law which may also be forwarded under the other labels, and\nindeed the parties \xe2\x80\xa6 rely upon such arguments and authority in support of their\nrespective positions on the issue of contributory infringement,\xe2\x80\x9d id., at 435, n. 17.\nIn the present case MGM has argued a vicarious liability theory, which allows\nimposition of liability when the defendant profits directly from the infringement\nand has a right and ability to supervise the direct infringer, even if the defendant\ninitially lacks knowledge of the infringement. Because we resolve the case based\non an inducement theory, there is no need to analyze separately MGM\xe2\x80\x99s vicarious\nliability theory.\n4\n\n511\n\n\x0c\xe2\x80\xa6.\nThe parties and many of the amici in this case think the key\nto resolving it is the Sony rule and, in particular, what it\nmeans for a product to be \xe2\x80\x9ccapable of commercially\nsignificant noninfringing uses.\xe2\x80\x9d Sony Corp. v. Universal\nCity Studios, supra, at 442. MGM advances the argument\nthat granting summary judgment to Grokster and\nStreamCast as to their current activities gave too much\nweight to the value of innovative technology, and too little\nto the copyrights infringed by users of their software, given\nthat 90% of works available on one of the networks was\nshown to be copyrighted. Assuming the remaining 10% to\nbe its noninfringing use, MGM says this should not qualify\nas \xe2\x80\x9csubstantial,\xe2\x80\x9d and the Court should quantify Sony to the\nextent of holding that a product used \xe2\x80\x9cprincipally\xe2\x80\x9d for\ninfringement does not qualify. As mentioned before,\nGrokster and StreamCast reply by citing evidence that their\nsoftware can be used to reproduce public domain works,\nand they point to copyright holders who actually encourage\ncopying. Even if infringement is the principal practice with\ntheir software today, they argue, the noninfringing uses are\nsignificant and will grow.\nWe agree with MGM that the Court of Appeals misapplied\nSony, which it read as limiting secondary liability quite\nbeyond the circumstances to which the case applied. Sony\nbarred secondary liability based on presuming or imputing\nintent to cause infringement solely from the design or\ndistribution of a product capable of substantial lawful use,\nwhich the distributor knows is in fact used for\ninfringement. The Ninth Circuit has read Sony\xe2\x80\x99s limitation\nto mean that whenever a product is capable of substantial\nlawful use, the producer can never be held contributorily\nliable for third parties\xe2\x80\x99 infringing use of it; it read the rule as\nbeing this broad, even when an actual purpose to cause\ninfringing use is shown by evidence independent of design\nand distribution of the product, unless the distributors had\n\n512\n\n\x0c\xe2\x80\x9cspecific knowledge of infringement at a time at which they\ncontributed to the infringement, and failed to act upon that\ninformation.\xe2\x80\x9d 380 F.3d, at 1162 (internal quotation marks\nand alterations omitted). Because the Circuit found the\nStreamCast and Grokster software capable of substantial\nlawful use, it concluded on the basis of its reading of Sony\nthat neither company could be held liable, since there was\nno showing that their software, being without any central\nserver, afforded them knowledge of specific unlawful uses.\nThis view of Sony, however, was error, converting the case\nfrom one about liability resting on imputed intent to one\nabout liability on any theory. Because Sony did not displace\nother theories of secondary liability, and because we find\nbelow that it was error to grant summary judgment to the\ncompanies on MGM\xe2\x80\x99s inducement claim, we do not revisit\nSony further, as MGM requests, to add a more quantified\ndescription of the point of balance between protection and\ncommerce when liability rests solely on distribution with\nknowledge that unlawful use will occur. It is enough to\nnote that the Ninth Circuit\xe2\x80\x99s judgment rested on an\nerroneous understanding of Sony and to leave further\nconsideration of the Sony rule for a day when that may be\nrequired.\nC\nSony\xe2\x80\x99s rule limits imputing culpable intent as a matter of\nlaw from the characteristics or uses of a distributed\nproduct. But nothing in Sony requires courts to ignore\nevidence of intent if there is such evidence, and the case\nwas never meant to foreclose rules of fault-based liability\nderived from the common law. Thus, where evidence goes\nbeyond a product\xe2\x80\x99s characteristics or the knowledge that it\nmay be put to infringing uses, and shows statements or\nactions directed to promoting infringement, Sony\xe2\x80\x99s staplearticle rule will not preclude liability.\n\n513\n\n\x0cThe classic case of direct evidence of unlawful purpose\noccurs when one induces commission of infringement by\nanother, or \xe2\x80\x9centic[es] or persuad[es] another\xe2\x80\x9d to infringe,\nBlack\xe2\x80\x99s Law Dictionary 790 (8th ed.2004), as by advertising.\nThus at common law a copyright or patent defendant who\n\xe2\x80\x9cnot only expected but invoked [infringing use] by\nadvertisement\xe2\x80\x9d was liable for infringement \xe2\x80\x9con principles\nrecognized in every part of the law.\xe2\x80\x9d Kalem Co. v. Harper\nBrothers, 222 U.S., at 62-63 (copyright infringement).\nThe rule on inducement of infringement as developed in\nthe early cases is no different today. Evidence of \xe2\x80\x9cactive\nsteps \xe2\x80\xa6 taken to encourage direct infringement,\xe2\x80\x9d Oak\nIndustries, Inc. v. Zenith Electronics Corp., 697 F.Supp.\n988, 992 (N.D.Ill.1988), such as advertising an infringing\nuse or instructing how to engage in an infringing use, show\nan affirmative intent that the product be used to infringe,\nand a showing that infringement was encouraged\novercomes the law\xe2\x80\x99s reluctance to find liability when a\ndefendant merely sells a commercial product suitable for\nsome lawful use.\nFor the same reasons that Sony took the staple-article\ndoctrine of patent law as a model for its copyright safeharbor rule, the inducement rule, too, is a sensible one for\ncopyright. We adopt it here, holding that one who\ndistributes a device with the object of promoting its use to\ninfringe copyright, as shown by clear expression or other\naffirmative steps taken to foster infringement, is liable for\nthe resulting acts of infringement by third parties. We are,\nof course, mindful of the need to keep from trenching on\nregular commerce or discouraging the development of\ntechnologies with lawful and unlawful potential.\nAccordingly, just as Sony did not find intentional\ninducement despite the knowledge of the VCR\nmanufacturer that its device could be used to infringe, mere\nknowledge of infringing potential or of actual infringing\nuses would not be enough here to subject a distributor to\n\n514\n\n\x0cliability. Nor would ordinary acts incident to product\ndistribution, such as offering customers technical support\nor product updates, support liability in themselves. The\ninducement rule, instead, premises liability on purposeful,\nculpable expression and conduct, and thus does nothing to\ncompromise legitimate commerce or discourage innovation\nhaving a lawful promise.\nIII\nA\nThe only apparent question about treating MGM\xe2\x80\x99s\nevidence as sufficient to withstand summary judgment\nunder the theory of inducement goes to the need on\nMGM\xe2\x80\x99s part to adduce evidence that StreamCast and\nGrokster communicated an inducing message to their\nsoftware users. The classic instance of inducement is by\nadvertisement or solicitation that broadcasts a message\ndesigned to stimulate others to commit violations. MGM\nclaims that such a message is shown here. It is undisputed\nthat StreamCast beamed onto the computer screens of\nusers of Napster-compatible programs ads urging the\nadoption of its OpenNap program, which was designed, as\nits name implied, to invite the custom of patrons of\nNapster, then under attack in the courts for facilitating\nmassive infringement. Those who accepted StreamCast\xe2\x80\x99s\nOpenNap program were offered software to perform the\nsame services, which a factfinder could conclude would\nreadily have been understood in the Napster market as the\nability to download copyrighted music files. Grokster\ndistributed an electronic newsletter containing links to\narticles promoting its software\xe2\x80\x99s ability to access popular\ncopyrighted music. And anyone whose Napster or free filesharing searches turned up a link to Grokster would have\nunderstood Grokster to be offering the same file-sharing\nability as Napster, and to the same people who probably\nused Napster for infringing downloads; that would also\n\n515\n\n\x0chave been the understanding of anyone offered Grokster\xe2\x80\x99s\nsuggestively named Swaptor software, its version of\nOpenNap. And both companies communicated a clear\nmessage by responding affirmatively to requests for help in\nlocating and playing copyrighted materials.\nIn StreamCast\xe2\x80\x99s case, of course, the evidence just described\nwas supplemented by other unequivocal indications of\nunlawful purpose in the internal communications and\nadvertising designs aimed at Napster users (\xe2\x80\x9cWhen the\nlights went off at Napster \xe2\x80\xa6 where did the users go?\xe2\x80\x9d\n(ellipsis in original)). Whether the messages were\ncommunicated is not to the point on this record. The\nfunction of the message in the theory of inducement is to\nprove by a defendant\xe2\x80\x99s own statements that his unlawful\npurpose disqualifies him from claiming protection (and\nincidentally to point to actual violators likely to be found\namong those who hear or read the message). Proving that a\nmessage was sent out, then, is the preeminent but not\nexclusive way of showing that active steps were taken with\nthe purpose of bringing about infringing acts, and of\nshowing that infringing acts took place by using the device\ndistributed. Here, the summary judgment record is replete\nwith other evidence that Grokster and StreamCast, unlike\nthe manufacturer and distributor in Sony, acted with a\npurpose to cause copyright violations by use of software\nsuitable for illegal use.\nThree features of this evidence of intent are particularly\nnotable. First, each company showed itself to be aiming to\nsatisfy a known source of demand for copyright\ninfringement, the market comprising former Napster users.\nStreamCast\xe2\x80\x99s internal documents made constant reference\nto Napster, it initially distributed its Morpheus software\nthrough an OpenNap program compatible with Napster, it\nadvertised its OpenNap program to Napster users, and its\nMorpheus software functions as Napster did except that it\ncould be used to distribute more kinds of files, including\n\n516\n\n\x0ccopyrighted movies and software programs. Grokster\xe2\x80\x99s\nname is apparently derived from Napster, it too initially\noffered an OpenNap program, its software\xe2\x80\x99s function is\nlikewise comparable to Napster\xe2\x80\x99s, and it attempted to divert\nqueries for Napster onto its own Web site. Grokster and\nStreamCast\xe2\x80\x99s efforts to supply services to former Napster\nusers, deprived of a mechanism to copy and distribute what\nwere overwhelmingly infringing files, indicate a principal, if\nnot exclusive, intent on the part of each to bring about\ninfringement.\nSecond, this evidence of unlawful objective is given added\nsignificance by MGM\xe2\x80\x99s showing that neither company\nattempted to develop filtering tools or other mechanisms to\ndiminish the infringing activity using their software. While\nthe Ninth Circuit treated the defendants\xe2\x80\x99 failure to develop\nsuch tools as irrelevant because they lacked an independent\nduty to monitor their users\xe2\x80\x99 activity, we think this evidence\nunderscores Grokster\xe2\x80\x99s and StreamCast\xe2\x80\x99s intentional\nfacilitation of their users\xe2\x80\x99 infringement.5\nThird, there is a further complement to the direct evidence\nof unlawful objective. It is useful to recall that StreamCast\nand Grokster make money by selling advertising space, by\ndirecting ads to the screens of computers employing their\nsoftware. As the record shows, the more the software is\nused, the more ads are sent out and the greater the\nadvertising revenue becomes. Since the extent of the\nsoftware\xe2\x80\x99s use determines the gain to the distributors, the\ncommercial sense of their enterprise turns on high-volume\nuse, which the record shows is infringing. This evidence\nalone would not justify an inference of unlawful intent, but\n\nOf course, in the absence of other evidence of intent, a court would be unable to\nfind contributory infringement liability merely based on a failure to take\naffirmative steps to prevent infringement, if the device otherwise was capable of\nsubstantial noninfringing uses. Such a holding would tread too close to the Sony\nsafe harbor.\n5\n\n517\n\n\x0cviewed in the context of the entire record its import is\nclear.\nThe unlawful objective is unmistakable.\nB\nIn addition to intent to bring about infringement and\ndistribution of a device suitable for infringing use, the\ninducement theory of course requires evidence of actual\ninfringement by recipients of the device, the software in\nthis case. As the account of the facts indicates, there is\nevidence of infringement on a gigantic scale, and there is no\nserious issue of the adequacy of MGM\xe2\x80\x99s showing on this\npoint in order to survive the companies\xe2\x80\x99 summary\njudgment requests. Although an exact calculation of\ninfringing use, as a basis for a claim of damages, is subject\nto dispute, there is no question that the summary judgment\nevidence is at least adequate to entitle MGM to go forward\nwith claims for damages and equitable relief.\n***\nIn sum, this case is significantly different from Sony and\nreliance on that case to rule in favor of StreamCast and\nGrokster was error. Sony dealt with a claim of liability\nbased solely on distributing a product with alternative\nlawful and unlawful uses, with knowledge that some users\nwould follow the unlawful course. The case struck a\nbalance between the interests of protection and innovation\nby holding that the product\xe2\x80\x99s capability of substantial lawful\nemployment should bar the imputation of fault and\nconsequent secondary liability for the unlawful acts of\nothers.\nMGM\xe2\x80\x99s evidence in this case most obviously addresses a\ndifferent basis of liability for distributing a product open to\nalternative uses. Here, evidence of the distributors\xe2\x80\x99 words\nand deeds going beyond distribution as such shows a\n\n518\n\n\x0cpurpose to cause and profit from third-party acts of\ncopyright infringement. If liability for inducing\ninfringement is ultimately found, it will not be on the basis\nof presuming or imputing fault, but from inferring a\npatently illegal objective from statements and actions\nshowing what that objective was.\nThere is substantial evidence in MGM\xe2\x80\x99s favor on all\nelements of inducement, and summary judgment in favor\nof Grokster and StreamCast was error. On remand,\nreconsideration of MGM\xe2\x80\x99s motion for summary judgment\nwill be in order.\nThe judgment of the Court of Appeals is vacated, and the\ncase is remanded for further proceedings consistent with\nthis opinion.\nIt is so ordered.\nJUSTICE GINSBURG, with whom THE CHIEF JUSTICE\nJUSTICE KENNEDY join, concurring\n\nAND\n\nI concur in the Court\xe2\x80\x99s decision, which vacates in full the\njudgment of the Court of Appeals for the Ninth Circuit,\nand write separately to clarify why I conclude that the\nCourt of Appeals misperceived, and hence misapplied, our\nholding in Sony Corp. of America v. Universal City Studios,\nInc., 464 U.S. 417 (1984).\n\xe2\x80\xa6.\nThis case differs markedly from Sony. Here, there has been\nno finding of any fair use and little beyond anecdotal\nevidence of noninfringing uses. In finding the Grokster and\nStreamCast software products capable of substantial\nnoninfringing uses, the District Court and the Court of\nAppeals appear to have relied largely on declarations\nsubmitted by the defendants. These declarations include\nassertions (some of them hearsay) that a number of\ncopyright owners authorize distribution of their works on\nthe Internet and that some public domain material is\n\n519\n\n\x0cavailable through peer-to-peer networks including those\naccessed through Grokster\xe2\x80\x99s and StreamCast\xe2\x80\x99s software.\nThe District Court declared it \xe2\x80\x9cundisputed that there are\nsubstantial noninfringing uses for Defendants\xe2\x80\x99 software,\xe2\x80\x9d\nthus obviating the need for further proceedings. This\nconclusion appears to rest almost entirely on the collection\nof declarations submitted by Grokster and StreamCast.\nReview of these declarations reveals mostly anecdotal\nevidence, sometimes obtained second-hand, of authorized\ncopyrighted works or public domain works available online\nand shared through peer-to-peer networks, and general\nstatements about the benefits of peer-to-peer technology.\nThese declarations do not support summary judgment in\nthe face of evidence, proffered by MGM, of overwhelming\nuse of Grokster\xe2\x80\x99s and StreamCast\xe2\x80\x99s software for\ninfringement.6\nEven if the absolute number of noninfringing files copied\nusing the Grokster and StreamCast software is large, it does\nnot follow that the products are therefore put to substantial\nnoninfringing uses and are thus immune from liability. The\nnumber of noninfringing copies may be reflective of, and\n\nJustice BREYER finds support for summary judgment in this motley collection\nof declarations and in a survey conducted by an expert retained by MGM. That\nsurvey identified 75% of the files available through Grokster as copyrighted works\nowned or controlled by the plaintiffs, and 15% of the files as works likely\ncopyrighted. As to the remaining 10% of the files, \xe2\x80\x9cthere was not enough\ninformation to form reasonable conclusions either as to what those files even\nconsisted of, and/or whether they were infringing or non-infringing.\xe2\x80\x9d Even\nassuming, as Justice BREYER does, that the Sony Court would have absolved\nSony of contributory liability solely on the basis of the use of the Betamax for\nauthorized time-shifting, summary judgment is not inevitably appropriate here.\nSony stressed that the plaintiffs there owned \xe2\x80\x9cwell below 10%\xe2\x80\x9d of copyrighted\ntelevision programming, and found, based on trial testimony from representatives\nof the four major sports leagues and other individuals authorized to consent to\nhome-recording of their copyrighted broadcasts, that a similar percentage of\nprogram copying was authorized. Here, the plaintiffs allegedly control copyrights\nfor 70% or 75% of the material exchanged through the Grokster and StreamCast\nsoftware, and the District Court does not appear to have relied on comparable\ntestimony about authorized copying from copyright holders.\n6\n\n520\n\n\x0cdwarfed by, the huge total volume of files shared. Further,\nthe District Court and the Court of Appeals did not sharply\ndistinguish between uses of Grokster\xe2\x80\x99s and StreamCast\xe2\x80\x99s\nsoftware products (which this case is about) and uses of\npeer-to-peer technology generally (which this case is not\nabout).\nIn sum, when the record in this case was developed, there\nwas evidence that Grokster\xe2\x80\x99s and StreamCast\xe2\x80\x99s products\nwere, and had been for some time, overwhelmingly used to\ninfringe and that this infringement was the overwhelming\nsource of revenue from the products. Fairly appraised, the\nevidence was insufficient to demonstrate, beyond genuine\ndebate, a reasonable prospect that substantial or\ncommercially significant noninfringing uses were likely to\ndevelop over time. On this record, the District Court\nshould not have ruled dispositively on the contributory\ninfringement charge by granting summary judgment to\nGrokster and StreamCast.\nIf, on remand, the case is not resolved on summary\njudgment in favor of MGM based on Grokster and\nStreamCast actively inducing infringement, the Court of\nAppeals, I would emphasize, should reconsider, on a fuller\nrecord, its interpretation of Sony\xe2\x80\x99s product distribution\nholding.\nJUSTICE BREYER, with whom JUSTICE STEVENS and\nJUSTICE O\xe2\x80\x99CONNOR JOIN, CONCURRING.\nI agree with the Court that the distributor of a dual-use\ntechnology may be liable for the infringing activities of\nthird parties where he or she actively seeks to advance the\ninfringement. I further agree that, in light of our holding\ntoday, we need not now \xe2\x80\x9crevisit\xe2\x80\x9d Sony Corp. of America v.\nUniversal City Studios, Inc., 464 U.S. 417 (1984). Other\nMembers of the Court, however, take up the Sony\nquestion: whether Grokster\xe2\x80\x99s product is \xe2\x80\x9ccapable of\n\xe2\x80\x98substantial\xe2\x80\x99 or \xe2\x80\x98commercially significant\xe2\x80\x99 noninfringing\n\n521\n\n\x0cuses.\xe2\x80\x9d And they answer that question by stating that the\nCourt of Appeals was wrong when it granted summary\njudgment on the issue in Grokster\xe2\x80\x99s favor. I write to\nexplain why I disagree with them on this matter.\nI\nThe Court\xe2\x80\x99s opinion in Sony and the record evidence (as\ndescribed and analyzed in the many briefs before us)\ntogether convince me that the Court of Appeals\xe2\x80\x99\nconclusion has adequate legal support.\n\xe2\x80\xa6.\nWhen measured against Sony\xe2\x80\x99s underlying evidence and\nanalysis, the evidence now before us shows that Grokster\npasses Sony\xe2\x80\x99s test-that is, whether the company\xe2\x80\x99s product is\ncapable of substantial or commercially significant\nnoninfringing uses. For one thing, petitioners\xe2\x80\x99 (hereinafter\nMGM) own expert declared that 75% of current files\navailable on Grokster are infringing and 15% are \xe2\x80\x9clikely\ninfringing.\xe2\x80\x9d That leaves some number of files near 10%\nthat apparently are noninfringing, a figure very similar to\nthe 9% or so of authorized time-shifting uses of the VCR\nthat the Court faced in Sony.\nAs in Sony, witnesses here explained the nature of the\nnoninfringing files on Grokster\xe2\x80\x99s network without detailed\nquantification. Those files include:\nAuthorized copies of music by artists such as Wilco, Janis\nIan, Pearl Jam, Dave Matthews, John Mayer, and others.\nFree electronic books and other works from various online\npublishers, including Project Gutenberg.\nPublic domain and authorized software, such as WinZip\n8.1.\nLicensed music videos and television and movie segments\ndistributed via digital video packaging with the permission\nof the copyright holder.\n\n522\n\n\x0cThe nature of these and other lawfully swapped files is such\nthat it is reasonable to infer quantities of current lawful use\nroughly approximate to those at issue in Sony. At least,\nMGM has offered no evidence sufficient to survive\nsummary judgment that could plausibly demonstrate a\nsignificant quantitative difference. To be sure, in\nquantitative terms these uses account for only a small\npercentage of the total number of uses of Grokster\xe2\x80\x99s\nproduct. But the same was true in Sony, which\ncharacterized the relatively limited authorized copying\nmarket as \xe2\x80\x9csubstantial.\xe2\x80\x9d \xe2\x80\xa6 .\nImportantly, Sony also used the word \xe2\x80\x9ccapable,\xe2\x80\x9d asking\nwhether the product is \xe2\x80\x9ccapable of\xe2\x80\x9d substantial\nnoninfringing uses. Its language and analysis suggest that a\nfigure like 10%, if fixed for all time, might well prove\ninsufficient, but that such a figure serves as an adequate\nfoundation where there is a reasonable prospect of\nexpanded legitimate uses over time. And its language also\nindicates the appropriateness of looking to potential future\nuses of the product to determine its \xe2\x80\x9ccapability.\xe2\x80\x9d\nHere the record reveals a significant future market for\nnoninfringing uses of Grokster-type peer-to-peer software.\nSuch software permits the exchange of any sort of digital\nfile-whether that file does, or does not, contain copyrighted\nmaterial. As more and more uncopyrighted information is\nstored in swappable form, it seems a likely inference that\nlawful peer- to-peer sharing will become increasingly\nprevalent.\nAnd that is just what is happening. Such legitimate\nnoninfringing uses are coming to include the swapping of:\nresearch information (the initial purpose of many peer-topeer networks); public domain films (e.g., those owned by\nthe Prelinger Archive); historical recordings and digital\neducational materials ( e.g., those stored on the Internet\nArchive); digital photos (OurPictures, for example, is\nstarting a P2P photo-swapping service); \xe2\x80\x9cshareware\xe2\x80\x9d and\n\n523\n\n\x0c\xe2\x80\x9cfreeware\xe2\x80\x9d (e.g., Linux and certain Windows software);\nsecure licensed music and movie files (Intent MediaWorks,\nfor example, protects licensed content sent across P2P\nnetworks); news broadcasts past and present (the BBC\nCreative Archive lets users \xe2\x80\x9crip, mix and share the BBC\xe2\x80\x9d);\nuser-created audio and video files (including \xe2\x80\x9cpodcasts\xe2\x80\x9d\nthat may be distributed through P2P software); and all\nmanner of free \xe2\x80\x9copen content\xe2\x80\x9d works collected by Creative\nCommons (one can search for Creative Commons material\non StreamCast). See Brief for Distributed Computing\nIndustry Association as Amicus Curiae 15-26; Merges, A\nNew Dynamism in the Public Domain, 71 U. Chi. L.Rev.\n183 (2004). I can find nothing in the record that suggests\nthat this course of events will not continue to flow naturally\nas a consequence of the character of the software taken\ntogether with the foreseeable development of the Internet\nand of information technology.\nThere may be other now-unforeseen noninfringing uses\nthat develop for peer-to-peer software, just as the homevideo rental industry (unmentioned in Sony) developed for\nthe VCR. But the foreseeable development of such uses,\nwhen taken together with an estimated 10% noninfringing\nmaterial, is sufficient to meet Sony\xe2\x80\x99s standard. And while\nSony considered the record following a trial, there are no\nfacts asserted by MGM in its summary judgment filings\nthat lead me to believe the outcome after a trial here could\nbe any different. The lower courts reached the same\nconclusion.\nOf course, Grokster itself may not want to develop these\nother noninfringing uses. But Sony\xe2\x80\x99s standard seeks to\nprotect not the Groksters of this world (which in any event\nmay well be liable under today\xe2\x80\x99s holding), but the\ndevelopment of technology more generally. And Grokster\xe2\x80\x99s\ndesires in this respect are beside the point.\nII\n\n524\n\n\x0cThe real question here, I believe, is not whether the record\nevidence satisfies Sony. As I have interpreted the standard\nset forth in that case, it does. And of the Courts of Appeals\nthat have considered the matter, only one has proposed\ninterpreting Sony more strictly than I would do \xe2\x80\x93 in a case\nwhere the product might have failed under any standard.\nInstead, the real question is whether we should modify the\nSony standard, as MGM requests, or interpret Sony more\nstrictly, as I believe Justice GINSBURG\xe2\x80\x99s approach would\ndo in practice. Compare ante, at 2784-2787 (concurring)\n(insufficient opinion vidence in this case of both present\nlawful uses and of a reasonable prospect that substantial\nnoninfringing uses would develop over time), with Sony,\n464 U.S., at 442-447, 104 S.Ct. 774 (basing conclusion as to\nthe likely existence of a substantial market for authorized\ncopying upon general declarations, some survey data, and\ncommon sense).\nAs I have said, Sony itself sought to \xe2\x80\x9cstrike a balance\nbetween a copyright holder\xe2\x80\x99s legitimate demand for\neffective-not merely symbolic-protection of the statutory\nmonopoly, and the rights of others freely to engage in\nsubstantially unrelated areas of commerce.\xe2\x80\x9d Thus, to\ndetermine whether modification, or a strict interpretation,\nof Sony is needed, I would ask whether MGM has shown\nthat Sony incorrectly balanced copyright and newtechnology interests. In particular: (1) Has Sony (as I\ninterpret it) worked to protect new technology? (2) If so,\nwould modification or strict interpretation significantly\nweaken that protection? (3) If so, would new or necessary\ncopyright-related benefits outweigh any such weakening?\nA\nThe first question is the easiest to answer. Sony\xe2\x80\x99s rule, as I\ninterpret it, has provided entrepreneurs with needed\n\n525\n\n\x0cassurance that they will be shielded from copyright liability\nas they bring valuable new technologies to market.\nSony\xe2\x80\x99s rule is clear. That clarity allows those who develop\nnew products that are capable of substantial noninfringing\nuses to know, ex ante, that distribution of their product will\nnot yield massive monetary liability. At the same time, it\nhelps deter them from distributing products that have no\nother real function than-or that are specifically intended\nfor-copyright infringement, deterrence that the Court\xe2\x80\x99s\nholding today reinforces (by adding a weapon to the\ncopyright holder\xe2\x80\x99s legal arsenal).\nSony\xe2\x80\x99s rule is strongly technology protecting. The rule\ndeliberately makes it difficult for courts to find secondary\nliability where new technology is at issue. It establishes that\nthe law will not impose copyright liability upon the\ndistributors of dual-use technologies (who do not\nthemselves engage in unauthorized copying) unless the\nproduct in question will be used almost exclusively to\ninfringe copyrights (or unless they actively induce\ninfringements as we today describe). Sony thereby\nrecognizes that the copyright laws are not intended to\ndiscourage or to control the emergence of new\ntechnologies, including (perhaps especially) those that help\ndisseminate information and ideas more broadly or more\nefficiently. Thus Sony\xe2\x80\x99s rule shelters VCRs, typewriters,\ntape recorders, photocopiers, computers, cassette players,\ncompact disc burners, digital video recorders, MP3 players,\nInternet search engines, and peer-to-peer software. But\nSony\xe2\x80\x99s rule does not shelter descramblers, even if one could\ntheoretically use a descrambler in a noninfringing way.\nSony\xe2\x80\x99s rule is forward looking. It does not confine its scope\nto a static snapshot of a product\xe2\x80\x99s current uses (thereby\nthreatening technologies that have undeveloped future\nmarkets). Rather, as the VCR example makes clear, a\nproduct\xe2\x80\x99s market can evolve dramatically over time. And\nSony-by referring to a capacity for substantial noninfringing\n\n526\n\n\x0cuses-recognizes that fact. Sony\xe2\x80\x99s word \xe2\x80\x9ccapable\xe2\x80\x9d refers to a\nplausible, not simply a theoretical, likelihood that such uses\nwill come to pass, and that fact anchors Sony in practical\nreality.\nSony\xe2\x80\x99s rule is mindful of the limitations facing judges where\nmatters of technology are concerned. Judges have no\nspecialized technical ability to answer questions about\npresent or future technological feasibility or commercial\nviability where technology professionals, engineers, and\nventure capitalists themselves may radically disagree and\nwhere answers may differ depending upon whether one\nfocuses upon the time of product development or the time\nof distribution. Consider, for example, the question\nwhether devices can be added to Grokster\xe2\x80\x99s software that\nwill filter out infringing files. MGM tells us this is easy\nenough to do, as do several amici that produce and sell the\nfiltering technology. Grokster says it is not at all easy to do,\nand not an efficient solution in any event, and several\napparently disinterested computer science professors agree.\nWhich account should a judge credit? Sony says that the\njudge will not necessarily have to decide.\nGiven the nature of the Sony rule, it is not surprising that\nin the last 20 years, there have been relatively few\ncontributory infringement suits \xe2\x80\x93 based on a product\ndistribution theory \xe2\x80\x93 brought against technology providers\n(a small handful of federal appellate court cases and\nperhaps fewer than two dozen District Court cases in the\nlast 20 years). I have found nothing in the briefs or the\nrecord that shows that Sony has failed to achieve its\ninnovation-protecting objective.\nB\nThe second, more difficult, question is whether a modified\nSony rule (or a strict interpretation) would significantly\nweaken the law\xe2\x80\x99s ability to protect new technology. Justice\n\n527\n\n\x0cGINSBURG\xe2\x80\x99s approach would require defendants to\nproduce considerably more concrete evidence-more than\nwas presented here-to earn Sony\xe2\x80\x99s shelter. That heavier\nevidentiary demand, and especially the more dramatic (caseby-case balancing) modifications that MGM and the\nGovernment seek, would, I believe, undercut the\nprotection that Sony now offers.\nTo require defendants to provide, for example, detailed\nevidence-say, business plans, profitability estimates,\nprojected technological modifications, and so forth-would\ndoubtless make life easier for copyrightholder plaintiffs.\nBut it would simultaneously increase the legal uncertainty\nthat surrounds the creation or development of a new\ntechnology capable of being put to infringing uses.\nInventors and entrepreneurs (in the garage, the dorm room,\nthe corporate lab, or the boardroom) would have to fear\n(and in many cases endure) costly and extensive trials when\nthey create, produce, or distribute the sort of information\ntechnology that can be used for copyright infringement.\nThey would often be left guessing as to how a court, upon\nlater review of the product and its uses, would decide when\nnecessarily rough estimates amounted to sufficient\nevidence. They would have no way to predict how courts\nwould weigh the respective values of infringing and\nnoninfringing uses; determine the efficiency and advisability\nof technological changes; or assess a product\xe2\x80\x99s potential\nfuture markets. The price of a wrong guess-even if it\ninvolves a good-faith effort to assess technical and\ncommercial viability-could be large statutory damages (not\nless than $750 and up to $30,000 per infringed work ). 17\nU.S.C. \xc2\xa7 504(c)(1). The additional risk and uncertainty\nwould mean a consequent additional chill of technological\ndevelopment.\nC\n\n528\n\n\x0cThe third question-whether a positive copyright impact\nwould outweigh any technology-related loss-I find the most\ndifficult of the three. I do not doubt that a more intrusive\nSony test would generally provide greater revenue security\nfor copyright holders. But it is harder to conclude that the\ngains on the copyright swings would exceed the losses on\nthe technology roundabouts.\nFor one thing, the law disfavors equating the two different\nkinds of gain and loss; rather, it leans in favor of protecting\ntechnology. As Sony itself makes clear, the producer of a\ntechnology which permits unlawful copying does not\nhimself engage in unlawful copying-a fact that makes the\nattachment of copyright liability to the creation,\nproduction, or distribution of the technology an\nexceptional thing. Moreover, Sony has been the law for\nsome time. And that fact imposes a serious burden upon\ncopyright holders like MGM to show a need for change in\nthe current rules of the game, including a more strict\ninterpretation of the test.\nIn any event, the evidence now available does not, in my\nview, make out a sufficiently strong case for change. To say\nthis is not to doubt the basic need to protect copyrighted\nmaterial from infringement. The Constitution itself stresses\nthe vital role that copyright plays in advancing the \xe2\x80\x9cuseful\nArts.\xe2\x80\x9d Art. I, \xc2\xa7 8, cl. 8. No one disputes that \xe2\x80\x9creward to the\nauthor or artist serves to induce release to the public of the\nproducts of his creative genius.\xe2\x80\x9d United States v.\nParamount Pictures, Inc., 334 U.S. 131, 158 (1948). And\ndeliberate unlawful copying is no less an unlawful taking of\nproperty than garden-variety theft. But these highly general\nprinciples cannot by themselves tell us how to balance the\ninterests at issue in Sony or whether Sony\xe2\x80\x99s standard needs\nmodification. And at certain key points, information is\nlacking.\nWill an unmodified Sony lead to a significant diminution in\nthe amount or quality of creative work produced? Since\n\n529\n\n\x0ccopyright\xe2\x80\x99s basic objective is creation and its revenue\nobjectives but a means to that end, this is the underlying\ncopyright question. And its answer is far from clear.\nUnauthorized copying likely diminishes industry revenue,\nthough it is not clear by how much. [citations to conflicting\nstudies of effect of file sharing on music sales].\nThe extent to which related production has actually and\nresultingly declined remains uncertain, though there is good\nreason to believe that the decline, if any, is not substantial.\nSee, e.g., M. Madden, Pew Internet & American Life\nProject, Artists, Musicians, and the Internet, p. 21, (Dec. 5,\n2004),\nhttp://www.pewinternet.org/pdfs/PIP_Artists.Musicians_\nReport.pdf (nearly 70% of musicians believe that file\nsharing is a minor threat or no threat at all to creative\nindustries); Benkler, Sharing Nicely: On Shareable Goods\nand the Emergence of Sharing as a Modality of Economic\nProduction, 114 Yale L. J. 273, 351-352 (2004) (\xe2\x80\x9cMuch of\nthe actual flow of revenue to artists-from performances and\nother sources-is stable even assuming a complete\ndisplacement of the CD market by peer-to-peer distribution\n\xe2\x80\xa6.[I]t would be silly to think that music, a cultural form\nwithout which no human society has existed, will cease to\nbe in our world [because of illegal file swapping]\xe2\x80\x9d).\nMore importantly, copyright holders at least potentially\nhave other tools available to reduce piracy and to abate\nwhatever threat it poses to creative production. As today\xe2\x80\x99s\nopinion makes clear, a copyright holder may proceed\nagainst a technology provider where a provable specific\nintent to infringe (of the kind the Court describes) is\npresent. Services like Grokster may well be liable under an\ninducement theory.\nIn addition, a copyright holder has always had the legal\nauthority to bring a traditional infringement suit against one\nwho wrongfully copies. Indeed, since September 2003, the\n\n530\n\n\x0cRecording Industry Association of America (RIAA) has\nfiled \xe2\x80\x9cthousands of suits against people for sharing\ncopyrighted material.\xe2\x80\x9d Walker, New Movement Hits\nUniversities: Get Legal Music, Washington Post, Mar. 17,\n2005, p. E1. These suits have provided copyright holders\nwith damages; have served as a teaching tool, making clear\nthat much file sharing, if done without permission, is\nunlawful; and apparently have had a real and significant\ndeterrent effect. [citations omitted]\nFurther, copyright holders may develop new technological\ndevices that will help curb unlawful infringement. Some\nnew technology, called \xe2\x80\x9cdigital \xe2\x80\x98watermarking\xe2\x80\x99\xe2\x80\x9d and \xe2\x80\x9cdigital\nfingerprint[ing],\xe2\x80\x9d can encode within the file information\nabout the author and the copyright scope and date, which\n\xe2\x80\x9cfingerprints\xe2\x80\x9d can help to expose infringers. [citations\nomitted]\nAt the same time, advances in technology have discouraged\nunlawful copying by making lawful copying (e.g.,\ndownloading music with the copyright holder\xe2\x80\x99s permission)\ncheaper and easier to achieve. Several services now sell\nmusic for less than $1 per song. (Walmart.com, for\nexample, charges $0.88 each.) Consequently, many\nconsumers initially attracted to the convenience and\nflexibility of services like Grokster are now migrating to\nlawful paid services (services with copying permission)\nwhere they can enjoy at little cost even greater convenience\nand flexibility without engaging in unlawful swapping. See\nWu, When Code Isn\xe2\x80\x99t Law, 89 Va. L.Rev. 679, 731-735\n(2003) (noting the prevalence of technological problems on\nunpaid swapping sites); K. Dean, P2P Tilts Toward\nLegitimacy, Wired News (Nov. 24, 2004), http://\nwww.wired.com/news/digiwood/0,1412,65836,00.html;\nMadden & Rainie, March 2005 Data Memo, supra, at 6-7\n(percentage of current downloaders who have used paid\nservices rose from 24% to 43% in a year; number using free\nservices fell from 58% to 41%).\n\n531\n\n\x0cThus, lawful music downloading services-those that charge\nthe customer for downloading music and pay royalties to\nthe copyright holder-have continued to grow and to\nproduce substantial revenue. See Brief for Internet Law\nFaculty as Amicus Curiae 5-20; Bruno, Digital\nEntertainment: Piracy Fight Shows Encouraging Signs\n(Mar. 5, 2005), available at LEXIS, News Library, Billboard\nFile (in 2004, consumers worldwide purchased more than\n10 times the number of digital tracks purchased in 2003;\nglobal digital music market of $330 million in 2004\nexpected to double in 2005); Press Release, Informa\nTelecoms & media, Steady Download Growth Defies P2P\n(global digital revenues will likely exceed $3 billion in 2010);\nAshton, [International Federation of the Phonographic\nIndustry] Predicts Downloads Will Hit the Mainstream,\nMusic Week, Jan. 29, 2005, p. 6 (legal music sites and\nportable MP3 players \xe2\x80\x9care helping to transform the digital\nmusic market\xe2\x80\x9d into \xe2\x80\x9can everyday consumer experience\xe2\x80\x9d).\nAnd more advanced types of non- music-oriented peer-topeer networks have also started to develop, drawing in part\non the lessons of Grokster.\nFinally, as Sony recognized, the legislative option remains\navailable. Courts are less well suited than Congress to the\ntask of \xe2\x80\x9caccommodat[ing] fully the varied permutations of\ncompeting interests that are inevitably implicated by such\nnew technology.\xe2\x80\x9d Sony, 464 U.S., at 431, 104 S.Ct. 774; see,\ne.g., Audio Home Recording Act of 1992, 106 Stat. 4237\n(adding 17 U.S.C., ch. 10); Protecting Innovation and Art\nWhile Preventing Piracy: Hearing Before the Senate\nCommittee on the Judiciary, 108th Cong., 2d Sess. (2004).\nI do not know whether these developments and similar\nalternatives will prove sufficient, but I am reasonably\ncertain that, given their existence, a strong demonstrated\nneed for modifying Sony (or for interpreting Sony\xe2\x80\x99s\nstandard more strictly) has not yet been shown. That fact,\nalong with the added risks that modification (or strict\n\n532\n\n\x0cinterpretation) would impose upon technological\ninnovation, leads me to the conclusion that we should\nmaintain Sony, reading its standard as I have read it. As so\nread, it requires affirmance of the Ninth Circuit\xe2\x80\x99s\ndetermination of the relevant aspects of the Sony question.\n***\nFor these reasons, I disagree with Justice GINSBURG, but\nI agree with the Court and join its opinion.\n3.4.4.1. Problems\nProblems\nFor each, state the possible theories of secondary liability for\ninfringement that could be used, if any, based only on the facts\ngiven. (inducement, vicarious, or Sony-style)\n1. A newspaper contains a classified ad section, a small subsection\nof which frequently features solicitations to trade copies of\ncopyrighted compact discs. Newspaper is sued.\n2. A developer sells software called StripIt that removes the\nrestrictions on movies purchased from the iTunes Store. Developer\nis sued.\n3. A developer sells software that records in an audio file all audio\noutput by one\xe2\x80\x99s computer. A web designer creates a popular, adsupported website featuring how-to guides on using the software to\nrecord internet radio broadcasts, some of which are copyrighted\nand do not authorize duplication. Developer is sued.\n4. Same as 3, but web designer is sued.\nAnswers\n1. A newspaper contains a classified ad section, a small subsection\nof which frequently features solicitations to trade copies of\ncopyrighted compact discs. Newspaper is sued.\n\n533\n\n\x0cVicarious liability is the most promising avenue. Vicarious\nliability, in the copyright infringement context, is liability for\nthe infringement of others when one has the right and\npractical ability to control that infringement. Here, the\nnewspaper has the right to decide which ads to print. Further,\nthe newspaper is certainly capable of screening ads for\nsolicitations to trade infringing copies. This case would\nessentially be a low-tech version of Napster, but where the\nability to screen for infringers is even easier.\nNote that solicitations to trade the compact discs themselves,\nthe actual discs bought at retail, would not form the basis of a\nsecondary infringement claim. There would be no copy at all\nmade in such circumstances. I\xe2\x80\x99m free to sell or give away\nbooks I no longer want, CDs that I don\xe2\x80\x99t want, or any other\narticle subject to copyright.\nYou may be tempted to cite inducement as a possibility here.\nBut the newspaper itself is not actively encouraging anyone to\ninfringe. The evidence of inducement in Grokster went to\nevidence that the companies themselves were encouraging\ninfringement - by marketing to infringers, advertising the\nutility of their produce to infringe, etc. There isn\xe2\x80\x99t any of that\nhere.\n2. A developer sells software called StripIt that removes the\nrestrictions on movies purchased from the iTunes Store. Developer\nis sued.\nContributory infringement, or what I\xe2\x80\x99ve been calling Sony-style\ninfringement, might be found here, depending on what other\nuses the software has. Cautionary note: there was no liability\nin Sony. So when I say Sony-style liability, I mean liability on\nthe ground discussed in Sony. Sony itself was not found liable\nunder what we\xe2\x80\x99re calling a Sony theory. Contributory\ninfringement is liability for merely placing a product on the\nmarket that is not capable substantial noninfringing uses. In\nother words, if your product is really only good for\n\n534\n\n\x0cinfringement, you can be liable for the illegal copying of those\nwho use it.\nHere, StripIt appears to be useful only to remove the\nprotections that prevent unauthorized copying of digital\nmovies purchased from iTunes. We\xe2\x80\x99d want to know, though,\nwhether it\xe2\x80\x99s capable of other uses. Further, we\xe2\x80\x99d want to\nknow how often the product is used to enable users to make\nfair use copies of movies they have bought. (There is another\nstatute, the controversial DMCA, that governs the intentional\ncircumvention of anti-copying measures.)\n3. A developer sells software that records in an audio file all audio\noutput by one\xe2\x80\x99s computer. A web designer creates a popular, adsupported website featuring how-to guides on using the software to\nrecord internet radio broadcasts, some of which are copyrighted\nand do not authorize duplication. Developer is sued.\nNo liability. There is no evidence here that the developer has\ndone anything to encourage anyone to use the product to\nmake illegal copies. It\xe2\x80\x99s doubtful therefore that there could be\nliability under an inducement theory. Nor is vicarious liability\na realistic possibility. The courts aren\xe2\x80\x99t going to require the\ndeveloper to change the program to monitor people\xe2\x80\x99s usage\nand route that information back to the developer. The\ndeveloper simply doesn\xe2\x80\x99t have the practical ability to control\nhow the product is used once people download it. Finally,\nthere almost certainly is no liability under a Sony theory. There\nare a great many uses for such a product that do not include\ncopying copyrighted material. Indeed, web designer\xe2\x80\x99s guides\ninclude information on recording noncopyrighted streams. So\neven if we restrict attention to copying streams, it would seem\nthe product is capable of substantial noninfringing uses. This\nis not to mention the other kinds of recordings a user could\nmake.\n4. Same as 3, but web designer is sued.\n\n535\n\n\x0cThe most promising ground here is inducement. Web\ndesigner hasn\xe2\x80\x99t released a product that makes copies. Rather,\nthe designer has encouraged others to make copies by telling\nthe how to do it. That some of the guides aren\xe2\x80\x99t for\ncopyrighted streams doesn\xe2\x80\x99t matter. Even if there is only one\nguide that instructs users on recording a copyrighted stream,\ndesigner might be held liable under an inducement theory - as\nthe designer might be argued to have actively encouraged the\nguide\xe2\x80\x99s readers to do what\xe2\x80\x99s in the guide: copy a copyrighted\nstream.\nProblem: Streamers\nLenny the law student is pretty good with computers. While task\navoiding, Lenny developed an application for recording streamed\naudio from the internet. Called Streamers, the program works as\nfollows. It assumes the user has certain software, not made by\nLenny, already installed, namely a web browser, a calendar\nprogram, RealPlayer (for playing streamed audio), and a program\ncalled WireTap. WireTap, made by another software company,\nrecords any sounds output by the computer. So, after hitting record\nin WireTap and listening or watching a stream on RealPlayer, the\naudio file created by WireTap will contain the audio of that stream\n(along with any other sounds the user happens to trigger when\nWireTap is recording). Because the raw sound is recorded and then\nre-compressed, the resulting audio file typically is a little lower\nquality than the original stream.\nStreamers works by coordinating these four applications. After\ntyping into Streamers a URL and a recording schedule, the\napplication puts the recordings into the user\xe2\x80\x99s calendar with an\nalarm. When the time for a recording arrives, the alarm is triggered,\nand Streamers launches the web browser, triggering the desired\nstream to play, and then launches WireTap to begin recording.\nWhen the stream is finished, recording ends, and Streamers\nconveniently moves the resulting audio file into iTunes where it is\nready for the user to listen to or put on an iPod. In this way, a user\ncan develop a whole library of streams and schedules so that with\n\n536\n\n\x0cno manual effort on the part of the user, he or she will always have\na library of his or her favorite streams.\nTo Lenny\xe2\x80\x99s surprise, shortly after posting his application,\nthousands of people downloaded it and began using it to keep upto-date libraries of their favorite NPR and commercial radio shows,\nmaking use of the online streams many radio stations provide.\nThough they already could have listened to these while sitting at\ntheir computers, many were eager to get these programs onto their\niPods or other portable players. A good many users had questions,\nand Lenny provided help over email for configuring Streamers to\nrecord various radio programs hosted on numerous websites.\nLenny comes to you, a well-known lawyer, with an email he has\njust received from VapidChannel Communications. The email\ndemands Lenny remove Streamers from distribution and destroy all\ncopies of the application and its source code. According to Vapid,\nLenny has \xe2\x80\x9cpromoted, encouraged, and enabled the illegal copying\nof Vapid\xe2\x80\x99s copyright protected programs.\xe2\x80\x9d The email went on, \xe2\x80\x9cIf\nyou do not comply with Our demands within ten days, Vapid will\nbe forced to file suit against You for copyright infringement and\nseek injunction and damages in an amount up to $300,000 per\nillegal copy.\xe2\x80\x9d\nThe letter further states that \xe2\x80\x9cYour application, Streamers, places\nyou in violation of the anti-circumvention provision of the Digital\nMillenium Copyright Act, 17 U.S.C. \xc2\xa7 1201, as it enables\nunauthorized copies of audio streams that have been effectively\nprotected against being downloaded.\xe2\x80\x9d\nLenny is scared, makes nothing for Streamers, which is a free\ndownload, but does not want to be intimidated. What can you tell\nLenny about his potential liability and what evidence, if any, might\nbe relevant to the case?\nDiscussion\nThis problem obviously calls for an application and extension of\nthe ideas in Grokster and Sony. L is not being threatened for making\nany copies of Vapid\xe2\x80\x99s copyrighted programs. Rather, Vapid\xe2\x80\x99s\ntheory must be that he is liable for the illegal copying by others\n\n537\n\n\x0cusing his program, Streamers. Called \xe2\x80\x9ccontributory infringement,\xe2\x80\x9d\nthis basis for liability is not found in the Copyright Act itself but is\na judicial doctrine meant to effectuate the Act\xe2\x80\x99s purposes.\nWe have identified three possible circumstances under which one\nmay be liable for the infringing acts of another. First, vicarious\nliability (think Napster) may be found where one has the ability and\nright to control the infringing acts of third parties but does not do\nso. Second, liability for inducement (think Grokster) attaches when\none \xe2\x80\x9cdistributes a device with the object of promoting its use to\ninfringe copyright, as shown by clear expression or other\naffirmative steps taken to foster infringement.\xe2\x80\x9d Third, mere\ndistribution, with no such expression or affirmative steps, may\nconstitute contributory infringement if the device is not capable of\nsignificant noninfringing use.\nA good answer here would run through these three possibilities.\nThere\xe2\x80\x99s clearly no control as there was in Napster, and so vicarious\nliability seems exceedingly unlikely. Inducement? Well, the facts did\nstate that L provided some assistance to users seeking to record\nshows. It is not clear whether and to what extent L helped in the\ncopying of copyrighted material. The problem asked what evidence\nmight be relevant to the case, and the content of L\xe2\x80\x99s customer\nsupport is likely important. If it can be shown that L provided no\nhelp toward what he knew to be infringing uses, then L can likely\navoid an inducement claim, and he won\xe2\x80\x99t have to defend the\nlegality of the acts of any particular users he helped.\nWhat about the third possibility (Sony)? Regardless of the support\nhe provided or steps he took, could L be liable simply because of\nthe infringement that Streamers makes possible? The question here\nwould center on how much non-infringing use Streamers either\npermits or, if Ginsburg\xe2\x80\x99s analysis rules the day, is likely actually to\noccur. L\xe2\x80\x99s lawyer would clearly want to establish the large number\nof potential noninfringing uses that could be made of Streamers.\nThink about the different kinds of evidence we could consider. The\nabundance of streams that do no forbid copying of this sort? Just\nbecause there may be many such streams does not mean that their\ncopying is a substantial part of the copying Streamers users actually\n\n538\n\n\x0cengage in. Maybe the other side will gather evidence concerning the\nproportion of Streamers-made copies that are authorized.\n(Remember in discussing Grokster when we asked whether the\npercentage of noncopyrighted files or copies was the relevant\nbenchmark for the Sony \xe2\x80\x9csignificant\xe2\x80\x9d benchmark.)\nBut even if Vapid can show that the vast majority of Streamersmade copies are of non-authorized streams, meaning streams that\nthe content owners would not allow to be copied, the analysis\nwould not stop there. Just because a content owner does not\nauthorize a copy does not mean that he or she has a valid legal\nclaim against the copier. If the content is not copyrighted to begin\nwith or if the copying is fair use, then there can be no infringement,\nand, thus, such copies cannot establish contributory infringement.