Property: Volume 1

Christian Turner
Assistant Professor of Law

University of Georgia School of Law

eLangdell® Press 2012

About the Author
Christian Turner teaches courses in property, land use, legal theory,
and the regulation of information. His research interests are in the
public/private distinction and institutional analysis. Drawing from
his mathematical training, he is interested in both the logic and
illogic of the law— and in understanding seemingly complex and
diverse legal principles as consequences of basic, trans-substantive
ideas.
Prior to joining the faculty at the University of Georgia, Christian
was a Visiting Assistant Professor at Fordham Law School,
worked at Wiggin and Dana law firm in New Haven, and clerked
for Judge Guido Calabresi on the Second Circuit. He is a graduate
of Stanford Law School and holds a Ph.D. in mathematics from
Texas A&M University.

iii

About eLangdell Press
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iv

Notices
Carol M. Rose, Possession as the Origin of Property, 52 U Chi L
Rev 73 (1985), reprinted with permission of the University of
Chicago Law Review.
Lawrence Solum, Legal Theory Lexicon: Fit & Jusitfication http://lsolum.typepad.com/legal_theory_lexicon/2004/04/legal_t
heory_le_1.html, reprinted with the permission of the author.This
work by Colin Millers licensed and published by CALI eLangdell
Press under a Creative Commons Attribution-NonCommercialShareAlike 3.0 Unported License. CALI and CALI eLangdell Press
reserve under copyright all rights not expressly granted by this
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Suggested attribution format for original work:
Christian Turner, Property, Volume I, Published by CALI
eLangdell Press. Available under a Creative Commons BY-NCSA 3.0 License.
CALI® and eLangdell® are United States federally registered
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v

book’s cover art and the aforementioned logos, or any derivative
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This material does not contain nor is intended to be legal advice. Users
seeking legal advice should consult with a licensed attorney in their
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Version 1: March 29, 2012

vi

Table of Contents
Property: Volume 1............................................................................................. 2
About the Author .............................................................................................. iii
About eLangdell Press ...................................................................................... iv
Notices ................................................................................................................. v
Table of Contents.............................................................................................. vii
Preface ................................................................................................................. ix
1. Introduction .................................................................................................... 1
1.1. Finders vs. Landowners ........................................................................ 1
1.2 Trespass .................................................................................................. 43
1.2.1. What's at Stake .............................................................................. 43
1.2.2. Initial Look at Exclusion's Limits .............................................. 55
1.3 Nuisance ................................................................................................. 78
1.3.1. Defined........................................................................................... 78
1.3.2. Law and Economics ................................................................... 101
1.3.3. Problems ...................................................................................... 109
1.3.4. Application .................................................................................. 112
1.3.5. Property Rules and Liability Rules: Theory ............................ 138
1.3.6. Property Rules and Liability Rules: Practice........................... 145
2. Acquisition by Possession......................................................................... 173
2.1 Possession Generally .......................................................................... 173
2.1.1. Wild Animals ............................................................................... 173
2.1.2. Theory .......................................................................................... 190
2.1.3. Sunken Ships, Baseballs, and Artifacts .................................... 212
2.1.4. Problems ...................................................................................... 258
2.2 Common Pool Resources .................................................................. 260
2.2.1. The Problem and Theory .......................................................... 260
2.2.2. Applications ................................................................................. 264
2.3. Review .................................................................................................. 283

vii

3. Acquisition by Creation ............................................................................ 291
3.1. Unfair Competition ............................................................................ 291
3.2. Trademarks and Domain Names ..................................................... 339
3.3. Patents .................................................................................................. 367
3.4 Copyright .............................................................................................. 386
3.4.1. Eligibility ...................................................................................... 386
3.4.2. Calibration: Scope of Exclusion, a.k.a. Fair Use .................... 410
3.4.3. Calibration: Length of Term ..................................................... 441
3.4.4. Secondary Liability ..................................................................... 481
3.4.4.1. Problems ................................................................................... 533
3.5. Publicity Rights ................................................................................... 541
4. Transfers ...................................................................................................... 605
4.1. Gifts ...................................................................................................... 605
4.2 Real Estate Transactions .................................................................... 614
4.2.1. The Contract ............................................................................... 614
4.2.2. The Deed ..................................................................................... 641
4.3. Adverse Possession ............................................................................ 666

viii

Preface
Property is an odd subject. Typically a first-year, foundational
course, it becomes apparent to beginning students rather quickly
that it differs greatly from Contracts, Torts, and Criminal
Law. Whereas those courses usually have a consistent rhythm, a
mutually reinforcing structure, Property seems to be a grab bag of
topics. Worse, the cases one studies are generally tort and contract
cases. Are there property cases? What is distinctive about them?
To understand what we're about to embark on, you must first
understand what is happening in your other courses. I will give a
very brief overview here of my conception of the structure of legal
systems. I find that thinking broadly at first helps to show how the
study of Property Law is different and also to explain the structure
of a typical first-year curriculum. A fuller explanation, intended for
non-experts, can be found in a short series of blog posts at
[http://hydratext.com/blog/category/laws-not-thathard](http://hydratext.com/blog/category/laws-not-that-hard).
An Atlas of Legal Systems
Contracts, Torts, and Criminal Law are substantive fields of the
law. By that, I mean that they are basic categories of causes of
action. They differ in the identity of the institution that controls
lawmaking
and
prosecution.
Contract Law is the set of laws that are created by private entities
(often, but not always, through bilateral agreement) and enforced
by private lawsuits. Tort Law is the set of laws that are created by
public entities (usually courts creating common law or legislatures)
and enforced by private lawsuits. Criminal Law is the set of laws
that are created by public entities and enforced by public lawsuits
(or
prosecutions).

ix

To summarize:

Privately Made

Publicly Made

Privately
Prosecuted

Contracts

Torts

Publicly
Prosecuted

Parens Patriae

Criminal Law

So where is Property Law? Under this view, it does not exist as a
substantive category. Indeed, a Property course consists of tort
cases, contract cases, criminal cases, and a few cases nominally
labeled property cases but which are easily seen to be contract
cases with different default rules and procedures. The chart simply
makes plain that it could not be otherwise.
Can you see why the set of laws in the Parens Patriae category
might be a very small one?
Analyzing Cases
Let's keep going for just a bit on the similarities among the
substantive courses in order to discern a role for Property within a
first-year education. While Contract, Tort, and Criminal Law differ
in the nature of the institutions that make law and prosecute
violations, they are remarkably similar in how their causes of action
work. In each of these courses, you will learn an identical pattern
for analyzing a lawsuit: Duty, Breach, Causation, Defenses,
Damages. These may be taken up in different orders. The steps
may even be given different names. But the essence is the same:
1. Did the defendant owe a _duty_ that is the subject of the

x

lawsuit? Duties are what me might causally think of as "the law,"
the things we must do or not do. They are created by legislatures,
contracts, or courts. In Contracts, you will be concerned with the
procedures for enacting duties (offer and acceptance, for example)
and interpreting written contracts to determine what duties have
been created. In Torts, you will primarily study judge-made duties
and the policies behind them. While in Criminal Law, many
textbooks focus on the duties contained in the Model Penal Code.
2. Did the defendant breach the duty owed? Duties are often
stated in general terms, and the question of breach is whether the a
duty was violated under the specific facts of the case -- an exercise
that often involves returning to the question of duty and gaining
more precision about what is and what is not against the law. If I
owe a duty to avoid injuring others by driving a car using the
ordinary degree of care a reasonable and prudent person would
under the circumstances, whether I violated that duty by shifting
my attention to the air conditioning or heating while in heavy
traffic
is
a
question
of
breach.
3. Did the defendant's breach of a duty cause the result specified in
the law, typically an injury to the plaintiff or victim? As you'll see
in your other classes, this step usually involves two separate
questions, one of logic and one of policy. First, was the
defendant's breach a logical or but-for cause of the injury, in the
sense that no injury would have occurred but for the breach? This
is necessary but not sufficient for liability. In each substantive area,
we also ask a policy question: was the breach a proximate cause of
the injury? This is a question of policy that asks whether the
breach was such that we think the defendant ought to be at least
partially responsible, typically because the breach was a substantial
factor in bringing about the injury.
4. Defenses, like proximate cause, are policy-based reasons to
refuse to find all or some liability.
5. Damages, or remedy, actually varies quite a bit among the
subjects. Some Contract courses even begin with this step as a way

xi

of illustrating the distinctive purposes of the enforcement of
private
agreements.
This underlying structure is an important part of why Contracts,
Tort, and Criminal Law reinforce one another in the first-year
curriculum. These subjects, and thus courses, ask the same
questions, only with respect to lawmakers and prosecutors of
differing types. Because the same concepts are repeated, learning
about
one
area
helps
to
learn
about
others.
Property
Property, as a vaguely defined collection of contract, tort, and
criminal cases, does not take on the natural structure of a
substantive area of the law through the systematic study of duty,
breach, causation, defenses, and damages. Instead this textbook
and most Property courses survey various topics in law with two
goals in mind. First, we will study a number of traditional property
topics, those where the issue of "ownership" and what that entails
have long been thought to be a central issue. Second, but most
importantly, our interdisciplinary study will introduce some of the
major analytical techniques in law, from reasoning using precedent
to law and economics to distributive justice. As we roam among
topics, our goal is always, relentlessly to ask, "Why?" "Why should
the law protect this party's interest?" These major techniques that
we will pick up along the way will help us provide better and better
answers
to
this
question.
Substance
As to our first goal, we will survey some of the major topics in the
common law of land ownership as well as some highlights from the
law of intellectual property. From trespass and nuisance, to land
transfers, to adverse possession, to future interests, easement,
covenants, and takings, there is quite a bit of fairly basic law that is
not ordinarily covered in torts or contracts. Common to many of
the topics we will cover are notions of "ownership" and

xii

"entitlement." We will see that these concepts are not selfdefining. Instead, what it means to own something will depend
entirely on how we resolve cases in which owners' rights are
contested. It will never be good enough to respond to an
argument that, say, a landowner should be stopped from making
some use of his or her land by asserting that the landowner should
win because it's his or her property. Whether property ownership
includes a right to make such a use is the very issue being
contested.
Even if it were more precise and dispositive, ownership could
hardly be a unifying criterion for identifying a body of Property
Law. Ownership or entitlement is a critical element in just about
every legal dispute. In many cases, though, it doesn't come
up. For example, in personal injury cases in torts, we rarely ask
whether the plaintiff owned the part of her body that was
injured. But the right to the integrity of that body part is indeed
the very entitlement the law protects. Just because a thing is so
well settled as not to be raised does not mean that it is not essential
to the law. Moreover, there are cases in which the kind of
ownership of one's body that is asserted is not so obviously of a
sort the law should recognize, and so the entitlement question
becomes important. (Do you own your body in the sense that you
can sell it? In what circumstances?) The point is only that the
issue of entitlement or ownership is critical to just about every
contract, tort, and criminal case, even if it is often not
disputed. This textbook and course focus on areas of the law in
which what it is that the law protects, what the entitlement is and
who has it, is at issue.
The Toolbox
The substantive topics we will study are all interesting in their own
ways, but we are not studying them to become practice
experts. The primary purpose of law school training, in my view, is
not to learn the law itself but to learn how to learn it. That is, you

xiii

need to become familiar with the techniques of legal reasoning, the
structure of the legal system, and the major analytical tools of the
law. With these in hand, it becomes possible to read judicial
opinions and statutes quickly and to synthesize new arguments. In
practice, you will work on cases raising issues you have not studied,
and, even if have, you will do new research to understand the
specific state of the law as it applies to your case. Doing law is a
process, not a recalling of memorized facts.
With this in mind, our second and most important purpose is to
build a toolbox of big ideas that appear over and over again, across
the substantive categories. During this semester, we will focus on
several,
including:
* Reasoning from bare precedent, using decided cases like puzzle
pieces that must be fit together;
* Instrumentalism, the idea that legal rules should be crafted to
attain some public purpose;
* Law and economics, a huge and pervasive topic that we initially
explore using nuisance law;
* The substantive and institutional differences between rules and
standards, which the cases involving possession nicely raise;
* The distinction between natural law and positivist approaches;
* Labor, possession, and communication theories of ownership;
* The use of exclusion (property rights) or governance regimes to
solve coordination problems of users of common resources, which
we explore in the traditional context of oil and other common pool
resources but also in how to design a system of property rights in
ideas and expression -- so-called intellectual property;
* The legal process school's understanding that which institution,
say courts or legislatures, decides a question can be more important
than any arguments concerning the right answer.

xiv

There are more, and which ones your instructor focuses on and the
order in which he or she does so may vary. This book is only a
source from which this very important instruction in using the
tools
of
the
law
can
proceed.
This sort of study takes patience on your part. Lacking the
reassuring order of duty, breach, causation, damages, and defenses,
this course will ask you, yes, to learn what the law is in a number of
areas, but more importantly to deepen your understanding of law's
reasons beyond the intuitions you may now have. You will be
learning new ways to argue, new ways to read arguments. In
Property Law, scanning across the whole field of law, we have the
opportunity to learn not only law's "what" but law's "why."

xv

1. Introduction
1.1. Finders vs. Landowners
Armory v. Delamirie,
1 Strange 505; 93 E.R. 664 (Court of King’s Bench
1722)
PRATT, C.J.
The plaintiff being a chimney sweeper’s boy found a jewel
and carried it to the defendant’s shop (who was a
goldsmith) to know what it was, and delivered it into the
hands of the apprentice, who under pretence of weighing it,
took out the stones, and calling to the master to let him
know it came to three halfpence, the master offered the
boy the money, who refused to take it, and insisted to have
the thing again; whereupon the apprentice delivered him
back the socket without the stones. And now in trover
against the master these points were ruled:
That the finder of a jewel, though he does not by such
finding acquire an absolute property or ownership, yet he
has such a property as will enable him to keep it against all
but the rightful owner, and subsequently may maintain
trover.
That the action well lay against the master, who gives a
credit to his apprentice, and is answerable for his neglect.
As to the value of the jewel several of the trade were
examined to prove what a jewel of the finest water that
would fit the socket would be worth; and the Chief Justice
directed the jury, that unless the defendant did produce the
jewel, and shew it not to be of the finest water, they should
presume the strongest case against him, and make the value
of the best jewels the measure of their damages: which they
accordingly did.

Bridges v. Hawkesworth, 21 L.J. (Q.B.) 75
(1851)(footnotes omitted and paragraph breaks added)
This was an appeal brought by the plaintiff from the
Westminster County Court.
The plaintiff was a traveller for a large firm with which the
defendant, who was a shopkeeper, had dealings. On one
occasion (October 1847) the plaintiff who had called at the
defendant’s on business, on leaving the defendant’s shop
noticed and picked up a small parcel which was lying an the
shop floor. He immediately shewed it to the shopman, and
on opening it found it contained bank notes to the value of
55 pounds. The plaintiff told the defendant who came in
that he had found a parcel of notes, and requested the
defendant to keep them to deliver to the owner. The
defendant advertised the finding of them in the
newspapers, stating that they should be restored to the
owner on his properly describing them and paying the
expenses. Three years having elapsed and no owner
appearing to claim them, the plaintiff applied to the
defendant for them, offering to pay the expense of the
advertisements, and to indemnify the defendant against any
claim in respect of them. The defendant refused to deliver
them up, and the plaintiff consequently brought a plaint in
the County Court of Westminster to recover the notes. The
Judge decided that the defendant was entitled to keep them
as against the plaintiff, and gave judgment for the
defendant. It was found in the case that the plaintiff when
he handed the notes over to the defendant to deliver to the
true owner, did not intend to give up any title to them that
he might possess.
Judgment was now delivered by PATTESON, J.
The notes which are the subject of this action were
evidently dropped by mere accident in the shop of the
defendant by the owner of them. The facts do not warrant
the supposition that they had been deposited there

2

intentionally, nor has the case been at all put upon that
ground. The plaintiff found them on the floor, they being
manifestly lost by some one. The general right of the finder
to any article which has been lost as against all the world
except the true owner, was established in the case of Armory
v. Delamirie, which has never been disputed. This right
would clearly have accrued to the plaintiff had the notes
been picked up by him outside the shop of the defendant;
and if he once had the right, the case finds that he did not
intend by delivering the notes to the defendant to waive the
title (if any) which he had to them, but they were handed to
the defendant merely for the purpose of delivering them to
the owner should he appear. Nothing that was done
afterwards has altered this state of things; the
advertisements indeed in the newspapers referring to the
defendant had the same object: the plaintiff has tendered
the expense of those advertisements to the defendant, and
offered him an indemnity against any claim to be made by
the real owner, and has demanded the notes.
The case, therefore, resolves itself into the single point, on
which it appears that the learned Judge decided it: namely,
whether the circumstance of the notes being found inside
the defendant’s shop, gives him, the defendant, the right to
have them as against the plaintiff who found them. There is
no authority to be found in our law directly in point.
Perhaps the nearest case is that of Merry v. Green, but it
differs in many respects from the present. We were referred
in the course of the argument to the learned work of Von
Savigny, edited by Chief Justice Perry, but even this work,
full as it is of subtle distinctions and nice reasonings, does
not afford a solution of the present question.
It was well asked on the argument, if the defendant has the
right, when did it accrue to him? If at all, it must have been
antecedent to the finding by the plaintiff, for that finding
could not give the defendant any right. If the notes had
been accidentally kicked into the street, and then found by

3

some one passing by, could it be contended that the
defendant was entitled to them, from the mere fact of their
having been originally dropped in his shop? If the discovery
had not been communicated to the defendant, could the
real owner have had any cause of action against him,
because they were found in his house? Certainly not. The
notes never were in the custody of the defendant, nor
within the protection of his house before they were found,
as they would have been had they been intentionally
deposited there, and the defendant has come under no
responsibility, except from the communication made to
him by the plaintiff, the finder, and the steps taken by way
of advertisement. These steps were really taken by the
defendant as the agent of the plaintiff, and he has been
offered an indemnity, the sufficiency of which is not
disputed.
We find therefore, no circumstances in this case to take it
out of the general rule of law, that the finder of a lost article
is entitled to it as against all parties except the real owner
and we think that rule must prevail, and that the learned
Judge was mistaken in holding that the place in which they
were found makes any legal difference. Our judgment
therefore is, that the plaintiff is entitled to these notes as
against the defendant, and that the judgment of the Court
below must be reversed, and judgment given for the
plaintiff for 50 pounds. The plaintiff to have the costs of
the appeal.
Judgment reversed.
McAvoy v. Medina, 11 Allen 548 (1866)
A stranger in a shop who first sees a pocket-book which
has been accidentally left by another upon a table there is
not authorized to take and hold possession of it, as against
the shop-keeper.
TORT to recover a sum of money found by the plaintiff in
the shop of the defendant.

4

At the trial in the superior court, before Morton, J., it
appeared that the defendant was a barber, and the plaintiff,
being a customer in the defendant’s shop, saw and took up
a pocket-book which was lying upon a table there, and said,
“See what I have found.” The defendant came to the table
and asked where he found it. The plaintiff laid it back in the
same place and said, “I found it right there.” The defendant
then took it and counted the money, and the plaintiff told
him to keep it, and if the owner should come to give it to
him; and otherwise to advertise it; which the defendant
promised to do. Subsequently the plaintiff made three
demands for the money, and the defendant never claimed
to hold the same till the last demand. It was agreed that the
pocket-book was placed upon the table by a transient
customer of the defendant and accidentally left there, and
was first seen and taken up by the plaintiff, and that the
owner had not been found.
The judge ruled that the plaintiff could not maintain his
action, and a verdict was accordingly returned for the
defendant; and the plaintiff alleged exceptions.
DEWEY, J.
It seems to be the settled law that the finder of lost
property has a valid claim to the same against all the world
except the true owner, and generally that the place in which
it is found creates no exception to this rule. 2 Parsons on
Con. 97. Bridges v. Hawkesworth, 7 Eng. Law & Eq. R. 424.
But this property is not, under the circumstances, to be
treated as lost property in that sense in which a finder has a
valid claim to hold the same until called for by the true
owner. This property was voluntarily placed upon a table in
the defendant’s shop by a customer of his who accidentally
left the same there and has never called for it. The plaintiff
also came there as a customer, and first saw the same and
took it up from the table. The plaintiff did not by this
acquire the right to take the property from the shop, but it

5

was rather the duty of the defendant, when the fact became
thus known to him, to use reasonable care for the safe
keeping of the same until the owner should call for it. In
the case of Bridges v. Hawkesworth the property, although
found in a shop, was found on the floor of the same, and
had not been placed there voluntarily by the owner, and the
court held that the finder was entitled to the possession of
the same, except as to the owner. But the present case
more resembles that of Lawrence v. The State, 1 Humph.
(Tenn.) 228, and is indeed very similar in its facts. The
court there take a distinction between the case of property
thus placed by the owner and neglected to be removed, and
property lost. It was there held that “to place a pocketbook upon a table and to forget to take it away is not to
lose it, in the sense in which the authorities referred to
speak of lost property.”
We accept this as the better rule, and especially as one
better adapted to secure the rights of the true owner.
In view of the facts of this case, the plaintiff acquired no
original right to the property, and the defendant’s
subsequent acts in receiving and holding the property in the
manner he did does not create any.
Exceptions overruled.
Hamaker v. Blanchard, 90 Pa. 377 (1879)
Before SHARSWOOD, C. J., MERCUR, GORDON,
PAXSON, WOODWARD, TRUNKEY and STERRETT,
JJ.
Error to the Court of Common Pleas of Mifflin county: Of
May Term 1879, No. 57.
Assumpsit by James Blanchard and Sophia, his wife, for the
use of the wife, against W. W. Hamaker.
This was an appeal from the judgment of a justice of the
peace. The material facts were these: Sophia Blanchard was
a domestic servant in a hotel in Lewistown, of which the

6

defendant was the proprietor. While thus employed, she
found in the public parlor of the hotel, three twenty-dollar
bills. On finding the money, she went with it to Mr.
Hamaker, and informed him of the fact, and upon his
remarking that he thought it belonged to a whip agent, a
transient guest of the hotel, she gave it to him, for the
purpose of returning it to said agent. It was afterwards
ascertained that the money did not belong to the agent, and
no claim was made for it by anyone. Sophia afterwards
demanded the money of defendant, who refused to deliver
it to her. Defendant admitted that he still had the custody
of the money.
In the general charge the court (Bucher, P. J.,) inter alia,
said:
If you find that this was lost money,
Hamaker did not lose it, and that it
never belonged to him, but that it
belonged to some one else who has
not appeared to claim it, then you
ought to find for the plaintiff, on the
principle that the finder of a lost
chattel is entitled to the possession and
use of it as against all the world except
the true owner. * * * The counsel for
the defendant asks us to say that as the
defendant was the proprietor of a
hotel and the money was found
therein, the presumption of law is that
it belonged to a guest, who had lost it,
and that the defendant has a right to
retain it as against this woman, the
finder, to await the demand of the true
owner. I decline to give you such
instructions; but charge you that under
the circumstances there is no
presumption of law that this money
was lost by a guest at the hotel, and
that the defendant is entitled to keep it

7

as against this woman for the true
owner.
The verdict was for the plaintiffs for $60, with interest, and
after judgment thereon, defendant took this writ and
assigned for error the foregoing portions of the charge.
H. J. Culbertson, for plaintiff in error. It is only in the
absence of all protection or responsibility in reference to a
lost chattel, that the place in which a lost article is found
does not constitute any exception to the general rule of law,
that the finder is entitled to it as against all persons except
the true owner: Bridges v. Hawkesworth, 7 Eng. Law and Eq.
Rep. 430; McAvoy v. Medina, 11 Allen (Mass.) 549. An
innkeeper is liable for the goods of his guest, including
money, and if they are brought within the inn a
responsibility is created: Houser v. Tully, 12 P. F. Smith 92;
Packard v. Northcraft’s Administrators, 2 Metc. (Ky.) 439;
Berkshire Woollen Co. v. Proctor, 7 Cush. 417; Edwards on
Bailments, 2d ed., sect. 459; Story on Bailments, sect. 471; Jones
on Bailments 95; Addison on Torts, Wood’s ed., vol. 1, pp. 755
and 752. He is bound to keep honest servants, and is
responsible for the honesty of his servants and his guests:
Houser v. Tully, supra; Gile v. Libby & Whitney, 36 Barb. (N.
Y.) 70; Story on Bailments, supra. To allow servants to retain
money found in an inn would encourage them to be
dishonest. The better rule is to require them to deliver
property so found to their employer, to be held for the true
owner: Mathews v. Harsell, 1 E. D. Smith’s Rep. (N. Y.) 394.
An innkeeper is held to a rigid responsibility in the care of
his guests’ property, and it is a safe presumption of law that
money found in an inn belonged to a guest, and that the
innkeeper has a right to the custody of it as against his
servant, the finder, to await the true owner, and if the latter
does not make claim thereto, then he should have the
money who bears the responsibility.

8

J. A. McKee, for defendants in error. There is no evidence
that the money belonged to a guest of the hotel.
An innkeeper is under no obligation to one who casually
steps into his house to transact business, using his parlor as
a matter of convenience, and the innkeeper under such
circumstances would not be liable for the loss of any
property or money left there without his knowledge or
consent: Story on Bailments, sec. 477; 2 Kent’s Com. 595.
There is no presumption of law that the money was lost by
a guest. If this money was found in such a situation as to
clearly indicate that it was lost, and not voluntarily placed
where it was found, by the owner, by mistake or
forgetfulness, then the finder is entitled to it: McAvoy v.
Medina, supra.
MR. JUSTICE TRUNKEY delivered the opinion of the court,
June 9th 1879.
It seems to be settled law that the finder of lost property
has a valid claim to the same against all the world, except
the true owner, and generally that the place in which it is
found creates no exception to this rule. But property is not
lost, in the sense of the rule, if it was intentionally laid on a
table, counter or other place, by the owner, who forgot to
take it away, and in such case the proprietor of the premises
is entitled to retain the custody. Whenever the surroundings
evidence that the article was deposited in its place, the
finder has no right of possession against the owner of the
building: McAvoy v. Medina, 11 Allen (Mass.) 548. An article
casually dropped is within the rule. Where one went into a
shop, and as he was leaving picked up a parcel of bank
notes, which was lying on the floor, and immediately
showed them to the shopman, it was held that the facts did
not warrant the supposition that the notes had been
deposited there intentionally, they being manifestly lost by
some one, and there was no circumstance in the case to
take it out of the general rule of law, that the finder of a

9

lost article is entitled to it as against all persons, except the
real owner: Bridges v. Hawkesworth, 7 Eng. Law & Eq. R. 424.
The decision in Mathews v. Harsell, 1 E. D. Smith (N. Y.)
393, is not in conflict with the principle, nor is it an
exception. Mrs. Mathews, a domestic in the house of Mrs.
Barmore, found some Texas notes, which she handed to
her mistress, to keep for her. Mrs. Barmore afterwards
intrusted the notes to Harsell, for the purpose of
ascertaining their value, informing him that she was acting
for her servant, for whom she held the notes. Harsell sold
them, and appropriated the proceeds; whereupon Mrs.
Mathews sued him and recovered their value, with interest
from date of sale. Such is that case. True, Woodruff, J.,
says:
I am by no means prepared to hold
that a house-servant who finds lost
jewels, money or chattels, in the house
of his or her employer, acquires any
title even to retain possession against
the will of the employer. It will tend
much more to promote honesty and
justice to require servants in such cases
to deliver the property so found to the
employer, for the benefit of the true
owner.
To that remark, foreign to the case as understood by
himself, he added the antidote:
And yet the Court of Queen’s Bench
in England have recently decided that
the place in which a lost article is
found, does not form the ground of
any exception to the general rule of
law, that the finder is entitled to it
against all persons, except the owner.

10

His views of what will promote honesty and justice are
entitled to respect, yet many may think Mrs. Barmore’s
method of treating servants far superior.
The assignments of error are to so much of the charge as
instructed the jury that, if they found the money in question
was lost, the defendant had no right to retain it because
found in his hotel, the circumstances raising no
presumption that it was lost by a guest, and their verdict
ought to be for the plaintiff. That the money was not
voluntarily placed where it was found, but accidentally lost,
is settled by the verdict. It is admitted that it was found in
the parlor, a public place open to all. There is nothing to
indicate whether it was lost by a guest, or a boarder, or one
who had called with or without business. The pretence that
it was the property of a guest, to whom the defendant
would be liable, is not founded on an act or circumstance in
evidence.
Many authorities were cited, in argument, touching the
rights, duties and responsibilities of an innkeeper in relation
to his guests; these are so well settled as to be
uncontroverted. In respect to other persons than guests, an
innkeeper is as another man. When money is found in his
house, on the floor of a room common to all classes of
persons, no presumption of ownership arises; the case is
like the finding upon the floor of a shop. The research of
counsel failed to discover authority that an innkeeper shall
have an article which another finds in a public room of his
house, where there is no circumstance pointing to its loss
by a guest. In such case the general rule should prevail. If
the finder be an honest woman, who immediately informs
her employer, and gives him the article on his false pretence
that he knows the owner and will restore it, she is entitled
to have it back and hold it till the owner comes. A rule of
law ought to apply to all alike. Persons employed in inns
will be encouraged to fidelity by protecting them in equality

11

of rights with others. The learned judge was right in his
instructions to the jury.
Judgment affirmed.
MERCUR, J., dissents.
Lawrence Solum, Legal Theory Lexicon: Fit and Justification
Introduction
In 1975, Ronald Dworkin wrote Hard Cases (88 Harvard Law
Review 1057 (1975) reprinted in Ronald Dworkin, Taking Rights
Seriously ch 4 (Harvard University Press, 1977)). This is one of the
most famous and influential articles in contemporary legal theory,
and I would put it very high on my recommended legal-theory
reading list. Lot’s of Dworkin’s ideas are very controversial, but
one of his claims has become part of the way that most legal
academics think about the law in general and the enterprise of
judging in particular. I am referring to Dworkin’s distinction
between “fit” and justification” and his claim that when judges
decide hard cases, they choose the interpretation of the law that
best fits and justifies the existing legal landscape–the constitution,
statutes, regulations, and common law.
As always, the Legal Theory Lexicon is aimed at law students
(especially first year law students) with an interest in legal theory. I
know you are all very busy at this time of year, so I will do my best
to be concise.
The Basic Idea
Suppose a judge is deciding a hard case. It could be a common law
case or a constitutional case or a statutory case. How do judges
approach this task when they are confronted with a case in which
the law is up for grabs? That is, how do judges decide cases where
there is an unsettled question of law? Dworkin’s basic idea is that
the process of deciding a hard case has two dimensions–fit and
justification. First, the judge might ask herself, “Of all the possible
interpretations of the law that I could adopt as the basis for my
decision, which one is consistent with the theory that best fits the
existing legal landscape. Of all the rules I could adopt in this case,

12

which ones are consistent with the relevant constitutional and
statutory provisions and with the precedent.” When the judge had
identified the alternatives that meet the criterion of fit, it is possible
that there will be more than one possibility that fits. If so, then the
judge can go on to ask the question, “Of the interpretations of the
existing law that fit the constitution, statutes, and case law, which is
the best interpretation? Which of the possible legal rules that I
could adopt is most consistent with the normative theory that
provides the best justification for the law as a whole.
Fit
What does it mean to say that a given rule fits the legal landscape?
Suppose you are a judge deciding whether your jurisdiction will
adopt the rule of contributory negligence or will choose instead to
follow the comparative negligence approach. It is possible that only
one of these two rules fits the existing law in your jurisdiction. For
example, if the legislature has mandated the contributory
negligence rule by statute, then as a judge (even a Supreme Court
judge), you would be obliged to follow the statute and decide the
case before you on the basis of contributory negligence. On the
other hand, suppose you are in a newly created jurisdiction. No
statute or binding precedent requires either comparative or
contributory negligence. Both rules fit the existing legal landscape.
In that case, Dworkin argues, you would need to decide a question
of justification.
Justification
What does it mean to say that a judge might prefer one rule over
another on the basis of the criterion of justification? Let’s continue
with our example of the choice between contributory and
comparative negligence. Since there is no statute or precedent that
compels (or strongly guides) the choice, the judge must turn to
some other basis in order to make her decision. She will need to get
normative, i.e., to consider the normative justifications for tort law.
Simplifying greatly, let’s suppose our judge decides that the tort of
negligence is best understood as a system of compensation and
“risk spreading.” She might then reason that the comparative

13

negligence rule does a better job of serving this purpose than does
a contributory negligence rule. Contributory negligence allows
losses to go uncompensated when the plaintiff (victim) caused any
of her own loss; comparative negligence does a better job of
spreading the risk of accidents. [I know that this is a very crude
argument, and I’m sure all of you can do better.]
In other words, the judge asks the question, “What normative
theory best justifies the existing law and negligence?” And then
proceeds to the question, “Given that justification of tort law,
which of the alternative rules that I could apply to the case before
me best serves the purposes of tort law?”
Two Kinds of Justification: Principle and Policy
In Hard Cases, Dworkin identified two different kinds of arguments
that can be used to justify the law. He called these two different
types arguments of “principle” and “policy.” As understood by
Dworkin, arguments of principle are arguments that appeal to ideas
about fairness and rights. If you would like to know more about
arguments of principle, a good place to begin is with the Legal
Theory Lexicon entry on Deontlogy.
Arguments of policy, on the other hand, appeal to consequences.
For example, if you argued that a comparative negligence rule is
better than a contributory negligence rule because it provides
optimal incentives for taking precautions against accidents, you
would have made an argument of policy in Dworkin’s sense.
If you are interested in the theoretical basis for arguments of
policy, you could take a look at the Legal Theory Lexicon entry on
Utilitarianism.
Dworkin himself argued that judges should consider arguments of
principle and should not decide cases on the basis of arguments of
policy. That feature of his theory is hugely controversial–as you
could guess if, like most law students, you’ve heard endless
discussion of policy in the classroom. But Dworkin could be right
about “fit and justification,” even if he is wrong that the dimension
of justification is limited to principle and excludes policy.

14

Conclusion
It is very difficult to generalize about law school exams; they vary
enormously. But many standard issue spotting essay questions have
built into them a “hard case,” an aspect of the fact pattern that is
intended to trigger your discussion of the question, “What should
the rule be?,” with respect to some controversial legal issue. If you
try to answer the question, “What should the rule be?,” by telling
your instructor, “Here is the majority rule,” or “Here are two
alternative rules; I don’t know which one is the law, you will have
missed the point of the question!
And that’s where Dworkin comes in. You can use “fit and
justification” as the basis for organizing your answer to a “What
should the law be?” question. Begin with fit. Which possible rules
are consistent with the settled law? Then move to justification. Of
the rules that fit, which is the best rule? Now list the arguments of
principle and policy for and against each of the plausible
candidates. Be sure to come to a conclusion. That is, end with
something like, “Adopting a rule of comparative negligence is
required by the theory that best fits and justifies the existing law of
torts.”
Hannah v. Peel, 1945 K.B. 509 (King’s Bench Div.)
ACTION tried by Birkett J.
On December 13, 1938, the freehold of Gwernhaylod
House, Overton-on-Dee, Shropshire, was conveyed to the
defendant, Major Hugh Edward Ethelston Peel, who from
that time to the end of 1940 never himself occupied the
house and it remained unoccupied until October 5, 1939,
when it was requisitioned, but after some months was
released from requisition. Thereafter it remained
unoccupied until July 18, 1940, when it was again
requisitioned, the defendant being compensated by a
payment at the rate of 250£ a year. In August, 1940, the
plaintiff, Duncan Hannah, a lance-corporal, serving in a
battery of the Royal Artillery, was stationed at the house
and on the 21st of that month, when in a bedroom, used as

15

a sick-bay, he was adjusting the black-out curtains when his
hand touched something on the top of a window-frame,
loose in a crevice, which he thought was a piece of dirt or
plaster. The plaintiff grasped it and dropped it on the
outside window ledge. On the following morning he saw
that it was a brooch covered with cobwebs and dirt. Later,
he took it with him when he went home on leave and his
wife having told him it might be of value, at the end of
October, 1940, he informed his commanding officer of his
find and, on his advice, handed it over to the police,
receiving a receipt for it. In August, 1942, the owner not
having been found the police handed the brooch to the
defendant, who sold it in October, 1942, for 66£, to
Messrs. Spink & Son, Ltd., of London, who resold it in the
following month for 88£. There was no evidence that the
defendant had any knowledge of the existence of the
brooch before it was found by the plaintiff. The defendant
had offered the plaintiff a reward for the brooch, but the
plaintiff refused to accept this and maintained throughout
his right to the possession of the brooch as against all
persons other than the owner, who was unknown. By a
letter, dated October 5, 1942, the plaintiff’s solicitors
demanded the return of the brooch from the defendant,
but it was not returned and on October 21, 1943, the
plaintiff issued his writ claiming the return of the brooch,
or its value, and damages for its detention. By his defence,
the defendant claimed the brooch on the ground that he
was the owner of Gwernhaylod House and in possession
thereof.
Scott Cairns for plaintiff. The plaintiff, as the finder of this
brooch, is entitled to its possession as against all persons
other than the owner, who is unknown: Armory v.
Delamirie.1 The case of Bridges v. Hawkesworth2 is

1 (1722) 1 Str. 505.
2 (1851) 21 L. J. (Q. B.) 75; 15 Jur. 1079.

16

precisely in point, for in that case the finder of a parcel of
bank-notes found it on the floor of a shop. The defendant
here had no knowledge of the existence of the brooch, as
the shopkeeper in Bridges v. Hawkesworth3 had no
knowledge of the existence of the parcel of banknotes. As
Professor A. L. Goodhart pointed out in his “Three Cases
on Possession,” in “Essays in Jurisprudence and the
Common Law” (1931), at pp. 76-90, Mr. Justice O. W.
Holmes, Sir Frederick Pollock and Sir John Salmond all
consider the decision in Bridges v. Hawkesworth4 to be
correct; Mr. Justice Holmes on the ground that “the
shopkeeper, not knowing of the thing, could not have the
intent to appropriate it, and, having invited the public to his
shop he could. not have the intent to exclude them from
it”;5 Sir Frederick Pollock on the lack of de facto control by
the shopkeeper;6 and Sir John Salmond on the absence of
the animus possidendi.7 Lord Russell of Killowen C.J., in
South Staffordshire Water Co. v. Sharman8 said that the
ground of the decision in Bridges v. Hawkesworth9 as was
pointed out by Patteson J. was that the notes, being
dropped in the public part of the shop, were never in the
custody of the shopkeeper, or “within the protection of his
house.” But that was not so, since Patteson J. said in the
earlier case that the county court judge, whose decision was
appealed, was mistaken in holding that the place in which
the parcel of notes was found made any difference.10 In

3 (1851) 21 L. J. (Q. B.) 75; 15 Jur. 1079.
4 (1851) 21 L. J. (Q. B.) 75; 15 Jur. 1079.
5 The Common Law (1881) at p. 222.
6 Pollock and Wright on Possession in the Common Law, at p. 37 and seq.
7 Jurisprudence (9th ed.) 381-2.
8 2 Q. B. 44, 47.
9 (1851) 21 L. J. (Q. B.) 75; 15 Jur. 1079.
10 21 L. J. (Q. B.) 78.

17

South Staffordshire Water Co. v. Sharman11 the defendant
while cleaning out, under the plaintiffs’ orders, a pool of
water on their land, found two rings in the mud at the
bottom of the pool. It was held that the plaintiffs were
entitled to the possession of the rings. It is a sufficient
explanation of that case that Sharman, as the servant or
agent of the water company, though he was the first to
obtain the custody of the rings, obtained possession of
them for his employers, the water company, and could
claim no title to them for himself. It may be that a man
owns everything which is attached to or under his land: see
Elwes v. Brigg Gas Co.12 But a man does not of necessity
own or possess a chattel which is lying unattached on the
surface of his land. The defendant did not know of the
existence of this brooch and had never exercised any kind
of control over it. The plaintiff, therefore, as its finder, is
entitled to its possession.
Binney for defendant. The defendant was entitled to the
possession of the brooch because, when it was found, it
was on his land. Lord Russell of Killowen C.J. said in South
Staffordshire Water Co. v. Sharman:13 “The general
principle seems to me to be that where a person has
possession of house or land, with a manifest intention to
exercise control over it and the things which may be upon
it or in it, then, if something is found on that land, whether
by an employee of the owner or by a stranger, the
presumption is that the possession of that thing is in the
owner of the locus in quo.” If that statement of law is
correct, the defendant here should succeed. The owner of
this land does not lose his right to the chattels found on or

11 2 Q. B. 44, 47.
12 (1886) 33 Ch. D. 562.
13 2 Q. B. 44, 47.

18

in it by letting the land: Elwes v. Brigg Gas Co.14 The
brooch here was found in a crevice of masonry and the
facts are similar to those in South Staffordshire Water Co.
v. Sharman.15 In neither case did the owner of the land
know of the existence of the thing found. Bridges v.
Hawkesworth16 can be distinguished on the ground that the
parcel of notes was found in a part of the shop to which
the public had access - in effect they were found in a public
place. If Bridges v. Hawkesworth17 is not distinguishable, it
has been overruled by South Staffordshire Water Co. v.
Sharman18 and Elwes v. Briggs Gas Co.19
Cur. adv. vult.
June 13.
BIRKETT J.
There is no issue of fact in this case between the parties. As
to the issue in law, the rival claims of the parties can be
stated in this way: The plaintiff says: “I claim the brooch as
its finder and I have a good title against all the world, save
only the true owner.” The defendant says: “My claim is
superior to yours inasmuch as I am the freeholder. The
brooch was found on my property, although I was never in
occupation, and my title, therefore, ousts yours and in the
absence of the true owner I am entitled to the brooch or its
value.” Unhappily the law on this issue is in a very
uncertain state and there is need of an authoritative
decision of a higher court. Obviously if it could be said
with certainty that this is the law, that the finder of a lost

14 (1886) 33 Ch. D. 562.
15 2 Q. B. 44, 47.
16 21 L. J. (Q. B.) 75; 15 Jur. 1079.
17 21 L. J. (Q. B.) 75; 15 Jur. 1079.
18 2 Q. B. 44, 47.
19 (1886) 33 Ch. D. 562.

19

article, wherever found, has a good title against all the
world save the true owner, then, of course, all my
difficulties would be resolved; or again, if it could be said
with equal certainty that this is the law, that the possessor
of land is entitled as against the finder to all chattels found
on the land, again my difficulties would be resolved. But,
unfortunately, the authorities give some support to each of
these conflicting propositions.
In the famous case of Armory v. Delamirie,20 the plaintiff,
who was a chimney sweeper’s boy, found a jewel and
carried it to the defendant’s shop, who was a goldsmith, in
order to know what it was, and he delivered it into the
hands of the apprentice in the goldsmith’s shop, who made
a pretence of weighing it and took out the stones and called
to the master to let him know that it came to threehalfpence. The master offered the boy the money who
refused to take it and insisted on having the jewel again.
Whereupon the apprentice handed him back the socket of
the jewel without the stones, and an action was brought in
trover against the master, and it was ruled “that the finder
of a jewel, though he does not by such finding acquire an
absolute property or ownership, yet he has such a property
as will enable him to keep it against all but the rightful
owner, and consequently may maintain trover.” The case of
Bridges v. Hawkesworth21 is in process of becoming almost
equally as famous because of the disputation which has
raged around it. The headnote in the Jurist is as follows:
“The place in which a lost article is found does not
constitute any exception to the general rule of law, that the
finder is entitled to it as against all persons except the
owner.” The case was in fact an appeal against a decision of
the county court judge at Westminster. The facts appear to
have been that in the year 1847 the plaintiff, who was a

20 1 Str. 505.
21 21 L. J. (Q. B.) 75; 15 Jur. 1079.

20

commercial traveller, called on a firm named Byfield &
Hawkesworth on business, as he was in the habit of doing,
and as he was leaving the shop he picked up a small parcel
which was lying on the floor. He immediately showed it to
the shopman, and opened it in his presence, when it was
found to consist of a quantity of Bank of England notes, to
the amount of 65£. The defendant, who was a partner in
the firm of Byfield & Hawkesworth, was then called, and
the plaintiff told him he had found the notes, and asked the
defendant to keep them until the owner appeared to claim
them. Then various advertisements were put in the papers
asking for the owner, but the true owner was never found.
No person having appeared to claim them, and three years
having elapsed since they were found, the plaintiff applied
to the defendant to have the notes returned to him, and
offered to pay the expenses of the advertisements, and to
give an indemnity. The defendant refused to deliver them
up to the plaintiff, and an action was brought in the county
court of Westminster in consequence of that refusal. The
county court judge decided that the defendant, the
shopkeeper, was entitled to the custody of the notes as
against the plaintiff, and gave judgment for the defendant.
Thereupon the appeal was brought which came before the
court composed of Patteson J. and Wightman J. Patteson J.
said: “The notes which are the subject of this action were
incidentally dropped, by mere accident, in the shop of the
defendant, by the owner of them. The facts do not warrant
the supposition that they had been deposited there
intentionally, nor has the case been put at all upon that
ground. The plaintiff found them on the floor, they being
manifestly lost by someone. The general right of the finder
to any article which has been lost, as against all the world,
except the true owner, was established in the case of
Armory v. Delamirie22 which has never been disputed. This

22 1 Str. 505.

21

right would clearly have accrued to the plaintiff had the
notes been picked up by him outside the shop of the
defendant and if he once had the right, the case finds that
he did not intend, by delivering the notes to the defendant,
to waive the title (if any) which he had to them, but they
were handed to the defendant merely for the purpose of
delivering them to the owner should he appear.” Then a
little later: “The case, therefore, resolves itself into the
single point on which it appears that the learned judge
decided it, namely, whether the circumstance of the notes
being found inside the defendant’s shop gives him, the
defendant, the right to have them as against the plaintiff,
who found them.” After discussing the cases, and the
argument, the learned judge said: “If the discovery had
never been communicated to the defendant, could the real
owner have had any cause of action against him because
they were found in his house? Certainly not. The notes
never were in the custody of the defendant, nor within the
protection of his house, before they were found, as they
would have been had they been intentionally deposited
there; and the defendant has come under no responsibility,
except from the communication made to him by the
plaintiff, the finder, and the steps taken by way of
advertisement. … We find, therefore, no circumstances in
this case to take it out of the general rule of law, that the
finder of a lost article is entitled to it as against all persons
except the real owner, and we think that that rule must
prevail, and that the learned judge was mistaken in holding
that the place in which they were found makes any legal
difference. Our judgment, therefore, is that the plaintiff is
entitled to these notes as against the defendant.”
It is to be observed that in Bridges v. Hawkesworth23 which
has been the subject of immense disputation, neither
counsel put forward any argument on the fact that the

23 21 L. J. (Q. B.) 75; 15 Jur. 1079.

22

notes were found in a shop. Counsel for the appellant
assumed throughout that the position was the same as if
the parcel had been found in a private house, and the
learned judge spoke of “the protection of his” (the
shopkeeper’s) “house.” The case for the appellant was that
the shopkeeper never knew of the notes. Again, what is
curious is that there was no suggestion that the place where
the notes were found was in any way material; indeed, the
judge in giving the judgment of the court expressly
repudiates this and said in terms “The learned judge was
mistaken in holding that the place in which they were
found makes any legal difference.” It is, therefore, a little
remarkable that in South Staffordshire Water Co. v.
Sharman,24 Lord Russell of Killowen C.J. said: “The case of
Bridges v. Hawkesworth25 stands by itself, and on special
grounds; and on those grounds it seems to me that the
decision in that case was right. Someone had accidentally
dropped a bundle of banknotes in a public shop. The
shopkeeper did not know they had been dropped, and did
not in any sense exercise control over them. The shop was
open to the public, and they were invited to come there.”
That might be a matter of some doubt. Customers were
invited there, but whether the public at large was, might be
open to some question. Lord Russell continued: “A
customer picked up the notes and gave them to the
shopkeeper in order that he might advertise them. The
owner of the notes was not found, and the finder then
sought to recover them from the shopkeeper. It was held
that he was entitled to do so, the ground of the decision
being, as was pointed out by Patteson J., that the notes,
being dropped in the public part of the shop, were never in
the custody of the shopkeeper, or ‘within the protection of
his house’.” Patteson J. never made any reference to the

24 2 Q. B. 47.
25 21 L. J. (Q. B.) 75; 15 Jur. 1079.

23

public part of the shop and, indeed, went out of his way to
say that the learned county court judge was wrong in
holding that the place where they were found made any
legal difference.
Bridges v. Hawkesworth26 has been the subject of
considerable comment by text-book writers and, amongst
others, by Mr. Justice Oliver Wendell Holmes, Sir Frederick
Pollock and Sir John Salmond. All three agree that the case
was rightly decided, but they differ as to the grounds on
which it was decided and put forward grounds, none of
which, so far as I can discover, were ever advanced by the
judges who decided the case. Mr. Justice Oliver Wendell
Holmes wrote:27 “Common law judges and civilians would
agree that the finder got possession first and so could keep
it as against the shopkeeper. For the shopkeeper, not
knowing of the thing, could not have the intent to
appropriate it, and, having invited the public to his shop, he
could not have the intent to exclude them from it.” So he
introduces the matter of two intents which are not referred
to by the judges who heard the case. Sir Frederick Pollock,
whilst he agreed with Mr. Justice Holmes that Bridges v.
Hawkesworth28 was properly decided wrote:29 “In such a
case as Bridges v. Hawkesworth,30 where a parcel of
banknotes was dropped on the floor in the part of a shop
frequented by customers, it is impossible to say that the
shopkeeper has any possession in fact. He does not expect
objects of that kind to be on the floor of his shop, and
some customer is more likely than the shopkeeper or his
servant to see and take them up if they do come there.” He

26 21 L. J. (Q. B.) 75; 15 Jur. 1079.
27 The Common Law (1881) at p. 222.
28 21 L. J. (Q. B.) 75; 15 Jur. 1079.
29 Possession in the Common Law (Pollock and Wright) at p. 39.
30 21 L. J. (Q. B.) 75; 15 Jur. 1079.

24

emphasizes the lack of de facto control on the part of the
shopkeeper. Sir John Salmond wrote:31 “In Bridges v.
Hawkesworth32 a parcel of banknotes was dropped on the
floor of the defendant’s shop, where they were found by
the plaintiff, a customer. It was held that the plaintiff had a
good title to them as against the defendant. For the
plaintiff, and not the defendant, was the first to acquire
possession of them. The defendant had not the necessary
animus, for he did not know of their existence.” Professor
Goodhart, in our own day, in his work “Essays in
Jurisprudence and the Common Law” (1931) has put
forward a further view that perhaps Bridges v.
Hawkesworth33 was wrongly decided. It is clear from the
decision in Bridges v. Hawkesworth34 that an occupier of
land does not in all cases possess an unattached thing on
his land even though the true owner has lost possession.
With regard to South Staffordshire Water Co. v. Sharman,35
the first two lines of the headnote are: “The possessor of
land is generally entitled, as against the finder, to chattels
found on the land.” I am not sure that this is accurate. The
facts were that the defendant Sharman, while cleaning out,
under the orders of the plaintiffs, the South Staffordshire
Water Company, a pool of water on their land, found two
rings embedded in the mud at the bottom of the pool. He
declined to deliver them to the plaintiffs, but failed to
discover the real owner. In an action brought by the
company against Sharman in detinue it was held that the
company were entitled to the rings. Lord Russell of

31 Jurisprudence (9th ed.) 382.
32 21 L. J. (Q. B.) 75; 15 Jur. 1079.
33 21 L. J. (Q. B.) 75; 15 Jur. 1079.
34 21 L. J. (Q. B.) 75; 15 Jur. 1079.
35 2 Q. B. 44.

25

Killowen C.J. said:36 “The plaintiffs are the freeholders of
the locus in quo, and as such they have the right to forbid
anybody coming on their land or in any way interfering
with it. They had the right to say that their pool should be
cleaned out in any way that they thought fit, and to direct
what should be done with anything found in the pool in the
course of such cleaning out. It is no doubt right, as the
counsel for the defendant contended, to say that the
plaintiffs must show that they had actual control over the
locus in quo and the things in it; but under the
circumstances, can it be said that the Minster Pool and
whatever might be in that pool were not under the control
of the plaintiffs? In my opinion they were. … The principle
on which this case must be decided, and the distinction
which must be drawn between this case and that of Bridges
v. Hawkesworth,37 is to be found in a passage in Pollock
and Wright’s ‘Essay on Possession in the Common Law,’ p.
41: ‘The possession of land carries with it in general, by our
law, possession of everything which is attached to or under
that land, and, in the absence of a better title elsewhere, the
right to possess it also’.” If that is right, it would clearly
cover the case of the rings embedded in the mud of the
pool, the words used being “attached to or under that
land.” Lord Russell continued: “‘And it makes no
difference that the possessor is not aware of the thing’s
existence. … It is free to anyone who requires a specific
intention as part of a de facto possession to treat this as a
positive rule of law. But it seems preferable to say that the
legal possession rests on a real de facto possession
constituted by the occupier’s general power and intent to
exclude unauthorized interference.’ That is the ground on
which I prefer to base my judgment. There is a broad
distinction between this case and those cited from

36 Ibid. 46.
37 21 L. J. (Q. B.) 75; 15 Jur. 1079.

26

Blackstone. Those were cases in which a thing was cast into
a public place or into the sea - into a place, in fact, of which
it could not be said that anyone had a real de facto
possession, or a general power and intent to exclude
unauthorized interference.” Then Lord Russell cited the
passage which I read earlier in this judgment and
continued: “It is somewhat strange” - I venture to echo
those words - “that there is no more direct authority on the
question; but the general principle seems to me to be that
where a person has possession of house or land, with a
manifest intention to exercise control over it and the things
which may be upon or in it, then, if something is found on
that land, whether by an employee of the owner or by a
stranger, the presumption is that the possession of that
thing is in the owner of the locus in quo.” It is to be
observed that Lord Russell there is extending the meaning
of the passage he had cited from Pollock and Wright’s
essay on “Possession in the Common Law,” where the
learned authors say that the possession of land carries with
it possession of everything which is attached to or under
that land. Then Lord Russell adds possession of everything
which may be on or in that land. South Staffordshire Water
Co. v. Sharman38 which was relied on by counsel for the
defendant, has also been the subject of some discussion. It
has been said that it establishes that if a man finds a thing
as the servant or agent of another, he finds it not for
himself, but for that other, and indeed that seems to afford
a sufficient explanation of the case. The rings found at the
bottom of the pool were not in the possession of the
company, but it seems that though Sharman was the first to
obtain possession of them, he obtained them for his
employers and could claim no title for himself.

38 2 Q. B. 44.

27

The only other case to which I need refer is Elwes v. Brigg
Gas Co.,39 in which land had been demised to a gas
company for ninety-nine years with a reservation to the
lessor of all mines and minerals. A pre-historic boat
embedded in the soil was discovered by the lessees when
they were digging to make a gasholder. It was held that the
boat, whether regarded as a mineral or as part of the soil in
which it was embedded when discovered, or as a chattel,
did not pass to the lessees by the demise, but was the
property of the lessor though he was ignorant of its
existence at the time of granting the lease. Chitty J. said:40
“The first question which does actually arise in this case is
whether the boat belonged to the plaintiff at the time of the
granting of the lease. I hold that it did, whether it ought to
be regarded as a mineral, or as part of the soil within the
maxim above cited, or as a chattel. If it was a mineral or
part of the soil in the sense above indicated, then it clearly
belonged to the owners of the inheritance as part of the
inheritance itself. But if it ought to be regarded as a chattel,
I hold the property in the chattel was vested in the plaintiff,
for the following reasons.” Then he gave the reasons, and
continued: “The plaintiff then being thus in possession of
the chattel, it follows that the property in the chattel was
vested in him. Obviously the right of the original owner
could not be established; it had for centuries been lost or
barred, even supposing that the property had not been
abandoned when the boat was first left on the spot where it
was found. The plaintiff, then, had a lawful possession,
good against all the world, and therefore the property in the
boat. In my opinion it makes no difference, in these
circumstances, that the plaintiff was not aware of the
existence of the boat.”

39 33 Ch. D. 562.
40 Ibid. 568.

28

A review of these judgments shows that the authorities are
in an unsatisfactory state, and I observe that Sir John
Salmond in his book on Jurisprudence (9th ed., at p. 383),
after referring to the cases of Elwes v. Brigg Gas Co.41 and
South Staffordshire Water Co. v. Sharman,42 said: “Cases
such as these, however, are capable of explanation on other
grounds, and do not involve any necessary conflict either
with the theory of possession or with the cases already
cited, such as Bridges v. Hawkesworth43. The general
principle is that the first finder of a thing has a good title to
it against all but the true owner, even though the thing is
found on the property of another person,” and he cites
Armory v. Delamirie44 and Bridges v. Hawkesworth45 in
support of that proposition. Then he continues: “This
principle, however, is subject to important exceptions, in
which, owing to the special circumstances of the case, the
better right is in him on whose property the thing is
found,” and he names three cases as the principal ones:
“When he on whose property the thing is found is already
in possession not merely of the property, but of the thing
itself; as in certain circumstances, even without specific
knowledge, he undoubtedly may be.” The second limitation
Sir John Salmond puts is: “If anyone finds a thing as the
servant or agent of another he finds it not for himself, but
for his employer.” Then: “A third case in which a finder
obtains no title is that in which he gets possession only
through a trespass or other act of wrongdoing.” It is fairly
clear from the authorities that a man possesses everything
which is attached to or under his land. Secondly, it would
appear to be the law from the authorities I have cited, and

41 33 Ch. D. 562.
42 2 Q. B. 44.
43 21 L. J. (Q. B.) 75; 15 Jur. 1079.
44 1 Str. 504.
45 21 L. J. (Q. B.) 75; 15 Jur. 1079.

29

particularly from Bridges v. Hawkesworth,46 that a man
does not necessarily possess a thing which is lying
unattached on the surface of his land even though the thing
is not possessed by someone else. A difficulty however,
arises, because the rule which governs things an occupier
possesses as against those which he does not, has never
been very clearly formulated in our law. He may possess
everything on the land from which he intends to exclude
others, if Mr. Justice Holmes is right; or he may possess
those things of which he has a de facto control, if Sir
Frederick Pollock is right.
There is no doubt that in this case the brooch was lost in
the ordinary meaning of that term, and I should imagine it
had been lost for a very considerable time. Indeed, from
this correspondence it appears that at one time the
predecessors in title of the defendant were considering
making some claim. But the moment the plaintiff
discovered that the brooch might be of some value, he
took the advice of his commanding officer and handed it to
the police. His conduct was commendable and meritorious.
The defendant was never physically in possession of these
premises at any time. It is clear that the brooch was never
his, in the ordinary acceptation of the term, in that he had
the prior possession. He had no knowledge of it, until it
was brought to his notice by the finder. A discussion of the
merits does not seem to help, but it is clear on the facts that
the brooch was “lost” in the ordinary meaning of that
word; that it was “found” by the plaintiff in the ordinary
meaning of that word, that its true owner has never been
found, that the defendant was the owner of the premises
and had his notice drawn to this matter by the plaintiff,
who found the brooch. In those circumstances I propose

46 21 L. J. (Q. B.) 75; 15 Jur. 1079.

30

to follow the decision in Bridges v. Hawkesworth,47 and to
give judgment in this case for the plaintiff for 66£.

47 21 L. J. (Q. B.) 75; 15 Jur. 1079.

31

Terry v. Lock, 343 Ark. 452 (2001)
McHenry & McHenry Law Firm, by Donna McHenry,
Robert McHenry, & Connie L. Grace, Little Rock, for
appellants.
Grady & Adkisson, P.A., by William C. Adkisson, Conway,
Conway, for appellees.
RAY THORNTON, JUSTICE.
On February 1, 1999, appellants, Joe Terry and David
Stocks, were preparing the Best Western motel in Conway
for renovation. The motel was owned by appellee, Lock
Hospitality Inc., a corporation wholly owned by appellee,
A.D. Lock and his wife. The appellants were removing the
ceiling tiles in room 118, with Mr. Lock also present in the
room. As the ceiling tiles were removed, a cardboard box
was noticed near the heating and air supply vent where it
had been concealed. Appellant Terry climbed a ladder to
reach the box, opened it, and handed it to appellant Stocks.
The box was filled with old, dry and dusty currency in
varying denominations. Mr. Lock took the box and its
contents to his office. Later in the day, appellants contacted
the Conway Police Department and informed them of the
discovery. The investigating officer contacted Mr. Lock,
and the money was counted. The face value of the currency
was determined to be $38,310.00.
Appellants filed a complaint in Faulkner County Chancery
Court, asserting that the currency “being old and fragile is
unique and has numismatic or antique value and may have
a market value in excess of the totality of its denominations
as collector’s funds.” Appellants sought a temporary
restraining order and an injunction, directing appellees to
refrain from spending or otherwise depositing the found
money and to pay all of the money to either appellants or
into the registry of the court. Appellants’ complaint also
urged that under the “clean-up doctrine,” the chancery
court had authority to decide a number of charges

32

sounding in tort. Appellants also sought an order finding
that appellees were holding the money in trust for
appellants.
On the day the complaint was filed, the chancery court
entered a temporary restraining order requiring appellees to
deposit the found money with the registry of the court. On
February 9, 1999, Mr. Lock and Lock Hospitality, Inc., filed
their answer. Appellees raised the defenses of estoppel,
laches, failure of consideration, and fraud in their answer.
Eventually, all of the named appellees other than Mr. Lock
and Lock Hospitality, Inc., were dismissed from the case.
On appeal, appellants now contend that the chancery court
did not have subject-matter jurisdiction to hear and resolve
the issues that they had asked the chancellor to resolve. We
find no merit in this argument and conclude that the
chancery court had jurisdiction under the clean-up doctrine
to resolve the merits of the matters relating to ownership of
the money.
The remaining issue for our review is whether the
chancellor was clearly erroneous in characterizing the found
money as “mislaid” property and consequently that the
interest of Lock Hospitality, Inc., as the owner of the
premises, is superior to the interest of appellants as finders
of the money. We conclude that the chancellor was not
clearly erroneous in finding that the money was mislaid
property, and we affirm.
In their first point on appeal, appellants argue that the trial
court was wholly without subject-matter jurisdiction to
adjudicate the issues involved in this case. We have
previously stated that parties may not consent to a court’s
subject-matter jurisdiction where no such jurisdiction lies,
nor may the jurisdiction be waived. Douthitt v. Douthitt, 326
Ark. 372, 930 S.W.2d 371 (1996). A court must determine if
it has subject-matter jurisdiction of the case before it. Id.
Subject-matter jurisdiction is always open, cannot be

33

waived, can be questioned for the first time on appeal, and
can even be raised by this court. Hamaker v. Strickland, 340
Ark. 593, 12 S.W.3d 210 (2000). In fact, this court has a
duty to determine whether or not we have jurisdiction of
the subject matter of an appeal. Id. Subject-matter
jurisdiction is determined from the pleadings; the
complaint, answer, or cross-complaint. Maroney v. City of
Malvern, 320 Ark. 671, 899 S.W.2d 476(1995). Subjectmatter jurisdiction is tested on the pleadings and not the
proof. Id.
A court of chancery or equity may obtain jurisdiction over
matters not normally within its purview pursuant to the
clean-up doctrine, our long-recognized rule that once a
chancery court acquires jurisdiction for one purpose, it may
decide all other issues. Douthitt, supra. Generally, the cleanup doctrine allows the chancery court, having acquired
jurisdiction for equitable purposes, to retain all claims in an
action and grant all the relief, legal or equitable, to which
the parties in the lawsuit are entitled. See Fulcher v. Dierks
Lumber & Coal Co., 164 Ark. 261, 261 S.W. 645 (1924); see
also Bright v. Gass, 38 Ark.App. 71, 831 S.W.2d 149 (1992).
In Liles v. Liles, 289 Ark. 159, 711 S.W.2d 447 (1986), we
noted that “unless the chancery court has no tenable nexus
whatever to the claim in question we will consider the
matter of whether the claim should have been heard there
to be one of propriety rather than one of subject-matter
jurisdiction.” Id.
We have further noted that an error in bringing a suit in
equity when there is an adequate remedy at law is waived by
failure to move to transfer the cause to the circuit court;
where the adequacy of the remedy at law is the only basis
for questioning equity jurisdiction the chancellor’s decree is
not subject to reversal for failure to transfer the case, unless
the chancery court is wholly incompetent to grant the relief
sought. Titan Oil & Gas, Inc. v. Shipley, 257 Ark. 278, 517
S.W.2d 210 (1974). Some examples of courts granting relief

34

which they were “wholly without jurisdiction” to grant
would be a chancery court trying a criminal case or a
chancery court hearing a probate matter. See Dugal Logging,
Inc. v. Arkansas Pulpwood Co., 66 Ark.App. 22, 988 S.W.2d
25 (1999).
We have also noted that when the issue is whether the
chancery court has jurisdiction because the plaintiff lacks
an adequate remedy at law, we will not allow it to be raised
for the first time on appeal. Liles, supra. It is only when the
court of equity is wholly incompetent to consider the
matter before it that we will permit the issue of competency
to be raised for the first time on appeal. Finally, we have
held that it is a well-settled rule that one who has invoked
the assistance of equity cannot later object to equity’s
jurisdiction unless the subject matter of the suit is wholly
beyond equitable cognizance. Leonards v. E.A. Martin
Machinery Co., 321 Ark. 239, 900 S.W.2d 546 (1995).
Keeping in mind the foregoing applicable principles of law,
we turn to the case now on review. In this case, appellants
filed their complaint in Faulkner County Chancery Court.
Looking at the pleadings filed in this case, we conclude that
the chancery court properly had subject-matter jurisdiction
to address the matter. The appellants’ complaint sought the
following equitable remedies: (1) an injunction; (2) specific
performance; and (3) the imposition of a constructive trust.
Additionally, appellants asserted in their complaint that
they were seeking equitable relief. Specifically, their
complaint states: “the cash money, referred to herein
above, being old and fragile is unique and has numismatic
or antique value and may have fair market value in excess
of the totality of its denominations as collector’s funds and
therefore plaintiffs move for specific performance … .”
From the pleadings, it appears that appellants sought
equitable remedies in the chancery court. As a result, when
the chancery court addressed these remedies, that court
then acquired jurisdiction over the remaining tort claims

35

pursuant to the “clean-up doctrine.” Accordingly, we hold
that the trial court was not wholly without subject-matter
jurisdiction over this case.
The argument that the court should have transferred the
case to circuit court is one of propriety rather than one of
subject-matter jurisdiction. Appellants did not request that
their case be transferred to circuit court at the trial court
level. Because this issue was not raised below we may not
consider it now for the first time on appeal. See, Titan Oil &
Gas, supra; see also Liles, supra. Accordingly, the trial court is
affirmed.
In their second point on appeal, appellants contend that the
trial court’s finding that the property involved in this case
was “mislaid” property was erroneous. Specifically, the trial
court found “that the money in question was intentionally
placed where it was found” and that when “money is
mislaid, the finders would acquire no rights.” The trial
court then concluded that “Lock Hospitality, Inc., as the
owner of the premises is entitled to possession.” Appellants
argue that the found property was not “mislaid property”
but instead was “lost property,” “abandoned property,” or
“treasure trove” and that the trial court’s finding that the
money was “mislaid property” is clearly erroneous. We
disagree.
The standards governing our review of a chancery court
decision are well established. We review chancery cases de
novo on the record, and we do not reverse unless we
determine that the chancery court’s findings of fact were
clearly erroneous. Newberry v. Scruggs, 336 Ark. 570, 986
S.W.2d 853 (1999).
We have not previously analyzed the various distinctions
between different kinds of found property but those
distinctions have been made in the common law, and have
been analyzed in decisions from other jurisdictions. The
Supreme Court of Iowa has explained that “under the

36

common law, there are four categories of found property:
(1) abandoned property, (2) lost property, (3) mislaid
property, and (4) treasure trove.” Benjamin v. Lindner
Aviation, Inc., 534 N.W.2d 400 (Iowa 1995); see also Jackson v.
Steinberg, 186 Or. 129, 200 P.2d 376 (1948). “The rights of a
finder of property depend on how the found property is
classified.” Benjamin, supra. The character of the property
should be determined by evaluating all the facts and
circumstances present in the particular case. See Schley v.
Couch, 155 Tex. 195, 284 S.W.2d 333 (1955) .
We next consider the classification of found property
described in Benjamin, supra.
A. Abandoned property
Property is said to be “abandoned” when it is thrown away,
or its possession is voluntarily forsaken by the owner, in
which case it will become the property of the first
occupant; or when it is involuntarily lost or left without the
hope and expectation of again acquiring it, and then it
becomes the property of the finder, subject to the superior
claim of the owner. Eads v. Brazelton, 22 Ark. 499 (1861); see
also Crosson v. Lion Oil & Refining Co., 169 Ark. 561, 275
S.W. 899 (1925).
B. Lost property
“Lost property” is property which the owner has
involuntarily parted with through neglect, carelessness, or
inadvertence, that is, property which the owner has
unwittingly suffered to pass out of his possession, and of
whos whereabouts he has no knowledge. Property is
deemed lost when it is unintentionally separated from the
dominion of its owner. Popularly, property is lost when the
owner does not know, and cannot ascertain, where it is, the
essential test of lost property is whether the owner parted
with the possession of the property intentionally, casually
or involuntarily; only in the latter contingency may it be lost
property. Property is not “lost” unless the owner parts with

37

it involuntarily and unintentionally, and does not, at any
time thereafter, know where to find it. A loss is always
involuntary; there can be no intent to part with the
ownership of lost property. 1 AM.JUR.2d Abandoned,
Lost, Etc., Property s 4 (1994); see also Benjamin, supra; Ritz v.
Selma United Methodist Church, 467 N.W.2d 266 (Iowa 1991);
Jackson, supra.
The finder of lost property does not acquire absolute
ownership, but acquires such property interest or right as
will enable him to keep it against all the world but the
rightful owner. This rule is not affected by the place of
finding, as the finder of lost property has a right to
possession of the article superior to that of the owner or
occupant of the premises where it is found. 1 AM.JUR.2d
Abandoned, Lost, Etc., Property s 18 (1994); see also Ritz,
supra.
C. Mislaid property
“Mislaid property” is that which is intentionally put into a
certain place and later forgotten. The place where money or
property claimed as lost is found is an important factor in
the determination of the question of whether it was lost or
only mislaid. But where articles are accidentally dropped in
any public place, public thoroughfare, or street, they are
lost in the legal sense. In short, property will not be
considered to have been lost unless the circumstances are
such that, considering the place where, and the conditions
under which, it is found, there is an inference that it was
left there unintentionally. 1 AM.JUR.2d Abandoned, Lost,
Etc., Property s 6 (1994); see also Benjamin, supra; Ritz, supra;
Jackson, supra.
A finder of mislaid property acquires no ownership rights
in it, and, where such property is found upon another’s
premises, he has no right to its possession, but is required
to turn it over to the owner of the premises. This is true
whether the finder is an employee or occupier of the

38

premises on which the mislaid article is found or a
customer of the owner or occupant.
The right of possession, as against all except the true
owner, is in the owner or occupant of the premises where
the property is discovered, for mislaid property is presumed
to have been left in the custody of the owner or occupier of
the premises upon which it is found. The result is that the
proprietor of the premises is entitled to retain possession of
the thing, pending a search by him to discover the owner,
or during such time as the owner may be considered to be
engaged in trying to recover his property. When the owner
of premises takes possession of mislaid personal property
left by an invitee he becomes a gratuitous bailee by
operation of law, with a duty to use ordinary care to return
it to the owner.
The finder of mislaid property must turn it over to the
owner or occupier of the premises where it is found; it is
the latter’s duty to keep mislaid property for the owner, and
he must use the care required of a gratuitous bailee for its
safekeeping until the true owner calls for it. As against
everyone but the true owner, the owner of such premises
has the duty to defend his custody and possession of the
mislaid property, and he is absolutely liable for a
misdelivery. 1 AM.JUR.2d Abandoned, Lost, Etc., Property
s 24 (1994); see also Benjamin, supra; Ritz, supra; Schley, supra.
D. Treasure trove
According to the common law, treasure trove is any gold or
silver in coin, plate, or bullion, whose owner is unknown,
found concealed in the earth or in a house or other private
place, but not lying on the ground. Where the common-law
treasure trove doctrine has been applied to determine the
ownership of a find, property considered as treasure trove
has included gold or silver coin, and its paper
representatives, buried in the earth or hidden in some other
private place, including a mattress, a cabinet sink, and a

39

piano. It is not essential to its character as treasure trove
that the thing shall have been hidden in the ground; it is
sufficient if it is found concealed in other articles, such as
bureaus, safes, or machinery. While, strictly speaking,
treasure trove is gold or silver, it has been held to include
the paper representatives thereof, especially where found
hidden with those precious metals. 1 AM.JUR.2d
Abandoned, Lost, Etc., Property s 7 (1994); see also
Benjamin, supra; Jackson, supra. “Treasure trove carries with it
the thought of antiquity; to be classed as treasure trove, the
treasure must have been hidden or concealed so long as to
indicate that the owner is probably dead or unknown.” 1
AM.JUR.2d Abandoned, Lost, Etc., Property s 8 (1994).
“Title to treasure trove belongs to the finder, against all the
world except the true owner.” 1 AM.JUR.2d Abandoned,
Lost, Etc., Property s 26 (1994); see also Ritz, supra.
Remaining mindful of the various types of found property
and the rights to possession of that property, we turn now
to the case before us on review. Appellants were stripping
motel rooms at the Best Western Motel, which belongs to
Lock Hospitality Inc., on February 1, 1999. Their work, as
independent contractors, included removing sheet rock or
dry wall, ceiling tiles, and other material to prepare the
motel for renovations. While working in room 118,
appellants removed some ceiling tiles. Appellants found a
cardboard box concealed on top of the heating and air vent
that became visible as a result of the removal of the ceiling
tiles. Appellant Terry described the box as “covered with
dust.” Appellant Stocks stated in his affidavit that “the box
and its contents appeared to have been located at the site
for a very long time.” Mr. Lock testified that in 1988 a
beam was replaced in room 118 and the box was not
discovered at that time. Upon opening the box, a large
amount of old, dusty currency was discovered. Both
appellants and Mr. Lock were in the room when the box
was discovered. Neither appellants nor appellees claim to

40

have concealed the property in the ceiling. It is apparent
that the box was not lost. The circumstances suggest that it
was either abandoned property, mislaid property, or
treasure trove. Considering all of the facts as presented, we
cannot say that the trial court’s finding that the property
was mislaid property was clearly erroneous. Specifically, we
hold that the trial court’s findings that “the money in
controversy was intentionally placed where it was found for
its security, in order to shield it from unwelcome eyes …”
and that the “money was mislaid property” were not clearly
erroneous.
We note that other jurisdictions have addressed similar fact
situations and have determined that the property at stake
was “mislaid” property. The Iowa Supreme Court
addressed this issue in Benjamin, supra. In that case, a bank
hired Benjamin to perform a routine service inspection on
an airplane which it owned. During the inspection,
Benjamin removed a panel from the wing. Id. The screws to
the panel were old and rusted and Benjamin had to use a
drill to remove them. Upon removal of the panel, Benjamin
discovered packets of currency totaling $18,000. Both
Benjamin and the bank, as the owner of the plane, claimed
ownership of the money. Id. The court reviewed the
various types of property and determined that the money
was “mislaid” property. The court explained that “the place
where Benjamin found the money and the manner in which
it was hidden are also important.” They further noted that
“the bills were carefully tied and wrapped and then
concealed in a location that was accessible only by
removing screws and a panel. These circumstances support
an inference that the money was placed there intentionally.
This inference supports the conclusion that the money was
mislaid.” Benjamin, supra. After reaching this conclusion, the
court held “because the money discovered by Benjamin
was properly found to be mislaid property, it belongs to the
owner of the premises where it was found.” Id. The

41

circumstances in Benjamin are similar to those now before
us, and we are persuaded that the reasoning of the Iowa
court was sound.
The Oregon Supreme Court has also considered a case
involving facts similar to the case now on review before
this court. In Jackson, supra., Mrs. Jackson, while working as
a chamber maid at Arthur Hotel, discovered $800
concealed under the paper lining of a dresser drawer. Id.
The court observed that “from the manner in which the
bills in the instant case were carefully concealed beneath
the paper lining of the drawer, it must be presumed that the
concealment was effected intentionally and deliberately.
The bills, therefore, cannot be regarded as abandoned
property.” Id. The court then held:
The natural assumption is that the
person who concealed the bills in the
case at bar was a guest of the hotel.
Their considerable value, and the
manner of their concealment, indicate
that the person who concealed them
did so for purposes of security, and
with the intention of reclaiming them.
They were, therefore, to be classified
not as lost, but as misplaced or
forgotten property, and the defendant,
as occupier of the premises where they
were found, had the right and duty to
take them into his possession and to
hold them as a gratuitous bailee for the
true owner.
Jackson, supra.
The case now before us presents circumstances similar to
those upon which Benjamin and Jackson were decided. The
trial court found that the original owner of the $38,310.00
acted intentionally in concealing his property. The trial
court also recognized that the found property did not have

42

the characteristics of antiquity required for the classification
as treasure trove. We cannot say that the trial court’s
determination that the box was mislaid property was clearly
erroneous. We hold that the trial court did not err when it
found that the property in the present case was mislaid
property and as such belongs to the owner of the premises
in which the money was found. Accordingly, we affirm the
trial court.
Affirmed.
1.2 Trespass
1.2.1. What's at Stake
Jacque v. Steenberg Homes, Inc., 209 Wis. 2d 605
(1997)
For the plaintiffs-appellants there were briefs by Patrick A.
Dewane, Jr. and Dewane, Dewane, Kummer, Lambert &
Fox, Manitowoc, and oral argument by Patrick A. Dewane,
Jr.
For the defendant-respondent there were briefs by Mark J.
Mingo, Daniel L. Zitzer and Mingo & Yankala, S.C.,
Milwaukee, and oral argument by Mark Mingo.
WILLIAM A. BABLITCH,Justice.
Steenberg Homes had a mobile home to deliver.
Unfortunately for Harvey and Lois Jacque (the Jacques),
the easiest route of delivery was across their land. Despite
adamant protests by the Jacques, Steenberg plowed a path
through the Jacques’ snow-covered field and via that path,
delivered the mobile home. Consequently, the Jacques sued
Steenberg Homes for intentional trespass. At trial,
Steenberg Homes conceded the intentional trespass, but
argued that no compensatory damages had been proved,
and that punitive damages could not be awarded without
compensatory damages. Although the jury awarded the
Jacques $1 in nominal damages and $100,000 in punitive
damages, the circuit court set aside the jury’s award of

43

$100,000. The court of appeals affirmed, reluctantly
concluding that it could not reinstate the punitive damages
because it was bound by precedent establishing that an
award of nominal damages will not sustain a punitive
damage award. We conclude that when nominal damages
are awarded for an intentional trespass to land, punitive
damages may, in the discretion of the jury, be awarded. We
further conclude that the $100,000 awarded by the jury is
not excessive. Accordingly, we reverse and remand for
reinstatement of the punitive damage award.
I.
The relevant facts follow. Plaintiffs, Lois and Harvey
Jacques, are an elderly couple, now retired from farming,
who own roughly 170 acres near Wilke’s Lake in the town
of Schleswig. The defendant, Steenberg Homes, Inc.
(Steenberg), is in the business of selling mobile homes. In
the fall of 1993, a neighbor of the Jacques purchased a
mobile home from Steenberg. Delivery of the mobile home
was included in the sales price.
Steenberg determined that the easiest route to deliver the
mobile home was across the Jacques’ land. Steenberg
preferred transporting the home across the Jacques’ land
because the only alternative was a private road which was
covered in up to seven feet of snow and contained a sharp
curve which would require sets of “rollers” to be used
when maneuvering the home around the curve. Steenberg
asked the Jacques on several separate occasions whether it
could move the home across the Jacques’ farm field. The
Jacques refused. The Jacques were sensitive about allowing
others on their land because they had lost property valued
at over $10,000 to other neighbors in an adverse possession
action in the mid-1980’s. Despite repeated refusals from
the Jacques, Steenberg decided to sell the mobile home,
which was to be used as a summer cottage, and delivered it
on February 15, 1994.

44

On the morning of delivery, Mr. Jacque observed the
mobile home parked on the corner of the town road
adjacent to his property. He decided to find out where the
movers planned to take the home. The movers, who were
Steenberg employees, showed Mr. Jacque the path they
planned to take with the mobile home to reach the
neighbor’s lot. The path cut across the Jacques’ land. Mr.
Jacque informed the movers that it was the Jacques’ land
they were planning to cross and that Steenberg did not
have permission to cross their land. He told them that
Steenberg had been refused permission to cross the
Jacques’ land.
One of Steenberg’s employees called the assistant manager,
who then came out to the Jacques’ home. In the meantime,
the Jacques called and asked some of their neighbors and
the town chairman to come over immediately. Once
everyone was present, the Jacques showed the assistant
manager an aerial map and plat book of the township to
prove their ownership of the land, and reiterated their
demand that the home not be moved across their land.
At that point, the assistant manager asked Mr. Jacque how
much money it would take to get permission. Mr. Jacque
responded that it was not a question of money; the Jacques
just did not want Steenberg to cross their land. Mr. Jacque
testified that he told Steenberg to “[F]ollow the road, that is
what the road is for.” Steenberg employees left the meeting
without permission to cross the land.
At trial, one of Steenberg’s employees testified that, upon
coming out of the Jacques’ home, the assistant manager
stated: “I don’t give a — what [Mr. Jacque] said, just get the
home in there any way you can.” The other Steenberg
employee confirmed this testimony and further testified
that the assistant manager told him to park the company
truck in such a way that no one could get down the town
road to see the route the employees were taking with the
home. The assistant manager denied giving these

45

instructions, and Steenberg argued that the road was
blocked for safety reasons.
The employees, after beginning down the private road,
ultimately used a “bobcat” to cut a path through the
Jacques’ snow-covered field and hauled the home across
the Jacques’ land to the neighbor’s lot. One employee
testified that upon returning to the office and informing the
assistant manager that they had gone across the field, the
assistant manager reacted by giggling and laughing. The
other employee confirmed this testimony. The assistant
manager disputed this testimony.
When a neighbor informed the Jacques that Steenberg had,
in fact, moved the mobile home across the Jacques’ land,
Mr. Jacque called the Manitowoc County Sheriff’s
Department. After interviewing the parties and observing
the scene, an officer from the sheriff’s department issued a
$30 citation to Steenberg’s assistant manager.
The Jacques commenced an intentional tort action in
Manitowoc County Circuit Court, Judge Allan J. Deehr
presiding, seeking compensatory and punitive damages
from Steenberg. The case was tried before a jury on
December 1, 1994. At the completion of the Jacques’ case,
Steenberg moved for a directed verdict under Wis. Stat. §
805.14(3). For purposes of the motion, Steenberg admitted
to an intentional trespass to land, but asked the circuit
court to find that the Jacques were not entitled to
compensatory damages or punitive damages based on
insufficiency of the evidence. The circuit court denied
Steenberg’s motion and the questions of punitive and
compensatory damages were submitted to the jury. The
jury awarded the Jacques $1 nominal damages and $100,000
punitive damages. Steenberg filed post-verdict motions
claiming that the punitive damage award must be set aside
because Wisconsin law did not allow a punitive damage
award unless the jury also awarded compensatory damages.
Alternatively, Steenberg asked the circuit court to remit the

46

punitive damage award. The circuit court granted
Steenberg’s motion to set aside the award. Consequently, it
did not reach Steenberg’s motion for remittitur.
This case presents three issues: (1) whether an award of
nominal damages for intentional trespass to land may
support a punitive damage award and, if so; (2) whether the
law should apply to Steenberg or should only be applied
prospectively and, if we apply the law to Steenberg; (3)
whether the $100,000 in punitive damages awarded by the
jury is excessive.
The first issue is a question of law which we review de
novo… . .
II.
Before the question of punitive damages in a tort action
can properly be submitted to the jury, the circuit court
must determine, as a matter of law, that the evidence will
support an award of punitive damages. To determine
whether, as a matter of law, the question of punitive
damages should have been submitted to the jury, this court
reviews the record de novo.
Steenberg argues that, as a matter of law, punitive damages
could not be awarded by the jury because punitive damages
must be supported by an award of compensatory damages
and here the jury awarded only nominal and punitive
damages. The Jacques contend that the rationale supporting
the compensatory damage award requirement is inapposite
when the wrongful act is an intentional trespass to land. We
agree with the Jacques.
Our analysis begins with a statement of the rule and the
rationale supporting the rule. First, we consider the
individual and societal interests implicated when an
intentional trespass to land occurs. Then, we analyze the
rationale supporting the rule in light of these interests.

47

The general rule was stated in Barnard v. Cohen, 165 Wis.
417 (1917), where the question presented was: “In an
action for libel, can there be a recovery of punitory
damages if only nominal compensatory damages are
found?” With the bare assertion that authority and better
reason supported its conclusion, the Barnard court said no.
Id. at. 418. Barnard continues to state the general rule of
punitive damages in Wisconsin. The rationale for the
compensatory damage requirement is that if the individual
cannot show actual harm, he or she has but a nominal
interest, hence, society has little interest in having the
unlawful, but otherwise harmless, conduct deterred,
therefore, punitive damages are inappropriate.
However, whether nominal damages can support a punitive
damage award in the case of an intentional trespass to land
has never been squarely addressed by this court.
Nonetheless, Wisconsin law is not without reference to this
situation. In 1854 the court established punitive damages,
allowing the assessment of “damages as a punishment to
the defendant for the purpose of making an example.”
McWilliams v. Bragg, 3 Wis. 424, 425 (1854).1 The McWilliams
court related the facts and an illustrative tale from the
English case of Merest v. Harvey, 128 Eng. Rep. 761 (C.P.
1814), to explain the rationale underlying punitive damages.
In Merest, a landowner was shooting birds in his field when
he was approached by the local magistrate who wanted to
hunt with him. Although the landowner refused, the
magistrate proceeded to hunt. When the landowner
continued to object, the magistrate threatened to have him
jailed and dared him to file suit. Although little actual harm
had been caused, the English court upheld damages of 500
pounds, explaining “in a case where a man disregards every
principle which actuates the conduct of gentlemen, what is

1 Because McWilliams was an action of trespass for assault and battery, we cite it

not for its precedential value, but for its reasoning.

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to restrain him except large damages?” McWilliams, 3 Wis.
424 at 428.
To explain the need for punitive damages, even where
actual harm is slight, McWilliams related the hypothetical
tale from Merest of an intentional trespasser:
Suppose a gentleman has a paved walk
in his paddock, before his window,
and that a man intrudes and walks up
and down before the window of his
house, and looks in while the owner is
at dinner, is the trespasser permitted to
say “here is a halfpenny for you which
is the full extent of the mischief I have
done.” Would that be a compensation?
I cannot say that it would be … .
McWilliams, 3 Wis. at 428. Thus, in the case establishing
punitive damages in this state, this court recognized that in
certain situations of trespass, the actual harm is not in the
damage done to the land, which may be minimal, but in the
loss of the individual’s right to exclude others from his or
her property and, the court implied that this right may be
punished by a large damage award despite the lack of
measurable harm.
Steenberg contends that the rule established in Barnard
prohibits a punitive damage award, as a matter of law,
unless the plaintiff also receives compensatory damages.
Because the Jacques did not receive a compensatory
damage award, Steenberg contends that the punitive
damage award must be set aside. The Jacques argue that the
rationale for not allowing nominal damages to support a
punitive damage award is inapposite when the wrongful act
involved is an intentional trespass to land. The Jacques
argue that both the individual and society have significant
interests in deterring intentional trespass to land, regardless
of the lack of measurable harm that results. We agree with

49

the Jacques. An examination of the individual interests
invaded by an intentional trespass to land, and society’s
interests in preventing intentional trespass to land, leads us
to the conclusion that the Barnard rule should not apply
when the tort supporting the award is intentional trespass
to land.
We turn first to the individual landowner’s interest in
protecting his or her land from trespass. The United States
Supreme Court has recognized that the private landowner’s
right to exclude others from his or her land is “one of the
most essential sticks in the bundle of rights that are
commonly characterized as property.” Dolan v. City of
Tigard, 512 U.S. 374, 384 (1994).2 This court has long
recognized “[e]very person[’s] constitutional right to the
exclusive enjoyment of his own property for any purpose
which does not invade the rights of another person.” Diana
Shooting Club v. Lamoreux, 114 Wis. 44, 59 (1902) (holding
that the victim of an intentional trespass should have been
allowed to take judgment for nominal damages and costs).
Thus, both this court and the Supreme Court recognize the
individual’s legal right to exclude others from private
property.
Yet a right is hollow if the legal system provides insufficient
means to protect it. Felix Cohen offers the following
analysis summarizing the relationship between the
individual and the state regarding property rights:
[T]hat is property to which the
following label can be attached:
To the world:

2 We refer to these cases only to emphasize the nature of the Jacques’ interest and,

correspondingly, Steenberg’s violation.

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Keep off X unless you have my
permission, which I may grant or
withhold.
Signed: Private Citizen
Endorsed: The state
Felix S. Cohen, Dialogue on Private Property, IX Rutgers Law
Review 357, 374 (1954). Harvey and Lois Jacque have the
right to tell Steenberg Homes and any other trespasser,
“No, you cannot cross our land.” But that right has no
practical meaning unless protected by the State. And, as this
court recognized as early as 1854, a “halfpenny” award
does not constitute state protection.
The nature of the nominal damage award in an intentional
trespass to land case further supports an exception to
Barnard. Because a legal right is involved, the law recognizes
that actual harm occurs in every trespass. The action for
intentional trespass to land is directed at vindication of the
legal right. W. Page Keeton, Prosser and Keeton on Torts,
§ 13 (5th ed.1984). The law infers some damage from every
direct entry upon the land of another. Id.The law
recognizes actual harm in every trespass to land whether or
not compensatory damages are awarded. Id. Thus, in the
case of intentional trespass to land, the nominal damage
award represents the recognition that, although
immeasurable in mere dollars, actual harm has occurred.
The potential for harm resulting from intentional trespass
also supports an exception to Barnard. A series of
intentional trespasses, as the Jacques had the misfortune to
discover in an unrelated action, can threaten the
individual’s very ownership of the land. The conduct of an
intentional trespasser, if repeated, might ripen into
prescription or adverse possession and, as a consequence,
the individual landowner can lose his or her property rights
to the trespasser. SeeWis. Stat. § 893.28.

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In sum, the individual has a strong interest in excluding
trespassers from his or her land. Although only nominal
damages were awarded to the Jacques, Steenberg’s
intentional trespass caused actual harm. We turn next to
society’s interest in protecting private property from the
intentional trespasser.
Society has an interest in punishing and deterring
intentional trespassers beyond that of protecting the
interests of the individual landowner. Society has an
interest in preserving the integrity of the legal system.
Private landowners should feel confident that wrongdoers
who trespass upon their land will be appropriately
punished. When landowners have confidence in the legal
system, they are less likely to resort to “self-help” remedies.
In McWilliams, the court recognized the importance of
“‘prevent [ing] the practice of dueling, [by permitting] juries
[ ] to punish insult by exemplary damages.’” McWilliams, 3
Wis. at 428. Although dueling is rarely a modern form of
self-help, one can easily imagine a frustrated landowner
taking the law into his or her own hands when faced with a
brazen trespasser, like Steenberg, who refuses to heed no
trespass warnings.
People expect wrongdoers to be appropriately punished.
Punitive damages have the effect of bringing to
punishment types of conduct that, though oppressive and
hurtful to the individual, almost invariably go unpunished
by the public prosecutor. Kink v. Combs, 28 Wis. 2d 65
(1965). The $30 forfeiture was certainly not an appropriate
punishment for Steenberg’s egregious trespass in the eyes
of the Jacques. It was more akin to Merest’s “halfpenny.” If
punitive damages are not allowed in a situation like this,
what punishment will prohibit the intentional trespass to
land? Moreover, what is to stop Steenberg Homes from
concluding, in the future, that delivering its mobile homes
via an intentional trespass and paying the resulting Class B
forfeiture, is not more profitable than obeying the law?

52

Steenberg Homes plowed a path across the Jacques’ land
and dragged the mobile home across that path, in the face
of the Jacques’ adamant refusal. A $30 forfeiture and a $1
nominal damage award are unlikely to restrain Steenberg
Homes from similar conduct in the future. An appropriate
punitive damage award probably will.
In sum, as the court of appeals noted, the Barnard rule
sends the wrong message to Steenberg Homes and any
others who contemplate trespassing on the land of another.
It implicitly tells them that they are free to go where they
please, regardless of the landowner’s wishes. As long as
they cause no compensable harm, the only deterrent
intentional trespassers face is the nominal damage award of
$1, the modern equivalent of Merest’s halfpenny, and the
possibility of a Class B forfeiture under Wis. Stat. § 943.13.
We conclude that both the private landowner and society
have much more than a nominal interest in excluding
others from private land. Intentional trespass to land causes
actual harm to the individual, regardless of whether that
harm can be measured in mere dollars. Consequently, the
Barnard rationale will not support a refusal to allow punitive
damages when the tort involved is an intentional trespass to
land. Accordingly, assuming that the other requirements for
punitive damages have been met, we hold that nominal
damages may support a punitive damage award in an action
for intentional trespass to land.
Our holding is supported by respected legal commentary.
The Restatement (Second) of Torts supports the
proposition that an award of nominal damages will support
an award of punitive damages in a trespass to land action:
The fact that the actor knows that his
entry is without the consent of the
possessor and without any other
privilege to do so, while not necessary
to make him liable, may affect the
amount of damages recoverable

53

against him, by showing such a
complete disregard of the possessor’s
legally protected interest in the
exclusive possession of his land as to
justify the imposition of punitive in
addition to nominal damages for even
a harmless trespass, or in addition to
compensatory damages for one which
is harmful.
Restatement (Second) of Torts § 163 cmt. e (1979). The
Restatement reiterates this position under the punitive
damages section: nominal damages support an award of
punitive damages “when a tort, such as trespass to land, is
committed for an outrageous purpose, but no significant
harm has resulted.” Restatement (Second) of Torts § 908
cmt. c (1979).
Prosser also finds the compensatory damages prerequisite
unsupportable:
Since it is precisely in the cases of
nominal damages that the policy of
providing an incentive for plaintiffs to
bring petty outrages into court comes
into play, the view very much to be
preferred appears to be that of the
minority which have held that there is
sufficient support for punitive
damages.
Page Keeton, et. al., Prosser and Keeton on the Law of Torts § 2,
at 14 (5th ed.1984) (citations omitted). A minority of other
jurisdictions follow this approach. See, Annotation,
Sufficiency of Showing of Actual Damages to Support Award of
Punitive Damages-Modern Cases, 40 A.L.R.4th 11, 36 (1985).
….
In conclusion, we hold that when nominal damages are
awarded for an intentional trespass to land, punitive

54

damages may, in the discretion of the jury, be awarded. Our
decision today shall apply to Steenberg Homes. Finally, we
hold that the $100,000 punitive damages awarded by the
jury is not excessive. Accordingly, we reverse and remand
to the circuit court for reinstatement of the punitive
damage award.
Reversed and remanded with directions.
1.2.2. Initial Look at Exclusion's Limits
Ploof v. Putname, 81 Vt. 471 (1908)
Martin S. Vilas and Cowles & Moulton, for plaintiff.
Batchelder & Bates, for defendant.
MUNSON, J.
It is alleged as the ground on recovery that on the 13th day
of November 1904, the defendant was the owner of a
certain island in Lake Champlain, and of a certain dock
attached thereto, which island and dock were then in
charge of the defendant’s servant; that the plaintiff was
then possessed of and sailing upon said lake a certain
loaded sloop, on which were the plaintiff and his wife and
two minor children; that there then arose a sudden and
violent tempest, whereby the sloop and the property and
persons therein were placed in great danger of destruction;
that, to save these from destruction or injury, the plaintiff
was compelled to, and did, moor the sloop to defendant’s
dock; that the defendant, by his servant, unmoored the
sloop, whereupon it was driven upon the shore by the
tempest, without the plaintiff’s fault; and that the sloop and
its contents were thereby destroyed, and the plaintiff and
his wife and children cast into the lake and upon the shore,
receiving injuries. This claim is set forth in two counts-one
in trespass, charging that the defendant by his servant with
force and arms willfully and designedly unmoored the
sloop; the other in case, alleging that it was the duty of the
defendant by his servant to permit the plaintiff to moor his

55

sloop to the dock, and to permit it to remain so moored
during the continuance of the tempest, but that the
defendant by his servant, in disregard of this duty,
negligently, carelessly, and wrongfully unmoored the sloop.
Both counts are demurred to generally.
There are many cases in the books which hold that
necessity, and an inability to control movements
inaugurated in the proper exercise of a strict right, will
justify entries upon land and interferences with personal
property that would otherwise have been trespasses. A
reference to a few of these will be sufficient to illustrate the
doctrine. In Miller v. Fandrye, Poph. 161, trespass was
brought for chasing sheep, and the defendant pleaded that
the sheep were trespassing upon his land, and that he with
a little dog chased them out, and that, as soon as the sheep
were off his land, he called in the dog. It was argued that,
although the defendant might lawfully drive the sheep from
his own ground with a dog, he had no right to pursue them
into the next ground; but the court considered that the
defendant might drive the sheep from his land with a dog,
and that the nature of a dog is such that he cannot be
withdrawn in an instant, and that, as the defendant had
done his best to recall the dog, trespass would not lie. In
trespass of cattle taken in A., defendant pleaded that he was
seised of C. and found the cattle there damage feasant, and
chased them towards the pound, and they escaped from
him and went into A., and he presently retook them; and
this was held a good plea. 21 Edw. IV, 64; Vin. Ab.
Trespass, H. a, 4, pl. 19. If one have a way over the land of
another for his beasts to pass, and the beasts, being
properly driven, feed the grass by morsels in passing, or run
out of the way and are promptly pursued and brought back,
trespass will not lie. See Vin. Ab. Trespass, K. a, pl. 1. A
traveler on a highway who finds it obstructed from a
sudden and temporary cause may pass upon the adjoining
land without becoming a trespasser because of the

56

necessity. Henn’s Case, W. Jones, 296; Campbell v. Race, 7
Cush. (Mass.) 408, 54 Am. Dec. 728; Hyde v. Jamaica, 27 Vt.
443 (459); Morey v. Fitzgerald, 56 Vt. 487, 48 Am. Rep. 811.
An entry upon land to save goods which are in danger of
being lost or destroyed by water or fire is not a trespass. 21
Hen. VII, 27; Vin. Ab. Trespass, H. a, 4, pl. 24, K. a, pl. 3. In
Proctor v. Adams, 113 Mass. 376, 18 Am. Rep. 500, the
defendant went upon the plaintiff’s beach for the purpose
of saving and restoring to the lawful owner a boat which
had been driven ashore, and was in danger of being carried
off by the sea; and it was held no trespass. See, also,
Dunwich v. Sterry, 1 B. & Ad. 831.
This doctrine of necessity applies with special force to the
preservation of human life. One assaulted and in peril of
his life may run through the close of another to escape
from his assailant. 37 Hen. VII, pl. 26. One may sacrifice
the personal property of another to save his life or the lives
of his fellows. In Mouse’s Case, 12 Co. 63, the defendant was
sued for taking and carrying away the plaintiff’s casket and
its contents. It appeared that the ferryman of Gravesend
took 47 passengers into his barge to pass to London,
among whom were the plaintiff and defendant; and the
barge being upon the water a great tempest happened, and
a strong wind, so that the barge and all the passengers were
in danger of being lost if certain ponderous things were not
cast out, and the defendant thereupon cast out the
plaintiff’s casket. It was resolved that in case of necessity, to
save the lives of the passengers, it was lawful for the
defendant, being a passenger, to cast the plaintiff’s casket
out of the barge; that, if the ferryman surcharge the barge,
the owner shall have his remedy upon the surcharge against
the ferryman, but that if there be no surcharge, and the
danger accrue only by the act of God, as by tempest,
without fault of the ferryman, every one ought to bear his
loss to safeguard the life of a man.

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It is clear that an entry upon the land of another may be
justified by necessity, and that the declaration before us
discloses a necessity for mooring the sloop. But the
defendant questions the sufficiency of the counts because
they do not negative the existence of natural objects to
which the plaintiff could have moored with equal safety.
The allegations are, in substance, that the stress of a sudden
and violent tempest compelled the plaintiff to moor to
defendant’s dock to save his sloop and the people in it. The
averment of necessity is complete, for it covers not only the
necessity of mooring to the dock; and the details of the
situation which created this necessity, whatever the legal
requirements regarding them, are matters of proof, and
need not be alleged. It is certain that the rule suggested
cannot be held applicable irrespective of circumstance, and
the question must be left for adjudication upon
proceedings had with reference to the evidence or the
charge.
The defendant insists that the counts are defective, in that
they fail to show that the servant in casting off the rope
was acting within the scope of his employment. It is said
that the allegation that the island and dock were in charge
of the servant does not imply authority to do an unlawful
act, and that the allegations as a whole fairly indicate that
the servant unmoored the sloop for a wrongful purpose of
his own, and not by virtue of any general authority or
special instruction received from the defendant. But we
think the counts are sufficient in this respect. The allegation
is that the defendant did this by his servant. The words
“willfully, and designedly” in one count, and “negligently,
carelessly, and wrongfully” in the other, are not applied to
the servant, but to the defendant acting through the
servant. The necessary implication is that the servant was
acting within the scope of his employment. 13 Ency. P. &
Pr. 922; Voegeli v. Pickel Marble, etc., Co., 49 Mo. App. 643;
Wabash Ry. Co. v. Savage, 110 Ind. 156, 9 N. E. 85. See, also,

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Palmer v. St. Albans, 60 Vt. 427, 13 Atl. 569, 6 Am. St. Rep.
125.
Judgment affirmed and cause remanded.
Hinman v. Pacific Air Transport, 84 F.2d 755 (9th Cir.
1936)
Bruce Murchison and M. L. Clopton, both of Los Angeles,
Cal., for appellants.
Newlin & Ashburn, Gurney E. Newlin, Paul Sandmeyer,
and George W. Tackabury, all of Los Angeles, Cal., for
appellees.
Before WILBUR, MATHEWS, and HANEY, Circuit
Judges.
HANEY, Circuit Judge.
From decrees sustaining motions to dismiss filed by
defendants in two suits, appellants appeal and bring for
review by this court the rights of a landowner in
connection with the flight of aircraft above his land.
Appellant filed one bill against Pacific Air Transport, an
Oregon corporation, and another bill against United Air
Lines Transport Corporation, a Delaware corporation, in
each of which the allegations are nearly identical. Although
two appeals are before the court, briefs filed discuss both
cases, and therefore we will consider them together.
Appellants filed a first amended bill against Pacific Air
Transport after a motion to dismiss the original bill had
been sustained, and after a motion to dismiss the first
amended bill had been sustained, they filed their second
amended bill, which is the bill before this court. In the
United Air Lines Transport Corporation case, the first
amended bill is before this court, there having been an
original bill, which was dismissed.
Appellants allege, in the bills under consideration, facts
showing diversity of citizenship and that the amount in

59

controversy exceeds $3,000 exclusive of interest and costs;
that they are the owners and in possession of 72 1/2 acres
of real property in the city of Burbank, Los Angeles county,
Cal., ‘together with a stratum of air-space superjacent to
and overlying said tract * * * and extending upwards * * *
to such an altitude as plaintiffs * * * may reasonably expect
now or hereafter to utilize, use or occupy said airspace.
Without limiting said altitude or defining the upward extent
of said stratum of airspace or of plaintiff’s ownership,
utilization and possession thereof, plaintiffs allege that they
* * * may reasonably expect now and hereafter to utilize,
use and occupy said airspace and each and every portion
thereof to an altitude of not less than 150 feet above the
surface of the land * * * ‘. The reasonable value of the
property is alleged to be in excess of $300,000.
It is then alleged that defendants are engaged in the
business of operating a commercial air line, and that at all
times ‘after the month of May, 1929, defendants daily,
repeatedly and upon numerous occasions have disturbed,
invaded and trespassed upon the ownership and possession
of plaintiffs’ tract’; that at said times defendants have
operated aircraft in, across, and through said airspace at
altitudes less than 100 feet above the surface; that plaintiffs
notified defendants to desist from trespassing on said
airspace; and that defendants have disregarded said notice,
unlawfully and against the will of plaintiffs, and continue
and threaten to continue such trespasses.
It is further alleged: ‘That in operating aircraft as aforesaid,
defendants followed and on substantially all occasions
herein referred to have followed one of two courses, ways
and paths in, across and through said airspace, which by
reason of constant and repeated user by defendants have
become and are well defined by constant user * * * .’
Thereafter the first of such courses, designated ‘A,’ is
described with particularity with regard to the surface
boundaries of plaintiffs’ land; course ‘A’ is averred to be 75

60

yards wide over the north side of plaintiffs’ land the place
of entry, the lowest boundary of the course above the
surface to be 25 feet, and the highest boundary to be 175
feet above the surface. At the south side of plaintiffs’ land,
the course is said to be 100 yards wide, the lowest boundary
to be 5 feet above the surface, and the highest boundary to
be 45 feet above the surface.
The second course is also described particularly, and
although there is some difference in the width of the
course, the height above the surface is the same as course
A.
It is alleged that the direction of the breeze determines
which course defendants use on a particular occasion, and
that defendants have used such courses since the time of
the notice given them by plaintiffs, openly, notoriously, and
under claim of right adverse to plaintiffs.
In the last paragraph it is alleged that the remedy at law is
inadequate; that unless defendants are enjoined they will
repeat the said trespasses and will impose a servitude upon
plaintiffs’ utilization, use, occupancy, and enjoyment of the
surface of their land to their irreparable injury; and that
injunctive relief is necessary to prevent a multiplicity of
legal proceedings.
In each bill under consideration, there is a second cause of
action. The allegations of the first cause, except the last
paragraph, are adopted in the second cause, and it is further
alleged that the reasonable value of the utilization, use, and
occupancy of said courses is $1,500 per month; that ‘by
reason of defendants’ invasion and disturbance of and
trespass upon plaintiffs’ ownership and possession of said
airspace, plaintiffs have suffered damage’ in the sum of
$90,000.
The prayer asks an injunction restraining the operation of
the aircraft through the airspace over plaintiffs’ property
and for $90,000 damages in each of the cases.

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Appellees contend that it is settled law in California that the
owner of land has no property rights in superjacent
airspace, either by code enactments or by judicial decrees
and that the ad coelum doctrine does not apply in
California. We have examined the statutes of California,
particularly California Civil Code, s 659 and s 829, as well
as Grandona v. Lovdal, 78 Cal. 611, 21 P. 366, 12
Am.St.Rep. 121. Wood v. Moulton, 146 Cal. 317, 80 P. 92;
and Kafka v. Bozio, 191 Cal. 746, 218 P. 753, 29 A.L.R.
833, but we find nothing therein to negative the ad coelum
formula. Furthermore, if we should adopt this formula as
being the law, there might be serious doubt as to whether a
state statute could change it without running counter to the
Fourteenth amendment to the Constitution of the United
States. If we could accept and literally construe the ad
coelum doctrine, it would simplify the solution of this case;
however, we reject that doctrine. We think it is not the law,
and that it never was the law.
This formula ‘from the center of the earth to the sky’ was
invented at some remote time in the past when the use of
space above land actual or conceivable was confined to
narrow limits, and simply meant that the owner of the land
could use the overlying space to such an extent as he was
able, and that no one could ever interfere with that use.
This formula was never taken literally, but was a figurative
phrase to express the full and complete ownership of land
and the right to whatever superjacent airspace was
necessary or convenient to the enjoyment of the land.
In applying a rule of law, or construing a statute or
constitutional provision, we cannot shut our eyes to
common knowledge, the progress of civilization, or the
experience of mankind. A literal construction of this
formula will bring about an absurdity. The sky has no
definite location. It is that which presents itself to the eye
when looking upward; as we approach it, it recedes. There

62

can be no ownership of infinity, nor can equity prevent a
supposed violation of an abstract conception.
The appellants’ case, then, rests upon the assumption that
as owners of the soil they have an absolute and present title
to all the space above the earth’s surface, owned by them,
to such a height as is, or may become, useful to the
enjoyment of their land. This height, the appellants assert in
the bill, is of indefinite distance, but not less than 150 feet.
If the appellants are correct in this premise, it would seem
that they would have such a title to the airspace claimed, as
an incident to their ownership of the land, that they could
protect such a title as if it were an ordinary interest in real
property. Let us then examine the appellants’ premise. They
do not seek to maintain that the ownership of the land
actually extends by absolute and exclusive title upward to
the sky and downward to the center of the earth. They
recognize that the space claimed must have some use,
either present or contemplated, and connected with the
enjoyment of the land itself.
Title to the airspace unconnected with the use of land is
inconceivable. Such a right has never been asserted. It is a
thing not known to the law.
Since, therefore, appellants must confine their claim to 150
feet of the airspace above the land, to the use of the space
as related to the enjoyment of their land, to what extent,
then, is this use necessary to perfect their title to the
airspace? Must the use be actual, as when the owner claims
the space above the earth occupied by a building
constructed thereon; or does it suffice if appellants
establish merely that they may reasonably expect to use the
airspace now or at some indefinite future time?
This, then, is appellants’ premise, and upon this
proposition they rest their case. Such an inquiry was never
pursued in the history of jurisprudence until the occasion is
furnished by the common use of vehicles of the air.

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We believe, and hold, that appellants’ premise is unsound.
The question presented is applied to a new status and little
aid can be found in actual precedent. The solution is found
in the application of elementary legal principles. The first
and foremost of these principles is that the very essence
and origin of the legal right of property is dominion over it.
Property must have been reclaimed from the general mass
of the earth, and it must be capable by its nature of
exclusive possession. Without possession, no right in it can
be maintained.
The air, like the sea, is by its nature incapable of private
ownership, except in so far as one may actually use it. This
principle was announced long ago by Justinian. It is in fact
the basis upon which practically all of our so-called water
codes are based.
We own so much of the space above the ground as we can
occupy or make use of, in connection with the enjoyment
of our land. This right is not fixed. It varies with our
varying needs and is coextensive with them. The owner of
land owns as much of the space above him as he uses, but
only so long as he uses it. All that lies beyond belongs to
the world.
When it is said that man owns, or may own, to the heavens,
that merely means that no one can acquire a right to the
space above him that will limit him in whatever use he can
make of it as a part of his enjoyment of the land. To this
extent his title to the air is paramount. No other person can
acquire any title or exclusive right to any space above him.
Any use of such air or space by others which is injurious to
his land, or which constitutes an actual interference with his
possession or his beneficial use thereof, would be a trespass
for which he would have remedy. But any claim of the
landowner beyond this cannot find a precedent in law, nor
support in reason.

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It would be, and is, utterly impracticable and would lead to
endless confusion, if the law should uphold attempts of
landowners to stake out, or assert claims to definite, unused
spaces in the air in order to protect some contemplated
future use of it. Such a rule, if adopted, would constitute a
departure never before attempted by mankind, and utterly
at variance with the reason of the law. If such a rule were
conceivable, how will courts protect the various
landowners in their varying claims of portions of the sky?
How enforce a right of ejectment or restitution? Such a rule
is not necessary for the protection of the landowner in any
right guaranteed him by the Constitution in the enjoyment
of his property. If a right like this were recognized and
upheld by the courts, it would cause confusion worse
confounded. It is opposed to common sense and to all
human experience.
We cannot shut our eyes to the practical result of legal
recognition of the asserted claims of appellants herein, for
it leads to a legal implication to the effect that any use of
airspace above the surface owner of land, without his
consent would be a trespass either by the operator of an
airplane or a radio operator. We will not foist any such
chimerical concept of property rights upon the
jurisprudence of this country.
We now consider the allegation of the bill that appellees’
airplanes, in landing, glide through the air, within a distance
of less than 100 feet to the surface of appellants’ land, or
possibly to a distance within five feet thereof, at one end of
his tract. This presents another question for discussion.
Whether such close proximity to appellants’ land may
constitute an impairment of his full enjoyment of the same
is a question of fact. If it does, he may be entitled to relief
in a proper case.
Appellants are not entitled to injunctive relief upon the bill
filed here, because no facts are alleged with respect to
circumstances of appellants’ use of the premises which will

65

enable this court to infer that any actual or substantial
damage will accrue from the acts of the appellees
complained of.
The case differs from the usual case of enjoining a trespass.
Ordinarily, if a trespass is committed upon land, the
plaintiff is entitled to at least nominal damages without
proving or alleging any actual damage. In the instant case,
traversing the airspace above appellants’ land is not, of
itself, a trespass at all, but it is a lawful act unless it is done
under circumstances which will cause injury to appellants’
possession.
Appellants do not, therefore, in their bill state a case of
trespass, unless they allege a case of actual and substantial
damage. The bill fails to do this. It merely draws a naked
conclusion as to damages without facts or circumstances to
support it. It follows that the complaint does not state a
case for injunctive relief.
We should note appellants’ contention that appellees’
continuous use of the airspace in question may or will ripen
into an easement.
In considering this particular question, it is necessary to
consider just what right appellees are attempting to acquire.
If the superincumbent airspace were merely space (speaking
of space as a nonentity), it would be valueless to the
appellees. In other words, if no air were present therein,
appellees’ planes could not navigate. The primary thing
appellees are using would appear to be the air overlying
appellants’ land. It is generally held that an easement of or
in the air may not be obtained by prescription.
It is said in 19 C.J. 903, Sec. 85: ‘The English doctrine that
an easement for light and air may be acquired by user or
prescription has been very generally rejected in the United
States.’ See, also, 1 Thompson on Real Property, p. 652,
Sec. 542; also, Case v. Minot, 158 Mass. 577, 33 N.E.
700,22 L.R.A. 536, where many cases are cited in support

66

of this rule. We therefore hold that it is not legally possible
for appellees to obtain an easement by prescription through
the airspace above appellants’ land. Portsmouth Harbor
Land & Hotel Co. v. United States, 260 U.S. 327, 43 S.Ct.
135, 67 L.Ed. 287, is not at variance with this holding, for
in that case it is apparent that the use or occupancy of the
airspace, if it can be so considered, was under such
circumstances as amounted to a taking of the surface also.
Such is not the case here.
It is necessary to note also appellants’ further point,
namely, that the second cause of action in the bill is for
damages on account of trespass. No actual injury is alleged,
other than the mere utilization of the airspace above
appellants’ land.
In Murray v. Pannaci (C.C.A. 3) 130 F. 529, at page 530, it
was said: ‘The judge applied to the case the familiar rule,
settled by many decisions, that although a legal injury to a
plaintiff is proven, yet if the extent of the injury is not
shown, nor evidence given from which it can be inferred,
nominal damages only can be recovered.’ This rule is
supported by many decisions set out in 63 C.J. 1035, Sec.
225. We hold under the allegations of the bill that in no
event could appellant be entitled to more than nominal
damages, and that being the case, an injunction was
properly denied.
Appellants also complain in their third assignment of error
as follows:
That the above entitled court erred in
making and causing to be entered that
portion of said order as follows, to-wit:
That ‘in no case shall any amended
cause of action be sufficient
compliance with this order if same
merely restates a case in trespass.’

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In Truckee River General Electric Co. v. Benner, 211 F. 79,
81, this court said: ‘It has uniformly been held in those
(federal) courts that the allowance or refusal of leave to
amend pleadings in actions at law is discretionary with the
trial court, and that its action is not reviewable except in
case of gross abuse of discretion.’
Equity Rule 28 (28 U.S.C.A.FOLLOWING section 723)
provides that: ‘After pleading filed by any defendant,
plaintiff may amend only by consent of the defendant or
leave of the court or judge.’
In the instant case, leave was granted to appellants twice to
amend their bill in one case, and once in the other. They
failed in each of the bills to allege an injury by trespass
which would be legally sufficient. Under such
circumstances we are not prepared to say that the trial court
abused its discretion.
The decree of the District Court is affirmed.
MATHEWS, Circuit Judge, dissents.
Desnick v. American Broadcasting Companies, Inc.,
44 F.3d 1345 (7th Cir. 1995).
Dan K. Webb, Julie A. Bauer, Steven F. Molo (argued),
Winston & Strawn, Chicago, IL, Rodney F. Page, Arent,
Fox, Kintner, Plotkin & Kahn, Washington, DC, for
plaintiffs-appellants.
Michael M. Conway (argued), Mary Kay McCalla, James M.
Falvey, Hopkins & Sutter, Chicago, IL, for defendantsappellees.
Before POSNER, Chief Judge, and COFFEY and
MANION, Circuit Judges.
POSNER, Chief Judge.
The plaintiffs–an ophthalmic clinic known as the “Desnick
Eye Center” after its owner, Dr. Desnick, and two
ophthalmic surgeons employed by the clinic, Glazer and

68

Simon–appeal from the dismissal of their suit against the
ABC television network, a producer of the ABC program
PrimeTime Live named Entine, and the program’s star
reporter, Donaldson. The suit is for trespass, defamation,
and other torts arising out of the production and broadcast
of a program segment of PrimeTime Live that was highly
critical of the Desnick Eye Center. Federal jurisdiction is
based primarily on diversity of citizenship (though there is
one federal claim), with Illinois law, and to a lesser extent
Wisconsin and Indiana law, supplying the substantive rules
on which decision is to be based. The suit was dismissed
for failure to state a claim. See Desnick v. Capital Cities/ABC,
Inc., 851 F.Supp. 303 (N.D.Ill.1994). The record before us
is limited to the complaint and to a transcript, admitted to
be accurate, of the complained-about segment.
In March of 1993 Entine telephoned Dr. Desnick and told
him that PrimeTime Live wanted to do a broadcast
segment on large cataract practices. The Desnick Eye
Center has 25 offices in four midwestern states and
performs more than 10,000 cataract operations a year,
mostly on elderly persons whose cataract surgery is paid for
by Medicare. The complaint alleges–and in the posture of
the case we must take the allegations to be true, though of
course they may not be–that Entine told Desnick that the
segment would not be about just one cataract practice, that
it would not involve “ambush” interviews or “undercover”
surveillance, and that it would be “fair and balanced.” Thus
reassured, Desnick permitted an ABC crew to videotape
the Desnick Eye Center’s main premises in Chicago, to film
a cataract operation “live,” and to interview doctors,
technicians, and patients. Desnick also gave Entine a
videotape explaining the Desnick Eye Center’s services.
Unbeknownst to Desnick, Entine had dispatched persons
equipped with concealed cameras to offices of the Desnick
Eye Center in Wisconsin and Indiana. Posing as patients,
these persons–seven in all–requested eye examinations.

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Plaintiffs Glazer and Simon are among the employees of
the Desnick Eye Center who were secretly videotaped
examining these “test patients.”
The program aired on June 10. Donaldson introduces the
segment by saying, “We begin tonight with the story of a
so-called ‘big cutter,’ Dr. James Desnick…. [I]n our
undercover investigation of the big cutter you’ll meet
tonight, we turned up evidence that he may also be a big
charger, doing unnecessary cataract surgery for the money.”
Brief interviews with four patients of the Desnick Eye
Center follow. One of the patients is satisfied (“I was
blessed”); the other three are not–one of them says, “If you
got three eyes, he’ll get three eyes.” Donaldson then reports
on the experiences of the seven test patients. The two who
were under 65 and thus not eligible for Medicare
reimbursement were told they didn’t need cataract surgery.
Four of the other five were told they did. Glazer and Simon
are shown recommending cataract surgery to them.
Donaldson tells the viewer that PrimeTime Live has hired a
professor of ophthalmology to examine the test patients
who had been told they needed cataract surgery, and the
professor tells the viewer that they didn’t need it–with
regard to one he says, “I think it would be near malpractice
to do surgery on him.” Later in the segment he denies that
this could just be an honest difference of opinion between
professionals.
An ophthalmic surgeon is interviewed who had turned
down a job at the Desnick Eye Center because he would
not have been “able to screen who I was going to operate
on.” He claims to have been told by one of the doctors at
the Center (not Glazer or Simon) that “as soon as I reject
them [i.e., turn down a patient for cataract surgery], they’re
going in the next room to get surgery.” A former marketing
executive for the Center says Desnick took advantage of
“people who had Alzheimer’s, people who did not know
what planet they were on, people whose quality of life

70

wouldn’t change one iota by having cataract surgery done.”
Two patients are interviewed who report miserable
experiences with the Center–one claiming that the doctors
there had failed to spot an easily visible melanoma, another
that as a result of unnecessary cataract surgery her “eye
ruptured,” producing “running pus.” A former employee
tells the viewer that Dr. Desnick alters patients’ medical
records to show they need cataract surgery–for example,
changing the record of one patient’s vision test from 20/30
to 20/80–and that he instructs all members of his staff to
use pens of the same color in order to facilitate the
alteration of patients’ records.
One symptom of cataracts is that lights of normal
brightness produce glare. Glazer is shown telling a patient,
“You know, you’re getting glare. I would say we could do
significantly better [with an operation].” And Simon is
shown asking two patients, “Do you ever notice any glare
or blurriness when you’re driving, or difficulty with the
signs?” Both say no, and immediately Donaldson tells the
viewer that “the Desnick Center uses a very interesting
machine, called an auto-refractor, to determine whether
there are glare problems.” Donaldson demonstrates the
machine, then says that “Paddy Kalish is an optometrist
who says that when he worked at the Desnick clinic from
1987 to 1990, the machine was regularly rigged. He says he
watched a technician tamper with the machine, this way”–
and then Kalish gives a demonstration, adding, “This
happened routinely for all the older patients that came in
for the eye exams.” Donaldson reveals that Dr. Desnick
has obtained a judgment against Kalish for defamation, but
adds that “Kalish is not the only one to tell us the machine
may have been rigged. PrimeTime talked to four other
former Desnick employees who say almost everyone failed
the glare test.”
There is more, including mention of a proceeding begun by
the Illinois Medical Board in which Dr. Desnick is charged

71

with a number of counts of malpractice and deception–and
an “ambush” interview. Donaldson accosts Desnick at
O’Hare Airport and cries, “Is it true, Doctor, that you
changed medical records to show less vision than your
patients actually have? We’ve been told, Doctor, that you’ve
changed the glare machine so we have a different reading.
Is that correct? Doctor, why won’t you respond to the
questions?”
The plaintiffs’ claims fall into two distinct classes. The first
arises from the broadcast itself, the second from the means
by which ABC and Entine obtained the information that
they used in the broadcast. The first is a class of one. The
broadcast is alleged to have defamed the three plaintiffs by
charging that the glare machine is tampered with. No other
aspect of the broadcast is claimed to be tortious. The
defendants used excerpts from the Desnick videotape in
the broadcast, and the plaintiffs say that this was done
without Dr. Desnick’s permission. But they do not claim
that in showing the videotape without authorization the
defendants infringed copyright, cast the plaintiffs in a false
light, or otherwise invaded a right, although they do claim
that the defendants had obtained the videotape fraudulently
(a claim in the second class). And they do not claim that
any of the other charges in the broadcast that are critical of
them, such as that they perform unnecessary surgery or that
Dr. Desnick tampers with patients’ medical records, are
false.
We begin with the charge of defamation, which the parties
agree is governed by Illinois law. [The court held that this
cause of action could not be dismissed at this stage of
litigation.]
The second class of claims in this case concerns, as we said,
the methods that the defendants used to create the
broadcast segment. There are four such claims: that the
defendants committed a trespass in insinuating the test
patients into the Wisconsin and Indiana offices of the

72

Desnick Eye Center, that they invaded the right of privacy
of the Center and its doctors at those offices (specifically
Glazer and Simon), that they violated federal and state
statutes regulating electronic surveillance, and that they
committed fraud by gaining access to the Chicago office by
means of a false promise that they would present a “fair
and balanced” picture of the Center’s operations and would
not use “ambush” interviews or undercover surveillance.
To enter upon another’s land without consent is a trespass.
The force of this rule has, it is true, been diluted somewhat
by concepts of privilege and of implied consent. But there
is no journalists’ privilege to trespass. Prahl v. Brosamle, 98
Wis.2d 130, 295 N.W.2d 768, 780-81 (App.1980); Le
Mistral, Inc. v. Columbia Broadcasting System, 61 A.D.2d 491,
402 N.Y.S.2d 815 (1978). And there can be no implied
consent in any nonfictitious sense of the term when express
consent is procured by a misrepresentation or a misleading
omission. The Desnick Eye Center would not have agreed
to the entry of the test patients into its offices had it known
they wanted eye examinations only in order to gather
material for a television expose of the Center and that they
were going to make secret videotapes of the examinations.
Yet some cases, illustrated by Martin v. Fidelity & Casualty
Co., 421 So.2d 109, 111 (Ala.1982), deem consent effective
even though it was procured by fraud. There must be
something to this surprising result. Without it a restaurant
critic could not conceal his identity when he ordered a
meal, or a browser pretend to be interested in merchandise
that he could not afford to buy. Dinner guests would be
trespassers if they were false friends who never would have
been invited had the host known their true character, and a
consumer who in an effort to bargain down an automobile
dealer falsely claimed to be able to buy the same car
elsewhere at a lower price would be a trespasser in the
dealer’s showroom. Some of these might be classified as
privileged trespasses, designed to promote competition.