\nRemember that one need not register a work to gain a copyright.\nYour blog postings, etc., those can all be subject to copyright\nprotection. Indeed, nearly all of the streams that Streamers users\ncopy are likely subject to copyright. And so, unless the owners of\nthose streams authorize copying, we have prima facie infringement.\nExactly how many streams authorize such copying is something\nwe\xe2\x80\x99d have to investigate. But as to the unauthorized streams: is\ncopying them with Streamers fair use if done (a) only to time shift\nor (b) to time shift and \xe2\x80\x9cdevice shift\xe2\x80\x9d (i.e., put the content on an\niPod even when the content owner wants me to pay to do so)?\nA very good answer here would discuss the fair use statute (looking\nto opinions interpreting it, like Suntrust Bank, for guidance) and\nexamine its factors. Sony, though, tells us how these factors resolve\nwith respect to television time-shifting, and it\xe2\x80\x99s clearly relevant to,\nif not dispositive of, the copying here. Though the fair use factors\nappear both here and in Sony, on their surface, pretty heavily to\nfavor the broadcasters, the fact in Sony that a user of a VCR is only\nshifting to a more convenient time the viewing of a program he or\nshe was invited to view free of charge pretty much overwhelmed\nthe analysis. The Court just didn\xe2\x80\x99t see anything wrong with that\nkind of copying in light of the purposes of copyright, and the\nstatutory factors that pointed the other way were deemed less\nimportant in this context.\n\n539\n\n\x0cAt first glance, one might think that Sony definitively answers the\nquestion here with regard to time shifting. However, Vapid could\nargue that time shifting is not fair use in this context, at least with\nrespect to streams which are available on demand on the internet.\nUnlike television broadcasting in the early 1980s, streams can be\nlistened to anytime one is sitting at the computer with the necessary\nsoftware. Time shifting is simply not as valuable or necessary here\nas it is to VCR users. What Streamers users are really doing, Vapid\nwill argue, is \xe2\x80\x9cspace shifting\xe2\x80\x9d or copying in order to convert the\nstream into a more versatile form that can be consumed in settings\nother than those for which the stream was designed (sitting in front\nof the computer scenarios). Vapid will assert that it can afford to\nput its content in free streams only because doing so drives traffic\nto its profit-generating businesses like commercial radio and paid\ndownloads. Space shifting directly compromises those revenues.\nA really great answer on this point would step through the fair use\nfactors with respect to space shifting, compare it with the time\nshifting analysis as we understand it from Sony, and then situate\nthat analysis within the broader purposes of the Copyright Act.\nThe few decisions that have dealt with this issue have been\ninconsistent. This is the most important issue, setting the DMCA\nprovision aside for a moment, in this case. If space shifting is\ninfringement, then we\xe2\x80\x99ll have a very hard time defending Streamers.\nOk, on to the DMCA. The provision cited in the letter is the socalled anti-circumvention provision. It prohibits the circumventing\nof \xe2\x80\x9ctechnological measures\xe2\x80\x9d intended to prevent copying of\ncopyrighted works. Further, it prohibits distribution of devices or\nservices that (1) are designed primarily to accomplish such\ncircumvention, (2) have only limited other uses, or (3) are\npromoted as enabling circumvention. What\xe2\x80\x99s troublesome is that\nthis provision would seem to prohibit one from making a fair use\ncopy if doing so requires getting around some protective measure.\nFor example, suppose I wanted to make what is concededly a fair\nuse copy of a DRM-protected iTunes Store purchase. Under the\nDMCA, I\xe2\x80\x99m prohibited from making a copy by circumventing the\nDRM, even though under copyright law, I\xe2\x80\x99m permitted to make a\n\n540\n\n\x0ccopy. And here, even if we conclude, per the above, that time and\nspace shifting are fair uses of these streams, getting around a\ntechnological measure meant to prevent copying might still be a\nDMCA violation - even though it\xe2\x80\x99s not a copyright violation.\nThis might go too far. After all, if the law gives the power to\ncontent producers to disable fair uses through legally protected\n(even if technically flawed) technological means, then fair use is a\ndead letter. And fair use was supposed to be a critical part of the\ngreat First Amendment - Copyright balance.\nSo what would an answer look like here? Well, I\xe2\x80\x99d want you to start\nwith the text of the statute. Does Streamers violate its terms? Does\nit circumvent by disabling the protections inherent in non-saveable\nstreams or does it make use of something more like the analog\nhole? See here, e.g.: http://volokh.com/posts/1176397745.shtml\nDoes your conclusion depend on your interpretation of the text?\nWhich of those interpretations are sensible? Are the harshest\ninterpretations unconstitutional?\nThe DMCA portion of this question was meant to expose you to\nthis very tricky area of law and would not have been at all fair on a\nreal test. But I do hope that you\xe2\x80\x99ll give it some thought. Interesting\ntrivia: as a law student I wrote an app called Streamers that works\nexactly as described in this problem.\n3.5. Publicity Rights\nParks v. La Face Records, 76 F. Supp. 2d 775 (E.D.\nMich. 1999).\nGregory J. Reed,Gregory J. ReedAssoc., Detroit, MI, for\nplaintiff.\nJoseph M. Beck, Kilpatrick, Stockton, Atlanta, GA, Blanche\nB. Cook, Philip B. Phillips, Miller, Canfield, Detroit, MI,\nConrad L. Mallett, Jr., Miller, Canfield, Detroit, MI, for\ndefendants.\nORDER DENYING PLAINTIFF\xe2\x80\x99S MOTION FOR\nSUMMARY JUDGMENT AND INJUNCTIVE RELIEF\n\n541\n\n\x0cAND GRANTING DEFENDANTS\xe2\x80\x99 MOTION FOR\nSUMMARY JUDGMENT\nHACKETT, District Judge.\nPlaintiff Rosa Parks is a well-known public figure who has\nbeen recognized as an international symbol of freedom,\nhumanity, dignity and strength for over 43 years. Plaintiff\xe2\x80\x99s\nnotoriety arose from her heroic stance against racial\ninequality in the South when on December 1, 1955, in\nMontgomery, Alabama, she refused to give up her seat to a\nwhite passenger and move to the back of the bus. This one\ndefiant act precipitated a 381-day bus boycott that ended\nsegregation on public transportation and ultimately sparked\nthe Civil Rights Movement of the 1960\xe2\x80\x99s. The abovecaptioned case presents a conflict between plaintiff\xe2\x80\x99s right\nto protect her celebrated name and the First Amendment\nright of others to use her name in an expressive work.\nSpecifically at issue is whether plaintiff can prevent the use\nof her name as the title of a rap song written, performed,\nmarketed and distributed by defendants. Now before the\ncourt are the parties\xe2\x80\x99 cross-motions for summary judgment.\nOral argument was heard on November 4, 1999. For the\nfollowing reasons, plaintiff\xe2\x80\x99s motion shall be denied, and\nsummary judgment shall be granted regrettably in\ndefendants\xe2\x80\x99 favor.\nI. FACTS\nThe facts relevant to disposition of this matter are few and\nundisputed. Defendants are entertainers and producers of\npopular music. Specifically, Kenny Edmonds and Antonio\nReid1 are recording artists and the members of the musical\ngroup Outkast, whose services are contractually rendered to\nLaFace Records. LaFace is a record company engaged in\n\nAlthough named in the caption of plaintiff\xe2\x80\x99s complaint and other pleadings,\nEdmonds and Reid were never served with process, and, therefore, are not parties\nto this litigation in their individual capacities.\n1\n\n542\n\n\x0cthe business of creating, manufacturing and distributing\nmusical sound recordings. LaFace\xe2\x80\x99s recordings are\nmanufactured and distributed by a variety of entities under\nthe auspices of Arista Records and BMG Entertainment.\nDuring the week of September 28, 1998, defendants\nreleased Outkast\xe2\x80\x99s album called Aquemini, which included\na total of 15 songs. The album\xe2\x80\x99s first single release was\ntrack number three, a song entitled \xe2\x80\x9cRosa Parks.\xe2\x80\x9d Plaintiff\nis not mentioned by name in the lyrics, and the song is not\nabout her or the Civil Rights Movement. However, the\nchorus includes the words \xe2\x80\x9cAh, ha, hush that fuss.\nEverybody move to the back of the bus,\xe2\x80\x9d which are\nrepeated a total of ten times over the course of the work.\nThe band Outkast, the album Aquemini, and the song\n\xe2\x80\x9cRosa Parks\xe2\x80\x9d have all enjoyed a great degree of critical\nacclaim. Aquemini has sold over two million copies (double\nplatinum status), and \xe2\x80\x9cRosa Parks\xe2\x80\x9d has enjoyed long-lasting\nsuccess on the Billboard Charts. In fact, Outkast received\ntheir first-ever Grammy nomination for the song.\nConsequently, defendants have advertised and promoted\nthe Aquemini album, the hit single \xe2\x80\x9cRosa Parks\xe2\x80\x9d and its\nGrammy nomination in ways that are customary in the\nmusic business, such as in print advertisements, in a music\nvideo, and with stickers affixed to the front of each cassette\nand compact disc jewel case indicating that the album\ncontains \xe2\x80\x9cThe Hit Singles \xe2\x80\x98Rosa Parks\xe2\x80\x99 And \xe2\x80\x98Skew It On\nThe Bar-B.\xe2\x80\x99\xe2\x80\x9d2\nNo legal relationship of any kind exists between plaintiff\nand defendants, and defendants did not attempt to secure\nplaintiff\xe2\x80\x99s permission to use her name prior to the release of\ntheir Aquemini album. Plaintiff, however, opposes\ndefendants\xe2\x80\x99 use of her name without compensation. In\nparticular, plaintiff is offended by the use of her name in\n\n2\n\nThe sticker also states in smaller print: \xe2\x80\x9cParental Advisory. Explicit Content.\xe2\x80\x9d\n\n543\n\n\x0cassociation with music that contains, according to plaintiff,\n\xe2\x80\x9cprofanity, racial slurs, and derogatory language directed at\nwomen.\xe2\x80\x9d To date, defendants have continued to use\nplaintiff\xe2\x80\x99s name on and in connection with the song \xe2\x80\x9cRosa\nParks\xe2\x80\x9d and the album Aquemini. Accordingly, plaintiff filed\nthis lawsuit seeking monetary and injunctive relief. The\ncourt now turns to the parties\xe2\x80\x99 pending motions.\nII. STANDARD OF REVIEW\nFederal Rule of Civil Procedure 56(c) empowers the court\nto render summary judgment \xe2\x80\x9cforthwith if the pleadings,\ndepositions, answers to interrogatories and admissions on\nfile, together with the affidavits, if any, show that there is\nno genuine issue as to any material fact and that the moving\nparty is entitled to judgment as a matter of law.\xe2\x80\x9d See\nF.D.I.C. v. Alexander, 78 F.3d 1103, 1106 (6th Cir.1996).\nThe Supreme Court has affirmed the court\xe2\x80\x99s use of\nsummary judgment as an integral part of the fair and\nefficient administration of justice. The procedure is not a\ndisfavored procedural shortcut. Celotex Corp. v. Catrett,\n477 U.S. 317, 327, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986);\nsee also Kutrom Corp. v. City of Center Line, 979 F.2d\n1171, 1174 (6th Cir.1992).\nThe standard for determining whether summary judgment\nis appropriate is \xe2\x80\x9c\xe2\x80\x98whether the evidence presents a\nsufficient disagreement to require submission to a jury or\nwhether it is so one-sided that one party must prevail as a\nmatter of law.\xe2\x80\x99\xe2\x80\x9d Winningham v. North Am. Resources\nCorp., 42 F.3d 981, 984 (6th Cir.1994) (citing Booker v.\nBrown & Williamson Tobacco Co., 879 F.2d 1304, 1310\n(6th Cir.1989)). The evidence and all inferences therefrom\nmust be construed in the light most favorable to the nonmoving party. Matsushita Elec. Indus. Co., Ltd. v. Zenith\nRadio Corp., 475 U.S. 574, 587, 106 S.Ct. 1348, 89 L.Ed.2d\n538 (1986); Enertech Elec., Inc. v. Mahoning County\nComm\xe2\x80\x99rs, 85 F.3d 257, 259 (6th Cir.1996); Wilson v. Stroh\nCompanies, Inc., 952 F.2d 942, 945 (6th Cir.1992). \xe2\x80\x9c[T]he\n\n544\n\n\x0cmere existence of some alleged factual dispute between the\nparties will not defeat an otherwise properly supported\nmotion for summary judgment; the requirement is that\nthere be no genuine issue of material fact.\xe2\x80\x9d Anderson v.\nLiberty Lobby, Inc., 477 U.S. 242, 247-48, 106 S.Ct. 2505,\n91 L.Ed.2d 202 (1986); see also Hartleip v. McNeilab, Inc.,\n83 F.3d 767, 774 (6th Cir.1996).\nIf the movant establishes by use of the material specified in\nRule 56(c) that there is no genuine issue of material fact\nand that it is entitled to judgment as a matter of law, the\nopposing party must come forward with \xe2\x80\x9cspecific facts\nshowing that there is a genuine issue for trial.\xe2\x80\x9d First Nat\xe2\x80\x99l\nBank v. Cities Serv. Co., 391 U.S. 253, 270, 88 S.Ct. 1575,\n20 L.Ed.2d 569 (1968); see also Adams v. Philip Morris,\nInc., 67 F.3d 580, 583 (6th Cir.1995). Mere allegations or\ndenials in the non-movant\xe2\x80\x99s pleadings will not meet this\nburden. Anderson, 477 U.S. at 248, 106 S.Ct. 2505. Further,\nthe non-moving party cannot rest on its pleadings to avoid\nsummary judgment. It must support its claim with some\nprobative evidence. Kraft v. United States, 991 F.2d 292,\n296 (6th Cir.), cert. denied, 510 U.S. 976, 114 S.Ct. 467, 126\nL.Ed.2d 419 (1993).\nIII. DISCUSSION\nA. Right of Publicity Claim (Count I)\nIn Count I of the complaint, plaintiff alleges that\ndefendants\xe2\x80\x99 use of her name violates her common law right\nof publicity. The right of publicity protects a celebrity\xe2\x80\x99s\ncommercial interest in her identity. \xe2\x80\x9cThe theory of the right\nis that a celebrity\xe2\x80\x99s identity can be valuable in the\npromotion of products, and the celebrity has an interest\nthat may be protected from the unauthorized commercial\nexploitation of that identity.\xe2\x80\x9d Carson v. Here\xe2\x80\x99s Johnny\nPortable Toilets, Inc., 698 F.2d 831, 835 (6th Cir.1983)\n(emphasis added). The right of publicity, however, does not\n\n545\n\n\x0cauthorize a celebrity to prevent the use of her name in an\nexpressive work protected by the First Amendment. 4 J.\nThomas McCarthy, McCarthy on Trademarks and Unfair\nCompetition ss 28:40-28:41 (4th ed.1999); see also Hicks v.\nCasablanca Records, 464 F.Supp. 426, 430 (S.D.N.Y.1978)\n(\xe2\x80\x9c[M]ore so than posters, bubble gum cards, or some other\nsuch \xe2\x80\x98merchandise,\xe2\x80\x99 books and movies are vehicles through\nwhich ideas and opinions are disseminated and, as such,\nhave enjoyed certain constitutional protections, not\ngenerally accorded \xe2\x80\x98merchandise.\xe2\x80\x99 \xe2\x80\x9c); Paulsen v. Personality\nPosters, Inc., 59 Misc.2d 444, 450, 299 N.Y.S.2d 501, 508\n(1968) (\xe2\x80\x9c[E]ven where the \xe2\x80\x98right of publicity\xe2\x80\x99 is recognized,\nit does not invest a prominent person with the right to\nexploit financially every public use of name or picture.\nWhat is made actionable is the unauthorized use for\nadvertising purposes in connection with the sale of a\ncommodity.\xe2\x80\x9d).3 Clearly, \xe2\x80\x9c[m]usic, as a form of expression\nand communication, is protected under the First\nAmendment.\xe2\x80\x9d Ward v. Rock Against Racism, 491 U.S. 781,\n790, 109 S.Ct. 2746, 105 L.Ed.2d 661 (1989); see also\nHurley v. Irish-American Gay, Lesbian and Bisexual\nGroup, 515 U.S. 557, 569, 115 S.Ct. 2338, 132 L.Ed.2d 487\n(1995) (paintings, music and poetry are \xe2\x80\x9cunquestionably\nshielded\xe2\x80\x9d by the First Amendment).\nSimilarly, titles of artistic works that use the names of\npublic figures and celebrities, like the works themselves, are\nentitled to First Amendment protection from right of\npublicity claims:\n\nCf. Abdul-Jabbar v. General Motors Corp., 85 F.3d 407 (9th Cir.1996) (involved\nuse of basketball player\xe2\x80\x99s name in an automobile advertisement); Winterland\nConcessions Co. v. Sileo, 528 F.Supp. 1201 (N.D.Ill.1981), aff\xe2\x80\x99d, 830 F.2d 195\n(7th Cir.1987) (involved the use of names of entertainers and musical groups on tshirts); Uhlaender v. Henricksen, 316 F.Supp. 1277 (D.Minn.1970) (involved use\nof major league baseball players\xe2\x80\x99 names in connection with a board game); Palmer\nv. Schonhorn Enter., Inc., 96 N.J.Super. 72, 232 A.2d 458 (1967) (involved use of\na golf player\xe2\x80\x99s name and likeness in connection with a golf game).\n3\n\n546\n\n\x0cTitles, like the artistic works they\nidentify, are of a hybrid nature,\ncombining artistic expression and\ncommercial promotion. The title of a\nmovie may be both an integral element\nof the film-maker\xe2\x80\x99s expression as well\nas a significant means of marketing the\nfilm to the public. The artistic and\ncommercial elements of titles are\ninextricably intertwined. Film-makers\nand authors frequently rely on wordplay, ambiguity, irony, and allusion in\ntitling their works. Furthermore, their\ninterest in freedom of artistic\nexpression is shared by their audience.\nThe subtleties of a title can enrich a\nreader\xe2\x80\x99s or a viewer\xe2\x80\x99s understanding of\na work.\nRogers v. Grimaldi, 875 F.2d 994, 998 (2d Cir.1989).\nFurthermore, no publicity claim exists when a celebrity\xe2\x80\x99s\nname is used in advertisements for a work protected by the\nFirst Amendment. See, e.g., Guglielmi v. Spelling-Goldberg\nProds., 25 Cal.3d 860, 873, 160 Cal.Rptr. 352, 603 P.2d 454,\n462 (1979) (Bird, C.J., concurring) (\xe2\x80\x9cSince the use of\nValentino\xe2\x80\x99s name and likeness in the film was not an\nactionable infringement of Valentino\xe2\x80\x99s right of publicity,\nthe use of his identity in advertisements for the film is\nsimilarly not actionable.\xe2\x80\x9d).\nThe right of publicity is therefore inapplicable under the\nFirst Amendment if the content of an expressive work\nbears any relationship to the use of a celebrity\xe2\x80\x99s name.\nRogers, 875 F.2d at 1004 (right of publicity unavailable\nunless use of celebrity\xe2\x80\x99s name is \xe2\x80\x9cwholly unrelated\xe2\x80\x9d to the\nwork). In addition, the right of publicity does not bar the\nuse of a celebrity\xe2\x80\x99s name in a title as long as the item is a\nliterary work and not \xe2\x80\x9c\xe2\x80\x98simply a disguised commercial\nadvertisement for the sale of goods or services.\xe2\x80\x99\xe2\x80\x9d Id.\n\n547\n\n\x0c(quoting Frosch v. Grosset & Dunlap, Inc., 75 A.D.2d 768,\n769, 427 N.Y.S.2d 828, 829 (1980)).\nIn this case, plaintiff repeatedly contends that defendants\xe2\x80\x99\n\xe2\x80\x9cRosa Parks\xe2\x80\x9d song is not expressly \xe2\x80\x9cabout\xe2\x80\x9d her or her civil\nrights efforts, concluding that the song\xe2\x80\x99s title is \xe2\x80\x9cunrelated\xe2\x80\x9d\nto its content and must thus have been selected \xe2\x80\x9csolely to\nattract attention.\xe2\x80\x9d The court finds plaintiff\xe2\x80\x99s argument\nunpersuasive and unsupportable. There can be no\nreasonable dispute that Rosa Parks is universally known for\nand commonly associated with her refusal in late 1955 to\nobey the segregation laws in Montgomery, Alabama and\n\xe2\x80\x9cmove to the back of the bus.\xe2\x80\x9d The song at issue makes\nunmistakable reference to that symbolic act a total of ten\ntimes. Admittedly, the song is not about plaintiff in a\nstrictly biographical sense, but it need not be. Rather,\ndefendants\xe2\x80\x99 use of plaintiff\xe2\x80\x99s name, along with the phrase\n\xe2\x80\x9cmove to the back of the bus,\xe2\x80\x9d is metaphorical and\nsymbolic. As a matter of law, this obvious relationship\nbetween the content of the song and its title bearing\nplaintiff\xe2\x80\x99s name renders the right of publicity inapplicable.\nMoreover, that plaintiff (and even the court) may find\ndefendants\xe2\x80\x99 music \xe2\x80\x9cprofane and vulgar\xe2\x80\x9d and not regard it as\nartistically serious is of no consequence:\nIt is fundamental that courts may not\nmuffle expression by passing judgment\non its skill or clumsiness, its sensitivity\nor coarseness; nor on whether it pains\nor pleases. It is enough that the work\nis a form of expression \xe2\x80\x9cdeserving of\nsubstantial\nfreedom\nboth\nas\nentertainment and as a form of social\nand literary criticism.\xe2\x80\x9d\nUniversity of Notre Dame Du Lac v. Twentieth CenturyFox Film Corp., 22 A.D.2d 452, 458, 256 N.Y.S.2d 301,\n307,aff\xe2\x80\x99d, 15 N.Y.2d 940, 259 N.Y.S.2d 832, 207 N.E.2d\n\n548\n\n\x0c508 (1965). Given that the court may not \xe2\x80\x9cpass on literary\ncategories, or literary judgment,\xe2\x80\x9d defendants\xe2\x80\x99 song enjoys\nFirst Amendment protection as long as it is a \xe2\x80\x9c[musical]\nwork and not simply a disguised commercial advertisement\nfor the sale of goods or services.\xe2\x80\x9d Frosch, 75 A.D.2d at\n769, 427 N.Y.S.2d at 829 (holding that right of publicity did\nnot apply to book entitled \xe2\x80\x9cMarilyn\xe2\x80\x9d and rejecting alleged\ndistinction between a \xe2\x80\x9cbiography\xe2\x80\x9d about Marilyn Monroe\nand \xe2\x80\x9cfiction\xe2\x80\x9d). Because the necessary linkage between title\nand content is easily satisfied here, plaintiff would be hardpressed to demonstrate that defendants\xe2\x80\x99 use of her name as\nthe title to their song is \xe2\x80\x9csimply a disguised commercial\nadvertisement\xe2\x80\x9d to sell a product, especially considering the\nsong has received widespread acclaim and was nominated\nfor a Grammy Award. This result is not altered by\ndefendants\xe2\x80\x99 promotion of their album and hit single\nbecause the fundamental right to free expression would be\nillusory if defendants were permitted to entitle their song\n\xe2\x80\x9cRosa Parks,\xe2\x80\x9d but not advertise it to the public. The law\nimposes no such artificial limitation. See, e.g., Groden v.\nRandom House, Inc., 61 F.3d 1045, 1050-51 (2d Cir.1995)\n(use of author\xe2\x80\x99s photograph to promote critical work did\nnot infringe right of publicity); Guglielmi, 25 Cal.3d at 873,\n160 Cal.Rptr. 352, 603 P.2d at 462 (\xe2\x80\x9cIt would be illogical to\nallow respondents to exhibit the film but effectively\npreclude any advance discussion or promotion of their\nlawful enterprise.\xe2\x80\x9d); Namath v. Sports Illustrated, 48\nA.D.2d 487, 488, 371 N.Y.S.2d 10, 11 (1975), aff\xe2\x80\x99d, 39\nN.Y.2d 897, 386 N.Y.S.2d 397, 352 N.E.2d 584 (1976)\n(\xe2\x80\x9cThe use of plaintiff\xe2\x80\x99s photograph was merely incidental\nadvertising of defendants\xe2\x80\x99 magazine in which plaintiff had\nearlier been properly and fairly depicted.\xe2\x80\x9d).\nPlaintiff also contends that because her name was not used\nin the news, to educate, for scholarly purposes or as a\nparody, defendants\xe2\x80\x99 use is not protected by the First\nAmendment. However, the Supreme Court has expressly\n\n549\n\n\x0crejected such a notion and held that entertainment is\nentitled to the same constitutional protection as the\nexposition of ideas: \xe2\x80\x9cThe line between the informing and\nthe entertaining is too elusive for the protection of the\nbasic right.\xe2\x80\x9d Winters v. New York, 333 U.S. 507, 510, 68\nS.Ct. 665, 92 L.Ed. 840 (1948). Next, plaintiff incorrectly\nargues that First Amendment concerns are not implicated\nhere because defendants\xe2\x80\x99 use of plaintiff\xe2\x80\x99s name was\nunnecessary and done only to sell their album.\nIf this analysis were used to determine\nwhether an expression is entitled to\nconstitutional protection, grave harm\nwould result. Courts would be required\nnot merely to determine whether there\nis some minimal relationship between\nthe expression and the celebrity, but to\ncompel the author to justify the use of\nthe celebrity\xe2\x80\x99s identity. Only upon\nsatisfying a court of the necessity of\nweaving the celebrity\xe2\x80\x99s identity into a\nparticular publication would the\nshadow of liability and censorship\nfade. Such a course would inevitably\nchill the exercise of free speech\nlimiting not only the manner and form\nof expression but the interchange of\nideas as well.\nGuglielmi, 25 Cal.3d at 869, 160 Cal.Rptr. 352, 603 P.2d at\n460 (citation omitted).\nIn her final attempt to convince the court that the First\nAmendment does not shield defendants from liability on\nher publicity claim, plaintiff states: \xe2\x80\x9cIf Defendants [sic]\nposition is carried forward, then the Ku Klux Klan,\nskinheads or any race supremacist group can exploit the\nnames of others.\xe2\x80\x9d Indeed, the possibly offensive use by\nsuch groups of a celebrity\xe2\x80\x99s name is exactly the type of\n\n550\n\n\x0cspeech protected by the First Amendment, which would be\na poor refuge for free expression if public figures could\ncensor the use of their names whenever they found the\nspeech to be distasteful. To the contrary, the First\nAmendment empowers the audience to regulate expressive\nspeech. \xe2\x80\x9c[P]rominence invites creative comment. Surely,\nthe range of free expression would be meaningfully reduced\nif prominent persons in the present and recent past were\nforbidden topics for the imaginations of authors.\xe2\x80\x9d\nGuglielmi, 25 Cal.3d at 869, 160 Cal.Rptr. 352, 603 P.2d at\n460. Thus, plaintiff\xe2\x80\x99s argument that this is \xe2\x80\x9csimply a\nproperty case\xe2\x80\x9d is offensive to the First Amendment.\nAccordingly, because the title \xe2\x80\x9cRosa Parks\xe2\x80\x9d is not \xe2\x80\x9cwholly\nunrelated\xe2\x80\x9d to defendants\xe2\x80\x99 song, and because the title is the\nname of an expressive work and not a disguised\ncommercial for a product, the right of publicity does not\napply to the undisputed facts of this case, which\nnecessitates dismissal of Count I in plaintiff\xe2\x80\x99s complaint.\nB. Lanham Act and State Law Unfair Competition Claims\n(Counts II and V)\nPlaintiff also raises a claim under the Lanham Act, 15\nU.S.C. s 1125 (Count II), and a related state law unfair\ncompetition claim (Count V). Section 1125(a)(1)(A)\nprovides:\nAny person who, on or in connection\nwith any goods or services, or any\ncontainer for goods, uses in commerce\nany word, term, name, symbol, or\ndevice, or any combination thereof, or\nany false designation of origin, false or\nmisleading description of fact, or false\nor misleading representation of fact,\nwhich is likely to cause confusion, or\nto cause mistake, or to deceive as to\nthe\naffiliation,\nconnection,\nor\n\n551\n\n\x0cassociation of such person with\nanother person, or as to the origin,\nsponsorship, or approval of his or her\ngoods, services, or commercial\nactivities by another person, \xe2\x80\xa6 shall\nbe liable in a civil action by any person\nwho believes that he or she is or is\nlikely to be damaged by such act.\nLike the right of publicity, the Lanham Act ordinarily\napplies to commercial transactions involving ordinary\ngoods and services, not expressive works in which First\nAmendment concerns are paramount. Thus, even if the\nlegitimate goals of the Lanham Act and state unfair\ncompetition laws in preventing consumer confusion are\nimplicated by the undisputed facts of this case, they are\noutweighed as a matter of law by defendants\xe2\x80\x99 right to\nfreedom of expression.\nThe court is well aware that \xe2\x80\x9c[p]oetic license is not without\nlimits.\xe2\x80\x9d Rogers v. Grimaldi, 875 F.2d 994, 997 (2d\nCir.1989). Nonetheless,\nin general the [Lanham] Act should be\nconstrued to apply to artistic works\nonly where the public interest in\navoiding\nconsumer\nconfusion\noutweighs the public interest in free\nexpression. In the context of allegedly\nmisleading titles using a celebrity\xe2\x80\x99s\nname, that balance will normally not\nsupport application of the Act unless\nthe title has no artistic relevance to the\nunderlying work whatsoever, or, if it\nhas some artistic relevance, unless the\ntitle explicitly misleads as to the source\nor the content of the work.\nId. at 999 (emphasis added).\n\n552\n\n\x0cAs discussed above, the direct artistic relevance between\nthe title \xe2\x80\x9cRosa Parks\xe2\x80\x9d and the content of defendants\xe2\x80\x99 song\nis so obvious that the matter is not open to reasonable\ndebate. Furthermore, it is abundantly clear that the title\ndoes not \xe2\x80\x9cexplicitly\xe2\x80\x9d mislead as to source or content.\nExamples of blatantly misleading titles might include:\n\xe2\x80\x9cNimmer on Copyright,\xe2\x80\x9d \xe2\x80\x9cJane Fonda\xe2\x80\x99s Workout Book,\xe2\x80\x9d a\ntitle \xe2\x80\x9cexplicitly signifying endorsement, such as the phrase\nin a subtitle \xe2\x80\x98an authorized biography,\xe2\x80\x99\xe2\x80\x9d or \xe2\x80\x9cThe True Life\nStory of Ginger and Fred.\xe2\x80\x9dId. at 999-1000. Where such\novert references are used in a title and are false as applied\nto the underlying work, the consumer\xe2\x80\x99s interest in avoiding\ndeception might warrant application of the Lanham Act.\nMany titles, however, include a wellknown name without any overt\nindication\nof\nauthorship\nor\nendorsement-for example, the hit song\n\xe2\x80\x9cBette Davis Eyes\xe2\x80\x9d and the recent film\n\xe2\x80\x9cCome Back to the Five and Dime,\nJimmy Dean, Jimmy Dean.\xe2\x80\x9dTo some\npeople, these titles might implicitly\nsuggest that the named celebrity had\nendorsed the work or had a role in\nproducing it. Even if that suggestion is\nfalse, the title is artistically relevant to\nthe work. In these circumstances, the\nslight risk that such use of a celebrity\xe2\x80\x99s\nname might implicitly suggest\nendorsement or sponsorship to some\npeople is outweighed by the danger of\nrestricting artistic expression, and the\nLanham Act is not applicable.\nSimilarly, \xe2\x80\xa6 many titles with a\ncelebrity\xe2\x80\x99s name make no explicit\nstatement that the work is about that\nperson in any direct sense; the\nrelevance of the title may be oblique\n\n553\n\n\x0cand may become clear only after\nviewing or reading the work. As to\nsuch titles, the consumer interest in\navoiding deception is too slight to\nwarrant application of the Lanham\nAct.Though consumers frequently\nlook to the title of a work to determine\nwhat it is about, they do not regard\ntitles of artistic works in the same way\nas the names of ordinary commercial\nproducts\xe2\x80\xa6. [M]ost consumers are well\naware that they cannot judge a book\nsolely by its title any more than by its\ncover.\nId. (emphasis added) (citations omitted).\nBy entitling their song \xe2\x80\x9cRosa Parks,\xe2\x80\x9d defendants made no\nexplicit representation that their work was endorsed by or\naffiliated with plaintiff.4 Nevertheless, plaintiff contends\nthat defendants\xe2\x80\x99 use of her name on the cover of their\nalbum creates a grave likelihood of confusion because she\nrecently licensed the use of her name in connection with an\nalbum of gospel recordings entitled \xe2\x80\x9cVerity Records\nPresents: A Tribute to Mrs. Rosa Parks.\xe2\x80\x9d To support her\nclaim of likelihood of confusion, plaintiff submitted\napproximately 20 affidavits from consumers who were\nallegedly confused as to the source or content of\ndefendants\xe2\x80\x99 album. However, plaintiff\xe2\x80\x99s anecdotal evidence,\nassuming its validity, indicates at most that some members\nof the public might draw the incorrect inference that\nBy contrast, in Cher v. Forum International, Ltd., 692 F.2d 634 (9th Cir.1982),\ncert. denied, 462 U.S. 1120, 103 S.Ct. 3089, 77 L.Ed.2d 1350 (1983), relied upon\nby plaintiff, the defendant explicitly misrepresented that Cher had granted an\n\xe2\x80\x9cexclusive\xe2\x80\x9d interview and endorsed the magazine. Similarly, in National Bank of\nCommerce v. Shaklee Corp., 503 F.Supp. 533 (W.D.Tex.1980), the plaintiff\xe2\x80\x99s\nname was used without permission in an explicit \xe2\x80\x9cendorsement\xe2\x80\x9d of products, and\nin Fairfield v. American Photocopy Equipment Co., 138 Cal.App.2d 82, 291 P.2d\n194 (1955), the defendant explicitly misrepresented that the plaintiff was a\n\xe2\x80\x9csatisfied user\xe2\x80\x9d of defendant\xe2\x80\x99s products.\n4\n\n554\n\n\x0cplaintiff had some involvement with defendants\xe2\x80\x99 album.\n\xe2\x80\x9cBut that risk of misunderstanding, not engendered by any\novert claim in the title, is so outweighed by the interests in\nartistic expression as to preclude application of the Lanham\nAct.\xe2\x80\x9dId. at 1001; see also DeClemente v. Columbia Pictures\nIndus., Inc., 860 F.Supp. 30, 52 (E.D.N.Y.1994) (\xe2\x80\x9c[E]ven if\nthe plaintiff\xe2\x80\x99s allegations of secondary meaning and\nconsumer confusion are true, the defendants\xe2\x80\x99 first\namendment interest in naming their films outweighs the\nplaintiff\xe2\x80\x99s and even the public\xe2\x80\x99s interest in preventing\nconsumer confusion.\xe2\x80\x9d).5\nMoreover, defendants\xe2\x80\x99 album and its packaging\nunequivocally identify defendants as the source of the\nalbum. \xe2\x80\x9cThe most common and effective means of\napprising intending purchasers of the source of goods is a\nprominent disclosure on the container, package, wrapper,\nor label of the manufacturer\xe2\x80\x99s or trader\xe2\x80\x99s name \xe2\x80\xa6 [and\nwhen] that is done, there is no basis for a charge of unfair\ncompetition.\xe2\x80\x9d Versa Prods. Co., Inc. v. Bifold Co. (Mfg.)\nLtd., 50 F.3d 189, 203 (3d Cir.), cert. denied, 516 U.S. 808,\n116 S.Ct. 54, 133 L.Ed.2d 19 (1995). In other words, \xe2\x80\x9cthe\nplaintiff\xe2\x80\x99s right can be protected sufficiently by requiring\nthe defendant\xe2\x80\x99s [products] to be clearly marked so as to\nindicate unmistakably that they are defendant\xe2\x80\x99s and not the\nplaintiff\xe2\x80\x99s goods.\xe2\x80\x9d Flagg Mfg. Co. v. Holway, 178 Mass. 83,\n91, 59 N.E. 667, 667 (1901). Given the prominent\nappearance of defendant Outkast\xe2\x80\x99s name on their album,\nthere can be no likelihood of confusion under the Lanham\n\nFurthermore, in conventional \xe2\x80\x9cproduct\xe2\x80\x9d trademark cases, \xe2\x80\x9cmerely occasional\xe2\x80\x9d\ninstances of alleged actual confusion do not support the existence of likelihood of\nconfusion. See, e.g., S.C. Johnson & Son, Inc. v. Johnson, 266 F.2d 129, 141 (6th\nCir.), cert. denied, 361 U.S. 820, 80 S.Ct. 65, 4 L.Ed.2d 65 (1959).\n5\n\n555\n\n\x0cAct between plaintiff\xe2\x80\x99s and defendants\xe2\x80\x99 albums as a matter\nof law.6\nLikewise, plaintiff\xe2\x80\x99s state law unfair competition claim also\nfails.7 As a threshold matter, plaintiff cannot proceed under\nM.C.L. s 429.428 because application of that statute\ncontemplates a state registered trademark, which plaintiff\ndoes not have. Furthermore, plaintiff has not established\nthat she has any common law trademark rights in her name,\n\nCompare the Lanham Act cases cited by plaintiff all of which involved the use\nof famous persons\xe2\x80\x99 names in connection with recordings by them, thereby directly\nand intentionally misrepresenting that the plaintiffs had approved the\nunauthorized distributions of their work. See PPX Enter., Inc. v. Audiofidelity\nEnter., Inc., 818 F.2d 266, 268 (2d Cir.1987) (defendants marketed eight albums\nallegedly containing feature performances by the electric guitarist Jimi Hendrix,\nwhen in fact the albums \xe2\x80\x9ceither did not contain Hendrix performances at all or\ncontained performances in which Hendrix was merely a background performer or\nundifferentiated session player\xe2\x80\x9d); Apple Corps Ltd. v. Adirondack Group, 124\nMisc.2d 351, 355, 476 N.Y.S.2d 716, 719 (1983) (defendants distributed\n\xe2\x80\x9crecordings of inferior quality which were made as a lark\xe2\x80\x9d); Benson v. Paul Winley\nRecord Sales Corp., 452 F.Supp. 516, 518 (S.D.N.Y.1978) (defendants \xe2\x80\x9cmade [the\nplaintiff] to appear as the central and controlling artist when in fact he was not,\xe2\x80\x9d\nand also misrepresented to the public that the songs on the album were recent\nreleases by the plaintiff). On the other hand, defendants here have not used\nplaintiff\xe2\x80\x99s name on a work by plaintiff, nor have defendants misappropriated any\nwritten or recorded material of plaintiff\xe2\x80\x99s.\n6\n\nThe Sixth Circuit noted in Carson v. Here\xe2\x80\x99s Johnny Portable Toilets, Inc., that\nLanham Act and Michigan state law unfair competition claims were both\ngoverned by the same standards. 698 F.2d at 833; see also Sports Auth., Inc. v.\nAbercrombie & Fitch, Inc., 965 F.Supp. 925, 934 n. 5 (E.D.Mich.1997) (\xe2\x80\x9cthe\nCourt\xe2\x80\x99s analysis under the Lanham Act will also apply to [plaintiff\xe2\x80\x99s Michigan]\ncommon law claim\xe2\x80\x9d).\n7\n\n8\n\nM.C.L. s 429.42 states in relevant part: [A]ny person who shall:\n(a) Use, without the consent of the registrant, any\nreproduction, counterfeit, copy or colorable imitation of a\nmark registered under this act in connection with the sale,\noffering for sale, or advertising of any goods or services\non or in connection with which such use is likely to cause\nconfusion or mistake or to deceive as to the source of\norigin of such goods or services \xe2\x80\xa6 is liable to a civil\naction by the owner of the registered mark.\n\n(emphasis added).\n\n556\n\n\x0cor that defendants made any trademark use of her name.9\nIn fact, plaintiff conceded during oral argument that she\ncannot maintain an action for trademark infringement.\nFinally, plaintiff cites the following from the Restatement\n(Third) of Unfair Competition ss 46-47 (1995):\nOne who appropriates the commercial\nvalue of a person\xe2\x80\x99s identity by using\nwithout consent the person\xe2\x80\x99s name,\nlikeness, or other indicia of identity for\npurposes of trade is subject to\nliability\xe2\x80\xa6. The name, likeness, and\nother indicia of a person\xe2\x80\x99s identity are\nused \xe2\x80\x9cfor purposes of trade\xe2\x80\x9d \xe2\x80\xa6 if they\nare used in advertising the user\xe2\x80\x99s goods\nor services, or are placed on\nmerchandise marketed by the user, or\nare used in connection with services\nrendered by the user.\nPlaintiff\xe2\x80\x99s purported reliance on the Restatement lacks\ncredit, however, considering she neglected to mention the\nportion that unambiguously distinguishes it from this case:\n\xe2\x80\x9cHowever, uses \xe2\x80\x98for purposes of trade\xe2\x80\x99 does not ordinarily\ninclude the use of a person\xe2\x80\x99s identity in news reporting,\ncommentary, entertainment, works of fiction or nonfiction,\nor in advertising that is incidental to such uses.\xe2\x80\x9d Id. s 47. As\na public figure, plaintiff simply is not entitled to control\nevery conceivable presentation of her name and likeness.\nConsequently, defendants are entitled to summary\n\n\xe2\x80\x9c[W]hether alleging infringement of a registered trademark \xe2\x80\xa6 or infringement of\nan unregistered trademark \xe2\x80\xa6, it is clear that a plaintiff must show that it has\nactually used the designation at issue as a trademark, and that the defendant has\nalso used the same or a similar designation as a trademark.\xe2\x80\x9d Rock and Roll Hall of\nFame and Museum, Inc. v. Gentile Prods., 134 F.3d 749, 753 (6th Cir.1998).\nCompare defendants\xe2\x80\x99 use of plaintiff\xe2\x80\x99s name here for the purpose of sending an\nartistic message, with a hypothetical claim by defendants that they were selling\n\xe2\x80\x9cRosa Parks\xe2\x80\x9d-brand discs and cassettes.\n9\n\n557\n\n\x0cjudgment as to plaintiff\xe2\x80\x99s unfair competition and Lanham\nAct claims.\nC. Defamation Claim (Count III)\nNext, plaintiff asserts a claim for defamation in Count III\nof her complaint. Specifically, plaintiff alleges that\ndefendants \xe2\x80\x9cused derogatory and offensive language in\ntheir lyrics and associated said language with Plaintiff\xe2\x80\x99s\n\xe2\x80\x98persona,\xe2\x80\x99 character and name without her consent,\xe2\x80\x9d\nthereby \xe2\x80\x9ccast[ing] Plaintiff in a false and unacceptable\nlight.\xe2\x80\x9d\n\xe2\x80\xa6.\n\xe2\x80\xa6 . [S]ummary judgment in defendants\xe2\x80\x99 favor is\nappropriate as to Count III.\nD. Intentional Infliction of Emotional Distress Claim (Count\nIV)\nCount IV states a claim for intentional infliction of\nemotional distress. [The court dismissed this claim as a\nmatter of law.]\nE. Intentional Interference with Business Relations Claim\n(Count VI)\nPlaintiff also asserts a claim for intentional interference\nwith an advantageous business relationship, contending\nthat defendants\xe2\x80\x99 \xe2\x80\x9cunauthorized use of her name in the\npresent context will substantially interfere with sale and\ndistribution of the authorized [tribute gospel] recording.\xe2\x80\x9d\n\xe2\x80\xa6.\n\xe2\x80\xa6 . [D]efendants clearly have not engaged in any per se\nwrongful conduct by permissibly titling their song \xe2\x80\x9cRosa\nParks.\xe2\x80\x9d Nor have defendants committed any lawful act with\nmalice that is unjustified in law. Accordingly, defendants\nare entitled to summary judgment as to Count VI.\n\n558\n\n\x0cF. Remaining State Law Claims (Counts VII-IX)\nPlaintiff\xe2\x80\x99s remaining claims include: unjust enrichment\n(Count VII); negligence (Count VIII); and, conspiracy\n(Count IX). Because all three claims incorrectly presuppose\na legal duty not to use plaintiff\xe2\x80\x99s name as defendants did,\nthey too must be dismissed.\n\xe2\x80\xa6.\nIV. CONCLUSION\nThe undisputed facts in this case require that summary\njudgment be granted in defendants\xe2\x80\x99 favor. Therefore,\nIT IS ORDERED that plaintiff\xe2\x80\x99s motion for summary\njudgment and injunctive relief hereby is DENIED.\nIT IS FURTHER ORDERED that defendants\xe2\x80\x99 motion for\nsummary judgment hereby is GRANTED.\nMidler v. Ford Motor Company,\n849 F.2d 460 (9th. Cir. 1986).\nPeter Laird, Los Angeles, Cal., for plaintiff-appellant.\nRobert M. Callagy, New York City, for defendantsappellees.\nAppeal from the United States District Court for the\nCentral District of California.\nBefore HUG, TANG and NOONAN, Circuit Judges.\nNOONAN, Circuit Judge:\nThis case centers on the protectibility of the voice of a\ncelebrated chanteuse from commercial exploitation without\nher consent. Ford Motor Company and its advertising\nagency, Young & Rubicam, Inc., in 1985 advertised the\nFord Lincoln Mercury with a series of nineteen 30 or 60\nsecond television commercials in what the agency called\n\xe2\x80\x9cThe Yuppie Campaign.\xe2\x80\x9d The aim was to make an\nemotional connection with Yuppies, bringing back\n\n559\n\n\x0cmemories of when they were in college. Different popular\nsongs of the seventies were sung on each commercial. The\nagency tried to get \xe2\x80\x9cthe original people,\xe2\x80\x9d that is, the singers\nwho had popularized the songs, to sing them. Failing in\nthat endeavor in ten cases the agency had the songs sung by\n\xe2\x80\x9csound alikes.\xe2\x80\x9d Bette Midler, the plaintiff and appellant\nhere, was done by a sound alike.\nMidler is a nationally known actress and singer. She won a\nGrammy as early as 1973 as the Best New Artist of that\nyear. Records made by her since then have gone Platinum\nand Gold. She was nominated in 1979 for an Academy\naward for Best Female Actress in The Rose, in which she\nportrayed a pop singer. Newsweek in its June 30, 1986 issue\ndescribed\nher\nas\nan\n\xe2\x80\x9coutrageously\noriginal\nsinger/comedian.\xe2\x80\x9d Time hailed her in its March 2, 1987\nissue as \xe2\x80\x9ca legend\xe2\x80\x9d and \xe2\x80\x9cthe most dynamic and poignant\nsinger-actress of her time.\xe2\x80\x9d\nWhen Young & Rubicam was preparing the Yuppie\nCampaign it presented the commercial to its client by\nplaying an edited version of Midler singing \xe2\x80\x9cDo You Want\nTo Dance,\xe2\x80\x9d taken from the 1973 Midler album, \xe2\x80\x9cThe\nDivine Miss M.\xe2\x80\x9d After the client accepted the idea and\nform of the commercial, the agency contacted Midler\xe2\x80\x99s\nmanager, Jerry Edelstein. The conversation went as follows:\n\xe2\x80\x9cHello, I am Craig Hazen from Young and Rubicam. I am\ncalling you to find out if Bette Midler would be interested\nin doing \xe2\x80\xa6? Edelstein: \xe2\x80\x9cIs it a commercial?\xe2\x80\x9d \xe2\x80\x9cYes.\xe2\x80\x9d \xe2\x80\x9cWe\nare not interested.\xe2\x80\x9d\nUndeterred, Young & Rubicam sought out Ula Hedwig\nwhom it knew to have been one of \xe2\x80\x9cthe Harlettes\xe2\x80\x9d a\nbackup singer for Midler for ten years. Hedwig was told by\nYoung & Rubicam that \xe2\x80\x9cthey wanted someone who could\nsound like Bette Midler\xe2\x80\x99s recording of [Do You Want To\nDance].\xe2\x80\x9d She was asked to make a \xe2\x80\x9cdemo\xe2\x80\x9d tape of the song\nif she was interested. She made an a capella demo and got\nthe job.\n\n560\n\n\x0cAt the direction of Young & Rubicam, Hedwig then made\na record for the commercial. The Midler record of \xe2\x80\x9cDo\nYou Want To Dance\xe2\x80\x9d was first played to her. She was told\nto \xe2\x80\x9csound as much as possible like the Bette Midler\nrecord,\xe2\x80\x9d leaving out only a few \xe2\x80\x9caahs\xe2\x80\x9d unsuitable for the\ncommercial. Hedwig imitated Midler to the best of her\nability.\nAfter the commercial was aired Midler was told by \xe2\x80\x9ca\nnumber of people\xe2\x80\x9d that it \xe2\x80\x9csounded exactly\xe2\x80\x9d like her record\nof \xe2\x80\x9cDo You Want To Dance.\xe2\x80\x9d Hedwig was told by \xe2\x80\x9cmany\npersonal friends\xe2\x80\x9d that they thought it was Midler singing\nthe commercial. Ken Fritz, a personal manager in the\nentertainment business not associated with Midler, declares\nby affidavit that he heard the commercial on more than one\noccasion and thought Midler was doing the singing.\nNeither the name nor the picture of Midler was used in the\ncommercial; Young & Rubicam had a license from the\ncopyright holder to use the song. At issue in this case is\nonly the protection of Midler\xe2\x80\x99s voice. The district court\ndescribed the defendants\xe2\x80\x99 conduct as that \xe2\x80\x9cof the average\nthief.\xe2\x80\x9d They decided, \xe2\x80\x9cIf we can\xe2\x80\x99t buy it, we\xe2\x80\x99ll take it.\xe2\x80\x9d The\ncourt nonetheless believed there was no legal principle\npreventing imitation of Midler\xe2\x80\x99s voice and so gave\nsummary judgment for the defendants. Midler appeals.\nThe First Amendment protects much of what the media do\nin the reproduction of likenesses or sounds. A primary\nvalue is freedom of speech and press. Time, Inc. v. Hill, 385\nU.S. 374, 388, 87 S.Ct. 534, 542, 17 L.Ed.2d 456 (1967).\nThe purpose of the media\xe2\x80\x99s use of a person\xe2\x80\x99s identity is\ncentral. If the purpose is \xe2\x80\x9cinformative or cultural\xe2\x80\x9d the use is\nimmune; \xe2\x80\x9cif it serves no such function but merely exploits\nthe individual portrayed, immunity will not be granted.\xe2\x80\x9d\nFelcher and Rubin, \xe2\x80\x9cPrivacy, Publicity and the Portrayal of\nReal People by the Media,\xe2\x80\x9d88 Yale L.J. 1577, 1596 (1979).\nMoreover, federal copyright law preempts much of the\narea. \xe2\x80\x9cMere imitation of a recorded performance would not\n\n561\n\n\x0cconstitute a copyright infringement even where one\nperformer deliberately sets out to simulate another\xe2\x80\x99s\nperformance as exactly as possible.\xe2\x80\x9d Notes of Committee\non the Judiciary, 17 U.S.C.A. s 114(b). It is in the context of\nthese First Amendment and federal copyright distinctions\nthat we address the present appeal.\nNancy Sinatra once sued Goodyear Tire and Rubber\nCompany on the basis of an advertising campaign by\nYoung & Rubicam featuring \xe2\x80\x9cThese Boots Are Made For\nWalkin\xe2\x80\x99,\xe2\x80\x9d a song closely identified with her; the female\nsingers of the commercial were alleged to have imitated her\nvoice and style and to have dressed and looked like her.\nThe basis of Nancy Sinatra\xe2\x80\x99s complaint was unfair\ncompetition; she claimed that the song and the\narrangement had acquired \xe2\x80\x9ca secondary meaning\xe2\x80\x9d which,\nunder California law, was protectible. This court noted that\nthe defendants \xe2\x80\x9chad paid a very substantial sum to the\ncopyright proprietor to obtain the license for the use of the\nsong and all of its arrangements.\xe2\x80\x9d To give Sinatra damages\nfor their use of the song would clash with federal copyright\nlaw. Summary judgment for the defendants was affirmed.\nSinatra v. Goodyear Tire & Rubber Co., 435 F.2d 711, 717-718\n(9th Cir.1970), cert. denied, 402 U.S. 906, 91 S.Ct. 1376, 28\nL.Ed.2d 646 (1971). If Midler were claiming a secondary\nmeaning to \xe2\x80\x9cDo You Want To Dance\xe2\x80\x9d or seeking to\nprevent the defendants from using that song, she would fail\nlike Sinatra. But that is not this case. Midler does not seek\ndamages for Ford\xe2\x80\x99s use of \xe2\x80\x9cDo You Want To Dance,\xe2\x80\x9d and\nthus her claim is not preempted by federal copyright law.\nCopyright protects \xe2\x80\x9coriginal works of authorship fixed in\nany tangible medium of expression.\xe2\x80\x9d 17 U.S.C. s 102(a). A\nvoice is not copyrightable. The sounds are not \xe2\x80\x9cfixed.\xe2\x80\x9d\nWhat is put forward as protectible here is more personal\nthan any work of authorship.\nBert Lahr once sued Adell Chemical Co. for selling Lestoil\nby means of a commercial in which an imitation of Lahr\xe2\x80\x99s\n\n562\n\n\x0cvoice accompanied a cartoon of a duck. Lahr alleged that\nhis style of vocal delivery was distinctive in pitch, accent,\ninflection, and sounds. The First Circuit held that Lahr had\nstated a cause of action for unfair competition, that it could\nbe found \xe2\x80\x9cthat defendant\xe2\x80\x99s conduct saturated plaintiff\xe2\x80\x99s\naudience, curtailing his market.\xe2\x80\x9d Lahr v. Adell Chemical Co.,\n300 F.2d 256, 259 (1st Cir.1962). That case is more like this\none. But we do not find unfair competition here. Oneminute commercials of the sort the defendants put on\nwould not have saturated Midler\xe2\x80\x99s audience and curtailed\nher market. Midler did not do television commercials. The\ndefendants were not in competition with her. See Halicki v.\nUnited Artists Communications, Inc., 812 F.2d 1213 (9th\nCir.1987).\nCalifornia Civil Code section 3344 is also of no aid to\nMidler. The statute affords damages to a person injured by\nanother who uses the person\xe2\x80\x99s \xe2\x80\x9cname, voice, signature,\nphotograph or likeness, in any manner.\xe2\x80\x9d The defendants\ndid not use Midler\xe2\x80\x99s name or anything else whose use is\nprohibited by the statute. The voice they used was\nHedwig\xe2\x80\x99s, not hers. The term \xe2\x80\x9clikeness\xe2\x80\x9d refers to a visual\nimage not a vocal imitation. The statute, however, does not\npreclude Midler from pursuing any cause of action she may\nhave at common law; the statute itself implies that such\ncommon law causes of action do exist because it says its\nremedies are merely \xe2\x80\x9ccumulative.\xe2\x80\x9d Id. s 3344(g).\nThe companion statute protecting the use of a deceased\nperson\xe2\x80\x99s name, voice, signature, photograph or likeness\nstates that the rights it recognizes are \xe2\x80\x9cproperty rights.\xe2\x80\x9d Id.\ns 990(b). By analogy the common law rights are also\nproperty rights. Appropriation of such common law rights\nis a tort in California. Motschenbacher v. R.J. Reynolds Tobacco\nCo., 498 F.2d 821 (9th Cir.1974). In that case what the\ndefendants used in their television commercial for Winston\ncigarettes was a photograph of a famous professional racing\ndriver\xe2\x80\x99s racing car. The number of the car was changed and\n\n563\n\n\x0ca wing-like device known as a \xe2\x80\x9cspoiler\xe2\x80\x9d was attached to the\ncar; the car\xe2\x80\x99s features of white pinpointing, an oval\nmedallion, and solid red coloring were retained. The driver,\nLothar Motschenbacher, was in the car but his features\nwere not visible. Some persons, viewing the commercial,\ncorrectly inferred that the car was his and that he was in the\ncar and was therefore endorsing the product. The\ndefendants were held to have invaded a \xe2\x80\x9cproprietary\ninterest\xe2\x80\x9d of Motschenbacher in his own identity. Id.at 825.\nMidler\xe2\x80\x99s case is different from Motschenbacher\xe2\x80\x99s. He and\nhis car were physically used by the tobacco company\xe2\x80\x99s ad;\nhe made part of his living out of giving commercial\nendorsements. But, as Judge Koelsch expressed it in\nMotschenbacher, California will recognize an injury from\n\xe2\x80\x9can appropriation of the attributes of one\xe2\x80\x99s identity.\xe2\x80\x9d Id. at\n824. It was irrelevant that Motschenbacher could not be\nidentified in the ad. The ad suggested that it was he. The ad\ndid so by emphasizing signs or symbols associated with\nhim. In the same way the defendants here used an imitation\nto convey the impression that Midler was singing for them.\nWhy did the defendants ask Midler to sing if her voice was\nnot of value to them? Why did they studiously acquire the\nservices of a sound-alike and instruct her to imitate Midler\nif Midler\xe2\x80\x99s voice was not of value to them? What they\nsought was an attribute of Midler\xe2\x80\x99s identity. Its value was\nwhat the market would have paid for Midler to have sung\nthe commercial in person.\nA voice is more distinctive and more personal than the\nautomobile accouterments protected in Motschenbacher. A\nvoice is as distinctive and personal as a face. The human\nvoice is one of the most palpable ways identity is\nmanifested. We are all aware that a friend is at once known\nby a few words on the phone. At a philosophical level it has\nbeen observed that with the sound of a voice, \xe2\x80\x9cthe other\nstands before me.\xe2\x80\x9d D. Ihde, Listening and Voice 77 (1976).\nA fortiori, these observations hold true of singing,\n\n564\n\n\x0cespecially singing by a singer of renown. The singer\nmanifests herself in the song. To impersonate her voice is\nto pirate her identity. See W. Keeton, D. Dobbs, R.\nKeeton, D. Owen, Prosser & Keeton on Torts 852 (5th ed.\n1984).\nWe need not and do not go so far as to hold that every\nimitation of a voice to advertise merchandise is actionable.\nWe hold only that when a distinctive voice of a professional\nsinger is widely known and is deliberately imitated in order\nto sell a product, the sellers have appropriated what is not\ntheirs and have committed a tort in California. Midler has\nmade a showing, sufficient to defeat summary judgment,\nthat the defendants here for their own profit in selling their\nproduct did appropriate part of her identity.\nREVERSED AND REMANDED FOR TRIAL.\nWhite v. Samsung Electronics America, Inc.,\n971 F.2d 1395 (9th Cir. 1992).\nBlaine Greenberg, John Genga, Hill Wynne Troop &\nMeisinger, Los Angeles, Cal., for plaintiff-appellant.\nAnthony Liebig, Kenneth Kulzick, Liebig & Kulzick, Los\nAngeles, Cal., for defendants-appellees.\nAppeal from the United States District Court for the\nCentral District of California.\nBefore: GOODWIN, PREGERSON, and ALARCON,\nCircuit Judges.\nGOODWIN, Senior Circuit Judge:\nThis case involves a promotional \xe2\x80\x9cfame and fortune\xe2\x80\x9d\ndispute. In running a particular advertisement without\nVanna White\xe2\x80\x99s permission, defendants Samsung\nElectronics America, Inc. (Samsung) and David Deutsch\nAssociates, Inc. (Deutsch) attempted to capitalize on\nWhite\xe2\x80\x99s fame to enhance their fortune. White sued, alleging\ninfringement of various intellectual property rights, but the\n\n565\n\n\x0cdistrict court granted summary judgment in favor of the\ndefendants. We affirm in part, reverse in part, and remand.\nPlaintiff Vanna White is the hostess of \xe2\x80\x9cWheel of\nFortune,\xe2\x80\x9d one of the most popular game shows in\ntelevision history. An estimated forty million people watch\nthe program daily. Capitalizing on the fame which her\nparticipation in the show has bestowed on her, White\nmarkets her identity to various advertisers.\nThe dispute in this case arose out of a series of\nadvertisements prepared for Samsung by Deutsch. The\nseries ran in at least half a dozen publications with\nwidespread, and in some cases national, circulation. Each of\nthe advertisements in the series followed the same theme.\nEach depicted a current item from popular culture and a\nSamsung electronic product. Each was set in the twentyfirst century and conveyed the message that the Samsung\nproduct would still be in use by that time. By hypothesizing\noutrageous future outcomes for the cultural items, the ads\ncreated humorous effects. For example, one lampooned\ncurrent popular notions of an unhealthy diet by depicting a\nraw steak with the caption: \xe2\x80\x9cRevealed to be health food.\n2010 A.D.\xe2\x80\x9d Another depicted irreverent \xe2\x80\x9cnews\xe2\x80\x9d-show host\nMorton Downey Jr. in front of an American flag with the\ncaption: \xe2\x80\x9cPresidential candidate. 2008 A.D.\xe2\x80\x9d\nThe advertisement which prompted the current dispute was\nfor Samsung video-cassette recorders (VCRs). The ad\ndepicted a robot, dressed in a wig, gown, and jewelry which\nDeutsch consciously selected to resemble White\xe2\x80\x99s hair and\ndress. The robot was posed next to a game board which is\ninstantly recognizable as the Wheel of Fortune game show\nset, in a stance for which White is famous. The caption of\nthe ad read: \xe2\x80\x9cLongest-running game show. 2012 A.D.\xe2\x80\x9d\nDefendants referred to the ad as the \xe2\x80\x9cVanna White\xe2\x80\x9d ad.\nUnlike the other celebrities used in the campaign, White\nneither consented to the ads nor was she paid.\n\n566\n\n\x0cFollowing the circulation of the robot ad, White sued\nSamsung and Deutsch in federal district court under: (1)\nCalifornia Civil Code s 3344; (2) the California common\nlaw right of publicity; and (3) s 43(a) of the Lanham Act, 15\nU.S.C. s 1125(a). The district court granted summary\njudgment against White on each of her claims. White now\nappeals.\nI. Section 3344\nWhite first argues that the district court erred in rejecting\nher claim under section 3344. Section 3344(a) provides, in\npertinent part, that \xe2\x80\x9c[a]ny person who knowingly uses\nanother\xe2\x80\x99s name, voice, signature, photograph, or likeness, in\nany manner, \xe2\x80\xa6 for purposes of advertising or selling, \xe2\x80\xa6\nwithout such person\xe2\x80\x99s prior consent \xe2\x80\xa6 shall be liable for\nany damages sustained by the person or persons injured as\na result thereof.\xe2\x80\x9d\nWhite argues that the Samsung advertisement used her\n\xe2\x80\x9clikeness\xe2\x80\x9d in contravention of section 3344. In Midler v.\nFord Motor Co., 849 F.2d 460 (9th Cir.1988), this court\nrejected Bette Midler\xe2\x80\x99s section 3344 claim concerning a\nFord television commercial in which a Midler \xe2\x80\x9csoundalike\xe2\x80\x9d sang a song which Midler had made famous. In\nrejecting Midler\xe2\x80\x99s claim, this court noted that \xe2\x80\x9c[t]he\ndefendants did not use Midler\xe2\x80\x99s name or anything else\nwhose use is prohibited by the statute. The voice they used\nwas [another person\xe2\x80\x99s], not hers. The term \xe2\x80\x98likeness\xe2\x80\x99 refers\nto a visual image not a vocal imitation.\xe2\x80\x9d Id. at 463.\nIn this case, Samsung and Deutsch used a robot with\nmechanical features, and not, for example, a manikin\nmolded to White\xe2\x80\x99s precise features. Without deciding for all\npurposes when a caricature or impressionistic resemblance\nmight become a \xe2\x80\x9clikeness,\xe2\x80\x9d we agree with the district court\nthat the robot at issue here was not White\xe2\x80\x99s \xe2\x80\x9clikeness\xe2\x80\x9d\nwithin the meaning of section 3344. Accordingly, we affirm\nthe court\xe2\x80\x99s dismissal of White\xe2\x80\x99s section 3344 claim.\n\n567\n\n\x0cII. Right of Publicity\nWhite next argues that the district court erred in granting\nsummary judgment to defendants on White\xe2\x80\x99s common law\nright of publicity claim. In Eastwood v. Superior Court, 149\nCal.App.3d 409 (1983), the California court of appeal stated\nthat the common law right of publicity cause of action\n\xe2\x80\x9cmay be pleaded by alleging (1) the defendant\xe2\x80\x99s use of the\nplaintiff\xe2\x80\x99s identity; (2) the appropriation of plaintiff\xe2\x80\x99s name\nor likeness to defendant\xe2\x80\x99s advantage, commercially or\notherwise; (3) lack of consent; and (4) resulting injury.\xe2\x80\x9d Id.\nat 417. The district court dismissed White\xe2\x80\x99s claim for failure\nto satisfy Eastwood\xe2\x80\x99s second prong, reasoning that\ndefendants had not appropriated White\xe2\x80\x99s \xe2\x80\x9cname or\nlikeness\xe2\x80\x9d with their robot ad. We agree that the robot ad\ndid not make use of White\xe2\x80\x99s name or likeness. However,\nthe common law right of publicity is not so confined.\nThe Eastwood court did not hold that the right of publicity\ncause of action could be pleaded only by alleging an\nappropriation of name or likeness. Eastwood involved an\nunauthorized use of photographs of Clint Eastwood and of\nhis name. Accordingly, the Eastwood court had no\noccasion to consider the extent beyond the use of name or\nlikeness to which the right of publicity reaches. That court\nheld only that the right of publicity cause of action \xe2\x80\x9cmay\nbe\xe2\x80\x9d pleaded by alleging, inter alia, appropriation of name or\nlikeness, not that the action may be pleaded only in those\nterms.\nThe \xe2\x80\x9cname or likeness\xe2\x80\x9d formulation referred to in\nEastwood originated not as an element of the right of\npublicity cause of action, but as a description of the types\nof cases in which the cause of action had been recognized.\nThe source of this formulation is Prosser, Privacy, 48\nCal.L.Rev. 383, 401-07 (1960), one of the earliest and most\nenduring articulations of the common law right of publicity\ncause of action. In looking at the case law to that point,\nProsser recognized that right of publicity cases involved\n\n568\n\n\x0cone of two basic factual scenarios: name appropriation, and\npicture or other likeness appropriation. Id. at 401-02, nn.\n156-57.\nEven though Prosser focused on appropriations of name\nor likeness in discussing the right of publicity, he noted that\n\xe2\x80\x9c[i]t is not impossible that there might be appropriation of\nthe plaintiff\xe2\x80\x99s identity, as by impersonation, without the use\nof either his name or his likeness, and that this would be an\ninvasion of his right of privacy.\xe2\x80\x9d Id. at 401, n. 155.1 At the\ntime Prosser wrote, he noted however, that \xe2\x80\x9c[n]o such case\nappears to have arisen.\xe2\x80\x9d Id.\nSince Prosser\xe2\x80\x99s early formulation, the case law has borne\nout his insight that the right of publicity is not limited to\nthe appropriation of name or likeness. In Motschenbacher\nv. R.J. Reynolds Tobacco Co., 498 F.2d 821 (9th Cir.1974),\nthe defendant had used a photograph of the plaintiff\xe2\x80\x99s race\ncar in a television commercial. Although the plaintiff\nappeared driving the car in the photograph, his features\nwere not visible. Even though the defendant had not\nappropriated the plaintiff\xe2\x80\x99s name or likeness, this court held\nthat plaintiff\xe2\x80\x99s California right of publicity claim should\nreach the jury.\nIn Midler, this court held that, even though the defendants\nhad not used Midler\xe2\x80\x99s name or likeness, Midler had stated a\nclaim for violation of her California common law right of\npublicity because \xe2\x80\x9cthe defendants \xe2\x80\xa6 for their own profit in\nselling their product did appropriate part of her identity\xe2\x80\x9d by\nusing a Midler sound-alike. Id. at 463-64.\nIn Carson v. Here\xe2\x80\x99s Johnny Portable Toilets, Inc., 698 F.2d\n831 (6th Cir.1983), the defendant had marketed portable\ntoilets under the brand name \xe2\x80\x9cHere\xe2\x80\x99s Johnny\xe2\x80\x9d-Johnny\nCarson\xe2\x80\x99s signature \xe2\x80\x9cTonight Show\xe2\x80\x9d introduction-without\n\nUnder Professor Prosser\xe2\x80\x99s scheme, the right of publicity is the last of the four\ncategories of the right to privacy. Prosser, 48 Cal. L. Rev. at 389.\n1\n\n569\n\n\x0cCarson\xe2\x80\x99s permission. The district court had dismissed\nCarson\xe2\x80\x99s Michigan common law right of publicity claim\nbecause the defendants had not used Carson\xe2\x80\x99s \xe2\x80\x9cname or\nlikeness.\xe2\x80\x9d Id. at 835. In reversing the district court, the sixth\ncircuit found \xe2\x80\x9cthe district court\xe2\x80\x99s conception of the right of\npublicity \xe2\x80\xa6 too narrow\xe2\x80\x9d and held that the right was\nimplicated because the defendant had appropriated\nCarson\xe2\x80\x99s identity by using, inter alia, the phrase \xe2\x80\x9cHere\xe2\x80\x99s\nJohnny.\xe2\x80\x9d Id. at 835-37.\nThese cases teach not only that the common law right of\npublicity reaches means of appropriation other than name\nor likeness, but that the specific means of appropriation are\nrelevant only for determining whether the defendant has in\nfact appropriated the plaintiff\xe2\x80\x99s identity. The right of\npublicity does not require that appropriations of identity be\naccomplished through particular means to be actionable. It\nis noteworthy that the Midler and Carson defendants not\nonly avoided using the plaintiff\xe2\x80\x99s name or likeness, but they\nalso avoided appropriating the celebrity\xe2\x80\x99s voice, signature,\nand photograph. The photograph in Motschenbacher did\ninclude the plaintiff, but because the plaintiff was not\nvisible the driver could have been an actor or dummy and\nthe analysis in the case would have been the same.\nAlthough the defendants in these cases avoided the most\nobvious means of appropriating the plaintiffs\xe2\x80\x99 identities,\neach of their actions directly implicated the commercial\ninterests which the right of publicity is designed to protect.\nAs the Carson court explained:\nthe right of publicity has developed to\nprotect the commercial interest of\ncelebrities in their identities. The\ntheory of the right is that a celebrity\xe2\x80\x99s\nidentity can be valuable in the\npromotion of products, and the\ncelebrity has an interest that may be\nprotected from the unauthorized\n\n570\n\n\x0ccommercial exploitation of that\nidentity\xe2\x80\xa6. If the celebrity\xe2\x80\x99s identity is\ncommercially exploited, there has been\nan invasion of his right whether or not\nhis \xe2\x80\x9cname or likeness\xe2\x80\x9d is used.\nCarson, 698 F.2d at 835. It is not important how the\ndefendant has appropriated the plaintiff\xe2\x80\x99s identity, but\nwhether the defendant has done so. Motschenbacher,\nMidler, and Carson teach the impossibility of treating the\nright of publicity as guarding only against a laundry list of\nspecific means of appropriating identity. A rule which says\nthat the right of publicity can be infringed only through the\nuse of nine different methods of appropriating identity\nmerely challenges the clever advertising strategist to come\nup with the tenth.\nIndeed, if we treated the means of appropriation as\ndispositive in our analysis of the right of publicity, we\nwould not only weaken the right but effectively eviscerate\nit. The right would fail to protect those plaintiffs most in\nneed of its protection. Advertisers use celebrities to\npromote their products. The more popular the celebrity,\nthe greater the number of people who recognize her, and\nthe greater the visibility for the product. The identities of\nthe most popular celebrities are not only the most attractive\nfor advertisers, but also the easiest to evoke without\nresorting to obvious means such as name, likeness, or\nvoice.\nConsider a hypothetical advertisement which depicts a\nmechanical robot with male features, an African-American\ncomplexion, and a bald head. The robot is wearing black\nhightop Air Jordan basketball sneakers, and a red basketball\nuniform with black trim, baggy shorts, and the number 23\n(though not revealing \xe2\x80\x9cBulls\xe2\x80\x9d or \xe2\x80\x9cJordan\xe2\x80\x9d lettering). The ad\ndepicts the robot dunking a basketball one-handed, stiffarmed, legs extended like open scissors, and tongue\nhanging out. Now envision that this ad is run on television\n\n571\n\n\x0cduring professional basketball games. Considered\nindividually, the robot\xe2\x80\x99s physical attributes, its dress, and its\nstance tell us little. Taken together, they lead to the only\nconclusion that any sports viewer who has registered a\ndiscernible pulse in the past five years would reach: the ad\nis about Michael Jordan.\nViewed separately, the individual aspects of the\nadvertisement in the present case say little. Viewed\ntogether, they leave little doubt about the celebrity the ad is\nmeant to depict. The female-shaped robot is wearing a long\ngown, blond wig, and large jewelry. Vanna White dresses\nexactly like this at times, but so do many other women. The\nrobot is in the process of turning a block letter on a gameboard. Vanna White dresses like this while turning letters\non a game-board but perhaps similarly attired Scrabbleplaying women do this as well. The robot is standing on\nwhat looks to be the Wheel of Fortune game show set.\nVanna White dresses like this, turns letters, and does this\non the Wheel of Fortune game show. She is the only one.\nIndeed, defendants themselves referred to their ad as the\n\xe2\x80\x9cVanna White\xe2\x80\x9d ad. We are not surprised.\nTelevision and other media create marketable celebrity\nidentity value. Considerable energy and ingenuity are\nexpended by those who have achieved celebrity value to\nexploit it for profit. The law protects the celebrity\xe2\x80\x99s sole\nright to exploit this value whether the celebrity has\nachieved her fame out of rare ability, dumb luck, or a\ncombination thereof. We decline Samsung and Deutch\xe2\x80\x99s\ninvitation to permit the evisceration of the common law\nright of publicity through means as facile as those in this\ncase. Because White has alleged facts showing that\nSamsung and Deutsch had appropriated her identity, the\ndistrict court erred by rejecting, on summary judgment,\nWhite\xe2\x80\x99s common law right of publicity claim.\nIII. The Lanham Act\n\n572\n\n\x0cWhite\xe2\x80\x99s final argument is that the district court erred in\ndenying her claim under s 43(a) of the Lanham Act, 15\nU.S.C. s 1125(a). The version of section 43(a) applicable to\nthis case2 provides, in pertinent part, that \xe2\x80\x9c[a]ny person\nwho shall \xe2\x80\xa6 use, in connection with any goods or services\n\xe2\x80\xa6 any false description or representation \xe2\x80\xa6 shall be liable\nto a civil action \xe2\x80\xa6 by any person who believes that he is or\nis likely to be damaged by the use of any such false\ndescription or designation.\xe2\x80\x9d 15 U.S.C. s 1125(a).\nTo prevail on her Lanham Act claim, White is required to\nshow that in running the robot ad, Samsung and Deutsch\ncreated a likelihood of confusion.\nThis circuit recognizes several different multi-factor tests\nfor determining whether a likelihood of confusion exists.\nNone of these tests is correct to the exclusion of the\nothers. Normally, in reviewing the district court\xe2\x80\x99s decision,\nthis court will look to the particular test that the district\ncourt used. However, because the district court in this case\napparently did not use any of the multi-factor tests in\nmaking its likelihood of confusion determination, and\nbecause this case involves an appeal from summary\njudgment and we review de novo the district court\xe2\x80\x99s\ndetermination, we will look for guidance to the 8-factor test\nenunciated in AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341\n(9th Cir.1979). According to AMF, factors relevant to a\nlikelihood of confusion include:\n(1) strength of the plaintiff\xe2\x80\x99s mark;\n(2) relatedness of the goods;\n(3) similarity of the marks;\n(4) evidence of actual confusion;\nThe statute was amended after White filed her complaint. The amendments\nwould not have altered the analysis in this case however.\n2\n\n573\n\n\x0c(5) marketing channels used;\n(6) likely degree of purchaser care;\n(7) defendant\xe2\x80\x99s intent in selecting the mark;\n(8) likelihood of expansion of the product lines.\n599 F.2d at 348-49. We turn now to consider White\xe2\x80\x99s claim\nin light of each factor.\nIn cases involving confusion over endorsement by a\ncelebrity plaintiff, \xe2\x80\x9cmark\xe2\x80\x9d means the celebrity\xe2\x80\x99s persona.\nSee Allen, 610 F.Supp. at 627. The \xe2\x80\x9cstrength\xe2\x80\x9d of the mark\nrefers to the level of recognition the celebrity enjoys among\nmembers of society. See Academy, 944 F.2d at 1455. If\nVanna White is unknown to the segment of the public at\nwhom Samsung\xe2\x80\x99s robot ad was directed, then that segment\ncould not be confused as to whether she was endorsing\nSamsung VCRs. Conversely, if White is well-known, this\nwould allow the possibility of a likelihood of confusion.\nFor the purposes of the Sleekcraft test, White\xe2\x80\x99s \xe2\x80\x9cmark,\xe2\x80\x9d or\ncelebrity identity, is strong.\nIn cases concerning confusion over celebrity endorsement,\nthe plaintiff\xe2\x80\x99s \xe2\x80\x9cgoods\xe2\x80\x9d concern the reasons for or source of\nthe plaintiff\xe2\x80\x99s fame. Because White\xe2\x80\x99s fame is based on her\ntelevised performances, her \xe2\x80\x9cgoods\xe2\x80\x9d are closely related to\nSamsung\xe2\x80\x99s VCRs. Indeed, the ad itself reinforced the\nrelationship by informing its readers that they would be\ntaping the \xe2\x80\x9clongest-running game show\xe2\x80\x9d on Samsung\xe2\x80\x99s\nVCRs well into the future.\nThe third factor, \xe2\x80\x9csimilarity of the marks,\xe2\x80\x9d both supports\nand contradicts a finding of likelihood of confusion. On\nthe one hand, all of the aspects of the robot ad identify\nWhite; on the other, the figure is quite clearly a robot, not a\nhuman. This ambiguity means that we must look to the\nother factors for resolution.\n\n574\n\n\x0cThe fourth factor does not favor White\xe2\x80\x99s claim because she\nhas presented no evidence of actual confusion.\nFifth, however, White has appeared in the same stance as\nthe robot from the ad in numerous magazines, including\nthe covers of some. Magazines were used as the marketing\nchannels for the robot ad. This factor cuts toward a\nlikelihood of confusion.\nSixth, consumers are not likely to be particularly careful in\ndetermining who endorses VCRs, making confusion as to\ntheir endorsement more likely.\nConcerning the seventh factor, \xe2\x80\x9cdefendant\xe2\x80\x99s intent,\xe2\x80\x9d the\ndistrict court found that, in running the robot ad, the\ndefendants had intended a spoof of the \xe2\x80\x9cWheel of\nFortune.\xe2\x80\x9d The relevant question is whether the defendants\n\xe2\x80\x9cintended to profit by confusing consumers\xe2\x80\x9d concerning\nthe endorsement of Samsung VCRs. Toho, 645 F.2d 788.\nWe do not disagree that defendants intended to spoof\nVanna White and \xe2\x80\x9cWheel of Fortune.\xe2\x80\x9d That does not\npreclude, however, the possibility that defendants also\nintended to confuse consumers regarding endorsement.\nThe robot ad was one of a series of ads run by defendants\nwhich followed the same theme. Another ad in the series\ndepicted Morton Downey Jr. as a presidential candidate in\nthe year 2008. Doubtless, defendants intended to spoof\npresidential elections and Mr. Downey through this ad.\nConsumers, however, would likely believe, and would be\ncorrect in so believing, that Mr. Downey was paid for his\npermission and was endorsing Samsung products. Looking\nat the series of advertisements as a whole, a jury could\nreasonably conclude that beneath the surface humor of the\nseries lay an intent to persuade consumers that celebrity\nVanna White, like celebrity Downey, was endorsing\nSamsung products.\n\n575\n\n\x0cFinally, the eighth factor, \xe2\x80\x9clikelihood of expansion of the\nproduct lines,\xe2\x80\x9d does not appear apposite to a celebrity\nendorsement case such as this.\nApplication of the Sleekcraft factors to this case indicates\nthat the district court erred in rejecting White\xe2\x80\x99s Lanham\nAct claim at the summary judgment stage. In so\nconcluding, we emphasize two facts, however. First,\nconstruing the motion papers in White\xe2\x80\x99s favor, as we must,\nwe hold only that White has raised a genuine issue of\nmaterial fact concerning a likelihood of confusion as to her\nendorsement. Cohen v. Paramount Pictures Corp., 845\nF.2d 851, 852-53 (9th Cir.1988). Whether White\xe2\x80\x99s Lanham\nAct claim should succeed is a matter for the jury. Second,\nwe stress that we reach this conclusion in light of the\npeculiar facts of this case. In particular, we note that the\nrobot ad identifies White and was part of a series of ads in\nwhich other celebrities participated and were paid for their\nendorsement of Samsung\xe2\x80\x99s products.\nIV. The Parody Defense\nIn defense, defendants cite a number of cases for the\nproposition that their robot ad constituted protected\nspeech. The only cases they cite which are even remotely\nrelevant to this case are Hustler Magazine v. Falwell, 485\nU.S. 46, 108 S.Ct. 876, 99 L.Ed.2d 41 (1988) and L.L. Bean,\nInc. v. Drake Publishers, Inc., 811 F.2d 26 (1st Cir.1987).\nThose cases involved parodies of advertisements run for\nthe purpose of poking fun at Jerry Falwell and L.L. Bean,\nrespectively. This case involves a true advertisement run for\nthe purpose of selling Samsung VCRs. The ad\xe2\x80\x99s spoof of\nVanna White and Wheel of Fortune is subservient and only\ntangentially related to the ad\xe2\x80\x99s primary message: \xe2\x80\x9cbuy\nSamsung VCRs.\xe2\x80\x9d Defendants\xe2\x80\x99 parody arguments are better\n\n576\n\n\x0caddressed to non-commercial parodies.3 The difference\nbetween a \xe2\x80\x9cparody\xe2\x80\x9d and a \xe2\x80\x9cknock-off\xe2\x80\x9d is the difference\nbetween fun and profit.\nV. Conclusion\nIn remanding this case, we hold only that White has\npleaded claims which can go to the jury for its decision.\nAFFIRMED IN PART, REVERSED IN PART, and\nREMANDED.\nALARCON, Circuit Judge, concurring in part, dissenting in\npart\nVanna White seeks recovery from Samsung based on three\ntheories: the right to privacy, the right to publicity, and the\nLanham Act. I concur in the majority\xe2\x80\x99s conclusions on the\n\nIn warning of a first amendment chill to expressive conduct, the dissent reads\nthis decision too broadly. See Dissent at 1407. This case concerns only the market\nwhich exists in our society for the exploitation of celebrity to sell products, and an\nattempt to take a free ride on a celebrity\xe2\x80\x99s celebrity value. Commercial advertising\nwhich relies on celebrity fame is different from other forms of expressive activity\nin two crucial ways.\n3\n\nFirst, for celebrity exploitation advertising to be effective, the advertisement must\nevoke the celebrity\xe2\x80\x99s identity. The more effective the evocation, the better the\nadvertisement. If, as Samsung claims, its ad was based on a \xe2\x80\x9cgeneric\xe2\x80\x9d game-show\nhostess and not on Vanna White, the ad would not have violated anyone\xe2\x80\x99s right of\npublicity, but it would also not have been as humorous or as effective.\nSecond, even if some forms of expressive activity, such as parody, do rely on\nidentity evocation, the first amendment hurdle will bar most right of publicity\nactions against those activities. Cf. Falwell, 485 U.S. at 46, 108 S.Ct. at 876. In the\ncase of commercial advertising, however, the first amendment hurdle is not so\nhigh. Central Hudson Gas & Electric Corp. v. Public Service Comm\xe2\x80\x99n of New\nYork, 447 U.S. 557, 566, 100 S.Ct. 2343, 2351, 65 L.Ed.2d 341 (1980). Realizing\nthis, Samsung attempts to elevate its ad above the status of garden-variety\ncommercial speech by pointing to the ad\xe2\x80\x99s parody of Vanna White. Samsung\xe2\x80\x99s\nargument is unavailing. See Board of Trustees, State Univ. of N.Y. v. Fox, 492\nU.S. 469, 474-75, 109 S.Ct. 3028, 3031, 106 L.Ed.2d 388 (1988); Bolger v. Youngs\nDrug Products Corp., 463 U.S. 60, 67-68, 103 S.Ct. 2875, 2880-81, 77 L.Ed.2d\n469 (1983). Unless the first amendment bars all right of publicity actions-and it\ndoes not, see Zachini v. Scripps-Howard Broadcasting Co., 433 U.S. 562, 97 S.Ct.\n2849, 53 L.Ed.2d 965 (1977)-then it does not bar this case.\n\n577\n\n\x0cright to privacy. I respectfully dissent from its holdings on\nthe right to publicity and the Lanham Act claims.\nI. RIGHT TO PRIVACY (CAL. CIV. CODE 3344(a))\nI agree with the majority\xe2\x80\x99s conclusion that no reasonable\njury could find that the robot was a \xe2\x80\x9clikeness\xe2\x80\x9d of Vanna\nWhite within the meaning of California Civil Code section\n3344(a).\nII. RIGHT TO PUBLICITY\nI must dissent from the majority\xe2\x80\x99s holding on Vanna\nWhite\xe2\x80\x99s right to publicity claim. The district court found\nthat, since the commercial advertisement did not show a\n\xe2\x80\x9clikeness\xe2\x80\x9d of Vanna White, Samsung did not improperly\nuse the plaintiff\xe2\x80\x99s identity. The majority asserts that the use\nof a likeness is not required under California common law.\nAccording to the majority, recovery is authorized if there is\nan appropriation of one\xe2\x80\x99s \xe2\x80\x9cidentity.\xe2\x80\x9d I cannot find any\nholding of a California court that supports this conclusion.\nFurthermore, the record does not support the majority\xe2\x80\x99s\nfinding that Vanna White\xe2\x80\x99s \xe2\x80\x9cidentity\xe2\x80\x9d was appropriated.\nThe district court relied on Eastwood v. Superior Court,\n149 Cal.App.3d 409, 198 Cal.Rptr. 342, (1983), in holding\nthat there was no cause of action for infringement on the\nright to publicity because there had been no use of a\nlikeness. In Eastwood, the California Court of Appeal\ndescribed the elements of the tort of \xe2\x80\x9ccommercial\nappropriation of the right of publicity\xe2\x80\x9d as \xe2\x80\x9c(1) the\ndefendant\xe2\x80\x99s use of the plaintiff\xe2\x80\x99s identity; (2) the\nappropriation of plaintiff\xe2\x80\x99s name or likeness to defendant\xe2\x80\x99s\nadvantage, \xe2\x80\xa6; (3) lack of consent; and (4) resulting injury.\xe2\x80\x9d\nId. at 417, 198 Cal.Rptr. 342. (Emphasis added).\nAll of the California cases that my research has disclosed\nhold that a cause of action for appropriation of the right to\npublicity requires proof of the appropriation of a name or\nlikeness. See, e.g., Lugosi v. Universal Pictures, 25 Cal.3d\n\n578\n\n\x0c813, 603 P.2d 425, 160 Cal.Rptr. 323 (1979) (\xe2\x80\x9cThe so-called\nright of publicity means in essence that the reaction of the\npublic to name and likeness \xe2\x80\xa6 endows the name and\nlikeness of the person involved with commercially\nexploitable opportunities.\xe2\x80\x9d); Guglielmi v. Spelling-Goldberg\nProds., 25 Cal.3d 860, 603 P.2d 454, 457, 160 Cal.Rptr. 352,\n355 (1979) (use of name of Rudolph Valentino in fictional\nbiography allowed); Eastwood v. Superior Court, supra (use\nof photo and name of actor on cover of tabloid\nnewspaper); In re Weingand, 231 Cal.App.2d 289, 41\nCal.Rptr. 778 (1964) (aspiring actor denied court approval\nto change name to \xe2\x80\x9cPeter Lorie\xe2\x80\x9d when famous actor Peter\nLorre objected); Fairfield v. American Photocopy Equip.\nCo., 138 Cal.App.2d 82, 291 P.2d 194 (1955), later app. 158\nCal.App.2d 53, 322 P.2d 93 (1958) (use of attorney\xe2\x80\x99s name\nin advertisement); Gill v. Curtis Publishing Co., 38 C.2d\n273, 239 P.2d 630 (1952) (use of photograph of a couple in\na magazine).\nNotwithstanding the fact that California case law clearly\nlimits the test of the right to publicity to name and likeness,\nthe majority concludes that \xe2\x80\x9cthe common law right of\npublicity is not so confined.\xe2\x80\x9d Majority opinion at p. 1397.\nThe majority relies on two factors to support its innovative\nextension of the California law. The first is that the\nEastwood court\xe2\x80\x99s statement of the elements was permissive\nrather than exclusive. The second is that Dean Prosser, in\ndescribing the common law right to publicity, stated that it\nmight be possible that the right extended beyond name or\nlikeness. These are slender reeds to support a federal\ncourt\xe2\x80\x99s attempt to create new law for the state of California.\nIn reaching its surprising conclusion, the majority has\nignored the fact that the California Court of Appeal in\nEastwood specifically addressed the differences between\nthe common law right to publicity and the statutory cause\nof action codified in California Civil Code section 3344.\nThe court explained that \xe2\x80\x9c[t]he differences between the\n\n579\n\n\x0ccommon law and the statutory actions are: (1) Section\n3344, subdivision (a) requires knowing use whereas under\ncase law, mistake and inadvertence are not a defense against\ncommercial appropriation and (2) section 3344, subdivision\n(g) expressly provides that its remedies are cumulative and\nin addition to any provided by law.\xe2\x80\x9d Eastwood, 149\nCal.App.3d at n. 6, 198 Cal.Rptr. 342 (emphasis in original).\nThe court did not include appropriations of identity by\nmeans other than name or likeness among its list of\ndifferences between the statute and the common law.\nThe majority also relies on Dean Prosser\xe2\x80\x99s statement that\n\xe2\x80\x9c[i]t is not impossible that there might be an appropriation\nof the plaintiff\xe2\x80\x99s identity, as by impersonation, without the\nuse of either his name or his likeness, and that this would\nbe an invasion of his right of privacy.\xe2\x80\x9d Prosser, Privacy,48\nCal.L.Rev. 383, 401 n. 155 (1960). As Dean Prosser noted,\nhowever, \xe2\x80\x9c[n]o such case appears to have arisen.\xe2\x80\x9d Id.\nThe majority states that the case law has borne out Dean\nProsser\xe2\x80\x99s insight that the right to publicity is not limited to\nname or likeness. As noted above, however, the courts of\nCalifornia have never found an infringement on the right to\npublicity without the use of the plaintiff\xe2\x80\x99s name or likeness.\nThe interest of the California Legislature as expressed in\nCalifornia Civil Code section 3344 appears to preclude the\nresult reached by the majority. The original section 3344\nprotected only name or likeness. In 1984, ten years after\nour decision in Motschenbacher v. R.J. Reynolds Tobacco\nCompany, 498 F.2d 821 (9th Cir.1974) and 24 years after\nProsser speculated about the future development of the law\nof the right of publicity, the California legislature amended\nthe statute. California law now makes the use of someone\xe2\x80\x99s\nvoice or signature, as well as name or likeness, actionable.\nCal.Civ.Code sec. 2233(a) (Deering 1991 Supp.). Thus,\nCalifornia, after our decision in Motschenbacher\nspecifically contemplated protection for interests other than\nname or likeness, but did not include a cause of action for\n\n580\n\n\x0cappropriation of another person\xe2\x80\x99s identity. The ancient\nmaxim, inclusio unius est exclusio alterius, would appear to\nbar the majority\xe2\x80\x99s innovative extension of the right of\npublicity. The clear implication from the fact that the\nCalifornia Legislature chose to add only voice and signature\nto the previously protected interests is that it wished to\nlimit the cause of action to enumerated attributes.\nThe majority has focused on federal decisions in its novel\nextension of California Common Law. Those decisions do\nnot provide support for the majority\xe2\x80\x99s decision.\nIn each of the federal cases relied upon by the majority, the\nadvertisement affirmatively represented that the person\ndepicted therein was the plaintiff. In this case, it is clear that\na metal robot and not the plaintiff, Vanna White, is\ndepicted in the commercial advertisement. The record does\nnot show an appropriation of Vanna White\xe2\x80\x99s identity.\nIn Motschenbacher, a picture of a well-known race driver\xe2\x80\x99s\ncar, including its unique markings, was used in an\nadvertisement. Id. at 822. Although the driver could be\nseen in the car, his features were not visible. Id. The\ndistinctive markings on the car were the only information\nshown in the ad regarding the identity of the driver. These\ndistinctive markings compelled the inference that\nMotschenbacher was the person sitting in the racing car.\nWe concluded that \xe2\x80\x9cCalifornia appellate courts would \xe2\x80\xa6\nafford legal protection to an individual\xe2\x80\x99s proprietary interest\nin his own identity.\xe2\x80\x9d Id. at 825. (Emphasis added). Because\nthe distinctive markings on the racing car were sufficient to\nidentify Motschenbacher as the driver of the car, we held\nthat an issue of fact had been raised as to whether his\nidentity had been appropriated. Id. at 827.\nIn Midler v. Ford Motor Co., 849 F.2d 460 (9th Cir.1988), a\nsinger who had been instructed to sound as much like Bette\nMidler as possible, sang a song in a radio commercial made\nfamous by Bette Midler. Id. at 461. A number of persons\n\n581\n\n\x0ctold Bette Midler that they thought that she had made the\ncommercial. Id. at 462. Aside from the voice, there was no\ninformation in the commercial from which the singer could\nbe identified. We noted that \xe2\x80\x9c[t]he human voice is one of\nthe most palpable ways identity is manifested.\xe2\x80\x9d Id. at 463.\nWe held that, \xe2\x80\x9c[t]o impersonate her voice is to pirate her\nidentity,\xe2\x80\x9did., and concluded that Midler had raised a\nquestion of fact as to the misappropriation of her identity.\nIn Carson v. Here\xe2\x80\x99s Johnny Portable Toilets, Inc., 698 F.2d\n831 (6th Cir.1983), the Sixth Circuit was called upon to\ninterpret Michigan\xe2\x80\x99s common-law right to publicity. The\ncase involved a manufacturer who used the words, \xe2\x80\x9cHere\xe2\x80\x99s\nJohnny,\xe2\x80\x9d on portable toilets. Id. at 832-33. These same\nwords were used to introduce the star of a popular latenight television program. There was nothing to indicate\nthat this use of the phrase on the portable toilets was not\nassociated with Johnny Carson\xe2\x80\x99s television program. The\ncourt found that \xe2\x80\x9c[h]ere there was an appropriation of\nCarson\xe2\x80\x99s identity,\xe2\x80\x9d which violated the right to publicity. Id.\nat 837.\nThe common theme in these federal cases is that\nidentifying characteristics unique to the plaintiffs were used\nin a context in which they were the only information as to\nthe identity of the individual. The commercial\nadvertisements in each case showed attributes of the\nplaintiff\xe2\x80\x99s identities which made it appear that the plaintiff\nwas the person identified in the commercial. No effort was\nmade to dispel the impression that the plaintiffs were the\nsource of the personal attributes at issue. The commercials\naffirmatively represented that the plaintiffs were involved.\nSee, e.g., Midler at 462 (\xe2\x80\x9cThe [Motschenbacher] ad\nsuggested that it was he\xe2\x80\xa6. In the same way the defendants\nhere used an imitation to convey the impression that Midler\nwas singing for them.\xe2\x80\x9d). The proper interpretation of\nMotschenbacher, Midler, and Carson is that where\nidentifying characteristics unique to a plaintiff are the only\n\n582\n\n\x0cinformation as to the identity of the person appearing in an\nad, a triable issue of fact has been raised as to whether his\nor her identity as been appropriated.\nThe case before this court is distinguishable from the\nfactual showing made in Motschenbacher, Midler, and\nCarson. It is patently clear to anyone viewing the\ncommercial advertisement that Vanna White was not being\ndepicted. No reasonable juror could confuse a metal robot\nwith Vanna White.\nThe majority contends that \xe2\x80\x9cthe individual aspects of the\nadvertisement \xe2\x80\xa6 [v]iewed together leave little doubt about\nthe celebrity the ad is meant to depict.\xe2\x80\x9d Majority Opinion at\np. 1399. It derives this conclusion from the fact that Vanna\nWhite is \xe2\x80\x9cthe only one\xe2\x80\x9d who \xe2\x80\x9cdresses like this, turns letters,\nand does this on the Wheel of Fortune game show.\xe2\x80\x9d Id. In\nreaching this conclusion, the majority confuses Vanna\nWhite, the person, with the role she has assumed as the\ncurrent hostess on the \xe2\x80\x9cWheel of Fortune\xe2\x80\x9d television game\nshow. A recognition of the distinction between a performer\nand the part he or she plays is essential for a proper analysis\nof the facts of this case. As is discussed below, those things\nwhich Vanna White claims identify her are not unique to\nher. They are, instead, attributes of the role she plays. The\nrepresentation of those attributes, therefore, does not\nconstitute a representation of Vanna White. See Nurmi v.\nPeterson,\n10\nU.S.P.Q.2d\n1775\n(C.D.Cal.1989)\n(distinguishing between performer and role).\nVanna White is a one-role celebrity. She is famous solely\nfor appearing as the hostess on the \xe2\x80\x9cWheel of Fortune\xe2\x80\x9d\ntelevision show. There is nothing unique about Vanna\nWhite or the attributes which she claims identify her.\nAlthough she appears to be an attractive woman, her face\nand figure are no more distinctive than that of other equally\ncomely women. She performs her role as hostess on\n\xe2\x80\x9cWheel of Fortune\xe2\x80\x9d in a simple and straight-forward\n\n583\n\n\x0cmanner. Her work does not require her to display whatever\nartistic talent she may possess.\nThe majority appears to argue that because Samsung\ncreated a robot with the physical proportions of an\nattractive woman, posed it gracefully, dressed it in a blond\nwig, an evening gown, and jewelry, and placed it on a set\nthat resembles the Wheel of Fortune layout, it thereby\nappropriated Vanna White\xe2\x80\x99s identity. But an attractive\nappearance, a graceful pose, blond hair, an evening gown,\nand jewelry are attributes shared by many women,\nespecially in Southern California. These common attributes\nare particularly evident among game-show hostesses,\nmodels, actresses, singers, and other women in the\nentertainment field. They are not unique attributes of\nVanna White\xe2\x80\x99s identity. Accordingly, I cannot join in the\nmajority\xe2\x80\x99s conclusion that, even if viewed together, these\nattributes identify Vanna White and, therefore, raise a\ntriable issue as to the appropriation of her identity.\nThe only characteristic in the commercial advertisement\nthat is not common to many female performers or\ncelebrities is the imitation of the \xe2\x80\x9cWheel of Fortune\xe2\x80\x9d set.\nThis set is the only thing which might possibly lead a\nviewer to think of Vanna White. The Wheel of Fortune set,\nhowever, is not an attribute of Vanna White\xe2\x80\x99s identity. It is\nan identifying characteristic of a television game show, a\nprop with which Vanna White interacts in her role as the\ncurrent hostess. To say that Vanna White may bring an\naction when another blond female performer or robot\nappears on such a set as a hostess will, I am sure, be a\nsurprise to the owners of the show. Cf. Baltimore Orioles,\nInc. v. Major League Baseball Players Ass\xe2\x80\x99n, 805 F.2d 663\n(7th Cir.1986) (right to publicity in videotaped\nperformances preempted by copyright of owner of\ntelecast).\nThe record shows that Samsung recognized the market\nvalue of Vanna White\xe2\x80\x99s identity. No doubt the\n\n584\n\n\x0cadvertisement would have been more effective if Vanna\nWhite had appeared in it. But the fact that Samsung\nrecognized Vanna White\xe2\x80\x99s value as a celebrity does not\nnecessarily mean that it appropriated her identity. The\nrecord shows that Samsung dressed a robot in a costume\nusually worn by television game-show hostesses, including\nVanna White. A blond wig, and glamorous clothing are not\ncharacteristics unique to the current hostess of Wheel of\nFortune. This evidence does not support the majority\xe2\x80\x99s\ndetermination that the advertisement was meant to depict\nVanna White. The advertisement was intended to depict a\nrobot, playing the role Vanna White currently plays on the\nWheel of Fortune. I quite agree that anyone seeing the\ncommercial advertisement would be reminded of Vanna\nWhite. Any performance by another female celebrity as a\ngame-show hostess, however, will also remind the viewer\nof Vanna White because Vanna White\xe2\x80\x99s celebrity is so\nclosely associated with the role. But the fact that an actor or\nactress became famous for playing a particular role has,\nuntil now, never been sufficient to give the performer a\nproprietary interest in it. I cannot agree with the majority\nthat the California courts, which have consistently taken a\nnarrow view of the right to publicity, would extend law to\nthese unique facts.\nIII. THE LANHAM ACT\nVanna White\xe2\x80\x99s Lanham Act claim is easily resolved by\napplying the proper legal standard. Vanna White seeks\ndamages for violation of section 43(a) of the Lanham Act.\nTo succeed, Vanna White must prove actual deception of\nthe consuming public. Harper House, Inc. v. Thomas\nNelson, Inc., 889 F.2d 197, 208 (9th Cir.1989) (claim for\ndamages under section 43(a) requires showing the\ndefendant \xe2\x80\x9cactually deceived a significant portion of the\nconsuming public.\xe2\x80\x9d); see also PPX Enterprises, Inc. v.\nAudiofidelity Enterprises, Inc., 818 F.2d 266, 271 (2d\nCir.1987) (\xe2\x80\x9cto establish entitlement to damages for\n\n585\n\n\x0cviolation of section 43(a): [Plaintiffs] must establish actual\nconfusion or deception resulting from the violation.\xe2\x80\x9d); J.\nGilson, Trademark Protection and Practice section 7.02 at\n7-137 to 7-138 (1991) (plaintiffs must show actual\ndeception to obtain damages under section 43(a)). Vanna\nWhite offered no evidence that any portion of the\nconsuming public was deceived. The district court was\ncorrect in granting summary judgment on Vanna White\xe2\x80\x99s\nLanham Act claim.\nThe majority finds that because a majority of factors set\nforth in AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th\nCir.1979), favor Vanna White, the district court erred in\ngranting summary judgment.\nThe AMF test is designed to aid in determining whether\ntwo marks are so sufficiently similar that it is likely that a\nconsumer would confuse them. Where the marks are so\nobviously different that no confusion could possibly occur,\nthe test is unnecessary. That is the situation in this matter.\nThe attempt to use the Lanham Act to prevent\n\xe2\x80\x9cmisappropriations\xe2\x80\x9d of which a court does not approve\nresults in the distortion of the law which makes it more\ndifficult to apply the law in appropriate cases. See Hanson\n& Walls, Protecting Trademark Goodwill: Towards a\nFederal Standard of Misappropriation, 81 Trademark Rep.\n480, 511-513 (1991). This case is an example of such\ndistortion.\nThe majority assumes the conclusion that the AMF test is\ndesigned to disclose. In repeatedly stating that the robot\n\xe2\x80\x9cidentifies\xe2\x80\x9d Vanna White, the majority has usurped the fact\nfinding function of the district court.\nThe majority holds that the first factor of the AMF test,\nstrength of the mark, weighs in Vanna White\xe2\x80\x99s favor. It\nequates this factor with the strength of Vanna White\xe2\x80\x99s\nfame, citing Allen v. National Video, Inc., 610 F.Supp. 612\n(D.C.N.Y.1985). Allen involved a celebrity look-alike who\n\n586\n\n\x0cbore a remarkable resemblance to Woody Allen. Id. at 617.\nThe instant matter involves a robot that bears no\nresemblance to Vanna White.\nIt is unclear whether the \xe2\x80\x9cmark\xe2\x80\x9d for which Vanna White\nseeks protection is her screen image or the imitation Wheel\nof Fortune. Although Vanna White is certainly famous for\nbeing famous, there is no evidence in the record that\nconsumers identify the specific characteristics at issue, i.e.,\nblond hair and fancy dress, solely with Vanna White. The\nmajority ignores this important distinction.\nThe majority has glossed over the third AMF factorsimilarity of the marks-the most important factor in this\ncase. The majority finds this factor \xe2\x80\x9cambiguous\xe2\x80\x9d because\nthe common characteristics \xe2\x80\x9cidentify\xe2\x80\x9d Vanna White.\nMajority Opinion at p. 1400. We are required, however, to\ncompare marks in their entirety. California Cooler, Inc. v.\nLoretto Winery, 774 F.2d 1451 (9th Cir.1985). In this\nmatter, the consumer is confronted with two entities. One\nis Vanna White. The other is a robot. No one could\nreasonably confuse the two.\nCertain aspects of a mark may have a greater impact than\nother aspects. When a mark has certain salient\ncharacteristics, they are given greater weight. Country\nFloors, Inc. v. Gepner, 930 F.2d 1056 (3d Cir.1991);\nHenri\xe2\x80\x99s Food Products Co. v. Kraft, Inc., 717 F.2d 352 (7th\nCir.1983); Giant Food, Inc. v. Nations\xe2\x80\x99 Foodservice, Inc.,\n710 F.2d 1565 (Fed.Cir.1983). The face of Vanna White\nand the features of the robot are obviously more important\ncharacteristics than their hair, dress, physical proportions,\njewelry, or the decoration of the set. Thus, the features of\nthe robot and Vanna White should be given great weight in\nthe analysis. It should be clear to anyone viewing the\ncommercial advertisement that the crude features of the\nrobot are very dissimilar to Vanna White\xe2\x80\x99s attractive and\nhuman face.\n\n587\n\n\x0cThe majority\xe2\x80\x99s analysis of the intent or seventh factor in\nAMF is similarly suspect. The question presented here is\nwhether there is any evidence in the record that Samsung\nintended to confuse consumers. It did not.\nWhere the circumstances are sufficient to eliminate any\nlikelihood of confusion, this court has repeatedly held that\nthere is no claim for a violation of the Lanham Act. See\nToho Co., Ltd. v. Sears, Roebuck & Co., 645 F.2d 788 (9th\nCir.1981) (\xe2\x80\x9cBagzilla\xe2\x80\x9d garbage bags did not infringe\n\xe2\x80\x9cGodzilla\xe2\x80\x9d mark); Walt Disney Prods. v. Air Pi rates, 581\nF.2d 751 (9th Cir.1978), cert. denied sub nom O\xe2\x80\x99Neill v.\nWalt Disney Prods, 439 U.S. 1132, 99 S.Ct. 1054, 59\nL.Ed.2d 94 (1979) (\xe2\x80\x9cSilly Sympathies\xe2\x80\x9d in adult comic books\ndid not infringe on Disney\xe2\x80\x99s \xe2\x80\x9cSilly Symphonies\xe2\x80\x9d). The use\nof a robot in the commercial advertisement makes it clear\nthat Vanna White did not endorse Samsung\xe2\x80\x99s product.\nAlthough likelihood of confusion may usually be a factual\nquestion, \xe2\x80\x9ccourts retain an important authority to monitor\nthe outer limits of substantial similarity within which a jury\nis permitted to make the factual determination whether\nthere is a likelihood of confusion.\xe2\x80\x9d Warner Bros., Inc. v.\nAmerican Broadcasting Cos., Inc., 720 F.2d 231, 246 (2d\nCir.1983). \xe2\x80\x9c[S]ummary judgment is appropriate if the court\nis satisfied that the products or marks are so dissimilar that\nno question of fact is presented.\xe2\x80\x9d Universal City Studios,\nInc. v. Nintendo Co., Ltd., 746 F.2d 112 (2d Cir.1984).\n\xe2\x80\x9cThere is no issue for trial unless there is sufficient\nevidence favoring the nonmoving party for a jury to return\na verdict for that party.\xe2\x80\x9d Anderson v. Liberty Lobby, Inc.,\n477 U.S. 242, 249, 106 S.Ct. 2505, 2510, 91 L.Ed.2d 202\n(1986). Vanna White has presented no evidence of actual\ndeception. Thus, she has failed to raise a genuine issue of\nmaterial fact that would support her Lanham Act claim.\nIV. SAMSUNG\xe2\x80\x99S FIRST AMENDMENT DEFENSE\n\n588\n\n\x0cThe majority gives Samsung\xe2\x80\x99s First Amendment defense\nshort shrift because \xe2\x80\x9c[t]his case involves a true\nadvertisement run for the purpose of selling Samsung\nVCRs.\xe2\x80\x9d Majority opinion at p. 1401. I respectfully disagree\nwith the majority\xe2\x80\x99s analysis of this issue as well.\nThe majority\xe2\x80\x99s attempt to distinguish this case from Hustler\nMagazine v. Falwell, 485 U.S. 46, 108 S.Ct. 876, 99 L.Ed.2d\n41 (1988), and L.L. Bean, Inc. v. Drake Publishers, Inc.,\n811 F.2d 26 (1st Cir.1987), is unpersuasive. The majority\nnotes that the parodies in those cases were made for the\npurpose of poking fun at the Reverend Jerry Falwell and\nL.L. Bean. But the majority fails to consider that the\ndefendants in those cases were making fun of the Reverend\nJerry Falwell and L.L. Bean for the purely commercial\npurpose of selling soft-core pornographic magazines.\nGenerally, a parody does not constitute an infringement on\nthe original work if it takes no more than is necessary to\n\xe2\x80\x9cconjure up\xe2\x80\x9d the original. Walt Disney Prods. v. Air Pirates,\n581 F.2d 751, 756 (9th Cir.1978). The majority has failed to\nconsider these factors properly in deciding that Vanna\nWhite may bring an action for damages solely because the\npopularity of the fame show, Wheel of Fortune.\nThe effect of the majority\xe2\x80\x99s holding on expressive conduct\nis difficult to estimate. The majority\xe2\x80\x99s position seems to\nallow any famous person or entity to bring suit based on\nany commercial advertisement that depicts a character or\nrole performed by the plaintiff. Under the majority\xe2\x80\x99s view\nof the law, Gene Autry could have brought an action for\ndamages against all other singing cowboys. Clint Eastwood\nwould be able to sue anyone who plays a tall, soft-spoken\ncowboy, unless, of course, Jimmy Stewart had not\npreviously enjoined Clint Eastwood. Johnny Weismuller\nwould have been able to sue each actor who played the role\nof Tarzan. Sylvester Stallone could sue actors who play\nblue-collar boxers. Chuck Norris could sue all karate\nexperts who display their skills in motion pictures. Arnold\n\n589\n\n\x0cSchwarzenegger could sue body builders who are\ncompensated for appearing in public.\nThe majority\xe2\x80\x99s reading of the Lanham Act would provide a\nbasis for \xe2\x80\x9ccommercial\xe2\x80\x9d enterprises to maintain an action\nfor section 43(a) violations even in the absence of\nconfusion or deception. May Black and Decker, maker of\nthe \xe2\x80\x9cDustbuster\xe2\x80\x9d portable vacuum, now sue \xe2\x80\x9cBustdusters,\xe2\x80\x9d the Los Angeles topless cleaning service. Can the\nLos Angeles Kings hockey team state a cause of action\nagainst the City of Las Vegas for its billboards reading\n\xe2\x80\x9cL.A. has the Kings, but we have the Aces.\xe2\x80\x9d\nDirect competitive advertising could also be affected. Will\nBMW, which advertises its automobiles as \xe2\x80\x9cthe ultimate\ndriving machine,\xe2\x80\x9d be able to maintain an action against\nToyota for advertising one of its cars as \xe2\x80\x9cthe ultimate\nsaving machine\xe2\x80\x9d? Can Coca Cola sue Pepsi because it\ndepicted a bottle of Coca Cola in its televised \xe2\x80\x9ctaste test\xe2\x80\x9d?\nIndeed, any advertisement which shows a competitor\xe2\x80\x99s\nproduct, or any recognizable brand name, would appear to\nbe liable for damages under the majority\xe2\x80\x99s view of the\napplicable law. Under the majority\xe2\x80\x99s analysis, even the\ndepiction of an obvious facsimile of a competitor\xe2\x80\x99s product\nmay provide sufficient basis for the maintenance of an\naction for damages.\nV. CONCLUSION\nThe protection of intellectual property presents the courts\nwith the necessity of balancing competing interests. On the\none hand, we wish to protect and reward the work and\ninvestment of those who create intellectual property. In so\ndoing, however, we must prevent the creation of a\nmonopoly that would inhibit the creative expressions of\nothers. We have traditionally balanced those interests by\nallowing the copying of an idea, but protecting a unique\nexpression of it. Samsung clearly used the idea of a\nglamorous female game show hostess. Just as clearly, it\n\n590\n\n\x0cavoided appropriating Vanna White\xe2\x80\x99s expression of that\nrole. Samsung did not use a likeness of her. The performer\ndepicted in the commercial advertisement is unmistakably a\nlifeless robot. Vanna White has presented no evidence that\nany consumer confused the robot with her identity. Indeed,\nno reasonable consumer could confuse the robot with\nVanna White or believe that, because the robot appeared in\nthe advertisement, Vanna White endorsed Samsung\xe2\x80\x99s\nproduct.\nI would affirm the district court\xe2\x80\x99s judgment in all respects.\nGordon Sumner, p/k/a Sting v Michael Urvan,\nCase No. D2000-0596 (WIPO Arbitration, Jul. 25, 2000)\n1. The Parties\n1.1 The Complainant is Gordon Sumner,\nprofessionally known as \xe2\x80\x9cSting\xe2\x80\x9d, a citizen of the\nUnited Kingdom who maintains a residence in the\nUnited States. The Respondent is Michael Urvan, of\nMarietta, Georgia, United States of America.\n\xe2\x80\xa6.\n4. Factual Background\nComplainant\xe2\x80\x99s Activities and Trademarks\n4.1 In his Complaint, the Complainant asserted\nthe following in relation to his activities and\ntrademarks. The Complainant is a world famous\nmusician, recording and performing artist who\nhas, for over twenty years, rendered high-quality\nmusical services under his name, trademark and\nservice mark STING. Since at least as early as\n1978, the Complainant has exclusively and\ncontinuously used the STING mark in\nconnection with approximately twenty record\n\n591\n\n\x0calbums, almost all of which have gone multiplatinum in the United States and enjoyed great\ncommercial success worldwide. The Complainant\nhas also used the STING mark in connection\nwith innumerable world-wide concert tours\ninvolving venues with significant capacities, the\nmajority of which sell out. The STING mark is\ninternationally known and famous as a result of\nthe Complainant\xe2\x80\x99s extensive, high-profile, and\noverwhelmingly\ncommercially\nsuccessful\nactivities in the music industry. The Complainant\nis the owner of the STING mark as a trademark\nand service mark. The name STING has become\nsynonymous in the minds of the public with the\nComplainant and his activities in the music\nindustry, and serves as a symbol of the goodwill\nand excellent reputation associated with Sting.\nThe STING mark is famous and entitled to the\nwidest scope of protection afforded by law,\nincluding protection against dilution.\n4.2 In his Response, the Respondent asserted\nthat there are 20 trademark registrations of the\nword STING in the US, but none of them are\nregistered by the Complainant. The word STING\nis a common word in the English language, and\nso registration of it as a domain name is not a\nviolation of the Uniform Policy. The Respondent\nis not a competitor of the Complainant and the\nRespondent does not attempt to cause any\nconfusion with him.\nRespondent\xe2\x80\x99s Activities\n4.3 The Complainant asserted the following in\nrelation to the Respondent\xe2\x80\x99s activities and use of\nthe domain name. Until the Respondent was\n\n592\n\n\x0ccontacted by a representative of the\nComplainant, the Respondent made no use of\nthe domain name. After being contacted by a\nrepresentative of the Complainant, Respondent\nlinked the domain name to another site called\n\xe2\x80\x9cGunBroker.Com\xe2\x80\x9d, which is a site that facilitates\n\xe2\x80\x9cperson to person\xe2\x80\x9d selling of guns. During or\nabout February of 2000, and again during or\nabout May of 2000, the Respondent offered to\nsell the domain name to the Complainant for\n$25,000.00. Since offering to sell the domain\nname to the Complainant for $25,000.00, the\nRespondent has frequently changed the web site\nidentified by the domain name, usually with an\n\xe2\x80\x9cunder construction\xe2\x80\x9d message, and in some cases\nproviding a link to a third-party operated\nunauthorized web site relating to the\nComplainant.