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Others might be thought justified by some kind of implied
consent–the restaurant critic for example might point by
way of analogy to the use of the “fair use” defense by book
reviewers charged with copyright infringement and argue
that the restaurant industry as a whole would be injured if
restaurants could exclude critics. But most such efforts at
rationalization would be little better than evasions. The fact
is that consent to an entry is often given legal effect even
though the entrant has intentions that if known to the
owner of the property would cause him for perfectly
understandable and generally ethical or at least lawful
reasons to revoke his consent.
The law’s willingness to give effect to consent procured by
fraud is not limited to the tort of trespass. The Restatement
gives the example of a man who obtains consent to sexual
intercourse by promising a woman $100, yet (unbeknownst
to her, of course) he pays her with a counterfeit bill and
intended to do so from the start. The man is not guilty of
battery, even though unconsented-to sexual intercourse is a
battery. Restatement (Second) of Torts Sec. 892B,
illustration 9, pp. 373-74 (1979). Yet we know that to
conceal the fact that one has a venereal disease transforms
“consensual” intercourse into battery. Crowell v. Crowell, 180
N.C. 516, 105 S.E. 206 (1920). Seduction, standardly
effected by false promises of love, is not rape, Pletnikoff v.
State, 719 P.2d 1039, 1043 (Alaska App.1986); intercourse
under the pretense of rendering medical or psychiatric
treatment is, at least in most states. Compare State v. Tizard,
1994 WL 630498, * 8-10 (Tenn.Crim.App. Nov. 10, 1994),
with Boro v. Superior Court, 163 Cal.App.3d 1224, 210
Cal.Rptr. 122 (1985). It certainly is battery. Bowman v. Home
Life Ins. Co., 243 F.2d 331 (3d Cir.1957); Commonwealth v.
Gregory, 132 Pa.Super. 507, 1 A.2d 501 (1938). Trespass
presents close parallels. If a homeowner opens his door to
a purported meter reader who is in fact nothing of the
sort–just a busybody curious about the interior of the

74

home–the homeowner’s consent to his entry is not a
defense to a suit for trespass. See State v. Donahue, 93
Or.App. 341, 762 P.2d 1022, 1025 (1988); Bouillon v. Laclede
Gaslight Co., 148 Mo.App. 462, 129 S.W. 401, 402 (1910).
And likewise if a competitor gained entry to a business
firm’s premises posing as a customer but in fact hoping to
steal the firm’s trade secrets. Rockwell Graphic Systems, Inc. v.
DEV Industries, Inc., 925 F.2d 174, 178 (7th Cir.1991); E.I.
duPont deNemours & Co. v. Christopher, 431 F.2d 1012, 1014
(5th Cir.1970).
How to distinguish the two classes of case–the seducer
from the medical impersonator, the restaurant critic from
the meter-reader impersonator? The answer can have
nothing to do with fraud; there is fraud in all the cases. It
has to do with the interest that the torts in question, battery
and trespass, protect. The one protects the inviolability of
the person, the other the inviolability of the person’s
property. The woman who is seduced wants to have sex
with her seducer, and the restaurant owner wants to have
customers. The woman who is victimized by the medical
impersonator has no desire to have sex with her doctor; she
wants medical treatment. And the homeowner victimized
by the phony meter reader does not want strangers in his
house unless they have authorized service functions. The
dealer’s objection to the customer who claims falsely to
have a lower price from a competing dealer is not to the
physical presence of the customer, but to the fraud that he
is trying to perpetuate. The lines are not bright–they are not
even inevitable. They are the traces of the old forms of
action, which have resulted in a multitude of artificial
distinctions in modern law. But that is nothing new.
There was no invasion in the present case of any of the
specific interests that the tort of trespass seeks to protect.
The test patients entered offices that were open to anyone
expressing a desire for ophthalmic services and videotaped
physicians engaged in professional, not personal,

75

communications with strangers (the testers themselves).
The activities of the offices were not disrupted, as in People
v. Segal, 78 Misc.2d 944, 358 N.Y.S.2d 866 (Crim.Ct.1974),
another case of gaining entry by false pretenses. See also Le
Mistral, Inc. v. Columbia Broadcasting System, supra, 402
N.Y.S.2d at 81 n. 1. Nor was there any “inva[sion of] a
person’s private space,” Haynes v. Alfred A. Knopf, Inc., supra,
8 F.3d at 1229, as in our hypothetical meter-reader case, as
in the famous case of De May v. Roberts, 46 Mich. 160, 9
N.W. 146 (1881) (where a doctor, called to the plaintiff’s
home to deliver her baby, brought along with him a friend
who was curious to see a birth but was not a medical
doctor, and represented the friend to be his medical
assistant), as in one of its numerous modern counterparts,
Miller v. National Broadcasting Co., 187 Cal.App.3d 1463, 232
Cal.Rptr. 668, 679 (1986), and as in Dietemann v. Time, Inc.,
449 F.2d 245 (9th Cir.1971), on which the plaintiffs in our
case rely. Dietemann involved a home. True, the portion
invaded was an office, where the plaintiff performed quack
healing of nonexistent ailments. The parallel to this case is
plain enough, but there is a difference. Dietemann was not
in business, and did not advertise his services or charge for
them. His quackery was private.
No embarrassingly intimate details of anybody’s life were
publicized in the present case. There was no eavesdropping
on a private conversation; the testers recorded their own
conversations with the Desnick Eye Center’s physicians.
There was no violation of the doctor-patient privilege.
There was no theft, or intent to steal, trade secrets; no
disruption of decorum, of peace and quiet; no noisy or
distracting demonstrations. Had the testers been
undercover FBI agents, there would have been no violation
of the Fourth Amendment, because there would have been
no invasion of a legally protected interest in property or
privacy. United States v. White, 401 U.S. 745, 91 S.Ct. 1122,
28 L.Ed.2d 453 (1971); Lewis v. United States, 385 U.S. 206,

76

211, 87 S.Ct. 424, 427-28, 17 L.Ed.2d 312 (1966); Forster v.
County of Santa Barbara, 896 F.2d 1146, 1148-49 (9th
Cir.1990); Northside Realty Associates, Inc. v. United States, 605
F.2d 1348, 1355 (5th Cir.1979). “Testers” who pose as
prospective home buyers in order to gather evidence of
housing discrimination are not trespassers even if they are
private persons not acting under color of law. Cf. id. at
1355. The situation of the defendants’ “testers” is
analogous. Like testers seeking evidence of violation of
anti-discrimination laws, the defendants’ test patients
gained entry into the plaintiffs’ premises by misrepresenting
their purposes (more precisely by a misleading omission to
disclose those purposes). But the entry was not invasive in
the sense of infringing the kind of interest of the plaintiffs
that the law of trespass protects; it was not an interference
with the ownership or possession of land. We need not
consider what if any difference it would make if the
plaintiffs had festooned the premises with signs forbidding
the entry of testers or other snoops. Perhaps none, see
United States v. Centennial Builders, Inc., 747 F.2d 678, 683
(11th Cir.1984), but that is an issue for another day.
What we have said largely disposes of two other claims–
infringement of the right of privacy, and illegal wiretapping.
[These claims were dismissed.]
Last is the charge of fraud in the defendants’ gaining entry
to the Chicago office and being permitted while there to
interview staff and film a cataract operation, and in their
obtaining the Desnick Eye Center’s informational
videotape. [This claim was also dismissed.]
….
AFFIRMED IN PART, REVERSED IN PART, AND
REMANDED.

77

1.3 Nuisance
1.3.1. Defined
Fountainebleau v. Forty-Five Twenty-Five, 114 So. 2d
357 (Ct. App. Fl., 3d Dist., 1959)
Sibley, Grusmark, Barkdull & King, Miami Beach, for
appellants.
Anderson & Nadeau, Miami, for appellee.
PER CURIAM
This is an interlocutory appeal from an order temporarily
enjoining the appellants from continuing with the
construction of a fourteen-story addition to the
Fontainebleau Hotel, owned and operated by the
appellants. Appellee, plaintiff below, owns the Eden Roc
Hotel, which was constructed in 1955, about a year after
the Fontainebleau, and adjoins the Fontainebleau on the
north. Both are luxury hotels, facing the Atlantic Ocean.
The proposed addition to the Fontainebleau is being
constructed twenty feet from its north property line, 130
feet from the mean high water mark of the Atlantic Ocean,
and 76 feet 8 inches from the ocean bulkhead line. The 14story tower will extend 160 feet above grade in height and
is 416 feet long from east to west. During the winter
months, from around two o’clock in the afternoon for the
remainder of the day, the shadow of the addition will
extend over the cabana, swimming pool, and sunbathing
areas of the Eden Roc, which are located in the southern
portion of its property.
In this action, plaintiff-appellee sought to enjoin the
defendants-appellants from proceeding with the
construction of the addition to the Fontainebleau (it
appears to have been roughly eight stories high at the time
suit was filed), alleging that the construction would
interfere with the light and air on the beach in front of the
Eden Roc and cast a shadow of such size as to render the

78

beach wholly unfitted for the use and enjoyment of its
guests, to the irreparable injury of the plaintiff; further, that
the construction of such addition on the north side of
defendants’ property, rather than the south side, was
actuated by malice and ill will on the part of the defendants’
president toward the plaintiff’s president; and that the
construction was in violation of a building ordinance
requiring a 100-foot setback from the ocean. It was also
alleged that the construction would interfere with the
easements of light and air enjoyed by plaintiff and its
predecessors in title for more than twenty years and
“impliedly granted by virtue of the acts of the plaintiff’s
predecessors in title, as well as under the common law and
the express recognition of such rights by virtue of Chapter
9837, Laws of Florida 1923 * * *.” Some attempt was also
made to allege an easement by implication in favor of the
plaintiff’s property, as the dominant, and against the
defendants’ property, as the servient, tenement.
The defendants’ answer denied the material allegations of
the complaint, pleaded laches and estoppel by judgment.
The chancellor heard considerable testimony on the issues
made by the complaint and the answer and, as noted,
entered a temporary injunction restraining the defendants
from continuing with the construction of the addition. His
reason for so doing was stated by him, in a memorandum
opinion, as follows:
In granting the temporary injunction in
this case the Court wishes to make
several things very clear. The ruling is
not based on any alleged presumptive
title nor prescriptive right of the
plaintiff to light and air nor is it based
on any deed restrictions nor recorded
plats in the title of the plaintiff nor of
the defendant nor of any plat of
record. It is not based on any zoning

79

ordinance nor on any provision of the
building code of the City of Miami
Beach nor on the decision of any
court, nisi prius or appellate. It is
based solely on the proposition that no
one has a right to use his property to
the injury of another. In this case it is
clear from the evidence that the
proposed use by the Fontainebleau will
materially damage the Eden Roc.
There is evidence indicating that the
construction of the proposed annex by
the Fontainebleau is malicious or
deliberate for the purpose of injuring
the Eden Roc, but it is scarcely
sufficient, standing alone, to afford a
basis for equitable relief.
This is indeed a novel application of the maxim sic utere tuo
ut alienum non laedas. This maxim does not mean that one
must never use his own property in such a way as to do any
injury to his neighbor. It means only that one must use his
property so as not to injure the lawful rights of another. In
Reaver v. Martin Theatres, under this maxim, it was stated that
“it is well settled that a property owner may put his own
property to any reasonable and lawful use, so long as he
does not thereby deprive the adjoining landowner of any
right of enjoyment of his property which is recognized and
protected by law, and so long as his use is not such a one as the law
will pronounce a nuisance.” [Emphasis supplied.]
No American decision has been cited, and independent
research 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
across the adjoining land of his neighbor. Even at common
law, the landowner had no legal right, in the absence of an
easement or uninterrupted use and enjoyment for a period
of 20 years, to unobstructed light and air from the

80

adjoining land. And the English doctrine of “ancient lights”
has been unanimously repudiated in this country.
There being, then, no legal right to the free flow of light
and air from the adjoining land, it is universally held that
where a structure serves a useful and beneficial purpose, it
does not give rise to a cause of action, either for damages
or for an injunction under the maxim sic utere tuo ut alienum
non laedas, even though it causes injury to another by cutting
off the light and air and interfering with the view that
would otherwise be available over adjoining land in its
natural state, regardless of the fact that the structure may
have been erected partly for spite.
We see no reason for departing from this universal rule. If,
as contended on behalf of plaintiff, public policy demands
that a landowner in the Miami Beach area refrain from
constructing buildings on his premises that will cast a
shadow on the adjoining premises, an amendment of its
comprehensive planning and zoning ordinance, applicable
to the public as a whole, is the means by which such
purpose should be achieved. (No opinion is expressed here
as to the validity of such an ordinance, if one should be
enacted pursuant to the requirements of law.) But to
change the universal rule - and the custom followed in this
state since its inception - that adjoining landowners have an
equal right under the law to build to the line of their
respective tracts and to such a height as is desired by them
(in in absence, of course, of building restrictions or
regulations) amounts, in our opinion, to judicial legislation.
As stated in Musumeci v. Leonardo, “So use your own as not
to injure another’s property is, indeed, a sound and salutary
principle for the promotion of justice, but it may not and
should not be applied so as gratuitously to confer upon an
adjacent property owner incorporeal rights incidental to his
ownership of land which the law does not sanction.”
We have also considered whether the order here reviewed
may be sustained upon any other reasoning, conformable

81

to and consistent with the pleadings, regardless of the
erroneous reasoning upon which the order was actually
based. We have concluded that it cannot.
The record affirmatively shows that no statutory basis for
the right sought to be enforced by plaintiff exists. The socalled Shadow Ordinance enacted by the City of Miami
Beach at plaintiff’s behest was held invalid in City of Miami
Beach v. State ex rel. Fontainebleau Hotel Corp. It also
affirmatively appears that there is no possible basis for
holding that plaintiff has an easement for light and air,
either express or implied, across defendants’ property, nor
any prescriptive right thereto - even if it be assumed,
arguendo, that the common-law right of prescription as to
“ancient lights” is in effect in this state. And from what we
have said heretofore in this opinion, it is perhaps
superfluous to add that we have no desire to dissent from
the unanimous holding in this country repudiating the
English doctrine of ancient lights.
….
Since it affirmatively appears that the plaintiff has not
established a cause of action against the defendants by
reason of the structure here in question, the order granting
a temporary injunction should be and it is hereby reversed
with directions to dismiss the complaint.
Reversed with directions.
[Author's
Note:
Go
to: http://www.concurringopinions.com/archives
/2005/11/what_next_googl.html for several pictures of the hotels
and extension.]
Adams v. Cleveland-Cliffs Iron Co., 602 N.W.2d 215
(Mich. Ct. App. 1999).
Bridges and Bridges (by Caroline Bridges), Negaunee, for
the plaintiffs.

82

Butzel Long (by John H. Dudley, Jr. and Ronald E.
Reynolds), Detroit, and Richard M. Graybill, Ishpeming,
for the defendants.
Before: WHITBECK,
O’CONNELL, JJ.

P.J.,

and

MARKMAN

and

O'CONNELL, J.
Defendants appeal as of right from a jury verdict awarding
damages in trespass for invasions of plaintiffs’ property by
intrusions of dust, noise, and vibrations. The gravamen of
this appeal presents the question whether Michigan
recognizes a cause of action in trespass stemming from
invasions of these intangible agents. No published decision
of an appellate court of this state is directly on point.
Because of the importance of this issue of first impression,
we will expound on it in some detail. Following a recitation
of facts, we will examine the origins of the doctrines of
trespass to land and nuisance, observe recent developments
of those doctrines in this and other jurisdictions, and then
reaffirm for this state the traditional requirements for a
cause of action in trespass.
We conclude that the law of trespass in Michigan does not
cover airborne particulate, noise, or vibrations, and that a
complaint alleging damages resulting from these irritants
normally sounds instead in nuisance.1
I. Facts
Plaintiffs brought suit seeking damages in both trespass and
nuisance, complaining of dust, noise, and vibrations
emanating from the Empire Mine, which is operated by
defendant Cleveland-Cliffs Iron Company and its
subsidiary, defendant Empire Iron Mining Partnership.

1 This Court has noted before that “claims of trespass and nuisance are difficult to

distinguish and include overlapping concepts.” Traver Lakes Community
Maintenance Ass’n v. Douglas Co., 224 Mich.App. 335, 344, 568 N.W.2d 847
(1997).

83

The Empire Mine is one of the nation’s largest mines,
producing eight million tons of iron ore annually. The mine
operates twenty-four hours a day, year round. At the time
this action was commenced, all but three plaintiffs lived
near the mine, in the village of Palmer in Marquette
County. Cleveland-Cliffs, which also operates the nearby
Tilden Mine, employs approximately 2,200 persons, making
it the area’s largest civilian employer.
The Empire Mine was originally dug in the 1870s, then
expanded in the 1960s. A second pit was added in 1987,
and a third in 1990-91.2 The mine engages in blasting
operations approximately three times a week, year round,
and the extraction and processing of the iron ore generates
a great deal of airborne dust. Plaintiffs complain that the
blasting sends tremors through their property and that
defendants’ dust constantly accumulates inside and outside
plaintiffs’ homes. Plaintiffs assert that these emanations
aggravate their need to clean and repaint their homes,
replace carpets and drapes, repair cracks in all masonry,
replace windows, and tend to cause plumbing leaks and
broken sewer pipes.
According to the testimony, the dust from the mine is fine,
gritty, oily, and difficult to clean. Some plaintiffs
complained that they seldom opened their windows
because of the dust, and virtually every plaintiff complained
that the snow in Palmer tended to be gray or black.
Evidence presented at trial indicates that the emissions
from the mining operations have consistently remained
within applicable air-quality standards and that the amount
of particulate matter accumulating over Palmer each month

2 With each expansion, surface material, also called “overburden,” consisting of

soil, subsoil, and rock was blasted loose then stockpiled at the edge of the mine
property. As the mine was dug deeper, waste rock was likewise blasted loose and
stockpiled. The resulting mass of overburden and waste rock is unsightly and so
large that residents of Palmer have nicknamed it “Mt. Palmer” and say that it
causes their town to have early sunsets.

84

amounts to less than the thickness of a sheet of paper, but
that this amount is nonetheless four times greater than
what normally settles onto surrounding communities.
In addition to concerns about the dust, many plaintiffs
testified that the noise and vibrations from the blasts
caused them to suffer shock, nervousness, and
sleeplessness. Finally, several plaintiffs asserted that these
conditions diminished the value of their homes, in some
cases to the point of rendering them unmarketable.
At the close of proofs, the trial court instructed the jury
concerning both trespass and nuisance. The jury found that
three of the plaintiffs were not entitled to recover under
either theory. Concerning the remaining fifty-two plaintiffs,
however, the jury was unable to agree on a verdict
regarding the nuisance claim, but returned a verdict in favor
of these plaintiffs with regard to the trespass claim,
awarding damages totaling $599,199. The court denied
defendants’ posttrial motions for a new trial or judgment
notwithstanding the verdict.
The sole issue that defendants raise on appeal is the
propriety of the trial court’s jury instruction concerning
plaintiffs’ trespass claim:
Every unauthorized intrusion onto the
lands of another is a trespass upon
those lands, and it gives rise to a right
to recover damages for the trespass, if
any damages were caused by the
trespass. So a landowner who causes
emissions, dust, vibration, noise from
his property onto another [sic]
property assumes the risk of trespass,
if the dust, vibration, noise affects the
neighbor’s property, or if he causes by
his actions, damages or invasion of his
neighbor’s land.

85

So again, to repeat. A trespass is an unauthorized intrusion
into the lands of another.
Defendants did not object on the record that the trial
court’s instruction improperly recognized a cause of action
in trespass where the intrusion complained of consisted of
airborne particulate, noise, or vibrations, nor did they
initially frame their issue on appeal that way. Nonetheless,
in the interests of justice,3 and because the issue concerns a
question of law and all the facts necessary for its resolution
have been presented,4 we will examine the related doctrines
of trespass and nuisance and will determine how they bear
on the intrusions at issue in this case. See Frericks v.
Highland Twp., 228 Mich.App. 575, 586, 579 N.W.2d 441
(1998) (“this Court may go beyond the issues raised on
appeal and address issues that, in this Court’s opinion,
justice requires be considered and resolved”).5
II. Trespass and Nuisance
The general concept of “property” comprises various
rights-a “bundle of sticks,” as it is often called6 -which is
usually understood to include “[t]he exclusive right of
possessing, enjoying, and disposing of a thing.” Black’s Law
Dictionary (6th ed., 1990), p. 1216. As this latter
characterization suggests, the right to exclude others from
one’s land and the right to quiet enjoyment of one’s land
have customarily been regarded as separate sticks in the

3 See Phinney v. Perlmutter, 222 Mich.App. 513, 557, 564 N.W.2d 532 (1997).

See Providence Hosp. v. Nat’l Labor Union Health & Welfare Fund, 162
Mich.App. 191, 194-195, 412 N.W.2d 690 (1987).
4

Before oral argument, this Court ordered, and the parties provided,
supplemental briefs addressing the issue, “shoulddoes Michigan recognize a cause
of action in trespass for airborne particulate matter andor blastings.”
5

6 Some attribute the origins of this metaphor to a work by Benjamin N. Cardozo,

dating from shortly before he ascended to the United States Supreme Court. See
Cardozo, The Paradoxes of Legal Science, p. 129 (“The bundle of power and
privileges to which we give the name of ownership is not constant through the
ages. The faggots must be put together and rebound from time to time.”).

86

bundle. E.g., Lucas v. South Carolina Coastal Council, 505
U.S. 1003, 1044, 112 S.Ct. 2886, 120 L.Ed.2d 798 (1992)
(Blackmun, J., dissenting) (addressing as separate
“attributes of ownership” the rights of exclusion,
alienation, and enjoyment); Biggs v. Comm’r of Internal
Revenue, 632 F.2d 1171, 1177 (C.A.5, 1980) (” ‘title to real
property … is nothing more than a bundle of potential
causes of action: for trespass, to quiet title, for interference
with quiet enjoyment, and so on,’ ” quoting Starker v.
United States, 602 F.2d 1341, 1355 [C.A.9, 1979] );
Livingston, Public Access to Virginia’s Tidelands: A
Framework for Analysis of Implied Dedications and Public
Prescriptive Rights, 24 Wm & Mary L R 669, 698 (1983)
(“The notion of fee simple ownership carries with it the
idea that the owner may exclude all others from his
property, shall have the quiet enjoyment of it, and shall be
free from unrecorded conflicting interests in it.”), citing
Cribbet, Principles of the Law of Property (2d ed., 1975),
pp. 263-332.7 Thus, possessory rights to real property

7 A.M. Honore likewise distinguished between the rights of exclusion and of use

and enjoyment, listing the incidents of ownership as follows:
(1) the right to exclusive possession;
(2) the right to personal use and enjoyment;
(3) the right to manage use by others;
(4) the right to the income from use by others;

(5) the right to the capital value, including alienation, consumption, waste, or
destruction;
(6) the right to security (that is, immunity from expropriation);
(7) the power of transmissibility by gift, devise, or descent;
(8) the lack of any term on these rights;
(9) the duty to refrain from using the object in ways that harm others;
(10) the liability to execution for repayment of debts; and
(11) residual rights on the reversion of lapsed ownership rights held by others.

87

include as distinct interests the right to exclude and the
right to enjoy, violations of which give rise to the distinct
causes of action respectively of trespass and nuisance.
Prosser & Keeton, Torts (5 th ed.), s 87, p. 622.
A. Historical Overview
“At common law, trespass was a form of action brought to
recover damages for any injury to one’s person or property
or relationship with another.” Black’s Law Dictionary (6th
ed.), p. 1502. This broad usage of the term “trespass” then
gave way to a narrower usage, referring to intrusions upon
a person’s “tangible property, real or personal.” Prosser &
Keeton, supra at s 13, p. 67. Today, the general concept of
“trespass” has been refined into several specific forms of
trespass, see Black’s Law Dictionary (6th ed.), pp. 15021504, and related doctrines known by various names.
Landowners seeking damages or equitable relief in response
to violations of their possessory rights to land now
generally proceed under the common-law derivatives of
strict liability, negligence, nuisance, or trespass to land.8 It is
the latter two products of this evolution from the general
concept of trespass that are at issue in the present case.
”‘[T]respass is an invasion of the plaintiff’s interest in the
exclusive possession of his land, while nuisance is an
interference with his use and enjoyment of it.’ ” Hadfield v.
Oakland Co. Drain Comm’r, 430 Mich. 139, 151, 422
N.W.2d 205 (1988) (Brickley, J., joined by Riley, C.J., and
Cavanagh, J.), quoting Prosser & Keeton, supra at s 87, p.
622. Historically, “[e]very unauthorized intrusion upon the

Heller, The Tragedy of the Anticommons: Property in the Transition from Marx
to Markets, 111 Harv L R 621, 663, n. 187 (1998), citing Honore, Ownership, in
Oxford Essays in Jurisprudence (A.G. Guest ed., 1961), pp. 107, 112-128
(emphasis added).
8 See generally Keeton, Trespass, Nuisance, and Strict Liability, 59 Columbia L R

457, 459 (1959).

88

private premises of another is a trespass….” Giddings v.
Rogalewski, 192 Mich. 319, 326, 158 N.W. 951 (1916).
Because a trespass violated a landholder’s right to exclude
others from the premises, the landholder could recover at
least nominal damages even in the absence of proof of any
other injury. Id. Recovery for nuisance, however,
traditionally required proof of actual and substantial injury.9
Further, the doctrine of nuisance customarily called for
balancing the disturbance complained of against the social
utility of its cause.10
Traditionally, trespass required that the invasion of the land
be direct or immediate and in the form of a physical,
tangible object. See, e.g., Williams v. Oeder, 103 Ohio
App.3d 333, 338, n. 2, 659 N.E.2d 379 (1995) (noting then
abandoning those traditional requirements); Davis v.
Georgia-Pacific Corp., 251 Or. 239, 242, 445 P.2d 481
(1968) (abandoning the traditional requirements); Norwood
v. Eastern Oregon Land Co., 139 Or. 25, 37, 5 P.2d 1057
(1931), modified 139 Or. 25, 7 P.2d 996 (1932) (wrongful
diversion of water onto another’s land does not constitute
trespass to land). Under these principles, recovery in
trespass for dust, smoke, noise, and vibrations was
generally unavailable because they were not considered
tangible or because they came to the land via some
intervening force such as wind or water. Instead, claims
concerning these irritants were generally pursued under a
nuisance theory.
B. Recent Trends

9 To put it another way, “Trespass was liability-producing regardless of the degree

of harm the invasion caused, while nuisance required substantial harm as a liability
threshold.” Halper, Untangling the Nuisance Knot,26 B C Envt’l Aff L R 89, 121122 (1998), citing 4 Restatement Torts, 1st, ch. 40, p. 225.
10 See Halper, supra at 122 (“the Restatement (First) expected plaintiffs to bear

uncompensated harms that might, for them, be quite severe, if the utility of the
defendant’s conduct to society at large was great enough”).

89

Plaintiffs urge this Court to hold that they are entitled to
recover in trespass for invasions of their premises by
intangible things without regard for how these annoyances
came to their land. Plaintiffs would have us follow the
example of certain courts from other jurisdictions, which
have eliminated the traditional requirements for trespass of
a direct intrusion by a tangible object, directing the inquiry
instead toward the nature of the interest harmed. These
courts have permitted recovery in trespass for indirect,
intangible invasions that nonetheless interfered with
exclusive possessory interests in the land. See 75 Am Jur
2d, Trespass, s 33, p. 33 and cases cited. See also Mercer v.
Rockwell Int’l Corp., 24 F.Supp.2d 735, 743 (W.D.Ky.,
1998) (allowing an action in “negligent trespass”
concerning intrusions of invisible polychlorinated biphenyls
[PCBs] that actually harm the property); Williams, supra
(airborne particulate matter from a sand and gravel
processing facility, an asphalt plant, and a concrete plant
constituted trespass); Martin v. Reynolds Metals Co., 221
Or. 86, 342 P.2d 790 (1959) (trespass may stem from
fluoride compounds in the form of gases and particles). We
agree with the characterization of cases of this sort found
in Prosser & Keeton as being “in reality, examples of the
tort of private nuisance or liability for harm resulting from
negligence,” not proper trespass cases. Prosser & Keeton,
supra at s 13, pp. 71-72 (concerning “decisions finding a
trespass constituted by the entry of invisible gases and
microscopic particles, but only if harm results”).
Accordingly, we decline plaintiffs’ invitation to strip the
tort of trespass to land of its distinctive accouterments and
commingle its identity with other causes of action.
As stated above, the traditional view of trespass required a
direct entry onto the land by a tangible object. However,
recent trends have led to an erosion of these requirements.
Some courts have eliminated the requirement of a direct
entry onto the land. E.g., Bradley v. American Smelting &

90

Refining Co., 104 Wash.2d 677, 686, 709 P.2d 782 (1985);
Borland v. Sanders Lead Co., Inc., 369 So.2d 523, 527 (Ala.,
1979); Martin, supra at 101, 342 P.2d 790 (observing the
trend without deciding whether to join it), citing Prosser,
Torts (2d ed.), p. 56; 1 Restatement, Torts, s 158, comment
h. Some courts have likewise eliminated the requirement of
a tangible object. E.g., Bradley, supra at 686, 709 P.2d 782;
Borland, supra at 529. See also Martin, supra at 100, 342
P.2d 790 (trespass to land may be accomplished by “a ray
of light, by an atomic particle, or by a particulate of
fluoride”). In some cases the direct-and-tangible inquiry has
been supplanted by an inquiry into the force and energy of
the intruding agent. E.g., Bradley, supra at 687, 709 P.2d
782; Borland, supra at 527; Martin, supra at 93, 342 P.2d
790.
The courts that have deviated from the traditional
requirements of trespass, however, have consequently
found troublesome the traditional principle that at least
nominal damages are presumed in cases of trespass. Thus,
under the so-called modern view of trespass, in order to
avoid subjecting manufacturing plants to potential liability
to every landowner on whose parcel some incidental
residue of industrial activity might come to rest, these
courts have grafted onto the law of trespass a requirement
of actual and substantial damages. Bradley, supra at 692,
709 P.2d 782; Borland, supra at 529. See also Martin, supra
at 96, 342 P.2d 790 (observing that “[t]here are adjudicated
cases which have refused to find a trespass where the
intrusion is clearly established but where the court has felt
that the possessor’s interest should not be protected”).
Logically following from a requirement of substantial
damages is the weighing of those damages against the social
utility of the activity causing them. Martin, supra at 97, 342
P.2d 790 (balancing “the intrusion … against the socially
desirable conduct of the defendant”). See also Bradley,
supra at 685, 709 P.2d 782 (“While the strict liability origins

91

of trespass encourage courts to eschew a balancing test in
name, there is authority for denying injunctive relief if
defendant has exhausted his technological opportunities for
control…. Acknowledging technological or economic
justifications for trespassory invasions does away with the
historically harsh treatment of conduct interfering with
another’s possessory interests.”).11
We do not welcome this redirection of trespass law toward
nuisance law. The requirement that real and substantial
damages be proved, and balanced against the usefulness of
the offending activity, is appropriate where the issue is
interference with one’s use or enjoyment of one’s land;
applying it where a landowner has had to endure an
unauthorized physical occupation of the landowner’s land,
however, offends traditional principles of ownership. The
law should not require a property owner to justify
exercising the right to exclude. To countenance the erosion
of presumed damages in cases of trespass is to endanger
the right of exclusion itself.
To summarize, the effects of recent trends in the law of
trespass have included eliminating the requirements of a
direct invasion by a tangible object, requiring proof of
actual and substantial damages, and weighing the plaintiff’s
damages against the social utility of the operation causing
them. This so-called “modern view of trespass” appears,
with all its nuances and add-ons, merely to replicate
traditional nuisance doctrine as recognized in Michigan.
Indeed, the trends recognized or advanced by Bradley,
Borland, Martin, and their kindred spirits have conflated
nuisance with trespass to the point of rendering it difficult

11 We are of the opinion that this kind of analysis is generally only required in a

nuisance case and that it is better to preserve that aspect of traditional trespass
analysis requiring no proof of actual injury because the invasion of the plaintiff’s
right to exclude was regarded as tortious by itself.

92

to delineate the difference between the two theories of
recovery.
With all of these modern adjustments to traditional trespass
law, it is little wonder that it has become difficult to
differentiate between trespass and nuisance. These
adjustments have caused some to observe that ” ‘the line
between trespass and nuisance has become “wavering and
uncertain,” ’ ” Bradley, supra at 684, 709 P.2d 782, quoting
Rodgers, Environmental Law, s 2.13, p. 154 (1977). See
also Burke v. Briggs, 239 N.J.Super. 269, 272, 571 A.2d 296
(1990) (the blurring of the distinction between the two
causes of action “has often led to results that are difficult to
explain”), citing Prosser & Keeton, supra at s 87, p. 622.
Indeed, “it is apparent that the law of trespass and the law
of nuisance come very close to merging.” Martin, supra at
97, 342 P.2d 790. We prefer to preserve the separate
identities of trespass and nuisance.
C. Adkins v. Thomas Solvent Co.
As stated above, no Michigan appellate court has squarely
confronted the question whether the law of trespass in this
state covers intrusions of intangible things or intrusions
that are effected by indirect means. However, plaintiffs
argue that in Adkins v. Thomas Solvent Co., 440 Mich.
293, 487 N.W.2d 715 (1992), the Michigan Supreme Court
impliedly eliminated the requirements that a trespass
involve intrusions that are both direct and tangible. We
disagree.
In Adkins, the plaintiffs sought damages in nuisance from
the defendant chemical company, on the ground that public
perceptions to the effect that the defendant’s activities were
causing environmental contamination of the groundwater
caused depreciation of their property values, id. at 300, 487
N.W.2d 715, even though the plaintiffs acknowledged that
the defendant’s activities in fact did not harm their

93

groundwater, id. at 318, 487 N.W.2d 715. Our Supreme
Court ruled that summary disposition was proper because
unfounded fears of contamination did not constitute a
significant interference with plaintiffs’ use and enjoyment
of their property and, thus, did not rise to the level of an
actionable private nuisance claim. Id. at 318-319, 487
N.W.2d 715.
In discussing the historical development of nuisance law,
the Court observed that the doctrine of nuisance evolved
from that of trespass, id. at 307-308, 487 N.W.2d 715, and
recognized that traditionally in cases of trespass damage
was presumed whereas in nuisance substantial damage had
to be proved:
Any intentional and unprivileged entry
on land is a trespass without a showing
of damage, since those who own land
have an exclusive right to its use; but
an act that interferes with use but is
not in itself a use is not actionable
without damage. The substantial
interference requirement is to satisfy
the need for a showing that the land is
reduced in value because of the
defendant’s conduct.
Id. at 304-305, 487 N.W.2d 715, quoting Prosser & Keeton,
supra at s 87, p. 623.
However, in footnote 23, the Court recognized the recent
developments in other jurisdictions under which the
requirement for nuisance of substantial damage had crept
into trespass:
The common-law development of
trespass, like nuisance, is … illustrative
of a need to limit recovery to a proper
case. In Bradley [supra at] 690-691 …,
709 P.2d 782, the court discussed the

94

modern view of trespass, which
allowed recovery for indirect invasions
of property such as those caused by
smoke or air particles. Airborne
particles might also give rise to an
action in nuisance. To avoid
“sanctioning actions in trespass by
every landowner within a hundred
miles of a manufacturing plant,” the
court interposed the actual and
substantial damages requirement. Id.,
at p. 692, 709 P.2d 782. The
substantial
interference
doctrine
achieves the same purpose in nuisance
law.
Adkins, supra at 310, n. 23, 487 N.W.2d 715.
Plaintiffs admit that Adkins was a nuisance case, but argue
that by way of the language quoted immediately above our
Supreme Court adopted the “modern view of trespass”
allowing recovery for invasions of property such as those
of which plaintiffs complain. However, we do not regard
dicta from Adkins in which the Supreme Court referred to
a sister-state trespass case to illustrate a point of law
regarding nuisance as effecting a merger of the two
doctrines in this regard. We have in fact found no case in
this state in which recovery in trespass was allowed merely
for intrusions of particulate matter, noise, or vibrations, and
we decline to inflect this state’s jurisprudence in that
direction. Instead, we prefer to respect the traditional
requirement of a direct invasion and agree with Prosser and
Keeton, supra at s 13, p. 72, that “[t]he historical
requirement of an intrusion by a person or some tangible
thing seems the sounder way to go about protecting the
exclusive right to the use of property.”
III. Holding

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Recovery for trespass to land in Michigan is available only
upon proof of an unauthorized direct or immediate
intrusion of a physical, tangible object onto land over
which the plaintiff has a right of exclusive possession. Once
such an intrusion is proved, the tort has been established,
and the plaintiff is presumptively entitled to at least
nominal damages. Where the possessor of land is menaced
by noise, vibrations, or ambient dust, smoke, soot, or
fumes, the possessory interest implicated is that of use and
enjoyment, not exclusion, and the vehicle through which a
plaintiff normally should seek a remedy is the doctrine of
nuisance. To prevail in nuisance, a possessor of land must
prove significant harm resulting from the defendant’s
unreasonable interference with the use or enjoyment of the
property. Cloverleaf Car Co. v. Phillips Petroleum Co., 213
Mich.App. 186, 193, 540 N.W.2d 297 (1995), citing Adkins,
supra at 304, 487 N.W.2d 715. Thus, in nuisance, the
plaintiff must prove all damages, which may be awarded
only to the extent that the defendant’s conduct was
“unreasonable” according to a public-policy assessment of
its overall value. In the present case, because the intrusions
of which plaintiffs complained were intangible things, the
trial court erred in allowing the jury to award damages in
trespass. Instead, any award of damages would have had to
proceed from plaintiffs’ alternative but (as yet) unsuccessful
theory of nuisance.
As discussed above, we acknowledge that numerous courts
in other jurisdictions have permitted the erosion of the
traditional elements of the tort of trespass to land, directing
their inquiry instead toward whether the invasion
complained of interferes with the exclusive possession of
the land generally without regard to whether the intrusion
is direct or indirect, tangible or intangible. We prefer to
retain the traditional elements, however, because they serve
as gatekeepers-safeguarding genuine claims of trespass and
keeping the line between the torts of trespass and nuisance

96

from fading into a “wavering and uncertain” ambiguity.
Further, retaining the distinction between the two theories
of recovery limits the possibilities for dual liability
stemming from the same conduct and results. See
Reynolds, Distinguishing Trespass and Nuisance: A
Journey Through a Shifting Borderland, 44 Okla LR227,
229 (1991).
The trial court’s instruction regarding trespass, as set forth
above, recognized a right to recover in trespass “if any
damages were caused by the trespass” and that the agents
potentially causing the damages included “emissions, dust,
vibration, noise.” Thus the trial court seems to have
mirrored (and indeed gone beyond) the so-called modern
view of trespass according to which intangible irritants
could constitute trespass. This instruction thus erroneously
conflated trespass with nuisance and produced the
anomalous result that the jury failed to reach agreement on
the nuisance claim while awarding damages for intrusions
of intangible things pursuant to the trespass claim.
A. Tangible
Because noise or vibrations are clearly not tangible objects,
we hold that they cannot give rise to an action in trespass in
this state.12 We further hold that dust must generally be
considered intangible and thus not actionable in trespass.
We realize, of course, that dust particles are tangible objects
in a strict sense that they can be touched and are comprised
of physical elements. However, we agree with those
authorities that have recognized, for practical purposes,

12 This holds even if the noise or vibrations are so intense as to shatter all glass

and fell all masonry or otherwise so persistent as to drive all persons from the
premises. Although such hazards would indeed infringe on a landowner’s
possessory interest, it is the interest in use and enjoyment of the premises, not in
exclusion from them, and therefore the cause of action lies not in trespass, but in
nuisance or the related doctrines of negligence or strict liability.

97

that dust, along with other forms of airborne particulate,
does not normally present itself as a significant physical
intrusion. See anno: Recovery in trespass for injury to land
caused by airborne pollutants, 2 A.L.R.4th 1054, 1055
(“[t]raditionally, an invasion of the exclusive possession of
land by intangible substances, such as an airborne pollutant,
was usually held by the court not to constitute a trespass”);
Williams, supra, 103 Ohio App.3d at 338, n. 2, 659 N.E.2d
379 (observing that some courts have held that a ” ‘tangible
invasion’ or ‘object’ ” must be “more substantial than dust,
gas, or fumes”), citing Bradley, supra at 686, 709 P.2d 782.
Dust particles do not normally occupy the land on which
they settle in any meaningful sense; instead they simply
become a part of the ambient circumstances of that space.
If the quantity and character of the dust are such as to
disturb the ambiance in ways that interfere substantially
with the plaintiff’s use and enjoyment of the land, then
recovery in nuisance is possible.
B. Direct
“[S]ome courts have held that if an intervening force, such
as wind or water, carries pollutants onto the plaintiff’s land,
then the entry is not ‘direct.’” Williams, supra at 338, n. 2,
659 N.E.2d 379, citing Bradley, supra at 686, 709 P.2d 782.
However, in order to avoid harsh results most courts have
avoided an overly strict distinction between direct and
indirect invasions, see Prosser & Keeton, supra at s 13, pp.
68-69. Still, “[t]he differentiation between direct and
indirect results may not be absolutely dead.” Id. at 71.13
Plaintiffs cite Littell v. Knorr, 24 Mich.App. 446, 180
N.W.2d 337 (1970), for the proposition that the law of
trespass in this state does not concern itself with whether
13 See also Reynolds, supra at 228 (“the old element of trespass that prescribed a

direct invasion of the plaintiff’s interests still has significance” [emphasis in
original]).

98

the invading agent comes to the land by foot, vehicle, air,
or other means. However, Littell in fact does not stand for
that proposition. Although Littell states that “liability can
result from pounding, compacting soil, vibrations, etc.,” id.
at 450, 180 N.W.2d 337, that amorphous statement does
not identify the pertinent theory or theories of recovery.
We hold that the direct invasion requirement for an action
in trespass to land is still alive in Michigan. The question
then becomes, how strong must the connection between
cause and effect be in order to satisfy this requirement?14
We agree with the Restatement view that “[i]t is enough
that an act is done with knowledge that it will to a
substantial certainty result in the entry of the foreign
matter.” 1 Restatement Torts, 2d, s 158, comment i, p. 279.
Thus, a “direct or immediate” invasion for purposes of
trespass is one that is accomplished by any means that the
offender knew or reasonably should have known would
result in the physical invasion of the plaintiff’s land.15
C. Damages
The question of presumed damages hardly seems at issue in
this case. There can be little doubt that plaintiffs proved

14 Because we conclude that no trespass existed in the present case because the

intrusions at issue were not tangible things, we need not decide whether
defendants caused those intrusions to enter plaintiffs’ land by direct or immediate
means for purposes of trespass law.
15 We note that the Restatement itself presents its rule as a departure from the

traditional requirement of a direct or immediate invasion. 1 Restatement Torts,
2d, s 158, comment i, pp. 278-279 (“it is not necessary that the foreign matter
should be thrown directly and immediately upon the other’s land”). We would,
however, adopt the Restatement’s formulation as a liberalization, not a rejection,
of the strictest sense of the traditional requirement for a direct or immediate
invasion. Accordingly, rather than reject this traditional requirement, we preserve
this requirement as something akin to proximate cause, meaning “that which, in a
natural and continuous sequence, unbroken by any efficient intervening cause,
produces the injury and without which the accident could not have happened, if
the injury be one which might be reasonably anticipated or foreseen.” Black’s Law
Dictionary (6th ed.), p. 1225.

99

actual damages to the jury’s satisfaction, albeit, for reasons
set forth above, damages arguably flowing from nuisance,
not trespass. Nonetheless, because the jury instruction at
issue did not recognize the principle of presumed damages,
we take this opportunity to reiterate this final distinction
between trespass and nuisance.
The trial court told the jury that “trespass … gives rise to a
right to recover damages for the trespass, if any damages
were caused by the trespass.” This instruction would be
appropriate for nuisance, or negligence, under which
theories the plaintiff must prove all damages, but not for
trespass. A jury instruction with respect to the latter should
announce that because the violation of the right to exclude
causes cognizable injury in and of itself, a plaintiff proving
that violation is presumptively entitled to at least nominal
damages. The jury should be further instructed that beyond
the presumed damages, the plaintiff may recover any
additional, actual damages proved.
The distinction between presumed damages in cases of
trespass and the need to prove damages in cases of
nuisance may well be reconciled with the Supreme Court’s
statement in footnote 23 of Adkins that recovery in
“trespass, like nuisance” should be limited “to a proper
case.” We hold that recovery in trespass is appropriate for
any appreciable intrusion onto land in violation of the
plaintiff’s right to exclude, while recovery in nuisance is
appropriate for only substantial and unreasonable
interference with the plaintiff’s right to quiet enjoyment.
IV. Conclusion
There is no need to reformulate the traditional law of
trespass to accommodate the problems of airborne
pollution, noise, or vibrations, because the doctrines of
nuisance and related causes of action have always stood
ready to provide remedies. Trespass in Michigan remains a
distinct doctrine providing a remedy for violation of a

100

distinct property right. A possessor of land proving a direct
or immediate intrusion of a physical, tangible object onto
the land is presumptively entitled to recover at least
nominal damages even absent any proof of actual injury
and may recover additional damages for any injuries
actually proved.
Because Michigan does not recognize a cause of action in
trespass for airborne particulate, noise, or vibrations, we
hereby vacate the jury verdict in this matter and remand
this case to the trial court for further proceedings
consistent with this opinion. We do not retain jurisdiction.
Reversed and remanded. We do not retain jurisdiction.
1.3.2. Law and Economics
From A. Mitchell Polinsky and Steven Shavell, Economic
Analysis of Law, in The New Palgrave Dictionary of
Economics (2d ed.)
Economic analysis of law seeks to identify the effects of legal rules
on the behavior of relevant actors and whether these effects are
socially desirable. The approach employed is that of economic
analysis generally: the behavior of individuals and firms is described
assuming that they are forward looking and rational, and the
framework of welfare economics is adopted to assess the social
desirability of outcomes. The field may be said to have begun with
Bentham (1789), who systematically examined how actors would
behave in the face of legal incentives (especially criminal sanctions)
and who evaluated outcomes with respect to a clearly stated
measure of social welfare (utilitarianism). His work was left
essentially undeveloped until four important contributions were
made: Coase (1960) on externalities and liability, Becker (1968) on
crime and law enforcement, Calabresi (1970) on accident law, and
Posner (1972) on economic analysis of law in general.
….
1. PROPERTY LAW.
….

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Externalities. When individuals use property, they may cause
externalities, namely, harm or benefit to others. As a general
matter, it is socially desirable for individuals to do more than is in
their self-interest to reduce detrimental externalities and to act so as
to increase beneficial externalities. The socially optimal resolution
of harmful externalities often involves the behavior of victims as
well as that of injurers. If victims can do things to reduce the
amount of harm more cheaply than injurers (say install air filters to
avoid pollution), it is optimal for victims to do so. Moreover,
victims can sometimes alter their locations to reduce their exposure
to harm.
Legal intervention can ameliorate problems of externalities. A
major form of intervention that has been studied is direct regulation,
under which the state restricts permissible behavior, such as
requiring factories to use smoke arrestors. Closely related is the
injunction, whereby a potential victim can enlist the power of the
state to force a potential injurer to take steps to prevent harm or to
cease his activity. Society can also make use of financial incentives
to induce injurers to reduce harmful externalities. Under the
corrective tax, a party pays the state an amount equal to the expected
harm he causes, for example, the expected harm due to a discharge
of a pollutant into a lake. There is also liability, a privately-initiated
means of providing financial incentives, under which injurers pay
for harm done if sued by victims. These methods differ in the
information that the state needs to apply them, in whether they
require or harness information that victims have about harm, and
in other respects, such that each may be superior to the other in
different circumstances (Shavell, 1993).
Parties affected by externalities will sometimes have the
opportunity to make mutually beneficial agreements with those
who generate the externalities, as Coase (1960) stressed. But
bargaining may not occur for many reasons: cost; collective action
problems (such as when many victims each face small harms); and
lack of knowledge of harm (such as from an invisible carcinogen).
If bargaining does occur, it may not be successful, owing to
asymmetric information. These difficulties often make bargaining a

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problematic solution to externality problems and imply that liability
rules are needed, as discussed by Calabresi and Melamed (1972).
….
6. CRITICISM OF ECONOMIC ANALYSIS OF LAW.
Many observers, and particularly noneconomists, view economic
analysis of law with skepticism. We consider several such criticisms
here.
Description of behavior. It is sometimes claimed that individuals and
firms do not respond to legal rules as rational maximizers of their
well-being. For example, it is often asserted that decisions to
commit crimes are not governed by economists’ usual assumptions.
Some skeptics also suggest that, in predicting individuals’ behavior,
certain standard assumptions are inapplicable. For example, in
predicting compliance with a law, the assumption that preferences
be taken as given would be inappropriate if a legal rule would
change people’s preferences, as some say was the case with civil
rights laws and environmental laws. In addition, laws may frame
individuals’ understanding of problems, which could affect their
probability assessments or willingness to pay. The emerging field of
behavioral economics, as well as work in various disciplines that
address social norms, is beginning to examine these sorts of issues
(Jolls et al., 1998).
Distribution of income. A frequent criticism of economic analysis of
law concerns its focus on efficiency, to the exclusion of the
distribution of income. The claim of critics is that legal rules should
be selected in a manner that takes into account their effects on the
rich and the poor. But achieving sought-after redistribution
through income tax and transfer programs tends to be superior to
redistribution through the choice of legal rules. This is because
redistribution through legal rules and the tax-transfer system both
will distort individuals’ labor-leisure decisions in the same manner,
but redistribution through legal rules often will require choosing an
inefficient rule, which imposes an additional cost (Shavell, 1981;
Kaplow and Shavell, 1994b).

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Moreover, it is difficult to redistribute income systematically
through the choice of legal rules: many individuals are never
involved in litigation; and for those who are, there is substantial
income heterogeneity among plaintiffs as well as among
defendants. Additionally, in contractual contexts, the choice of a
legal rule often will not have any distributional effect because
contract terms, notably, the price, will adjust so that any agreement
into which parties enter will continue to reflect the initial
distribution of bargaining power between them.
Concerns for fairness. An additional criticism is that the conventional
economic approach slights important concerns about fairness,
justice, and rights. Some of these notions refer implicitly to the
appropriateness of the distribution of income and, accordingly, are
encompassed by our preceding remarks. Also, to some degree, the
notions are motivated by instrumental concerns. For example, the
attraction of paying fair compensation to victims must derive in
part from the beneficial risk reduction effected by such payments,
and the appeal of obeying contractual promises must rest in part on
the desirable consequences contract performance has on
production and exchange. To some extent, therefore, critics’
concerns are already taken into account in standard economic
analysis.
However, many who promote fairness, justice, and rights do not
regard these notions merely as some sort of proxy for attaining
instrumental objectives. Instead, they believe that satisfying these
notions is intrinsically valuable. This view also can be partially
reconciled with the economic conception of social welfare: if
individuals have a preference for a legal rule or institution because
they regard it as fair, that should be credited in the determination
of social welfare, just as any preference should.
But many commentators take the position that conceptions of
fairness are important as ethical principles in themselves, without
regard to any possible relationship the principles may have to
individuals’ welfare. This opinion is the subject of longstanding
debate among moral philosophers. Some readers may be skeptical
of normative views that are not grounded in individuals’ well-being

104

because embracing such views entails a willingness to sacrifice
individuals’ well-being. Indeed, consistently pursuing any nonwelfarist principle must sometimes result in everyone being made
worse off; see Kaplow and Shavell (2001, 2002).
Efficiency of judge-made law. Also criticized is the contention of some
economically-oriented legal academics, notably Posner (1972), that
judge-made law tends to be efficient (in contrast to legislation,
which is said to reflect the influence of special interest groups).
Some critics believe that judge-made law is guided by notions of
fairness, or is influenced by legal culture or judges’ biases, and thus
will not necessarily be efficient. Whatever is the merit of the critics’
claims, they are descriptive assertions about the law, and their
validity does not bear on the power of economics to predict
behavior in response to legal rules or on the value of normative
economic analysis of law.
Ronald H. Coase , The Problem of Social Cost, 3 J. of Law
and Econ. 1 (1960) (excerpted)
This paper is concerned with those actions of business firms which
have harmful effects on others. The standard example is that of a
factory the smoke from which has harmful effects on those
occupying neighboring properties.
...
The traditional approach has tended to obscure the nature of the
choice that has to be made. The question is commonly thought of
as one in which A inflicts harm on B and what has to be decided is:
how should we restrain A? But this is wrong. We are dealing with a
problem of a reciprocal nature. To avoid the harm to B would
inflict harm on A. The real question that has to be decided is:
should A be allowed to harm B or should B be allowed to harm A?
The problem is to avoid the more serious harm. I instanced in my
previous article the case of a confectioner the noise and vibrations
from whose machinery disturbed a doctor in his work. To avoid
harming the doctor would inflict harm on the confectioner....
...[Consider] the contamination of a stream. If we assume that the
harmful effect of the pollution is that it kills the fish, the question

105

to be decided is: is the value of the fish lost greater or less than the
value of the product which the contamination of the stream makes
possible. It goes almost without saying that this problem has to be
looked at in total and at the margin.
I propose to start my analysis by examining a case in which most
economists would presumably agree that the problem would be
solved in a completely satisfactory manner: when the damaging
business has to pay for all damage caused and the pricing system
works smoothly (strictly this means that the operation of a pricing
system is without cost).
A good example of the problem under discussion is afforded by
the case of straying cattle which destroy crops growing on
neighboring land… . . I shall assume … that the price of the crop
is $1 per ton. Also, I assume that the relation between the number
of cattle in the herd and the annual crop loss is as follows:
Number in Annual Crop Marginal Crop
Herd
Loss (tons) Loss (tons)
1

1

1

2

3

2

3

6

3

4
10
4
Given that the cattle-raiser is liable for the damage caused, the
additional annual cost imposed on the cattle-raiser if he increased
his herd from, say, two to three steers is $3 and in deciding on the
size of the herd, he will take this into account along with his other
costs. That is, he will not increase the size of the herd unless the
value of the additional meat produced (assuming that the cattleraiser slaughters the cattle) is greater than the additional costs that
this will entail, including the value of the additional crops
destroyed…
...
...Assume initially that the value of the crop obtained from
cultivating a given tract of land is $12 and that the cost incurred in

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cultivating this tract of land is $10, the net gain from cultivating the
land being $2. I assume for purposes of simplicity that the farmer
owns the land. Now assume that the cattle-raiser starts operations
on the neighboring property and that the value of the crops
damaged is $l. In this case $11 is obtained by the farmer from sale
on the market and $1 is obtained from the cattle-raiser for damage
suffered and the net gain remains $2.
Now suppose that the cattle-raiser finds it profitable to increase the
size of his herd, even though the amount of damage rises to $3;
which means that the value of the additional meat production is
greater than the additional costs, including the additional $2
payment for damage. But the total payment for damage is now $3.
The net gain to the farmer from cultivating the land is still $2. The
cattle-raiser would be better off if the farmer would agree not to
cultivate his land for any payment less than $3. The farmer would
be agreeable to not cultivating the land for any payment greater
than $2. There is clearly room for a mutually satisfactory bargain
which would lead to the abandonment of cultivation… . .
...
...A procedure which merely provided for payment for damage to
the crop caused by the cattle but which did not allow for the
possibility of cultivation being discontinued would result in too
small an employment of factors of production in cattle-raising and
too large an employment of factors in cultivation of the crop. But
given the possibility of market transactions, a situation in which
damage to crops exceeded the rent of the land would not endure.
Whether the cattle-raiser pays the farmer to leave the land
uncultivated or himself rents the land by paying the land-owner an
amount slightly greater than the farmer would pay (if the farmer
was him-self renting the land), the final result would be the same
and would maximize the value of production… . .
...
I now turn to the case in which, although the pricing system is
assumed to work smoothly (that is, costlessly), the damaging
business is not liable for any of the damage which it causes. This

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business does not have to make a payment to those damaged by its
actions… ....I return to the case of the farmer and the cattle-raiser.
The farmer would suffer increased damage to his crop as the size
of the herd increased. Suppose that the size of the cattle-raiser’s
herd is three steers (and that this is the size of the herd that would
be maintained if crop damage was not taken into account). Then
the farmer would be willing to pay up to $3 if the cattle-raiser
would reduce his herd to two steers, up to $5 if the herd were
reduced to one steer and would pay up to $6 if cattle-raising was
abandoned. The cattle-raiser would therefore receive $3 from the
farmer if he kept two steers instead of three. This $3 foregone is
therefore part of the cost incurred in keeping the third steer.
Whether the $3 is a payment which the cattle-raiser has to make if
he 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
whether it is a sum of money which he would have received if he
did not keep a third steer (which it would be if the cattle-raiser was
not liable to the farmer for damage caused to the crop) does not
affect the final result. In both cases $3 is part of the cost of adding
a third steer, to be included along with the other costs. If the
increase in the value of production in cattle-raising through
increasing the size of the herd from two to three is greater than the
additional costs that have to be incurred (including the $3 damage
to crops), the size of the herd will be increased. Otherwise, it will
not. The size of the herd will be the same whether the cattle raiser
is liable for damage caused to the crop or not.
...
It is necessary to know whether the damaging-business is liable
or not for damage caused since without the establishment of this
initial delimitation of rights there can be no marked transactions
to transfer and recombine them. But the ultimate result (which
maximizes the value of production) is independent of the legal
position if the pricing system is assumed to work without cost.
…

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...Of course, if market transactions were costless, all that matters
(questions of equity apart) is that the rights of the various parties
should be well-defined and the results of legal actions easy to
forecast. But as we have seen, the situation is quite different when
market transactions are so costly as to make it difficult to change
the arrangement of rights established by the law. In such cases, the
courts directly influence economic activity. It would therefore seem
desirable that the courts should understand the economic
consequences of their decisions and should, insofar as this is
possible without creating too much uncertainty about the legal
position itself, take these consequences into account when making
their decisions. Even when it is possible to change the legal
delimitation of rights through market transactions, it is obviously
desirable to reduce the need for such transactions and thus reduce
the employment of resources in carrying them out.
1.3.3. Problems
Problems
1. True or false: To obtain nominal damages, a plaintiff must show
at least some form of loss.
2. True or false: Even if consent is obtained by fraud, it may negate
trespass.
3. True or false: For the Adams court, vibrations interfering with
one’s property would not be considered a nuisance unless they
were so intense that they physically damaged or destroyed
structures on the plaintiff’s land.
4. The Fountainebleau hotel extension would clearly harm the
Eden Roc hotel by casting a shadow over the pool area. The “sic
utere” formulation - that one’s right to use one’s property is limited
only to the extent a use would harm others - would seem to dictate
that Fountainebleau’s harmful use not be allowed. How did the
court deal with “sic utere”?
5. What are two externalities that arise from an individual’s decision
to drive across town to visit a friend? Are these problematic, and if
so, what’s one thing we could do to solve this problem?

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Answers
1. To obtain nominal damages, a plaintiff must show at least some
form of loss.
False: It’s impossible to avoid all ambiguity here, but nominal
damages are awarded for some causes of action (like trespass
to land) even in the absence of any loss. While it’s possible to
construe “loss” so broadly as to include bare violation of a
legal right, I don’t think that’s the most reasonable
construction.
2. Even if consent is obtained by fraud, it may negate trespass.
True: This is Desnick. Note I used the word “may” here.
Desnick does not hold that any entrance to property obtained
by lying about one’s purpose is ok, only that dishonestly
obtained consent does not amount to trespass where the entry
does not cause the injuries against which trespass is designed
to protect.
3. For the Adams court, vibrations interfering with one’s property
would not be considered a trespass unless they were so intense that
they physically damaged or destroyed structures on the plaintiff’s
land.
False: See n.12. Such vibrations are obviously harmful, but
they aren’t a violation of the landowners right to exclude but
rather his or her right to use/enjoy the property, a right
protected in nuisance.
4. The Fountainebleau hotel extension would clearly harm the
Eden Roc hotel by casting a shadow over the pool area. The “sic
utere” formulation - that one’s right to use one’s property is limited
only to the extent a use would harm others - would seem to dictate
that Fountainebleau’s harmful use not be allowed. How did the
court deal with “sic utere”?

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The court said that the principle extends only to preventing
uses of one’s property that harm the rights of another. The
court decided that the plaintiff had no legal right to receive
sunlight through the property of a neighbor.
5. What are two externalities that arise from an individual’s decision
to drive across town to visit a friend? Are these problematic, and if
so, what’s one thing we could do to solve this problem?
You should be looking for any of the aspects of driving that
impose costs the driver does not bear. For example pollution
and congestion are marginally increased by one’s driving. We
generally do not bear, individually, the full cost of either. You
might also observe that the risk of injury to others may not be
part of the private cost-benefit calculation that goes into
driving. It’s true, though, that one’s insurance premiums will
increase with an accident. And it is a cost to you that by
driving you risk an increase in your premiums. This cost,
though, might not reflect the true cost of the risk you impose
on others.
How to solve? Well, if we do like Pigou, we’ll look for ways to
internalize these externalities. This generally means some kind
of tax (whether you call it a toll, tax, surcharge, fee, etc.) or
possibly regulation. So we may choose a gas tax meant to
charge an individual for the harm caused by pollution. We
might use some sort of toll system meant to charge an
individual for his or her marginal contribution to road
congestion. There are plenty of other ways to answer here, so
long as you identify a cost that’s not internalized and make
some suggestion for how we should prevent an individual
from making a distorted (i.e. selfishly smart but socially dumb)
economic decision.

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1.3.4. Application
Prah v. Maretti, 108 Wis. 2d 223 (1982)
John F. Maloney, Milwaukee, argued, for plaintiff-appellant;
Jonathan A. Mulligan and Mulcahy & Wherry, S. C.,
Milwaukee, on brief.
Jack C. Horth, Milwaukee, for defendant-respondent.
Craig Gordon Smith, Milwaukee, and Alan S. Miller,
Washington, D. C., amicus curiae for Natural Resources
Defense Council.
Anthony C. Liotta, Acting Asst. Atty. Gen., Land and
Natural Resources Division, Washington, D. C., Joan F.
Kessler, U. S. Atty., E. D. Wis., Milwaukee, Kathryn A.
Oberly, Chief Energy Section, J. Vance Hughes, Chief, Sp.
Litigation Section, Jacques B. Gelin and James P. Leape,
Attys., U. S. Dept. of Justice, Washington, D. C., for
amicus curiae.
ABRAHAMSON, Justice.
… . This case … involves a conflict between one
landowner (Glenn Prah, the plaintiff) interested in
unobstructed access to sunlight across adjoining property
as a natural source of energy and an adjoining landowner
(Richard D. Maretti, the defendant) interested in the
development of his land.
The circuit court concluded that the plaintiff presented no
claim upon which relief could be granted and granted
summary judgment for the defendant. We reverse the
judgment of the circuit court and remand the cause to the
circuit court for further proceedings.
I.
According to the complaint, the plaintiff is the owner of a
residence which was constructed during the years 19781979. The complaint alleges that the residence has a solar
system which includes collectors on the roof to supply

112

energy for heat and hot water and that after the plaintiff
built his solar-heated house, the defendant purchased the
lot adjacent to and immediately to the south of the
plaintiff’s lot and commenced planning construction of a
home. The complaint further states that when the plaintiff
learned of defendant’s plans to build the house he advised
the defendant that if the house were built at the proposed
location, defendant’s house would substantially and
adversely affect the integrity of plaintiff’s solar system and
could cause plaintiff other damage. Nevertheless, the
defendant began construction. The complaint further
alleges that the plaintiff is entitled to “unrestricted use of
the sun and its solar power” and demands judgment for
injunctive relief and damages.1
After filing his complaint, the plaintiff moved for a
temporary injunction to restrain and enjoin construction by
the defendant. In ruling on that motion the circuit court
heard testimony, received affidavits and viewed the site.
The record made on the motion reveals the following
additional facts: Plaintiff’s home was the first residence
built in the subdivision, and although plaintiff did not build
his house in the center of the lot it was built in accordance
with applicable restrictions. Plaintiff advised defendant that
if the defendant’s home were built at the proposed site it
would cause a shadowing effect on the solar collectors
which would reduce the efficiency of the system and
possibly damage the system. To avoid these adverse effects,
plaintiff requested defendant to locate his home an
additional several feet away from the plaintiff’s lot line, the
exact number being disputed. Plaintiff and defendant failed

1 … . For a discussion of protecting solar access, see Note, Obtaining Access to Solar

Energy: Nuisance, Water Rights, and Zoning Administration, 45 Bkyn. L. Rev. 357
(1979); Comment, Obstruction of Sunlight as a Private Nuisance, 65 Cal. L. Rev.
94-119 (1977); Comment, Solar Rights: Guaranteeing a Place in the Sun, 57 Ore. L.
Rev. 94 (1977); Note, The Allocation of Sunlight; Solar Rights and the Prior Appropriation
Doctrine, 47 U. Colo. L. Rev. 421 (1976).

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to reach an agreement on the location of defendant’s home
before defendant started construction. The Architectural
Control Committee and the Planning Commission of the
City of Muskego approved the defendant’s plans for his
home, including its location on the lot. After such approval,
the defendant apparently changed the grade of the property
without prior notice to the Architectural Control
Committee. The problem with defendant’s proposed
construction, as far as the plaintiff’s interests are
concerned, arises from a combination of the grade and the
distance of defendant’s home from the defendant’s lot line.
The circuit court denied plaintiff’s motion for injunctive
relief, declared it would entertain a motion for summary
judgment and thereafter entered judgment in favor of the
defendant.
II.
….
In this case there is some ambiguity whether the judgment
was based on the complaint or on factual matters outside
the pleadings which were presented to the circuit court in
connection with the motion for a temporary injunction.
Consequently, we shall first test the sufficiency of the
complaint and then determine whether the matters outside
the pleadings present disputed material facts sufficient to
justify a trial.
III.
In testing the sufficiency of the complaint the facts pleaded
by the plaintiff, and all reasonable inferences therefrom, are
accepted as true. The pleadings are to be liberally construed
with a view to substantial justice to the parties, and the
complaint should be dismissed as legally insufficient only if
“it is quite clear that under no circumstances can the
plaintiff recover.”
….

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We consider first whether the complaint states a claim for
relief based on common law private nuisance. This state
has long recognized that an owner of land does not have an
absolute or unlimited right to use the land in a way which
injures the rights of others. The rights of neighboring
landowners are relative; the uses by one must not
unreasonably impair the uses or enjoyment of the other.2
When one landowner’s use of his or her property
unreasonably interferes with another’s enjoyment of his or
her property, that use is said to be a private nuisance. Hoene
v. Milwaukee, 17 Wis. 2d 209, 214 (1962); Metzger v. Hochrein,
107 Wis. 267, 269 (1900). See also Prosser, Law of Torts sec.
89, p. 591 (2d ed. 1971).
The private nuisance doctrine has traditionally been
employed in this state to balance the rights of landowners,
and this court has recently adopted the analysis of private

In Abdella v. Smith, 34 Wis. 2d 393, 399 (1967), this court quoted with
approval Dean Prosser’s description of the judicial balancing of the
reciprocal rights and privileges of neighbors in the use of their land:
2

Most of the litigation as to private nuisance has dealt with
the conflicting interests of landowners and the question of
the reasonableness of the defendant’s conduct: The
defendant’s privilege of making a reasonable use of his
own property for his own benefit and conducting his
affairs in his own way is no less important than the
plaintiff’s right to use and enjoy his premises. The two are
correlative and interdependent, and neither is entitled to
prevail entirely, at the expense of the other. Some balance
must be struck between the two. The plaintiff must be
expected to endure some inconvenience rather than curtail
the defendant’s freedom of action, and the defendant
must so use his own property that he causes no
unreasonable harm to the plaintiff. The law of private
nuisance is very largely a series of adjustments to limit the
reciprocal rights and privileges of both. In every case the
court must make a comparative evaluation of the
conflicting interests according to objective legal standards,
and the gravity of the harm to the plaintiff must be
weighed against the utility of the defendant’s conduct.

Prosser, Law of Torts, sec. 89, p. 596 (2d ed. 1971) (Citations omitted).

115

nuisance set forth in the Restatement (Second) of Torts.
The Restatement defines private nuisance as “a
nontrespassory invasion of another’s interest in the private
use and enjoyment of land.” Restatement (Second) of Torts
sec. 821D (1977). The phrase “interest in the private use
and enjoyment of land” as used in sec. 821D is broadly
defined to include any disturbance of the enjoyment of
property. The comment in the Restatement describes the
landowner’s interest protected by private nuisance law as
follows:
The phrase “interest in the use and
enjoyment of land” is used in this
Restatement in a broad sense. It
comprehends not only the interests
that a person may have in the actual
present use of land for residential,
agricultural, commercial, industrial and
other purposes, but also his interests in
having the present use value of the
land unimpaired by changes in its
physical
condition.
Thus
the
destruction of trees on vacant land is
as much an invasion of the owner’s
interest in its use and enjoyment as is
the destruction of crops or flowers
that he is growing on the land for his
present use. ‘Interest in use and
enjoyment’ also comprehends the
pleasure, comfort and enjoyment that
a person normally derives from the
occupancy of land. Freedom from
discomfort and annoyance while using
land is often as important to a person
as freedom from physical interruption
with his use or freedom from
detrimental change in the physical
condition of the land itself.

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Restatement (Second) of Torts, Sec. 821D, Comment b, p.
101 (1977)
Although the defendant’s obstruction of the plaintiff’s
access to sunlight appears to fall within the Restatement’s
broad concept of a private nuisance as a nontrespassory
invasion of another’s interest in the private use and
enjoyment of land, the defendant asserts that he has a right
to develop his property in compliance with statutes,
ordinances and private covenants without regard to the
effect of such development upon the plaintiff’s access to
sunlight. In essence, the defendant is asking this court to
hold that the private nuisance doctrine is not applicable in
the instant case and that his right to develop his land is a
right which is per se superior to his neighbor’s interest in
access to sunlight. This position is expressed in the maxim
“cujus est solum, ejus est usque ad coelum et ad infernos,”
that is, the owner of land owns up to the sky and down to
the center of the earth. The rights of the surface owner are,
however, not unlimited. U. S. v. Causby, 328 U.S. 256, 260-1
(1946).
The defendant is not completely correct in asserting that
the common law did not protect a landowner’s access to
sunlight across adjoining property. At English common law
a landowner could acquire a right to receive sunlight across
adjoining land by both express agreement and under the
judge-made doctrine of “ancient lights.” Under the doctrine
of ancient lights if the landowner had received sunlight
across adjoining property for a specified period of time, the
landowner was entitled to continue to receive unobstructed
access to sunlight across the adjoining property. Under the
doctrine the landowner acquired a negative prescriptive

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easement and could prevent the adjoining landowner from
obstructing access to light.3
Although American courts have not been as receptive to
protecting a landowner’s access to sunlight as the English
courts, American courts have afforded some protection to
a landowner’s interest in access to sunlight. American
courts honor express easements to sunlight. American
courts initially enforced the English common law doctrine
of ancient lights, but later every state which considered the
doctrine repudiated it as inconsistent with the needs of a
developing country. Indeed, for just that reason this court
concluded that an easement to light and air over adjacent
property could not be created or acquired by prescription
and has been unwilling to recognize such an easement by
implication. Depner v. United States National Bank, 202 Wis.
405, 408 (1930); Miller v. Hoeschler, 126 Wis. 263, 268-69
(1905).
Many jurisdictions in this country have protected a
landowner from malicious obstruction of access to light
(the spite fence cases) under the common law private
nuisance doctrine.4 If an activity is motivated by malice it
lacks utility and the harm it causes others outweighs any
social values. This court was reluctant to protect a
landowner’s interest in sunlight even against a spite fence,
only to be overruled by the legislature. Shortly after this
court upheld a landowner’s right to erect a useless and

3 Pfeiffer,

Ancient Lights: Legal Protection of Access to Solar Energy, 68 ABAJ 288
(1982). No American common law state recognizes a landowner’s right to acquire
an easement of light by prescription. Comment, Solar Lights: Guaranteeing a Place in
the Sun, 57 Ore. L. Rev. 94, 112 (1977).
4 In several of the spite fence cases, courts have recognized the property owner’s

interest in sunlight. Hornsby v. Smith, 191 Ga. 491, 500 (1941) (“the air and light no
matter from which direction they come are God-given, and are essential to the
life, comfort, and happiness of everyone”); Burke v. Smith, 69 Mich. 380, 389
(1888) (“the right to breathe the air and enjoy the sunshine, is a natural one”);
Barger v. Barringer, 151 N.C. 433, 437 (1909) (“light and air are as much a necessity
as water, and all are the common heritage of mankind”).

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unsightly sixteen-foot spite fence four feet from his
neighbor’s windows, Metzger v. Hochrein, 107 Wis. 267
(1900), the legislature enacted a law specifically defining a
spite fence as an actionable private nuisance.5 Thus a
landowner’s interest in sunlight has been protected in this
country by common law private nuisance law at least in the
narrow context of the modern American rule invalidating
spite fences.
This court’s reluctance in the nineteenth and early part of
the twentieth century to provide broader protection for a
landowner’s access to sunlight was premised on three
policy considerations. First, the right of landowners to use
their property as they wished, as long as they did not cause
physical damage to a neighbor, was jealously guarded.
Metzger v. Hochrein, 107 Wis. 267, 272 (1900).
Second, sunlight was valued only for aesthetic enjoyment or
as illumination. Since artificial light could be used for
illumination, loss of sunlight was at most a personal
annoyance which was given little, if any, weight by society.
Third, society had a significant interest in not restricting or
impeding land development. Dillman v. Hoffman, 38 Wis.
559, 574 (1875). This court repeatedly emphasized that in
the growth period of the nineteenth and early twentieth
centuries change is to be expected and is essential to
property and that recognition of a right to sunlight would
hinder property development. The court expressed this
concept as follows:
As the city grows, large grounds
appurtenant to residences must be cut
up to supply more residences…. The
cistern, the outhouse, the cesspool,
and the private drain must disappear in

5 The legislature specifically overruled Metzger, ch. 81, Laws of 1903; sec. 280.08

Stats. 1925. Cf. Steiger v. Nowakowski, 67 Wis. 2d 355 (1975).

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deference to the public waterworks
and sewer; the terrace and the garden,
to the need for more complete
occupancy…. Strict limitation [on the
recognition of easements of light and
air over adjacent premises is] in accord
with the popular conception upon
which real estate has been and is daily
being conveyed in Wisconsin and to
be essential to easy and rapid
development at least of our
municipalities.
Miller v. Hoeschler, supra, 126 Wis. at 268, 270; quoted with
approval in Depner, supra, 202 Wis. at 409.
Considering these three policies, this court concluded that
in the absence of an express agreement granting access to
sunlight, a landowner’s obstruction of another’s access to
sunlight was not actionable. Miller v. Hoeschler, supra, 126
Wis. at 271; Depner v. United States National Bank, supra, 202
Wis. at 410. These three policies are no longer fully
accepted or applicable. They reflect factual circumstances
and social priorities that are now obsolete.
First, society has increasingly regulated the use of land by
the landowner for the general welfare. Euclid v. Ambler
Realty Co., 272 U.S. 365 (1926); Just v. Marinette, 56 Wis. 2d 7
(1972).
Second, access to sunlight has taken on a new significance
in recent years. In this case the plaintiff seeks to protect
access to sunlight, not for aesthetic reasons or as a source
of illumination but as a source of energy. Access to sunlight
as an energy source is of significance both to the landowner

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who invests in solar collectors and to a society which has
an interest in developing alternative sources of energy.6
Third, the policy of favoring unhindered private
development in an expanding economy is no longer in
harmony with the realities of our society. State v. Deetz, 66
Wis. 2d 1 (1974). The need for easy and rapid development
is not as great today as it once was, while our perception of
the value of sunlight as a source of energy has increased
significantly.
Courts should not implement obsolete policies that have
lost their vigor over the course of the years. The law of
private nuisance is better suited to resolve landowners’
disputes about property development in the 1980’s than is a
rigid rule which does not recognize a landowner’s interest
in access to sunlight. As we said in Ballstadt v. Pagel, 202
Wis. 484, 489 (1930), “What is regarded in law as
constituting a nuisance in modern times would no doubt
have been tolerated without question in former times.” We
read State v. Deetz, 66 Wis. 2d 1 (1974), as an endorsement
of the application of common law nuisance to situations
involving the conflicting interests of landowners and as
rejecting per se exclusions to the nuisance law reasonable
use doctrine.
In Deetz the court abandoned the rigid common law
common enemy rule with respect to surface water and
adopted the private nuisance reasonable use rule, namely
that the landowner is subject to liability if his or her
interference with the flow of surface waters unreasonably
6 State and federal governments are encouraging the use of the sun as a significant

source of energy. In this state the legislature has granted tax benefits to encourage
the utilization of solar energy. See Ch. 349, 350, Laws of 1979. See also Ch. 354,
Laws of 1981 (eff. May 7, 1982) enabling legislation providing for local ordinances
guaranteeing access to sunlight.
The federal government has also recognized the importance of solar energy and
currently encourages its utilization by means of tax benefits, direct subsidies and
government loans for solar projects. [citations omitted]

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invades a neighbor’s interest in the use and enjoyment of
land. Restatement (Second) of Torts, sec. 822, 826, 829
(1977) This court concluded that the common enemy rule
which served society “well in the days of burgeoning
national expansion of the mid-nineteenth and earlytwentieth centuries” should be abandoned because it was
no longer “in harmony with the realities of our society.”
Deetz, supra, 66 Wis. 2d at 14-15. We recognized in Deetz
that common law rules adapt to changing social values and
conditions.7
Yet the defendant would have us ignore the flexible private
nuisance law as a means of resolving the dispute between
the landowners in this case and would have us adopt an
approach, already abandoned in Deetz, of favoring the
unrestricted development of land and of applying a rigid
and inflexible rule protecting his right to build on his land

7 This court has recognized “that the common law is susceptible of growth and

adaptation to new circumstances and situations, and that courts have power to
declare and effectuate what is the present rule in respect of a given subject
without regard to the old rule…. The common law is not immutable, but flexible,
and upon its own principles adapts itself to varying conditions.” Dimick v.
Schiedt, 293 U.S. 474, 487, 55 S.Ct. 296, 301, 79 L.Ed. 603 (1935), quoted with
approval in Schwanke v. Garlt, 219 Wis. 367, 371, 263 N.W. 176 (1935). In Bielski
v. Schulze, 16 Wis. 2d 1, 11 (1962), this court said:
Inherent in the common law is a dynamic principle which
allows it to grow and to tailor itself to meet changing
needs within the doctrine of stare decisis, which, if
correctly understood, was not static and did not forever
prevent the courts from reversing themselves or from
applying principles of common law to new situations as
the need arose. If this were not so, we must succumb to a
rule that a judge should let others “long dead and unaware
of the problems of the age in which he lives, do his
thinking for him.” Mr. Justice Douglas, Stare Decisis, 49
Columbia Law Review (1949). 735, 736.
The genius of the common law is its ability to adapt itself
to the changing needs of society.

Moran v. Quality Aluminum Casting Co., 34 Wis. 2d 542, 551 (1967). See also State v.
Esser, 16 Wis. 2d 567, 581 (1962).

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and disregarding any interest of the plaintiff in the use and
enjoyment of his land. This we refuse to do.8
Private nuisance law, the law traditionally used to adjudicate
conflicts between private landowners, has the flexibility to
protect both a landowner’s right of access to sunlight and
another landowner’s right to develop land. Private nuisance
law is better suited to regulate access to sunlight in modern
society and is more in harmony with legislative policy and
the prior decisions of this court than is an inflexible
doctrine of non-recognition of any interest in access to
sunlight across adjoining land.9

8 Defendant’s position that a

landowner’s interest in access to sunlight across
adjoining land is not “legally enforceable” and is therefore excluded per se from
private nuisance law was adopted in Fontainebleau Hotel Corp. v. Forty-five Twenty-five,
Inc., 114 So.2d 357 (Fla. App. 1959), cert. den. 117 So.2d 842 (Fla. 1960). The
Florida district court of appeals permitted construction of a building which cast a
shadow on a neighboring hotel’s swimming pool. The court asserted that nuisance
law protects only those interests “which [are] recognized and protected by law,”
and that there is no legally recognized or protected right to access to sunlight. A
property owner does not, said the Florida court, in the absence of a contract or
statute, acquire a presumptive or implied right to the free flow of light and air
across adjoining land. The Florida court then concluded that a lawful structure
which causes injury to another by cutting off light and air-whether or not erected
partly for spite-does not give rise to a cause of action for damages or for an
injunction. See also People ex rel Hoogasian v. Sears, Roebuck & Co., 52 Ill. 2d 301
(1972).
We do not find the reasoning of Fountainebleau persuasive. The court leaped from
rejecting an easement by prescription (the doctrine of ancient lights) and an
easement by implication to the conclusion that there is no right to protection
from obstruction of access to sunlight. The court’s statement that a landowner
has no right to light should be the conclusion, not its initial premise. The court
did not explain why an owner’s interest in unobstructed light should not be
protected or in what manner an owner’s interest in unobstructed sunlight differs
from an owner’s interest in being free from obtrusive noises or smells or differs
from an owner’s interest in unobstructed use of water. The recognition of a per se
exception to private nuisance law may invite unreasonable behavior.
9 For a discussion of nuisance law, see Ellickson, Alternatives to Zoning: Covenants,

Nuisance Rules, and Fines as Land Use Controls, 40 U. Chi. L. Rev. 681 (1973);
Comment, Nuisance as a Modern Mode of Land Use Control, 46 Wash. L. Rev. 47
(1970).

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We therefore hold that private nuisance law, that is, the
reasonable use doctrine as set forth in the Restatement, is
applicable to the instant case. Recognition of a nuisance
claim for unreasonable obstruction of access to sunlight
will not prevent land development or unduly hinder the use
of adjoining land. It will promote the reasonable use and
enjoyment of land in a manner suitable to the 1980’s. That
obstruction of access to light might be found to constitute
a nuisance in certain circumstances does not mean that it
will be or must be found to constitute a nuisance under all
circumstances. The result in each case depends on whether
the conduct complained of is unreasonable.
Accordingly we hold that the plaintiff in this case has stated
a claim under which relief can be granted. Nonetheless we
do not determine whether the plaintiff in this case is
entitled to relief. In order to be entitled to relief the
plaintiff must prove the elements required to establish
actionable nuisance, and the conduct of the defendant
herein must be judged by the reasonable use doctrine.
IV.
The defendant asserts that even if we hold that the private
nuisance doctrine applies to obstruction of access to
sunlight across adjoining land, the circuit court’s granting of
summary judgment should be affirmed.
Although the memorandum decision of the circuit court in
the instant case is unclear, it appears that the circuit court
recognized that the common law private nuisance doctrine
was applicable but concluded that defendant’s conduct was
not unreasonable.10 The circuit court apparently attempted

10 As noted previously this court has adopted

the reasonableness doctrine set
forth in sec. 822 of the Restatement (Second) of Torts. CEW Mgmt. Corp. v. First
Federal Savings & Loan Association, 88 Wis. 2d 631, 633 (1979). Sec. 822 provides as
follows:
One is subject to liability for a private nuisance if, but only
if, his conduct is a legal cause of an invasion of another’s

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to balance the utility of the defendant’s conduct with the
gravity of the harm. Sec. 826, Restatement (Second) of
Torts (1977).11 The defendant urges us to accept the circuit
court’s balance as adequate. We decline to do so.

interest in the private use and enjoyment of land, and the
invasion is either
(a) intentional and unreasonable, or
(b) unintentional and otherwise actionable under the rules
controlling liability for negligent or reckless conduct, or
for abnormally dangerous conditions or activities.”

Further, sec. 821F, Restatement (Second) of Torts (1977) provides as
follows:
There is liability for a nuisance only to those to whom it
causes significant harm, of a kind that would be suffered
by a normal person in the community or by property in
normal condition and used for a normal purpose.

The factors involved in determining the gravity of the harm caused by
the conduct complained of are set out in sec. 827 of the Restatement as
follows:
11

Sec. 827. Gravity of Harm-Factors Involved.
In determining the gravity of the harm from an intentional
invasion of another’s interest in the use and enjoyment of
land, the following factors are important:
(a) The extent of the harm involved;
(b) the character of the harm involved;
(c) the social value that the law attaches to the type of use
or enjoyment invaded;
(d) the suitability of the particular use or enjoyment
invaded to the character of the locality; and
(e) the burden on the person harmed of avoiding the
harm.
The factors involved in determining the utility of conduct complained of
are set out in sec. 828 of the Restatement as follows:

Sec. 828. Utility of Conduct-Factors Involved.

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The circuit court concluded that because the defendant’s
proposed house was in conformity with zoning regulations,
building codes and deed restrictions, the defendant’s use of
the land was reasonable. This court has concluded that a
landowner’s compliance with zoning laws does not
automatically bar a nuisance claim. Compliance with the
law “is not the controlling factor, though it is, of course,
entitled to some weight.” Bie v. Ingersoll, 27 Wis. 2d 490, 495
(1965). The circuit court also concluded that the plaintiff
could have avoided any harm by locating his own house in
a better place. Again, plaintiff’s ability to avoid the harm is
a relevant but not a conclusive factor. See secs. 826, 827,
828, Restatement (Second) of Torts (1977).
Furthermore, our examination of the record leads us to
conclude that the record does not furnish an adequate basis
for the circuit court to apply the proper legal principles on
summary judgment. The application of the reasonable use
standard in nuisance cases normally requires a full
exposition of all underlying facts and circumstances. Too
little is known in this case of such matters as the extent of
the harm to the plaintiff, the suitability of solar heat in that
neighborhood, the availability of remedies to the plaintiff,
and the costs to the defendant of avoiding the harm.
Summary judgment is not an appropriate procedural
vehicle in this case when the circuit court must weigh
evidence which has not been presented at trial.
….
In determining the utility of conduct that causes an
intentional invasion of another’s interest in the use and
enjoyment of land, the following factors are important:
(a) the social value that the law attaches to the primary
purpose of the conduct;
(b) the suitability of the conduct to the character of the
locality; and
(c) the impracticability of preventing or avoiding the
invasion.

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For the reasons set forth, we reverse the judgment of the
circuit court dismissing the complaint and remand the
matter to circuit court for further proceedings not
inconsistent with this opinion.
….
CALLOW, Justice (dissenting).
The majority has adopted the Restatement’s reasonable use
doctrine to grant an owner of a solar heated home a cause
of action against his neighbor who, in acting entirely within
the applicable ordinances and statutes, seeks to design and
build his home in such a location that it may, at various
times during the day, shade the plaintiff’s solar collector,
thereby impeding the efficiency of his heating system12
during several months of the year. Because I believe the
facts of this case clearly reveal that a cause of action for
private nuisance will not lie, I dissent.
The majority arrives at its conclusion that the common law
private nuisance doctrine is applicable by analogizing this
situation with the spite fence cases which protect a
landowner from malicious obstruction of access to light. See
Piccirilli v. Groccia, 114 R.I. 36, 39 (1974) (plaintiff must
prove allegedly objectionable fence was erected solely for the
avowed purpose of damaging the abutting neighbor and
not for the advantage of the person who constructed the
fence); Schorck v. Epperson, 74 Wyo. 286, 287-88 (1955)
(doctrine of private nuisance founded on maxim that no
one should have a legal right to make a malicious use of his
property for no benefit to himself but merely to injure
another). [citations omitted] Courts have likewise refused to
limit interference with television reception and other
broadcast signals. The People ex rel. Hoogasian v. Sears, Roebuck
and Co., 52 Ill. 2d 301, 305 (1972). Clearly, the spite fence
12 Plaintiff testified that he has a backup electrical system as required by law in this

state. Thus, if the solar system fails or loses efficiency, he may resort to the
electrical system.

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cases, as their name implies, require malice which is not
claimed in this case.
The majority then concludes that this court’s past
reluctance to extend protection to a landowner’s access to
sunlight beyond the spite fence cases is based on obsolete
policies which have lost their vigor over the course of the
years. The three obsolete policies cited by the majority are:
(1) Right of landowners to use their property as they desire
as long as no physical damage is done to a neighbor; (2) In
the past, sunlight was valued only for aesthetic value, not a
source of energy; and (3) Society has a significant interest in
not impeding land development. The majority has failed to
convince me that these policies are obsolete.
It is a fundamental principle of law that a “landowner owns
at least as much of the space above the ground as he can
occupy or use in connection with the land.” As stated in
the frequently cited and followed case of Fontainebleau Hotel
Corp. v. Forty-Five Twenty-Five, Inc., 114 So.2d 357 (Fla. Dist.
Ct. App. 1959):
There being, then, no legal right to the
free flow of light and air from the
adjoining land, it is universally held
that where a structure serves a useful
and beneficial purpose, it does not give
rise to a cause of action, either for
damages or for an injunction under the
maxim sic utere tuo ut alienum non laedas,
even though it causes injury to another
by cutting off the light and air and
interfering with the view that would
otherwise be available over adjoining
land in its natural state, regardless of
the fact that the structure may have
been erected partly for spite.
Id. at 359 (emphasis in original). I firmly believe that a
landowner’s right to use his property within the limits of

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ordinances, statutes, and restrictions of record where such
use is necessary to serve his legitimate needs is a
fundamental precept of a free society which this court
should strive to uphold.
As one commentator has suggested:
It is fashionable to dismiss such values
as deriving from a bygone era in which
people valued development as a ‘goal
in itself,’ but current market prices for
real estate, and more particularly the
premiums paid for land whose zoning
permits intensive use, suggest that
people still place very high values on
such rights.
Williams, Solar Access and Property Rights: A Maverick Analysis,
11 Conn. L. Rev. 430, 443 (1979) (footnote omitted). Cf.
Goble, Solar Access and Property Rights: Reply to a “Maverick”
Analysis, 12 Conn. L. Rev. 270 (1980).
The majority cites two zoning cases, Village of Euclid v.
Ambler Realty Company, 272 U.S. 365 (1926), and Just v.
Marinette County, 56 Wis. 2d 7 (1972), to support the
conclusion that society has increasingly regulated private
land use in the name of public welfare. The cases involving
the use of police power and eminent domain are clearly
distinguishable from the present situation as they relate to
interference with a private right solely for the public health,
safety, morals, or welfare. In the instant case, we are dealing
with an action which seeks to restrict the defendant’s
private right to use his property, notwithstanding a
complete lack of notice of restriction to the defendant and
the defendant’s compliance with applicable ordinances and
statutes. The plaintiff who knew of the potential problem
before the defendant acquired the land seeks to impose
such use restriction to accommodate his personal, private
benefit-a benefit which could have been accommodated by

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the plaintiff locating his home in a different place on his
property or by acquiring the land in question when it was
for sale prior to its acquisition by the defendant.
I know of no cases repudiating policies favoring the right
of a landowner to use his property as he lawfully desires or
which declare such policies are “no longer fully accepted or
applicable” in this context.13 The right of a property owner
to lawful enjoyment of his property should be vigorously
protected, particularly in those cases where the adjacent
property owner could have insulated himself from the
alleged problem by acquiring the land as a defense to the
potential problem or by provident use of his own property.
The majority concludes that sunlight has not heretofore
been accorded the status of a source of energy, and
consequently it has taken on a new significance in recent
years. Solar energy for home heating is at this time
sparingly used and of questionable economic value because
solar collectors are not mass produced, and consequently,
they are very costly. Their limited efficiency may explain the
lack of production.
Regarding the third policy the majority apparently believes
is obsolete (that society has a significant interest in not
restricting land development), it cites State v. Deetz, 66 Wis.
2d 1 (1974). I concede the law may be tending to recognize
the value of aesthetics over increased volume development
and that an individual may not use his land in such a way as
to harm the public. The instant case, however, deals with a

13 Perhaps one reason courts have been hesitant to recognize a cause of action for

solar blockage is that such a suit would normally only occur between two abutting
landowners, and it is hoped that neighbors will compromise and reach agreement
between themselves. This has, undoubtedly, been done in a large percentage of
cases. To now recognize a cause of action for solar blockage may thwart a policy
of compromise between neighbors. See Williams, Solar Access and Property Rights: A
Maverick Analysis, 11 Conn. L. Rev. 430, 441-42 (1979). See also S. Kraemer, Solar
Law, 138 (1978) (“[a] deterring factor to the use of private nuisance to assure
access to direct sunlight is the resultant litigation between neighbors”).

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private benefit. I note that this court in Deetz stated: “The
reasonable use rule retains … a policy of favoring land
improvement and development.” Id. at 20. See also id. at 15.
I find it significant that community planners are dealing
with this country’s continued population growth and
building revitalization where “[t]he number of households
is expected to reach almost 100 million by the end of the
decade; that would be 34 percent higher than the number
in 1970.” F. Strom, 1981 Zoning and Planning Law Handbook,
sec. 22.02, 396 (1981). It is clear that community planners
are acutely aware of the present housing shortages,
particularly among those two groups with limited financial
resources, the young and the elderly. Id. While the
majority’s policy arguments may be directed to a cause of
action for public nuisance, we are presented with a private
nuisance case which I believe is distinguishable in this
regard.14
I would submit that any policy decisions in this area are
best left for the legislature. “What is ‘desirable’ or
‘advisable’ or ‘ought to be’ is a question of policy, not a
question of fact. What is ‘necessary’ or what is ‘in the best
interest’ is not a fact and its determination by the judiciary
is an exercise of legislative power when each involves
political considerations.” In re City of Beloit, 37 Wis. 2d 637,
644 (1968). I would concur with these observations of the
trial judge: “While temptation lingers for the court to

14 I am amused at the majority’s contention that what constitutes a nuisance today

would have been accepted without question in earlier times. This calls to mind the
fact that, in early days of travel by horses, the first automobiles were considered
nuisances. Later, when automobile travel became developed, the horse became
the nuisance. Ellickson, Alternatives to Zoning: Covenants, Nuisance Rules, and Fines as
Land Use Controls, 40 U. Chi. L. Rev. 681, 731 (1973). This makes me wonder if we
are examining the proper nuisance in the case before us. In other words, could it
be said that the solar energy user is creating the nuisance when others must
conform their homes to accommodate his use? I note that solar panel glare may
temporarily blind automobile drivers, reflect into adjacent buildings causing
excessive heat, and otherwise irritate neighbors. Certainly in these instances the
solar heating system constitutes the nuisance.

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declare by judicial fiat what is right and what should be
done, under the facts in this case, such action under our
form of constitutional government where the three
branches each have their defined jurisdiction and power,
would be an intrusion of judicial egoism over legislative
passivity.”
The legislature has recently acted in this area. Chapter 354,
Laws of 1981 (effective May 7, 1982), was enacted to
provide the underlying legislation enabling local
governments to enact ordinances establishing procedures
for guaranteeing access to sunlight. This court’s intrusion
into an area where legislative action is being taken is
unwarranted, and it may undermine a legislative scheme for
orderly development not yet fully operational.
[Judge Callow excerpts statutory provisions prohibiting
certain light blockage but only according to a permit
scheme and with notice to neighboring owners.] This
legislative scheme would deal with the type of problem
presented in the present case and precludes the need for
judicial activism in this area.
I examine with interest the definition of nuisance as set out
in the Restatement (Second) of Torts and adopted in the
majority opinion: “A private nuisance is a nontrespassory
invasion of another’s interest in the private use and
enjoyment of land.” Restatement (Second) of Torts sec.
821D (1977) (emphasis added). The majority believes that
the defendant’s obstruction of the plaintiff’s access to
sunlight falls within the broad definition of “use and
enjoyment of land.” Supra, at 187-188. I do not believe the
defendant’s “obstruction” of the plaintiff’s access to
sunlight falls within the definition of “invasion,” as it
applies to the private use and enjoyment of land. Invasion
is typically synonymous with “entry,” “attack,”
“penetration,” “hostile entrance,” “the incoming or spread
of something unusually hurtful.” Webster’s Third International
Dictionary, 1188 (1966). Most of the nuisance cases arising

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under this definition involve noxious odors, smoke,
blasting, flooding, or excessive light invading the plaintiff’s
right to the use of enjoyment of his property. See Prosser,
Law of Torts, sec. 89, 591-92 (4th ed. 1971).15 See Williams,
Solar Access and Property Rights: A Maverick Analysis, 11 Conn.
L. Rev. at 441 (there are significant practical differences
between dust and noise, on the one hand, and solar access
blockage on the other). Clearly, an owner who merely
builds his home in compliance with all building code and
municipal regulations is not “invading” another’s right to
the use and enjoyment of his property. To say so is to
acknowledge that all construction may be an “invasion”
because all construction has some restrictive impact on
adjacent land. A “view,” for example, is modified by any
construction simply because it is there.
In order for a nuisance to be actionable in the instant case,
the defendant’s conduct must be “intentional and
unreasonable.” It is impossible for me to accept the
majority’s conclusion that Mr. Maretti, in lawfully seeking
to construct his home, may be intentionally and
unreasonably interfering with the plaintiff’s access to
sunlight. In addressing the “unreasonableness” component
of the actor’s conduct, it is important to note that “[t]here
is liability for a nuisance only to those to whom it causes
significant harm, of a kind that would be suffered by a
normal person in the community or by property in normal
condition and used for a normal purpose.” Restatement
(Second) of Torts sec. 821F (1979). The comments to the
Restatement further reveal that “[if] normal persons in that
locality would not be substantially annoyed or disturbed by
the situation, then the invasion is not a significant one,

15 Dean Prosser also includes disturbances with peace of mind occasioned by

“bawdy houses,” stored explosives, or fire hazards within the purview of the
definition of nuisance. I submit these indicia of nuisance relate to a defendant’s
unreasonable or unlawful use of his property.

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even though the idiosyncrasies of the particular plaintiff
may make it unendurable to him.” Id. Comment d.16
I conclude that plaintiff’s solar heating system is an
unusually sensitive use. In other words, the defendant’s
proposed construction of his home, under ordinary
circumstances, would not interfere with the use and
enjoyment of the usual person’s property. See W. Prosser,
supra, sec. 87 at 578-79. “The plaintiff cannot, by devoting
his own land to an unusually sensitive use, such as a drivein motion picture theater easily affected by light, make a
nuisance out of conduct of the adjoining defendant which
would otherwise be harmless.” Id. at 579 (footnote
omitted).17

Consider, for example, the following illustrations provided in the
Restatement:
16

2. A operates a race track, which is illuminated at night by
flood lights directed downward. B operates next door an
open-air motion picture theater, screened off from the
highway. The reflection of A’s lights, equivalent to the light
of the full moon, would be harmless and unobjectionable to
anyone making a normal use of adjoining land, but so
seriously interferes with the operation of B’s motion pictures
that B loses customers. B cannot recover from A for a private
nuisance.
3. A operates a slaughterhouse, which gives off highly
offensive odors, sufficient to make life unendurable for any
normal person living near it. B, who lives next door is
without any sense of smell, and is not personally troubled by
the odors. B can recover from A for a private nuisance.

Restatement (Second) of Torts sec. 821F (1979). In my opinion, the instant case
clearly fits under the first example.
17Amicus curiae United States of America in its brief to this court advances the

proposition that even a sensitive use is entitled to protection from unreasonable
interference. Amicus analogizes to several “mink cases” which involve negligence
actions. [citations omitted] A thorough reading of these decisions reveals that they
are clearly distinguishable from the case at bar. No cases have been cited in this
jurisdiction which limit this.
I note that the federal government supports the plaintiff’s position in the instant
case. If solar energy is in the national interest, federal legislation should be
enacted.

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Looking solely at the defendant’s conduct, the circuit court
concluded that the defendant’s construction of a house did
not create a cause of action for nuisance because the
defendant’s proposed home was in conformity with zoning
regulations, building codes, deed restrictions, as well as the
fact that the defendant’s use of the land to build his home
was reasonable. The majority, however, cites Bie v. Ingersoll,
supra, for the proposition that compliance with the law is
not the controlling factor in evaluating a nuisance claim. I
note that Bie involved the operation of an asphalt plant
from which dust and odors permeated the plaintiff’s
adjoining residence. The defendants asserted that, because
the property occupied by the asphalt plant was zoned for
industrial use, the plant could not constitute a nuisance.
This court concluded that the zoning classification was not
the controlling factor. “It is rather ‘the peculiar nature and
the location of the business, not the fact that it is a
business, that constitutes the private nuisance.’” 27 Wis. 2d
at 495. The Bie case is clearly distinguishable from the case
at bar. Here, the defendant seeks to build his home in
compliance with all existing laws, and it will have no
“peculiar nature.” As I read the Bie case, the negative
implication from its facts is that a business which does not
emit dust or odors (i.e., which has no peculiar nature) and
which is in conformity with zoning regulations is not a
private nuisance. I would hold under the facts of the instant
case that the defendant’s conduct is not unreasonable per
se, and consequently, a nuisance cause of action cannot
stand.
I further believe that the majority’s conclusion that a cause
of action exists in this case thwarts the very foundation of
property law. Property law encompasses a system of filing
and notice in a place for public records to provide
prospective purchasers with any limitations on their use of
the property. Such a notice is not alleged by the plaintiff.
Only as a result of the majority’s decision did Mr. Maretti

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discover that a legitimate action exists which would require
him to defend the design and location of his home against a
nuisance suit, notwithstanding the fact that he located and
began to build his house within the applicable building,
municipal, and deed restrictions.
Obviously, the legislature was cognizant of the importance
of notice. In Chapter 354, Laws of 1981, secs. 66.032(5)
and (6) deal with notice to an adjoining landowner.
[statutory excerpt omitted]
In recognizing this common law cause of action, this
court’s decision is in direct conflict with the 1981 legislative
provisions for the granting of solar access permits. In a
municipality which enacts the ordinance in conformity with
the statute, neighbors know their respective rights. Under
the majority decision, in a municipality which does not
enact the ordinance, a common law cause of action for
nuisance exists without any defined rights.
I believe the facts of the instant controversy present the
classic case of the owner of a solar collector who fails to
take any action to protect his investment. There is nothing
in the record to indicate that Mr. Prah disclosed his
situation to Mr. Maretti prior to Maretti’s purchase of the
lot or attempted to secure protection for his solar collector
prior to Maretti’s submission of his building plans to the
architectural committee. Such inaction should be
considered a significant factor in determining whether a
cause of action exists.
The majority’s failure to recognize the need for notice may
perpetuate a vicious cycle. Maretti may feel compelled to
sell his lot because of Prah’s solar collector’s interference
with his plans to build his family home. If so, Maretti will
not be obliged to inform prospective purchasers of the
problem. Certainly, such information will reduce the value
of his land. If the presence of collectors is sufficient notice,
it cannot be said that the seller of the lot has a duty to

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disclose information peculiarly within his knowledge. I do
not believe that an adjacent lot owner should be obliged to
experience the substantial economic loss resulting from the
lot being rendered unbuildable by the contour of the land
as it relates to the location and design of the adjoining
home using solar collectors.18
I am troubled by the majority’s apparent retrospective
application of its decision. I note that the court in Deetz saw
the wisdom and fairness in rendering a prospective
decision. Surely, a decision such as this should be accorded
prospective status. Creating the cause of action after the
fact results in such unfair surprise and hardship to property
owners such as Maretti.
Because I do not believe that the facts of the present case
give rise to a cause of action for private nuisance, I dissent.

18 Mr. Prah could have avoided this litigation by building his own home in the

center of his lot instead of only ten feet from the Maretti lot line and/or by
purchasing the adjoining lot for his own protection. Mr. Maretti has already
moved the proposed location of his home over an additional ten feet to
accommodate Mr. Prah’s solar collector, and he testified that moving the home
any further would interfere with his view of the lake on which the property faces.

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1.3.5. Property Rules and Liability Rules: Theory
Calabresi and Melamed’s Cathedral
Coase’s article demonstrates that legal rules are immaterial in
private litigation so long as bargaining after a judgment is both
permitted and costless. Were there no transaction costs, all factors of
production would be put to their highest and best uses. Private
parties would bargain around court judgments that inefficiently
entitled A to grow crops or B to raise cattle.
But as Coase acknowledges, transaction costs are omnipresent and
often immense in the real world. It costs resources in order to
strike a deal. And yet, deals can indeed be struck. How should
courts impose legal obligations now that we wish to take into
account not just what should happen in the end but the much more
complex question of what role courts should play knowing that
their judgments will be only part of the social forces that
determine what does happen.
Property Rules and Liability Rules
It is to this question that Guido Calabresi and A. Douglas
Melamed attempted a partial answer in their famous article,
Property Rules, Liability Rules, and Inalienability: One View of the
Cathedral, 85 Harv. L. Rev. 1089 (1972). Calabresi and Melamed’s
central insight was that judicial resolution involved a two-fold
decision: whom to entitle and how to protect the entitlement.
Either A or B will be adjudged the “winner,” in the sense that
they are granted the disputed entitlement (the right to pollute or
the right to clean air, for example), but there is more to decide.
How is the entitlement they have been granted protected by a
court? Calabresi and Melamed:
An entitlement is protected by a
property rule to the extent that
someone who wishes to remove the
entitlement from its holder must buy it
from him in a voluntary transaction in
which the value of the entitlement is

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agreed upon by the seller. It is the
form of entitlement which gives rise to
the least amount of state intervention:
once the original entitlement is decided
upon, the state does not try to decide
its value. It lets each of the parties say
how much the entitlement is worth to
him, and gives the seller a veto if the
buyer does not offer enough. Property
rules involve a collective decision as to
who is to be given an initial
entitlement but not as to the value of
the entitlement.
Whenever someone may destroy the
initial entitlement if he is willing to pay
an objectively determined value for it,
an entitlement is protected by a
liability rule. This value may be what it
is thought the original holder of the
entitlement would have sold it for. But
the holder’s complaint that he would
have demanded more will not avail
him once the objectively determined
value is set. Obviously, liability rules
involve an additional stage of state
intervention: not only are entitlements
protected, but their transfer or
destruction is allowed on the basis of a
value determined by some organ of the
state rather than by the parties
themselves.
An entitlement is inalienable to the
extent that its transfer is not permitted
between a willing buyer and a willing
seller… . .
When a court awards damages, it is applying a liability rule, since
the court, rather than the winner of the lawsuit, determines the
value of what was lost to the winner. When a court awards an

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injunction, it gives to the winner an absolute right to refuse the
loser’s request that he or she part with the subject of the
injunction. If the loser wants it, he or she must meet the price that
the winner sets to take the entitlement, even if that price is sky
high.
Note, too, that what we call our property is protected in different
ways in different situations. A home may be protected by a
property rule against those who would trespass and take it. A court
will order the trespassers thrown out and give to the record owner
the right to insist on a price of his or her choosing to sell the
house. But that same house may be protected only by a liability rule
against the city in which it is located. The city, using its power of
eminent domain, may take the house from the owner so long as it
pays what a court determines is fair market value, irrespective of
the price the owner would want to charge.
We have now enlarged the apparent set of options a court has in
resolving a dispute. It may award the disputed entitlement (the
right to pollute or to be free from pollution, the right to enter
property or the right to refuse entry, etc.) to A or to B, and it may
protect the entitlement it awards with a property, liability rule, or
inalienability rule.
Choosing a Rule
How and why might a court choose a winner of the entitlement
and choose whether to protect the entitlement with a property or
liability rule? (Let’s exclude, for the moment, the inalienability rule.)
Assume we have a plaintiff (P) suing a defendant (D) over an
alleged nuisance. D wants to continue the nuisance, and P wants to
stop it. The options confronting a court can be placed in a two by
two chart, leading to four possible rules.

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Property Rule Protection
P
Wins

1: D must get P’s consent to
continue

Liability Rule
Protection
2: D must pay damages
to continue

D
4: P can force D to stop
3: D must consent to stop
Wins
by paying damages
How is a judge to choose among these rules? Calabresi and
Melamed explain that courts base these decisions on various
grounds: economic efficiency (attempting to ensure that the
entitlement is awarded so that it winds up, perhaps after market
transactions, so that no further transactions could be had without
making someone worse off to a greater degree than others are
made better off),1 distributional goals (the preferences a society has
for the distribution of wealth and specific goods, like food and
health care), and, perhaps, other justice goals.
Restricting our attention to economic efficiency, we might at first
wish to apply what we learned from Coase and assume that we
should always use property rules and that it does not matter
whether P or D wins the lawsuit. If we choose wrongly, for
example if we decide P wins even though the entitlement to pollute
is worth more to D than the entitlement to be free of pollution is
worth to P, the parties can always transact after the fact to correct
our mistake. That was the essence of (the second part of) the socalled Coase Theorem. But, as Coase himself indicated, this does
not work if transaction costs are large. If the parties cannot easily
correct our mistakes through post-judgment bargaining, then it
matters very much where we place the entitlement.

1 There are various criteria for economic efficiency. The one here implied is called

Kaldor-Hicks efficiency. The details do not concern us for the moment, beyond
an understanding that this notion of efficiency applies to changes in the social
order that provide more total gains to the winners than losses to the losers. At
least in theory, the winners in such a situation could fully compensate the losers
and still come out ahead.

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For example, transactions will be difficult if there are many
individuals on one side, as in the case of a polluting factory and a
town. For example, members of the town may act selfishly and
refuse to pay their share (believing others will pick up the slack) in
the event the entitlement was wrongly awarded to the factory. This
is called free riding. If we erred the other way, wrongly awarding
the entitlement to the town when in fact the factory values
production more than the town values clean air, then some town
members may selfishly demand too much to permit the factory to
pollute. In other words, they may be hold-outs. If 10,000 people
each have an individual right to stop a factory, so that the factory
must strike a deal with each person in order to go into production,
then it should be obvious that the factory faces a very expensive
contracting problem and is subject to hold-outs.
Liability rules solve such problems. Replacing 10,000 individual
negotiations with a court-determined damages award solves the
problem of hold-outs and free riders. A court could, for example,
following Rule 2 from the boxes above, allow the factory pollute,
on the condition that it pay damages to the town members.
But the very thing that makes the liability rule so attractive, that it
eliminates potentially expensive, individualized negotiation with a
court’s determination of fair market values, also makes it
potentially unattractive from an efficiency standpoint. It relies on
the court’s ability to estimate the true values of the entitlement to
the parties. The court may not be good at this. The very foundation
of free markets is the belief that, in general, individuals know better
than others how much things are worth to them. In setting
damages, courts may not arrive at amounts that reflect what parties
would pay or accept in the absence of transaction costs. That error
represents an economic inefficiency and may lead to a shuttered
factory that would in fact be efficient or a polluting factory that is
inefficient.
Acting in realm of uncertainty, perhaps courts should do as best
they can to put liability on (the opposite of grant the entitlement
to) the party best positioned both to determine whether what that
party wants is worth the damages award or negotiation. The court

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should also consider whether placing liability on one party or the
other makes transactions more likely. And, finally, if bargaining
looks particularly expensive and the court is reasonably well
positioned to determine the value of the entitlement to each side,
then the court should consider a liability rule. Calabresi and
Melamed summarize the efficiency concerns thusly:
(1) that economic efficiency standing
alone would dictate that set of
entitlements
which
favors
knowledgeable choices between social
benefits and the social costs of
obtaining them, and between social
costs and the social costs of avoiding
them; (2) that this implies, in the
absence of certainty as to whether a
benefit is worth its costs to society,
that the cost should be put on the
party or activity best located to make
such a cost-benefit analysis; (3) that in
particular contexts like accidents or
pollution this suggests putting costs on
the party or activity which can most
cheaply avoid them; (4) that in the
absence of certainty as to who that
party or activity is, the costs should be
put on the party or activity which can
with the lowest transaction costs act in
the market to correct an error in
entitlements by inducing the party who
can avoid social costs most cheaply to
do so; and (5) that since we are in an
area where by hypothesis markets do
not work perfectly – there are
transaction costs – a decision will
often have to be made on whether
market transactions [property rule
protection] or collective fiat [liability
rule protection] is most likely to bring

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us closer to the [efficient] result the
“perfect” market would reach.
Nuisance Law
Suppose a plaintiff, P, sues a defendant, D, for committing what P
believes is a nuisance. How should a court decide whether P should
prevail and whether it should enjoin D’s conduct or permit D’s
conduct with the payment of damages to P? Consider the example
of the plaintiff Fontainebleau Hotel (building the shadow-casting
addition) and the defendant Eden Roc Hotel (whose pool would
cast in shade by the addition). The court must decide among the
four options in our grid.
Property Rule
Protection

Liability Rule
Protection

P
Wins

1: Nuisance enjoined

2: Damages for nuisance but D
can continue

D
Wins

3: No nuisance

4: P can force D to stop by
paying damages

Which of the parties is the cheapest cost avoider, the one best able
to calculate the total social costs and benefits from the proposed
addition? Arguably, it would be Fountainebleau, which probably
has better information about the costs of the addition and the
revenue benefits it would bring. Although, Eden Roc might be
better positioned to understand how the shadowed pool area
would impact its business, that is the sort of damage that might not
be difficult to calculate for anyone in the hotel business in the area.
So perhaps we would be justified placing liability on the defendant,
Fountainebleau.
Should we protect Eden Roc’s entitlement with a property or
liability rule? There are only two parties, and so we do not have
much concern about free riders or hold-outs. Are we concerned
about strategic bargaining, the possibility that in negotiating Eden
Roc would attempt to garner too much of the surplus for itself,

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mistaken about Fountainebleau’s willingness to pay – the kind of
negotiating difficulty that could derail a deal that would be better
for both sides if reached? Perhaps, and perhaps there’s some
animosity on both sides – not to mention the fact that Eden Roc,
as a competitor might have an unusual incentive to reduce the
profitability of Fountainebleau. While property rule protection is
ordinarily justified when there are a small number of commercial
parties, liability rule protection does not seem like a bad option
here. The damage caused to Eden Roc by the shadowing of its
property seems like the sort of discrete harm that could be
estimated reasonably through manageable expert testimony.
Moreover, sentimental attachment or other idiosyncratic valuation
that might not be captured by fair market value estimates is not
relevant here, in the case of a commercial property.
Thus, resort to Rule 1, as the court in fact chose on purely
formalistic grounds, or Rule 2 appear to be reasonable choices. The
next two cases are ones in which the courts chose liability rules. As
you read them, ask yourself why they did.
1.3.6. Property Rules and Liability Rules: Practice
Boomer v. Atlantic Cement Co., 26 N.Y.2d 219 (1970)
BERGAN, J.
Defendant operates a large cement plant near Albany.
These are actions for injunction and damages by
neighboring land owners alleging injury to property from
dirt, smoke and vibration emanating from the plant. A
nuisance has been found after trial, temporary damages
have been allowed; but an injunction has been denied.
The public concern with air pollution arising from many
sources in industry and in transportation is currently
accorded ever wider recognition accompanied by a growing
sense of responsibility in State and Federal Governments to
control it. Cement plants are obvious sources of air
pollution in the neighborhoods where they operate.

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But there is now before the court private litigation in which
individual property owners have sought specific relief from
a single plant operation. The threshold question raised by
the division of view on this appeal is whether the court
should resolve the litigation between the parties now before
it as equitably as seems possible; or whether, seeking
promotion of the general public welfare, it should channel
private litigation into broad public objectives.
A court performs its essential function when it decides the
rights of parties before it. Its decision of private
controversies may sometimes greatly affect public issues.
Large questions of law are often resolved by the manner in
which private litigation is decided. But this is normally an
incident to the court’s main function to settle controversy.
It is a rare exercise of judicial power to use a decision in
private litigation as a purposeful mechanism to achieve
direct public objectives greatly beyond the rights and
interests before the court.
Effective control of air pollution is a problem presently far
from solution even with the full public and financial
powers of government. In large measure adequate technical
procedures are yet to be developed and some that appear
possible may be economically impracticable.
It seems apparent that the amelioration of air pollution will
depend on technical research in great depth; on a carefully
balanced consideration of the economic impact of close
regulation; and of the actual effect on public health. It is
likely to require massive public expenditure and to demand
more than any local community can accomplish and to
depend on regional and interstate controls.
A court should not try to do this on its own as a byproduct of private litigation and it seems manifest that the
judicial establishment is neither equipped in the limited
nature of any judgment it can pronounce nor prepared to
lay down and implement an effective policy for the

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elimination of air pollution. This is an area beyond the
circumference of one private lawsuit. It is a direct
responsibility for government and should not thus be
undertaken as an incident to solving a dispute between
property owners and a single cement plant – one of many –
in the Hudson River valley.
The cement making operations of defendant have been
found by the court at Special Term to have damaged the
nearby properties of plaintiffs in these two actions. That
court, as it has been noted, accordingly found defendant
maintained a nuisance and this has been affirmed at the
Appellate Division. The total damage to plaintiffs’
properties is, however, relatively small in comparison with
the value of defendant’s operation and with the
consequences of the injunction which plaintiffs seek.
The ground for the denial of injunction, notwithstanding
the finding both that there is a nuisance and that plaintiffs
have been damaged substantially, is the large disparity in
economic consequences of the nuisance and of the
injunction. This theory cannot, however, be sustained
without overruling a doctrine which has been consistently
reaffirmed in several leading cases in this court and which
has never been disavowed here, namely that where a
nuisance has been found and where there has been any
substantial damage shown by the party complaining an
injunction will be granted.
The rule in New York has been that such a nuisance will be
enjoined although marked disparity be shown in economic
consequence between the effect of the injunction and the
effect of the nuisance.
The problem of disparity in economic consequence was
sharply in focus in Whalen v. Union Bag & Paper Co. (208 N.
Y. 1). A pulp mill entailing an investment of more than a
million dollars polluted a stream in which plaintiff, who
owned a farm, was “a lower riparian owner”. The economic

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loss to plaintiff from this pollution was small. This court,
reversing the Appellate Division, reinstated the injunction
granted by the Special Term against the argument of the
mill owner that in view of “the slight advantage to plaintiff
and the great loss that will be inflicted on defendant” an
injunction should not be granted (p. 2). “Such a balancing
of injuries cannot be justified by the circumstances of this
case”, Judge Werner noted (p. 4). He continued: “Although
the damage to the plaintiff may be slight as compared with
the defendant’s expense of abating the condition, that is
not a good reason for refusing an injunction” (p. 5).
Thus the unconditional injunction granted at Special Term
was reinstated. The rule laid down in that case, then, is that
whenever the damage resulting from a nuisance is found
not “unsubstantial”, viz., $100 a year, injunction would
follow. This states a rule that had been followed in this
court with marked consistency (McCarty v. Natural Carbonic
Gas Co., 189 N. Y. 40; Strobel v. Kerr Salt Co., 164 N. Y. 303;
Campbell v. Seaman, 63 N. Y. 568).
There are cases where injunction has been denied. McCann
v. Chasm Power Co. (211 N. Y. 301) is one of them. There,
however, the damage shown by plaintiffs was not only
unsubstantial, it was non-existent. Plaintiffs owned a rocky
bank of the stream in which defendant had raised the level
of the water. This had no economic or other adverse
consequence to plaintiffs, and thus injunctive relief was
denied. Similar is the basis for denial of injunction in
Forstmann v. Joray Holding Co. (244 N. Y. 22) where no
benefit to plaintiffs could be seen from the injunction
sought (p. 32). Thus if, within Whalen v. Union Bag & Paper
Co. (supra.;) which authoritatively states the rule in New
York, the damage to plaintiffs in these present cases from
defendant’s cement plant is “not unsubstantial”, an
injunction should follow.
Although the court at Special Term and the Appellate
Division held that injunction should be denied, it was

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found that plaintiffs had been damaged in various specific
amounts up to the time of the trial and damages to the
respective plaintiffs were awarded for those amounts. The
effect of this was, injunction having been denied, plaintiffs
could maintain successive actions at law for damages
thereafter as further damage was incurred.
The court at Special Term also found the amount of
permanent damage attributable to each plaintiff, for the
guidance of the parties in the event both sides stipulated to
the payment and acceptance of such permanent damage as
a settlement of all the controversies among the parties. The
total of permanent damages to all plaintiffs thus found was
$185,000. This basis of adjustment has not resulted in any
stipulation by the parties.
This result at Special Term and at the Appellate Division is
a departure from a rule that has become settled; but to
follow the rule literally in these cases would be to close
down the plant at once. This court is fully agreed to avoid
that immediately drastic remedy; the difference in view is
how best to avoid it.1
One alternative is to grant the injunction but postpone its
effect to a specified future date to give opportunity for
technical advances to permit defendant to eliminate the
nuisance; another is to grant the injunction conditioned on
the payment of permanent damages to plaintiffs which
would compensate them for the total economic loss to
their property present and future caused by defendant’s
operations. For reasons which will be developed the court
chooses the latter alternative.
If the injunction were to be granted unless within a short
period – e.g., 18 months – the nuisance be abated by

1 Respondent’s investment in the plant is in excess of $45,000,000. There are over

300 people employed there.

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improved methods, there would be no assurance that any
significant technical improvement would occur.
The parties could settle this private litigation at any time if
defendant paid enough money and the imminent threat of
closing the plant would build up the pressure on defendant.
If there were no improved techniques found, there would
inevitably be applications to the court at Special Term for
extensions of time to perform on showing of good faith
efforts to find such techniques.
Moreover, techniques to eliminate dust and other annoying
by-products of cement making are unlikely to be developed
by any research the defendant can undertake within any
short period, but will depend on the total resources of the
cement industry Nationwide and throughout the world.
The problem is universal wherever cement is made.
For obvious reasons the rate of the research is beyond
control of defendant. If at the end of 18 months the whole
industry has not found a technical solution a court would
be hard put to close down this one cement plant if due
regard be given to equitable principles.
On the other hand, to grant the injunction unless defendant
pays plaintiffs such permanent damages as may be fixed by
the court seems to do justice between the contending
parties. All of the attributions of economic loss to the
properties on which plaintiffs’ complaints are based will
have been redressed.
The nuisance complained of by these plaintiffs may have
other public or private consequences, but these particular
parties are the only ones who have sought remedies and the
judgment proposed will fully redress them. The limitation
of relief granted is a limitation only within the four corners
of these actions and does not foreclose public health or
other public agencies from seeking proper relief in a proper
court.