\n4.4 In his Response, the Respondent asserted\nthat he has been using the nickname \xe2\x80\x9cSting\xe2\x80\x9d and\nmore recently \xe2\x80\x9c=Sting=\xe2\x80\x9d publicly on the Internet\nfor at least 8 years. The Respondent registered\nthe domain name in July 1995, approximately 5\nyears before this dispute was commenced. The\nRespondent did not register the domain name to\nsell it, nor did he register the domain to hold it\nhostage for any reason. The Respondent engaged\nin work on web site to which he intended the\ndomain name \xe2\x80\x9csting.com\xe2\x80\x9d to resolve, prior to\nany notification of this dispute. The Respondent\ndid not point the domain name \xe2\x80\x9csting.com\xe2\x80\x9d to\nthe \xe2\x80\x9cGunBroker.com\xe2\x80\x9d website \xe2\x80\x93 this occurred\nfor a short time as a result of an error on the part\nof the Respondent\xe2\x80\x99s web service provider. The\nComplainant\xe2\x80\x99s assertion that the Respondent\ninitiated contact with the Complainant is false -\n\n593\n\n\x0cthe first contact was initiated by the Complainant\non May 16, 2000.\n\xe2\x80\xa6.\n6. Discussion and Findings\nDomain Name Identical or Confusingly Similar to\nComplainant\xe2\x80\x99s Mark\n6.1 The relevant part of the domain name\n\xe2\x80\x9csting.com\xe2\x80\x9d is \xe2\x80\x9csting\xe2\x80\x9d. The Complainant asserts,\nthe Respondent admits, and this Administrative\nPanel finds, that the domain name is identical to\nthe word STING.\n6.2 The Complainant is not the owner of a\ntrademark or service mark registration for the\nword STING. It is, however, clear that the\nUniform Policy is not limited to a \xe2\x80\x9cregistered\xe2\x80\x9d\nmark; an unregistered, or common law, mark is\nsufficient for the purposes of paragraph 4(a)(i).\nThe Complainant did not provide any\ndocumentary evidence in support of his assertion\nthat he is the owner of the unregistered\ntrademark and/or service mark STING.\nHowever, the Uniform Policy is not limited to\ntrademarks or service marks \xe2\x80\x9cowned\xe2\x80\x9d by the\nComplainant; it is sufficient for the purposes of\nparagraph 4(a)(i) that there be a trademark or\nservice mark \xe2\x80\x9cin which the Complainant has\nrights\xe2\x80\x9d. The Complainant asserted, and this\nAdministrative Panel through the equivalent of\ntaking judicial notice finds, that the Complainant\nis a world famous entertainer who is known by\nthe name STING.\n\n594\n\n\x0c6.3 The question that arises is whether being\nknown under a particular name is the same as\nhaving rights in that name as a \xe2\x80\x9ctrademark or\nservice mark\xe2\x80\x9d. The answer to this question is not\nstraightforward. On the one hand, there are a\nnumber of cases under the Uniform Policy in\nwhich the Panel has treated the name of a\nfamous or at least widely known person as\nconstituting an unregistered trademark or service\nmark sufficient for the purposes of paragraph\n4(a)(i) (eg. Julia Fiona Roberts v Russell Boyd\nWIPO Case No. D2000-0210; Jeannette\nWinterson v Mark Hogarth WIPO Case No.\nD2000-0235;\nSteven\nRattner\nv\nBuyThisDomainName (John Pepin) WIPO Case\nNo. D2000-0402).\n6.4 On the other hand, the Report of the WIPO\nInternet Domain Name Process of April 30,\n1999, on which ICANN based the Uniform\nPolicy, at paragraphs 165-168, states as follows\n(footnote citations deleted, emphasis added):\nThe\npreponderance of\nviews, however, was in favor\nof restricting the scope of\nthe procedure, at least\ninitially, in order to deal first\nwith the most offensive\nforms of predatory practices\nand to establish the\nprocedure on a sound\nfooting. Two limitations on\nthe scope of the procedure\nwere, as indicated above,\nfavored\nby\nthese\ncommentators. The first\nlimitation would confine the\n\n595\n\n\x0cavailability of the procedure\nto cases of deliberate, bad\nfaith abusive registrations.\nThe definition of such\nabusive registrations is\ndiscussed in the next\nsection.\nThe\nsecond\nlimitation would define\nabusive\nregistration by\nreference only to trademarks\nand service marks. Thus,\nregistrations that violate\ntrade names, geographical\nindications or personality\nrights would not be\nconsidered to fall within the\ndefinition\nof\nabusive\nregistration for the purposes\nof\nthe\nadministrative\nprocedure. Those in favor\nof this form of limitation\npointed out that the\nviolation of trademarks (and\nservice marks) was the most\ncommon form of abuse and\nthat the law with respect to\ntrade names, geographical\nindications and personality\nrights\nis\nless\nevenly\nharmonized throughout the\nworld,\nalthough\ninternational norms do exist\nrequiring the protection of\ntrade\nnames\nand\ngeographical indications. We\nare persuaded by the\nwisdom of proceeding\nfirmly but cautiously and of\ntackling, at the first stage,\nproblems which all agree\n\n596\n\n\x0crequire a solution. \xe2\x80\xa6 [W]e\nconsider that it is premature\nto extend the notion of\nabusive registration beyond\nthe violation of trademarks\nand service marks at this\nstage. After experience has\nbeen gained with the\noperation\nof\nthe\nadministrative\nprocedure\nand time has allowed for an\nassessment of its efficacy\nand of the problems, if any,\nwhich remain outstanding,\nthe question of extending\nthe notion of abusive\nregistration\nto\nother\nintellectual property rights\ncan always be re-visited.\nIt is clear from this statement that personality\nrights were not intended to be made subject to\nthe proposed dispute resolution procedure. In\nadopting the procedure proposed in the WIPO\nReport, ICANN did not vary this limitation on\nits application. It must be concluded, therefore,\nthat ICANN did not intend the procedure to\napply to personality rights.\n6.5 In the opinion of this Administrative Panel, it\nis doubtful whether the Uniform Policy is\napplicable to this dispute. Although it is accepted\nthat the Complainant is world famous under the\nname STING, it does not follow that he has\nrights in STING as a trademark or service mark.\nUnlike the personal names in issue in the cases\nJulia Fiona Roberts v Russell Boyd, Jeannette\nWinterson v Mark Hogarth, and Steven Rattner v\nBuyThisDomainName (John Pepin), the\n\n597\n\n\x0cpersonal name in this case is also a common\nword in the English language, with a number of\ndifferent meanings. The following are the entries\nfor \xe2\x80\x9csting\xe2\x80\x9d from Merriam- Webster\xe2\x80\x99s Collegiate\nDictionary:\nsting vb stung ; sting.ing\n[ME, fr. OE stingan; akin to\nON stinga to sting and\nprob. to Gk stachys spike of\ngrain, stochos target, aim] vt\n(bef. 12c) 1: to prick\npainfully: as a: to pierce or\nwound with a poisonous or\nirritating process b: to affect\nwith sharp quick pain or\nsmart \xe2\x80\x9chail stung their\nfaces\xe2\x80\x9d 2: to cause to suffer\nacutely\n\xe2\x80\x9cstung\nwith\nremorse\xe2\x80\x9d 3: overcharge,\ncheat ~ vi 1: to wound one\nwith or as if with a sting 2:\nto feel a keen burning pain\nor smart; also: to cause such\npain \xe2\x80\x93 sting.ing.ly adv\nsting n (bef. 12c) 1 a: the act\nof stinging; specif: the thrust\nof a stinger into the flesh b:\na wound or pain caused by\nor as if by stinging 2: stinger\n2 3: a sharp or stinging\nelement, force, or quality 4:\nan elaborate confidence\ngame; specif: such a game\nworked by undercover\npolice in order to trap\ncriminals\n\n598\n\n\x0c6.6 In light of the fact that the word \xe2\x80\x9csting\xe2\x80\x9d is in\ncommon usage in the English language, with a\nnumber of meanings, this case can be\ndistinguished from the other cases cited above in\nwhich the Complainants\xe2\x80\x99 personal name was\nfound also to be an unregistered trademark or\nservice mark to which the Uniform Policy\napplies. This Administrative Panel is inclined to\nthe view, therefore, that the Complainant\xe2\x80\x99s name\nSTING is not a trademark or service mark within\nthe scope of paragraph 4(a)(i) of the Uniform\nPolicy. However, it is not necessary to reach a\nformal decision on this issue, because this\nAdministrative Panel finds against the\nComplainant on other grounds, namely that the\nrequirement of paragraph 4(a)(iii) is not met, as\ndiscussed below.\nRespondent\xe2\x80\x99s Rights or Legitimate Interests in the\nDomain Name\n6.7 The Respondent provided evidence of\ncircumstances of the type specified in paragraph\n4(c) of the Uniform Policy as giving rise to a\nright to or legitimate interest in the domain\nname. In particular, the Respondent provided in\nExhibit C of the Response copies of various\nemail communications to him prior to the\ncommencement of this dispute, showing that the\n\xe2\x80\x9cUserName\xe2\x80\x9d, the \xe2\x80\x9cnickname\xe2\x80\x9d, the \xe2\x80\x9cScreen\nName\xe2\x80\x9d, or the \xe2\x80\x9cAccount PIC\xe2\x80\x9d under which the\nRespondent had registered for global internet\ngaming services consisted of or included the\nword \xe2\x80\x9csting\xe2\x80\x9d. In Exhibit D to the Response, the\nRespondent provided copies of web page\nprintouts from The Champions League of\nQuake, a service which monitors Quake servers\n\n599\n\n\x0cand keeps track of the scores of registered\nplayers of this game. Those printouts show that\nthe Respondent played this game using the player\nnames \xe2\x80\x9csting\xe2\x80\x9d or \xe2\x80\x9c=sting=\xe2\x80\x9d. In addition, the\nRespondent provided evidence in Exhibit E to\nthe Response of preparations by him to establish\na web site at the URL http://www.sting.com.\n6.8 Although this evidence is not irrelevant to the\nissue of whether or not the Respondent has a\nright to or a legitimate interest in the domain\nname, it is certainly at the weaker end of the\nspectrum of such evidence. The Respondent\xe2\x80\x99s\nuse of the name \xe2\x80\x9csting\xe2\x80\x9d or \xe2\x80\x9c=sting=\xe2\x80\x9d for gaming\ndoes not establish that he has been \xe2\x80\x9ccommonly\nknown\xe2\x80\x9d by the domain name as contemplated by\nparagraph 4(c)(ii). The word is undistinctive, and\nmost likely is used by numerous people in\ncyberspace. In practice, this word provides the\nRespondent with anonymity rather than with a\nname by which he is commonly known. The\nRespondent\xe2\x80\x99s evidence of his preparations to\nestablish a web site at the URL\nhttp://www.sting.com does not establish the\ncircumstances contemplated by paragraph 4(c)(i),\nbecause there is no evidence that this proposed\nuse of the domain name is in connection with a\nbona fide offering of goods or services.\n6.9 In short, a more substantive use of the word\n\xe2\x80\x9csting\xe2\x80\x9d than that proven by the Respondent is\nrequired to show a right or legitimate interest in\nthe domain name \xe2\x80\x9csting.com\xe2\x80\x9d (although this\nproven use is relevant to the issue of bad faith).\nOn balance, therefore, this Administrative Panel\nfinds that the Respondent does not have a right\nto or a legitimate interest in the domain name, in\n\n600\n\n\x0cthe sense in which that concept is used in\nparagraph 4(a)(ii) of the Uniform Policy.\nDomain Name Registered and Used in Bad Faith\n6.10 The Complainant has not satisfied this\nAdministrative Panel that the Respondent\nregistered and is using the domain name in bad\nfaith. The Complainant asserted that the\nRespondent offered to sell the domain name to\nthe Complainant for $25,000, but the\nComplainant provided no evidence in support of\nthis assertion. In particular, the Complainant\nprovided no evidence of the Respondent\xe2\x80\x99s\nalleged communications with the Complainant\non this issue. The Respondent admitted that he\noffered to sell the domain name to the\nComplainant, but only after the Complainant\nsolicited that offer. (The Respondent did not\nspecify the price at which he offered to sell the\ndomain name, but he did not dispute the\nComplainant\xe2\x80\x99s assertion of $25,000, so this\nAdministrative Panel assumes the offered price\nwas for that amount, or at least for an amount in\nexcess of the Respondent\xe2\x80\x99s out-of-pocket\nexpenses.) Although this evidence is consistent\nwith the Complainant\xe2\x80\x99s contention that the\nRespondent acquired the domain name primarily\nfor the purpose of selling it to the Complainant,\nas required by paragraph 4(b)(i), this evidence\ndoes not prove that. This evidence is equally\nconsistent with the Respondent\xe2\x80\x99s contention that\nhe acquired the domain name five years ago in\ngood faith. In the absence of any evidence\nwhatsoever from the Complainant going to the\nassertion of the Respondent\xe2\x80\x99s offer to sell the\ndomain name, this Administrative Panel finds\n\n601\n\n\x0cthat the Complainant has not met the burden of\nproof on this issue.\n6.11 This Administrative Panel does not accept\nthe Complainant\xe2\x80\x99s contention that the linking of\nthe domain name to the \xe2\x80\x9cGunBroker.com\xe2\x80\x9d web\nsite constituted intentionally attempting to\nattract, for commercial gain, Internet users to an\non-line location by creating a likelihood of\nconfusion with the STING mark as to source,\nsponsorship, affiliation, or endorsement, and so\nconstitutes an activity which corresponds to that\nlisted in paragraph 4(b)(iv) of the Uniform Policy\nas evidence of bad faith registration and use of\nthe domain name. Again, the Complainant\nprovided no evidence in support of this\ncontention. In particular, the Complainant\nprovided no evidence as to the contents of the\n\xe2\x80\x9cGunBroker.com\xe2\x80\x9d site, and thus no evidence\nestablishing that a likelihood of confusion with\nthe STING mark was created as to source,\nsponsorship, affiliation or endorsement of the\nsite. The Respondent admitted that the domain\nname did point to the \xe2\x80\x9cGunBroker.com\xe2\x80\x9d site for\na period of time, but provided evidence to the\neffect that this was due to an error on the part of\nthe Respondent\xe2\x80\x99s web service provider. The\nevidence is therefore consistent with the\nRespondent\xe2\x80\x99s contention that there was no\nintentional attempt to attract internet users for\ncommercial gain. Once again, the Complainant\nhas failed to satisfy its burden of proof on this\npoint.\n6.12 Finally, this Administrative Panel does not\naccept the Complainant\xe2\x80\x99s contention that \xe2\x80\x9cit is\nnot possible to conceive of any plausible actual\n\n602\n\n\x0cor contemplated active use of the [D]omain\n[N]ame by the Respondent that would not be\nillegitimate, such as by being a passing off, an\ninfringement of consumer protection legislation,\nor an infringement of the Complainant\xe2\x80\x99s rights\nunder trademark law\xe2\x80\x9d. The words in quotation\nmarks come from Telstra Corporation Limited v\nNuclear Marshmallows WIPO Case No. D20000003. In the Telstra case, the trademark in\nquestion was an invented word. In this case the\nmark in question is a common word in the\nEnglish language, with a number of meanings.\nUnlike the situation in the Telstra case, therefore,\nit is far from inconceivable that there is a\nplausible legitimate use to which the Respondent\ncould put the domain name. The Respondent has\nasserted a legitimate use to which he has put, and\nintends to put, the domain name. Whilst the\nevidence provided in support of this assertion is\nnot particularly strong, it is at least consistent\nwith that assertion, and with his overall\ncontention that he did not register and has not\nbeen using the domain name in bad faith. The\nComplainant has thus failed to satisfy the burden\nof proof on this point.\n7. Decision\n7.1 This Administrative Panel decides that the\nComplainant has not proven each of the three\nelements in paragraph 4(a) of the Uniform Policy\nin relation to the domain name the subject of the\nComplaint.\n7.2 Pursuant to paragraph 4(i) of the\nUniform Policy and paragraph 15 of\nthe\nUniform\nRules,\nthis\n\n603\n\n\x0cAdministrative Panel denies the\nrequest that the Registrar, Network\nSolutions, Inc, be required either to\ntransfer to the Complainant,\nGordon Sumner, p/k/a Sting, or to\ncancel,\nthe\ndomain\nname\n\xe2\x80\x9csting.com\xe2\x80\x9d.\n\n604\n\n\x0c4. Transfers\n4.1. Gifts\nGruen v. Gruen, 68 N.Y.2d 48 (1986)\nSIMONS, J.\nPlaintiff commenced this action seeking a declaration that\nhe is the rightful owner of a painting which he alleges his\nfather, now deceased, gave to him. He concedes that he has\nnever had possession of the painting but asserts that his\nfather made a valid gift of the title in 1963 reserving a life\nestate for himself. His father retained possession of the\npainting until he died in 1980. Defendant, plaintiff\xe2\x80\x99s\nstepmother, has the painting now and has refused plaintiff\xe2\x80\x99s\nrequests that she turn it over to him. She contends that the\npurported gift was testamentary in nature and invalid\ninsofar as the formalities of a will were not met or,\nalternatively, that a donor may not make a valid inter vivos\ngift of a chattel and retain a life estate with a complete right\nof possession. Following a seven-day nonjury trial, Special\nTerm found that plaintiff had failed to establish any of the\nelements of an inter vivos gift and that in any event an\nattempt by a donor to retain a present possessory life estate\nin a chattel invalidated a purported gift of it. The Appellate\nDivision held that a valid gift may be made reserving a life\nestate and, finding the elements of a gift established in this\ncase, it reversed and remitted the matter for a\ndetermination of value (104 AD2d 171). That\ndetermination has now been made and defendant appeals\ndirectly to this court, pursuant to CPLR 5601 (d), from the\nsubsequent final judgment entered in Supreme Court\nawarding plaintiff $2,500,000 in damages representing the\nvalue of the painting, plus interest. We now affirm.\nThe subject of the dispute is a work entitled \xe2\x80\x9cSchloss\nKammer am Attersee II\xe2\x80\x9d painted by a noted Austrian\nmodernist, Gustav Klimt. It was purchased by plaintiff\xe2\x80\x99s\n\n\x0cfather, Victor Gruen, in 1959 for $8,000. On April 1, 1963\nthe elder Gruen, a successful architect with offices and\nresidences in both New York City and Los Angeles during\nmost of the time involved in this action, wrote a letter to\nplaintiff, then an undergraduate student at Harvard, stating\nthat he was giving him the Klimt painting for his birthday\nbut that he wished to retain the possession of it for his\nlifetime. This letter is not in evidence, apparently because\nplaintiff destroyed it on instructions from his father. Two\nother letters were received, however, one dated May 22,\n1963 and the other April 1, 1963. Both had been dictated\nby Victor Gruen and sent together to plaintiff on or about\nMay 22, 1963. The letter dated May 22, 1963 reads as\nfollows:\nDear Michael:\nI wrote you at the time of your birthday about the gift\nof the painting by Klimt.\nNow my lawyer tells me that because of the existing\ntax laws, it was wrong to mention in that letter that I\nwant to use the painting as long as I live. Though I\nstill want to use it, this should not appear in the letter.\nI am enclosing, therefore, a new letter and I ask you to\nsend the old one back to me so that it can be\ndestroyed.\nI know this is all very silly, but the lawyer and our\naccountant insist that they must have in their\npossession copies of a letter which will serve the\npurpose of making it possible for you, once I die, to\nget this picture without having to pay inheritance taxes\non it.\nEnclosed with this letter was a substitute gift letter, dated\nApril 1, 1963, which stated:\nDear Michael:\n\n606\n\n\x0cThe 21st birthday, being an important\nevent in life, should be celebrated\naccordingly. I therefore wish to give\nyou as a present the oil painting by\nGustav Klimt of Schloss Kammer\nwhich now hangs in the New York\nliving room. You know that Lazette\nand I bought it some 5 or 6 years ago,\nand you always told us how much you\nliked it.\nLove,\nPlaintiff never took possession of the painting nor did he\nseek to do so. Except for a brief period between 1964 and\n1965 when it was on loan to art exhibits and when\nrestoration work was performed on it, the painting\nremained in his father\xe2\x80\x99s possession, moving with him from\nNew York City to Beverly Hills and finally to Vienna,\nAustria, where Victor Gruen died on February 14, 1980.\nFollowing Victor\xe2\x80\x99s death plaintiff requested possession of\nthe Klimt painting and when defendant refused, he\ncommenced this action.\nThe issues framed for appeal are whether a valid inter vivos\ngift of a chattel may be made where the donor has reserved\na life estate in the chattel and the donee never has had\nphysical possession of it before the donor\xe2\x80\x99s death and, if it\nmay, which factual findings on the elements of a valid inter\nvivos gift more nearly comport with the weight of the\nevidence in this case, those of Special Term or those of the\nAppellate Division. Resolution of the latter issue requires\napplication of two general rules. First, to make a valid inter\nvivos gift there must exist the intent on the part of the\ndonor to make a present transfer; delivery of the gift, either\nactual or constructive to the donee; and acceptance by the\ndonee (Matter of Szabo, 10 NY2d 94, 98; Matter of Kelly, 285\nNY 139, 150 [dissenting in part opn]; Matter of Van Alstyne,\n207 NY 298, 306; Beaver v Beaver, 117 NY 421, 428).\n\n607\n\n\x0cSecond, the proponent of a gift has the burden of proving\neach of these elements by clear and convincing evidence\n(Matter of Kelley, supra, at p. 150; Matter of Abramowitz, 38\nAD2d 387, 389-390, affd on opn 32 NY2d 654).\nDonative Intent\nThere is an important distinction between the intent with\nwhich an inter vivos gift is made and the intent to make a\ngift by will. An inter vivos gift requires that the donor\nintend to make an irrevocable present transfer of\nownership; if the intention is to make a testamentary\ndisposition effective only after death, the gift is invalid\nunless made by will (see, McCarthy v Pieret, 281 NY 407, 409;\nGannon v McGuire, 160 NY 476, 481; Martin v Funk, 75 NY\n134, 137-138).\nDefendant contends that the trial court was correct in\nfinding that Victor did not intend to transfer any present\ninterest in the painting to plaintiff in 1963 but only\nexpressed an intention that plaintiff was to get the painting\nupon his death. The evidence is all but conclusive,\nhowever, that Victor intended to transfer ownership of the\npainting to plaintiff in 1963 but to retain a life estate in it\nand that he did, therefore, effectively transfer a remainder\ninterest in the painting to plaintiff at that time. Although\nthe original letter was not in evidence, testimony of its\ncontents was received along with the substitute gift letter\nand its covering letter dated May 22, 1963. The three letters\nshould be considered together as a single instrument (see,\nMatter of Brandreth, 169 NY 437, 440) and when they are\nthey unambiguously establish that Victor Gruen intended\nto make a present gift of title to the painting at that time.\nBut there was other evidence for after 1963 Victor made\nseveral statements orally and in writing indicating that he\nhad previously given plaintiff the painting and that plaintiff\nowned it. Victor Gruen retained possession of the property,\ninsured it, allowed others to exhibit it and made necessary\n\n608\n\n\x0crepairs to it but those acts are not inconsistent with his\nretention of a life estate. Furthermore, whatever probative\nvalue could be attached to his statement that he had\nbequeathed the painting to his heirs, made 16 years later\nwhen he prepared an export license application so that he\ncould take the painting out of Austria, is negated by the\noverwhelming evidence that he intended a present transfer\nof title in 1963. Victor\xe2\x80\x99s failure to file a gift tax return on\nthe transaction was partially explained by allegedly\nerroneous legal advice he received, and while that omission\nsometimes may indicate that the donor had no intention of\nmaking a present gift, it does not necessarily do so and it is\nnot dispositive in this case.\nDefendant contends that even if a present gift was\nintended, Victor\xe2\x80\x99s reservation of a lifetime interest in the\npainting defeated it. She relies on a statement from Young v\nYoung (80 NY 422) that \xe2\x80\x9d\xe2\x80\x99[a]ny gift of chattels which\nexpressly reserves the use of the property to the donor for\na certain period, or * * * as long as the donor shall live, is\nineffectual\xe2\x80\x99\xe2\x80\x9d (id., at p 436, quoting 2 Schouler, Personal\nProperty, at 118). The statement was dictum, however, and\nthe holding of the court was limited to a determination that\nan attempted gift of bonds in which the donor reserved the\ninterest for life failed because there had been no delivery of\nthe gift, either actual or constructive (see, id., at p 434; see\nalso, Speelman v Pascal, 10 NY2d 313, 319-320). The court\nexpressly left undecided the question \xe2\x80\x9cwhether a remainder\nin a chattel may be created and given by a donor by carving\nout a life estate for himself and transferring the remainder\xe2\x80\x9d\n(Young v Young, supra, at p. 440). We answered part of that\nquestion in Matter of Brandreth (169 NY 437, 441-442, supra)\nwhen we held that \xe2\x80\x9c[in] this state a life estate and remainder\ncan be created in a chattel or a fund the same as in real\nproperty\xe2\x80\x9d. The case did not require us to decide whether\nthere could be a valid gift of the remainder.\n\n609\n\n\x0cDefendant recognizes that a valid inter vivos gift of a\nremainder interest can be made not only of real property\nbut also of such intangibles as stocks and bonds. Indeed,\nseveral of the cases she cites so hold. That being so, it is\ndifficult to perceive any legal basis for the distinction she\nurges which would permit gifts of remainder interests in\nthose properties but not of remainder interests in chattels\nsuch as the Klimt painting here. The only reason suggested\nis that the gift of a chattel must include a present right to\npossession. The application of Brandreth to permit a gift of\nthe remainder in this case, however, is consistent with the\ndistinction, well recognized in the law of gifts as well as in\nreal property law, between ownership and possession or\nenjoyment (see, Speelman v Pascal, 10 NY2d 313, 318, supra;\nMcCarthy v Pieret, 281 NY 407, 409-411, supra; Matter of\nBrandreth, 169 NY 437, 442, supra). Insofar as some of our\ncases purport to require that the donor intend to transfer\nboth title and possession immediately to have a valid inter\nvivos gift (see, Gannon v McGuire, 160 NY 476, 481, supra;\nYoung v Young, 80 NY 422, 430, supra), they state the rule\ntoo broadly and confuse the effectiveness of a gift with the\ntransfer of the possession of the subject of that gift. The\ncorrect test is \xe2\x80\x9c\xe2\x80\x98whether the maker intended the [gift] to\nhave no effect until after the maker\xe2\x80\x99s death, or whether he\nintended it to transfer some present interest\xe2\x80\x99\xe2\x80\x9d (McCarthy v Pieret,\n281 NY 407, 409, supra [emphasis added]; see also, 25 NY\nJur, Gifts, \xc2\xa7 14, at 156-157). As long as the evidence\nestablishes an intent to make a present and irrevocable\ntransfer of title or the right of ownership, there is a present\ntransfer of some interest and the gift is effective\nimmediately (see, Matter of Brady, 228 App Div 56, 60, affd no\nopn 254 NY 590; In re Sussman\xe2\x80\x99s Estate, 125 NYS2d 584,\n589-591, affd no opn 283 App Div 1051; Matter of Valentine,\n122 Misc 486, 489; Brown, Personal Property \xc2\xa7 48, at 133-136\n[2d ed]; 25 NY Jur, Gifts, \xc2\xa7 30, at 173-174; see also, Farmers\xe2\x80\x99\nLoan & Trust Co. v Winthrop, 238 NY 477, 485-486). Thus,\nin Speelman v Pascal (supra), we held valid a gift of a\n\n610\n\n\x0cpercentage of the future royalties to the play \xe2\x80\x9cMy Fair\nLady\xe2\x80\x9d before the play even existed. There, as in this case,\nthe donee received title or the right of ownership to some\nproperty immediately upon the making of the gift but\npossession or enjoyment of the subject of the gift was\npostponed to some future time.\nDefendant suggests that allowing a donor to make a\npresent gift of a remainder with the reservation of a life\nestate will lead courts to effectuate otherwise invalid\ntestamentary dispositions of property. The two have\nentirely different characteristics, however, which make\nthem distinguishable. Once the gift is made it is irrevocable\nand the donor is limited to the rights of a life tenant not an\nowner. Moreover, with the gift of a remainder title vests\nimmediately in the donee and any possession is postponed\nuntil the donor\xe2\x80\x99s death whereas under a will neither title\nnor possession vests immediately. Finally, the\npostponement of enjoyment of the gift is produced by the\nexpress terms of the gift not by the nature of the\ninstrument as it is with a will (see, Robb v Washington &\nJefferson Coll., 185 NY 485, 493).\nDelivery\nIn order to have a valid inter vivos gift, there must be a\ndelivery of the gift, either by a physical delivery of the\nsubject of the gift or a constructive or symbolic delivery\nsuch as by an instrument of gift, sufficient to divest the\ndonor of dominion and control over the property (see,\nMatter of Szabo, 10 NY2d 94, 98-99, supra; Speelman v Pascal,\n10 NY2d 313, 318- 320, supra; Beaver v Beaver, 117 NY 421,\n428-429, supra; Matter of Cohn, 187 App Div 392, 395). As\nthe statement of the rule suggests, the requirement of\ndelivery is not rigid or inflexible, but is to be applied in light\nof its purpose to avoid mistakes by donors and fraudulent\nclaims by donees (see, Matter of Van Alstyne, 207 NY 298,\n308, supra; Matter of Cohn, supra, at pp 395-396; Mechem,\n\n611\n\n\x0cRequirement of Delivery in Gifts of Chattels and of Choses in\nActions Evidenced by Commercial Instruments, 21 Ill L Rev 341,\n348-349). Accordingly, what is sufficient to constitute\ndelivery \xe2\x80\x9cmust be tailored to suit the circumstances of the\ncase\xe2\x80\x9d (Matter of Szabo, supra, at p. 98). The rule requires that\n\xe2\x80\x9d\xe2\x80\x99[t]he delivery necessary to consummate a gift must be as\nperfect as the nature of the property and the circumstances\nand surroundings of the parties will reasonably permit\xe2\x80\x99\xe2\x80\x9d (id.;\nVincent v Rix, 248 NY 76, 83; Matter of Van Alstyne, supra, at\np. 309; see, Beaver v Beaver, supra, at p. 428).\nDefendant contends that when a tangible piece of personal\nproperty such as a painting is the subject of a gift, physical\ndelivery of the painting itself is the best form of delivery\nand should be required. Here, of course, we have only\ndelivery of Victor Gruen\xe2\x80\x99s letters which serve as\ninstruments of gift. Defendant\xe2\x80\x99s statement of the rule as\napplied may be generally true, but it ignores the fact that\nwhat Victor Gruen gave plaintiff was not all rights to the\nKlimt painting, but only title to it with no right of\npossession until his death. Under these circumstances, it\nwould be illogical for the law to require the donor to part\nwith possession of the painting when that is exactly what he\nintends to retain.\nNor is there any reason to require a donor making a gift of\na remainder interest in a chattel to physically deliver the\nchattel into the donee\xe2\x80\x99s hands only to have the donee\nredeliver it to the donor. As the facts of this case\ndemonstrate, such a requirement could impose practical\nburdens on the parties to the gift while serving the delivery\nrequirement poorly. Thus, in order to accomplish this type\nof delivery the parties would have been required to travel to\nNew York for the symbolic transfer and redelivery of the\nKlimt painting which was hanging on the wall of Victor\nGruen\xe2\x80\x99s Manhattan apartment. Defendant suggests that\nsuch a requirement would be stronger evidence of a\ncompleted gift, but in the absence of witnesses to the event\n\n612\n\n\x0cor any written confirmation of the gift it would provide less\nprotection against fraudulent claims than have the written\ninstruments of gift delivered in this case.\nAcceptance\nAcceptance by the donee is essential to the validity of an\ninter vivos gift, but when a gift is of value to the donee, as\nit is here, the law will presume an acceptance on his part\n(Matter of Kelsey, 26 NY2d 792, affg on opn at 29 AD2d 450,\n456; Beaver v Beaver, 117 NY 421, 429, supra). Plaintiff did\nnot rely on this presumption alone but also presented clear\nand convincing proof of his acceptance of a remainder\ninterest in the Klimt painting by evidence that he had made\nseveral contemporaneous statements acknowledging the\ngift to his friends and associates, even showing some of\nthem his father\xe2\x80\x99s gift letter, and that he had retained both\nletters for over 17 years to verify the gift after his father\ndied. Defendant relied exclusively on affidavits filed by\nplaintiff in a matrimonial action with his former wife, in\nwhich plaintiff failed to list his interest in the painting as an\nasset. These affidavits were made over 10 years after\nacceptance was complete and they do not even approach\nthe evidence in Matter of Kelly (285 NY 139, 148-149\n[dissenting in part opn], supra) where the donee,\nimmediately upon delivery of a diamond ring, rejected it as\n\xe2\x80\x9ctoo flashy\xe2\x80\x9d. We agree with the Appellate Division that\ninterpretation of the affidavit was too speculative to\nsupport a finding of rejection and overcome the substantial\nshowing of acceptance by plaintiff.\nAccordingly, the judgment appealed from and the order of\nthe Appellate Division brought up for review should be\naffirmed, with costs.\n\n613\n\n\x0c4.2 Real Estate Transactions\n4.2.1. The Contract\nGeorgia Form for Sale of Residential Property\nThis agreement is made at , on , by , of [address], City of ,\nCounty of , State of Georgia, in this agreement called seller,\nand , of [address], City of , County of , State of Georgia, in\nthis agreement called purchaser.\nRecitals\n1. Seller is the owner of the lot or parcel of real property\nsituated at [address] in the City of , County of , State of\nGeorgia, and more fully described as follows: [give legal\ndescription]. The real property consists of a residential site\nat [address], with improvements on it as follows: [describe\nbriefly, such as: A seven-room brick house with attached\ntwo-car garage and detached frame workshop]. Located on\nthe real property are the following items of equipment and\nother articles of personal property, owned by seller and\nused on and in connection with the real property: [describe\ngenerally, such as: gas-fire furnace, air conditioning system,\ngas cooking range, electric dishwasher, and drapes, curtains\nand carpeting in living room, dining room, hallways, and\nbedrooms of the dwelling]. The real and personal property\ndescribed and referred to in this agreement is subsequently\nreferred to as property.\n2. Seller desires to sell and purchaser desires to buy\nproperty, for the purchase price and on the terms and\nconditions set forth in this agreement.\nIn consideration of the mutual and reciprocal promises set\nforth in this agreement, the parties agree:\nSection\nI. Purchase Price and Terms of Payment\nThe purchase price for property is $ , which shall be paid as\nfollows:\n\n614\n\n\x0ca. By a down payment in cash on the signing of this\ncontract, receipt of which is by this instrument\nacknowledged by seller: $ .\nb. By assumption of an existing encumbrance on property\nin the form of a mortgage owned by , at [address], City of ,\nCounty of , State of Georgia, which purchaser by this\ninstrument expressly assumes and agrees to pay. Present\nprincipal balance outstanding on the encumbrance: $ .\nc. By a purchase money mortgage to be executed by\npurchaser to seller, securing purchaser\'s [noteor bond]\npayable in equal installments of $ , or more, including\ninterest, commencing on the day of the month following\nthe close of this transaction and continuing at monthly\nintervals thereafter on the same day of each successive\nmonth. Interest: percent per year. The [noteor bond and\nmortgage] shall be in a form substantially as set forth in\nattached Exhibits " " and " ." Principal amount: $ .\nd. Additional cash on settlement, in the exact balance of\npurchase price after crediting foregoing items, with\nprincipal balance on existing encumbrance to be computed\nexactly to close of transaction. Estimated amount: $ .\nTotal: $\nSection\nII. Title\nTitle to property to be conveyed by seller shall be good and\nmarketable title, clear of all liens, encumbrances, defects,\nand burdens, except: [state exceptions, such as: utility\neasements, and agreements with utility companies of\nrecord; zoning ordinances; existing rights of way for streets\nand alleys bordering property; taxes and assessments not\ndelinquent].\nTitle as required in this agreement shall be evidenced by:\n[specify, such as: a standard form policy of title insurance\nissued by a title company acceptable to purchaser, doing\n\n615\n\n\x0cbusiness in the (city or county) where property is situated.\nThe policy shall be issued as of the date of closing, shall be\nin the amount of the purchase price, and shall be a joint\nowner-mortgagee policy insuring seller and purchaser as\ntheir interests may appear].\nSeller shall convey title at close of the transaction to [state\nexact names of grantees and identify, and specify form of\ntenure, such as: (name of purchaser) and (full name), his, or\nher spouse, as (joint tenantsor tenants in common or as the\ncase may be)]\nSection\nIII. Costs\nThe following costs shall be borne equally by the parties:\n[specify, such as: recording fees, escrow fees, notarial fees,\nand other costs as the case may be].\nThe following costs shall be paid by seller: [specify, such as:\ntitle insurance premium, charges of seller\'s attorney for\ndrawing instruments and advising].\nThe following costs shall be paid by purchaser: [specify,\nsuch as: mortgage tax, assumption charges of holder of\nexisting encumbrance, if any, and charges of purchaser\'s\nattorney for drawing instruments and advising].\nThe following costs shall be prorated to date of closing:\n[specify, such as: taxes and assessments due but not\ndelinquent].\nSection\nIV. Insurance\nRisk of loss or damage to property by fire, storm, burglary,\nvandalism, or other casualty, between the date of this\nagreement and closing, shall be and is assumed by\npurchaser. No such loss or damage shall void or impair this\ncontract. If the improvements or personal property, or\nboth, are damaged or destroyed, in whole or in part, by\n\n616\n\n\x0ccasualty prior to closing, the contract shall continue in full\nforce and effect, and purchaser shall be subrogated to\nseller\'s right of coverage with respect to any insurance\ncarried by seller.\nAll existing property insurance now in effect shall be\ncontinued by seller, and shall be transferred to purchaser at\nclosing. Premiums on such insurance shall be prorated to\ntime of closing. All such policies shall be exhibited\nimmediately to purchaser, who may secure additional\ninsurance on property, or any portion of it, if so desired.\nAny such additional insurance shall name seller and\npurchaser as coinsureds as their interests appear.\nSection\nV. Transfer of Property\nSeller shall maintain property, including improvements, the\npersonal property described in this agreement, and lawns,\nshrubs, and trees, in its present condition pending the\nclosing of this transaction, normal and reasonable wear\nexcepted.\nPrior to transfer of possession, purchaser shall cause\nproperty to be cleaned and placed in a neat, sanitary, and\nhabitable condition. Property shall be transferred to\npurchaser, as provided in this agreement, in such condition,\nand clear of all trash, debris, and the personal effects,\nfurnishings, and belongings of seller.\nPossession of property shall be transferred to purchaser\nwithin days after closing of sale. All keys shall be delivered\nto purchaser at the time of transfer of possession. If\ntransfer is delayed for any cause beyond the period\nspecified in this agreement, seller shall pay to purchaser $\nfor each day of such delay, as agreed rental, but this\nprovision shall not be construed as barring or limiting any\nremedy available to purchaser, in law or equity, for the\nrecovery of possession.\n\n617\n\n\x0cSection\nVI. Seller\'s Representations and Warranties\nAfter making diligent inquiry and investigation into the\nmatters at issue, seller represents to purchaser that to the\nbest of seller\'s knowledge and belief:\na. Seller is the owner of the property free and clear of all\nencumbrances, occupancies or restrictions except for the\npermitted title exceptions.\nb. Seller has the exclusive right of occupancy and\npossession of the property. No other party has any deed,\noption or other conveyance of any right or interest in or to\nthe property, except for the permitted title exceptions.\nc. Seller has not used, nor authorized, nor allowed the use\nof the property, and, to seller\'s knowledge, the property has\nnot been used, for the handling, treatment, storage, disposal\nor release of any hazardous or toxic substance as defined\nunder any applicable state or federal law or regulation\nincluding, without limitation, the Comprehensive\nEnvironmental Response, Compensation and Liability Act\n("CERCLA"), in amounts that would reasonably necessitate\nany response or corrective action, including any such action\nunder CERCLA as amended, the Resource Conservation\nand Recovery Act, as amended, the Georgia Hazardous\nWaste Management Act, as amended, or any other\napplicable law or regulation.\nd. The property is free from special taxes or assessments,\nexcept those generally applicable to other properties in the\ntax district in which the property is located, and there is no\npending or threatened special assessment or condemnation\nor eminent domain proceedings which would affect the\nproperty, or any part of the property.\nSection\nVII. Time of Essence; Closing\n\n618\n\n\x0cTime is expressly declared to be of the essence of this\ncontract. The contract shall be executed and completed,\nand sale closed, on or before , or any other date as the\nparties may in writing agree to. Each party shall fully\nperform all obligations under this agreement at such times\nas to insure closing within the period specified in this\nagreement, or any extension of the period specified.\nAnything to the contrary in this agreement\nnotwithstanding, the obligation of purchaser to\nconsummate the closing of this transaction is subject to and\nconditioned on the satisfaction at or prior to closing of the\nfollowing conditions precedent:\na. The full and complete performance by seller of each and\nevery agreement and covenant contained in this agreement\nto be performed by seller.\nb. Purchaser shall receive evidence satisfactory to purchaser\nthat the property has not been used for the handling,\ntreatment, storage or disposal of any hazardous or toxic\nsubstance as defined under any applicable state or federal\nlaws or regulation including, but not limited to, CERCLA\nand the Georgia Hazardous Waste Management Act.\nIn the event that the conditions stated above have not been\nsatisfied by the closing date, purchaser shall be entitled to,\nat purchaser\'s option, terminate this agreement by written\nnotice to seller. In the event that purchaser elects to\nterminate this agreement, then neither party shall have any\nfurther rights, obligations or liabilities under this agreement\nexcept to the extent that any right, obligation or liability\nexpressly survives termination of the agreement.\nSection\nVIII. Remedies of Parties\n(1) If purchaser fails or refuses to comply with the\nconditions assumed, or to perform all obligations under\nthis agreement, seller has the option to:\n\n619\n\n\x0c(a) Hold and retain the initial deposit money and any\nadditional funds paid or deposited by purchaser, as\nliquidated damages for breach of this contract, and cancel\nand terminate the contract, whereupon all rights and\nobligations under this agreement shall cease; or\n(b) Enforce this contract by appropriate action, including\nan action for specific performance, or for damages for\nbreach, and retain all money paid or deposited by purchaser\npending the determination of such action. Seller shall give\npurchaser written notice of election with respect to seller\'s\nexercise of either of these options.\n(2) If seller fails or refuses to perform obligations under\nthis agreement, including the furnishing of good title as\ndefined in this agreement and transfer of possession,\npurchaser may either:\n(a) Cancel the contract and recover all deposits and other\namounts paid by purchaser under this agreement, and all\nexpenses paid or incurred; or\n(b) Pursue any remedy available to purchaser, in law or\nequity, including an action to compel specific performance\nof this contract, or one for damages for breach, separately\nor alternatively.\nSection\nIX. Assignment; Modification; Entire Agreement of Parties\nExpressed\nNo right or interest of purchaser under this agreement shall\nbe assigned without the prior written consent of seller,\nwhich consent shall not be unreasonably withheld.\nNo modification of this contract shall be valid or binding\nunless such modification is in writing, duly dated and\nsigned by both parties.\nThis instrument constitutes the entire agreement between\nthe parties. Neither party shall be bound by any terms,\n\n620\n\n\x0cconditions, statements, or representations, oral or written,\nnot contained in this agreement. Each party acknowledges\nthat in executing this contract he or she has not been\ninduced, persuaded, or motivated by any promise or\nrepresentation made by the other party, unless expressly set\nforth in this agreement. All previous negotiations,\nstatements, and preliminary instruments by the parties or\ntheir representatives are merged in this instrument.\nSection\nX. Signature and Effective Date\nThis instrument shall not be effective as a contract until\nduly signed by both parties. The date of execution and\neffective date of the contract is the date first above set\nforth. The date of signature by each party is the date set\nforth unless otherwise indicated after the signature.\nIn witness, the parties have executed this instrument on the\nday and year first above written.\n[Signatures]\n[Attestation]\nStambovsky v. Ackley, 169 A.D.2d 254 (N.Y. App. Div.\n1991)\nWilliam M. Stein of counsel (Hood & Stein, attorneys), for\nappellant.\nAndrew C. Bisulca of counsel (Mann, Mann & Lewis, P. C.,\nattorneys), for Helen V. Ackley, respondent.\nJeffrey J. Ellis of counsel (Quirk & Bakalor, P. C.,\nattorneys), for Ellis Realty, respondent.\nRUBIN, J.\nPlaintiff, to his horror, discovered that the house he had\nrecently contracted to purchase was widely reputed to be\npossessed by poltergeists, reportedly seen by defendant\nseller and members of her family on numerous occasions\n\n621\n\n\x0cover the last nine years. Plaintiff promptly commenced this\naction seeking rescission of the contract of sale. Supreme\nCourt reluctantly dismissed the complaint, holding that\nplaintiff has no remedy at law in this jurisdiction.\nThe unusual facts of this case, as disclosed by the record,\nclearly warrant a grant of equitable relief to the buyer who,\nas a resident of New York City, cannot be expected to have\nany familiarity with the folklore of the Village of Nyack.\nNot being a \xe2\x80\x9clocal\xe2\x80\x9d, plaintiff could not readily learn that the\nhome he had contracted to purchase is haunted. Whether\nthe source of the spectral apparitions seen by defendant\nseller are parapsychic or psychogenic, having reported their\npresence in both a national publication (Readers\xe2\x80\x99 Digest) and\nthe local press (in 1977 and 1982, respectively), defendant is\nestopped to deny their existence and, as a matter of law, the\nhouse is haunted. More to the point, however, no\ndivination is required to conclude that it is defendant\xe2\x80\x99s\npromotional efforts in publicizing her close encounters\nwith these spirits which fostered the home\xe2\x80\x99s reputation in\nthe community. In 1989, the house was included in fivehome walking tour of Nyack and described in a November\n27th newspaper article as \xe2\x80\x9ca riverfront Victorian (with\nghost).\xe2\x80\x9d The impact of the reputation thus created goes to\nthe very essence of the bargain between the parties, greatly\nimpairing both the value of the property and its potential\nfor resale. The extent of this impairment may be presumed\nfor the purpose of reviewing the disposition of this motion\nto dismiss the cause of action for rescission and represents\nmerely an issue of fact for resolution at trial.\nWhile I agree with Supreme Court that the real estate\nbroker, as agent for the seller, is under no duty to disclose\nto a potential buyer the phantasmal reputation of the\npremises and that, in his pursuit of a legal remedy for\nfraudulent misrepresentation against the seller, plaintiff\nhasn\xe2\x80\x99t a ghost of a chance, I am nevertheless moved by the\nspirit of equity to allow the buyer to seek rescission of the\n\n622\n\n\x0ccontract of sale and recovery of his down payment. New\nYork law fails to recognize any remedy for damages\nincurred as a result of the seller\xe2\x80\x99s mere silence, applying\ninstead the strict rule of caveat emptor. Therefore, the\ntheoretical basis for granting relief, even under the\nextraordinary facts of this case, is elusive if not ephemeral.\n\xe2\x80\x9cPity me not but lend thy serious hearing to what I shall\nunfold\xe2\x80\x9d (William Shakespeare, Hamlet, Act I, Scene V\n[Ghost]).\nFrom the perspective of a person in the position of plaintiff\nherein, a very practical problem arises with respect to the\ndiscovery of a paranormal phenomenon: \xe2\x80\x9cWho you gonna\xe2\x80\x99\ncall?\xe2\x80\x9d as a title song to the movie \xe2\x80\x9cGhostbusters\xe2\x80\x9d asks.\nApplying the strict rule of caveat emptor to a contract\ninvolving a house possessed by poltergeists conjures up\nvisions of a psychic or medium routinely accompanying the\nstructural engineer and Terminix man on an inspection of\nevery home subject to a contract of sale. It portends that\nthe prudent attorney will establish an escrow account lest\nthe subject of the transaction come back to haunt him and\nhis client\xe2\x80\x93or pray that his malpractice insurance coverage\nextends to supernatural disasters. In the interest of avoiding\nsuch untenable consequences, the notion that a haunting is\na condition which can and should be ascertained upon\nreasonable inspection of the premises is a hobgoblin which\nshould be exorcised from the body of legal precedent and\nlaid quietly to rest.\nIt has been suggested by a leading authority that the ancient\nrule which holds that mere nondisclosure does not\nconstitute actionable misrepresentation \xe2\x80\x9cfinds proper\napplication in cases where the fact undisclosed is patent, or\nthe plaintiff has equal opportunities for obtaining\ninformation which he may be expected to utilize, or the\ndefendant has no reason to think that he is acting under\nany misapprehension\xe2\x80\x9d (Prosser, Torts \xc2\xa7 106, at 696 [4th ed\n1971]). However, with respect to transactions in real estate,\n\n623\n\n\x0cNew York adheres to the doctrine of caveat emptor and\nimposes no duty upon the vendor to disclose any\ninformation concerning the premises unless there is a\nconfidential or fiduciary relationship between the parties or\nsome conduct on the part of the seller which constitutes\n\xe2\x80\x9cactive concealment\xe2\x80\x9d (see, 17 E. 80th Realty Corp. v 68th\nAssocs., \xe2\x80\x93 AD2d \xe2\x80\x93 [1st Dept, May 9, 1991] [dummy\nventilation system constructed by seller]; Haberman v\nGreenspan, 82 Misc 2d 263 [foundation cracks covered by\nseller]). Normally, some affirmative misrepresentation (e.g.,\nTahini Invs. v Bobrowsky, 99 AD2d 489 [industrial waste on\nland allegedly used only as farm]; Jansen v Kelly, 11 AD2d\n587 [land containing valuable minerals allegedly acquired\nfor use as campsite]) or partial disclosure (Junius Constr.\nCorp. v Cohen, 257 NY 393 [existence of third unopened\nstreet concealed]; Noved Realty Corp. v A. A. P. Co., 250 App\nDiv 1 [escrow agreements securing lien concealed]) is\nrequired to impose upon the seller a duty to communicate\nundisclosed conditions affecting the premises (contra, Young\nv Keith, 112 AD2d 625 [defective water and sewer systems\nconcealed]).\nCaveat emptor is not so all-encompassing a doctrine of\ncommon law as to render every act of nondisclosure\nimmune from redress, whether legal or equitable. \xe2\x80\x9cIn\nregard to the necessity of giving information which has not\nbeen asked, the rule differs somewhat at law and in equity,\nand while the law courts would permit no recovery of\ndamages against a vendor, because of mere concealment of\nfacts under certain circumstances, yet if the vendee refused to\ncomplete the contract because of the concealment of a\nmaterial fact on the part of the other, equity would refuse\nto compel him so to do, because equity only compels the\nspecific performance of a contract which is fair and open,\nand in regard to which all material matters known to each\nhave been communicated to the other\xe2\x80\x9d (Rothmiller v Stein,\n143 NY 581, 591-592 [emphasis added]). Even as a\n\n624\n\n\x0cprinciple of law, long before exceptions were embodied in\nstatute law, the doctrine was held inapplicable to contagion\namong animals, adulteration of food, and insolvency of a\nmaker of a promissory note and of a tenant substituted for\nanother under a lease. Common law is not moribund. Ex\nfacto jus oritur (law arises out of facts). Where fairness and\ncommon sense dictate that an exception should be created,\nthe evolution of the law should not be stifled by rigid\napplication of a legal maxim.\nThe doctrine of caveat emptor requires that a buyer act\nprudently to assess the fitness and value of his purchase\nand operates to bar the purchaser who fails to exercise due\ncare from seeking the equitable remedy of rescission. For\nthe purposes of the instant motion to dismiss the action\npursuant to CPLR 3211 (a) (7), plaintiff is entitled to every\nfavorable inference which may reasonably be drawn from\nthe pleadings, specifically, in this instance, that he met his\nobligation to conduct an inspection of the premises and a\nsearch of available public records with respect to title. It\nshould be apparent, however, that the most meticulous\ninspection and the search would not reveal the presence of\npoltergeists at the premises or unearth the property\xe2\x80\x99s\nghoulish reputation in the community. Therefore, there is\nno sound policy reason to deny plaintiff relief for failing to\ndiscover a state of affairs which the most prudent\npurchaser would not be expected to even contemplate.\nThe case law in this jurisdiction dealing with the duty of a\nvendor of real property to disclose information to the\nbuyer is distinguishable from the matter under review. The\nmost salient distinction is that existing cases invariably deal\nwith the physical condition of the premises (e.g., London v\nCourduff, supra [use as a landfill]; Perin v Mardine Realty Co., 5\nAD2d 685, affd 6 NY2d 920 [sewer line crossing adjoining\nproperty without owner\xe2\x80\x99s consent]), defects in title (e.g.,\nSands v Kissane, 282 App Div 140 [remainderman]), liens\nagainst the property (e.g., Noved Realty Corp. v A. A. P. Co.,\n\n625\n\n\x0csupra), expenses or income (e.g., Rodas v Manitaras, supra\n[gross receipts]) and other factors affecting its operation.\nNo case has been brought to this court\xe2\x80\x99s attention in which\nthe property value was impaired as the result of the\nreputation created by information disseminated to the\npublic by the seller (or, for that matter, as a result of\npossession by poltergeists).\nWhere a condition which has been created by the seller\nmaterially impairs the value of the contract and is peculiarly\nwithin the knowledge of the seller or unlikely to be\ndiscovered by a prudent purchaser exercising due care with\nrespect to the subject transaction, nondisclosure constitutes\na basis for rescission as a matter of equity. Any other\noutcome places upon the buyer not merely the obligation\nto exercise care in his purchase but rather to be omniscient\nwith respect to any fact which may affect the bargain. No\npractical purpose is served by imposing such a burden\nupon a purchaser. To the contrary, it encourages predatory\nbusiness practice and offends the principle that equity will\nsuffer no wrong to be without a remedy.\nDefendant\xe2\x80\x99s contention that the contract of sale,\nparticularly the merger or \xe2\x80\x9cas is\xe2\x80\x9d clause, bars recovery of\nthe buyer\xe2\x80\x99s deposit is unavailing. Even an express\ndisclaimer will not be given effect where the facts are\npeculiarly within the knowledge of the party invoking it.\nMoreover, a fair reading of the merger clause reveals that it\nexpressly disclaims only representations made with respect\nto the physical condition of the premises and merely makes\ngeneral reference to representations concerning \xe2\x80\x9cany other\nmatter or things affecting or relating to the aforesaid\npremises.\xe2\x80\x9d As broad as this language may be, a reasonable\ninterpretation is that its effect is limited to tangible or\nphysical matters and does not extend to paranormal\nphenomena. Finally, if the language of the contract is to be\nconstrued as broadly as defendant urges to encompass the\npresence of poltergeists in the house, it cannot be said that\n\n626\n\n\x0cshe has delivered the premises \xe2\x80\x9cvacant\xe2\x80\x9d in accordance with\nher obligation under the provisions of the contract rider.\nTo the extent New York law may be said to require\nsomething more than \xe2\x80\x9cmere concealment\xe2\x80\x9d to apply even\nthe equitable remedy of rescission, the case of Junius Constr.\nCorp. v Cohen (257 NY 393, supra), while not precisely on\npoint, provides some guidance. In that case, the seller\ndisclosed that an official map indicated two as yet\nunopened streets which were planned for construction at\nthe edges of the parcel. What was not disclosed was that\nthe same map indicated a third street which, if opened,\nwould divide the plot in half. The court held that, while the\nseller was under no duty to mention the planned streets at\nall, having undertaken to disclose two of them, he was\nobliged to reveal the third.\nIn the case at bar, defendant seller deliberately fostered the\npublic belief that her home was possessed. Having\nundertaken to inform the public- at-large, to whom she has\nno legal relationship, about the supernatural occurrences on\nher property, she may be said to owe no less a duty to her\ncontract vendee. It has been remarked that the occasional\nmodern cases which permit a seller to take unfair advantage\nof a buyer\xe2\x80\x99s ignorance so long as he is not actively misled\nare \xe2\x80\x9csingularly unappetizing\xe2\x80\x9d (Prosser, Torts \xc2\xa7 106, at 696\n[4th ed 1971]). Where, as here, the seller not only takes\nunfair advantage of the buyer\xe2\x80\x99s ignorance but has created\nand perpetuated a condition about which he is unlikely to\neven inquire, enforcement of the contract (in whole or in\npart) is offensive to the court\xe2\x80\x99s sense of equity. Application\nof the remedy of rescission, within the bounds of the\nnarrow exception to the doctrine of caveat emptor set forth\nherein, is entirely appropriate to relieve the unwitting\npurchaser from the consequences of a most unnatural\nbargain.\nAccordingly, the judgment of the Supreme Court, New\nYork County (Edward H. Lehner, J.), entered April 9, 1990,\n\n627\n\n\x0cwhich dismissed the complaint pursuant to CPLR 3211 (a)\n(7), should be modified, on the law and the facts, and in the\nexercise of discretion, and the first cause of action seeking\nrescission of the contract reinstated, without costs.\nSMITH, J., DISSENTING.\nI would affirm the dismissal of the complaint by the\nmotion court.\nPlaintiff seeks to rescind his contract to purchase defendant\nAckley\xe2\x80\x99s residential property and recover his down\npayment. Plaintiff alleges that Ackley and her real estate\nbroker, defendant Ellis Realty, made material\nmisrepresentations of the property in that they failed to\ndisclose that Ackley believed that the house was haunted by\npoltergeists. Moreover, Ackley shared this belief with her\ncommunity and the general public through articles\npublished in Reader\xe2\x80\x99s Digest (1977) and the local newspaper\n(1982). In November 1989, approximately two months\nafter the parties entered into the contract of sale but\nsubsequent to the scheduled October 2, 1989 closing, the\nhouse was included in a five-house walking tour and again\ndescribed in the local newspaper as being haunted.\nPrior to closing, plaintiff learned of this reputation and\nunsuccessfully sought to rescind the $650,000 contract of\nsale and obtain return of his $32,500 down payment\nwithout resort to litigation. The plaintiff then commenced\nthis action for that relief and alleged that he would not have\nentered into the contract had he been so advised and that\nas a result of the alleged poltergeist activity, the market\nvalue and resaleability of the property was greatly\ndiminished. Defendant Ackley has counterclaimed for\nspecific performance.\n\xe2\x80\x9cIt is settled law in New York State that the seller of real\nproperty is under no duty to speak when the parties deal at\narm\xe2\x80\x99s length. The mere silence of the seller, without some\nact or conduct which deceived the purchaser, does not\n\n628\n\n\x0camount to a concealment that is actionable as a fraud. The\nbuyer has the duty to satisfy himself as to the quality of his\nbargain pursuant to the doctrine of caveat emptor, which in\nNew York State still applies to real estate transactions.\xe2\x80\x9d\n(London v Courduff, 141 AD2d 803, 804 , lv dismissed 73\nNY2d 809 .)\nThe parties herein were represented by counsel and dealt at\narm\xe2\x80\x99s length. This is evidenced by the contract of sale\nwhich, inter alia, contained various riders and a specific\nprovision that all prior understandings and agreements\nbetween the parties were merged into the contract, that the\ncontract completely expressed their full agreement and that\nneither had relied upon any statement by anyone else not\nset forth in the contract. There is no allegation that\ndefendants, by some specific act, other than the failure to\nspeak, deceived the plaintiff. Nevertheless, a cause of action\nmay be sufficiently stated where there is a confidential or\nfiduciary relationship creating a duty to disclose and there\nwas a failure to disclose a material fact, calculated to induce\na false belief. However, plaintiff herein has not alleged and\nthere is no basis for concluding that a confidential or\nfiduciary relationship existed between these parties to an\narm\xe2\x80\x99s length transaction such as to give rise to a duty to\ndisclose. In addition, there is no allegation that defendants\nthwarted plaintiff\xe2\x80\x99s efforts to fulfill his responsibilities fixed\nby the doctrine of caveat emptor.\nFinally, if the doctrine of caveat emptor is to be discarded,\nit should be for a reason more substantive than a\npoltergeist. The existence of a poltergeist is no more\nbinding upon the defendants than it is upon this court.\nBased upon the foregoing, the motion court properly\ndismissed the complaint.\nJohnson v. Davis, 480 So.2d (Fla. 1985)\nMitchell W. Mandler and Patricia M. Silver of Smith &\nMandler, Miami Beach, for petitioners.\n\n629\n\n\x0cStanley M. Newmark, Joe N. Unger of the Law Offices of\nJoe N. Unger, Miami, and Joseph G. Abromovitz, Boston,\nMass., for respondents.\nADKINS, Justice.\nWe have before us a petition to review the decision in\nJohnson v. Davis, 449 So. 2d 344 (Fla. 3d DCA 1984), which\nexpressly and directly conflicts with Banks v. Salina, 413 So.\n2d 851 (Fla. 4th DCA 1982), and Ramel v. Chasebrook\nConstruction Co., 135 So. 2d 876 (Fla. 2d DCA 1961). We\nhave jurisdiction, article V, section 3(b)(3), Florida\nConstitution, and approve the decision of the district court.\nIn May of 1982, the Davises entered into a contract to buy\nfor $310,000 the Johnsons\xe2\x80\x99 home, which at the time was\nthree years old. The contract required a $5,000 deposit\npayment, an additional $26,000 deposit payment within five\ndays and a closing by June 21, 1982. The crucial provision\nof the contract, for the purposes of the case at bar, is\nParagraph F which provided:\nF. Roof Inspection: Prior to closing at\nBuyer\xe2\x80\x99s expense, Buyer shall have the\nright to obtain a written report from a\nlicensed roofer stating that the roof is\nin a watertight condition. In the event\nrepairs are required either to correct\nleaks or to replace damage to facia or\nsoffit, seller shall pay for said repairs\nwhich shall be performed by a licensed\nroofing contractor.\nThe contract further provided for payment to the\n\xe2\x80\x9cprevailing party\xe2\x80\x9d of all costs and reasonable fees in any\ncontract litigation.\nBefore the Davises made the additional $26,000 deposit\npayment, Mrs. Davis noticed some buckling and peeling\nplaster around the corner of a window frame in the family\nroom and stains on the ceilings in the family room and\n\n630\n\n\x0ckitchen of the home. Upon inquiring, Mrs. Davis was told\nby Mr. Johnson that the window had had a minor problem\nthat had long since been corrected and that the stains were\nwallpaper glue and the result of ceiling beams being moved.\nThere is disagreement among the parties as to whether Mr.\nJohnson also told Mrs. Davis at this time that there had\nnever been any problems with the roof or ceilings. The\nDavises thereafter paid the remainder of their deposit and\nthe Johnsons vacated the home. Several days later,\nfollowing a heavy rain, Mrs. Davis entered the home and\ndiscovered water \xe2\x80\x9cgushing\xe2\x80\x9d in from around the window\nframe, the ceiling of the family room, the light fixtures, the\nglass doors, and the stove in the kitchen.\nTwo roofers hired by the Johnsons\xe2\x80\x99 broker concluded that\nfor under $1,000 they could \xe2\x80\x9cfix\xe2\x80\x9d certain leaks in the roof\nand by doing so make the roof \xe2\x80\x9cwatertight.\xe2\x80\x9d Three roofers\nhired by the Davises found that the roof was inherently\ndefective, that any repairs would be temporary because the\nroof was \xe2\x80\x9cslipping,\xe2\x80\x9d and that only a new $15,000 roof\ncould be \xe2\x80\x9cwatertight.\xe2\x80\x9d\nThe Davises filed a complaint alleging breach of contract,\nfraud and misrepresentation, and sought recission of the\ncontract and return of their deposit. The Johnsons\ncounterclaimed seeking the deposit as liquidated damages.\nThe trial court entered its final judgment on May 27, 1983.\nThe court made no findings of fact, but awarded the\nDavises $26,000 plus interest and awarded the Johnsons\n$5,000 plus interest. Each party was to bear their own\nattorneys\xe2\x80\x99 fees.\nThe Johnsons appealed and the Davises cross-appealed\nfrom the final judgment. The Third District found for the\nDavises affirming the trial court\xe2\x80\x99s return of the majority of\nthe deposit to the Davises ($26,000), and reversing the\naward of $5,000 to the Johnsons as well as the court\xe2\x80\x99s\nfailure to award the Davises costs and fees. Accordingly,\n\n631\n\n\x0cthe court remanded with directions to return to the Davises\nthe balance of their deposit and to award them costs and\nfees.\nThe trial court included no findings of fact in its order.\nHowever, the district court inferred from the record that\nthe trial court refused to accept the Davises\xe2\x80\x99\ncharacterization of the roof inspection provision of the\ncontract. The district court noted that if there was a breach,\nthe trial court would have ordered the return of the\nDavises\xe2\x80\x99 entire deposit because there is no way to\ndistinguish the two deposit payments under a breach of\ncontract theory. We agree with this interpretation and\nfurther find no error by the trial court in this respect.\nThe contract contemplated the possibility that the roof may\nnot be watertight at the time of inspection and provided a\nremedy if it was not in such a condition. The roof\ninspection provision of the contract did not impose any\nobligation beyond the seller correcting the leaks and\nreplacing damage to the facia or soffit. The record is devoid\nof any evidence that the seller refused to make needed\nrepairs to the roof. In fact, the record reflects that the\nDavises\xe2\x80\x99 never even demanded that the areas of leakage be\nrepaired either by way of repair or replacement. Yet the\nDavises insist that the Johnsons breached the contract\njustifying recission. We find this contention to be without\nmerit.\nWe also agree with the district court\xe2\x80\x99s conclusions under a\ntheory of fraud and find that the Johnsons\xe2\x80\x99 statements to\nthe Davises regarding the condition of the roof constituted\na fraudulent misrepresentation entitling respondents to the\nreturn of their $26,000 deposit payment. In the state of\nFlorida, relief for a fraudulent misrepresentation may be\ngranted only when the following elements are present: (1) a\nfalse statement concerning a material fact; (2) the\nrepresentor\xe2\x80\x99s knowledge that the representation is false; (3)\nan intention that the representation induce another to act\n\n632\n\n\x0con it; and, (4) consequent injury by the party acting in\nreliance on the representation. See Huffstetler v. Our Home\nLife Ins. Co., 67 Fla. 324, 65 So. 1 (1914).\nThe evidence adduced at trial shows that after the buyer\nand the seller signed the purchase and sales agreement and\nafter receiving the $5,000 initial deposit payment the\nJohnsons affirmatively repeated to the Davises that there\nwere no problems with the roof. The Johnsons\nsubsequently received the additional $26,000 deposit\npayment from the Davises. The record reflects that the\nstatement made by the Johnsons was a false representation\nof material fact, made with knowledge of its falsity, upon\nwhich the Davises relied to their detriment as evidenced by\nthe $26,000 paid to the Johnsons.\nThe doctrine of caveat emptor does not exempt a seller\nfrom responsibility for the statements and representations\nwhich he makes to induce the buyer to act, when under the\ncircumstances these amount to fraud in the legal sense. To\nbe grounds for relief, the false representations need not\nhave been made at the time of the signing of the purchase\nand sales agreement in order for the element of reliance to\nbe present. The fact that the false statements as to the\nquality of the roof were made after the signing of the\npurchase and sales agreement does not excuse the seller\nfrom liability when the misrepresentations were made prior\nto the execution of the contract by conveyance of the\nproperty. It would be contrary to all notions of fairness and\njustice for this Court to place its stamp of approval on an\naffirmative misrepresentation by a wrongdoer just because\nit was made after the signing of the executory contract\nwhen all of the necessary elements for actionable fraud are\npresent. Furthermore, the Davises\xe2\x80\x99 reliance on the truth of\nthe Johnsons\xe2\x80\x99 representation was justified and is supported\nby this Court\xe2\x80\x99s decision in Besett v. Basnett, 389 So. 2d 995\n(1980), where we held \xe2\x80\x9cthat a recipient may rely on the\ntruth of a representation, even though its falsity could have\n\n633\n\n\x0cbeen ascertained had he made an investigation, unless he\nknows the representation to be false or its falsity is obvious\nto him.\xe2\x80\x9d Id. at 998.\nIn determining whether a seller of a home has a duty to\ndisclose latent material defects to a buyer, the established\ntort law distinction between misfeasance and nonfeasance,\naction and inaction must carefully be analyzed. The highly\nindividualistic philosophy of the earlier common law\nconsistently imposed liability upon the commission of\naffirmative acts of harm, but shrank from converting the\ncourts into an institution for forcing men to help one\nanother. This distinction is deeply rooted in our case law.\nLiability for nonfeasance has therefore been slow to receive\nrecognition in the evolution of tort law.\nIn theory, the difference between misfeasance and\nnonfeasance, action and inaction is quite simple and\nobvious; however, in practice it is not always easy to draw\nthe line and determine whether conduct is active or passive.\nThat is, where failure to disclose a material fact is calculated\nto induce a false belief, the distinction between\nconcealment and affirmative representations is tenuous.\nBoth proceed from the same motives and are attended with\nthe same consequences; both are violative of the principles\nof fair dealing and good faith; both are calculated to\nproduce the same result; and, in fact, both essentially have\nthe same effect.\nStill there exists in much of our case law the old tort notion\nthat there can be no liability for nonfeasance. The courts in\nsome jurisdictions, including Florida, hold that where the\nparties are dealing at arms\xe2\x80\x99s length and the facts lie equally\nopen to both parties, with equal opportunity of\nexamination, mere nondisclosure does not constitute a\nfraudulent concealment. See Ramel v. Chasebrook Construction\nCo., 135 So.2d 876 (Fla. 2d DCA 1961). The Fourth\nDistrict affirmed that rule of law in Banks v. Salina, 413\nSo.2d 851 (Fla. 4th DCA 1982), and found that although\n\n634\n\n\x0cthe sellers had sold a home without disclosing the presence\nof a defective roof and swimming pool of which the sellers\nhad knowledge, \xe2\x80\x9c[i]n Florida, there is no duty to disclose\nwhen parties are dealing at arms length.\xe2\x80\x9d Id. at 852.\nThese unappetizing cases are not in tune with the times and\ndo not conform with current notions of justice, equity and\nfair dealing. One should not be able to stand behind the\nimpervious shield of caveat emptor and take advantage of\nanother\xe2\x80\x99s ignorance. Our courts have taken great strides\nsince the days when the judicial emphasis was on rigid rules\nand ancient precedents. Modern concepts of justice and fair\ndealing have given our courts the opportunity and latitude\nto change legal precepts in order to conform to society\xe2\x80\x99s\nneeds. Thus, the tendency of the more recent cases has\nbeen to restrict rather than extend the doctrine of caveat\nemptor. The law appears to be working toward the ultimate\nconclusion that full disclosure of all material facts must be\nmade whenever elementary fair conduct demands it.\nThe harness placed on the doctrine of caveat emptor in a\nnumber of other jurisdictions has resulted in the seller of a\nhome being liable for failing to disclose material defects of\nwhich he is aware. This philosophy was succinctly\nexpressed in Lingsch v. Savage, 213 Cal. App. 2d 729 (1963):\nIt is now settled in California that\nwhere the seller knows of facts\nmaterially affecting the value or\ndesirability of the property which are\nknown or accessible only to him and\nalso knows that such facts are not\nknown to or within the reach of the\ndiligent attention and observation of\nthe buyer, the seller is under a duty to\ndisclose them to the buyer.\nIn Posner v. Davis, 76 Ill. App.3d 638 (1979), buyers brought\nan action alleging that the sellers of a home fraudulently\n\n635\n\n\x0cconcealed certain defects in the home which included a\nleaking roof and basement flooding. Relying on Lingsch, the\ncourt concluded that the sellers knew of and failed to\ndisclose latent material defects and thus were liable for\nfraudulent concealment. Numerous other jurisdictions have\nfollowed this view in formulating law involving the sale of\nhomes. See Flakus v. Schug, 213 Neb. 491 (1983) (basement\nflooding); Thacker v. Tyree, 297 S.E.2d 885 (W.Va.1982)\n(cracked walls and foundation problems); Maguire v. Masino,\n325 So. 2d 844 (La.Ct.App.1975) (termite infestation);\nWeintraub v. Krobatsch, 64 N.J. 445, 317 A.2d 68 (1974)\n(roach infestation); Cohen v. Vivian, 141 Colo. 443, 349 P.2d\n366 (1960) (soil defect).\nWe are of the opinion, in view of the reasoning and results\nin Lingsch, Posner and the aforementioned cases decided\nin other jurisdictions, that the same philosophy regarding\nthe sale of homes should also be the law in the state of\nFlorida. Accordingly, we hold that where the seller of a\nhome knows of facts materially affecting the value of the\nproperty which are not readily observable and are not\nknown to the buyer, the seller is under a duty to disclose\nthem to the buyer. This duty is equally applicable to all\nforms of real property, new and used.\nIn the case at bar, the evidence shows that the Johnsons\nknew of and failed to disclose that there had been problems\nwith the roof of the house. Mr. Johnson admitted during\nhis testimony that the Johnsons were aware of roof\nproblems prior to entering into the contract of sale and\nreceiving the $5,000 deposit payment. Thus, we agree with\nthe district court and find that the Johnsons\xe2\x80\x99 fraudulent\nconcealment also entitles the Davises to the return of the\n$5,000 deposit payment plus interest. We further find that\nthe Davises should be awarded costs and fees.\nThe decision of the Third District Court of Appeals is\nhereby approved.\n\n636\n\n\x0cIt is so ordered.\nBOYD, Chief Justice, dissenting.\nI respectfully but strongly dissent to the Court\xe2\x80\x99s expansion\nof the duties of sellers of real property. This ruling will give\nrise to a flood of litigation and will facilitate unjust\noutcomes in many cases. If, as a matter of public policy, the\nwell settled law of this state on this question should be\nchanged, the change should come from the legislature.\nMoreover, I do not find sufficient evidence in the record to\njustify rescission or a finding of fraud even under present\nlaw. I would quash the decision of the district court of\nappeal.\nMy review of the record reveals that there is not adequate\nevidence from which the trier of fact could have found any\nof the following crucial facts: (a) that at the time Johnson\ntold Mrs. Davis about the previous leaks that had been\nrepaired, he knew that there was a defect in the roof; (b)\nthat at that time or the time of the execution of the\ncontract, there were in fact any defects in the roof; (c) that\nit was not possible to repair the roof to \xe2\x80\x9cwatertight\xe2\x80\x9d\ncondition before closing.\nAs the district court and this Court\xe2\x80\x99s majority have implied\nbut have not stated, we are hampered by the lack of specific\nwritten findings by the trial court on issues of fact and the\napplication of the law to the facts. Some of the issues on\nwhich specific findings would be helpful are:\n(a) what was the condition of the roof at the time of\nthe discussion between Mr. Johnson and Mrs. Davis\nafter the Davises had paid the partial deposit of $5,000\nand before they paid the additional $26,000, and had it\nin fact leaked more recently than 1979?\n(b) what was the extent of Mr. Johnson\xe2\x80\x99s knowledge\nof the condition of the roof at the time of the signing\nof the contract and at the time of the conversation?\n\n637\n\n\x0c(c) during that conversation, did Mr. Johnson say that\nthere were no problems with the roof or that he had\nnot experienced any problems with it since the time of\nthe previous repairs?\n(d) was it possible, and at what cost, to repair the roof\nto watertight condition and had the sellers complied\nwith their contractual obligation by offering to do so?\nOn these crucial questions, there is insufficient evidence to\njustify a finding of fraudulent misrepresentation or\nnondisclosure of material facts.\nIt should be noted that very soon after first seeing the\nhouse, the purchasers agreed to buy it for $310,000 and\npaid a deposit of $5,000. Of course they had full\nopportunity to inspect the house and to have it inspected\nby experts before they contracted to buy it. The contract of\nsale provided that prior to closing, the buyers would have\nthe opportunity to have the roof inspected by a licensed\nroofer and that the seller would pay for repairs necessary to\ncorrect any leaks found and to restore the roof to\nwatertight condition. Rather than demand that the\nnecessary repairs be made, the purchasers announced that\nthey would not complete the sale and demanded return of\ntheir deposit. The sellers indicated that they were willing to\nrepair the leaks and make the roof watertight but were not\nprepared to go beyond their contractual obligation by\nundertaking to ensure \xe2\x80\x9cfuture watertight integrity\xe2\x80\x9d of the\nroof as demanded by the purchasers. The buyers had\nagreed that in the event of a breach by them, the sellers\ncould retain the deposit paid as liquidated damages.\nThe district court of appeal referred to evidence showing\nthat Mr. Johnson told Mrs. Davis about previous leaks that\nhad been repaired. From this fact the district court found\nthat Mr. Johnson had knowledge that the roof was in a\ndefective condition at the time of the conversation. This\nevidence simply does not provide substantial, competent\n\n638\n\n\x0cevidence to support the factual conclusion drawn by the\nthird district.\nHomeowners who attempt to sell their houses are typically\nin no better position to measure the quality, value, or\ndesirability of their houses than are the prospective\npurchasers with whom such owners come into contact.\nBased on this and related considerations, the law of Florida\nhas long been that a seller of real property with\nimprovements is under no duty to disclose all material\nfacts, in the absence of a fiduciary relationship, to a buyer\nwho has an equal opportunity to learn all material\ninformation and is not prevented by the seller from doing\nso. See, e.g., Ramel v. Chasebrook Construction Co., 135 So.2d\n876 (Fla. 2d DCA 1961). This rule provides sufficient\nprotection against overreaching by sellers, as the wise and\nprogressive ruling in the Ramel case shows. The Ramel\ndecision is not the least bit \xe2\x80\x9cunappetizing.\xe2\x80\x9d\nThe majority opinion sets forth the elements of actionable\nfraud as they are stated in Huffstetler v. Our Home Life Ins.\nCo., 67 Fla. 324, 65 So.1 (1914). Those elements were not\nestablished by sufficient evidence in this case. There was no\ncompetent, substantial evidence to show that Mr. Johnson\nmade a false statement knowing it to be false. There was\nabsolutely no evidence that the statement was made with\nthe intention of causing Mrs. Davis to do anything; she had\nalready contracted to purchase the house. There was no\ncompetent evidence that Mrs. Davis in fact relied on Mr.\nJohnson\xe2\x80\x99s statement or was influenced by it to do anything.\nAnd the only detriment or injury that can be found is that,\nwhen the Davises subsequently decided not to complete\nthe transaction, they stood to forfeit the additional $26,000\ndeposit paid in addition to the original $5,000. The Davises\nhad already agreed to pay the additional deposit at the time\nof the conversation. They had to pay the additional deposit\nif they wanted to preserve their rights under the contract.\nThey chose to do so. Mr. Johnson\xe2\x80\x99s statements, even if we\n\n639\n\n\x0cbelieve Mrs. Davis\xe2\x80\x99 version of them rather than Mr.\nJohnson\xe2\x80\x99s, did not constitute the kind of representation\nupon which a buyer\xe2\x80\x99s reliance is justified.\nI do not agree with the Court\xe2\x80\x99s belief that the distinction\nbetween nondisclosure and affirmative statement is weak or\nnonexistent. It is a distinction that we should take special\ncare to emphasize and preserve. Imposition of liability for\nseller\xe2\x80\x99s nondisclosure of the condition of improvements to\nreal property is the first step toward making the seller a\nguarantor of the good condition of the property. Ultimately\nthis trend will significantly burden the alienability of\nproperty because sellers will have to worry about the\npossibility of catastrophic post-sale judgments for damages\nsought to pay for repairs. The trend will proceed somewhat\nas follows. At first, the cause of action will require proof of\nactual knowledge of the undisclosed defect on the part of\nthe seller. But in many cases the courts will allow it to be\nshown by circumstantial evidence. Then a rule of\nconstructive knowledge will develop based on the\nreasoning that if the seller did not know of the defect, he\nshould have known about it before attempting to sell the\nproperty. Thus the burden of inspection will shift from the\nbuyer to the seller. Ultimately the courts will be in the\nposition of imposing implied warranties and guaranties on\nall sellers of real property.\nAlthough as described in the majority opinion this change\nin the law sounds progressive, high-minded, and idealistic,\nit is in reality completely unnecessary. Prudent purchasers\ninspect property, with expert advice if necessary, before\nthey agree to buy. Prudent lenders require inspections\nbefore agreeing to provide purchase money. Initial deposits\nof earnest money can be made with the agreement to\npurchase being conditional upon the favorable results of\nexpert inspections. It is significant that in the present case\nthe major portion of the purchase price was to be financed\nby the Johnsons who were to hold a mortgage on the\n\n640\n\n\x0cproperty. If they had been knowingly trying to get rid of\nwhat they knew to be a defectively constructed house, it is\nunlikely that they would have been willing to lend $200,000\nwith the house in question as their only security.\nI would quash the decision of the district court of appeal.\nThis case should be remanded for findings by the trial court\nbased on the evidence already heard. The action for\nrescission based on fraud should be dismissed. The only\nissue is whether the Johnsons were in compliance with the\ncontract at the time of the breach by the Davises. Resolving\nthis issue requires a finding of whether the roof could have\nbeen put in watertight condition by spot repairs or by reroofing and in either case whether the sellers were willing\nto fulfill their obligation by paying for the necessary work.\nIf so, the Johnsons should keep the entire $31,000 deposit.\n4.2.2. The Deed\nState of Georgia County of ss\nGeneral Warranty Deed\nThis indenture, made ____, between ____, of [mailing\naddress], grantor, and ____, of [mailing address], grantee.\n(The terms \xe2\x80\x9cgrantor\xe2\x80\x9d and \xe2\x80\x9cgrantee\xe2\x80\x9d include the respective\nheirs, successors, successors-in-title, executors, legal\nrepresentatives and assigns of the parties where the context\nrequires or permits.)\nGrantor, for and in consideration of the sum of $10 paid at\nand before the sealing and delivery of this instrument, and\nfor other valuable consideration, the receipt and sufficiency\nof which is acknowledged, has granted, bargained, sold,\naliened, conveyed and confirmed, and by these presents\ndoes grant, bargain, sell, alien, convey and confirm to\ngrantee, all of that certain tract or parcel of land lying and\nbeing in Land Lot ____, ____ District, ____ County,\nGeorgia, as more particularly described as follows: [or in\nthe alternative: as more particularly described in Exhibit\n\n641\n\n\x0c(A), attached and incorporated into this instrument by\nreference].\nTo have and to hold the property, together with all and\nsingular the rights, members and appurtenances thereof, to\nthe same belonging or in any way appertaining, to the only\nproper use and benefit of grantee in fee simple.\nThis deed is made expressly subject to the permitted title\nexceptions set forth on Exhibit [B], attached and\nincorporated into this instrument by reference.\nSubject to the title matters set forth above, grantor will\nwarrant and forever defend the right and title of grantee to\nthe tract or parcel of land described above against the\nclaims of all persons and entities.\nIn witness, grantor has signed, sealed and delivered this\ndeed the day and year written above.\n[Signature of grantor, with name typed underneath]\nSigned, sealed and delivered in the presence of .\n[Signature of unofficial witness]\n[Notary Public]\nMy commission expires ____.\nNotes on Deeds\nThis is only a quick sketch of the \xe2\x80\x9cdeed\xe2\x80\x9d portion of the real estate\ntransaction. It is meant to give an overview of the process and\nhighlight some of the major issues.\nDeeds are just a kind of contract, representing the transfer of real\nproperty from one person to another. Once executed by a grantor,\nthe deed replaces the sales contract as the complete agreement\nbetween parties. The buyer of real estate, after delivery of the deed,\ncan only sue on the warranties in deed, not on promises in the real\nestate contract. Deeds must satisfy certain elements in order to be\n\n642\n\n\x0cvalid: a recitation of the parties, a description of property,1 an\nintent to transfer the property immediately, the signature of\ngrantor, and delivery to the grantee.\nRather than the manifold promises one could find in a contract,\ndeeds contain certain, fixed promises. Some states, like Illinois,\nhave statutes that translate deed language into certain, canonical\ndeed types. The promises that are enforceable from a deed are\ndetermined by its type.2 Luckily, there are only three major types:\nthe General Warranty deed (the strongest set of promises), the\nSpecial Warranty Deed (warranting only against title defects arising\nduring the grantor\xe2\x80\x99s ownership), and the Quitclaim Deed\n(promising only to grant what the grantor has, which may be\nnothing).\nThe warranties, or covenants (or promises - all the same thing),\ncontained in a General Warranty Deed are as follows:\nCovenant of seisin and good right to convey. Seisin means legal\npossession. You\xe2\x80\x99re promising that you have legal possession and\nthe legal right to sell what you\xe2\x80\x99re selling. This promise is breached,\nif at all, at the moment of transfer.\nCovenant against encumbrances. You may have the lawful right to\nconvey the property, but someone else owns some piece\n(geographic or conceptual) of the property. You\xe2\x80\x99re promising that\nyou\xe2\x80\x99ve disclosed all such encumbrances. For example, you\xe2\x80\x99re\npromising there is no undisclosed utility easement on the property.\nLike the above covenants, this promise is breached, if at all, at the\nmoment of transfer.\nCovenant of quiet enjoyment. You\xe2\x80\x99re promising that you will\ndefend against someone who claims title. This obligation arises, if\n\nThe \xe2\x80\x9cgood lead doctrine\xe2\x80\x9d requires that a description provide a way to discover\nwith certainty the land granted. For example, granting \xe2\x80\x9call of my land\xe2\x80\x9d in Clarke\nCounty does just that. Granting \xe2\x80\x9csome of my land\xe2\x80\x9d in Clarke County provides no\nway of knowing what was granted.\n1\n\nThe enforceable promises in deeds are known as \xe2\x80\x9cwarranties,\xe2\x80\x9d but they\xe2\x80\x99re no\ndifferent from promises or terms in a contract.\n2\n\n643\n\n\x0cat all, only when someone actually disturbs the grantee\xe2\x80\x99s ownership.\n(This is the key to understanding the Brown v. Lober case.3)\nDeeds are important for an additional reason: they can provide\nnotice to others as to the ownership status of real estate. You can\xe2\x80\x99t\ncarry land around with you, wear it, get your arms around it, or kill\nit (well, sadly, you kind of can). It\xe2\x80\x99s hard to signify to others that\nyou own land. Fencing and cultivation provide some notice. But\nthe ownership of land is necessarily abstract. How can I tell\nwhether I\xe2\x80\x99m being ripped off by a purported seller of land: how do\nI know that he or she owns that land and hasn\xe2\x80\x99t already granted the\nsame land to someone else.\nA system whereby the ownership of land can be determined by\nsearching records helps solve the problem of uncertainty in land\nownership. The idea is to place deeds, meeting the requirements\nabove, in a centralized, public location. Because each deed records\nthe grantor and grantee, you can, with an appropriate index, trace\ntitle down through preceding owners, presumably all the way to a\npatent from the sovereign.4\nSuppose I want to know whether the seller has the power to\nconvey the land I wish to buy. I can go to the land office, and look\nup my seller in a Grantee Index, finding the deed conveying the\nland to the seller. I would then look in the Grantor Index and look\nfor any conveyances from the seller after he or she received the\nland (to be sure I\xe2\x80\x99m not buying land that\xe2\x80\x99s already been conveyed).\nSatisfied with that, I then look up my seller\xe2\x80\x99s grantor in the Grantee\nIndex. Even though I now know that my seller acquired a deed and\ndidn\xe2\x80\x99t convey the land since, how do I know that the seller\nacquired good title from his or her grantor? So I look up seller\xe2\x80\x99s\nIn Brown v. Lober, the sellers, the Bosts (succeeded by Ms. Lober) did not own all\nthey claimed, namely 2/3 of the subsurface coal. Thus, their promises in their\ngeneral warranty deed as to seisin and the absence of encumbrances were\nprobably in error. But that was a long time ago\xe2\x80\xa6 too long under the statute of\nlimitations. And yet, the owners of that encumbrance have not come forward to\ndisturb possession, so the buyers, the Browns, can\xe2\x80\x99t yet sue Lober for failing to\ndefend and guaranteeing quiet enjoyment of what was purported to be conveyed.\n3\n\n4\n\nA patent is just a deed from the sovereign, rather than from a private individual.\n\n644\n\n\x0cgrantor in the Grantee Index and find the deed that conveyed the\nproperty to him or her. And then I look in the Grantor Index for\ndeeds from that date conveying part or all of the property before\nthe conveyance to my seller.\nSounds complex, but it\xe2\x80\x99s pretty mechanical. Upshot is that you\nkeep doing this, going all the way back to the sovereign patent, at\nthat point sure that the title being offered to you is good. The\nproblem is that that may be a long way back. In England, for\nexample, it\xe2\x80\x99s not even feasible. And so we have Marketable Title\nlegislation to the rescue, that makes an apparently good title truly\ngood if a search thirty or forty years back yields no contrary grants\nand if there have been no contrary claims in that time.\nEven though all of this gives some assurance, as a buyer investing a\nlot of money, I will probably want, and my bank will probably\ninsist on, title insurance. This insurance protects me against claims\narising from a title problem down the road (as could happen if\nthere was a mistake in the title search, for example). There are\ncompanies that help produce the information needed for all this,\nmaintaining their own \xe2\x80\x9ctitle plants,\xe2\x80\x9d separate from the public land\noffice. These companies collect not only all recorded deeds, but\nalso other public records that may affect title. They keep, and other\ncompanies may also produce, \xe2\x80\x9cabstract of title,\xe2\x80\x9d which are the\ncollections of all the documents related to a piece of property.\nDespite this effort, things can go wrong. People can fail to record\ntheir interests, or record them improperly. What should we do\nwhen an unscrupulous grantor grants the same land twice? First,\nnote that the grantor is always on the hook for damages, but let\xe2\x80\x99s\nassume he or she has fled the scene or has not assets to make the\ndisappointed buyers whole.\nThe common law rule was \xe2\x80\x9cfirst in time, first in right.\xe2\x80\x9d Based on\nthe idea that one can\xe2\x80\x99t give away more than he or she owns, the\nrule would award the property to the first buyer, and the second\nbuyer would take nothing.\nRecording statutes make an exception to this common law rule,\ngiving absolute protection to the first buyer only when he or she\n\n645\n\n\x0crecords title right away. There are basically three kinds of statutes\nthat do this, and each works a little differently. We will go over\nsome examples in class, but here is a description of the statutes:\n\xef\x82\xb7\n\nThe race statute: The first grantee to record a deed from\nthe grantor prevails against all other grantees, regardless of\nthe order in which the grants were received. This sets up a\n\xe2\x80\x9crace\xe2\x80\x9d to the land office.\n\n\xef\x82\xb7\n\nThe notice statute: The last purchaser who took without\nnotice of any other grants is the winner. Recording\nconstitutes notice. And so the first purchaser can always\nprotect himself in such a jurisdiction by recording right\naway. But if he fails to do so, and grantor grants the same\nland to another who has no idea of the first grant, that later\ngrantee will win the land.\n\n\xef\x82\xb7\n\nThe race-notice statute: The last purchaser wins if she had\nno notice at the time of the grant and records first. This\ndiffers from notice in, for example, the following scenario:\nA takes Blackacre from O. O then grants Blackacre again to\nB, who has no idea about the earlier grant, which is not yet\nrecorded. A then records, before B records. In a notice\njurisdiction, B would win, as the last purchaser without\nnotice. In a race-notice jurisdiction, A would win, because\nalthough B had no notice of the grant to A, B failed to\nrecord first.\n\nAs mentioned above, recorded deeds generally give notice. But\nproblems can arise if the deed is \xe2\x80\x9coutside of the chain of title.\xe2\x80\x9d For\nexample, O grants to A before the grant from X to O. B will not\nfind the deed to A if only looking for grants from O after the grant\nfrom X to O. We will read such a case in this section to see how\nthis might happen.\nBrown v. Lober, 75 Ill.2d 547 (1979)\nMaureen M. Lober, Litchfield (Gerald Patrick Huber,\nRaymond, of counsel), for appellant.\n\n646\n\n\x0cPaul McWilliams, of McWilliams & McWilliams, Litchfield,\nfor appellees.\nUNDERWOOD, Justice:\nPlaintiffs instituted this action in the Montgomery County\ncircuit court based on an alleged breach of the covenant of\nseisin in their warranty deed. The trial court held that\nalthough there had been a breach of the covenant of seisin,\nthe suit was barred by the 10-year statute of limitations in\nsection 16 of the Limitations Act (Ill. Rev. Stat. 1975, ch.\n83, par. 17). Plaintiffs\xe2\x80\x99 post-trial motion, which was based\non an alleged breach of the covenant of quiet enjoyment,\nwas also denied. A divided Fifth District Appellate Court\nreversed and remanded. We allowed the defendant\xe2\x80\x99s\npetition for leave to appeal.\nThe parties submitted an agreed statement of facts which\nsets forth the relevant history of this controversy. Plaintiffs\npurchased 80 acres of Montgomery County real estate from\nWilliam and Faith Bost and received a statutory warranty\ndeed (Ill. Rev. Stat. 1957, ch. 30, par. 8), containing no\nexceptions, dated December 21, 1957. Subsequently,\nplaintiffs took possession of the land and recorded their\ndeed.\nOn May 8, 1974, plaintiffs granted a coal option to\nConsolidated Coal Company (Consolidated) for the coal\nrights on the 80-acre tract for the sum of $6,000.\nApproximately two years later, however, plaintiffs\n\xe2\x80\x9cdiscovered\xe2\x80\x9d that they, in fact, owned only a one-third\ninterest in the subsurface coal rights. It is a matter of public\nrecord that, in 1947, a prior grantor had reserved a twothirds interest in the mineral rights on the property.\nAlthough plaintiffs had their abstract of title examined in\n1958 and 1968 for loan purposes, they contend that until\nMay 4, 1976, they believed that they were the sole owners\nof the surface and subsurface rights on the 80-acre tract.\nUpon discovering that a prior grantor had reserved a two-\n\n647\n\n\x0cthirds interest in the coal rights, plaintiffs and Consolidated\nrenegotiated their agreement to provide for payment of\n$2,000 in exchange for a one-third interest in the\nsubsurface coal rights. On May 25, 1976, plaintiffs filed this\naction against the executor of the estate of Faith Bost,\nseeking damages in the amount of $4,000.\nThe deed which plaintiffs received from the Bosts was a\ngeneral statutory form warranty deed meeting the\nrequirements of section 9 of \xe2\x80\x9cAn Act concerning\nconveyances\xe2\x80\x9d (Ill. Rev. Stat. 1957, ch. 30, par. 8). That\nsection provides:\nEvery deed in substance in the above\nform, when otherwise duly executed,\nshall be deemed and held a conveyance\nin fee simple, to the grantee, his heirs\nor assigns, with covenants on the part\nof the grantor, (1) that at the time of\nthe making and delivery of such deed\nhe was lawfully seized of an\nindefeasible estate in fee simple, in and\nto the premises therein described, and\nhad good right and full power to\nconvey the same; (2) that the same\nwere then free from all incumbrances;\nand (3) that he warrants to the grantee,\nhis heirs and assigns, the quiet and\npeaceable possession of such premises,\nand will defend the title thereto against\nall persons who may lawfully claim the\nsame. And such covenants shall be\nobligatory upon any grantor, his heirs\nand personal representatives, as fully\nand with like effect as if written at\nlength in such deed.\nIll. Rev. Stat. 1957, ch. 30, par. 8.\n\n648\n\n\x0cThe effect of this provision is that certain covenants of title\nare implied in every statutory form warranty deed.\nSubsection 1 contains the covenant of seisin and the\ncovenant of good right to convey. These covenants, which\nare considered synonymous, assure the grantee that the\ngrantor is, at the time of the conveyance, lawfully seized\nand has the power to convey an estate of the quality and\nquantity which he professes to convey.\nSubsection 2 represents the covenant against incumbrances.\nAn incumbrance is any right to, or interest in, land which\nmay subsist in a third party to the diminution of the value\nof the estate, but consistent with the passing of the fee by\nconveyance.\nSubsection 3 sets forth the covenant of quiet enjoyment,\nwhich is synonymous with the covenant of warranty in\nIllinois. By this covenant, \xe2\x80\x9cthe grantor warrants to the\ngrantee, his heirs and assigns, the possession of the\npremises and that he will defend the title granted by the\nterms of the deed against persons who may lawfully claim\nthe same, and that such covenant shall be obligatory upon\nthe grantor, his heirs, personal representatives, and\nassigns.\xe2\x80\x9d Biwer v. Martin (1920), 294 Ill. 488, 497.\nPlaintiffs\xe2\x80\x99 complaint is premised upon the fact that\n\xe2\x80\x9cWilliam Roy Bost and Faith Bost covenanted that they\nwere the owners in fee simple of the above described\nproperty at the time of the conveyance to the\nplaintiffs.\xe2\x80\x9dWhile the complaint could be more explicit, it\nappears that plaintiffs were alleging a cause of action for\nbreach of the covenant of seisin. This court has stated\nrepeatedly that the covenant of seisin is a covenant In\npraesenti and, therefore, if broken at all, is broken at the\ntime of delivery of the deed. Tone v. Wilson (1876), 81 Ill.\n529; Jones v. Warner (1876), 81 Ill. 343.\nSince the deed was delivered to the plaintiffs on December\n21, 1957, any cause of action for breach of the covenant of\n\n649\n\n\x0cseisin would have accrued on that date. The trial court held\nthat this cause of action was barred by the statute of\nlimitations. No question is raised as to the applicability of\nthe 10-year statute of limitations (Ill. Rev. Stat. 1975, ch. 83,\npar. 17). We conclude, therefore, that the cause of action\nfor breach of the covenant of seisin was properly\ndetermined by the trial court to be barred by the statute of\nlimitations since plaintiffs did not file their complaint until\nMay 25, 1976, nearly 20 years after their alleged cause of\naction accrued.\nIn their post-trial motion, plaintiffs set forth as an\nadditional theory of recovery an alleged breach of the\ncovenant of quiet enjoyment. The trial court, without\nexplanation, denied the motion. The appellate court\nreversed, holding that the cause of action on the covenant\nof quiet enjoyment was not barred by the statute of\nlimitations. The appellate court theorized that plaintiffs\xe2\x80\x99\ncause of action did not accrue until 1976, when plaintiffs\ndiscovered that they only had a one-third interest in the\nsubsurface coal rights and renegotiated their contract with\nthe coal company for one-third of the previous contract\nprice. The primary issue before us, therefore, is when, if at\nall, the plaintiffs\xe2\x80\x99 cause of action for breach of the covenant\nof quiet enjoyment is deemed to have accrued.\nThis court has stated on numerous occasions that, in\ncontrast to the covenant of seisin, the covenant of warranty\nor quiet enjoyment is prospective in nature and is breached\nonly when there is an actual or constructive eviction of the\ncovenantee by the paramount titleholder. Biwer v. Martin\n(1920), 294 Ill. 488.\nThe cases are also replete with statements to the effect that\nthe mere existence of paramount title in one other than the\ncovenantee is not sufficient to constitute a breach of the\ncovenant of warranty or quiet enjoyment: \xe2\x80\x9c(T)here must be\na union of acts of disturbance and lawful title, to constitute\na breach of the covenant for quiet enjoyment, or warranty *\n\n650\n\n\x0c* *.\xe2\x80\x9d (Barry v. Guild (1888), 126 Ill. 439.) \xe2\x80\x9c(T)here is a\ngeneral concurrence that something more than the mere\nexistence of a paramount title is necessary to constitute a\nbreach of the covenant of warranty.\xe2\x80\x9d (Scott v. Kirkendall\n(1878), 88 Ill. 465, 467.) \xe2\x80\x9cA mere want of title is no breach\nof this covenant. There must not only be a want of title,\nbut there must be an ouster under a paramount title.\xe2\x80\x9d Moore\nv. Vail (1855), 17 Ill. 185, 189.\nThe question is whether plaintiffs have alleged facts\nsufficient to constitute a constructive eviction. They argue\nthat if a covenantee fails in his effort to sell an interest in\nland because he discovers that he does not own what his\nwarranty deed purported to convey, he has suffered a\nconstructive eviction and is thereby entitled to bring an\naction against his grantor for breach of the covenant of\nquiet enjoyment. We think that the decision of this court in\nScott v. Kirkendall (1878), 88 Ill. 465, is controlling on this\nissue and compels us to reject plaintiffs\xe2\x80\x99 argument.\nIn Scott, an action was brought for breach of the covenant\nof warranty by a grantee who discovered that other parties\nhad paramount title to the land in question. The land was\nvacant and unoccupied at all relevant times. This court, in\nrejecting the grantee\xe2\x80\x99s claim that there was a breach of the\ncovenant of quiet enjoyment, quoted the earlier decision in\nMoore v. Vail (1855), 17 Ill. 185, 191:\n\xe2\x80\x9cUntil that time, (the taking possession\nby the owner of the paramount title,)\nhe might peaceably have entered upon\nand enjoyed the premises, without\nresistance or molestation, which was\nall his grantors covenanted he should\ndo. They did not guarantee to him a\nperfect title, but the possession and\nenjoyment of the premises.\xe2\x80\x9d\n88 Ill. 465, 468.\n\n651\n\n\x0cRelying on this language in Moore, the Scott court concluded:\nWe do not see but what this fully\ndecides the present case against the\nappellant. It holds that the mere\nexistence of a paramount title does not\nconstitute a breach of the covenant.\nThat is all there is here. There has been\nno assertion of the adverse title. The\nland has always been vacant. Appellant\ncould at any time have taken peaceable\npossession of it. He has in no way\nbeen prevented or hindered from the\nenjoyment of the possession by any\none having a better right. It was but\nthe possession and enjoyment of the\npremises which was assured to him,\nand there has been no disturbance or\ninterference in that respect. True, there\nis a superior title in another, but\nappellant has never felt \xe2\x80\x9cits pressure\nupon him.\xe2\x80\x9d\n88 Ill. 465, 468-69.\nAdmittedly, Scott dealt with surface rights while the case\nbefore us concerns subsurface mineral rights. We are,\nnevertheless, convinced that the reasoning employed in\nScott is applicable to the present case. While plaintiffs went\ninto possession of the surface area, they cannot be said to\nhave possessed the subsurface minerals. \xe2\x80\x9cPossession of the\nsurface does not carry possession of the minerals * * *.\n(Citation.) To possess the mineral estate, one must\nundertake the actual removal thereof from the ground or\ndo such other act as will apprise the community that such\ninterest is in the exclusive use and enjoyment of the\nclaiming party.\xe2\x80\x9d Failoni v. Chicago & North Western Ry. Co.\n(1964), 30 Ill.2d 258, 262.\n\n652\n\n\x0cSince no one has, as yet, undertaken to remove the coal or\notherwise manifested a clear intent to exclusively \xe2\x80\x9cpossess\xe2\x80\x9d\nthe mineral estate, it must be concluded that the subsurface\nestate is \xe2\x80\x9cvacant.\xe2\x80\x9d As in Scott, plaintiffs \xe2\x80\x9ccould at any time\nhave taken peaceable possession of it. (They have) in no\nway been prevented or hindered from the enjoyment of the\npossession by any one having a better right.\xe2\x80\x9d (88 Ill. 465,\n468.) Accordingly, until such time as one holding\nparamount title interferes with plaintiffs\xe2\x80\x99 right of\npossession (E.g., by beginning to mine the coal), there can\nbe no constructive eviction and, therefore, no breach of the\ncovenant of quiet enjoyment.\nWhat plaintiffs are apparently attempting to do on this\nappeal is to extend the protection afforded by the covenant\nof quiet enjoyment. However, we decline to expand the\nhistorical scope of this covenant to provide a remedy where\nanother of the covenants of title is so clearly applicable. As\nthis court stated in Scott v. Kirkendall (1878), 88 Ill. 465, 469:\nTo sustain the present action would be\nto confound all distinction between\nthe covenant of warranty and that of\nseizin, or of right to convey. They are\nnot equivalent covenants. An action\nwill lie upon the latter, though there be\nno disturbance of possession. A defect\nof title will suffice. Not so with the\ncovenant of warranty, or for quiet\nenjoyment, as has always been held by\nthe prevailing authority.\nThe covenant of seisin, unquestionably, was breached when\nthe Bosts delivered the deed to plaintiffs, and plaintiffs\nthen had a cause of action. However, despite the fact that it\nwas a matter of public record that there was a reservation\nof a two-thirds interest in the mineral rights in the earlier\ndeed, plaintiffs failed to bring an action for breach of the\ncovenant of seisin within the 10-year period following\n\n653\n\n\x0cdelivery of the deed. The likely explanation is that plaintiffs\nhad not secured a title opinion at the time they purchased\nthe property, and the subsequent examiners for the lenders\nwere not concerned with the mineral rights. Plaintiffs\xe2\x80\x99\noversight, however, does not justify us in overruling earlier\ndecisions in order to recognize an otherwise premature\ncause of action. The mere fact that plaintiffs\xe2\x80\x99 original\ncontract with Consolidated had to be modified due to their\ndiscovery that paramount title to two-thirds of the\nsubsurface minerals belonged to another is not sufficient to\nconstitute the constructive eviction necessary to a breach of\nthe covenant of quiet enjoyment.\nFinally, although plaintiffs also have argued in this court\nthat there was a breach of the covenant against\nincumbrances entitling them to recovery, we decline to\naddress this issue which was argued for the first time on\nappeal. It is well settled that questions not raised in the trial\ncourt will not be considered by this court on appeal. Kravis\nv. Smith Marine, Inc. (1975), 60 Ill.2d 141.