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It seems reasonable to think that the risk of being required
to pay permanent damages to injured property owners by
cement plant owners would itself be a reasonable effective
spur to research for improved techniques to minimize
nuisance.
The power of the court to condition on equitable grounds
the continuance of an injunction on the payment of
permanent damages seems undoubted. (See, e.g., the
alternatives considered in McCarty v. Natural Carbonic Gas
Co., supra.;, as well as Strobel v. Kerr Salt Co., supra.;.)
The damage base here suggested is consistent with the
general rule in those nuisance cases where damages are
allowed. “Where a nuisance is of such a permanent and
unabatable character that a single recovery can be had,
including the whole damage past and future resulting
therefrom, there can be but one recovery” (66 C. J. S.,
Nuisances, s 140, p. 947). It has been said that permanent
damages are allowed where the loss recoverable would
obviously be small as compared with the cost of removal of
the nuisance (Kentucky-Ohio Gas Co. v. Bowling, 264 Ky. 470,
477).
The present cases and the remedy here proposed are in a
number of other respects rather similar to Northern Indiana
Public Serv. Co. v. Vesey (210 Ind. 338) decided by the
Supreme Court of Indiana. The gases, odors, ammonia and
smoke from the Northern Indiana company’s gas plant
damaged the nearby Vesey greenhouse operation. An
injunction and damages were sought, but an injunction was
denied and the relief granted was limited to permanent
damages “present, past, and future” (p. 371).
Denial of injunction was grounded on a public interest in
the operation of the gas plant and on the court’s conclusion
“that less injury would be occasioned by requiring the
appellant [Public Service] to pay the appellee [Vesey] all
damages suffered by it * * * than by enjoining the operation

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of the gas plant; and that the maintenance and operation of
the gas plant should not be enjoined” (p. 349).
The Indiana Supreme Court opinion continued: “When the
trial court refused injunctive relief to the appellee upon the
ground of public interest in the continuance of the gas
plant, it properly retained jurisdiction of the case and
awarded full compensation to the appellee. This is upon the
general equitable principle that equity will give full relief in
one action and prevent a multiplicity of suits” (pp. 353354).
It was held that in this type of continuing and recurrent
nuisance permanent damages were appropriate. See, also,
City of Amarillo v. Ware (120 Tex. 456) where recurring
overflows from a system of storm sewers were treated as
the kind of nuisance for which permanent depreciation of
value of affected property would be recoverable.
There is some parallel to the conditioning of an injunction
on the payment of permanent damages in the noted
“elevated railway cases” (Pappenheim v. Metropolitan El. Ry.
Co., 128 N. Y. 436, and others which followed). Decisions
in these cases were based on the finding that the railways
created a nuisance as to adjacent property owners, but in
lieu of enjoining their operation, the court allowed
permanent damages.
Judge Finch, reviewing these cases in Ferguson v. Village of
Hamburg (272 N. Y. 234, 239-240), said: “The courts
decided that the plaintiffs had a valuable right which was
being impaired, but did not grant an absolute injunction or
require the railway companies to resort to separate
condemnation proceedings. Instead they held that a court
of equity could ascertain the damages and grant an
injunction which was not to be effective unless the
defendant failed to pay the amount fixed as damages for
the past and permanent injury inflicted.” (See, also, Lynch v.
Metropolitan El. Ry. Co., 129 N. Y. 274; Van Allen v. New

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York El. R. R. Co., 144 N. Y. 174; Cox v. City of New York,
265 N. Y. 411, and similarly, Westphal v. City of New York,
177 N. Y. 140.)
Thus it seems fair to both sides to grant permanent
damages to plaintiffs which will terminate this private
litigation. The theory of damage is the “servitude on land”
of plaintiffs imposed by defendant’s nuisance. (See United
States v. Causby, 328 U. S. 256, 261, 262, 267, where the term
“servitude” addressed to the land was used by Justice
Douglas relating to the effect of airplane noise on property
near an airport.)
The judgment, by allowance of permanent damages
imposing a servitude on land, which is the basis of the
actions, would preclude future recovery by plaintiffs or
their grantees (see Northern Indiana Public Serv. Co. v. Vesey,
supra.;, p. 351).
This should be placed beyond debate by a provision of the
judgment that the payment by defendant and the
acceptance by plaintiffs of permanent damages found by
the court shall be in compensation for a servitude on the
land.
Although the Trial Term has found permanent damages as
a possible basis of settlement of the litigation, on remission
the court should be entirely free to re-examine this subject.
It may again find the permanent damage already found; or
make new findings.
The orders should be reversed, without costs, and the cases
remitted to Supreme Court, Albany County to grant an
injunction which shall be vacated upon payment by
defendant of such amounts of permanent damage to the
respective plaintiffs as shall for this purpose be determined
by the court.
JASEN, J., Dissenting.

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I agree with the majority that a reversal is required here, but
I do not subscribe to the newly enunciated doctrine of
assessment of permanent damages, in lieu of an injunction,
where substantial property rights have been impaired by the
creation of a nuisance.
It has long been the rule in this State, as the majority
acknowledges, that a nuisance which results in substantial
continuing damage to neighbors must be enjoined. (Whalen
v. Union Bag & Paper Co., 208 N. Y. 1; Campbell v. Seaman, 63
N. Y. 568; see, also, Kennedy v. Moog Servocontrols, 21 N Y 2d
966.) To now change the rule to permit the cement
company to continue polluting the air indefinitely upon the
payment of permanent damages is, in my opinion,
compounding the magnitude of a very serious problem in
our State and Nation today.
In recognition of this problem, the Legislature of this State
has enacted the Air Pollution Control Act (Public Health
Law, ss1264–1299-m) declaring that it is the State policy to
require the use of all available and reasonable methods to
prevent and control air pollution (Public Health Law,
s1265).2
The harmful nature and widespread occurrence of air
pollution have been extensively documented. Congressional
hearings have revealed that air pollution causes substantial
property damage, as well as being a contributing factor to a
rising incidence of lung cancer, emphysema, bronchitis and
asthma.3
The specific problem faced here is known as particulate
contamination because of the fine dust particles emanating

2 See, also, Air Quality Act of 1967, 81 U. S. Stat. 485 (1967).
3 See U. S. Cong., Senate Comm. on Public Works, Special Subcomm. on Air and

Water Pollution, Air Pollution 1966, 89th Cong., 2d Sess., 1966, at pp. 22-24; U. S.
Cong., Senate Comm. on Public Works, Special Subcomm. on Air and Water
Pollution, Air Pollution 1968, 90th Cong., 2d Sess., 1968, at pp. 850, 1084.

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from defendant’s cement plant. The particular type of
nuisance is not new, having appeared in many cases for at
least the past 60 years. (See Hulbert v. California Portland
Cement Co., 161 Cal. 239 .) It is interesting to note that
cement production has recently been identified as a
significant source of particulate contamination in the
Hudson Valley.4 This type of pollution, wherein very small
particles escape and stay in the atmosphere, has been
denominated as the type of air pollution which produces
the greatest hazard to human health.5 We have thus a
nuisance which not only is damaging to the plaintiffs, 6 but
also is decidedly harmful to the general public.
I see grave dangers in overruling our long-established rule
of granting an injunction where a nuisance results in
substantial continuing damage. In permitting the injunction
to become inoperative upon the payment of permanent
damages, the majority is, in effect, licensing a continuing
wrong. It is the same as saying to the cement company, you
may continue to do harm to your neighbors so long as you
pay a fee for it. Furthermore, once such permanent
damages are assessed and paid, the incentive to alleviate the
wrong would be eliminated, thereby continuing air
pollution of an area without abatement.
It is true that some courts have sanctioned the remedy here
proposed by the majority in a number of cases,7 but none

4 New York State Bureau of Air Pollution Control Services, Air Pollution Capital

District, 1968, at p. 8.
5 J. Ludwig, Air Pollution Control Technology: Research and Development on

New and Improved Systems, 33 Law & Contemp. Prob., 217, 219 (1968).
6 There are seven plaintiffs here who have been substantially damaged by the

maintenance of this nuisance. The trial court found their total permanent damages
to equal $185,000.
7 See United States v. Causby (328 U. S. 256); Kentucky-Ohio Gas Co. v. Bowling (284

Ky. 470, 477); Northern Indiana Public Serv. Co. v. Vesey (210 Ind. 338); City of
Amarillo v. Ware (120 Tex. 456); Pappenheim v. Metropolitan El. Ry. Co. (128 N. Y.
436); Ferguson v. Village of Hamburg (272 N. Y. 234).

155

of the authorities relied upon by the majority are analogous
to the situation before us. In those cases, the courts, in
denying an injunction and awarding money damages,
grounded their decision on a showing that the use to which
the property was intended to be put was primarily for the
public benefit. Here, on the other hand, it is clearly
established that the cement company is creating a
continuing air pollution nuisance primarily for its own
private interest with no public benefit.
This kind of inverse condemnation (Ferguson v. Village of
Hamburg, 272 N. Y. 234 may not be invoked by a private
person or corporation for private gain or advantage.
Inverse condemnation should only be permitted when the
public is primarily served in the taking or impairment of
property. (Matter of New York City Housing Auth. v. Muller,
270 N. Y. 333, 343; Pocantico Water Works Co. v. Bird, 130 N.
Y. 249, 258.) The promotion of the interests of the
polluting cement company has, in my opinion, no public
use or benefit.
Nor is it constitutionally permissible to impose servitude on
land, without consent of the owner, by payment of
permanent damages where the continuing impairment of
the land is for a private use. (See Fifth Ave. Coach Lines v.
City of New York, 11 N Y 2d 342, 347; Walker v. City of
Hutchinson, 352 U. S. 112.) This is made clear by the State
Constitution (art. I, s 7, subd. [a]) which provides that
“[p]rivate property shall not be taken for public use without
just compensation” (emphasis added). It is, of course,
significant that the section makes no mention of taking for
a private use.
In sum, then, by constitutional mandate as well as by
judicial pronouncement, the permanent impairment of
private property for private purposes is not authorized in
the absence of clearly demonstrated public benefit and use.

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I would enjoin the defendant cement company from
continuing the discharge of dust particles upon its
neighbors’ properties unless, within 18 months, the cement
company abated this nuisance.8
It is not my intention to cause the removal of the cement
plant from the Albany area, but to recognize the urgency of
the problem stemming from this stationary source of air
pollution, and to allow the company a specified period of
time to develop a means to alleviate this nuisance.
I am aware that the trial court found that the most modern
dust control devices available have been installed in
defendant’s plant, but, I submit, this does not mean that
better and more effective dust control devices could not be
developed within the time allowed to abate the pollution.
Moreover, I believe it is incumbent upon the defendant to
develop such devices, since the cement company, at the
time the plant commenced production (1962), was well
aware of the plaintiffs’ presence in the area, as well as the
probable consequences of its contemplated operation. Yet,
it still chose to build and operate the plant at this site.
In a day when there is a growing concern for clean air,
highly developed industry should not expect acquiescence
by the courts, but should, instead, plan its operations to
eliminate contamination of our air and damage to its
neighbors.
Accordingly, the orders of the Appellate Division, insofar
as they denied the injunction, should be reversed, and the
actions remitted to Supreme Court, Albany County to grant
an injunction to take effect 18 months hence, unless the

8 The issuance of an injunction to become effective in the future is not an entirely

new concept. For instance, in Schwarzenbach v. Oneonta Light & Power Co. (207 N. Y.
671), an injunction against the maintenance of a dam spilling water on plaintiff’s
property was issued to become effective one year hence.

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nuisance is abated by improved techniques prior to said
date.
Spur Industries, Inc. v. Del E. Webb Development
Co., 494 P.2d 700 (Ariz. 1972)
Snell & Wilmer, by Mark Wilmer, and John Lundin,
Phoenix, for appellant and cross-appellee.
L. Dennis Marlowe, Tempe, for appellee and crossappellant.
CAMERON, Vice Chief Justice.
From a judgment permanently enjoining the defendant,
Spur Industries, Inc., from operating a cattle feedlot near
the plaintiff Del E. Webb Development Company’s Sun
City, Spur appeals. Webb cross-appeals. Although
numerous issues are raised, we feel that it is necessary to
answer only two questions. They are:
1. Where the operation of a business, such as a cattle
feedlot is lawful in the first instance, but becomes a
nuisance by reason of a nearby residential area, may
the feedlot operation be enjoined in an action
brought by the developer of the residential area?
2. Assuming that the nuisance may be enjoined, may
the developer of a completely new town or urban
area in a previously agricultural area be required to
indemnify the operator of the feedlot who must
move or cease operation because of the presence of
the residential area created by the developer?
The facts necessary for a determination of this matter on
appeal are as follows. The area in question is located in
Maricopa County, Arizona, some 14 to 15 miles west of the
urban area of Phoenix, on the Phoenix-Wickenburg
Highway, also known as Grand Avenue. About two miles
south of Grand Avenue is Olive Avenue which runs east
and west. 111th Avenue runs north and south as does the

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Agua Fria River immediately to the west. See Exhibits A
and B below.
Farming started in this area about 1911. In 1929, with the
completion of the Carl Pleasant Dam, gravity flow water
became available to the property located to the west of the
Agua Fria River, though land to the east remained
dependent upon well water for irrigation. By 1950, the only
urban areas in the vicinity were the agriculturally related
communities of Peoria, El Mirage, and Surprise located
along Grand Avenue. Along 111th Avenue, approximately
one mile south of Grand Avenue and 1 1/2 miles north of
Olive Avenue, the community of Youngtown was
commenced in 1954. Youngtown is a retirement
community appealing primarily to senior citizens.
In 1956, Spur’s predecessors in interest, H. Marion
Welborn and the Northside Hay Mill and Trading
Company, developed feed-lots, about 1/2 mile south of
Olive Avenue, in an area between the confluence of the
usually dry Agua Fria and New Rivers. The area is well
suited for cattle feeding and in 1959, there were 25 cattle
feeding pens or dairy operations within a 7 mile radius of
the location developed by Spur’s predecessors. In April and
May of 1959, the Northside Hay Mill was feeding between
6,000 and 7,000 head of cattle and Welborn approximately
1,500 head on a combined area of 35 acres.
In May of 1959, Del Webb began to plan the development
of an urban area to be known as Sun City. For this purpose,
the Marinette and the Santa Fe Ranches, some 20,000 acres
of farmland, were purchased for $15,000,000 or $750.00
per acre. This price was considerably less than the price of
land located near the urban area of Phoenix, and along with
the success of Youngtown was a factor influencing the
decision to purchase the property in question.
By September 1959, Del Webb had started construction of
a golf course south of Grand Avenue and Spur’s

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predecessors had started to level ground for more feedlot
area. In 1960, Spur purchased the property in question and
began a rebuilding and expansion program extending both
to the north and south of the original facilities. By 1962,
Spur’s expansion program was completed and had
expanded from approximately 35 acres to 114 acres. See
Exhibit A above.
Accompanied by an extensive advertising campaign, homes
were first offered by Del Webb in January 1960 and the
first unit to be completed was south of Grand Avenue and
approximately 2 1/2 miles north of Spur. By 2 May 1960,
there were 450 to 500 houses completed or under
construction. At this time, Del Webb did not consider
odors from the Spur feed pens a problem and Del Webb
continued to develop in a southerly direction, until sales
resistance became so great that the parcels were difficult if
not impossible to sell. Thomas E. Breen, Vice President
and General Manager of the housing division of Del Webb,
testified at deposition as follows:
Q Did you ever have any discussions
with Tony Cole at or about the time
the sales office was opened south of
Peoria concerning the problem in sales
as the development came closer
towards the feed lots?
A Not at the time that that facility was
opened. That was subsequent to that.
Q All right, what is it that you recall
about conversations with Cole on that
subject?
A Well, when the feed lot problem
became a bigger problem, which,
really, to the best of my recollection,
commenced to become a serious
problem in 1963, and there was some

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talk about not developing that area
because of sales resistance, and to my
recollection we shifted-we had planned
at that time to the eastern portion of
the property, and it was a
consideration.
Q Was any specific suggestion made
by Mr. Cole as to the line of
demarcation that should be drawn or
anything of that type exactly where the
development should cease?
A I don’t recall anything specific as far
as the definite line would be, other
than, you know, that it would be
advisable to stay out of the
southwestern portion there because of
sales resistance.
Q And to the best of your recollection,
this was in about 1963?
A That would be my recollection, yes.
Q As you recall it, what was the reason
that the suggestion was not adopted to
stop developing towards the southwest
of the development?
A Well, as far as I know, that decision
was made subsequent to that time.
Q Right. But I mean at that time?
A Well, at that time what I am really
referring to is more of a long-range
planning than immediate planning, and
I think it was the case of just trying to
figure out how far you could go with it
before you really ran into a lot of sales

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resistance and found a necessity to
shift the direction.
Q So that plan was to go as far as you
could until the resistance got to the
point where you couldn’t go any
further?
A I would say that is reasonable, yes.
By December 1967, Del Webb’s property had extended
south to Olive Avenue and Spur was within 500 feet of
Olive Avenue to the north. See Exhibit B above. Del Webb
filed its original complaint alleging that in excess of 1,300
lots in the southwest portion were unfit for development
for sale as residential lots because of the operation of the
Spur feedlot.
Del Webb’s suit complained that the Spur feeding
operation was a public nuisance because of the flies and the
odor which were drifting or being blown by the prevailing
south to north wind over the southern portion of Sun City.
At the time of the suit, Spur was feeding between 20,000
and 30,000 head of cattle, and the facts amply support the
finding of the trial court that the feed pens had become a
nuisance to the people who resided in the southern part of
Del Webb’s development. The testimony indicated that
cattle in a commercial feedlot will produce 35 to 40 pounds
of wet manure per day, per head, or over a million pounds
of wet manure per day for 30,000 head of cattle, and that
despite the admittedly good feedlot management and good
housekeeping practices by Spur, the resulting odor and flies
produced an annoying if not unhealthy situation as far as
the senior citizens of southern Sun City were concerned.
There is no doubt that some of the citizens of Sun City
were unable to enjoy the outdoor living which Del Webb
had advertised and that Del Webb was faced with sales
resistance from prospective purchasers as well as strong

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and persistent complaints from the people who had
purchased homes in that area.
Trial was commenced before the court with an advisory
jury. The advisory jury was later discharged and the trial
was continued before the court alone. Findings of fact and
conclusions of law were requested and given. The case was
vigorously contested, including special actions in this court
on some of the matters. In one of the special actions before
this court, Spur agreed to, and did, shut down its operation
without prejudice to a determination of the matter on
appeal. On appeal the many questions raised were
extensively briefed.
It is noted, however, that neither the citizens of Sun City
nor Youngtown are represented in this lawsuit and the suit
is solely between Del E. Webb Development Company and
Spur Industries, Inc.
MAY SPUR BE ENJOINED?
The difference between a private nuisance and a public
nuisance is generally one of degree. A private nuisance is
one affecting a single individual or a definite small number
of persons in the enjoyment of private rights not common
to the public, while a public nuisance is one affecting the
rights enjoyed by citizens as a part of the public. To
constitute a public nuisance, the nuisance must affect a
considerable number of people or an entire community or
neighborhood. City of Phoenix v. Johnson, 51 Ariz. 115, 75
P.2d 30 (1938).
Where the injury is slight, the remedy for minor
inconveniences lies in an action for damages rather than in
one for an injunction. Kubby v. Hammond, 68 Ariz. 17, 198
P.2d 134 (1948). Moreover, some courts have held, in the
‘balancing of conveniences’ cases, that damages may be the
sole remedy. See Boomer v. Atlantic Cement Co., 26 N.Y.2d
219, 309 N.Y.S.2d 312, 257 N.E.2d 870, 40 A.L.R.3d 590
(1970), and annotation comments, 40 A.L.R.3d 601.

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Thus, it would appear from the admittedly incomplete
record as developed in the trial court, that, at most,
residents of Youngtown would be entitled to damages
rather than injunctive relief.
We have no difficulty, however, in agreeing with the
conclusion of the trial court that Spur’s operation was an
enjoinable public nuisance as far as the people in the
southern portion of Del Webb’s Sun City were concerned.
s 36-601, subsec. A reads as follows:
s 36-601. Public nuisances dangerous
to public health
A. The following conditions are
specifically
declared
public
nuisances dangerous to the public
health:
Any condition or place in
populous
areas
which
constitutes a breeding place
for
flies,
rodents,
mosquitoes
and
other
insects which are capable of
carrying and transmitting
disease-causing organisms to
any person or persons.
By this statute, before an otherwise lawful (and necessary)
business may be declared a public nuisance, there must be a
‘populous’ area in which people are injured:
* * * (I)t hardly admits a doubt that, in
determining the question as to whether
a lawful occupation is so conducted as
to constitute a nuisance as a matter of
fact, the locality and surroundings are
of the first importance. (citations
omitted) A business which is not per

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se a public nuisance may become such
by being carried on at a place where
the health, comfort, or convenience of
a populous neighborhood is affected. *
* * What might amount to a serious
nuisance in one locality by reason of
the density of the population, or
character of the neighborhood
affected, may in another place and
under different surroundings be
deemed proper and unobjectionable. *
* *.
MacDonald v. Perry, 32 Ariz. 39, 49-50, 255 P. 494, 497
(1927).
It is clear that as to the citizens of Sun City, the operation
of Spur’s feedlot was both a public and a private nuisance.
They could have successfully maintained an action to abate
the nuisance. Del Webb, having shown a special injury in
the loss of sales, had a standing to bring suit to enjoin the
nuisance. Engle v. Clark, 53 Ariz. 472, 90 P.2d 994 (1939);
City of Phoenix v. Johnson, supra. The judgment of the trial
court permanently enjoining the operation of the feedlot is
affirmed.
MUST DEL WEBB INDEMNIFY SPUR?
A suit to enjoin a nuisance sounds in equity and the courts
have long recognized a special responsibility to the public
when acting as a court of equity:
s 104. Where public interest is
involved.
Courts of equity may, and
frequently do, go much further
both to give and withhold relief
in furtherance of the public
interest than they are accustomed
to go when only private interests

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are involved. Accordingly, the
granting or withholding of relief
may properly be dependent upon
considerations of public interest.
* * *.
27 Am.Jur.2d, Equity, page 626.
In addition to protecting the public interest, however,
courts of equity are concerned with protecting the operator
of a lawfully, albeit noxious, business from the result of a
knowing and willful encroachment by others near his
business.
In the so-called ‘coming to the nuisance’ cases, the courts
have held that the residential landowner may not have relief
if he knowingly came into a neighborhood reserved for
industrial or agricultural endeavors and has been damaged
thereby:
Plaintiffs chose to live in an area
uncontrolled by zoning laws or
restrictive covenants and remote from
urban development. In such an area
plaintiffs cannot complain that
legitimate agricultural pursuits are
being carried on in the vicinity, nor
can plaintiffs, having chosen to build
in an agricultural area, complain that
the agricultural pursuits carried on in
the area depreciate the value of their
homes. The area being Primarily
agricultural, and opinion reflecting the
value of such property must take this
factor into account. The standards
affecting the value of residence
property in an urban setting, subject to
zoning controls and controlled
planning techniques, cannot be the
standards by which agricultural
properties are judged.

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People employed in a city who build
their homes in suburban areas of the
county beyond the limits of a city and
zoning regulations do so for a reason.
Some do so to avoid the high taxation
rate imposed by cities, or to avoid
special assessments for street, sewer
and water projects. They usually build
on improved or hard surface highways,
which have been built either at state or
county expense and thereby avoid
special
assessments
for
these
improvements. It may be that they
desire to get away from the congestion
of traffic, smoke, noise, foul air and
the many other annoyances of city life.
But with all these advantages in going
beyond the area which is zoned and
restricted to protect them in their
homes, they must be prepared to take
the disadvantages.
Dill v. Excel Packing Company, 183 Kan. 513, 525, 526, 331
P.2d 539, 548, 549 (1958). See also East St. Johns Shingle Co.
v. City of Portland, 195 Or. 505, 246 P.2d 554, 560-562
(1952).
And:
* * * a party cannot justly call upon the
law to make that place suitable for his
residence which was not so when he
selected it. * * *.
Gilbert v. Showerman, 23 Mich. 448, 455, 2 Brown 158 (1871).
Were Webb the only party injured, we would feel justified
in holding that the doctrine of ‘coming to the nuisance’
would have been a bar to the relief asked by Webb, and, on
the other hand, had Spur located the feedlot near the
outskirts of a city and had the city grown toward the

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feedlot, Spur would have to suffer the cost of abating the
nuisance as to those people locating within the growth
pattern of the expanding city:
The case affords, perhaps, an example
where a business established at a place
remote from population is gradually
surrounded and becomes part of a
populous center, so that a business
which formerly was not an
interference with the rights of others
has become so by the encroachment
of the population * * *.
City of Ft. Smith v. Western Hide & Fur Co., 153 Ark. 99, 103,
239 S.W. 724, 726 (1922).
We agree, however, with the Massachusetts court that:
The law of nuisance affords no rigid
rule to be applied in all instances. It is
elastic. It undertakes to require only
that which is fair and reasonable under
all
the
circumstances.
In
a
commonwealth like this, which
depends for its material prosperity so
largely on the continued growth and
enlargement of manufacturing of
diverse varieties, ‘extreme rights’
cannot be enforced. * * *.
Stevens v. Rockport Granite Co., 216 Mass. 486, 488, 104 N.E.
371, 373 (1914).
There was no indication in the instant case at the time Spur
and its predecessors located in western Maricopa County
that a new city would spring up, full-blown, alongside the
feeding operation and that the developer of that city would
ask the court to order Spur to move because of the new
city. Spur is required to move not because of any
wrongdoing on the part of Spur, but because of a proper

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and legitimate regard of the courts for the rights and
interests of the public.
Del Webb, on the other hand, is entitled to the relief
prayed for (a permanent injunction), not because Webb is
blameless, but because of the damage to the people who
have been encouraged to purchase homes in Sun City. It
does not equitable or legally follow, however, that Webb,
being entitled to the injunction, is then free of any liability
to Spur if Webb has in fact been the cause of the damage
Spur has sustained. It does not seem harsh to require a
developer, who has taken advantage of the lesser land
values in a rural area as well as the availability of large tracts
of land on which to build and develop a new town or city
in the area, to indemnify those who are forced to leave as a
result.
Having brought people to the nuisance to the foreseeable
detriment of Spur, Webb must indemnify Spur for a
reasonable amount of the cost of moving or shutting down.
It should be noted that this relief to Spur is limited to a
case wherein a developer has, with foreseeability, brought
into a previously agricultural or industrial area the
population which makes necessary the granting of an
injunction against a lawful business and for which the
business has no adequate relief.
It is therefore the decision of this court that the matter be
remanded to the trial court for a hearing upon the damages
sustained by the defendant Spur as a reasonable and direct
result of the granting of the permanent injunction. Since
the result of the appeal may appear novel and both sides
have obtained a measure of relief, it is ordered that each
side will bear its own costs.
Affirmed in part, reversed in part, and remanded for
further proceedings consistent with this opinion.

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Problems
1. Why might the Prah court have found no nuisance in the Boomer
case? Make the argument.
2. Does the court invoke a property rule or liability rule in Boomer?
(a) What additional or different facts could you add to that case
that might help you argue that the court should have used the
other rule? Explain.
(b) What additional or different facts would lead you to
conclude the court should have used Rule 4 (as in Spur)?
Explain.
Answers
1. Why might the Prah court have found no nuisance in the Boomer
case? Make the argument.
Only a substantial and unreasonable interference with the
plaintiff’s use of his or her property will constitute a nuisance.
The Prah court held the Restatement’s reasonable use doctrine
should be applied in nuisance cases. That doctrine requires
the court to balance the utility of the defendant’s conduct
against the harm to the plaintiff. In Boomer, the lower court
determined that the value of the cement plant far exceeded
the costs to the plaintiffs. Thus, under the reasonable use
doctrine, there is (arguably) no nuisance.
2. Does the court invoke a property rule or liability rule in Boomer?
Liability rule. The Court awards permanent damages, meaning
damages that will compensate for all the harms complained of
now and in the future without further liability, allowing the
plant to continue in operation.
(a) What additional or different facts could you add to that case
that might help you argue that the court should have used the other
rule? Explain.

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There are a number of possible answers here. Two main kinds
of examples would be: (1) those in which we’re certain who
can most cheaply avoid the costs (and so don’t worry that a
transaction between the parties will be necessary after the
litigation) or (2) those in which we, for some reason, aren’t
worried that transactions will be expensive (and so if we
award the wrong party with the entitlement, we’re pretty sure
the parties will be able to bargain around it, a la Coase).
An example of (1): There exists a scrubber that would clean
the plant’s emissions sufficiently to avoid almost all of the
harm to the plaintiffs. And the cost of the scrubber is
obviously less than the value of the harm to the plaintiffs.
There’s no uncertainty or guesswork for the court. In this
case, we’d just give an injunction to the plaintiffs (property
rule protection of plaintiffs). Defendant plant would then
install the scrubber.
An example of (2): Perhaps instead of a bunch of neighbors,
we have only one neighbor that is harmed, and it’s a business.
Though that business still might strategically attempt to hold
out for a lot of cash, there is less danger of irrational holdouts than there is with 300 residents. In this case, we’re more
confident a transaction between the parties will fix any error
we make in the initial entitlement. (To be clear, I mean that if,
for example, we say it’s a nuisance and that plaintiff wins but
in fact the use is more valuable to defendant than the injuries
are costly to the plaintiffs, the parties will be able to work out
a deal afterwards that will allow defendant to continue.)
(b) What additional or different facts would lead you to conclude
the court should have used Rule 4 (as in Spur)? Explain.
One possibility is that the neighbors could be posited to have
moved in after the cement company had begun operations.
This would be a “coming to the nuisance” case like Spur.
Coming to the nuisance is usually a defense to nuisance,
meaning that it will give the court a reason to decide there

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wasn’t a nuisance at all. It didn’t do that in Spur because of the
many people who now lived around the cattle operations. It
had become obvious that this land was more valuable as
residential area than cattle farming land. You could make up
these same facts here.
Another possibility, suggested by the Calabresi article, is that the
costs to the plaintiffs of the pollution are extremely difficult to value.
Suppose the pollution is some kind of annoying dust, and there is a
great diversity of uses in a neighboring residential/office/strip mall
area. It will be costly to determine the amount of damages for each of
these differently situated users. It may be cheap, though, to figure out
how much the plant would be injured if it were shut down (or forced
to install pollution control equipment). And so, on economic
efficiency grounds, we might force the factory to shut down (or
install the equipment) but only if the neighbors collectively paid the
(easily calculated) cost. This would be a more realistic possibility if we
further posited some sort of homeowner association or private
governance mechanism that could eliminate holdouts among the
neighbors.

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2. Acquisition by Possession
2.1 Possession Generally
2.1.1. Wild Animals
Pierson v. Post, 3 Cai. R. 175 (NY 1805)
Argument of Counsel
Mr. Sanford, for the now plaintiff. It is firmly settled that
animals, feroe naturoe, belong not to anyone. If, then, Post
had not acquired any property in the fox, when it was killed
by Pierson, he had no right in it which could be the subject
of injury. As, however, a property may be gained in such an
animal, it will be necessary to advert to the facts set forth,
to see whether they are such as could give a legal interest in
the creature, that was the cause of the suit below. Finding,
hunting, and pursuit, are all that the plaint enumerates. To
create a title to an animal feroe naturor, occupancy is
indispensable. It is the only mode recognized by our
system. 2 Black. Com. 403. The reason of the thing shows
it to be so. For whatever is not appropriated by positive
institutions, can be exclusively possessed by natural law
alone. Occupancy is the sole method this code
acknowledges. Authorities are not wanting to this effect.
Just. lib. 2, tit. 1, sec. 12. “Feroe igitur bestioe, simul atque
ab aliiquo captoe fuerint jure gentium statim illius esse
incipiunt.” There must be a taking; and even that is not in
all cases sufficient, for in the same section he observes,
“Quicquid autem corum ceperis, eo usque tuum esse
intelligitur, donec tua custodia coercetur; cum vero tuam
evaserit custodiam, et in libertatem naturalem sese
receperit, tuam esse desinit, et rursus occumpantis fit.” It is
added also that this natural liberty may be regained even if
in sight of the pursuer, “ita sit, ut difficilis sit ejus
persecutio.” In section 13, it is laid down, that even
wounding will not give a right of property in an animal that
is unreclaimed. For, notwithstanding the wound, “multa

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accidere soleant ut eam non capias,” and “non aliter tuam
esse quam si eam ceperis.” Fleta (b. 3, p. 175) and Bracton
(b. 2, ch. 1, p. 86) are in unison with the Roman law-giver.
It is manifest, then, from the record, that there was no title
in Post, and the action, therefore, not maintainable.
Mr. Colden, contra. I admit, with Fleta, that pursuit alone
does not give a right of property in animals feroe naturoe,
and I admit also that occupancy is to give a title to them.
But, then, what kind of occupancy? And here I shall
contend it is not such as is derived from manucaption
alone. In Puffendorf’s Law of Nature and of Nations (b.
4, ch. 4, sec. 5, n. 6, by Barbeyrac), notice is taken of this
principle of taking possession. It is there combatted, nay,
disproved; and in b. 4, ch. 6, sec. 2, n. 2. lbid. sec. 7, n. 2,
demonstrated that manucaption is only one of many
means to declare the intention of exclusively appropriating
that which was before in a state of nature. Any continued
act which does this, is equivalent to occupancy. Pursuit,
therefore, by a person who starts a wild animal, gives an
exclusive right whilst it is followed. It is all the possession
the nature of the subject admits; it declares the intention
of acquiring dominion, and is as much to be respected as
manucaption itself. The contrary idea, requiring actual
taking, proceeds, as Mr. Barbeyrac observes, in Puffendorf
(b. 4, ch. 6, sec. 10), on a “false notion of possession.”
Mr. Sanford, in reply. The only authority relied on is that of
an annotator. On the question now before the court, we
have taken our principles from the civil code, and nothing
has been urged to impeach those quoted from the authors
referred to.
TOMPKINS, J. delivered the opinion of the court.
This cause comes before us on a return to a certiorari
directed to one of the justices of Queens county.
The question submitted by the counsel in this cause for our
determination is, whether Lodowick Post, by the pursuit

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with his hounds in the manner alleged in his declaration,
acquired such a right to, or property in, the fox, as will
sustain an action against Pierson for killing and taking him
away?
The cause was argued with much ability by the counsel on
both sides, and presents for our decision a novel and nice
question. It is admitted that a fox is an animal ferae naturae,
and that property in such animals is acquired by occupancy
only. These admissions narrow the discussion to the simple
question of what acts amount to occupancy, applied to
acquiring right to wild animals?
If we have recourse to the ancient writers upon general
principles of law, the judgment below is obviously
erroneous. Justinian’s Institutes, lib. 2. tit. 1. s. 13. and
Fleta, lib. 3. c. 2. p. 175. adopt the principle, that pursuit
alone vests no property or right in the huntsman; and that
even pursuit, accompanied with wounding, is equally
ineffectual for that purpose, unless the animal be actually
taken. The same principle is recognised by Bracton, lib. 2.
c. 1. p. 8.
Puffendorf, lib. 4. c. 6. s. 2. and 10, defines occupancy of
beasts ferae naturae, to be the actual corporal possession of
them, and Bynkershoek is cited as coinciding in this
definition. It is indeed with hesitation that Puffendorf
affirms that a wild beast mortally wounded, or greatly
maimed, cannot be fairly intercepted by another, whilst the
pursuit of the person inflicting the wound continues. The
foregoing authorities are decisive to show that mere pursuit
gave Post no legal right to the fox, but that he became the
property of Pierson, who intercepted and killed him.
It therefore only remains to inquire whether there are any
contrary principles, or authorities, to be found in other
books, which ought to induce a different decision. Most of
the cases which have occurred in England, relating to
property in wild animals, have either been discussed and

175

decided upon the principles of their positive statute
regulations, or have arisen between the huntsman and the
owner of the land upon which beasts ferae naturae have
been apprehended; the former claiming them by title of
occupancy, and the latter ratione soli.Little satisfactory aid
can, therefore, be derived from the English reporters.
Barbeyrac, in his notes on Puffendorf, does not accede to
the definition of occupancy by the latter, but, on the
contrary, affirms, that actual bodily seizure is not, in all
cases, necessary to constitute possession of wild animals.
He does not, however, describe the acts which, according
to his ideas, will amount to an appropriation of such
animals to private use, so as to exclude the claims of all
other persons, by title of occupancy, to the same animals;
and he is far from averring that pursuit alone is sufficient
for that purpose. To a certain extent, and as far as
Barbeyrac appears to me to go, his objections to
Puffendorf’s definition of occupancy are reasonable and
correct. That is to say, that actual bodily seizure is not
indispensable to acquire right to, or possession of, wild
beasts; but that, on the contrary, the mortal wounding of
such beasts, by one not abandoning his pursuit, may, with
the utmost propriety, be deemed possession of him; since,
thereby, the pursuer manifests an unequivocal intention of
appropriating the animal to his individual use, has deprived
him of his natural liberty, and brought him within his
certain control. So also, encompassing and securing such
animals with nets and toils, or otherwise intercepting them
in such a manner as to deprive them of their natural liberty,
and render escape impossible, may justly be deemed to give
possession of them to those persons who, by their industry
and labour, have used such means of apprehending them.
Barbeyrac seems to have adopted, and had in view in his
notes, the more accurate opinion of Grotius, with respect
to occupancy. That celebrated author, lib. 2. c. 8. s. 3. p.
309. speaking of occupancy, proceeds thus: “Requiritur

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autem corporalis quaedam possessio ad dominium
adipiscendum; atque ideo, vulnerasse non sufficit.” But in
the following section he explains and qualifies this
definition of occupancy: “Sed possessio illa potest non solis
manibus, sed instrumentis, ut decipulis, retibus, laqueis
dum duo adsint: primum ut ipsa instrumenta sint in nostra
potestate, deinde ut fera, ita inclusa sit, ut exire inde
nequeat.” This qualification embraces the full extent of
Barbeyrac’s objection to Puffendorf’s definition, and allows
as great a latitude to acquiring property by occupancy, as
can reasonably be inferred from the words or ideas
expressed by Barbeyrac in his notes. The case now under
consideration is one of mere pursuit, and presents no
circumstances or acts which can bring it within the
definition of occupancy by Puffendorf, or Grotius, or the
ideas of Barbeyrac upon that subject.
The case cited from 11 Mod. 74–130. I think clearly
distinguishable from the present; inasmuch as there the
action was for maliciously hindering and disturbing the
plaintiff in the exercise and enjoyment of a private
franchise; and in the report of the same case, 3 Salk. 9.
Holt, Ch. J. states, that the ducks were in the plaintiff’s
decoy pond, and so in his possession, from which it is
obvious the court laid much stress in their opinion upon
the plaintiff’s possession of the ducks, ratione soli.
We are the more readily inclined to confine possession or
occupancy of beasts ferae naturae, within the limits
prescribed by the learned authors above cited, for the sake
of certainty, and preserving peace and order in society. If
the first seeing, starting, or pursuing such animals, without
having so wounded, circumvented or ensnared them, so as
to deprive them of their natural liberty, and subject them to
the control of their pursuer, should afford the basis of
actions against others for intercepting and killing them, it
would prove a fertile source of quarrels and litigation.

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However uncourteous or unkind the conduct of Pierson
towards Post, in this instance, may have been, yet his act
was productive of no injury or damage for which a legal
remedy can be applied. We are of opinion the judgment
below was erroneous, and ought to be reversed.
LIVINGSTON, J.
My opinion differs from that of the court. Of six
exceptions, taken to the proceedings below, all are
abandoned except the third, which reduces the controversy
to a single question.
Whether a person who, with his own hounds, starts and
hunts a fox on waste and uninhabited ground, and is on the
point of seizing his prey, acquires such an interest in the
animal, as to have a right of action against another, who in
view of the huntsman and his dogs in full pursuit, and with
knowledge of the chase, shall kill and carry him away?
This is a knotty point, and should have been submitted to
the arbitration of sportsmen, without poring over Justinian,
Fleta, Bracton, Puffendorf, Locke, Barbeyrac, or
Blackstone, all of whom have been cited; they would have
had no difficulty in coming to a prompt and correct
conclusion. In a court thus constituted, the skin and carcass
of poor reynard would have been properly disposed of, and
a precedent set, interfering with no usage or custom which
the experience of ages has sanctioned, and which must be
so well known to every votary of Diana.But the parties
have referred the question to our judgment, and we must
dispose of it as well as we can, from the partial lights we
possess, leaving to a higher tribunal, the correction of any
mistake which we may be so unfortunate as to make. By
the pleadings it is admitted that a fox is a “wild and noxious
beast.” Both parties have regarded him, as the law of
nations does a pirate, “hostem humani generis,” and
although “de mortuis nil nisi bonum,” be a maxim of our
profession, the memory of the deceased has not been

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spared. His depredations on farmers and on barn yards,
have not been forgotten; and to put him to death wherever
found, is allowed to be meritorious, and of public benefit.
Hence it follows, that our decision should have in view the
greatest possible encouragement to the destruction of an
animal, so cunning and ruthless in his career. But who
would keep a pack of hounds; or what gentleman, at the
sound of the horn, and at peep of day, would mount his
steed, and for hours together, “sub jove frigido,” or a
vertical sun, pursue the windings of this wily quadruped, if,
just as night came on, and his stratagems and strength were
nearly exhausted, a saucy intruder, who had not shared in
the honours or labours of the chase, were permitted to
come in at the death, and bear away in triumph the object
of pursuit? Whatever Justinian may have thought of the
matter, it must be recollected that his code was compiled
many hundred years ago, and it would be very hard indeed,
at the distance of so many centuries, not to have a right to
establish a rule for ourselves. In his day, we read of no
order of men who made it a business, in the language of the
declaration in this cause, “with hounds and dogs to find,
start, pursue, hunt, and chase,” these animals, and that, too,
without any other motive than the preservation of Roman
poultry; if this diversion had been then in fashion, the
lawyers who composed his institutes, would have taken
care not to pass it by, without suitable encouragement. If
any thing, therefore, in the digests or pandects shall appear
to militate against the defendant in error, who, on this
occasion, was the foxhunter, we have only to say tempora
mutantur; and if men themselves change with the times,
why should not laws also undergo an alteration?
It may be expected, however, by the learned counsel, that
more particular notice be taken of their authorities. I have
examined them all, and feel great difficulty in determining,
whether to acquire dominion over a thing, before in
common, it be sufficient that we barely see it, or know

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where it is, or wish for it, or make a declaration of our will
respecting it; or whether, in the case of wild beasts, setting
a trap, or lying in wait, or starting, or pursuing, be enough;
or if an actual wounding, or killing, or bodily tact and
occupation be necessary. Writers on general law, who have
favoured us with their speculations on these points, differ
on them all; but, great as is the diversity of sentiment
among them, some conclusion must be adopted on the
question immediately before us. After mature deliberation,
I embrace that of Barbeyrac, as the most rational, and least
liable to objection. If at liberty, we might imitate the
courtesy of a certain emperor, who, to avoid giving offence
to the advocates of any of these different doctrines,
adopted a middle course, and by ingenious distinctions,
rendered it difficult to say (as often happens after a fierce
and angry contest) to whom the palm of victory belonged.
He ordained, that if a beast be followed with large dogs and
hounds, he shall belong to the hunter, not to the chance
occupant; and in like manner, if he be killed or wounded
with a lance or sword; but if chased with beagles only, then
he passed to the captor, not to the first pursuer. If slain
with a dart, a sling, or a bow, he fell to the hunter, if still in
chase, and not to him who might afterwards find and seize
him.
Now, as we are without any municipal regulations of our
own, and the pursuit here, for aught that appears on the
case, being with dogs and hounds of imperial stature, we
are at liberty to adopt one of the provisions just cited,
which comports also with the learned conclusion of
Barbeyrac, that property in animals ferae naturae may be
acquired without bodily touch or manucaption, provided
the pursuer be within reach, or have a reasonable prospect
(which certainly existed here) of taking, what he has thus
discovered an intention of converting to his own use.
When we reflect also that the interest of our husbandmen,
the most useful of men in any community, will be advanced

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by the destruction of a beast so pernicious and incorrigible,
we cannot greatly err, in saying, that a pursuit like the
present, through waste and unoccupied lands, and which
must inevitably and speedily have terminated in corporal
possession, or bodily seisin, confers such a right to the
object of it, as to make any one a wrongdoer, who shall
interfere and shoulder the spoil. The justice’s judgment
ought, therefore, in my opinion, to be affirmed.
Ghen v. Rich, 8 F. 159 (D. Mass. 1881)
H. M. Knowlton, for libellant.
H. P. Harriman, for respondent.
NELSON, D. J.
This is a libel to recover the value of a fin-back whale. The
libellant lives in Provincetown and the respondent in
Wellfleet. The facts, as they appeared at the hearing, are as
follows:
In the early spring months the easterly
part of Massachusetts bay is
frequented by the species of whale
known as the fin-back whale.
Fishermen from Provincetown pursue
them in open boats from the shore,
and shoot them with bomb-lances
fired from guns made expressly for the
purpose. When killed they sink at once
to the bottom, but in the course of
from one to three days they rise and
float on the surface. Some of them are
picked up by vessels and towed into
Provincetown. Some float ashore at
high water and are left stranded on the
beach as the tide recedes. Others float
out to sea and are never recovered.
The person who happens to find them
on the beach usually sends word to
Provincetown, and the owner comes

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to the spot and removes the blubber.
The finder usually receives a small
salvage for his services. Try-works are
established in Provincetown for trying
out the oil. The business is of
considerable extent, but, since it
requires skill and experience, as well as
some outlay of capital, and is attended
with great exposure and hardship, few
persons engage in it. The average yield
of oil is about 20 barrels to a whale. It
swims with great swiftness, and for
that reason cannot be taken by the
harpoon and line. Each boat’s crew
engaged in the business has its peculiar
mark or device on its lances, and in
this way it is known by whom a whale
is killed.
The usage on Cape Cod, for many
years, has been that the person who
kills a whale in the manner and under
the circumstances described, owns it,
and this right has never been disputed
until this case. The libellant has been
engaged in this business for ten years
past. On the morning of April 9, 1880,
in Massachusetts bay, near the end of
Cape Cod, he shot and instantly killed
with a bomb-lance the whale in
question. It sunk immediately, and on
the morning of the 12th was found
stranded on the beach in Brewster,
within the ebb and flow of the tide, by
one Ellis, 17 Miles from the spot
where it was killed. Instead of sending
word to Provincetown, as is
customary, Ellis advertised the whale
for sale at auction, and sold it ot the
respondent, who shipped off the
blubber and tried out the oil. The

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libellant heard of the finding of the
whale on the morning of the 15th, and
immediately sent one of his boat’s
crew to the place and claimed it.
Neither the respondent nor Ellis knew
the whale had been killed by the
libellant, but they knew or might have
known, if they had wished, that it had
been shot and killed with a bomblance, by some person engaged in this
species of business.
The libellant claims title to the whale under this usage. The
respondent insists that this usage is invalid. It was decided
by Judge Sprague, in Taber v. Jenny, 1 Sprague, 315, that
when a whale has been killed, and is anchored and left with
marks of appropriation, it is the property of the captors;
and if it is afterwards found, still anchored, by another ship,
there is no usage or principle of law by which the property
of the original captors is diverted, even though the whale
may have dragged from its anchorage. The learned judge
says:
When the whale had been killed and
taken possession of by the boat of the
Hillman, (the first taker,) it became the
property of the owners of that ship,
and all was done which was the
practicable in order to secure it. They
left it anchored, with unequivocal
marks of appropriation.
In Bartlett v. Budd, 1 Low. 223, the facts were these: The
first officer of the libellant’s ship killed a whale in the
Okhotsk sea, anchored it, attached a waif to the body, and
then left it and went ashore at some distance for the night.
The next morning the boats of the respondent’s ship found
the whale adrift, the anchor not holding, the cable coiled
round the body, and no waif or irons attached to it. Judge

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Lowell held that, as the libellants had killed and taken actual
possession of the whale, the ownership vested in them. In
his opinion the learned judge says:
A whale, being ferae naturae, does not
become property until a firm
possession has been established by the
taker. But when such possession has
become firm and complete, the right
of property is clear, and has all the
characteristics of property.
He doubted whether a usage set up but not proved by the
respondents, that a whale found adrift in the ocean is the
property of the finder, unless the first taker should appear
and claim it before it is cut in, would be valid, and
remarked that “there would be great difficulty in upholding
a custom that should take the property of A. and give it to
B., under so very short and uncertain a substitute for the
statute of limitations, and one so open to fraud and deceit.”
Both the cases cited were decided without reference to
usage, upon the ground that the property had been
acquired by the first taker by actual possession and
appropriation.
In Swift v. Gifford, 1 Low, 110, Judge Lowell decided that a
custom among whalemen in the Arctic seas, that the iron
holds the whale was reasonable and valid. In that case a
boat’s crew from the resondent’s ship pursued and struck a
whale in the Arctic ocean, and the harpoon and the line
attached to it remained in the whale, but did not remain
fast to the boat. A boat’s crew from the libellant’s ship
continued the pursuit and captured the whale, and the
master of the respondent’s ship claimed it on the spot. It
was held by the learned judge that the whale belonged to
the respondents. It was said by Judge Sprague, in Bourne v.
Ashley, an unprinted case referred to by Judge Lowell in
Swift v. Gifford, that the usage for the first iron, whether

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attached to the boat or not, to hold the whale was fully
established; and he added that, although local usages of a
particular port ought not to be allowed to set aside the
general maritime law, this objection did not apply to a
custom which embraced an entire business, and had been
concurred in for a long time by every one engaged in the
trade.
In Swift v. Gifford, Judge Lowell also said:
The rule of law invoked in this case is
one of very limited application. The
whale fishery is the only branch of
industry of any importance in which it
is likely to be much used, and if a
usage is found to prevail generally in
that business, it will not be open to the
objection that it is likely to disturb the
general understanding of mankind by
the interposition of an arbitrary
exception.
I see no reason why the usage proved in this case is not as
reasonable as that sustained in the cases cited. Its
application must necessarily be extremely limited, and can
affect but a few persons. It has been recognized and
acquiesced in for many years. It requires in the first taker
the only act of appropriation that is possible in the nature
of the case. Unless it is sustained, this branch of industry
must necessarily cease, for no person would engage in it if
the fruits of his labor could be appropriated by any chance
finder. It gives reasonable salvage for securing or reporting
the property. That the rule works well in practice is shown
by the extent of the industry which has grown up under it,
and the general acquiescence of a whole community
interested to dispute it. It is by means clear that without
regard to usage the common law would not reach the same
result. That seems to be the effect of the decisions in Taber
v. Jenny and Bartlett v. Budd. If the fisherman does all that is

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possible to do to make the animal his own, that would
seem to be sufficient. Such a rule might well be applied in
the interest of trade, there being no usage or custom to the
contrary. Holmes, Com. Law, 217. But be that as it may, I
hold the usage to be valid, and that the property in the
whale was in the libelant.
The rule of damages is the market value of the oil obtained
from the whale, less the cost of trying it out and preparing
it for the market, with interest on the amount so
ascertained from the date of conversion. As the question is
new and important, and the suit is contested on both sides,
more for the purpose of having it settled than for the
amount involved, I shall give no costs.
Decree for libellant for $71.05, without costs.
From Herman Melville, Moby Dick
CHAPTER 89
Fast-Fish and Loose-Fish
The allusion to the waifs and waif-poles in the last chapter but one,
necessitates some account of the laws and regulations of the whale
fishery, of which the waif may be deemed the grand symbol and
badge.
It frequently happens that when several ships are cruising in
company, a whale may be struck by one vessel, then escape, and be
finally killed and captured by another vessel; and herein are
indirectly comprised many minor contingencies, all partaking of
this one grand feature. For example,–after a weary and perilous
chase and capture of a whale, the body may get loose from the ship
by reason of a violent storm; and drifting far away to leeward, be
retaken by a second whaler, who, in a calm, snugly tows it
alongside, without risk of life or line. Thus the most vexatious and
violent disputes would often arise between the fishermen, were
there not some written or unwritten, universal, undisputed law
applicable to all cases.

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Perhaps the only formal whaling code authorized by legislative
enactment, was that of Holland. It was decreed by the StatesGeneral in A.D. 1695. But though no other nation has ever had any
written whaling law, yet the American fishermen have been their
own legislators and lawyers in this matter. They have provided a
system which for terse comprehensiveness surpasses Justinian’s
Pandects and the By-laws of the Chinese Society for the
Suppression of Meddling with other People’s Business. Yes; these
laws might be engraven on a Queen Anne’s farthing, or the barb of
a harpoon, and worn round the neck, so small are they.
I. A Fast-Fish belongs to the party fast to it.
II. A Loose-Fish is fair game for anybody who can soonest catch it.
But what plays the mischief with this masterly code is the
admirable brevity of it, which necessitates a vast volume of
commentaries to expound it.
First: What is a Fast-Fish? Alive or dead a fish is technically fast,
when it is connected with an occupied ship or boat, by any medium
at all controllable by the occupant or occupants,–a mast, an oar, a
nine-inch cable, a telegraph wire, or a strand of cobweb, it is all the
same. Likewise a fish is technically fast when it bears a waif, or any
other recognized symbol of possession; so long as the party wailing
it plainly evince their ability at any time to take it alongside, as well
as their intention so to do.
These are scientific commentaries; but the commentaries of the
whalemen themselves sometimes consist in hard words and harder
knocks– the Coke-upon-Littleton of the fist. True, among the
more upright and honorable whalemen allowances are always made
for peculiar cases, where it would be an outrageous moral injustice
for one party to claim possession of a whale previously chased or
killed by another party. But others are by no means so scrupulous.
Some fifty years ago there was a curious case of whale-trover
litigated in England, wherein the plaintiffs set forth that after a
hard chase of a whale in the Northern seas; and when indeed they
(the plaintiffs) had succeeded in harpooning the fish; they were at

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last, through peril of their lives, obliged to forsake not only their
lines, but their boat itself. Ultimately the defendants (the crew of
another ship) came up with the whale, struck, killed, seized, and
finally appropriated it before the very eyes of the plaintiffs. And
when those defendants were remonstrated with, their captain
snapped his fingers in the plaintiffs’ teeth, and assured them that by
way of doxology to the deed he had done, he would now retain
their line, harpoons, and boat, which had remained attached to the
whale at the time of the seizure. Wherefore the plaintiffs now sued
for the recovery of the value of their whale, line, harpoons, and
boat.
Mr. Erskine was counsel for the defendants; Lord Ellenborough
was the judge. In the course of the defence, the witty Erskine went
on to illustrate his position, by alluding to a recent crim. con. case,
wherein a gentleman, after in vain trying to bridle his wife’s
viciousness, had at last abandoned her upon the seas of life; but in
the course of years, repenting of that step, he instituted an action to
recover possession of her. Erskine was on the other side; and he
then supported it by saying, that though the gentleman had
originally harpooned the lady, and had once had her fast, and only
by reason of the great stress of her plunging viciousness, had at last
abandoned her; yet abandon her he did, so that she became a
loose-fish; and therefore when a subsequent gentleman reharpooned her, the lady then became that subsequent gentleman’s
property, along with whatever harpoon might have been found
sticking in her.
Now in the present case Erskine contended that the examples of
the whale and the lady were reciprocally illustrative of each other.
These pleadings, and the counter pleadings, being duly heard, the
very learned Judge in set terms decided, to wit,– That as for the
boat, he awarded it to the plaintiffs, because they had merely
abandoned it to save their lives; but that with regard to the
controverted whale, harpoons, and line, they belonged to the
defendants; the whale, because it was a Loose-Fish at the time of
the final capture; and the harpoons and line because when the fish
made off with them, it (the fish) acquired a property in those

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articles; and hence anybody who afterwards took the fish had a
right to them. Now the defendants afterwards took the fish; ergo,
the aforesaid articles were theirs.
A common man looking at this decision of the very learned Judge,
might possibly object to it. But ploughed up to the primary rock of
the matter, the two great principles laid down in the twin whaling
laws previously quoted, and applied and elucidated by Lord
Ellenborough in the above cited case; these two laws touching
Fast-Fish and Loose-Fish, I say, will on reflection, be found the
fundamentals of all human jurisprudence; For notwithstanding its
complicated tracery of sculpture, the Temple of the Law, like the
Temple of the Philistines, has but two props to stand on.
Is it not a saying in every one’s mouth, Possession is half of the
law: that is, regardless of how the thing came into possession? But
often possession is the whole of the law. What are the sinews and
souls of Russian serfs and Republican slaves but Fast-Fish, whereof
possession is the whole of the law? What to the rapacious landlord
is the widow’s last mite but a Fast-Fish? What is yonder undetected
villain’s marble mansion with a doorplate for a waif; what is that
but a Fast-Fish? What is the ruinous discount which Mordecai, the
broker, gets from the poor Woebegone, the bankrupt, on a loan to
keep Woebegone’s family from starvation; what is that ruinous
discount but a Fast-Fish? What is the Archbishop of Savesoul’s
income of 100,000 pounds seized from the scant bread and cheese
of hundreds of thousands of broken-backed laborers (all sure of
heaven without any of Savesoul’s help) what is that globular
100,000 but a Fast-Fish. What are the Duke of Dunder’s hereditary
towns and hamlets but Fast-Fish? What to that redoubted
harpooneer, John Bull, is poor Ireland, but a Fast-Fish? What to
that apostolic lancer, Brother Jonathan, is Texas but a Fast-Fish?
And concerning all these, is not Possession the whole of the law?
But if the doctrine of Fast-Fish be pretty generally applicable, the
kindred doctrine of Loose-Fish is still more widely so. That is
internationally and universally applicable.

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What was America in 1492 but a Loose-Fish, in which Columbus
struck the Spanish standard by way of wailing it for his royal master
and mistress? What was Poland to the Czar? What Greece to the
Turk? What India to England? What at last will Mexico be to the
United States? All Loose-Fish.
What are the Rights of Man and the Liberties of the World but
Loose-Fish? What all men’s minds and opinions but Loose-Fish?
What is the principle of religious belief in them but a Loose-Fish?
What to the ostentatious smuggling verbalists are the thoughts of
thinkers 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,
too?
2.1.2. Theory
From John Locke, The Second Treatise of Civil Government
(1690)
CHAP. V.
Of Property.
Sec. 25. Whether we consider natural reason, which tells us, that
men, being once born, have a right to their preservation, and
consequently to meat and drink, and such other things as nature
affords for their subsistence: or revelation, which gives us an
account of those grants God made of the world to Adam, and to
Noah, and his sons, it is very clear, that God, as king David says,
Psal. cxv. 16. has given the earth to the children of men; given it to
mankind in common. But this being supposed, it seems to some a
very great difficulty, how any one should ever come to have a
property in any thing: I will not content myself to answer, that if it
be difficult to make out property, upon a supposition that God
gave the world to Adam, and his posterity in common, it is
impossible that any man, but one universal monarch, should have
any property upon a supposition, that God gave the world to
Adam, and his heirs in succession, exclusive of all the rest of his
posterity. But I shall endeavour to shew, how men might come to
have a property in several parts of that which God gave to

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mankind in common, and that without any express compact of all
the commoners.
Sec. 26. God, who hath given the world to men in common, hath
also given them reason to make use of it to the best advantage of
life, and convenience. The earth, and all that is therein, is given to
men for the support and comfort of their being. And tho’ all the
fruits it naturally produces, and beasts it feeds, belong to mankind
in common, as they are produced by the spontaneous hand of
nature; and no body has originally a private dominion, exclusive of
the rest of mankind, in any of them, as they are thus in their natural
state: yet being given for the use of men, there must of necessity be
a means to appropriate them some way or other, before they can
be of any use, or at all beneficial to any particular man. The fruit, or
venison, which nourishes the wild Indian, who knows no
enclosure, and is still a tenant in common, must be his, and so his,
i.e. a part of him, that another can no longer have any right to it,
before it can do him any good for the support of his life.
Sec. 27. Though the earth, and all inferior creatures, be common to
all men, yet every man has a property in his own person: this no
body has any right to but himself. The labour of his body, and the
work of his hands, we may say, are properly his. Whatsoever then
he removes out of the state that nature hath provided, and left it in,
he hath mixed his labour with, and joined to it something that is his
own, and thereby makes it his property. It being by him removed
from the common state nature hath placed it in, it hath by this
labour something annexed to it, that excludes the common right of
other men: for this labour being the unquestionable property of the
labourer, no man but he can have a right to what that is once
joined to, at least where there is enough, and as good, left in
common for others.
Sec. 28. He that is nourished by the acorns he picked up under an
oak, or the apples he gathered from the trees in the wood, has
certainly appropriated them to himself. No body can deny but the
nourishment is his. I ask then, when did they begin to be his? when
he digested? or when he eat? or when he boiled? or when he
brought them home? or when he picked them up? and it is plain, if

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the first gathering made them not his, nothing else could. That
labour put a distinction between them and common: that added
something to them more than nature, the common mother of all,
had done; and so they became his private right. And will any one
say, he had no right to those acorns or apples, he thus
appropriated, because he had not the consent of all mankind to
make them his? Was it a robbery thus to assume to himself what
belonged to all in common? If such a consent as that was
necessary, man had starved, notwithstanding the plenty God had
given him. We see in commons, which remain so by compact, that
it is the taking any part of what is common, and removing it out of
the state nature leaves it in, which begins the property; without
which the common is of no use. And the taking of this or that part,
does not depend on the express consent of all the commoners.
Thus the grass my horse has bit; the turfs my servant has cut; and
the ore I have digged in any place, where I have a right to them in
common with others, become my property, without the assignation
or consent of any body. The labour that was mine, removing them
out of that common state they were in, hath fixed my property in
them.
Sec. 29. By making an explicit consent of every commoner,
necessary to any one’s appropriating to himself any part of what is
given in common, children or servants could not cut the meat,
which their father or master had provided for them in common,
without assigning to every one his peculiar part. Though the water
running in the fountain be every one’s, yet who can doubt, but that
in the pitcher is his only who drew it out? His labour hath taken it
out of the hands of nature, where it was common, and belonged
equally to all her children, and hath thereby appropriated it to
himself.
Sec. 30. Thus this law of reason makes the deer that Indian’s who
hath killed it; it is allowed to be his goods, who hath bestowed his
labour upon it, though before it was the common right of every
one. And amongst those who are counted the civilized part of
mankind, who have made and multiplied positive laws to determine
property, this original law of nature, for the beginning of property,

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in what was before common, still takes place; and by virtue thereof,
what fish any one catches in the ocean, that great and still
remaining common of mankind; or what ambergrise any one takes
up here, is by the labour that removes it out of that common state
nature left it in, made his property, who takes that pains about it.
And even amongst us, the hare that any one is hunting, is thought
his who pursues her during the chase: for being a beast that is still
looked upon as common, and no man’s private possession;
whoever has employed so much labour about any of that kind, as
to find and pursue her, has thereby removed her from the state of
nature, wherein she was common, and hath begun a property.
Sec. 31. It will perhaps be objected to this, that if gathering the
acorns, or other fruits of the earth, &c. makes a right to them, then
any one may ingross as much as he will. To which I answer, Not
so. The same law of nature, that does by this means give us
property, does also bound that property too. God has given us all
things richly, 1 Tim. vi. 12. is the voice of reason confirmed by
inspiration. But how far has he given it us? To enjoy. As much as
any one can make use of to any advantage of life before it spoils, so
much he may by his Tabour fix a property in: whatever is beyond
this, is more than his share, and belongs to others. Nothing was
made by God for man to spoil or destroy. And thus, considering
the plenty of natural provisions there was a long time in the world,
and the few spenders; and to how small a part of that provision the
industry of one man could extend itself, and ingross it to the
prejudice of others; especially keeping within the bounds, set by
reason, of what might serve for his use; there could be then little
room for quarrels or contentions about property so established.
Sec. 32. But the chief matter of property being now not the fruits
of the earth, and the beasts that subsist on it, but the earth itself; as
that which takes in and carries with it all the rest; I think it is plain,
that property in that too is acquired as the former. As much land as
a man tills, plants, improves, cultivates, and can use the product of,
so much is his property. He by his labour does, as it were, inclose it
from the common. Nor will it invalidate his right, to say every body
else has an equal title to it; and therefore he cannot appropriate, he

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cannot inclose, without the consent of all his fellow-commoners,
all mankind. God, when he gave the world in common to all
mankind, commanded man also to labour, and the penury of his
condition required it of him. God and his reason commanded him
to subdue the earth, i.e. improve it for the benefit of life, and
therein lay out something upon it that was his own, his labour. He
that in obedience to this command of God, subdued, tilled and
sowed any part of it, thereby annexed to it something that was his
property, which another had no title to, nor could without injury
take from him.
Sec. 33. Nor was this appropriation of any parcel of land, by
improving it, any prejudice to any other man, since there was still
enough, and as good left; and more than the yet unprovided could
use. So that, in effect, there was never the less left for others
because of his enclosure for himself: for he that leaves as much as
another can make use of, does as good as take nothing at all. No
body could think himself injured by the drinking of another man,
though he took a good draught, who had a whole river of the same
water left him to quench his thirst: and the case of land and water,
where there is enough of both, is perfectly the same.
Sec. 34. God gave the world to men in common; but since he gave
it them for their benefit, and the greatest conveniencies of life they
were capable to draw from it, it cannot be supposed he meant it
should always remain common and uncultivated. He gave it to the
use of the industrious and rational, (and labour was to be his title to
it;) not to the fancy or covetousness of the quarrelsome and
contentious. He that had as good left for his improvement, as was
already taken up, needed not complain, ought not to meddle with
what was already improved by another’s labour: if he did, it is plain
he desired the benefit of another’s pains, which he had no right to,
and not the ground which God had given him in common with
others to labour on, and whereof there was as good left, as that
already possessed, and more than he knew what to do with, or his
industry could reach to.

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From Jeremy Bentham, Principles of the Civil Code
Part 1: Objects of the Civil Law.
Chapter 8: Of Property.
That we may more completely estimate the advantage of the law,
let us endeavour to form a clear idea of property. We shall see that
there is no natural property—that property is entirely the creature
of law.
Property is only a foundation of expectation—the expectation of
deriving certain advantages from the thing said to be possessed, in
consequence of the relations in which one already stands to it.
There is no form, or colour, or visible trace, by which it is possible
to express the relation which constitutes property. It belongs not to
physics, but to metaphysics: it is altogether a creature of the mind.
To have the object in one’s hand—to keep it, to manufacture it, to
sell it, to change its nature, to employ it—all these physical
circumstances do not give the idea of property. A piece of cloth
which is actually in the Indies may belong to me, whilst the dress
which I have on may not be mine. The food which is incorporated
with my own substance may belong to another, to whom I must
account for its use.
The idea of property consists in an established expectation—in the
persuasion of power to derive certain advantages from the object,
according to the nature of the case.
But this expectation, this persuasion, can only be the work of the
law. I can reckon upon the enjoyment of that which I regard as my
own, only according to the promise of the law, which guarantees it
to me. It is the law alone which allows me to forget my natural
weakness: it is from the law alone that I can enclose a field and give
myself to its cultivation, in the distant hope of the harvest.
But it may be said, What has served as a base to the law for the
commencement of the operation, when it adopted the objects
which it promised to protect under the name of property? In the
primitive state, had not men a natural expectation of enjoying

certain things—an expectation derived from sources anterior to the
law?
Yes: they have had from the beginning, there have always been
circumstances in which a man could secure by his own means the
enjoyment of certain things- but the catalogue of these cases is very
limited. The savage, who has hidden his prey, may hope to keep it
for himself so long as his cave is not discovered; so long as he is
awake to defend it; whilst he is stronger than his rivals: but this is
all. How miserable and precarious is this method of possession!—
Suppose, then, the slightest agreement among these savages
reciprocally to respect each other’s booty: this is the introduction,
of a principle, to which you can only give the name of law. A feeble
and momentary expectation only results from time to time, from
purely physical circumstances; a strong and permanent expectation
results from law alone: that which was only a thread in a state of
nature, becomes a cable, so to speak, in a state of society.
Property and law are born and must die together. Before the laws,
there was no property: take away the laws, all property ceases. With
respect to property, security consists in no shock or derangement
being given to the expectation which has been founded on the
laws, of enjoying a certain portion of good. The legislator owes the
greatest respect to these expectations to which he has given birth:
when he does not interfere with them, he does all that is essential
to the happiness of society; when he injures them, he always
produces a proportionate sum of evil.
Chapter 9: Answer to an Objection.
But perhaps the laws relating to property may be good for those
who possess it, but oppressive to those who have none;—the poor
are perchance more miserable than they would be without them.
The laws, in creating property, have created wealth; but with
respect to poverty, it is not the work of the laws—it is the primitive
condition of the human race. The man who lives only from day to
day, is precisely the man in a state of nature. The savage, the poor
in society, I acknowledge, obtain nothing but by painful labour; but
in a state of nature, what could he obtain but at the price of his

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toil? Has not hunting its fatigues, fishing its dangers, war its
uncertainties? And if man appear to love this adventurous life—if
he have an instinct greedy of these kinds of perils—if the savage
rejoice in the delights of an idleness so dearly purchased—ought it
to be concluded that he is more happy than our day labourers? No:
the labour of these is more uniform, but the reward is more certain
; the lot of the woman is more gentle, infancy and old age have
more resources; the species multiplies in a proportion a thousand
times greater, and this alone would suffice to show on which side is
the superiority of happiness. Hence the laws, in creating property,
have been benefactors to those who remain in their original
poverty. They participate more or less in the pleasures, advantages,
and resources of civilized society: their industry and labour place
them among the candidates for fortune: they enjoy the pleasures of
acquisition: hope mingles with their labours. The security which the
law gives them, is this of little importance? Those who look from
above at the inferior ranks, see all objects less than they really are;
but at the base of the pyramid, it is the summit which disappears in
its turn. So far from making these comparisons, they dream not of
them; they are not tormented with impossibilities: so, that all things
considered, the protection of the laws contributes as much to the
happiness of the cottage, as to the security of the palace. It is
surprising that so judicious a writer as Beccaria should have
inserted, in a work dictated by the soundest philosophy, a doubt
subversive of the social order. The right of property, says he, is a terrible
right, and may not perhaps be necessary. Upon this right, tyrannical and
sanguinary laws have been founded. It has been most frightfully
abused; but the right itself presents only ideas of pleasure, of
abundance, and of security. It is this right which has overcome the
natural aversion, to labour which has bestowed on man the empire
of the earth—which has led nations to give up their wandering
habits—which has created a love of country and of posterity. To
enjoy quickly—to enjoy without punishment,—this is the universal
desire of man; this is the desire which is terrible, since it arms all
those who possess nothing, against those who possess any thing.
But the law, which restrains this desire, is the most splendid
triumph of humanity over itself.

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Chapter 10: Analysis of the Evils Resulting from Attacks upon
Property.
We have already seen, that subsistence depends upon the laws,
which secure to the labourers the products of their labour; but it
would be proper more exactly to analyze the evils which result
from violations of property. They may be reduced to four heads:—
1. Evil of Non-possession.—If the acquisition of a portion of riches be
a good, the non-possession of it must be an evil; though a negative
evil, and nothing more. Hence, although men in the condition of
primitive poverty may not have felt the special privation of wealth,
which was unknown to them, it is clear that they at least had not all
the happiness which results from it, and of which we are in the
enjoyment.
The loss of a portion of good, should it even remain always
unknown, would yet be a loss. If by calumny you prevent my friend
from conferring a benefit upon me which I did not expect, do you
not do me an injury? In what consists this injury? In the negative
evil which results to me, of not possessing what I otherwise should
have possessed but for your calumny.
2. Pain of Loss.—Every thing which I actually possess, or which I
ought to possess, I consider in my imagination as about to belong
to me for ever: I make it the foundation of my expectation—of the
expectation of those who depend upon me, and the support of my
plan of life. Each part of my property may possess, in my
estimation, besides its intrinsic value, a value in affection—as the
inheritance of my ancestors, the reward of my labours, or the
future benefit of my heirs. Every thing may recall to me that
portion of myself which I have spent there—my cares, my
industry, my economy—which put aside present pleasures, in order
to extend them over the future; so that our property may become,
as it were, part of ourselves, and cannot be taken from us without
wounding us to the quick.
3. Fear of Loss.—To regret for what is lost, uneasiness respecting
what is possessed joins itself, and even for what it is possible to
acquire; for most of the objects which are necessary for subsistence

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and abundance, being perishable matters, future acquisitions form a
necessary supplement to present possessions.
When insecurity reaches a certain point, the fear of loss hinders the
enjoyment of what is possessed. The care of preserving condemns
us to a thousand sad and painful precautions, always liable to fail.
Treasures fly away, or are buried: enjoyment becomes sombre,
stealthy, and solitary: it fears, by the exhibition of itself, to direct
cupidity to its prey.
4. Destruction of Industry.—If I despair of enjoying the fruits of my
labour, I shall only think of living from day to day: I shall not
undertake labours which will only benefit my enemies. But besides
this, in order to the existence of labour, the will alone is not
sufficient: instruments are wanting: whilst these are being provided,
subsistence is necessary. A single loss may render me unable to act,
without depriving me of the disposition to labour—without having
paralyzed my will. Hence the three first of these evils affect the
passive faculties of the individual, whilst the fourth extends to his
active faculties, and strikes them with numbness.
It is perceived in this analysis, that the two first of these evils do
not extend beyond the individual injured; but the two latter expand
themselves, and occupy an indefinite space in society. An attack
made upon the property of one individual spreads alarm among the
other proprietors: this feeling is communicated from one to
another, and the contagion may at last spread over the whole body
of the state.
For the development of industry, the union of power and will is
required. Will depends upon encouragement—power upon
means.—These means are called, in the language of political
economy, productive capital.—With regard to a single individual,
his capital may be destroyed, without his industrious disposition
being destroyed, or even weakened. With regard to a nation, the
destruction of its productive capital is impossible: but long before
this fatal term arrives, the mischief would have reached the will;
and the spirit of industry would fall under a terrible marasmus, in
the midst of the natural resources presented by a rich and fertile

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soil. The will, however, is excited by so many stimulants, that it
resists a multitude of discouragements and losses: a passing
calamity, how great soever it may be, does not destroy the spirit of
industry. This has been seen springing up again after destructive
wars, which have impoverished nations, like a robust oak, which in
a few years repairs the injuries, inflicted by the tempest, and covers
itself with new branches. Nothing less is requisite for freezing up
industry, than the operation of a permanent domestic cause, such
as a tyrannical government, a bad legislation, an intolerant religion
which repels men from each other, or a minute superstition which
terrifies them.
The first act of violence will produce a certain degree of
apprehension—there are already some timid minds discouraged: a
second outrage, quickly succeeding, will spread a more considerable
alarm. The most prudent will begin to contract their enterprises,
and by degrees to abandon an uncertain career. In proportion as
these attacks are repeated, and the system of oppression assumes
an habitual character, the dispersion augments: those who have fled
are not replaced; those who remain fall into a state of langour. It is
thus that, after a time, the field of industry being beaten down by
storms, becomes at last a desert.
Asia Minor, Greece, Egypt, the coasts of Africa, so rich in
agriculture, commerce, and population, whilst the Roman Empire
flourished—what have they become under the absurd despotism of
the Turk? The palaces are changed into cabins, and the cities into
small towns: this government, hateful to all persons of reflection,
has never understood that a state can never become rich but by an
inviolable respect for property. It has possessed only two secrets
for governing—to drain and to brutify its subjects. Hence the
finest countries in the world, wasted, barren, or almost abandoned,
can scarcely be recognised in the hands of their barbarous
conquerors. For these evils need not be attributed to remote
causes: civil wars, invasions, the scourges of nature—these might
have dissipated the wealth, put the arts to flight, and swallowed up
the cities; but the ports which have been filled up, would have been
reopened, the communications re-established, the manufactures

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revived, the towns rebuilt, and all these ravages repaired in time, if
the men had continued to be men. But they are not so, in these
unhappy countries: despair, the slow but fatal effect of longcontinued insecurity, has destroyed all the active powers of their
souls.
If we trace the history of this contagion, we shall see that its first
attacks fall upon the richest part of society. Wealth was the first
object of depredation. Superfluity vanished by little and little:
absolute necessity must still be provided for, notwithstanding
obstacles—man must live; but when he limits his efforts to mere
existence, the state languishes, and the torch of industry furnishes
but a few dying sparks. Besides, abundance is never so distinct
from subsistence, that the one can be injured without a dangerous
attack upon the other: whilst some lose only what is superfluous,
others lose what is necessary. From the infinitely complicated
system of economical relations, the wealth of one part of the
citizens is uniformly the source from which a more numerous party
derives its subsistence.
But another, and more smiling picture, may be traced, and not less
instructive, of the progress of security, and prosperity, its
inseparable companion. North America presents the most striking
contrast of these two states: savage nature is there placed by the
side of civilization. The interior of this immense region presents
only a frightful solitude: impenetrable forests or barren tracts,
standing waters, noxious exhalations, venomous reptiles,—such is
the land left to itself. The barbarous hordes who traverse these
deserts, without fixed habitation, always occupied in the pursuit of
their prey, and always filled with implacable rivalry, only meet to
attack and to destroy each other; so that the wild beasts are not so
dangerous to man, as man himself. But upon the borders of these
solitudes, what a different prospect presents itself! One could
almost believe that one saw, at one view, the two empires of good
and evil. The forests have given place to cultivated fields; the
morass is dried up; the land has become solid—is covered with
meadows, pastures, domestic animals, smiling and healthy
habitations; cities have risen upon regular plans; wide roads are

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traced between them: every thing shows that men are seeking the
means of drawing near to one another; they no longer dread, or
seek to murder each other. The seaports are filled with vessels
receiving all the productions of the earth, and serving to exchange
its riches. A countless multitude, living in peace and abundance
upon the fruits of their labours, has succeeded to the nations of
hunters who were always struggling between war and famine. What
has produced these wonders? what has renovated the surface of the
earth? what has given to man this dominion over embellished,
fruitful, and perfectionated nature? The benevolent genius is
Security. It is security which has wrought out this great
metamorphosis. How rapid have been its operations! It is scarcely
two centuries since William Penn reached these savage wilds with a
colony of true conquerors; for they were men of peace, who sullied
not their establishment by force, and who made themselves
respected only by acts of benevolence and justice.
Carol M. Rose, Possession as the Origin of Property, 52 U.
Chi. L. Rev. 73 (1985)
How do things come to be owned? This is a fundamental puzzle
for anyone who thinks about property. One buys things from other
owners, to be sure, but how did the other owners get those things?
Any chain of ownership or title must have a first link. Someone
had to do something to anchor that link. The law tells us what
steps we must follow to obtain ownership of things, but we need a
theory that tells us why these steps should do the job.
John Locke’s view, once described as “the standard bourgeois
theory,” is probably the one most familiar to American students.
Locke argued that an original owner is one who mixes his or her
labor with a thing and, by commingling that labor with the thing,
establishes ownership of it. This labor theory is appealing because
it appears to rest on “desert,” but it has some problems. First,
without a prior theory of ownership, it is not self-evident that one

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owns even the labor that is mixed with something else.1 Second,
even if one does own the labor that one performs, the labor theory
provides no guidance in determining the scope of the right that one
establishes by mixing one’s labor with something else. Robert
Nozick illustrates this problem with a clever hypothetical. Suppose
I pour a can of tomato juice into the ocean: do I now own the
seas?2
A number of thinkers more or less contemporary to Locke
proposed another theory of the basis of ownership. According to
this theory, the original owner got title through the consent of the
rest of humanity (who were, taken together, the first recipients
from God, the genuine original owner). Locke himself identified
the problems with this theory; they involve what modern law-andeconomics writers would call “administrative costs.” How does
everyone get together to consent to the division of things among
individuals?
The common law has a third approach, which shares some
characteristics with the labor and consent theories but is distinct
enough to warrant a different label. For the common law, possession
or “occupancy” is the origin of property. This notion runs through
a number of fascinating old cases with which teachers of property
law love to challenge their students. Such inquiries into the
1 Locke’s assertion that one owns one’s labor is quite cryptic and appears to rest

on the equally cryptic assertion that one owns one’s body and thus the products
of the body’s exertions. See J. LOCKE, supra note 2, s 27, at 329, s 28, at 330.
Richard Epstein argues that for Locke, the reason one owns one’s body is that
one occupies or possesses it; thus, this labor theory of property rests on a right
established by first possession. See Epstein, Possession as the Root of Title, 13
GA. L. REV. 1221, 1227-28 (1979). But Locke himself did not argue that
ownership of the body and its labors rests on possession. Indeed, the view that
one owns one’s body would be equally compatible with the theory that ownership
of one’s body or labor rests on the consent of mankind. Locke himself did reject
the idea that property was based on the express consent of humanity. See J.
LOCKE, supra note 2, s 25, at 327, s 29, at 331. For a discussion of the consent
theory, see infra notes 6-7 and accompanying text.
2 ROBERT NOZICK, ANARCHY, STATE AND UTOPIA 175 (1974). The

example rests on the argument that Locke’s labor theory of property means that
one acquires property by mixing what one owns (one’s labor) with what one does
not own. Nozick substitutes the can of tomato juice for one’s labor.

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acquisition of title to wild animals and abandoned treasure may
seem purely academic; how often, after all, do we expect to get into
disputes about the ownership of wild pigs or long-buried pieces of
eight? These cases are not entirely silly, though. People still do find
treasure-laden vessels, and statesmen do have to consider whether
someone’s acts might support a claim to own the moon, for
example, or the mineral nodes at the bottom of the sea. Moreover,
analogies to the capture of wild animals show up time and again
when courts have to deal on a nonstatutory basis with some
“fugitive” resource that is being reduced to property for the first
time, such as oil, gas, groundwater, or space on the spectrum of
radio frequencies.
With these more serious claims in mind, then, I turn to the maxim
of the common law: first possession is the root of title. Merely to
state the proposition is to raise two critical questions: what counts
as possession, and why is it the basis for a claim to title? In
exploring the quaint old cases’ answers to these questions, we hit
on some fundamental views about the nature and purposes of a
property regime.
Consider Pierson v. Post, a classic wild-animal case from the early
nineteenth century. Post was hunting a fox one day on an
abandoned beach and almost had the beast in his gunsight when an
interloper appeared, killed the fox, and ran off with the carcass.
The indignant Post sued the interloper for the value of the fox on
the theory that his pursuit of the fox had established his property
right to it.
The court disagreed. It cited a long list of learned authorities to the
effect that “occupancy” or “possession” went to the one who killed
the animal, or who at least wounded it mortally or caught it in a
net. These acts brought the animal within the “certain control” that
gives rise to possession and hence a claim to ownership.
Possession thus means a clear act, whereby all the world
understands that the pursuer has “an unequivocal intention of
appropriating the animal to his individual use.” A clear rule of this
sort should be applied, said the court, because it prevents

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confusion and quarreling among hunters (and coincidentally makes
the judges’ task easier when hunters do get into quarrels).
The dissenting judge commented that the best way to handle this
matter would be to leave it to a panel of sportsmen, who
presumably would have ruled against the interloper. In any event,
he noted that the majority’s rule would discourage the useful
activity of fox hunting: who would bother to go to all the trouble
of keeping dogs and chasing foxes if the reward were up for grabs
to any “saucy intruder”? If we really want to see that foxes don’t
overrun the countryside, we will allocate a property right-and thus
the ultimate reward-to the hunter at an earlier moment, so that he
will undertake the useful investment in keeping hounds and the
useful labor in flushing the fox.
The problem with assigning “possession” prior to the kill is, of
course, that we need a principle to tell us when to assign it. Shall
we assign it when the hunt begins? When the hunter assembles his
dogs for the hunt? When the hunter buys his dogs?
Pierson thus presents two great principles, seemingly at odds, for
defining possession: (1) notice to the world through a clear act, and
(2) reward to useful labor. The latter principle, of course, suggests a
labor theory of property. The owner gets the prize when he “mixes
in his labor” by hunting. On the other hand, the former principle
suggests at least a weak form of the consent theory: the community
requires clear acts so that it has the opportunity to dispute claims,
but may be thought to acquiesce in individual ownership where the
claim is clear and no objection is made.
On closer examination, however, the two positions do not seem so
far apart. In Pierson, each side acknowledged the importance of the
other’s principle. Although the majority decided in favor of a clear
rule, it tacitly conceded the value of rewarding useful labor. Its rule
for possession would in fact reward the original hunter most of the
time, unless we suppose that the woods are thick with “saucy
intruders.” On the other side, the dissenting judge also wanted
some definiteness in the rule of possession. He was simply insisting
that the acts that sufficed to give notice should be prescribed by

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the relevant community, namely hunters or “sportsmen.” Perhaps,
then, there is some way to reconcile the clear-act and reward-tolabor principles.
The clear-act principle suggests that the common law defines acts
of possession as some kind of statement. As Blackstone said, the acts
must be a declaration of one’s intent to appropriate.
[Rose canvasses a few areas involving possession of land and
argues they involve a search for effective communication of one’s
claim.] … .
Possession as the basis of property ownership, then, seems to
amount to something like yelling loudly enough to all who may be
interested. The first to say, “This is mine,” in a way that the public
understands, gets the prize, and the law will help him keep it
against someone else who says, “No, it is mine.” But if the original
communicator dallies too long and allows the public to believe the
interloper, he will find that the interloper has stepped into his
shoes and has become the owner.
Similar ideas of the importance of communication, or as it is more
commonly called, “notice,” are implicit in our recording statutes
and in a variety of other devices that force a property claimant to
make a public record of her claims on pain of losing them
altogether. Indeed, notice plays a part in the most mundane
property-like claims to things that the law does not even recognize
as capable of being reduced to ownership. “Would you please save
my place?” one says to one’s neighbor in the movie line, in order to
ensure that others in line know that one is coming back and not
relinquishing one’s claim. In my home town of Chicago, one may
choose to shovel the snow from a parking place on the street, but
in order to establish a claim to it one must put a chair or some
other object in the cleared space. The useful act of shoveling snow
does not speak as unambiguously as the presence of an object that
blocks entry.
Why, then, is it so important that property owners make and keep
their communications clear? Economists have an answer: clear
titles facilitate trade and minimize resource-wasting conflict. If I am

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careless about who comes on to a corner of my property, I invite
others to make mistakes and to waste their labor on improvements
to what I have allowed them to think is theirs. I thus invite a freefor-all over my ambiguously held claims, and I encourage
contention, insecurity, and litigation-all of which waste everyone’s
time and energy and may result in overuse or underuse of
resources. But if I keep my property claims clear, others will know
that they should deal with me directly if they want to use my
property. We can bargain rather than fight; through trade, all items
will come to rest in the hands of those who value them most. If
property lines are clear, then, anyone who can make better use of
my property than I can will buy or rent it from me and turn the
property to his better use. In short, we will all be richer when
property claims are unequivocal, because that unequivocal status
enables property to be traded and used at its highest value.
Thus, it turns out that the common law of first possession, in
rewarding the one who communicates a claim, does reward useful
labor; the useful labor is the very act of speaking clearly and
distinctly about one’s claims to property. Naturally, this must be in
a language that is understood, and the acts of “possession” that
communicate a claim will vary according to the audience. Thus,
returning to Pierson v. Post, the dissenting judge may well have
thought that fox hunters were the only relevant audience for a
claim to the fox; they are the only ones who have regular contact
with the subject matter. By the same token, the midnineteenthcentury California courts gave much deference to the
mining-camp customs in adjudicating various Gold Rush claims;
the Forty-Niners themselves, as those most closely involved with
the subject, could best communicate and interpret the signs of

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property claims and would be particularly well served by a stable
system of symbols that would enable them to avoid disputes.3
The point, then, is that “acts of possession” are, in the now
fashionable term, a “text,” and that the common law rewards the
author of that text. But, as students of hermeneutics know, the
clearest text may have ambiguous subtexts. In connection with the
text of first possession, there are several subtexts that are especially
worthy of note. One is the implication that the text will be “read”
by the relevant audience at the appropriate time. It is not always
easy to establish a symbolic structure in which the text of first
possession can be “published” at such a time as to be useful to
anyone. Once again, Pierson v. Post illustrates the problem that
occurs when a clear sign (killing the fox) comes only relatively late
in the game, after the relevant parties may have already expended
overlapping efforts and embroiled themselves in a dispute. Very
similar problems occurred in the whaling industry in the nineteenth
century: the courts expended a considerable amount of mental
energy in finding signs of “possession” that were comprehensible
to whalers from their own customs and that at the same time came
early enough in the chase to allow the parties to avoid wasted
efforts and the ensuing mutual recriminations.
Some objects of property claims do seem inherently incapable of
clear demarcation-ideas, for example. In order to establish
ownership of such disembodied items we find it necessary to
translate the property claims into sets of secondary symbols that
our culture understands. In patent and copyright law, for example,
one establishes an entitlement to the expression of an idea by
translating it into a written document and going through a

3 See McCurdy, Stephen J. Field and Public Land Law Development in California,

1850-1866: A Case Study of Judicial Resource Allocation in Nineteenth-Century
America, 10 LAW & SOC’Y REV. 235, 239-41 (1976). McCurdy also notes,
however, that there were implicit conflicts between first arrivals and latecomers to
the mining areas and that the courts had to devise rules for deciding cases where
one or the other group attempted to change mining-district rules to its own
advantage. Id. at 242-46; cf. Umbeck, A Theory of Contract Choice and the
California Gold Rush, 20 J.L. & ECON. 421, 422-28 (1977) (economic analysis of
the types of claim agreements made by miners).

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registration process-though the unending litigation over ownership
of these expressions, and over which expressions can even be
subject to patent or copyright, might lead us to conclude that these
particular secondary symbolic systems do not always yield widely
understood “markings.”4 We also make up secondary symbols for
physical objects that would seem to be much easier to mark out
than ideas; even property claims in land, that most tangible of
things, are now at their most authoritative in the form of written
records.
It is expensive to establish and maintain these elaborate structures
of secondary symbols, as indeed it may be expensive to establish a
structure of primary symbols of possession. The economists have
once again performed a useful service in pointing out that there are
costs entailed in establishing any property system. These costs
might prevent the development of any system at all for some
objects, where our need for secure investment and trade is not as
great as the cost of creating the necessary symbols of possession.
There is a second and perhaps even more important subtext to the
“text” of first possession: the tacit supposition that there is such a
thing as a “clear act,” unequivocally proclaiming to the universe
one’s appropriation-that there are in fact unequivocal acts of
possession, which any relevant audience will naturally and easily
interpret as property claims. Literary theorists have recently written
4 For an extreme example of the failure of the copyright system to give clear

notice of ownership of songs, see Arnstein v. Porter, 154 F.2d 464 (2d Cir. 1946),
in which the court, in an opinion by Judge Frank, held that the author of “The
Lord Is My Shepherd” was entitled to a trial on the merits of whether Cole
Porter’s “Begin the Beguine” infringed his copyright! Cf. Apple Computer, Inc. v.
Franklin Computer Corp., 714 F.2d 1240 (3d Cir. 1983), cert. dismissed, 104 S. Ct.
690 (1984) (computer operating system software may be copyrighted). In the case
of computer software, it has been suggested that the invention might better have
been handled as a patent, except that the lead time for patents is so long that it
would make the “property” right useless in such a rapidly changing field-hence the
choice of the more rapid copyright system. See Sanger, The Gavel Comes Down
on Computer Copycats, N.Y. Times, Oct. 23, 1983, s 3, at 8, col. 1. The Apple
Computer analysis further suggests that secondary systems for establishing rights
in “uncatchable” property may not be immune from the disputes and overlapping
use that often accompany unclear property claims. See supra note 39 and
accompanying text.

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a great deal about the relativity of texts. They have written too
much for us to accept uncritically the idea that a “text” about
property has a natural meaning independent of some audience
constituting an “interpretive community”or independent of a range
of other “texts” and cultural artifacts that together form a symbolic
system in which a given text must be read. It is not enough, then,
for the property claimant to say simply, “It’s mine” through some
act or gesture; in order for the “statement” to have any force, some
relevant world must understand the claim it makes and take that
claim seriously.
Thus, in defining the acts of possession that make up a claim to
property, the law not only rewards the author of the “text”; it also
puts an imprimatur on a particular symbolic system and on the
audience that uses this system. Audiences that do not understand
or accept the symbols are out of luck. For Pierson’s dissenting judge,
who would have made the definition of first possession depend on
a decision of hunters, the rule of first possession would have put
the force of law behind the mores of a particular subgroup. The
majority’s “clear act” rule undoubtedly referred to a wider audience
and a more widely shared set of symbols. But even under the
majority’s rule, the definition of first possession depended on a
particular audience and its chosen symbolic context; some
audiences win, others lose.
[Rose discusses the case of Johnson v. M’Intosh, which we will
cover later in the course.]
But perhaps the deepest aspect of the common law text of
possession lies in the attitude that this text strikes with respect to
the relationship between human beings and nature. At least some
Indians professed bewilderment at the concept of owning the land.
Indeed they prided themselves on not marking the land but rather
on moving lightly through it, living with the land and with its
creatures as members of the same family rather than as strangers
who visited only to conquer the objects of nature. The doctrine of
first possession, quite to the contrary, reflects the attitude that
human beings are outsiders to nature. It gives the earth and its

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creatures over to those who mark them so clearly as to transform
them, so that no one else will mistake them for unsubdued nature.
We may admire nature and enjoy wildness, but those sentiments
find little resonance in the doctrine of first possession. Its texts are
those of cultivation, manufacture, and development. We cannot
have our fish both loose and fast, as Melville might have said,5 and
the common law of first possession makes a choice. The common
law gives preference to those who convince the world that they
have caught the fish and hold it fast. This may be a reward to
useful labor, but it is more precisely the articulation of a specific
vocabulary within a structure of symbols approved and understood
by a commercial people. It is this commonly understood and
shared set of symbols that gives significance and form to what
might seem the quintessentially individualistic act: the claim that
one has, by “possession,” separated for oneself property from the
great commons of unowned things.

5 HERMAN MELVILLE, MOBY DICK ch. 89 (“Fast-Fish and Loose-Fish”)

(1st ed. London 1851). This chapter describes some litigation over ownership of a
whale that had been harpooned but got away, harpoon and all, only to be
harpooned and taken by a second crew. The legal question involved the point at
which the whale stopped being a “loose-fish” and became a “fast-fish”-that is, the
point at which the whale became someone’s property. Melville goes on to describe
a number of items (including serfs and mortgages) as “fast-fish” and a number of
other items (America at Columbus’ arrival, ideas, the rights of man) as “loosefish.”

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2.1.3. Sunken Ships, Baseballs, and Artifacts
Eads v. Brazelton, 22 Ark. 499 (1861)
Appeal from Mississippi Circuit Court in Chancery. Hon.
George W. Beazley, Circuit Judge.
Fowler & Stillwell, for the appellant.
Watkins & Gallagher, for appellee.
FAIRCHILD, J.
When things that become property from being
appropriated are the property of nobody, are in a state of
negative community, the first finder may reduce them to
possession, which is a good claim, and under the name of
title by occupancy is regarded as the foundation of all
property. 2 Blk’s Com. 3, 258; 1 Bouv. Am. L. 194, No. 491;
Pothier Droit De Propriete, Nos. 20, 21; La. Civil Code, Art’s
3375, 3376.
Hence, wild animals, that are not property in their natural
condition, may be captured, will belong to the first taker by
occupancy, and will so belong while in the keeping of the
taker, or person claiming under him, or while in
domestication. 2 Kent. 348; Coop. Just. Lib. II, Tit. I. sec. 12;
1 Bouv. Am. L. 194, No. 492; La. Civil Code, Art. 3379.
So, the finder of things that have never been appropriated,
or that have been abandoned by a former occupant, may
take them into his possession as his own property; and the
finder of anything casually lost is its rightful occupant
against all but the real owner.
….
From what is before us it may be taken as shown in the
case that, in November, 1827, the boat named sank in the
Mississippi river, within the limits of Mississippi county;
that, of her cargo, shot and bundles of bar lead of an
unascertained quantity, and lead in pigs to about the
number of three thousand, remained in the river, wholly

abandoned by the owners; that Brazelton, having
information of the place where the boat sank, proceeded, in
December, 1854, to ascertain its exact locality in the bed of
the river, with the view of raising the sunken lead; that, in
January, 1855, he arrived at the vicinity of the wreck, with
his diving boat, to carry out his intention, and fastened a
buoy to a weight that rested upon the wreck, with the
expectation of putting his boat over it the next day, but that
he was detained by other business, and by the difficulties
and dangers of the work in the existing state of water, with
boats like his, and by the necessity for making repairs upon
his boat, and apparatus for raising the cargo, till the
defendants, upon the 28th of September, 1855, caused one
of their boats to stop at the shore near the wreck, to search
for and find it, to place their boat over it, and to commence
raising the lead.
The quantity of lead raised by the defendants was stated in
their answer, and applying the price thereto, as shown by
the evidence, its value was found to be four thousand, five
hundred and seven dollars and ninety-six cents, for which
sum the court below gave a decree, perpetuated the
preliminary injunction which was granted at the beginning
of the suit, and which arrested the defendants in their labor
upon the lead.
After the injunction had been served, and the defendants,
in obedience there-to, had withdrawn their boat from the
wreck, and while the plaintiff in his turn, was engaged in
bringing up the lead left by the defendants, they brought
their boat back near to the plaintiff’s boat and anchored,
thereby obstructing his operations, for which two of the
defendants that were within the jurisdiction of the court,
were brought before it for contempt in disobeying the
injunction, and were fined one thousand dollars, which
was, by order of the court, paid to the plaintiff for his
damages from the obstruction.
….

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When Brazelton found the wreck he traced lines to it from
different points on the Arkansas side of the river, so that
their intersection would show the situation of the wreck,
and the lines were indicated by marks upon the trees. It was
upon the return of Brazelton from St. Louis with his bell
boat that a float or buoy was placed by Brazelton over the
wreck, and this was done with the intention of signifying
the place to which the diving boat was to be dropped the
next morning. It was not to be expected that such objects
would remain permanent fixtures, as the wreck was in the
main channel of the river, and it is evident that Brazelton
considered them as guides to the situation of the wreck, as
the marked trees were, as he stated to Seth Daniel, in the
presence of Reese Bowen, that it would make no difference
if they should be washed away, as he could find the wreck
from the ranges of his lines. Brazelton does not pretend to
have put his boat over the wreck, or to have had any claim
to the wreck but by occupancy, which depended upon his
finding it, upon his providing means for easy approaches to
it by landmarks, and floats upon water, and upon his being
in the neighborhood of the wreck from January to the last
of September, without any other appropriation of the
wreck, but with a continual assertion of his claim, and with
the intention of making it good by future action. This,
doubtless, he would have done in the winter of 1855, had
not the sinking of the steamboat Eliza afforded the
opportunity of other work to which he confined himself till
June. Then he would have applied himself to the America,
but the periodical rise of the river at that season prevented
him from so doing, and when he was nearly ready, with his
boat and machinery in order for effective labor, with
favorable water for work, safe from rafts and flat and coal
boats, the Submarine, No. 4, belonging to the defendants,
passed him on the 28th of September, and within two days
was placed over the wreck, and thenceforward the
defendants were its occupants in fact, and claimed to be so
by right.

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….
Neither the sinking of the America nor its locality seems to
have been so obscurely remembered as the bill supposes.
Captain Eads, one of the defendants, told the witness,
Cunningham in 1843, according to his recollection that the
America was under the tow head often mentioned in the
case, which the witness afterwards was satisfied to have
been the fact, from his acquaintance with the wreck after
the tow head and island were washed away, and the wreck
was left in the main river. Cunningham, in 1853, sounded
for the wreck, and found it as he believed. Captain Swan,
who was upon the America when she sunk, and who had
been familiar with the river at the place of the sinking from
that time, in 1827, till 1854, and who communicated to
Brazelton his information of the situation of the wreck,
deposed that the bank has in all the time mentioned
changed but very little, though the bars have been
continually changing, and that from marks upon the bank
he knew where the America was, and after the island which
had covered the wreck about twenty years, was washed
away, he is of the impression that, from the break of water
where he supposed the America to be, he could upon a
clear bright day have pointed out the situation of the wreck.
From the description of the place given by Captain Swan to
Brazelton, he was able to find the wreck, as he afterwards
told Swan that his supposition that the break in the water
was caused by the wreck, had been verified. And Captain
Swan further said that the pilots of the present time were as
well advised, as a matter of news, of the loss of the America
in the vicinity where the wreck lay, as the pilots were when
she sunk.
[Several others testified that they too were able to locate the
wreck based solely on information other than Brazelton’s
marks.]
From these facts, and from everything in the case, we think
there could have been but little difficulty in finding the

215

wreck after the island that had so long concealed it, was
washed away, and the labor or good fortune of Brazelton in
ascertaining its locality affords no reason for assigning it to
him as his property, aside from the legal consequences of
its possession, even if courts had the power of such
assignment, which we disclaim, and which we do not
understand Brazelton to claim but by implication.
With reference to the tree marks of Brazelton it may be
said that there is no satisfactory evidence that they were
used on the part of the defendants in finding the wreck.
….
Notwithstanding the point made by the defendant, that
Brazelton had no right to the lead which the law would
protect, it being the property of the original owners of the
cargo, there is no room for doubt that the lead was
abandoned by its owners; and even without the positive
testimony of an owner of the boat and cargo in affirmation
of the fact, the law would so imply from the term of the
loss, and from the fact of its having been covered by an
island formed upon it, which sustained trees grown to the
height of thirty or forty feet. All reasonable hope of
acquiring the property must have been given up from the
nature of the case; and the evidence shows that during the
two years that intervened between the sinking of the boat
and its being covered by the tow head and island, no effort
was made or design entertained to save the part of the
cargo that was abandoned when the high water interrupted
the labor of saving it, that was prosecuted for two weeks
after the loss of the boat, save that an excluded deposition
mentions that one hundred and sixteen pigs of lead were
afterwards got out by residents of the neighborhood.
Having saved the specie that was on board belonging to the
United States, the furs and one-half of the six hundred pigs
of lead, and a part of the shot, with which articles the boat
was laden, and the boilers and machinery of the boat, the
owners of the America seem to have contented themselves

216

therewith; and to have wholly abandoned the remaining
shot and lead.
Unlike The Barefoot, 1 Eng. Law & Eq. Rep. 664, which was
the loss of lead and iron in smacks, in which Dr.
Lushington held, that the property was left but not
abandoned, because the place of the property was well
known, and because the property was unmovable until
recovered by human skill, this case, from the length of time
that had passed, from the shifting nature of the bars and
channel of the river in Plumb Point bend, as well as from
the testimony of Captain Swan and Sellers, of William H.
Johnson, and of Mr. Ruble, an owner of the boat, shows
not only that the lead in the wreck was left, but that it was
abandoned. But whether the property when saved would
have been the property of Brazelton, or of an occupant, or
of the owner, would not give right to the defendants to
resist the suit of Brazelton: for if he were a finder of the
wreck, as such he would be entitled to the property as
owner, or to its possession as salvor; and would be
protected from the interference of the defendants or other
persons. And for this reason decisions in admiralty upon
the conflicting claims of salvors to the possession of
deserted property are authorities to be considered in the
settlement of the pending controversy.
Property is said to be abandoned when it is thrown away,
or its possession is voluntarily forsaken by the owner, in
which case it will become the property of the first
occupant; or when it is involuntarily lost or left without the
hope and expectation of again acquiring it, and then it
becomes the property of the finder, subject to the superior
claim of the owner; except that in salvage cases, by the
admiralty law, the finder may hold possession until he is
paid his compensation, or till the property is submitted to
legal jurisdiction for the ascertainment of the
compensation. 2 Blk. Com. 9; 1 Bouv. Am. L. 195, No. 494;
Coop. Just. Lib. 11, Tit. I. S. 46; Abbott on Shipping 555, Am.

217

note; Woolrych on Waters 15; Rowe v. Berg, 1 Mass. 373; Lewis
v. The Elizabeth & Jane, Ware’s Rep. 43; The Bee, Id. 344, 345;
The St. Petre, Bee’s adm. 82; The Mary, 2 Whea. 126 and note
(A.); Steamboat J. P. Leathers and cargo, Newb. A. D. 325;
Marvin on Wreck and Salvage, s. 124, 125.
Some authorities refer to things found at sea as belonging
to the finder, in distinction from wreck, that is, goods lost
at sea and floated to land, or in general terms excluding the
sense of derelict as used in maritime cases, or as
distinguished from custom and statutory law, and in
extreme cases property wholly derelict and abandoned has
been held to belong to the finder against the former owner.
Woolrych on Waters 14; Constable’s Case, 5 Coke 108, b; Marvin
on Wreck and Salvage, sec. 131, note; 1 Bouv. Am. L. 196, No.
496; Wyman v. Hurlburt, 12 Ohio 87.
The occupation or possession of property lost, abandoned
or without an owner, must depend upon an actual taking of
the property and with the intent to reduce it to possession.
The intent may not be that this possession shall be absolute
or perpetual appropriation of the property to the use of the
finder, it may be subject to the claim of the real owner, the
possession may be taken for his exclusive good, or it may
be taken as a means of subsistence or accumulation,
according to the course of business of the parties to this
suit. But in this case title by occupancy must rest upon
intentional actual possession of the thing occupied.
Such is the meaning of the commentaries, from which are
the following extracts:
The acquisition of things tangible by
occupancy must be made corpore et
animo, that is, by an outward act
signifying an intention to possess. The
necessity of an outward act to
commence holding a thing in
dominion is founded on the principle

218

that a will or intention can not have
legal effect without an outward act
declaring that intention; and on the
other hand, no man can be said to
have the dominion over a thing which
he has no intention of possessing as
his. Therefore a man can not deprive
others of their right to take possession
of vacant property by merely
considering it as his, without actually
appropriating it to himself; and if he
possesses it without any will of
appropriating it to himself, as in the
case of an idiot, it can not be
considered as having ceased to be res
nullius. The outward act or possession
need not, however, be manual; for any
species of possession, or as the
ancients expressed it, custodia, is in
general a sufficient appropriation.
1 Bouv. Am. L. No. 495. Possession in the civil law
implies three things; a just cause of
possessing as master, the intention to
possess in this quality, and detention *
* without the intention there is no
possession * * * *. Without the
detention the intention is useless, and
does not make the possession.
1 Domat’s Civil Law, by Cushing 859, No. 2, 161.
The possession of the things which we
acquire by their falling into our hands,
such as that which we find * * * * is
acquired by the bare fact of our laying
our hands upon them”
Id. No. 2,162. “Found-means, not merely discovered, but
taken up.” Notes to Coop. Just. 458. “Treasures naturally

219

belong to the finder; that is to him who moves them from
the place where they are, and secures them.” Id 461.
The law is happily stated in the code of Louisiana thus: “To
be able to acquire possession of a property, two distinct
things are requisite: 1. The intention of possessing as
owner; 2. The corporeal possession of the thing.” La. Civil
Code, Art. 3399.
Pothier, with his characteristic accuracy and perspicuity, has
fully stated the law upon this subject, and the rule as stated
by him is to this effect; that to acquire possession of a thing
there must be a desire to possess it, joined to a prehension
of the thing. See in full Nos. 39 to 42 & No. 55 of his Traite
De La. Possession, and Nos. 63 & 64 of his Traite Du Droit De
Propriete; Marvin on Wreck & Salvage s. 127.
Such are the doctrines of the Louisiana code, of the
commentators upon the Common, Roman, French and
Admiralty law, and applying them to the facts of this case,
we hold that Brazelton never attained to the possession of
the wreck of the America, that he therefore had no title to
it by occupancy, had no right upon which judicial
protection could operate, none which the court below
should have recognized. He had considered the wreck as
his as its finder, but had not actually appropriated it to
himself; his intention to possess was useless without
detention of the property; he had not found the lead in the
required sense of discovering it, and taking it up; he was
not a finder, in that he had not moved the wrecked
property, or secured it; he had the intention of possessing it
as owner, but did not acquire its corporeal possession; to
his desire to possess there was not joined a prehension of
the thing.
Brazelton’s act of possession need not have been manual,
he was not obliged to take the wreck or the lead between
his hands, he might take such possession of them as their
nature and situation permitted; but that his circumstances

220

should give a legal character to his acts, making that to be
possession which the law declares not to be possession,
assume more than a court can sanction. Marking trees that
extended across the wreck, affixing temporary buoys to it
were not acts of possession; they only indicated Brazelton’s
desire or intention to appropriate the property. Placing his
boat over the wreck, with the means to raise its valuables,
and with persistent efforts directed to raising the lead,
would have been keeping the only effectual guard over it,
would have been the only warning that intruders, that is,
other longing occupants would be obliged to regard, would
have been such acts of possession as the law would notice
and protect. If Brazelton in the winter of 1855, deferred
raising the lead to wreck the steamboat Eliza, he was free to
do so, but must abide the legal consequences of his choice.
If afterwards he could not work in the main channel of the
river, owing to high water, strong wind, or to damaged
boats and rigging, his ill fortune could not bend the law to
his circumstances, nor could he with right warn off the
defendants from the occupancy of the America, when they
were as willing and more able than himself to raise the lead
in her hold.
The following adjudged cases may have a bearing upon this
case, and illustrate the general principles of the last cited
authorities:
In Pierson v. Post, 3 Caines Rep., the plaintiff was pursuing a
fox and had not got it within his control; and the defendant
was held not to be liable for killing it. The plaintiff had
established no claim by occupancy. His intention against
the fox was unmistakable, but his act of possession was
incomplete.
Marking a bee-tree was a more emphatic claim against the
bees than Brazelton’s marks were upon the wreck, but was
not sufficient to vest a right in the finder. Gillet v. Mason, 7
Jhs. 17.

221

And when one had found bees and had got leave of the
owner of the tree in which they were to cut it, and take the
bees, he acquired no property in the bees, he had not taken
possession of them. Ferguson v. Miller, 1 Cow. 244.
It is not trespass to take wild bees or honey. Wallace v.
Mease, 3 Binn. 553.
A deer had been wounded and followed with dogs for six
miles, and the pursuit was given over for the night by the
plaintiff, though his dogs continued the chase; the
defendant and the plaintiff seized the deer together, but,
because this did not show an occupancy of the deer by the
plaintiff, he could not recover the skin and venison of the
defendant, who killed the deer. Buster v. Newkirk, 20 Jhs. 75.
The next authority is from an accomplished admiralty
judge, several of whose decisions are cited in this opinion:
The title which is acquired to property
by finding, is a species of occupation;
and it is laid down as a rule of law, by
the civilians, that the mere discovery
and sight of the thing, is not sufficient
to vest in the finder a right of property
in the thing found. Pothier, Traite de la
Propriete No. 63. This title is acquired
by possession, and this must be an
actual possession. He cannot take and
keep possession by an act of the will,
oculis et affectu, as he may when property
is transferred by consent and the
possession given by a symbolical
delivery. To consummate his title there
must be a corporeal prehension of the
thing.
The Amethyst, Davies Rep. 23.
From the foregoing quotation may be seen the
inapplicability of the citation from Parson’s Merc. Laws, in

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the argument for Brazelton, as it relates to the delivery of
bulky articles, the right of which is passed by sale.
The reference to the next case, except the extract from the
opinion of the chancellor, is taken from the printed brief
furnished for the defendant.
The case of Deklyn v. Davis is like the present case. About
the year 1781, the British frigate “The Hussar” sank in the
East river in sixty or seventy feet of water.
The bill averred that she “was abandoned and derelict,” and
that “with much labor and expense” the complainants, in
the summer of 1823, had discovered the “precise situation
of the ship-had fastened chains around her, which they
secured to floating timbers, and raised her about ten feet
from her bed, and perfectly occupied the vessel, and
continued their occupancy, by which she became their
property. That at the approach of winter they desisted from
their labors, by reason of the weather, designing to resume
the work in the following season. That the occupancy of
the complainants continued until the defendants, with
knowledge of complainant’s rights, on the twenty-second
of March, with vessel, etc., moored and anchored over and
around the sunken ship. “An injunction was granted,
restraining the defendants “from the further interruption of
the complainants” and also enjoining them “forthwith to
remove the sloops.”
“The defendants set up that the property was not
abandoned or derelict when complainants took possession
in 1823; that defendants, at great cost, had made
preparation to raise the vessel; that they had ascertained the
precise situation and position of said frigate, took
possession thereof, and to occupy the same, made their
marks and ranges on the adjoining shore so as to identify
the spot and enable them to commence their operations
thereupon at the opening of the following season.” That
the complainants, “in the absence of the defendants and

223

their men, fraudulently and forcibly took possession of the
frigate;” and afterwards Davis, in the absence of Deklyn
and his men, took possession of the frigate by anchoring
sloops over her and surrounding her with machinery. “The
right claimed by each of the contending parties is the right
of occupancy. Both parties have prepared means and have
taken measures to raise the sunken frigate; neither party has
yet effected that object; and such being the state of the
facts, the court says: Neither party has yet obtained an actual or
exclusive possession of the derelict subject. * * * The complainants
allege in their bill that their acts of occupancy have
obtained for them a title; and the defendants, by their
answer, insist that their acts preparatory to an actual
possession, have been such as to give them a prior and
superior right.”
But if the acts of the complainant Deklyn did not constitute
any “actual or exclusive occupancy,” and if the acts of the
defendant Davis were merely ” prepatory to an actual
possession,’ much less did the acts of Brazelton constitute
such occupancy. Hopkins, Ch. Rep. 135.
The next two cases referred to, and from one of which a
lengthy extract is given, were decided by Judge Betts of
New York, a very high authority in the matters treated
upon: “* * * but it is in consonance with the established
principles of maritime law to hold those beginning a
salvage service, and who are in the successful prosecution
of it entitled to be regarded as the meritorious salvors of
whatever is preserved, and entitled to the sole possession of
the property.” The Brig John Gilpin, Olcott’s Rep. Adm. 86.
An impression seems to have
obtained, that one who finds derelict
property under water or afloat,
acquires a right to it by discovery,
which can be maintained by a kind of
continued claim, without keeping it in
possession or applying constant

224

exertions for its preservation and
rescue. There is no foundation for
such notion. The right of a salvor
results from the fact that he has held
in actual possession, or has kept near
what was lost or abandoned by the
owner, or placed in a dangerous
exposure to destruction, with the
means at command to preserve and
save it, and that he is actually
employing those means to that end.
The finder thus becomes the legal
possessor, and acquires a privilege
against the property for his salvage
services which takes precedence of all
other title.
Lewis v. The Elizabeth & Jane, Ware, 41; The Bee, Ware, 332;
The St. Peter, Bee, 82.
* * * The fact that property is found at
sea or on the coast in peril, without the
presence of anyone to protect it, gives
the finder a right to take it in his
possession; and the law connects with
such right the obligation to use the
means he has at control, and with all
reasonable promptitude, to save it for
the owner. He can therefore be no
otherwise clothed with the character of
salvor than whilst he is in the
occupancy of the property, and
employing the necessary means for
saving it.
Notorious possession, with the avowal
of the object of such possession, are
cardinal requisites to the creation or
maintenance of the privileges of a
salvor; where they do not exist, any

225

other person may take the property
with all the advantages of the first
finder.
The Schooner John Wurtz, Olcott Rep. Adm. 469-471. Marvin
on Wreck and Salvage, s. 128.
No reasoning, no comment can make more imperative the
action of this court than it is made by the foregoing cases
and authorities, taken in connection with the facts of the
case, or with the allegations of the bill alone.
The decree of the circuit court of Mississippi county sitting
in chancery is reversed … .
Popov v. Hayashi, No. 400545, 2002 WL 31833731 (Cal.
Superior, Dec. 18, 2002)
MCCARTHY, J.
FACTS
In 1927, Babe Ruth hit sixty home runs. That record stood
for thirty four years until Roger Maris broke it in 1961 with
sixty one home runs. Mark McGwire hit seventy in 1998.
On October 7, 2001, at PacBell Park in San Francisco,
Barry Bonds hit number seventy three. That
accomplishment set a record which, in all probability, will
remain unbroken for years into the future.
The event was widely anticipated and received a great deal
of attention.
The ball that found itself at the receiving end of Mr. Bond’s
bat garnered some of that attention. Baseball fans in
general, and especially people at the game, understood the
importance of the ball. It was worth a great deal of money1

It has been suggested that the ball might sell for something in excess of
$1,000,000
1

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and whoever caught it would bask, for a brief period of
time, in the reflected fame of Mr. Bonds.
With that in mind, many people who attended the game
came prepared for the possibility that a record setting ball
would be hit in their direction. Among this group were
plaintiff Alex Popov and defendant Patrick Hayashi. They
were unacquainted at the time. Both men brought baseball
gloves, which they anticipated using if the ball came within
their reach.
They, along with a number of others, positioned
themselves in the arcade section of the ballpark. This is a
standing room only area located near right field. It is in this
general area that Barry Bonds hits the greatest number of
home runs.2 The area was crowded with people on October
7, 2001 and access was restricted to those who held tickets
for that section.
Barry Bonds came to bat in the first inning. With nobody
on base and a full count, Bonds swung at a slow
knuckleball. He connected. The ball sailed over the rightfield fence and into the arcade.
Josh Keppel, a cameraman who was positioned in the
arcade, captured the event on videotape. Keppel filmed
much of what occurred from the time Bonds hit the ball
until the commotion in the arcade had subsided. He was
standing very near the spot where the ball landed and he
recorded a significant amount of information critical to the
disposition of this case.
In addition to the Keppel tape, seventeen percipient
witnesses testified as to what they saw after the ball came
into the stands. The testimony of these witnesses varied on
many important points. Some of the witnesses had a good

2 The Giants’ website contains a page which shows where each of Bonds’ home

runs landed in 2001. This page was introduced into evidence and is part of the
record. It shows that most of the balls are clustered in the arcade area.

227

vantage point and some did not. Some appeared
disinterested in the outcome of the litigation and others had
a clear bias. Some remembered the events well and others
did not. Some were encumbered by prior inconsistent
statements which diminished their credibility.
The factual findings in this case are the result of an analysis
of the testimony of all the witnesses as well as a detailed
review of the Keppel tape. Those findings are as follows:
When the seventy-third home run ball went into the arcade,
it landed in the upper portion of the webbing of a softball
glove worn by Alex Popov. While the glove stopped the
trajectory of the ball, it is not at all clear that the ball was
secure. Popov had to reach for the ball and in doing so,
may have lost his balance.
Even as the ball was going into his glove, a crowd of
people began to engulf Mr. Popov.3 He was tackled and
thrown to the ground while still in the process of
attempting to complete the catch. Some people
intentionally descended on him for the purpose of taking
the ball away, while others were involuntarily forced to the
ground by the momentum of the crowd.
Eventually, Mr. Popov was buried face down on the
ground under several layers of people. At one point he had
trouble breathing. Mr. Popov was grabbed, hit and kicked.
People reached underneath him in the area of his glove.
Neither the tape nor the testimony is sufficient to establish

3 Ted Kobayashi, a defense expert, testified that there was insufficient reaction

time for the crowd to descend on Mr. Popov. This opinion is completely
unconvincing. It is premised on the assumption that people did not begin to react
until the ball hit Mr. Popov’s glove. A number of witnesses testified that they
began reacting while the ball was in the air. People rushed to the area where they
thought the ball would land. If people were unable to anticipate where a ball will
land while it is still in the air, no outfielder would ever catch a ball unless it was hit
directly to him or her. Moreover, the tape itself shows people descending on Mr.
Popov even as he was attempting to catch the ball.

228

which individual members of the crowd were responsible
for the assaults on Mr. Popov.
The videotape clearly establishes that this was an out of
control mob, engaged in violent, illegal behavior. Although
some witnesses testified in a manner inconsistent with this
finding, their testimony is specifically rejected as being false
on a material point.4
Mr. Popov intended at all times to establish and maintain
possession of the ball. At some point the ball left his glove
and ended up on the ground. It is impossible to establish
the exact point in time that this occurred or what caused it
to occur.
Mr. Hayashi was standing near Mr. Popov when the ball
came into the stands. He, like Mr. Popov, was involuntarily
forced to the ground. He committed no wrongful act.5
While on the ground he saw the loose ball. He picked it up,
rose to his feet and put it in his pocket.
Although the crowd was still on top of Mr. Popov, security
guards had begun the process of physically pulling people
off. Some people resisted those efforts. One person argued
with an official and another had to be pulled off by his hair.
Mr. Hayashi kept the ball hidden. He asked Mr. Keppel to
point the camera at him. At first, Mr. Keppel did not
comply and Mr. Hayashi continued to hide the ball. Finally
after someone else in the crowd asked Mr. Keppel to point
the camera at Mr. Hayashi, Mr. Keppel complied. It was
only at that point that Mr. Hayashi held the ball in the air

4 Because the probability of truth does not favor the testimony of any of these

witnesses in other particulars, their entire testimony is rejected. BAJI 2.22 This
finding does not apply to Mr. Hayashi.
5 Plaintiff argues that the Keppel tape shows Mr. Hayashi biting the leg of Brian

Shepard. The tape does not support such a conclusion. The testimony which
suggests that a bite occurred is equally unconvincing. In addition, there is
insufficient evidence that Mr. Hayashi assaulted or attempted to take the ball away
from Mr. Popov.

229

for others to see. Someone made a motion for the ball and
Mr. Hayashi put it back in his glove. It is clear that Mr.
Hayashi was concerned that someone would take the ball
away from him and that he was unwilling to show it until
he was on videotape. Although he testified to the contrary,
that portion of his testimony is unconvincing.
Mr. Popov eventually got up from the ground. He made
several statements while he was on the ground and shortly
after he got up which are consistent with his claim that he
had achieved some level of control over the ball and that he
intended to keep it. Those statements can be heard on the
audio portion of the tape. When he saw that Mr. Hayashi
had the ball he expressed relief and grabbed for it. Mr.
Hayashi pulled the ball away.6 Security guards then took
Mr. Hayashi to a secure area of the stadium.7
It is important to point out what the evidence did not and
could not show. Neither the camera nor the percipient
witnesses were able to establish whether Mr. Popov
retained control of the ball as he descended into the crowd.
Mr. Popov’s testimony on this question is inconsistent on
several important points, ambiguous on others and, on the
whole, unconvincing. We do not know when or how Mr.
Popov lost the ball.
Perhaps the most critical factual finding of all is one that
cannot be made. We will never know if Mr. Popov would
have been able to retain control of the ball had the crowd

6 Defense counsel has attempted to characterize this encounter as one in which

Mr. Popov congratulates Mr. Hayashi for getting the ball and offers him a high
five. This is an argument that only a true advocate could embrace.
7 Testimony was also received about events which occurred after baseball officials

escorted Mr. Hayashi to a secure area. This evidence was admitted to allow
counsel to explore the possibility that Major League Baseball retained constructive
possession of the ball after it landed in the stands and later gifted it to Mr.
Hayashi. Defense counsel has properly abandoned this theory. There is no
evidence to support it.

230

not interfered with his efforts to do so. Resolution of that
question is the work of a psychic, not a judge
LEGAL ANALYSIS
Plaintiff has pled causes of actions for conversion, trespass
to chattel, injunctive relief and constructive trust.
Conversion is the wrongful exercise of dominion over the
personal property of another.8 There must be actual
interference with the plaintiff’s dominion.9 Wrongful
withholding of property can constitute actual interference
even where the defendant lawfully acquired the property. If
a person entitled to possession of personal property
demands its return, the unjustified refusal to give the
property back is conversion.10
The act constituting conversion must be intentionally done.
There is no requirement, however, that the defendant know
that the property belongs to another or that the defendant
intends to dispossess the true owner of its use and
enjoyment. Wrongful purpose is not a component of
conversion 11
The injured party may elect to seek either specific recovery
of the property or monetary damages.12
Trespass to chattel, in contrast, exists where personal
property has been damaged or where the defendant has
interfered with the plaintiff’s use of the property. Actual

8 See generally, Witkin, Summary of California Law, Ninth Edition, section 610. See

also, Fresno Air Service v. Wood (1965) 232 Cal.App.2d 801, 806, 43 Cal.Rptr. 276.
9 Jordan v. Talbot (1961) 55 Cal.2d 597, 610, 12 Cal.Rptr. 488, 361 P.2d 20.
10 Edwards v. Jenkins (1932)214 Cal. 713, 720, 7 P.2d 702, Witkin, supra, at section

622.
11 Henderson v. Security National Bank (1977) 72 Cal.App.3d 764, 771, 140 Cal.Rptr.

388; Witkin, supra at section 624.
12 Witkin, supra, at section 611.

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dispossession is not an element of the tort of trespass to
chattel.13
In the case at bar, Mr. Popov is not claiming that Mr.
Hayashi damaged the ball or that he interfered with Mr.
Popov’s use and enjoyment of the ball. He claims instead
that Mr. Hayashi intentionally took it from him and refused
to give it back. There is no trespass to chattel. If there was
a wrong at all, it is conversion.
Conversion does not exist, however, unless the baseball
rightfully belongs to Mr. Popov. One who has neither title
nor possession, nor any right to possession, cannot sue for
conversion.14 The deciding question in this case then, is
whether Mr. Popov achieved possession or the right to
possession as he attempted to catch and hold on to the ball.
The parties have agreed to a starting point for the legal
analysis. Prior to the time the ball was hit, it was possessed
and owned by Major League Baseball. At the time it was hit
it became intentionally abandoned property.15 The first
person who came in possession of the ball became its new
owner. 16
The parties fundamentally disagree about the definition of
possession. In order to assist the court in resolving this
disagreement, four distinguished law professors

13 Zaslow v. Kroenert (1946) 29 Cal.2d 541, 551, 176 P.2d 1.
14 Metropolitan Life Insurance Company v. San Francisco Bank (1943) 58 Cal.App.2d

528, 534, 136 P.2d 853; Witkin, supra, at section 617.
15 See generally, Fugitive Baseballs and Abandoned Property: Who Owns the Home Run

Ball?, Cardozo Law Review, May 2002, Paul Finkelman, (Chapman Distinguished
Professor of Law).
16 See generally, Past and Future: The Temporal Dimension in the Law of Property, (1986)

64:667;. Washington U.L. Quarterly, Professor Richard A. Epstein (James Parker
Hall Professor of Law, University of Chicago; Irwin v. Phillips (1855) 5 Cal. 140;
Potter v. Knowles (1855) 5 Cal. 87.

232

participated in a forum to discuss the legal definition of
possession.17 The professors also disagreed.
The disagreement is understandable. Although the term
possession appears repeatedly throughout the law, its
definition varies depending on the context in which it is
used.18 Various courts have condemned the term as vague
and meaningless.19
This level of criticism is probably unwarranted.
While there is a degree of ambiguity built into the term
possession, that ambiguity exists for a purpose. Courts are
often called upon to resolve conflicting claims of
possession in the context of commercial disputes. A stable
economic environment requires rules of conduct which are
understandable and consistent with the fundamental
customs and practices of the industry they regulate.
Without that, rules will be difficult to enforce and
economic instability will result. Because each industry has
different customs and practices, a single definition of
possession cannot be applied to different industries without
creating havoc.
This does not mean that there are no central principles
governing the law of possession. It is possible to identify

17 They are Professor Brian E. Gray, University of California, Hastings College of

the Law; Professor Roger Bernhardt, Golden Gate University School of Law;
Professor Paul Finkelman, The Chapman Distinguished Professor of Law, The
University of Tulsa School of Law; and Professor Jan Stiglitz, California Western
School of Law.
The discussion was held during an official session of the court convened at The
University of California, Hastings College of the Law. The session was attended
by a number of students and professors including one first year property law class
which used this case as vehicle to understand the law of possession.
18 Brown, The Law on Personal Property (Callaghan and Company, 3rd Edition, 1975)

section 2.6, page 19.
19 Kramer v. United States, 408 F.2d 837, 840 (C.A.8th.1969); State v. Strutt (1967) 4

Conn.Cir.Ct. 501, 236 A.2d 357, 359.

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certain fundamental concepts that are common to every
definition of possession.
Professor Roger Bernhardt20 has recognized that
“[p]ossession requires both physical control over the item
and an intent to control it or exclude others from it. But
these generalizations function more as guidelines than as
direct determinants of possession issues. Possession is a
blurred question of law and fact.”21
Professor Brown argues that “[t]he orthodox view of
possession regards it as a union of the two elements of the
physical relation of the possessor to the thing, and of
intent. This physical relation is the actual power over the
thing in question, the ability to hold and make use of it. But
a mere physical relation of the possessor to the thing in
question is not enough. There must also be manifested an
intent to control it.”22
The task of this court is to use these principles as a starting
point to craft a definition of possession that applies to the
unique circumstances of this case.
We start with the observation that possession is a process
which culminates in an event. The event is the moment in
time that possession is achieved. The process includes the
acts and thoughts of the would be possessor which lead up
to the moment of possession.
The focus of the analysis in this case is not on the thoughts
or intent of the actor. Mr. Popov has clearly evidenced an
intent to possess the baseball and has communicated that

20 Professor Bernhardt is the author of the textbook Property, Cases and Statutes,

published by the West Group as well as the co-author of Real Property in a Nutshell
with Professor Ann M. Burkhart.
21 Real Property in a Nutshell, Roger Bernhardt and Ann M. Burkhart, chapter one,

page 3
22 Brown, The Law on Personal Property (Callaghan and Company, 3rd Edition, 1975)

section 2.6, page 21.

234

intent to the world.23 The question is whether he did
enough to reduce the reduce the ball to his exclusive
dominion and control. Were his acts sufficient to create a
legally cognizable interest in the ball?
Mr. Hayashi argues that possession does not occur until the
fan has complete control of the ball. Professor Brian Gray,
suggests the following definition ” A person who catches a
baseball that enters the stands is its owner. A ball is caught
if the person has achieved complete control of the ball at
the point in time that the momentum of the ball and the
momentum of the fan while attempting to catch the ball
ceases. A baseball, which is dislodged by incidental contact
with an inanimate object or another person, before
momentum has ceased, is not possessed. Incidental contact
with another person is contact that is not intended by the
other person. The first person to pick up a loose ball and
secure it becomes its possessor.”24
Mr. Popov argues that this definition requires that a person
seeking to establish possession must show unequivocal
dominion and control, a standard rejected by several
leading cases.25 Instead, he offers the perspectives of
Professor Bernhardt and Professor Paul Finkelman26 who
suggest that possession occurs when an individual intends
to take control of a ball and manifests that intent by
stopping the forward momentum of the ball whether or
not complete control is achieved.

23 Literally.
24 This definition is hereinafter referred to as Gray’s Rule.
25 Pierson v. Post, 3 Caines R. (N.Y.1805); Young v. Hitchens, 6 Q.B. 606 (1844); State

v. Shaw, (1902) 67 Ohio St. 157, 65 N.E. 875.

26 Professor Finkelman is the author of the definitive law review article on the

central issue in this case, Fugitive Baseballs and Abandoned Property: Who Owns the
Home Run Ball?, Cardozo Law Review, May 2002, Paul Finkelman, (Chapman
Distinguished Professor of Law).

235

Professors Finkelman and Bernhardt have correctly pointed
out that some cases recognize possession even before
absolute dominion and control is achieved. Those cases
require the actor to be actively and ably engaged in efforts
to establish complete control.27 Moreover, such efforts
must be significant and they must be reasonably calculated
to result in unequivocal dominion and control at some
point in the near future.28
This rule is applied in cases involving the hunting or fishing
of wild animals29 or the salvage of sunken vessels.30 The
hunting and fishing cases recognize that a mortally
wounded animal may run for a distance before falling. The
hunter acquires possession upon the act of wounding the
animal not the eventual capture. Similarly, whalers acquire
possession by landing a harpoon, not by subduing the
animal.31

The degree of control necessary to establish possession varies from
circumstance to circumstance. “The law … does not always require that one who
discovers lost or abandoned property must actually have it in hand before he is
vested with a legally protected interest. The law protects not only the title acquired
by one who finds lost or abandoned property but also the right of the person who
discovers such property, and is actively and ably engaged in reducing it to
possession, to complete this process without interference from another. The
courts have recognized that in order to acquire a legally cognizable interest in lost
or abandoned property a finder need not always have manual possession of the
thing. Rather, a finder may be protected by taking such constructive possession of
the property as its nature and situation permit.” Treasure Salvors Inc. v. The Unidentified
Wrecked and Abandoned Sailing Vessel (1981) 640 F.2d 560, 571 (emphasis added).
27

28 Brady v. S.S. African Queen, 179 F.Supp. 321 (E.D.Va., 1960); Eads v. Brazelton,

(1861) 22 Ark. 499; Treasure Salvors Inc., id. at 571.
29 Liesner v.

Wanie (1914) 156 Wis. 16, 145 N.W. 374; Ghen v. Rich, 8 F. 159
(D.Mass.1881); Pierson v. Post, 3 Caines R. (N.Y.1805); Young v. Hitchens, 6 Q.B. 606
(1844); State v. Shaw (1902) 67 Ohio St. 157, 65 N.E. 875. See also Herbert
Hovenkamp and Sheldon Kurtz, The Law of Property (5th ed. West Group 2001) at
page 2.
30 Indian River Recovery Company v. The China, 645 F.Supp. 141, 144 (D.Del.1986);

Treasure Salvors Inc. v. The Unidentified Wrecked and Abandoned Sailing Vessel,
(1981)640 F.2d 560; Richard v. Pringle, 293 F.Supp. 981 (S.D.N.Y.1968).
31 Swift v. Gifford, 23 F. Cas. 558 (D.Mass.1872)

236

In the salvage cases, an individual may take possession of a
wreck by exerting as much control “as its nature and
situation permit”.32 Inadequate efforts, however, will not
support a claim of possession. Thus, a “sailor cannot assert
a claim merely by boarding a vessel and publishing a notice,
unless such acts are coupled with a then present intention
of conducting salvage operations, and he immediately
thereafter proceeds with activity in the form of constructive
steps to aid the distressed party.”33
These rules are contextual in nature. The are crafted in
response to the unique nature of the conduct they seek to
regulate. Moreover, they are influenced by the custom and
practice of each industry. The reason that absolute
dominion and control is not required to establish
possession in the cases cited by Mr. Popov is that such a
rule would be unworkable and unreasonable. The “nature
and situation” of the property at issue does not immediately
lend itself to unequivocal dominion and control. It is
impossible to wrap ones arms around a whale, a fleeing fox
or a sunken ship.
The opposite is true of a baseball hit into the stands of a
stadium. Not only is it physically possible for a person to
acquire unequivocal dominion and control of an
abandoned baseball, but fans generally expect a claimant to
have accomplished as much. The custom and practice of
the stands creates a reasonable expectation that a person
will achieve full control of a ball before claiming
possession. There is no reason for the legal rule to be
inconsistent with that expectation. Therefore Gray’s Rule is
adopted as the definition of possession in this case.
The central tenant of Gray’s Rule is that the actor must
retain control of the ball after incidental contact with

32 See note 27.
33 Brady v. S.S. African Queen, 179 F.Supp. 321, 324 (E.D.Va., 1960)

237

people and things. Mr. Popov has not established by a
preponderance of the evidence that he would have retained
control of the ball after all momentum ceased and after any
incidental contact with people or objects. Consequently, he
did not achieve full possession.
That finding, however, does not resolve the case. The
reason we do not know whether Mr. Popov would have
retained control of the ball is not because of incidental
contact. It is because he was attacked. His efforts to
establish possession were interrupted by the collective
assault of a band of wrongdoers.34
A decision which ignored that fact would endorse the
actions of the crowd by not repudiating them. Judicial
rulings, particularly in cases that receive media attention,
affect the way people conduct themselves. This case
demands vindication of an important principle. We are a
nation governed by law, not by brute force.35
As a matter of fundamental fairness, Mr. Popov should
have had the opportunity to try to complete his catch
unimpeded by unlawful activity. To hold otherwise would
be to allow the result in this case to be dictated by violence.
That will not happen.

34 Professor Gray has suggested that the

way to deal with this problem is to
demand that Mr. Popov sue the people who assaulted him. This suggestion is
unworkable for a number of reasons. First, it was an attack by a large group of
people. It is impossible to separate out the people who were acting unlawfully
from the people who were involuntarily pulled into the mix. Second, in order to
prove damages related to the loss of the ball, Mr. Popov would have to prove that
but for the actions of the crowd he would have achieved possession of the ball.
As noted earlier, this is impossible.
35 There are a number of ways courts can enforce the rule of law. Major League

Baseball, as well as each individual team has a duty to provide security against
foreseeable violence in the stands. The failure to provide that security, or worse,
the tacit acceptance of some level of violence, will inevitable lead to lawsuits
against the teams and the parent organization.

238

For these reasons, the analysis cannot stop with the valid
observation that Mr. Popov has not proved full
possession.36
The legal question presented at this point is whether an
action for conversion can proceed where the plaintiff has
failed to establish possession or title. It can An action for
conversion may be brought where the plaintiff has title,
possession or the right to possession.37
Here Mr. Popov seeks, in effect, a declaratory judgment
that he has either possession or the right to possession. In
addition he seeks the remedies of injunctive relief and a
constructive trust. These are all actions in equity. A court
sitting in equity has the authority to fashion rules and
remedies designed to achieve fundamental fairness.
Consistent with this principle, the court adopts the
following rule. Where an actor undertakes significant but
incomplete steps to achieve possession of a piece of
abandoned personal property and the effort is interrupted
by the unlawful acts of others, the actor has a legally
cognizable pre-possessory interest in the property. That
pre-possessory interest constitutes a qualified right to
possession which can support a cause of action for
conversion.
Possession can be likened to a journey down a path. Mr.
Popov began his journey unimpeded. He was fast
approaching a fork in the road. A turn in one direction
would lead to possession of the ball he would complete the
catch. A turn in the other direction would result in a failure
to achieve possession he would drop the ball. Our problem
is that before Mr. Popov got to the point where the road

36 The court is indebted to Professor Jan Stiglitz of California Western School of

Law for his valuable insights and suggestions on this issue.
37 See note 14.

239

forked, he was set upon by a gang of bandits, who
dislodged the ball from his grasp.
Recognition of a legally protected pre-possessory interest,
vests Mr. Popov with a qualified right to possession and
enables him to advance a legitimate claim to the baseball
based on a conversion theory. Moreover it addresses the
harm done by the unlawful actions of the crowd.
It does not, however, address the interests of Mr. Hayashi.
The court is required to balance the interests of all parties.
Mr. Hayashi was not a wrongdoer. He was a victim of the
same bandits that attacked Mr. Popov. The difference is
that he was able to extract himself from their assault and
move to the side of the road. It was there that he
discovered the loose ball. When he picked up and put it in
his pocket he attained unequivocal dominion and control.
If Mr. Popov had achieved complete possession before Mr.
Hayashi got the ball, those actions would not have divested
Mr. Popov of any rights, nor would they have created any
rights to which Mr. Hayashi could lay claim. Mr. Popov,
however, was able to establish only a qualified prepossessory interest in the ball. That interest does not
establish a full right to possession that is protected from a
subsequent legitimate claim.
On the other hand, while Mr. Hayashi appears on the
surface to have done everything necessary to claim full
possession of the ball, the ball itself is encumbered by the
qualified pre-possessory interest of Mr. Popov. At the time
Mr. Hayashi came into possession of the ball, it had, in
effect, a cloud on its title.
An award of the ball to Mr. Popov would be unfair to Mr.
Hayashi. It would be premised on the assumption that Mr.
Popov would have caught the ball. That assumption is not
supported by the facts. An award of the ball to Mr. Hayashi
would unfairly penalize Mr. Popov. It would be based on

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the assumption that Mr. Popov would have dropped the
ball. That conclusion is also unsupported by the facts.
Both men have a superior claim to the ball as against all the
world. Each man has a claim of equal dignity as to the
other. We are, therefore, left with something of a dilemma.
Thankfully, there is a middle ground.
The concept of equitable division was fully explored in a
law review article authored by Professor R.H. Helmholz in
the December 1983 edition of the Fordham Law Review.38
Professor Helmholz addressed the problems associated
with rules governing finders of lost and mislaid property.
For a variety of reasons not directly relevant to the issues
raised in this case, Helmholz suggested employing the
equitable remedy of division to resolve competing claims
between finders of lost or mislaid property and the owners
of land on which the property was found.
There is no reason, however, that the same remedy cannot
be applied in a case such as this, where issues of property,
tort and equity intersect.
The concept of equitable division has its roots in ancient
Roman law.39 As Helmholz points out, it is useful in that it
“provides an equitable way to resolve competing claims
which are equally strong.” Moreover, “[i]t comports with
what one instinctively feels to be fair”.40
Although there is no California case directly on point,
Arnold v. Producers Fruit Company (1900) 128 Cal. 637, 61 P.
283 provides some insight. There, a number of different
prune growers contracted with Producer’s Fruit Company
38 Equitable Division and the Law of Finders, (1983) Fordham Law Review, Professor

R.H. Helmholz, University of Chicago School of Law. This article built on a
student comment published in 1939. Lost, Mislaid and Abandoned Property (1939) 8
Fordham Law Review 222.
39 Helmholz at fn. 14.
40 Id. at 315.

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to dry and market their product. Producers did a bad job.
They mixed fruit from many different growers together in a
single bin and much of the fruit rotted because it was
improperly treated.
When one of the plaintiffs offered proof that the fruit in
general was rotten, Producers objected on the theory that
the plaintiff could not prove that the prunes he contributed
to the mix were the same prunes that rotted. The court
concluded that it did not matter. After the mixing was
done, each grower had an undivided interest in the whole,
in proportion to the amount of fruit each had originally
contributed.
The principle at work here is that where more than one
party has a valid claim to a single piece of property, the
court will recognize an undivided interest in the property in
proportion to the strength of the claim.
Application of the principle of equitable division is
illustrated in the case of Keron v. Cashman (1896) 33 A. 1055.
In that case, five boys were walking home along a railroad
track in the city of Elizabeth New Jersey. The youngest of
the boys came upon an old sock that was tied shut and
contained something heavy. He picked it up and swung it.
The oldest boy took it away from him and beat the others
with it. The sock passes from boy to boy. Each controlled
it for a short time. At some point in the course of play, the
sock broke open and out spilled $775 as well as some rags,
cloths and ribbons.
The court noted that possession requires both physical
control and the intent to reduce the property to one’s
possession. Control and intent must be concurrent. None
of the boys intended to take possession until it became
apparent that the sock contained money. Each boy had
physical control of the sock at some point before that
discovery was made.

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Because none could present a superior claim of concurrent
control and intent, the court held that each boy was entitled
to an equal share of the money. Their legal claims to the
property were of equal quality, therefore their entitlement
to the property was also equal.
Here, the issue is not intent, or concurrence. Both men
intended to possess the ball at the time they were in
physical contact with it. The issue, instead, is the legal
quality of the claim. With respect to that, neither can
present a superior argument as against the other.
Mr. Hayashi’s claim is compromised by Mr. Popov’s prepossessory interest. Mr. Popov cannot demonstrate full
control. Albeit for different reasons, they stand before the
court in exactly the same legal position as did the five boys.
Their legal claims are of equal quality and they are equally
entitled to the ball.
The court therefore declares that both plaintiff and
defendant have an equal and undivided interest in the ball.
Plaintiff’s cause of action for conversion is sustained only
as to his equal and undivided interest. In order to effectuate
this ruling, the ball must be sold and the proceeds divided
equally between the parties.
The parties are ordered to meet and confer forthwith
before Judge Richard Kramer to come to an agreement as
to how to implement this decision. If no decision is made
by December 30, 2002, the parties are directed to appear
before this court on that date at 9:00 am.
The court retains jurisdiction to issue orders consistent
with this decision. The ball is to remain in the custody of
the court until further order.
A Dissection of the Popov Case
As I’ve said in class on a number of occasions, we’re doing several
things in this course with the material we cover. First, we’re trying

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to understand in each case what the court has done. They’re
writing to explain why they’ve decided as they have. Our job is to
understand the language in which they’re writing and to “decode”
the cases. Knowing the court’s reasons will allow us to use the case
to make arguments in a future case.
Second, we’re gradually becoming familiar with a number of
concepts that are used repeatedly in many substantive areas of the
law. Knowing these concepts (most of which we’re pulling out and
describing as Big Ideas) will help us read the language of cases and
to use and to criticize cases.
Third, we’re assembling a sketch of several areas of the law that are
commonly lumped together and called “property law.” The goal
here is to know enough about these areas so that if confronted in
practice with a real case, we’d have an appreciation for the doctrine
as a whole and therefore some immediate understanding when we
started to dig into the cases in our jurisdiction covering the specific
issue of interest. So far, we’ve covered Finders vs. Landowners,
Trespass to Land, Nuisance, and a bit of the doctrine of acquisition
by first possession.
Pursuant to our first goal – simply to understand what the courts
have done in a case – here’s my outline of the decision in Popov. I
give the first few words of the sentence where the new heading
would begin, so scan through the case as you follow along.
The first, roughly, three pages summarize the Facts.
“Plaintiff has pled causes of …” This
paragraph lists the claims. Here’s what the
fight is about.
“Conversion is the …” up through fn. 13:
The court defines two of the claims, stating
more particularly what must be shown in
order to prove them.
“In the case at bar,”: A HERE section. The
application of the law to the facts disposes
of one claim right away.

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“Conversion does not exist…” Further
definition of conversion, setting up another
legal question, so that we can get to another
HERE section, applying this law to the
facts.
“The parties have agreed…” Role of and
definition of possession. (Having identified
the body of law applicable to resolve the
fight, the court must canvas that body of
law and extract – and reconcile – the rules
we’ll apply to the facts here.) The court
gradually refines the question to one of
what physical act is required to achieve legal
possession.
“Mr. Hayashi argues …” Two competing
rules are introduced to define possession.
We’re still reconciling the body of law that
that we will apply to our facts.
“These rules are contextual in nature…” up
to “Therefore Gray’s Rule is adopted ….”
Argument for the adoption of a particular
rule for possession. [it’s possible to achieve
full control, fans expect that’s the rule
(Rose)] Now we have law to apply.
“The central tenant sic of Gray’s Rule …”
HERE – but there’s a problem. The law we
synthesized when applied to these facts
reveals a problem – a result we don’t want.
“A decision which ignored that fact…”
Policy that needs to be furthered.
“The
legal
question
presented…”
Justification of court’s POWER to do
something different in this case than has
been done before [note, this is different
than a logical or policy-based justification]
“Consistent with this principle…” Synthesis
[The court takes the rule it has adopted for

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possession of baseballs generally and
modifies it for cases of interruption by
unlawful act]
“Possession can be likened to a journey…”
HERE [The court applies its new rule to
this case.]
“An award of the ball to Mr. Popov would
be unfair…” Problem – unmodified
application of the rule adopted would be
unfair to Hayashi.
“Thankfully, there is a middle ground…”
Body of law potentially applicable to this
problem.
“Here, the issue is not intent…” He’s
making it too easy for me… but anyway:
HERE.
In condensed form, we have:
Facts Fight identification Review of law applicable to fight
HERE (one claim goes away, another is unclear) Review of
law applicable to further elaborated understanding of fight
(possession)
Survey two possible resolutions of uncertainty in law
(specific def’n of possession in this case) Argue for the
adoption of one of these rules
HERE But, application reveals policy problem Justification of
court’s power to modify law and address policy Synthesis of
new rule HERE But, application reveals fairness problem
Review of law applicable to this problem HERE
Note that this is a conceptual outline of what’s going on in the
case, meant to help us better understand how legal arguments are
constructed. Seeing enough cases and thinking about how they’re
put together will help us talk the same language as courts and

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lawyers do. That will help us write our own arguments and more
quickly read and extract information from the writings of others.
My substantive notes on Popov, if I were making an outline, might
be something more like: Popov (Cal. Super. Ct. 2002) - Bonds
homerun ball case. Popov “catches,” but Hayashi winds up with it,
after “illegal” violence to Popov but not perpetrated by Hayashi.
Conversion - so issue is whether Popov possessed. Intent+phys
poss. Physical possession unclear. Ct. considers Finkelman’s rule
(stopping momentum) and Gray’s (complete control after stop,
incidental contact dislodging vitiates possession), decides on
Gray’s. But Popov deprived of chance to possess because of illegal
contact - so “qualified right to possession,” right to try to achieve
possession unimpeded. But unfair to Hayashi - so split.
It would probably be a bit shorter than that when all was said and
done. But others will want a much longer description of the facts
and law in the case than appears in my capsule here. What kind of
notes you want depends on how much and what kind of
description you need to enable you to use Popov to make an
argument in another case.

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Charrier v. Bell, 496 So. 2d 601 (La. App. 1 Cir. 1986)
J. Arthur Smith, III, Baton Rouge, for plaintiff-appellant.
Donald Juneau, Arlinda Locklear, Richard Dauphinais,
Native American Rights Fund, Washington, D.C., for
Tunica-Biloxi Tribe.
Fred G. Benton, Jr., Baton Rouge, for defendantsappellees.
Before EDWARDS, WATKINS and PONDER1 , JJ.
PONDER, Judge, retired.
Plaintiff appealed the trial court’s judgment denying both
his claim as owner of Indian artifacts and his request for
compensation for his excavation work in uncovering those
artifacts under the theory of unjust enrichment. We affirm.
Plaintiff is a former Corrections Officer at the Louisiana
State Penitentiary in Angola, Louisiana, who describes
himself as an “amateur archeologist”. After researching
colonial maps, records and texts, he concluded that
Trudeau Plantation,2 near Angola, was the possible site of
an ancient village of the Tunica Indians. He alleges that in
1967 he obtained the permission of Mr. Frank Hoshman,
Sr., who he believed was the owner of Trudeau Plantation,
to survey the property with a metal detector for possible
burial locations. After locating and excavating
approximately 30 to 40 burial plots, lying in a circular
pattern, plaintiff notified Mr. Hoshman that he had located
the Tunica village. Although the evidence is contradictory,
plaintiff contends that it was at that time that Mr. Hoshman

1 Judge, Elven E. Ponder, retired, has been assigned temporarily to this court by

the Supreme Court of Louisiana to fill the vacancy created by the election of
Justice Luther F. Cole to the Supreme Court.
2 Trudeau Plantation consists of approximately 150 acres located on a bluff in the

southeast quadrant of the meeting of the Mississippi River and Tunica Bayou.
Angola is on the other side of the bayou.

first advised that he was the caretaker, not the owner, of
the property.
Plaintiff continued to excavate the area for the next three
years until he had located and excavated approximately 150
burial sites, containing beads, European ceramics,
stoneware, glass bottles; iron kettles, vessels and skillets;
knives, muskets, gunflints, balls and shots; crucifixes, rings
and bracelets; and native pottery. The excavated artifacts
are estimated to weigh two to two and one-half tons.
In search of a buyer for the collection, plaintiff talked to
Dr. Robert S. Neitzel of Louisiana State University, who, in
turn, informed Dr. Jeffrey D. Brain of Harvard University.
Dr. Brain, who was involved in a survey of archeology
along the lower Mississippi River, viewed the artifacts and
began discussions of their sale to the Peabody Museum of
Harvard University. The discussions resulted in the lease of
the artifacts to the Museum, where they were inventoried,
catalogued and displayed.
Plaintiff initially informed Dr. Neitzel and Dr. Brain that he
had found the artifacts in a cave in Mississippi, so as to
conceal their source; later he did disclose the actual site of
the find to Dr. Brain, who had expressed his concern over
the title of the artifacts. Dr. Brain then obtained permission
from the landowners to do further site testing and
confirmed that it was the true source of the artifacts.
Confronted with the inability to sell the collection because
he could not prove ownership, plaintiff filed suit against the
six nonresident landowners of Trudeau Plantation,
requesting declaratory relief confirming that he was the
owner of the artifacts. Alternatively, plaintiff requested that
he be awarded compensation under the theory of unjust
enrichment for his time and expenses.
The State of Louisiana intervened in the proceeding on
numerous grounds, including its duty to protect its citizens
in the absence of the lawful heirs of the artifacts. In 1978,

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the State purchased Trudeau Plantation and the artifacts
from the six landowners and agreed to defend, indemnify
and hold the prior owners harmless from any and all
actions.3
In 1981 the Tunica and Biloxi Indians were recognized as
an American Indian Tribe by the Bureau of Indian Affairs
of the Department of the Interior. The Tunica-Biloxi
Indians of Louisiana, Inc. intervened in the instant suit
seeking title to the artifacts and the site of the burial
ground. At the same time, the tribe removed the action to
federal district court, where they also filed a parallel action
seeking title to the artifacts. The federal district court, on
September 8, 1982, remanded the matter to state court and
stayed the parallel action. Charrier v. Bell, 547 F.Supp. 580
(M.D.La.1982). The Tunicas then withdrew, without
prejudice, their claim to the property where the artifacts
were located and the State subordinated its claim of title or
trust status over the artifacts in favor of the Tunicas.
The trial judge held that the Tunica-Biloxi Tribe is the
lawful owner of the artifacts, finding that plaintiff was not
entitled to the artifacts under La.C.C. art. 3423 as it read
prior to amendment by Act No. 187 of 1982, which
required discovery “by chance”. The judge also found that
plaintiff had no claim to the artifacts on the basis of
abandonment under La.C.C. art. 3421, as it read prior to
the amendment by Act No. 187 of 1982, because the legal
concept of abandonment does not extend to burial goods.
The trial court also denied relief under the theory of unjust
enrichment, finding that any impoverishment claimed by
plaintiff was a result of his attempts “for his own gain” and
that his presence and actions on the property of a third

3 Plaintiff filed a motion for litigous redemption which was granted by the trial

court, but rejected by this court. The matter was remanded for trial. Charrier v. Bell,
380 So.2d 155 (La.App. 1st Cir.1979).

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party placed him in a “precarious position, if not in legal
bad faith.”
The issues before this court are the adequacy of proof that
the Tunica-Biloxi Indians are descendants of the
inhabitants of Trudeau, the ownership of the artifacts, and
the applicability of the theory of unjust enrichment.
Plaintiff first argues that the evidence that the members of
the Tunica-Biloxi Indians of Louisiana, Inc., are legal
descendants of the inhabitants of Trudeau Plantation was
insufficient to entitle them to the artifacts. He asserts that
federal recognition of the tribe “merely proves that the
Tribe is the best representative of the Tunica Indians for
purposes of receiving federal benefits,” and points to
evidence of intermixing by the Tunica tribe with other
tribes.
The fact that members of other tribes are intermixed with
the Tunicas does not negate or diminish the Tunicas’
relationship to the historical tribe. Despite the fact that the
Tunicas have not produced a perfect “chain of title” back
to those buried at Trudeau Plantation, the tribe is an
accumulation of the descendants of former Tunica Indians
and has adequately satisfied the proof of descent. This is
evident from the “Final Determination for Federal
Acknowledgment of the Tunica-Biloxi Indian Tribe of
Louisiana”, Fed. Reg. Vol. 46, No. 143, p. 38411 (July 27,
1981), which specifically found that the ” contemporary
Tunica-Biloxi Indian Tribe is the successor of the historical
Tunica, Ofa and Avoyel tribes, and part of the Biloxi tribe”.
The evidence supports the finding that at least some
portion of the Tunica tribe resided at Trudeau Plantation
from 1731-1764. No contrary evidence, other than that
suggesting intermixing, was presented at the trial of this
case. Plaintiff’s argument is without merit.
Plaintiff next argues that the Indians abandoned the
artifacts when they moved from Trudeau Plantation, and

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the artifacts became res nullius until found and reduced to
possession by plaintiff who then became the owner.
Plaintiff contends that he has obtained ownership of the
property through occupancy, which is a “mode of acquiring
property by which a thing which belongs to nobody,
becomes the property of the person who took possession
of it, with the intention of acquiring a right of ownership
upon it.” La.C.C. art. 3412, prior to amendment by Act No.
187 of 1982.4
One of the five methods of acquiring property by
occupancy is “By finding (that is, by discovering precious
stones on the sea shore, or things abandoned, or a
treasure.)” La.C.C. art. 3414, prior to amendment by Act
No. 187 of 1982. Plaintiff contends that the artifacts were
abandoned by the Tunicas and that by finding them he
became the owner.

4 La.C.C. art. 3412, 3414 and 3421 cited herein were repealed by Acts 1982, No.

187, § 1, effective January 1, 1984. The provisions replacing those articles
reproduce their substance. Although the language has changed, they do not
change the law. See specifically La.C.C. art. 3412 and 3418, as adopted by Acts
1982, No. 187, § 1 and the comments. The articles previously read as follow:
La.C.C. art. 3412
Occupancy is a mode of acquiring property by which a
thing which belongs to nobody, becomes the property
of the person who took possession of it, with the
intention of acquiring a right of ownership upon it.
La.C.C. art. 3414
There are five ways of acquiring property by
occupancy, to wit: By hunting. By fowling. By fishing.
By finding (that is, by discovering precious stones on
the sea shore, or things abandoned, or a treasure.)
La.C.C. 3421.

He who finds a thing which is abandoned; that is,
which its owner has let [left] with the intention not to
keep it any longer, becomes master of it in the same
manner as if it had never belonged to any body.

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Both sides presented extensive expert testimony on the
history of the Tunica Indians, the French, English and
Spanish occupation of the surrounding territory and the
presence or absence of duress causing the Tunicas to
abandon the Trudeau site.
However, the fact that the descendents or fellow tribesmen
of the deceased Tunica Indians resolved, for some
customary, religious or spiritual belief, to bury certain items
along with the bodies of the deceased, does not result in a
conclusion that the goods were abandoned. While the
relinquishment of immediate possession may have been
proved, an objective viewing of the circumstances and
intent of the relinquishment does not result in a finding of
abandonment. Objects may be buried with a decedent for
any number of reasons. The relinquishment of possession
normally serves some spiritual, moral, or religious purpose
of the descendant/owner, but is not intended as a means of
relinquishing ownership to a stranger. Plaintiff’s argument
carried to its logical conclusion would render a grave
subject to despoliation either immediately after interment
or definitely after removal of the descendants of the
deceased from the neighborhood of the cemetery.
Although plaintiff has referred to the artifacts as res nullius,
under French law, the source of Louisiana’s occupancy law,
that term refers specifically to such things as wild game and
fish, which are originally without an owner. The term res
derelictae refers to “things voluntarily abandoned by their
owner with the intention to have them go to the first
person taking possession.” P. Esmein, Aubry & Rau Droit
Civil Francais, Vol. II, § 168, p. 46 (7th Ed.1966). Some
examples of res derelictae given by Aubry and Rau include
things left on public ways, in the cities or to be removed by
garbage collectors.
The artifacts fall into the category of res derelictae, if subject
to abandonment. The intent to abandon res derelictae must
include the intent to let the first person who comes along

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acquire them. Obviously, such is not the case with burial
goods.
French sources have generally held that human remains and
burial goods located in cemeteries or burial grounds are not
“treasure” under article 716 of the French Civil Code and
thereby not subject to occupancy upon discovery. Blancherot
v. Couilhy, Bordeaux, 6 Aug. 1806, 38 Dalloz Jurisprudence
G ene rale, § 186 n. (1), p. 230 (1857). The reasoning has
been that any contrary decision would lead to and promote
commercial speculation and despoilment of burial grounds.
The French commentator Demolombe noted the special
treatment that should be given to burial goods, stating that
such objects “have not been placed underground with the
same intention which informs the deposit of what is called
treasure, which in the latter case is, for a temporary
period…. Rather, they are an emplacement for a perpetual
residence therein….” 13 C. Demolombe, Cours de Code
Napoleon § 37, pp. 45-46 (2c ed. 1862).
The same reasoning that the French have used to treat
burial goods applies in determining if such items can be
abandoned. The intent in interring objects with the
deceased is that they will remain there perpetually, and not
that they are available for someone to recover and possess
as owner.
For these reasons, we do not uphold the transfer of
ownership to some unrelated third party who uncovers
burial goods. The trial court concluded that La.C.C. art.
3421, as it read prior to passage of Act No. 187 of 1982,
was not intended to require that objects buried with the
dead were abandoned or that objects could be acquired by
obtaining possession over the objections of the
descendants. We agree with this conclusion.
The cases cited by plaintiff are distinguishable.
In Touro Synagogue v. Goodwill Industries of New Orleans Area,
Inc., 233 La. 26, 96 So.2d 29 (1957), the court found that a

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cemetery had been abandoned for burial purposes and the
owner had the right to sell the property; however, the court
conditioned the sale on the disinterment and reinterment
(in another cemetery) of the remains of the deceased.
In Ternant v. Boudreau, 6 Rob. 488 (1844), jewelry interred
with the decedent was stolen and recovered. The plaintiff
claimed the ownership of all such goods on the basis that
he purchased the decedent’s succession from defendant
who was the heir. The court found that the plaintiff was the
lawful owner of the jewelry since there had been a valid sale
from the descendant. The sale evidenced an express intent
by the descendant not to retain ownership of the burial
goods.
The court in McEnery v. Pargoud, 10 La.Ann. 497 (1855)
found that the temporary use of land as a cemetery, from
1794 to 1800, did not exclude it from commerce. There
was no mention of the abandonment of the remains of the
dead or the burial goods and there is no inconsistency in
that decision and the opinion stated herein.
Humphreys v. Bennett Oil Corporation, 195 La. 531, 197 So. 222
(1940) merely acknowledges that descendants have a cause
of action against a person who disturbs a cemetery.
Plaintiff strongly argues that a finding that Indians did not
abandon the artifacts will necessarily require the federal
court to conclude that the Tunicas did not abandon the real
property at Trudeau Plantation and could work havoc with
the stability of Louisiana land titles. However, the question
of the abandonment of the real property was excluded
from the case. This opinion should not be interpreted as
making any expression thereon.
Plaintiff next argues that he is entitled to recover a sum of
money to compensate his services and expenses on the
basis of an actio de in rem verso.
The five criteria of such a claim de in rem verso are:

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1. there must be an enrichment,
2. there must be an impoverishment,
3. there must be a connection between the enrichment
and resulting impoverishment,
4. there must be an absence of justification or cause
for the enrichment and impoverishment, and
5. there must be no other remedy at law available to
plaintiff.
Creely v. Leisure Living, Inc., 437 So.2d 816 (La.1983);
Edmonston v. A-Second Mortgage Company of Slidell Inc., 289
So.2d 116 (La.1974).
We first question whether there has been an enrichment.
While the nonresident landowners were “enriched” by the
sale of the property to the state, the ultimate owners of the
artifacts presented substantial evidence that the excavation
caused substantial upset over the ruin of “ancestrial burial
grounds,” rather than any enrichment.
Even if the Indians have been enriched, plaintiff has failed
to prove that he has sustained the type impoverishment for
which de in rem verso, may be used. His alleged loss resulted
from the hours he spent excavating the artifacts, the greater
portion of which activity was done at a time when plaintiff
knew he was on property without the consent of the
landowner. While contradictory testimony was presented
regarding whether plaintiff initially had permission to go on
the property, and whether that permission was adequate, by
his own admission, plaintiff was informed by Hoshman
that he did not own the property before the cessation of
the excavating. Plaintiff’s knowledge is further evidenced
by his attempts to keep the location of his work secret; he
did not identify Trudeau Plantation as the location of the
find for almost five years after his discovery and he failed
to seek out the landowners of the property until it was
required for sale negotiations, although he removed two

256

and one half tons of artifacts from their property. Plaintiff
further acknowledges that he knew that the Tunica Indians
might object to his excavations.
The actio de in rem verso, explained by the Louisiana Supreme
Court in Minyard v. Curtis Products, Inc., 251 La. 624, 205
So.2d 422 (1967) and derived from the similar French
action, is influenced greatly by French Civil Code articles
from which our own are copied. Minyard, 205 So.2d 432.
The impoverishment element in French law is met only
when the factual circumstances show that it was not a result
of the plaintiff’s own fault or negligence or was not
undertaken at his own risk. Comment, Actio De In Rem
Verso in Louisiana; Minyard v. Curtis Products, Inc., 43
Tul.L.Rev. 263, 286 (1969); Brignac v. Boisdore, 288 So.2d 31,
35 n. 2 (La.1973). Obviously the intent is to avoid awarding
one who has helped another through his own negligence or
fault or through action taken at his own risk. Plaintiff was
acting possibly out of his own negligence, but more
probably knowingly and at his own risk. Under these
circumstances, plaintiff has not proven the type of
impoverishment necessary for a claim of unjust
enrichment.
Additionally, plaintiff has failed to show that any
enrichment was unjustified, entitling him to an action to
recover from the enriched party. An enrichment will be
unjustified “only if no legal justification for it exists by
reason of a contract or provision of law intended to permit
the enrichment or the impoverishment or to bar attack
upon the enrichment.” Justice A. Tate, The Louisiana Action
for Unjustified Enrichment, 50 Tul.L.Rev. 883, 904 (1976). Any
enrichment received by the Tribe was justified. Humphreys v.
Bennett Oil Corp., 195 La. 531, 197 So. 222 (1940); Choppin v.
LaBranche, 48 La.Ann. 1217, 20 So. 681 (1896). In
Humphreys, the court recognized a right of action to recover
damages for mental anguish and pain and suffering for
desecration of a cemetery, while Choppin allowed injunctive

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relief against a tomb owner threatening to remove remains
of the dead. Thus, descendants have a right to enjoin the
disinterment of their deceased relatives, as well as to receive
damages for the desecration involved. Such a right would
be subverted if descendants were obliged to reimburse for
the expenses of the excavation. See V & S Planting Company
v. Red River Waterway Commission, 472 So.2d 331 (La.App.
3rd Cir. 1985), writ denied, 475 So.2d 1106 (1985); G.
Woodward Jackson Co., Inc. v. Crispens, 414 So.2d 855
(La.App. 4th Cir. 1982). There is a legal justification for any
enrichment received by the Tribe and plaintiff is not
entitled to invoke the equitable theory.
For these reasons the judgment of the trial court is affirmed
at appellant’s costs.
AFFIRMED.
2.1.4. Problems
Problems
1. What legal conclusion must be reached before we decide, as in
Popov, that the first possessor of an object is its legal owner?
2. Explain why in Charrier it is difficult to decide whether the buried
artifacts had been abandoned.
3. Suppose you are the judge in Eads but that you will order the
same remedy as in Popov. Give your argument for doing so. That is,
give a very brief discussion of the rule of law applicable to the
dispute and a “HERE” section, applying that law to the facts in
Eads and reaching the conclusion the court reached in Popov.
Answers
1. What legal conclusion must be reached before we decide, as in
Popov, that the first possessor of an object is its legal owner?
The court must first conclude that the object is “up for
grabs,” for example by having been abandoned.

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2. Explain why in Charrier it is difficult to decide whether the buried
artifacts had been abandoned.
The difficulty concerns whether the original owners of the
artifacts, those who buried them, intended to abandon the
artifacts. An intent to abandon might be defined as an intent
never to recover objects left behind. If this is what we mean
by intent, then the original owners abandoned the artifacts.
On the other hand, the Charrier court defined an intent to
abandon as an intent that an object left behind will be taken
and owned by others. Under this definition, the original
owners almost certainly did not intend to abandon the
artifacts.
3. Suppose you are the judge in Eads but that you will order the
same remedy as in Popov. Give your argument for doing so. That is,
give a very brief discussion of the rule of law applicable to the
dispute and a “HERE” section, applying that law to the facts in
Eads and reaching the conclusion the court reached in Popov.
This case concerns two salvage operations that each claim
exclusive rights to an abandoned, sunken ship. Usually the
court would identify one or the other as having obtained first
possession, and thus ownership, of the abandoned property.
However, where it would be inequitable to award the property
entirely to one party, the court should, proceeding in equity,
recognize the equal strength of the parties’ claims by awarding
equal rights in the disputed property.
B’s claim stems from the incomplete acts he took toward
possession. Possession is defined, generally, as the intent to
appropriate an object as one’s own combined with an
adequate physical manifestation of that intent. What sort of
physical act is required depends on the circumstances, and in
particular what acts will unambiguously alert others of the
possessor’s claim. In this context, clear marking, such as
placing a salvage boat over the wreck would be enough.

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Here, however, B placed buoys and marked trees on the
shore. The buoys broke free and the markings were
inadequate clearly to identify the wreck as the salvage
operation of B. B did not do enough to obtain possession.
However, the physical act of possession is a process, not an
instantaneous occurrence, and B took substantial steps toward
possession. He located and marked, after much research and
toil, the location of a wreck that had, despite its valuable
cargo, not been salvaged after nearly three decades at the
bottom of the Mississippi River.
Though he did not immediately begin salvage operations, this
case would not have arisen but for a prudent delay caused by
season rises in water levels. If the law required salvage in
unsafe conditions in order to guarantee the fruits of the labor
and toil of discovery, loss of life and damage to property
might result. We believe that B did enough to earn the right to
obtain possession - an interest that would protect his ability to
salvage without requiring him to engage in hasty and perilous
recovery operations.
On the other hand, E did nothing wrong. The facts
demonstrate he found the wreck without making use of any
of B’s markings. E put his boat over the wreck and did
everything the law requires to obtain title through possession.
Their claims being of equal quality and weight, E and B
should be awarded equal interests in the salvage.
2.2 Common Pool Resources
2.2.1. The Problem and Theory
McConico v. Singleton, 2 Mill Const. 244, 9 S.C.L. 244
(1818)
This was an action of trespass, quare clausum fregit, and to
support it the plaintiff proved, that he had warned and
ordered the defendant not to hunt on his lands, and that
the defendant had, notwithstanding, rode over, and hunted
deer on his unenclosed and unimproved lands. The verdict

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of the jury was, that each party should pay their own costs;
and the plaintiff now moves for a new trial on the grounds:
1st. Because the riding over the unenclosed and
unimproved lands is in law a trespass, for which an action
will lie, when it is contrary to the express orders of the
owner.
2d. Because the verdict is in itself a nullity.
JOHNSON, J. delivered the opinion of the court.
Until the bringing of this action, the right to hunt on
unenclosed and uncultivated lands has never been disputed,
and it is well known that it has been universally exercised
from the first settlement of the country up to the present
time; and the time has been, when, in all probability,
obedient as our ancestors were to the laws of the country, a
civil war would have been the consequence of an attempt,
even by the legislature, to enforce a restraint on this
privilege. It was the source from whence a great portion of
them derived their food and raiment, and was, to the
devoted huntsman, (disreputable as the life now is,) a
source of considerable profit. The forest was regarded as a
common, in which they entered at pleasure, and exercised
the privilege; and it will not be denied that animals, ferae
naturae, are common property, and belong to the first taker.
If, therefore, usage can make law, none was ever better
established. This usage is also clearly recognized as a right
by the several acts of the legislature on the subject;
particularly the act of 1769, (Pub. Laws, 276,) which
restrains the right to hunt within seven miles of the
residence of the hunter. Now if the right to hunt beyond
that, did not before exist, this act was nugatory; and it,
canuot be believed that it was only intended to apply to
such as owned a tract of land, the diameter of which would
be fourteen miles. It appears to me also, that there is no
rule of the English common law, at variance with this
principle; but, it is said, that every entry on the lands of

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another is a trespass, and the least injury, as treading down
grass, and the like, will support it. (1 Esp. Dig. Tit.
Trespass, 221.) But there must be some actual injury to
support the action. Now it will not be pretended that riding
over the soil is an injury; and the forest being the common,
in which the cattle of all are used to range at large, the
grass, if perchance there be any, may also be regarded as
common property; and surely no action will lie against a
commoner for barely riding over the common. The right to
hunt on unenclosed lands, I think, therefore, clearly
established; but if it were doubtful, I should be strongly
inclined to support it. Large standing armies are, perhaps,
wisely considered as dangerous to our free institutions; the
militia, therefore, necessarily constitutes our greatest
security against aggression; our forest is the great field in
which, in the pursuit of game, they learn the dexterous use
and consequent certainty of firearms, the great and decided
advantages of which have been seen and felt on too many
occasions to be forgotten, or to require a recurrence to.
Having come to the conclusion, that it is the right of the
inhabitants to hunt on unenclosed lands, I need not
attempt to prove that the dissent or disapprobation of the
owner cannot deprive him of it; for I am sure it never yet
entered the mind of any man, that a right which the law
gives, can be defeated at the mere will and caprice of an
individual.
….
GRIMKE, COLCOCK, CHEVES, and NOTT, Js.
concurred. GANTT, J. dissented.
Garrett Hardin, The Tragedy of the Commons, 162 Science
1243 (1968) (excerpt)
The tragedy of the commons develops in this way. Picture a
pasture open to all. It is to be expected that each herdsman will try
to keep as many cattle as possible on the commons. Such an
arrangement may work reasonably satisfactorily for centuries

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because tribal wars, poaching, and disease keep the numbers of
both man and beast well below the carrying capacity of the land.
Finally, however, comes the day of reckoning, that is, the day when
the long-desired goal of social stability becomes a reality. At this
point, the inherent logic of the commons remorselessly generates
tragedy.
As a rational being, each herdsman seeks to maximize his gain.
Explicitly or implicitly, more or less consciously, he asks, “What is
the utility to me of adding one more animal to my herd?” This
utility has one negative and one positive component.
1. The positive component is a function of the increment of
one animal. Since the herdsman receives all the proceeds
from the sale of the additional animal, the positive utility is
nearly +1.
2. The negative component is a function of the additional
overgrazing created by one more animal. Since, however,
the effects of overgrazing are shared by all the herdsmen,
the negative utility for any particular decision-making
herdsman is only a fraction of -1.
Adding together the component partial utilities, the rational
herdsman concludes that the only sensible course for him to
pursue is to add another animal to his herd. And another; and
another…. But this is the conclusion reached by each and every
rational herdsman sharing a commons. Therein is the tragedy. Each
man is locked into a system that compels him to increase his herd
without limit–in a world that is limited. Ruin is the destination
toward which all men rush, each pursuing his own best interest in a
society that believes in the freedom of the commons. Freedom in a
commons brings ruin to all.
….
The National Parks present another instance of the working out of
the tragedy of the commons. At present, they are open to all,
without limit. The parks themselves are limited in extent–there is
only one Yosemite Valley–whereas population seems to grow

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without limit. The values that visitors seek the parks are steadily
eroded. Plainly, we must soon cease to treat the parks as commons
or they will be of no value anyone.
What shall we do? We have several options. We might sell them off
as private property. We might keep them as public property, but
allocate the right enter them. The allocation might be on the basis
of wealth, by the use of an auction system. It might be on the basis
merit, as defined by some agreed-upon standards. It might be by
lottery. Or it might be on a first-come, first-served basis,
administered to long queues. These, I think, are all the reasonable
possibilities. They are all objectionable. But we must choose–or
acquiesce in the destruction of the commons that we call our
National Parks.
2.2.2. Applications
Young v. Ethyl Corp., 521 F.2d 771 (8th Cir. 1975)
Robert J. Moffatt, Shreveport, La., for appellant.
Robert J. Malinak, Houston, Tex., for appellees.
Before HEANEY and WEBSTER, Circuit Judges, and
NANGLE, District Judge.1
HEANY, Circuit Judge.
In this diversity action, plaintiff-appellant Young seeks an
injunction and damages or an accounting for the
defendants’ actions in forcibly removing valuable minerals
from beneath his land by means of injection and
production wells on surrounding property. The District
Court dismissed his complaint after a trial on the merits.
Young v. Ethyl Corp., 382 F.Supp. 769 (W.D.Ark.1974).
The defendants hold mineral leases on approximately
16,000 acres of land overlying the “Smackover Limestone
Formation” in Columbia County, Arkansas. Their saltwater recycling operation brings salt water brine from a
1 JOHN F. NANGLE, District Judge, Eastern District of Missouri, sitting by

designation

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depth of 8,000 feet to the surface by means of production
wells. Valuable bromine is extracted from the brine, and the
debrominated water is then injected back into the ground
through injection wells in a process which forces the
subterranean brine toward the production wells.
Young’s land, consisting of approximately 180 acres, is
surrounded by land controlled by the defendants. The
defendants attempted to acquire a salt water lease from
Young, but were rebuffed because Young believed the
terms to be onerous. Defendants’ production well number
23 is located immediately to the north and west of Young’s
land, and their production wells numbers 18 and 18A are
adjacent to the north and east of his land. Their injection
well number 13 is located adjacent to and south of Young’s
land. The District Court found that
It is established, and undisputed, that
the injection of debrominated waters
from the defendants’ plant through
well numbered 13, under high
pressure, displaces the brine waters in
the formation underlying the plaintiff’s
lands, forcing it to move toward, and
eventually produce through wells
numbered 18 and 23. The salt water,
by means of this artificially induced
movement beneath the lands of Mr.
Young, is carried to the processing
plant * * *.
Id. at 772.
The District Court ruled that the action was governed by
Arkansas law, and this ruling is not contested on appeal. In
dismissing the action, the court declared that the decision
of the Arkansas Supreme Court in Budd v. Ethyl Corp.,

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251 Ark. 639, 474 S.W.2d 411 (1971),2 provided a “clear,
concise and unambiguous determination of the law” to be
applied. Young v. Ethyl Corp., supra, 382 F.Supp. at 774.
Relying on that decision as controlling, the District Court
held that the common law rule of “capture,” as interpreted
by the Arkansas Supreme Court, precluded relief.
We cannot agree that the Arkansas Supreme Court decided
in Budd that the rule of capture protects one who, by force,
pushes minerals out from under the land of another when
the minerals would remain in place without the application
of such force. On the contrary, we conclude that the
manner in which the Arkansas court dealt with the
plaintiff’s contentions in Budd indicates that that court
declined to rule on the precise issue before us.
In Budd, the plaintiff sought an accounting for bromides
removed from beneath two nonadjacent tracts of land. The
Arkansas Supreme Court treated the two tracts separately,
dismissing the cause of action as to each tract for different
reasons. The first tract considered by the court was a 240acre tract in which Budd owned an undivided interest in the
minerals. The court found that this 240-acre tract was
outside of the recycling area, although adjacent to it.
Relying on the rule of capture, the court rejected Budd’s
contention that the drainage of valuable minerals from
beneath the tract stated a cause of action. In support of its
position, the court quoted the following language from
Osborn v. Arkansas Territorial Oil & Gas Co., 103 Ark.
175, 146 S.W. 122, 124 (1912):
* * * “Petroleum, gas and oil are
substances of a peculiar character. * *
* They belong to the owner of land,
and are part of it so long as they are
That case involved the same recycling project and the same defendants.
However, as will be seen from our discussion, infra, we find significant factual
distinctions between that case and the case sub judice
2

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part of it or in it or subject to his
control; but when they escape and go
into other land or come under
another’s control, the title of the
former owner is gone. If an adjoining
owner drills his own land and taps a
deposit of oil or gas extending under
his neighbor’s field, so that it comes
into his well, it becomes his property.”
***
(Quoting Brown v. Spilman, 155 U.S. 665, 15 S.Ct. 245, 39
L.Ed. 304 (1895)). Budd v. Ethyl Corp., supra, 474 S.W.2d
at 412.
Since Young’s tract is within the recycling area, the state
court’s disposition of Budd’s cause of action with respect
to the 240-acre tract is not controlling.
Having disposed of the cause of action with respect to the
tract lying outside of the recycling area, the Arkansas court
turned to Budd’s second cause of action, which was based
on a 40-acre tract which the court found to be within the
recycling area that is, within the defendants’ circle of
injection wells. Budd owned only an undivided leasehold
interest in the 40-acre tract, and the defendants owned all
the rest of the tract comprising the fee simple and the
remaining leasehold. Although the court could once again
have relied on the law of capture, it did not do so. 3 Instead,
it denied relief because of Budd’s limited interest in the
property. The court stressed that Budd owned only an
“inchoate” interest in the 40-acre tract: the right to drill for
minerals if he wished to do so. “Thus there is no trespass

3 The dissenter spoke as if he thought that the majority was applying the law of

capture to the tract within the recycling unit. See Budd v. Ethyl Corp., 251 Ark.
639, 474 S.W.2d 411, 414 (1971) (Byrd, J., dissenting). We do not read the
majority opinion to have done so.

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upon a vested existing property right * * * .”4 Id. 474
S.W.2d at 413. Since Young owns title to his tract in fee
simple, the state court’s disposition of Budd’s cause of
action with respect to the 40-acre tract is not controlling.
When pressed on the issue in oral argument, counsel for
the defendants conceded that the Arkansas Supreme Court
has not yet held that relief for an owner in fee simple is
barred by the rule of capture when minerals beneath his
land are forced to migrate to the property of another by
means of the other’s injection wells. Accordingly, the
District Court’s conclusion that the Arkansas law
controlling the issue is “clear, concise and unambiguous,”
was error. Since the issue has not been determined by the
highest court of the state, it is our task to rule as we believe
the Arkansas Supreme Court would rule, were the matter
squarely presented to it.5

4 Again, the court quoted from Osborn v. Arkansas Territorial Oil & Gas Co., 103

Ark. 175, 146 S.W. 122 (1912):
* * * “A gas lease, such as is involved in this case, is a
contract granting to the lessee the right to explore the land
and to produce therefrom the gas therein discovered. It is
not a present sale or transfer of title to the gas, but, on
account of its vagrant nature, the gas does not become
actually owned until actually possessed. As is said in the
case of Williamson v. Jones, 39 W.Va. 231, 19 S.E. 436:
‘The title is dependent on finding the gas by the purchaser
in a limited time,’ and is inchoate.”
Budd v. Ethyl Corp., supra, 474 S.W.2d at 413.

5 We have previously declared that “(t)he responsibility of the federal courts, in

matters of local law, is not to formulate the legal mind of the state, but merely to
ascertain and apply it.” Yoder v. Nu-Enamel Corp., 117 F.2d 488, 489 (8th Cir.
1941). This task becomes most difficult when state law is uncertain, but we must
not shun the responsibility:
When the rights of a litigant are dependent on the law of a
particular state, the court of the forum must do its best
(not its worst) to determine what that law is. It must use
its judicial brains, not a pair of scissors and a paste pot.
Our judicial process is not mere syllogistic deduction,
except as its worst. At its best, it is the wise and
experienced use of many sources in combination statutes,

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In our view, if the Supreme Court of Arkansas were faced
with this record, it would hold that the rule of capture does
not apply, and that the defendants’ actions in forcibly
removing valuable minerals from beneath Young’s land
constitute an actionable trespass. We have reached this
conclusion for two reasons.
First, we do not believe that the Arkansas Supreme Court
would extend a rule developed in the field of oil and gas to
the forced migration of minerals of different physical
properties. The rule of capture has been applied
exclusively,6 so far as we know, to the escape, seepage, or
drainage7 of “fugacious”8 minerals which occurs as an

judicial opinions, treatises, prevailing mores, custom,
business practices; it is history and economics and
sociology, and logic, both inductive and deductive. Shall a
litigant, by the accident of diversity of citizenship, be
deprived of the advantages of this judicial process? * * *
We must not forget that a litigant has only one day in
court. * * *
* * * Each litigant, whether in the federal or the state
courts, has a right that his case shall be a part of this
evolution a live cell in the tree of justice. * * *

Corbin, The Laws of the Several States, 50 Yale L.J. 762, 775-776 (1941).
6 As an example of a case where the forcing out of minerals was permitted, the

defendants cite Railroad Commission of Texas v. Manziel, 361 S.W.2d 560
(Tex.1962). The secondary recovery (injection) operation sustained in that case
had been ordered by a state agency to further the public policy of maximizing oil
recovery. Obviously, the authority of private actors is not coextensive with the
powers available to a state in exercising its police powers
7 I Summers, The Law of Oil and Gas §§ 61-65 (1954), and the cases cited therein,

consistently speak of “drainage” when discussing the rule of capture. See, e. g.,
Elliff v. Texon Drilling Co., 146 Tex. 575, 210 S.W.2d 558, 562 (1948): “It must
be conceded that under the law of capture there is no liability for reasonable and
legitimate drainage from the common pool.”
8 The Oxford English Dictionary (1971), defines “fugacious” as meaning “(a)pt to

flee away or flit,” and “fugacity” as meaning “volatile.”
8 * * * Because of the liquid and volatile nature of oil and
gas and their existence in the earth in sealed strata subject
to great pressures, one landowner in a common source of
supply cannot produce oil or gas therefrom without

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inevitable result of the tapping of a common reservoir. The
rule was adopted near the turn of the century primarily as a
rule of necessity when courts concluded that the amount of
oil and gas which drained toward a production well from
neighboring tracts was incapable of measurement. See
generally I Summers, The Law of Oil and Gas § 63 & n. 37
(1954). With the development of more sophisticated
knowledge of geology and a greater ability to measure the
amount of drainage, the absolutism with which some courts
continue to apply the rule of capture to oil and gas has
been criticized. See, e. g., id. at § 63. We agree with the
defendants that the Arkansas Supreme Court foreclosed
such arguments with respect to the drainage of minerals
from adjacent lands. But Young does not claim that he is
losing minerals due to seepage or drainage toward the
defendants’ production wells. Rather, he asserts, and has
established to the satisfaction of the District Court, that the
brine solution under his land would not migrate to the
defendants’ production wells but for the force exerted by
the injection wells; in other words, that the brine is
primarily “non-fugacious.” We believe that it would be
unwise to extend the rule to situations in which nonfugacious minerals are forced from beneath a landowner’s
property. Our conclusion in this respect is consistent with

actually or theoretically causing some displacement of the
oil or gas under his neighbor’s land. * * *

I Summers, The Law of Oil and Gas § 62 at 157 (1954).
9 * * * The term “correlative rights” is merely a
convenient metas legal privileges as against other owners
of land therein to take oil and gas therefras legal privileges
as against other owners of land therein to take oil and gas
therefrom by lawful operations conducted on his own
land limited, however, by duties to other owners not to
injure the source of supply and by duties not to take an
undue proportion of the oil and gas. In addition, of
course, to this aggregate of legal relations, each landowner
has duties to the public not to waste the oil and gas.
I Summers, The Law of Oil and Gas § 63 at 180-181 (1954).

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the fact that the Arkansas Supreme Court did not apply the
rule of capture to the 40-acre tract in Budd.
Second, even accepting the defendants’ contention that the
brine beneath Young’s land must be treated no differently
than would oil or gas, the common law rule of capture is
not a license to plunder. Rather, it has an important
corollary in the doctrine of “correlative rights.” This
doctrine allows owners of land to extract oil or gas from a
common pool, but posits two duties which limit the right
of a landowner to drain oil and gas from beneath adjacent
lands: (1) the duty to other owners not to injure the source
of supply; and (2) the duty not to take an undue proportion
of the oil and gas from the common pool. See I Summers,
The Law of Oil and Gas § 63 at 180-181 (1954). To violate
those duties is to abuse one’s correlative rights. This
corollary to the rule of capture has been codified in
Ark.Stat.Ann. § 53-109(I) (3), which prohibits, as an abuse
of correlative rights, “withdrawals causing undue drainage
between tracts of land.”9 If causing undue drainage is an
abuse of correlative rights, then a fortiori forcing static
minerals under one’s neighbor’s land to migrate amounts to
an abuse of those rights. The defendants would have us
ignore § 53-109(I)(3) by urging that salt water brine is not
governed by oil and gas law. They cannot have their cake
and eat it too; if the rule of capture is to be applied to salt

9 Ark.Stat.Ann. § 53-110 provides:

Waste of oil or gas as defined in this act is hereby
prohibited.

Section 53-109(I) provides:
“Waste” in addition to its ordinary meaning, shall mean
“physical waste” as that term is generally understood in
the oil and gas industry. It shall include:
(3) Abuse of the correlative rights and opportunities of
each owner of oil and gas in a common reservoir due to
nonuniform, disproportionate, and unratable withdrawals
causing undue drainage between tracts of land.

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water brine, the doctrine of correlative rights must likewise
be applied.
We conclude that the Supreme Court of Arkansas would
not apply the rule of capture to this situation and, hence,
would not need to proceed to the alternative question of
correlative rights. Accordingly, the appellant has a vested
existing property right in the brominated salt water
underlying his land, and the action of the defendants in
forcibly removing that solution by means of injection and
production wells on surrounding property constitutes an
actionable trespass. It was improper for the District Court
to dismiss the action. The order of dismissal is reversed,
and the cause remanded for further proceedings as to the
relief to be granted.
Elliff v. Texon Drilling Co., 210 S.W.2d 558 (Tex. 1948)
Boone, Boone & Davis, Kemp, Lewright, Dyer, Wilson &
Sorrell, and J. M. Wilson, all of Corpus Christi, for
petitioners.
Tarlton, Koch & Hale and McCampbell, Wood &
Kirkham, all of Corpus Christi, for respondents.
FOLLEY, Justice.
This is a suit by the petitioners, Mrs. Mabel Elliff, Frank
Elliff, and Charles C. Elliff, against the respondents, Texon
Drilling Company, a Texas corporation, Texon Royalty
Company, a Texas corporation, Texon Royalty Company, a
Delaware corporation, and John L. Sullivan, for damages
resulting from a “blowout” gas well drilled by respondents
in the Agua Dulce Field in Nueces County.
The petitioners owned the surface and certain royalty
interests in 3054.9 acres of land in Nueces County, upon
which there was a producing well known as Elliff No. 1.
They owned all the mineral estate underlying the west 1500
acres of the tract, and an undivided one-half interest in the

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mineral estate underlying the east 1554.9 acres. Both tracts
were subject to oil and gas leases, and therefore their
royalty interest in the west 1500 acres was one-eighth of the
oil or gas, and in the east 1554.9 acres was one-sixteenth of
the oil and gas.
It was alleged that these lands overlaid approximately fifty
per cent of a huge reservoir of gas and distillate and that
the remainder of the reservoir was under the lands owned
by Mrs. Clara Driscoll, adjoining the lands of petitioners on
the east. Prior to November 1936, respondents were
engaged in the drilling of Driscoll-Sevier No. 2 as an offset
well at a location 466 feet east of petitioners’ east line. On
the date stated, when respondents had reached a depth of
approximately 6838 feet, the well blew out, caught fire and
cratered. Attempts to control it were unsuccessful, and
huge quantities of gas, distillate and some oil were blown
into the air, dissipating large quantities from the reservoir
into which the offset well was drilled. When the DriscollSevier No. 2 well blew out, the fissure or opening in the
ground around the well gradually increased until it
enveloped and destroyed Elliff No. 1. The latter well also
blew out, cratered, caught fire and burned for several years.
Two water wells on petitioners’ land became involved in
the cratering and each of them blew out. Certain damages
also resulted to the surface of petitioners’ lands and to their
cattle thereon. The cratering process and the eruption
continued until large quantities of gas and distillate were
drained from under petitioners’ land and escaped into the
air, all of which was alleged to be the direct and proximate
result of the negligence of respondents in permitting their
well to blow out. The extent of the emissions from the
Driscoll-Sevier No. 2 and Elliff No. 1, and the two water
wells on petitioners’ lands, was shown at various times
during the several years between the blowout in November
1936, and the time of the trial in June 1946. There was also
expert testimony from petroleum engineers showing the

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extent of the losses from the underground reservior, which
computations extended from the date of the blowout only
up to June 1938. It was indicated that it was not feasible to
calculate the losses subsequent thereto, although lesser
emissions of gas continued even up to the time of the trial.
All the evidence with reference to the damages included all
losses from the reservoir beneath petitioners’ land without
regard to whether they were wasted and dissipated from
above the Driscoll land or from petitioners’ land.
The jury found that respondents were negligent in failing to
use drilling mud of sufficient weight in drilling their well,
and that such negligence was the proximate cause of the
well blowing out. It also found that petitioners had suffered
$4620 damage to sixty acres of the surface, and $1350 for
the loss of 27 head of cattle. The damages for the gas and
distillate wasted “from and under” the lands of petitioners,
due to respondents’ negligence, was fixed by the jury at
$78,580.46 for the gas, and $69,967.73 for the distillate.
These figures were based upon the respective fractional
royalty interests of petitioners in the whole amount wasted
under their two tracts of land, and at a value, fixed by the
court without objection by the parties, of two cents per
1000 cubic feet for the gas and $1.25 per barrel for the
distillate.
The findings as to the amount of drainage of gas and
distillate from beneath petitioners’ lands were based
primarily upon the testimony of petitioners’ expert witness,
C. J. Jennings, a petroleum engineer. He obtained his
information from drilling records and electric logs from the
high pressure Agua Dulce Field. He was thereby enabled to
fairly estimate the amount of gas and distillate. He had
definite information as to porosity and bottom-hole
pressure both before and after the blowout. He was able to
estimate the amount of gas wasted under the Elliff tract by
calculating the volume of the strata of sands and the voids
which were occupied by gas. Under his method of

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calculation the determining factor was the decrease in
bottom-hole pressures of the sands caused by the blowout.
He estimated that 13,096,717,000 cubic feet of gas had
been drained from the west 1500 acres of the Elliff land,
and that 57,625,728,000 cubic feet had been drained from
the east 1554.9 acres as a result of the blowout. The
distillate loss was calculated by taking the gas and distillate
ratio from the records of the Railroad Commission.
Jennings estimated that 195,713 barrels had been drained
from the west 1500 acres and 802,690 barrels from the east
1554.9 acres, as a result of the blowout.
On the findings of the jury the trial court rendered
judgment for petitioners for $154,518.19, which included
$148,548.19 for the gas and distillate, and $5970 for
damages to the land and cattle. The Court of Civil Appeals
reversed the judgment and remanded the cause. 210 S.W.2d
553.
The reversal by the Court of Civil Appeals rests upon two
grounds. The first was that since substantially all of the gas
and distillate which was drained from under petitioners’
lands was lost through respondents’ blowout well,
petitioners could not recover because under the law of
capture they had lost all property rights in the gas or
distillate which had migrated from their lands. The second
theory was that the recovery cannot stand because the trial
court had submitted the wrong measure of damages in that
petitioners’ claim “is for trespass in and to a freehold estate
in land and the proper measure of damage is the reasonable
cash market value before and after the occurrence
complained of.”
In our opinion the Court of Civil Appeals was without
authority to pass upon the propriety of the measure of
damages adopted by the trial court for the simple reason
that no such assignment was presented to that court.
Although such an objection was raised in the trial court, we
do not find an intimation of it brought forward to the

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Court of Civil Appeals. The question is therefore not
before us, and our subsequent conclusions as to the rights
of the parties are without reference to the correctness of
the measure of damages, and we express no opinion on
that question.
Consequently, our attention will be confined to the sole
question as to whether the law of capture absolves
respondents of any liability for the negligent waste or
destruction of petitioners’ gas and distillate, though
substantially all of such waste or destruction occurred after
the minerals had been drained from beneath petitioners’
lands.
We do not regard as authoritative the three decisions by the
Supreme Court of Louisiana to the effect that an adjoining
owner is without right of action for gas wasted from the
common pool by his neighbor, because in that state only
qualified ownership of oil and gas is recognized, no
absolute ownership of minerals in place exists, and the
unqualified rule is that under the law of capture the
minerals belong exclusively to the one that produces them.
Louisiana Gas & Fuel Co. v. White Bros., 157 La. 728, 103 So.
23; McCoy v. Arkansas Naturals Gas Co., 175 La. 487, 143 So.
383, 85 A.L.R. 1147, certiorari denied 287 U.S. 661, 53 S.Ct.
220, 77 L.Ed. 570; McCoy v. Arkansas Natural Gas Co., 184
La. 101, 165 So. 632. Moreover, from an examination of
those cases it will be seen that the decisions rested in part
on the theory that “the loss complained of was, manifestly,
more a matter of uncertainty and speculation than of fact
or estimate.” In the more recent trend of the decisions of
our state, with the growth and development of scientific
knowledge of oil and gas, it is now recognized “that when
all oil field has been fairly tested and developed, experts can
determine approximately the amount of oil and gas in place
in a common pool, and can also equitably determine the
amount of oil and gas recoverable by the owner of each
tract of land under certain operating conditions.” Brown v.

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Humble Oil & Refining Co., 126 Tex. 296, 83 S.W.2d 935,
940,87 S.W.2d 1069,99 A.L.R. 1107,101 A.L.R. 1393.
In Texas, and in other jurisdictions, a different rules exists
as to ownership. In our state the landowner is regarded as
having absolute title in severalty to the oil and gas in place
beneath his land. Lemar v. Garner, 121 Tex. 502, 50 S.W.2d
769; Humphreys-Mexia Co. v. Gammon, 113 Tex. 247, 254
S.W. 296, 29 A.L.R. 607; Waggoner Estate v. Sigler Oil Co., 118
Tex. 509, 19 S.W.2d 27; Texas Co. v. Daugherty, 107 Tex.
226, 176 S.W. 717, L.R.A. 1917F, 989. The only
qualification of that rule of ownership is that it must be
considered in connection with the law of capture and is
subject to police regulations. Brown v. Humble Oil & Refining
Co., supra. The oil and gas beneath the soil are considered a
part of the realty. Each owner of land owns separately,
distinctly and exclusively all the oil and gas under his land
and is accorded the usual remedies against trespassers who
appropriate the minerals or destroy their market value.
Peterson v. Grayce Oil Co., Tex.Civ.App., 37 S.W.2d 367,
affirmed 128 Tex. 550, 98 S.W.2d 781; Comanche Duke Oil
Co. v. Texas Pac. Coal & Oil Co., Tex.Com.App., 298 S.W.
554; Calor Oil & Gas Co. v. Franzell, 128 Ky. 715, 109 S.W.
328; Louisville Gas Co. v. Kentucky Heating Co., 117 Ky. 71, 77
S.W. 368, 70 L.R.A. 558, 111 Am.St.Rep. 225; Id., 132 Ky.
435, 111 S.W. 374; Ross v. Damm, 278 Mich. 388, 270 N.W.
722; 31A Tex.Jur. 911, Sec. 530; Id. 924, Sec. 537; 24
Am.Jur. 641, Sec. 159.
The conflict in the decisions of the various states with
reference to the character of ownership is traceable to some
extent to the divergent views entertained by the courts,
particularly in the earlier cases, as to the nature and
migratory character of oil and gas in the soil. 31A Tex.Jur.
24, Sec. 5. In the absence of common law precedent, and
owing to the lack of scientific information as to the
movement of these minerals, some of the courts have
sought by analogy to compare oil and gas to other types of

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property such as wild animals, birds, subterranean waters
and other migratory things, with reference to which the
common law had established rules denying any character of
ownership prior to capture. However, as was said by
Professor A. W. Walker, Jr., of the School of Law of the
University of Texas: “There is no oil or gas producing state
today which follows the wild-animal analogy to its logical
conclusion that the landowner has no property interest in
the oil and gas in place.” 16 T.L.R. 370, 371. In the light of
modern scientific knowledge these early analogies have
been disproven, and courts generally have come to
recognize that oil and gas, as commonly found in
underground reservoirs, are securely entrapped in a static
condition in the original pool, and, ordinarily, so remain
until disturbed by penetrations from the surface. It is
further established, nevertheless, that these minerals will
migrate across property lines towards any low pressure area
created by production from the common pool. This
migratory character of oil and gas has given rise to the socalled rule or law of capture. That rule simply is that the
owner of a tract of land acquires title to the oil or gas which
he produces from wells on his land, though part of the oil
or gas may have migrated from adjoining lands. He may
thus appropriate the oil and gas that have flowed from
adjacent lands without the consent of the owner of those
lands, and without incurring liability to him for drainage.
The non-liability is based upon the theory that after the
drainage the title or property interest of the former owner
is gone. This rule, at first blush, would seem to conflict
with the view of absolute ownership of the minerals in
place, but it was otherwise decided in the early case of
Stephens County v. Mid-Kansas Oil & Gas Co., 1923, 113 Tex.
160, 254 S.W. 290, 29 A.L.R. 566. Mr. Justice Greenwood
there stated, 113 Tex. 167, 254 S.W. 292, 29 A.L.R. 566:
The objection lacks substantial
foundation that gas or oil in a certain

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tract of land cannot be owned in place,
because subject to appropriation,
without the consent of the owner of
the tract, through drainage from wells
on adjacent lands. If the owners of
adjacent lands have the right to
appropriate, without liability, the gas
and oil underlying their neighbor’s
land, then their neighbor has the
correlative right to appropriate,
through like methods of drainage, the
gas and oil underlying the tracts
adjacent to his own.
Thus it is seen that, notwithstanding the fact that oil and
gas beneath the surface are subject both to capture and
administrative regulation, the fundamental rule of absolute
ownership of the minerals in place is not affected in our
state. In recognition of such ownership, our courts, in
decisions involving well-spacing regulations of our Railroad
Commission, have frequently announced the sound view
that each landowner should be afforded the opportunity to
produce his fair share of the recoverable oil and gas
beneath his land, which is but another way of recognizing
the existence of correlative rights between the various
landowners over a common reservoir of oil or gas.
It must be conceded that under the law of capture there is
no liability for reasonable and legitimate drainage from the
common pool. The landowner is privileged to sink as many
wells as he desires upon his tract of land and extract
therefrom and appropriate all the oil and gas that he may
produce, so long as he operates within the spirit and
purpose of conservation statutes and orders of the Railroad
Commission. These laws and regulations are designed to
afford each owner a reasonable opportunity to produce his
proportionate part of the oil and gas from the entire pool
and to prevent operating practices injurious to the common
reservoir. In this manner, if all operators exercise the same

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degree of skill and diligence, each owner will recover in
most instances his fair share of the oil and gas. This
reasonable opportunity to produce his fair share of the oil
and gas is the landowner’s common law right under our
theory of absolute ownership of the minerals in place. But
from the very nature of this theory the right of each land
holder is qalified, and is limited to legitimate operations.
Each owner whose land overlies the basin has a like
interest, and each must of necessity exercise his right with
some regard to the rights of others. No owner should be
permitted to carry on his operations in reckless or lawless
irresponsibility, but must submit to such limitations as are
necessary to enable each to get his own. Hague v. Wheeler,
157 Pa. 324, 27 A. 714, 717,22 L.R.A. 141, 37 Am.St.Rep.
736.
While we are cognizant of the fact that there is a certain
amount of reasonable and necessary waste incident to the
production of oil and gas to which the non-liability rule
must also apply, we do not think this immunity should be
extended so as to include the negligent waste or destruction
of the oil and gas.
In 1 Summers, Oil and Gas, Perm. Ed., s 63 correlative
rights of owners of land in a common source of supply of
oil and gas are discussed and described in the following
language:
These existing property relations,
called the correlative rights of the
owners of land in the common source
of supply, were not created by the
statute, but held to exist because of the
peculiar physical facts of oil and gas.
The term “correlative rights” is merely
a convenient method of indicating that
each owner of land in a common
source of supply of oil and gas has
legal privileges as against other owners

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of land therein to take oil or gas
therefrom by lawful operations
conducted on his own land; that each
such owner has duties to the other
owners not to exercise his privileges of
taking so as to injure the common
source of supply; and that each such
owner has rights that other owners not
exercise their privileges of taking so as
to injure the common source of
supply.
In 85 A.L.R. 1156, in discussing the case of Hague v.
Wheeler, supra, the annotator states:
* * * The fact that the owner of the
land has a right to take and to use gas
and oil, even to the diminution or
exhaustion of the supply under his
neighbor’s land, does not give him the
right to waste the gas. His property in
the gas underlying his land consists of
the right to appropriate the same, and
permitting the gas to escape into the
air is not an appropriation thereof in
the proper sense of the term.
In like manner, the negligent waste and destruction of
petitioners’ gas and distillate was neither a legitimate
drainage of the minerals from beneath their lands nor a
lawful or reasonable appropriation of them. Consequently,
the petitioners did not lose their right, title and interest in
them under the law of capture. At the time of their removal
they belonged to petitioners, and their wrongful dissipation
deprived these owners of the right and opportunity to
produce them. That right is forever lost, the same cannot
be restored, and petitioners are without an adequate legal
remedy unless we allow a recovery under the same
common law which governs other actions for damages and

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under which the property rights in oil and gas are vested.
This remedy should not be denied.
In common with others who are familiar with the nature of
oil and gas and the risks involved in their production, the
respondents had knowledge that a failure to use due care in
drilling their well might result in a blowout with the
consequent waste and dissipation of the oil, gas and
distillate from the common reservoir. In the conduct of
one’s business or in the use and exploitation of one’s
property, the law imposes upon all persons the duty to
exercise ordinary care to avoid injury or damage to the
property of others. Thus under the common law, and
independent of the conservation statutes, the respondents
were legally bound to use due care to avoid the negligent
waste or destruction of the minerals imbedded in
petitioners’ oil and gas-bearing strata. This common-law
duty the respondents failed to discharge. For that omission
they should be required to respond in such damages as will
reasonably compensate the injured parties for the loss
sustained as the proximate result of the negligent conduct.
The fact that the major portion of the gas and distillate
escaped from the well on respondents’ premises is
immaterial. Irrespective of the opening from which the
minerals escaped, they belonged to the petitioners and the
loss was the same. They would not have been dissipated at
any opening except for the wrongful conduct of the
respondents. Being responsible for the loss they are in no
position to deny liability because the gas and distillate did
not escape through the surface of petitioners’ lands.
We are therefore of the opinion the Court of Civil Appeals
erred in holding that under the law of caputre the
petitioners cannot recover for the damages resulting from
the wrongful drainage of the gas and distillate from beneath
their lands. However, we cannot affirm the judgment of the
trial court because there is an assignment of error in the
Court of Civil Appeals challenging the sufficiency of the

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evidence to support the findings of the jury on the amount
of the damages, and another charging that the verdict was
excessive. We have no jurisdiction of those assignments,
and, since they have not been passed upon, the judgment
of the Court of civil Appeals is reversed and the cause
remanded to that court for consideration of all assignments
except those herein decided. McKenzie Construction Co. v. City
of San Antonio, 131 Tex. 474, 115 S.W.2d 617; Ritchie v.
American Surety Co. of New York, 145 Tex. 422, 198 S.W.2d
85, and authorities cited.
2.3. Review
Review Problems
1. Now that we have read cases defining the concept of possession,
return to the case of Bridges v. Hawkesworth. Argue, contrary to the
court’s decision in that case, that the shop owner is the first
possessor, and thus owner, of the notes that were found on his
shop floor.
2. Which of the following most directly rebuts a “Lockean labor
theory” argument that a litigant, call him A, should be declared the
owner of an object: (a) A committed a moral wrong in the course
of acquiring the object, (b) A is richer than B, who has a much
greater need for the object, or (c) granting rights to A would create
incentives for conduct that is more harmful than beneficial. Why?
(Points awarded only for the explanation.)
3. In Terry v. Lock, the appellate court decides that the trial court’s
decision that the found money was mislaid was not “clearly
erroneous.” We’ve seen that appellate courts generally review legal
determinations of trial courts “de novo,” that is without any
deference to the trial court’s determination or reasoning. Why is
this more deferential standard used in Terry, and why might it be
justified?
4. Is the “substantial and unreasonable” test, used to determine
whether there is a nuisance, a rule or a standard? Argue against this
test based only the test’s status as a rule or standard. (That is, act
like you’re a litigant attacking the test, and make an argument that,

283

if translated, would work as well against any rule or any standard,
depending on which you think the nuisance test is.)
5. Would you need to show evidence of harm to sue successfully a
jet engine test facility operating near a residential neighborhood
that routinely emits sound above levels safe for human ears?
Would you need to show evidence of harm to sue successfully such
a facility if it were silent but leaked small quantities of jet fuel onto
some of the residences? Explain.
6. Take Garrett Hardin’s classic example of a pasture open, say, to
six unrelated herdsmen. If Coase’s Theorem applies in this
situation, will there be a tragedy of the commons? Why or why
not? If your answer is yes, explain how. If your answer is no,
explain which element necessary for the tragedy to occur would not
be present. What would change if we assumed that the pasture was
continuously open to new herdsmen, beyond the original six?
Explain.
7. If I move into a residence in an industrial area in which there are
almost no other residences, and I sue in nuisance a large factory
that is both extremely loud and covering my property in significant
levels of smoke, will I be able to get an injunction? Will I be able to
do so if I pay damages to the factory? Explain.
Essay Problem
According to legend, the pirate Gorefiend was killed shortly before
his ship ran ashore in what is now the state of Carolorgia. His
fellow pirates buried Gorefiend well upland from the beach, up in
the dunes. Because they could not agree on how to divide
Gorefiend’s valuables, the story goes, they buried him with a fair
number of gold and silver objects. Within days, the pirates were
captured. Some were sentenced to death and others to long prison
terms.
Alfonso Allen stumbled onto the two-hundred-year-old story while
working as a tour guide at a historical fort, where some of
Gorefiend’s crew had been held. Among the many documents and
artifacts in the museum’s store rooms was a book that had caught
Alfonso’s eye and had occupied all of his spare time since. Through

284

exhaustive research, Alfonso was able to decipher the notations in
the book, finally concluding that it pinpointed the location of
Gorefiend’s burial. Using software to model beach erosion and
coastline changes, Alfonso generated a map showing the current
location of the site: a forested area of Beach Bum Billy’s, a private
beach club not far away from the fort.
Though Billy’s was a private and invitation-only club, once each
year on March 17 the club invited the public to join a beachside
fundraiser for the local children’s hospital. Seizing the chance,
Alfonso showed up, paid the entrance fee, grabbed a drink at the
cabana, and under cover of darkness headed toward the forested
southern corner of the club.
Among the trees, Alfonso was shocked to find an exposed
skeleton, apparently eroded out of the ground, with scraps of old
leather clothing tying the corpse to Gorefiend’s era. Alfonso spied
several gold doubloons and silver jewelry, tarnished but visible
amongst the bones. Unprepared to map the site and inventory the
find, Alfonso placed markers on nearby trees displaying his name
and phone number, with a message that this historically significant
find should not be disturbed. With that, he headed home, and
excitedly posted an article describing his find (but withholding the
precise location) on an internet site dedicated to amateur
archaeology.
Unbeknownst to Alfonso, he had been followed by another visitor
to the club, Craig Crawford, who suspected from Alfonso’s haste
that something unusual was up. Craig hid in the bushes and later
made off with as much gold as he could carry without raising
suspicions. Everything unravelled, though, when a Billy’s employee
spotted Craig’s overstuffed pockets. Upon being caught, he
reluctantly handed over the gold and the location of the find.
After much back and forth, in which Alfonso was made aware of
what had happened and after all concerned had spoken with
lawyers, Craig sued Billy’s for ownership of the gold. Alfonso
intervened and sued Craig and Billy’s. Fully analyze the possible
claims and defenses of these three parties.

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Answers
1. Now that we have read cases defining the concept of possession,
return to the case of Bridges v. Hawkesworth. Argue, contrary to the
court’s decision in that case, that the shop owner is the first
possessor, and thus owner, of the notes that were found on his
shop floor.
Whatever additional claims the shop owner in Bridges may
have to the money as a landowner, he should be declared the
owner as the first possessor of the lost property. Possession is
defined as the intent to possess or control an object together
with physical actions manifesting that intent. Precisely what
acts are required varies with context. A landowner should be
deemed to intend to possess all lost goods on his or her
property, because most landowner do indeed intend to
control the objects on their land – even if they are unaware of
the objects’ whereabouts or even existence at any given
moment. In any event, an intent to control access to the land
is sufficient intent to control access to things on the land. The
landowner maintains physical control over the land by
controlling entry and setting the terms on which one is
allowed to stay on the land. Even if a landowner opens up to
the general public, he or she is not required to do this and
may revoke consent at any time. The physical control the
landowner in this case clearly exerted over the land is
sufficient to communicate an intent to control all of the
property contained on the land, including lost property.
2. Which of the following most directly rebuts a “Lockean labor
theory” argument that a litigant, call him A, should be declared the
owner of an object: (a) A committed a moral wrong in the course
of acquiring the object, (b) A is richer than B, who has a much
greater need for the object, or (c) granting rights to A would create
incentives for conduct that is more harmful than beneficial. Why?
(Points awarded only for the explanation.)

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Locke’s labor theory asserts that one has a natural right to the
fruits of one’s labors. This is a matter of justice and flows
from the inalienable, god-given right to one’s body and thus
one’s labors. The commission of a moral wrong in the course
of acquiring an object most directly negatives what would
otherwise be the moral justification for recognizing ownership
by virtue of the acquisition. That is, if the reason we give
laborers the fruits of their labors is because it is morally
required, proof that an acquisition was immoral would most
clearly negate that reason.
3. In Terry v. Lock, the appellate court decides that the trial court’s
decision that the found money was mislaid was not “clearly
erroneous.” We’ve seen that appellate courts generally review legal
determinations of trial courts “de novo,” that is without any
deference to the trial court’s determination or reasoning. Why is
this more deferential standard used in Terry, and why might it be
justified?
The clearly erroneous standard is used to review the factual
findings of the lower court. The court that actually heard and
saw the evidence is, the theory goes, in a better position to
evaluate that evidence and reach conclusions about its validity.
Courts generally, though not always, review legal
determinations of trial courts de novo, without any deference,
because appellate courts are at no comparative disadvantage in
determining what the law is or should be.
4. Is the “substantial and unreasonable” test, used to determine
whether there is a nuisance, a rule or a standard? Argue against this
test based only the test’s status as a rule or standard. (That is, act
like you’re a litigant attacking the test, and make an argument that,
if translated, would work as well against any rule or any standard,
depending on which you think the nuisance test is.)
The substantial and unreasonable test is well over on the
“standards” end of the rule-standard spectrum. It does not
provide an objective, non-controversial measure of what is

287

and what is not a nuisance. One might argue this is a bad
thing, because it fails to provide people with clear notice of
what will be considered a nuisance. This harms planning, by
leading people mistakenly to avoid uses that in fact would not
be considered nuisances or perhaps to make uses that will be
considered nuisances.
5. Would you need to show evidence of harm to sue successfully a
jet engine test facility operating near a residential neighborhood
that routinely emits sound above levels safe for human ears?
Would you need to show evidence of harm to sue successfully such
a facility if it were silent but leaked small quantities of jet fuel onto
some of the residences? Explain.
Because noise would be considered “intangible” by most
courts, loud noise, if actionable, will be regulated as a
nuisance. To prove a nuisance, one needs to show harm. By
contrast, jet fuel, even in small quantities, is a tangible object.
Leaks onto the property of another would constitute a
trespass, which does not require a showing of harm.
6. Take Garrett Hardin’s classic example of a pasture open, say, to
six unrelated herdsmen. If Coase’s Theorem applies in this
situation, will there be a tragedy of the commons? Why or why
not? If your answer is yes, explain how. If your answer is no,
explain which element necessary for the tragedy to occur would not
be present. What would change if we assumed that the pasture was
continuously open to new herdsmen, beyond the original six?
Explain.
If we assume Coase’s Theorem applies, it means that the
parties will negotiate an efficient result whatever the external
legal rules governing their conduct happen to be. A tragedy
will not occur in such a scenario, because the parties are
cooperating through their negotiation. If the pasture were
continually open to new entrants, it is hard to imagine that
this cooperation could last. Each new entrant would need to
be paid off, eventually exhausting the resources of existing

288

herdsmen. Indeed, new people would show up, if they had a
legal right to use the pasture, simply to get a pay-off. In
addition, as the number of herdsmen increases, the costs of
bargaining increase as well. Eventually, without sophisticated
governance mechanisms, these transaction costs would
become too unwieldy to reach a deal.
7. If I move into a residence in an industrial area in which there are
almost no other residences, and I sue in nuisance a large factory
that is both extremely loud and covering my property in significant
levels of smoke, will I be able to get an injunction? Will I be able to
do so if I pay damages to the factory? Explain.
If the factory were there first, most courts would decide that I
had “come to the nuisance.” This is a defense to nuisance,
meaning that courts will generally hold there is no nuisance at
all under such facts. Going further, most courts would not, in
this case, give me the Spur remedy: the ability to shut down
the factory if I pay damages (in Calabresi language: protection
of the factory, but only with a liability rule). Unlike in Spur,
there are not many other residences impacted by the factory.
Rather there are a great many other industrial concerns. Thus,
it is unlikely that a court would decide that the costs of the
factory’s activities (to both me and unrepresented third parties
- like the residents of Sun City in Spur) greatly exceed its
benefits. Given that, it would not make sense to order the
factory shut down, even on payment of damages.
Essay Answer
On a recent test, I assigned points for this problem as follows:
Discussion of abandonment / treasure
trove status of property: 2 Clearly
stated definition of possession and setup to argue: 2 Argument leading to a
“contextualized”
definition
of
possession:
3
Application
of
contextualized possession rule to facts:

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2 Discussion of landowner claims to
objects based on mere ownership and
embedded: 3 Argument concerning
possible different treatment as burial
goods: 2 Argument that landowner
would win if finder(s) declared
trespassers: 1 Spotting a trespass issue
and stating the law of trespass: 1
Recognizing consent as the difficult
issue and establishing the principle: 2
Application of consent rule to facts: 1
Obviously, there are other issues and arguments that could be
made, and to the extent decent arguments are made, I reflect them
on the score sheet.

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3. Acquisition by Creation
3.1. Unfair Competition
International News Service v. Associated Press, 248
U.S. 215 (1918)
Messrs. Samuel Untermyer, of New York City, Hiram W.
Johnson, of San Francisco, Cal., and Henry A. Wise and
William A De Ford, both of New York City, for petitioner.
Mr. Frederic W. Lehmann, of St. Louis, Mo., for respondent.
MR. JUSTICE PITNEY delivered the opinion of the Court.
The parties are competitors in the gathering and
distribution of news and its publication for profit in
newspapers throughout the United States. The Associated
Press, which was complainant in the District Court, is a cooperative
organization,
incorporated
under
the
Membership Corporations Law of the state of New York,
its members being individuals who are either proprietors or
representatives of about 950 daily newspapers published in
all parts of the United States. That a corporation may be
organized under that act for the purpose of gathering news
for the use and benefit of its members and for publication
in newspapers owned or represented by them, is recognized
by an amendment enacted in 1901 (Laws N. Y. 1901, c.
436). Complainant gathers in all parts of the world, by
means of various instrumentalities of its own, by exchange
with its members, and by other appropriate means, news
and intelligence of current and recent events of interest to
newspaper readers and distributes it daily to its members
for publication in their newspapers. The cost of the service,
amounting approximately to $3,500,000 per annum, is
assessed upon the members and becomes a part of their
costs of operation, to be recouped, presumably with profit,
through the publication of their several newspapers. Under
complainant’s by-laws each member agrees upon assuming
membership that news received through complainant’s

service is received exclusively for publication in a particular
newspaper, language, and place specified in the certificate
of membership, that no other use of it shall be permitted,
and that no member shall furnish or permit any one in his
employ or connected with his newspaper to furnish any of
complainant’s news in advance of publication to any person
not a member. And each member is required to gather the
local news of his district and supply it to the Associated
Press and to no one else.
Defendant is a corporation organized under the laws of the
state of New Jersey, whose business is the gathering and
selling of news to its customers and clients, consisting of
newspapers published throughout the United States, under
contracts by which they pay certain amounts at stated times
for defendant’s service. It has widespread news-gathering
agencies; the cost of its operations amounts, it is said, to
more than $2,000,000 per annum; and it serves about 400
newspapers located in the various cities of the United
States and abroad, a few of which are represented, also, in
the membership of the Associated Press.
The parties are in the keenest competition between
themselves in the distribution of news throughout the
United States; and so, as a rule, are the newspapers that
they serve, in their several districts.
Complainant in its bill, defendant in its answer, have set
forth in almost identical terms the rather obvious
circumstances and conditions under which their business is
conducted. The value of the service, and of the news
furnished, depends upon the promptness of transmission,
as well as upon the accuracy and impartiality of the news; it
being essential that the news be transmitted to members or
subscribers as early or earlier than similar information can
be furnished to competing newspapers by other news
services, and that the news furnished by each agency shall
not be furnished to newspapers which do not contribute to

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the expense of gathering it. And further, to quote from the
answer:
Prompt knowledge and publication of
worldwide news is essential to the
conduct of a modern newspaper, and
by reason of the enormous expense
incident to the gathering and
distribution of such news, the only
practical way in which a proprietor of
a newspaper can obtain the same is,
either through co-operation with a
considerable number of other
newspaper proprietors in the work of
collecting and distributing such news,
and the equitable division with them
of the expenses thereof, or by the
purchase of such news from some
existing agency engaged in that
business.
The bill was filed to restrain the pirating of complainant’s
news by defendant in three ways: First, by bribing employes
of newspapers published by complainant’s members to
furnish Associated Press news to defendant before
publication, for transmission by telegraph and telephone to
defendant’s clients for publication by them; second, by
inducing Associated Press members to violate its by-laws
and permit defendant to obtain news before publication;
and, third, by copying news from bulletin boards and from
early editions of complainant’s newspapers and selling this,
either bodily or after rewriting it, to defendant’s customers.
The District Court, upon consideration of the bill and
answer, with voluminous affidavits on both sides, granted a
preliminary injunction under the first and second heads, but
refused at that stage to restrain the systematic practice
admittedly pursued by defendant, of taking news bodily
from the bulletin boards and early editions of complainant’s

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newspapers and selling it as its own. The court expressed
itself as satisfied that this practice amounted to unfair trade,
but as the legal question was one of first impression it
considered that the allowance of an injunction should await
the outcome of an appeal. 240 Fed. 983, 996. Both parties
having appealed, the Circuit Court of Appeals sustained the
injunction order so far as it went, and upon complainant’s
appeal modified it and remanded the cause, with directions
to issue an injunction also against any bodily taking of the
words or substance of complainant’s news until its
commercial value as news had passed away. 245 Fed. 244,
253. The present writ of certiorari was then allowed. 245 U.
S. 644.
The only matter that has been argued before us is whether
defendant may lawfully be restrained from appropriating
news taken from bulletins issued by complainant or any of
its members, or from newspapers published by them, for
the purpose of selling it to defendant’s clients. Complainant
asserts that defendant’s admitted course of conduct in this
regard both violates complainant’s property right in the
news and constitutes unfair competition in business. And
notwithstanding the case has proceeded only to the stage of
a preliminary injunction, we have deemed it proper to
consider the underlying questions, since they go to the very
merits of the action and are presented upon facts that are
not in dispute. As presented in argument, these questions
are: (1) Whether there is any property in news; (2) Whether,
if there be property in news collected for the purpose of
being published, it survives the instant of its publication in
the first newspaper to which it is communicated by the
news-gatherer; and (3) whether defendant’s admitted course
of conduct in appropriating for commercial use matter
taken from bulletins or early editions of Associated Press
publications constitutes unfair competition in trade.
The federal jurisdiction was invoked because of diversity of
citizenship, not upon the ground that the suit arose under

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the copyright or other laws of the United States.
Complainant’s news matter is not copyrighted. It is said
that it could not, in practice, be copyrighted, because of the
large number of dispatches that are sent daily; and,
according to complainant’s contention, news is not within
the operation of the copyright act. Defendant, while
apparently conceding this, nevertheless invokes the
analogies of the law of literary property and copyright,
insisting as its principal contention that, assuming
complainant has a right of property in its news, it can be
maintained (unless the copyright act by complied with) only
by being kept secret and confidential, and that upon the
publication with complainant’s consent of uncopyrighted
news of any of complainant’s members in a newspaper or
upon a bulletin board, the right of property is lost, and the
subsequent use of the news by the public or by defendant
for any purpose whatever becomes lawful.
A preliminary objection to the form in which the suit is
brought may be disposed of at the outset. It is said that the
Circuit Court of Appeals granted relief upon considerations
applicable to particular members of the Associated Press,
and that this was erroneous because the suit was brought
by complainant as a corporate entity, and not by its
members; the argument being that their interests cannot be
protected in this proceeding any more than the individual
rights of a stockholder can be enforced in an action
brought by the corporation. From the averments of the bill,
however, it is plain that the suit in substance was brought
for the benefit of complainant’s members, and that they
would be proper parties, and, except for their numbers,
perhaps necessary parties. Complainant is a proper party to
conduct the suit as representing their interest; and since no
specific objection, based upon the want of parties, appears
to have been made below, we will treat the objection as
waived. See Equity Rules 38, 43, 44 (33 Sup. Ct. xxix, xxx).

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In considering the general question of property in news
matter, it is necessary to recognize its dual character,
distinguishing between the substance of the information
and the particular form or collocation of words in which
the writer has communicated it.
No doubt news articles often possess a literary quality, and
are the subject of literary property at the common law; nor
do we question that such an article, as a literary production,
is the subject of copyright by the terms of the act as it now
stands. In an early case at the circuit Mr. Justice Thompson
held in effect that a newspaper was not within the
protection of the copyright acts of 1790 (1 Stat. 124) and
1802 (2 Stat. 171). Clayton v. Stone, 2 Paine, 382. But the
present act is broader; it provides that the works for which
copyright may be secured shall include ‘all the writings of
an author,’ and specifically mentions ‘periodicals, including
newspapers.’ Act of March 4, 1909, c. 320, §§ 4 and 5, 35
Stat. 1075, 1076. Evidently this admits to copyright a
contribution to a newspaper, notwithstanding it also may
convey news; and such is the practice of the copyright
office, as the newspapers of the day bear witness. See
Copyright Office Bulletin No. 15 (1917) pp. 7, 14, 16, 17.
But the news element – the information respecting current
events contained in the literary production – is not the
creation of the writer, but is a report of matters that
ordinarily are publici juris; it is the history of the day. It is
not to be supposed that the framers of the Constitution,
when they empowered Congress ‘to promote the progress
of science and useful arts, by securing for limited times to
authors and inventors the exclusive right to their respective
writings and discoveries’ (Const. art. 1, § 8, par. 8), intended
to confer upon one who might happen to be the first to
report a historic event the exclusive right for any period to
spread the knowledge of it.
We need spend no time, however, upon the general
question of property in news matter at common law, or the

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application of the copyright act, since it seems to us the
case must turn upon the question of unfair competition in
business. And, in our opinion, this does not depend upon
any general right of property analogous to the common-law
right of the proprietor of an unpublished work to prevent
its publication without his consent; nor is it foreclosed by
showing that the benefits of the copyright act have been
waived. We are dealing here not with restrictions upon
publication but with the very facilities and processes of
publication. The peculiar value of news is in the spreading
of it while it is fresh; and it is evident that a valuable
property interest in the news, as news, cannot be
maintained by keeping it secret. Besides, except for matters
improperly disclosed, or published in breach of trust or
confidence, or in violation of law, none of which is
involved in this brance of the case, the news of current
events may be regarded as common property. What we are
concerned with is the business of making it known to the
world, in which both parties to the present suit are engaged.
That business consists in maintaining a prompt, sure,
steady, and reliable service designed to place the daily
events of the world at the breakfast table of the millions at
a price that, while of trifling moment to each reader, is
sufficient in the aggregate to afford compensation for the
cost of gathering and distributing it, with the added profit
so necessary as an incentive to effective action in the
commercial world. The service thus performed for
newspaper readers is not only innocent but extremely
useful in itself, and indubitably constitutes a legitimate
business. The parties are competitors in this field; and, on
fundamental principles, applicable here as elsewhere, when
the rights or privileges of the one are liable to conflict with
those of the other, each party is under a duty so to conduct
its own business as not unnecessarily or unfairly to injure
that of the other. Hitchman Coal & Coke Co. v. Mitchell,
245 U. S. 229, 254.

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Obviously, the question of what is unfair competition in
business must be determined with particular reference to
the character and circumstances of the business. The
question here is not so much the rights of either party as
against the public but their rights as between themselves.
See Morison v. Moat, 9 Hare, 241, 258. And, although we
may and do assume that neither party has any remaining
property interest as against the public in uncopyrighted
news matter after the moment of its first publication, it by
no means follows that there is no remaining property
interest in it as between themselves. For, to both of them
alike, news matter, however little susceptible of ownership
or dominion in the absolute sense, is stock in trade, to be
gathered at the cost of enterprise, organization, skill, labor,
and money, and to be distributed and sold to those who
will pay money for it, as for any other merchandise.
Regarding the news, therefore, as but the material out of
which both parties are seeking to make profits at the same
time and in the same field, we hardly can fail to recognize
that for this purpose, and as between them, it must be
regarded as quasi property, irrespective of the rights of
either as against the public.
….
The question, whether one who has gathered general
information or news at pains and expense for the purpose
of subsequent publication through the press has such an
interest in its publication as may be protected from
interference, has been raised many times, although never,
perhaps, in the precise form in which it is now presented.
Board of Trade v. Christie Grain & Stock Co., 198 U. S.
236, 250, related to the distribution of quotations of prices
on dealings upon a board of trade, which were collected by
plaintiff and communicated on confidential terms to
numerous persons under a contract not to make them
public. This court held that, apart from certain special
objections that were overruled, plaintiff’s collection of

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quotations was entitled to the protection of the law; that,
like a trade secret, plaintiff might keep to itself the work
done at its expense, and did not lose its right by
communicating the result to persons, even if many, in
confidential relations to itself, under a contract not to make
it public; and that strangers should be restrained from
getting at the knowledge by inducing a breach of trust.
In National Tel. News Co. v. Western Union Tel. Co., 119
Fed. 294, the Circuit Court of Appeals for the Seventh
Circuit dealt with news matter gathered and transmitted by
a telegraph company, and consisting merely of a notation
of current events having but a transient value due to quick
transmission and distribution; and, while declaring that this
was not copyrightable although printed on a tape by tickers
in the offices of the recipients, and that it was a commercial
not a literary product, nevertheless held that the business of
gathering and communicating the news – the service of
purveying it was a legitimate business, meeting a distinctive
commercial want and adding to the facilities of the business
world, and partaking of the nature of property in a sense
that entitled it to the protection of a court of equity against
piracy.
Other cases are cited, but none that we deem it necessary
to mention.
Not only do the acquisition and transmission of news
require elaborate organization and a large expenditure of
money, skill, and effort; not only has it an exchange value
to the gatherer, dependent chiefly upon its novelty and
freshness, the regularity of the service, its reputed reliability
and thoroughness, and its adaptability to the public needs;
but also, as is evident, the news has an exchange value to
one who can misappropriate it.
The peculiar features of the case arise from the fact that,
while novelty and freshness form so important an element
in the success of the business, the very processes of

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distribution and publication necessarily occupy a good deal
of time. Complainant’s service, as well as defendant’s, is a
daily service to daily newspapers; most of the foreign news
reaches this country at the Atlantic seaboard, principally at
the city of New York, and because of this, and of time
differentials due to the earth’s rotation, the distribution of
news matter throughout the country is principally from east
to west; and, since in speed the telegraph and telephone
easily outstrip the rotation of the earth, it is a simple matter
for defendant to take complainant’s news from bulletins or
early editions of complainant’s members in the eastern
cities and at the mere cost of telegraphic transmission cause
it to be published in western papers issued at least as warly
as those served by complainant. Besides this, and
irrespective of time differentials, irregularities in telegraphic
transmission on different lines, and the normal
consumption of time in printing and distributing the
newspaper, result in permitting pirated news to be placed in
the hands of defendant’s readers sometimes simultaneously
with the service of competing Associated Press papers,
occasionally even earlier.
Defendant insists that when, with the sanction and
approval of complainant, and as the result of the use of its
news for the very purpose for which it is distributed, a
portion of complainant’s members communicate it to the
general public by posting it upon bulletin boards so that all
may read, or by issuing it to newspapers and distributing it
indiscriminately, complainant no longer has the right to
control the use to be made of it; that when it thus reaches
the light of day it becomes the common possession of all to
whom it is accessible; and that any purchaser of a
newspaper has the right to communicate the intelligence
which it contains to anybody and for any purpose, even for
the purpose of selling it for profit to newspapers published
for profit in competition with complainant’s members.

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The fault in the reasoning lies in applying as a test the right
of the complainant as against the public, instead of
considering the rights of complainant and defendant,
competitors in business, as between themselves. The right
of the purchaser of a single newspaper to spread knowledge
of its contents gratuitously, for any legitimate purpose not
unreasonably interfering with complainant’s right to make
merchandise of it, may be admitted; but to transmit that
news for commercial use, in competition with complainant
– which is what defendant has done and seeks to justify – is
a very different matter. In doing this defendant, by its very
act, admits that it is taking material that has been acquired
by complainant as the result of organization and the
expenditure of labor, skill, and money, and which is salable
by complainant for money, and that defendant in
appropriating it and selling it as its own is endeavoring to
reap where it has not sown, and by disposing of it to
newspapers that are competitors of complainant’s members
is appropriating to itself the harvest of those who have
sown. Stripped of all disguises, the process amounts to an
unauthorized interference with the normal operation of
complainant’s legitimate business precisely at the point
where the profit is to be reaped, in order to divert a
material portion of the profit from those who have earned
it to those who have not; with special advantage to
defendant in the competition because of the fact that it is
not burdened with any part of the expense of gathering the
news. The transaction speaks for itself and a court of equity
ought not to hesitate long in characterizing it as unfair
competition in business.
….
The contention that the news is abandoned to the public
for all purposes when published in the first newspaper is
untenable. Abandonment is a question of intent, and the
entire organization of the Associated Press negatives such a
purpose. The cost of the service would be prohibited if the

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reward were to be so limited. No single newspaper, no
small group of newspapers, could sustain the expenditure.
Indeed, it is one of the most obvious results of defendant’s
theory that, by permitting indiscriminate publication by
anybody and everybody for purposes of profit in
competition with the news-gatherer, it would render
publication profitless, or so little profitable as in effect to
cut off the service by rendering the cost prohibitive in
comparison with the return. The practical needs and
requirements of the business are reflected in complainant’s
by-laws which have been referred to. Their effect is that
publication by each member must be deemed not by any
means an abandonment of the news to the world for any
and all purposes, but a publication for limited purposes; for
the benefit of the readers of the bulletin or the newspaper
as such; not for the purpose of making merchandise of it as
news, with the result of depriving complainant’s other
members of their reasonable opportunity to obtain just
returns for their expenditures.
It is to be observed that the view we adopt does not result
in giving to complainant the right to monopolize either the
gathering or the distribution of the news, or, without
complying with the copyright act, to prevent the
reproduction of its news articles, but only postpones
participation by complainant’s competitor in the processes
of distribution and reproduction of news that it has not
gathered, and only to the extent necessary to prevent that
competitor from reaping the fruits of complainant’s efforts
and expenditure, to the partial exclusion of complainant.
and in violation of the principle that underlies the maxim
‘sic utere tuo,’ etc.
It is said that the elements of unfair competition are lacking
because there is no attempt by defendant to palm off its
goods as those of the complainant, characteristic of the
most familiar, if not the most typical, cases of unfair
competition. Howe Scale Co. v. Wyckoff, Seamans, etc.,

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198 U. S. 118, 140. But we cannot concede that the right to
equitable relief is confined to that class of cases. In the
present case the fraud upon complainant’s rights is more
direct and obvious. Regarding news matter as the mere
material from which these two competing parties are
endeavoring to make money, and treating it, therefore, as
quasi property for the purposes of their business because
they are both selling it as such, defendant’s conduct differs
from the ordinary case of unfair competition in trade
principally in this that, instead of selling its own goods as
those of complainant, it substitutes misappropriation in the
place of misrepresentation, and sells complainant’s goods
as its own.
Besides the misappropriation, there are elements of
imitation, of false pretense, in defendant’s practices. The
device of rewriting complainant’s news articles, frequently
resorted to, carries its own comment. The habitual failure
to give credit to complainant for that which is taken is
significant. Indeed, the entire system of appropriating
complainant’s news and transmitting it as a commercial
product to defendant’s clients and patrons amounts to a
false representation to them and to their newspaper readers
that the news transmitted is the result of defendant’s own
investigation in the field. But these elements, although
accentuating the wrong, are not the essence of it. It is
something more than the advantage of celebrity of which
complainant is being deprived.
The doctrine of unclean hands is invoked as a bar to relief;
it being insisted that defendant’s practices against which
complainant seeks an injunction are not different from the
practice attributed to complainant, of utilizing defendant’s
news published by its subscribers. At this point it becomes
necessary to consider a distinction that is drawn by
complainant, and, as we understand it, was recognized by
defendant also in the submission of proofs in the District
Court, between two kinds of use that may be made by one

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news agency of news taken from the bulletins and
newspapers of the other. The first is the bodily
appropriation of a statement of fact or a news article, with
or without rewriting, but without independent investigation
or other expense. This form of pirating was found by both
courts to have been pursued by defendant systematically
with respect to complainant’s news, and against it the
Circuit Court of Appeals granted an injunction. This
practice complainant denies having pursued and the denial
was sustained by the finding of the District Court. It is not
contended by defendant that the finding can be set aside,
upon the proofs as they now stand. The other use is to take
the news of a rival agency as a ‘tip’ to be investigated, and if
verified by independent investigation the news thus
gathered is sold. This practice complainant admits that it
has pursued and still is willing that defendant shall employ.
Both courts held that complainant could not be debarred
on the ground of unclean hands upon the score of pirating
defendant’s news, because not shown to be guilty of
sanctioning this practice.
As to securing ‘tips’ from a competing news agency the
District Court (240 Fed. 991, 995), while not sanctioning
the practice, found that both parties had adopted it in
accordance with common business usage, in the belief that
their conduct was technically lawful, and hence did not find
in it any sufficient ground for attributing unclean hands to
complainant. The Circuit Court of Appeals (245 Fed. 247,
157) found that the tip habit, though discouraged by
complainant, was ‘incurably journalistic,’ and that there was
‘no difficulty in discriminating between the utilization of
tips and the bodily appropriation of another’s labor in
accumulating and stating information.’
We are inclined to think a distinction may be drawn
between the utilization of tips and the bodily appropriation
of news matter, either in its original form or after rewriting
and without independent investigation and verification;

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whatever may appear at the final hearing, the proofs as they
now stand recognize such a distinction; both parties
avowedly recognize the practice of taking tips, and neither
party alleges it to be unlawful or to amount to unfair
competition in business. In a line of English cases a
somewhat analogous practice has been held not to amount
to an infringement of the copyright of a directory or other
book containing compiled information. In Kelly v. Morris,
L. R. 1 Eq. 697, 701, 702, Vice Chancellor Sir William Page
Wood (afterwards Lord Hatherly), dealing with such a case,
said that defendant was
not entitled to take one word of the
information previously published
without independently working out the
matter for himself, so as to arrive at
the same result from the same
common sources of information, and
the only use that he can legitimately
make of a previous publication is to
verify his own calculations and results
when obtained.
This was followed by Vice Chancellor Giffard in Morris v.
Ashbee, L. R. 7 Eq. 34, where he said:
In a case such as this no one has a
right to take the results of the labour
and expense incurred by another for
the purposes of a rival publication, and
thereby save himself the expense and
labour of working out and arriving at
these results by some independent
road.
A similar view was adopted by Lord Chancellor Hatherly
and the former Vice Chancellor, then Giffard, L. J., in Pike
v. Nicholas, L. R. 5 Ch. App. Cas. 251, and shortly
afterwards by the latter judge in Morris v. Wright, L. R. 5

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Ch. App. Cas. 279, 287, where he said, commenting upon
Pike v. Nicholas:
It was a perfectly legitimate course for
the defendant to refer to the plaintiff’s
book, and if, taking that book as his
guide, he went to the original
authorities and compiled his book
from them, he made no unfair or
improper use of the plaintiff’s book;
and so here, if the fact be that Mr.
Wright used the plaintiff’s book in
order to guide himself to the persons
on whom it would be worth his while
to call, and for no other purpose, he
made a perfectly legitimate use of the
plaintiff’s book.
A like distinction was recognized by the Circuit Court of
Appeals for the Second Circuit in Edward Thompson Co.
v. American Law Book Co., 122 Fed. 922 and in West Pub.
Co. v. Edward Thompson Co., 176 Fed. 833, 838.
In the case before us, in the present state of the pleadings
and proofs, we need go no further than to hold, as we do,
that the admitted pursuit by complainant of the practice of
taking news items published by defendant’s subscribers as
tips to be investigated, and, if verified, the result of the
investigation to be sold – the practice having been followed
by defendant also, and by news agencies generally – is not
shown to be such as to constitute an unconscientious or
inequitable attitude towards its adversary so as to fix upon
complainant the taint of unclean hands, and debar it on this
ground from the relief to which it is otherwise entitled.
There is some criticism of the injunction that was directed
by the District Court upon the going down of the mandate
from the Circuit Court of Appeals. In brief, it restrains any
taking or gainfully using of the complainant’s news, either
bodily or in substance from bulletins issued by the

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complainant or any of its members, or from editions of
their newspapers, ’until its commercial value as news to the
complainant and all of its members has passed away.’ The part
complained of is the clause we have italicized; but if this be
indefinite, it is no more so than the criticism. Perhaps it
would be better that the terms of the injunction be made
specific, and so framed as to confine the restraint to an
extent consistent with the reasonable protection of
complainant’s newspapers, each in its own area and for a
specified time after its publication, against the competitive
use of pirated news by defendant’s customers. But the case
presents practical difficulities; and we have not the
materials, either in the way of a definite suggestion of
amendment, or in the way of proofs, upon which to frame
a specific injunction; hence, while not expressing approval
of the form adopted by the District Court, we decline to
modify it at this preliminary stage of the case, and will leave
that court to deal with the matter upon appropriate
application made to it for the purpose.
The decree of the Circuit court of Appeals will be
Affirmed.
Mr. Justice CLARKE took no part in the consideration or
decision of this case.
MR. JUSTICE HOLMES, dissenting.
When an uncopyrighted combination of words is published
there is no general right to forbid other people repeating
them – in other words there is no property in the
combination or in the thoughts or facts that the words
express. Property, a creation of law, does not arise from
value, although exchangeable – a matter of fact. Many
exchangeable values may be destroyed intentionally without
compensation. Property depends upon exclusion by law
from interference, and a person is not excluded from using
any combination of words merely because some one has
used it before, even if it took labor and genius to make it. If

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a given person is to be prohibited from making the use of
words that his neighbors are free to make some other
ground must be found. One such ground is vaguely
expressed in the phrase unfair trade. This means that the
words are repeated by a competitor in business in such a
way as to convey a misrepresentation that materially injures
the person who first used them, by appropriating credit of
some kind which the first user has earned. The ordinary
case is a representation by device, appearance, or other
indirection that the defendant’s goods come from the
plaintiff. But the only reason why it is actionable to make
such a representation is that it tends to give the defendant
an advantage in his competition with the plaintiff and that
it is thought undesirable that an advantage should be gained
in that way. Apart from that the defendant may use such
unpatented devices and uncopyrighted combinations of
words as he likes. The ordinary case, I say, is palming off
the defendant’s product as the plaintiff’s but the same evil
may follow from the opposite falsehood – from saying
whether in words or by implication that the plaintiff’s
product is the defendant’s, and that, it seems to me, is what
has happened here.
Fresh news is got only by enterprise and expense. To
produce such news as it is produced by the defendant
represents by implication that it has been acquired by the
defendant’s enterprise and at its expense. When it comes
from one of the great news collecting agencies like the
Associated Press, the source generally is indicated, plainly
importing that credit; and that such a representation is
implied may be inferred with some confidence from the
unwillingness of the defendant to give the credit and tell
the truth. If the plaintiff produces the news at the same
time that the defendant does, the defendant’s presentation
impliedly denies to the plaintiff the credit of collecting the
facts and assumes that credit to the defendant. If the
plaintiff is later in Western cities it naturally will be

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supposed to have obtained its information from the
defendant. The falsehood is a little more subtle, the injury,
a little more indirect, than in ordinary cases of unfair trade,
but I think that the principle that condemns the one
condemns the other. It is a question of how strong an
infusion of fraud is necessary to turn a flavor into a poison.
The does seems to me strong enough here to need a
remedy from the law. But as, in my view, the only ground
of complaint that can be recognized without legislation is
the implied misstatement, it can be corrected by stating the
truth; and a suitable acknowledgment of the source is all
that the plaintiff can require. I think that within the limits
recognized by the decision of the Court the defendant
should be enjoined from publishing news obtained from
the Associated Press for hours after publication by the
plaintiff unless it gives express credit to the Associated
Press; the number of hours and the form of
acknowledgment to be settled by the District Court.
Mr. Justice McKENNA concurs in this opinion.
MR. JUSTICE BRANDEIS, dissenting.
There are published in the United States about 2,500 daily
papers. More than 800 of them are supplied with domestic
and foreign news of general interest by the Associated
Press – a corporation without capital stock which does not
sell news or earn or seek to earn profits, but serves merely
as an instrumentality by means of which these papers
supply themselves at joint expense with such news. Papers
not members of the Associated Press depend for their
news of general interest largely upon agencies organized for
profit. Among these agen cies is the International News
Service which supplies news to about 400 subscribing
papers. It has, like the Associated Press, bureaus and
correspondents in this and foreign countries; and its annual
expenditures in gathering and distributing news is about
$2,000,000. Ever since its organization in 1909, it has
included among the sources from which it gathers news,

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copies (purchased in the open market of early editions of
some papers published by members of the Associated Press
and the bulletins publicly posted by them. These items,
which constitute but a small part of the news transmitted to
its subscribers, are generally verified by the International
News Service before transmission; but frequently items are
transmitted without verification; and occasionally even
without being re-written. In no case is the fact disclosed
that such item was suggested by or taken from a paper or
bulletin published by an Associated Press member.
No question of statutory copyright is involved. The sole
question for our consideration is this: Was the International
News Service properly enjoined from using, or causing to
be used gainfully, news of which it acquired knowledge by
lawful means (namely, by reading publicly posted bulletins
or papers purchased by it in the open market) merely
because the news had been originally gathered by the
Associated Press and continued to be of value to some of
its members, or because it did not reveal the source from
which it was acquired?
The ‘ticker’ cases, the cases concerning literary and artistic
compositions, and cases of unfair competition were relied
upon in support of the injunction. But it is admitted that
none of those cases affords a complete analogy with that
before us. The question presented for decision is new, and
it is important.
News is a report of recent occurrences. The business of the
news agency is to gather systematically knowledge of such
occurrences of interest and to distribute reports thereof.
The Associated Press contended that knowledge so
acquired is property, because it costs money and labor to
produce and because it has value for which those who have
it not are ready to pay; that it remains property and is
entitled to protection as long as it has commercial value as
news; and that to protect it effectively, the defendant must
be enjoined from making, or causing to be made, any

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gainful use of it while it retains such value. An essential
element of individual property is the legal right to exclude
others from enjoying it. If the property is private, the right
of exclusion may be absolute; if the property is affected
with a public interest, the right of exclusion is qualified. But
the fact that a product of the mind has cost its producer
money and labor, and has a value for which others are
willing to pay, is not sufficient to ensure to it this legal
attribute of property. The general rule of law is, that the
noblest of human productions – knowledge, truths
ascertained, conceptions, and ideas – became, after
voluntary communication to others, free as the air to
common use. Upon these incorporeal productions the
attribute of property is continued after such
communication only in certain classes of cases where public
policy has seemed to demand it. These exceptions are
confined to productions which, in some degree, involve
creation, invention, or discovery. But by no means all such
are endowed with this attribute of property. The creations
which are recognized as property by the common law are
literary, dramatic, musical, and other artistic creations; and
these have also protection under the copyright statutes. The
inventions and discoveries upon which this attribute of
property is conferred only by statute, are the few comprised
within the patent law. There are also many other cases in
which courts interfere to prevent curtailment of plaintiff’s
enjoyment of incorporal productions; and in which the
right to relief is often called a property right, but is such
only in a special sense. In those cases, the plaintiff has no
absolute right to the protection of his production; he has
merely the qualified right to be protected as against the
defendant’s acts, because of the special relation in which
the latter stands or the wrongful method or means
employed in acquiring the knowledge or the manner in
which it is used. Protection of this character is afforded
where the suit is based upon breach of contract or of trust
or upon unfair competition.