\nAccordingly, the judgment of the appellate court is\nreversed, and the judgment of the circuit court of\nMontgomery County is affirmed.\nSabo v. Horvath, 559 P.2d 1038 (Alaska 1975)\nTrigg T. Davis, Owens, Davis & Bartlett, Anchorage, for\nappellants.\nSuzanne Pestinger, Birch, Jermain, Horton & Bittner,\nAnchorage, for appellee.\nBefore BOOCHEVER, Chief Justice, and RABINOWITZ,\nCONNOR, ERWIN and BURKE, Justices.\nBOOCHEVER, Chief Justice.\nThis appeal arises because Grover C. Lowery conveyed the\nsame five-acre piece of land twice-first to William A.\nHorvath and Barbara J. Horvath and later to William Sabo\nand Barbara Sabo. Both conveyances were by separate\n\n654\n\n\x0cdocuments entitled \xe2\x80\x98Quitclaim Deeds.\xe2\x80\x99 Lowery\xe2\x80\x99s interest in\nthe land originates in a patent from the United States\nGovernment under 43 U.S.C. s 687a (1970) ( \xe2\x80\x98Alaska\nHomesite Law\xe2\x80\x99). Lowery\xe2\x80\x99s conveyance to the Horvaths was\nprior to the issuance of patent, and his subsequent\nconveyance to the Sabos was after the issuance of patent.\nThe Horvaths recorded their deed in the Chitna Recording\nDistrict on January 5, 1970; the Sabos recorded their deed\non December 13, 1973. The transfer to the Horvaths,\nhowever, predated patent and title, and thus the Horvaths\xe2\x80\x99\ninterest in the land was recorded \xe2\x80\x98outside the chain of title.\xe2\x80\x99\nMr. Horvath brought suit to quiet title, and the Sabos\ncounterclaimed to quiet their title.\nIn a memorandum opinion, the superior court ruled that\nLowery had an equitable interest capable of transfer at the\ntime of his conveyance to the Horvaths and further said the\ntransfer contemplated more than a \xe2\x80\x98mere quitclaim\xe2\x80\x99-it\nwarranted patent would be transferred. The superior court\nalso held that Horvath had the superior claim to the land\nbecause his prior recording had given the Sabos\nconstructive notice for purposes of AS 34.15.290.1 The\nSabos\xe2\x80\x99 appeal raises the following issues:\n1. Under 43 U.S.C. s 687a (1970), when did Lowery\nobtain a present equitable interest in land which he\ncould convey?\n2. Are the Sabos, as grantees under a quitclaim deed,\n\xe2\x80\x98subsequent innocent purchaser(s) in good faith\xe2\x80\x99?\n\n1\n\nAS 34.15.290 states:\nA conveyance of real property in the state hereafter made,\nother than a lease for a term not exceeding one year, is\nvoid as against a subsequent innocent purchaser or\nmortgagee in good faith for a valuable consideration of\nthe property or a portion of it, whose conveyance is first\nduly recorded. An unrecorded instrument is valid as\nbetween the parties to it and as against one who has actual\nnotice of it.\n\n655\n\n\x0c3. Is the Horvaths\xe2\x80\x99 first recorded interest, which is\noutside the chain of title, constructive notice to\nSabo?\nWe affirm the trial court\xe2\x80\x99s ruling that Lowery had an\ninterest to convey at the time of his conveyance to the\nHorvaths. We further hold that Sabo may be a \xe2\x80\x98good faith\npurchaser\xe2\x80\x99 even though he takes by quitclaim deed. We\nreverse the trial court\xe2\x80\x99s ruling that Sabo had constructive\nnotice and hold that a deed recorded outside the chain of\ntitle is a \xe2\x80\x98wild deed\xe2\x80\x99 and does not give constructive notice\nunder the recording laws of Alaska.2\nThe facts may be stated as follows. Grover C. Lowery\noccupied land in the Chitna Recording District on October\n10, 1964 for purposes of obtaining Federal patent. Lowery\nfiled a location notice on February 24, 1965, and made his\napplication to purchase on June 6, 1967 with the Bureau of\nLand Management (BLM). On March 7, 1968, the BLM\nfield examiner\xe2\x80\x99s report was filed which recommended that\npatent issue to Lowery. On October 7, 1969, a request for\nsurvey was made by the United States Government. On\nJanuary 3, 1970, Lowery issued a document entitled\n\xe2\x80\x98Quitclaim Deed\xe2\x80\x99 to the Horvaths; Horvath recorded the\ndeed on January 5, 1970 in the Chitna Recording District.\nHorvath testified that when he bought the land from\nLowery, he knew patent and title were still in the United\nStates Government, but he did not rerecord his interest\nafter patent had passed to Lowery.\nFollowing the sale to the Horvaths, further action was\ntaken by Lowery and the BLM pertaining to the application\n\nBecause we hold Lowery had a conveyable interest under the Federal statute, we\nneed not decide issues raised by the parties regarding after-acquired property and\nthe related issue of estoppel by deed.\n2\n\n656\n\n\x0cfor patent3 and culminating in issuance of the patent on\nAugust 10, 1973.\nAlmost immediately after the patent was issued, Lowery\nadvertised the land for sale in a newspaper. He then\nexecuted a second document also entitled \xe2\x80\x98quitclaim\xe2\x80\x99 to the\nSabos on October 15, 1973. The Sabos duly recorded this\ndocument on December 13, 1973.\nLuther Moss, a representative of the BLM, testified to\nprocedures followed under the Alaska Homesite Law (43\nU.S.C. s 687a (1970)). After numerous steps,4 a plat is\napproved and the claimant notified that he should direct\npublication of his claim. In this case, Lowery executed his\nconveyance to the Horvaths after the BLM field report had\nrecommended patent.\n\nOn February 16, 1970, special instructions were given regarding survey. On June\n14, 1972, mineral deposit reservations were made. On December 7, 1972, Lowery\npublished his application. Affidavit of posting was made on March 15, 1973, and\non June 28, 1973, the BLM notified Lowery that $12.50 payment must be made\nfor the land.\n3\n\nThe entire process from the time the claimant decides on a homesite until the\npatent is passed is quite involved. A notice of location is filed with the BLM by\nthe claimant. After filing of the notice of location, the claim normally proceeds\nwithin a five-year statutory period until the claimant is notified that he should\nsubmit application to purchase. After application to purchase, BLM requests a\nfield report on the matter, and a realty specialist examines the land. He writes a\nreport and makes his recommendation concerning compliance with the\nappropriate statute. If the field examiner recommends approval, a request for\nsurvey is prepared. The claim is then surveyed, and the plat of survey is forwarded\nto Washington, D. C. for approval. After it is approved and accepted by the Chief,\nDivision of Cadastral Survey, it is returned to the Alaska State Office for filing.\nThe claimant is then notified that he should direct publication of his claim in the\nnearest newspaper. In the case of a special survey, publication continues\nthroughout a nine-week period. The newspaper submits proof of publication to\nthe case file, and the claimant must submit an affidavit of posting to purchase the\nclaim along with the appropriate map and his application for purchase. After all\nthis is completed, the matter is finally reviewed. All reservations to the United\nStates Government are summarized, and a final certificate is prepared. Upon\nsigning of the final certificate, a patent is typed, reviewed several times, signed and\nsealed and the patent number is affixed. The patent is then mailed certified mail to\nthe claimant.\n4\n\n657\n\n\x0cThe first question this court must consider is whether\nLowery had an interest to convey at the time of his transfer\nto the Horvaths. Lowery\xe2\x80\x99s interest was obtained pursuant\nto patent law 43 U.S.C. s 687a (1970) commonly called the\n\xe2\x80\x98Alaska Homesite Law\xe2\x80\x99.5 Since Lowery\xe2\x80\x99s title to the\n5\n\n43 U.S.C. s 687a (1970) states:\nRights to purchase; price and limit of acreage; access to water front\nAny citizen of the United States twenty-one years of age,\nor any association of such-citizens, or any corporation\nincorporated under the laws of the United States or of any\nState or Territory authorized on May 14, 1898, by law to\nhold lands in the Territories, thereafter in the possession\nof and occupying public lands in Alaska in good faith for\nthe purposes of trade, manufacture, or other productive\nindustry, may each purchase one claim only not exceeding\neighty acres of such land for any one person, association,\nor corporation, at $2.50 per acre, upon submission of\nproof that said area embraces improvements of the\nclaimant and is needed in the prosecution of such trade,\nmanufacture, or other productive industry, such tract of\nland not to include mineral or coal lands except as\nprovided in section 270-1 of this title, and ingress and\negress shall be reserved to the public on the waters of all\nstreams, whether navigable or otherwise: Provided, That\nany citizen of the United States twenty-one years of age\nemployed by citizens of the United States, associations of\nsuch citizens, or by corporations organized under the laws\nof the United States, or of any State of Territory, whose\nemployer is engaged in trade, manufacture, or other\nproductive industry may purchase one claim, not\nexceeding five acres, of unreserved public lands, such tract\nof land not to include mineral, coal, oil or gas lands except\nas provided in section 270-1 of this title, in Alaska as a\nhomestead or headquarters, under rules and regulations to\nbe prescribed by the Secretary of the Interior, upon\npayment of $2.50 per acre: Provided further, That any\ncitizen of the United States, after occupying land of the\ncharacter described as a homestead or headquarters, in a\nhabitable house, not less than five months each year for\nthree years, may purchase such tract, not exceeding five\nacres, in a reasonable compact form, without any showing\nas to his employment or business, upon payment of $2.50\nper acre, under rules and regulations to be prescribed by\nthe Secretary of the Interior, and in such cases surveys\nmay be made without expense to the applicants in like\nmanner as the survey of settlement claims under sections\n\n658\n\n\x0cproperty was contingent upon the patent ultimately issuing\nfrom the United States Government and since Lowery\xe2\x80\x99s\nconveyance to the Horvaths predated issuance of the\npatent, the question is \xe2\x80\x98at what point in the pre-patent chain\nof procedures does a person have a sufficient interest in a\nparticular tract of land to convey that land by quitclaim\ndeed.\xe2\x80\x99 Willis v. City of Valdez, 546 P.2d 570, 575 (Alaska\n1976).\nHere we must determine whether Congress, in passing 43\nU.S.C. s 687a (1970), intended to prohibit the prepatent\nconveyance by Lowery. This court has upheld early\nconveyances under the Soldiers\xe2\x80\x99 Additional Homestead\nAct, 43 U.S.C. ss 271-74. Willis v. City of Valdez, supra at\n575. However, cases decided under other patent laws\nprohibit alienation at early stages in the \xe2\x80\x98pre-patent chain.\xe2\x80\x996\nWe have found no recorded legislative history of 43 U.S.C.\ns 687a (1970) which assists us, and case law decided under\nthis statute and its statutory predecessors does not clarify at\nwhat point in the prepatent chain alienation is permitted.7\nWe note initially that 43 U.S.C. s 687a (1970) and the\nregulations administering the Alaska Homesite Law are\nsilent as to alienability. In the context of land patent law,\nthis silence is significant. By comparison, the general\nhomestead laws specifically prohibit alienation prior to final\n270-10 and 270-15 of this title: And provided further,\nThat the minimum payment for any such tract shall be\n$10, and no person shall be permitted to purchase more\nthan one tract except upon a showing of good faith and\nnecessity satisfactory to the Secretary of the Interior.\n\nBailey v. Sanders, 228 U.S. 603, 609, 33 S.Ct. 602, 57 L.Ed. 985, 989 (1913);\nAnderson v. Carkins, 135 U.S. 483, 487, 10 S.Ct. 905, 34 L.Ed. 272, 274 (1890);\nMoffitt v. Bulson, 96 Cal. 106, 30 P. 1022, 1023 (1893); Harris v. McCrary, 17\nIdaho 300, 105 P. 558, 559 (1909); Ronquillo v. Sandoval, 71 N.M. 459, 379 P.2d\n611, 613 (1962); McDonald v. Lambert, 43 N.M. 27, 85 P.2d 78, 85 (1938);\nHoward v. Standolind Oil & Gas Co., 197 Okl. 269, 169 P.2d 737, 741-42 (1946).\n6\n\nUnited States v. Buchanan, 232 U.S. 72, 76, 34 S.Ct. 237, 58 L.Ed. 511, 514\n(1914); Russian-American Packing Co. v. United States, 199 U.S. 570, 26 S.Ct.\n157, 50 L.Ed. 314 (1905).\n7\n\n659\n\n\x0cproof by requiring the filing of an affidavit which states\nunder oath that \xe2\x80\x98no part of such land has been alienated\xe2\x80\xa6\n.\xe2\x80\x9943 U.S.C. s 164 (1964). Homestead regulations further\nspecify nonalienation prior to affidavit and final proof.8\nCases decided under patent laws which contain specific\nprohibition against alienation have uniformly held that an\nattempted conveyance prior to final proof precludes patent\nfrom issuing from the United States Government, and such\nconveyances are held entirely void and unenforceable\nbetween the parties.9\nThe importance of the Alaska Homesite Law\xe2\x80\x99s silence with\nrespect to alienation is again underlined by the fact that\nCongress extended the anti-alienation provision of the\ngeneral homestead laws to the Alaska Homestead Act, 43\nU.S.C. s 270 (1970).10\n\n8\n\nGeneral Homestead Regulation, 43 C.F.R. s 2511.2(a) (1975) states:\nAlienation of all or part of claim; \xe2\x80\xa6.\n(1) The alienation of all or part of the land embraced in a\nhomestead prior to making proof except for the public\npurposes mentioned \xe2\x80\xa6 will prevent the entryman from\nmaking satisfactory proof, since he is required to swear\nthat he has not alienated any part of the land \xe2\x80\xa6 .\n\n9\n\nSee note 5, supra.\n\n10\n\nThe Alaska Homestead Act specifically states:\nThe right of any homestead settler to transfer any portion\nof the land so settled upon, as provided by section 174 of\n(Title 43), shall be restricted and limited within the\nTerritory of Alaska as follows: \xe2\x80\xa6, and all contracts by the\nsettlor made before his receipt of patent from the\nGovernment, for the conveyance of the land homesteaded\nby him or her, except as herein provided, shall be held null\nand void.\n\nThe regulations promulgated pursuant to Alaska Homestead Act, 43 C.F.R. s\n2567.7(c) (1975) state:\nIn Alaska as elsewhere in the United States, a forfeiture of\nthe claim results from a transfer of any part of the land or\nof any interest therein before the submission of the proof,\nwith certain exceptions specified by law.\n\n660\n\n\x0cIt is clear from the provision in the Alaska Homestead Act,\nthe general homestead laws, and the regulations\npromulgated pursuant to them, that Congress and the BLM\nknew how specifically to prohibit alienation. Their failure to\nprohibit alienation in the Alaska Homesite Law or\nregulations therefore is quite significant. In Willis v. Valdez,\nsupra at 574 n.7, we cited Barnes v. Poirier, 64 F. 14, 18\n(8th Cir. 1894), which points to the significance of the\nabsence of a specific alienation clause in the Soldiers\xe2\x80\x99\nAdditional Homestead statute. Numerous cases relating to\nUnited States land patents under other statutes hold that\nthe silence of land patent statutes is determinative of the\nissue of alienability.11 Significantly, the United States\nSupreme Court has stated:\nThere is no requirement \xe2\x80\xa6 that the\nentryman shall make oath that he has\nnot alienated any interest in the land.\nThe policy of the government to\nrequire such affidavit when it intends\nto make it a condition precedent to\ngranting a title was indicated in the\nhomestead act, and could readily have\nbeen pursued by a similar provision in\nthe timber culture act if it was\nintended to extend the principle to\nthat statute \xe2\x80\xa6 .\n\xe2\x80\xa6 If the entryman has complied with\nthe statute and made the entry in good\nfaith, in accordance with the terms of\nthe law and the oath required of him\nupon making such entry, and has done\n\nSylvester v. Washington, 215 U.S. 80, 86, 30 S.Ct. 25, 54 L.Ed. 101, 105 (1909);\nAdams v. Church, 193 U.S. 510, 516-17, 24 S.Ct. 512, 48 L.Ed. 769, 771-72\n(1904); Lamb v. Davenport, 85 U.S. (18 Wall.) 307, 314, 21 L.Ed. 759, 761 (1873);\nPhillips v. Carter, 135 Cal. 604, 67 P. 1031, 1032 (1902) (Desert Land Act of\n1877); and McKennon v. Winn, 1 Okl. 327, 33 P. 582, 585 (1893) (Federal\nTownsite Claim Act).\n11\n\n661\n\n\x0cnothing inconsistent with the terms of\nthe law, we find nothing in the fact\nthat, during his term of occupancy, he\nhas agreed to convey an interest, to be\nconveyed after patent issued, which\nwill defeat his claim and forfeit the\nright acquired by planting the trees and\ncomplying with the terms of the law.\nHad Congress intended such result to\nfollow from the alienation of an\ninterest after an entry in good faith, it\nwould have so declared in the law.\n(citation omitted)\nAdams v. Church, 193 U.S. at 515-17, 24 S.Ct. at 514-515,\n48 L.Ed. at 771-72.\nIt should also be noted that prior to the conveyance to the\nHorvaths, Lowery had complied with a substantial portion\nof his obligation under the statute and regulations. He had\nfiled his notice of location and his application to purchase\nand had lived on the land the required amount of time. A\nBLM field examiner\xe2\x80\x99s report had recommended patent be\nissued. It is true that various other events were necessary\nprior to the issuance of the patent. After the conveyance, a\nsurvey was conducted, various mineral reservations\nclaimed, application to purchase was published and the\npayment of $12.50 was made to the BLM. We do not think\nthat the mere fact that steps remained before issuance of\npatent precluded the existence of an alienable interest,\nwhere there has been basic compliance with the statutory\ndemands.\nIn Willis v. City of Valdez, supra at 578, we held that one\nwho later secured a patent under the Solders\xe2\x80\x99 Additional\nHomestead Act had an interest in land which was alienable\nat the time that he requested a survey. Here, Lowery had\ncomplied with numerous requirements under the Homesite\nLaw including those of occupancy, and the BLM had\n\n662\n\n\x0crecommended issuance of the patent. Since 43 U.S.C. s\n687a (1970) does not prohibit alienation, we hold that at\nthe time Lowery executed the deed to the Horvaths he had\ncomplied with the statute to a sufficient extent so as to\nhave an interest in the land which was capable of\nconveyance.\nSince the Horvaths received a valid interest from Lowery,\nwe must now resolve the conflict between the Horvaths\xe2\x80\x99\nfirst recorded interest and the Sabos\xe2\x80\x99 later recorded interest.\nThe Sabos, like the Horvaths, received their interest in the\nproperty by a quitclaim deed. They are asserting that their\ninterest supersedes the Horvaths under Alaska\xe2\x80\x99s statutory\nrecording system. AS 34.15.290 provides that:\nA conveyance of real property \xe2\x80\xa6 is\nvoid as against a subsequent innocent\npurchaser \xe2\x80\xa6 for a valuable\nconsideration of the property \xe2\x80\xa6\nwhose conveyance is first duly\nrecorded. An unrecorded instrument is\nvalid \xe2\x80\xa6 as against one who has actual\nnotice of it.\nInitially, we must decide whether the Sabos, who received\ntheir interest by means of a quitclaim deed, can ever be\n\xe2\x80\x98innocent purchaser(s)\xe2\x80\x99 within the meaning of AS\n34.15.290. Since a \xe2\x80\x98quitclaim\xe2\x80\x99 only transfers the interest of\nthe grantor, the question is whether a \xe2\x80\x98quitclaim\xe2\x80\x99 deed itself\nputs a purchaser on constructive notice. Although the\nauthorities are in conflict over this issue, the clear weight of\nauthority is that a quitclaim grantee can be protected by the\nrecording system, assuming, of course, the grantee\npurchased for valuable consideration and did not otherwise\nhave actual or constructive knowledge as defined by the\n\n663\n\n\x0crecording laws.12 We choose to follow the majority rule and\nhold that a quitclaim grantee is not precluded from\nattaining the status of an \xe2\x80\x98innocent purchaser.\xe2\x80\x99\nIn this case, the Horvaths recorded their interest from\nLowery prior to the time the Sabos recorded their interest.\nThus, the issue is whether the Sabos are charged with\nconstructive knowledge because of the Horvaths\xe2\x80\x99 prior\nrecordation. Horvath is correct in his assertion that in the\nusual case a prior recorded deed serves as constructive\nnotice pursuant to AS 34.15.290, and thus precludes a\nsubsequent, recordation from taking precedence. Here,\nhowever, the Sabos argue that because Horvath recorded\nhis deed prior to Lowery having obtained patent, they were\nnot given constructive notice by the recording system. They\ncontend that since Horvaths\xe2\x80\x99 recordation was outside the\nchain of title, the recording should be regarded as a \xe2\x80\x98wild\ndeed\xe2\x80\x99.\nIt is an axiom of hornbook law that a purchaser has notice\nonly of recorded instruments that are within his \xe2\x80\x98chain of\n\nSee Note, Deeds-Quitclaim Grantee as a Bona Fide Purchaser, 28 Ore.L.Rev.\n258 n. 1 (1949) and the many cases cited therein. See generally, Annot., 59 A.L.R.\n632 (1929); Annot., 162 A.L.R. 556, 560-62 (1946); 77 Am.Jur.2d Vendor and\nPurchaser, ss 711-13. On the other hand, there is also authority which holds that a\nquitclaim grantee cannot be a good faith purchaser. See 28 Ore.L.Rev. 258, at 259\nn. 2. See also the territorial case of Crossly v. Campion Mining Co., 1 Alaska 391\n(1901). There it was held that a grantee accepting a quitclaim deed with full\nknowledge of a prior unrecorded deed was not a subsequent innocent purchaser\nin good faith. This case would not be conclusive with respect to quitclaim\ngrantees who record under a recording system and without actual knowledge. See\nalso Wickwire v. City and Borough of Juneau, 557 P.2d 783, fn. 7 (Alaska 1976),\nholding that the right to recover damages for condemnation is not an interest in\nreal property which passes by quitclaim deed.\n12\n\n664\n\n\x0ctitle.\xe2\x80\x9913 If a grantor (Lowery) transfers prior to obtaining\ntitle, and the grantee (Horvath) records prior to title\npassing, a second grantee who diligently examines all\nconveyances under the grantor\xe2\x80\x99s name from the date that\nthe grantor had secured title would not discover the prior\nconveyance. The rule in most jurisdictions which have\nadopted a grantor-grantee index system of recording is that\na \xe2\x80\x98wild deed\xe2\x80\x99 does not serve as constructive notice to a\nsubsequent purchaser who duly records.14\nAlaska\xe2\x80\x99s recording system utilizes a \xe2\x80\x98grantor-grantee\xe2\x80\x99 index.\nHad Sabos searched title under both grantor\xe2\x80\x99s and grantee\xe2\x80\x99s\nnames but limited his search to the chain of title\nsubsequent to patent, he would not be chargeable with\ndiscovery of the pre-patent transfer to Horvath.\nOn one hand, we could require Sabo to check beyond the\nchain of title to look for pretitle conveyances. While in this\nparticular case the burden may not have been great, as a\ngeneral rule, requiring title checks beyond the chain of title\ncould add a significant burden as well as uncertainty to real\nestate purchases. To a certain extent, requiring title searches\nof records prior to the date of a grantor acquired title\nwould thus defeat the purposes of the recording system.\n\n1 R. Patton & C. Patton, Patton on Land Titles s 69, at 230-33 (2d ed. 1957).\nCities Service Oil Co. v. Adair, 273 F.2d 673, 676 (10th Cir. 1959); Stafford v.\nBallinger, 199 Cal.App.2d 289, 18 Cal.Rptr. 568, 572 (1962); Pierson v. Bill, 138\nFla. 104, 189 So. 679, 684 (1939); Jenkins v. Bates, 230 Miss. 406, 92 So.2d 655,\n657 (1957); Baker v. Koch, 114 Ohio App. 519, 183 N.E.2d 434, 437 (1960);\nPortman v. Earnhart, 343 S.W.2d 294, 297 (Tex.Civ.App.1960); Lone Star Gas\nCo. v. Sheaner, 197 S.W.2d 855, 857 (Tex.Civ.App.1957); Hyson v. Dodge, 198\nVa. 792, 96 S.E.2d 792, 796 (1957).\n13\n\n1 R. Patton & C. Patton, Patton on Land Title s 69, at 230-33 (2d ed. 1957);\nLacey v. Humphres, 196 Ark. 72, 116 S.W.2d 345, 347 (1938); Etchison v. Dail,\n182 Ark. 350, 31 S.W.2d 426, 427 (Ark.1930); Brown v. Copp, 105 Cal.App.2d 1,\n232 P.2d 868, 871 (1951); Hawley v. McCabe, 117 Conn. 558, 169 A. 192, 194\n(1933); Ward v. Parks, 166 Ga. 149, 142 S.E. 690, 692 (1928); Manson v.\nBerkman, 356 Ill. 20, 190 N.E. 77, 79 (1934); Blumenthal v. Serota, 129 Me. 187,\n151 A. 138, 141 (1930); Smith v. Williams, 132 Okl. 141, 269 P. 1067, 1073 (1928);\nBrown v. Ackerman, 17 S.W.2d 771 (Tex.Civ.App.1929).\n14\n\n665\n\n\x0cThe records as to each grantor in the chain of title would\ntheoretically have to be checked back to the later of the\ngrantor\xe2\x80\x99s date of birth or the date when records were first\nretained.\nOn the other hand, we could require Horvath to rerecord\nhis interest in the land once title passes, that is, after patent\nhad issued to Lowery. As a general rule, rerecording an\ninterest once title passes is less of a burden than requiring\nproperty purchasers to check indefinitely beyond the chain\nof title.\nIt is unfortunate that in this case due to Lowery\xe2\x80\x99s double\nconveyances, one or the other party to this suit must suffer\nan undeserved loss. We are cognizant that in this case, the\nequities are closely balanced between the parties to this\nappeal. Our decision, however, in addition to resolving the\nlitigants\xe2\x80\x99 dispute, must delineate the requirements of\nAlaska\xe2\x80\x99s recording laws.\nBecause we want to promote simplicity and certainty in title\ntransactions, we choose to follow the majority rule and\nhold that the Horvaths\xe2\x80\x99 deed, recorded outside the chain of\ntitle, does not give constructive notice to the Sabos and is\nnot \xe2\x80\x98duly recorded\xe2\x80\x99 under the Alaskan Recording Act, AS\n34.15.290. Since the Sabos\xe2\x80\x99 interest is the first duly\nrecorded interest and was recorded without actual or\nconstructive knowledge of the prior deed, we hold that the\nSabos\xe2\x80\x99 interest must prevail. The trial court\xe2\x80\x99s decision is\naccordingly.\nREVERSED.\n4.3. Adverse Possession\nBrown v. Gobble, 474 S.E.2d 489 (W. Va. 1996)\nMark E. Wills, Wills & Sadler, Princeton, for Appellees.\nRobert H. Miller, II, Katz, Kantor & Perkins, Bluefield, for\nAppellants.\n\n666\n\n\x0cCLECKLEY, Justice.\nThis case involves the doctrines of adverse possession and\ntacking. David L. Gobble and Sue Ann Gobble,\nappellants/defendants below, appeal from a final order of\nthe Circuit Court of Mercer County. At the conclusion of a\nbench trial the circuit court granted judgment for a strip of\nland to Gary S. Brown and Mitzi Brown,\nappellees/plaintiffs below. In prosecuting this appeal, the\ndefendants allege two assignments of error: (1) it was error\nfor the circuit court to apply a clear and convincing\nevidence standard of proof to the doctrine of adverse\npossession, and (2) the circuit court committed error in\nfinding that the evidence failed to prove adverse\npossession.\nI.\nFACTUAL\nBACKGROUND\n\nAND\n\nPROCEDURAL\n\nThe plaintiffs instituted this action by filing a complaint on\nAugust 25, 1994. The complaint sought to have the\ndefendants enjoined from interfering with the plaintiffs\xe2\x80\x99\nintended use of a two-feet-wide tract of land that formed a\nboundary running between the adjoining properties of the\nparties. The defendants answered the complaint and filed a\ncounterclaim alleging ownership to the tract of land by\nadverse possession.\nThe record reveals that the defendants purchased their\nproperty by deed dated April 24, 1985. At the time of this\nland purchase a fence was in place which ran along the rear\nboundary of defendants\xe2\x80\x99 property. The two-feet-wide tract\nof land in question here, was enclosed by the fence and\nvisually appeared to be part of the defendants\xe2\x80\x99 property.\nWhen the defendants bought their land, they were\ninformed by their real estate agent that their property ran\nup to and included the fence. The call references in their\ndeed \xe2\x80\x9cread\xe2\x80\x9d as though the two-feet-wide tract of land was\n\n667\n\n\x0cpart of the conveyance.1 The defendants believed the twofeet-wide tract of land was part of their property, and\nutilized it consistent with ownership rights up until the\nfiling of this law suit.\nThe plaintiffs purchased their property by deed dated April\n28, 1989. Shortly before making this purchase, the plaintiffs\nhad a survey of the property done. The survey revealed that\nthe fenced-in two-feet-wide tract of land was part of\nplaintiffs\xe2\x80\x99 property.2 Although the plaintiffs were aware at\nthe time of the purchase of their property that the two-feetwide tract of land was, in fact, theirs, they did nothing to\nshow ownership to the tract until around August, 1994. It\nwas in August of 1994, that the plaintiffs decided to build a\nroad along the two-feet-wide tract of land. To do this\nmeant cutting down several trees that were along the tract.3\nThe defendants apparently attempted to prevent the\nplaintiffs from building the road by asserting that they\nowned the tract of land. The plaintiffs thereafter instituted\nthe present suit. The trial of this matter was held by the\ncircuit court, sitting as factfinder, on December 13, 1994.\nThe trial court made findings of fact and conclusions of\nlaw, wherein it held that \xe2\x80\x9cthe defendants have failed to\n1\n\nThe pertinent call references of defendants\xe2\x80\x99 deed provide:\nthence leaving the said Willowbrook Road N 71\xc2\xb0 28\xe2\x80\x99 E\n184.80 feet to a fence post in the line of said private\ndriveway, thence S 32\xc2\xb0 33\xe2\x80\x99 E 133.80 feet to a fence post in\nthe line of said driveway, thence S 17\xc2\xb0 04\xe2\x80\x99 W 13 feet to a\nfence post in the line of said private driveway[.]\n\n(Emphasis added.)\n2\n\nThe pertinent call references of plaintiffs\xe2\x80\x99 deed provide:\nthence S. 62\xc2\xb0 00\xe2\x80\x99 W. 31.41 feet crossing a road to a fence\npost corner of the David Gobble parcel; thence running\nwith the David Gobble parcel the following calls: N. 17\xc2\xb0\n32\xe2\x80\x99 E. 13.00 feet to a fence post; thence N. 32\xc2\xb0 05\xe2\x80\x99 W.\n133.80 feet to a fence post[.]\n\n(Emphasis added.)\nThe road was going to provide access to an animal clinic the plaintiffs had\nconstructed on their property.\n3\n\n668\n\n\x0cshow by clear and convincing evidence their ownership by\nway of adverse possession[.]\xe2\x80\x9d\nII. DISCUSSION\nThe contentions raised on appeal require us to scrutinize\nthe record and determine whether the evidence was\nsufficient to prove adverse possession by the clear and\nconvincing standard that we explicitly have adopted today. We\nnote at the outset that the standard of review for judging a\nsufficiency of evidence claim is not appellant friendly.\nFollowing a bench trial, the circuit court\xe2\x80\x99s findings, based\non oral or documentary evidence, shall not be overturned\nunless clearly erroneous, and due regard shall be given to\nthe opportunity of the circuit judge to evaluate the\ncredibility of the witnesses. Under this standard, if the\ncircuit court\xe2\x80\x99s account of the evidence is plausible in light\nof the record viewed in its entirety, we may not reverse it,\neven though convinced that had we been sitting as the trier\nof fact, we would have weighed the evidence differently.\nWe will disturb only those factual findings that strike us\nwrong with the \xe2\x80\x9cforce of a five-week-old, unrefrigerated\ndead fish.\xe2\x80\x9d United States v. Markling, 7 F.3d 1309, 1319 (7th\nCir.1993). Nor is the scope of our review broadened\nbecause the burden of proof is clear and convincing.\nIndeed, the burden of proof has an impact only if the\nevidence is in equipoise. Under these well established\nprinciples, we now review the errors raised by the\ndefendants.\nA. Standard of Proof for Adverse Possession\nClaims\nThe first argument raised by the defendants is that the\ncircuit court committed error by requiring them to prove\nadverse possession by clear and convincing evidence.\nAlthough neither party presents any binding precedent of\nthis Court, the defendants contend that the proper standard\n\n669\n\n\x0cfor proving adverse possession is by a preponderance of\nthe evidence, and that this is implicitly established by some\nof our cases. The defendants cite language in our decision\nin Naab v. Nolan, 174 W.Va. 390, 392 (1985), wherein we\nstated:\nThe circuit court found by a\npreponderance of the evidence the existence\nof facts sufficient to establish title by\nadverse possession[.] We agree with\nthe court\xe2\x80\x99s decision.\n(Emphasis added.)\nThe plaintiffs contend that the above language in Naab is\nnot controlling for two reasons. First, the quote is not\nintended to be a statement of law, but is merely part of the\ndiscussion from the court below, and there was no explicit\nacceptance of this standard by the Court. Second, the\nstandard of proof was not disputed on appeal and,\ntherefore, this Court was not asked to decide the issue. The\nplaintiffs take the position that we have yet, definitively, to\nestablish a standard of proof for adverse possession, and\nwould further urge that we adopt the clear and convincing\nstandard.4\nThere is a minority view that a preponderance of the\nevidence is sufficient to establish adverse possession.\n[citations to cases in Missouri, Nebraska, Ohio, and\nArkansas] There is little reason given for adopting this\nstandard other than it is the usual rule in civil cases.\nOn the other hand, the view adopted by a majority of\njurisdictions is that adverse possession must be shown by\nclear and convincing evidence. [citations to cases in a large\nnumber of states]\nThis Court approved in passing an adverse possession preponderance of the\nevidence jury instruction given by the trial court in Selman v. Roberts, 185 W.Va. 80,\n86 n. 6(1991).\n4\n\n670\n\n\x0cIt is appropriate, in our opinion, that adverse possession be\nproved by a more stringent standard than a mere\npreponderance of the evidence. First, West Virginia appears\nto have been leaning toward the majority rule. Even before\nthe turn of the century, this Court had indicated that\n\xe2\x80\x9cclear\xe2\x80\x9d evidence was needed to establish adverse\npossession. In Syllabus Point 2 of Boggs v. Bodkin, 32 W.Va.\n566 (1889), this Court explicitly stated: \xe2\x80\x9cwhether he has had\nten years\xe2\x80\x99 adversary possession of the land, he must, \xe2\x80\xa6\nspecifically establish by clear evidence, that he has had such\nadversary possession for ten years \xe2\x80\xa6 .\xe2\x80\x9d (emphasis added).\nMoreover, we agree with the plaintiffs that it would be\ninconsistent for this Court to adopt a preponderance of the\nevidence standard for adverse possession, in light of the\nfact that we have adopted a clear and convincing standard\nfor proving an easement. See Syl. pt. 3, Norman v. Belcher,\n180 W.Va. 581 (1989).\nSecond, on policy grounds there is sound and reasonable\njustification for the majority view. The function of a\nstandard of proof is to \xe2\x80\x9cinstruct the factfinder concerning\nthe degree of confidence our society thinks he [or she]\nshould have in the correctness of a factual conclusion for a\nparticular kind of adjudication.\xe2\x80\x9d In re Winship, 397 U.S. 358,\n370 (1970) (Harlan, J. Concurring). \xe2\x80\x9cThe standard [of\nproof] serves to allocate the risk of error between the\nlitigants and to indicate the relative importance attached to\nthe ultimate decision.\xe2\x80\x9d Addington v. Texas, 441 U.S. 418, 423\n(1979).\nWhile the preponderance standard applies across the board\nin civil cases, a higher standard is needed where fairness\nand equity require more persuasive proof. Although the\nstandard clear and convincing is less commonly used, it\nnonetheless is no stranger to West Virginia civil cases. In\nWheeling Dollar Sav. & Trust Co. v. Singer, 162 W.Va. 502,\n510 (1978), this Court stated that \xe2\x80\x9cclear and convincing\xe2\x80\x9d is\nthe measure or degree of proof that will produce in the\n\n671\n\n\x0cmind of the factfinder a firm belief or conviction as to the\nallegations sought to be established. It should be the\nhighest possible standard of civil proof. Cramer v. Dep\xe2\x80\x99t of\nHwys., 180 W.Va. 97, 99 n. 1 (1988). The interest at stake in\nan adverse possession claim is not the mere loss of money\nas is the case in the normal civil proceedings. Rather, it\noften involves the loss of a homestead, a family farm or\nother property associated with traditional family and\nsocietal values. To this extent, most courts have used the\nclear and convincing standard to protect these important\nproperty interests. See Stevenson v. Stein, 412 Pa. 478, 482\n(1963) (to prove adverse possession \xe2\x80\x9ccredible, clear and\ndefinitive proof\xe2\x80\x9d is needed). Adopting the clear and\nconvincing standard of proof is more than a mere academic\nexercise. At a minimum, it reflects the value society places\non the rights and interests being asserted.\nThe bottom line is that the function of the legal process is\nto minimize the risk of erroneous decisions. See Mathews v.\nElderidge, 424 U.S. 319, 335 (1976). The law should not\nallow the land of one to be taken by another, without a\nconveyance or consideration, merely upon slight\npresumption or probabilities. The relevant evidence in an\nadverse action must necessarily expand over a ten year\nperiod. A preponderance standard, in our judgment, would\ncreate the risk of increasing the number of cases whereby\nland is erroneously taken from the title owner under\nspurious adverse possession claims. This heightened\nstandard of clear and convincing is one way to impress the\nfactfinder with the importance of the decision, and thereby\nreduce the chances that spurious claims of adverse\npossession will be successful. Having concluded that the\npreponderance standard falls short of meeting the demands\nof fairness and accuracy in the factfinding process in the\nadjudication of adverse possession claims, we hold that the\nburden is upon the party who claims title by adverse\npossession to prove by clear and convincing evidence all\n\n672\n\n\x0celements essential to such title. To the extent that a\ndifferent standard is intimated in our previous decisions, we\nherein expressly reject such intimations.\nB. The Sufficiency of the Evidence\nThe next argument raised by the defendants is that their\nevidence was sufficient to establish adverse possession\nunder either a preponderance of the evidence standard or,\non the other hand, under the clear and convincing evidence\nstandard. Of course, we now must determine whether the\nrecord supports the trial court\xe2\x80\x99s findings under the clear\nand convincing standard.\nIt is well settled in this jurisdiction that in a case tried\nwithout the aid of a jury, the trial court, and not the\nappellate court, is the judge of the weight of the evidence.\nActually, in a nonjury trial, the trial judge has usually been\nregarded as a surrogate for the jury, and his or her findings\nare accorded corresponding weight. Subject only to\nW.Va.R.Civ.P. 52(a)\xe2\x80\x99s clearly erroneous standard, this\nstandard precludes a reviewing court from reversing a\nfinding of the trier of fact simply because the reviewing\ncourt would have decided the case differently. In fact, it is\nclear that the burden on an appellant attempting to show\nclear error is especially strong when the findings are\nprimarily based upon oral testimony and the circuit court\nhas viewed the demeanor and judged the credibility of the\nwitnesses. Accordingly, the circuit court\xe2\x80\x99s factual findings\ncome here well armed with the polished buckle and shield\nof the \xe2\x80\x9cclearly erroneous\xe2\x80\x9d standard embodied in Rule 52(a).\nBecause of the weight to be given to evidence is peculiarly\nwithin the province of the trial court, it is the trial court and\nnot this Court that draws the distinction between evidence\nwhich is clearly convincing and that which merely\npreponderates. However, the question whether the circuit\ncourt considered the proper material elements for adverse\n\n673\n\n\x0cpossession is a question of law, subject to our de novo\nreview.\nWere we given the task, we would not hesitate to find that\nthe record before this Court demonstrates overwhelmingly\nthat adverse possession has been proven by clear and\nconvincing evidence. However, our decisions have made\nplain that an appellate court is not the appropriate forum\nfor a resolution of the persuasive quality of evidence. To\nthe contrary, our opinions have suggested that a reviewing\ncourt ought not to disturb such a finding unless, on the\nwhole of the record, this Court forms a strong, unyielding\nbelief that a mistake has been made. In plain terms, we\nshould not overrule a circuit court\xe2\x80\x99s finding or conclusion\nas to whether the burden of persuasion has been met unless\nthe evidence is so one-sided that it may be said that a\nreasonable factfinder could not have gone the way of the\ncircuit court. In order to sharpen the focus of our inquiry,\nwe first illuminate the legal framework and elucidate the\nrequirements that attend a proper showing of adverse\npossession.\nRegarding the doctrine of adverse possession, we stated in\nNaab, 174 W.Va. at 392, the following:\nThe doctrine of adverse possession is\nfirmly established in our property law\nand accompanies W. Va.Code 55-2-1\nin settling land disputes equitably and\nefficiently. This doctrine enables one\nwho has been in possession of a piece\nof real property for more then ten\nyears to bring an action asserting that\nhe is now the owner of that piece of\nproperty even when title rests in\nanother. In Syllabus Point 3 of Somon v.\nMurphy Fabrication and Erection Co., 160\nW.Va. 84, 232 S.E.2d 524 (1977) this\nCourt stated:\n\n674\n\n\x0cOne who seeks to assert title to a\ntract of land under the doctrine\nof adverse possession must prove\neach of the following elements\nfor the requisite statutory period:\n(1) That he has held the tract\nadversely or hostilely; (2) That the\npossession has been actual; (3)\nThat it has been open and\nnotorious (sometimes stated in\nthe cases as visible and\nnotorious); (4) That possession\nhas been exclusive; (5) That\npossession has been continuous;\n(6) That possession has been\nunder claim of title or color of\ntitle.\nWe also held in Syllabus Point 4 of Somon,\nthat:\nWhere one by mistake occupies land\nup to a line beyond his actual\nboundary, believing it to be the true\nline, such belief will not defeat his\nright to claim that he holds such land\nadversely or hostilely under the\ndoctrine of adverse possession.5\n\nThus, the law in West Virginia is that where a person, acting under a mistake as\nto the true boundary lines between his or her land and that of another, takes\npossession of land believing it to be his or her own, up to the mistaken line,\nclaims a prescriptive right to it and so holds, the holding is adverse, and, if\ncontinued for the requisite period may ripen into adverse possession. The fact\nthat the one who takes possession under these circumstances had no intention of\ntaking what did not belong to him or her, does not effect the operation of this\nrule. In all cases, the intention and not the mistake is the test by which the\ncharacter of the possession is determined.\n5\n\n675\n\n\x0cIn addition to recognizing the common law doctrine of\nadverse possession, we have long recognized the principle\nof \xe2\x80\x9ctacking.\xe2\x80\x9d \xe2\x80\xa6 .\nWith the above principles of law in view, we now turn to\nthe evidence presented below. The plaintiffs called three\nwitnesses during their case-in-chief. Plaintiff Mr. Brown\ntestified that he and his wife purchased property in 1989,\nand that their deed gave them ownership of the two-feetwide tract. The plaintiffs called Dana Pettrey, the surveyor\nof their property. Mr. Pettrey testified that his survey in\n1989, revealed that the two-feet-wide tract of land was part\nof the plaintiffs\xe2\x80\x99 property. The plaintiffs also called\ndefendant Mrs. Gobble for the purpose of showing that the\ndefendants did not have possession of the two-feet-wide\ntract ten years prior to the month of August, 1995, when\nthe plaintiffs first exercised ownership rights to the twofeet-wide tract. During the plaintiffs\xe2\x80\x99 case-in-chief, the\nfollowing exchange occurred between defendant Mrs.\nGobble and counsel for plaintiffs:\nQ. Mrs. Gobble, you have not lived on\nthat property for 10 years, have you?\nA. No, sir.\nQ. It won\xe2\x80\x99t be 10 years until April,\n1995?\nA. Yes, sir.\nThe defendants do not contend that they are the lawful\nowners of the two-feet-wide tract of boundary land as a\nresult of call references in their deed. That is, they do not\nclaim possession under color of title. They have alleged\nownership through claim of title or right.6 The defendants\n\nIn Somon, 160 W.Va. at 91-92, 232 S.E.2d at 529, we distinguished claim of title\nand color of title as follows:\n6\n\n676\n\n\x0calso do not contend that they have personally possessed the\ntwo-feet-wide tract for the requisite ten-year period.\nInstead, they contend that they have established adverse\npossession by tacking on the time periods that their\npredecessors in title claimed the two-feet-wide tract. We\nhave held that \xe2\x80\x9ctacking\xe2\x80\x9d permits adding together the time\nperiod that successive adverse possessors claim property,\nand that should this period of time added together be more\nthan ten years, adverse possession may be allowed.\nTo establish the element of \xe2\x80\x9ctacking\xe2\x80\x9d the defendants\npresented evidence that Edward and Virgie Blevins (the\n\xe2\x80\x9cBlevins\xe2\x80\x9d) were the original owners of the property they\npurchased in 1985. The Blevins owned the property as far\nback as 1937, and during the entire time of their ownership\nthey believed the two-feet-wide tract was part of their land,\nand they exercised dominion and control over the tract\nconsistent with ownership rights. The Blevins sold their\nproperty on October 30, 1978, to Norman and Martha\nFletcher (the \xe2\x80\x9cFletchers\xe2\x80\x9d), believing that they were also\nconveying the two-feet-wide tract. Mr. Fletcher testified\nthat when they bought the property they believed that they\nhad purchased the two-feet-wide tract, and possessed it\nconsistent with ownership rights. The defendants testified\nthat they bought their property from the Fletchers in 1985,\nand believed their land purchase included the two-feet-wide\ntract of boundary land, and that they possessed it consistent\nwith ownership rights, up until the filing of this lawsuit.\nBased upon this tacking evidence, the defendants contend\nthat they are entitled as a matter of law to add the period\n1937-1985, to their nine-and-a-half year claim to the two-\n\nA claim of title has generally been held to mean nothing\nmore than that the disseisor enters upon the land with the\nintent to claim it as his own. Whereas, \xe2\x80\x9ccolor of title\xe2\x80\x9d\nimports there is an instrument giving the appearance of\ntitle, but which instrument in point of law does not.\n\n(Citations omitted.)\n\n677\n\n\x0cfeet-wide tract, which would give them far in excess of ten\nyears adverse possession of the tract.7\nTo establish the element of \xe2\x80\x9chostile\xe2\x80\x9d or \xe2\x80\x9cadverse\xe2\x80\x9d\npossession by tacking, the defendants called several\nwitnesses who testified that the two-feet-wide tract was\nfenced off as far back as 1937, that the Blevins placed the\nfence along the tract, and that the Blevins claimed the tract\nas theirs.8 Evidence was presented to show that the\nFletchers maintained the fence along the two-feet-wide\ntract, and that the fence remained in place throughout their\nownership of the property. The defendants testified that\nthey purchased their property from the Fletchers in 1985,\nand that they claimed ownership of the two-feet-wide tract,\nand that it remained fenced off up until the start of the\ninstant law suit.\nTo establish the element of \xe2\x80\x9cactual\xe2\x80\x9d possession by tacking,\nthe defendants called several witnesses who testified that\n\nBased upon the evidence the defendants presented regarding the Blevins and\nFletchers, the defendants actually misunderstand the import of their evidence.\nThe evidence seems to suggest that the Blevins may very well have actually\nestablished adverse possession to the two-feet-wide tract, because they maintained\nthe tract for over ten years. The Blevins conveyed their adversely possessed\nproperty to the Fletchers, and the Fletchers in turn conveyed the same to the\ndefendants. Therefore the tacking involved here does not require analysis of the\ndefendants\xe2\x80\x99 period of ownership, unless it is established that the Blevins did not in\nfact acquire adverse possession. If it is determined that the Blevins acquired\nadverse possession of the two-feet-wide tract, the issue then merely becomes\nwhether the Blevins intended to convey the two-feet-wide tract to the Fletchers,\nand whether the Fletchers intended to convey the two-feet-wide tract to the\ndefendants. See Doty v. Chalk, 632 P.2d 644, 646 (Colo.App.1981) (\xe2\x80\x9cTitle to\nproperty acquired by adverse possession matures into an absolute fee interest after\nthe statutory prescriptive period has expired.\xe2\x80\x9d). The period of ownership by the\ndefendants becomes irrelevant under this scenario. It is only if a determination is\nmade that the Blevins did not establish adverse possession that the defendants\xe2\x80\x99\nperiod of ownership becomes relevant for tacking on the time period of the\nFletchers.\n7\n\nWe have held that to establish \xe2\x80\x9chostile\xe2\x80\x9d or \xe2\x80\x9cadverse\xe2\x80\x9d possession, evidence must\nbe presented which shows that possession of disputed property was against the\nright of the true owner and is inconsistent with the title of the true owner for the\nentire requisite ten-year period.\n8\n\n678\n\n\x0cthe Blevins periodically repaired the fence surrounding the\ntwo-feet-wide tract, that they routinely planted a garden\nalong the tract, and that the Blevins constructed and\nmaintained a shed along a portion of the tract. Mr. Fletcher\ntestified that he regularly planted a garden along the tract,\nthat he routinely removed weeds from along the tract and\nfence, and that he picked blackberries from the area and\nwalnuts from trees that had grown along the tract.9 The\ndefendants testified that they planted gardens along the\ntract, that they built a treehouse in one of the trees that had\ngrown along the tract, and that they regularly mowed the\ngrass and weeds in the area.\nTo establish the element of \xe2\x80\x9copen and notorious\xe2\x80\x9d\npossession by tacking, the defendants called several\nwitnesses who testified that during the period that the\nBlevins owned the defendants\xe2\x80\x99 property, the reputation of\nthe two-feet-wide tract in the community was that it\nbelonged to the Blevins.10 Mr. Fletcher testified that the\nreputation in the community was that the two-feet-wide\ntract was part of his property. The defendants testified that\nthe reputation in the community was that the two-feet-wide\ntract was part of their property.\nTo establish the element of \xe2\x80\x9cexclusive\xe2\x80\x9d possession by\ntacking, the defendants presented testimony by two of the\noriginal owners of plaintiffs\xe2\x80\x99 property.11 These two\nwitnesses testified that neither the Blevins\xe2\x80\x99 nor the\nWe have held that to establish \xe2\x80\x9cactual\xe2\x80\x9d possession, evidence must be presented\nwhich shows that possession of disputed property was used for enjoyment,\ncultivation, residence or improvements for the entire requisite ten-year period.\n9\n\nWe have held that to establish \xe2\x80\x9copen and notorious\xe2\x80\x9d possession, evidence must\nbe presented which shows that possession of disputed property was in such a\nmanner as to give notice to the true owner that the property is being claimed by\nanother for the entire requisite ten-year period.\n10\n\nWe have held that to establish \xe2\x80\x9cexclusive\xe2\x80\x9d possession, evidence must be\npresented which shows that possession of disputed property was used only by the\noccupant and others were not permitted to use it or claim ownership during the\nentire requisite ten-year period.\n11\n\n679\n\n\x0cFletchers\xe2\x80\x99 claim to the two-feet-wide tract was ever\nobjected to by them or those who owned the property with\nthem. The defendants also presented evidence to show that\nonly the Blevins and Fletchers respectively had control and\ndominion over the two-feet-wide tract. The defendants also\ntestified that they had exclusive control and dominion over\nthe two-feet-wide tract up until the time of this law suit.\nTo establish the element of \xe2\x80\x9ccontinuous\xe2\x80\x9d possession the\ndefendants presented testimony that the Blevins enclosed,\nmaintained, cultivated and claimed ownership of the twofeet-wide tract up until they sold their property to the\nFletchers.12 Mr. Fletcher testified that he maintained,\ncultivated and claimed ownership of the two-feet-wide tract\nup until he sold the property to the defendants. The\ndefendants testified that they maintained, cultivated and\nclaimed ownership of the two-feet-wide tract up until the\ninstant law suit.\nTo establish the element of \xe2\x80\x9cclaim of title\xe2\x80\x9d the defendants\npresented evidence to show that neither the Blevins,\nFletchers nor the defendants had actual title to the twofeet-wide tract, yet each claimed ownership of it pursuant\nto all of the above conduct, during their entire respective\noccupancy.13\nBased upon the above evidence of tacking and adverse\npossession, the defendants contend that they established\nadverse possession under the clear and convincing evidence\nstandard. The trial court found that this evidence did not\nestablish tacking or adverse possession by clear and\nconvincing evidence. The trial court made this finding\n\nWe have held that to establish \xe2\x80\x9ccontinuous\xe2\x80\x9d possession, evidence must be\npresented which shows that possession of disputed property was enclosed,\nmaintained or cultivated during the entire requisite ten-year period.\n12\n\nWe have held that to establish \xe2\x80\x9cclaim of title,\xe2\x80\x9d evidence must be presented\nwhich shows that possession of disputed property was claimed without actual title\nownership by the occupant during the entire requisite ten-year period.\n13\n\n680\n\n\x0cnotwithstanding the fact that none of the defendants\xe2\x80\x99\ntacking or adverse possession evidence was challenged or\nrebutted by the plaintiffs.\nNevertheless, we are reluctant to conclude, though invited\nto do so by the defendants, that the evidence was so onesided that no rational trier of fact could find that adverse\npossession had not been established by clear and\nconvincing evidence. While we agree with the defendants,\nthat the quantity of evidence tends to fall in their favor, in\nassessing evidence, the trier of fact is the ultimate judge of\ncredibility and is free to accept or reject any testimony it\ndoes not find credible. However, when a judge, sitting\nwithout jury, decides against the greater amount of the\nevidence, the judge is obligated to give a fuller explanation\nfor his or her ruling. Under these circumstances, the\nfindings in a bench trial must be sufficiently detailed,\nreasoned, and logical to enable the reviewing court to trace\na persuasive path between the evidence and the judgment.\nSee Schneiderman v. United States, 320 U.S. 118, 129-31.\nWhere the determinative factor at trial is the credibility of\nthe witnesses, this requires a trial court to specify what\nwitnesses were not credited and why.