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The knowledge for which protection is sought in the case
at bar is not of a kind upon which the law has heretofore
conferred the attributes of property; nor is the manner of
its acquisition or use nor the purpose to which it is applied,
such as has heretofore been recognized as entitling a
plaintiff to relief.
First. Plaintiff’s principal reliance was upon the ‘ticker’
cases; but they do not support its contention. The leading
cases on this subject rest the grant of relief, not upon the
existence of a general property right in news, but upon the
breach of a contract or trust concerning the use of news
communicated; and that element is lacking here… . .
….
If the news involved in the case at bar had been posted in
violation of any agreement between the Associated Press
and its members, questions similar to those in the ‘ticker’
cases might have arisen. But the plaintiff does not contend
that the posting was wrongful or that any papers were
wrongfully issued by its subscribers. On the contrary it is
conceded that both the bulletins and the papers were issued
in accordance with the regulations of the plaintiff. Under
such circumstances, for a reader of the papers purchased in
the open market, or a reader of the bulletins publicly
posted, to procure and use gainfully, information therein
contained, does not involve inducing any one to commit a
breach either of contract or of trust, or committing or in
any way abetting a breach of confidence.
Second. Plaintiff also relied upon the cases which hold that
the common law right of the producer to prohibit copying
is not lost by the private circulation of a literary
composition, the delivery of a lecture, the exhibition of a
painting, or the performance of a dramatic or musical
composition. These cases rest upon the ground that the
common law recognizes such productions as property
which, despite restricted communication, continues until

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there is a dedication to the public under the copyright
statutes or otherwise. But they are inapplicable for two
reasons: (1) At common law, as under the copyright acts,
intellectual productions are entitled to such protection only
if there is underneath something evincing the mind of a
creator or originator, however modest the requirement.
The mere record of isolated happenings, whether in words
or by photographs not involving artistic skill, are denied
such protection. (2) At common law, as under the
copyright acts, the element in intellectual productions
which secures such protection, is not the knowledge, truths,
ideas, or emotions which the composition expresses, but
the form or sequence in which they are expressed; that is,
‘some new collocation of visible or audible points – of
lines, colors, sounds, or words.’ See White-Smith Music Co.
v. Apollo Co., 209 U. S. 1, 19; Kalem Co. v. Harper Bros.,
222 U. S. 55, 63. An author’s theories, suggestions, and
speculations, or the systems, plans, methods, and
arrangements of an originator, derive no such protection
from the statutory copyright of the book in which they are
set forth; and they are likewise denied such protection at
common law.
That news is not property in the strict sense is illustrated by
the case of Sports and General Press Agency, Ltd., v. ‘Our
Dogs’ Publishing Co., Ltd., [1916] 2 K. B. 880, where the
plaintiff, the assignee of the right to photograph the
exhibits at a dog show, was refused an injunction against
defendant who had also taken pictures of the show and was
publishing them. The court said that, except in so far as the
possession of the land occupied by the show enabled the
proprietors to exclude people or permit them on condition
that they agree not to take photographs (which condition
was not imposed in that case), the proprietors had no
exclusive right to photograph the show and could therefore
grant no such right. And it was further stated that, at any
rate, no matter what conditions might be imposed upon

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those entering the grounds, if the defendant had been on
top of a house or in some position where he could
photograph the show without interfering with the physical
property of the plaintiff, the plaintiff would have no right
to stop him. If, when the plaintiff creates the event
recorded, he is not entitled to the exclusive first publication
of the news (in that case a photograph) of the event, no
reason can be shown why he should be accorded such
protection as to events which he simply records and
transmits to other parts of the world, though with great
expenditure of time and money.
Third. If news be treated as possessing the characteristics
not of a trade secret, but of literary property, then the
earliest issue of a paper of general circulation or the earliest
public posting of a bulletin which embodies such news
would, under the established rules governing literary
property, operate as a publication, and all property in the
news would then cease. Resisting this conclusion, plaintiff
relied upon the cases which hold that uncopyrighted
intellectual and artistic property survives private circulation
or a restricted publication; and it contended that in each
issue of each paper, a restriction is to be implied, that the
news shall not be used gainfully in competition with the
Associated Press or any of its members. There is no basis
for such an implication. But it is, also, well settled that
where the publication is in fact a general one – even
express words of restriction upon use are inoperative. In
other words, a general publication is effective to dedicate
literary property to the public, regardless of the actual
intent of its owner. In the cases dealing with lectures,
dramatic and musical performances, and art exhibitions,
upon which plaintiff relied, there was no general
publication in print comparable to the issue of daily
newspapers or the unrestricted public posting of bulletins.
The principles governing those cases differ more or less in
application, if not in theory, from the principles governing

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the issue of printed copies; and in so far as they do differ,
they have no application to the case at bar.
Fourth. Plaintiff further contended that defendant’s
practice constitutes unfair competition, because there is
‘appropriation without cost to itself of values created by’
the plaintiff; and it is upon this ground that the decision of
this court appears to be based. To appropriate and use for
profit, knowledge and ideas produced by other men,
without making compensation or even acknowledgment,
may be inconsistent with a finer sense of propriety; but,
with the exceptions indicated above, the law has heretofore
sanctioned the practice. Thus it was held that one may
ordinarily make and sell anything in any form, may copy
with exactness that which another has produced, or may
otherwise use his ideas without his consent and without the
payment of compensation, and yet not inflict a legal injury;
and that ordinarily one is at perfect liberty to find out, if he
can by lawful means, trade secrets of another, however
valuable, and then use the knowledge so acquired gainfully,
although it cost the original owner much in effort and in
money to collect or produce.
Such taking and gainful use of a product of another which,
for reasons of public policy, the law has refused to endow
with the attributes of property, does not become unlawful
because the product happens to have been taken from a
rival and is used in competition with him. The unfairness in
competition which hitherto has been recognized by the law
as a basis for relief, lay in the manner or means of
conducting the business; and the manner or means held
legally unfair, involves either fraud or force or the doing of
acts otherwise prohibited by law. In the ‘passing off’ cases
(the typical and most common case of unfair competition),
the wrong consists in fraudulently representing by word or
act that defendant’s goods are those of plaintiff. See
Hanover Milling Co. v. Metcalf, 240 U. S. 403, 412, 413. In
the other cases, the diversion of trade was effected through

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physical or moral coercion, or by inducing breaches of
contract or of trust or by enticing away employes. In some
others, called cases of simulated competition, relief was
granted because defendant’s purpose was unlawful; namely,
not competition but deliberate and wanton destruction of
plaintiff’s business.
That competition is not unfair in a legal sence, merely
because the profits gained are unearned, even if made at the
expense of a rival, is shown by many cases besides those
referred to above. He who follows the pioneer into a new
market, or who engages in the manufacture of an article
newly introduced by another, seeks profits due largely to
the labor and expense of the first adventurer; but the law
sanctions, indeed encourages, the pursuit. He who makes a
city known through his product, must submit to sharing the
resultant trade with others who, perhaps for that reason,
locate there later. Canal Co. v. Clark, 13 Wall. 311; Elgin
National Watch Co. v. Illinois Watch Co., 179 U. S. 665,
673. He who has made his name a guaranty of quality,
protests in vain when another with the same name engages,
perhaps for that reason, in the same lines of business;
provided, precaution is taken to prevent the public from
being deceived into the belief that what he is selling, was
made by his competitor. One bearing a name made famous
by another is permitted to enjoy the unearned benefit
which necessarily flows from such use, even though the use
proves harmful to him who gave the name value. Brown
Chemical Co. v. Meyer, 139 U. S. 540, 544 [other citations
omitted].
The means by which the International News Service
obtains news gathered by the Associated Press is also
clearly unobjectionable. It is taken from papers bought in
the open market or from bulletins publicly posted. No
breach of contract such as the court considered to exist in
Hitchman Coal & Coke Co. v. Mitchell, 245 U. S. 229, 254,
or of trust such as was present in Morison v. Moat, 9 Hare,

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241, and neither fraud nor force is involved. The manner of
use is likewise unobjectionable. No reference is made by
word or by act to the Associated Press, either in
transmitting the news to subscribers or by them in
publishing it in their papers. Neither the International
News Service nor its subscribers is gaining or seeking to
gain in its business a benefit from the reputation of the
Associated Press. They are merely using its product without
making compensation. See Bamforth v. Douglass Post
Card & Machine Co. (C. C.) 158 Fed. 355; Tribune Co. of
Chicago v. Associated Press (C. C.) 116 Fed. 126. That they
have a legal right to do, because the product is not
property, and they do not stand in any relation to the
Associated Press, either of contract or of trust, which
otherwise precludes such use. The argument is not
advanced by characterizing such taking and use a
misappropriation.
It is also suggested that the fact that defendant does not
refer to the Associated Press as the source of the news may
furnish a basis for the relief. But the defendant and its
subscribers, unlike members of the Associated Press, were
under no contractual obligation to disclose the source of
the news; and there is no rule of law requiring
acknowledgment to be made where uncopyrighted matter is
reproduced. The International News Service is said to
mislead its subscribers into believing that the news
transmitted was originally gathered by it and that they in
turn mislead their readers. There is, in fact, no
representation by either of any kind. Sources of
information are sometimes given because required by
contract; sometimes because naming the source gives
authority to an otherwise incredible statement; and
sometimes the source is named because the agency does
not wish to take the responsibility itself of giving currency
to the news. But no representation can properly be implied
from omission to mention the source of information

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except that the International News Service is transmitting
news which it believes to be credible.
Nor is the use made by the International News Service of
the information taken from papers or bulletins of
Associated Press members legally objectionable by reason
of the purpose for which it was employed. The acts here
complained of were not done for the purpose of injuring
the business of the Associated Press. Their purpose was
not even to divert its trade, or to put it at a disadvantage by
lessening defendant’s necessary expenses. The purpose was
merely to supply subscribers of the International News
Service promptly with all available news. The suit is, as this
court declares, in substance one brought for the benefit of
the members of the Associated Press, who would be
proper, and except for their number perhaps necessary,
parties; and the plaintiff conducts the suit as representing
their interests. It thus appears that the protection given by
the injunction is not actually to the business of the
complainant news agency; for this agency does not sell
news nor seek to earn profits, but is a mere instrumentality
by which 800 or more newspapers collect and distribute
news. It is these papers severally which are protected; and
the protection afforded is not from competition of the
defendant, but from possible competition of one or more
of the 400 other papers which receive the defendant’s
service. Furthermore, the protection to these Associated
Press members consists merely in denying to other papers
the right to use as news, information which by authority of
all concerned, had theretofore been given to the public by
some of those who joined in gathering it; and to which the
law denies the attributes of property. There is in
defendant’s purpose nothing on which to base a claim for
relief.
It is further said that, while that for which the Associated
Press spends its money is too fugitive to be recognized as
property in the common-law courts, the defendant cannot

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be heard to say so in a court of equity, where the question
is one of unfair competition. The case presents no elements
of equitable title or of breach of trust. The only possible
reason for resort to a court of equity in a case like this is
that the remedy which the law gives is inadequate. If the
plaintiff has no legal cause of action, the suit necessarily
fails. Levy v. Walker, L. R. 10 Ch. D. 436, 449. There is
nothing in the situation of the parties which can estop the
defendant from saying so.
Fifth. The great development of agencies now furnishing
country-wide distribution of news, the vastness of our
territory, and improvements in the means of transmitting
intelligence, have made it possible for a news agency or
newspapers to obtain, without paying compensation, the
fruit of another’s efforts and to use news so obtained
gainfully in competition with the original collector. The
injustice of such action is obvious. But to give relief against
it would involve more than the application of existing rules
of law to new facts. It would require the making of a new
rule in analogy to existing ones. The unwritten law
possesses capacity for growth; and has often satisfied new
demands for justice by invoking analogies or by expanding
a rule or principle. This process has been in the main wisely
applied and should not be discontinued. Where the
problem is relatively simple, as it is apt to be when private
interests only are involved, it generally proves adequate. But
with the increasing complexity of society, the public
interest tends to become omnipresent; and the problems
presented by new demands for justice cease to be simple.
Then the creation or recognition by courts of a new private
right may work serious injury to the general public, unless
the boundaries of the right are definitely established and
wisely guarded. In order to reconcile the new private right
with the public interest, it may be necessary to prescribe
limitations and rules for its enjoyment; and also to provide
administrative machinery for enforcing the rules. It is

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largely for this reason that, in the effort to meet the many
new demands for justice incident to a rapidly changing
civilization, resort to legislation has latterly been had with
increasing frequency.
The rule for which the plaintiff contends would effect an
important extension of property rights and a corresponding
curtailment of the free use of knowledge and of ideas; and
the facts of this case admonish us of the danger involved in
recognizing such a property right in news, without
imposing upon news-gatherers corresponding obligations.
A large majority of the newspapers and perhaps half the
newspaper readers of the United States are dependent for
their news of general interest upon agencies other than the
Associated Press. The channel through which about 400 of
these papers received, as the plaintiff alleges, ‘a large
amount of news relating to the European war of the
greatest importance and of intense interest to the
newspaper reading public’ was suddenly closed. The closing
to the International News Service of these channels for
foreign news (if they were closed) was due not to
unwillingness on its part to pay the cost of collecting the
news, but to the prohibitions imposed by foreign
governments upon its securing news from their respective
countries and from using cable or telegraph lines running
therefrom. For aught that appears, this prohibition may
have been wholly undeserved; and at all events the 400
papers and their readers may be assumed to have been
innocent. For aught that appears, the International News
Service may have sought then to secure temporarily by
arrangement with the Associated Press the latter’s foreign
news service. For aught that appears, all of the 400
subscribers of the International News Service would gladly
have then become members of the Associated Press, if they
could have secured election thereto. It is possible, also, that
a large part of the readers of these papers were so situated
that they could not secure prompt access to papers served

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by the Associated Press. The prohibition of the foreign
governments might as well have been extended to the
channels through which news was supplied to the more
than a thousand other daily papers in the United States not
served by the Associated Press; and a large part of their
readers may also be so located that they cannot procure
prompt access to papers served by the Associated Press.
A Legislature, urged to enact a law by which one news
agency or newspaper may prevent appropriation of the
fruits of its labors by another, would consider such facts
and possibilities and others which appropriate inquiry
might disclose. Legislators might conclude that it was
impossible to put an end to the obvious injustice involved
in such appropriation of news, without opening the door to
other evils, greater than that sought to be remedied. Such
appears to have been the opinion of our Senate which
reported unfavorably a bill to give news a few hours’
protection; and which ratified, on February 15, 1911, the
convention adopted at the Fourth International American
Conference; and such was evidently the view also of the
signatories to the International Copyright Union of
November 13, 1908, as both these conventions expressly
exclude news from copyright protection.
Or legislators dealing with the subject might conclude, that
the right to news values should be protected to the extent
of permitting recovery of damages for any unauthorized
use, but that protection by injunction should be denied, just
as courts of equity ordinarily refuse (perhaps in the interest
of free speech) to restrain actionable libels, and for other
reasons decline to protect by injunction mere political
rights;and as Congress has prohibited courts from
enjoining the illegal assessment or collection of federal
taxes. If a Legislature concluded to recognize property in
published news to the extent of permitting recovery at law,
it might, with a view to making the remedy more certain

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and adequate, provide a fixed measure of damages, as in the
case of copyright infringement.
Or again, a Legislature might conclude that it was unwise to
recognize even so limited a property right in published
news as that above indicated; but that a news agency
should, on some conditions, be given full protection of its
business; and to that end a remedy by injunction as well as
one for damages should be granted, where news collected
by it is gainfully used without permission. If a Legislature
concluded (as at least one court has held, New York and
Chicago Grain and Stock Exchange v. Board of Trade, 127
Ill. 153) that under certain circumstances news-gathering is
a business affected with a public interest; it might declare
that, in such cases, news should be protected against
appropriation, only if the gatherer assumed the obligation
of supplying it at resonable rates and without
discrimination, to all papers which applied therefor. If
legislators reached that conclusion, they would probably go
further, and prescribe the conditions under which and the
extent to which the protection should be afforded; and they
might also provide the administrative machinery necessary
for insuring to the public, the press, and the news agencies,
full enjoyment of the rights so conferred.
Courts are ill-equipped to make the investigations which
should precede a determination of the limitations which
should be set upon any property right in news or of the
circumstances under which news gathered by a private
agency should be deemed affected with a public interest.
Courts would be powerless to prescribe the detailed
regulations essential to full enjoyment of the rights
conferred or to introduce the machinery required for
enforcement of such regulations. Considerations such as
these should lead us to decline to establish a new rule of
law in the effort to redress a newly disclosed wrong,
although the propriety of some remedy appears to be clear.

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Outline of INS v. AP
Three opinions: Pitney (majority); Holmes; Brandeis
In a nutshell:
Pitney: AP has relative title to news it gathers such that it can
prevent competitors from free riding for some period after it
is first reported. This is in order to keep alive the incentive to
gather news.
Holmes: The harm here is only that INS is publishing news
under its name that in fact was gathered by the AP potentially misleading consumers about the source of the
news. INS should be required to credit AP but no more.
Brandeis: Just because there is value in news does not mean
that the initial gatherer should receive the legal right to
exclude others from using and reporting that news. There is
value in free riding, at least where, as here, the public isn’t
confused about the source of news. The law does not protect
creators of value in every case, only in certain areas (patent
and copyright, for example). And in any event, establishing
exclusion rights in news is a change that will affect the
interests of the general public and getting the balance right
will require careful review of the industry and, perhaps,
administrative machinery that courts are not in the best
position to provide. This issue should be left to the legislature.
Majority opinion
I. Background and posture of the case


Background on industry and organization of INS and AP.



Allegations: Injury exists in taking the advantage of
freshness



Procedural history - we’re here on an an interlocutory
appeal from the grant of a preliminary injunction.



Only issue is whether INS can use news published by AP,
on bulletin boards or in papers, as the sole basis for its own
stories.



This is a case raising only state law issues of unfair
competition (the parties are diverse, coming from different
states, thus giving fed courts jurisdiction) - not copyright.
Copyright would only protect the expression, the literary
quality or wording of news stories, not the facts that form
the basis of the stories. And the facts are all that was taken
here.

II. Positive Legal Analysis


News is valuable because it is, well, new. Those in the news
business compete to report facts first, or at least timely.



As business competitors they are under a legal duty, when
conflict between them is likely, to “conduct their business
as not unnecessarily or unfairly to injure the of the other.”
If there is a right to exclude here, it is only relative
(RELATIVE TITLE). Each may have a right to exclude
the other, but not the general public, who may do with the
news what they wish.



So is there such a right?



Canvass precedent - two cases suggesting that finding
relative title to news would fit with existing law.



Justification - news is valuable to those who gather it and to
those who would appropriate it. HERE, The time
difference between the East and West coast allows a
competitor to appropriate that value, publishing nearly
simultaneously with the gatherer on the West Coast.



Since news is expensive to gather, an interloper should not
be allowed to reap what he has not sown. (Argument that
property rights, at least as between competitors, should be
awarded to protect labor. Contra Pierson v. Post.) That’s
happened here, so liability.

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III. Rebuttals to arguments against


News is not “abandoned” when published. There’s no
intent to abandon, as is evidenced by the organizational
structure of the AP. They couldn’t stay in business if they
couldn’t profit from publication of the news. Their bylaws
attempt to prevent transmission to competitors before
publication.



The holding does not create a monopoly of gathering and
distributing news, but only partially keeps out competitors
who would “reproduce” AP’s news and only for long
enough to give AP enough value to keep alive its incentive
to gather news.



The harm here is not (only) in the fraud upon consumers,
the reverse palming off of AP’s news as coming from INS.
And so INS’s giving credit would not fix the problem.



AP uses other organizations’ news stories as leads or tips
that are independently verified before publication. But this
does not mean that AP is guilty of that of which they
accuse INS (which guilt might establish the equitable
defense of unclean hands).

Holmes
In general, the law does not prevent one from repeating what
others have said. The news is not copyrighted and so is free to be
used by others, including competitors. But here, using AP’s news
and publishing it at the same time AP papers publish it, in the west,
amounts to a kind of fraud. INS should be required to name the
source.
Brandeis


Facts



Framing the question: Can AP enjoin a competitor from
using AP-published news that the competitor lawfully
acquires? No cases answer this question.

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

The background rule is that “a product of the mind,” even
if it requires laborious effort to produce, is free to be
ripped off by others. There are exceptions to this only
where public policy requires it - as in patent, copyright, and
certain cases where the relationship between the parties
demands it.



This is not such a case (rebuts arguments one by one):
1. Distinguish precedent - not like cases where the
appropriation involved a breach of contract or
trust. No such relationship here.
2. Distinguish adverse precedent based on a kind of
common law copyright by using a Feist rationale to have such a cause of action, the expression must
evince at least some originality, not a bare recitation
of facts.
3. There was a general publication here, and so once
published, the news is not protectable literary
property (don’t worry about this).
4. Rebuts the bare argument that it’s unfair
competition to free-ride. But unfair competition
doesn’t protect against free-riding, only against
fraud or force or other legal violations used to gain
a competitive edge. No such unfair means were
used here (papers were bought in the open market).
And the law generally sanctions and even
encourages free riders, those who follow pioneers.
Also, Brandeis disagrees that a failure to attribute is
misleading. Doesn’t think people assume the
publisher is the source of all the news it publishes.
5. (LEGAL PROCESS) Technological change and the
“vastness of our territory” do threaten to erode the
incentive to engage in the worthwhile endeavor of
news gathering and dissemination. But we’d need to
develop new law to deal with this, and doing so

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would affect the public at large, perhaps adversely.
Courts won’t do a good job, and so should leave
this for the legislature (which can take broader
evidence about the problem and produce more
finely tuned rules enforceable by administrative
machinery).
Cheney Bros. V. Doris Silk Corporation, 35 F.2d 279
(SDNY, 1929)
Harry D. Nims, of New York City (Minturn DeS. Verdi
and Wallace H. Martin, both of New York City, on the
brief), for appellant.
Epstein & Bros., of New York City (Arthur J. Brothers, of
New York City, of counsel), for appellee.
Before MANTON, L. HAND, and SWAN, Circuit Judges.
L. HAND, CIRCUIT JUDGE
The plaintiff, a corporation, is a manufacturer of silks,
which puts out each season many new patterns, designed to
attract purchasers by their novelty and beauty. Most of
these fail in that purpose, so that no much more than a
fifth catch the public fancy. Moreover, they have only a
short life, for the most part no more than a single season of
eight or nine months. It is in practice impossible, and it
would be very onerous if it were not, to secure design
patents upon all of these; it would also be impossible to
know in advance which would sell well, and patent only
those. Besides, it is probable that for the most part they
have no such originality as would support a design patent.
Again, it is impossible to copyright them under the
Copyright Act (17 USCA s 1 et seq.), or at least so the
authorities of the Copyright Office hold. So it is easy for
any one to copy such as prove successful, and the plaintiff,
which is put to much ingenuity and expense in fabricating
them, finds itself without protection of any sort for its
pains.

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Taking advantage of this situation, the defendant copied
one of the popular designs in the season beginning in
October, 1928, and undercut the plaintiff’s price. This is
the injury of which it complains. The defendant, though it
duplicated the design in question, denies that it knew it to
be the plaintiff’s, and there thus arises an issue which might
be an answer to the motion. However, the parties wish a
decision upon the equity of the bill, and, since it is within
our power to dismiss it, we shall accept its allegation, and
charge the defendant with knowledge.
The plaintiff asks for protection only during the season,
and needs no more, for the designs are all ephemeral. It
seeks in this way to disguise the extent of the proposed
innovation, and to persuade us that, if we interfere only a
little, the solecism, if there be one, may be pardonable. But
the reasoning which would justify any interposition at all
demands that it cover the whole extent of the injury. A man
whose designs come to harvest in two years, or in five, has
prima facie as good right to protection as one who deals
only in annuals. Nor could we consistently stop at designs;
processes, machines, and secrets have an equal claim. The
upshot must be that, whenever any one has contrived any
of these, others may be forbidden to copy it. That is not
the law. In the absence of some recognized right at
common law, or under the statutes- and the plaintiff claims
neither- a man’s property is limited to the chattels which
embody his invention. Others may imitate these at their
pleasure. Flagg Mfg. Co. v. Holway, 178 Mass. 83, 59 N.E.
667; Keystone Co. v. Portland Publishing Co., 186 F. 690 (C.C.A.
1); Heide v. Wallace, 135 F. 346 (C.C.A. 3); Upjohn Co. v.
Merrell Co., 269 F. 209 (C.C.A. 6); Hudson Co. v. Apco Co.
(D.C.) 288 F. 871; Crescent Tool Co. v. Kilborn & Bishop Co.,
247 F. 299 (C.C.A. 2); Hamilton Co. v. Tubbs Co. (D.C.) 216
F. 401; Montegut v. Hickson, 178 App.Div. 94, 164 N.Y.S.
858.

328

This is confirmed by the doctrine of ‘non-functional’
features, under which it is held that to imitate these is to
impute to the copy the same authorship as the original.
Enterprise Co. v. Landers, 131 F. 240 (C.C.A. 2); Yale & Towne
Co. v. Adler, 154 F. 37 (C.C.A. 2); Rushmore v. Manhattan Co.,
163 F. 939, 19 L.R.A.(N.S.) 269 (C.C.A. 2); Rushmore v.
Badger Co., 198 F. 379 (C.C.A. 2); Fox v. Glynn, 191 Mass.
344, 78 N.E. 89, 9 L.R.A.(N.S.) 1096, 114 Am.St.Rep. 619.
These decisions imply that, except as to these elements, any
one may copy the original at will. Unless, therefore, there
has been some controlling authority to the contrary, the bill
at bar stands upon no legal right and must fail.
Of the cases on which the plaintiff relies, the chief is
International News Service v. Associated Press, 248 U.S. 215, 39
S.Ct. 68, 63 L.Ed. 211, 2 A.L.R. 293. Although that
concerned another subject-matter- printed news
dispatches- we agree that, if it meant to lay down a general
doctrine, it would cover this case; at least, the language of
the majority opinion goes so far. We do not believe that it
did. While it is of course true that law ordinarily speaks in
general terms, there are cases where the occasion is at once
the justification for, and the limit of, what is decided. This
appears to us such an instance; we think that no more was
covered than situations substantially similar to those then at
bar. The difficulties of understanding it otherwise are
insuperable. We are to suppose that the court meant to
create a sort of common-law patent or copyright for
reasons of justice. Either would flagrantly conflict with the
scheme which Congress has for more than a century
devised to cover the subject-matter.
Qua patent, we should at least have to decide, as tabula
rasa, whether the design or machine was new and required
invention; further, we must ignore the Patent Office whose
action has always been a condition upon the creation of
this kind of property. Qua copyright, although it would be
simpler to decide upon the merits, we should equally be

329

obliged to dispense with the conditions imposed upon the
creation of the right. Nor, if we went so far, should we
know whether the property so recognized should be limited
to the periods prescribed in the statutes, or should extend
as long as the author’s grievance. It appears to us incredible
that the Supreme Court should have had in mind any such
consequences. To exclude others from the enjoyment of a
chattel is one thing; to prevent any imitation of it, to set up
a monopoly in the plan of its structure, gives the author a
power over his fellows vastly greater, a power which the
Constitution allows only Congress to create.
The other cases are easily distinguishable. Board of Trade v.
Christie, 198 U.S. 236, 25 S.Ct. 637, 49 L.Ed. 1031, went
upon the fact that the defendants had procured their
information through a breach of contract between the
plaintiff and its subscribers, or some surreptitious and
dishonest conduct. Hunt v. N.Y. Cotton Exchange, 205 U.S.
322, 27 S.Ct. 529, 51 L.Ed. 821, was another instance of the
same kind. There is, indeed, language in National Tel. News
Co. v. West Un. Tel. Co., 119 F. 294, 60 L.R.A. 805 (C.C.A.
7), which goes further, but we take it that the authoritative
statement of the doctrine must be found in Board of Trade v.
Christie 221 F. 305 (C.C.A. 2). Though the limitations there
imposed have indeed been extended in International News
Service v. Associated Press, they still comprise no more than
cases involving news and perhaps market quotations. PrestO-Lite v. Bogen (C.C.) 209 F. 915, and Prest-O-Lite v. Davis
(D.C.) 209 F. 917, were cases of passing off. In Kiernan v.
Manhattan Co., 50 How.Prac.(N.Y.) 194, Dodge v. Construction
Co., 183 Mass. 63, 66 N.E. 204, 60 L.R.A. 810, 97
Am.St.Rep. 412; Exchange Co. v. Gregory, L.R. (1896) 1 Q.B.
147 (C.A.) and Exchange Co. v. Central News, L.R. (1897) 2
Ch. 48, again, either there was a breach of contract between
the plaintiff and its subscriber, or the defendant had
dishonestly procured the information. They are like Board of
Trade v. Christie.

330

True, it would seem as though the plaintiff had suffered a
grievance for which there should be a remedy, perhaps by
an amendment of the Copyright Law, assuming that this
does not already cover the case, which is not urged here. It
seems a lame answer in such a case to turn the injured party
out of court, but there are larger issues at stake than his
redress. Judges have only a limited power to amend the law;
when the subject has been confided to a Legislature, they
must stand aside, even though there be an hiatus in
completed justice. An omission in such cases must be taken
to have been as deliberate as though it were express,
certainly after long-standing action on the subject-matter.
Indeed, we are not in any position to pass upon the
questions involved, as Brandeis, J., observed in International
News Service v. Associated Press. We must judge upon records
prepared by litigations, which do not contain all that may
be relevant to the issues, for they cannot disclose the
conditions of this industry, or of the others which may be
involved. Congress might see its way to create some sort of
temporary right, or it might not. Its decision would
certainly be preceded by some examination of the result
upon the other interests affected. Whether these would
prove paramount we have no means of saying; it is not for
us to decide. Our vision is inevitably contracted, and the
whole horizon may contain much which will compose a
very different picture.
The order is affirmed, and, as the bill cannot in any event
succeed, it may be dismissed, if the defendant so desires.
National Basketball Association v. Motorola, Inc., 105
F.3d 841
Before: VAN GRAAFEILAND,
ALTIMARI, Circuit Judges.
WINTER, Circuit Judge:
….

331

WINTER,

and

I. BACKGROUND
The facts are largely undisputed. Motorola manufactures
and markets the SportsTrax paging device while STATS
supplies the game information that is transmitted to the
pagers. The product became available to the public in
January 1996, at a retail price of about $200. SportsTrax’s
pager has an inch-and-a-half by inch-and-a-half screen and
operates in four basic modes: “current,” “statistics,” “final
scores” and “demonstration.” It is the “current” mode that
gives rise to the present dispute. In that mode, SportsTrax
displays the following information on NBA games in
progress: (i) the teams playing; (ii) score changes; (iii) the
team in possession of the ball; (iv) whether the team is in
the free-throw bonus; (v) the quarter of the game; and (vi)
time remaining in the quarter. The information is updated
every two to three minutes, with more frequent updates
near the end of the first half and the end of the game.
There is a lag of approximately two or three minutes
between events in the game itself and when the information
appears on the pager screen.
SportsTrax’s operation relies on a “data feed” supplied by
STATS reporters who watch the games on television or
listen to them on the radio. The reporters key into a
personal computer changes in the score and other
information such as successful and missed shots, fouls, and
clock updates. The information is relayed by modem to
STATS’s host computer, which compiles, analyzes, and
formats the data for retransmission. The information is
then sent to a common carrier, which then sends it via
satellite to various local FM radio networks that in turn
emit the signal received by the individual SportsTrax
pagers.
Although the NBA’s complaint concerned only the
SportsTrax device, the NBA offered evidence at trial
concerning STATS’s America On-Line (“AOL”) site.
Starting in January, 1996, users who accessed STATS’s

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AOL site, typically via a modem attached to a home
computer, were provided with slightly more comprehensive
and detailed real-time game information than is displayed
on a SportsTrax pager. On the AOL site, game scores are
updated every 15 seconds to a minute, and the player and
team statistics are updated each minute. The district court’s
original decision and judgment, National Basketball Ass’n v.
Sports Team Analysis and Tracking Sys. Inc., 931 F. Supp. 1124
(S.D.N.Y. 1996), did not address the AOL site, because
“NBA’s complaint and the evidence proffered at trial were
devoted largely to SportsTrax.” National Basketball Ass’n v.
Sports Team Analysis and Tracking Sys. Inc., 939 F.Supp. 1071,
1074 n. 1 (S.D.N.Y. 1996). Upon motion by the NBA,
however, the district court amended its decision and
judgment and enjoined use of the real-time game
information on STATS’s AOL site. Id. at 1075 n. 1.
Because the record on appeal, the briefs of the parties, and
oral argument primarily addressed the SportsTrax device,
we similarly focus on that product. However, we regard the
legal issues as identical with respect to both products, and
our holding applies equally to SportsTrax and STATS’s
AOL site.
The NBA’s complaint asserted six claims for relief: (i) state
law unfair competition by misappropriation; (ii) false
advertising under Section 43(a) of the Lanham Act, 15
U.S.C. § 1125(a); (iii) false representation of origin under
Section 43(a) of the Lanham Act; (iv) state and common
law unfair competition by false advertising and false
designation of origin; (v) federal copyright infringement;
and (vi) unlawful interception of communications under
the Communications Act of 1934, 47 U.S.C. § 605.
Motorola counterclaimed, alleging that the NBA unlawfully
interfered with Motorola’s contractual relations with four
individual NBA teams that had agreed to sponsor and
advertise SportsTrax.

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The district court dismissed all of the NBA’s claims except
the first-misappropriation under New York law. The court
also dismissed Motorola’s counterclaim. Finding Motorola
and STATS liable for misappropriation, Judge Preska
entered the permanent injunction, reserved the calculation
of damages for subsequent proceedings, and stayed
execution of the injunction pending appeal. Motorola and
STATS appeal from the injunction … .
….
C. The State-Law Misappropriation Claim
….
In our view, the elements central to an INS claim are: (i)
the plaintiff generates or collects information at some cost
or expense; (ii) the value of the information is highly timesensitive; (iii) the defendant’s use of the information
constitutes free-riding on the plaintiff’s costly efforts to
generate or collect it; (iv) the defendant’s use of the
information is in direct competition with a product or
service offered by the plaintiff; (v) the ability of other
parties to free-ride on the efforts of the plaintiff would so

334

reduce the incentive to produce the product or service that
its existence or quality would be substantially threatened.1
INS is not about ethics; it is about the protection of
property rights in time-sensitive information so that the
information will be made available to the public by profit
seeking entrepreneurs. If services like AP were not assured
of property rights in the news they pay to collect, they
would cease to collect it. The ability of their competitors to
appropriate their product at only nominal cost and thereby
to disseminate a competing product at a lower price would
destroy the incentive to collect news in the first place. The
newspaper-reading public would suffer because no one
would have an incentive to collect “hot news.”
We therefore find the extra elements-those in addition to
the elements of copyright infringement-that allow a
“hotnews” claim to survive preemption are: (i) the timesensitive value of factual information, (ii) the free-riding by
a defendant, and (iii) the threat to the very existence of the
product or service provided by the plaintiff.
2 . The Legality of SportsTrax
Some authorities have labeled this element as requiring direct competition
between the defendant and the plaintiff in a primary market. ”In most of the small
number of cases in which the misappropriation doctrine has been determinative,
the defendant’s appropriation, like that in INS, resulted in direct competition in
the plaintiffs’ primary market … Appeals to the misappropriation doctrine are
almost always rejected when the appropriation does not intrude upon the
plaintiff’s primary market.”, Restatement (Third) of Unfair Competition, § 38 cmt.
c, at 412-13; see also National Football League v. Governor of State of Delaware, 435 F.
Supp. 1372 (D. Del. 1977). In that case, the NFL sued Delaware over the state’s
lottery game which was based on NFL games. In dismissing the wrongful
misappropriation claims, the court stated: “While courts have recognized that one
has a right to one’s own harvest, this proposition has not been construed to
preclude others from profiting from demands for collateral services generated by
the success of one’s business venture.” Id. at 1378. The court also noted, “It is
true that Delaware is thus making profits it would not make but for the existence
of the NFL, but I find this difficult to distinguish from the multitude of charter
bus companies who generate profit from servicing those of plaintiffs’ fans who
want to go to the stadium or, indeed, the sidewalk popcorn salesman who services
the crowd as it surges towards the gate.” Id.
1

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We conclude that Motorola and STATS have not engaged
in unlawful misappropriation under the “hot-news” test set
out above. To be sure, some of the elements of a “hotnews” INS claim are met. The information transmitted to
SportsTrax is not precisely contemporaneous, but it is
nevertheless time-sensitive. Also, the NBA does provide, or
will shortly do so, information like that available through
SportsTrax. It now offers a service called “Gamestats” that
provides official play-by-play game sheets and half-time and
final box scores within each arena. It also provides such
information to the media in each arena. In the future, the
NBA plans to enhance Gamestats so that it will be
networked between the various arenas and will support a
pager product analogous to SportsTrax. SportsTrax will of
course directly compete with an enhanced Gamestats.
However, there are critical elements missing in the NBA’s
attempt to assert a “hot-news” INS-type claim. As framed
by the NBA, their claim compresses and confuses three
different informational products. The first product is
generating the information by playing the games; the
second product is transmitting live, full descriptions of
those games; and the third product is collecting and
retransmitting strictly factual information about the games.
The first and second products are the NBA’s primary
business: producing basketball games for live attendance
and licensing copyrighted broadcasts of those games. The
collection and retransmission of strictly factual material
about the games is a different product: e.g., box-scores in
newspapers, summaries of statistics on television sports
news, and real-time facts to be transmitted to pagers. In our
view, the NBA has failed to show any competitive effect
whatsoever from SportsTrax on the first and second
products and a lack of any free-riding by SportsTrax on the
third.
With regard to the NBA’s primary products-producing
basketball games with live attendance and licensing

336

copyrighted broadcasts of those games-there is no evidence
that anyone regards SportsTrax or the AOL site as a
substitute for attending NBA games or watching them on
television. In fact, Motorola markets SportsTrax as being
designed “for those times when you cannot be at the arena,
watch the game on TV, or listen to the radio …”
The NBA argues that the pager market is also relevant to a
“hot-news” INS-type claim and that SportsTrax’s future
competition with Gamestats satisfies any missing element.
We agree that there is a separate market for the real-time
transmission of factual information to pagers or similar
devices, such as STATS’s AOL site. However, we disagree
that SportsTrax is in any sense free-riding off Gamestats.
An indispensable element of an INS “hot-news” claim is
free riding by a defendant on a plaintiff’s product, enabling
the defendant to produce a directly competitive product for
less money because it has lower costs. SportsTrax is not
such a product. The use of pagers to transmit real-time
information about NBA games requires: (i) the collecting of
facts about the games; (ii) the transmission of these facts on
a network; (iii) the assembling of them by the particular
service; and (iv) the transmission of them to pagers or an
on-line computer site. Appellants are in no way free-riding
on Gamestats. Motorola and STATS expend their own
resources to collect purely factual information generated in
NBA games to transmit to SportsTrax pagers. They have
their own network and assemble and transmit data
themselves.
To be sure, if appellants in the future were to collect facts
from an enhanced Gamestats pager to retransmit them to
SportsTrax pagers, that would constitute free-riding and
might well cause Gamestats to be unprofitable because it
had to bear costs to collect facts that SportsTrax did not. If
the appropriation of facts from one pager to another pager
service were allowed, transmission of current information
on NBA games to pagers or similar devices would be

337

substantially deterred because any potential transmitter
would know that the first entrant would quickly encounter
a lower cost competitor free-riding on the originator’s
transmissions.2
However, that is not the case in the instant matter.
SportsTrax and Gamestats are each bearing their own costs
of collecting factual information on NBA games, and, if
one produces a product that is cheaper or otherwise
superior to the other, that producer will prevail in the
marketplace. This is obviously not the situation against
which INS was intended to prevent: the potential lack of
any such product or service because of the anticipation of
free-riding.
For the foregoing reasons, the NBA has not shown any
damage to any of its products based on free-riding by
Motorola and STATS, and the NBA’s misappropriation
claim based on New York law is preempted.
….

2 It may well be that the NBA’s product, when enhanced, will actually have a

competitive edge because its Gamestats system will apparently be used for a
number of in-stadium services as well as the pager market, resulting in a certain
amount of cost sharing. Gamestats might also have a temporal advantage in
collecting and transmitting official statistics. Whether this is so does not affect our
disposition of this matter, although it does demonstrate the gulf between this case
and INS, where the free-riding created the danger of no wire service being viable.

338

3.2. Trademarks and Domain Names
Qualitex Co. v. Jacobson Products Co., 514 U.S. 159
(1995)
JUSTICE BREYER delivered the opinion of the Court.
The question in this case is whether the Lanham
Trademark Act of 1946 (Lanham Act), 15 U.S.C. §§ 10511127 (1988 ed. and Supp. V), permits the registration of a
trademark that consists, purely and simply, of a color. We
conclude that, sometimes, a color will meet ordinary legal
trademark requirements. And, when it does so, no special
legal rule prevents color alone from serving as a trademark.
The case before us grows out of petitioner Qualitex
Company’s use (since the 1950’s) of a special shade of
green-gold color on the pads that it makes and sells to dry
cleaning firms for use on dry cleaning presses. In 1989
respondent Jacobson Products (a Qualitex rival) began to
sell its own press pads to dry cleaning firms; and it colored
those pads a similar green-gold. In 1991 Qualitex registered
the special green-gold color on press pads with the Patent
and Trademark Office as a trademark. Registration No.
1,633,711 (Feb. 5, 1991). Qualitex subsequently added a
trademark infringement count, 15 U.S.C. § 1114(1), to an
unfair competition claim, § 1125(a), in a lawsuit it had
already filed challenging Jacobson’s use of the green-gold
color.
Qualitex won the lawsuit in the District Court. 21
U.S.P.Q.2d 1457, 1991 WL 318798 (CD Cal.1991). But, the
Court of Appeals for the Ninth Circuit set aside the
judgment in Qualitex’s favor on the trademark
infringement claim because, in that Circuit’s view, the
Lanham Act does not permit Qualitex, or anyone else, to
register “color alone” as a trademark. 13 F.3d 1297, 1300,
1302 (1994).
The courts of appeals have differed as to whether or not
the law recognizes the use of color alone as a trademark.

Compare NutraSweet Co. v. Stadt Corp., 917 F.2d 1024, 1028
(CA7 1990) (absolute prohibition against protection of
color alone), with In re Owens-Corning Fiberglas Corp., 774
F.2d 1116, 1128 (CA Fed.1985) (allowing registration of
color pink for fiberglass insulation), and Master Distributors,
Inc. v. Pako Corp., 986 F.2d 219, 224 (CA8 1993) (declining
to establish per se prohibition against protecting color alone
as a trademark). Therefore, this Court granted certiorari.
512 U.S. —-, 115 S.Ct. 40, 129 L.Ed.2d 935 (1994). We
now hold that there is no rule absolutely barring the use of
color alone, and we reverse the judgment of the Ninth
Circuit.
II
The Lanham Act gives a seller or producer the exclusive
right to “register” a trademark, 15 U.S.C. § 1052 (1988 ed.
and Supp. V), and to prevent his or her competitors from
using that trademark, § 1114(1). Both the language of the
Act and the basic underlying principles of trademark law
would seem to include color within the universe of things
that can qualify as a trademark. The language of the
Lanham Act describes that universe in the broadest of
terms. It says that trademarks “include any word, name,
symbol, or device, or any combination thereof.” § 1127.
Since human beings might use as a “symbol” or “device”
almost anything at all that is capable of carrying meaning,
this language, read literally, is not restrictive. The courts and
the Patent and Trademark Office have authorized for use
as a mark a particular shape (of a Coca-Cola bottle), a
particular sound (of NBC’s three chimes), and even a
particular scent (of plumeria blossoms on sewing thread).
See, e.g., Registration No. 696,147 (Apr. 12, 1960);
Registration Nos. 523,616 (Apr. 4, 1950) and 916,522 (July
13, 1971); In re Clarke, 17 U.S.P.Q.2d 1238, 1240 (TTAB
1990). If a shape, a sound, and a fragrance can act as
symbols why, one might ask, can a color not do the same?

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A color is also capable of satisfying the more important
part of the statutory definition of a trademark, which
requires that a person “use” or “intend to use” the mark
“to identify and distinguish his or her
goods, including a unique product,
from those manufactured or sold by
others and to indicate the source of
the goods, even if that source is
unknown.” 15 U.S.C. § 1127.
True, a product’s color is unlike “fanciful,” “arbitrary,” or
“suggestive” words or designs, which almost automatically
tell a customer that they refer to a brand. Abercrombie &
Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9-10 (CA2 1976)
(Friendly, J.); see Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S.
—-, —-, 112 S.Ct. 2753, 2757, 120 L.Ed.2d 615 (1992). The
imaginary word “Suntost,” or the words “Suntost
Marmalade,” on a jar of orange jam immediately would
signal a brand or a product “source”; the jam’s orange color
does not do so. But, over time, customers may come to
treat a particular color on a product or its packaging (say, a
color that in context seems unusual, such as pink on a
firm’s insulating material or red on the head of a large
industrial bolt) as signifying a brand. And, if so, that color
would have come to identify and distinguish the goods – i.e.
“to “indicate” their “source” – much in the way that
descriptive words on a product (say, “Trim” on nail
clippers or “Car-Freshner” on deodorizer) can come to
indicate a product’s origin. See, e.g., J. Wiss & Sons Co. v.
W.E. Bassett Co., 59 C.C.P.A. 1269, 1271 (Pat.), 462 F.2d
567, 569 (1972); Car-Freshner Corp. v. Turtle Wax, Inc., 268
F.Supp. 162, 164 (SDNY 1967). In this circumstance,
trademark law says that the word (e.g., “Trim”), although
not inherently distinctive, has developed “secondary
meaning.” See Inwood Laboratories, Inc. v. Ives Laboratories, Inc.,
456 U.S. 844, 851, n. 11, 102 S.Ct. 2182, 2187, n. 11, 72
L.Ed.2d 606 (1982) (“secondary meaning” is acquired when

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“in the minds of the public, the primary significance of a
product feature … is to identify the source of the product
rather than the product itself”). Again, one might ask, if
trademark law permits a descriptive word with secondary
meaning to act as a mark, why would it not permit a color,
under similar circumstances, to do the same?
We cannot find in the basic objectives of trademark law any
obvious theoretical objection to the use of color alone as a
trademark, where that color has attained “secondary
meaning” and therefore identifies and distinguishes a
particular brand (and thus indicates its “source”). In
principle, trademark law, by preventing others from
copying a source-identifying mark, “reduces the customer’s
costs of shopping and making purchasing decisions,” 1 J.
McCarthy, McCarthy on Trademarks and Unfair
Competition § 2.012, p. 2-3 (3d ed. 1994) (hereinafter
McCarthy), for it quickly and easily assures a potential
customer that this item – the item with this mark – is made
by the same producer as other similarly marked items that
he or she liked (or disliked) in the past. At the same time,
the law helps assure a producer that it (and not an imitating
competitor) will reap the financial, reputation-related
rewards associated with a desirable product. The law
thereby “encourages the production of quality products,”
ibid., and simultaneously discourages those who hope to sell
inferior products by capitalizing on a consumer’s inability
quickly to evaluate the quality of an item offered for sale.
See, e.g., 3 L. Altman, Callmann on Unfair Competition,
Trademarks and Monopolies § 17.03 (4th ed. 1983); Landes
& Posner, The Economics of Trademark Law, 78 T.M.
Rep. 267, 271-272 (1988); Park ‘N Fly, Inc. v. Dollar Park and
Fly, Inc., 469 U.S. 189, 198, 105 S.Ct. 658, 663, 83 L.Ed.2d
582 (1985); S.Rep. No. 100-515, p. 4 (1988) U.S.Code
Cong. & Admin.News, 1988, pp. 5577, 5580. It is the
source-distinguishing ability of a mark – not its ontological
status as color, shape, fragrance, word, or sign – that

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permits it to serve these basic purposes. See Landes &
Posner, Trademark Law: An Economic Perspective, 30
J.Law & Econ. 265, 290 (1987). And, for that reason, it is
difficult to find, in basic trademark objectives, a reason to
disqualify absolutely the use of a color as a mark.
Neither can we find a principled objection to the use of
color as a mark in the important “functionality” doctrine of
trademark law. The functionality doctrine prevents
trademark law, which seeks to promote competition by
protecting a firm’s reputation, from instead inhibiting
legitimate competition by allowing a producer to control a
useful product feature. It is the province of patent law, not
trademark law, to encourage invention by granting
inventors a monopoly over new product designs or
functions for a limited time, 35 U.S.C. §§ 154, 173, after
which competitors are free to use the innovation. If a
product’s functional features could be used as trademarks,
however, a monopoly over such features could be obtained
without regard to whether they qualify as patents and could
be extended forever (because trademarks may be renewed
in perpetuity). See Kellogg Co. v. National Biscuit Co., 305 U.S.
111, 119-120, 59 S.Ct. 109, 113-114, 83 L.Ed. 73 (1938)
(Brandeis, J.); Inwood Laboratories, Inc., supra, 456 U.S., at 863,
102 S.Ct., at 2193 (White, J., concurring in result) (“A
functional characteristic is ‘an important ingredient in the
commercial success of the product,’ and, after expiration of
a patent, it is no more the property of the originator than
the product itself”) (citation omitted). Functionality
doctrine therefore would require, to take an imaginary
example, that even if customers have come to identify the
special illumination-enhancing shape of a new patented
light bulb with a particular manufacturer, the manufacturer
may not use that shape as a trademark, for doing so, after
the patent had expired, would impede competition – not by
protecting the reputation of the original bulb maker, but by
frustrating competitors’ legitimate efforts to produce an

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equivalent illumination-enhancing bulb. See, e.g., Kellogg Co.,
supra, 305 U.S., at 119-120, 59 S.Ct., at 113-114 (trademark
law cannot be used to extend monopoly over “pillow”
shape of shredded wheat biscuit after the patent for that
shape had expired). This Court consequently has explained
that, ”in general terms, a product feature is functional,” and
cannot serve as a trademark, “if it is essential to the use or
purpose of the article or if it affects the cost or quality of
the article,” that is, if exclusive use of the feature would put
competitors at a significant non-reputation-related
disadvantage. Inwood Laboratories, Inc., 456 U.S., at 850, n.
10, 102 S.Ct., at 2186, n. 10. Although sometimes color
plays an important role (unrelated to source identification)
in making a product more desirable, sometimes it does not.
And, this latter fact – the fact that sometimes color is not
essential to a product’s use or purpose and does not affect
cost or quality – indicates that the doctrine of
“functionality” does not create an absolute bar to the use of
color alone as a mark. See Owens-Corning, 774 F.2d, at 1123
(pink color of insulation in wall “performs no
nontrademark function”).
It would seem, then, that color alone, at least sometimes,
can meet the basic legal requirements for use as a
trademark. It can act as a symbol that distinguishes a firm’s
goods and identifies their source, without serving any other
significant function. See U.S. Dept. of Commerce, Patent
and Trademark Office, Trademark Manual of Examining
Procedure § 1202.04(e), p. 1202-13 (2d ed. May, 1993)
(hereinafter PTO Manual) (approving trademark
registration of color alone where it “has become distinctive
of the applicant’s goods in commerce,” provided that
“there is no competitive need for colors to remain available
in the industry” and the color is not “functional”); see also
1 McCarthy §§ 3.011, 7.26 (“requirements for qualification
of a word or symbol as a trademark” are that it be (1) a
“symbol,” (2) “used … as a mark,” (3) “to identify and

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distinguish the seller’s goods from goods made or sold by
others,” but that it not be “functional”). Indeed, the
District Court, in this case, entered findings (accepted by
the Ninth Circuit) that show Qualitex’s green-gold press
pad color has met these requirements. The green-gold color
acts as a symbol. Having developed secondary meaning (for
customers identified the green-gold color as Qualitex’s), it
identifies the press pads’ source. And, the green-gold color
serves no other function. (Although it is important to use
some color on press pads to avoid noticeable stains, the
court found “no competitive need in the press pad industry
for the green-gold color, since other colors are equally
usable.” 21 U.S.P.Q.2d, at 1460, 1991 WL 318798.)
Accordingly, unless there is some special reason that
convincingly militates against the use of color alone as a
trademark, trademark law would protect Qualitex’s use of
the green-gold color on its press pads.
III
Respondent Jacobson Products says that there are four
special reasons why the law should forbid the use of color
alone as a trademark. We shall explain, in turn, why we,
ultimately, find them unpersuasive.
First, Jacobson says that, if the law permits the use of color
as a trademark, it will produce uncertainty and unresolvable
court disputes about what shades of a color a competitor
may lawfully use. Because lighting (morning sun, twilight
mist) will affect perceptions of protected color, competitors
and courts will suffer from “shade confusion” as they try to
decide whether use of a similar color on a similar product
does, or does not, confuse customers and thereby infringe a
trademark. Jacobson adds that the “shade confusion”
problem is “more difficult” and “far different from” the
“determination of the similarity of words or symbols.”
Brief for Respondent 22.

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We do not believe, however, that color, in this respect, is
special. Courts traditionally decide quite difficult questions
about whether two words or phrases or symbols are
sufficiently similar, in context, to confuse buyers. They
have had to compare, for example, such words as
“Bonamine”
and
“Dramamine”
(motion-sickness
remedies); “Huggies” and “Dougies” (diapers); “Cheracol”
and “Syrocol” (cough syrup); “Cyclone” and “Tornado”
(wire fences); and “Mattres” and “1-800-Mattres” (mattress
franchisor telephone numbers). See, e.g., G.D. Searle & Co.
v. Chas. Pfizer & Co., 265 F.2d 385, 389 (CA7 1959);
Kimberly-Clark Corp. v. H. Douglas Enterprises, Ltd., 774 F.2d
1144, 1146-1147 (CA Fed.1985); Upjohn Co. v. Schwartz, 246
F.2d 254, 262 (CA2 1957); Hancock v. American Steel & Wire
Co., 40 C.C.P.A. of New Jersey, 931, 935 (Pat.), 203 F.2d
737, 740-741 (1953); Dial-A-Mattress Franchise Corp. v. Page,
880 F.2d 675, 678 (CA2 1989). Legal standards exist to
guide courts in making such comparisons. See, e.g., 2
McCarthy § 15.08; 1 McCarthy §§ 11.24-11.25 (”Strong”
marks, with greater secondary meaning, receive broader
protection than “weak” marks). We do not see why courts
could not apply those standards to a color, replicating, if
necessary, lighting conditions under which a colored
product is normally sold. See Ebert, Trademark Protection
in Color: Do It By the Numbers!, 84 T.M.Rep. 379, 405
(1994). Indeed, courts already have done so in cases where
a trademark consists of a color plus a design, i.e., a colored
symbol such as a gold stripe (around a sewer pipe), a yellow
strand of wire rope, or a “brilliant yellow” band (on
ampules). See, e.g., Youngstown Sheet & Tube Co. v. Tallman
Conduit Co., 149 U.S.P.Q. 656, 657 (TTAB 1966); Amsted
Industries, Inc. v. West Coast Wire Rope & Rigging Inc., 2
U.S.P.Q.2d 1755, 1760 (TTAB 1987); In re Hodes-Lange
Corp., 167 U.S.P.Q. 255, 256 (TTAB 1970).
Second, Jacobson argues, as have others, that colors are in
limited supply. See, e.g., NutraSweet Co., 917 F.2d, at 1028;

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Campbell Soup Co. v. Armour & Co., 175 F.2d 795, 798 (CA3
1949). Jacobson claims that, if one of many competitors
can appropriate a particular color for use as a trademark,
and each competitor then tries to do the same, the supply
of colors will soon be depleted. Put in its strongest form,
this argument would concede that ”hundreds of color
pigments are manufactured and thousands of colors can be
obtained by mixing.” L. Cheskin, Colors: What They Can
Do For You 47 (1947). But, it would add that, in the
context of a particular product, only some colors are
usable. By the time one discards colors that, say, for
reasons of customer appeal, are not usable, and adds the
shades that competitors cannot use lest they risk infringing
a similar, registered shade, then one is left with only a
handful of possible colors. And, under these circumstances,
to permit one, or a few, producers to use colors as
trademarks will “deplete” the supply of usable colors to the
point where a competitor’s inability to find a suitable color
will put that competitor at a significant disadvantage.
This argument is unpersuasive, however, largely because it
relies on an occasional problem to justify a blanket
prohibition. When a color serves as a mark, normally
alternative colors will likely be available for similar use by
others. See, e.g., Owens-Corning, 774 F.2d, at 1121 (pink
insulation). Moreover, if that is not so – if a “color
depletion” or “color scarcity” problem does arise – the
trademark doctrine of “functionality” normally would seem
available to prevent the anticompetitive consequences that
Jacobson’s argument posits, thereby minimizing that
argument’s practical force.
The functionality doctrine, as we have said, forbids the use
of a product’s feature as a trademark where doing so will
put a competitor at a significant disadvantage because the
feature is “essential to the use or purpose of the article” or
“affects its cost or quality.” Inwood Laboratories, Inc., 456
U.S., at 850, n. 10, 102 S.Ct., at 2186, n. 10. The

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functionality doctrine thus protects competitors against a
disadvantage (unrelated to recognition or reputation) that
trademark protection might otherwise impose, namely their
inability reasonably to replicate important non-reputationrelated product features. For example, this Court has
written that competitors might be free to copy the color of
a medical pill where that color serves to identify the kind of
medication (e.g., a type of blood medicine) in addition to its
source. See id., at 853, 858, n. 20, 102 S.Ct., at 2188, 2190,
n. 20 (”Some patients commingle medications in a
container and rely on color to differentiate one from
another”); see also J. Ginsburg, D. Goldberg, & A.
Greenbaum, Trademark and Unfair Competition Law 194195 (1991) (noting that drug color cases “have more to do
with public health policy” regarding generic drug
substitution “than with trademark law”). And, the federal
courts have demonstrated that they can apply this doctrine
in a careful and reasoned manner, with sensitivity to the
effect on competition. Although we need not comment on
the merits of specific cases, we note that lower courts have
permitted competitors to copy the green color of farm
machinery (because customers wanted their farm
equipment to match) and have barred the use of black as a
trademark on outboard boat motors (because black has the
special functional attributes of decreasing the apparent size
of the motor and ensuring compatibility with many
different boat colors). See Deere & Co. v. Farmhand, Inc., 560
F.Supp. 85, 98 (SD Iowa 1982), aff’d, 721 F.2d 253 (CA8
1983); Brunswick Corp. v. British Seagull Ltd., 35 F.3d 1527,
1532 (CA Fed.1994), cert. pending, No. 94-1075; see also
Nor-Am Chemical v. O.M. Scott & Sons Co., 4 U.S.P.Q.2d
1316, 1320, 1987 WL 13742 (ED Pa.1987) (blue color of
fertilizer held functional because it indicated the presence
of nitrogen). The Restatement (Third) of Unfair
Competition adds that, if a design’s “aesthetic value” lies in
its ability to “confer a significant benefit that cannot
practically be duplicated by the use of alternative designs,”

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then the design is “functional.” Restatement (Third) of
Unfair Competition § 17, Comment c, pp. 175-176 (1995).
The “ultimate test of aesthetic functionality,” it explains, “is
whether the recognition of trademark rights would
significantly hinder competition.” Id., at 176.
The upshot is that, where a color serves a significant
nontrademark function – whether to distinguish a heart pill
from a digestive medicine or to satisfy the “noble instinct
for giving the right touch of beauty to common and
necessary things,” G.K. Chesterton, Simplicity and Tolstoy
61 (1912) – courts will examine whether its use as a mark
would permit one competitor (or a group) to interfere with
legitimate (nontrademark-related) competition through
actual or potential exclusive use of an important product
ingredient. That examination should not discourage firms
from creating aesthetically pleasing mark designs, for it is
open to their competitors to do the same. See, e.g., W.T.
Rogers Co. v. Keene, 778 F.2d 334, 343 (CA7 1985) (Posner,
J.). But, ordinarily, it should prevent the anticompetitive
consequences of Jacobson’s hypothetical “color depletion”
argument, when, and if, the circumstances of a particular
case threaten “color depletion.”
Third, Jacobson points to many older cases – including
Supreme Court cases – in support of its position. In 1878,
this Court described the common-law definition of
trademark rather broadly to “consist of a name, symbol,
figure, letter, form, or device, if adopted and used by a
manufacturer or merchant in order to designate the goods
he manufactures or sells to distinguish the same from those
manufactured or sold by another.” McLean v. Fleming, 96
U.S. 245, 254, 24 L.Ed. 828. Yet, in interpreting the
Trademark Acts of 1881 and 1905, 21 Stat. 502, 33 Stat.
724, which retained that common-law definition, the Court
questioned ”whether mere color can constitute a valid
trade-mark,” A. Leschen & Sons Rope Co. v. Broderick &
Bascom Rope Co., 201 U.S. 166, 171, 26 S.Ct. 425, 426, 50

349

L.Ed. 710 (1906), and suggested that the “product
including the coloring matter is free to all who make it.”
Coca-Cola Co. v. Koke Co. of America, 254 U.S. 143, 147, 41
S.Ct. 113, 114, 65 L.Ed. 189 (1920). Even though these
statements amounted to dicta, lower courts interpreted
them as forbidding protection for color alone. See, e.g.,
Campbell Soup Co., 175 F.2d, at 798, and n. 9; Life Savers
Corp. v. Curtiss Candy Co., 182 F.2d 4, 9 (CA7 1950) (quoting
Campbell Soup ).
These Supreme Court cases, however, interpreted
trademark law as it existed b efore 1946, when Congress
enacted the Lanham Act. The Lanham Act significantly
changed and liberalized the common law to “dispense with
mere technical prohibitions,” S.Rep. No. 1333, 79th Cong.,
2d Sess., 3 (1946), most notably, by permitting trademark
registration of descriptive words (say, “U-Build-It” model
airplanes) where they had acquired “secondary meaning.”
See Abercrombie & Fitch Co., 537 F.2d, at 9 (Friendly, J.).
The Lanham Act extended protection to descriptive marks
by making clear that (with certain explicit exceptions not
relevant here),
“nothing … shall prevent the
registration of a mark used by the
applicant which has become distinctive
of the applicant’s goods in
commerce.” 15 U.S.C. § 1052(f) (1988
ed., Supp. V).
This language permits an ordinary word, normally used for
a nontrademark purpose (e.g., description), to act as a
trademark where it has gained “secondary meaning.” Its
logic would appear to apply to color as well. Indeed, in
1985, the Federal Circuit considered the significance of the
Lanham Act’s changes as they related to color and held that
trademark protection for color was consistent with the

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“jurisprudence under the Lanham Act
developed in accordance with the
statutory principle that if a mark is
capable of being or becoming
distinctive of the applicant’s goods in
commerce, then it is capable of serving
as a trademark.” Owens-Corning, 774
F.2d, at 1120.
In 1988 Congress amended the Lanham Act, revising
portions of the definitional language, but left unchanged
the language here relevant. § 134, 102 Stat. 3946, 15 U.S.C.
§ 1127. It enacted these amendments against the following
background: (1) the Federal Circuit had decided OwensCorning; (2) the Patent and Trademark Office had adopted a
clear policy (which it still maintains) permitting registration
of color as a trademark, see PTO Manual § 1202.04(e) (at p.
1200-12 of the January 1986 edition and p. 1202-13 of the
May 1993 edition); and (3) the Trademark Commission had
written a report, which recommended that “the terms
‘symbol, or device’ … not be deleted or narrowed to
preclude registration of such things as a color, shape, smell,
sound, or configuration which functions as a mark,” The
United States Trademark Association Trademark Review
Commission Report and Recommendations to USTA
President and Board of Directors, 77 T.M.Rep. 375, 421
(1987) (hereinafter Trademark Commission); see also 133
Cong.Rec. 32812 (1987) (statement of Sen. DeConcini)
(“The bill I am introducing today is based on the
Commission’s report and recommendations”). This
background strongly suggests that the language “any word,
name, symbol, or device,” 15 U.S.C. § 1127, had come to
include color. And, when it amended the statute, Congress
retained these terms. Indeed, the Senate Report
accompanying the Lanham Act revision explicitly referred
to this background understanding, in saying that the
“revised definition intentionally retains … the words
‘symbol or device’ so as not to preclude the registration of

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colors, shapes, sounds or configurations where they
function as trademarks.” S.Rep. No. 100-515, at 44
U.S.Code Cong. & Admin.News, 1988, p. 5607. (In
addition, the statute retained language providing that ”no
trademark by which the goods of the applicant may be
distinguished from the goods of others shall be refused
registration … on account of its nature” (except for certain
specified reasons not relevant here). 15 U.S.C. § 1052 (1988
ed., Supp. V)).
This history undercuts the authority of the precedent on
which Jacobson relies. Much of the pre-1985 case law
rested on statements in Supreme Court opinions that
interpreted pre-Lanham Act trademark law and were not
directly related to the holdings in those cases. Moreover, we
believe the Federal Circuit was right in 1985 when it found
that the 1946 Lanham Act embodied crucial legal changes
that liberalized the law to permit the use of color alone as a
trademark (under appropriate circumstances). At a
minimum, the Lanham Act’s changes left the courts free to
reevaluate the preexisting legal precedent which had
absolutely forbidden the use of color alone as a trademark.
Finally, when Congress re-enacted the terms “word, name,
symbol, or device” in 1988, it did so against a legal
background in which those terms had come to include
color, and its statutory revision embraced that
understanding.
Fourth, Jacobson argues that there is no need to permit
color alone to function as a trademark because a firm
already may use color as part of a trademark, say, as a
colored circle or colored letter or colored word, and may
rely upon “trade dress” protection, under § 43(a) of the
Lanham Act, if a competitor copies its color and thereby
causes consumer confusion regarding the overall
appearance of the competing products or their packaging,
see 15 U.S.C. § 1125(a) (1988 ed., Supp. V). The first part
of this argument begs the question. One can understand

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why a firm might find it difficult to place a usable symbol
or word on a product (say, a large industrial bolt that
customers normally see from a distance); and, in such
instances, a firm might want to use color, pure and simple,
instead of color as part of a design. Neither is the second
portion of the argument convincing. Trademark law helps
the holder of a mark in many ways that “trade dress”
protection does not. See 15 U.S.C. § 1124 (ability to
prevent importation of confusingly similar goods); § 1072
(constructive notice of ownership); § 1065 (incontestible
status); § 1057(b) (prima facie evidence of validity and
ownership). Thus, one can easily find reasons why the law
might provide trademark protection in addition to trade
dress protection.
IV
Having determined that a color may sometimes meet the
basic legal requirements for use as a trademark and that
respondent Jacobson’s arguments do not justify a special
legal rule preventing color alone from serving as a
trademark (and, in light of the District Court’s here
undisputed findings that Qualitex’s use of the green-gold
color on its press pads meets the basic trademark
requirements), we conclude that the Ninth Circuit erred in
barring Qualitex’s use of color as a trademark. For these
reasons, the judgment of the Ninth Circuit is
Reversed.
Virtual Works, Inc. v. Volkswagen of America, Inc.,
238 F.3d 264 (4th Cir. 2001)
William Herbert Bode, BODE & BECKMAN, L.L.P.,
Washington, D.C., for Appellant.
Thomas Rex Lee, HOWARD, PHILLIPS & ANDERSEN,
P.C., Salt Lake City, Utah, for Appellees.

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Before WILKINSON, Chief Judge, and MICHAEL and
TRAXLER, Circuit Judges.
WILKINSON, Chief Judge:
Volkswagen challenges Virtual Works, Inc.’s use of the
domain name vw.net under the 1999 Anticybersquatting
Consumer Protection Act (ACPA). Volkswagen claims that
Virtual Works registered vw.net with the purpose of one
day selling it to Volkswagen. The district court agreed,
holding that Virtual Works had a bad faith intent to profit
from the vw.net domain name and that its use of vw.net
diluted and infringed upon the VW mark. Virtual Works,
Inc. v. Network Solutions, Inc., 106 F. Supp.2d 845 (E.D.
Va. 2000). The district court therefore ordered Virtual
Works to relinquish to Volkswagen the rights to vw.net.
Because the district court did not err in holding that Virtual
Works violated the ACPA, we affirm the judgment.
I.
On October 23, 1996, Virtual Works registered the domain
name vw.net with Network Solutions, Inc. (NSI). At that
time, NSI was the only company authorized by the
government to serve as a registrar for Internet domain
names. A domain name tells users where they can find a
particular web page, much like a street address tells people
where they can find a particular home or business. Domain
names consist of two parts: the top level domain name
(TLD) and secondary level domain name (SLD). The TLD
is the suffix, identifying the nature of the site. The SLD is
the prefix, identifying the site’s owner. Thus in the domain
name Duke.edu, “.edu” is the TLD, identifying the site as
affiliated with an educational institution. “Duke” is the
SLD, identifying the owner as Duke University. There are
various other TLDs. The most common are .com, .net, and
.org for commercial users and .gov for governmental
entities. At one point there was a distinction between the

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.com, .org, and .net TLDs. The .net TLD was reserved for
Internet service providers (ISPs). The .org TLD was
reserved for non-commercial or non-profit users. In
September 1995, however, NSI stopped enforcing these
distinctions. Thus, after 1995, commercial businesses could
register domain names with the .net, .org, or .com TLD.
At the time Virtual Works registered vw.net, two of its
principals, Christopher Grimes and James Anderson, were
aware that some Internet users might think that vw.net was
affiliated with Volkswagen. According to Grimes, he and
Anderson “talked about Volkswagen and decided that
[they] would use the domain name for [the] company, but if
Volkswagen offered to work out a deal for services or
products, that [they] would sell it to [Volkswagen] for a lot
of money.” When Virtual Works registered vw.net , many
other domain names were available for its use. For instance,
vwi.net, vwi.org, virtual works. net, and virtual works. org,
were still available.
Virtual Works used the vw.net domain name for
approximately two years as a part of its ISP business. In
December 1998, various Volkswagen dealerships contacted
Virtual Works and expressed an interest in purchasing the
rights to the vw.net domain name. Virtual Works, in turn,
called Volkswagen, offering to sell vw.net. The terms of
Virtual Works’ offer, however, were somewhat unusual.
Anderson left a voice mail message for Linda Scipione in
Volkswagen’s trademark department. In the message,
Anderson stated that he owned the rights to vw.net. He
also said that unless Volkswagen bought the rights to
vw.net, Virtual Works would sell the domain name to the
highest bidder. Anderson gave Volkswagen twenty-four
hours to respond.
In response to what it perceived as a threat to the VW
mark, Volkswagen invoked NSI’s dispute resolution
procedure. NSI in turn told Virtual Works that Virtual
Works would lose the vw.net domain name unless it filed a

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declaratory judgment action against Volkswagen. Virtual
Works
complied.
Volkswagen
subsequently
counterclaimed, alleging trademark dilution, infringement,
and cybersquatting under the ACPA. 15 U.S.C. § 1125(d).
The district court granted Volkswagen’s motion for
summary judgment on its cybersquatting, dilution, and
infringement counterclaims and dismissed Virtual Works’
cross-motions on the same. Accordingly, the district court
ordered Virtual Works to relinquish to Volkswagen the
rights to the vw.net domain name. Virtual Works appeals.
II.
A.
The ACPA was enacted in 1999 in response to concerns
over the proliferation of cybersquatting -the Internet
version of a land grab. According to the Senate Report
accompanying the Act: “Trademark owners are facing a
new form of piracy on the Internet caused by acts of
‘cybersquatting,’ which refers to the deliberate, bad-faith,
and abusive registration of Internet domain names in
violation of the rights of trademark owners.” S. Rep. No.
106-140, at 4 (1999). Cybersquatting is the practice of
registering “well-known brand names as Internet domain
names” in order to force the rightful owners of the marks
“to pay for the right to engage in electronic commerce
under their own brand name.” Id. at 5. See also H.R. Rep.
No. 106-412, at 5-7 (1999). Cybersquatting is profitable
because while it is inexpensive for a cybersquatter to
register the mark of an established company as a domain
name, such companies are often vulnerable to being forced
into paying substantial sums to get their names back.
Sporty’s Farm, L.L.C. v. Sportsman’s Market, Inc., 202 F.3d
489, 493 (2d Cir. 2000).
Congress viewed the practice of cybersquatting as harmful
because it threatened “the continued growth and vitality of

356

the Internet as a platform” for “communication, electronic
commerce, education, entertainment, and countless other
yet-to-be-determined uses.” S. Rep. No. 106-140, at 8. New
legislation was required to address this situation because
then-current law did not expressly prohibit the act of
cybersquatting and cybersquatters had started to take the
necessary precautions to insulate themselves from liability
under the Federal Trademark Dilution Act. Id. at 7.
Accordingly, Congress passed, and the President signed,
the ACPA in 1999. Pub. L. No. 106-113, 113 Stat. 1536
(codified at 15 U.S.C. § 1125(d)).
B.
Under the ACPA, a person alleged to be a cybersquatter is
liable to the owner of a protected mark if that person:
(i) has a bad faith intent to profit from
that mark …; and
(ii) registers, traffics in, or uses a
domain name that-(I) in the case of a
mark that is distinctive …, is identical
or confusingly similar to that mark;(II)
in the case of a famous mark …, is
identical or confusingly similar to or
dilutive of that mark;
15 U.S.C. § 1125(d)(1)(A). With respect to the bad faith
determination, the statute provides that:
(B)(i) In determining whether a person
has a bad faith intent … a court may
consider factors such as, but not
limited to
(I) the trademark or other
intellectual property rights of the
person, if any, in the domain
name;

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(II) the extent to which the
domain name consists of the legal
name of the person or a name
that is otherwise commonly used
to identify that person;
(III) the person’s prior use, if any,
of the domain name in
connection with the bona fide
offering of any goods or services;
(IV) the person’s bona fide
noncommercial or fair use of the
mark in a site accessible under the
domain name;
(V) the person’s intent to divert
consumers from the mark
owner’s online location to a site
… that could harm the goodwill
represented by the mark, either
for commercial gain or with the
intent to tarnish or disparage the
mark …;
(VI) the person’s offer to
transfer, sell, or otherwise assign
the domain name to the mark
owner or any third party for
financial gain without having
used … the domain name in the
bona fide offering of any goods
or services …;
(VII) the person’s provision of
material and misleading false
contact
information
when
applying for the registration of
the domain name …;

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(VIII) the person’s registration or
acquisition of multiple domain
names which the person knows
are identical or confusingly
similar to marks of others …; and
(IX) the extent to which the mark
incorporated in the person’s
domain name registration is or is
not distinctive and famous … .
15 U.S.C. § 1125(d)(1)(B)(i). In addition to listing these nine
factors, the Act contains a safe harbor. The safe harbor
provision states that bad faith intent “shall not be found in
any case in which the court determines that the person
believed and had reasonable grounds to believe that the use
of the domain name was fair use or otherwise lawful.” 15
U.S.C. § 1225(d)(1)(B)(ii).
A court is not limited to considering these nine factors
when determining the presence or absence of bad faith. 15
U.S.C. § 1125(d)(1)(B)(i). The Second Circuit, in the first
court of appeals case addressing the ACPA, noted that the
most important grounds for finding bad faith “are the
unique circumstances of th[e] case, which do not fit neatly
into the specific factors enumerated by Congress but may
nevertheless be considered under the statute.” Sporty’s
Farm, 202 F.3d at 499.
The remedies available under the ACPA depend on when
the unlawful activity took place. A person who unlawfully
registers, traffics in, or uses a domain name after the
ACPA’s date of enactment, November 29, 1999, can be
liable for monetary damages under 15 U.S.C. § 1117(d) and
can have the domain name transferred to the owner of the
mark or canceled under 15 U.S.C. § 1125(d)(2)(D)(i). The
only remedy available for ACPA violations that occurred
before November 29, 1999, however, is to have the domain
name transferred to the owner of the mark or canceled.

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Anticybersquatting Consumer Protection Act, Pub. L. No.
106-113, § 3010, 113 Stat. 1536. Since Virtual Works’
alleged cybersquatting occurred before the ACPA’s date of
enactment, Volkswagen sought only the right to use vw.net
for itself.
III.
Having discussed the statutory purpose and framework of
the ACPA, we must now determine whether Virtual Works
violated the Act. The district court found that a number of
the ACPA’s nine bad faith factors supported Volkswagen’s
claim that Virtual Works’ registration of vw.net constituted
cybersquatting under the Act. Virtual Works, 106 F.
Supp.2d at 848. With respect to the first and second
factors, for example, the district court held that Virtual
Works had no right to or interest in the VW mark and that
Virtual Works had never been referred to or done business
under the name VW. Id. at 847. With respect to the fifth
factor, the district court held that the disparaging
comments posted by Virtual Works harmed the goodwill of
the VW mark. Id. Finally, the district court found that,
under the ninth factor, the famousness of the VW mark
also favored Volkswagen. Id. The district court thus
granted summary judgment to Volkswagen, which we
review de novo.
A.
The first inquiry under the ACPA is whether Virtual Works
acted with a bad faith intent to profit from a protected
mark. 15 U.S.C. § 1125(d)(1)(A)(i). Virtual Works claims
that the district court erred in holding that it did. We need
not, however, march through the nine factors seriatim
because the ACPA itself notes that use of the listed criteria
is permissive. As the Second Circuit noted in Sporty’s
Farms, the factors are “expressly described as indicia that

360

‘may’ be considered along with other facts.” 202 F.3d at
498 (citing 15 U.S.C. § 1125(d)(1)(B)(i)).
We are mindful that the instant case comes to us on
summary judgment and involves a contested determination
of Virtual Works’ intent. Unfortunately for Virtual Works,
however, there is both circumstantial and direct evidence
establishing bad faith. The following uncontested facts all
provide circumstantial evidence of Virtual Works’ bad faith
with respect to the VW mark: 1) the famousness of the VW
mark; 2) the similarity of vw.net to the VW mark; 3) the
admission that Virtual Works never once did business as
VW nor identified itself as such; and 4) the availability of
vwi.org and vwi.net at the time Virtual Works registered
vw.net. Notably, either of these domain names would have
satisfied Virtual Works’ own stated criterion of registering a
domain name that used only two or three letters and would
have eliminated any risk of confusion with respect to the
VW mark.
We consider such circumstantial factors cautiously,
however. We do not suggest that these four facts would
alone resolve the question of Virtual Works’ intent on
summary judgment. The fact that a domain resembles a
famous trademark, for example, hardly in and of itself
establishes bad faith. Moreover, domain names that are
abbreviations of a company’s formal name are quite
common. To view the use of such names as tantamount to
bad faith would chill Internet entrepreneurship with the
prospect of endless litigation.
Volkswagen, however, points to direct evidence regarding
Virtual Works’ intent -the statements made at registration.
Grimes’ deposition reveals that when registering vw.net, he
and Anderson specifically acknowledged that vw.net might
be confused with Volkswagen by some Internet users. They
nevertheless decided to register the address for their own
use, but left open the possibility of one day selling the site
to Volkswagen “for a lot of money.” Volkswagen claims

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that this is sufficient to establish bad faith registration in
violation of the ACPA.
Viewing the facts in the light most favorable to Virtual
Works, as we must on summary judgment, the statement at
registration establishes that Virtual Works had a dual
purpose in selecting vw.net. Contrary to Virtual Works’
claim, the fact that it used vw.net for two years as a part of
an ISP business is not dispositive of the question of intent.
Virtual Works chose vw.net over other domain names not
just because “vw” reflected the company’s own initials, but
also because it foresaw the ability to profit from the natural
association of vw.net with the VW mark. Indeed, it is
obvious even to a casual observer that the similarity
between vw.net and the VW mark is overwhelming.
Moreover, the facts in the summary judgment record
affirmatively support the claim that Virtual Works had a
bad faith intent to profit when it attempted to sell vw.net to
Volkswagen. It is true that a mere offer to sell a domain
name is not itself evidence of unlawful trafficking. H.R.
Conf. Rep. No. 106-464, at 111 (1999). The ACPA was not
enacted to put an end to the sale of all domain names. This
case, however, involves much more than a plain vanilla
offer to sell a domain name.
Indeed, the second piece of direct evidence regarding
Virtual Works’ intent is the terms of its offer to
Volkswagen. Virtual Works told Volkswagen that vw.net
would be sold to the highest bidder if Volkswagen did not
make an offer within twenty-four hours. Virtual Works also
stated that others would jump at the chance to own a
valuable domain name like vw.net because Internet users
would instinctively associate the site with Volkswagen.
Virtual Works knew, both when it registered vw.net and
when it offered to sell the site, that consumers would
associate vw.net with Volkswagen. It sought to maximize
the advantage of this association by threatening to auction
off the site. And it hoped that in an effort to protect its

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mark, Volkswagen would respond with a hefty offer of its
own.
Likewise, Virtual Works cannot take refuge in the ACPA’s
safe harbor provision. The safe harbor is only available
when the defendant both “believed and had reasonable
grounds to believe that the use of the domain name was
fair use or otherwise lawful.” 15 U.S.C. § 1125(d)(1)(B)(ii).
The openly admitted hope of profiting from consumer
confusion of vw.net with the VW mark disqualifies Virtual
Works from the ACPA’s safe harbor. A defendant who acts
even partially in bad faith in registering a domain name is
not, as a matter of law, entitled to benefit from the Act’s
safe harbor provision. Virtual Works knew it was
registering a domain name bearing strong resemblance to a
federally protected trademark. And it did so, at least in part,
with the idea of selling the site “for a lot of money” to the
mark’s owner.
Just as we are reluctant to interpret the ACPA’s liability
provisions in an overly aggressive manner, we decline to
construe the safe harbor so broadly as to undermine the
rest of the statute. All but the most blatant cybersquatters
will be able to put forth at least some lawful motives for
their behavior. To hold that all such individuals may qualify
for the safe harbor would frustrate Congress’ purpose by
artificially limiting the statute’s reach. We do not think
Congress intended the safe harbor to protect defendants
operating, at least in part, with unlawful intent.
The ACPA allows a court to view the totality of the
circumstances in making the bad faith determination. 15
U.S.C.S 1125(d)(1)(B)(i). Here, that means looking at the
purely circumstantial indicia of bad faith, as well as the
direct evidence of the statements made at the time of
registration and the direct evidence regarding terms of the
sale. Whether our decision would be the same in the
absence of any particular piece of evidence is a question we
need not address. Viewed in its totality, the evidence

363

establishes that at the time Virtual Works proposed to sell
vw.net to Volkswagen, it was motivated by a bad faith
intent to profit from the famousness of the VW mark. This
is the sort of misconduct that Congress sought to
discourage.
B.
The second inquiry under the ACPA is whether Virtual
Works 1) registered, trafficked in, or used a domain name;
2) that is identical or confusingly similar to a distinctive
mark; or 3) is identical, confusingly similar to, or dilutive of
a famous mark. 15 U.S.C. § 1125(d)(1)(A)(ii). There is no
dispute that Virtual Works registered, trafficked in, and
used vw.net. There is also no dispute that the VW mark is
famous. The sole point of contention is whether vw.net is
identical, confusingly similar to, or dilutive of Volkswagen’s
famous VW mark.
Virtual Works claims it is not similar because there is a
distinction between the .net and .com TLD. According to
Virtual Works, Volkswagen could not have registered
vw.net in October of 1996 because it is an automaker and
not an Internet service provider. This claim, however, is
unavailing in light of the fact that NSI stopped enforcing
the .com/.net distinction over a year before Virtual Works
registered vw.net. The claim is also undermined by Virtual
Works’ admission that at the time of registration it was
aware of the potential confusion with the VW mark, and by
its statement to Volkswagen that users would instinctively
use the vw.net address to link to Volkswagen’s web site. Cf.
Shade’s Landing, Inc. v. Williams , 76 F. Supp.2d 983, 990
(D. Minn. 1999) (“Because all domain names include one
of these extensions, the distinction between a domain name
ending with ‘.com’ and the same name ending with ‘.net’ is
not highly significant.”). The district court was correct,
therefore, in holding that vw.net is confusingly similar to
the famous VW mark.

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IV.
The remedy that Volkswagen sought in district court was
the right to use vw.net for itself. The ACPA allows a court
to order “the transfer of the domain name to the owner of
the mark” if the Act is violated. 15 U.S.C. §
1125(d)(2)(D)(i). Because Virtual Works’ violation of the
ACPA supports the remedy Volkswagen seeks, we need
not address Volkswagen’s claims of trademark infringement
or dilution.
The ACPA was not enacted to give companies the right to
fence off every possible combination of letters that bears
any similarity to a protected mark. Rather, it was enacted to
prevent the expropriation of protected marks in cyberspace
and to abate the consumer confusion resulting therefrom.
The resolution of this case turns on the unique facts and
circumstances which it presents. Ultimately, we believe the
evidence is sufficient to establish that, as a matter of law,
Virtual Works attempted to profit in bad faith from
Volkswagen’s famous mark. 15 U.S.C. § 1125(d)(1)(A). The
district court thus did not err in ordering Virtual Works to
turn over vw.net to Volkswagen. For the foregoing reasons,
we affirm the judgment.
Problems
If Qualitex developed a new material for their dryer pads that
featured distinctive, small bumps that aid in the evenness of drying,
Qualitex … (For each answer, state whether the resulting statement
is true or false, with a very, very brief explanation.)
(a) could trademark the bumpy pad.
(b) would be barred from trademark because a bumpy texture is
not a word, name, symbol or device.
(c) would be barred from trademark under the functionality
doctrine.

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(d) would be barred from obtaining a patent for the texture itself,
because the bumps aren’t a “process,” under the patent statutes.
(e) might be able to patent the process for creating the material
even if materials featuring a similar texture are already on the
market.
Answers
(a) could trademark the bumpy pad.
False. This is just a pure application of the functionality
doctrine - see below.
(b) would be barred from trademark because a bumpy texture is
not a word, name, symbol or device.
False. As Breyer stated in Qualitex, “[s]ince human beings
might use as a ‘symbol’ or ‘device’ almost anything at all that
is capable of carrying meaning, this language, read literally, is
not restrictive.” Indeed, a bumpy texture is capable of carrying
meaning. Even the more demanding part of the statute might
be met here, since the bumpy texture quite possibly could be
used to distinguish Qualitex as the source of the pads.
(c) would be barred from trademark under the functionality
doctrine.
True. The texture “aid[s] in the evenness of drying.” Because
the texture results in a better performing pad, and thus
“affects the … quality” of the pad, the functionality doctrine
would bar trademark registration of the texture.
(d) would be barred from obtaining a patent for the texture itself,
because the bumps aren’t a “process,” under the patent statutes.
False. Even if the bumps aren’t a “process,” they might be a
“manufacture” or “composition of matter,” and thus
patentable subject matter under §101 of the Patent Act. The
Act allows one to patent inventions other than processes.

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(e) might be able to patent the process for creating the material
even if materials featuring a similar texture are already on the
market.
True. If similar materials are on the market already, then one
would not be able to patent the material itself. This is because
the material would not be novel, which is required to obtain a
patent. However, if Qualitex has invented a new process for
creating a known material and that process otherwise meets
the novel and non-obvious requirements, then the process may
be patentable.
3.3. Patents
Diamond v. Chakrabarty, 447 U.S. 303 (1980)
Lawrence G. Wallace, Washington, D. C., for petitioner.
Edward F. McKie, Jr., Washington, D. C., for respondent.
MR. CHIEF JUSTICE BURGER delivered the opinion of the
Court.
We granted certiorari to determine whether a live, humanmade micro-organism is patentable subject matter under 35
U.S.C. § 101.

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I
In 1972, respondent Chakrabarty, a microbiologist, filed a
patent application, assigned to the General Electric Co. The
application asserted 36 claims related to Chakrabarty’s
invention of “a bacterium from the genus Pseudomonas
containing therein at least two stable energy-generating
plasmids, each of said plasmids providing a separate
hydrocarbon degradative pathway.”1 This human-made,
genetically engineered bacterium is capable of breaking
down multiple components of crude oil. Because of this
property, which is possessed by no naturally occurring
bacteria, Chakrabarty’s invention is believed to have
significant value for the treatment of oil spills.2
Chakrabarty’s patent claims were of three types: first,
process claims for the method of producing the bacteria;
second, claims for an inoculum comprised of a carrier
material floating on water, such as straw, and the new
bacteria; and third, claims to the bacteria themselves. The
patent examiner allowed the claims falling into the first two
categories, but rejected claims for the bacteria. His decision
rested on two grounds: (1) that micro-organisms are

1 Plasmids are hereditary units physically separate from the chromosomes of the

cell. In prior research, Chakrabarty and an associate discovered that plasmids
control the oil degradation abilities of certain bacteria. In particular, the two
researchers discovered plasmids capable of degrading camphor and octane, two
components of crude oil. In the work represented by the patent application at
issue here, Chakrabarty discovered a process by which four different plasmids,
capable of degrading four different oil components, could be transferred to and
maintained stably in a single Pseudomonas bacterium, which itself has no capacity
for degrading oil.
At present, biological control of oil spills requires the use of a mixture of
naturally occurring bacteria, each capable of degrading one component of the oil
complex. In this way, oil is decomposed into simpler substances which can serve
as food for aquatic life. However, for various reasons, only a portion of any such
mixed culture survives to attack the oil spill. By breaking down multiple
components of oil, Chakrabarty’s micro-organism promises more efficient and
rapid oil-spill control.
2

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“products of nature,” and (2) that as living things they are
not patentable subject matter under 35 U.S.C. § 101.
Chakrabarty appealed the rejection of these claims to the
Patent Office Board of Appeals, and the Board affirmed
the Examiner on the second ground.3 Relying on the
legislative history of the 1930 Plant Patent Act, in which
Congress extended patent protection to certain asexually
reproduced plants, the Board concluded that § 101 was not
intended to cover living things such as these laboratory
created micro-organisms.
The Court of Customs and Patent Appeals, by a divided
vote, reversed on the authority of its prior decision in In re
Bergy, 563 F.2d 1031, 1038 (1977), which held that “the fact
that microorganisms … are alive … [is] without legal
significance” for purposes of the patent law.4 Subsequently,
we granted the Acting Commissioner of Patents and
Trademarks’ petition for certiorari in Bergy, vacated the
judgment, and remanded the case “for further
consideration in light of Parker v. Flook, 437 U.S. 584, [98
S.Ct. 2522, 57 L.Ed.2d 451] (1978).” 438 U.S. 902, 98 S.Ct.
3119, 57 L.Ed.2d 1145 (1978). The Court of Customs and
Patent Appeals then vacated its judgment in Chakrabarty
and consolidated the case with Bergy for reconsideration.
After re-examining both cases in the light of our holding in
Flook, that court, with one dissent, reaffirmed its earlier
judgments. 596 F.2d 952 (1979).
The Commissioner of Patents and Trademarks again
sought certiorari, and we granted the writ as to both Bergy
and Chakrabarty. 444 U.S. 924, 100 S.Ct. 261, 62 L.Ed.2d

3 The

Board concluded that the new bacteria were not “products of nature,”
because Pseudomonas bacteria containing two or more different energy-generating
plasmids are not naturally occurring.
4 Bergy involved a patent application for a pure culture of the micro-organism

Streptomyces vellosus found to be useful in the production of lincomycin, an
antibiotic.

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180 (1979). Since then, Bergy has been dismissed as moot,
444 U.S. 1028, 100 S.Ct. 696, 62 L.Ed.2d 664 (1980),
leaving only Chakrabarty for decision.
II
The Constitution grants Congress broad power to legislate
to “promote the Progress of Science and useful Arts, by
securing for limited Times to Authors and Inventors the
exclusive Right to their respective Writings and
Discoveries.” Art. I, § 8, cl. 8. The patent laws promote this
progress by offering inventors exclusive rights for a limited
period as an incentive for their inventiveness and research
efforts. Kewanee Oil Co. v. Bicron Corp., 416 U.S. 470, 480481, 94 S.Ct. 1879, 1885-1886, 40 L.Ed.2d 315 (1974);
Universal Oil Co. v. Globe Co., 322 U.S. 471, 484, 64 S.Ct.
1110, 1116, 88 L.Ed. 1399 (1944). The authority of
Congress is exercised in the hope that “[t]he productive
effort thereby fostered will have a positive effect on society
through the introduction of new products and processes of
manufacture into the economy, and the emanations by way
of increased employment and better lives for our citizens.”
Kewanee, supra, 416 U.S., at 480, 94 S.Ct., at 1885-86.
The question before us in this case is a narrow one of
statutory interpretation requiring us to construe 35 U.S.C. §
101, which provides:
Whoever invents or discovers any new
and
useful
process,
machine,
manufacture, or composition of
matter, or any new and useful
improvement thereof, may obtain a
patent therefor, subject to the
conditions and requirements of this
title.

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Specifically, we must determine whether respondent’s
micro-organism constitutes a “manufacture” or
“composition of matter” within the meaning of the statute.5
III
In cases of statutory construction we begin, of course, with
the language of the statute. Southeastern Community College v.
Davis, 442 U.S. 397, 405, 99 S.Ct. 2361, 2366, 60 L.Ed.2d
980 (1979). And “unless otherwise defined, words will be
interpreted as taking their ordinary, contemporary common
meaning.” Perrin v. United States, 444 U.S. 37, 42, 100 S.Ct.
311, 314, 62 L.Ed.2d 199 (1979). We have also cautioned
that courts “should not read into the patent laws limitations
and conditions which the legislature has not expressed.”
United States v. Dubilier Condenser Corp., 289 U.S. 178, 199, 53
S.Ct. 554, 561, 77 L.Ed. 1114 (1933).
Guided by these canons of construction, this Court has
read the term “manufacture” in § 101 in accordance with its
dictionary definition to mean “the production of articles for
use from raw or prepared materials by giving to these
materials new forms, qualities, properties, or combinations,
whether by hand-labor or by machinery.” American Fruit
Growers, Inc. v. Brogdex Co., 283 U.S. 1, 11, 51 S.Ct. 328, 330,
75 L.Ed. 801 (1931). Similarly, “composition of matter” has
been construed consistent with its common usage to
include “all compositions of two or more substances and
… all composite articles, whether they be the results of
chemical union, or of mechanical mixture, or whether they
be gases, fluids, powders or solids.” Shell Development Co. v.
Watson, 149 F.Supp. 279, 280 (D.C.1957) (citing 1 A.
Deller, Walker on Patents § 14, p. 55 (1st ed. 1937)). In
choosing such expansive terms as “manufacture” and
“composition of matter,” modified by the comprehensive
This case does not involve the other “conditions and requirements” of the
patent laws, such as novelty and nonobviousness. 35 U.S.C. §§ 102, 103.
5

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“any,” Congress plainly contemplated that the patent laws
would be given wide scope.
The relevant legislative history also supports a broad
construction. The Patent Act of 1793, authored by Thomas
Jefferson, defined statutory subject matter as “any new and
useful art, machine, manufacture, or composition of matter,
or any new or useful improvement [thereof].” Act of Feb.
21, 1793, § 1, 1 Stat. 319. The Act embodied Jefferson’s
philosophy that “ingenuity should receive a liberal
encouragement.” 5 Writings of Thomas Jefferson 75-76
(Washington ed. 1871). See Graham v. John Deere Co., 383
U.S. 1, 7-10, 86 S.Ct. 684, 688-690, 15 L.Ed.2d 545 (1966).
Subsequent patent statutes in 1836, 1870, and 1874
employed this same broad language. In 1952, when the
patent laws were recodified, Congress replaced the word
“art” with “process,” but otherwise left Jefferson’s language
intact. The Committee Reports accompanying the 1952 Act
inform us that Congress intended statutory subject matter
to “include anything under the sun that is made by man.”
S.Rep.No.1979, 82d Cong., 2d Sess., 5 (1952);
H.R.Rep.No.1923, 82d Cong., 2d Sess., 6 (1952).6
This is not to suggest that § 101 has no limits or that it
embraces every discovery. The laws of nature, physical
phenomena, and abstract ideas have been held not
patentable. See Parker v. Flook, 437 U.S. 584, 98 S.Ct. 2522,
57 L.Ed.2d 451 (1978); Gottschalk v. Benson, 409 U.S. 63, 67,
93 S.Ct. 253, 255, 34 L.Ed.2d 273 (1972); Funk Brothers Seed
Co. v. Kalo Inoculant Co., 333 U.S. 127, 130, 68 S.Ct. 440, 441,
92 L.Ed. 588 (1948); O’Reilly v. Morse, 15 How. 62, 112-121,
14 L.Ed. 601 (1854); Le Roy v. Tatham, 14 How. 156, 175,

6 This same language was employed by P. J. Federico, a principal draftsman of the

1952 recodification, in his testimony regarding that legislation: “[U]nder section
101 a person may have invented a machine or a manufacture, which may include
anything under the sun that is made by man… . ” Hearings on H.R. 3760 before
Subcommittee No. 3 of the House Committee on the Judiciary, 82d Cong., 1st
Sess., 37 (1951).

372

14 L.Ed. 367 (1853). Thus, a new mineral discovered in the
earth or a new plant found in the wild is not patentable
subject matter. Likewise, Einstein could not patent his
celebrated law that E=mc7; nor could Newton have
patented the law of gravity. Such discoveries are
“manifestations of … nature, free to all men and reserved
exclusively to none.” Funk, supra, 333 U.S., at 130, 68 S.Ct.,
at 441.
Judged in this light, respondent’s micro-organism plainly
qualifies as patentable subject matter. His claim is not to a
hitherto unknown natural phenomenon, but to a
nonnaturally occurring manufacture or composition of
matter – a product of human ingenuity “having a distinctive
name, character [and] use.” Hartranft v. Wiegmann, 121 U.S.
609, 615, 7 S.Ct. 1240, 1243, 30 L.Ed. 1012 (1887). The
point is underscored dramatically by comparison of the
invention here with that in Funk. There, the patentee had
discovered that there existed in nature certain species of
root-nodule bacteria which did not exert a mutually
inhibitive effect on each other. He used that discovery to
produce a mixed culture capable of inoculating the seeds of
leguminous plants. Concluding that the patentee had
discovered “only some of the handiwork of nature,” the
Court ruled the product non-patentable:

7 The Plant Patent Act of 1930, 35 U.S.C. § 161, provides in relevant part:

Whoever invents or discovers and asexually reproduces
any distinct and new variety of plant, including cultivated
sports, mutants, hybrids, and newly found seedlings, other
than a tuber propogated plant or a plant found in an
uncultivated state, may obtain a patent therefor … .

The Plant Variety Protection Act of 1970, provides in relevant part:
The breeder of any novel variety of sexually reproduced
plant (other than fungi, bacteria, or first generation
hybrids) who has so reproduced the variety, or his
successor in interest, shall be entitled to plant variety
protection therefor … .
84 Stat. 1547, 7 U.S.C. § 2402(a). See generally, 3 A. Deller, Walker on Patents, ch.
IX (2d ed. 1964); R. Allyn, The First Plant Patents (1934).

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Each of the species of root-nodule
bacteria contained in the package
infects the same group of leguminous
plants which it always infected. No
species acquires a different use. The
combination of species produces no
new bacteria, no change in the six
species of bacteria, and no
enlargement of the range of their
utility. Each species has the same
effect it always had. The bacteria
perform in their natural way. Their use
in combination does not improve in
any way their natural functioning. They
serve the ends nature originally
provided and act quite independently
of any effort of the patentee.
333 U.S., at 131, 68 S.Ct., at 442.
Here, by contrast, the patentee has produced a new
bacterium with markedly different characteristics from any
found in nature and one having the potential for significant
utility. His discovery is not nature’s handiwork, but his
own; accordingly it is patentable subject matter under §
101.
IV
Two contrary arguments are advanced, neither of which we
find persuasive.
(A)
The petitioner’s first argument rests on the enactment of
the 1930 Plant Patent Act, which afforded patent
protection to certain asexually reproduced plants, and the
1970 Plant Variety Protection Act, which authorized
protection for certain sexually reproduced plants but

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excluded bacteria from its protection.8 In the petitioner’s
view, the passage of these Acts evidences congressional
understanding that the terms “manufacture” or
“composition of matter” do not include living things; if
they did, the petitioner argues, neither Act would have been
necessary.
We reject this argument. Prior to 1930, two factors were
thought to remove plants from patent protection. The first
was the belief that plants, even those artificially bred, were
products of nature for purposes of the patent law. This
position appears to have derived from the decision of the
patent office in Ex parte Latimer, 1889 Dec.Com.Pat. 123, in
which a patent claim for fiber found in the needle of the
Pinus australis was rejected. The Commissioner reasoned
that a contrary result would permit “patents [to] be
obtained upon the trees of the forest and the plants of the
earth, which of course would be unreasonable and
impossible.” Id., at 126. The Latimer case, it seems, came to
“se[t] forth the general stand taken in these matters” that
plants were natural products not subject to patent
protection. Thorne, Relation of Patent Law to Natural
Products, 6 J. Pat.Off.Soc. 23, 24 (1923).9 The second
obstacle to patent protection for plants was the fact that
plants were thought not amenable to the “written
description” requirement of the patent law. See 35 U.S.C. §
112. Because new plants may differ from old only in color

8 Writing three years after the passage of the 1930 Act, R. Cook, Editor of the

Journal of Heredity, commented: “It is a little hard for plant men to understand
why [Art. I, § 8] of the Constitution should not have been earlier construed to
include the promotion of the art of plant breeding. The reason for this is probably
to be found in the principle that natural products are not patentable.” Florists
Exchange and Horticultural Trade World, July 15, 1933, p. 9.
9 In 1873, the Patent Office granted Louis Pasteur a patent on “yeast, free from

organic germs of disease, as an article of manufacture.” And in 1967 and 1968,
immediately prior to the passage of the Plant Variety Protection Act, that Office
granted two patents which, as the petitioner concedes, state claims for living
micro-organisms. See Reply Brief for Petitioner 3, and n. 2.

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or perfume, differentiation by written description was often
impossible. See Hearings on H.R.11372 before the House
Committee on Patents, 71st Cong., 2d Sess. 7 (1930)
(memorandum of Patent Commissioner Robertson).
In enacting the Plant Patent Act, Congress addressed both
of these concerns. It explained at length its belief that the
work of the plant breeder “in aid of nature” was patentable
invention. S.Rep.No.315, 71st Cong., 2d Sess., 6-8 (1930);
H.R.Rep.No.1129, 71st Cong., 2d Sess., 7-9 (1930). And it
relaxed the written description requirement in favor of “a
description … as complete as is reasonably possible.” 35
U.S.C. § 162. No Committee or Member of Congress,
however, expressed the broader view, now urged by the
petitioner, that the terms “manufacture” or “composition
of matter” exclude living things. The sole support for that
position in the legislative history of the 1930 Act is found
in the conclusory statement of Secretary of Agriculture
Hyde, in a letter to the Chairmen of the House and Senate
Committees considering the 1930 Act, that “the patent laws
… at the present time are understood to cover only
inventions or discoveries in the field of inanimate nature.”
See S.Rep.No.315, supra, at Appendix A; H.R.Rep.No.1129,
supra, at Appendix A. Secretary Hyde’s opinion, however, is
not entitled to controlling weight. His views were solicited
on the administration of the new law and not on the scope
of patentable subject matter – an area beyond his
competence. Moreover, there is language in the House and
Senate Committee Reports suggesting that to the extent
Congress considered the matter it found the Secretary’s
dichotomy unpersuasive. The Reports observe:
There is a clear and logical distinction
between the discovery of a new variety of plant
and of certain inanimate things, such, for
example, as a new and useful natural
mineral. The mineral is created wholly
by nature unassisted by man… . On

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the other hand, a plant discovery
resulting from cultivation is unique,
isolated, and is not repeated by nature,
nor can it be reproduced by nature
unaided by man… .
S.Rep.No.315, supra, at 6; H.R.Rep.No.1129,supra, at 7
(emphasis added).
Congress thus recognized that the relevant distinction was
not between living and inanimate things, but between
products of nature, whether living or not, and human-made
inventions. Here, respondent’s micro-organism is the result
of human ingenuity and research. Hence, the passage of the
Plant Patent Act affords the Government no support.
Nor does the passage of the 1970 Plant Variety Protection
Act support the Government’s position. As the
Government acknowledges, sexually reproduced plants
were not included under the 1930 Act because new
varieties could not be reproduced true-to-type through
seedlings. Brief for Petitioner 27, n. 31. By 1970, however,
it was generally recognized that true-to-type reproduction
was possible and that plant patent protection was therefore
appropriate. The 1970 Act extended that protection. There
is nothing in its language or history to suggest that it was
enacted because § 101 did not include living things.
In particular, we find nothing in the exclusion of bacteria
from plant variety protection to support the petitioner’s
position. See n. 7, supra. The legislative history gives no
reason for this exclusion. As the Court of Customs and
Patent Appeals suggested, it may simply reflect
congressional agreement with the result reached by that
court in deciding In re Arzberger, 27 C.C.P.A. (Pat.) 1315,
112 F.2d 834 (1940), which held that bacteria were not
plants for the purposes of the 1930 Act. Or it may reflect
the fact that prior to 1970 the Patent Office had issued

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patents for bacteria under § 101.10 In any event, absent
some clear indication that Congress “focused on [the]
issues … directly related to the one presently before the
Court,” SEC v. Sloan, 436 U.S. 103, 120-121, 98 S.Ct. 1702,
1713, 56 L.Ed.2d 148 (1978), there is no basis for reading
into its actions an intent to modify the plain meaning of the
words found in § 101. See TVA v. Hill, 437 U.S. 153, 189193, 98 S.Ct. 2279, 2299-2301, 57 L.Ed.2d 117 (1978);
United States v. Price, 361 U.S. 304, 313, 80 S.Ct. 326, 331, 4
L.Ed.2d 334 (1960).
(B)
The petitioner’s second argument is that micro-organisms
cannot qualify as patentable subject matter until Congress
expressly authorizes such protection. His position rests on
the fact that genetic technology was unforeseen when
Congress enacted § 101. From this it is argued that
resolution of the patentability of inventions such as
respondent’s should be left to Congress. The legislative
process, the petitioner argues, is best equipped to weigh the
competing economic, social, and scientific considerations
involved, and to determine whether living organisms
produced by genetic engineering should receive patent
protection. In support of this position, the petitioner relies
on our recent holding in Parker v. Flook, 437 U.S. 584, 98
S.Ct. 2522, 57 L.Ed.2d 451 (1978), and the statement that
the judiciary “must proceed cautiously when … asked to
extend patent rights into areas wholly unforeseen by
Congress.” Id., at 596, 98 S.Ct. at 2529.

10 Even an abbreviated list of patented inventions underscores the point: telegraph

(Morse, No. 1,647); telephone (Bell, No. 174,465); electric lamp (Edison, No.
223,898); airplane (the Wrights, No. 821,393); transistor (Bardeen & Brattain, No.
2,524,035); neutronic reactor (Fermi & Szilard, No. 2,708,656); laser (Schawlow &
Townes, No. 2,929,922). See generally Revolutionary Ideas, Patents & Progress in
America, United States Patent and Trademark Office (1976).

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It is, of course, correct that Congress, not the courts, must
define the limits of patentability; but it is equally true that
once Congress has spoken it is “the province and duty of
the judicial department to say what the law is.” Marbury v.
Madison, 1 Cranch 137, 177, 2 L.Ed. 60 (1803). Congress
has performed its constitutional role in defining patentable
subject matter in § 101; we perform ours in construing the
language Congress has employed. In so doing, our
obligation is to take statutes as we find them, guided, if
ambiguity appears, by the legislative history and statutory
purpose. Here, we perceive no ambiguity. The subjectmatter provisions of the patent law have been cast in broad
terms to fulfill the constitutional and statutory goal of
promoting “the Progress of Science and the useful Arts”
with all that means for the social and economic benefits
envisioned by Jefferson. Broad general language is not
necessarily ambiguous when congressional objectives
require broad terms.
Nothing in Flook is to the contrary. That case applied our
prior precedents to determine that a “claim for an
improved method of calculation, even when tied to a
specific end use, is unpatentable subject matter under §
101.” 437 U.S., at 595, n. 18, 98 S.Ct., at 2528, n. 18. The
Court carefully scrutinized the claim at issue to determine
whether it was precluded from patent protection under
“the principles underlying the prohibition against patents
for ‘ideas’ or phenomena of nature.” Id., at 593, 98 S.Ct. at
2527. We have done that here. Flook did not announce a
new principle that inventions in areas not contemplated by
Congress when the patent laws were enacted are
unpatentable per se.
To read that concept into Flook would frustrate the
purposes of the patent law. This Court frequently has
observed that a statute is not to be confined to the
“particular application[s] … contemplated by the
legislators.” Barr v. United States, 324 U.S. 83, 90, 65 S.Ct.

379

522, 525, 89 L.Ed. 765 (1945). Accord, Browder v. United
States, 312 U.S. 335, 339, 61 S.Ct. 599, 601, 85 L.Ed. 862
(1941); Puerto Rico v. Shell Co., 302 U.S. 253, 257, 58 S.Ct.
167, 169, 82 L.Ed. 235 (1937). This is especially true in the
field of patent law. A rule that unanticipated inventions are
without protection would conflict with the core concept of
the patent law that anticipation undermines patentability.
See Graham v. John Deere Co., 383 U.S., at 12-17, 86 S.Ct., at
691-693. Mr. Justice Douglas reminded that the inventions
most benefiting mankind are those that “push back the
frontiers of chemistry, physics, and the like.” Great A. & P.
Tea Co. v. Supermarket Corp., 340 U.S. 147, 154, 71 S.Ct. 127,
131, 95 L.Ed. 162 (1950) (concurring opinion). Congress
employed broad general language in drafting § 101 precisely
because such inventions are often unforeseeable.11
To buttress his argument, the petitioner, with the support
of amicus, points to grave risks that may be generated by
research endeavors such as respondent’s. The briefs present
a gruesome parade of horribles. Scientists, among them
Nobel laureates, are quoted suggesting that genetic research
may pose a serious threat to the human race, or, at the very
least, that the dangers are far too substantial to permit such
research to proceed apace at this time. We are told that
genetic research and related technological developments
may spread pollution and disease, that it may result in a loss
11 We are not to be understood as suggesting that the political branches have been

laggard in the consideration of the problems related to genetic research and
technology. They have already taken action. In 1976, for example, the National
Institutes of Health released guidelines for NIH-sponsored genetic research which
established conditions under which such research could be performed. 41
Fed.Reg. 27902. In 1978 those guidelines were revised and relaxed. 43 Fed.Reg.
60080, 60108, 60134. And Committees of the Congress have held extensive
hearings on these matters. See, e. g., Hearings on Genetic Engineering before the
Subcommittee on Health of the Senate Committee on Labor and Public Welfare,
94th Cong., 1st Sess. (1975); Hearings before the Subcommittee on Science,
Technology, and Space of the Senate Committee on Commerce, Science, and
Transportation, 95th Cong., 1st Sess. (1977); Hearings on H.R. 4759 et al. before
the Subcommittee on Health and the Environment of the House Committee on
Interstate and Foreign Commerce, 95th Cong., 1st Sess. (1977).

380

of genetic diversity, and that its practice may tend to
depreciate the value of human life. These arguments are
forcefully, even passionately, presented; they remind us
that, at times, human ingenuity seems unable to control
fully the forces it creates – that with Hamlet, it is
sometimes better “to bear those ills we have than fly to
others that we know not of.”
It is argued that this Court should weigh these potential
hazards in considering whether respondent’s invention is
patentable subject matter under § 101. We disagree. The
grant or denial of patents on micro-organisms is not likely
to put an end to genetic research or to its attendant risks.
The large amount of research that has already occurred
when no researcher had sure knowledge that patent
protection would be available suggests that legislative or
judicial fiat as to patentability will not deter the scientific
mind from probing into the unknown any more than
Canute could command the tides. Whether respondent’s
claims are patentable may determine whether research
efforts are accelerated by the hope of reward or slowed by
want of incentives, but that is all.
What is more important is that we are without competence
to entertain these arguments – either to brush them aside as
fantasies generated by fear of the unknown, or to act on
them. The choice we are urged to make is a matter of high
policy for resolution within the legislative process after the
kind of investigation, examination, and study that legislative
bodies can provide and courts cannot. That process
involves the balancing of competing values and interests,
which in our democratic system is the business of elected
representatives. Whatever their validity, the contentions
now pressed on us should be addressed to the political

381

branches of the Government, the Congress and the
Executive, and not to the courts.12
We have emphasized in the recent past that “[o]ur
individual appraisal of the wisdom or unwisdom of a
particular [legislative] course … is to be put aside in the
process of interpreting a statute.” TVA v. Hill, 437 U.S., at
194, 98 S.Ct., at 2302. Our task, rather, is the narrow one of
determining what Congress meant by the words it used in
the statute; once that is done our powers are exhausted.
Congress is free to amend § 101 so as to exclude from
patent protection organisms produced by genetic
engineering. Cf. 42 U.S.C. § 2181(a), exempting from
patent protection inventions “useful solely in the utilization
of special nuclear material or atomic energy in an atomic
weapon.” Or it may chose to craft a statute specifically
designed for such living things. But, until Congress takes
such action, this Court must construe the language of § 101
as it is. The language of that section fairly embraces
respondent’s invention.
Accordingly, the judgment of the Court of Customs and
Patent Appeals is
Affirmed.
MR. JUSTICE BRENNAN, with whom MR. JUSTICE WHITE,
MR. JUSTICE MARSHALL, AND MR. JUSTICE POWELL
join, dissenting.
I agree with the Court that the question before us is a
narrow one. Neither the future of scientific research, nor
even, the ability of respondent Chakrabarty to reap some
monopoly profits from his pioneering work, is at stake.
Patents on the processes by which he has produced and
employed the new living organism are not contested. The

12 I read the Court to admit that the popular conception, even among advocates

of agricultural patents, was that living organisms were unpatentable. See ante, at
311-312, and n. 8.

382

only question we need decide is whether Congress,
exercising its authority under Art. I, § 8, of the
Constitution, intended that he be able to secure a
monopoly on the living organism itself, no matter how
produced or how used. Because I believe the Court has
misread the applicable legislation, I dissent.
The patent laws attempt to reconcile this Nation’s deep
seated antipathy to monopolies with the need to encourage
progress. Deepsouth Packing Co. v. Laitram Corp., 406 U.S.
518, 530-531, 92 S.Ct. 1700, 1707-1708, 32 L.Ed.2d 273
(1972); Graham v. John Deere Co., 383 U.S. 1, 7-10, 86 S.Ct.
684, 668-690, 15 L.Ed.2d 545 (1966). Given the complexity
and legislative nature of this delicate task, we must be
careful to extend patent protection no further than
Congress has provided. In particular, were there an absence
of legislative direction, the courts should leave to Congress
the decisions whether and how far to extend the patent
privilege into areas where the common understanding has
been that patents are not available.13 Cf. Deepsouth Packing
Co. v. Laitram Corp., supra.
In this case, however, we do not confront a complete
legislative vacuum. The sweeping language of the Patent
Act of 1793, as re-enacted in 1952, is not the last

13 But even if I agreed with the Court that the 1930 and 1970 Acts were

not dispositive, I would dissent. This case presents even more cogent
reasons than Deepsouth Packing Co. not to extend the patent monopoly in
the face of uncertainty. At the very least, these Acts are signs of legislative
attention to the problems of patenting living organisms, but they give no
affirmative indication of congressional intent that bacteria be patentable.
The caveat of Parker v. Flook, 437 U.S. 584, 596, 90 S.Ct. 2522, 2529, 57
L.Ed.2d 451 (1978), an admonition to “proceed cautiously when we are
asked to extend patent rights into areas wholly unforeseen by Congress,”
therefore becomes pertinent. I should think the necessity for caution is
that much greater when we are asked to extend patent rights into areas
Congress has foreseen and considered but has not resolved.

383

pronouncement Congress has made in this area. In 1930
Congress enacted the Plant Patent Act affording patent
protection to developers of certain asexually reproduced
plants. In 1970 Congress enacted the Plant Variety
Protection Act to extend protection to certain new plant
varieties capable of sexual reproduction. Thus, we are not
dealing – as the Court would have it – with the routine
problem of “unanticipated inventions.” Ante, at 316. In
these two Acts Congress has addressed the general problem
of patenting animate inventions and has chosen carefully
limited language granting protection to some kinds of
discoveries, but specifically excluding others. These Acts
strongly evidence a congressional limitation that excludes
bacteria from patentability.2
First, the Acts evidence Congress’ understanding, at least
since 1930, that § 101 does not include living organisms. If
newly developed living organisms not naturally occurring
had been patentable under § 101, the plants included in the
scope of the 1930 and 1970 Acts could have been patented
without new legislation. Those plants, like the bacteria
involved in this case, were new varieties not naturally
occurring.14 Although the Court, ante, at 311, rejects this
line of argument, it does not explain why the Acts were
necessary unless to correct a pre-existing situation.15 I
cannot share the Court’s implicit assumption that Congress
was engaged in either idle exercises or mere correction of
the public record when it enacted the 1930 and 1970 Acts.
The Court refers to the logic employed by Congress in choosing not to
perpetuate the “dichotomy” suggested by Secretary Hyde. Ante, at 313. But by this
logic the bacteria at issue here are distinguishable from a “mineral … created
wholly by nature” in exactly the same way as were the new varieties of plants. If a
new Act was needed to provide patent protection for the plants, it was equally
necessary for bacteria. Yet Congress provided for patents on plants but not on
these bacteria. In short, Congress decided to make only a subset of animate
“human-made inventions,” ibid., patentable.
14

If the 1930 Act’s only purpose were to solve the technical problem of
description referred to by the Court, ante, at 312, most of the Act, and in particular
its limitation to asexually reproduced plants, would have been totally unnecessary.
15

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And Congress certainly thought it was doing something
significant. The Committee Reports contain expansive
prose about the previously unavailable benefits to be
derived from extending patent protection to plants.16 H.R.
Rep. No. 91-1605, pp. 1-3 (1970), U.S.Code Cong. &
Admin.News 1970, p. 5082; S.Rep.No.315, 71st Cong., 2d
Sess., 1-3 (1930). Because Congress thought it had to
legislate in order to make agricultural “human-made
inventions” patentable and because the legislation Congress
enacted is limited, it follows that Congress never meant to
make items outside the scope of the legislation patentable.
Second, the 1970 Act clearly indicates that Congress has
included bacteria within the focus of its legislative concern,
but not within the scope of patent protection. Congress
specifically excluded bacteria from the coverage of the 1970
Act. 7 U.S.C. § 2402(a). The Court’s attempts to supply
explanations for this explicit exclusion ring hollow. It is
true that there is no mention in the legislative history of the
exclusion, but that does not give us license to invent
reasons. The fact is that Congress, assuming that animate
objects as to which it had not specifically legislated could
not be patented, excluded bacteria from the set of
patentable organisms.

16 Secretary Hyde’s letter was not the only explicit indication in the legislative

history of these Acts that Congress was acting on the assumption that legislation
was necessary to make living organisms patentable. The Senate Judiciary
Committee Report on the 1970 Act states the Committee’s understanding that
patent protection extended no further than the explicit provisions of these Acts:
Under the patent law, patent protection is limited to those
varieties of plants which reproduce asexually, that is, by
such methods as grafting or budding. No protection is
available to those varieties of plants which reproduce
sexually, that is, generally by seeds.
S.Rep.No.91-1246, p. 3 (1970).
Similarly, Representative Poage, speaking for the 1970 Act, after noting the
protection accorded asexually developed plants, stated that “for plants produced
from seed, there has been no such protection.” 116 Cong.Rec. 40295 (1970).

385

The Court protests that its holding today is dictated by the
broad language of § 101, which cannot “be confined to the
‘particular application[s] … contemplated by the
legislators.’ ” Ante, at 315, quoting Barr v. United States, 324
U.S. 83, 90, 65 S.Ct. 522, 525, 89 L.Ed. 765 (1945). But as I
have shown, the Court’s decision does not follow the
unavoidable implications of the statute. Rather, it extends
the patent system to cover living material even though
Congress plainly has legislated in the belief that § 101 does
not encompass living organisms. It is the role of Congress,
not this Court, to broaden or narrow the reach of the
patent laws. This is especially true where, as here, the
composition sought to be patented uniquely implicates
matters of public concern.
3.4 Copyright
3.4.1. Eligibility
Feist Publications, Inc. v. Rural Telephone Service
Co., 499 U.S. 340 (1991)
O’CONNOR J., delivered the opinion of the Court, in
which REHNQUIST, C.J., and WHITE, MARSHALL,
STEVENS, SCALIA, KENNEDY, and SOUTER, JJ.,
joined. BLACKMUN, J., concurred in the judgment.
Kyler Knobbe, Cimarron, Kan., for petitioner.
James M. Caplinger, Jr., Topeka, Kan., for respondent.
JUSTICE O’CONNOR delivered the opinion of the Court.
This case requires us to clarify the extent of copyright
protection available to telephone directory white pages.
I
Rural Telephone Service Company, Inc., is a certified
public utility that provides telephone service to several
communities in northwest Kansas. It is subject to a state
regulation that requires all telephone companies operating

386

in Kansas to issue annually an updated telephone directory.
Accordingly, as a condition of its monopoly franchise,
Rural publishes a typical telephone directory, consisting of
white pages and yellow pages. The white pages list in
alphabetical order the names of Rural’s subscribers,
together with their towns and telephone numbers. The
yellow pages list Rural’s business subscribers alphabetically
by category and feature classified advertisements of various
sizes. Rural distributes its directory free of charge to its
subscribers, but earns revenue by selling yellow pages
advertisements.
Feist Publications, Inc., is a publishing company that
specializes in area-wide telephone directories. Unlike a
typical directory, which covers only a particular calling area,
Feist’s area-wide directories cover a much larger
geographical range, reducing the need to call directory
assistance or consult multiple directories. The Feist
directory that is the subject of this litigation covers 11
different telephone service areas in 15 counties and
contains 46,878 white pages listings – compared to Rural’s
approximately 7,700 listings. Like Rural’s directory, Feist’s
is distributed free of charge and includes both white pages
and yellow pages. Feist and Rural compete vigorously for
yellow pages advertising.
As the sole provider of telephone service in its service area,
Rural obtains subscriber information quite easily. Persons
desiring telephone service must apply to Rural and provide
their names and addresses; Rural then assigns them a
telephone number. Feist is not a telephone company, let
alone one with monopoly status, and therefore lacks
independent access to any subscriber information. To
obtain white pages listings for its area-wide directory, Feist
approached each of the 11 telephone companies operating
in northwest Kansas and offered to pay for the right to use
its white pages listings.

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Of the 11 telephone companies, only Rural refused to
license its listings to Feist. Rural’s refusal created a problem
for Feist, as omitting these listings would have left a gaping
hole in its area-wide directory, rendering it less attractive to
potential yellow pages advertisers. In a decision subsequent
to that which we review here, the District Court
determined that this was precisely the reason Rural refused
to license its listings. The refusal was motivated by an
unlawful purpose “to extend its monopoly in telephone
service to a monopoly in yellow pages advertising.” Rural
Telephone Service Co. v. Feist Publications, Inc., 737 F.Supp. 610,
622 (Kan.1990).
Unable to license Rural’s white pages listings, Feist used
them without Rural’s consent. Feist began by removing
several thousand listings that fell outside the geographic
range of its area-wide directory, then hired personnel to
investigate the 4,935 that remained. These employeesveri
fied the data reported by Rural and sought to obtain
additional information. As a result, a typical Feist listing
includes the individual’s street address; most of Rural’s
listings do not. Notwithstanding these additions,
however,1,309 of the 46,878 listings in Feist’s 1983
directory were identical to listings in Rural’s 1982-1983
white pages. App. 54 (¶ 15-16), 57. Four of these were
fictitious listings that Rural had inserted into its directory to
detect copying.
Rural sued for copyright infringement in the District Court
for the District of Kansas taking the position that Feist, in
compiling its own directory, could not use the information
contained in Rural’s white pages. Rural asserted that Feist’s
employees were obliged to travel door-to-door or conduct
a telephone survey to discover the same information for
themselves. Feist responded that such efforts were
economically impractical and, in any event, unnecessary
because the information copied was beyond the scope of
copyright protection. The District Court granted summary

388

judgment to Rural, explaining that “[c]ourts have
consistently held that telephone directories are
copyrightable” and citing a string of lower court decisions.
663 F.Supp. 214, 218 (1987). In an unpublished opinion,
the Court of Appeals for the Tenth Circuit affirmed “for
substantially the reasons given by the district court.” App.
to Pet. for Cert. 4a, judgt. order reported at 916 F.2d 718
(1990). We granted certiorari, 498 U.S. 808, 111 S.Ct. 40,
112 L.Ed.2d 17 (1990), to determine whether the copyright
in Rural’s directory protects the names, towns, and
telephone numbers copied by Feist.
II
A.
This case concerns the interaction of two well-established
propositions. The first is that facts are not copyrightable;
the other, that compilations of facts generally are. Each of
these propositions possesses an impeccable pedigree. That
there can be no valid copyright in facts is universally
understood. The most fundamental axiom of copyright law
is that “[n]o author may copyright his ideas or the facts he
narrates.” Harper & Row, Publishers, Inc. v. Nation Enterprises,
471 U.S. 539, 556, 105 S.Ct. 2218, 2228, 85 L.Ed.2d 588
(1985). Rural wisely concedes this point, noting in its brief
that “[f]acts and discoveries, of course, are not themselves
subject to copyright protection.” Brief for Respondent 24.
At the same time, however, it is beyond dispute that
compilations of facts are within the subject matter of
copyright. Compilations were expressly mentioned in the
Copyright Act of 1909, and again in the Copyright Act of
1976.
There is an undeniable tension between these two
propositions. Many compilations consist of nothing but
raw data i.e., wholly factual information not accompanied
by any original written expression. On what basis may one

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claim a copyright in such a work? Common sense tells us
that 100 uncopyrightable facts do not magically change
their status when gathered together in one place. Yet
copyright law seems to contemplate that compilations that
consist exclusively of facts are potentially within its scope.
The key to resolving the tension lies in understanding why
facts are not copyrightable. The sine qua non of copyright is
originality. To qualify for copyright protection, a work must
be original to the author. See Harper & Row, supra, at 547549, 105 S.Ct., at 2223-2224. Original, as the term is used in
copyright, means only that the work was independently
created by the author (as opposed to copied from other
works), and that it possesses at least some minimal degree
of creativity. 1 M. Nimmer & D. Nimmer, Copyright §§
2.01[A], [B] (1990) (hereinafter Nimmer). To be sure, the
requisite level of creativity is extremely low; even a slight
amount will suffice. The vast majority of works make the
grade quite easily, as they possess some creative spark, “no
matter how crude, humble or obvious” it might be. Id., §
1.08[C][1]. Originality does not signify novelty; a work may
be original even though it closely resembles other works so
long as the similarity is fortuitous, not the result of copying.
To illustrate, assume that two poets, each ignorant of the
other, compose identical poems. Neither work is novel, yet
both are original and, hence, copyrightable. See Sheldon v.
Metro-Goldwyn Pictures Corp., 81 F.2d 49, 54 (CA2 1936).
Originality is a constitutional requirement. The source of
Congress’ power to enact copyright laws is Article I, § 8, cl.
8, of the Constitution, which authorizes Congress to
“secur[e] for limited Times to Authors … the exclusive
Right to their respective Writings.” In two decisions from
the late 19th century The Trade-Mark Cases, 100 U.S. 82, 25
L.Ed. 550 (1879); and Burrow-Giles Lithographic Co. v. Sarony,
111 U.S. 53, 4 S.Ct. 279, 28 L.Ed. 349 (1884) – this Court
defined the crucial terms “authors” and “writings.” In so

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doing, the Court made it unmistakably clear that these
terms presuppose a degree of originality.
In The Trade-Mark Cases, the Court addressed the
constitutional scope of “writings.” For a particular work to
be classified “under the head of writings of authors,” the
Court determined, “originality is required.” 100 U.S., at 94.
The Court explained that originality requires independent
creation plus a modicum of creativity: “[W]hile the word
writings may be liberally construed, as it has been, to include
original designs for engraving, prints, &c., it is only such as
are original, and are founded in the creative powers of the
mind. The writings which are to be protected are the fruits of
intellectual labor, embodied in the form of books, prints,
engravings, and the like.” Ibid. (emphasis in original).
In Burrow-Giles, the Court distilled the same requirement
from the Constitution’s use of the word “authors.” The
Court defined “author,” in a constitutional sense, to mean
“he to whom anything owes its origin; originator; maker.”
111 U.S., at 58, 4 S.Ct., at 281 (internal quotation marks
omitted). As in The Trade-Mark Cases, the Court emphasized
the creative component of originality. It described
copyright as being limited to “original intellectual
conceptions of the author,” 111 U.S., at 58, 4 S.Ct., at 281,
and stressed the importance of requiring an author who
accuses another of infringement to prove “the existence of
those facts of originality, of intellectual production, of
thought, and conception.” Id., at 59-60, 4 S.Ct., at 281-282.
The originality requirement articulated in The Trade-Mark
Cases and Burrow-Giles remains the touchstone of copyright
protection today. See Goldstein v. California, 412 U.S. 546,
561-562, 93 S.Ct. 2303, 2312, 37 L.Ed.2d 163 (1973). It is
the very “premise of copyright law.” Miller v. Universal City
Studios, Inc., 650 F.2d 1365, 1368 (CA5 1981). Leading
scholars agree on this point. As one pair of commentators
succinctly puts it: “The originality requirement is
constitutionally mandated for all works.” Patterson & Joyce,

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Monopolizing the Law: The Scope of Copyright Protection
for Law Reports and Statutory Compilations, 36 UCLA
L.Rev. 719, 763, n. 155 (1989) (emphasis in original)
(hereinafter Patterson & Joyce). Accord, id., at 759-760, and
n. 140; Nimmer § 1.06[A] (“[O]riginality is a statutory as
well as a constitutional requirement”); id., § 1.08[C][1] (“[A]
modicum of intellectual labor … clearly constitutes an
essential constitutional element”).
It is this bedrock principle of copyright that mandates the
law’s seemingly disparate treatment of facts and factual
compilations. “No one may claim originality as to facts.”
Id., § 2.11[A], p. 2-157. This is because facts do not owe
their origin to an act of authorship. The distinction is one
between creation and discovery: The first person to find
and report a particular fact has not created the fact; he or
she has merely discovered its existence. To borrow from
Burrow-Giles, one who discovers a fact is not its “maker” or
“originator.” 111 U.S., at 58, 4 S.Ct., at 281. “The
discoverer merely finds and records.” Nimmer § 2.03[E].
Census takers, for example, do not “create” the population
figures that emerge from their efforts; in a sense, they copy
these figures from the world around them. Denicola,
Copyright in Collections of Facts: A Theory for the
Protection of Nonfiction Literary Works, 81 Colum.L.Rev.
516, 525 (1981) (hereinafter Denicola). Census data
therefore do not trigger copyright because these data are
not “original” in the constitutional sense. Nimmer §
2.03[E]. The same is true of all facts – scientific, historical,
biographical, and news of the day. “[T]hey may not be
copyrighted and are part of the public domain available to
every person.” Miller, supra, at 1369.
Factual compilations, on the other hand, may possess the
requisite originality. The compilation author typically
chooses which facts to include, in what order to place
them, and how to arrange the collected data so that they
may be used effectively by readers. These choices as to

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selection and arrangement, so long as they are made
independently by the compiler and entail a minimal degree
of creativity, are sufficiently original that Congress may
protect such compilations through the copyright laws.
Nimmer §§ 2.11[D], 3.03; Denicola 523, n. 38. Thus, even a
directory that contains absolutely no protectible written
expression, only facts, meets the constitutional minimum
for copyright protection if it features an original selection
or arrangement. See Harper & Row, 471 U.S., at 547, 105
S.Ct., at 2223. Accord, Nimmer § 3.03.
This protection is subject to an important limitation. The
mere fact that a work is copyrighted does not mean that
every element of the work may be protected. Originality
remains the sine qua non of copyright; accordingly, copyright
protection may extend only to those components of a work
that are original to the author. Patterson & Joyce 800-802;
Ginsburg, Creation and Commercial Value: Copyright
Protection of Works of Information, 90 Colum.L.Rev.
1865, 1868, and n. 12 (1990) (hereinafter Ginsburg). Thus,
if the compilation author clothes facts with an original
collocation of words, he or she may be able to claim a
copyright in this written expression. Others may copy the
underlying facts from the publication, but not the precise
words used to present them. In Harper & Row, for example,
we explained that President Ford could not prevent others
from copying bare historical facts from his autobiography,
see 471 U.S., at 556-557, 105 S.Ct., at 2228-2229, but that
he could prevent others from copying his “subjective
descriptions and portraits of public figures.” Id., at 563, 105
S.Ct., at 2232. Where the compilation author adds no
written expression but rather lets the facts speak for
themselves, the expressive element is more elusive. The
only conceivable expression is the manner in which the
compiler has selected and arranged the facts. Thus, if the
selection and arrangement are original, these elements of
the work are eligible for copyright protection. See Patry,

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Copyright in Compilations of Facts (or Why the “White
Pages” Are Not Copyrightable), 12 Com. & Law 37, 64
(Dec. 1990) (hereinafter Patry). No matter how original the
format, however, the facts themselves do not become
original through association. See Patterson & Joyce 776.
This inevitably means that the copyright in a factual
compilation is thin. Notwithstanding a valid copyright, a
subsequent compiler remains free to use the facts contained
in another’s publication to aid in preparing a competing
work, so long as the competing work does not feature the
same selection and arrangement. As one commentator
explains it: “[N]o matter how much original authorship the
work displays, the facts and ideas it exposes are free for the
taking… . [T]he very same facts and ideas may be divorced
from the context imposed by the author, and restated or
reshuffled by second comers, even if the author was the
first to discover the facts or to propose the ideas.”
Ginsburg 1868.
It may seem unfair that much of the fruit of the compiler’s
labor may be used by others without compensation. As
Justice Brennan has correctly observed, however, this is not
“some unforeseen byproduct of a statutory scheme.”
Harper & Row, 471 U.S., at 589, 105 S.Ct., at 2245
(dissenting opinion). It is, rather, “the essence of
copyright,” ibid., and a constitutional requirement. The
primary objective of copyright is not to reward the labor of
authors, but “[t]o promote the Progress of Science and
useful Arts.” Art. I, § 8, cl. 8. Accord, Twentieth Century
Music Corp. v. Aiken, 422 U.S. 151, 156, 95 S.Ct. 2040, 2044,
45 L.Ed.2d 84 (1975). To this end, copyright assures
authors the right to their original expression, but
encourages others to build freely upon the ideas and
information conveyed by a work. Harper & Row, supra, 471
U.S., at 556-557, 105 S.Ct., at 2228-2229. This principle,
known as the idea/expression or fact/expression
dichotomy, applies to all works of authorship. As applied to

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a factual compilation, assuming the absence of original
written expression, only the compiler’s selection and
arrangement may be protected; the raw facts may be copied
at will. This result is neither unfair nor unfortunate. It is the
means by which copyright advances the progress of science
and art.
This Court has long recognized that the fact/expression
dichotomy limits severely the scope of protection in factbased works. More than a century ago, the Court observed:
“The very object of publishing a book on science or the
useful arts is to communicate to the world the useful
knowledge which it contains. But this object would be
frustrated if the knowledge could not be used without
incurring the guilt of piracy of the book.” Baker v. Selden,
101 U.S. 99, 103, 25 L.Ed. 841 (1880). We reiterated this
point in Harper & Row:
[N]o author may copyright facts or
ideas. The copyright is limited to those
aspects of the work – termed
‘expression’ – that display the stamp of
the author’s originality. [C]opyright
does not prevent subsequent users
from copying from a prior author’s
work those constituent elements that
are not original – for example … facts,
or materials in the public domain – as
long as such use does not unfairly
appropriate the author’s original
contributions.
471 U.S., at 547-548, 105 S.Ct., at 2223-2224 (citation
omitted).
This, then, resolves the doctrinal tension: Copyright treats
facts and factual compilations in a wholly consistent
manner. Facts, whether alone or as part of a compilation,
are not original and therefore may not be copyrighted. A
factual compilation is eligible for copyright if it features an

395

original selection or arrangement of facts, but the copyright
is limited to the particular selection or arrangement. In no
event may copyright extend to the facts themselves.
B.
As we have explained, originality is a constitutionally
mandated prerequisite for copyright protection. The
Court’s decisions announcing this rule predate the
Copyright Act of 1909, but ambiguous language in the 1909
Act caused some lower courts temporarily to lose sight of
this requirement.
The 1909 Act embodied the originality requirement, but
not as clearly as it might have. See Nimmer § 2.01. The
subject matter of copyright was set out in §§ 3 and 4 of the
Act. Section 4 stated that copyright was available to “all the
writings of an author.” 35 Stat. 1076. By using the words
“writings” and “author” – the same words used in Article I,
§ 8, of the Constitution and defined by the Court in The
Trade-Mark Cases and Burrow-Giles – the statute necessarily
incorporated the originality requirement articulated in the
Court’s decisions. It did so implicitly, however, thereby
leaving room for error.
Section 3 was similarly ambiguous. It stated that the
copyright in a work protected only “the copyrightable
component parts of the work.” It thus stated an important
copyright principle, but failed to identify the specific
characteristic originality – that determined which
component parts of a work were copyrightable and which
were not.
Most courts construed the 1909 Act correctly,
notwithstanding the less-than-perfect statutory language.
They understood from this Court’s decisions that there
could be no copyright without originality. See Patterson &
Joyce 760-761. As explained in the Nimmer treatise: “The
1909 Act neither defined originality, nor even expressly

396

required that a work be ‘original’ in order to command
protection. However, the courts uniformly inferred the
requirement from the fact that copyright protection may
only be claimed by ‘authors’… . It was reasoned that since
an author is ‘the … creator, originator’ it follows that a
work is not the product of an author unless the work is
original.” Nimmer § 2.01 (footnotes omitted) (citing cases).
But some courts misunderstood the statute. See, e.g., Leon v.
Pacific Telephone & Telegraph Co., 91 F.2d 484 (CA9 1937);
Jeweler’s Circular Publishing Co. v. Keystone Publishing Co., 281 F.
83 (CA2 1922). These courts ignored §§ 3 and 4, focusing
their attention instead on § 5 of the Act. Section 5,
however, was purely technical in nature: It provided that a
person seeking to register a work should indicate on the
application the type of work, and it listed 14 categories
under which the work might fall. One of these categories
was “[b]ooks, including composite and cyclopaedic works,
directories, gazetteers, and other compilations.” § 5(a).
Section 5 did not purport to say that all compilations were
automatically copyrightable. Indeed, it expressly disclaimed
any such function, pointing out that “the subject-matter of
copyright [i]s defined in section four.” Nevertheless, the
fact that factual compilations were mentioned specifically in
§ 5 led some courts to infer erroneously that directories and
the like were copyrightable per se, “without any further or
precise showing of original – personal – authorship.”
Ginsburg 1895.
Making matters worse, these courts developed a new theory
to justify the protection of factual compilations. Known
alternatively as “sweat of the brow” or “industrious
collection,” the underlying notion was that copyright was a
reward for the hard work that went into compiling facts.
The classic formulation of the doctrine appeared in Jeweler’s
Circular Publishing Co., 281 F., at 88:

397

The right to copyright a book upon
which one has expended labor in its
preparation does not depend upon
whether the materials which he has
collected consist or not of matters
which are publici juris, or whether
such materials show literary skill or
originality, either in thought or in
language, or anything more than
industrious collection. The man who
goes through the streets of a town and
puts down the names of each of the
inhabitants, with their occupations and
their street number, acquires material
of which he is the author.
(emphasis added).
The “sweat of the brow” doctrine had numerous flaws, the
most glaring being that it extended copyright protection in
a compilation beyond selection and arrangement – the
compiler’s original contributions – to the facts themselves.
Under the doctrine, the only defense to infringement was
independent creation. A subsequent compiler was “not
entitled to take one word of information previously
published,” but rather had to “independently wor[k] out the
matter for himself, so as to arrive at the same result from
the same common sources of information.” Id., at 88-89
(internal quotations omitted). “Sweat of the brow” courts
thereby eschewed the most fundamental axiom of
copyright law – that no one may copyright facts or ideas.
See Miller v. Universal City Studios, Inc., 650 F.2d, at 1372
(criticizing “sweat of the brow” courts because “ensur[ing]
that later writers obtain the facts independently … is
precisely the scope of protection given … copyrighted
matter, and the law is clearthat facts are not entitled to such
protection”).

398

Decisions of this Court applying the 1909 Act make clear
that the statute did not permit the “sweat of the brow”
approach. The best example is International News Service v.
Associated Press, 248 U.S. 215, 39 S.Ct. 68, 63 L.Ed. 211
(1918). In that decision, the Court stated unambiguously
that the 1909 Act conferred copyright protection only on
those elements of a work that were original to the author.
International News Service had conceded taking news
reported by Associated Press and publishing it in its own
newspapers. Recognizing that § 5 of the Act specifically
mentioned ” ‘periodicals, including newspapers,’ ” § 5(b),
the Court acknowledged that news articles were
copyrightable. Id., at 234, 39 S.Ct., at 70. It flatly rejected,
however, the notion that the copyright in an article
extended to the factual information it contained: “[T]he
news element – the information respecting current events
contained in the literary production – is not the creation of
the writer, but is a report of matters that ordinarily are
publici juris; it is the history of the day.” Ibid.1
Without a doubt, the “sweat of the brow” doctrine flouted
basic copyright principles. Throughout history, copyright
law has “recognize[d] a greater need to disseminate factual
works than works of fiction or fantasy.” Harper & Row, 471
U.S., at 563, 105 S.Ct., at 2232. Accord, Gorman, Fact or
Fancy: The Implications for Copyright, 29 J. Copyright Soc.
560, 563 (1982). But “sweat of the brow” courts took a
contrary view; they handed out proprietary interests in facts
and declared that authors are absolutely precluded from
saving time and effort by relying upon the facts contained
in prior works. In truth, “[i]t is just such wasted effort that
the proscription against the copyright of ideas and facts …

1 The Court ultimately rendered judgment for Associated Press on noncopyright

grounds that are not relevant here. See 248 U.S., at 235, 241-242, 39 S.Ct., at 71,
73-74.

399

[is] designed to prevent.” Rosemont Enterprises, Inc. v. Random
House, Inc., 366 F.2d 303, 310 (CA2 1966), cert. denied 385
U.S. 1009, 87 S.Ct. 714, 17 L.Ed.2d 546 (1967). “Protection
for the fruits of such research … may in certain
circumstances be available under a theory of unfair
competition. But to accord copyright protection on this
basis alone distorts basic copyright principles in that it
creates a monopoly in public domain materials without the
necessary justification of protecting and encouraging the
creation of ‘writings’ by ‘authors.’ ” Nimmer § 3.04, p. 3-23
(footnote omitted).
C.
“Sweat of the brow” decisions did not escape the attention
of the Copyright Office. When Congress decided to
overhaul the copyright statute and asked the Copyright
Office to study existing problems, see Mills Music, Inc. v.
Snyder, 469 U.S. 153, 159, 105 S.Ct. 638, 642, 83 L.Ed.2d
556 (1985), the Copyright Office promptly recommended
that Congress clear up the confusion in the lower courts as
to the basic standards of copyrightability. The Register of
Copyrights explained in his first report to Congress that
“originality” was a “basic requisit[e]” of copyright under the
1909 Act, but that “the absence of any reference to
[originality] in the statute seems to have led to
misconceptions as to what is copyrightable matter.” Report
of the Register of Copyrights on the General Revision of
the U.S. Copyright Law, 87th Cong., 1st Sess., p. 9 (H.
Judiciary Comm. Print 1961). The Register suggested
making the originality requirement explicit. Ibid.
Congress took the Register’s advice. In enacting the
Copyright Act of 1976, Congress dropped the reference to
“all the writings of an author” and replaced it with the
phrase “original works of authorship.” 17 U.S.C. § 102(a).
In making explicit the originality requirement, Congress
announced that it was merely clarifying existing law: “The

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two fundamental criteria of copyright protection [are]
originality and fixation in tangible form… . The phrase
‘original works of authorship,’ which is purposely left
undefined, is intended to incorporate without change the
standard of originality established by the courts under the present
[1909] copyright statute.” H.R.Rep. No. 94-1476, p. 51 (1976)
(emphasis added) (hereinafter H.R.Rep.); S.Rep. No. 94473, p. 50 (1975), U.S.Code Cong. & Admin.News 1976,
pp. 5659, 5664 (emphasis added) (hereinafter S.Rep.). This
sentiment was echoed by the Copyright Office: “Our
intention here is to maintain the established standards of
originality… .” Supplementary Report of the Register of
Copyrights on the General Revision of U.S. Copyright Law,
89th Cong., 1st Sess., pt. 6, p. 3 (H. Judiciary Comm. Print
1965) (emphasis added).
To ensure that the mistakes of the “sweat of the brow”
courts would not be repeated, Congress took additional
measures. For example, § 3 of the 1909 Act had stated that
copyright protected only the “copyrightable component
parts” of a work, but had not identified originality as the
basis for distinguishing those component parts that were
copyrightable from those that were not. The 1976 Act
deleted this section and replaced it with § 102(b), which
identifies specifically those elements of a work for which
copyright is not available: “In no case does copyright
protection for an original work of authorship extend to any
idea, procedure, process, system, method of operation,
concept, principle, or discovery, regardless of the form in
which it is described, explained, illustrated, or embodied in
such work.” Section 102(b) is universally understood to
prohibit any copyright in facts. Harper & Row, supra, at 547,
556, 105 S.Ct., at 2223, 2228. Accord, Nimmer § 2.03[E]
(equating facts with “discoveries”). As with § 102(a),
Congress emphasized that § 102(b) did not change the law,
but merely clarified it: “Section 102(b) in no way enlarges
or contracts the scope of copyright protection under the

401

present law. Its purpose is to restate … that the basic
dichotomy between expression and idea remains
unchanged.” H.R.Rep., at 57; S.Rep., at 54, U.S.Code Cong.
& Admin.News 1976, p. 5670.
Congress took another step to minimize confusion by
deleting the specific mention of “directories … and other
compilations” in § 5 of the 1909 Act. As mentioned, this
section had led some courts to conclude that directories
were copyrightable per se and that every element of a
directory was protected. In its place, Congress enacted two
new provisions. First, to make clear that compilations were
not copyrightable per se, Congress provided a definition of
the term “compilation.” Second, to make clear that the
copyright in a compilation did not extend to the facts
themselves, Congress enacted § 103.
The definition of “compilation” is found in § 101 of the
1976 Act. It defines a “compilation” in the copyright sense
as “a work formed by the collection and assembling of
preexisting materials or of data that are selected,
coordinated, or arranged in such a way that the resulting work
as a whole constitutes an original work of authorship”
(emphasis added).
The purpose of the statutory definition is to emphasize that
collections of facts are not copyrightable per se. It conveys
this message through its tripartite structure, as emphasized
above by the italics. The statute identifies three distinct
elements and requires each to be met for a work to qualify
as a copyrightable compilation: (1) the collection and
assembly of pre-existing material, facts, or data; (2) the
selection, coordination, or arrangement of those materials;
and (3) the creation, by virtue of the particular selection,
coordination, or arrangement, of an “original” work of
authorship. “[T]his tripartite conjunctive structure is selfevident, and should be assumed to ‘accurately express the
legislative purpose.’ ” Patry 51, quoting Mills Music, 469
U.S., at 164, 105 S.Ct., at 645.

402

At first glance, the first requirement does not seem to tell
us much. It merely describes what one normally thinks of
as a compilation – a collection of pre-existing material,
facts, or data. What makes it significant is that it is not the
sole requirement. It is not enough for copyright purposes
that an author collects and assembles facts. To satisfy the
statutory definition, the work must get over two additional
hurdles. In this way, the plain language indicates that not
every collection of facts receives copyright protection.
Otherwise, there would be a period after “data.”
The third requirement is also illuminating. It emphasizes
that a compilation, like any other work, is copyrightable
only if it satisfies the originality requirement (“an original
work of authorship”). Although § 102 states plainly that the
originality requirement applies to all works, the point was
emphasized with regard to compilations to ensure that
courts would not repeat the mistake of the “sweat of the
brow” courts by concluding that fact-based works are
treated differently and measured by some other standard.
As Congress explained it, the goal was to “make plain that
the criteria of copyrightable subject matter stated in section
102 apply with full force to works … containing preexisting
material.” H.R.Rep., at 57; S.Rep., at 55, U.S.Code Cong. &
Admin.News 1976, p. 5670.
The key to the statutory definition is the second
requirement. It instructs courts that, in determining
whether a fact-based work is an original work of
authorship, they should focus on the manner in which the
collected facts have been selected, coordinated, and
arranged. This is a straightforward application of the
originality requirement. Facts are never original, so the
compilation author can claim originality, if at all, only in the
way the facts are presented. To that end, the statute dictates
that the principal focus should be on whether the selection,
coordination, and arrangement are sufficiently original to
merit protection.

403

Not every selection, coordination, or arrangement will pass
muster. This is plain from the statute. It states that, to merit
protection, the facts must be selected, coordinated, or
arranged “in such a way” as to render the work as a whole
original. This implies that some “ways” will trigger
copyright, but that others will not. See Patry 57, and n. 76.
Otherwise, the phrase “in such a way” is meaningless and
Congress should have defined “compilation” simply as “a
work formed by the collection and assembly of preexisting
materials or data that are selected, coordinated, or
arranged.” That Congress did not do so is dispositive. In
accordance with “the established principle that a court
should give effect, if possible, to every clause and word of a
statute,” Moskal v. United States, 498 U.S. 103, 109-110, 111
S.Ct. 461, 466, 112 L.Ed.2d 449 (1990) (internal quotation
marks omitted), we conclude that the statute envisions that
there will be some fact-based works in which the selection,
coordination, and arrangement are not sufficiently original
to trigger copyright protection.
As discussed earlier, however, the originality requirement is
not particularly stringent. A compiler may settle upon a
selection or arrangement that others have used; novelty is
not required. Originality requires only that the author make
the selection or arrangement independently (i.e., without
copying that selection or arrangement from another work),
and that it display some minimal level of creativity.
Presumably, the vast majority of compilations will pass this
test, but not all will. There remains a narrow category of
works in which the creative spark is utterly lacking or so
trivial as to be virtually nonexistent. See generally Bleistein v.
Donaldson Lithographing Co., 188 U.S. 239, 251, 23 S.Ct. 298,
300, 47 L.Ed. 460 (1903) (referring to “the narrowest and
most obvious limits”). Such works are incapable of
sustaining a valid copyright. Nimmer § 2.01[B].
Even if a work qualifies as a copyrightable compilation, it
receives only limited protection. This is the point of § 103

404

of the Act. Section 103 explains that “[t]he subject matter
of copyright … includes compilations,” § 103(a), but that
copyright protects only the author’s original contributions –
not the facts or information conveyed:
The copyright in a compilation …
extends only to the material
contributed by the author of such
work, as distinguished from the
preexisting material employed in the
work, and does not imply any
exclusive right in the preexisting
material.
§ 103(b).
As § 103 makes clear, copyright is not a tool by which a
compilation author may keep others from using the facts or
data he or she has collected. “The most important point
here is one that is commonly misunderstood today:
copyright … has no effect one way or the other on the
copyright or public domain status of the preexisting
material.” H.R.Rep., at 57; S.Rep., at 55, U.S.Code Cong. &
Admin. News 1976, p. 5670. The 1909 Act did not require,
as “sweat of the brow” courts mistakenly assumed, that
each subsequent compiler must start from scratch and is
precluded from relying on research undertaken by another.
See, e.g., Jeweler’s Circular Publishing Co., 281 F., at 88-89.
Rather, the facts contained in existing works may be freely
copied because copyright protects only the elements that
owe their origin to the compiler – the selection,
coordination, and arrangement of facts.
In summary, the 1976 revisions to the Copyright Act leave
no doubt that originality, not “sweat of the brow,” is the
touchstone of copyright protection in directories and other
fact-based works. Nor is there any doubt that the same was
true under the 1909 Act. The 1976 revisions were a direct
response to the Copyright Office’s concern that many

405

lower courts had misconstrued this basic principle, and
Congress emphasized repeatedly that the purpose of the
revisions was to clarify, not change, existing law. The
revisions explain with painstaking clarity that copyright
requires originality, § 102(a); that facts are never original, §
102(b); that the copyright in a compilation does not extend
to the facts it contains, § 103(b); and that a compilation is
copyrightable only to the extent that it features an original
selection, coordination, or arrangement, § 101.
The 1976 revisions have proven largely successful in
steering courts in the right direction. A good example is
Miller v. Universal City Studios, Inc., 650 F.2d, at 1369-1370:
“A copyright in a directory … is properly viewed as resting
on the originality of the selection and arrangement of the
factual material, rather than on the industriousness of the
efforts to develop the information. Copyright protection
does not extend to the facts themselves, and the mere use
of information contained in a directory without a
substantial copying of the format does not constitute
infringement” (citation omitted). Additionally, the Second
Circuit, which almost 70 years ago issued the classic
formulation of the “sweat of the brow” doctrine in Jeweler’s
Circular Publishing Co., has now fully repudiated the
reasoning of that decision. See, e.g., Financial Information, Inc.
v. Moody’s Investors Service, Inc., 808 F.2d 204, 207 (CA2
1986), cert. denied, 484 U.S. 820, 108 S.Ct. 79, 98 L.Ed.2d
42 (1987); Financial Information, Inc. v. Moody’s Investors Service,
Inc., 751 F.2d 501, 510 (CA2 1984) (Newman, J.,
concurring); Hoehling v. Universal City Studios, Inc., 618 F.2d
972, 979 (CA2 1980). Even those scholars who believe that
“industrious collection” should be rewarded seem to
recognize that this is beyond the scope of existing
copyright law. See Denicola 516 (“[T]he very vocabulary of
copyright is ill suited to analyzing property rights in works
of nonfiction”); id., at 520-521, 525; Ginsburg 1867, 1870.
III

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There is no doubt that Feist took from the white pages of
Rural’s directory a substantial amount of factual
information. At a minimum, Feist copied the names, towns,
and telephone numbers of 1,309 of Rural’s subscribers.
Not all copying, however, is copyright infringement. To
establish infringement, two elements must be proven: (1)
ownership of a valid copyright, and (2) copying of
constituent elements of the work that are original. See
Harper & Row, 471 U.S., at 548, 105 S.Ct., at 2224. The first
element is not at issue here; Feist appears to concede that
Rural’s directory, considered as a whole, is subject to a valid
copyright because it contains some foreword text, as well as
original material in its yellow pages advertisements. See
Brief for Petitioner 18; Pet. for Cert. 9.
The question is whether Rural has proved the second
element. In other words, did Feist, by taking 1,309 names,
towns, and telephone numbers from Rural’s white pages,
copy anything that was “original” to Rural? Certainly, the
raw data does not satisfy the originality requirement. Rural
may have been the first to discover and report the names,
towns, and telephone numbers of its subscribers, but this
data does not ” ‘ow[e] its origin’ ” to Rural. Burrow-Giles,
111 U.S., at 58, 4 S.Ct., at 281. Rather, these bits of
information are uncopyrightable facts; they existed before
Rural reported them and would have continued to exist if
Rural had never published a telephone directory. The
originality requirement “rule[s] out protecting … names,
addresses, and telephone numbers of which the plaintiff by
no stretch of the imagination could be called the author.”
Patterson & Joyce 776.
Rural essentially concedes the point by referring to the
names, towns, and telephone numbers as “preexisting
material.” Brief for Respondent 17. Section 103(b) states
explicitly that the copyright in a compilation does not
extend to “the preexisting material employed in the work.”

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The question that remains is whether Rural selected,
coordinated, or arranged these uncopyrightable facts in an
original way. As mentioned, originality is not a stringent
standard; it does not require that facts be presented in an
innovative or surprising way. It is equally true, however,
that the selection and arrangement of facts cannot be so
mechanical or routine as to require no creativity
whatsoever. The standard of originality is low, but it does
exist. See Patterson & Joyce 760, n. 144 (“While this
requirement is sometimes characterized as modest, or a low
threshold, it is not without effect”) (internal quotation
marks omitted; citations omitted). As this Court has
explained, the Constitution mandates some minimal degree
of creativity, see The Trade-Mark Cases, 100 U.S., at 94; and
an author who claims infringement must prove “the
existence of … intellectual production, of thought, and
conception.” Burrow-Giles, supra, 111 U.S., at 59-60, 4 S.Ct.,
at 281-282.
The selection, coordination, and arrangement of Rural’s
white pages do not satisfy the minimum constitutional
standards for copyright protection. As mentioned at the
outset, Rural’s white pages are entirely typical. Persons
desiring telephone service in Rural’s service area fill out an
application and Rural issues them a telephone number. In
preparing its white pages, Rural simply takes the data
provided by its subscribers and lists it alphabetically by
surname. The end product is a garden-variety white pages
directory, devoid of even the slightest trace of creativity.
Rural’s selection of listings could not be more obvious: It
publishes the most basic information – name, town, and
telephone number – about each person who applies to it
for telephone service. This is “selection” of a sort, but it
lacks the modicum of creativity necessary to transform
mere selection into copyrightable expression. Rural
expended sufficientef fort to make the white pages

408

directory useful, but insufficient creativity to make it
original.
We note in passing that the selection featured in Rural’s
white pages may also fail the originality requirement for
another reason. Feist points out that Rural did not truly
“select” to publish the names and telephone numbers of its
subscribers; rather, it was required to do so by the Kansas
Corporation Commission as part of its monopoly franchise.
See 737 F.Supp., at 612. Accordingly, one could plausibly
conclude that this selection was dictated by state law, not
by Rural.
Nor can Rural claim originality in its coordination and
arrangement of facts. The white pages do nothing more
than list Rural’s subscribers in alphabetical order. This
arrangement may, technically speaking, owe its origin to
Rural; no one disputes that Rural undertook the task of
alphabetizing the names itself. But there is nothing
remotely creative about arranging names alphabetically in a
white pages directory. It is an age-old practice, firmly
rooted in tradition and so commonplace that it has come to
be expected as a matter of course. See Brief for
Information Industry Association et al. as Amici Curiae 10
(alphabetical arrangement “is universally observed in
directories published by local exchange telephone
companies”). It is not only unoriginal, it is practically
inevitable. This time-honored tradition does not possess
the minimal creative spark required by the Copyright Act
and the Constitution.
We conclude that the names, towns, and telephone
numbers copied by Feist were not original to Rural and
therefore were not protected by the copyright in Rural’s
combined white and yellow pages directory. As a
constitutional matter, copyright protects only those
constituent elements of a work that possess more than a de
minimis quantum of creativity. Rural’s white pages, limited
to basic subscriber information and arranged alphabetically,

409

fall short of the mark. As a statutory matter, 17 U.S.C. §
101 does not afford protection from copying to a collection
of facts that are selected, coordinated, and arranged in a
way that utterly lacks originality. Given that some works
must fail, we cannot imagine a more likely candidate.
Indeed, were we to hold that Rural’s white pages pass
muster, it is hard to believe that any collection of facts
could fail.
Because Rural’s white pages lack the requisite originality,
Feist’s use of the listings cannot constitute infringement.
This decision should not be construed as demeaning
Rural’s efforts in compiling its directory, but rather as
making clear that copyright rewards originality, not effort.
As this Court noted more than a century ago, ” ‘great praise
may be due to the plaintiffs for their industry and
enterprise in publishing this paper, yet the law does not
contemplate their being rewarded in this way.’ ” Baker v.
Selden, 101 U.S., at 105.
The judgment of the Court of Appeals is
Reversed.
Justice BLACKMUN concurs in the judgment.
3.4.2. Calibration: Scope of Exclusion, a.k.a. Fair Use
Suntrust Bank v. Houghton Mifflin Co., 268 F.3d 1257
(11th Cir. 2001)
Joseph M. Beck, Miles J. Alexander, Jerry Bailey Swann,
Kilpatrick Stockton & Cody, Atlanta, Georgia, for
Appellant.
Richard Kurnit, New York City, William B. Smith, Ralph R.
Morrison, Anne Moody Johnson, Jones, Day, Reavis &
Pogue, Atlanta, Georgia, for Appellee.
Leon Friedman, New York City, for Pen American Ctr.,
American Booksellers Foundation for Freedom of Exp.,
Freedom to Read Foundation, Washington Lawyers’ for

410

the Arts, The First Amendment Project and National
Coalition Against Censorship, Amicus Curiae,.
E. Edward Bruce, Covington & Burling, Washington, DC,
for Microsoft Corp., Amicus Curiae,.
Hollie Manheimer, Decatur, Georgia, for Amicus Curiae.
Before BIRCH, MARCUS and WOOD1, Circuit Judges.
BIRCH, Circuit Judge:
In this opinion, we decide whether publication of The
Wind Done Gone (“TWDG”), a fictional work admittedly
based on Margaret Mitchell’s Gone With the Wind
(“GWTW”), should be enjoined from publication based on
alleged copyright violations. The district court granted a
preliminary injunction against publication of TWDG
because it found that Plaintiff-Appellee SunTrust Bank
(“SunTrust”) met the four-part test governing preliminary
injunctions. We VACATE the injunction and REMAND
for consideration of the remaining claims.
I. BACKGROUND
A. Procedural History
SunTrust is the trustee of the Mitchell Trust, which holds
the copyright in GWTW. Since its publication in 1936,
GWTW has become one of the best-selling books in the
world, second in sales only to the Bible. The Mitchell Trust
has actively managed the copyright, authorizing derivative
works and a variety of commercial items. It has entered
into a contract authorizing, under specified conditions, a
second sequel to GWTW to be published by St. Martin’s

1 Honorable Harlington Wood, Jr., U.S. Circuit Judge for the Seventh Circuit,

sitting by designation.

411

Press. The Mitchell Trust maintains the copyright in all of
the derivative works as well. See 17 U.S.C. § 103.2
Alice Randall, the author of TWDG, persuasively claims
that her novel is a critique of GWTW’s depiction of slavery
and the Civil-War era American South. To this end, she
appropriated the characters, plot and major scenes from
GWTW into the first half of TWDG. According to
SunTrust, TWDG “(1) explicitly refers to [GWTW] in its
foreword; (2) copies core characters, character traits, and
relationships from [GWTW]; (3) copies and summarizes
famous scenes and other elements of the plot from
[GWTW]; and (4) copies verbatim dialogues and
descriptions from [GWTW].” SunTrust Bank v. Houghton
Mifflin Co., 136 F. Supp. 2d 1357, 1364 (N.D.Ga. 2001),
vacated, 252 F.3d 1165 (11th Cir. 2001). DefendantAppellant Houghton Mifflin, the publisher of TWDG, does
not contest the first three allegations,3 but nonetheless
argues that there is no substantial similarity between the
two works or, in the alternative, that the doctrine of fair use
protects TWDG because it is primarily a parody of
GWTW.
After discovering the similarities between the books,
SunTrust asked Houghton Mifflin to refrain from
publication or distribution of TWDG, but Houghton
Mifflin refused the request. Subsequently, SunTrust filed an
action alleging copyright infringement, violation of the
Lanham Act, and deceptive trade practices, and
immediately filed a motion for a temporary restraining
order and a preliminary injunction.
After a hearing, the district court granted the motion,
preliminarily enjoining Houghton Mifflin from “further
2 Hereafter, the Copyright Act of 1976 shall be referred to by only the section

number of the Act.
3 Houghton Mifflin denies that there are passages from GWTW copied verbatim

in TWDG.

412

production, display, distribution, advertising, sale, or offer
for sale of” TWDG. SunTrust Bank, 136 F. Supp. 2d at
1386. In a thorough opinion, the court found that “the
defendant’s publication and sale of [TWDG would]
infringe the plaintiff’s copyright interests as protected
under the copyright laws.” Id. Houghton Mifflin appealed.
At oral argument, we issued an order vacating the
injunction on the grounds that it was an unconstitutional
prior restraint. SunTrust Bank v. Houghton Mifflin Co.,
252 F. 3d 1165 (11th Cir. 2001). We now vacate that order
and issue this more comprehensive opinion.
B. Standard of Review
“We review the district court’s grant of a preliminary
injunction for abuse of discretion.” Warren Pub., Inc. v.
Microdos Data Corp., 115 F.3d 1509, 1516 (11th Cir. 1997)
(en banc). We review decisions of law de novo and findings
of fact for clear error. Mitek Holdings, Inc. v. Arce Eng’g
Co., Inc., 89 F.3d 1548, 1554 (11th Cir. 1996).
II. DISCUSSION
Our primary focus at this stage of the case is on the
appropriateness of the injunctive relief granted by the
district court. In our analysis, we must evaluate the merits
of SunTrust’s copyright infringement claim, including
Houghton Mifflin’s affirmative defense of fair use.4 As we
assess the fair-use defense, we examine to what extent a

4 I believe that fair use should be considered an affirmative right under the 1976

Act, rather than merely an affirmative defense, as it is defined in the Act as a use
that is not a violation of copyright. See Bateman v. Mneumonics, Inc., 79 F.3d
1532, 1542 n.22 (11th Cir. 1996). However, fair use is commonly referred to an
affirmative defense, see Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 590,
114 S. Ct. 1164, 1177 (1994), and, as we are bound by Supreme Court precedent,
we will apply it as such. See also David Nimmer, A Riff on Fair Use in the Digital
Millennium Copyright Act, 148 U. Pa. L. Rev. 673, 714 n. 227 (2000) (citing
Bateman). Nevertheless, the fact that the fair use right must be procedurally
asserted as an affirmative defense does not detract from its constitutional
significance as a guarantor to access and use for First Amendment purposes.

413

critic may use a work to communicate her criticism of the
work without infringing the copyright in that work. To
approach these issues in the proper framework, we should
initially review the history of the Constitution’s Copyright
Clause and understand its relationship to the First
Amendment.
A. History and Development of the Copyright Clause
The Copyright Clause finds its roots in England, where, in
1710, the Statute of Anne “was designed to destroy the
booksellers’ monopoly of the booktrade and to prevent its
recurrence.” L. Ray Patterson, Understanding the
Copyright Clause, 47 J. Copyright Soc’y USA 365, 379
(2000). This Parliamentary statute assigned copyright in
books to authors, added a requirement that only a new
work could be copyrighted, and limited the duration, which
had been perpetual, to two fourteen-year terms. It is clear
that the goal of the Statute of Anne was to encourage
creativity and ensure that the public would have free access
to information by putting an end to “the continued use of
copyright as a device of censorship.” Patterson at 379.5 The
Framers of the U.S. Constitution relied on this statute
when drafting the Copyright Clause of our Constitution,
which reads,
The Congress shall have Power … to
promote the Progress of Science … by
securing for limited Times to Authors
… the exclusive Right to their
respective Writings … .

5 The Statute of Anne providing for copyright is introduced as “[a]n act for the

encouragement of learning,” and has a preamble that states one of the purposes as
“the encouragement of learned men to compose and write useful books.” 8 Anne,
C.19 (1710), reprinted in 8 Nimmer § 7-5.

414

U.S. Const. art. 1, § 8, cl. 8. Congress directly transferred
the principles from the Statute of Anne into the copyright
law of the United States in 1783, first through a
recommendation to the states to enact similar copyright
laws, and then in 1790, with the passage of the first
American federal copyright statute.
The Copyright Clause was intended “to be the engine of
free expression.” Harper & Row Publishers, Inc. v. Nation
Enters., 471 U.S. 539, 558 (1985). To that end, copyright
laws have been enacted achieve the three main goals: the
promotion of learning, the protection of the public domain,
and the granting of an exclusive right to the author.
1. Promotion of Learning
In the United States, copyright has always been used to
promote learning by guarding against censorship.
Throughout the nineteenth century, the copyright in
literature was limited to the right “to publish and vend
books.” Patterson, at 383. The term “copy” was interpreted
literally; an author had the right only to prevent others
from copying and selling her particular literary work. See
Stowe v. Thomas, 23 F. Cas. 201 (C.C.E.D. Pa. 1853)
(holding that a translation of Uncle Tom’s Cabin into
German was not a copyright infringement because it was
not a copy of the work as it was published).6 This limited
right ensured that a maximum number of new works would
be created and published. It was not until the 1909 Act,
which codified the concept of a derivative work, that an
author’s right to protect his original work against imitation
was established. This change more closely represents

6 Under modern copyright, such a right to translate would enjoy protection as a

“derivative work.” §§ 101 and 106. In Folsom v. Marsh, 9 F.Cas. 342 (C.C.Mass.
1841), Justice Story created the concept of “fair use,” which actually expanded the
copyright monopoly, since until that time a translation or abridgement was not
considered an infringement.

415

current statutory copyright law and is consistent with
copyright’s constitutional mandate.
As a further protection of the public interest, until 1976,
statutory copyright law required that a work be published
before an author was entitled to a copyright in that work.
Therefore, in order to have the sole right of publication for
the statutory period, the author was first required to make
the work available to the public. In 1976, copyright was
extended to include any work “fixed in any tangible
medium of expression” in order to adapt the law to
technological advances. § 102(a). Thus, the publication
requirement was removed, but the fair use right was
codified to maintain the constitutionally mandated balance
to ensure that the public has access to knowledge.
The Copyright Act promotes public access to knowledge
because it provides an economic incentive for authors to
publish books and disseminate ideas to the public. Harper
& Row, 471 U.S. at 558 (“By establishing a marketable right
to the use of one’s expression, copyright supplies the
economic incentive to create and disseminate ideas.”). The
Supreme Court has recognized that “[t]he monopoly
created by copyright thus rewards the individual author in
order to benefit the public.” Id. at 546. Without the limited
monopoly, authors would have little economic incentive to
create and publish their work. Therefore, by providing this
incentive, the copyright law promotes the public access to
new ideas and concepts.
2. Protection of the Public Domain
The second goal of the Copyright Clause is to ensure that
works enter the public domain after an author’s rights,
exclusive, but limited, have expired. Parallel to the patent
regime, the limited time period of the copyright serves the
dual purpose of ensuring that the work will enter the public
domain and ensuring that the author has received “a fair

416

return for [her] labors.” Harper & Row, 471 U.S. at 546.
This limited grant “is intended to motivate the creative
activity of authors … by the provision of a special reward,
and to allow the public access to the products of their
genius after the limited period of exclusive control has
expired.” Sony, 464 U.S. at 429. The public is protected in
two ways: the grant of a copyright encourages authors to
create new works, as discussed in section II.A.1., and the
limitation ensures that the works will eventually enter the
public domain, which protects the public’s right of access
and use.
3. Exclusive Rights of the Author
Finally, the Copyright Clause grants the author limited
exclusive rights in order to encourage the creation of
original works. Before our copyright jurisprudence
developed, there were two separate theories of copyright in
England - the natural law copyright, which was the right of
first publication, and the statutory copyright, which was the
right of continued publication. The natural law copyright,
which is not a part of our system, implied an ownership in
the work itself, and thus was preferred by the booksellers
and publishers striving to maintain their monopoly over
literature as well as by the Crown to silence “seditious”
writings. Even after passage of the Statute of Anne, the
publishers and booksellers resisted the loss of their
monopoly in the courts for more than sixty years. Finally,
in 1774, the House of Lords ruled that the natural law
copyright, that is, the ownership of the work itself, expires
upon publication of the book, when the statutory copyright
attaches. Patterson at 382.
This bifurcated system was carried over into our copyright
law. As of the 1909 Act, an author had “state common law
protection [that] persisted until the moment of general
publication.” Estate of Martin Luther King, Jr. v. CBS, Inc.,
194 F.3d 1211, 1214 (11th Cir. 1999). After the work was

417

published, the author was entitled to federal statutory
copyright protection if she had complied with certain
federal requirements (i.e. publication with notice). If not,
the work was released into the public domain. Id. The
system illustrates that the author’s ownership is in the
copyright, and not in the work itself, for if the author had
an ownership interest in the work itself, she would not lose
that right if she published the book without complying with
federal statutory copyright requirements. Compliance with
the copyright law results in the guarantee of copyright to
the author for a limited time, but the author never owns the
work itself. § 202 (“Ownership of a copyright, or of any of
the exclusive rights under a copyright, is distinct from
ownership of any material object in which the work is
embodied.”).
This has an important impact on modern interpretation of
copyright, as it emphasizes the distinction between
ownership of the work, which an author does not possess,
and ownership of the copyright, which an author enjoys for
a limited time. In a society oriented toward property
ownership, it is not surprising to find many that
erroneously equate the work with the copyright in the work
and conclude that if one owns the copyright, they must also
own the work. However, the fallacy of that understanding
is exposed by the simple fact that the work continues to
exist after the term of copyright associated with the work
has expired. “The copyright is not a natural right inherent
in authorship. If it were, the impact on market values
would be irrelevant; any unauthorized taking would be
obnoxious.” Pierre Leval, Towards a Fair Use Standard,
105 Harv. L. Rev. 1105, 1124 (1990).
B. The Union of Copyright and the First Amendment

418

The Copyright Clause and the First Amendment, while
intuitively in conflict,7 were drafted to work together to
prevent censorship; copyright laws were enacted in part to
prevent private censorship and the First Amendment was
enacted to prevent public censorship. There are
“[c]onflicting interests that must be accommodated in
drawing a definitional balance” between the Copyright
Clause and the First Amendment. 1 Nimmer § 1.10[B][1].
In establishing this balance “[o]n the copyright side,
economic encouragement for creators must be preserved
and the privacy of unpublished works recognized. Freedom
of speech[, on the other hand,] requires the preservation of
a meaningful public or democratic dialogue, as well as the
uses of speech as a safety valve against violent acts, and as
an end in itself.” Id.
In copyright law, the balance between the First
Amendment and copyright is preserved, in part, by the
idea/expression dichotomy and the doctrine of fair use.
1. The Idea/Expression Dichotomy
Copyright cannot protect an idea, only the expression of
that idea. The result is that “copyright assures authors the
right to their original expression, but encourages others to
build freely upon the ideas and information conveyed by
the work.” Feist, 499 U.S. at 349-50. It is partly through
this idea/expression dichotomy that copyright law
embodies the First Amendment’s underlying goal of
encouraging open debate and the free exchange of ideas.
Holding an infringer liable in copyright for copying the
expression of another author’s ideas does not impede First
Amendment goals because the public purpose has been
served - the public already has access to the idea or the

7 While the First Amendment disallows laws that abridge the freedom of speech,

the Copyright Clause calls specifically for such a law.

419

concepts. A new author may use or discuss the idea, but
must do so using her own original expression.
2. Fair Use
First Amendment privileges are also preserved through the
doctrine of fair use. Until codification of the fair-use
doctrine in the 1976 Act, fair use was a judge-made right
developed to preserve the constitutionality of copyright
legislation by protecting First Amendment values. Had fair
use not been recognized as a right under the 1976 Act, the
statutory abandonment of publication as a condition of
copyright that had existed for over 200 years would have
jeopardized the constitutionality of the new Act because
there would be no statutory guarantee that new ideas, or
new expressions of old ideas, would be accessible to the
public. Included in the definition of fair use are “purposes
such as criticism, comment, news reporting, teaching …,
scholarship, or research.” § 107. The exceptions carved out
for these purposes are at the heart of fair use’s protection
of the First Amendment, as they allow later authors to use
a previous author’s copyright to introduce new ideas or
concepts to the public. Therefore, within the limits of the
fair-use test, any use of a copyright is permitted to fulfill
one of the important purposes listed in the statute.
Because of the First Amendment principles built into
copyright law through the idea/expression dichotomy and
the doctrine of fair use, courts often need not entertain
related First Amendment arguments in a copyright case.
[citations omitted]
The case before us calls for an analysis of whether a
preliminary injunction was properly granted against an
alleged infringer who, relying largely on the doctrine of fair
use, made use of another’s copyright for comment and
criticism. As discussed herein, copyright does not
immunize a work from comment and criticism. Therefore,

420

the narrower question in this case is to what extent a critic
may use the protected elements of an original work of
authorship to communicate her criticism without infringing
the copyright in that work. As will be discussed below, this
becomes essentially an analysis of the fair use factors. As
we turn to the analysis required in this case, we must
remain cognizant of the First Amendment protections
interwoven into copyright law.
C. Appropriateness of Injunctive Relief
“The chief function of a preliminary injunction is to
preserve the status quo until the merits of the controversy
can be fully and fairly adjudicated.” The Copyright Act
specifically vests the federal courts with power to grant
injunctions “to prevent or restrain infringement of a
copyright.” § 502(a). While injunctive relief may be
particularly appropriate in cases involving simple copying
or “piracy” of a copyrighted work, the Supreme Court has
cautioned that such relief may not be consistent with the
goals of copyright law in cases in which the alleged
infringer of the copyright has a colorable fair-use defense.
The basic framework for our analysis remains, however, the
standard test governing the issuance of preliminary
injunctions. SunTrust is not entitled to relief in the form of
a preliminary injunction unless it has proved each of the
following four elements: “(1) a substantial likelihood of
success on the merits, (2) a substantial threat of irreparable
injury if the injunction were not granted, (3) that the
threatened injury to the plaintiff outweighs the harm an
injunction may cause the defendant, and (4) that granting
the injunction would not disserve the public interest.”

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1. Substantial Likelihood of Success on the Merits
a. Prima Facie Copyright Infringement
The first step in evaluating the likelihood that SunTrust will
succeed on the merits is to determine whether it has
established the prima facie elements of a copyright
infringement claim: (1) that SunTrust owns a valid
copyright in GWTW and (2) that Randall copied original
elements of GWTW in TWDG. The district court found
that SunTrust had carried its burden on both of these
elements.
The first element, SunTrust’s ownership of a valid
copyright in GWTW, is not disputed. Houghton Mifflin
does assert, however, that SunTrust did not establish the
second element of infringement, that TWDG appropriates
copyright-protected expression from GWTW. In order to
prove copying, SunTrust was required to show a
“substantial similarity” between the two works such that
“an average lay observer would recognize the alleged copy
as having been appropriated from the copyrighted work.”
Not all copying of a work is actionable, however, for, as
discussed in section II.B.1., “no author may copyright facts
or ideas. The copyright is limited to those aspects of the
work-termed ‘expression’-that display the stamp of the
author’s originality.” Thus, we are concerned with
substantial similarities between TWDG and GWTW only
to the extent that they involve the copying of original,
protected expression.8

8 Originally the word “copie” was a noun, indicating the manuscript. Ownership

of the “copie” thus meant ownership of the manuscript for the purposes of
publishing it. Today, “copy” has become a verb, meaning the act of reproduction
of a work. But in the development of copyright law it was intended to be a term
of art, indicating a reproduction of a work for publication. Failure to understand
and apply this distinction has confused many courts (assisted by overzealous
advocates) into too expansive a view of the scope of the copyright monopoly.

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There is no bright line that separates the protectable
expression from the nonprotectable idea in a work of
fiction. While often referred to as a test for distinguishing
the idea from the expression, Judge Learned Hand’s
famous statement in Nichols v. Universal Pictures Corp.,
45 F.2d 119 (2d Cir. 1930), is actually nothing more than a
concise restatement of the problem facing the courts:
Upon any work, and especially upon a play, a great
number of patterns of increasing generality will fit
equally well, as more and more of the incident is left
out. The last may perhaps be no more than the most
general statement of what the play is about, and at
time might consist only of its title; but there is a point
in this series of abstractions where they are no longer
protected, since otherwise the playwright could
prevent the use of his ‘ideas,’ to which, apart from
their expression, his property is never extended.
Id. at 121. At one end of the spectrum, scenes a faire – the
stock scenes and hackneyed character types that “naturally
flow from a common theme” – are considered “ideas,” and
therefore are not copyrightable. Beal v. Paramount Pictures
Corp., 20 F.3d 454, 459-60 (11th Cir. 1994). But as plots
become more intricately detailed and characters become
more idiosyncratic, they at some point cross the line into
“expression” and are protected by copyright.
After conducting a thorough comparison of the two works,
the district court found that TWDG copied far more than
unprotected scenes a faire from GWTW: “[TWDG] uses
fifteen fictional characters from [GWTW], incorporating
their physical attributes, mannerisms, and the distinct
features that Ms. Mitchell used to describe them, as well as
their complex relationships with each other. Moreover, the
various [fictional] locales, … settings, characters, themes,
and plot of [TWDG] closely mirror those contained in
[GWTW].” SunTrust, 136 F.Supp.2d at 1367.

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Our own review of the two works reveals substantial use of
GWTW. TWDG appropriates numerous characters,
settings, and plot twists from GWTW. For example,
Scarlett O’Hara, Rhett Butler, Bonnie Butler, Melanie
Wilkes, Ashley Wilkes, Gerald O’Hara, Ellen O’Hara,
Mammy, Pork, Dilcey, Prissy, Belle Watling, Carreen
O’Hara, Stuart and Brenton Tarleton, Jeems, Philippe, and
Aunt Pittypat, all characters in GWTW, appear in TWDG.
Many of these characters are renamed in TWDG: Scarlett
becomes “Other,” Rhett Butler becomes “R.B.,” Pork
becomes “Garlic,” Prissy becomes “Miss Priss,” Philippe
becomes “Feleepe,” Aunt Pittypat becomes “Aunt
Pattypit,” etc. In several instances, Randall renamed
characters using Mitchell’s descriptions of those characters
in GWTW: Ashley becomes “Dreamy Gentleman,”
Melanie becomes “Mealy Mouth,” Gerald becomes
“Planter.” The fictional settings from GWTW receive a
similarly transparent renaming in TWDG: Tara becomes
“Tata,” Twelve Oaks Plantation becomes “Twelve Slaves
Strong as Trees.” TWDG copies, often in wholesale
fashion, the descriptions and histories of these fictional
characters and places from GWTW, as well as their
relationships and interactions with one another. TWDG
appropriates or otherwise explicitly references many aspects
of GWTW’s plot as well, such as the scenes in which
Scarlett kills a Union soldier and the scene in which Rhett
stays in the room with his dead daughter Bonnie, burning
candles. After carefully comparing the two works, we agree
with the district court that, particularly in its first half,
TWDG is largely “an encapsulation of [GWTW] [that]
exploit[s] its copyrighted characters, story lines, and settings
as the palette for the new story.” SunTrust, 136 F.Supp.2d
at 1367.
Houghton Mifflin argues that there is no substantial
similarity between TWDG and GWTW because the
retelling of the story is an inversion of GWTW: the

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characters, places, and events lifted from GWTW are often
cast in a different light, strong characters from the original
are depicted as weak (and vice-versa) in the new work, the
institutions and values romanticized in GWTW are exposed
as corrupt in TWDG. While we agree with Houghton
Mifflin that the characters, settings, and plot taken from
GWTW are vested with a new significance when viewed
through the character of Cynara9 in TWDG, it does not
change the fact that they are the very same copyrighted
characters, settings, and plot.
b. Fair Use
Randall’s appropriation of elements of GWTW in TWDG
may nevertheless not constitute infringement of SunTrust’s
copyright if the taking is protected as a “fair use.” The
codification of the fair-use doctrine in the Copyright Act
provides:
Notwithstanding the provisions of
sections 106 and 106A, the fair use of
a copyrighted work … for purposes
such as criticism, comment, news
reporting, teaching (including multiple
copies for classroom use), scholarship,
or research, is not an infringement of
copyright. In determining whether the
use made of a work in any particular
case is a fair use the factors to be
considered shall include
(1) the purpose and character of
the use, including whether such
use is of a commercial nature or
is for nonprofit educational
purposes;

9 “Cynara” is the name of the poem by Ernest Dowson, from which GWTW’s

title is derived (“I have forgot much, Cynara! gone with the wind, …”).

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(2) the nature of the copyrighted
work;
(3) the amount and substantiality
of the portion used in relation to
the copyrighted work as a whole;
and
(4) the effect of the use upon the
potential market for or value of
the copyrighted work.
§ 107. In assessing whether a use of a copyright is a fair use
under the statute, we bear in mind that the examples of
possible fair uses given are illustrative rather than exclusive,
and that “[a]ll [of the four factors] are to be explored, and
the results weighed together in light of the purposes of
copyright.” Campbell, 510 U.S. at 577-78. In light of the
discussion in §§ IIA and B, one of the most important
purposes to consider is the free flow of ideas - particularly
criticism and commentary.
Houghton Mifflin argues that TWDG is entitled to fair-use
protection as a parody of GWTW. In Campbell, the
Supreme Court held that parody, although not specifically
listed in § 107, is a form of comment and criticism that may
constitute a fair use of the copyrighted work being
parodied. Id. at 579. Parody, which is directed toward a
particular literary or artistic work, is distinguishable from
satire, which more broadly addresses the institutions and
mores of a slice of society. Id. at 580-81, 581 n.15. Thus,
“[p]arody needs to mimic an original to make its point, and
so has some claim to use the creation of its victim’s …
imagination, whereas satire can stand on its own two feet
and so requires justification for the very act of borrowing.”
Id. at 580-81.
The fact that parody by definition must borrow elements
from an existing work, however, does not mean that every

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parody is shielded from a claim of copyright infringement
as a fair use. “The [Copyright] Act has no hint of an
evidentiary preference for parodists over their victims, and
no workable presumption for parody could take account of
the fact that parody often shades into satire when society is
lampooned through its creative artifacts, or that a work
may contain both parodic and nonparodic elements.” Id. at
581. Therefore, Houghton Mifflin’s fair-use defense of
parody, like any other claim of fair use, must be evaluated
in light of the factors set out in § 107 and the constitutional
purposes of copyright law. Id..
Before considering a claimed fair-use defense based on
parody, however, the Supreme Court has required that we
ensure that “a parodic character may reasonably be
perceived” in the allegedly infringing work. Id. at 582. The
Supreme Court’s definition of parody in Campbell,
however, is somewhat vague. On the one hand, the Court
suggests that the aim of parody is “comic effect or
ridicule,” but it then proceeds to discuss parody more
expansively in terms of its “commentary” on the original.
Id. at 580. In light of the admonition in Campbell that
courts should not judge the quality of the work or the
success of the attempted humor in discerning its parodic
character, we choose to take the broader view. For
purposes of our fair-use analysis, we will treat a work as a
parody if its aim is to comment upon or criticize a prior
work by appropriating elements of the original in creating a
new artistic, as opposed to scholarly or journalistic, work.
Under this definition, the parodic character of TWDG is
clear. TWDG is not a general commentary upon the CivilWar-era American South, but a specific criticism of and
rejoinder to the depiction of slavery and the relationships
between blacks and whites in GWTW. The fact that
Randall chose to convey her criticisms of GWTW through
a work of fiction, which she contends is a more powerful
vehicle for her message than a scholarly article, does not, in

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and of itself, deprive TWDG of fair-use protection. We
therefore proceed to an analysis of the four fair-use factors.
i. Purpose and Character of the Work
The first factor in the fair-use analysis, the purpose and
character of the allegedly infringing work, has several
facets. The first is whether TWDG serves a commercial
purpose or nonprofit educational purpose. § 107(1).
Despite whatever educational function TWDG may be able
to lay claim to, it is undoubtedly a commercial product. As
the Supreme Court has stated, “[t]he crux of the
profit/nonprofit distinction is not whether the sole motive
of the use is monetary gain but whether the user stands to
profit from exploitation of the copyrighted material
without paying the customary price.” Harper & Row, 471
U.S. at 562. The fact that TWDG was published for profit
is the first factor weighing against a finding of fair use.
However, TWDG’s for-profit status is strongly
overshadowed and outweighed in view of its highly
transformative use of GWTC’s copyrighted elements.
“[T]he more transformative the new work, the less will be
the significance of other factors, like commercialism, that
may weigh against a finding of fair use.” Campbell, 510
U.S. at 579. “[T]he goal of copyright, to promote science
and the arts, is generally furthered by the creation of
transformative works.” Id. A work’s transformative value is
of special import in the realm of parody, since a parody’s
aim is, by nature, to transform an earlier work.
The second factor in the “purpose and character” analysis
relevant to this case is to what extent TWDG’s use of
copyrighted elements of GWTW can be said to be
“transformative.” The inquiry is “whether the new work
merely supersedes the objects of the original creation, or
instead adds something new, with a further purpose or
different character, altering the first with new expression,
meaning, or message.” Campbell, 510 U.S. at 579. The issue

428

of transformation is a double-edged sword in this case. On
the one hand, the story of Cynara and her perception of the
events in TWDG certainly adds new “expression, meaning,
[and] message” to GWTW. From another perspective,
however, TWDG’s success as a pure work of fiction
depends heavily on copyrighted elements appropriated
from GWTW to carry its own plot forward.
However, as noted above, TWDG is more than an abstract,
pure fictional work. It is principally and purposefully a
critical statement that seeks to rebut and destroy the
perspective, judgments, and mythology of GWTW.
Randall’s literary goal is to explode the romantic, idealized
portrait of the antebellum South during and after the Civil
War. In the world of GWTW, the white characters
comprise a noble aristocracy whose idyllic existence is upset
only by the intrusion of Yankee soldiers, and, eventually, by
the liberation of the black slaves. Through her characters as
well as through direct narration, Mitchell describes how
both blacks and whites were purportedly better off in the
days of slavery: “The more I see of emancipation the more
criminal I think it is. It’s just ruined the darkies,” says
Scarlett O’Hara. GWTW at 639. Free blacks are described
as “creatures of small intelligence … [l]ike monkeys or
small children turned loose among treasured objects whose
value is beyond their comprehension, they ran wild - either
from perverse pleasure in destruction or simply because of
their ignorance.” Id. at 654. Blacks elected to the legislature
are described as spending “most of their time eating
goobers and easing their unaccustomed feet into and out of
new shoes.” Id. at 904.
As the district court noted: “The earlier work is a thirdperson epic, whereas the new work is told in the firstperson as an intimate diary of the life of Cynara.
Thematically, the new work provides a different viewpoint
of the antebellum world.” 136 F. Supp. 2d at 1367. While
told from a different perspective, more critically, the story

429

is transformed into a very different tale, albeit much more
abbreviated. Cynara’s very language is a departure from
Mitchell’s original prose; she acts as the voice of Randall’s
inversion of GWTW. She is the vehicle of parody; she is its
means - not its end. It is clear within the first fifty pages of
Cynara’s fictional diary that Randall’s work flips GWTW’s
traditional race roles, portrays powerful whites as stupid or
feckless, and generally sets out to demystify GWTW and
strip the romanticism from Mitchell’s specific account of
this period of our history. Approximately the last half of
TWDG tells a completely new story that, although
involving characters based on GWTW characters, features
plot elements found nowhere within the covers of GWTW.
Where Randall refers directly to Mitchell’s plot and
characters, she does so in service of her general attack on
GWTW. In GWTW, Scarlett O’Hara often expresses
disgust with and condescension towards blacks; in TWDG,
Other, Scarlett’s counterpart, is herself of mixed descent. In
GWTW, Ashley Wilkes is the initial object of Scarlett’s
affection; in TWDG, he is homosexual. In GWTW, Rhett
Butler does not consort with black female characters and is
portrayed as the captain of his own destiny. In TWDG,
Cynara ends her affair with Rhett’s counterpart, R., to begin
a relationship with a black Congressman; R. ends up a
washed out former cad. In TWDG, nearly every black
character is given some redeeming quality - whether depth,
wit, cunning, beauty, strength, or courage - that their
GWTW analogues lacked.
In light of this, we find it difficult to conclude that Randall
simply tried to “avoid the drudgery in working up
something fresh.” Campbell, 510 U.S. at 580. It is hard to
imagine how Randall could have specifically criticized
GWTW without depending heavily upon copyrighted
elements of that book. A parody is a work that seeks to
comment upon or criticize another work by appropriating
elements of the original. “Parody needs to mimic an

430

original to make its point, and so has some claim to use the
creation of its victim’s (or collective victims’) imagination.”
Campbell, 510 U.S. at 580-81. Thus, Randall has fully
employed those conscripted elements from GWTW to
make war against it. Her work, TWDG, reflects
transformative value because it “can provide social benefit,
by shedding light on an earlier work, and, in the process,
creating a new one.” Campbell, 510 U.S. at 579.
While “transformative use is not absolutely necessary for a
finding of fair use, … the more transformative the new
work, the less will be the significance of other factors.” Id.
In the case of TWDG, consideration of this factor certainly
militates in favor of a finding of fair use, and, informs our
analysis of the other factors, particularly the fourth, as
discussed below.
ii. Nature of the Copyrighted Work
The second factor, the nature of the copyrighted work,
recognizes that there is a hierarchy of copyright protection
in which original, creative works are afforded greater
protection than derivative works or factual compilations.
Id. at 586. GWTW is undoubtedly entitled to the greatest
degree of protection as an original work of fiction. This
factor is given little weight in parody cases, however, “since
parodies almost invariably copy publicly known, expressive
works.” Campbell, 510 U.S. at 586.
iii. Amount and Substantiality of the
Portion Used
The third fair-use factor is “the amount and substantiality
of the portion used in relation to the copyrighted work as a
whole.” § 107(3). It is at this point that parody presents
uniquely difficult problems for courts in the fair-use
context, for “[p]arody’s humor, or in any event its
comment, necessarily springs from recognizable allusion to

431

its object through distorted imitation… . When parody
takes aim at a particular original work, the parody must be
able to ‘conjure up’ at least enough of that original to make
the object of its critical wit recognizable.” Campbell, 510
U.S. at 588. Once enough has been taken to “conjure up”
the original in the minds of the readership, any further
taking must specifically serve the new work’s parodic aims.
GWTW is one of the most famous, popular, and enduring
American novels ever written. Given the fame of the work
and its primary characters, SunTrust argues that very little
reference is required to conjure up GWTW. As we have
already indicated in our discussion of substantial similarity,
TWDG appropriates a substantial portion of the protected
elements of GWTW. Houghton Mifflin argues that TWDG
takes nothing from GWTW that does not serve a parodic
purpose, the crux of the argument being that a large
number of characters had to be taken from GWTW
because each represents a different ideal or stereotype that
requires commentary, and that the work as a whole could
not be adequately commented upon without revisiting
substantial portions of the plot, including its most famous
scenes. Houghton Mifflin’s argument is similar to that
made by the defendants in Harper & Row, who argued for
“expanding the doctrine of fair use to create what amounts
to a public figure exception to copyright.” 471 U.S. at 560.
To the extent Houghton Mifflin argues for extra latitude in
copying from GWTW because of its fame, the Supreme
Court has squarely foreclosed any such privilege:
It is fundamentally at odds with the
scheme of copyright to accord lesser
rights in those works that are of
greatest importance to the public… .
To propose that fair use be imposed
whenever the social value of
dissemination outweighs any detriment
to the artist, would be to propose

432

depriving copyright owners of their
right in the property precisely when
they encounter those users who could
afford to pay for it.
Id. at 559, 105 S. Ct. at 2229-30 (internal quotations and
punctuation omitted). Notably, however, the Court did not
go so far as to grant well-known works a special, higher
copyright status either.
There are numerous instances in which TWDG
appropriates elements of GWTW and then transforms
them for the purpose of commentary. TWDG uses several
of GWTW’s most famous lines, but vests them with a
completely new significance… . .
On the other hand, however, we are told that not all of
TWDG’s takings from GWTW are clearly justified as
commentary. We have already determined that TWDG is a
parody, but not every parody is a fair use. SunTrust
contends that TWDG, at least at the margins, takes more
of the protected elements of GWTW than was necessary to
serve a parodic function.
For example, in a sworn declaration to the district court,
Randall stated that she needed to reference the scene from
GWTW in which Jeems is given to the Tarleton twins as a
birthday present because she considers it “perhaps the
single most repellent paragraph in Margaret Mitchell’s
novel: a black child given to two white children as a
birthday present … as if the buying and selling of children
thus had no moral significance.” Clearly, such a scene is fair
game for criticism. However, in this instance, SunTrust
argues that TWDG goes beyond commentary on the
occurrence itself, appropriating such nonrelevant details as
the fact that the twins had red hair and were killed at
Gettysburg. There are several other scenes from GWTW
… that are retold or alluded to without serving any
apparent parodic purpose. Similar taking of the descriptions

433

of characters and the minor details of their histories and
interactions that arguably are not essential to the parodic
purpose of the work recur throughout… . .
The Supreme Court in Campbell did not require that
parodists take the bare minimum amount of copyright
material necessary to conjure up the original work. Parody
“must be able to conjure up at least enough of [the] original
to make the object of its critical wit recognizable.”
Campbell, 510 U.S. at 588 (emphasis added; quotations
omitted). “Parody frequently needs to be more than a
fleeting evocation of an original in order to make its
humorous point… . [E]ven more extensive use [than
necessary to conjure up the original] would still be fair use,
provided the parody builds upon the original, using the
original as a known element of modern culture and
contributing something new for humorous effect or
commentary.” Elsmere Music, Inc. v. National Broad’g Co.,
623 F.2d 252, 253 n. 1 (2d Cir. 1980).
A use does not necessarily become infringing the moment
it does more than simply conjure up another work. Rather,
“[o]nce enough has been taken to assure identification, how
much more is reasonable will depend, say, [1] on the extent
to which the [work’s] overriding purpose and character is to
parody the original or, in contrast, [2] the likelihood that
the parody may serve as a market substitute for the
original.” Campbell, 510 U.S. at 588. As to the first point, it
is manifest that TWDG’s raison d’etre is to parody
GWTW. The second point indicates that any material we
suspect is “extraneous” to the parody is unlawful only if it
negatively effects the potential market for or value of the
original copyright. Based upon this record at this juncture,
we cannot determine in any conclusive way whether “‘the
quantity and value of the materials used’” are reasonable in
relation to the purpose of the copying.’” Id., 510 U.S. at
586.

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iv. Effect on the Market Value of the
Original
The final fair-use factor requires us to consider the effect
that the publication of TWDG will have on the market for
or value of SunTrust’s copyright in GWTW, including the
potential harm it may cause to the market for derivative
works based on GWTW. Campbell, 510 U.S. at 590. In
addressing this factor, we must “consider not only the
extent of market harm caused by the particular actions of
the alleged infringer, but also whether unrestricted and
widespread conduct of the sort engaged in by the
defendant [] would result in a substantially adverse impact
on the potential market.” Id., 114 S. Ct. at 1177 (quotations
omitted). More specifically, the Campbell Court continued:
“[T]he only harm to derivatives that need concern us … is
the harm of market substitution. The fact that a parody
may impair the market for derivative uses by the very
effectiveness of its critical commentary is no more relevant
under copyright that the like threat to the original market.”
Id., 510 U.S. at 593.
As for the potential market, SunTrust proffered evidence in
the district court of the value of its copyright in GWTW.
Several derivative works of GWTW have been authorized,
including the famous movie of the same name and a book
titled Scarlett: The Sequel. GWTW and the derivative
works based upon it have generated millions of dollars for
the copyright holders. SunTrust has negotiated an
agreement with St. Martin’s Press permitting it to produce
another derivative work based on GWTW, a privilege for
which St. Martin’s paid “well into seven figures.” Part of
this agreement was that SunTrust would not authorize any
other derivative works prior to the publication of St.
Martin’s book.
An examination of the record, with its limited development
as to relevant market harm due to the preliminary

435

injunction status of the case, discloses that SunTrust
focuses on the value of GWTW and its derivatives, but fails
to address and offers little evidence or argument to
demonstrate that TWDG would supplant demand for
SunTrust’s licensed derivatives. However, the Supreme
Court and other appeals courts have made clear that,
particularly in cases of parody, evidence of harm to the
potential market for or value of the original copyright is
crucial to a fair use determination. “[E]vidence about
relevant markets” is also crucial to the fair use analysis.
Campbell, 510 U.S. at 590. “Evidence of substantial harm
to [a derivative market] would weigh against a finding of
fair use.” Id. at 593. “What is necessary is a showing by a
preponderance of the evidence that some meaningful
likelihood of future harm exits.” Sony, 464 U.S. at 451… . .
In contrast, the evidence proffered in support of the fair
use defense specifically and correctly focused on market
substitution and demonstrates why Randall’s book is
unlikely to displace sales of GWTW. Thus, we conclude,
based on the current record, that SunTrust’s evidence falls
far short of establishing that TWDG or others like it will
act as market substitutes for GWTW or will significantly
harm its derivatives. Accordingly, the fourth fair use factor
weighs in favor of TWDG.
c. Summary of the Merits
We reject the district court’s conclusion that SunTrust has
established its likelihood of success on the merits. To the
contrary, based upon our analysis of the fair use factors we
find, at this juncture, TWDG is entitled to a fair-use
defense.
2. Irreparable Injury
….

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[A] lack of irreparable injury to SunTrust, together with the
First Amendment concerns regarding comment and
criticism and the likelihood that a fair use defense will
prevail, make injunctive relief improper and we need not
address the remaining factors, except to stress that the
public interest is always served in promoting First
Amendment values and in preserving the public domain
from encroachment. Accordingly, we vacate the district
court’s injunction.
III. CONCLUSION
In this case, we have found that to the extent SunTrust
suffers injury from TWDG’s putative infringement of its
copyright in GWTW, such harm can adequately be
remedied through an award of monetary damages.
Moreover, under the present state of the record, it appears
that a viable fair use defense is available. Thus, the issuance
of the injunction was at odds with the shared principles of
the First Amendment and the copyright law, acting as a
prior restraint on speech because the public had not had
access to Randall’s ideas or viewpoint in the form of
expression that she chose.
We REVERSE the judgment of the district court and
REMAND the case for further proceedings consistent with
this opinion.
MARCUS, Circuit Judge, specially concurring:
I concur in Judge Birch’s thoughtful and thorough opinion
but write separately to emphasize that, on this limited
record, SunTrust has fallen well short of establishing a
likelihood of success on its copyright infringement claim. I
stress three points. First, the district court erred by finding
that the critical or parodic element of The Wind Done
Gone is anything but clear-cut. Far from amounting to
“unabated piracy,” 136 F.Supp.2d 1357, 1369 (N.D. Ga.
2001), The Wind Done Gone is unequivocally parody, as
both Judge Birch and the Supreme Court in Campbell v.

437

Acuff-Rose Music, Inc., 510 U.S. 569 (1994), define that
term… . . Moreover, the Mitchell estate seems to have
made a specific practice of refusing to license just the sort
of derivative use Randall has undertaken – a factor that
further undermines SunTrust’s copyright claim.
….
Finally, I wish to highlight a factor significant to the market
harm inquiry: SunTrust’s apparent practice of placing
certain editorial restrictions on the authors of its licensed
derivatives. Pat Conroy, the author of The Prince of Tides
and Beach Music, among other novels, attested to the sorts
of constraints the Mitchell estate sought to place on him as
a potential author of a sequel to Gone With the Wind:
I wrote an introduction to the sixtieth
anniversary edition of [Gone With the
Wind] … After the appearance of my
introduction[,] which included my own
deep appreciation for the artistry of
GWTW, the estate of Margaret
Mitchell contacted my agent, Julian
Bach, in New York and asked if I
would be interested in doing a sequel
to GWTW… . When Julian Bach
called me, he issued a strange decree
from the estate that Julian said was
non-negotiable… . He said, “You’re
not going to like this, but the estate
will require you to sign a pledge that
says you will under no circumstances
write anything about miscegenation or
homosexuality.”10

In a piece of documentary evidence submitted by SunTrust (Thomas Hal
Clarke, attorney and member of the committee established by the trust
instruments to direct the plaintiff SunTrust Bank), Conroy again indicates that the
Mitchell Estate was loath to license a derivative work that contained such
elements:
10

438

In light of this, the The Wind Done Gone’s transformation
of Ashley Wilkes into a homosexual, its depiction of
interracial sex, and its multiple mulatto characters take on
additional relevance. The Supreme Court in Campbell
explained how a copyright holder’s reluctance to license
certain kinds of derivatives affects the market harm
analysis:
The market for potential derivative
uses includes only those that creators
of original works would in general
develop or license others to develop.
Yet the unlikelihood that creators of
imaginative works will license critical
reviews or lampoons of their own
productions removes such uses from
the very notion of a potential licensing
market.
510 U.S. at 592.
Other courts have echoed the principle that “‘only
traditional, reasonable, or likely to be developed markets’”
ought to be considered when assessing the effect of a
challenged use upon a potential market. [citations omitted]
“In the cases where we have found the fourth factor to
favor a defendant, the defendant’s work filled a market
niche that the plaintiff simply had no interest in
occupying.” Twin Peaks Prods., Inc. v. Publications Int’l,
Ltd., 996 F.2d 1366, 1377 (2d Cir. 1993).
The preliminary record does not indicate why SunTrust
sought to impose editorial restrictions on Conroy. To the
extent that SunTrust may have done so to preserve Gone
All my resistance to your restrictions – all of them, and I
include miscegenation, homosexuality, the rights of review
and approval – I do because they begin inching toward the
precincts of censorship.

Fax to Owen Laster from Pat Conroy, Nov. 10, 1998.

439

With the Wind’s reputation, or protect its story from
“taint,” however, it may not now invoke copyright to
further that goal. Of course, SunTrust can choose to license
its derivatives however it wishes and insist that those
derivatives remain free of content it deems disreputable.
SunTrust may be vigilant of Gone With the Wind’s public
image – but it may not use copyright to shield Gone With
the Wind from unwelcome comment, a policy that would
extend intellectual property protection “into the precincts
of censorship,” in Pat Conroy’s words. “Because the social
good is served by increasing the supply of criticism – and
thus, potentially, of truth – creators of original works
cannot be given the power to block the dissemination of
critical derivative works.” Leibovitz, 137 F.3d at 115 n.3.
“Copyright law is not designed to stifle critics. Destructive
parodies play an important role in social and literary
criticism and thus merit protection even though they may
discourage or discredit an original author.” Fisher, 794 F.2d
at 438 (citation and internal quotation marks omitted).
The law grants copyright holders a powerful monopoly in
their expressive works. It should not also afford them
windfall damages for the publication of the sorts of works
that they themselves would never publish, or worse, grant
them a power of indirect censorship.
Finally, Appellee warns that our decision in this case will
prompt an endless parade of litigants to test the boundaries
of the rule we establish here. This is at least possible, but
such a phenomenon is not exactly alien to our common law
tradition. And to the extent authors and publishers will be
encouraged to experiment with new and different forms of
storytelling, copyright’s fundamental purpose, “[t]o
promote the Progress of Science and useful Arts,” will have
been served. U.S. Const. Art. 1, § 8, cl. 8.

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Problem
Suppose that Rural’s compilation of phone numbers had been
determined to be copyrightable in Feist. In other words, suppose
Feist had come out the other way. Go through the factors to argue
whether Feist’s use was a fair use.
3.4.3. Calibration: Length of Term
Eldred v. Ashcroft, 537 U.S. 186 (2003)
Lawrence Lessig argued the cause for petitioners. With him
on the briefs were Kathleen M. Sullivan, Alan B. Morrison,
Edward Lee, Charles Fried, Geoffrey S. Stewart, Donald B. Ayer,
Robert P. Ducatman, Daniel H. Bromberg, Charles R. Nesson, and
Jonathan L. Zittrain.
Solicitor General Olson argued the cause for respondent. With
him on the brief were Assistant Attorney General McCallum,
Deputy Solicitor General Wallace, Jeffrey A. Lamken, William
Kanter, and John S. Koppel.1
JUSTICE GINSBURG delivered the opinion of the Court.
This case concerns the authority the Constitution assigns to
Congress to prescribe the duration of copyrights. The
Copyright and Patent Clause of the Constitution, Art. I, § 8,
cl. 8, provides as to copyrights: “Congress shall have Power
… [t]o promote the Progress of Science … by securing [to
Authors] for limited Times … the exclusive Right to their
… Writings.” In 1998, in the measure here under

1 [The court listed the amici

in this case. Among those for reversal were the
American Association of Law Libraries, the College Art Association, the Eagle
Forum Education & Legal Defense Fund, the Free Software Foundation, groups
of intellectual property and constitutional law professors, and the Internet
Archive. Among those writing in support of affirmance were the American
Intellectual Property Law Association, the American Society of Composers,
Authors and Publishers (ASCAP), Amsong, Inc., AOL Time Warner, the
Association of American Publishers, the Bureau of National Affairs, the Directors
Guild of America, Dr. Seuss Enterprises, the Motion Picture Association of
America, the Recording Artists Coalition, the Recording Industry Association of
America (RIAA), the Songwriters Guild of America, Senator Orrin G. Hatch, and
Representative F. James Sensenbrenner, Jr.]

inspection, Congress enlarged the duration of copyrights by
20 years. Copyright Term Extension Act (CTEA), Pub. L.
105-298, §§ 102(b) and (d), 112 Stat. 2827-2828 (amending
17 U.S.C. §§ 302, 304). As in the case of prior extensions,
principally in 1831, 1909, and 1976, Congress provided for
application of the enlarged terms to existing and future
copyrights alike.
Petitioners are individuals and businesses whose products
or services build on copyrighted works that have gone into
the public domain. They seek a determination that the
CTEA fails constitutional review under both the Copyright
Clause’s “limited Times” prescription and the First
Amendment’s free speech guarantee. Under the 1976
Copyright Act, copyright protection generally lasted from
the work’s creation until 50 years after the author’s death.
Under the CTEA, most copyrights now run from creation
until 70 years after the author’s death. Petitioners do not
challenge the “life-plus-70-years” timespan itself. “Whether
50 years is enough, or 70 years too much,” they
acknowledge, “is not a judgment meet for this Court.”2
Congress went awry, petitioners maintain, not with respect
to newly created works, but in enlarging the term for
published works with existing copyrights. The “limited
Tim[e]” in effect when a copyright is secured, petitioners
urge, becomes the constitutional boundary, a clear line
beyond the power of Congress to extend. As to the First
Amendment, petitioners contend that the CTEA is a
content-neutral regulation of speech that fails inspection
under the heightened judicial scrutiny appropriate for such
regulations.
In accord with the District Court and the Court of Appeals,
we reject petitioners’ challenges to the CTEA. In that 1998

2 JUSTICE BREYER’s dissent is not similarly restrained. He makes no effort

meaningfully to distinguish existing copyrights from future grants. Under his
reasoning, the CTEA’s 20-year extension is globally unconstitutional.

442

legislation, as in all previous copyright term extensions,
Congress placed existing and future copyrights in parity. In
prescribing that alignment, we hold, Congress acted within
its authority and did not transgress constitutional
limitations.
I
A.
We evaluate petitioners’ challenge to the constitutionality of
the CTEA against the backdrop of Congress’ previous
exercises of its authority under the Copyright Clause. The
Nation’s first copyright statute, enacted in 1790, provided a
federal copyright term of 14 years from the date of
publication, renewable for an additional 14 years if the
author survived the first term. The 1790 Act’s renewable
14-year term applied to existing works (i. e., works already
published and works created but not yet published) and
future works alike. Congress expanded the federal
copyright term to 42 years in 1831 (28 years from
publication, renewable for an additional 14 years), and to 56
years in 1909 (28 years from publication, renewable for an
additional 28 years). Both times, Congress applied the new
copyright term to existing and future works; to qualify for
the 1831 extension, an existing work had to be in its initial
copyright term at the time the Act became effective.
In 1976, Congress altered the method for computing
federal copyright terms. For works created by identified
natural persons, the 1976 Act provided that federal
copyright protection would run from the work’s creation,
not – as in the 1790, 1831, and 1909 Acts – its publication;
protection would last until 50 years after the author’s death.
In these respects, the 1976 Act aligned United States
copyright terms with the then-dominant international
standard adopted under the Berne Convention for the
Protection of Literary and Artistic Works. For anonymous

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works, pseudonymous works, and works made for hire, the
1976 Act provided a term of 75 years from publication or
100 years from creation, whichever expired first.
These new copyright terms, the 1976 Act instructed,
governed all works not published by its effective date of
January 1, 1978, regardless of when the works were created.
For published works with existing copyrights as of that
date, the 1976 Act granted a copyright term of 75 years
from the date of publication, a 19-year increase over the
56-year term applicable under the 1909 Act.
The measure at issue here, the CTEA, installed the fourth
major duration extension of federal copyrights.3 Retaining
the general structure of the 1976 Act, the CTEA enlarges
the terms of all existing and future copyrights by 20 years.
For works created by identified natural persons, the term
now lasts from creation until 70 years after the author’s
death. This standard harmonizes the baseline United States
copyright term with the term adopted by the European
Union in 1993. For anonymous works, pseudonymous
works, and works made for hire, the term is 95 years from
publication or 120 years from creation, whichever expires
first.
Paralleling the 1976 Act, the CTEA applies these new
terms to all works not published by January 1, 1978. For
works published before 1978 with existing copyrights as of
the CTEA’s effective date, the CTEA extends the term to
95 years from publication. Thus, in common with the 1831,

3 Asserting that the last several decades have seen a proliferation of copyright

legislation in departure from Congress’ traditional pace of legislative amendment
in this area, petitioners cite nine statutes passed between 1962 and 1974, each of
which incrementally extended existing copyrights for brief periods. As respondent
(Attorney General Ashcroft) points out, however, these statutes were all
temporary placeholders subsumed into the systemic changes effected by the 1976
Act.

444

1909, and 1976 Acts, the CTEA’s new terms apply to both
future and existing copyrights.4
B.
The [District] court held that the CTEA does not violate
the “limited Times” restriction of the Copyright Clause
because the CTEA’s terms, though longer than the 1976
Act’s terms, are still limited, not perpetual, and therefore fit
within Congress’ discretion. The court also held that “there
are no First Amendment rights to use the copyrighted
works of others.”
The Court of Appeals for the District of Columbia Circuit
affirmed. … .
We granted certiorari to address two questions: whether the
CTEA’s extension of existing copyrights exceeds Congress’
power under the Copyright Clause; and whether the
CTEA’s extension of existing and future copyrights violates
the First Amendment. 534 U.S. 1126 and 1160 (2002). We
now answer those two questions in the negative and affirm.
II
A.
We address first the determination of the courts below that
Congress has authority under the Copyright Clause to
extend the terms of existing copyrights. Text, history, and
precedent, we conclude, confirm that the Copyright Clause
empowers Congress to prescribe “limited Times” for

4 Petitioners argue that the 1790 Act must be distinguished from the later Acts on

the ground that it covered existing works but did not extend existing copyrights. The
parties disagree on the question whether the 1790 Act’s copyright term should be
regarded in part as compensation for the loss of any then existing state- or
common-law copyright protections. Without resolving that dispute, we
underscore that the First Congress clearly did confer copyright protection on
works that had already been created.

445

copyright protection and to secure the same level and
duration of protection for all copyright holders, present and
future.
The CTEA’s baseline term of life plus 70 years, petitioners
concede, qualifies as a “limited Tim[e]” as applied to future
copyrights.5 Petitioners contend, however, that existing
copyrights extended to endure for that same term are not
“limited.” … .
To comprehend the scope of Congress’ power under the
Copyright Clause, “a page of history is worth a volume of
logic.” New York Trust Co. v. Eisner, 256 U.S. 345, 349
(1921) (Holmes, J.). History reveals an unbroken
congressional practice of granting to authors of works with
existing copyrights the benefit of term extensions so that all
under copyright protection will be governed evenhandedly
under the same regime. As earlier recounted, the First
Congress accorded the protections of the Nation’s first
federal copyright statute to existing and future works alike.
Since then, Congress has regularly applied duration
extensions to both existing and future copyrights.6
….
The CTEA reflects judgments of a kind Congress typically
makes, judgments we cannot dismiss as outside the
Legislature’s domain. As respondent describes, a key factor
5 We note again that JUSTICE BREYER makes no such concession. He does not

train his fire, as petitioners do, on Congress’ choice to place existing and future
copyrights in parity. Moving beyond the bounds of the parties’ presentations, and
with abundant policy arguments but precious little support from precedent, he
would condemn Congress’ entire product as irrational.
6 Moreover, the precise duration of a federal copyright has never been fixed at the

time of the initial grant. The 1790 Act provided a federal copyright term of 14
years from the work’s publication, renewable for an additional 14 years if the
author survived and applied for an additional term. § 1. Congress retained that
approach in subsequent statutes. Similarly, under the method for measuring
copyright terms established by the 1976 Act and retained by the CTEA, the
baseline copyright term is measured in part by the life of the author, rendering its
duration indeterminate at the time of the grant.

446

in the CTEA’s passage was a 1993 European Union (EU)
directive instructing EU members to establish a copyright
term of life plus 70 years. Consistent with the Berne
Convention, the EU directed its members to deny this
longer term to the works of any non-EU country whose
laws did not secure the same extended term. By extending
the baseline United States copyright term to life plus 70
years, Congress sought to ensure that American authors
would receive the same copyright protection in Europe as
their European counterparts.7 The CTEA may also provide
greater incentive for American and other authors to create
and disseminate their work in the United States.8
In addition to international concerns,9 Congress passed the
CTEA in light of demographic, economic, and
technological changes,10 and rationally credited projections
that longer terms would encourage copyright holders to

Responding to an inquiry whether copyrights could be extended “forever,”
Register of Copyrights Marybeth Peters emphasized the dominant reason for the
CTEA: “There certainly are proponents of perpetual copyright: We heard that in
our proceeding on term extension. The Songwriters Guild suggested a perpetual
term. However, our Constitution says limited times, but there really isn’t a very
good indication on what limited times is. The reason why you’re going to lifeplus-70 today is because Europe has gone that way … .”
7

8 The author of the law review article cited in text, Shira Perlmutter, currently a

vice president of AOL Time Warner, was at the time of the CTEA’s enactment
Associate Register for Policy and International Affairs, United States Copyright
Office.
9 See also Austin, Does the Copyright Clause Mandate Isolationism?, 26 Colum. J. L. &

Arts 17, 59 (2002) (cautioning against “an isolationist reading of the Copyright
Clause that is in tension with … America’s international copyright relations over
the last hundred or so years”)
10 Members of Congress expressed the view that, as a result of increases in human

longevity and in parents’ average age when their children are born, the pre-CTEA
term did not adequately secure “the right to profit from licensing one’s work
during one’s lifetime and to take pride and comfort in knowing that one’s children
– and perhaps their children – might also benefit from one’s posthumous
popularity.” Also cited was “the failure of the U.S. copyright term to keep pace
with the substantially increased commercial life of copyrighted works resulting
from the rapid growth in communications media.”

447

invest in the restoration and public distribution of their
works.11
In sum, we find that the CTEA is a rational enactment; we
are not at liberty to second-guess congressional
determinations and policy judgments of this order, however
debatable or arguably unwise they may be. Accordingly, we
cannot conclude that the CTEA – which continues the
unbroken congressional practice of treating future and
existing copyrights in parity for term extension purposes –
is an impermissible exercise of Congress’ power under the
Copyright Clause.
B.
Petitioners’ Copyright Clause arguments rely on several
novel readings of the Clause. We next address these
arguments and explain why we find them unpersuasive.
JUSTICE BREYER urges that the economic incentives accompanying
copyright term extension are too insignificant to “mov[e]” any author with a
“rational economic perspective.” Calibrating rational economic incentives,
however, like “fashion[ing] … new rules [in light of] new technology,” is a task
primarily for Congress, not the courts. Congress heard testimony from a number
of prominent artists; each expressed the belief that the copyright system’s
assurance of fair compensation for themselves and their heirs was an incentive to
create. See, e. g., House Hearings 233-239 (statement of Quincy Jones); Copyright
Term Extension Act of 1995: Hearing before the Senate Committee on the
Judiciary, 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
not take Congress to task for crediting this evidence which, as JUSTICE
BREYER acknowledges, reflects general “propositions about the value of
incentives” that are “undeniably true.”
11

Congress also heard testimony from Register of Copyrights Marybeth Peters and
others regarding the economic incentives created by the CTEA. According to the
Register, extending the copyright for existing works “could … provide additional
income that would finance the production and publication of new works.” House
Hearings 158. “Authors would not be able to continue to create,” the Register
explained, “unless they earned income on their finished works. The public
benefits not only from an author’s original work but also from his or her further
creations. Although this truism may be illustrated in many ways, one of the best
examples is Noah Webster[,] who supported his entire family from the earnings
on his speller and grammar during the twenty years he took to complete his
dictionary.” Id., at 165.

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1
Petitioners contend that even if the CTEA’s 20-year term
extension is literally a “limited Tim[e],” permitting
Congress to extend existing copyrights allows it to evade
the “limited Times” constraint by creating effectively
perpetual copyrights through repeated extensions. We
disagree.
As the Court of Appeals observed, a regime of perpetual
copyrights “clearly is not the situation before us.” Nothing
before this Court warrants construction of the CTEA’s 20year term extension as a congressional attempt to evade or
override the “limited Times” constraint.12 Critically, we

JUSTICE BREYER agrees that “Congress did not intend to act
unconstitutionally” when it enacted the CTEA, yet in his very next breath, he
seems to make just that accusation. What else is one to glean from his selection of
scattered statements from individual Members of Congress? He does not identify
any statement in the statutory text that installs a perpetual copyright, for there is
none. But even if the statutory text were sufficiently ambiguous to warrant
recourse to legislative history, JUSTICE BREYER’S selections are not the sort to
which this Court accords high value: “In surveying legislative history we have
repeatedly stated that the authoritative source for finding the Legislature’s intent
lies in the Committee Reports on the bill, which ‘represen[t] the considered and
collective understanding of those [Members of Congress] involved in drafting and
studying proposed legislation.’” The House and Senate Reports accompanying the
CTEA reflect no purpose to make copyright a forever thing. Notably, the Senate
Report expressly acknowledged that the Constitution “clearly precludes Congress
from granting unlimited protection for copyrighted works,” and disclaimed any
intent to contravene that prohibition. Members of Congress instrumental in the
CTEA’s passage spoke to similar effect.
12

JUSTICE BREYER nevertheless insists that the “economic effect” of the CTEA
is to make the copyright term “virtually perpetual.” Relying on formulas and
assumptions provided in an amicus brief supporting petitioners, he stresses that the
CTEA creates a copyright term worth 99.8% of the value of a perpetual
copyright. If JUSTICE BREYER’S calculations were a basis for holding the
CTEA unconstitutional, then the 1976 Act would surely fall as well, for – under
the same assumptions he indulges – the term set by that Act secures 99.4% of the
value of a perpetual term. Indeed, on that analysis even the “limited” character of
the 1909 (97.7%) and 1831 (94.1%) Acts might be suspect. JUSTICE BREYER
several times places the Founding Fathers on his side. It is doubtful, however, that
those architects of our Nation, in framing the “limited Times” prescription,
thought in terms of the calculator rather than the calendar.

449

again emphasize, petitioners fail to show how the CTEA
crosses a constitutionally significant threshold with respect
to “limited Times” that the 1831, 1909, and 1976 Acts did
not. Those earlier Acts did not create perpetual copyrights,
and neither does the CTEA.13
2
… . Petitioners contend that the CTEA’s extension of
existing copyrights (1) overlooks the requirement of
“originality,” (2) fails to “promote the Progress of Science,”
and (3) ignores copyright’s quid pro quo. Petitioners’
“originality” argument draws on Feist Publications, Inc. v.
Rural Telephone Service Co., 499 U.S. 340 (1991). [The Court
turned aside the argument that existing works are not
original and therefore not eligible for further protection,
arguing that the originality requirement is not relevant to
interpreting the “limited Times” language.]
….
More forcibly, petitioners contend that [t]he CTEA’s
extension of existing copyrights categorically fails to
“promote the Progress of Science” …, because it does not
stimulate the creation of new works but merely adds value
to works already created.
….

13 Respondent notes that the CTEA’s life-plus-70-years baseline term is expected

to produce an average copyright duration of 95 years, and that this term
“resembles some other long-accepted durational practices in the law, such as 99year leases of real property and bequests within the rule against perpetuities.”
Whether such referents mark the outer boundary of “limited Times” is not before
us today. JUSTICE BREYER suggests that the CTEA’s baseline term extends
beyond that typically permitted by the traditional rule against perpetuities. The
traditional common-law rule looks to lives in being plus 21 years. Under that rule,
the period before a bequest vests could easily equal or exceed the anticipated
average copyright term under the CTEA. If, for example, the vesting period on a
deed were defined with reference to the life of an infant, the sum of the
measuring life plus 21 years could commonly add up to 95 years.

450

We have … stressed, however, that it is generally for
Congress, not the courts, to decide how best to pursue the
Copyright Clause’s objectives. The justifications we earlier
set out for Congress’ enactment of the CTEA provide a
rational basis for the conclusion that the CTEA
“promote[s] the Progress of Science.”
On the issue of copyright duration, Congress, from the
start, has routinely applied new definitions or adjustments
of the copyright term to both future works and existing
works not yet in the public domain.14 Such consistent
congressional practice is entitled to “very great weight, and
when it is remembered that the rights thus established have
not been disputed during a period of [over two] centur[ies],
it is almost conclusive.” Indeed, “[t]his Court has
repeatedly laid down the principle that a contemporaneous
legislative exposition of the Constitution when the
founders of our Government and framers of our
Constitution were actively participating in public affairs,
acquiesced in for a long term of years, fixes the
construction to be given [the Constitution’s] provisions.”
Congress’ unbroken practice since the founding generation
thus overwhelms petitioners’ argument that the CTEA’s
extension of existing copyrights fails per se to “promote the
Progress of Science.”
Closely related to petitioners’ preambular argument, or a
variant of it, is their assertion that the Copyright Clause
“imbeds a quid pro quo.” They contend, in this regard, that
Congress may grant to an “Autho[r]” an “exclusive Right”

14 As we have noted, petitioners seek to distinguish the 1790 Act from those that

followed. They argue that by requiring authors seeking its protection to surrender
whatever rights they had under state law, the 1790 Act enhanced uniformity and
certainty and thus “promote[d] … Progress.” This account of the 1790 Act simply
confirms, however, that the First Congress understood it could “promote …
Progress” by extending copyright protection to existing works. Every subsequent
adjustment of copyright’s duration, including the CTEA, reflects a similar
understanding.

451

for a “limited Tim[e],” but only in exchange for a
“Writin[g].” Congress’ power to confer copyright
protection, petitioners argue, is thus contingent upon an
exchange: The author of an original work receives an
“exclusive Right” for a “limited Tim[e]” in exchange for a
dedication to the public thereafter. Extending an existing
copyright without demanding additional consideration,
petitioners maintain, bestows an unpaid-for benefit on
copyright holders and their heirs, in violation of the quid pro
quo requirement.
We can demur to petitioners’ description of the Copyright
Clause as a grant of legislative authority empowering
Congress “to secure a bargain – this for that.” But the
legislative evolution earlier recalled demonstrates what the
bargain entails. Given the consistent placement of existing
copyright holders in parity with future holders, the author
of a work created in the last 170 years would reasonably
comprehend, as the “this” offered her, a copyright not only
for the time in place when protection is gained, but also for
any renewal or extension legislated during that time.
Congress could rationally seek to “promote … Progress”
by including in every copyright statute an express guarantee
that authors would receive the benefit of any later
legislative extension of the copyright term. Nothing in the
Copyright Clause bars Congress from creating the same
incentive by adopting the same position as a matter of
unbroken practice.
We note, furthermore, that patents and copyrights do not
entail the same exchange, and that our references to a quid
pro quo typically appear in the patent context. This is
understandable, given that immediate disclosure is not the
objective of, but is exacted from, the patentee. It is the price
paid for the exclusivity secured. For the author seeking
copyright protection, in contrast, disclosure is the desired
objective, not something exacted from the author in

452

exchange for the copyright. Indeed, since the 1976 Act,
copyright has run from creation, not publication.
Further distinguishing the two kinds of intellectual
property, copyright gives the holder no monopoly on any
knowledge. A reader of an author’s writing may make full
use of any fact or idea she acquires from her reading. The
grant of a patent, on the other hand, does prevent full use
by others of the inventor’s knowledge. In light of these
distinctions, one cannot extract from language in our patent
decisions – language not trained on a grant’s duration –
genuine support for petitioners’ bold view. Accordingly, we
reject the proposition that a quid pro quo requirement stops
Congress from expanding copyright’s term in a manner that
puts existing and future copyrights in parity.15
….
III
Petitioners separately argue that the CTEA is a contentneutral regulation of speech that fails heightened judicial
review under the First Amendment. We reject petitioners’
plea for imposition of uncommonly strict scrutiny on a
copyright scheme that incorporates its own speechprotective purposes and safeguards. … .
IV
If petitioners’ vision of the Copyright Clause held sway, it
would do more than render the CTEA’s duration
extensions unconstitutional as to existing works. Indeed,
petitioners’ assertion that the provisions of the CTEA are

15 The fact that patent and copyright involve different exchanges does not, of

course, mean that we may not be guided in our “limited Times” analysis by
Congress’ repeated extensions of existing patents. If patent’s quid pro quo is more
exacting than copyright’s, then Congress’ repeated extension of existing patents
without constitutional objection suggests even more strongly that similar
legislation with respect to copyrights is constitutionally permissible.

453

not severable would make the CTEA’s enlarged terms
invalid even as to tomorrow’s work. The 1976 Act’s time
extensions, which set the pattern that the CTEA followed,
would be vulnerable as well.
As we read the Framers’ instruction, the Copyright Clause
empowers Congress to determine the intellectual property
regimes that, overall, in that body’s judgment, will serve the
ends of the Clause. Beneath the facade of their inventive
constitutional interpretation, petitioners forcefully urge that
Congress pursued very bad policy in prescribing the
CTEA’s long terms. The wisdom of Congress’ action,
however, is not within our province to second-guess.
Satisfied that the legislation before us remains inside the
domain the Constitution assigns to the First Branch, we
affirm the judgment of the Court of Appeals.
It is so ordered.
JUSTICE STEVENS, dissenting.
… . [I]nsofar as the 1998 Sonny Bono Copyright Term
Extension Act, 112 Stat. 2827, purported to extend the life
of unexpired copyrights, it is invalid. Because the majority’s
contrary conclusion rests on the mistaken premise that this
Court has virtually no role in reviewing congressional
grants of monopoly privileges to authors, inventors, and
their successors, I respectfully dissent.
I
The authority to issue copyrights stems from the same
Clause in the Constitution that created the patent power. It
provides:
Congress shall have Power … To
promote the Progress of Science and
useful Arts, by securing for limited
Times to Authors and Inventors the

454

exclusive Right to their respective
Writings and Discoveries.
Art. I, § 8, cl. 8.
It is well settled that the Clause is “both a grant of power
and a limitation” and that Congress “may not overreach the
restraints imposed by the stated constitutional purpose.” As
we have made clear in the patent context, that purpose has
two dimensions. Most obviously the grant of exclusive
rights to their respective writings and discoveries is
intended to encourage the creativity of “Authors and
Inventors.” But the requirement that those exclusive grants
be for “limited Times” serves the ultimate purpose of
promoting the “Progress of Science and useful Arts” by
guaranteeing that those innovations will enter the public
domain as soon as the period of exclusivity expires:
Once the patent issues, it is strictly
construed, it cannot be used to secure
any monopoly beyond that contained
in the patent, … and especially
relevant here, when the patent expires
the monopoly created by it expires,
too, and the right to make the article –
including the right to make it in
precisely the shape it carried when
patented – passes to the public.
Sears, Roebuck & Co. v. Stiffel Co., 376 U. S. 230 (1964).
It is that ultimate purpose that explains why a patent may
not issue unless it discloses the invention in such detail that
one skilled in the art may copy it. Complete disclosure as a
precondition to the issuance of a patent is part of the quid
pro quo that justifies the limited monopoly for the inventor
as consideration for full and immediate access by the public
when the limited time expires.

455

Almost two centuries ago the Court plainly stated that
public access to inventions at the earliest possible date was
the essential purpose of the Clause:
While one great object was, by holding
out a reasonable reward to inventors
and giving them an exclusive right to
their inventions for a limited period, to
stimulate the efforts of genius; the
main object was ‘to promote the
progress of science and useful arts;’
and this could be done best, by giving
the public at large a right to make,
construct, use, and vend the thing
invented, at as early a period as
possible, having a due regard to the
rights of the inventor. If an inventor
should be permitted to hold back from
the knowledge of the public the secrets
of his invention; if he should for a
long period of years retain the
monopoly, and make, and sell his
invention publicly, and thus gather the
whole profits of it, relying upon his
superior skill and knowledge of the
structure; and then, and then only,
when the danger of competition
should force him to secure the
exclusive right, he should be allowed
to take out a patent, and thus exclude
the public from any farther use than
what should be derived under it during
his fourteen years; it would materially
retard the progress of science and the
useful arts, and give a premium to
those, who should be least prompt to
communicate their discoveries.
Pennock v. Dialogue, 2 Pet. 1, 18 (1829).

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Pennock held that an inventor could not extend the period
of patent protection by postponing his application for the
patent while exploiting the invention commercially. As we
recently explained, “implicit in the Patent Clause itself” is
the understanding “that free exploitation of ideas will be
the rule, to which the protection of a federal patent is the
exception. Moreover, the ultimate goal of the patent system
is to bring new designs and technologies into the public
domain through disclosure.”
Neither the purpose of encouraging new inventions nor the
overriding interest in advancing progress by adding
knowledge to the public domain is served by retroactively
increasing the inventor’s compensation for a completed
invention and frustrating the legitimate expectations of
members of the public who want to make use of it in a free
market. Because those twin purposes provide the only
avenue
for
congressional
action
under
the
Copyright/Patent Clause of the Constitution, any other
action is manifestly unconstitutional.
II
We have recognized that these twin purposes of
encouraging new works and adding to the public domain
apply to copyrights as well as patents. Thus, with regard to
copyrights on motion pictures, we have clearly identified
the overriding interest in the “release to the public of the
products of [the author’s] creative genius.” United States v.
Paramount Pictures, Inc., 334 U. S. 131, 158 (1948). And, as
with patents, we have emphasized that the overriding
purpose of providing a reward for authors’ creative activity
is to motivate that activity and “to allow the public access
to the products of their genius after the limited period of
exclusive control has expired.” Sony Corp. of America v.
Universal City Studios, Inc., 464 U. S. 417, 429 (1984). Ex post
facto extensions of copyrights result in a gratuitous transfer
of wealth from the public to authors, publishers, and their

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successors in interest. Such retroactive extensions do not
even arguably serve either of the purposes of the
Copyright/Patent Clause. The reasons why such extensions
of the patent monopoly are unconstitutional apply to
copyrights as well.
Respondent, however, advances four arguments in support
of the constitutionality of such retroactive extensions: (1)
The first Copyright Act enacted shortly after the
Constitution was ratified applied to works that had already
been produced; (2) later Congresses have repeatedly
authorized extensions of copyrights and patents; (3) such
extensions promote the useful arts by giving copyright
holders an incentive to preserve and restore certain
valuable motion pictures; and (4) as a matter of equity,
whenever Congress provides a longer term as an incentive
to the creation of new works by authors, it should provide
an equivalent reward to the owners of all unexpired
copyrights. None of these arguments is persuasive. [Justice
Stevens argues that both reason and the history of
Copyright and Patent statutes contradict these arguments.]
VII
The express grant of a perpetual copyright would
unquestionably violate the textual requirement that the
authors’ exclusive rights be only “for limited Times.”
Whether the extraordinary length of the grants authorized
by the 1998 Act are invalid because they are the functional
equivalent of perpetual copyrights is a question that need
not be answered in this case because the question presented
by the certiorari petition merely challenges Congress’ power
to extend retroactively the terms of existing copyrights.
Accordingly, there is no need to determine whether the
deference that is normally given to congressional policy
judgments may save from judicial review its decision
respecting the appropriate length of the term. It is
important to note, however, that a categorical rule

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prohibiting retroactive extensions would effectively
preclude perpetual copyrights. More importantly, as the
House of Lords recognized when it refused to amend the
Statute of Anne in 1735, unless the Clause is construed to
embody such a categorical rule, Congress may extend
existing monopoly privileges ad infinitum under the
majority’s analysis.
By failing to protect the public interest in free access to the
products of inventive and artistic genius – indeed, by
virtually ignoring the central purpose of the
Copyright/Patent Clause – the Court has quitclaimed to
Congress its principal responsibility in this area of the law.
Fairly read, the Court has stated that Congress’ actions
under the Copyright/Patent Clause are, for all intents and
purposes, judicially unreviewable. That result cannot be
squared with the basic tenets of our constitutional
structure. It is not hyperbole to recall the trenchant words
of Chief Justice John Marshall: “It is emphatically the
province and duty of the judicial department to say what
the law is.” Marbury v. Madison, 1 Cranch 137, 177 (1803).
We should discharge that responsibility as we did in Chadha.
I respectfully dissent.
JUSTICE BREYER, dissenting.
The Constitution’s Copyright Clause grants Congress the
power to ”promote the Progress of Science … by securing for
limited Times to Authors … the exclusive Right to their
respective Writings.” Art. I, § 8, cl. 8 (emphasis added). The
statute before us, the 1998 Sonny Bono Copyright Term
Extension Act, extends the term of most existing
copyrights to 95 years and that of many new copyrights to
70 years after the author’s death. The economic effect of
this 20-year extension – the longest blanket extension since
the Nation’s founding – is to make the copyright term not
limited, but virtually perpetual. Its primary legal effect is to
grant the extended term not to authors, but to their heirs,

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estates, or corporate successors. And most importantly, its
practical effect is not to promote, but to inhibit, the
progress of “Science” – by which word the Framers meant
learning or knowledge.
The majority believes these conclusions rest upon practical
judgments that at most suggest the statute is unwise, not
that it is unconstitutional. Legal distinctions, however, are
often matters of degree. And in this case the failings of
degree are so serious that they amount to failings of
constitutional kind. Although the Copyright Clause grants
broad legislative power to Congress, that grant has limits.
And in my view this statute falls outside them.
I
The “monopoly privileges” that the Copyright Clause
confers “are neither unlimited nor primarily designed to
provide a special private benefit.” Sony Corp. of America v.
Universal City Studios, Inc., 464 U. S. 417, 429 (1984); cf.
Graham v. John Deere Co. of Kansas City, 383 U. S. 1, 5 (1966).
This Court has made clear that the Clause’s limitations are
judicially enforceable. E. g., Trade-Mark Cases, 100 U. S. 82,
93-94 (1879). And, in assessing this statute for that
purpose, I would take into account the fact that the
Constitution is a single document, that it contains both a
Copyright Clause and a First Amendment, and that the two
are related.
The Copyright Clause and the First Amendment seek
related objectives – the creation and dissemination of
information. When working in tandem, these provisions
mutually reinforce each other, the first serving as an
“engine of free expression,” Harper & Row, Publishers, Inc. v.
Nation Enterprises, 471 U. S. 539, 558 (1985), the second
assuring that government throws up no obstacle to its
dissemination. At the same time, a particular statute that
exceeds proper Copyright Clause bounds may set Clause

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and Amendment at cross-purposes, thereby depriving the
public of the speech-related benefits that the Founders,
through both, have promised.
Consequently, I would review plausible claims that a
copyright statute seriously, and unjustifiably, restricts the
dissemination of speech somewhat more carefully than
reference to this Court’s traditional Copyright Clause
jurisprudence might suggest. There is no need in this case
to characterize that review as a search for “‘congruence and
proportionality,’” or as some other variation of what this
Court has called “intermediate scrutiny.” Rather, it is
necessary only to recognize that this statute involves not
pure economic regulation, but regulation of expression, and
what may count as rational where economic regulation is at
issue is not necessarily rational where we focus on
expression – in a Nation constitutionally dedicated to the
free dissemination of speech, information, learning, and
culture. In this sense only, and where line-drawing among
constitutional interests is at issue, I would look harder than
does the majority at the statute’s rationality – though less
hard than precedent might justify.
Thus, I would find that the statute lacks the constitutionally
necessary rational support (1) if the significant benefits that
it bestows are private, not public; (2) if it threatens seriously
to undermine the expressive values that the Copyright
Clause embodies; and (3) if it cannot find justification in
any significant Clause-related objective. Where, after
examination of the statute, it becomes difficult, if not
impossible, even to dispute these characterizations,
Congress’ “choice is clearly wrong.”
II
A.
Because we must examine the relevant statutory effects in
light of the Copyright Clause’s own purposes, we should

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begin by reviewing the basic objectives of that Clause. The
Clause authorizes a “tax on readers for the purpose of
giving a bounty to writers.” Why? What constitutional
purposes does the “bounty” serve?
The Constitution itself describes the basic Clause objective
as one of “promot[ing] the Progress of Science,” i. e.,
knowledge and learning. The Clause exists not to “provide
a special private benefit,” Sony, supra, at 429, but “to
stimulate artistic creativity for the general public good.” It
does so by “motivat[ing] the creative activity of authors”
through “the provision of a special reward.” Sony, supra, at
429. The “reward” is a means, not an end. And that is why
the copyright term is limited. It is limited so that its
beneficiaries – the public – “will not be permanently
deprived of the fruits of an artist’s labors.”
That is how the Court previously has described the Clause’s
objectives. And, in doing so, the Court simply has
reiterated the views of the Founders.
Madison, like Jefferson and others in the founding
generation, warned against the dangers of monopolies.
Madison noted that the Constitution had “limited them to
two cases, the authors of Books, and of useful inventions.”
Madison on Monopolies 756. He thought that in those two
cases monopoly is justified because it amounts to
“compensation for” an actual community “benefit” and
because the monopoly is “temporary” – the term originally
being 14 years (once renewable). Madison concluded that
“under that limitation a sufficient recompence and
encouragement may be given.” But he warned in general
that monopolies must be “guarded with strictness agst
abuse.”
Many Members of the Legislative Branch have expressed
themselves similarly. Those who wrote the House Report
on the landmark Copyright Act of 1909, for example, said
that copyright was not designed “primarily” to “benefit”

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the “author” or “any particular class of citizens, however
worthy.” Rather, under the Constitution, copyright was
designed “primarily for the benefit of the public,” for “the
benefit of the great body of people, in that it will stimulate
writing and invention.” And were a copyright statute not
“believed, in fact, to accomplish” the basic constitutional
objective of advancing learning, that statute “would be
beyond the power of Congress” to enact. Similarly, those
who wrote the House Report on legislation that
implemented the Berne Convention for the Protection of
Literary and Artistic Works said that “[t]he constitutional
purpose of copyright is to facilitate the flow of ideas in the
interest of learning.” H. R. Rep. No. 100-609, p. 22 (1988)
(internal quotation marks omitted). They added:
Under the U. S. Constitution, the
primary objective of copyright law is
not to reward the author, but rather to
secure for the public the benefits
derived from the authors’ labors. By
giving authors an incentive to create,
the public benefits in two ways: when
the original expression is created and
… when the limited term … expires
and the creation is added to the public
domain.
Id., at 17.
For present purposes, then, we should take the following as
well established: that copyright statutes must serve public,
not private, ends; that they must seek “to promote the
Progress” of knowledge and learning; and that they must
do so both by creating incentives for authors to produce
and by removing the related restrictions on dissemination
after expiration of a copyright’s “limited Tim[e]” – a time
that (like “a limited monarch”) is “restrain[ed]” and
“circumscribe[d],” “not [left] at large,” 2 S. Johnson, A
Dictionary of the English Language 1151 (4th rev. ed. 1773). I

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would examine the statute’s effects in light of these wellestablished constitutional purposes.
B.
This statute, like virtually every copyright statute, imposes
upon the public certain expression-related costs in the form
of (1) royalties that may be higher than necessary to evoke
creation of the relevant work, and (2) a requirement that
one seeking to reproduce a copyrighted work must obtain
the copyright holder’s permission. The first of these costs
translates into higher prices that will potentially restrict a
work’s dissemination. The second means search costs that
themselves may prevent reproduction even where the
author has no objection. Although these costs are, in a
sense, inevitable concomitants of copyright protection,
there are special reasons for thinking them especially
serious here.
First, the present statute primarily benefits the holders of
existing copyrights, i. e., copyrights on works already
created. And a Congressional Research Service (CRS) study
prepared for Congress indicates that the added royaltyrelated sum that the law will transfer to existing copyright
holders is large. E. Rappaport, CRS Report for Congress,
Copyright Term Extension: Estimating the Economic
Values (1998) (hereinafter CRS Report). In conjunction
with official figures on copyright renewals, the CRS Report
indicates that only about 2% of copyrights between 55 and
75 years old retain commercial value – i. e., still generate
royalties after that time. But books, songs, and movies of
that vintage still earn about $400 million per year in
royalties. Hence, (despite declining consumer interest in any
given work over time) one might conservatively estimate
that 20 extra years of copyright protection will mean the
transfer of several billion extra royalty dollars to holders of
existing copyrights – copyrights that, together, already will
have earned many billions of dollars in royalty “reward.”

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The extra royalty payments will not come from thin air.
Rather, they ultimately come from those who wish to read
or see or hear those classic books or films or recordings
that have survived. Even the $500,000 that United Airlines
has had to pay for the right to play George Gershwin’s
1924 classic Rhapsody in Blue represents a cost of doing
business, potentially reflected in the ticket prices of those
who fly. See Ganzel, Copyright or Copywrong?, 39 Training 36,
42 (Dec. 2002). Further, the likely amounts of extra royalty
payments are large enough to suggest that unnecessarily
high prices will unnecessarily restrict distribution of classic
works (or lead to disobedience of the law) – not just in
theory but in practice. Cf. CRS Report 3 (“[N]ew, cheaper
editions can be expected when works come out of
copyright”); Brief for College Art Association et al. as Amici
Curiae 24 (One year after expiration of copyright on Willa
Cather’s My Antonia, seven new editions appeared at prices
ranging from $2 to $24); Ganzel, supra, at 40-41, 44
(describing later abandoned plans to charge individual Girl
Scout camps $257 to $1,439 annually for a license to sing
songs such as God Bless America around a campfire).
A second, equally important, cause for concern arises out
of the fact that copyright extension imposes a
“permissions” requirement – not only upon potential users
of “classic” works that still retain commercial value, but
also upon potential users of any other work still in copyright.
Again using CRS estimates, one can estimate that, by 2018,
the number of such works 75 years of age or older will be
about 350,000. See Brief for Petitioners 7. Because the
Copyright Act of 1976 abolished the requirement that an
owner must renew a copyright, such still-in-copyright
works (of little or no commercial value) will eventually
number in the millions.
The potential users of such works include not only movie
buffs and aging jazz fans, but also historians, scholars,
teachers, writers, artists, database operators, and researchers

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of all kinds – those who want to make the past accessible
for their own use or for that of others. The permissions
requirement can inhibit their ability to accomplish that task.
Indeed, in an age where computer-accessible databases
promise to facilitate research and learning, the permissions
requirement can stand as a significant obstacle to
realization of that technological hope.
The reason is that the permissions requirement can inhibit
or prevent the use of old works (particularly those without
commercial value): (1) because it may prove expensive to
track down or to contract with the copyright holder, (2)
because the holder may prove impossible to find, or (3)
because the holder when found may deny permission either
outright or through misinformed efforts to bargain. The
CRS, for example, has found that the cost of seeking
permission “can be prohibitive.” CRS Report 4. And amici,
along with petitioners, provide examples of the kinds of
significant harm at issue.
Thus, the American Association of Law Libraries points
out that the clearance process associated with creating an
electronic archive, Documenting the American South,
“consumed approximately a dozen man-hours” per work.
The College Art Association says that the costs of
obtaining permission for use of single images, short
excerpts, and other short works can become prohibitively
high; it describes the abandonment of efforts to include, e.
g., campaign songs, film excerpts, and documents exposing
“horrors of the chain gang” in historical works or archives;
and it points to examples in which copyright holders in
effect have used their control of copyright to try to control
the content of historical or cultural works. … . Petitioners
point to music fees that may prevent youth or community
orchestras, or church choirs, from performing early 20thcentury music. Brief for Petitioners 3-5; see also App. 16-17
(Copyright extension caused abandonment of plans to sell
sheet music of Maurice Ravel’s Alborada Del Gracioso).

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Amici for petitioners describe how electronic databases tend
to avoid adding to their collections works whose copyright
holders may prove difficult to contact, see, e. g., Arms,
Getting the Picture: Observations from the Library of Congress on
Providing Online Access to Pictorial Images, 48 Library Trends
379, 405 (1999) (describing how this tendency applies to
the Library of Congress’ own digital archives).
As I have said, to some extent costs of this kind accompany
any copyright law, regardless of the length of the copyright
term. But to extend that term, preventing works from the
1920’s and 1930’s from falling into the public domain, will
dramatically increase the size of the costs just as –
perversely – the likely benefits from protection diminish.
The older the work, the less likely it retains commercial
value, and the harder it will likely prove to find the current
copyright holder. The older the work, the more likely it will
prove useful to the historian, artist, or teacher. The older
the work, the less likely it is that a sense of authors’ rights
can justify a copyright holder’s decision not to permit
reproduction, for the more likely it is that the copyright
holder making the decision is not the work’s creator, but,
say, a corporation or a great-grandchild whom the work’s
creator never knew. Similarly, the costs of obtaining
permission, now perhaps ranging in the millions of dollars,
will multiply as the number of holders of affected
copyrights increases from several hundred thousand to
several million. The costs to the users of nonprofit
databases, now numbering in the low millions, will multiply
as the use of those computer-assisted databases becomes
more prevalent. See, e. g., Brief for Internet Archive et al. as
Amici Curiae 2, 21, and n. 37 (describing nonprofit Project
Gutenberg). And the qualitative costs to education,
learning, and research will multiply as our children become
ever more dependent for the content of their knowledge
upon computer-accessible databases – thereby condemning
that which is not so accessible, say, the cultural content of

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early 20th-century history, to a kind of intellectual
purgatory from which it will not easily emerge.
The majority … invokes the “fair use” exception, and it
notes that copyright law itself is restricted to protection of a
work’s expression, not its substantive content. Neither the
exception nor the restriction, however, would necessarily
help those who wish to obtain from electronic databases
material that is not there – say, teachers wishing their
students to see albums of Depression Era photographs, to
read the recorded words of those who actually lived under
slavery, or to contrast, say, Gary Cooper’s heroic portrayal
of Sergeant York with filmed reality from the battlefield of
Verdun. Such harm, and more will occur despite the 1998
Act’s exemptions and despite the other “First Amendment
safeguards” in which the majority places its trust.
I should add that the Motion Picture Association of
America also finds my concerns overstated, at least with
respect to films, because the extension will sometimes
make it profitable to reissue old films, saving them from
extinction. Other film preservationists note, however, that
only a small minority of the many films, particularly silent
films, from the 1920’s and 1930’s have been preserved. 1
Report of the Librarian of Congress, Film Preservation
1993, pp. 3-4 (Half of all pre-1950 feature films and more
than 80% of all such pre-1929 films have already been lost);
cf. Brief for Hal Roach Studios et al. as Amici Curiae 18
(Out of 1,200 Twenties Era silent films still under
copyright, 63 are now available on digital video disc). They
seek to preserve the remainder. See, e. g., Brief for Internet
Archive et al. as Amici Curiae 22 (Nonprofit database
digitized 1,001 public-domain films, releasing them online
without charge); 1 Film Preservation 1993, supra, at 23
(reporting well over 200,000 titles held in public archives).
And they tell us that copyright extension will impede
preservation by forbidding the reproduction of films within
their own or within other public collections.