\nAdditionally, though the clear error standard is formidable,\nit is not a bulldozer that crushes everything in its way. One\nimportant qualification is that the jurisprudence of clear\nerror does not inhibit an appellate court\xe2\x80\x99s power to correct\nerrors of law, including those that may affect a so-called\nmixed finding of law and fact that is predicated on the\nmisunderstanding of the governing rule of law. Similarly,\nthe deference accorded to a circuit court may evaporate\nwhen, in making its ultimate decision: (1) a relevant factor\nthat should have been given significant weight is not\nconsidered; (2) all proper factors, and no improper factors,\nare considered, but the circuit court in weighing those\nfactors commits an error of judgment; and (3) the circuit\n\n681\n\n\x0ccourt failed to exercise any discretion at all in issuing its\ndecision. Banker v. Banker, 196 W.Va. 535 (1996).\nConsistent with this approach, courts must be careful not\nto wear blinders. The judge must sift the evidence\nproduced at trial and gather enough information to paint a\ntrue picture of the attendant facts and circumstances. The\ntrial judge must then make a realistic appraisal of what the\npicture discloses. We think this analysis exposes the\nprincipal flaw in this case. The findings made by the trial\ncourt are inadequate to allow this Court to find that all\nrelevant factors were considered. Though helpful, the\nfindings are not all-encompassing. Indeed, the findings of\nthe circuit court ignored the central thrust of the\ndefendants\xe2\x80\x99 evidence.\nThe circuit court either misunderstood or misapplied the\ntheory of the defendants. The defendants do not claim that\ntheir actual possession of the property in question is\nsufficient to establish adverse possession. Rather, they\ncontend that their predecessors in interest met all the\nnecessary prerequisites of adverse possession and under the\ndoctrine of tacking, the predecessors\xe2\x80\x99 interest was passed\nonto the defendants. The circuit court\xe2\x80\x99s findings never\naddressed this aspect of the defendants\xe2\x80\x99 case. This\nconclusion draws sustenance from the circuit court\xe2\x80\x99s order\nwhich provides in pertinent part:\n10. Defendants did not exercise actual\ndominion over the area between the\ndeed description and fence line.\n11. The fence \xe2\x80\xa6 was more likely a\nfence around the plaintiffs\xe2\x80\x99 [property]\nrather than enclosing defendants\xe2\x80\x99\nproperty. The defendants did not\nmaintain the fence nor did the\ndefendants make any use of the small\n\n682\n\n\x0carea of land in dispute between the\nboundary line and fence.\nThe upshot is that the circuit court failed to make any\nfindings that would dispose of the defendants\xe2\x80\x99 tacking\nclaim. As we have stated several times above, a circuit court\nsitting without a jury cannot paint with too broad a brush.\nRule 52(a) requires the trial judge make findings and\nconclusions of law that are sufficiently detailed to permit a\nreviewing court to ascertain the factual core of, and the\nlegal foundation for, the ruling below. This bedrock rule\nhas particular force in cases of this genre. Adverse\npossession claims are often marked by a significant degree\nof complexity. Typically, the resolution of such claims\ndemands a careful sifting of imbricated and highly ramified\nfacts. The legal principles that must be applied are\nconvoluted, and they almost always touch upon ancient\ncommon-law precepts. Accordingly, a trial court must be\nscrupulous in chronicling the relevant facts and delineating\nthe linkage of those facts and the ultimate conclusion of\nadverse possession vel non. To this end, the circuit court\nmust discuss not only the evidence that supports its\ndecision but also all the substantial evidence contrary to its\nopinion.14\nEven though the circuit failed to make adequate findings,\nand virtually ignored the thrust of the defendants\xe2\x80\x99 evidence\nas to tacking, the defendants are not entitled to an adverse\njudgment decision on appeal. It must be remembered that\n\nWe take this step reluctantly, mindful that the circuit courts have heavy\ncaseloads. An appellate tribunal should not stand unduly on ceremony, but should\nfill in the blanks in the circuit court\xe2\x80\x99s account when the record and circumstances\npermit this to be done without short-changing the parties. In this situation,\nhowever, the record and the burden of proof do not lend itself to curing the\nomission in this fashion. We are fortified in this cautious approach by what we\nenvision as the distinct possibility that the circuit court undervalued the import of\nthe tacking doctrine and the defendants\xe2\x80\x99 evidence in support of it. Upon remand,\nthe circuit court may summon and utilize the efforts of counsel in submitting\ndetailed and case specific proposed findings of fact and legal conclusions.\n14\n\n683\n\n\x0cwe do not sit in nisi prius, and at all times the burden of\nproof remains with the defendants as to adverse\npossession; plaintiffs\xe2\x80\x99 burden is an entry level burden of\nproduction, if they have any at all. Thus, once the plaintiffs\nhave proffered enough evidence to raise their title to the\nland, the ultimate burden of persuading the factfinder that\nthey were the beneficiaries of adverse possession under the\ntacking theory rests with the defendants. On this basis, we\nreject the defendants\xe2\x80\x99 request for judgment as to their\nadverse possession claim. As we stated in Burnside, 194\nW.Va. at 275, \xe2\x80\x9c[f]indings of facts are adequate only if they\nare sufficient to indicate the factual basis for the ultimate\nconclusions. If an order lacks adequate detail, the case will\nbe remanded for additional specificity.\xe2\x80\x9d\nIII. CONCLUSION\nTo recapitulate, the circuit court\xe2\x80\x99s opinion in many respects\ndeftly navigates the marshy terrain of adverse possession\njurisprudence. Yet, we believe that the circuit court\xe2\x80\x99s\nopinion lacks essential clarity in its factual findings. For one\nthing, the circuit court neither acknowledges nor discusses\ncritical evidence that appears to support establishing\nadverse possession under the tacking theory. For another\nthing, it never identified nor adequately explained the\nevidence upon which it relied to support its ultimate\nconclusion. And, finally, it omits any meaningful discussion\nor mention of potentially salient factors such as the\npersuasive quality of the defendants\xe2\x80\x99 overall evidence.\nWe leave the procedure to be followed on remand to the\ncircuit court\xe2\x80\x99s informed discretion, without endeavoring to\nset an outer limit on its range of options. At a minimum,\nthe circuit court must discuss the evidence we have\nidentified as troubling (or as possibly overlooked), and\nexplain the relationship of this evidence to the issue of\ntacking and adverse possession. The circuit court need not\nstop there, however, it is free to reopen the record, to take\n\n684\n\n\x0cadditional evidence, and to reconsider any parts of its\nearlier ruling. To this end, while we neither require or\nanticipate a new trial, the court may in its discretion permit\nthe parties to supplement the record with additional facts.\nAccordingly, the judgment of the Circuit Court of Mercer\nCounty is reversed and remanded.\nCahill v. Morrow, 11 A.3d 82 (R.I. 2011)\nJames H. Reilly, Esq., for Plaintiff.\nLauren E. Jones, Esq., for Defendant.\nJUSTICE INDEGLIA, for the Court.\nI: Facts and Procedural History\nThe property in dispute is located on Gooseberry Road in\nthe Snug Harbor section of South Kingstown, Rhode\nIsland. Identified as lot 19 on assessor\xe2\x80\x99s plat 88-1, the land\nis sandwiched between lot 20, currently owned by Cahill,\nand lot 18, formerly co-owned by members of the Morrow\nfamily. Morrow is the record owner of the subject property,\nlot 19.\nIn 1969, Morrow\xe2\x80\x99s husband, George Morrow, purchased\nlot 19,1 and the same year George and his brothers jointly\npurchased lot 18. At the time of lot 19\xe2\x80\x99s purchase, it was\nlargely undeveloped, marked only by a preexisting\nclothesline, grass, and trees. Since that time, the Morrows\nhave not improved or maintained lot 19, but have paid all\nproperty taxes assessed to it. As such, instead of\nvacationing on their lot 19, the Morrows annually spent\ntwo weeks in the summer at the cottages on the adjacent lot\n18. During these vacations, the Morrow children and their\ncousins played on lot 19\xe2\x80\x99s grassy area. Around 1985, the\n\nMorrow became the successor in interest and legal title holder of lot 19 after\nGeorge passed away in 2003.\n1\n\n685\n\n\x0cMorrows ceased summering on Gooseberry Road,2 but\ncontinued to return at least once a year to view the lot.\nMorrow stopped visiting lot 19 in October 2002, after her\nhusband became ill, and she did not return again until July\n2006.\nIn 1971, two years after George Morrow purchased lot 19,\nCahill\xe2\x80\x99s mother bought the land and house designated as lot\n20 as a summer residence. Between 1971 and 1975, Cahill\nand her brother did some work on lot 19. They occasionally\ncut the grass, placed furniture, and planted trees and\nflowers on it.\nCahill\xe2\x80\x99s mother passed away in 1975, and in 1977, after\npurchasing her siblings\xe2\x80\x99 shares, Cahill became the sole\nrecord owner of the lot 20 property. Once she became lot\n20\xe2\x80\x99s owner, Cahill began living in the house year-round.\nFrom that time through 1991, she and her boyfriend, James\nM. Cronin, testified that they continued to mow lot 19\xe2\x80\x99s\ngrass on occasion. In addition, she hung clothing on the\nclothesline, attached flags to the clothesline pole, used the\npicnic table,3 positioned a bird bath and feeder, and planted\nmore flowers and trees. Cahill placed Adirondack chairs on\nlot 19 and eventually replaced the clothesline and picnic\ntable. In 1987, Cahill held the first annual \xe2\x80\x9ccousins\xe2\x80\x99 party\xe2\x80\x9d\nallowing her relatives free rein with respect to her property\nand lot 19 for playing, sitting, and car parking. She also\nentertained friends and family on lot 19 during other\nsummer days. Mary Frances McGinn, Cahill\xe2\x80\x99s cousin,\nlikewise recalled that lot 19 was occupied by Cahill kindred\nduring various family functions throughout this time\nperiod. Cahill admitted that she never objected to\nneighborhood children using lot 19, however.\n\n2\n\nIn 1991, George Morrow and his joint-owner brothers sold lot 18.\n\nThe record was unclear as to who first placed a picnic table on lot 19, but Cahill\ntestified that there was a table on the lot from at least 1981.\n3\n\n686\n\n\x0cDuring the period of 1991 through 1997, Cahill testified\nthat she planted more flowers and trees, in addition to\ncutting the grass occasionally. Cahill also stored her gas grill\nand yard furniture on the lot and had her brother stack\nlobster pots for decorative purposes. In 1991 or 1992, she\nbegan hosting the annual \xe2\x80\x9cCane Berry Blossom Festival,\xe2\x80\x9d\nanother outdoor event that used both her lot and lot 19 as\nthe party venue. Like the other gatherings, the festival\nalways took place on a day during a warm-weather month.\nIn 1997 or 1998, she installed a wooden border around the\nflower beds.\nOn July 22, 1997, Cahill wrote to George Morrow\nexpressing an interest in obtaining title to lot 19. In the\n1997 letter, Cahill stated: \xe2\x80\x9cI am interested in learning if\nyour narrow strip of property is available for sale. If so, I\nwould be interested in discussing purchasing it from you.\xe2\x80\x9d\nCahill continued: \xe2\x80\x9cIf there is a possibility that you would\nlike to sell it, could you please either call me or send me a\nnote?\xe2\x80\x9d Cahill did not receive a response.\nIn the \xe2\x80\x9clate 1990s,\xe2\x80\x9d though Cahill is unclear whether this\noccurred before or after the 1997 letter, a nearby marina\nsought permission to construct and elevate its property.\nCahill attended the related zoning board hearings and\nexpressed her concerns about increased flooding on lot 19\ndue to the marina elevation. She succeeded in having the\nmarina developer grade part of lot 19 to alleviate flooding.\nAdditionally, Cahill instituted her own trench and culvert\ndrainage measures to divert water off of lot 19 and then\nreseeded the graded area. By Cahill\xe2\x80\x99s own admission,\nhowever, her trenching and reseeding work occurred in\n1999 or 2000.\n\n687\n\n\x0cSubsequent to 2001, the new owners of lot 184 stored their\nboat on lot 19 and planted their own flowers and small\ntrees on the property. In 2002, when the town (with\napproval from George Morrow) erected a stone wall and\nlaid a sidewalk on the Gooseberry Road border of lot 19,\nCahill loamed and planted grass on that portion of the lot.\nAlso in 2002, Cahill asked Morrow\xe2\x80\x99s two sisters on separate\noccasions whether George Morrow would be interested in\nselling lot 19. The Morrows gave no response to her 2002\ninquiries. In 2003, George Morrow passed away.\nAfter making her third inquiry concerning the purchase of\nlot 19 in 2002, Cahill testified, she continued using the\nproperty in a fashion similar to her prior practice until\nDecember 2005, when she noticed heavy-machinery tire\nmarks and test pits on the land. Thereafter, she retained\ncounsel and authorized her attorney to send a letter on\nJanuary 10, 2006 to Morrow indicating her adverse\npossession claim to a \xe2\x80\x9c20-foot strip of land on the\nnortherly boundary\xe2\x80\x9d of lot 19. According to a survey of the\ndisputed property, however, the width of lot 19 from the\nnortherly boundary (adjacent to Cahill\xe2\x80\x99s property) to lot 18\nis 49.97 feet and therefore, more than double what Cahill\noriginally claimed in this letter. Nonetheless, on April 25,\n2006, Cahill instituted a civil action requesting a declaration\nthat based on her \xe2\x80\x9cuninterrupted, quiet, peaceful and actual\nseisin and possession\xe2\x80\x9d \xe2\x80\x9cfor a period greater than 10 years,\xe2\x80\x9d\nshe was the true owner of lot 19 in its entirety. On July 25,\n2007, the trial justice agreed that Cahill had proved adverse\npossession under G.L.1956 \xc2\xa7 34-7-1 and vested in her the\nfee simple title to lot 19.\n\xe2\x80\xa6.\nII: Standard of Review\n\nIn approximately 2001, new owners purchased lot 18 from the Morrow brothers\xe2\x80\x99\nsuccessor.\n4\n\n688\n\n\x0c\xe2\x80\x9cThis Court gives great weight to the factual findings of a\ntrial justice sitting without a jury in a civil matter, and we\nwill not disturb such findings unless they are \xe2\x80\x98clearly\nerroneous or unless the trial justice misconceived or\noverlooked material evidence or unless the decision fails to\ndo substantial justice between the parties.\xe2\x80\x99\xe2\x80\x9d \xe2\x80\xa6 . \xe2\x80\x9cHowever,\n\xe2\x80\x98[i]n contrast to our deferential stance vis-[a]-vis factual\nfindings made by a trial justice, we review in a de novo\nmanner a trial justice\xe2\x80\x99s rulings concerning questions of\nlaw.\xe2\x80\x99\xe2\x80\x9d Costa, 996 A.2d at 611 (quoting Grady v. Narragansett\nElectric Co., 962 A.2d 34, 41 (R.I. 2009)).\nIII: Analysis\nA: The History and Policy Rationale of Adverse\nPossession\nBefore we begin our analysis, a brief history of adverse\npossession may be of assistance. After first using an\namalgamation of Roman and Germanic doctrine, our\nEnglish predecessors in common law later settled upon\nstatutes of limitation to effect adverse possession. See Axel\nTeisen, Contributions of the Comparative Law Bureau, 3 A.B.A.\nJ. 97, 126, 127, 134 (1917). In practice, the statutes\neliminated a rightful owner\xe2\x80\x99s ability to regain possession\nafter the passing of a certain number of years, thereby\nvesting de facto title in the adverse possessor. See\nRestatement (Third) Property: Servitudes \xc2\xa7 2.17, cmt. b at 26364 (2000). For example, a 1623 statute of King James I\nrestricted the right of entry to recover possession of land to\na period of twenty years. 10 Thompson on Real Property \xc2\xa7\n87.01 at 74-75 (2d Thomas ed. 1998) (citing An Act for\nLimitation of Actions, and Avoiding of Suit in Law, 1623,\n21 Jac. I., c. 16). Essentially, in England, the \xe2\x80\x9c[o]riginal\npolicy supporting the development of adverse possession\nreflected society\xe2\x80\x99s unwillingness to take away a \xe2\x80\x98right\xe2\x80\x99 which\nan adverse possessor thought he had. Similarly, society felt\n\n689\n\n\x0cthe loss of an unknown right by the title owner was\nminimal.\xe2\x80\x9d William G. Ackerman & Shane T. Johnson,\nComment, Outlaws of the Past: A Western Perspective on\nPrescription and Adverse Possession, 31 Land & Water L.Rev.\n79, 83 (1996). As an overarching principle, however, the\nEnglish adhered to an irrefutable truth that \xe2\x80\x9cneither fraud\nnor might can make a title where there wanteth right.\xe2\x80\x9d J &\nM Land Co. v. First Union National Bank, 166 N.J. 493, 766\nA.2d 1110, 1114 (2001) (quoting Altham\xe2\x80\x99s Case, 8 Coke Rep.\n150b, 153b, 77 Eng. Rep. 701, 707 (1610)).\nIn the United States, although the 1623 statute of King\nJames I \xe2\x80\x9ccame some years after the settling of Jamestown\n(the usual date fixed as the crystalizing of the common law\nin America), its fiat is generally accepted as [our] common\nlaw. Hence \xe2\x80\x98adverse possession\xe2\x80\x99 for 20 years under the\ncommon law in this country passes title to the adverse\npossessor with certain stated qualifications.\xe2\x80\x9d 10 Thompson on\nReal Property \xc2\xa7 87.01 at 75. Today, all fifty states have some\nstatutory form of adverse possession, typically requiring\nproof that \xe2\x80\x9cpossession was actual, hostile, open and\nnotorious, exclusive, and continuous for the period of the\nstatute of limitations. Color of title and payment of taxes\ncan also be elements in some cases.\xe2\x80\x9d Jeffrey Evans Stake,\nThe Uneasy Case for Adverse Possession, 89 Geo. L.J. 2419,\n2423 (2001); see Ackerman, 31 Land & Water L.Rev. at 84\nn. 42, 111 (collecting adverse possession statutes for the\nfifty states).\nGiven the doctrine\xe2\x80\x99s widespread codification in this\ncountry, adverse possession is certainly \xe2\x80\x9cpart of our\nadoptive consciousness.\xe2\x80\x9d Ackerman, 31 Land & Water\nL.Rev. at 84. Courts and commentators generally ascribe to\n\xe2\x80\x9cfour traditional justifications or clusters of justifications\nwhich support transferring the entitlement to the [adverse\npossessor] after the statute of limitations runs: the problem\nof lost evidence, the desirability of quieting titles, the\ninterest in discouraging sleeping owners, and the reliance\n\n690\n\n\x0cinterests of [adverse possessors] and interested third\npersons.\xe2\x80\x9d Thomas W. Merrill, Property Rules, Liability Rules,\nand Adverse Possession, 79 Nw. U.L.Rev. 1122, 1133 (1984);\nsee also Finley v. Yuba County Water District, 99 Cal.App.3d\n691, 160 Cal.Rptr. 423, 427 (1979) (summarizing the\nrationales supporting adverse possession). Effectively, our\nsociety has made a policy determination that \xe2\x80\x9call things\nshould be used according to their nature and purpose\xe2\x80\x9d and\nwhen an individual uses and preserves property \xe2\x80\x9cfor a\ncertain length of time, [he] has done a work beneficial to\nthe community.\xe2\x80\x9d Teisen, 3 A.B.A. J. at 127. For his efforts,\n\xe2\x80\x9chis reward is the conferring upon him of the title to the\nthing used.\xe2\x80\x9d Id. Esteemed jurist Oliver Wendell Holmes, Jr.\nwent a step further than Teisen, basing our society\xe2\x80\x99s\ntolerance of adverse possession on the ideal that \xe2\x80\x9c[a] thing\nwhich you have enjoyed and used as your own for a long\ntime, whether property or an opinion, takes root in your\nbeing and cannot be torn away without your resenting the\nact and trying to defend yourself, however you came by it.\xe2\x80\x9d\nO Centro Espirita Beneficiente Uniao Do Vegetal v. Ashcroft, 389\nF.3d 973, 1016 (10th Cir.2004) (quoting Oliver Wendell\nHolmes, Jr., The Path of the Law, 10 Harv. L.Rev. 457, 477\n(1897)).\nRegardless of how deeply the doctrine is engrained in our\nhistory, however, courts have questioned \xe2\x80\x9cwhether the\nconcept of adverse possession is as viable as it once was, or\nwhether the concept always squares with modern ideals in a\nsophisticated, congested, peaceful society.\xe2\x80\x9d Finley, 160\nCal.Rptr. at 427. Commentators have also opined that,\nalong with the articulated benefits of adverse possession,\nnumerous disadvantages exist including the \xe2\x80\x9cinfringement\nof a landowner\xe2\x80\x99s rights, a decrease in value of the servient\nestate, and the encouraged exploitation and development of\nland. In addition, they represent the generation of\nanimosity between neighbors, a source of damages to land\nor loss of land ownership, and the creation of uncertainty\n\n691\n\n\x0cfor the landowner.\xe2\x80\x9d Ackerman, 31 Land & Water L.Rev. at\n92; see also Stake, 89 Geo. L.J. at 2432, 2433 (listing also\n\xe2\x80\x9cdiminish[ing] utility by discouraging owners from letting\nothers use their land,\xe2\x80\x9d wasting the rightful owner\xe2\x80\x99s time\nand resources to monitor his land, and \xe2\x80\x9ccreat[ing] an\nopportunity to steal land\xe2\x80\x9d as other costs associated with\nadverse possession). In reality, \xe2\x80\x9c[a]dverse possession \xe2\x80\x98[i]s\nnothing more than a person taking someone else\xe2\x80\x99s private\nproperty for his own private use.\xe2\x80\x99 It is hard to imagine a\nnotion more in contravention of the ideals set forth in the\nU.S. Constitution protecting life, liberty and property.\xe2\x80\x9d\nAckerman, 31 Land & Water L.Rev. at 94-95 (quoting 2\nC.J.S. Adverse Possession \xc2\xa7 2 (1972)).\nAlthough this Court duly recognizes its role as the judicial\narm of government tasked with applying the law, rather\nthan making law, it is not without an eyebrow raised at the\nancient roots and arcane rationale of adverse possession\nthat we apply the doctrine to this modern property dispute.\nB: The Trial Justice\xe2\x80\x99s Application of Rhode\nIsland\xe2\x80\x99s Adverse-Possession Precedent\nIn Rhode Island, obtaining title by adverse possession\nrequires actual, open, notorious, hostile, continuous, and\nexclusive use of property under a claim of right for at least\na period of ten years. Corrigan v. Nanian, 950 A.2d 1179,\n1179 (R.I.2008) (mem.); see also \xc2\xa7 34-7-1. \xe2\x80\x9cThe party who\nasserts that adverse possession has occurred must establish\nthe required elements by strict proof, that is, proof by clear\nand convincing evidence.\xe2\x80\x9d5 Corrigan, 950 A.2d at 1179\n\nClear and convincing evidence is defined in a variety of ways; for example, to\nestablish a fact or an element by clear and convincing evidence a party must\npersuade the jury that the proposition is highly probable, or must produce in the\nmind of the factfinder a firm belief or conviction that the allegations in question\nare true. The clear and convincing evidence standard does not require that the\nevidence negate all reasonable doubt or that the evidence must be\nuncontroverted.\xe2\x80\x9d 29 Am.Jur.2d Evidence \xc2\xa7 173 at 188-89 (2008).\n5\n\n692\n\n\x0c(citing Tavares v. Beck, 814 A.2d 346, 350 (R.I.2003)); see also\nCarnevale v. Dupee, 853 A.2d 1197, 1199 (R.I.2004).\nHere, the trial justice recited the proper standard of proof\nfor adverse possession and then found that Cahill had\n\xe2\x80\x9cmet her burden of establishing all of\nthe elements of an adverse possession\nclaim to lot 19 by her and her mother\xe2\x80\x99s\ncontinuous and uninterrupted use of\nthe parcel for well in excess of ten\nyears. She maintained the property,\nplanted and improved the property\nwith shrubs, trees, and other plantings,\nsought drainage control measures, and\nused the property as if it were her own\nsince 1971. She established that use\nnot only by her own testimony, but as\ncorroborated by other witnesses,\nphotographs, and expert testimony\nrelative to the interpretation of aerial\nphotographs.\xe2\x80\x9d\nAt trial, as here on appeal, Morrow argued that Cahill\xe2\x80\x99s\noffers to purchase the property invalidated her claim of\nright and the element of hostile possession. To dispose of\nthat issue, the trial justice determined that \xe2\x80\x9ceven assuming\nthat [Cahill\xe2\x80\x99s] inquiry is circumstantial evidence of her\nknowledge that George Morrow, and subsequently\nMargaret [Morrow], were the legal title holders of [lot] 19,\nthat does not destroy the viability of this adverse\npossession claim.\xe2\x80\x9d The trial justice relied upon our opinion\nin Tavares, 814 A.2d at 350, to support his conclusion.\nRecalling that this Court stated in Tavares that \xe2\x80\x9ceven when\nthe claimants know they are nothing more than blackhearted trespassers, they can still adversely possess the\nproperty in question under a claim [of] right to do so if they\nuse it openly, notoriously, and in a manner that is adverse\nto the true owner\xe2\x80\x99s rights for the requisite ten-year period,\xe2\x80\x9d\n\n693\n\n\x0cthe trial justice found that Cahill\xe2\x80\x99s outward\nacknowledgement of Morrow\xe2\x80\x99s record title did not alone\n\xe2\x80\x9cnegate her claim of right.\xe2\x80\x9d He further found that \xe2\x80\x9ceven if\nsomehow the expression of interest in purchasing lot 19,\nmade initially in 1997, stopped the running of the ten[-]year\nperiod under * * * \xc2\xa7 34-7-1, the evidence was\noverwhelming that [Cahill] and her predecessor in title had\ncommenced the requisite ten-year period beginning in\n1971.\xe2\x80\x9d\nC: Issues on Appeal\nOn appeal, Morrow challenges the trial justice\xe2\x80\x99s legal\nconclusion that Cahill\xe2\x80\x99s offers to purchase lot 19 did not\nextinguish her claim of right, hostile possession, and\nultimately, the vesting of her title by adverse possession.\nMorrow also contends that the trial justice erred in finding\nthat Cahill\xe2\x80\x99s testimonial and demonstrative evidence was\nsufficient to prove adverse possession under the clear and\nconvincing burden of proof standard. We agree that as a\nmatter of law the trial justice failed to consider the impact\nof Cahill\xe2\x80\x99s offers to purchase on the prior twenty-six years\nof her lot 19 use. As a result, we hold that this failure also\naffects his factual determinations.\n1. 1997 Offer-to-Purchase Letter\nIn Tavares, this Court explained that \xe2\x80\x9crequir[ing] adverse\npossession under a claim of right is the same as requiring\nhostility, in that both terms simply indicate that the\nclaimant is holding the property with an intent that is\nadverse to the interests of the true owner.\xe2\x80\x9d Tavares, 814\nA.2d at 351 (quoting 16 Powell on Real Property, \xc2\xa7 91.05[1] at\n91-28 (2000)). \xe2\x80\x9cThus, [we said] a claim of right may be\nproven through evidence of open, visible acts or\ndeclarations, accompanied by use of the property in an\nobjectively observable manner that is inconsistent with the\nrights of the record owner.\xe2\x80\x9d Id. (citing Picerne v. Sylvestre, 122\n\n694\n\n\x0cR.I. 85, 91-92, 404 A.2d 476, 479-80 (1979)). Here, the first\nissue on appeal is how an offer to purchase has an impact\non these elements.\nTo assert her position that Cahill\xe2\x80\x99s 1997 offer to purchase\nlot 19 negates Cahill\xe2\x80\x99s claim of right by failing to deny the\nowner\xe2\x80\x99s title, Morrow argues that this Court should adhere\nto our precedent in Picerne and decline to credit the \xe2\x80\x9cdicta\xe2\x80\x9d\nin Tavares that the trial justice relied upon. Opportunely,\nhowever, the instant case permits this Court to affirm both\nprecedents while clarifying a salient point of law regarding\nthe effect offers to purchase have on the adverse\npossession elements of hostility and claim of right.\nIn Picerne, 122 R.I. at 91-92, 404 A.2d at 479-80, we focused\non the narrow issue of whether a taxpayer who lost a home\nin a tax sale could prove hostile use for purposes of adverse\npossession. This Court considered whether the taxpayer\xe2\x80\x99s\naffirmative and open acts, such as painting the exterior,\ninstalling a new door and windows, and replacing the front\nstairs put the tax-sale purchaser on sufficient notice that\nthere was a \xe2\x80\x9chostile air.\xe2\x80\x9d Id. at 92, 404 A.2d at 480. We\nexplained that the \xe2\x80\x9c[h]ostility of possession necessary to\nestablish adverse possession implies the denial of the\nowner\xe2\x80\x99s title; and possession, however open and long it\nmay be, is not adverse without the denial of the owner\xe2\x80\x99s\ntitle.\xe2\x80\x9d Id. This Court held that the individuals in possession\nof the house failed to deny the tax-sale owner\xe2\x80\x99s title for at\nleast three years of the ten-year period because their\npossession was permissive. Id. We likewise ruled that the\nclaim had failed because the taxpayer\xe2\x80\x99s adverse actions did\nnot meet the requisite ten-year period. Id. Without the\nrequisite ten years of denying the owner\xe2\x80\x99s title and ten years\nof possessing adversely to the owner\xe2\x80\x99s title, the Picerne\nclaimants could not establish adverse possession.\nAnalogously here, Cahill did not deny Morrow\xe2\x80\x99s title when\nshe sent her 1997 letter to George Morrow. Rather, she was\noutwardly declaring to the rightful owner himself the\n\n695\n\n\x0cviability of his title and fully acknowledging her subservient\ninterest to that owner\xe2\x80\x99s title. This manifestation from Cahill\ninterrupted the accrual of her claim. See Heggen v. Marentette,\n144 N.W.2d 218, 242 (N.D.1966) (\xe2\x80\x9c[T]he recognition of\nthe owner\xe2\x80\x99s title by an adverse claimant interrupts the\nadverse possession.\xe2\x80\x9d); Smith v. Vermont Marble Co., 99 Vt.\n384, 133 A. 355, 358 (1926) (\xe2\x80\x9cNothing can more effectively\ninterrupt the running of the [adverse possession] statute\nthan an express acknowledgment of the true owner\xe2\x80\x99s title. *\n* * This recognition of another\xe2\x80\x99s title may be by acts, as\nwell as words. So when one who was wrongfully [using\nanother\xe2\x80\x99s land] * * * yields to the latter\xe2\x80\x99s demands * * * and\noffer[s] to buy the right, his adverse use is interrupted, and\nhis claim of prescriptive right fails.\xe2\x80\x9d); see also Bowen v.\nSerksnas, 121 Conn.App. 503, 997 A.2d 573, 579 (2010)\n(\xe2\x80\x9c[T]he possession of one who recognizes or admits title in\nanother, either by declaration or conduct, is not adverse to\nthe title of such other. * * * Such an acknowledgment of\nthe owner\xe2\x80\x99s title terminates the running of the statutory\nperiod, and any subsequent adverse use starts the clock\nanew.\xe2\x80\x9d) (quoting Allen v. Johnson, 79 Conn.App. 740, 831\nA.2d 282, 286 (2003)); 3 Am.Jur.2d Adverse Possession \xc2\xa7 104\nat 171-72 (2002) (\xe2\x80\x9cAlthough efforts to obtain deeds from\nother claimants to the property do not disprove the hostile\ncharacter of a possession, efforts to buy the property from\nthe record owner constitute an acknowledgment of the\nrecord owner\xe2\x80\x99s superior title, and thus disprove the adverse\nholding, because there has been no claim of right.\xe2\x80\x9d).\nAccordingly, applying Picerne to the instant facts, we hold\nthat Cahill failed to deny George Morrow\xe2\x80\x99s title by her\n1997 letter, thereby halting her adverse-possession claim at\nthat time. See Picerne, 122 R.I. at 92, 404 A.2d at 480.\nLikewise, in Tavares, 814 A.2d at 351, with regard to\n\xe2\x80\x9cestablishing hostility and possession under a claim of\nright,\xe2\x80\x9d we explained that \xe2\x80\x9cthe pertinent inquiry centers on\nthe claimants\xe2\x80\x99 objective manifestations of adverse use rather\n\n696\n\n\x0cthan on the claimants\xe2\x80\x99 knowledge that they lacked colorable\nlegal title.\xe2\x80\x9d (Emphases added.) Essentially, Tavares turned\non the difference between the adverse possession\nclaimant\xe2\x80\x99s \xe2\x80\x9cknowledge\xe2\x80\x9d regarding the owner\xe2\x80\x99s title and his\n\xe2\x80\x9cobjective manifestations\xe2\x80\x9d thereof. In that case, the\nadverse-possession claimant surveyed his land and\ndiscovered \xe2\x80\x9cthat he did not hold title to the parcels in\nquestion.\xe2\x80\x9d Id. at 350. After such enlightenment, however,\nthe claimant objectively manifested his claim of ownership\nto the parcels by \xe2\x80\x9cposting no-trespass signs, constructing\nstone walls, improving drainage, and wood cutting.\xe2\x80\x9d Id. at\n352. This Court explained that simply having knowledge\nthat he was not the title owner of the parcels was not\nenough to destroy his claim of right given his objective,\nadverse manifestations otherwise. Id. at 351-52. In fact, we\nwent so far as to state that \xe2\x80\x9ceven when claimants know that\nthey are nothing more than black-hearted trespassers, they\ncan still adversely possess the property in question under a\nclaim of right to do so if they use it openly, notoriously,\nand in a manner that is adverse to the true owner\xe2\x80\x99s rights\nfor the requisite ten-year period.\xe2\x80\x9d Tavares, 814 A.2d at 351.\nThis statement is legally correct considering that adverse\npossession does not require the claimant to make \xe2\x80\x9ca good\nfaith mistake that he or she had legal title to the land.\xe2\x80\x9d 16\nPowell on Real Property \xc2\xa7 91.05[2] at 91-23; see 5 Restatement\nof the Law Property: Servitudes \xc2\xa7 458, cmt. d at 2927 (1944)\n(\xe2\x80\x9c[I]t is not necessary in order that a use be adverse that it\nbe made either in the belief or under a claim that it is legally\njustified.\xe2\x80\x9d). However, to the extent that Tavares\xe2\x80\x99s reference\nto \xe2\x80\x9cblack-hearted trespassers\xe2\x80\x9d suggests that this Court\nendorses an invade-and-conquer mentality in modern\nproperty law, we dutifully excise that sentiment from our\njurisprudence.\nIn the case before this Court, Cahill went beyond mere\nknowledge that she was not the record owner by sending\nthe offer-to-purchase letter. As distinguished from the\n\n697\n\n\x0cTavares claimant who did not communicate his survey\nfindings with anyone, Cahill\xe2\x80\x99s letter objectively declared the\nsuperiority of George Morrow\xe2\x80\x99s title to the record owner\nhimself. See Tavares, 814 A.2d at 352; see also Eddy v. Clayton,\n44 So.2d 395, 397 (Miss.1950) (\xe2\x80\x9cMoreover, the request of\nappellant to purchase the land, which was later repeated, is\na pointed answer to any contention of an adverse claim,\nsince it was an acknowledgment of a superior title and\nclaim of [the record owner].\xe2\x80\x9d); Chambers v. Bessent, 17 N.M.\n487, 134 P. 237, 240 (1913) (\xe2\x80\x9cIt may safely be assumed as a\ngeneral proposition that, if a defendant in possession of\ndisputed territory concede[s] that the true title is in another,\nand offer to purchase from him, then the continuity of\nadverse possession is broken.\xe2\x80\x9d) (quoting Headerick v. Fritts,\n93 Tenn. 270, 24 S.W. 11, 12 (1893)); Shanks v. Collins, 782\nP.2d 1352, 1355 (Okla.1989) (\xe2\x80\x9cA recognition by an adverse\npossessor that legal title lies in another serves to break the\nessential element of continuity of possession.\xe2\x80\x9d).\nIn the face of this precedent, Cahill contends that the trial\njustice accurately applied the law by finding that an offer to\npurchase does not automatically negate a claim of right in\nthe property. While we agree that this proposition is correct\nwith respect to offers made in an effort to make peace in an\nongoing dispute, we disagree that this proposition applies\nin situations, as here, where no preexisting ownership\ndispute is evident. For example, the trial justice and Cahill\nboth cited Richterberg v. Wittich Memorial Church, 222 F.Supp.\n324, 328 (W.D.Okla.1963), to support their view that an\noffer to purchase should not defeat an otherwise valid\nclaim of adverse possession. However, Richterberg dealt with\nan already disputed claim and offer to compromise. Id.\n(concluding that \xe2\x80\x9c[a]n offer of settlement or compromise\nmade with reference to a pending suit is not admissible in\nevidence\xe2\x80\x9d and that \xe2\x80\x9c[b]argaining for an outstanding claim\nor title does not constitute a recognition of the superiority\nof such claim or title\xe2\x80\x9d). Here, there was no dispute ongoing\n\n698\n\n\x0cwhen Cahill sent the 1997 letter. Her offer was not an olive\nbranch meant to put an end to pending litigation with the\nMorrows. Rather, it was a clear declaration that Cahill\n\xe2\x80\x9cwanted title to the property\xe2\x80\x9d from the record owner. By\ndoing so, she necessarily acknowledged that her interest in\nlot 19 was subservient to George Morrow\xe2\x80\x99s. Likewise, the\ntrial justice\xe2\x80\x99s and Cahill\xe2\x80\x99s citations to Manning v. Gregoire, 97\nOr. 394, 191 P. 657, 658 (1920), are equally inapposite\nbecause again, unlike Cahill\xe2\x80\x99s letter, the adverse possessor\xe2\x80\x99s\noffer-to-purchase letter in Manning was an attempt \xe2\x80\x9cto buy\nhis peace.\xe2\x80\x9d See also Sanderson v. McManus, 252 S.W.2d 351,\n356 (Mo.1952) (\xe2\x80\x9cThe fact that defendants attempted to\npurchase a strip 3 feet wide from plaintiffs * * * might have\nbeen persuasive evidence against the claim of adverse\npossession in some circumstances, but is not conclusive\nhere * * *. If this were an effort to settle and adjust the\ncontroversy * * * an issue of fact was presented.\xe2\x80\x9d). Cahill\nalso incorrectly proffers the holding of Branch v. Hinson, 183\nSo.2d 655, 659-60 (La.Ct.App. 1966), as supporting her\nposition. In Branch, after a survey was conducted on the\nproperty, \xe2\x80\x9ca dispute arose between the adjoining owners as\nto precisely where the [property] line lay.\xe2\x80\x9d Id. at 659.\nAlthough \xe2\x80\x9con several occasions [the claimant] attempted to\npurchase the strip in controversy as a means of settling all\ndoubt as to where the correct dividing line lay[,]\xe2\x80\x9d the court\nheld that these \xe2\x80\x9coffers to purchase did not constitute\nrecognition of [the record owner\xe2\x80\x99s] title * * *, but were\nmerely attempts to compromise a disagreement without\nacknowledging or recognizing [the record owner\xe2\x80\x99s] title to\nthe land in dispute.\xe2\x80\x9d Id. at 660. Again, Cahill\xe2\x80\x99s situation is\ndistinguishable from the parties\xe2\x80\x99 plight in Branch because\nthere was no preexisting, ongoing dispute between Cahill\nand Morrow when Cahill sent the letter. Based on this\ncaselaw, Cahill\xe2\x80\x99s 1997 offer for purchase does, in fact,\nrecognize the superior title of the record owner and arrests\nthe accrual of her claim.\n\n699\n\n\x0c\xe2\x80\xa6.\nAs such, Cahill\xe2\x80\x99s cited authorities do not convince this\nCourt that an offer to purchase does not destroy the\nelements of hostility and claim of right when there is no\nongoing dispute or outstanding claim. Here, the 1997 letter\nwas not an attempt to make peace with her neighbors as a\nway to avoid litigation. Rather, Cahill was openly and\nobjectively manifesting direct evidence that George\nMorrow was the true owner of lot 19 and her interest in the\nproperty was subservient to his. This communication\nnegates the requisite claim of right that the doctrine of\nadverse possession requires and interrupts the accrual of\nCahill\xe2\x80\x99s claim. See Heggen, 144 N.W.2d at 242 (\xe2\x80\x9c[T]he\nrecognition of the owner\xe2\x80\x99s title by an adverse claimant\ninterrupts the adverse possession.\xe2\x80\x9d); see also Bowen, 997 A.2d\nat 579 (\xe2\x80\x9c\xe2\x80\x98Such an acknowledgment of the owner\xe2\x80\x99s title\nterminates the running of the statutory period, and any\nsubsequent adverse use starts the clock anew.\xe2\x80\x99\xe2\x80\x9c). This\nCourt holds as a matter of law that Cahill\xe2\x80\x99s 1997 letter to\nGeorge Morrow was an unequivocal offer to purchase that\nhalted her claim of adverse possession at that point.\nAccordingly, the trial justice erred by considering any\nincidents of ownership exhibited by Cahill after the 1997\nletter to George Morrow interrupted her claim. Because the\n\xe2\x80\x9cdrainage control measures\xe2\x80\x9d were instituted in 1999 or\n2000 (by Cahill\xe2\x80\x99s own admission), the trial justice should\nnot have cited these acts as supporting Cahill\xe2\x80\x99s adversepossession case. Likewise, if the trial justice\xe2\x80\x99s reference to\nCahill\xe2\x80\x99s \xe2\x80\x9cmaint[enance of] the property\xe2\x80\x9d or \xe2\x80\x9cimprove[ment\nof] the property with * * * other plantings\xe2\x80\x9d implicitly\nconsidered her reloaming and reseeding after the town\ninstalled the retaining wall and sidewalk in 2002 or her\nreseeding after the drainage improvements in 1999 or 2000,\nthis reliance also was in error.\n\n700\n\n\x0c2. The Impact of Cahill\xe2\x80\x99s Offer to Purchase\non her Pre-1997 Adverse-Possession Claim\nFurthermore, we also conclude that the trial justice should\nnot have assumed that even if Cahill\xe2\x80\x99s \xe2\x80\x9cinquiry is\ncircumstantial evidence of her knowledge that George\nMorrow, and subsequently [Morrow], were the legal title\nholders of [lot] 19, that does not destroy the viability of this\nadverse possession claim.\xe2\x80\x9d We agree that an offer to\npurchase does not automatically invalidate a claim already\nvested by statute, but we nonetheless hold that the\nobjective manifestations that another has superior title,\nmade after the statutory period and not made to settle an\nongoing dispute, are poignantly relevant to the ultimate\ndetermination of claim of right and hostile possession\nduring the statutory period. See Harp v. Christian, 215 Ark.\n833, 223 S.W.2d 778, 779 (1949) (\xe2\x80\x9cIt is true that an offer to\npurchase will not divest a title that has already become\nvested in the adverse claimant, but such testimony may be\nconsidered in determining the character of the possession\nduring the statutory period.\xe2\x80\x9d); Okuna v. Nakahuna, 60 Haw.\n650, 594 P.2d 128, 132 n. 5 (1979) (\xe2\x80\x9c[A]ppellant\xe2\x80\x99s conduct\nsubsequent to the expiration of the statutory period of\nlimitations, while not enough to defeat title already acquired\nby adverse possession, is evidence to be considered in\ndetermining whether the prior possession of appellant was\nin fact hostile.\xe2\x80\x9d); see also First National Bank of Marshall v.\nBeavers, 602 S.W.2d 327, 330 (Tex.Civ.App.1980) (\xe2\x80\x9c[W]here\na possessor acknowledges another\xe2\x80\x99s superior title * * * after\nthe limitation period has been completed, such\nacknowledgment does not automatically destroy the title\nthus obtained, but it is admissible in evidence as tending to\nshow that possession was not in fact adverse.\xe2\x80\x9d).\nCahill\xe2\x80\x99s 1997 offer-to-purchase letter and the two 2002\npurchase inquiries (though occurring after a time period\nstatutorily sufficient to convey title by adverse possession)\nstill are relevant as to whether the twenty-six years of\n\n701\n\n\x0cpossession prior to 1997 were made under a claim of right.\nHow the offer and inquiries affect the nature and character\nof Cahill\xe2\x80\x99s pre-1997 possession necessarily are questions for\nthe fact-finder to evaluate and are not resolvable by this\nCourt. See Lowe v. Cox, 210 Ark. 169, 194 S.W.2d 892, 896\n(1946) (holding that \xe2\x80\x9cthe weight to be given to such\nrecognition [in an offer to purchase] would be a question\nfor the jury, and the court could not declare as a matter of\nlaw that the mere fact that defendant had recognized the\ntitle of the [plaintiff] entitled plaintiff to a judgment for\npossession\xe2\x80\x9d) (quoting Shirey v. Whitlow, 80 Ark. 444, 97 S.W.\n444, 445 (1906)); Gonthier v. Horne, 576 A.2d 745, 748\n(Me.1990) (stating that deed requests made after the\nstatutory period \xe2\x80\x9crationally could be considered indicative\nof the nature of [the claimant\xe2\x80\x99s] prior holding during the\n20-year [statutory] period [that] * * * [t]he Superior Court\nacting as the trier of fact was free to determine, as clearly it\ndid, that this evidence indicated that [the claimant] did not\npossess the parcel under a claim of right during the crucial\n20-year period\xe2\x80\x9d).\n3. Questions of Fact Remain\nDespite the significant deference afforded to the trial\njustice\xe2\x80\x99s findings of fact, such findings are not unassailable.\nHere, we find clear error in the trial justice\xe2\x80\x99s conclusion\nthat \xe2\x80\x9ceven if somehow the expression of interest in\npurchasing [lot] 19, made initially in 1997, stopped the\nrunning of the ten[-]year period * * * the evidence was\noverwhelming that [Cahill] and her predecessor in title had\ncommenced the requisite ten-year period beginning in\n1971.\xe2\x80\x9d Given our opinion that some of Cahill\xe2\x80\x99s lot 19\nactivities cannot be considered because of the time frame\nof their occurrence, we disagree that the trial record can be\nclassified as presenting \xe2\x80\x9coverwhelming\xe2\x80\x9d evidence of\nadverse possession.\n\n702\n\n\x0cSpecifically, this Court holds that the drainage\nimprovements and lawn reseedings that occurred after the\n1997 offer-to-purchase letter cannot be used as evidence of\nCahill\xe2\x80\x99s adverse possession. Whether the evidence\nremaining in the record is sufficient to constitute clear and\nconvincing proof that Cahill perfected her claim prior to\n1997 remains a question of fact. On remand, the trial\njustice is directed to limit his consideration to pre-1997\nevents and make specific determinations whether Cahill\xe2\x80\x99s\nintermittent flower and tree planting, flag flying, clothesline\nreplacing, lawn chair and beach-paraphernalia storing, and\nannual party hosting are adequate. Furthermore, given our\nruling today, the trial court must evaluate the nature of\nCahill\xe2\x80\x99s and her predecessor\xe2\x80\x99s twenty-six-year acts of\npossession in the harsh light of the fact that Cahill openly\nmanifested the existence of George Morrow\xe2\x80\x99s superior title\non three occasions. Lastly, this Court instructs the trial\ncourt to determine the impact of Cahill\xe2\x80\x99s initial demand,\nmade in the letter of January 10, 2006, from her counsel to\nMorrow, on the claim of right and hostility elements.\nCahill\xe2\x80\x99s 2006 letter staked a claim only to \xe2\x80\x9ca 20-foot strip,\xe2\x80\x9d\nless than half the area of lot 19, while the later-filed 2006\ncomplaint declared Cahill\xe2\x80\x99s right to the entire parcel. How\nCahill\xe2\x80\x99s change of heart colors the adverse nature of her\npossession is a question that must be addressed by the\nfinder of fact.\n\xe2\x80\xa6.\nJUSTICE FLAHERTY, dissenting.\nI respectfully dissent from the holding of the majority in\nthis case. Before setting forth my reasons for doing so,\nhowever, I take this opportunity to express my approval of\nthe Court\xe2\x80\x99s scholarly opinion with respect to the origin and\nphilosophy underpinning the doctrine of adverse\npossession. In summary, I agree with the majority\xe2\x80\x99s\nobservations about the efficacy of adverse possession in a\nmodern world. The doctrine is a legal anachronism\n\n703\n\n\x0creminiscent of a time when landowners lived on or near\ntheir land and thus could observe encroachments on their\nproperty. Also, it is certainly worth noting that during the\nperiod when the adverse-possession doctrine developed,\nour society believed that it was in the public interest that\nland be used productively rather than being allowed to lie\nfallow. Neither of those situations is the case at present in\nour more mobile society. However, adverse possession\nremains the law in this state until the Legislature sees fit to\nchange it.\nA: The 1997 Letter\nSimply put, I do not agree that the correspondence\nbetween plaintiff and defendant in which plaintiff offers to\npurchase defendant\xe2\x80\x99s interest in lot 19 is the smoking gun\nthe majority perceives it to be. As is clear from a fair\nreading of plaintiffs testimony, she believed that she owned\nthe property as a result of her longtime use of and\ndominion over it. But her testimony also demonstrates that\nshe drew a crisp distinction between whatever ownership\nrights she may have acquired and record title, which she\nrecognized continued to reside in the Morrows. In my\nopinion, the trial justice correctly found that the \xe2\x80\x9cfact that\nthe plaintiff beginning in 1997 inquired as to the Morrow\xe2\x80\x99s\nwillingness to consider a sale of the lot to her may certainly\nshow that she was aware of the Morrow\xe2\x80\x99s record title. That\nalone, however, does not negate her claim of right.\xe2\x80\x9d In\nTavares v. Beck, 814 A.2d 346, 351 (R.I.2003), we held that\nthe trial justice improperly factored a party\xe2\x80\x99s subjective\nknowledge into a claim-of-right analysis. In that case, we\nclarified that \xe2\x80\x9ca claim of right to own or use property does\nnot arise from the claimants\xe2\x80\x99 mistaken belief that they hold\ntitle to the land, but rather from their objective acts of\nownership evidencing an intent to use and possess the\npremises in a manner adverse to the owner of record.\xe2\x80\x9d Id.\nat 351-52. Further, we held that \xe2\x80\x9c[t]his remains true even in\n\n704\n\n\x0ca situation in which the claimants know that they do not\nhold record title to the property in question * * *.\xe2\x80\x9d Id. at\n352. Such is the case here. Therefore, the 1997 letter was\nnot a \xe2\x80\x9csilver bullet,\xe2\x80\x9d but simply another piece of evidence\nthat should have been, and properly was, considered by the\ntrial justice.\nEven if that letter were as significant as the majority\ncontends, there is no doubt that it was sent after the\nstatutory period had run. It is beyond dispute that plaintiffs\ncorrespondence could not serve to divest her of title if she\nhad already acquired it by adverse possession. Rather, as\nthis Court has discussed about the elements of exclusivity\nand claim of right, \xe2\x80\x9cin order for a defendant to successfully\ndefend against an adverse possession claim of disputed\nland, \xe2\x80\x98there would have to be evidence indicating that the\ndefendants or others had made improvements to the land\nor, at the very least, had used the land in a more significant\nfashion than merely walking across it.\xe2\x80\x99\xe2\x80\x9d Anthony v. Searle,\n681 A.2d 892, 898 (R.I.1996) (quoting Gammons v. Caswell,\n447 A.2d 361, 368 (R.I. 1982)). There certainly was credible\nevidence for the trial justice to find that plaintiff had used\nthe property as her own for well over twenty years before\nshe corresponded with Mr. Morrow in 1997. Further, there\nwas a stark absence of evidence that the Morrows \xe2\x80\x9cused the\nland in a more significant fashion than merely walking\nacross it.\xe2\x80\x9d Id. There is, in my opinion, ample support for\nthis finding in the record, and the trial justice\xe2\x80\x99s finding is\nnot clearly wrong.\nB: The Factual Findings\nLikewise, it is my view that there is sufficient evidence in\nthe record that plaintiffs use of the property satisfied the\nstatutory requirements of actual, open, notorious and\nhostile use for a period of at least ten years. As we have\nsaid in numerous cases, to establish the requisite hostility,\nthe adverse possessor \xe2\x80\x9cneed only establish a use\n\n705\n\n\x0c\xe2\x80\x98inconsistent with the right of the owner without\npermission asked or given, * * * such as would entitle the\nowner to a cause of action against the intruder [for\ntrespass].\xe2\x80\x99\xe2\x80\x9d Tavares, 814 A.2d at 351 (quoting 16 Powell on\nReal Property, \xc2\xa7 91.05[1] at 91-23 (2000)). Similarly, to satisfy\nthe requirement of open and notorious use, a claimant\nmust demonstrate that \xe2\x80\x9cthe use to which the land is put\nmust be similar to that which would ordinarily be made by\nowners of similarly situated real estate.\xe2\x80\x9d Id. at 352 (citing\nSherman v. Goloskie, 95 R.I. 457, 466, 188 A.2d 79, 84\n(1963)). Furthermore, it is appropriate for the trial court to\n\xe2\x80\x9ctak[e] properly into account the geophysical nature of [the]\nland.\xe2\x80\x9d Carnevale v. Dupee, 853 A.2d 1197, 1201 (R.I.2004)\n(quoting Anthony, 681 A.2d at 898).\nThe majority makes much of the fact that the plaintiff\xe2\x80\x99s use\nof the land was somewhat sporadic and seasonal in nature.\nHowever, this is consistent with how owners of a vacant lot\nadjoining a home in a beach area of the state would use this\ntype of property. To this point our Court has said, \xe2\x80\x9c[y]earround occupation is not required to prove actual and\ncontinuous possession.\xe2\x80\x9d Lee v. Raymond, 456 A.2d 1179,\n1183 (R.I.1983). And, this Court also has held \xe2\x80\x9cthat in\ndetermining whether there has been actual possession of\nproperty, there must be considered its character and\nlocality, and the uses and purposes for which it is naturally\nadapted * * *.\xe2\x80\x9d Sherman, 95 R.I. at 466, 188 A.2d at 84\n(quoting Goen v. Sansbury, 219 Md. 289, 149 A.2d 17, 21-22\n(1959)). There was uncontradicted testimony that the\nplaintiff cut the grass, planted flowers, improved the flower\nbeds, and entertained on the property. This is entirely\ncompatible with the type of use that would be expected of\nthe owner of unimproved land. Moreover, this Court\nrepeatedly has made the statement that \xe2\x80\x9c[c]ultivating land,\nplanting trees, and making other improvements in such a\nmanner as is usual for comparable land have been\nsuccessfully relied on as proof of the required possession.\xe2\x80\x9d\n\n706\n\n\x0cAcampora v. Pearson, 899 A.2d 459, 467 (R.I. 2006) (quoting\nAnthony, 681 A.2d at 898).\nI realize that because he discounted the legal effect of the\n1997 letter from the plaintiff to the defendant inquiring\nabout a possible sale of the property, the trial justice\nreferred to some improvements that were made after the\nletter was sent. But, even discounting that consideration,\nthe trial justice found \xe2\x80\x9coverwhelming evidence\xe2\x80\x9d that the\nplaintiff had exercised dominion over lot 19 as an owner\nwould for well in excess of ten years.6 Viewing this case\nthrough the prism of our deferential standard of review, I\nam unable to conclude that the trial justice was clearly\nwrong when he found that the plaintiffs use of that land for\na period exceeding two decades met the legal requirements\nto establish that she had acquired lot 19 by adverse\npossession. I therefore would affirm the judgment of the\nSuperior Court.\n\nIt is true that the trial justice did not make use of the terms \xe2\x80\x9cstrict proof\xe2\x80\x9d or\n\xe2\x80\x9cclear and convincing evidence\xe2\x80\x9d in his decision, but to me, evidence that is found\nto be \xe2\x80\x9coverwhelming\xe2\x80\x9d easily surpasses that criteria.\n6\n\n707\n\n\x0cProblems\n1. Is tacking likely to be an important issue on remand in Gobble?\n2. How was the \xe2\x80\x9copen and notorious\xe2\x80\x9d element proved in Gobble?\nHow could it be proved in Cahill?\n3. Explain, succinctly, the difference between the \xe2\x80\x9cclear error\xe2\x80\x9d\nstandard and the \xe2\x80\x9cclear and convincing evidence\xe2\x80\x9d standard.\n4. If the Browns had granted the Gobbles permission to maintain\nthe strip as soon as they discovered the error, would the Gobbles\nstill have an AP claim? Why or why not?\nAnswers\n1. Is tacking likely to be an important issue on remand in Gobble?\nSee fn. 7. Because all of the evidence goes to the satisfaction\nof the elements beginning as far back as 1937 by the Blevins,\nadverse possession was almost certainly established before the\nGobbles even acquired the property. Tacking is the adding of\nthe period of one adverse possessor\xe2\x80\x99s possession of property\nto that of the possessor\xe2\x80\x99s successor in order to meet the\nstatutory period. That wouldn\xe2\x80\x99t be necessary here if the\nBlevins adversely possessed for the necessary period.\nRemember, once you meet the elements for the statutory\nperiod, the property is yours. No formal act need be done. We\ncan\xe2\x80\x99t be absolutely certain that tacking is irrelevant to this\ncase, because the court sent the case back down to the trial\ncourt for either a more detailed discussion of its decision or\nthe taking of more evidence. Thus, tacking may well become a\nlive issue. It\xe2\x80\x99s important to note, though, that tacking wasn\xe2\x80\x99t\nreally relevant to the WVa Supreme Court\xe2\x80\x99s decision.\n2. How was the \xe2\x80\x9copen and notorious\xe2\x80\x9d element proved in Gobble?\nHow could it be proved in Cahill?\nStraight from the case. The Gobbles called witnesses,\nincluding the Fletchers and the Gobbles, who testified that\nthe reputation in the community was that the strip belonged\n\n\x0cto the Blevins/Fletchers/Gobbles. How might this be done in\nCahill?\n3. Explain, succinctly, the difference between the \xe2\x80\x9cclear error\xe2\x80\x9d\nstandard and the \xe2\x80\x9cclear and convincing evidence\xe2\x80\x9d standard.\nClear error is the standard of review that appellate courts\ntypically apply on reviewing individual findings of fact by a\ntrial court. Unless the appellate court, reviewing only the cold\nrecord, finds clear error, they will uphold a factual finding\neven if it seems like it\xe2\x80\x99s probably wrong. (Remember the dead\nfish standard from the Gobble case.) The clear and convincing\nevidence standard is a standard of proof that a litigant must\nmeet in order establish a fact in the trial court. As we saw, this\nstandard, rather than the usual \xe2\x80\x9cpreponderance standard,\xe2\x80\x9d\nwhich means 50% plus a scintilla, must be met when proving\nadverse possession.\n4. If the Browns had granted the Gobbles permission to maintain\nthe strip as soon as they discovered the error, would the Gobbles\nstill have an AP claim? Why or why not?\nThough further facts will be developed on remand, it\xe2\x80\x99s almost\ncertainly true that the Gobbles\xe2\x80\x99 AP claim doesn\xe2\x80\x99t depend on\ntheir having met the AP elements during their own period of\npossession. If there was AP, it very likely occurred back when\nthe Blevins owned the land. Since AP already occurred,\npermission from the Browns was irrelevant. Yes, normally\npermission defeats AP, but that\xe2\x80\x99s not true if AP has already\noccurred, meaning the statutory period has already passed, at\nthe time permission is granted.\nCarpenter v. Ruperto, 315 N.W.2d 782 (Iowa 1982).\nJames R. Bowers, Jr. and Keith E. Uhl of Scalise, Scism,\nGentry, Brick & Brick, Des Moines, for appellant.\nJohn D. Hudson and Timothy R. Williams of Carney,\nHudson, Williams & Green, Des Moines, for appellees.\n\n709\n\n\x0cConsidered by UHLENHOPP, P. J., and McCORMICK,\nALLBEE, LARSON, and SCHULTZ, JJ.\nMCCORMICK, JUSTICE\nPlaintiff Virginia Carpenter appeals from an adverse decree\nin her action to quiet title to land adjacent to her residential\npremises based on a theory of adverse possession.\nDefendants Charles L. Ruperto, Edith C. Ruperto, and\nTom McCormick cross-appeal from a portion of the decree\nawarding plaintiff limited relief on equitable grounds. We\naffirm on the merits of the appeal and dismiss the crossappeal for want of jurisdiction.\nThe determinative question on the appeal is whether the\ntrial court misinterpreted the law governing the claim of\nright element in finding plaintiff failed to carry her burden\nof proof. The determinative question on the cross-appeal is\nwhether it was timely.\nBecause the case was tried in equity, we find the facts anew.\nThe evidence is largely undisputed.\nPlaintiff and her husband moved in 1951 to a home which\nthey purchased in southeast Des Moines. Plaintiff\xe2\x80\x99s\nhusband subsequently died, but plaintiff has lived on the\npremises continuously. Her lot has a frontage of 40 feet\nand is 125 feet long. It is legally described as:\nLot One Hundred Forty-Four (144) in\nGray\xe2\x80\x99s Subdivision of Lots Fifty (50)\nand Sixty-Two (62) in BROOKS AND\nCOMPANY, an Addition, now\nincluded in and forming a part of the\nCity of Des Moines, Iowa.\nA larger undeveloped lot bounded plaintiff\xe2\x80\x99s property to\nthe north. It is described as:\nThe East 125 Feet of the North 474\nFeet of Lot Sixty-Two (62) in\n\n710\n\n\x0cBROOKS\nAND\nCOMPANY\xe2\x80\x99S\nADDITION TO THE CITY OF\nDES MOINES, now included in and\nforming a part of the City of Des\nMoines, Iowa.\nDefendants and their predecessors have held record title to\nthis lot at all material times.\nThe property which plaintiff claims to have acquired by\nadverse possession is the south 60 feet of defendants\xe2\x80\x99 lot.\nThus, the property in dispute is a 60 by 125 foot parcel\nadjacent to the north boundary of plaintiff\xe2\x80\x99s lot.\nWhen plaintiff and her husband moved into their home in\nJuly 1951, the lot north of their property was a cornfield.\nAlthough plaintiff was not certain of the location of the\nnorthern boundary of her lot, she knew her lot\xe2\x80\x99s\ndimensions, and she knew it did not include the cornfield.\nIn 1952 the corn was not planted as far south on the\nadjacent lot. Concerned about rats and the threat of fire,\nand desiring additional yard for their children, plaintiff and\nher husband cleared several feet of the property to the\nnorth, graded it, and planted grass seed on it. Since that\ntime plaintiff has used the land as an extension of her yard.\nShe planted peony bushes on it during the 1950\xe2\x80\x99s, installed\na propane tank on it approximately 30 feet north of her lot\nin 1964, constructed a dirt bank on the city right of way to\ndivert water from that parcel in 1965, and put in a driveway\ninfringing five feet onto the land in 1975.\nThe remainder of defendants\xe2\x80\x99 lot was planted in corn until\napproximately 1957. The lot was owned by Abraham and\nBeverly Rosenfeld from July 1960 until February 1978.\nDuring that period the only use Rosenfelds made of the\nproperty was to store junk and debris on it. Except for the\nstrip used by plaintiff, the lot was overgrown with brush\nand weeds. The Rosenfelds paid all taxes and special\nassessments on the property. Plaintiff and her husband at\n\n711\n\n\x0cone time obtained the Rosenfelds\xe2\x80\x99 permission to keep a\nhorse on the lot. On one occasion in the 1960\xe2\x80\x99s plaintiff\nexamined the plat of defendants\xe2\x80\x99 lot in the courthouse to\nsee if it ran all the way to a street to the north.\nWhen defendant McCormick purchased his interest in the\nlot in 1978, he was aware of the possibility of a boundary\ndispute because of the location of plaintiff\xe2\x80\x99s propane tank\nand driveway. He and the other defendants were\nunsuccessful in their efforts to settle the dispute with\nplaintiff, who subsequently brought this action.\nIn seeking to establish her ownership of the disputed\nparcel, plaintiff alleged she had \xe2\x80\x9cfor more than thirty (30)\nyears last past been in open, exclusive, hostile, adverse and\nactual possession under claim of right.\xe2\x80\x9dThe trial court held\nin part that she did not establish her possession was under\na claim of right. The court reasoned that a claim of right\nmust be made in good faith and that plaintiff was not in\ngood faith because she knew someone else had title to the\nland. Although the court found plaintiff had not proved her\nclaim of adverse possession, it ordered defendants to \xe2\x80\x9cdo\nequity\xe2\x80\x9d by deeding to her the strip of land her driveway was\non and to pay the costs of moving the propane tank to her\nlot. The appeal and cross-appeal followed.\nI. The appeal.\nThe doctrine of adverse possession is based on the ten-year\nstatute of limitations for recovery of real property in\nsection 614.1(5), The Code. One claiming title by adverse\npossession must establish hostile, actual, open, exclusive\nand continuous possession, under a claim of right or color\nof title, for at least ten years, by clear and positive proof.\nBecause the law presumes possession under regular title,\nthe doctrine is strictly construed. These and other\ngoverning principles are explained in I-80 Associates, Inc.\nv. Chicago, Rock Island and Pacific Railroad, 224 N.W.2d\n8, 10-11 (Iowa 1974).\n\n712\n\n\x0cAs permitted, plaintiff relied on claim of right rather than\ncolor of title. In contending the trial court erred in finding\nshe failed in her proof of this element, she attacks the\nviability of the principal case relied on by the trial court,\nGoulding v. Shonquist, 159 Iowa 647, 141 N.W. 24 (1913).\nIts facts are analogous to those here.\nIn Goulding the individual also cleared land adjacent to his\nhouse. The land was overrun with brush and willows and\nwas frequented by hunters. After clearing it, the individual\nused the land as a pasture and garden. In finding he did not\nestablish good faith claim of right, the court said:\nWhen he moved into his present\nproperty, the lands in question were\nobjectionable because they were\nfrequented by hunters, and for that\nreason he and his wife thought they\nought to clear them up. He says he\nsupposed they were part of the old\nriver bed or waste land upon which\nanyone could enter. No other facts are\noffered by defendant as a reason for\nentering into the possession of the\nland at that time. Whether the title to\nthe land was in the state or some other\nperson, the defendant knew that he\nhad no title and that he had no claim\nof title, and no right whatever to enter\ninto the possession, and his possession\nwas not in good faith for that reason.\nId. at 651, 141 N.W. at 25. The court quoted a statement\nfrom Litchfield v. Sewell, 97 Iowa 247, 251, 66 N.W. 104,\n106 (1896), that \xe2\x80\x9cthat there can be no such thing as adverse\npossession where the party knows he has no title, and that,\nunder the law, he can acquire none by his occupation.\xe2\x80\x9d\nPlaintiff argues that it is inconsistent to say ownership can\nbe acquired by claim of right as an alternative to color of\n\n713\n\n\x0ctitle and at the same time say ownership cannot be acquired\nby a person who knows he does not have title. She also\nargues that the good faith requirement was eliminated by\nthe court\xe2\x80\x99s decision in I-80 Associates, Inc. Although we\nagree it is an overstatement to say ownership cannot be\nacquired by a person who knows he does not have title,\nplaintiff is incorrect in her argument that good faith is not\nan essential component of claim of right. Moreover, we\nagree with the trial court that plaintiff did not prove this\nelement of her adverse possession claim.\nThe overbreadth of the statement that title cannot be\nobtained through adverse possession by one who knows he\nhas no title is demonstrated in Litchfield, Goulding and\nsubsequent decisions. In Litchfield the court rejected the\nadverse possession claim of a person in possession of land\nunder a quitclaim deed from a squatter. In finding an\nabsence of good faith, the court noted the adverse\npossession doctrine \xe2\x80\x9chas no application to one who actually\nknows that he has no claim, or title, or right to a title.\xe2\x80\x9d 97\nIowa at 250, 66 N.W. at 106. Under this holding a mere\nsquatter or one who claims under a squatter cannot have a\ngood faith claim of right to the property, but mere\nknowledge by the person that he has no title is not\npreclusive. A claim of right by a squatter is a false claim. To\npermit a squatter to assert a claim of right would put a\npremium on dishonesty. See 4 H. Tiffany, Real Property s\n1147 at 792 (3d ed. 1975). One of the main purposes of the\nclaim of right requirement is \xe2\x80\x9cto bar mere squatters from\nthe benefits of adverse possession.\xe2\x80\x9d7 R. Powell, Real\nProperty P 1015 (Rohan ed. 1981).\nAs in Litchfield, the possessor in Goulding not only knew\nthat he had no title but that he had no claim of title or any\nright to enter into possession of the property. He was a\nmere squatter.\nKnowledge of a defect in title is not alone sufficient to\npreclude proof of good faith:\n\n714\n\n\x0cOne is not deprived of the benefit of\nthe statute of limitations merely\nbecause his claim of right is\nunenforceable or his title is known to\nbe defective. The doctrine of adverse\npossession presupposes a defective\ntitle. It is not based on, but is hostile\nto, the true title. If the statute were to\nrun only in favor of a valid title, it\nwould serve no purpose. The holder of\nsuch a title has no need to invoke the\nstatute. Where bad faith is held to\nnegative an alleged claim of right, it is\nonly another way of saying that such\nclaim has been disproved.\nCreel v. Hammans, 234 Iowa 532, 535, 13 N.W.2d 305, 307\n(1944).\nNevertheless, when knowledge of lack of title is\naccompanied by knowledge of no basis for claiming an\ninterest in the property, a good faith claim of right cannot\nbe established. For example, a mere exchange of quitclaim\ndeeds by persons who know legal title is in another will not\nsupport a claim of right:\nIt is evident the claim and possession of George C.\nAbel could not have been in good faith. There was no\nreason why he and his brother should believe they had\nany right to divide and apportion between themselves\nthe real estate of their father while he was an insane\npatient in the state hospital. They must be held to\nhave known the quitclaim deeds they exchanged gave\nthem no title. At best, they proceeded upon what\nproved to be an unfounded assumption that their\nfather would never be discharged from the\nadjudication of insanity. No claim of ownership by\nadverse possession will be sustained upon such a\n\n715\n\n\x0cfoundation. Plaintiff\xe2\x80\x99s position at this point does not\nappeal to a court of equity.\nAbel v. Abel, 245 Iowa 907, 920, 65 N.W.2d 68, 75 (1954).\nThe good faith requirement was not an issue in I-80\nAssociates, Inc. The discussion of claim of right in that case\nconcerned mode of proof and did not include a\ncomprehensive definition of the element. See 224 N.W.2d\nat 11. The requirement of good faith was implicitly\nreaffirmed in a subsequent case, Pearson v. City of\nGuttenberg, 245 N.W.2d 519, 532 (Iowa 1976). We now\nconfirm that good faith, as explained in this case, is\nessential to adverse possession under a claim of right.\nWe believe plaintiff failed to prove a good faith claim of\nright in the present case. She knew her lot did not include\nthe cornfield north of it. She knew someone else had title\nto it and she had no interest in it or claim to it. This is not a\ncase of confusion or mistake. At the time she entered\npossession of the disputed land, plaintiff knew she had no\nlegal right to do so. To say that one can acquire a claim of\nright by merely entering possession would recognize\nsquatter\xe2\x80\x99s rights. Possession for the statutory period cannot\nbe bootstrapped into a basis for claiming a right to\npossession.\nWe hold that the trial court was right in rejecting plaintiff\xe2\x80\x99s\nclaim.\nII. The cross-appeal.\nUnder Iowa R.App. 5(a), a \xe2\x80\x9ccross-appeal may be taken\nwithin the thirty days for taking an appeal or in any event\nwithin five days after the appeal is taken.\xe2\x80\x9dDefendants did\nnot take their cross-appeal within the thirty days for taking\nan appeal. Nor did they take their cross-appeal within five\ndays after plaintiff filed her notice of appeal with the clerk\nof the district court. They argue, however, that the rule\nshould be interpreted to allow a cross-appeal within five\n\n716\n\n\x0cdays after receipt of a copy of the notice of appeal. They\nprovided an affidavit to show their cross-appeal was taken\nwithin five days after their attorney received a copy of the\nnotice of appeal in the mail.\nThe rule is not susceptible to the interpretation urged by\ndefendants. The five-day period commences when an\nappeal is \xe2\x80\x9ctaken.\xe2\x80\x9d Under rule 6(a), the appeal is \xe2\x80\x9ctaken and\nperfected by filing a notice with the clerk of court where\nthe order, judgment or decree was entered, signed by\nappellant or his attorney.\xe2\x80\x9dTherefore the five-day period\nbegan on the date the notice of appeal was filed with the\nclerk, and the cross-appeal was taken too late. Compliance\nwith the time limitations for taking a cross-appeal is\nmandatory and jurisdictional. See Hogan v. Chesterman,\n279 N.W.2d 12 (Iowa 1979). Because the cross-appeal was\nuntimely, we did not acquire jurisdiction of it, and it must\nbe dismissed.\nAFFIRMED ON THE APPEAL; DISMISSED ON THE\nCROSS-APPEAL.\nHoward v. Kunto, 477 P.2d 210 (Ct. App. Wash 1970).\nGLENN E. CORREA, SHELTON, FOR APPELLANT.\nR. F. DOTSCH, PHILIP W. RICHARDSON, OLYMPIA,\nRESPONDENT.\n\nFOR\n\nPEARSON, JUDGE.\nLand surveying is an ancient art but not one free of the\nerrors that often creep into the affairs of men. In this case,\nwe are presented with the question of what happens when\nthe descriptions in deeds do not fit the land the deed\nholders are occupying. Defendants appeal from a decree\nquieting title in the plaintiffs of a tract of land on the shore\nof Hood Canal in Mason County.\nAt least as long ago as 1932 the record tells us that one\nMcCall resided in the house now occupied by the appellantdefendants, Kunto. McCall had a deed that described a 50-\n\n717\n\n\x0cfoot-wide parcel on the shore of Hood Canal. The error1\nthat brings this case before us is that 50 feet described in\nthe deed is not the same 50 feet upon which McCall\xe2\x80\x99s\nhouse stood. Rather, the described land is an adjacent 50foot lot directly west of that upon which the house stood.\nIn other words, McCall\xe2\x80\x99s house stood on one lot and his\ndeed described the adjacent lot.2 Several property owners to\nthe west of defendants, not parties to this action, are\nsimilarly situated.\nOver the years since 1946, several conveyances occurred,\nusing the same legal description and accompanied by a\ntransfer of possession to the succeeding occupants. The\nKuntos\xe2\x80\x99 immediate predecessors in interest, Millers, desired\nto build a dock. To this end, they had a survey performed\nwhich indicated that the deed description and the physical\noccupation were in conformity. Several boundary stakes\nwere placed as a result of this survey and the dock was\nconstructed, as well as other improvements. The house as\nwell as the others in the area continued to be used as\nsummer recreational retreats.\nThe Kuntos then took possession of the disputed property\nunder a deed from the Millers in 1959. In 1960 the\nrespondent-plaintiffs, Howard, who held land east of that\nof the Kuntos, determined to convey an undivided one-half\ninterest in their land to the Yearlys. To this end, they\n\nPlaintiff\xe2\x80\x99s survey, the validity of which is challenged by defendant, demonstrates\nthe error.\n1\n\n2\n\nDefendant\xe2\x80\x99s deed and chain of title purported to convey\nThe West fifth (50) feet of the East two hundred (200)\nfeet of Government Lot two (2), Section nineteen (19);\nand the West fifty (50) feet of the East two hundred (200)\nfeet of Government Lot one (1), Section thirty (30); all in\nTownship twenty-two (22), North, of Range two (2) West,\nW.M.; \xe2\x80\xa6\n\nThe land defendants and their predecessors occupied, according to the survey,\nwas the \xe2\x80\x98West 50 feet of the east 150 feet of Government Lot 2, in Section 19,\nTownship 22 North, of Range 2 West of W.M. \xe2\x80\xa6\n\n718\n\n\x0cundertook to have a survey of the entire area made. After\nexpending considerable effort, the surveyor retained by the\nHowards discovered that according to the government\nsurvey, the deed descriptions and the land occupancy of the\nparties did not coincide. Between the Howards and the\nKuntos lay the Moyers\xe2\x80\x99 property. When the Howards\xe2\x80\x99\nsurvey was completed, they discovered that they were the\nrecord owners of the land occupied by the Moyers and that\nthe Moyers held record title to the land occupied by the\nKuntos. Howard approached Moyer and in return for a\nconveyance of the land upon which the Moyers\xe2\x80\x99 house\nstood, Moyer conveyed to the Howards record title to the\nland upon which the Kunto house stood. Until plaintiffs\nHoward obtained the conveyance from Moyer in April,\n1960, neither Moyer nor any of his predecessors ever\nasserted any right to ownership of the property actually\nbeing possessed by Kunto and his predecessors. This action\nwas then instituted to quiet title in the Howards and\nYearlys. The Kuntos appeal from a trial court decision\ngranting this remedy.\nAt the time this action was commenced on August 19,\n1960,3 defendants had been in occupance of the disputed\nproperty less than a year. The trial court\xe2\x80\x99s reason for\ndenying their claim of adverse possession is succinctly\nstated in its memorandum opinion: \xe2\x80\x9cIn this instance,\ndefendants have failed to prove, by a preponderance of the\nevidence, a continuity of possession or estate to permit\ntacking of the adverse possession of defendants to the\npossession of their predecessors.\xe2\x80\x9d\n\nThe inordinate delay in bringing this matter to trial appears from the record to\nbe largely inexcusable. However, neither counsel who tried the case was at fault in\nany way. We have intentionally declined to consider defendant\xe2\x80\x99s motion (probably\nwell founded) to dismiss this case for want of prosecution (Rules of Pleading,\nPractice and Procedure 41.04W (1950)) for the reason that a new trial of the same\nissues would be inevitable and in light of our disposition of the case on the merits,\ndefendants are not prejudiced by disregarding the technical grounds.\n3\n\n719\n\n\x0cFinding of fact 6,4 which is challenged by defendants,\nincorporates the above concept and additionally finds\ndefendant\xe2\x80\x99s possession not to have been \xe2\x80\x9ccontinuous\xe2\x80\x9d\nbecause it involved only \xe2\x80\x9csummer occupancy.\xe2\x80\x9d\nTwo issues are presented by this appeal:\n(1) Is a claim of adverse possession\ndefeated because the physical use of\nthe premises is restricted to summer\noccupancy?\n(2) May a person who receives record\ntitle to tract A under the mistaken\nbelief that the has title to tract B\n(immediately contiguous to tract A)\nand who subsequently occupies tract\nB, for the purpose of establishing title\nto tract B by adverse possession, use\nthe periods of possession of tract B by\nhis immediate predecessors who also\nhad record title to tract A?\n\n\xe2\x80\x9cIn the instant case the defendants\xe2\x80\x9d building was not simply over the line, but\ninstead was built wholly upon the wrong piece of property, not the property of\ndefendants, described in Paragraph Four (4) of the complaint herein, but on the\nproperty of plaintiffs, described in Paragraph Three of the complaint and herein.\nThat the last three deeds in the chain of title, covering and embracing defendants\xe2\x80\x99\nproperty, including defendants\xe2\x80\x99 deed, were executed in other states, specifically,\nCalifornia and Oregon. And there is no evidence of pointing out to the grantees in\nsaid three deeds, aforesaid, including defendants\xe2\x80\x99 deed, of any specific property,\nother than the property of defendants, described in their deed, and in Paragraph\nFour (4) of the complaint, and herein; nor of any immediate act of the grantees,\nincluding defendants, in said Three (3) deeds, aforesaid, of taking possession of\nany property, other than described in said three (3) deeds, aforesaid; and the\ntestimony of husband, defendant, was unequivocally that he had no intention of\npossessing or holding anything other than what the deed called for; and, that there\nis no showing of any continuous possession by defendants or their immediate\npredecessors in interest, since the evidence indicates the property was in the\nnature, for us, as a summer occupancy, and such occupancy and use was for\nrather limited periods of time during comparatively short portions of the year, and\nwas far from continuous.\xe2\x80\x99\n4\n\n720\n\n\x0cIn approaching both of these questions, we point out that the\nevidence, largely undisputed in any material sense, established that\ndefendant or his immediate predecessors did occupy the premises,\nwhich we have called tract B, as though it was their own for far\nmore than the 10 years as prescribed in RCW 4.16.020.5\nWe also point out that findings of fact is not challenged for its\nfactual determinations but for the conclusions contained therein to\nthe effect that the continuity of possession may not be established\nby summer occupancy, and that a predecessor\xe2\x80\x99s possession may\nnot be tacked because a legal \xe2\x80\x98claim of right\xe2\x80\x99 did not exist under the\ncircumstances.\nWe start with the oft-quoted rule that:\n(T)o constitute adverse possession,\nthere must be actual possession which\nis uninterrupted, open and notorious,\nhostile and exclusive, and under a\nClaim of right made in good faith for\nthe statutory period.\n(Italics ours.) Butler v. Anderson, 71 Wash.2d 60, 64, 426 P.2d\n467, 470 (1967). Also see Fadden v. Purvis, 77 Wash.Dec.2d\n22, 459 P.2d 385 (1969) and cases cited therein.\nWe reject the conclusion that summer occupancy only of a\nsummer beach home destroys the continuity of possession\nrequired by the statute. It has become firmly established\nthat the requisite possession requires such possession and\n\n5\n\nThis statute provides:\n(4.16.020) Actions to be commenced within ten years. The\nperiod prescribed in RCW 4.16.010 for the\ncommencement of actions shall be as follows: \xe2\x80\x9cWithin ten\nyears; Actions for the recovery of real property, or for the\nrecovery of the possession thereof; and no action shall be\nmaintained for such recovery unless it appears that the\nplaintiff, his ancestor, predecessor or grantor was seized or\npossessed of the premises in question within ten years\nbefore the commencement of the action.\xe2\x80\x9d\n\n721\n\n\x0cdominion \xe2\x80\x98as ordinarily marks the conduct of owners in\ngeneral in holding, managing, and caring for property of\nlike nature and condition.\xe2\x80\x99 Whalen v. Smith, 183 Iowa 949,\n953, 167 N.W. 646, 647 (1918). Also see Mesher v. Connolly,\n63 Wash.2d 552, 388 P.2d 144 (1964); Skoog v. Seymour, 29\nWash.2d 355, 187 P.2d 304 (1947); Butler v. Anderson, Supra;\nFadden v. Purvis, Supra.\nWe hold that occupancy of tract B during the summer\nmonths for more than the 10-year period by defendant and\nhis predecessors, together with the continued existence of\nthe improvements on the land and beach area, constituted\n\xe2\x80\x98uninterrupted\xe2\x80\x99 possession within this rule. To hold\notherwise is to completely ignore the nature and condition\nof the property. See Fadden v. Purvis, Supra.\nWe find such rule fully consonant with the legal writers on\nthe subject. In F. Clark, Law of Surveying and Boundaries,\ns 561 (3d ed. 1959) at 565: \xe2\x80\x9cContinuity of possession may\nbe established although the land is used regularly for only a\ncertain period each year.\xe2\x80\x9d Further, at 566:\nThis rule (which permits tacking) is\none of substance and not of absolute\nmathematical continuity, provided\nthere is no break so as to sever two\npossessions. It is not necessary that the\noccupant should be actually upon the\npremises continually. If the land is\noccupied during the period of time\nduring the year it is capable of use,\nthere is sufficient continuity.\nWe now reach the question of tacking. The precise issue\nbefore us is novel in that none of the property occupied by\ndefendant or his predecessors coincided with the property\ndescribed in their deeds, but was contiguous.\nIn the typical case, which has been subject to much\nlitigation, the party seeking to establish title by adverse\n\n722\n\n\x0cpossession claims More land than that described in the\ndeed. In such cases it is clear that tacking is permitted.\nIn Buchanan v. Cassell, 53 Wash.2d 611, 614, 335 P.2d 600,\n602 (1959) the Supreme Court stated:\nThis state follows the rule that a\npurchaser may tack the adverse use of\nits predecessor in interest to that of his\nown where the land was intended to\nbe included in the deed between them,\nbut was mistakenly omitted from the\ndescription.\nEl Cerrito, Inc. v. Ryndak, 60 Wash.2d 847, 376 P.2d 528\n(1962).\nThe general statement which appears in many of the cases\nis that tacking of adverse possession is permitted if the\nsuccessive occupants are in \xe2\x80\x98privity.\xe2\x80\x99 See Faubion v. Elder, 49\nWash.2d 300, 301 P.2d 153 (1956). The deed running\nbetween the parties purporting to transfer the land\npossessed traditionally furnishes the privity of estate which\nconnects the possession of the successive occupants.\nPlaintiff contends, and the trial court ruled, that where the\ndeed does not describe Any of the land which was\noccupied, the actual transfer of possession is insufficient to\nestablish privity.\nTo assess the cogency of this argument and ruling, we must\nturn to the historical reasons for requiring privity as a\nnecessary prerequisite to tacking the possession of several\noccupants. Very few, if any, of the reasons appear in the\ncases, nor do the cases analyze the relationships that must\nexist between successive possessors for tacking to be\nallowed. See W. Stoebuck, The Law of Adverse Possession\nIn Washington in 35 Wash.L.Rev. 53 (1960).\nThe requirement of privity had its roots in the notion that a\nsuccession of trespasses, even though there was no\n\n723\n\n\x0cappreciable interval between them, should not, in equity, be\nallowed to defeat the record title. The \xe2\x80\x98claim of right,\xe2\x80\x99 \xe2\x80\x98color\nof title\xe2\x80\x99 requirement of the statutes and cases was probably\nderived from the early American belief that the squatter\nshould not be able to profit by his trespass.66\nHowever, it appears to this court that there is a substantial\ndifference between the squatter or trespasser and the\nproperty purchaser, who along with several of his\nneighbors, as a result of an inaccurate survey or\nsubdivision,77 occupies and improves property exactly 50\nfeet to the east of that which a survey some 30 years later\ndemonstrates that they in fact own. It seems to us that\nthere is also a strong public policy favoring early certainty\nas to the location of land ownership which enters into a\nproper interpretation of privity.\nOn the irregular perimeters of Puget Sound exact\ndetermination of land locations and boundaries is difficult\nand expensive. This difficulty is convincingly demonstrated\nin this case by the problems plaintiff\xe2\x80\x99s engineer\nencountered in attempting to locate the corners. It cannot\nbe expected that every purchaser will or should engage a\nsurveyor to ascertain that the beach home he is purchasing\nlies within the boundaries described in his deed. Such a\npractice is neither reasonable nor customary. Of course, 50foot errors in descriptions are devasting where a group of\nadjacent owners each hold 50 feet of waterfront property.\nThe technical requirement of \xe2\x80\x98privity\xe2\x80\x99 should not, we think,\nbe used to upset the long periods of occupancy of those\nwho in good faith received an erroneous deed description.\nTheir \xe2\x80\x98claim of right\xe2\x80\x99 is no less persuasive than the\n\nThe English common law does not require privity as a prerequisite for tacking.\nSee F. Clark, Law of Surveying and Boundaries, s 561 (3d ed. 1959) at 568.\n6\n\nDefendants\xe2\x80\x99 deed and chain of title had an alternate description referring to an\nunrecorded plat called the Navy Yard Additions 1 and 2.\n7\n\n724\n\n\x0cpurchaser who believes he is purchasing More land than his\ndeed described.\nIn the final analysis, however, we believe the requirement\nof \xe2\x80\x98privity\xe2\x80\x99 is no more than judicial recognition of the need\nfor some reasonable connection between successive\noccupants of real property so as to raise their claim of right\nabove the status of the wrongdoer or the trespasser. We\nthink such reasonable connection exists in this case.\nWhere, as here, several successive purchasers received\nrecord title to tract A under the mistaken belief that they\nwere acquiring tract B, immediately contiguous thereto, and\nwhere possession of tract B is transferred and occupied in a\ncontinuous manner for more than 10 years by successive\noccupants, we hold there is sufficient privity of estate to\npermit tacking and thus establish adverse possession as a\nmatter of law.\nWe see no reason in law or in equity for differentiating this\ncase from Faubion v. Elder, 49 Wash.2d 300, 301 P.2d 153\n(1956) where the appellants were claiming More land than\ntheir deed described and where successive periods of\noccupation were allowed to be united to each other to\nmake up the time of adverse holding. To the same effect\nSee Naher v. Farmer, 60 Wash. 600, 111 P. 768 (1910), and\ncases cited therein; Buchanan v. Cassell, 53 Wash.2d 611, 335\nP.2d 600 (1959) and cases cited therein; El Cerrito, Inc. v.\nRyndak, 60 Wash.2d 847, 376 P.2d 528 (1962); See 17\nA.L.R.2d 1128 (1951). This application of the privity\nrequirement should particularly pertain where the holder of\nrecord title to tract B acquired the same with knowledge of\nthe discrepancy.\nJudgment is reversed with directions to dismiss plaintiffs\xe2\x80\x99\naction and to enter a decree quieting defendants\xe2\x80\x99 title to the\ndisputed tract of land in accordance with the prayer of their\ncross-complaint.\nARMSTRONG, P.J., and PETRIE, J., concur.\n\n725\n\n\x0cNome 2000 v. Fagerstrom, 799 P.2d 304 (Alaska 1990)\nConstance Cates Ringstad, Paul A. Barrett, Call, Barrett &\nBurbank, Fairbanks, for appellants.\nJon R. Larson, Larson, Timbers & Van Winkle, Inc.,\nNome, for appellees.\nBefore MATTHEWS, C.J., and RABINOWITZ, BURKE,\nCOMPTON and MOORE, JJ.\nMATTHEWS, CHIEF JUSTICE.\nThis appeal involves a dispute over a tract of land\nmeasuring approximately seven and one-half acres,\noverlooking the Nome River (hereinafter the disputed\nparcel).1 Record title to a tract of land known as mineral\nsurvey 1161, which includes the disputed parcel, is held by\nNome 2000.\nOn July 24, 1987, Nome 2000 filed suit to eject Charles and\nPeggy Fagerstrom from the disputed parcel. The\nFagerstroms counterclaimed that through their use of the\nparcel they had acquired title by adverse possession.\nA jury trial ensued and, at the close of the Fagerstroms\xe2\x80\x99\ncase, Nome 2000 moved for a directed verdict on two\ngrounds. First, it maintained that the Fagerstroms\xe2\x80\x99 evidence\nof use of the disputed parcel did not meet the requirements\nof the doctrine of adverse possession. Alternatively, Nome\n2000 maintained that the requirements for adverse\npossession were met only as to the northerly section of the\nparcel and, therefore, the Fagerstroms could not have\nacquired title to the remainder. The trial court denied the\nmotion. After Nome 2000 presented its case, the jury found\nthat the Fagerstroms had adversely possessed the entire\nparcel. The court then entered judgment in favor of the\nFagerstroms.\n\n1\n\nA diagram of the disputed parcel is attached as an appendix to this opinion.\n\n\x0cOn appeal, Nome 2000 contests the trial court\xe2\x80\x99s denial of\nits motion for a directed verdict and the sufficiency of the\nevidence in support of the jury verdict. It also challenges\ntwo evidentiary rulings made by the trial court and the trial\ncourt\xe2\x80\x99s award of attorney\xe2\x80\x99s fees to the Fagerstroms.\nI. FACTUAL BACKGROUND2\nThe disputed parcel is located in a rural area known as\nOsborn. During the warmer seasons, property in Osborn is\nsuitable for homesites and subsistence and recreational\nactivities. During the colder seasons, little or no use is made\nof Osborn property.\nCharles Fagerstrom\xe2\x80\x99s earliest recollection of the disputed\nparcel is his family\xe2\x80\x99s use of it around 1944 or 1945. At that\ntime, he and his family used an abandoned boy scout cabin\npresent on the parcel as a subsistence base camp during\nsummer months. Around 1947 or 1948, they moved their\nsummer campsite to an area south of the disputed parcel.\nHowever, Charles and his family continued to make\nseasonal use of the disputed parcel for subsistence and\nrecreation.\nIn 1963, Charles and Peggy Fagerstrom were married and,\nin 1966, they brought a small quantity of building materials\nto the north end of the disputed parcel. They intended to\nbuild a cabin.\nIn 1970 or 1971, the Fagerstroms used four cornerposts to\nstake off a twelve acre, rectangular parcel for purposes of a\n\nBecause Nome 2000 challenges the trial court\xe2\x80\x99s denial of its motion for a\ndirected verdict, and the sufficiency of the evidence underlying the jury verdict, we\nare constrained to view the evidence in a light most favorable to the Fagerstroms.\nSee Kavorkian v. Tommy\xe2\x80\x99s Elbow Room, Inc., 694 P.2d 160, 163 (Alaska 1985); Levar v.\nElkins, 604 P.2d 602, 603 (Alaska 1980). Our statement of the facts is made from\nthis viewpoint.\n2\n\n727\n\n\x0cNative Allotment application.3 The northeast and southeast\nstakes were located on or very near mineral survey 1161.\nThe northwest and southwest stakes were located well to\nthe west of mineral survey 1161. The overlap constitutes\nthe disputed parcel. The southeast stake disappeared at an\nunknown time.\nAlso around 1970, the Fagerstroms built a picnic area on\nthe north end of the disputed parcel. The area included a\ngravel pit, beachwood blocks as chairs, firewood and a 50gallon barrel for use as a stove.\nAbout mid-July 1974, the Fagerstroms placed a camper\ntrailer on the north end of the disputed parcel. The trailer\nwas leveled on blocks and remained in place through late\nSeptember. Thereafter, until 1978, the Fagerstroms parked\ntheir camper trailer on the north end of the disputed parcel\nfrom early June through September. The camper was\nequipped with food, bedding, a stove and other household\nitems.\nAbout the same time that the Fagerstroms began parking\nthe trailer on the disputed parcel, they built an outhouse\nand a fish rack on the north end of the parcel. Both fixtures\nremained through the time of trial in their original\nlocations.4 The Fagerstroms also planted some spruce trees,\nnot indigenous to the Osborn area, in 1975-76.\nDuring the summer of 1977, the Fagerstroms built a\nreindeer shelter on the north end of the disputed parcel.\n\nFederal law authorizes the Secretary of the Interior to allot certain non-mineral\nlands to Native Alaskans. See Act of May 17, 1906, 34 Stat. 197, as amended, Act\nof August 2, 1956, 70 Stat. 954; repealed by the Alaska Native Claims Settlement\nAct, \xc2\xa7 18, with a savings clause for applications pending on December 18, 1971,\n43 U.S.C. \xc2\xa7 1617(a) (1982); modified by the Alaska National Interest Lands\nConservation Act, \xc2\xa7 905, 43 U.S.C. \xc2\xa7 1634 (1982). As a result of her application,\nPeggy was awarded two lots (lots 3 and 12) which border the disputed parcel\nalong its western boundary. (See Appendix.)\n3\n\nThe outhouse was blown over one winter by strong winds, but was re-erected\nthe following summer with additional supports.\n4\n\n728\n\n\x0cThe shelter was about 8x8 feet wide, and tall enough for\nCharles Fagerstrom to stand in. Around the shelter, the\nFagerstroms constructed a pen which was 75 feet in\ndiameter and 5 feet high. The shelter and pen housed a\nreindeer for about six weeks and the pen remained in place\nuntil the summer of 1978.\nDuring their testimony, the Fagerstroms estimated that\nthey were personally present on the disputed parcel from\n1974 through 1978, \xe2\x80\x9cevery other weekend or so\xe2\x80\x9d and \xe2\x80\x9c[a]\ncouple times during the week \xe2\x80\xa6 if the weather was good.\xe2\x80\x9d\nWhen present they used the north end of the parcel as a\nbase camp while using the entire parcel for subsistence and\nrecreational purposes. Their activities included gathering\nberries, catching and drying fish and picnicking. Their\nchildren played on the parcel. The Fagerstroms also kept\nthe property clean, picking up litter left by others.\nWhile so using the disputed parcel, the Fagerstroms walked\nalong various paths which traverse the entire parcel. The\npaths were present prior to the Fagerstroms\xe2\x80\x99 use of the\nparcel and, according to Peggy Fagerstrom, were free for\nuse by others in connection with picking berries and\nfishing. On one occasion, however, Charles Fagerstrom\nexcluded campers from the land. They were burning the\nFagerstroms\xe2\x80\x99 firewood.\nNome 2000 placed into evidence the deposition testimony\nof Dr. Steven McNabb, an expert in anthropology, who\nstated that the Fagerstroms\xe2\x80\x99 use of the disputed parcel was\nconsistent with the traditional Native Alaskan system of\nland use. According to McNabb, unlike the non-Native\nsystem, the traditional Native system does not recognize\nexclusive ownership of land. Instead, customary use of\nland, such as the Fagerstroms\xe2\x80\x99 use of the disputed parcel,\nestablishes only a first priority claim to the land\xe2\x80\x99s resources.\nThe claim is not exclusive and is not a matter of ownership,\nbut is more in the nature of a stewardship. That is, other\nmembers of the claimant\xe2\x80\x99s social group may share in the\n\n729\n\n\x0cresources of the land without obtaining permission, so long\nas the resources are not abused or destroyed. McNabb\nexplained that Charles\xe2\x80\x99 exclusion of the campers from the\nland was a response to the campers\xe2\x80\x99 use of the\nFagerstroms\xe2\x80\x99 personal property (their firewood), not a\nresponse to an invasion of a perceived real property\ninterest.5\nNevertheless, several persons from the community testified\nthat the Fagerstroms\xe2\x80\x99 use of the property from 1974\nthrough 1977 was consistent with that of an owner of the\nproperty. For example, one Nome resident testified that\nsince 1974 \xe2\x80\x9c[the Fagerstroms] cared for [the disputed\nparcel] as if they owned it. They made improvements on it\nas if they owned it. It was my belief that they did own it.\xe2\x80\x9d\nDuring the summer of 1978, the Fagerstroms put a cabin\non the north end of the disputed parcel. Nome 2000 admits\nthat from the time that the cabin was so placed until the\ntime that Nome 2000 filed this suit, the Fagerstroms\nadversely possessed the north end of the disputed parcel.\nNome 2000 filed its complaint on July 24, 1987.\nII. DISCUSSION\nA.\nThe Fagerstroms\xe2\x80\x99 claim of title by adverse possession is\ngoverned by AS 09.10.030, which provides for a ten-year\nlimitations period for actions to recover real property.6\nThus, if the Fagerstroms adversely possessed the disputed\nparcel, or any portion thereof, for ten consecutive years,\nthen they have acquired title to that property. See Hubbard\nHowever, Charles Fagerstrom testified that when he excluded the campers he\nfelt that they were \xe2\x80\x9con our property.\xe2\x80\x9d He also testified that during the mid to late\n70\xe2\x80\x99s he would have \xe2\x80\x9cfrown[ed]\xe2\x80\x9d upon people camping on \xe2\x80\x9cmy property.\xe2\x80\x9d\n5\n\nA seven-year period is provided for by AS 09.25.050 when possession is under\n\xe2\x80\x9ccolor and claim of title.\xe2\x80\x9d The Fagerstroms do not maintain that their possession\nwas under color of title.\n6\n\n730\n\n\x0cv. Curtiss, 684 P.2d 842, 849 (Alaska 1984) (\xe2\x80\x9c[T]itle\nautomatically vests in the adverse possessor at the end of\nthe statutory period.\xe2\x80\x9d). Because the Fagerstroms\xe2\x80\x99 use of the\nparcel increased over the years, and because Nome 2000\nfiled its complaint on July 24, 1987, the relevant period is\nJuly 24, 1977 through July 24, 1987.\nWe recently described the elements of adverse possession\nas follows: \xe2\x80\x9cIn order to acquire title by adverse possession,\nthe claimant must prove, by clear and convincing evidence,\n\xe2\x80\xa6 that for the statutory period \xe2\x80\x98his use of the land was\ncontinuous, open and notorious, exclusive and hostile to\nthe true owner.\xe2\x80\x99\xe2\x80\x9d Smith v. Krebs, 768 P.2d 124, 125 (Alaska\n1989) (citations omitted). The first three conditionscontinuity, notoriety and exclusivity-describe the physical\nrequirements of the doctrine. See R. Cunningham, W.\nStoebuck and D. Whitman, The Law of Property \xc2\xa7 11.7 at\n758-60, 762-63 (1984). The fourth condition, hostility, is\noften imprecisely described as the \xe2\x80\x9cintent\xe2\x80\x9d requirement. Id.\nat 761.\nOn appeal, Nome 2000 argues that as a matter of law the\nphysical requirements are not met absent \xe2\x80\x9csignificant\nphysical improvements\xe2\x80\x9d or \xe2\x80\x9csubstantial activity\xe2\x80\x9d on the\nland. Thus, according to Nome 2000, only when the\nFagerstroms placed a cabin on the disputed parcel in the\nsummer of 1978 did their possession become adverse. For\nthe prior year, so the argument goes, the Fagerstroms\xe2\x80\x99\nphysical use of the property was insufficient because they\ndid not construct \xe2\x80\x9csignificant structure[s]\xe2\x80\x9d and their use\nwas only seasonal. Nome 2000 also argues that the\nFagerstroms\xe2\x80\x99 use of the disputed parcel was not exclusive\nbecause \xe2\x80\x9c[o]thers were free to pick the berries, use the\npaths and fish in the area.\xe2\x80\x9d We reject these arguments.\nWhether a claimant\xe2\x80\x99s physical acts upon the land are\nsufficiently continuous, notorious and exclusive does not\nnecessarily depend on the existence of significant\nimprovements, substantial activity or absolute exclusivity.\n\n731\n\n\x0cIndeed, this area of law is not susceptible to fixed standards\nbecause the quality and quantity of acts required for\nadverse possession depend on the character of the land in\nquestion. Thus, the conditions of continuity and exclusivity\nrequire only that the land be used for the statutory period\nas an average owner of similar property would use it.\nAlaska National Bank v. Linck, 559 P.2d 1049, 1052 (Alaska\n1977) (One test for determining continuity of possession is\nto ask whether the land was used as an average owner\nwould use it.); Peters v. Juneau-Douglas Girl Scout Council, 519\nP.2d 826, 831 (Alaska 1974) (\xe2\x80\x9c[P]ossession need not be\nabsolutely exclusive; it need only be a type of possession\nwhich would characterize an owner\xe2\x80\x99s use.\xe2\x80\x9d). Where, as in\nthe present case, the land is rural, a lesser exercise of\ndominion and control may be reasonable. See Linck, 559\nP.2d at 1052 (citing Cooper v. Carter Oil Co., 7 Utah 2d 9, 316\nP.2d 320 (1957) for the proposition that \xe2\x80\x9cpasturing of\nsheep for three weeks a year is sufficient where land is\nsuitable only for grazing\xe2\x80\x9d), 1053 (citing Monroe v. Rawlings,\n331 Mich. 49, 49 N.W.2d 55, 56 (1951) for the proposition\nthat \xe2\x80\x9c6 visits per year to hunting cabin plus some timber\ncutting found sufficient where land was wild and\nundeveloped\xe2\x80\x9d); Peters, 519 P.2d at 831 (citing Pulcifer v.\nBishop, 246 Mich. 579, 225 N.W. 3 (1929) for the\nproposition that exclusivity is not destroyed as to beach\nproperty commonly used by others).\nThe character of the land in question is also relevant to the\nnotoriety requirement. Use consistent with ownership\nwhich gives visible evidence of the claimant\xe2\x80\x99s possession,\nsuch that the reasonably diligent owner \xe2\x80\x9ccould see that a\nhostile flag was being flown over his property,\xe2\x80\x9d is\nsufficient. Shilts v. Young, 567 P.2d 769, 776 (Alaska 1977).\nWhere physical visibility is established, community repute is\n\n732\n\n\x0calso relevant evidence that the true owner was put on\nnotice.7 Id.\nApplying the foregoing principles to this case, we hold that\nthe jury could reasonably conclude that the Fagerstroms\nestablished, by clear and convincing evidence, continuous,\nnotorious and exclusive possession for ten years prior to\nthe date Nome 2000 filed suit.8 We point out that we are\nconcerned only with the first year, the summer of 1977\nthrough the summer of 1978, as Nome 2000 admits that\nthe requirements of adverse possession were met from the\nsummer of 1978 through the summer of 1987.\nThe disputed parcel is located in a rural area suitable as a\nseasonal homesite for subsistence and recreational\nactivities. This is exactly how the Fagerstroms used it\nduring the year in question. On the premises throughout\nthe entire year were an outhouse, a fish rack, a large\nreindeer pen (which, for six weeks, housed a reindeer), a\npicnic area, a small quantity of building materials and some\ntrees not indigenous to the area. During the warmer season,\nfor about 13 weeks, the Fagerstroms also placed a camper\ntrailer on blocks on the disputed parcel. The Fagerstroms\nand their children visited the property several times during\nthe warmer season to fish, gather berries, clean the\npremises, and play. In total, their conduct and\nimprovements went well beyond \xe2\x80\x9cmere casual and\noccasional trespasses\xe2\x80\x9d and instead \xe2\x80\x9cevince[d] a purpose to\nexercise exclusive dominion over the property.\xe2\x80\x9d See Peters,\n\nThe function of the notoriety requirement is to afford the true owner an\nopportunity for notice. However, actual notice is not required; the true owner is\ncharged with knowing what a reasonably diligent owner would have known. Linck,\n559 P.2d at 1053.\n7\n\nNeither the trial court\xe2\x80\x99s denial of Nome 2000\xe2\x80\x99s motion for a directed verdict nor\nthe jury\xe2\x80\x99s verdict should be disturbed if reasonable jurors could have concluded\nthat the requirements for adverse possession were met. See Kavorkian, 694 P.2d at\n163; Municipality of Anchorage v. Baugh Construction & Engineering Co., 722 P.2d 919,\n927 (Alaska 1986).\n8\n\n733\n\n\x0c519 P.2d at 830. That others were free to pick berries and\nfish is consistent with the conduct of a hospitable\nlandowner, and undermines neither the continuity nor\nexclusivity of their possession. See id. at 831 (claimant\n\xe2\x80\x9cmerely acting as any other hospitable landowner might\xe2\x80\x9d in\nallowing strangers to come on land to dig clams).\nWith respect to the notoriety requirement, a quick\ninvestigation of the premises, especially during the season\nwhich it was best suited for use, would have been sufficient\nto place a reasonably diligent landowner on notice that\nsomeone may have been exercising dominion and control\nover at least the northern portion of the property. Upon\nsuch notice, further inquiry would indicate that members of\nthe community regarded the Fagerstroms as the owners.\nContinuous, exclusive, and notorious possession were thus\nestablished.\nNome 2000 also argues that the Fagerstroms did not\nestablish hostility. It claims that \xe2\x80\x9cthe Fagerstroms were\nrequired to prove that they intended to claim the property\nas their own.\xe2\x80\x9d According to Nome 2000, this intent was\nlacking as the Fagerstroms thought of themselves not as\nowners but as stewards pursuant to the traditional system\nof Native Alaskan land usage. We reject this argument and\nhold that all of the elements of adverse possession were\nmet.\nWhat the Fagerstroms believed or intended has nothing to\ndo with the question whether their possession was hostile.\nSee Peters, 519 P.2d at 832 (with respect to the requirement\nof hostility, the possessor\xe2\x80\x99s \xe2\x80\x9cbeliefs as to the true legal\nownership of the land, his good faith or bad faith in\nentering into possession \xe2\x80\xa6 are all irrelevant.\xe2\x80\x9d); The Law of\nProperty at 761 (citing, inter alia, Peters for the view \xe2\x80\x9cof most\ndecisions and of nearly all scholars, that what the possessor\nbelieves or intends should have nothing to do with\n[hostility]\xe2\x80\x9d). Hostility is instead determined by application\nof an objective test which simply asks whether the possessor\n\n734\n\n\x0c\xe2\x80\x9cacted toward the land as if he owned it,\xe2\x80\x9d without the\npermission of one with legal authority to give possession.\nHubbard, 684 P.2d at 848 (citing Peters, 519 P.2d at 832). As\nindicated, the Fagerstroms\xe2\x80\x99 actions toward the property\nwere consistent with ownership of it, and Nome 2000\noffers no proof that the Fagerstroms so acted with\nanyone\xe2\x80\x99s permission. That the Fagerstroms\xe2\x80\x99 objective\nmanifestations of ownership may have been accompanied\nby what was described as a traditional Native Alaskan\nmind-set is irrelevant. To hold otherwise would be\ninconsistent with precedent and patently unfair.\nHaving concluded that the Fagerstroms established the\nelements of adverse possession, we turn to the question\nwhether they were entitled to the entire disputed parcel.\nSpecifically, the question presented is whether the jury\ncould reasonably conclude that the Fagerstroms adversely\npossessed the southerly portion of the disputed parcel.9\nAbsent color of title,10 only property actually possessed may\nbe acquired by adverse possession. Bentley Family Trust v.\nLynx Enterprises, Inc., 658 P.2d 761, 768 (Alaska 1983) and\nLinck, 559 P.2d at 1052-53 n. 8. See also Krebs, 768 P.2d at\n126 and n. 7 (recognizing the possibility that the\nrequirements of adverse possession may be met only as to a\nportion of a disputed parcel). Here, from the summer of\n1977 through the summer of 1978, the Fagerstroms\xe2\x80\x99 only\nactivity on the southerly portion of the land included use of\nthe pre-existing trails in connection with subsistence and\nrecreational activities, and picking up litter. They claim that\nthese activities, together with their placement of the\ncornerposts, constituted actual possession of the southerly\n9\n\nSee supra n. 8.\n\n\xe2\x80\x9cColor of title exists only by virtue of a written instrument which purports to\npass title to the claimant, but which is ineffective because of a defect in the means\nof conveyance or because the grantor did not actually own the land he sought to\nconvey.\xe2\x80\x9d Hubbard, 684 P.2d at 847. As noted above, see n. 6, the Fagerstroms do\nnot claim the disputed parcel by virtue of a written instrument.\n10\n\n735\n\n\x0cportion of the parcel. Nome 2000 argues that this activity\ndid not constitute actual possession and, at most, entitled\nthe Fagerstroms to an easement by prescription across the\nsoutherly portion of the disputed parcel.\nNome 2000 is correct. The Fagerstroms\xe2\x80\x99 use of the trails\nand picking up of litter, although perhaps indicative of\nadverse use, would not provide the reasonably diligent\nowner with visible evidence of another\xe2\x80\x99s exercise of\ndominion and control. To this, the cornerposts add\nvirtually nothing. Two of the four posts are located well to\nthe west of the disputed parcel. Of the two that were\nallegedly placed on the parcel in 1970, the one located on\nthe southerly portion of the parcel disappeared at an\nunknown time. The Fagerstroms maintain that because the\ndisappearing stake was securely in place in 1970, we should\ninfer that it remained for a \xe2\x80\x9csignificant period.\xe2\x80\x9d Even if we\ndraw this inference, we fail to see how two posts on a\nrectangular parcel of property can, as the Fagerstroms put\nit, constitute \xe2\x80\x9c[t]he objective act of taking physical\npossession\xe2\x80\x9d of the parcel. The two posts simply do not\nserve to mark off the boundaries of the disputed parcel\nand, therefore, do not evince an exercise of dominion and\ncontrol over the entire parcel. Thus, we conclude that the\nsuperior court erred in its denial of Nome 2000\xe2\x80\x99s motion\nfor a directed verdict as to the southerly portion. This case\nis remanded to the trial court, with instructions to\ndetermine the extent of the Fagerstroms\xe2\x80\x99 acquisition in a\nmanner consistent with this opinion.\n\xe2\x80\xa6.\nAffirmed in part, reversed in part, and remanded.\nAPPENDIX (omitted)\n\n736\n\n\x0c'