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Because this subsection concerns only costs, not
countervailing benefits, I shall simply note here that, with
respect to films as with respect to other works, extension
does cause substantial harm to efforts to preserve and to
disseminate works that were created long ago. And I shall
turn to the second half of the equation: Could Congress
reasonably have found that the extension’s toll-related and
permissions-related harms are justified by extension’s
countervailing preservationist incentives or in other ways?
C.
What copyright-related benefits might justify the statute’s
extension of copyright protection? First, no one could
reasonably conclude that copyright’s traditional economic
rationale applies here. The extension will not act as an
economic spur encouraging authors to create new works.
See Mazer, 347 U. S., at 219 (The “economic philosophy”
of the Copyright Clause is to “advance public welfare” by
“encourag[ing] individual effort” through “personal gain”).
No potential author can reasonably believe that he has
more than a tiny chance of writing a classic that will survive
commercially long enough for the copyright extension to
matter. After all, if, after 55 to 75 years, only 2% of all
copyrights retain commercial value, the percentage
surviving after 75 years or more (a typical pre-extension
copyright term) – must be far smaller. See CRS Report 7
(estimating that, even after copyright renewal, about 3.8%
of copyrighted books go out of print each year). And any
remaining monetary incentive is diminished dramatically by
the fact that the relevant royalties will not arrive until 75
years or more into the future, when, not the author, but
distant heirs, or shareholders in a successor corporation,
will receive them. Using assumptions about the time value
of money provided us by a group of economists (including
five Nobel prize winners), it seems fair to say that, for
example, a 1% likelihood of earning $100 annually for 20

469

years, starting 75 years into the future, is worth less than seven
cents today.
What potential Shakespeare, Wharton, or Hemingway
would be moved by such a sum? What monetarily
motivated Melville would not realize that he could do
better for his grandchildren by putting a few dollars into an
interest-bearing bank account? The Court itself finds no
evidence to the contrary. It refers to testimony before
Congress (1) that the copyright system’s incentives
encourage creation, and (2) (referring to Noah Webster)
that income earned from one work can help support an
artist who “‘continue[s] to create.’” But the first of these
amounts to no more than a set of undeniably true
propositions about the value of incentives in general. And
the applicability of the second to this Act is mysterious.
How will extension help today’s Noah Webster create new
works 50 years after his death? Or is that hypothetical
Webster supposed to support himself with the extension’s
present discounted value, i. e., a few pennies? Or (to change
the metaphor) is the argument that Dumas fils would have
written more books had Dumas pere’s Three Musketeers
earned more royalties?
Regardless, even if this cited testimony were meant more
specifically to tell Congress that somehow, somewhere,
some potential author might be moved by the thought of
great-grandchildren receiving copyright royalties a century
hence, so might some potential author also be moved by
the thought of royalties being paid for two centuries, five
centuries, 1,000 years, “‘til the End of Time.” And from a
rational economic perspective the time difference among
these periods makes no real difference. The present extension
will produce a copyright period of protection that, even
under conservative assumptions, is worth more than 99.8%
of protection in perpetuity (more than 99.99% for a
songwriter like Irving Berlin and a song like Alexander’s
Ragtime Band). The lack of a practically meaningful

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distinction from an author’s ex ante perspective between (a)
the statute’s extended terms and (b) an infinite term makes
this latest extension difficult to square with the
Constitution’s insistence on “limited Times.”
I am not certain why the Court considers it relevant in this
respect that “[n]othing … warrants construction of the
[1998 Act’s] 20-year term extension as a congressional
attempt to evade or override the ‘limited Times’
constraint.” Of course Congress did not intend to act
unconstitutionally. But it may have sought to test the
Constitution’s limits. After all, the statute was named after a
Member of Congress, who, the legislative history records,
“wanted the term of copyright protection to last forever.”
144 Cong. Rec. H9952 (daily ed. Oct. 7, 1998) (statement
of Rep. Mary Bono). See also Copyright Term, Film
Labeling, and Film Preservation Legislation: Hearings on
H. R. 989 et al. before the Subcommittee on Courts and
Intellectual Property of the House Judiciary Committee,
104th Cong., 1st Sess., 94 (1995) (hereinafter House
Hearings) (statement of Rep. Sonny Bono) (questioning
why copyrights should ever expire); ibid. (statement of Rep.
Berman) (“I guess we could … just make a permanent
moratorium on the expiration of copyrights”); id., at 230
(statement of Rep. Hoke) (“Why 70 years? Why not
forever? Why not 150 years?”); cf. ibid. (statement of the
Register of Copyrights) (In Copyright Office proceedings,
“[t]he Songwriters Guild suggested a perpetual term”); id.,
at 234 (statement of Quincy Jones) (”I’m particularly
fascinated with Representative Hoke’s statement… . [W]hy
not forever?”); id., at 277 (statement of Quincy Jones) (“If
we can start with 70, add 20, it would be a good start”).
And the statute ended up creating a term so long that (were
the vesting of 19th-century real property at issue) it would
typically violate the traditional rule against perpetuities. See
10 R. Powell, Real Property §§ 71.02[2]-[3], p. 71-11 (M.
Wolf ed. 2002) (traditional rule that estate must vest, if at

471

all, within lives in being plus 21 years); cf. id., § 71.03, at 7115 (modern statutory perpetuity term of 90 years, 5 years
shorter than 95-year copyright terms).
In any event, the incentive-related numbers are far too
small for Congress to have concluded rationally, even with
respect to new works, that the extension’s economicincentive effect could justify the serious expression-related
harms earlier described. See Part II-B, supra. And, of
course, in respect to works already created – the source of
many of the harms previously described – the statute creates
no economic incentive at all.
Second, the Court relies heavily for justification upon
international uniformity of terms. Ante, at 196, 205-206.
Although it can be helpful to look to international norms
and legal experience in understanding American law, in this
case the justification based upon foreign rules is
surprisingly weak. Those who claim that significant
copyright-related benefits flow from greater international
uniformity of terms point to the fact that the nations of the
European Union have adopted a system of copyright terms
uniform among themselves. And the extension before this
Court implements a term of life plus 70 years that appears
to conform with the European standard. But how does
“uniformity” help to justify this statute?
Despite appearances, the statute does not create a uniform
American-European term with respect to the lion’s share of
the economically significant works that it affects – all works
made “for hire” and all existing works created prior to
1978. … .
What benefit, then, might this partial future uniformity
achieve? The majority refers to “greater incentive for
American and other authors to create and disseminate their
work in the United States,” and cites a law review article
suggesting a need to “‘avoid competitive disadvantages.’”
The Solicitor General elaborates on this theme, postulating

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that because uncorrected disuniformity would permit
Europe, not the United States, to hold out the prospect of
protection lasting for “life plus 70 years” (instead of “life
plus 50 years”), a potential author might decide to publish
initially in Europe, delaying American publication. And the
statute, by creating a uniformly longer term, corrects for the
disincentive that this disuniformity might otherwise
produce.
That disincentive, however, could not possibly bring about
serious harm of the sort that the Court, the Solicitor
General, or the law review author fears. … . As we have
seen, the present commercial value of any such difference
amounts at most to comparative pennies. And a
commercial decision that turned upon such a difference
would have had to have rested previously upon a knife edge
so fine as to be invisible. A rational legislature could not
give major weight to an invisible, likely nonexistent
incentive-related effect.
But if there is no incentive-related benefit, what is the
benefit of the future uniformity that the statute only
partially achieves? Unlike the Copyright Act of 1976, this
statute does not constitute part of an American effort to
conform to an important international treaty like the Berne
Convention. … .
In sum, the partial, future uniformity that the 1998 Act
promises cannot reasonably be said to justify extension of
the copyright term for new works. And concerns with
uniformity cannot possibly justify the extension of the new
term to older works, for the statute there creates no
uniformity at all.
Third, several publishers and filmmakers argue that the
statute provides incentives to those who act as publishers to
republish and to redistribute older copyrighted works. This
claim cannot justify this statute, however, because the
rationale is inconsistent with the basic purpose of the

473

Copyright Clause – as understood by the Framers and by
this Court. The Clause assumes an initial grant of
monopoly, designed primarily to encourage creation,
followed by termination of the monopoly grant in order to
promote dissemination of already-created works. It
assumes that it is the disappearance of the monopoly grant,
not its perpetuation, that will, on balance, promote the
dissemination of works already in existence. This view of
the Clause does not deny the empirical possibility that grant
of a copyright monopoly to the heirs or successors of a
long-dead author could on occasion help publishers resurrect
the work, say, of a long-lost Shakespeare. But it does deny
Congress the Copyright Clause power to base its actions
primarily upon that empirical possibility – lest copyright
grants become perpetual, lest on balance they restrict
dissemination, lest too often they seek to bestow benefits
that are solely retroactive.
[Justice Breyer reviews the history and text of the clause to
buttress this view of the Clause.]
[This view] finds empirical support in sources that
underscore the wisdom of the Framers’ judgment. See CRS
Report 3 (“[N]ew, cheaper editions can be expected when
works come out of copyright”); see also Part II-B, supra.
And it draws logical support from the endlessly selfperpetuating nature of the publishers’ claim and the
difficulty of finding any kind of logical stopping place were
this Court to accept such a uniquely publisher-related
rationale. (Would it justify continuing to extend copyrights
indefinitely, say, for those granted to F. Scott Fitzgerald or
his lesser known contemporaries? Would it not, in
principle, justify continued protection of the works of
Shakespeare, Melville, Mozart, or perhaps Salieri, Mozart’s
currently less popular contemporary? Could it justify yet
further extension of the copyright on the song Happy
Birthday to You (melody first published in 1893, song
copyrighted after litigation in 1935), still in effect and

474

currently owned by a subsidiary of AOL Time Warner? See
Profitable “Happy Birthday,” Times of London, Aug. 5,
2000, p. 6.)
Given this support, it is difficult to accept the conflicting
rationale that the publishers advance, namely, that
extension, rather than limitation, of the grant will, by
rewarding publishers with a form of monopoly, promote,
rather than retard, the dissemination of works already in
existence. Indeed, given these considerations, this rationale
seems constitutionally perverse – unable, constitutionally
speaking, to justify the blanket extension here at issue.
Fourth, the statute’s legislative history suggests another
possible justification. That history refers frequently to the
financial assistance the statute will bring the entertainment
industry, particularly through the promotion of exports. …
. I can find nothing in the Copyright Clause that would
authorize Congress to enhance the copyright grant’s
monopoly power, likely leading to higher prices both at
home and abroad, solely in order to produce higher foreign
earnings. That objective is not a copyright objective. Nor,
standing alone, is it related to any other objective more
closely tied to the Clause itself. Neither can higher
corporate profits alone justify the grant’s enhancement.
The Clause seeks public, not private, benefits.
Finally, the Court mentions as possible justifications
“demographic, economic, and technological changes” – by
which the Court apparently means the facts that today
people communicate with the help of modern technology,
live longer, and have children at a later age. The first fact
seems to argue not for, but instead against, extension. See
Part II-B, supra. The second fact seems already corrected
for by the 1976 Act’s life-plus-50 term, which automatically
grows with lifespans. And the third fact – that adults are
having children later in life – is a makeweight at best,
providing no explanation of why the 1976 Act’s term of 50
years after an author’s death – a longer term than was

475

available to authors themselves for most of our Nation’s
history – is an insufficient potential bequest. The weakness
of these final rationales simply underscores the conclusion
that emerges from consideration of earlier attempts at
justification: There is no legitimate, serious copyrightrelated justification for this statute.
III
The Court is concerned that our holding in this case not
inhibit the broad decisionmaking leeway that the Copyright
Clause grants Congress. It is concerned about the
implications of today’s decision for the Copyright Act of
1976 – an Act that changed copyright’s basic term from 56
years (assuming renewal) to life of the author plus 50 years.
It is concerned about having to determine just how many
years of copyright is too many – a determination that it
fears would require it to find the “right” constitutional
number, a task for which the Court is not well suited.
I share the Court’s initial concern, about intrusion upon the
decisionmaking authority of Congress. But I do not believe
it intrudes upon that authority to find the statute
unconstitutional on the basis of (1) a legal analysis of the
Copyright Clause’s objectives; (2) the total implausibility of
any incentive effect; and (3) the statute’s apparent failure to
provide significant international uniformity. Nor does it
intrude upon congressional authority to consider rationality
in light of the expressive values underlying the Copyright
Clause, related as it is to the First Amendment, and given
the constitutional importance of correctly drawing the
relevant Clause/Amendment boundary. We cannot avoid
the need to examine the statute carefully by saying that
“Congress has not altered the traditional contours of
copyright protection,” for the sentence points to the
question, rather than the answer. Nor should we avoid that
examination here. That degree of judicial vigilance – at the
far outer boundaries of the Clause – is warranted if we are

476

to avoid the monopolies and consequent restrictions of
expression that the Clause, read consistently with the First
Amendment, seeks to preclude. And that vigilance is all the
more necessary in a new century that will see intellectual
property rights and the forms of expression that underlie
them play an ever more important role in the Nation’s
economy and the lives of its citizens.
I do not share the Court’s concern that my view of the
1998 Act could automatically doom the 1976 Act. Unlike
the present statute, the 1976 Act thoroughly revised
copyright law and enabled the United States to join the
Berne Convention – an international treaty that requires the
1976 Act’s basic life-plus-50 term as a condition for
substantive protections from a copyright’s very inception,
Berne Conv. Art. 7(1). Consequently, the balance of
copyright-related harms and benefits there is far less one
sided. The same is true of the 1909 and 1831 Acts, which,
in any event, provided for maximum terms of 56 years or
42 years while requiring renewal after 28 years, with most
copyrighted works falling into the public domain after that
28-year period, well before the putative maximum terms
had elapsed. Regardless, the law provides means to protect
those who have reasonably relied upon prior copyright
statutes. And, in any event, we are not here considering,
and we need not consider, the constitutionality of other
copyright statutes.
Neither do I share the Court’s aversion to line-drawing in
this case. Even if it is difficult to draw a single clear bright
line, the Court could easily decide (as I would decide) that
this particular statute simply goes too far. And such
examples – of what goes too far – sometimes offer better
constitutional guidance than more absolute-sounding rules.
In any event, “this Court sits” in part to decide when a
statute exceeds a constitutional boundary. In my view,
“[t]ext, history, and precedent,” support both the need to

477

draw lines in general and the need to draw the line here
short of this statute.
Finally, the Court complains that I have not “restrained”
my argument or “train[ed my] fire, as petitioners do, on
Congress’ choice to place existing and future copyrights in
parity.” The reason that I have not so limited my argument
is my willingness to accept, for purposes of this opinion,
the Court’s understanding that, for reasons of “[j]ustice,
policy, and equity” – as well as established historical
practice – it is not “categorically beyond Congress’
authority” to “exten[d] the duration of existing copyrights”
to achieve such parity. I have accepted this view, however,
only for argument’s sake – putting to the side, for the
present, JUSTICE STEVENS’ persuasive arguments to the
contrary. And I make this assumption only to emphasize
the lack of rational justification for the present statute. A
desire for “parity” between A (old copyrights) and B (new
copyrights) cannot justify extending A when there is no
rational justification for extending B. At the very least (if I
put aside my rationality characterization), to ask B to
support A here is like asking Tom Thumb to support Paul
Bunyan’s ox. Where the case for extending new copyrights
is itself so weak, what “justice,” what “policy,” what
“equity” can warrant the tolls and barriers that extension of
existing copyrights imposes?
IV
This statute will cause serious expression-related harm. It
will likely restrict traditional dissemination of copyrighted
works. It will likely inhibit new forms of dissemination
through the use of new technology. It threatens to interfere
with efforts to preserve our Nation’s historical and cultural
heritage and efforts to use that heritage, say, to educate our
Nation’s children. It is easy to understand how the statute
might benefit the private financial interests of corporations
or heirs who own existing copyrights. But I cannot find any

478

constitutionally legitimate, copyright-related way in which
the statute will benefit the public. Indeed, in respect to
existing works, the serious public harm and the virtually
nonexistent public benefit could not be more clear.
I have set forth the analysis upon which I rest these
judgments. This analysis leads inexorably to the conclusion
that the statute cannot be understood rationally to advance
a constitutionally legitimate interest. The statute falls
outside the scope of legislative power that the Copyright
Clause, read in light of the First Amendment, grants to
Congress. I would hold the statute unconstitutional.
I respectfully dissent.
APPENDIX TO OPINION OF BREYER, J.
A
The text’s estimates of the economic value of 1998 Act
copyrights relative to the economic value of a perpetual
copyright as well as the incremental value of a 20-year
extension of a 75-year term rest upon the conservative
future value and discount rate assumptions set forth in the
brief of economist amici. Brief for George A. Akerlof et al.
as Amici Curiae 5-7. Under these assumptions, if an author
expects to live 30 years after writing a book, the copyright
extension (by increasing the copyright term from “life of
the author plus 50 years” to “life of the author plus 70
years”) increases the author’s expected income from that
book – i. e., the economic incentive to write – by no more
than about 0.33%.
The text assumes that the extension creates a term of 95
years (the term corresponding to works made for hire and
for all existing pre-1978 copyrights). Under the economists’
conservative assumptions, the value of a 95-year copyright
is slightly more than 99.8% of the value of a perpetual
copyright. If a “life plus 70” term applies, and if an author
lives 78 years after creation of a work (as with Irving Berlin

479

and Alexander’s Ragtime Band), the same assumptions
yield a figure of 99.996%.
The most unrealistically conservative aspect of these
assumptions, i. e., the aspect most unrealistically favorable
to the majority, is the assumption of a constant future
income stream. In fact, as noted in the text, uncontested
data indicate that no author could rationally expect that a
stream of copyright royalties will be constant forever.
Indeed, only about 2% of copyrights can be expected to
retain commercial value at the end of 55 to 75 years. Thus,
in the overwhelming majority of cases, the ultimate value of
the extension to copyright holders will be zero, and the
economic difference between the extended copyright and a
perpetual copyright will be zero.
Nonetheless, there remains a small 2% or so chance that a
given work will remain profitable. The CRS Report
suggests a way to take account of both that likelihood and
the related “decay” in a work’s commercial viability: Find
the annual decay rate that corresponds to the percentage of
works that become commercially unavailable in any given
year, and then discount the revenue for each successive
year accordingly. See CRS Report 7. Following this
approach, if one estimates, conservatively, that a full 2% of
all works survives at the end of 75 years, the corresponding
annual decay rate is about 5%. I instead (and again
conservatively) use the 3.8% decay rate the CRS has applied
in the case of books whose copyrights were renewed
between 1950 and 1970. Using this 3.8% decay rate and the
economist amici’s proposed 7% discount rate, the value of a
95-year copyright is more realistically estimated not as
99.8%, but as 99.996% of the value of a perpetual
copyright. The comparable “Irving Berlin” figure is
99.99999%. (With a 5% decay rate, the figures are 99.999%
and 99.999998%, respectively.) Even these figures seem
likely to be underestimates in the sense that they assume

480

that, if a work is still commercially available, it earns as
much as it did in a year shortly after its creation.
B
Conclusions regarding the economic significance of “works
made for hire” are judgmental because statistical
information about the ratio of “for hire” works to all works
is scarce. But we know that, as of 1955, copyrights on “for
hire” works accounted for 40% of newly registered
copyrights. We also know that copyrights on works
typically made for hire – feature-length movies – were
renewed, and since the 1930’s apparently have remained
commercially viable, at a higher than average rate. Further,
we know that “harmonization” looks to benefit United
States exports and that films and sound recordings account
for the dominant share of export revenues earned by new
copyrighted works of potential lasting commercial value (i.
e., works other than computer software). It also appears
generally accepted that, in these categories, “for hire”
works predominate. Taken together, these circumstances
support the conclusion in the text that the extension fails to
create uniformity where it would appear to be most
important – pre-1978 copyrighted works nearing the end of
their pre-extension terms, and works made for hire.
3.4.4. Secondary Liability
Sony Corp. of America v. Universal City Studios, 464
U.S. 417 (1983)
Dean C. Dunlavey, Los Angeles, Cal., for petitioners.
Stephen A. Kroft, Beverly Hills, Cal., for respondents.
JUSTICE STEVENS delivered the opinion of the Court.
Petitioners manufacture and sell home video tape
recorders. Respondents own the copyrights on some of the
television programs that are broadcast on the public
airwaves. Some members of the general public use video

481

tape recorders sold by petitioners to record some of these
broadcasts, as well as a large number of other broadcasts.
The question presented is whether the sale of petitioners’
copying equipment to the general public violates any of the
rights conferred upon respondents by the Copyright Act.
Respondents commenced this copyright infringement
action against petitioners in the United States District
Court for the Central District of California in 1976.
Respondents alleged that some individuals had used
Betamax video tape recorders (VTR’s) to record some of
respondents’ copyrighted works which had been exhibited
on commercially sponsored television and contended that
these individuals had thereby infringed respondents’
copyrights. Respondents further maintained that petitioners
were liable for the copyright infringement allegedly
committed by Betamax consumers because of petitioners’
marketing of the Betamax VTR’s. Respondents sought no
relief against any Betamax consumer. Instead, they sought
money damages and an equitable accounting of profits
from petitioners, as well as an injunction against the
manufacture and marketing of Betamax VTR’s.
After a lengthy trial, the District Court denied respondents
all the relief they sought and entered judgment for
petitioners. 480 F.Supp. 429 (1979). The United States
Court of Appeals for the Ninth Circuit reversed the
District Court’s judgment on respondent’s copyright claim,
holding petitioners liable for contributory infringement and
ordering the District Court to fashion appropriate relief.
659 F.2d 963 (1981). We granted certiorari; since we had
not completed our study of the case last Term, we ordered
reargument. We now reverse.
An explanation of our rejection of respondents’
unprecedented attempt to impose copyright liability upon
the distributors of copying equipment requires a quite
detailed recitation of the findings of the District Court. In
summary, those findings reveal that the average member of

482

the public uses a VTR principally to record a program he
cannot view as it is being televised and then to watch it
once at a later time. This practice, known as “timeshifting,” enlarges the television viewing audience. For that
reason, a significant amount of television programming
may be used in this manner without objection from the
owners of the copyrights on the programs. For the same
reason, even the two respondents in this case, who do
assert objections to time-shifting in this litigation, were
unable to prove that the practice has impaired the
commercial value of their copyrights or has created any
likelihood of future harm. Given these findings, there is no
basis in the Copyright Act upon which respondents can
hold petitioners liable for distributing VTR’s to the general
public. The Court of Appeals’ holding that respondents are
entitled to enjoin the distribution of VTR’s, to collect
royalties on the sale of such equipment, or to obtain other
relief, if affirmed, would enlarge the scope of respondents’
statutory monopolies to encompass control over an article
of commerce that is not the subject of copyright
protection. Such an expansion of the copyright privilege is
beyond the limits of the grants authorized by Congress.
I
The two respondents in this action, Universal Studios, Inc.
and Walt Disney Productions, produce and hold the
copyrights on a substantial number of motion pictures and
other audiovisual works. In the current marketplace, they
can exploit their rights in these works in a number of ways:
by authorizing theatrical exhibitions, by licensing limited
showings on cable and network television, by selling
syndication rights for repeated airings on local television
stations, and by marketing programs on prerecorded
videotapes or videodiscs. Some works are suitable for
exploitation through all of these avenues, while the market
for other works is more limited.

483

Petitioner Sony manufactures millions of Betamax video
tape recorders and markets these devices through
numerous retail establishments, some of which are also
petitioners in this action. Sony’s Betamax VTR is a
mechanism consisting of three basic components: (1) a
tuner, which receives electromagnetic signals transmitted
over the television band of the public airwaves and
separates them into audio and visual signals; (2) a recorder,
which records such signals on a magnetic tape; and (3) an
adapter, which converts the audio and visual signals on the
tape into a composite signal that can be received by a
television set.
Several capabilities of the machine are noteworthy. The
separate tuner in the Betamax enables it to record a
broadcast off one station while the television set is tuned to
another channel, permitting the viewer, for example, to
watch two simultaneous news broadcasts by watching one
“live” and recording the other for later viewing. Tapes may
be reused, and programs that have been recorded may be
erased either before or after viewing. A timer in the
Betamax can be used to activate and deactivate the
equipment at predetermined times, enabling an intended
viewer to record programs that are transmitted when he or
she is not at home. Thus a person may watch a program at
home in the evening even though it was broadcast while
the viewer was at work during the afternoon. The Betamax
is also equipped with a pause button and a fast-forward
control. The pause button, when depressed, deactivates the
recorder until it is released, thus enabling a viewer to omit a
commercial advertisement from the recording, provided, of
course, that the viewer is present when the program is
recorded. The fast forward control enables the viewer of a
previously recorded program to run the tape rapidly when a
segment he or she does not desire to see is being played
back on the television screen.

484

The respondents and Sony both conducted surveys of the
way the Betamax machine was used by several hundred
owners during a sample period in 1978. Although there
were some differences in the surveys, they both showed
that the primary use of the machine for most owners was
“time-shifting,” – the practice of recording a program to
view it once at a later time, and thereafter erasing it. Timeshifting enables viewers to see programs they otherwise
would miss because they are not at home, are occupied
with other tasks, or are viewing a program on another
station at the time of a broadcast that they desire to watch.
Both surveys also showed, however, that a substantial
number of interviewees had accumulated libraries of tapes.1
Sony’s survey indicated that over 80% of the interviewees
watched at least as much regular television as they had
before owning a Betamax.2 Respondents offered no

1 As evidence of how a VTR may be used, respondents offered the testimony of

William Griffiths. Griffiths, although named as an individual defendant, was a
client of plaintiffs’ law firm. The District Court summarized his testimony as
follows:
He owns approximately 100 tapes. When Griffiths bought
his Betamax, he intended not only to time-shift (record,
play-back and then erase) but also to build a library of
cassettes. Maintaining a library, however, proved too
expensive, and he is now erasing some earlier tapes and
reusing them. Griffiths copied about 20 minutes of a
Universal motion picture called ‘Never Give An Inch,’ and
two episodes from Universal television series entitled ‘Baa
Baa Black Sheep’ and ‘Holmes and Yo Yo.’ He would
have erased each of these but for the request of plaintiffs’
counsel that it be kept. Griffiths also testified that he had
copied but already erased Universal films called ‘Alpha
Caper’ (erased before anyone saw it) and ‘Amelia Earhart.’
At the time of his deposition Griffiths did not intend to
keep any Universal film in his library. Griffiths has also
recorded documentaries, news broadcasts, sporting events
and political programs such as a rerun of the
Nixon/Kennedy debate.
480 F.Supp., at 436-437. Four other witnesses testified to having engaged in
similar activity.
2 The District Court summarized some of the findings in these surveys as follows:

485

evidence of decreased television viewing by Betamax
owners.3
Sony introduced considerable evidence describing
television programs that could be copied without objection
from any copyright holder, with special emphasis on sports,
religious, and educational programming. For example, their
survey indicated that 7.3% of all Betamax use is to record
sports events, and representatives of professional baseball,
football, basketball, and hockey testified that they had no
objection to the recording of their televised events for
home use.
Respondents offered opinion evidence concerning the
future impact of the unrestricted sale of VTR’s on the
commercial value of their copyrights. The District Court
found, however, that they had failed to prove any
likelihood of future harm from the use of VTR’s for timeshifting. Id., at 469.
….
III
The Copyright Act does not expressly render anyone liable
for infringement committed by another. In contrast, the
According to plaintiffs’ survey, 75.4% of the VTR owners
use their machines to record for time-shifting purposes
half or most of the time. Defendants’ survey showed that
96% of the Betamax owners had used the machine to
record programs they otherwise would have missed. When
plaintiffs asked interviewees how many cassettes were in
their library, 55.8% said there were 10 or fewer. In
defendants’ survey, of the total programs viewed by
interviewees in the past month, 70.4% had been viewed
only that one time and for 57.9%, there were no plans for
further viewing.

480 F.Supp., at 438.
3 “81.9% of the defendants’ interviewees watched the same amount or more of

regular television as they did before owning a Betamax. 83.2% reported their
frequency of movie going was unaffected by Betamax.” 480 F.Supp., at 439.

486

Patent Act expressly brands anyone who “actively induces
infringement of a patent” as an infringer, 35 U.S.C. §
271(b), and further imposes liability on certain individuals
labeled “contributory” infringers, id., § 271(c). The absence
of such express language in the copyright statute does not
preclude the imposition of liability for copyright
infringements on certain parties who have not themselves
engaged in the infringing activity. For vicarious liability is
imposed in virtually all areas of the law, and the concept of
contributory infringement is merely a species of the
broader problem of identifying the circumstances in which
it is just to hold one individual accountable for the actions
of another.
….
When a charge of contributory infringement is predicated
entirely on the sale of an article of commerce that is used
by the purchaser to infringe a patent, the public interest in
access to that article of commerce is necessarily implicated.
A finding of contributory infringement does not, of course,
remove the article from the market altogether; it does,
however, give the patentee effective control over the sale of
that item. Indeed, a finding of contributory infringement is
normally the functional equivalent of holding that the
disputed article is within the monopoly granted to the
patentee.4
For that reason, in contributory infringement cases arising
under the patent laws the Court has always recognized the

It seems extraordinary to suggest that the Copyright Act confers upon all
copyright owners collectively, much less the two respondents in this case, the
exclusive right to distribute VTR’s simply because they may be used to infringe
copyrights. That, however, is the logical implication of their claim. The request for
an injunction below indicates that respondents seek, in effect, to declare VTR’s
contraband. Their suggestion in this Court that a continuing royalty pursuant to a
judicially created compulsory license would be an acceptable remedy merely
indicates that respondents, for their part, would be willing to license their claimed
monopoly interest in VTR’s to petitioners in return for a royalty.
4

487

critical importance of not allowing the patentee to extend
his monopoly beyond the limits of his specific grant. These
cases deny the patentee any right to control the distribution
of unpatented articles unless they are “unsuited for any
commercial noninfringing use.” Dawson Chemical Co. v. Rohm
& Hass Co., 448 U.S. 176, 198 (1980). Unless a commodity
“has no use except through practice of the patented
method,” ibid, the patentee has no right to claim that its
distribution constitutes contributory infringement. “To
form the basis for contributory infringement the item must
almost be uniquely suited as a component of the patented
invention.” P. Rosenberg, Patent Law Fundamentals §
17.02[2] (1982). “[A] sale of an article which though
adapted to an infringing use is also adapted to other and
lawful uses, is not enough to make the seller a contributory
infringer. Such a rule would block the wheels of
commerce.” Henry v. A.B. Dick Co., 224 U.S. 1, 48 (1912).
We recognize there are substantial differences between the
patent and copyright laws. But in both areas the
contributory infringement doctrine is grounded on the
recognition that adequate protection of a monopoly may
require the courts to look beyond actual duplication of a
device or publication to the products or activities that make
such duplication possible. The staple article of commerce
doctrine must strike a balance between a copyright holder’s
legitimate demand for effective – not merely symbolic –
protection of the statutory monopoly, and the rights of
others freely to engage in substantially unrelated areas of
commerce. Accordingly, the sale of copying equipment, like
the sale of other articles of commerce, does not constitute
contributory infringement if the product is widely used for
legitimate, unobjectionable purposes. Indeed, it need
merely be capable of substantial noninfringing uses.
IV

488

The question is thus whether the Betamax is capable of
commercially significant noninfringing uses. In order to
resolve that question, we need not explore all the different
potential uses of the machine and determine whether or
not they would constitute infringement. Rather, we need
only consider whether on the basis of the facts as found by
the district court a significant number of them would be
non-infringing. Moreover, in order to resolve this case we
need not give precise content to the question of how much
use is commercially significant. For one potential use of the
Betamax plainly satisfies this standard, however it is
understood: private, noncommercial time-shifting in the
home. It does so both (A) because respondents have no
right to prevent other copyright holders from authorizing it
for their programs, and (B) because the District Court’s
factual findings reveal that even the unauthorized home
time-shifting of respondents’ programs is legitimate fair
use.
A. Authorized Time Shifting
Each of the respondents owns a large inventory of valuable
copyrights, but in the total spectrum of television
programming their combined market share is small. The
exact percentage is not specified, but it is well below 10%.5
If they were to prevail, the outcome of this litigation would
have a significant impact on both the producers and the
viewers of the remaining 90% of the programming in the
Nation. No doubt, many other producers share
respondents’ concern about the possible consequences of
unrestricted copying. Nevertheless the findings of the
District Court make it clear that time-shifting may enlarge
the total viewing audience and that many producers are
5 The record suggests that Disney’s programs at the time of trial consisted of

approximately one hour a week of network television and one syndicated series.
Universal’s percentage in the Los Angeles market on commercial television
stations was under 5%. See Tr. 532-533, 549-550.

489

willing to allow private time-shifting to continue, at least
for an experimental time period.
The District Court found:
Even if it were deemed that home-use
recording of copyrighted material
constituted infringement, the Betamax
could still legally be used to record
noncopyrighted material or material
whose owners consented to the
copying. An injunction would deprive
the public of the ability to use the
Betamax for this noninfringing offthe-air recording. * * * Defendants
introduced considerable testimony at
trial about the potential for such
copying
of
sports,
religious,
educational and other programming.
This included testimony from
representatives of the Offices of the
Commissioners of the National
Football, Basketball, Baseball and
Hockey Leagues and Associations, the
Executive Director of National
Religious Broadcasters and various
educational communications agencies.
Plaintiffs attack the weight of the
testimony offered and also contend
that an injunction is warranted because
infringing uses outweigh noninfringing
uses. Whatever the future percentage
of legal versus illegal home-use
recording might be, an injunction
which seeks to deprive the public of
the very tool or article of commerce
capable of some noninfringing use
would be an extremely harsh remedy,
as well as one unprecedented in
copyright law.

490

480 F.Supp., at 468.
Although the District Court made these statements in the
context of considering the propriety of injunctive relief, the
statements constitute a finding that the evidence
concerning “sports, religious, educational, and other
programming” was sufficient to establish a significant
quantity of broadcasting whose copying is now authorized,
and a significant potential for future authorized copying.
That finding is amply supported by the record. In addition
to the religious and sports officials identified explicitly by
the District Court, two items in the record deserve specific
mention.
First is the testimony of John Kenaston, the station
manager of Channel 58, an educational station in Los
Angeles affiliated with the Public Broadcasting Service. He
explained and authenticated the station’s published guide to
its programs. For each program, the guide tells whether
unlimited home taping is authorized, home taping is
authorized subject to certain restrictions (such as erasure
within seven days), or home taping is not authorized at all.
The Spring 1978 edition of the guide described 107
programs. Sixty-two of those programs or 58% authorize
some home taping. Twenty-one of them or almost 20%
authorize unrestricted home taping.
Second is the testimony of Fred Rogers, president of the
corporation that produces and owns the copyright on Mr.
Rogers’ Neighborhood. The program is carried by more public
television stations than any other program. Its audience
numbers over 3,000,000 families a day. He testified that he
had absolutely no objection to home taping for
noncommercial use and expressed the opinion that it is a

491

real service to families to be able to record children’s
programs and to show them at appropriate times.6
If there are millions of owners of VTR’s who make copies
of televised sports events, religious broadcasts, and
educational programs such as Mister Rogers’ Neighborhood,
and if the proprietors of those programs welcome the
practice, the business of supplying the equipment that
makes such copying feasible should not be stifled simply
because the equipment is used by some individuals to make
unauthorized reproductions of respondents’ works. The
respondents do not represent a class composed of all
copyright holders. Yet a finding of contributory
infringement would inevitably frustrate the interests of
broadcasters in reaching the portion of their audience that
is available only through time-shifting.
Of course, the fact that other copyright holders may
welcome the practice of time-shifting does not mean that
respondents should be deemed to have granted a license to
copy their programs. Third party conduct would be wholly
irrelevant in an action for direct infringement of
respondents’ copyrights. But in an action for contributory
infringement against the seller of copying equipment, the
copyright holder may not prevail unless the relief that he
seeks affects only his programs, or unless he speaks for
virtually all copyright holders with an interest in the

“Some public stations, as well as commercial stations, program the
‘Neighborhood’ at hours when some children cannot use it. I think that it’s a real
service to families to be able to record such programs and show them at
appropriate times. I have always felt that with the advent of all of this new
technology that allows people to tape the ‘Neighborhood’ off-the-air, and I’m
speaking for the ‘Neighborhood’ because that’s what I produce, that they then
become much more active in the programming of their family’s television life.
Very frankly, I am opposed to people being programmed by others. My whole
approach in broadcasting has always been ‘You are an important person just the
way you are. You can make healthy decisions.’ Maybe I’m going on too long, but I
just feel that anything that allows a person to be more active in the control of his
or her life, in a healthy way, is important.” T.R. 2920-2921. See also Def. Exh. PI,
p. 85.
6

492

outcome. In this case, the record makes it perfectly clear
that there are many important producers of national and
local television programs who find nothing objectionable
about the enlargement in the size of the television audience
that results from the practice of time-shifting for private
home use. The seller of the equipment that expands those
producers’ audiences cannot be a contributory infringer if,
as is true in this case, it has had no direct involvement with
any infringing activity.
B. Unauthorized Time Shifting
Even unauthorized uses of a copyrighted work are not
necessarily infringing. An unlicensed use of the copyright is
not an infringement unless it conflicts with one of the
specific exclusive rights conferred by the copyright statute.
Twentieth Century Music Corp. v. Aiken, 422 U.S. 151, 154-155,
95 S.Ct. 2040, 2043, 45 L.Ed.2d 84. Moreover, the
definition of exclusive rights in § 106 of the present Act is
prefaced by the words “subject to sections 107 through
118.” Those sections describe a variety of uses of
copyrighted material that “are not infringements of
copyright notwithstanding the provisions of § 106.” The
most pertinent in this case is § 107, the legislative
endorsement of the doctrine of “fair use.”
That section identifies various factors7 that enable a Court
to apply an “equitable rule of reason” analysis to particular

7 Section 107 provides:

493

claims of infringement. Although not conclusive, the first
factor requires that “the commercial or nonprofit character
of an activity” be weighed in any fair use decision. If the
Betamax were used to make copies for a commercial or
profit-making purpose, such use would presumptively be
unfair. The contrary presumption is appropriate here,
however, because the District Court’s findings plainly
establish that time-shifting for private home use must be
characterized as a noncommercial, nonprofit activity.
Moreover, when one considers the nature of a televised
copyrighted audiovisual work, see 17 U.S.C. § 107(2), and
that timeshifting merely enables a viewer to see such a work
which he had been invited to witness in its entirety free of
charge, the fact that the entire work is reproduced, see id.,
at § 107(3), does not have its ordinary effect of militating
against a finding of fair use.
This is not, however, the end of the inquiry because
Congress has also directed us to consider “the effect of the
use upon the potential market for or value of the
copyrighted work.” Id., at § 107(4). The purpose of
copyright is to create incentives for creative effort. Even
copying for noncommercial purposes may impair the
copyright holder’s ability to obtain the rewards that
Congress intended him to have. But a use that has no
Notwithstanding the provisions of section 106, the fair
use of a copyrighted work, including such use by
reproduction in copies or phonorecords or by any other
means specified by that section, for purposes such as
criticism, comment, news reporting, teaching (including
multiple copies for classroom use), scholarship, or
research, is not an infringement of copyright. In
determining whether the use made of a work in any
particular case is a fair use the factors to be considered
shall include –

(1) the purpose and character of the use, including whether such use is of a
commercial nature or is for nonprofit educational purposes; (2) the nature of the
copyrighted work; (3) the amount and substantiality of the portion used in relation
to the copyrighted work as a whole; and (4) the effect of the use upon the
potential market for or value of the copyrighted work.” 17 U.S.C. § 107.

494

demonstrable effect upon the potential market for, or the
value of, the copyrighted work need not be prohibited in
order to protect the author’s incentive to create. The
prohibition of such noncommercial uses would merely
inhibit access to ideas without any countervailing benefit.
Thus, although every commercial use of copyrighted
material is presumptively an unfair exploitation of the
monopoly privilege that belongs to the owner of the
copyright, noncommercial uses are a different matter. A
challenge to a noncommercial use of a copyrighted work
requires proof either that the particular use is harmful, or
that if it should become widespread, it would adversely
affect the potential market for the copyrighted work. Actual
present harm need not be shown; such a requirement
would leave the copyright holder with no defense against
predictable damage. Nor is it necessary to show with
certainty that future harm will result. What is necessary is a
showing by a preponderance of the evidence that some
meaningful likelihood of future harm exists. If the intended
use is for commercial gain, that likelihood may be
presumed. But if it is for a noncommercial purpose, the
likelihood must be demonstrated.
In this case, respondents failed to carry their burden with
regard to home time-shifting. The District Court described
respondents’ evidence as follows:
Plaintiffs’ experts admitted at several
points in the trial that the time-shifting
without librarying would result in ‘not
a great deal of harm.’ Plaintiffs’
greatest concern about time-shifting is
with ‘a point of important philosophy
that transcends even commercial
judgment.’ They fear that with any
Betamax usage, ‘invisible boundaries’
are passed: ‘the copyright owner has
lost control over his program.’

495

480 F.Supp., at 467.
Later in its opinion, the District Court observed:
Most of plaintiffs’ predictions of harm
hinge on speculation about audience
viewing patterns and ratings, a
measurement system which Sidney
Sheinberg, MCA’s president, calls a
‘black art’ because of the significant
level of imprecision involved in the
calculations.
Id., at 469.
There was no need for the District Court to say much
about past harm. “Plaintiffs have admitted that no actual
harm to their copyrights has occurred to date.” Id., at 451.
On the question of potential future harm from timeshifting, the District Court offered a more detailed analysis
of the evidence. It rejected respondents’ “fear that persons
‘watching’ the original telecast of a program will not be
measured in the live audience and the ratings and revenues
will decrease,” by observing that current measurement
technology allows the Betamax audience to be reflected. Id.,
at 466. It rejected respondents’ prediction “that live
television or movie audiences will decrease as more people
watch Betamax tapes as an alternative,” with the
observation that “[t]here is no factual basis for [the
underlying] assumption.” Ibid. It rejected respondents’ “fear
that time-shifting will reduce audiences for telecast reruns,”
and concluded instead that “given current market practices,
this should aid plaintiffs rather than harm them.” Ibid. And
it declared that respondents’ suggestion “that theater or
film rental exhibition of a program will suffer because of
time-shift recording of that program” “lacks merit.” 480
F.Supp., at 467.

496

After completing that review, the District Court restated its
overall conclusion several times, in several different ways.
“Harm from time-shifting is speculative and, at best,
minimal.” Ibid. “The audience benefits from the timeshifting capability have already been discussed. It is not
implausible that benefits could also accrue to plaintiffs,
broadcasters, and advertisers, as the Betamax makes it
possible for more persons to view their broadcasts.” Ibid.
“No likelihood of harm was shown at trial, and plaintiffs
admitted that there had been no actual harm to date.” Id., at
468-469. “Testimony at trial suggested that Betamax may
require adjustments in marketing strategy, but it did not
establish even a likelihood of harm.” Id., at 469. “Television
production by plaintiffs today is more profitable than it has
ever been, and, in five weeks of trial, there was no concrete
evidence to suggest that the Betamax will change the
studios’ financial picture.” Ibid.
The District Court’s conclusions are buttressed by the fact
that to the extent time-shifting expands public access to
freely broadcast television programs, it yields societal
benefits. Earlier this year, in Community Television of Southern
California v. Gottfried, — U.S. —-, —- - —-, n. 12, 103 S.Ct.
885, 891-892, 74 L.Ed.2d 705 (1983), we acknowledged the
public interest in making television broadcasting more
available. Concededly, that interest is not unlimited. But it
supports an interpretation of the concept of “fair use” that
requires the copyright holder to demonstrate some
likelihood of harm before he may condemn a private act of
time-shifting as a violation of federal law.
When these factors are all weighed in the “equitable rule of
reason” balance, we must conclude that this record amply
supports the District Court’s conclusion that home timeshifting is fair use. In light of the findings of the District
Court regarding the state of the empirical data, it is clear
that the Court of Appeals erred in holding that the statute
as presently written bars such conduct.

497

In summary, the record and findings of the District Court
lead us to two conclusions. First, Sony demonstrated a
significant likelihood that substantial numbers of copyright
holders who license their works for broadcast on free
television would not object to having their broadcasts timeshifted by private viewers. And second, respondents failed
to demonstrate that time-shifting would cause any
likelihood of nonminimal harm to the potential market for,
or the value of, their copyrighted works. The Betamax is,
therefore, capable of substantial noninfringing uses. Sony’s
sale of such equipment to the general public does not
constitute contributory infringement of respondent’s
copyrights.
V
“The direction of Art. I is that Congress shall have the power
to promote the progress of science and the useful arts.
When, as here, the Constitution is permissive, the sign of
how far Congress has chosen to go can come only from
Congress.” Deepsouth Packing Co. v. Laitram Corp., 406 U.S.
518, 530, 92 S.Ct. 1700, 1707, 32 L.Ed.2d 273 (1972).
One may search the Copyright Act in vain for any sign that
the elected representatives of the millions of people who
watch television every day have made it unlawful to copy a
program for later viewing at home, or have enacted a flat
prohibition against the sale of machines that make such
copying possible.
It may well be that Congress will take a fresh look at this
new technology, just as it so often has examined other
innovations in the past. But it is not our job to apply laws
that have not yet been written. Applying the copyright
statute, as it now reads, to the facts as they have been
developed in this case, the judgment of the Court of
Appeals must be reversed.
It is so ordered.

498

JUSTICE BLACKMUN, with whom JUSTICE MARSHALL,
JUSTICE POWELL, AND JUSTICE REHNQUIST join, dissenting.
….
The fair use doctrine must strike a balance between the
dual risks created by the copyright system: on the one hand,
that depriving authors of their monopoly will reduce their
incentive to create, and, on the other, that granting authors
a complete monopoly will reduce the creative ability of
others. The inquiry is necessarily a flexible one, and the
endless variety of situations that may arise precludes the
formulation of exact rules. But when a user reproduces an
entire work and uses it for its original purpose, with no
added benefit to the public, the doctrine of fair use usually
does not apply. There is then no need whatsoever to
provide the ordinary user with a fair use subsidy at the
author’s expense.
The making of a videotape recording for home viewing is
an ordinary rather than a productive use of the Studios’
copyrighted works. The District Court found that
“Betamax owners use the copy for the same purpose as the
original. They add nothing of their own.” 480 F.Supp., at
453. Although applying the fair use doctrine to home VTR
recording, as Sony argues, may increase public access to
material broadcast free over the public airwaves, I think
Sony’s argument misconceives the nature of copyright.
Copyright gives the author a right to limit or even to cut off
access to his work. Fox Film Corp. v. Doyal, 286 U.S. 123,
127, 52 S.Ct. 546, 547, 76 L.Ed. 1010 (1932). A VTR
recording creates no public benefit sufficient to justify
limiting this right. Nor is this right extinguished by the
copyright owner’s choice to make the work available over
the airwaves. Section 106 of the 1976 Act grants the
copyright owner the exclusive right to control the
performance and the reproduction of his work, and the fact
that he has licensed a single television performance is really
irrelevant to the existence of his right to control its

499

reproduction. Although a television broadcast may be free
to the viewer, this fact is equally irrelevant; a book
borrowed from the public library may not be copied any
more freely than a book that is purchased.
It may be tempting, as, in my view, the Court today is
tempted, to stretch the doctrine of fair use so as to permit
unfettered use of this new technology in order to increase
access to television programming. But such an extension
risks eroding the very basis of copyright law, by depriving
authors of control over their works and consequently of
their incentive to create. Even in the context of highly
productive educational uses, Congress has avoided this
temptation; in passing the 1976 Act, Congress made it clear
that off-the-air videotaping was to be permitted only in
very limited situations. See 1976 House Report 71; 1975
Senate Report 64. And, the Senate report adds, “[t]he
committee does not intend to suggest … that off-the-air
recording for convenience would under any circumstances,
be considered ‘fair use.’ ” Id., at 66. I cannot disregard these
admonitions.
….
I recognize, nevertheless, that there are situations where
permitting even an unproductive use would have no effect
on the author’s incentive to create, that is, where the use
would not affect the value of, or the market for, the
author’s work. Photocopying an old newspaper clipping to
send to a friend may be an example; pinning a quotation on
one’s bulletin board may be another. In each of these cases,
the effect on the author is truly de minimis. Thus, even
though these uses provide no benefit to the public at large,
no purpose is served by preserving the author’s monopoly,
and the use may be regarded as fair.
Courts should move with caution, however, in depriving
authors of protection from unproductive “ordinary” uses.
As has been noted above, even in the case of a productive

500

use, § 107(4) requires consideration of “the effect of the
use upon the potential market for or value of the
copyrighted work” (emphasis added). “[A] particular use
which may seem to have little or no economic impact on
the author’s rights today can assume tremendous
importance in times to come.” Register’s Supplementary
Report 14. Although such a use may seem harmless when
viewed in isolation, “[i]solated instances of minor
infringements, when multiplied many times, become in the
aggregate a major inroad on copyright that must be
prevented.” 1975 Senate Report 65.
I therefore conclude that, at least when the proposed use is
an unproductive one, a copyright owner need prove only a
potential for harm to the market for or the value of the
copyrighted work. See 3 M. Nimmer, Copyright §
13.05[E][4][c], p. 13-84 (1982). Proof of actual harm, or
even probable harm, may be impossible in an area where
the effect of a new technology is speculative, and requiring
such proof would present the “real danger … of confining
the scope of an author’s rights on the basis of the present
technology so that, as the years go by, his copyright loses
much of its value because of unforeseen technical
advances.” Register’s Supplementary Report 14.
Infringement thus would be found if the copyright owner
demonstrates a reasonable possibility that harm will result
from the proposed use. When the use is one that creates no
benefit to the public at large, copyright protection should
not be denied on the basis that a new technology that may
result in harm has not yet done so.
The Studios have identified a number of ways in which
VTR recording could damage their copyrights. VTR
recording could reduce their ability to market their works in
movie theaters and through the rental or sale of prerecorded videotapes or videodiscs; it also could reduce their
rerun audience, and consequently the license fees available
to them for repeated showings. Moreover, advertisers may

501

be willing to pay for only “live” viewing audiences, if they
believe VTR viewers will delete commercials or if rating
services are unable to measure VTR use; if this is the case,
VTR recording could reduce the license fees the Studios are
able to charge even for first-run showings. Library-building
may raise the potential for each of the types of harm
identified by the Studios, and time-shifting may raise the
potential for substantial harm as well.8

8 A VTR owner who has taped a favorite movie for repeated viewing will be less

likely to rent or buy a tape containing the same movie, watch a televised rerun, or
pay to see the movie at a theater. Although time-shifting may not replace theater
or rerun viewing or the purchase of prerecorded tapes or discs, it may well replace
rental usage; a VTR user who has recorded a first-run movie for later viewing will
have no need to rent a copy when he wants to see it. Both library-builders and
time-shifters may avoid commercials; the library builder may use the pause control
to record without them, and all users may fast-forward through commercials on
playback. The Studios introduced expert testimony that both time-shifting and
librarying would tend to decrease their revenue from copyrighted works. See 480
F.Supp., at 440. The District Court’s findings also show substantial librarybuilding and avoidance of commercials. Both sides submitted surveys showing
that the average Betamax user owns between 25 and 32 tapes. The Studios’ survey
showed that at least 40% of users had more than 10 tapes in a “library”; Sony’s
survey showed that more than 40% of users planned to view their tapes more
than once; and both sides’ surveys showed that commercials were avoided at least
25% of the time. Id., at 438-439.

502

Metro-Goldwyn-Mayer Studios Inc. v. Grokster, Ltd.,
545 U.S. 913 (2005)
JUSTICE SOUTER delivered the opinion of the Court.
The question is under what circumstances the distributor of
a product capable of both lawful and unlawful use is liable
for acts of copyright infringement by third parties using the
product. We hold that one who distributes a device with
the object of promoting its use to infringe copyright, as
shown by clear expression or other affirmative steps taken
to foster infringement, is liable for the resulting acts of
infringement by third parties.
I
A
Respondents, Grokster, Ltd., and StreamCast Networks,
Inc., defendants in the trial court, distribute free software
products that allow computer users to share electronic files
through peer-to-peer networks, so called because users’
computers communicate directly with each other, not
through central servers. The advantage of peer-to-peer
networks over information networks of other types shows
up in their substantial and growing popularity. Because they
need no central computer server to mediate the exchange
of information or files among users, the high-bandwidth
communications capacity for a server may be dispensed
with, and the need for costly server storage space is
eliminated. Since copies of a file (particularly a popular one)
are available on many users’ computers, file requests and
retrievals may be faster than on other types of networks,
and since file exchanges do not travel through a server,
communications can take place between any computers
that remain connected to the network without risk that a
glitch in the server will disable the network in its entirety.
Given these benefits in security, cost, and efficiency, peerto-peer networks are employed to store and distribute

electronic files by universities, government agencies,
corporations, and libraries, among others.1
Other users of peer-to-peer networks include individual
recipients of Grokster’s and StreamCast’s software, and
although the networks that they enjoy through using the
software can be used to share any type of digital file, they
have prominently employed those networks in sharing
copyrighted music and video files without authorization. A
group of copyright holders (MGM for short, but including
motion picture studios, recording companies, songwriters,
and music publishers) sued Grokster and StreamCast for
their users’ copyright infringements, alleging that they
knowingly and intentionally distributed their software to
enable users to reproduce and distribute the copyrighted
works in violation of the Copyright Act, 17 U.S.C. § 101 et
seq. MGM sought damages and an injunction.
Discovery during the litigation revealed the way the
software worked, the business aims of each defendant
company, and the predilections of the users. Grokster’s
eponymous software employs what is known as FastTrack
technology, a protocol developed by others and licensed to
Grokster. StreamCast distributes a very similar product
except that its software, called Morpheus, relies on what is
known as Gnutella technology. A user who downloads and
installs either software possesses the protocol to send
requests for files directly to the computers of others using
software compatible with FastTrack or Gnutella. On the
FastTrack network opened by the Grokster software, the
user’s request goes to a computer given an indexing

Peer-to-peer networks have disadvantages as well. Searches on peer-to-peer
networks may not reach and uncover all available files because search requests
may not be transmitted to every computer on the network. There may be
redundant copies of popular files. The creator of the software has no incentive to
minimize storage or bandwidth consumption, the costs of which are borne by
every user of the network. Most relevant here, it is more difficult to control the
content of files available for retrieval and the behavior of users.
1

504

capacity by the software and designated a supernode, or to
some other computer with comparable power and capacity
to collect temporary indexes of the files available on the
computers of users connected to it. The supernode (or
indexing computer) searches its own index and may
communicate the search request to other supernodes. If the
file is found, the supernode discloses its location to the
computer requesting it, and the requesting user can
download the file directly from the computer located. The
copied file is placed in a designated sharing folder on the
requesting user’s computer, where it is available for other
users to download in turn, along with any other file in that
folder.
In the Gnutella network made available by Morpheus, the
process is mostly the same, except that in some versions of
the Gnutella protocol there are no supernodes… . .
Although Grokster and StreamCast do not therefore know
when particular files are copied, a few searches using their
software would show what is available on the networks the
software reaches. MGM commissioned a statistician to
conduct a systematic search, and his study showed that
nearly 90% of the files available for download on the
FastTrack system were copyrighted works.2 Grokster and
StreamCast dispute this figure, raising methodological
problems and arguing that free copying even of
copyrighted works may be authorized by the rightholders.
They also argue that potential noninfringing uses of their
software are significant in kind, even if infrequent in
practice. Some musical performers, for example, have
gained new audiences by distributing their copyrighted
works for free across peer-to-peer networks, and some
distributors of unprotected content have used peer-to-peer

2 By comparison, evidence introduced by the plaintiffs in A&M Records, Inc. v.

Napster, Inc., 239 F.3d 1004 (C.A.9 2001), showed that 87% of files available on
the Napster file-sharing network were copyrighted, id., at 1013.

505

networks to disseminate files, Shakespeare being an
example. Indeed, StreamCast has given Morpheus users the
opportunity to download the briefs in this very case,
though their popularity has not been quantified.
As for quantification, the parties’ anecdotal and statistical
evidence entered thus far to show the content available on
the FastTrack and Gnutella networks does not say much
about which files are actually downloaded by users, and no
one can say how often the software is used to obtain copies
of unprotected material. But MGM’s evidence gives reason
to think that the vast majority of users’ downloads are acts
of infringement, and because well over 100 million copies
of the software in question are known to have been
downloaded, and billions of files are shared across the
FastTrack and Gnutella networks each month, the probable
scope of copyright infringement is staggering.
Grokster and StreamCast concede the infringement in most
downloads, and it is uncontested that they are aware that
users employ their software primarily to download
copyrighted files, even if the decentralized FastTrack and
Gnutella networks fail to reveal which files are being
copied, and when. From time to time, moreover, the
companies have learned about their users’ infringement
directly, as from users who have sent e-mail to each
company with questions about playing copyrighted movies
they had downloaded, to whom the companies have
responded with guidance. And MGM notified the
companies of 8 million copyrighted files that could be
obtained using their software.
Grokster and StreamCast are not, however, merely passive
recipients of information about infringing use. The record
is replete with evidence that from the moment Grokster
and StreamCast began to distribute their free software, each
one clearly voiced the objective that recipients use it to
download copyrighted works, and each took active steps to
encourage infringement.

506

After the notorious file-sharing service, Napster, was sued
by copyright holders for facilitation of copyright
infringement, A&M Records, Inc. v. Napster, Inc., 114
F.Supp.2d 896 (N.D.Cal.2000), aff’d in part, rev’d in part,
239 F.3d 1004 (C.A.9 2001), StreamCast gave away a
software program of a kind known as OpenNap, designed
as compatible with the Napster program and open to
Napster users for downloading files from other Napster
and OpenNap users’ computers. Evidence indicates that
“[i]t was always [StreamCast’s] intent to use [its OpenNap
network] to be able to capture email addresses of [its] initial
target market so that [it] could promote [its] StreamCast
Morpheus interface to them,” App. 861; indeed, the
OpenNap program was engineered “‘to leverage Napster’s
50 million user base.’”
StreamCast monitored both the number of users downloading its OpenNap program and the number of music
files they downloaded. It also used the resulting OpenNap
network to distribute copies of the Morpheus software and
to encourage users to adopt it. Internal company
documents indicate that StreamCast hoped to attract large
numbers of former Napster users if that company was shut
down by court order or otherwise, and that StreamCast
planned to be the next Napster. A kit developed by
StreamCast to be delivered to advertisers, for example,
contained press articles about StreamCast’s potential to
capture former Napster users, and it introduced itself to
some potential advertisers as a company “which is similar
to what Napster was.” It broadcast banner advertisements
to users of other Napster-compatible software, urging them
to adopt its OpenNap. An internal e-mail from a company
executive stated: “‘We have put this network in place so
that when Napster pulls the plug on their free service … or
if the Court orders them shut down prior to that … we will
be positioned to capture the flood of their 32 million users
that will be actively looking for an alternative.’”

507

Thus, StreamCast developed promotional materials to
market its service as the best Napster alternative. One
proposed advertisement read: “Napster Inc. has announced
that it will soon begin charging you a fee. That’s if the
courts don’t order it shut down first. What will you do to
get around it?” Another proposed ad touted StreamCast’s
software as the “# 1 alternative to Napster” and asked
“[w]hen the lights went off at Napster … where did the
users go?”3 StreamCast even planned to flaunt the illegal
uses of its software; when it launched the OpenNap
network, the chief technology officer of the company
averred that “[t]he goal is to get in trouble with the law and
get sued. It’s the best way to get in the new[s].”
The evidence that Grokster sought to capture the market
of former Napster users is sparser but revealing, for
Grokster launched its own OpenNap system called
Swaptor and inserted digital codes into its Web site so that
computer users using Web search engines to look for
“Napster” or “[f]ree filesharing” would be directed to the
Grokster Web site, where they could download the
Grokster software. And Grokster’s name is an apparent
derivative of Napster.
StreamCast’s executives monitored the number of songs by
certain commercial artists available on their networks, and
an internal communication indicates they aimed to have a
larger number of copyrighted songs available on their
networks than other file-sharing networks. The point, of
course, would be to attract users of a mind to infringe, just
as it would be with their promotional materials developed
showing copyrighted songs as examples of the kinds of files
available through Morpheus. Morpheus in fact allowed

3 The record makes clear that StreamCast developed these promotional materials

but not whether it released them to the public. Even if these advertisements were
not released to the public and do not show encouragement to infringe, they
illuminate StreamCast’s purposes.

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users to search specifically for “Top 40” songs, which were
inevitably copyrighted. Similarly, Grokster sent users a
newsletter promoting its ability to provide particular,
popular copyrighted materials.
In addition to this evidence of express promotion,
marketing, and intent to promote further, the business
models employed by Grokster and StreamCast confirm that
their principal object was use of their software to download
copyrighted works. Grokster and StreamCast receive no
revenue from users, who obtain the software itself for
nothing. Instead, both companies generate income by
selling advertising space, and they stream the advertising to
Grokster and Morpheus users while they are employing the
programs. As the number of users of each program
increases, advertising opportunities become worth more.
While there is doubtless some demand for free
Shakespeare, the evidence shows that substantive volume is
a function of free access to copyrighted work. Users
seeking Top 40 songs, for example, or the latest release by
Modest Mouse, are certain to be far more numerous than
those seeking a free Decameron, and Grokster and
StreamCast translated that demand into dollars.
Finally, there is no evidence that either company made an
effort to filter copyrighted material from users’ downloads
or otherwise impede the sharing of copyrighted files.
Although Grokster appears to have sent e-mails warning
users about infringing content when it received threatening
notice from the copyright holders, it never blocked anyone
from continuing to use its software to share copyrighted
files. StreamCast not only rejected another company’s offer
of help to monitor infringement, but blocked the Internet
Protocol addresses of entities it believed were trying to
engage in such monitoring on its networks.
….
II

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A
MGM and many of the amici fault the Court of Appeals’s
holding for upsetting a sound balance between the
respective values of supporting creative pursuits through
copyright protection and promoting innovation in new
communication technologies by limiting the incidence of
liability for copyright infringement. The more artistic
protection is favored, the more technological innovation
may be discouraged; the administration of copyright law is
an exercise in managing the trade-off. See Sony Corp. v.
Universal City Studios, supra, at 442, 104 S.Ct. 774; see
generally Ginsburg, Copyright and Control Over New
Technologies of Dissemination, 101 Colum. L.Rev. 1613
(2001); Lichtman & Landes, Indirect Liability for Copyright
Infringement: An Economic Perspective, 16 Harv. J.L. &
Tech. 395 (2003).
The tension between the two values is the subject of this
case, with its claim that digital distribution of copyrighted
material threatens copyright holders as never before,
because every copy is identical to the original, copying is
easy, and many people (especially the young) use filesharing software to download copyrighted works. This very
breadth of the software’s use may well draw the public
directly into the debate over copyright policy, Peters, Brace
Memorial Lecture: Copyright Enters the Public Domain, 51
J. Copyright Soc. 701, 705-717 (2004) (address by Register
of Copyrights), and the indications are that the ease of
copying songs or movies using software like Grokster’s and
Napster’s is fostering disdain for copyright protection, Wu,
When Code Isn’t Law, 89 Va. L.Rev. 679, 724-726 (2003).
As the case has been presented to us, these fears are said to
be offset by the different concern that imposing liability,
not only on infringers but on distributors of software based
on its potential for unlawful use, could limit further
development of beneficial technologies. See, e.g., Lemley &
Reese, Reducing Digital Copyright Infringement Without

510

Restricting Innovation, 56 Stan. L.Rev. 1345, 1386-1390
(2004).
The argument for imposing indirect liability in this case is,
however, a powerful one, given the number of infringing
downloads that occur every day using StreamCast’s and
Grokster’s software. When a widely shared service or
product is used to commit infringement, it may be
impossible to enforce rights in the protected work
effectively against all direct infringers, the only practical
alternative being to go against the distributor of the
copying device for secondary liability on a theory of
contributory or vicarious infringement.
One infringes contributorily by intentionally inducing or
encouraging direct infringement, see Gershwin Pub. Corp.
v. Columbia Artists Management, Inc., 443 F.2d 1159, 1162
(C.A.2 1971), and infringes vicariously by profiting from
direct infringement while declining to exercise a right to
stop or limit it, Shapiro, Bernstein & Co. v. H.L. Green
Co., 316 F.2d 304, 307 (C.A.2 1963).4 Although “[t]he
Copyright Act does not expressly render anyone liable for
infringement committed by another,” Sony Corp. v.
Universal City Studios, 464 U.S., at 434, these doctrines of
secondary liability emerged from common law principles
and are well established in the law, id., at 486 (Blackmun, J.,
dissenting).

4 We stated in Sony Corp. of America v. Universal City Studios, Inc., 464 U.S. 417

(1984), that “‘the lines between direct infringement, contributory infringement
and vicarious liability are not clearly drawn’….[R]easoned analysis of [the Sony
plaintiffs’ contributory infringement claim] necessarily entails consideration of
arguments and case law which may also be forwarded under the other labels, and
indeed the parties … rely upon such arguments and authority in support of their
respective positions on the issue of contributory infringement,” id., at 435, n. 17.
In the present case MGM has argued a vicarious liability theory, which allows
imposition of liability when the defendant profits directly from the infringement
and has a right and ability to supervise the direct infringer, even if the defendant
initially lacks knowledge of the infringement. Because we resolve the case based
on an inducement theory, there is no need to analyze separately MGM’s vicarious
liability theory.

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….
The parties and many of the amici in this case think the key
to resolving it is the Sony rule and, in particular, what it
means for a product to be “capable of commercially
significant noninfringing uses.” Sony Corp. v. Universal
City Studios, supra, at 442. MGM advances the argument
that granting summary judgment to Grokster and
StreamCast as to their current activities gave too much
weight to the value of innovative technology, and too little
to the copyrights infringed by users of their software, given
that 90% of works available on one of the networks was
shown to be copyrighted. Assuming the remaining 10% to
be its noninfringing use, MGM says this should not qualify
as “substantial,” and the Court should quantify Sony to the
extent of holding that a product used “principally” for
infringement does not qualify. As mentioned before,
Grokster and StreamCast reply by citing evidence that their
software can be used to reproduce public domain works,
and they point to copyright holders who actually encourage
copying. Even if infringement is the principal practice with
their software today, they argue, the noninfringing uses are
significant and will grow.
We agree with MGM that the Court of Appeals misapplied
Sony, which it read as limiting secondary liability quite
beyond the circumstances to which the case applied. Sony
barred secondary liability based on presuming or imputing
intent to cause infringement solely from the design or
distribution of a product capable of substantial lawful use,
which the distributor knows is in fact used for
infringement. The Ninth Circuit has read Sony’s limitation
to mean that whenever a product is capable of substantial
lawful use, the producer can never be held contributorily
liable for third parties’ infringing use of it; it read the rule as
being this broad, even when an actual purpose to cause
infringing use is shown by evidence independent of design
and distribution of the product, unless the distributors had

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“specific knowledge of infringement at a time at which they
contributed to the infringement, and failed to act upon that
information.” 380 F.3d, at 1162 (internal quotation marks
and alterations omitted). Because the Circuit found the
StreamCast and Grokster software capable of substantial
lawful use, it concluded on the basis of its reading of Sony
that neither company could be held liable, since there was
no showing that their software, being without any central
server, afforded them knowledge of specific unlawful uses.
This view of Sony, however, was error, converting the case
from one about liability resting on imputed intent to one
about liability on any theory. Because Sony did not displace
other theories of secondary liability, and because we find
below that it was error to grant summary judgment to the
companies on MGM’s inducement claim, we do not revisit
Sony further, as MGM requests, to add a more quantified
description of the point of balance between protection and
commerce when liability rests solely on distribution with
knowledge that unlawful use will occur. It is enough to
note that the Ninth Circuit’s judgment rested on an
erroneous understanding of Sony and to leave further
consideration of the Sony rule for a day when that may be
required.
C
Sony’s rule limits imputing culpable intent as a matter of
law from the characteristics or uses of a distributed
product. But nothing in Sony requires courts to ignore
evidence of intent if there is such evidence, and the case
was never meant to foreclose rules of fault-based liability
derived from the common law. Thus, where evidence goes
beyond a product’s characteristics or the knowledge that it
may be put to infringing uses, and shows statements or
actions directed to promoting infringement, Sony’s staplearticle rule will not preclude liability.

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The classic case of direct evidence of unlawful purpose
occurs when one induces commission of infringement by
another, or “entic[es] or persuad[es] another” to infringe,
Black’s Law Dictionary 790 (8th ed.2004), as by advertising.
Thus at common law a copyright or patent defendant who
“not only expected but invoked [infringing use] by
advertisement” was liable for infringement “on principles
recognized in every part of the law.” Kalem Co. v. Harper
Brothers, 222 U.S., at 62-63 (copyright infringement).
The rule on inducement of infringement as developed in
the early cases is no different today. Evidence of “active
steps … taken to encourage direct infringement,” Oak
Industries, Inc. v. Zenith Electronics Corp., 697 F.Supp.
988, 992 (N.D.Ill.1988), such as advertising an infringing
use or instructing how to engage in an infringing use, show
an affirmative intent that the product be used to infringe,
and a showing that infringement was encouraged
overcomes the law’s reluctance to find liability when a
defendant merely sells a commercial product suitable for
some lawful use.
For the same reasons that Sony took the staple-article
doctrine of patent law as a model for its copyright safeharbor rule, the inducement rule, too, is a sensible one for
copyright. We adopt it here, holding that one who
distributes a device with the object of promoting its use to
infringe copyright, as shown by clear expression or other
affirmative steps taken to foster infringement, is liable for
the resulting acts of infringement by third parties. We are,
of course, mindful of the need to keep from trenching on
regular commerce or discouraging the development of
technologies with lawful and unlawful potential.
Accordingly, just as Sony did not find intentional
inducement despite the knowledge of the VCR
manufacturer that its device could be used to infringe, mere
knowledge of infringing potential or of actual infringing
uses would not be enough here to subject a distributor to

514

liability. Nor would ordinary acts incident to product
distribution, such as offering customers technical support
or product updates, support liability in themselves. The
inducement rule, instead, premises liability on purposeful,
culpable expression and conduct, and thus does nothing to
compromise legitimate commerce or discourage innovation
having a lawful promise.
III
A
The only apparent question about treating MGM’s
evidence as sufficient to withstand summary judgment
under the theory of inducement goes to the need on
MGM’s part to adduce evidence that StreamCast and
Grokster communicated an inducing message to their
software users. The classic instance of inducement is by
advertisement or solicitation that broadcasts a message
designed to stimulate others to commit violations. MGM
claims that such a message is shown here. It is undisputed
that StreamCast beamed onto the computer screens of
users of Napster-compatible programs ads urging the
adoption of its OpenNap program, which was designed, as
its name implied, to invite the custom of patrons of
Napster, then under attack in the courts for facilitating
massive infringement. Those who accepted StreamCast’s
OpenNap program were offered software to perform the
same services, which a factfinder could conclude would
readily have been understood in the Napster market as the
ability to download copyrighted music files. Grokster
distributed an electronic newsletter containing links to
articles promoting its software’s ability to access popular
copyrighted music. And anyone whose Napster or free filesharing searches turned up a link to Grokster would have
understood Grokster to be offering the same file-sharing
ability as Napster, and to the same people who probably
used Napster for infringing downloads; that would also

515

have been the understanding of anyone offered Grokster’s
suggestively named Swaptor software, its version of
OpenNap. And both companies communicated a clear
message by responding affirmatively to requests for help in
locating and playing copyrighted materials.
In StreamCast’s case, of course, the evidence just described
was supplemented by other unequivocal indications of
unlawful purpose in the internal communications and
advertising designs aimed at Napster users (“When the
lights went off at Napster … where did the users go?”
(ellipsis in original)). Whether the messages were
communicated is not to the point on this record. The
function of the message in the theory of inducement is to
prove by a defendant’s own statements that his unlawful
purpose disqualifies him from claiming protection (and
incidentally to point to actual violators likely to be found
among those who hear or read the message). Proving that a
message was sent out, then, is the preeminent but not
exclusive way of showing that active steps were taken with
the purpose of bringing about infringing acts, and of
showing that infringing acts took place by using the device
distributed. Here, the summary judgment record is replete
with other evidence that Grokster and StreamCast, unlike
the manufacturer and distributor in Sony, acted with a
purpose to cause copyright violations by use of software
suitable for illegal use.
Three features of this evidence of intent are particularly
notable. First, each company showed itself to be aiming to
satisfy a known source of demand for copyright
infringement, the market comprising former Napster users.
StreamCast’s internal documents made constant reference
to Napster, it initially distributed its Morpheus software
through an OpenNap program compatible with Napster, it
advertised its OpenNap program to Napster users, and its
Morpheus software functions as Napster did except that it
could be used to distribute more kinds of files, including

516

copyrighted movies and software programs. Grokster’s
name is apparently derived from Napster, it too initially
offered an OpenNap program, its software’s function is
likewise comparable to Napster’s, and it attempted to divert
queries for Napster onto its own Web site. Grokster and
StreamCast’s efforts to supply services to former Napster
users, deprived of a mechanism to copy and distribute what
were overwhelmingly infringing files, indicate a principal, if
not exclusive, intent on the part of each to bring about
infringement.
Second, this evidence of unlawful objective is given added
significance by MGM’s showing that neither company
attempted to develop filtering tools or other mechanisms to
diminish the infringing activity using their software. While
the Ninth Circuit treated the defendants’ failure to develop
such tools as irrelevant because they lacked an independent
duty to monitor their users’ activity, we think this evidence
underscores Grokster’s and StreamCast’s intentional
facilitation of their users’ infringement.5
Third, there is a further complement to the direct evidence
of unlawful objective. It is useful to recall that StreamCast
and Grokster make money by selling advertising space, by
directing ads to the screens of computers employing their
software. As the record shows, the more the software is
used, the more ads are sent out and the greater the
advertising revenue becomes. Since the extent of the
software’s use determines the gain to the distributors, the
commercial sense of their enterprise turns on high-volume
use, which the record shows is infringing. This evidence
alone would not justify an inference of unlawful intent, but

5 Of course, in the absence of other evidence of intent, a court would be unable to

find contributory infringement liability merely based on a failure to take
affirmative steps to prevent infringement, if the device otherwise was capable of
substantial noninfringing uses. Such a holding would tread too close to the Sony
safe harbor.

517

viewed in the context of the entire record its import is
clear.
The unlawful objective is unmistakable.
B
In addition to intent to bring about infringement and
distribution of a device suitable for infringing use, the
inducement theory of course requires evidence of actual
infringement by recipients of the device, the software in
this case. As the account of the facts indicates, there is
evidence of infringement on a gigantic scale, and there is no
serious issue of the adequacy of MGM’s showing on this
point in order to survive the companies’ summary
judgment requests. Although an exact calculation of
infringing use, as a basis for a claim of damages, is subject
to dispute, there is no question that the summary judgment
evidence is at least adequate to entitle MGM to go forward
with claims for damages and equitable relief.
***
In sum, this case is significantly different from Sony and
reliance on that case to rule in favor of StreamCast and
Grokster was error. Sony dealt with a claim of liability
based solely on distributing a product with alternative
lawful and unlawful uses, with knowledge that some users
would follow the unlawful course. The case struck a
balance between the interests of protection and innovation
by holding that the product’s capability of substantial lawful
employment should bar the imputation of fault and
consequent secondary liability for the unlawful acts of
others.
MGM’s evidence in this case most obviously addresses a
different basis of liability for distributing a product open to
alternative uses. Here, evidence of the distributors’ words
and deeds going beyond distribution as such shows a

518

purpose to cause and profit from third-party acts of
copyright infringement. If liability for inducing
infringement is ultimately found, it will not be on the basis
of presuming or imputing fault, but from inferring a
patently illegal objective from statements and actions
showing what that objective was.
There is substantial evidence in MGM’s favor on all
elements of inducement, and summary judgment in favor
of Grokster and StreamCast was error. On remand,
reconsideration of MGM’s motion for summary judgment
will be in order.
The judgment of the Court of Appeals is vacated, and the
case is remanded for further proceedings consistent with
this opinion.
It is so ordered.
JUSTICE GINSBURG, with whom THE CHIEF JUSTICE AND
JUSTICE KENNEDY join, concurring
I concur in the Court’s decision, which vacates in full the
judgment of the Court of Appeals for the Ninth Circuit,
and write separately to clarify why I conclude that the
Court of Appeals misperceived, and hence misapplied, our
holding in Sony Corp. of America v. Universal City Studios,
Inc., 464 U.S. 417 (1984).
….
This case differs markedly from Sony. Here, there has been
no finding of any fair use and little beyond anecdotal
evidence of noninfringing uses. In finding the Grokster and
StreamCast software products capable of substantial
noninfringing uses, the District Court and the Court of
Appeals appear to have relied largely on declarations
submitted by the defendants. These declarations include
assertions (some of them hearsay) that a number of
copyright owners authorize distribution of their works on
the Internet and that some public domain material is

519

available through peer-to-peer networks including those
accessed through Grokster’s and StreamCast’s software.
The District Court declared it “undisputed that there are
substantial noninfringing uses for Defendants’ software,”
thus obviating the need for further proceedings. This
conclusion appears to rest almost entirely on the collection
of declarations submitted by Grokster and StreamCast.
Review of these declarations reveals mostly anecdotal
evidence, sometimes obtained second-hand, of authorized
copyrighted works or public domain works available online
and shared through peer-to-peer networks, and general
statements about the benefits of peer-to-peer technology.
These declarations do not support summary judgment in
the face of evidence, proffered by MGM, of overwhelming
use of Grokster’s and StreamCast’s software for
infringement.6
Even if the absolute number of noninfringing files copied
using the Grokster and StreamCast software is large, it does
not follow that the products are therefore put to substantial
noninfringing uses and are thus immune from liability. The
number of noninfringing copies may be reflective of, and

6 Justice BREYER finds support for summary judgment in this motley collection

of declarations and in a survey conducted by an expert retained by MGM. That
survey identified 75% of the files available through Grokster as copyrighted works
owned or controlled by the plaintiffs, and 15% of the files as works likely
copyrighted. As to the remaining 10% of the files, “there was not enough
information to form reasonable conclusions either as to what those files even
consisted of, and/or whether they were infringing or non-infringing.” Even
assuming, as Justice BREYER does, that the Sony Court would have absolved
Sony of contributory liability solely on the basis of the use of the Betamax for
authorized time-shifting, summary judgment is not inevitably appropriate here.
Sony stressed that the plaintiffs there owned “well below 10%” of copyrighted
television programming, and found, based on trial testimony from representatives
of the four major sports leagues and other individuals authorized to consent to
home-recording of their copyrighted broadcasts, that a similar percentage of
program copying was authorized. Here, the plaintiffs allegedly control copyrights
for 70% or 75% of the material exchanged through the Grokster and StreamCast
software, and the District Court does not appear to have relied on comparable
testimony about authorized copying from copyright holders.

520

dwarfed by, the huge total volume of files shared. Further,
the District Court and the Court of Appeals did not sharply
distinguish between uses of Grokster’s and StreamCast’s
software products (which this case is about) and uses of
peer-to-peer technology generally (which this case is not
about).
In sum, when the record in this case was developed, there
was evidence that Grokster’s and StreamCast’s products
were, and had been for some time, overwhelmingly used to
infringe and that this infringement was the overwhelming
source of revenue from the products. Fairly appraised, the
evidence was insufficient to demonstrate, beyond genuine
debate, a reasonable prospect that substantial or
commercially significant noninfringing uses were likely to
develop over time. On this record, the District Court
should not have ruled dispositively on the contributory
infringement charge by granting summary judgment to
Grokster and StreamCast.
If, on remand, the case is not resolved on summary
judgment in favor of MGM based on Grokster and
StreamCast actively inducing infringement, the Court of
Appeals, I would emphasize, should reconsider, on a fuller
record, its interpretation of Sony’s product distribution
holding.
JUSTICE BREYER, with whom JUSTICE STEVENS and
JUSTICE O’CONNOR JOIN, CONCURRING.
I agree with the Court that the distributor of a dual-use
technology may be liable for the infringing activities of
third parties where he or she actively seeks to advance the
infringement. I further agree that, in light of our holding
today, we need not now “revisit” Sony Corp. of America v.
Universal City Studios, Inc., 464 U.S. 417 (1984). Other
Members of the Court, however, take up the Sony
question: whether Grokster’s product is “capable of
‘substantial’ or ‘commercially significant’ noninfringing

521

uses.” And they answer that question by stating that the
Court of Appeals was wrong when it granted summary
judgment on the issue in Grokster’s favor. I write to
explain why I disagree with them on this matter.
I
The Court’s opinion in Sony and the record evidence (as
described and analyzed in the many briefs before us)
together convince me that the Court of Appeals’
conclusion has adequate legal support.
….
When measured against Sony’s underlying evidence and
analysis, the evidence now before us shows that Grokster
passes Sony’s test-that is, whether the company’s product is
capable of substantial or commercially significant
noninfringing uses. For one thing, petitioners’ (hereinafter
MGM) own expert declared that 75% of current files
available on Grokster are infringing and 15% are “likely
infringing.” That leaves some number of files near 10%
that apparently are noninfringing, a figure very similar to
the 9% or so of authorized time-shifting uses of the VCR
that the Court faced in Sony.
As in Sony, witnesses here explained the nature of the
noninfringing files on Grokster’s network without detailed
quantification. Those files include:
Authorized copies of music by artists such as Wilco, Janis
Ian, Pearl Jam, Dave Matthews, John Mayer, and others.
Free electronic books and other works from various online
publishers, including Project Gutenberg.
Public domain and authorized software, such as WinZip
8.1.
Licensed music videos and television and movie segments
distributed via digital video packaging with the permission
of the copyright holder.

522

The nature of these and other lawfully swapped files is such
that it is reasonable to infer quantities of current lawful use
roughly approximate to those at issue in Sony. At least,
MGM has offered no evidence sufficient to survive
summary judgment that could plausibly demonstrate a
significant quantitative difference. To be sure, in
quantitative terms these uses account for only a small
percentage of the total number of uses of Grokster’s
product. But the same was true in Sony, which
characterized the relatively limited authorized copying
market as “substantial.” … .
Importantly, Sony also used the word “capable,” asking
whether the product is “capable of” substantial
noninfringing uses. Its language and analysis suggest that a
figure like 10%, if fixed for all time, might well prove
insufficient, but that such a figure serves as an adequate
foundation where there is a reasonable prospect of
expanded legitimate uses over time. And its language also
indicates the appropriateness of looking to potential future
uses of the product to determine its “capability.”
Here the record reveals a significant future market for
noninfringing uses of Grokster-type peer-to-peer software.
Such software permits the exchange of any sort of digital
file-whether that file does, or does not, contain copyrighted
material. As more and more uncopyrighted information is
stored in swappable form, it seems a likely inference that
lawful peer- to-peer sharing will become increasingly
prevalent.
And that is just what is happening. Such legitimate
noninfringing uses are coming to include the swapping of:
research information (the initial purpose of many peer-topeer networks); public domain films (e.g., those owned by
the Prelinger Archive); historical recordings and digital
educational materials ( e.g., those stored on the Internet
Archive); digital photos (OurPictures, for example, is
starting a P2P photo-swapping service); “shareware” and

523

“freeware” (e.g., Linux and certain Windows software);
secure licensed music and movie files (Intent MediaWorks,
for example, protects licensed content sent across P2P
networks); news broadcasts past and present (the BBC
Creative Archive lets users “rip, mix and share the BBC”);
user-created audio and video files (including “podcasts”
that may be distributed through P2P software); and all
manner of free “open content” works collected by Creative
Commons (one can search for Creative Commons material
on StreamCast). See Brief for Distributed Computing
Industry Association as Amicus Curiae 15-26; Merges, A
New Dynamism in the Public Domain, 71 U. Chi. L.Rev.
183 (2004). I can find nothing in the record that suggests
that this course of events will not continue to flow naturally
as a consequence of the character of the software taken
together with the foreseeable development of the Internet
and of information technology.
There may be other now-unforeseen noninfringing uses
that develop for peer-to-peer software, just as the homevideo rental industry (unmentioned in Sony) developed for
the VCR. But the foreseeable development of such uses,
when taken together with an estimated 10% noninfringing
material, is sufficient to meet Sony’s standard. And while
Sony considered the record following a trial, there are no
facts asserted by MGM in its summary judgment filings
that lead me to believe the outcome after a trial here could
be any different. The lower courts reached the same
conclusion.
Of course, Grokster itself may not want to develop these
other noninfringing uses. But Sony’s standard seeks to
protect not the Groksters of this world (which in any event
may well be liable under today’s holding), but the
development of technology more generally. And Grokster’s
desires in this respect are beside the point.
II

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The real question here, I believe, is not whether the record
evidence satisfies Sony. As I have interpreted the standard
set forth in that case, it does. And of the Courts of Appeals
that have considered the matter, only one has proposed
interpreting Sony more strictly than I would do – in a case
where the product might have failed under any standard.
Instead, the real question is whether we should modify the
Sony standard, as MGM requests, or interpret Sony more
strictly, as I believe Justice GINSBURG’s approach would
do in practice. Compare ante, at 2784-2787 (concurring)
(insufficient opinion vidence in this case of both present
lawful uses and of a reasonable prospect that substantial
noninfringing uses would develop over time), with Sony,
464 U.S., at 442-447, 104 S.Ct. 774 (basing conclusion as to
the likely existence of a substantial market for authorized
copying upon general declarations, some survey data, and
common sense).
As I have said, Sony itself sought to “strike a balance
between a copyright holder’s legitimate demand for
effective-not merely symbolic-protection of the statutory
monopoly, and the rights of others freely to engage in
substantially unrelated areas of commerce.” Thus, to
determine whether modification, or a strict interpretation,
of Sony is needed, I would ask whether MGM has shown
that Sony incorrectly balanced copyright and newtechnology interests. In particular: (1) Has Sony (as I
interpret it) worked to protect new technology? (2) If so,
would modification or strict interpretation significantly
weaken that protection? (3) If so, would new or necessary
copyright-related benefits outweigh any such weakening?
A
The first question is the easiest to answer. Sony’s rule, as I
interpret it, has provided entrepreneurs with needed

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assurance that they will be shielded from copyright liability
as they bring valuable new technologies to market.
Sony’s rule is clear. That clarity allows those who develop
new products that are capable of substantial noninfringing
uses to know, ex ante, that distribution of their product will
not yield massive monetary liability. At the same time, it
helps deter them from distributing products that have no
other real function than-or that are specifically intended
for-copyright infringement, deterrence that the Court’s
holding today reinforces (by adding a weapon to the
copyright holder’s legal arsenal).
Sony’s rule is strongly technology protecting. The rule
deliberately makes it difficult for courts to find secondary
liability where new technology is at issue. It establishes that
the law will not impose copyright liability upon the
distributors of dual-use technologies (who do not
themselves engage in unauthorized copying) unless the
product in question will be used almost exclusively to
infringe copyrights (or unless they actively induce
infringements as we today describe). Sony thereby
recognizes that the copyright laws are not intended to
discourage or to control the emergence of new
technologies, including (perhaps especially) those that help
disseminate information and ideas more broadly or more
efficiently. Thus Sony’s rule shelters VCRs, typewriters,
tape recorders, photocopiers, computers, cassette players,
compact disc burners, digital video recorders, MP3 players,
Internet search engines, and peer-to-peer software. But
Sony’s rule does not shelter descramblers, even if one could
theoretically use a descrambler in a noninfringing way.
Sony’s rule is forward looking. It does not confine its scope
to a static snapshot of a product’s current uses (thereby
threatening technologies that have undeveloped future
markets). Rather, as the VCR example makes clear, a
product’s market can evolve dramatically over time. And
Sony-by referring to a capacity for substantial noninfringing

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uses-recognizes that fact. Sony’s word “capable” refers to a
plausible, not simply a theoretical, likelihood that such uses
will come to pass, and that fact anchors Sony in practical
reality.
Sony’s rule is mindful of the limitations facing judges where
matters of technology are concerned. Judges have no
specialized technical ability to answer questions about
present or future technological feasibility or commercial
viability where technology professionals, engineers, and
venture capitalists themselves may radically disagree and
where answers may differ depending upon whether one
focuses upon the time of product development or the time
of distribution. Consider, for example, the question
whether devices can be added to Grokster’s software that
will filter out infringing files. MGM tells us this is easy
enough to do, as do several amici that produce and sell the
filtering technology. Grokster says it is not at all easy to do,
and not an efficient solution in any event, and several
apparently disinterested computer science professors agree.
Which account should a judge credit? Sony says that the
judge will not necessarily have to decide.
Given the nature of the Sony rule, it is not surprising that
in the last 20 years, there have been relatively few
contributory infringement suits – based on a product
distribution theory – brought against technology providers
(a small handful of federal appellate court cases and
perhaps fewer than two dozen District Court cases in the
last 20 years). I have found nothing in the briefs or the
record that shows that Sony has failed to achieve its
innovation-protecting objective.
B
The second, more difficult, question is whether a modified
Sony rule (or a strict interpretation) would significantly
weaken the law’s ability to protect new technology. Justice

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GINSBURG’s approach would require defendants to
produce considerably more concrete evidence-more than
was presented here-to earn Sony’s shelter. That heavier
evidentiary demand, and especially the more dramatic (caseby-case balancing) modifications that MGM and the
Government seek, would, I believe, undercut the
protection that Sony now offers.
To require defendants to provide, for example, detailed
evidence-say, business plans, profitability estimates,
projected technological modifications, and so forth-would
doubtless make life easier for copyrightholder plaintiffs.
But it would simultaneously increase the legal uncertainty
that surrounds the creation or development of a new
technology capable of being put to infringing uses.
Inventors and entrepreneurs (in the garage, the dorm room,
the corporate lab, or the boardroom) would have to fear
(and in many cases endure) costly and extensive trials when
they create, produce, or distribute the sort of information
technology that can be used for copyright infringement.
They would often be left guessing as to how a court, upon
later review of the product and its uses, would decide when
necessarily rough estimates amounted to sufficient
evidence. They would have no way to predict how courts
would weigh the respective values of infringing and
noninfringing uses; determine the efficiency and advisability
of technological changes; or assess a product’s potential
future markets. The price of a wrong guess-even if it
involves a good-faith effort to assess technical and
commercial viability-could be large statutory damages (not
less than $750 and up to $30,000 per infringed work ). 17
U.S.C. § 504(c)(1). The additional risk and uncertainty
would mean a consequent additional chill of technological
development.
C

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The third question-whether a positive copyright impact
would outweigh any technology-related loss-I find the most
difficult of the three. I do not doubt that a more intrusive
Sony test would generally provide greater revenue security
for copyright holders. But it is harder to conclude that the
gains on the copyright swings would exceed the losses on
the technology roundabouts.
For one thing, the law disfavors equating the two different
kinds of gain and loss; rather, it leans in favor of protecting
technology. As Sony itself makes clear, the producer of a
technology which permits unlawful copying does not
himself engage in unlawful copying-a fact that makes the
attachment of copyright liability to the creation,
production, or distribution of the technology an
exceptional thing. Moreover, Sony has been the law for
some time. And that fact imposes a serious burden upon
copyright holders like MGM to show a need for change in
the current rules of the game, including a more strict
interpretation of the test.
In any event, the evidence now available does not, in my
view, make out a sufficiently strong case for change. To say
this is not to doubt the basic need to protect copyrighted
material from infringement. The Constitution itself stresses
the vital role that copyright plays in advancing the “useful
Arts.” Art. I, § 8, cl. 8. No one disputes that “reward to the
author or artist serves to induce release to the public of the
products of his creative genius.” United States v.
Paramount Pictures, Inc., 334 U.S. 131, 158 (1948). And
deliberate unlawful copying is no less an unlawful taking of
property than garden-variety theft. But these highly general
principles cannot by themselves tell us how to balance the
interests at issue in Sony or whether Sony’s standard needs
modification. And at certain key points, information is
lacking.
Will an unmodified Sony lead to a significant diminution in
the amount or quality of creative work produced? Since

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copyright’s basic objective is creation and its revenue
objectives but a means to that end, this is the underlying
copyright question. And its answer is far from clear.
Unauthorized copying likely diminishes industry revenue,
though it is not clear by how much. [citations to conflicting
studies of effect of file sharing on music sales].
The extent to which related production has actually and
resultingly declined remains uncertain, though there is good
reason to believe that the decline, if any, is not substantial.
See, e.g., M. Madden, Pew Internet & American Life
Project, Artists, Musicians, and the Internet, p. 21, (Dec. 5,
2004),
http://www.pewinternet.org/pdfs/PIP_Artists.Musicians_
Report.pdf (nearly 70% of musicians believe that file
sharing is a minor threat or no threat at all to creative
industries); Benkler, Sharing Nicely: On Shareable Goods
and the Emergence of Sharing as a Modality of Economic
Production, 114 Yale L. J. 273, 351-352 (2004) (“Much of
the actual flow of revenue to artists-from performances and
other sources-is stable even assuming a complete
displacement of the CD market by peer-to-peer distribution
….[I]t would be silly to think that music, a cultural form
without which no human society has existed, will cease to
be in our world [because of illegal file swapping]”).
More importantly, copyright holders at least potentially
have other tools available to reduce piracy and to abate
whatever threat it poses to creative production. As today’s
opinion makes clear, a copyright holder may proceed
against a technology provider where a provable specific
intent to infringe (of the kind the Court describes) is
present. Services like Grokster may well be liable under an
inducement theory.
In addition, a copyright holder has always had the legal
authority to bring a traditional infringement suit against one
who wrongfully copies. Indeed, since September 2003, the

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Recording Industry Association of America (RIAA) has
filed “thousands of suits against people for sharing
copyrighted material.” Walker, New Movement Hits
Universities: Get Legal Music, Washington Post, Mar. 17,
2005, p. E1. These suits have provided copyright holders
with damages; have served as a teaching tool, making clear
that much file sharing, if done without permission, is
unlawful; and apparently have had a real and significant
deterrent effect. [citations omitted]
Further, copyright holders may develop new technological
devices that will help curb unlawful infringement. Some
new technology, called “digital ‘watermarking’” and “digital
fingerprint[ing],” can encode within the file information
about the author and the copyright scope and date, which
“fingerprints” can help to expose infringers. [citations
omitted]
At the same time, advances in technology have discouraged
unlawful copying by making lawful copying (e.g.,
downloading music with the copyright holder’s permission)
cheaper and easier to achieve. Several services now sell
music for less than $1 per song. (Walmart.com, for
example, charges $0.88 each.) Consequently, many
consumers initially attracted to the convenience and
flexibility of services like Grokster are now migrating to
lawful paid services (services with copying permission)
where they can enjoy at little cost even greater convenience
and flexibility without engaging in unlawful swapping. See
Wu, When Code Isn’t Law, 89 Va. L.Rev. 679, 731-735
(2003) (noting the prevalence of technological problems on
unpaid swapping sites); K. Dean, P2P Tilts Toward
Legitimacy, Wired News (Nov. 24, 2004), http://
www.wired.com/news/digiwood/0,1412,65836,00.html;
Madden & Rainie, March 2005 Data Memo, supra, at 6-7
(percentage of current downloaders who have used paid
services rose from 24% to 43% in a year; number using free
services fell from 58% to 41%).

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Thus, lawful music downloading services-those that charge
the customer for downloading music and pay royalties to
the copyright holder-have continued to grow and to
produce substantial revenue. See Brief for Internet Law
Faculty as Amicus Curiae 5-20; Bruno, Digital
Entertainment: Piracy Fight Shows Encouraging Signs
(Mar. 5, 2005), available at LEXIS, News Library, Billboard
File (in 2004, consumers worldwide purchased more than
10 times the number of digital tracks purchased in 2003;
global digital music market of $330 million in 2004
expected to double in 2005); Press Release, Informa
Telecoms & media, Steady Download Growth Defies P2P
(global digital revenues will likely exceed $3 billion in 2010);
Ashton, [International Federation of the Phonographic
Industry] Predicts Downloads Will Hit the Mainstream,
Music Week, Jan. 29, 2005, p. 6 (legal music sites and
portable MP3 players “are helping to transform the digital
music market” into “an everyday consumer experience”).
And more advanced types of non- music-oriented peer-topeer networks have also started to develop, drawing in part
on the lessons of Grokster.
Finally, as Sony recognized, the legislative option remains
available. Courts are less well suited than Congress to the
task of “accommodat[ing] fully the varied permutations of
competing interests that are inevitably implicated by such
new technology.” Sony, 464 U.S., at 431, 104 S.Ct. 774; see,
e.g., Audio Home Recording Act of 1992, 106 Stat. 4237
(adding 17 U.S.C., ch. 10); Protecting Innovation and Art
While Preventing Piracy: Hearing Before the Senate
Committee on the Judiciary, 108th Cong., 2d Sess. (2004).
I do not know whether these developments and similar
alternatives will prove sufficient, but I am reasonably
certain that, given their existence, a strong demonstrated
need for modifying Sony (or for interpreting Sony’s
standard more strictly) has not yet been shown. That fact,
along with the added risks that modification (or strict

532

interpretation) would impose upon technological
innovation, leads me to the conclusion that we should
maintain Sony, reading its standard as I have read it. As so
read, it requires affirmance of the Ninth Circuit’s
determination of the relevant aspects of the Sony question.
***
For these reasons, I disagree with Justice GINSBURG, but
I agree with the Court and join its opinion.
3.4.4.1. Problems
Problems
For each, state the possible theories of secondary liability for
infringement that could be used, if any, based only on the facts
given. (inducement, vicarious, or Sony-style)
1. A newspaper contains a classified ad section, a small subsection
of which frequently features solicitations to trade copies of
copyrighted compact discs. Newspaper is sued.
2. A developer sells software called StripIt that removes the
restrictions on movies purchased from the iTunes Store. Developer
is sued.
3. A developer sells software that records in an audio file all audio
output by one’s computer. A web designer creates a popular, adsupported website featuring how-to guides on using the software to
record internet radio broadcasts, some of which are copyrighted
and do not authorize duplication. Developer is sued.
4. Same as 3, but web designer is sued.
Answers
1. A newspaper contains a classified ad section, a small subsection
of which frequently features solicitations to trade copies of
copyrighted compact discs. Newspaper is sued.

533

Vicarious liability is the most promising avenue. Vicarious
liability, in the copyright infringement context, is liability for
the infringement of others when one has the right and
practical ability to control that infringement. Here, the
newspaper has the right to decide which ads to print. Further,
the newspaper is certainly capable of screening ads for
solicitations to trade infringing copies. This case would
essentially be a low-tech version of Napster, but where the
ability to screen for infringers is even easier.
Note that solicitations to trade the compact discs themselves,
the actual discs bought at retail, would not form the basis of a
secondary infringement claim. There would be no copy at all
made in such circumstances. I’m free to sell or give away
books I no longer want, CDs that I don’t want, or any other
article subject to copyright.
You may be tempted to cite inducement as a possibility here.
But the newspaper itself is not actively encouraging anyone to
infringe. The evidence of inducement in Grokster went to
evidence that the companies themselves were encouraging
infringement - by marketing to infringers, advertising the
utility of their produce to infringe, etc. There isn’t any of that
here.
2. A developer sells software called StripIt that removes the
restrictions on movies purchased from the iTunes Store. Developer
is sued.
Contributory infringement, or what I’ve been calling Sony-style
infringement, might be found here, depending on what other
uses the software has. Cautionary note: there was no liability
in Sony. So when I say Sony-style liability, I mean liability on
the ground discussed in Sony. Sony itself was not found liable
under what we’re calling a Sony theory. Contributory
infringement is liability for merely placing a product on the
market that is not capable substantial noninfringing uses. In
other words, if your product is really only good for

534

infringement, you can be liable for the illegal copying of those
who use it.
Here, StripIt appears to be useful only to remove the
protections that prevent unauthorized copying of digital
movies purchased from iTunes. We’d want to know, though,
whether it’s capable of other uses. Further, we’d want to
know how often the product is used to enable users to make
fair use copies of movies they have bought. (There is another
statute, the controversial DMCA, that governs the intentional
circumvention of anti-copying measures.)
3. A developer sells software that records in an audio file all audio
output by one’s computer. A web designer creates a popular, adsupported website featuring how-to guides on using the software to
record internet radio broadcasts, some of which are copyrighted
and do not authorize duplication. Developer is sued.
No liability. There is no evidence here that the developer has
done anything to encourage anyone to use the product to
make illegal copies. It’s doubtful therefore that there could be
liability under an inducement theory. Nor is vicarious liability
a realistic possibility. The courts aren’t going to require the
developer to change the program to monitor people’s usage
and route that information back to the developer. The
developer simply doesn’t have the practical ability to control
how the product is used once people download it. Finally,
there almost certainly is no liability under a Sony theory. There
are a great many uses for such a product that do not include
copying copyrighted material. Indeed, web designer’s guides
include information on recording noncopyrighted streams. So
even if we restrict attention to copying streams, it would seem
the product is capable of substantial noninfringing uses. This
is not to mention the other kinds of recordings a user could
make.
4. Same as 3, but web designer is sued.

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The most promising ground here is inducement. Web
designer hasn’t released a product that makes copies. Rather,
the designer has encouraged others to make copies by telling
the how to do it. That some of the guides aren’t for
copyrighted streams doesn’t matter. Even if there is only one
guide that instructs users on recording a copyrighted stream,
designer might be held liable under an inducement theory - as
the designer might be argued to have actively encouraged the
guide’s readers to do what’s in the guide: copy a copyrighted
stream.
Problem: Streamers
Lenny the law student is pretty good with computers. While task
avoiding, Lenny developed an application for recording streamed
audio from the internet. Called Streamers, the program works as
follows. It assumes the user has certain software, not made by
Lenny, already installed, namely a web browser, a calendar
program, RealPlayer (for playing streamed audio), and a program
called WireTap. WireTap, made by another software company,
records any sounds output by the computer. So, after hitting record
in WireTap and listening or watching a stream on RealPlayer, the
audio file created by WireTap will contain the audio of that stream
(along with any other sounds the user happens to trigger when
WireTap is recording). Because the raw sound is recorded and then
re-compressed, the resulting audio file typically is a little lower
quality than the original stream.
Streamers works by coordinating these four applications. After
typing into Streamers a URL and a recording schedule, the
application puts the recordings into the user’s calendar with an
alarm. When the time for a recording arrives, the alarm is triggered,
and Streamers launches the web browser, triggering the desired
stream to play, and then launches WireTap to begin recording.
When the stream is finished, recording ends, and Streamers
conveniently moves the resulting audio file into iTunes where it is
ready for the user to listen to or put on an iPod. In this way, a user
can develop a whole library of streams and schedules so that with

536

no manual effort on the part of the user, he or she will always have
a library of his or her favorite streams.
To Lenny’s surprise, shortly after posting his application,
thousands of people downloaded it and began using it to keep upto-date libraries of their favorite NPR and commercial radio shows,
making use of the online streams many radio stations provide.
Though they already could have listened to these while sitting at
their computers, many were eager to get these programs onto their
iPods or other portable players. A good many users had questions,
and Lenny provided help over email for configuring Streamers to
record various radio programs hosted on numerous websites.
Lenny comes to you, a well-known lawyer, with an email he has
just received from VapidChannel Communications. The email
demands Lenny remove Streamers from distribution and destroy all
copies of the application and its source code. According to Vapid,
Lenny has “promoted, encouraged, and enabled the illegal copying
of Vapid’s copyright protected programs.” The email went on, “If
you do not comply with Our demands within ten days, Vapid will
be forced to file suit against You for copyright infringement and
seek injunction and damages in an amount up to $300,000 per
illegal copy.”
The letter further states that “Your application, Streamers, places
you in violation of the anti-circumvention provision of the Digital
Millenium Copyright Act, 17 U.S.C. § 1201, as it enables
unauthorized copies of audio streams that have been effectively
protected against being downloaded.”
Lenny is scared, makes nothing for Streamers, which is a free
download, but does not want to be intimidated. What can you tell
Lenny about his potential liability and what evidence, if any, might
be relevant to the case?
Discussion
This problem obviously calls for an application and extension of
the ideas in Grokster and Sony. L is not being threatened for making
any copies of Vapid’s copyrighted programs. Rather, Vapid’s
theory must be that he is liable for the illegal copying by others

537

using his program, Streamers. Called “contributory infringement,”
this basis for liability is not found in the Copyright Act itself but is
a judicial doctrine meant to effectuate the Act’s purposes.
We have identified three possible circumstances under which one
may be liable for the infringing acts of another. First, vicarious
liability (think Napster) may be found where one has the ability and
right to control the infringing acts of third parties but does not do
so. Second, liability for inducement (think Grokster) attaches when
one “distributes a device with the object of promoting its use to
infringe copyright, as shown by clear expression or other
affirmative steps taken to foster infringement.” Third, mere
distribution, with no such expression or affirmative steps, may
constitute contributory infringement if the device is not capable of
significant noninfringing use.
A good answer here would run through these three possibilities.
There’s clearly no control as there was in Napster, and so vicarious
liability seems exceedingly unlikely. Inducement? Well, the facts did
state that L provided some assistance to users seeking to record
shows. It is not clear whether and to what extent L helped in the
copying of copyrighted material. The problem asked what evidence
might be relevant to the case, and the content of L’s customer
support is likely important. If it can be shown that L provided no
help toward what he knew to be infringing uses, then L can likely
avoid an inducement claim, and he won’t have to defend the
legality of the acts of any particular users he helped.
What about the third possibility (Sony)? Regardless of the support
he provided or steps he took, could L be liable simply because of
the infringement that Streamers makes possible? The question here
would center on how much non-infringing use Streamers either
permits or, if Ginsburg’s analysis rules the day, is likely actually to
occur. L’s lawyer would clearly want to establish the large number
of potential noninfringing uses that could be made of Streamers.
Think about the different kinds of evidence we could consider. The
abundance of streams that do no forbid copying of this sort? Just
because there may be many such streams does not mean that their
copying is a substantial part of the copying Streamers users actually

538

engage in. Maybe the other side will gather evidence concerning the
proportion of Streamers-made copies that are authorized.
(Remember in discussing Grokster when we asked whether the
percentage of noncopyrighted files or copies was the relevant
benchmark for the Sony “significant” benchmark.)
But even if Vapid can show that the vast majority of Streamersmade copies are of non-authorized streams, meaning streams that
the content owners would not allow to be copied, the analysis
would not stop there. Just because a content owner does not
authorize a copy does not mean that he or she has a valid legal
claim against the copier. If the content is not copyrighted to begin
with or if the copying is fair use, then there can be no infringement,
and, thus, such copies cannot establish contributory infringement.
Remember that one need not register a work to gain a copyright.
Your blog postings, etc., those can all be subject to copyright
protection. Indeed, nearly all of the streams that Streamers users
copy are likely subject to copyright. And so, unless the owners of
those streams authorize copying, we have prima facie infringement.
Exactly how many streams authorize such copying is something
we’d have to investigate. But as to the unauthorized streams: is
copying them with Streamers fair use if done (a) only to time shift
or (b) to time shift and “device shift” (i.e., put the content on an
iPod even when the content owner wants me to pay to do so)?
A very good answer here would discuss the fair use statute (looking
to opinions interpreting it, like Suntrust Bank, for guidance) and
examine its factors. Sony, though, tells us how these factors resolve
with respect to television time-shifting, and it’s clearly relevant to,
if not dispositive of, the copying here. Though the fair use factors
appear both here and in Sony, on their surface, pretty heavily to
favor the broadcasters, the fact in Sony that a user of a VCR is only
shifting to a more convenient time the viewing of a program he or
she was invited to view free of charge pretty much overwhelmed
the analysis. The Court just didn’t see anything wrong with that
kind of copying in light of the purposes of copyright, and the
statutory factors that pointed the other way were deemed less
important in this context.

539

At first glance, one might think that Sony definitively answers the
question here with regard to time shifting. However, Vapid could
argue that time shifting is not fair use in this context, at least with
respect to streams which are available on demand on the internet.
Unlike television broadcasting in the early 1980s, streams can be
listened to anytime one is sitting at the computer with the necessary
software. Time shifting is simply not as valuable or necessary here
as it is to VCR users. What Streamers users are really doing, Vapid
will argue, is “space shifting” or copying in order to convert the
stream into a more versatile form that can be consumed in settings
other than those for which the stream was designed (sitting in front
of the computer scenarios). Vapid will assert that it can afford to
put its content in free streams only because doing so drives traffic
to its profit-generating businesses like commercial radio and paid
downloads. Space shifting directly compromises those revenues.
A really great answer on this point would step through the fair use
factors with respect to space shifting, compare it with the time
shifting analysis as we understand it from Sony, and then situate
that analysis within the broader purposes of the Copyright Act.
The few decisions that have dealt with this issue have been
inconsistent. This is the most important issue, setting the DMCA
provision aside for a moment, in this case. If space shifting is
infringement, then we’ll have a very hard time defending Streamers.
Ok, on to the DMCA. The provision cited in the letter is the socalled anti-circumvention provision. It prohibits the circumventing
of “technological measures” intended to prevent copying of
copyrighted works. Further, it prohibits distribution of devices or
services that (1) are designed primarily to accomplish such
circumvention, (2) have only limited other uses, or (3) are
promoted as enabling circumvention. What’s troublesome is that
this provision would seem to prohibit one from making a fair use
copy if doing so requires getting around some protective measure.
For example, suppose I wanted to make what is concededly a fair
use copy of a DRM-protected iTunes Store purchase. Under the
DMCA, I’m prohibited from making a copy by circumventing the
DRM, even though under copyright law, I’m permitted to make a

540

copy. And here, even if we conclude, per the above, that time and
space shifting are fair uses of these streams, getting around a
technological measure meant to prevent copying might still be a
DMCA violation - even though it’s not a copyright violation.
This might go too far. After all, if the law gives the power to
content producers to disable fair uses through legally protected
(even if technically flawed) technological means, then fair use is a
dead letter. And fair use was supposed to be a critical part of the
great First Amendment - Copyright balance.
So what would an answer look like here? Well, I’d want you to start
with the text of the statute. Does Streamers violate its terms? Does
it circumvent by disabling the protections inherent in non-saveable
streams or does it make use of something more like the analog
hole? See here, e.g.: http://volokh.com/posts/1176397745.shtml
Does your conclusion depend on your interpretation of the text?
Which of those interpretations are sensible? Are the harshest
interpretations unconstitutional?
The DMCA portion of this question was meant to expose you to
this very tricky area of law and would not have been at all fair on a
real test. But I do hope that you’ll give it some thought. Interesting
trivia: as a law student I wrote an app called Streamers that works
exactly as described in this problem.
3.5. Publicity Rights
Parks v. La Face Records, 76 F. Supp. 2d 775 (E.D.
Mich. 1999).
Gregory J. Reed,Gregory J. ReedAssoc., Detroit, MI, for
plaintiff.
Joseph M. Beck, Kilpatrick, Stockton, Atlanta, GA, Blanche
B. Cook, Philip B. Phillips, Miller, Canfield, Detroit, MI,
Conrad L. Mallett, Jr., Miller, Canfield, Detroit, MI, for
defendants.
ORDER DENYING PLAINTIFF’S MOTION FOR
SUMMARY JUDGMENT AND INJUNCTIVE RELIEF

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AND GRANTING DEFENDANTS’ MOTION FOR
SUMMARY JUDGMENT
HACKETT, District Judge.
Plaintiff Rosa Parks is a well-known public figure who has
been recognized as an international symbol of freedom,
humanity, dignity and strength for over 43 years. Plaintiff’s
notoriety arose from her heroic stance against racial
inequality in the South when on December 1, 1955, in
Montgomery, Alabama, she refused to give up her seat to a
white passenger and move to the back of the bus. This one
defiant act precipitated a 381-day bus boycott that ended
segregation on public transportation and ultimately sparked
the Civil Rights Movement of the 1960’s. The abovecaptioned case presents a conflict between plaintiff’s right
to protect her celebrated name and the First Amendment
right of others to use her name in an expressive work.
Specifically at issue is whether plaintiff can prevent the use
of her name as the title of a rap song written, performed,
marketed and distributed by defendants. Now before the
court are the parties’ cross-motions for summary judgment.
Oral argument was heard on November 4, 1999. For the
following reasons, plaintiff’s motion shall be denied, and
summary judgment shall be granted regrettably in
defendants’ favor.
I. FACTS
The facts relevant to disposition of this matter are few and
undisputed. Defendants are entertainers and producers of
popular music. Specifically, Kenny Edmonds and Antonio
Reid1 are recording artists and the members of the musical
group Outkast, whose services are contractually rendered to
LaFace Records. LaFace is a record company engaged in

1 Although named in the caption of plaintiff’s complaint and other pleadings,

Edmonds and Reid were never served with process, and, therefore, are not parties
to this litigation in their individual capacities.

542

the business of creating, manufacturing and distributing
musical sound recordings. LaFace’s recordings are
manufactured and distributed by a variety of entities under
the auspices of Arista Records and BMG Entertainment.
During the week of September 28, 1998, defendants
released Outkast’s album called Aquemini, which included
a total of 15 songs. The album’s first single release was
track number three, a song entitled “Rosa Parks.” Plaintiff
is not mentioned by name in the lyrics, and the song is not
about her or the Civil Rights Movement. However, the
chorus includes the words “Ah, ha, hush that fuss.
Everybody move to the back of the bus,” which are
repeated a total of ten times over the course of the work.
The band Outkast, the album Aquemini, and the song
“Rosa Parks” have all enjoyed a great degree of critical
acclaim. Aquemini has sold over two million copies (double
platinum status), and “Rosa Parks” has enjoyed long-lasting
success on the Billboard Charts. In fact, Outkast received
their first-ever Grammy nomination for the song.
Consequently, defendants have advertised and promoted
the Aquemini album, the hit single “Rosa Parks” and its
Grammy nomination in ways that are customary in the
music business, such as in print advertisements, in a music
video, and with stickers affixed to the front of each cassette
and compact disc jewel case indicating that the album
contains “The Hit Singles ‘Rosa Parks’ And ‘Skew It On
The Bar-B.’”2
No legal relationship of any kind exists between plaintiff
and defendants, and defendants did not attempt to secure
plaintiff’s permission to use her name prior to the release of
their Aquemini album. Plaintiff, however, opposes
defendants’ use of her name without compensation. In
particular, plaintiff is offended by the use of her name in

2 The sticker also states in smaller print: “Parental Advisory. Explicit Content.”

543

association with music that contains, according to plaintiff,
“profanity, racial slurs, and derogatory language directed at
women.” To date, defendants have continued to use
plaintiff’s name on and in connection with the song “Rosa
Parks” and the album Aquemini. Accordingly, plaintiff filed
this lawsuit seeking monetary and injunctive relief. The
court now turns to the parties’ pending motions.
II. STANDARD OF REVIEW
Federal Rule of Civil Procedure 56(c) empowers the court
to render summary judgment “forthwith if the pleadings,
depositions, answers to interrogatories and admissions on
file, together with the affidavits, if any, show that there is
no genuine issue as to any material fact and that the moving
party is entitled to judgment as a matter of law.” See
F.D.I.C. v. Alexander, 78 F.3d 1103, 1106 (6th Cir.1996).
The Supreme Court has affirmed the court’s use of
summary judgment as an integral part of the fair and
efficient administration of justice. The procedure is not a
disfavored procedural shortcut. Celotex Corp. v. Catrett,
477 U.S. 317, 327, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986);
see also Kutrom Corp. v. City of Center Line, 979 F.2d
1171, 1174 (6th Cir.1992).
The standard for determining whether summary judgment
is appropriate is “‘whether the evidence presents a
sufficient disagreement to require submission to a jury or
whether it is so one-sided that one party must prevail as a
matter of law.’” Winningham v. North Am. Resources
Corp., 42 F.3d 981, 984 (6th Cir.1994) (citing Booker v.
Brown & Williamson Tobacco Co., 879 F.2d 1304, 1310
(6th Cir.1989)). The evidence and all inferences therefrom
must be construed in the light most favorable to the nonmoving party. Matsushita Elec. Indus. Co., Ltd. v. Zenith
Radio Corp., 475 U.S. 574, 587, 106 S.Ct. 1348, 89 L.Ed.2d
538 (1986); Enertech Elec., Inc. v. Mahoning County
Comm’rs, 85 F.3d 257, 259 (6th Cir.1996); Wilson v. Stroh
Companies, Inc., 952 F.2d 942, 945 (6th Cir.1992). “[T]he

544

mere existence of some alleged factual dispute between the
parties will not defeat an otherwise properly supported
motion for summary judgment; the requirement is that
there be no genuine issue of material fact.” Anderson v.
Liberty Lobby, Inc., 477 U.S. 242, 247-48, 106 S.Ct. 2505,
91 L.Ed.2d 202 (1986); see also Hartleip v. McNeilab, Inc.,
83 F.3d 767, 774 (6th Cir.1996).
If the movant establishes by use of the material specified in
Rule 56(c) that there is no genuine issue of material fact
and that it is entitled to judgment as a matter of law, the
opposing party must come forward with “specific facts
showing that there is a genuine issue for trial.” First Nat’l
Bank v. Cities Serv. Co., 391 U.S. 253, 270, 88 S.Ct. 1575,
20 L.Ed.2d 569 (1968); see also Adams v. Philip Morris,
Inc., 67 F.3d 580, 583 (6th Cir.1995). Mere allegations or
denials in the non-movant’s pleadings will not meet this
burden. Anderson, 477 U.S. at 248, 106 S.Ct. 2505. Further,
the non-moving party cannot rest on its pleadings to avoid
summary judgment. It must support its claim with some
probative evidence. Kraft v. United States, 991 F.2d 292,
296 (6th Cir.), cert. denied, 510 U.S. 976, 114 S.Ct. 467, 126
L.Ed.2d 419 (1993).
III. DISCUSSION
A. Right of Publicity Claim (Count I)
In Count I of the complaint, plaintiff alleges that
defendants’ use of her name violates her common law right
of publicity. The right of publicity protects a celebrity’s
commercial interest in her identity. “The theory of the right
is that a celebrity’s identity can be valuable in the
promotion of products, and the celebrity has an interest
that may be protected from the unauthorized commercial
exploitation of that identity.” Carson v. Here’s Johnny
Portable Toilets, Inc., 698 F.2d 831, 835 (6th Cir.1983)
(emphasis added). The right of publicity, however, does not

545

authorize a celebrity to prevent the use of her name in an
expressive work protected by the First Amendment. 4 J.
Thomas McCarthy, McCarthy on Trademarks and Unfair
Competition ss 28:40-28:41 (4th ed.1999); see also Hicks v.
Casablanca Records, 464 F.Supp. 426, 430 (S.D.N.Y.1978)
(“[M]ore so than posters, bubble gum cards, or some other
such ‘merchandise,’ books and movies are vehicles through
which ideas and opinions are disseminated and, as such,
have enjoyed certain constitutional protections, not
generally accorded ‘merchandise.’ “); Paulsen v. Personality
Posters, Inc., 59 Misc.2d 444, 450, 299 N.Y.S.2d 501, 508
(1968) (“[E]ven where the ‘right of publicity’ is recognized,
it does not invest a prominent person with the right to
exploit financially every public use of name or picture.
What is made actionable is the unauthorized use for
advertising purposes in connection with the sale of a
commodity.”).3 Clearly, “[m]usic, as a form of expression
and communication, is protected under the First
Amendment.” Ward v. Rock Against Racism, 491 U.S. 781,
790, 109 S.Ct. 2746, 105 L.Ed.2d 661 (1989); see also
Hurley v. Irish-American Gay, Lesbian and Bisexual
Group, 515 U.S. 557, 569, 115 S.Ct. 2338, 132 L.Ed.2d 487
(1995) (paintings, music and poetry are “unquestionably
shielded” by the First Amendment).
Similarly, titles of artistic works that use the names of
public figures and celebrities, like the works themselves, are
entitled to First Amendment protection from right of
publicity claims:

3 Cf. Abdul-Jabbar v. General Motors Corp., 85 F.3d 407 (9th Cir.1996) (involved

use of basketball player’s name in an automobile advertisement); Winterland
Concessions Co. v. Sileo, 528 F.Supp. 1201 (N.D.Ill.1981), aff’d, 830 F.2d 195
(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
of major league baseball players’ names in connection with a board game); Palmer
v. Schonhorn Enter., Inc., 96 N.J.Super. 72, 232 A.2d 458 (1967) (involved use of
a golf player’s name and likeness in connection with a golf game).

546

Titles, like the artistic works they
identify, are of a hybrid nature,
combining artistic expression and
commercial promotion. The title of a
movie may be both an integral element
of the film-maker’s expression as well
as a significant means of marketing the
film to the public. The artistic and
commercial elements of titles are
inextricably intertwined. Film-makers
and authors frequently rely on wordplay, ambiguity, irony, and allusion in
titling their works. Furthermore, their
interest in freedom of artistic
expression is shared by their audience.
The subtleties of a title can enrich a
reader’s or a viewer’s understanding of
a work.
Rogers v. Grimaldi, 875 F.2d 994, 998 (2d Cir.1989).
Furthermore, no publicity claim exists when a celebrity’s
name is used in advertisements for a work protected by the
First Amendment. See, e.g., Guglielmi v. Spelling-Goldberg
Prods., 25 Cal.3d 860, 873, 160 Cal.Rptr. 352, 603 P.2d 454,
462 (1979) (Bird, C.J., concurring) (“Since the use of
Valentino’s name and likeness in the film was not an
actionable infringement of Valentino’s right of publicity,
the use of his identity in advertisements for the film is
similarly not actionable.”).
The right of publicity is therefore inapplicable under the
First Amendment if the content of an expressive work
bears any relationship to the use of a celebrity’s name.
Rogers, 875 F.2d at 1004 (right of publicity unavailable
unless use of celebrity’s name is “wholly unrelated” to the
work). In addition, the right of publicity does not bar the
use of a celebrity’s name in a title as long as the item is a
literary work and not “‘simply a disguised commercial
advertisement for the sale of goods or services.’” Id.

547

(quoting Frosch v. Grosset & Dunlap, Inc., 75 A.D.2d 768,
769, 427 N.Y.S.2d 828, 829 (1980)).
In this case, plaintiff repeatedly contends that defendants’
“Rosa Parks” song is not expressly “about” her or her civil
rights efforts, concluding that the song’s title is “unrelated”
to its content and must thus have been selected “solely to
attract attention.” The court finds plaintiff’s argument
unpersuasive and unsupportable. There can be no
reasonable dispute that Rosa Parks is universally known for
and commonly associated with her refusal in late 1955 to
obey the segregation laws in Montgomery, Alabama and
“move to the back of the bus.” The song at issue makes
unmistakable reference to that symbolic act a total of ten
times. Admittedly, the song is not about plaintiff in a
strictly biographical sense, but it need not be. Rather,
defendants’ use of plaintiff’s name, along with the phrase
“move to the back of the bus,” is metaphorical and
symbolic. As a matter of law, this obvious relationship
between the content of the song and its title bearing
plaintiff’s name renders the right of publicity inapplicable.
Moreover, that plaintiff (and even the court) may find
defendants’ music “profane and vulgar” and not regard it as
artistically serious is of no consequence:
It is fundamental that courts may not
muffle expression by passing judgment
on its skill or clumsiness, its sensitivity
or coarseness; nor on whether it pains
or pleases. It is enough that the work
is a form of expression “deserving of
substantial
freedom
both
as
entertainment and as a form of social
and literary criticism.”
University of Notre Dame Du Lac v. Twentieth CenturyFox Film Corp., 22 A.D.2d 452, 458, 256 N.Y.S.2d 301,
307,aff’d, 15 N.Y.2d 940, 259 N.Y.S.2d 832, 207 N.E.2d

548

508 (1965). Given that the court may not “pass on literary
categories, or literary judgment,” defendants’ song enjoys
First Amendment protection as long as it is a “[musical]
work and not simply a disguised commercial advertisement
for the sale of goods or services.” Frosch, 75 A.D.2d at
769, 427 N.Y.S.2d at 829 (holding that right of publicity did
not apply to book entitled “Marilyn” and rejecting alleged
distinction between a “biography” about Marilyn Monroe
and “fiction”). Because the necessary linkage between title
and content is easily satisfied here, plaintiff would be hardpressed to demonstrate that defendants’ use of her name as
the title to their song is “simply a disguised commercial
advertisement” to sell a product, especially considering the
song has received widespread acclaim and was nominated
for a Grammy Award. This result is not altered by
defendants’ promotion of their album and hit single
because the fundamental right to free expression would be
illusory if defendants were permitted to entitle their song
“Rosa Parks,” but not advertise it to the public. The law
imposes no such artificial limitation. See, e.g., Groden v.
Random House, Inc., 61 F.3d 1045, 1050-51 (2d Cir.1995)
(use of author’s photograph to promote critical work did
not infringe right of publicity); Guglielmi, 25 Cal.3d at 873,
160 Cal.Rptr. 352, 603 P.2d at 462 (“It would be illogical to
allow respondents to exhibit the film but effectively
preclude any advance discussion or promotion of their
lawful enterprise.”); Namath v. Sports Illustrated, 48
A.D.2d 487, 488, 371 N.Y.S.2d 10, 11 (1975), aff’d, 39
N.Y.2d 897, 386 N.Y.S.2d 397, 352 N.E.2d 584 (1976)
(“The use of plaintiff’s photograph was merely incidental
advertising of defendants’ magazine in which plaintiff had
earlier been properly and fairly depicted.”).
Plaintiff also contends that because her name was not used
in the news, to educate, for scholarly purposes or as a
parody, defendants’ use is not protected by the First
Amendment. However, the Supreme Court has expressly

549

rejected such a notion and held that entertainment is
entitled to the same constitutional protection as the
exposition of ideas: “The line between the informing and
the entertaining is too elusive for the protection of the
basic right.” Winters v. New York, 333 U.S. 507, 510, 68
S.Ct. 665, 92 L.Ed. 840 (1948). Next, plaintiff incorrectly
argues that First Amendment concerns are not implicated
here because defendants’ use of plaintiff’s name was
unnecessary and done only to sell their album.
If this analysis were used to determine
whether an expression is entitled to
constitutional protection, grave harm
would result. Courts would be required
not merely to determine whether there
is some minimal relationship between
the expression and the celebrity, but to
compel the author to justify the use of
the celebrity’s identity. Only upon
satisfying a court of the necessity of
weaving the celebrity’s identity into a
particular publication would the
shadow of liability and censorship
fade. Such a course would inevitably
chill the exercise of free speech
limiting not only the manner and form
of expression but the interchange of
ideas as well.
Guglielmi, 25 Cal.3d at 869, 160 Cal.Rptr. 352, 603 P.2d at
460 (citation omitted).
In her final attempt to convince the court that the First
Amendment does not shield defendants from liability on
her publicity claim, plaintiff states: “If Defendants [sic]
position is carried forward, then the Ku Klux Klan,
skinheads or any race supremacist group can exploit the
names of others.” Indeed, the possibly offensive use by
such groups of a celebrity’s name is exactly the type of

550

speech protected by the First Amendment, which would be
a poor refuge for free expression if public figures could
censor the use of their names whenever they found the
speech to be distasteful. To the contrary, the First
Amendment empowers the audience to regulate expressive
speech. “[P]rominence invites creative comment. Surely,
the range of free expression would be meaningfully reduced
if prominent persons in the present and recent past were
forbidden topics for the imaginations of authors.”
Guglielmi, 25 Cal.3d at 869, 160 Cal.Rptr. 352, 603 P.2d at
460. Thus, plaintiff’s argument that this is “simply a
property case” is offensive to the First Amendment.
Accordingly, because the title “Rosa Parks” is not “wholly
unrelated” to defendants’ song, and because the title is the
name of an expressive work and not a disguised
commercial for a product, the right of publicity does not
apply to the undisputed facts of this case, which
necessitates dismissal of Count I in plaintiff’s complaint.
B. Lanham Act and State Law Unfair Competition Claims
(Counts II and V)
Plaintiff also raises a claim under the Lanham Act, 15
U.S.C. s 1125 (Count II), and a related state law unfair
competition claim (Count V). Section 1125(a)(1)(A)
provides:
Any person who, on or in connection
with any goods or services, or any
container for goods, uses in commerce
any word, term, name, symbol, or
device, or any combination thereof, or
any false designation of origin, false or
misleading description of fact, or false
or misleading representation of fact,
which is likely to cause confusion, or
to cause mistake, or to deceive as to
the
affiliation,
connection,
or

551

association of such person with
another person, or as to the origin,
sponsorship, or approval of his or her
goods, services, or commercial
activities by another person, … shall
be liable in a civil action by any person
who believes that he or she is or is
likely to be damaged by such act.
Like the right of publicity, the Lanham Act ordinarily
applies to commercial transactions involving ordinary
goods and services, not expressive works in which First
Amendment concerns are paramount. Thus, even if the
legitimate goals of the Lanham Act and state unfair
competition laws in preventing consumer confusion are
implicated by the undisputed facts of this case, they are
outweighed as a matter of law by defendants’ right to
freedom of expression.
The court is well aware that “[p]oetic license is not without
limits.” Rogers v. Grimaldi, 875 F.2d 994, 997 (2d
Cir.1989). Nonetheless,
in general the [Lanham] Act should be
construed to apply to artistic works
only where the public interest in
avoiding
consumer
confusion
outweighs the public interest in free
expression. In the context of allegedly
misleading titles using a celebrity’s
name, that balance will normally not
support application of the Act unless
the title has no artistic relevance to the
underlying work whatsoever, or, if it
has some artistic relevance, unless the
title explicitly misleads as to the source
or the content of the work.
Id. at 999 (emphasis added).

552

As discussed above, the direct artistic relevance between
the title “Rosa Parks” and the content of defendants’ song
is so obvious that the matter is not open to reasonable
debate. Furthermore, it is abundantly clear that the title
does not “explicitly” mislead as to source or content.
Examples of blatantly misleading titles might include:
“Nimmer on Copyright,” “Jane Fonda’s Workout Book,” a
title “explicitly signifying endorsement, such as the phrase
in a subtitle ‘an authorized biography,’” or “The True Life
Story of Ginger and Fred.”Id. at 999-1000. Where such
overt references are used in a title and are false as applied
to the underlying work, the consumer’s interest in avoiding
deception might warrant application of the Lanham Act.
Many titles, however, include a wellknown name without any overt
indication
of
authorship
or
endorsement-for example, the hit song
“Bette Davis Eyes” and the recent film
“Come Back to the Five and Dime,
Jimmy Dean, Jimmy Dean.”To some
people, these titles might implicitly
suggest that the named celebrity had
endorsed the work or had a role in
producing it. Even if that suggestion is
false, the title is artistically relevant to
the work. In these circumstances, the
slight risk that such use of a celebrity’s
name might implicitly suggest
endorsement or sponsorship to some
people is outweighed by the danger of
restricting artistic expression, and the
Lanham Act is not applicable.
Similarly, … many titles with a
celebrity’s name make no explicit
statement that the work is about that
person in any direct sense; the
relevance of the title may be oblique

553

and may become clear only after
viewing or reading the work. As to
such titles, the consumer interest in
avoiding deception is too slight to
warrant application of the Lanham
Act.Though consumers frequently
look to the title of a work to determine
what it is about, they do not regard
titles of artistic works in the same way
as the names of ordinary commercial
products…. [M]ost consumers are well
aware that they cannot judge a book
solely by its title any more than by its
cover.
Id. (emphasis added) (citations omitted).
By entitling their song “Rosa Parks,” defendants made no
explicit representation that their work was endorsed by or
affiliated with plaintiff.4 Nevertheless, plaintiff contends
that defendants’ use of her name on the cover of their
album creates a grave likelihood of confusion because she
recently licensed the use of her name in connection with an
album of gospel recordings entitled “Verity Records
Presents: A Tribute to Mrs. Rosa Parks.” To support her
claim of likelihood of confusion, plaintiff submitted
approximately 20 affidavits from consumers who were
allegedly confused as to the source or content of
defendants’ album. However, plaintiff’s anecdotal evidence,
assuming its validity, indicates at most that some members
of the public might draw the incorrect inference that
4 By contrast, in Cher v. Forum International, Ltd., 692 F.2d 634 (9th Cir.1982),

cert. denied, 462 U.S. 1120, 103 S.Ct. 3089, 77 L.Ed.2d 1350 (1983), relied upon
by plaintiff, the defendant explicitly misrepresented that Cher had granted an
“exclusive” interview and endorsed the magazine. Similarly, in National Bank of
Commerce v. Shaklee Corp., 503 F.Supp. 533 (W.D.Tex.1980), the plaintiff’s
name was used without permission in an explicit “endorsement” of products, and
in Fairfield v. American Photocopy Equipment Co., 138 Cal.App.2d 82, 291 P.2d
194 (1955), the defendant explicitly misrepresented that the plaintiff was a
“satisfied user” of defendant’s products.

554

plaintiff had some involvement with defendants’ album.
“But that risk of misunderstanding, not engendered by any
overt claim in the title, is so outweighed by the interests in
artistic expression as to preclude application of the Lanham
Act.”Id. at 1001; see also DeClemente v. Columbia Pictures
Indus., Inc., 860 F.Supp. 30, 52 (E.D.N.Y.1994) (“[E]ven if
the plaintiff’s allegations of secondary meaning and
consumer confusion are true, the defendants’ first
amendment interest in naming their films outweighs the
plaintiff’s and even the public’s interest in preventing
consumer confusion.”).5
Moreover, defendants’ album and its packaging
unequivocally identify defendants as the source of the
album. “The most common and effective means of
apprising intending purchasers of the source of goods is a
prominent disclosure on the container, package, wrapper,
or label of the manufacturer’s or trader’s name … [and
when] that is done, there is no basis for a charge of unfair
competition.” Versa Prods. Co., Inc. v. Bifold Co. (Mfg.)
Ltd., 50 F.3d 189, 203 (3d Cir.), cert. denied, 516 U.S. 808,
116 S.Ct. 54, 133 L.Ed.2d 19 (1995). In other words, “the
plaintiff’s right can be protected sufficiently by requiring
the defendant’s [products] to be clearly marked so as to
indicate unmistakably that they are defendant’s and not the
plaintiff’s goods.” Flagg Mfg. Co. v. Holway, 178 Mass. 83,
91, 59 N.E. 667, 667 (1901). Given the prominent
appearance of defendant Outkast’s name on their album,
there can be no likelihood of confusion under the Lanham

5 Furthermore, in conventional “product” trademark cases, “merely occasional”

instances of alleged actual confusion do not support the existence of likelihood of
confusion. See, e.g., S.C. Johnson & Son, Inc. v. Johnson, 266 F.2d 129, 141 (6th
Cir.), cert. denied, 361 U.S. 820, 80 S.Ct. 65, 4 L.Ed.2d 65 (1959).

555

Act between plaintiff’s and defendants’ albums as a matter
of law.6
Likewise, plaintiff’s state law unfair competition claim also
fails.7 As a threshold matter, plaintiff cannot proceed under
M.C.L. s 429.428 because application of that statute
contemplates a state registered trademark, which plaintiff
does not have. Furthermore, plaintiff has not established
that she has any common law trademark rights in her name,

6 Compare the Lanham Act cases cited by plaintiff all of which involved the use

of famous persons’ names in connection with recordings by them, thereby directly
and intentionally misrepresenting that the plaintiffs had approved the
unauthorized distributions of their work. See PPX Enter., Inc. v. Audiofidelity
Enter., Inc., 818 F.2d 266, 268 (2d Cir.1987) (defendants marketed eight albums
allegedly containing feature performances by the electric guitarist Jimi Hendrix,
when in fact the albums “either did not contain Hendrix performances at all or
contained performances in which Hendrix was merely a background performer or
undifferentiated session player”); Apple Corps Ltd. v. Adirondack Group, 124
Misc.2d 351, 355, 476 N.Y.S.2d 716, 719 (1983) (defendants distributed
“recordings of inferior quality which were made as a lark”); Benson v. Paul Winley
Record Sales Corp., 452 F.Supp. 516, 518 (S.D.N.Y.1978) (defendants “made [the
plaintiff] to appear as the central and controlling artist when in fact he was not,”
and also misrepresented to the public that the songs on the album were recent
releases by the plaintiff). On the other hand, defendants here have not used
plaintiff’s name on a work by plaintiff, nor have defendants misappropriated any
written or recorded material of plaintiff’s.
7 The Sixth Circuit noted in Carson v. Here’s Johnny Portable Toilets, Inc., that

Lanham Act and Michigan state law unfair competition claims were both
governed by the same standards. 698 F.2d at 833; see also Sports Auth., Inc. v.
Abercrombie & Fitch, Inc., 965 F.Supp. 925, 934 n. 5 (E.D.Mich.1997) (“the
Court’s analysis under the Lanham Act will also apply to [plaintiff’s Michigan]
common law claim”).
8 M.C.L. s 429.42 states in relevant part: [A]ny person who shall:

(a) Use, without the consent of the registrant, any
reproduction, counterfeit, copy or colorable imitation of a
mark registered under this act in connection with the sale,
offering for sale, or advertising of any goods or services
on or in connection with which such use is likely to cause
confusion or mistake or to deceive as to the source of
origin of such goods or services … is liable to a civil
action by the owner of the registered mark.

(emphasis added).

556

or that defendants made any trademark use of her name.9
In fact, plaintiff conceded during oral argument that she
cannot maintain an action for trademark infringement.
Finally, plaintiff cites the following from the Restatement
(Third) of Unfair Competition ss 46-47 (1995):
One who appropriates the commercial
value of a person’s identity by using
without consent the person’s name,
likeness, or other indicia of identity for
purposes of trade is subject to
liability…. The name, likeness, and
other indicia of a person’s identity are
used “for purposes of trade” … if they
are used in advertising the user’s goods
or services, or are placed on
merchandise marketed by the user, or
are used in connection with services
rendered by the user.
Plaintiff’s purported reliance on the Restatement lacks
credit, however, considering she neglected to mention the
portion that unambiguously distinguishes it from this case:
“However, uses ‘for purposes of trade’ does not ordinarily
include the use of a person’s identity in news reporting,
commentary, entertainment, works of fiction or nonfiction,
or in advertising that is incidental to such uses.” Id. s 47. As
a public figure, plaintiff simply is not entitled to control
every conceivable presentation of her name and likeness.
Consequently, defendants are entitled to summary

9 “[W]hether alleging infringement of a registered trademark … or infringement of

an unregistered trademark …, it is clear that a plaintiff must show that it has
actually used the designation at issue as a trademark, and that the defendant has
also used the same or a similar designation as a trademark.” Rock and Roll Hall of
Fame and Museum, Inc. v. Gentile Prods., 134 F.3d 749, 753 (6th Cir.1998).
Compare defendants’ use of plaintiff’s name here for the purpose of sending an
artistic message, with a hypothetical claim by defendants that they were selling
“Rosa Parks”-brand discs and cassettes.

557

judgment as to plaintiff’s unfair competition and Lanham
Act claims.
C. Defamation Claim (Count III)
Next, plaintiff asserts a claim for defamation in Count III
of her complaint. Specifically, plaintiff alleges that
defendants “used derogatory and offensive language in
their lyrics and associated said language with Plaintiff’s
‘persona,’ character and name without her consent,”
thereby “cast[ing] Plaintiff in a false and unacceptable
light.”
….
… . [S]ummary judgment in defendants’ favor is
appropriate as to Count III.
D. Intentional Infliction of Emotional Distress Claim (Count
IV)
Count IV states a claim for intentional infliction of
emotional distress. [The court dismissed this claim as a
matter of law.]
E. Intentional Interference with Business Relations Claim
(Count VI)
Plaintiff also asserts a claim for intentional interference
with an advantageous business relationship, contending
that defendants’ “unauthorized use of her name in the
present context will substantially interfere with sale and
distribution of the authorized [tribute gospel] recording.”
….
… . [D]efendants clearly have not engaged in any per se
wrongful conduct by permissibly titling their song “Rosa
Parks.” Nor have defendants committed any lawful act with
malice that is unjustified in law. Accordingly, defendants
are entitled to summary judgment as to Count VI.

558

F. Remaining State Law Claims (Counts VII-IX)
Plaintiff’s remaining claims include: unjust enrichment
(Count VII); negligence (Count VIII); and, conspiracy
(Count IX). Because all three claims incorrectly presuppose
a legal duty not to use plaintiff’s name as defendants did,
they too must be dismissed.
….
IV. CONCLUSION
The undisputed facts in this case require that summary
judgment be granted in defendants’ favor. Therefore,
IT IS ORDERED that plaintiff’s motion for summary
judgment and injunctive relief hereby is DENIED.
IT IS FURTHER ORDERED that defendants’ motion for
summary judgment hereby is GRANTED.
Midler v. Ford Motor Company,
849 F.2d 460 (9th. Cir. 1986).
Peter Laird, Los Angeles, Cal., for plaintiff-appellant.
Robert M. Callagy, New York City, for defendantsappellees.
Appeal from the United States District Court for the
Central District of California.
Before HUG, TANG and NOONAN, Circuit Judges.
NOONAN, Circuit Judge:
This case centers on the protectibility of the voice of a
celebrated chanteuse from commercial exploitation without
her consent. Ford Motor Company and its advertising
agency, Young & Rubicam, Inc., in 1985 advertised the
Ford Lincoln Mercury with a series of nineteen 30 or 60
second television commercials in what the agency called
“The Yuppie Campaign.” The aim was to make an
emotional connection with Yuppies, bringing back

559

memories of when they were in college. Different popular
songs of the seventies were sung on each commercial. The
agency tried to get “the original people,” that is, the singers
who had popularized the songs, to sing them. Failing in
that endeavor in ten cases the agency had the songs sung by
“sound alikes.” Bette Midler, the plaintiff and appellant
here, was done by a sound alike.
Midler is a nationally known actress and singer. She won a
Grammy as early as 1973 as the Best New Artist of that
year. Records made by her since then have gone Platinum
and Gold. She was nominated in 1979 for an Academy
award for Best Female Actress in The Rose, in which she
portrayed a pop singer. Newsweek in its June 30, 1986 issue
described
her
as
an
“outrageously
original
singer/comedian.” Time hailed her in its March 2, 1987
issue as “a legend” and “the most dynamic and poignant
singer-actress of her time.”
When Young & Rubicam was preparing the Yuppie
Campaign it presented the commercial to its client by
playing an edited version of Midler singing “Do You Want
To Dance,” taken from the 1973 Midler album, “The
Divine Miss M.” After the client accepted the idea and
form of the commercial, the agency contacted Midler’s
manager, Jerry Edelstein. The conversation went as follows:
“Hello, I am Craig Hazen from Young and Rubicam. I am
calling you to find out if Bette Midler would be interested
in doing …? Edelstein: “Is it a commercial?” “Yes.” “We
are not interested.”
Undeterred, Young & Rubicam sought out Ula Hedwig
whom it knew to have been one of “the Harlettes” a
backup singer for Midler for ten years. Hedwig was told by
Young & Rubicam that “they wanted someone who could
sound like Bette Midler’s recording of [Do You Want To
Dance].” She was asked to make a “demo” tape of the song
if she was interested. She made an a capella demo and got
the job.

560

At the direction of Young & Rubicam, Hedwig then made
a record for the commercial. The Midler record of “Do
You Want To Dance” was first played to her. She was told
to “sound as much as possible like the Bette Midler
record,” leaving out only a few “aahs” unsuitable for the
commercial. Hedwig imitated Midler to the best of her
ability.
After the commercial was aired Midler was told by “a
number of people” that it “sounded exactly” like her record
of “Do You Want To Dance.” Hedwig was told by “many
personal friends” that they thought it was Midler singing
the commercial. Ken Fritz, a personal manager in the
entertainment business not associated with Midler, declares
by affidavit that he heard the commercial on more than one
occasion and thought Midler was doing the singing.
Neither the name nor the picture of Midler was used in the
commercial; Young & Rubicam had a license from the
copyright holder to use the song. At issue in this case is
only the protection of Midler’s voice. The district court
described the defendants’ conduct as that “of the average
thief.” They decided, “If we can’t buy it, we’ll take it.” The
court nonetheless believed there was no legal principle
preventing imitation of Midler’s voice and so gave
summary judgment for the defendants. Midler appeals.
The First Amendment protects much of what the media do
in the reproduction of likenesses or sounds. A primary
value is freedom of speech and press. Time, Inc. v. Hill, 385
U.S. 374, 388, 87 S.Ct. 534, 542, 17 L.Ed.2d 456 (1967).
The purpose of the media’s use of a person’s identity is
central. If the purpose is “informative or cultural” the use is
immune; “if it serves no such function but merely exploits
the individual portrayed, immunity will not be granted.”
Felcher and Rubin, “Privacy, Publicity and the Portrayal of
Real People by the Media,”88 Yale L.J. 1577, 1596 (1979).
Moreover, federal copyright law preempts much of the
area. “Mere imitation of a recorded performance would not

561

constitute a copyright infringement even where one
performer deliberately sets out to simulate another’s
performance as exactly as possible.” Notes of Committee
on the Judiciary, 17 U.S.C.A. s 114(b). It is in the context of
these First Amendment and federal copyright distinctions
that we address the present appeal.
Nancy Sinatra once sued Goodyear Tire and Rubber
Company on the basis of an advertising campaign by
Young & Rubicam featuring “These Boots Are Made For
Walkin’,” a song closely identified with her; the female
singers of the commercial were alleged to have imitated her
voice and style and to have dressed and looked like her.
The basis of Nancy Sinatra’s complaint was unfair
competition; she claimed that the song and the
arrangement had acquired “a secondary meaning” which,
under California law, was protectible. This court noted that
the defendants “had paid a very substantial sum to the
copyright proprietor to obtain the license for the use of the
song and all of its arrangements.” To give Sinatra damages
for their use of the song would clash with federal copyright
law. Summary judgment for the defendants was affirmed.
Sinatra v. Goodyear Tire & Rubber Co., 435 F.2d 711, 717-718
(9th Cir.1970), cert. denied, 402 U.S. 906, 91 S.Ct. 1376, 28
L.Ed.2d 646 (1971). If Midler were claiming a secondary
meaning to “Do You Want To Dance” or seeking to
prevent the defendants from using that song, she would fail
like Sinatra. But that is not this case. Midler does not seek
damages for Ford’s use of “Do You Want To Dance,” and
thus her claim is not preempted by federal copyright law.
Copyright protects “original works of authorship fixed in
any tangible medium of expression.” 17 U.S.C. s 102(a). A
voice is not copyrightable. The sounds are not “fixed.”
What is put forward as protectible here is more personal
than any work of authorship.
Bert Lahr once sued Adell Chemical Co. for selling Lestoil
by means of a commercial in which an imitation of Lahr’s

562

voice accompanied a cartoon of a duck. Lahr alleged that
his style of vocal delivery was distinctive in pitch, accent,
inflection, and sounds. The First Circuit held that Lahr had
stated a cause of action for unfair competition, that it could
be found “that defendant’s conduct saturated plaintiff’s
audience, curtailing his market.” Lahr v. Adell Chemical Co.,
300 F.2d 256, 259 (1st Cir.1962). That case is more like this
one. But we do not find unfair competition here. Oneminute commercials of the sort the defendants put on
would not have saturated Midler’s audience and curtailed
her market. Midler did not do television commercials. The
defendants were not in competition with her. See Halicki v.
United Artists Communications, Inc., 812 F.2d 1213 (9th
Cir.1987).
California Civil Code section 3344 is also of no aid to
Midler. The statute affords damages to a person injured by
another who uses the person’s “name, voice, signature,
photograph or likeness, in any manner.” The defendants
did not use Midler’s name or anything else whose use is
prohibited by the statute. The voice they used was
Hedwig’s, not hers. The term “likeness” refers to a visual
image not a vocal imitation. The statute, however, does not
preclude Midler from pursuing any cause of action she may
have at common law; the statute itself implies that such
common law causes of action do exist because it says its
remedies are merely “cumulative.” Id. s 3344(g).
The companion statute protecting the use of a deceased
person’s name, voice, signature, photograph or likeness
states that the rights it recognizes are “property rights.” Id.
s 990(b). By analogy the common law rights are also
property rights. Appropriation of such common law rights
is a tort in California. Motschenbacher v. R.J. Reynolds Tobacco
Co., 498 F.2d 821 (9th Cir.1974). In that case what the
defendants used in their television commercial for Winston
cigarettes was a photograph of a famous professional racing
driver’s racing car. The number of the car was changed and

563

a wing-like device known as a “spoiler” was attached to the
car; the car’s features of white pinpointing, an oval
medallion, and solid red coloring were retained. The driver,
Lothar Motschenbacher, was in the car but his features
were not visible. Some persons, viewing the commercial,
correctly inferred that the car was his and that he was in the
car and was therefore endorsing the product. The
defendants were held to have invaded a “proprietary
interest” of Motschenbacher in his own identity. Id.at 825.
Midler’s case is different from Motschenbacher’s. He and
his car were physically used by the tobacco company’s ad;
he made part of his living out of giving commercial
endorsements. But, as Judge Koelsch expressed it in
Motschenbacher, California will recognize an injury from
“an appropriation of the attributes of one’s identity.” Id. at
824. It was irrelevant that Motschenbacher could not be
identified in the ad. The ad suggested that it was he. The ad
did so by emphasizing signs or symbols associated with
him. In the same way the defendants here used an imitation
to convey the impression that Midler was singing for them.
Why did the defendants ask Midler to sing if her voice was
not of value to them? Why did they studiously acquire the
services of a sound-alike and instruct her to imitate Midler
if Midler’s voice was not of value to them? What they
sought was an attribute of Midler’s identity. Its value was
what the market would have paid for Midler to have sung
the commercial in person.
A voice is more distinctive and more personal than the
automobile accouterments protected in Motschenbacher. A
voice is as distinctive and personal as a face. The human
voice is one of the most palpable ways identity is
manifested. We are all aware that a friend is at once known
by a few words on the phone. At a philosophical level it has
been observed that with the sound of a voice, “the other
stands before me.” D. Ihde, Listening and Voice 77 (1976).
A fortiori, these observations hold true of singing,

564

especially singing by a singer of renown. The singer
manifests herself in the song. To impersonate her voice is
to pirate her identity. See W. Keeton, D. Dobbs, R.
Keeton, D. Owen, Prosser & Keeton on Torts 852 (5th ed.
1984).
We need not and do not go so far as to hold that every
imitation of a voice to advertise merchandise is actionable.
We hold only that when a distinctive voice of a professional
singer is widely known and is deliberately imitated in order
to sell a product, the sellers have appropriated what is not
theirs and have committed a tort in California. Midler has
made a showing, sufficient to defeat summary judgment,
that the defendants here for their own profit in selling their
product did appropriate part of her identity.
REVERSED AND REMANDED FOR TRIAL.
White v. Samsung Electronics America, Inc.,
971 F.2d 1395 (9th Cir. 1992).
Blaine Greenberg, John Genga, Hill Wynne Troop &
Meisinger, Los Angeles, Cal., for plaintiff-appellant.
Anthony Liebig, Kenneth Kulzick, Liebig & Kulzick, Los
Angeles, Cal., for defendants-appellees.
Appeal from the United States District Court for the
Central District of California.
Before: GOODWIN, PREGERSON, and ALARCON,
Circuit Judges.
GOODWIN, Senior Circuit Judge:
This case involves a promotional “fame and fortune”
dispute. In running a particular advertisement without
Vanna White’s permission, defendants Samsung
Electronics America, Inc. (Samsung) and David Deutsch
Associates, Inc. (Deutsch) attempted to capitalize on
White’s fame to enhance their fortune. White sued, alleging
infringement of various intellectual property rights, but the

565

district court granted summary judgment in favor of the
defendants. We affirm in part, reverse in part, and remand.
Plaintiff Vanna White is the hostess of “Wheel of
Fortune,” one of the most popular game shows in
television history. An estimated forty million people watch
the program daily. Capitalizing on the fame which her
participation in the show has bestowed on her, White
markets her identity to various advertisers.
The dispute in this case arose out of a series of
advertisements prepared for Samsung by Deutsch. The
series ran in at least half a dozen publications with
widespread, and in some cases national, circulation. Each of
the advertisements in the series followed the same theme.
Each depicted a current item from popular culture and a
Samsung electronic product. Each was set in the twentyfirst century and conveyed the message that the Samsung
product would still be in use by that time. By hypothesizing
outrageous future outcomes for the cultural items, the ads
created humorous effects. For example, one lampooned
current popular notions of an unhealthy diet by depicting a
raw steak with the caption: “Revealed to be health food.
2010 A.D.” Another depicted irreverent “news”-show host
Morton Downey Jr. in front of an American flag with the
caption: “Presidential candidate. 2008 A.D.”
The advertisement which prompted the current dispute was
for Samsung video-cassette recorders (VCRs). The ad
depicted a robot, dressed in a wig, gown, and jewelry which
Deutsch consciously selected to resemble White’s hair and
dress. The robot was posed next to a game board which is
instantly recognizable as the Wheel of Fortune game show
set, in a stance for which White is famous. The caption of
the ad read: “Longest-running game show. 2012 A.D.”
Defendants referred to the ad as the “Vanna White” ad.
Unlike the other celebrities used in the campaign, White
neither consented to the ads nor was she paid.

566

Following the circulation of the robot ad, White sued
Samsung and Deutsch in federal district court under: (1)
California Civil Code s 3344; (2) the California common
law right of publicity; and (3) s 43(a) of the Lanham Act, 15
U.S.C. s 1125(a). The district court granted summary
judgment against White on each of her claims. White now
appeals.
I. Section 3344
White first argues that the district court erred in rejecting
her claim under section 3344. Section 3344(a) provides, in
pertinent part, that “[a]ny person who knowingly uses
another’s name, voice, signature, photograph, or likeness, in
any manner, … for purposes of advertising or selling, …
without such person’s prior consent … shall be liable for
any damages sustained by the person or persons injured as
a result thereof.”
White argues that the Samsung advertisement used her
“likeness” in contravention of section 3344. In Midler v.
Ford Motor Co., 849 F.2d 460 (9th Cir.1988), this court
rejected Bette Midler’s section 3344 claim concerning a
Ford television commercial in which a Midler “soundalike” sang a song which Midler had made famous. In
rejecting Midler’s claim, this court noted that “[t]he
defendants did not use Midler’s name or anything else
whose use is prohibited by the statute. The voice they used
was [another person’s], not hers. The term ‘likeness’ refers
to a visual image not a vocal imitation.” Id. at 463.
In this case, Samsung and Deutsch used a robot with
mechanical features, and not, for example, a manikin
molded to White’s precise features. Without deciding for all
purposes when a caricature or impressionistic resemblance
might become a “likeness,” we agree with the district court
that the robot at issue here was not White’s “likeness”
within the meaning of section 3344. Accordingly, we affirm
the court’s dismissal of White’s section 3344 claim.

567

II. Right of Publicity
White next argues that the district court erred in granting
summary judgment to defendants on White’s common law
right of publicity claim. In Eastwood v. Superior Court, 149
Cal.App.3d 409 (1983), the California court of appeal stated
that the common law right of publicity cause of action
“may be pleaded by alleging (1) the defendant’s use of the
plaintiff’s identity; (2) the appropriation of plaintiff’s name
or likeness to defendant’s advantage, commercially or
otherwise; (3) lack of consent; and (4) resulting injury.” Id.
at 417. The district court dismissed White’s claim for failure
to satisfy Eastwood’s second prong, reasoning that
defendants had not appropriated White’s “name or
likeness” with their robot ad. We agree that the robot ad
did not make use of White’s name or likeness. However,
the common law right of publicity is not so confined.
The Eastwood court did not hold that the right of publicity
cause of action could be pleaded only by alleging an
appropriation of name or likeness. Eastwood involved an
unauthorized use of photographs of Clint Eastwood and of
his name. Accordingly, the Eastwood court had no
occasion to consider the extent beyond the use of name or
likeness to which the right of publicity reaches. That court
held only that the right of publicity cause of action “may
be” pleaded by alleging, inter alia, appropriation of name or
likeness, not that the action may be pleaded only in those
terms.
The “name or likeness” formulation referred to in
Eastwood originated not as an element of the right of
publicity cause of action, but as a description of the types
of cases in which the cause of action had been recognized.
The source of this formulation is Prosser, Privacy, 48
Cal.L.Rev. 383, 401-07 (1960), one of the earliest and most
enduring articulations of the common law right of publicity
cause of action. In looking at the case law to that point,
Prosser recognized that right of publicity cases involved

568

one of two basic factual scenarios: name appropriation, and
picture or other likeness appropriation. Id. at 401-02, nn.
156-57.
Even though Prosser focused on appropriations of name
or likeness in discussing the right of publicity, he noted that
“[i]t is not impossible that there might be appropriation of
the plaintiff’s identity, as by impersonation, without the use
of either his name or his likeness, and that this would be an
invasion of his right of privacy.” Id. at 401, n. 155.1 At the
time Prosser wrote, he noted however, that “[n]o such case
appears to have arisen.” Id.
Since Prosser’s early formulation, the case law has borne
out his insight that the right of publicity is not limited to
the appropriation of name or likeness. In Motschenbacher
v. R.J. Reynolds Tobacco Co., 498 F.2d 821 (9th Cir.1974),
the defendant had used a photograph of the plaintiff’s race
car in a television commercial. Although the plaintiff
appeared driving the car in the photograph, his features
were not visible. Even though the defendant had not
appropriated the plaintiff’s name or likeness, this court held
that plaintiff’s California right of publicity claim should
reach the jury.
In Midler, this court held that, even though the defendants
had not used Midler’s name or likeness, Midler had stated a
claim for violation of her California common law right of
publicity because “the defendants … for their own profit in
selling their product did appropriate part of her identity” by
using a Midler sound-alike. Id. at 463-64.
In Carson v. Here’s Johnny Portable Toilets, Inc., 698 F.2d
831 (6th Cir.1983), the defendant had marketed portable
toilets under the brand name “Here’s Johnny”-Johnny
Carson’s signature “Tonight Show” introduction-without

1 Under Professor Prosser’s scheme, the right of publicity is the last of the four

categories of the right to privacy. Prosser, 48 Cal. L. Rev. at 389.

569

Carson’s permission. The district court had dismissed
Carson’s Michigan common law right of publicity claim
because the defendants had not used Carson’s “name or
likeness.” Id. at 835. In reversing the district court, the sixth
circuit found “the district court’s conception of the right of
publicity … too narrow” and held that the right was
implicated because the defendant had appropriated
Carson’s identity by using, inter alia, the phrase “Here’s
Johnny.” Id. at 835-37.
These cases teach not only that the common law right of
publicity reaches means of appropriation other than name
or likeness, but that the specific means of appropriation are
relevant only for determining whether the defendant has in
fact appropriated the plaintiff’s identity. The right of
publicity does not require that appropriations of identity be
accomplished through particular means to be actionable. It
is noteworthy that the Midler and Carson defendants not
only avoided using the plaintiff’s name or likeness, but they
also avoided appropriating the celebrity’s voice, signature,
and photograph. The photograph in Motschenbacher did
include the plaintiff, but because the plaintiff was not
visible the driver could have been an actor or dummy and
the analysis in the case would have been the same.
Although the defendants in these cases avoided the most
obvious means of appropriating the plaintiffs’ identities,
each of their actions directly implicated the commercial
interests which the right of publicity is designed to protect.
As the Carson court explained:
the right of publicity has developed to
protect the commercial interest of
celebrities in their identities. The
theory of the right is that a celebrity’s
identity can be valuable in the
promotion of products, and the
celebrity has an interest that may be
protected from the unauthorized

570

commercial exploitation of that
identity…. If the celebrity’s identity is
commercially exploited, there has been
an invasion of his right whether or not
his “name or likeness” is used.
Carson, 698 F.2d at 835. It is not important how the
defendant has appropriated the plaintiff’s identity, but
whether the defendant has done so. Motschenbacher,
Midler, and Carson teach the impossibility of treating the
right of publicity as guarding only against a laundry list of
specific means of appropriating identity. A rule which says
that the right of publicity can be infringed only through the
use of nine different methods of appropriating identity
merely challenges the clever advertising strategist to come
up with the tenth.
Indeed, if we treated the means of appropriation as
dispositive in our analysis of the right of publicity, we
would not only weaken the right but effectively eviscerate
it. The right would fail to protect those plaintiffs most in
need of its protection. Advertisers use celebrities to
promote their products. The more popular the celebrity,
the greater the number of people who recognize her, and
the greater the visibility for the product. The identities of
the most popular celebrities are not only the most attractive
for advertisers, but also the easiest to evoke without
resorting to obvious means such as name, likeness, or
voice.
Consider a hypothetical advertisement which depicts a
mechanical robot with male features, an African-American
complexion, and a bald head. The robot is wearing black
hightop Air Jordan basketball sneakers, and a red basketball
uniform with black trim, baggy shorts, and the number 23
(though not revealing “Bulls” or “Jordan” lettering). The ad
depicts the robot dunking a basketball one-handed, stiffarmed, legs extended like open scissors, and tongue
hanging out. Now envision that this ad is run on television

571

during professional basketball games. Considered
individually, the robot’s physical attributes, its dress, and its
stance tell us little. Taken together, they lead to the only
conclusion that any sports viewer who has registered a
discernible pulse in the past five years would reach: the ad
is about Michael Jordan.
Viewed separately, the individual aspects of the
advertisement in the present case say little. Viewed
together, they leave little doubt about the celebrity the ad is
meant to depict. The female-shaped robot is wearing a long
gown, blond wig, and large jewelry. Vanna White dresses
exactly like this at times, but so do many other women. The
robot is in the process of turning a block letter on a gameboard. Vanna White dresses like this while turning letters
on a game-board but perhaps similarly attired Scrabbleplaying women do this as well. The robot is standing on
what looks to be the Wheel of Fortune game show set.
Vanna White dresses like this, turns letters, and does this
on the Wheel of Fortune game show. She is the only one.
Indeed, defendants themselves referred to their ad as the
“Vanna White” ad. We are not surprised.
Television and other media create marketable celebrity
identity value. Considerable energy and ingenuity are
expended by those who have achieved celebrity value to
exploit it for profit. The law protects the celebrity’s sole
right to exploit this value whether the celebrity has
achieved her fame out of rare ability, dumb luck, or a
combination thereof. We decline Samsung and Deutch’s
invitation to permit the evisceration of the common law
right of publicity through means as facile as those in this
case. Because White has alleged facts showing that
Samsung and Deutsch had appropriated her identity, the
district court erred by rejecting, on summary judgment,
White’s common law right of publicity claim.
III. The Lanham Act

572

White’s final argument is that the district court erred in
denying her claim under s 43(a) of the Lanham Act, 15
U.S.C. s 1125(a). The version of section 43(a) applicable to
this case2 provides, in pertinent part, that “[a]ny person
who shall … use, in connection with any goods or services
… any false description or representation … shall be liable
to a civil action … by any person who believes that he is or
is likely to be damaged by the use of any such false
description or designation.” 15 U.S.C. s 1125(a).
To prevail on her Lanham Act claim, White is required to
show that in running the robot ad, Samsung and Deutsch
created a likelihood of confusion.
This circuit recognizes several different multi-factor tests
for determining whether a likelihood of confusion exists.
None of these tests is correct to the exclusion of the
others. Normally, in reviewing the district court’s decision,
this court will look to the particular test that the district
court used. However, because the district court in this case
apparently did not use any of the multi-factor tests in
making its likelihood of confusion determination, and
because this case involves an appeal from summary
judgment and we review de novo the district court’s
determination, we will look for guidance to the 8-factor test
enunciated in AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341
(9th Cir.1979). According to AMF, factors relevant to a
likelihood of confusion include:
(1) strength of the plaintiff’s mark;
(2) relatedness of the goods;
(3) similarity of the marks;
(4) evidence of actual confusion;
2 The statute was amended after White filed her complaint. The amendments

would not have altered the analysis in this case however.

573

(5) marketing channels used;
(6) likely degree of purchaser care;
(7) defendant’s intent in selecting the mark;
(8) likelihood of expansion of the product lines.
599 F.2d at 348-49. We turn now to consider White’s claim
in light of each factor.
In cases involving confusion over endorsement by a
celebrity plaintiff, “mark” means the celebrity’s persona.
See Allen, 610 F.Supp. at 627. The “strength” of the mark
refers to the level of recognition the celebrity enjoys among
members of society. See Academy, 944 F.2d at 1455. If
Vanna White is unknown to the segment of the public at
whom Samsung’s robot ad was directed, then that segment
could not be confused as to whether she was endorsing
Samsung VCRs. Conversely, if White is well-known, this
would allow the possibility of a likelihood of confusion.
For the purposes of the Sleekcraft test, White’s “mark,” or
celebrity identity, is strong.
In cases concerning confusion over celebrity endorsement,
the plaintiff’s “goods” concern the reasons for or source of
the plaintiff’s fame. Because White’s fame is based on her
televised performances, her “goods” are closely related to
Samsung’s VCRs. Indeed, the ad itself reinforced the
relationship by informing its readers that they would be
taping the “longest-running game show” on Samsung’s
VCRs well into the future.
The third factor, “similarity of the marks,” both supports
and contradicts a finding of likelihood of confusion. On
the one hand, all of the aspects of the robot ad identify
White; on the other, the figure is quite clearly a robot, not a
human. This ambiguity means that we must look to the
other factors for resolution.

574

The fourth factor does not favor White’s claim because she
has presented no evidence of actual confusion.
Fifth, however, White has appeared in the same stance as
the robot from the ad in numerous magazines, including
the covers of some. Magazines were used as the marketing
channels for the robot ad. This factor cuts toward a
likelihood of confusion.
Sixth, consumers are not likely to be particularly careful in
determining who endorses VCRs, making confusion as to
their endorsement more likely.
Concerning the seventh factor, “defendant’s intent,” the
district court found that, in running the robot ad, the
defendants had intended a spoof of the “Wheel of
Fortune.” The relevant question is whether the defendants
“intended to profit by confusing consumers” concerning
the endorsement of Samsung VCRs. Toho, 645 F.2d 788.
We do not disagree that defendants intended to spoof
Vanna White and “Wheel of Fortune.” That does not
preclude, however, the possibility that defendants also
intended to confuse consumers regarding endorsement.
The robot ad was one of a series of ads run by defendants
which followed the same theme. Another ad in the series
depicted Morton Downey Jr. as a presidential candidate in
the year 2008. Doubtless, defendants intended to spoof
presidential elections and Mr. Downey through this ad.
Consumers, however, would likely believe, and would be
correct in so believing, that Mr. Downey was paid for his
permission and was endorsing Samsung products. Looking
at the series of advertisements as a whole, a jury could
reasonably conclude that beneath the surface humor of the
series lay an intent to persuade consumers that celebrity
Vanna White, like celebrity Downey, was endorsing
Samsung products.

575

Finally, the eighth factor, “likelihood of expansion of the
product lines,” does not appear apposite to a celebrity
endorsement case such as this.
Application of the Sleekcraft factors to this case indicates
that the district court erred in rejecting White’s Lanham
Act claim at the summary judgment stage. In so
concluding, we emphasize two facts, however. First,
construing the motion papers in White’s favor, as we must,
we hold only that White has raised a genuine issue of
material fact concerning a likelihood of confusion as to her
endorsement. Cohen v. Paramount Pictures Corp., 845
F.2d 851, 852-53 (9th Cir.1988). Whether White’s Lanham
Act claim should succeed is a matter for the jury. Second,
we stress that we reach this conclusion in light of the
peculiar facts of this case. In particular, we note that the
robot ad identifies White and was part of a series of ads in
which other celebrities participated and were paid for their
endorsement of Samsung’s products.
IV. The Parody Defense
In defense, defendants cite a number of cases for the
proposition that their robot ad constituted protected
speech. The only cases they cite which are even remotely
relevant to this case are Hustler Magazine v. Falwell, 485
U.S. 46, 108 S.Ct. 876, 99 L.Ed.2d 41 (1988) and L.L. Bean,
Inc. v. Drake Publishers, Inc., 811 F.2d 26 (1st Cir.1987).
Those cases involved parodies of advertisements run for
the purpose of poking fun at Jerry Falwell and L.L. Bean,
respectively. This case involves a true advertisement run for
the purpose of selling Samsung VCRs. The ad’s spoof of
Vanna White and Wheel of Fortune is subservient and only
tangentially related to the ad’s primary message: “buy
Samsung VCRs.” Defendants’ parody arguments are better

576

addressed to non-commercial parodies.3 The difference
between a “parody” and a “knock-off” is the difference
between fun and profit.
V. Conclusion
In remanding this case, we hold only that White has
pleaded claims which can go to the jury for its decision.
AFFIRMED IN PART, REVERSED IN PART, and
REMANDED.
ALARCON, Circuit Judge, concurring in part, dissenting in
part
Vanna White seeks recovery from Samsung based on three
theories: the right to privacy, the right to publicity, and the
Lanham Act. I concur in the majority’s conclusions on the

3 In warning of a first amendment chill to expressive conduct, the dissent reads

this decision too broadly. See Dissent at 1407. This case concerns only the market
which exists in our society for the exploitation of celebrity to sell products, and an
attempt to take a free ride on a celebrity’s celebrity value. Commercial advertising
which relies on celebrity fame is different from other forms of expressive activity
in two crucial ways.
First, for celebrity exploitation advertising to be effective, the advertisement must
evoke the celebrity’s identity. The more effective the evocation, the better the
advertisement. If, as Samsung claims, its ad was based on a “generic” game-show
hostess and not on Vanna White, the ad would not have violated anyone’s right of
publicity, but it would also not have been as humorous or as effective.
Second, even if some forms of expressive activity, such as parody, do rely on
identity evocation, the first amendment hurdle will bar most right of publicity
actions against those activities. Cf. Falwell, 485 U.S. at 46, 108 S.Ct. at 876. In the
case of commercial advertising, however, the first amendment hurdle is not so
high. Central Hudson Gas & Electric Corp. v. Public Service Comm’n of New
York, 447 U.S. 557, 566, 100 S.Ct. 2343, 2351, 65 L.Ed.2d 341 (1980). Realizing
this, Samsung attempts to elevate its ad above the status of garden-variety
commercial speech by pointing to the ad’s parody of Vanna White. Samsung’s
argument is unavailing. See Board of Trustees, State Univ. of N.Y. v. Fox, 492
U.S. 469, 474-75, 109 S.Ct. 3028, 3031, 106 L.Ed.2d 388 (1988); Bolger v. Youngs
Drug Products Corp., 463 U.S. 60, 67-68, 103 S.Ct. 2875, 2880-81, 77 L.Ed.2d
469 (1983). Unless the first amendment bars all right of publicity actions-and it
does not, see Zachini v. Scripps-Howard Broadcasting Co., 433 U.S. 562, 97 S.Ct.
2849, 53 L.Ed.2d 965 (1977)-then it does not bar this case.

577

right to privacy. I respectfully dissent from its holdings on
the right to publicity and the Lanham Act claims.
I. RIGHT TO PRIVACY (CAL. CIV. CODE 3344(a))
I agree with the majority’s conclusion that no reasonable
jury could find that the robot was a “likeness” of Vanna
White within the meaning of California Civil Code section
3344(a).
II. RIGHT TO PUBLICITY
I must dissent from the majority’s holding on Vanna
White’s right to publicity claim. The district court found
that, since the commercial advertisement did not show a
“likeness” of Vanna White, Samsung did not improperly
use the plaintiff’s identity. The majority asserts that the use
of a likeness is not required under California common law.
According to the majority, recovery is authorized if there is
an appropriation of one’s “identity.” I cannot find any
holding of a California court that supports this conclusion.
Furthermore, the record does not support the majority’s
finding that Vanna White’s “identity” was appropriated.
The district court relied on Eastwood v. Superior Court,
149 Cal.App.3d 409, 198 Cal.Rptr. 342, (1983), in holding
that there was no cause of action for infringement on the
right to publicity because there had been no use of a
likeness. In Eastwood, the California Court of Appeal
described the elements of the tort of “commercial
appropriation of the right of publicity” as “(1) the
defendant’s use of the plaintiff’s identity; (2) the
appropriation of plaintiff’s name or likeness to defendant’s
advantage, …; (3) lack of consent; and (4) resulting injury.”
Id. at 417, 198 Cal.Rptr. 342. (Emphasis added).
All of the California cases that my research has disclosed
hold that a cause of action for appropriation of the right to
publicity requires proof of the appropriation of a name or
likeness. See, e.g., Lugosi v. Universal Pictures, 25 Cal.3d

578

813, 603 P.2d 425, 160 Cal.Rptr. 323 (1979) (“The so-called
right of publicity means in essence that the reaction of the
public to name and likeness … endows the name and
likeness of the person involved with commercially
exploitable opportunities.”); Guglielmi v. Spelling-Goldberg
Prods., 25 Cal.3d 860, 603 P.2d 454, 457, 160 Cal.Rptr. 352,
355 (1979) (use of name of Rudolph Valentino in fictional
biography allowed); Eastwood v. Superior Court, supra (use
of photo and name of actor on cover of tabloid
newspaper); In re Weingand, 231 Cal.App.2d 289, 41
Cal.Rptr. 778 (1964) (aspiring actor denied court approval
to change name to “Peter Lorie” when famous actor Peter
Lorre objected); Fairfield v. American Photocopy Equip.
Co., 138 Cal.App.2d 82, 291 P.2d 194 (1955), later app. 158
Cal.App.2d 53, 322 P.2d 93 (1958) (use of attorney’s name
in advertisement); Gill v. Curtis Publishing Co., 38 C.2d
273, 239 P.2d 630 (1952) (use of photograph of a couple in
a magazine).
Notwithstanding the fact that California case law clearly
limits the test of the right to publicity to name and likeness,
the majority concludes that “the common law right of
publicity is not so confined.” Majority opinion at p. 1397.
The majority relies on two factors to support its innovative
extension of the California law. The first is that the
Eastwood court’s statement of the elements was permissive
rather than exclusive. The second is that Dean Prosser, in
describing the common law right to publicity, stated that it
might be possible that the right extended beyond name or
likeness. These are slender reeds to support a federal
court’s attempt to create new law for the state of California.
In reaching its surprising conclusion, the majority has
ignored the fact that the California Court of Appeal in
Eastwood specifically addressed the differences between
the common law right to publicity and the statutory cause
of action codified in California Civil Code section 3344.
The court explained that “[t]he differences between the

579

common law and the statutory actions are: (1) Section
3344, subdivision (a) requires knowing use whereas under
case law, mistake and inadvertence are not a defense against
commercial appropriation and (2) section 3344, subdivision
(g) expressly provides that its remedies are cumulative and
in addition to any provided by law.” Eastwood, 149
Cal.App.3d at n. 6, 198 Cal.Rptr. 342 (emphasis in original).
The court did not include appropriations of identity by
means other than name or likeness among its list of
differences between the statute and the common law.
The majority also relies on Dean Prosser’s statement that
“[i]t is not impossible that there might be an appropriation
of the plaintiff’s identity, as by impersonation, without the
use of either his name or his likeness, and that this would
be an invasion of his right of privacy.” Prosser, Privacy,48
Cal.L.Rev. 383, 401 n. 155 (1960). As Dean Prosser noted,
however, “[n]o such case appears to have arisen.” Id.
The majority states that the case law has borne out Dean
Prosser’s insight that the right to publicity is not limited to
name or likeness. As noted above, however, the courts of
California have never found an infringement on the right to
publicity without the use of the plaintiff’s name or likeness.
The interest of the California Legislature as expressed in
California Civil Code section 3344 appears to preclude the
result reached by the majority. The original section 3344
protected only name or likeness. In 1984, ten years after
our decision in Motschenbacher v. R.J. Reynolds Tobacco
Company, 498 F.2d 821 (9th Cir.1974) and 24 years after
Prosser speculated about the future development of the law
of the right of publicity, the California legislature amended
the statute. California law now makes the use of someone’s
voice or signature, as well as name or likeness, actionable.
Cal.Civ.Code sec. 2233(a) (Deering 1991 Supp.). Thus,
California, after our decision in Motschenbacher
specifically contemplated protection for interests other than
name or likeness, but did not include a cause of action for

580

appropriation of another person’s identity. The ancient
maxim, inclusio unius est exclusio alterius, would appear to
bar the majority’s innovative extension of the right of
publicity. The clear implication from the fact that the
California Legislature chose to add only voice and signature
to the previously protected interests is that it wished to
limit the cause of action to enumerated attributes.
The majority has focused on federal decisions in its novel
extension of California Common Law. Those decisions do
not provide support for the majority’s decision.
In each of the federal cases relied upon by the majority, the
advertisement affirmatively represented that the person
depicted therein was the plaintiff. In this case, it is clear that
a metal robot and not the plaintiff, Vanna White, is
depicted in the commercial advertisement. The record does
not show an appropriation of Vanna White’s identity.
In Motschenbacher, a picture of a well-known race driver’s
car, including its unique markings, was used in an
advertisement. Id. at 822. Although the driver could be
seen in the car, his features were not visible. Id. The
distinctive markings on the car were the only information
shown in the ad regarding the identity of the driver. These
distinctive markings compelled the inference that
Motschenbacher was the person sitting in the racing car.
We concluded that “California appellate courts would …
afford legal protection to an individual’s proprietary interest
in his own identity.” Id. at 825. (Emphasis added). Because
the distinctive markings on the racing car were sufficient to
identify Motschenbacher as the driver of the car, we held
that an issue of fact had been raised as to whether his
identity had been appropriated. Id. at 827.
In Midler v. Ford Motor Co., 849 F.2d 460 (9th Cir.1988), a
singer who had been instructed to sound as much like Bette
Midler as possible, sang a song in a radio commercial made
famous by Bette Midler. Id. at 461. A number of persons

581

told Bette Midler that they thought that she had made the
commercial. Id. at 462. Aside from the voice, there was no
information in the commercial from which the singer could
be identified. We noted that “[t]he human voice is one of
the most palpable ways identity is manifested.” Id. at 463.
We held that, “[t]o impersonate her voice is to pirate her
identity,”id., and concluded that Midler had raised a
question of fact as to the misappropriation of her identity.
In Carson v. Here’s Johnny Portable Toilets, Inc., 698 F.2d
831 (6th Cir.1983), the Sixth Circuit was called upon to
interpret Michigan’s common-law right to publicity. The
case involved a manufacturer who used the words, “Here’s
Johnny,” on portable toilets. Id. at 832-33. These same
words were used to introduce the star of a popular latenight television program. There was nothing to indicate
that this use of the phrase on the portable toilets was not
associated with Johnny Carson’s television program. The
court found that “[h]ere there was an appropriation of
Carson’s identity,” which violated the right to publicity. Id.
at 837.
The common theme in these federal cases is that
identifying characteristics unique to the plaintiffs were used
in a context in which they were the only information as to
the identity of the individual. The commercial
advertisements in each case showed attributes of the
plaintiff’s identities which made it appear that the plaintiff
was the person identified in the commercial. No effort was
made to dispel the impression that the plaintiffs were the
source of the personal attributes at issue. The commercials
affirmatively represented that the plaintiffs were involved.
See, e.g., Midler at 462 (“The [Motschenbacher] ad
suggested that it was he…. In the same way the defendants
here used an imitation to convey the impression that Midler
was singing for them.”). The proper interpretation of
Motschenbacher, Midler, and Carson is that where
identifying characteristics unique to a plaintiff are the only

582

information as to the identity of the person appearing in an
ad, a triable issue of fact has been raised as to whether his
or her identity as been appropriated.
The case before this court is distinguishable from the
factual showing made in Motschenbacher, Midler, and
Carson. It is patently clear to anyone viewing the
commercial advertisement that Vanna White was not being
depicted. No reasonable juror could confuse a metal robot
with Vanna White.
The majority contends that “the individual aspects of the
advertisement … [v]iewed together leave little doubt about
the celebrity the ad is meant to depict.” Majority Opinion at
p. 1399. It derives this conclusion from the fact that Vanna
White is “the only one” who “dresses like this, turns letters,
and does this on the Wheel of Fortune game show.” Id. In
reaching this conclusion, the majority confuses Vanna
White, the person, with the role she has assumed as the
current hostess on the “Wheel of Fortune” television game
show. A recognition of the distinction between a performer
and the part he or she plays is essential for a proper analysis
of the facts of this case. As is discussed below, those things
which Vanna White claims identify her are not unique to
her. They are, instead, attributes of the role she plays. The
representation of those attributes, therefore, does not
constitute a representation of Vanna White. See Nurmi v.
Peterson,
10
U.S.P.Q.2d
1775
(C.D.Cal.1989)
(distinguishing between performer and role).
Vanna White is a one-role celebrity. She is famous solely
for appearing as the hostess on the “Wheel of Fortune”
television show. There is nothing unique about Vanna
White or the attributes which she claims identify her.
Although she appears to be an attractive woman, her face
and figure are no more distinctive than that of other equally
comely women. She performs her role as hostess on
“Wheel of Fortune” in a simple and straight-forward

583

manner. Her work does not require her to display whatever
artistic talent she may possess.
The majority appears to argue that because Samsung
created a robot with the physical proportions of an
attractive woman, posed it gracefully, dressed it in a blond
wig, an evening gown, and jewelry, and placed it on a set
that resembles the Wheel of Fortune layout, it thereby
appropriated Vanna White’s identity. But an attractive
appearance, a graceful pose, blond hair, an evening gown,
and jewelry are attributes shared by many women,
especially in Southern California. These common attributes
are particularly evident among game-show hostesses,
models, actresses, singers, and other women in the
entertainment field. They are not unique attributes of
Vanna White’s identity. Accordingly, I cannot join in the
majority’s conclusion that, even if viewed together, these
attributes identify Vanna White and, therefore, raise a
triable issue as to the appropriation of her identity.
The only characteristic in the commercial advertisement
that is not common to many female performers or
celebrities is the imitation of the “Wheel of Fortune” set.
This set is the only thing which might possibly lead a
viewer to think of Vanna White. The Wheel of Fortune set,
however, is not an attribute of Vanna White’s identity. It is
an identifying characteristic of a television game show, a
prop with which Vanna White interacts in her role as the
current hostess. To say that Vanna White may bring an
action when another blond female performer or robot
appears on such a set as a hostess will, I am sure, be a
surprise to the owners of the show. Cf. Baltimore Orioles,
Inc. v. Major League Baseball Players Ass’n, 805 F.2d 663
(7th Cir.1986) (right to publicity in videotaped
performances preempted by copyright of owner of
telecast).
The record shows that Samsung recognized the market
value of Vanna White’s identity. No doubt the

584

advertisement would have been more effective if Vanna
White had appeared in it. But the fact that Samsung
recognized Vanna White’s value as a celebrity does not
necessarily mean that it appropriated her identity. The
record shows that Samsung dressed a robot in a costume
usually worn by television game-show hostesses, including
Vanna White. A blond wig, and glamorous clothing are not
characteristics unique to the current hostess of Wheel of
Fortune. This evidence does not support the majority’s
determination that the advertisement was meant to depict
Vanna White. The advertisement was intended to depict a
robot, playing the role Vanna White currently plays on the
Wheel of Fortune. I quite agree that anyone seeing the
commercial advertisement would be reminded of Vanna
White. Any performance by another female celebrity as a
game-show hostess, however, will also remind the viewer
of Vanna White because Vanna White’s celebrity is so
closely associated with the role. But the fact that an actor or
actress became famous for playing a particular role has,
until now, never been sufficient to give the performer a
proprietary interest in it. I cannot agree with the majority
that the California courts, which have consistently taken a
narrow view of the right to publicity, would extend law to
these unique facts.
III. THE LANHAM ACT
Vanna White’s Lanham Act claim is easily resolved by
applying the proper legal standard. Vanna White seeks
damages for violation of section 43(a) of the Lanham Act.
To succeed, Vanna White must prove actual deception of
the consuming public. Harper House, Inc. v. Thomas
Nelson, Inc., 889 F.2d 197, 208 (9th Cir.1989) (claim for
damages under section 43(a) requires showing the
defendant “actually deceived a significant portion of the
consuming public.”); see also PPX Enterprises, Inc. v.
Audiofidelity Enterprises, Inc., 818 F.2d 266, 271 (2d
Cir.1987) (“to establish entitlement to damages for

585

violation of section 43(a): [Plaintiffs] must establish actual
confusion or deception resulting from the violation.”); J.
Gilson, Trademark Protection and Practice section 7.02 at
7-137 to 7-138 (1991) (plaintiffs must show actual
deception to obtain damages under section 43(a)). Vanna
White offered no evidence that any portion of the
consuming public was deceived. The district court was
correct in granting summary judgment on Vanna White’s
Lanham Act claim.
The majority finds that because a majority of factors set
forth in AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th
Cir.1979), favor Vanna White, the district court erred in
granting summary judgment.
The AMF test is designed to aid in determining whether
two marks are so sufficiently similar that it is likely that a
consumer would confuse them. Where the marks are so
obviously different that no confusion could possibly occur,
the test is unnecessary. That is the situation in this matter.
The attempt to use the Lanham Act to prevent
“misappropriations” of which a court does not approve
results in the distortion of the law which makes it more
difficult to apply the law in appropriate cases. See Hanson
& Walls, Protecting Trademark Goodwill: Towards a
Federal Standard of Misappropriation, 81 Trademark Rep.
480, 511-513 (1991). This case is an example of such
distortion.
The majority assumes the conclusion that the AMF test is
designed to disclose. In repeatedly stating that the robot
“identifies” Vanna White, the majority has usurped the fact
finding function of the district court.
The majority holds that the first factor of the AMF test,
strength of the mark, weighs in Vanna White’s favor. It
equates this factor with the strength of Vanna White’s
fame, citing Allen v. National Video, Inc., 610 F.Supp. 612
(D.C.N.Y.1985). Allen involved a celebrity look-alike who

586

bore a remarkable resemblance to Woody Allen. Id. at 617.
The instant matter involves a robot that bears no
resemblance to Vanna White.
It is unclear whether the “mark” for which Vanna White
seeks protection is her screen image or the imitation Wheel
of Fortune. Although Vanna White is certainly famous for
being famous, there is no evidence in the record that
consumers identify the specific characteristics at issue, i.e.,
blond hair and fancy dress, solely with Vanna White. The
majority ignores this important distinction.
The majority has glossed over the third AMF factorsimilarity of the marks-the most important factor in this
case. The majority finds this factor “ambiguous” because
the common characteristics “identify” Vanna White.
Majority Opinion at p. 1400. We are required, however, to
compare marks in their entirety. California Cooler, Inc. v.
Loretto Winery, 774 F.2d 1451 (9th Cir.1985). In this
matter, the consumer is confronted with two entities. One
is Vanna White. The other is a robot. No one could
reasonably confuse the two.
Certain aspects of a mark may have a greater impact than
other aspects. When a mark has certain salient
characteristics, they are given greater weight. Country
Floors, Inc. v. Gepner, 930 F.2d 1056 (3d Cir.1991);
Henri’s Food Products Co. v. Kraft, Inc., 717 F.2d 352 (7th
Cir.1983); Giant Food, Inc. v. Nations’ Foodservice, Inc.,
710 F.2d 1565 (Fed.Cir.1983). The face of Vanna White
and the features of the robot are obviously more important
characteristics than their hair, dress, physical proportions,
jewelry, or the decoration of the set. Thus, the features of
the robot and Vanna White should be given great weight in
the analysis. It should be clear to anyone viewing the
commercial advertisement that the crude features of the
robot are very dissimilar to Vanna White’s attractive and
human face.

587

The majority’s analysis of the intent or seventh factor in
AMF is similarly suspect. The question presented here is
whether there is any evidence in the record that Samsung
intended to confuse consumers. It did not.
Where the circumstances are sufficient to eliminate any
likelihood of confusion, this court has repeatedly held that
there is no claim for a violation of the Lanham Act. See
Toho Co., Ltd. v. Sears, Roebuck & Co., 645 F.2d 788 (9th
Cir.1981) (“Bagzilla” garbage bags did not infringe
“Godzilla” mark); Walt Disney Prods. v. Air Pi rates, 581
F.2d 751 (9th Cir.1978), cert. denied sub nom O’Neill v.
Walt Disney Prods, 439 U.S. 1132, 99 S.Ct. 1054, 59
L.Ed.2d 94 (1979) (“Silly Sympathies” in adult comic books
did not infringe on Disney’s “Silly Symphonies”). The use
of a robot in the commercial advertisement makes it clear
that Vanna White did not endorse Samsung’s product.
Although likelihood of confusion may usually be a factual
question, “courts retain an important authority to monitor
the outer limits of substantial similarity within which a jury
is permitted to make the factual determination whether
there is a likelihood of confusion.” Warner Bros., Inc. v.
American Broadcasting Cos., Inc., 720 F.2d 231, 246 (2d
Cir.1983). “[S]ummary judgment is appropriate if the court
is satisfied that the products or marks are so dissimilar that
no question of fact is presented.” Universal City Studios,
Inc. v. Nintendo Co., Ltd., 746 F.2d 112 (2d Cir.1984).
“There is no issue for trial unless there is sufficient
evidence favoring the nonmoving party for a jury to return
a verdict for that party.” Anderson v. Liberty Lobby, Inc.,
477 U.S. 242, 249, 106 S.Ct. 2505, 2510, 91 L.Ed.2d 202
(1986). Vanna White has presented no evidence of actual
deception. Thus, she has failed to raise a genuine issue of
material fact that would support her Lanham Act claim.
IV. SAMSUNG’S FIRST AMENDMENT DEFENSE

588

The majority gives Samsung’s First Amendment defense
short shrift because “[t]his case involves a true
advertisement run for the purpose of selling Samsung
VCRs.” Majority opinion at p. 1401. I respectfully disagree
with the majority’s analysis of this issue as well.
The majority’s attempt to distinguish this case from Hustler
Magazine v. Falwell, 485 U.S. 46, 108 S.Ct. 876, 99 L.Ed.2d
41 (1988), and L.L. Bean, Inc. v. Drake Publishers, Inc.,
811 F.2d 26 (1st Cir.1987), is unpersuasive. The majority
notes that the parodies in those cases were made for the
purpose of poking fun at the Reverend Jerry Falwell and
L.L. Bean. But the majority fails to consider that the
defendants in those cases were making fun of the Reverend
Jerry Falwell and L.L. Bean for the purely commercial
purpose of selling soft-core pornographic magazines.
Generally, a parody does not constitute an infringement on
the original work if it takes no more than is necessary to
“conjure up” the original. Walt Disney Prods. v. Air Pirates,
581 F.2d 751, 756 (9th Cir.1978). The majority has failed to
consider these factors properly in deciding that Vanna
White may bring an action for damages solely because the
popularity of the fame show, Wheel of Fortune.
The effect of the majority’s holding on expressive conduct
is difficult to estimate. The majority’s position seems to
allow any famous person or entity to bring suit based on
any commercial advertisement that depicts a character or
role performed by the plaintiff. Under the majority’s view
of the law, Gene Autry could have brought an action for
damages against all other singing cowboys. Clint Eastwood
would be able to sue anyone who plays a tall, soft-spoken
cowboy, unless, of course, Jimmy Stewart had not
previously enjoined Clint Eastwood. Johnny Weismuller
would have been able to sue each actor who played the role
of Tarzan. Sylvester Stallone could sue actors who play
blue-collar boxers. Chuck Norris could sue all karate
experts who display their skills in motion pictures. Arnold

589

Schwarzenegger could sue body builders who are
compensated for appearing in public.
The majority’s reading of the Lanham Act would provide a
basis for “commercial” enterprises to maintain an action
for section 43(a) violations even in the absence of
confusion or deception. May Black and Decker, maker of
the “Dustbuster” portable vacuum, now sue “Bustdusters,” the Los Angeles topless cleaning service. Can the
Los Angeles Kings hockey team state a cause of action
against the City of Las Vegas for its billboards reading
“L.A. has the Kings, but we have the Aces.”
Direct competitive advertising could also be affected. Will
BMW, which advertises its automobiles as “the ultimate
driving machine,” be able to maintain an action against
Toyota for advertising one of its cars as “the ultimate
saving machine”? Can Coca Cola sue Pepsi because it
depicted a bottle of Coca Cola in its televised “taste test”?
Indeed, any advertisement which shows a competitor’s
product, or any recognizable brand name, would appear to
be liable for damages under the majority’s view of the
applicable law. Under the majority’s analysis, even the
depiction of an obvious facsimile of a competitor’s product
may provide sufficient basis for the maintenance of an
action for damages.
V. CONCLUSION
The protection of intellectual property presents the courts
with the necessity of balancing competing interests. On the
one hand, we wish to protect and reward the work and
investment of those who create intellectual property. In so
doing, however, we must prevent the creation of a
monopoly that would inhibit the creative expressions of
others. We have traditionally balanced those interests by
allowing the copying of an idea, but protecting a unique
expression of it. Samsung clearly used the idea of a
glamorous female game show hostess. Just as clearly, it

590

avoided appropriating Vanna White’s expression of that
role. Samsung did not use a likeness of her. The performer
depicted in the commercial advertisement is unmistakably a
lifeless robot. Vanna White has presented no evidence that
any consumer confused the robot with her identity. Indeed,
no reasonable consumer could confuse the robot with
Vanna White or believe that, because the robot appeared in
the advertisement, Vanna White endorsed Samsung’s
product.
I would affirm the district court’s judgment in all respects.
Gordon Sumner, p/k/a Sting v Michael Urvan,
Case No. D2000-0596 (WIPO Arbitration, Jul. 25, 2000)
1. The Parties
1.1 The Complainant is Gordon Sumner,
professionally known as “Sting”, a citizen of the
United Kingdom who maintains a residence in the
United States. The Respondent is Michael Urvan, of
Marietta, Georgia, United States of America.
….
4. Factual Background
Complainant’s Activities and Trademarks
4.1 In his Complaint, the Complainant asserted
the following in relation to his activities and
trademarks. The Complainant is a world famous
musician, recording and performing artist who
has, for over twenty years, rendered high-quality
musical services under his name, trademark and
service mark STING. Since at least as early as
1978, the Complainant has exclusively and
continuously used the STING mark in
connection with approximately twenty record

591

albums, almost all of which have gone multiplatinum in the United States and enjoyed great
commercial success worldwide. The Complainant
has also used the STING mark in connection
with innumerable world-wide concert tours
involving venues with significant capacities, the
majority of which sell out. The STING mark is
internationally known and famous as a result of
the Complainant’s extensive, high-profile, and
overwhelmingly
commercially
successful
activities in the music industry. The Complainant
is the owner of the STING mark as a trademark
and service mark. The name STING has become
synonymous in the minds of the public with the
Complainant and his activities in the music
industry, and serves as a symbol of the goodwill
and excellent reputation associated with Sting.
The STING mark is famous and entitled to the
widest scope of protection afforded by law,
including protection against dilution.
4.2 In his Response, the Respondent asserted
that there are 20 trademark registrations of the
word STING in the US, but none of them are
registered by the Complainant. The word STING
is a common word in the English language, and
so registration of it as a domain name is not a
violation of the Uniform Policy. The Respondent
is not a competitor of the Complainant and the
Respondent does not attempt to cause any
confusion with him.
Respondent’s Activities
4.3 The Complainant asserted the following in
relation to the Respondent’s activities and use of
the domain name. Until the Respondent was

592

contacted by a representative of the
Complainant, the Respondent made no use of
the domain name. After being contacted by a
representative of the Complainant, Respondent
linked the domain name to another site called
“GunBroker.Com”, which is a site that facilitates
“person to person” selling of guns. During or
about February of 2000, and again during or
about May of 2000, the Respondent offered to
sell the domain name to the Complainant for
$25,000.00. Since offering to sell the domain
name to the Complainant for $25,000.00, the
Respondent has frequently changed the web site
identified by the domain name, usually with an
“under construction” message, and in some cases
providing a link to a third-party operated
unauthorized web site relating to the
Complainant.
4.4 In his Response, the Respondent asserted
that he has been using the nickname “Sting” and
more recently “=Sting=” publicly on the Internet
for at least 8 years. The Respondent registered
the domain name in July 1995, approximately 5
years before this dispute was commenced. The
Respondent did not register the domain name to
sell it, nor did he register the domain to hold it
hostage for any reason. The Respondent engaged
in work on web site to which he intended the
domain name “sting.com” to resolve, prior to
any notification of this dispute. The Respondent
did not point the domain name “sting.com” to
the “GunBroker.com” website – this occurred
for a short time as a result of an error on the part
of the Respondent’s web service provider. The
Complainant’s assertion that the Respondent
initiated contact with the Complainant is false -

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the first contact was initiated by the Complainant
on May 16, 2000.
….
6. Discussion and Findings
Domain Name Identical or Confusingly Similar to
Complainant’s Mark
6.1 The relevant part of the domain name
“sting.com” is “sting”. The Complainant asserts,
the Respondent admits, and this Administrative
Panel finds, that the domain name is identical to
the word STING.
6.2 The Complainant is not the owner of a
trademark or service mark registration for the
word STING. It is, however, clear that the
Uniform Policy is not limited to a “registered”
mark; an unregistered, or common law, mark is
sufficient for the purposes of paragraph 4(a)(i).
The Complainant did not provide any
documentary evidence in support of his assertion
that he is the owner of the unregistered
trademark and/or service mark STING.
However, the Uniform Policy is not limited to
trademarks or service marks “owned” by the
Complainant; it is sufficient for the purposes of
paragraph 4(a)(i) that there be a trademark or
service mark “in which the Complainant has
rights”. The Complainant asserted, and this
Administrative Panel through the equivalent of
taking judicial notice finds, that the Complainant
is a world famous entertainer who is known by
the name STING.

594

6.3 The question that arises is whether being
known under a particular name is the same as
having rights in that name as a “trademark or
service mark”. The answer to this question is not
straightforward. On the one hand, there are a
number of cases under the Uniform Policy in
which the Panel has treated the name of a
famous or at least widely known person as
constituting an unregistered trademark or service
mark sufficient for the purposes of paragraph
4(a)(i) (eg. Julia Fiona Roberts v Russell Boyd
WIPO Case No. D2000-0210; Jeannette
Winterson v Mark Hogarth WIPO Case No.
D2000-0235;
Steven
Rattner
v
BuyThisDomainName (John Pepin) WIPO Case
No. D2000-0402).
6.4 On the other hand, the Report of the WIPO
Internet Domain Name Process of April 30,
1999, on which ICANN based the Uniform
Policy, at paragraphs 165-168, states as follows
(footnote citations deleted, emphasis added):
The
preponderance of
views, however, was in favor
of restricting the scope of
the procedure, at least
initially, in order to deal first
with the most offensive
forms of predatory practices
and to establish the
procedure on a sound
footing. Two limitations on
the scope of the procedure
were, as indicated above,
favored
by
these
commentators. The first
limitation would confine the

595

availability of the procedure
to cases of deliberate, bad
faith abusive registrations.
The definition of such
abusive registrations is
discussed in the next
section.
The
second
limitation would define
abusive
registration by
reference only to trademarks
and service marks. Thus,
registrations that violate
trade names, geographical
indications or personality
rights would not be
considered to fall within the
definition
of
abusive
registration for the purposes
of
the
administrative
procedure. Those in favor
of this form of limitation
pointed out that the
violation of trademarks (and
service marks) was the most
common form of abuse and
that the law with respect to
trade names, geographical
indications and personality
rights
is
less
evenly
harmonized throughout the
world,
although
international norms do exist
requiring the protection of
trade
names
and
geographical indications. We
are persuaded by the
wisdom of proceeding
firmly but cautiously and of
tackling, at the first stage,
problems which all agree

596

require a solution. … [W]e
consider that it is premature
to extend the notion of
abusive registration beyond
the violation of trademarks
and service marks at this
stage. After experience has
been gained with the
operation
of
the
administrative
procedure
and time has allowed for an
assessment of its efficacy
and of the problems, if any,
which remain outstanding,
the question of extending
the notion of abusive
registration
to
other
intellectual property rights
can always be re-visited.
It is clear from this statement that personality
rights were not intended to be made subject to
the proposed dispute resolution procedure. In
adopting the procedure proposed in the WIPO
Report, ICANN did not vary this limitation on
its application. It must be concluded, therefore,
that ICANN did not intend the procedure to
apply to personality rights.
6.5 In the opinion of this Administrative Panel, it
is doubtful whether the Uniform Policy is
applicable to this dispute. Although it is accepted
that the Complainant is world famous under the
name STING, it does not follow that he has
rights in STING as a trademark or service mark.
Unlike the personal names in issue in the cases
Julia Fiona Roberts v Russell Boyd, Jeannette
Winterson v Mark Hogarth, and Steven Rattner v
BuyThisDomainName (John Pepin), the

597

personal name in this case is also a common
word in the English language, with a number of
different meanings. The following are the entries
for “sting” from Merriam- Webster’s Collegiate
Dictionary:
sting vb stung ; sting.ing
[ME, fr. OE stingan; akin to
ON stinga to sting and
prob. to Gk stachys spike of
grain, stochos target, aim] vt
(bef. 12c) 1: to prick
painfully: as a: to pierce or
wound with a poisonous or
irritating process b: to affect
with sharp quick pain or
smart “hail stung their
faces” 2: to cause to suffer
acutely
“stung
with
remorse” 3: overcharge,
cheat ~ vi 1: to wound one
with or as if with a sting 2:
to feel a keen burning pain
or smart; also: to cause such
pain – sting.ing.ly adv
sting n (bef. 12c) 1 a: the act
of stinging; specif: the thrust
of a stinger into the flesh b:
a wound or pain caused by
or as if by stinging 2: stinger
2 3: a sharp or stinging
element, force, or quality 4:
an elaborate confidence
game; specif: such a game
worked by undercover
police in order to trap
criminals

598

6.6 In light of the fact that the word “sting” is in
common usage in the English language, with a
number of meanings, this case can be
distinguished from the other cases cited above in
which the Complainants’ personal name was
found also to be an unregistered trademark or
service mark to which the Uniform Policy
applies. This Administrative Panel is inclined to
the view, therefore, that the Complainant’s name
STING is not a trademark or service mark within
the scope of paragraph 4(a)(i) of the Uniform
Policy. However, it is not necessary to reach a
formal decision on this issue, because this
Administrative Panel finds against the
Complainant on other grounds, namely that the
requirement of paragraph 4(a)(iii) is not met, as
discussed below.
Respondent’s Rights or Legitimate Interests in the
Domain Name
6.7 The Respondent provided evidence of
circumstances of the type specified in paragraph
4(c) of the Uniform Policy as giving rise to a
right to or legitimate interest in the domain
name. In particular, the Respondent provided in
Exhibit C of the Response copies of various
email communications to him prior to the
commencement of this dispute, showing that the
“UserName”, the “nickname”, the “Screen
Name”, or the “Account PIC” under which the
Respondent had registered for global internet
gaming services consisted of or included the
word “sting”. In Exhibit D to the Response, the
Respondent provided copies of web page
printouts from The Champions League of
Quake, a service which monitors Quake servers

599

and keeps track of the scores of registered
players of this game. Those printouts show that
the Respondent played this game using the player
names “sting” or “=sting=”. In addition, the
Respondent provided evidence in Exhibit E to
the Response of preparations by him to establish
a web site at the URL http://www.sting.com.
6.8 Although this evidence is not irrelevant to the
issue of whether or not the Respondent has a
right to or a legitimate interest in the domain
name, it is certainly at the weaker end of the
spectrum of such evidence. The Respondent’s
use of the name “sting” or “=sting=” for gaming
does not establish that he has been “commonly
known” by the domain name as contemplated by
paragraph 4(c)(ii). The word is undistinctive, and
most likely is used by numerous people in
cyberspace. In practice, this word provides the
Respondent with anonymity rather than with a
name by which he is commonly known. The
Respondent’s evidence of his preparations to
establish a web site at the URL
http://www.sting.com does not establish the
circumstances contemplated by paragraph 4(c)(i),
because there is no evidence that this proposed
use of the domain name is in connection with a
bona fide offering of goods or services.
6.9 In short, a more substantive use of the word
“sting” than that proven by the Respondent is
required to show a right or legitimate interest in
the domain name “sting.com” (although this
proven use is relevant to the issue of bad faith).
On balance, therefore, this Administrative Panel
finds that the Respondent does not have a right
to or a legitimate interest in the domain name, in

600

the sense in which that concept is used in
paragraph 4(a)(ii) of the Uniform Policy.
Domain Name Registered and Used in Bad Faith
6.10 The Complainant has not satisfied this
Administrative Panel that the Respondent
registered and is using the domain name in bad
faith. The Complainant asserted that the
Respondent offered to sell the domain name to
the Complainant for $25,000, but the
Complainant provided no evidence in support of
this assertion. In particular, the Complainant
provided no evidence of the Respondent’s
alleged communications with the Complainant
on this issue. The Respondent admitted that he
offered to sell the domain name to the
Complainant, but only after the Complainant
solicited that offer. (The Respondent did not
specify the price at which he offered to sell the
domain name, but he did not dispute the
Complainant’s assertion of $25,000, so this
Administrative Panel assumes the offered price
was for that amount, or at least for an amount in
excess of the Respondent’s out-of-pocket
expenses.) Although this evidence is consistent
with the Complainant’s contention that the
Respondent acquired the domain name primarily
for the purpose of selling it to the Complainant,
as required by paragraph 4(b)(i), this evidence
does not prove that. This evidence is equally
consistent with the Respondent’s contention that
he acquired the domain name five years ago in
good faith. In the absence of any evidence
whatsoever from the Complainant going to the
assertion of the Respondent’s offer to sell the
domain name, this Administrative Panel finds

601

that the Complainant has not met the burden of
proof on this issue.
6.11 This Administrative Panel does not accept
the Complainant’s contention that the linking of
the domain name to the “GunBroker.com” web
site constituted intentionally attempting to
attract, for commercial gain, Internet users to an
on-line location by creating a likelihood of
confusion with the STING mark as to source,
sponsorship, affiliation, or endorsement, and so
constitutes an activity which corresponds to that
listed in paragraph 4(b)(iv) of the Uniform Policy
as evidence of bad faith registration and use of
the domain name. Again, the Complainant
provided no evidence in support of this
contention. In particular, the Complainant
provided no evidence as to the contents of the
“GunBroker.com” site, and thus no evidence
establishing that a likelihood of confusion with
the STING mark was created as to source,
sponsorship, affiliation or endorsement of the
site. The Respondent admitted that the domain
name did point to the “GunBroker.com” site for
a period of time, but provided evidence to the
effect that this was due to an error on the part of
the Respondent’s web service provider. The
evidence is therefore consistent with the
Respondent’s contention that there was no
intentional attempt to attract internet users for
commercial gain. Once again, the Complainant
has failed to satisfy its burden of proof on this
point.
6.12 Finally, this Administrative Panel does not
accept the Complainant’s contention that “it is
not possible to conceive of any plausible actual

602

or contemplated active use of the [D]omain
[N]ame by the Respondent that would not be
illegitimate, such as by being a passing off, an
infringement of consumer protection legislation,
or an infringement of the Complainant’s rights
under trademark law”. The words in quotation
marks come from Telstra Corporation Limited v
Nuclear Marshmallows WIPO Case No. D20000003. In the Telstra case, the trademark in
question was an invented word. In this case the
mark in question is a common word in the
English language, with a number of meanings.
Unlike the situation in the Telstra case, therefore,
it is far from inconceivable that there is a
plausible legitimate use to which the Respondent
could put the domain name. The Respondent has
asserted a legitimate use to which he has put, and
intends to put, the domain name. Whilst the
evidence provided in support of this assertion is
not particularly strong, it is at least consistent
with that assertion, and with his overall
contention that he did not register and has not
been using the domain name in bad faith. The
Complainant has thus failed to satisfy the burden
of proof on this point.
7. Decision
7.1 This Administrative Panel decides that the
Complainant has not proven each of the three
elements in paragraph 4(a) of the Uniform Policy
in relation to the domain name the subject of the
Complaint.
7.2 Pursuant to paragraph 4(i) of the
Uniform Policy and paragraph 15 of
the
Uniform
Rules,
this

603

Administrative Panel denies the
request that the Registrar, Network
Solutions, Inc, be required either to
transfer to the Complainant,
Gordon Sumner, p/k/a Sting, or to
cancel,
the
domain
name
“sting.com”.

604

4. Transfers
4.1. Gifts
Gruen v. Gruen, 68 N.Y.2d 48 (1986)
SIMONS, J.
Plaintiff commenced this action seeking a declaration that
he is the rightful owner of a painting which he alleges his
father, now deceased, gave to him. He concedes that he has
never had possession of the painting but asserts that his
father made a valid gift of the title in 1963 reserving a life
estate for himself. His father retained possession of the
painting until he died in 1980. Defendant, plaintiff’s
stepmother, has the painting now and has refused plaintiff’s
requests that she turn it over to him. She contends that the
purported gift was testamentary in nature and invalid
insofar as the formalities of a will were not met or,
alternatively, that a donor may not make a valid inter vivos
gift of a chattel and retain a life estate with a complete right
of possession. Following a seven-day nonjury trial, Special
Term found that plaintiff had failed to establish any of the
elements of an inter vivos gift and that in any event an
attempt by a donor to retain a present possessory life estate
in a chattel invalidated a purported gift of it. The Appellate
Division held that a valid gift may be made reserving a life
estate and, finding the elements of a gift established in this
case, it reversed and remitted the matter for a
determination of value (104 AD2d 171). That
determination has now been made and defendant appeals
directly to this court, pursuant to CPLR 5601 (d), from the
subsequent final judgment entered in Supreme Court
awarding plaintiff $2,500,000 in damages representing the
value of the painting, plus interest. We now affirm.
The subject of the dispute is a work entitled “Schloss
Kammer am Attersee II” painted by a noted Austrian
modernist, Gustav Klimt. It was purchased by plaintiff’s

father, Victor Gruen, in 1959 for $8,000. On April 1, 1963
the elder Gruen, a successful architect with offices and
residences in both New York City and Los Angeles during
most of the time involved in this action, wrote a letter to
plaintiff, then an undergraduate student at Harvard, stating
that he was giving him the Klimt painting for his birthday
but that he wished to retain the possession of it for his
lifetime. This letter is not in evidence, apparently because
plaintiff destroyed it on instructions from his father. Two
other letters were received, however, one dated May 22,
1963 and the other April 1, 1963. Both had been dictated
by Victor Gruen and sent together to plaintiff on or about
May 22, 1963. The letter dated May 22, 1963 reads as
follows:
Dear Michael:
I wrote you at the time of your birthday about the gift
of the painting by Klimt.
Now my lawyer tells me that because of the existing
tax laws, it was wrong to mention in that letter that I
want to use the painting as long as I live. Though I
still want to use it, this should not appear in the letter.
I am enclosing, therefore, a new letter and I ask you to
send the old one back to me so that it can be
destroyed.
I know this is all very silly, but the lawyer and our
accountant insist that they must have in their
possession copies of a letter which will serve the
purpose of making it possible for you, once I die, to
get this picture without having to pay inheritance taxes
on it.
Enclosed with this letter was a substitute gift letter, dated
April 1, 1963, which stated:
Dear Michael:

606

The 21st birthday, being an important
event in life, should be celebrated
accordingly. I therefore wish to give
you as a present the oil painting by
Gustav Klimt of Schloss Kammer
which now hangs in the New York
living room. You know that Lazette
and I bought it some 5 or 6 years ago,
and you always told us how much you
liked it.
Love,
Plaintiff never took possession of the painting nor did he
seek to do so. Except for a brief period between 1964 and
1965 when it was on loan to art exhibits and when
restoration work was performed on it, the painting
remained in his father’s possession, moving with him from
New York City to Beverly Hills and finally to Vienna,
Austria, where Victor Gruen died on February 14, 1980.
Following Victor’s death plaintiff requested possession of
the Klimt painting and when defendant refused, he
commenced this action.
The issues framed for appeal are whether a valid inter vivos
gift of a chattel may be made where the donor has reserved
a life estate in the chattel and the donee never has had
physical possession of it before the donor’s death and, if it
may, which factual findings on the elements of a valid inter
vivos gift more nearly comport with the weight of the
evidence in this case, those of Special Term or those of the
Appellate Division. Resolution of the latter issue requires
application of two general rules. First, to make a valid inter
vivos gift there must exist the intent on the part of the
donor to make a present transfer; delivery of the gift, either
actual or constructive to the donee; and acceptance by the
donee (Matter of Szabo, 10 NY2d 94, 98; Matter of Kelly, 285
NY 139, 150 [dissenting in part opn]; Matter of Van Alstyne,
207 NY 298, 306; Beaver v Beaver, 117 NY 421, 428).

607

Second, the proponent of a gift has the burden of proving
each of these elements by clear and convincing evidence
(Matter of Kelley, supra, at p. 150; Matter of Abramowitz, 38
AD2d 387, 389-390, affd on opn 32 NY2d 654).
Donative Intent
There is an important distinction between the intent with
which an inter vivos gift is made and the intent to make a
gift by will. An inter vivos gift requires that the donor
intend to make an irrevocable present transfer of
ownership; if the intention is to make a testamentary
disposition effective only after death, the gift is invalid
unless made by will (see, McCarthy v Pieret, 281 NY 407, 409;
Gannon v McGuire, 160 NY 476, 481; Martin v Funk, 75 NY
134, 137-138).
Defendant contends that the trial court was correct in
finding that Victor did not intend to transfer any present
interest in the painting to plaintiff in 1963 but only
expressed an intention that plaintiff was to get the painting
upon his death. The evidence is all but conclusive,
however, that Victor intended to transfer ownership of the
painting to plaintiff in 1963 but to retain a life estate in it
and that he did, therefore, effectively transfer a remainder
interest in the painting to plaintiff at that time. Although
the original letter was not in evidence, testimony of its
contents was received along with the substitute gift letter
and its covering letter dated May 22, 1963. The three letters
should be considered together as a single instrument (see,
Matter of Brandreth, 169 NY 437, 440) and when they are
they unambiguously establish that Victor Gruen intended
to make a present gift of title to the painting at that time.
But there was other evidence for after 1963 Victor made
several statements orally and in writing indicating that he
had previously given plaintiff the painting and that plaintiff
owned it. Victor Gruen retained possession of the property,
insured it, allowed others to exhibit it and made necessary

608

repairs to it but those acts are not inconsistent with his
retention of a life estate. Furthermore, whatever probative
value could be attached to his statement that he had
bequeathed the painting to his heirs, made 16 years later
when he prepared an export license application so that he
could take the painting out of Austria, is negated by the
overwhelming evidence that he intended a present transfer
of title in 1963. Victor’s failure to file a gift tax return on
the transaction was partially explained by allegedly
erroneous legal advice he received, and while that omission
sometimes may indicate that the donor had no intention of
making a present gift, it does not necessarily do so and it is
not dispositive in this case.
Defendant contends that even if a present gift was
intended, Victor’s reservation of a lifetime interest in the
painting defeated it. She relies on a statement from Young v
Young (80 NY 422) that ”’[a]ny gift of chattels which
expressly reserves the use of the property to the donor for
a certain period, or * * * as long as the donor shall live, is
ineffectual’” (id., at p 436, quoting 2 Schouler, Personal
Property, at 118). The statement was dictum, however, and
the holding of the court was limited to a determination that
an attempted gift of bonds in which the donor reserved the
interest for life failed because there had been no delivery of
the gift, either actual or constructive (see, id., at p 434; see
also, Speelman v Pascal, 10 NY2d 313, 319-320). The court
expressly left undecided the question “whether a remainder
in a chattel may be created and given by a donor by carving
out a life estate for himself and transferring the remainder”
(Young v Young, supra, at p. 440). We answered part of that
question in Matter of Brandreth (169 NY 437, 441-442, supra)
when we held that “[in] this state a life estate and remainder
can be created in a chattel or a fund the same as in real
property”. The case did not require us to decide whether
there could be a valid gift of the remainder.

609

Defendant recognizes that a valid inter vivos gift of a
remainder interest can be made not only of real property
but also of such intangibles as stocks and bonds. Indeed,
several of the cases she cites so hold. That being so, it is
difficult to perceive any legal basis for the distinction she
urges which would permit gifts of remainder interests in
those properties but not of remainder interests in chattels
such as the Klimt painting here. The only reason suggested
is that the gift of a chattel must include a present right to
possession. The application of Brandreth to permit a gift of
the remainder in this case, however, is consistent with the
distinction, well recognized in the law of gifts as well as in
real property law, between ownership and possession or
enjoyment (see, Speelman v Pascal, 10 NY2d 313, 318, supra;
McCarthy v Pieret, 281 NY 407, 409-411, supra; Matter of
Brandreth, 169 NY 437, 442, supra). Insofar as some of our
cases purport to require that the donor intend to transfer
both title and possession immediately to have a valid inter
vivos gift (see, Gannon v McGuire, 160 NY 476, 481, supra;
Young v Young, 80 NY 422, 430, supra), they state the rule
too broadly and confuse the effectiveness of a gift with the
transfer of the possession of the subject of that gift. The
correct test is “‘whether the maker intended the [gift] to
have no effect until after the maker’s death, or whether he
intended it to transfer some present interest’” (McCarthy v Pieret,
281 NY 407, 409, supra [emphasis added]; see also, 25 NY
Jur, Gifts, § 14, at 156-157). As long as the evidence
establishes an intent to make a present and irrevocable
transfer of title or the right of ownership, there is a present
transfer of some interest and the gift is effective
immediately (see, Matter of Brady, 228 App Div 56, 60, affd no
opn 254 NY 590; In re Sussman’s Estate, 125 NYS2d 584,
589-591, affd no opn 283 App Div 1051; Matter of Valentine,
122 Misc 486, 489; Brown, Personal Property § 48, at 133-136
[2d ed]; 25 NY Jur, Gifts, § 30, at 173-174; see also, Farmers’
Loan & Trust Co. v Winthrop, 238 NY 477, 485-486). Thus,
in Speelman v Pascal (supra), we held valid a gift of a

610

percentage of the future royalties to the play “My Fair
Lady” before the play even existed. There, as in this case,
the donee received title or the right of ownership to some
property immediately upon the making of the gift but
possession or enjoyment of the subject of the gift was
postponed to some future time.
Defendant suggests that allowing a donor to make a
present gift of a remainder with the reservation of a life
estate will lead courts to effectuate otherwise invalid
testamentary dispositions of property. The two have
entirely different characteristics, however, which make
them distinguishable. Once the gift is made it is irrevocable
and the donor is limited to the rights of a life tenant not an
owner. Moreover, with the gift of a remainder title vests
immediately in the donee and any possession is postponed
until the donor’s death whereas under a will neither title
nor possession vests immediately. Finally, the
postponement of enjoyment of the gift is produced by the
express terms of the gift not by the nature of the
instrument as it is with a will (see, Robb v Washington &
Jefferson Coll., 185 NY 485, 493).
Delivery
In order to have a valid inter vivos gift, there must be a
delivery of the gift, either by a physical delivery of the
subject of the gift or a constructive or symbolic delivery
such as by an instrument of gift, sufficient to divest the
donor of dominion and control over the property (see,
Matter of Szabo, 10 NY2d 94, 98-99, supra; Speelman v Pascal,
10 NY2d 313, 318- 320, supra; Beaver v Beaver, 117 NY 421,
428-429, supra; Matter of Cohn, 187 App Div 392, 395). As
the statement of the rule suggests, the requirement of
delivery is not rigid or inflexible, but is to be applied in light
of its purpose to avoid mistakes by donors and fraudulent
claims by donees (see, Matter of Van Alstyne, 207 NY 298,
308, supra; Matter of Cohn, supra, at pp 395-396; Mechem,

611

Requirement of Delivery in Gifts of Chattels and of Choses in
Actions Evidenced by Commercial Instruments, 21 Ill L Rev 341,
348-349). Accordingly, what is sufficient to constitute
delivery “must be tailored to suit the circumstances of the
case” (Matter of Szabo, supra, at p. 98). The rule requires that
”’[t]he delivery necessary to consummate a gift must be as
perfect as the nature of the property and the circumstances
and surroundings of the parties will reasonably permit’” (id.;
Vincent v Rix, 248 NY 76, 83; Matter of Van Alstyne, supra, at
p. 309; see, Beaver v Beaver, supra, at p. 428).
Defendant contends that when a tangible piece of personal
property such as a painting is the subject of a gift, physical
delivery of the painting itself is the best form of delivery
and should be required. Here, of course, we have only
delivery of Victor Gruen’s letters which serve as
instruments of gift. Defendant’s statement of the rule as
applied may be generally true, but it ignores the fact that
what Victor Gruen gave plaintiff was not all rights to the
Klimt painting, but only title to it with no right of
possession until his death. Under these circumstances, it
would be illogical for the law to require the donor to part
with possession of the painting when that is exactly what he
intends to retain.
Nor is there any reason to require a donor making a gift of
a remainder interest in a chattel to physically deliver the
chattel into the donee’s hands only to have the donee
redeliver it to the donor. As the facts of this case
demonstrate, such a requirement could impose practical
burdens on the parties to the gift while serving the delivery
requirement poorly. Thus, in order to accomplish this type
of delivery the parties would have been required to travel to
New York for the symbolic transfer and redelivery of the
Klimt painting which was hanging on the wall of Victor
Gruen’s Manhattan apartment. Defendant suggests that
such a requirement would be stronger evidence of a
completed gift, but in the absence of witnesses to the event

612

or any written confirmation of the gift it would provide less
protection against fraudulent claims than have the written
instruments of gift delivered in this case.
Acceptance
Acceptance by the donee is essential to the validity of an
inter vivos gift, but when a gift is of value to the donee, as
it is here, the law will presume an acceptance on his part
(Matter of Kelsey, 26 NY2d 792, affg on opn at 29 AD2d 450,
456; Beaver v Beaver, 117 NY 421, 429, supra). Plaintiff did
not rely on this presumption alone but also presented clear
and convincing proof of his acceptance of a remainder
interest in the Klimt painting by evidence that he had made
several contemporaneous statements acknowledging the
gift to his friends and associates, even showing some of
them his father’s gift letter, and that he had retained both
letters for over 17 years to verify the gift after his father
died. Defendant relied exclusively on affidavits filed by
plaintiff in a matrimonial action with his former wife, in
which plaintiff failed to list his interest in the painting as an
asset. These affidavits were made over 10 years after
acceptance was complete and they do not even approach
the evidence in Matter of Kelly (285 NY 139, 148-149
[dissenting in part opn], supra) where the donee,
immediately upon delivery of a diamond ring, rejected it as
“too flashy”. We agree with the Appellate Division that
interpretation of the affidavit was too speculative to
support a finding of rejection and overcome the substantial
showing of acceptance by plaintiff.
Accordingly, the judgment appealed from and the order of
the Appellate Division brought up for review should be
affirmed, with costs.

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4.2 Real Estate Transactions
4.2.1. The Contract
Georgia Form for Sale of Residential Property
This agreement is made at , on , by , of [address], City of ,
County of , State of Georgia, in this agreement called seller,
and , of [address], City of , County of , State of Georgia, in
this agreement called purchaser.
Recitals
1. Seller is the owner of the lot or parcel of real property
situated at [address] in the City of , County of , State of
Georgia, and more fully described as follows: [give legal
description]. The real property consists of a residential site
at [address], with improvements on it as follows: [describe
briefly, such as: A seven-room brick house with attached
two-car garage and detached frame workshop]. Located on
the real property are the following items of equipment and
other articles of personal property, owned by seller and
used on and in connection with the real property: [describe
generally, such as: gas-fire furnace, air conditioning system,
gas cooking range, electric dishwasher, and drapes, curtains
and carpeting in living room, dining room, hallways, and
bedrooms of the dwelling]. The real and personal property
described and referred to in this agreement is subsequently
referred to as property.
2. Seller desires to sell and purchaser desires to buy
property, for the purchase price and on the terms and
conditions set forth in this agreement.
In consideration of the mutual and reciprocal promises set
forth in this agreement, the parties agree:
Section
I. Purchase Price and Terms of Payment
The purchase price for property is $ , which shall be paid as
follows:

614

a. By a down payment in cash on the signing of this
contract, receipt of which is by this instrument
acknowledged by seller: $ .
b. By assumption of an existing encumbrance on property
in the form of a mortgage owned by , at [address], City of ,
County of , State of Georgia, which purchaser by this
instrument expressly assumes and agrees to pay. Present
principal balance outstanding on the encumbrance: $ .
c. By a purchase money mortgage to be executed by
purchaser to seller, securing purchaser's [noteor bond]
payable in equal installments of $ , or more, including
interest, commencing on the day of the month following
the close of this transaction and continuing at monthly
intervals thereafter on the same day of each successive
month. Interest: percent per year. The [noteor bond and
mortgage] shall be in a form substantially as set forth in
attached Exhibits " " and " ." Principal amount: $ .
d. Additional cash on settlement, in the exact balance of
purchase price after crediting foregoing items, with
principal balance on existing encumbrance to be computed
exactly to close of transaction. Estimated amount: $ .
Total: $
Section
II. Title
Title to property to be conveyed by seller shall be good and
marketable title, clear of all liens, encumbrances, defects,
and burdens, except: [state exceptions, such as: utility
easements, and agreements with utility companies of
record; zoning ordinances; existing rights of way for streets
and alleys bordering property; taxes and assessments not
delinquent].
Title as required in this agreement shall be evidenced by:
[specify, such as: a standard form policy of title insurance
issued by a title company acceptable to purchaser, doing

615

business in the (city or county) where property is situated.
The policy shall be issued as of the date of closing, shall be
in the amount of the purchase price, and shall be a joint
owner-mortgagee policy insuring seller and purchaser as
their interests may appear].
Seller shall convey title at close of the transaction to [state
exact names of grantees and identify, and specify form of
tenure, such as: (name of purchaser) and (full name), his, or
her spouse, as (joint tenantsor tenants in common or as the
case may be)]
Section
III. Costs
The following costs shall be borne equally by the parties:
[specify, such as: recording fees, escrow fees, notarial fees,
and other costs as the case may be].
The following costs shall be paid by seller: [specify, such as:
title insurance premium, charges of seller's attorney for
drawing instruments and advising].
The following costs shall be paid by purchaser: [specify,
such as: mortgage tax, assumption charges of holder of
existing encumbrance, if any, and charges of purchaser's
attorney for drawing instruments and advising].
The following costs shall be prorated to date of closing:
[specify, such as: taxes and assessments due but not
delinquent].
Section
IV. Insurance
Risk of loss or damage to property by fire, storm, burglary,
vandalism, or other casualty, between the date of this
agreement and closing, shall be and is assumed by
purchaser. No such loss or damage shall void or impair this
contract. If the improvements or personal property, or
both, are damaged or destroyed, in whole or in part, by

616

casualty prior to closing, the contract shall continue in full
force and effect, and purchaser shall be subrogated to
seller's right of coverage with respect to any insurance
carried by seller.
All existing property insurance now in effect shall be
continued by seller, and shall be transferred to purchaser at
closing. Premiums on such insurance shall be prorated to
time of closing. All such policies shall be exhibited
immediately to purchaser, who may secure additional
insurance on property, or any portion of it, if so desired.
Any such additional insurance shall name seller and
purchaser as coinsureds as their interests appear.
Section
V. Transfer of Property
Seller shall maintain property, including improvements, the
personal property described in this agreement, and lawns,
shrubs, and trees, in its present condition pending the
closing of this transaction, normal and reasonable wear
excepted.
Prior to transfer of possession, purchaser shall cause
property to be cleaned and placed in a neat, sanitary, and
habitable condition. Property shall be transferred to
purchaser, as provided in this agreement, in such condition,
and clear of all trash, debris, and the personal effects,
furnishings, and belongings of seller.
Possession of property shall be transferred to purchaser
within days after closing of sale. All keys shall be delivered
to purchaser at the time of transfer of possession. If
transfer is delayed for any cause beyond the period
specified in this agreement, seller shall pay to purchaser $
for each day of such delay, as agreed rental, but this
provision shall not be construed as barring or limiting any
remedy available to purchaser, in law or equity, for the
recovery of possession.

617

Section
VI. Seller's Representations and Warranties
After making diligent inquiry and investigation into the
matters at issue, seller represents to purchaser that to the
best of seller's knowledge and belief:
a. Seller is the owner of the property free and clear of all
encumbrances, occupancies or restrictions except for the
permitted title exceptions.
b. Seller has the exclusive right of occupancy and
possession of the property. No other party has any deed,
option or other conveyance of any right or interest in or to
the property, except for the permitted title exceptions.
c. Seller has not used, nor authorized, nor allowed the use
of the property, and, to seller's knowledge, the property has
not been used, for the handling, treatment, storage, disposal
or release of any hazardous or toxic substance as defined
under any applicable state or federal law or regulation
including, without limitation, the Comprehensive
Environmental Response, Compensation and Liability Act
("CERCLA"), in amounts that would reasonably necessitate
any response or corrective action, including any such action
under CERCLA as amended, the Resource Conservation
and Recovery Act, as amended, the Georgia Hazardous
Waste Management Act, as amended, or any other
applicable law or regulation.
d. The property is free from special taxes or assessments,
except those generally applicable to other properties in the
tax district in which the property is located, and there is no
pending or threatened special assessment or condemnation
or eminent domain proceedings which would affect the
property, or any part of the property.
Section
VII. Time of Essence; Closing

618

Time is expressly declared to be of the essence of this
contract. The contract shall be executed and completed,
and sale closed, on or before , or any other date as the
parties may in writing agree to. Each party shall fully
perform all obligations under this agreement at such times
as to insure closing within the period specified in this
agreement, or any extension of the period specified.
Anything to the contrary in this agreement
notwithstanding, the obligation of purchaser to
consummate the closing of this transaction is subject to and
conditioned on the satisfaction at or prior to closing of the
following conditions precedent:
a. The full and complete performance by seller of each and
every agreement and covenant contained in this agreement
to be performed by seller.
b. Purchaser shall receive evidence satisfactory to purchaser
that the property has not been used for the handling,
treatment, storage or disposal of any hazardous or toxic
substance as defined under any applicable state or federal
laws or regulation including, but not limited to, CERCLA
and the Georgia Hazardous Waste Management Act.
In the event that the conditions stated above have not been
satisfied by the closing date, purchaser shall be entitled to,
at purchaser's option, terminate this agreement by written
notice to seller. In the event that purchaser elects to
terminate this agreement, then neither party shall have any
further rights, obligations or liabilities under this agreement
except to the extent that any right, obligation or liability
expressly survives termination of the agreement.
Section
VIII. Remedies of Parties
(1) If purchaser fails or refuses to comply with the
conditions assumed, or to perform all obligations under
this agreement, seller has the option to:

619

(a) Hold and retain the initial deposit money and any
additional funds paid or deposited by purchaser, as
liquidated damages for breach of this contract, and cancel
and terminate the contract, whereupon all rights and
obligations under this agreement shall cease; or
(b) Enforce this contract by appropriate action, including
an action for specific performance, or for damages for
breach, and retain all money paid or deposited by purchaser
pending the determination of such action. Seller shall give
purchaser written notice of election with respect to seller's
exercise of either of these options.
(2) If seller fails or refuses to perform obligations under
this agreement, including the furnishing of good title as
defined in this agreement and transfer of possession,
purchaser may either:
(a) Cancel the contract and recover all deposits and other
amounts paid by purchaser under this agreement, and all
expenses paid or incurred; or
(b) Pursue any remedy available to purchaser, in law or
equity, including an action to compel specific performance
of this contract, or one for damages for breach, separately
or alternatively.
Section
IX. Assignment; Modification; Entire Agreement of Parties
Expressed
No right or interest of purchaser under this agreement shall
be assigned without the prior written consent of seller,
which consent shall not be unreasonably withheld.
No modification of this contract shall be valid or binding
unless such modification is in writing, duly dated and
signed by both parties.
This instrument constitutes the entire agreement between
the parties. Neither party shall be bound by any terms,

620

conditions, statements, or representations, oral or written,
not contained in this agreement. Each party acknowledges
that in executing this contract he or she has not been
induced, persuaded, or motivated by any promise or
representation made by the other party, unless expressly set
forth in this agreement. All previous negotiations,
statements, and preliminary instruments by the parties or
their representatives are merged in this instrument.
Section
X. Signature and Effective Date
This instrument shall not be effective as a contract until
duly signed by both parties. The date of execution and
effective date of the contract is the date first above set
forth. The date of signature by each party is the date set
forth unless otherwise indicated after the signature.
In witness, the parties have executed this instrument on the
day and year first above written.
[Signatures]
[Attestation]
Stambovsky v. Ackley, 169 A.D.2d 254 (N.Y. App. Div.
1991)
William M. Stein of counsel (Hood & Stein, attorneys), for
appellant.
Andrew C. Bisulca of counsel (Mann, Mann & Lewis, P. C.,
attorneys), for Helen V. Ackley, respondent.
Jeffrey J. Ellis of counsel (Quirk & Bakalor, P. C.,
attorneys), for Ellis Realty, respondent.
RUBIN, J.
Plaintiff, to his horror, discovered that the house he had
recently contracted to purchase was widely reputed to be
possessed by poltergeists, reportedly seen by defendant
seller and members of her family on numerous occasions

621

over the last nine years. Plaintiff promptly commenced this
action seeking rescission of the contract of sale. Supreme
Court reluctantly dismissed the complaint, holding that
plaintiff has no remedy at law in this jurisdiction.
The unusual facts of this case, as disclosed by the record,
clearly warrant a grant of equitable relief to the buyer who,
as a resident of New York City, cannot be expected to have
any familiarity with the folklore of the Village of Nyack.
Not being a “local”, plaintiff could not readily learn that the
home he had contracted to purchase is haunted. Whether
the source of the spectral apparitions seen by defendant
seller are parapsychic or psychogenic, having reported their
presence in both a national publication (Readers’ Digest) and
the local press (in 1977 and 1982, respectively), defendant is
estopped to deny their existence and, as a matter of law, the
house is haunted. More to the point, however, no
divination is required to conclude that it is defendant’s
promotional efforts in publicizing her close encounters
with these spirits which fostered the home’s reputation in
the community. In 1989, the house was included in fivehome walking tour of Nyack and described in a November
27th newspaper article as “a riverfront Victorian (with
ghost).” The impact of the reputation thus created goes to
the very essence of the bargain between the parties, greatly
impairing both the value of the property and its potential
for resale. The extent of this impairment may be presumed
for the purpose of reviewing the disposition of this motion
to dismiss the cause of action for rescission and represents
merely an issue of fact for resolution at trial.
While I agree with Supreme Court that the real estate
broker, as agent for the seller, is under no duty to disclose
to a potential buyer the phantasmal reputation of the
premises and that, in his pursuit of a legal remedy for
fraudulent misrepresentation against the seller, plaintiff
hasn’t a ghost of a chance, I am nevertheless moved by the
spirit of equity to allow the buyer to seek rescission of the

622

contract of sale and recovery of his down payment. New
York law fails to recognize any remedy for damages
incurred as a result of the seller’s mere silence, applying
instead the strict rule of caveat emptor. Therefore, the
theoretical basis for granting relief, even under the
extraordinary facts of this case, is elusive if not ephemeral.
“Pity me not but lend thy serious hearing to what I shall
unfold” (William Shakespeare, Hamlet, Act I, Scene V
[Ghost]).
From the perspective of a person in the position of plaintiff
herein, a very practical problem arises with respect to the
discovery of a paranormal phenomenon: “Who you gonna’
call?” as a title song to the movie “Ghostbusters” asks.
Applying the strict rule of caveat emptor to a contract
involving a house possessed by poltergeists conjures up
visions of a psychic or medium routinely accompanying the
structural engineer and Terminix man on an inspection of
every home subject to a contract of sale. It portends that
the prudent attorney will establish an escrow account lest
the subject of the transaction come back to haunt him and
his client–or pray that his malpractice insurance coverage
extends to supernatural disasters. In the interest of avoiding
such untenable consequences, the notion that a haunting is
a condition which can and should be ascertained upon
reasonable inspection of the premises is a hobgoblin which
should be exorcised from the body of legal precedent and
laid quietly to rest.
It has been suggested by a leading authority that the ancient
rule which holds that mere nondisclosure does not
constitute actionable misrepresentation “finds proper
application in cases where the fact undisclosed is patent, or
the plaintiff has equal opportunities for obtaining
information which he may be expected to utilize, or the
defendant has no reason to think that he is acting under
any misapprehension” (Prosser, Torts § 106, at 696 [4th ed
1971]). However, with respect to transactions in real estate,

623

New York adheres to the doctrine of caveat emptor and
imposes no duty upon the vendor to disclose any
information concerning the premises unless there is a
confidential or fiduciary relationship between the parties or
some conduct on the part of the seller which constitutes
“active concealment” (see, 17 E. 80th Realty Corp. v 68th
Assocs., – AD2d – [1st Dept, May 9, 1991] [dummy
ventilation system constructed by seller]; Haberman v
Greenspan, 82 Misc 2d 263 [foundation cracks covered by
seller]). Normally, some affirmative misrepresentation (e.g.,
Tahini Invs. v Bobrowsky, 99 AD2d 489 [industrial waste on
land allegedly used only as farm]; Jansen v Kelly, 11 AD2d
587 [land containing valuable minerals allegedly acquired
for use as campsite]) or partial disclosure (Junius Constr.
Corp. v Cohen, 257 NY 393 [existence of third unopened
street concealed]; Noved Realty Corp. v A. A. P. Co., 250 App
Div 1 [escrow agreements securing lien concealed]) is
required to impose upon the seller a duty to communicate
undisclosed conditions affecting the premises (contra, Young
v Keith, 112 AD2d 625 [defective water and sewer systems
concealed]).
Caveat emptor is not so all-encompassing a doctrine of
common law as to render every act of nondisclosure
immune from redress, whether legal or equitable. “In
regard to the necessity of giving information which has not
been asked, the rule differs somewhat at law and in equity,
and while the law courts would permit no recovery of
damages against a vendor, because of mere concealment of
facts under certain circumstances, yet if the vendee refused to
complete the contract because of the concealment of a
material fact on the part of the other, equity would refuse
to compel him so to do, because equity only compels the
specific performance of a contract which is fair and open,
and in regard to which all material matters known to each
have been communicated to the other” (Rothmiller v Stein,
143 NY 581, 591-592 [emphasis added]). Even as a

624

principle of law, long before exceptions were embodied in
statute law, the doctrine was held inapplicable to contagion
among animals, adulteration of food, and insolvency of a
maker of a promissory note and of a tenant substituted for
another under a lease. Common law is not moribund. Ex
facto jus oritur (law arises out of facts). Where fairness and
common sense dictate that an exception should be created,
the evolution of the law should not be stifled by rigid
application of a legal maxim.
The doctrine of caveat emptor requires that a buyer act
prudently to assess the fitness and value of his purchase
and operates to bar the purchaser who fails to exercise due
care from seeking the equitable remedy of rescission. For
the purposes of the instant motion to dismiss the action
pursuant to CPLR 3211 (a) (7), plaintiff is entitled to every
favorable inference which may reasonably be drawn from
the pleadings, specifically, in this instance, that he met his
obligation to conduct an inspection of the premises and a
search of available public records with respect to title. It
should be apparent, however, that the most meticulous
inspection and the search would not reveal the presence of
poltergeists at the premises or unearth the property’s
ghoulish reputation in the community. Therefore, there is
no sound policy reason to deny plaintiff relief for failing to
discover a state of affairs which the most prudent
purchaser would not be expected to even contemplate.
The case law in this jurisdiction dealing with the duty of a
vendor of real property to disclose information to the
buyer is distinguishable from the matter under review. The
most salient distinction is that existing cases invariably deal
with the physical condition of the premises (e.g., London v
Courduff, supra [use as a landfill]; Perin v Mardine Realty Co., 5
AD2d 685, affd 6 NY2d 920 [sewer line crossing adjoining
property without owner’s consent]), defects in title (e.g.,
Sands v Kissane, 282 App Div 140 [remainderman]), liens
against the property (e.g., Noved Realty Corp. v A. A. P. Co.,

625

supra), expenses or income (e.g., Rodas v Manitaras, supra
[gross receipts]) and other factors affecting its operation.
No case has been brought to this court’s attention in which
the property value was impaired as the result of the
reputation created by information disseminated to the
public by the seller (or, for that matter, as a result of
possession by poltergeists).
Where a condition which has been created by the seller
materially impairs the value of the contract and is peculiarly
within the knowledge of the seller or unlikely to be
discovered by a prudent purchaser exercising due care with
respect to the subject transaction, nondisclosure constitutes
a basis for rescission as a matter of equity. Any other
outcome places upon the buyer not merely the obligation
to exercise care in his purchase but rather to be omniscient
with respect to any fact which may affect the bargain. No
practical purpose is served by imposing such a burden
upon a purchaser. To the contrary, it encourages predatory
business practice and offends the principle that equity will
suffer no wrong to be without a remedy.
Defendant’s contention that the contract of sale,
particularly the merger or “as is” clause, bars recovery of
the buyer’s deposit is unavailing. Even an express
disclaimer will not be given effect where the facts are
peculiarly within the knowledge of the party invoking it.
Moreover, a fair reading of the merger clause reveals that it
expressly disclaims only representations made with respect
to the physical condition of the premises and merely makes
general reference to representations concerning “any other
matter or things affecting or relating to the aforesaid
premises.” As broad as this language may be, a reasonable
interpretation is that its effect is limited to tangible or
physical matters and does not extend to paranormal
phenomena. Finally, if the language of the contract is to be
construed as broadly as defendant urges to encompass the
presence of poltergeists in the house, it cannot be said that

626

she has delivered the premises “vacant” in accordance with
her obligation under the provisions of the contract rider.
To the extent New York law may be said to require
something more than “mere concealment” to apply even
the equitable remedy of rescission, the case of Junius Constr.
Corp. v Cohen (257 NY 393, supra), while not precisely on
point, provides some guidance. In that case, the seller
disclosed that an official map indicated two as yet
unopened streets which were planned for construction at
the edges of the parcel. What was not disclosed was that
the same map indicated a third street which, if opened,
would divide the plot in half. The court held that, while the
seller was under no duty to mention the planned streets at
all, having undertaken to disclose two of them, he was
obliged to reveal the third.
In the case at bar, defendant seller deliberately fostered the
public belief that her home was possessed. Having
undertaken to inform the public- at-large, to whom she has
no legal relationship, about the supernatural occurrences on
her property, she may be said to owe no less a duty to her
contract vendee. It has been remarked that the occasional
modern cases which permit a seller to take unfair advantage
of a buyer’s ignorance so long as he is not actively misled
are “singularly unappetizing” (Prosser, Torts § 106, at 696
[4th ed 1971]). Where, as here, the seller not only takes
unfair advantage of the buyer’s ignorance but has created
and perpetuated a condition about which he is unlikely to
even inquire, enforcement of the contract (in whole or in
part) is offensive to the court’s sense of equity. Application
of the remedy of rescission, within the bounds of the
narrow exception to the doctrine of caveat emptor set forth
herein, is entirely appropriate to relieve the unwitting
purchaser from the consequences of a most unnatural
bargain.
Accordingly, the judgment of the Supreme Court, New
York County (Edward H. Lehner, J.), entered April 9, 1990,

627

which dismissed the complaint pursuant to CPLR 3211 (a)
(7), should be modified, on the law and the facts, and in the
exercise of discretion, and the first cause of action seeking
rescission of the contract reinstated, without costs.
SMITH, J., DISSENTING.
I would affirm the dismissal of the complaint by the
motion court.
Plaintiff seeks to rescind his contract to purchase defendant
Ackley’s residential property and recover his down
payment. Plaintiff alleges that Ackley and her real estate
broker, defendant Ellis Realty, made material
misrepresentations of the property in that they failed to
disclose that Ackley believed that the house was haunted by
poltergeists. Moreover, Ackley shared this belief with her
community and the general public through articles
published in Reader’s Digest (1977) and the local newspaper
(1982). In November 1989, approximately two months
after the parties entered into the contract of sale but
subsequent to the scheduled October 2, 1989 closing, the
house was included in a five-house walking tour and again
described in the local newspaper as being haunted.
Prior to closing, plaintiff learned of this reputation and
unsuccessfully sought to rescind the $650,000 contract of
sale and obtain return of his $32,500 down payment
without resort to litigation. The plaintiff then commenced
this action for that relief and alleged that he would not have
entered into the contract had he been so advised and that
as a result of the alleged poltergeist activity, the market
value and resaleability of the property was greatly
diminished. Defendant Ackley has counterclaimed for
specific performance.
“It is settled law in New York State that the seller of real
property is under no duty to speak when the parties deal at
arm’s length. The mere silence of the seller, without some
act or conduct which deceived the purchaser, does not

628

amount to a concealment that is actionable as a fraud. The
buyer has the duty to satisfy himself as to the quality of his
bargain pursuant to the doctrine of caveat emptor, which in
New York State still applies to real estate transactions.”
(London v Courduff, 141 AD2d 803, 804 , lv dismissed 73
NY2d 809 .)
The parties herein were represented by counsel and dealt at
arm’s length. This is evidenced by the contract of sale
which, inter alia, contained various riders and a specific
provision that all prior understandings and agreements
between the parties were merged into the contract, that the
contract completely expressed their full agreement and that
neither had relied upon any statement by anyone else not
set forth in the contract. There is no allegation that
defendants, by some specific act, other than the failure to
speak, deceived the plaintiff. Nevertheless, a cause of action
may be sufficiently stated where there is a confidential or
fiduciary relationship creating a duty to disclose and there
was a failure to disclose a material fact, calculated to induce
a false belief. However, plaintiff herein has not alleged and
there is no basis for concluding that a confidential or
fiduciary relationship existed between these parties to an
arm’s length transaction such as to give rise to a duty to
disclose. In addition, there is no allegation that defendants
thwarted plaintiff’s efforts to fulfill his responsibilities fixed
by the doctrine of caveat emptor.
Finally, if the doctrine of caveat emptor is to be discarded,
it should be for a reason more substantive than a
poltergeist. The existence of a poltergeist is no more
binding upon the defendants than it is upon this court.
Based upon the foregoing, the motion court properly
dismissed the complaint.
Johnson v. Davis, 480 So.2d (Fla. 1985)
Mitchell W. Mandler and Patricia M. Silver of Smith &
Mandler, Miami Beach, for petitioners.

629

Stanley M. Newmark, Joe N. Unger of the Law Offices of
Joe N. Unger, Miami, and Joseph G. Abromovitz, Boston,
Mass., for respondents.
ADKINS, Justice.
We have before us a petition to review the decision in
Johnson v. Davis, 449 So. 2d 344 (Fla. 3d DCA 1984), which
expressly and directly conflicts with Banks v. Salina, 413 So.
2d 851 (Fla. 4th DCA 1982), and Ramel v. Chasebrook
Construction Co., 135 So. 2d 876 (Fla. 2d DCA 1961). We
have jurisdiction, article V, section 3(b)(3), Florida
Constitution, and approve the decision of the district court.
In May of 1982, the Davises entered into a contract to buy
for $310,000 the Johnsons’ home, which at the time was
three years old. The contract required a $5,000 deposit
payment, an additional $26,000 deposit payment within five
days and a closing by June 21, 1982. The crucial provision
of the contract, for the purposes of the case at bar, is
Paragraph F which provided:
F. Roof Inspection: Prior to closing at
Buyer’s expense, Buyer shall have the
right to obtain a written report from a
licensed roofer stating that the roof is
in a watertight condition. In the event
repairs are required either to correct
leaks or to replace damage to facia or
soffit, seller shall pay for said repairs
which shall be performed by a licensed
roofing contractor.
The contract further provided for payment to the
“prevailing party” of all costs and reasonable fees in any
contract litigation.
Before the Davises made the additional $26,000 deposit
payment, Mrs. Davis noticed some buckling and peeling
plaster around the corner of a window frame in the family
room and stains on the ceilings in the family room and

630

kitchen of the home. Upon inquiring, Mrs. Davis was told
by Mr. Johnson that the window had had a minor problem
that had long since been corrected and that the stains were
wallpaper glue and the result of ceiling beams being moved.
There is disagreement among the parties as to whether Mr.
Johnson also told Mrs. Davis at this time that there had
never been any problems with the roof or ceilings. The
Davises thereafter paid the remainder of their deposit and
the Johnsons vacated the home. Several days later,
following a heavy rain, Mrs. Davis entered the home and
discovered water “gushing” in from around the window
frame, the ceiling of the family room, the light fixtures, the
glass doors, and the stove in the kitchen.
Two roofers hired by the Johnsons’ broker concluded that
for under $1,000 they could “fix” certain leaks in the roof
and by doing so make the roof “watertight.” Three roofers
hired by the Davises found that the roof was inherently
defective, that any repairs would be temporary because the
roof was “slipping,” and that only a new $15,000 roof
could be “watertight.”
The Davises filed a complaint alleging breach of contract,
fraud and misrepresentation, and sought recission of the
contract and return of their deposit. The Johnsons
counterclaimed seeking the deposit as liquidated damages.
The trial court entered its final judgment on May 27, 1983.
The court made no findings of fact, but awarded the
Davises $26,000 plus interest and awarded the Johnsons
$5,000 plus interest. Each party was to bear their own
attorneys’ fees.
The Johnsons appealed and the Davises cross-appealed
from the final judgment. The Third District found for the
Davises affirming the trial court’s return of the majority of
the deposit to the Davises ($26,000), and reversing the
award of $5,000 to the Johnsons as well as the court’s
failure to award the Davises costs and fees. Accordingly,

631

the court remanded with directions to return to the Davises
the balance of their deposit and to award them costs and
fees.
The trial court included no findings of fact in its order.
However, the district court inferred from the record that
the trial court refused to accept the Davises’
characterization of the roof inspection provision of the
contract. The district court noted that if there was a breach,
the trial court would have ordered the return of the
Davises’ entire deposit because there is no way to
distinguish the two deposit payments under a breach of
contract theory. We agree with this interpretation and
further find no error by the trial court in this respect.
The contract contemplated the possibility that the roof may
not be watertight at the time of inspection and provided a
remedy if it was not in such a condition. The roof
inspection provision of the contract did not impose any
obligation beyond the seller correcting the leaks and
replacing damage to the facia or soffit. The record is devoid
of any evidence that the seller refused to make needed
repairs to the roof. In fact, the record reflects that the
Davises’ never even demanded that the areas of leakage be
repaired either by way of repair or replacement. Yet the
Davises insist that the Johnsons breached the contract
justifying recission. We find this contention to be without
merit.
We also agree with the district court’s conclusions under a
theory of fraud and find that the Johnsons’ statements to
the Davises regarding the condition of the roof constituted
a fraudulent misrepresentation entitling respondents to the
return of their $26,000 deposit payment. In the state of
Florida, relief for a fraudulent misrepresentation may be
granted only when the following elements are present: (1) a
false statement concerning a material fact; (2) the
representor’s knowledge that the representation is false; (3)
an intention that the representation induce another to act

632

on it; and, (4) consequent injury by the party acting in
reliance on the representation. See Huffstetler v. Our Home
Life Ins. Co., 67 Fla. 324, 65 So. 1 (1914).
The evidence adduced at trial shows that after the buyer
and the seller signed the purchase and sales agreement and
after receiving the $5,000 initial deposit payment the
Johnsons affirmatively repeated to the Davises that there
were no problems with the roof. The Johnsons
subsequently received the additional $26,000 deposit
payment from the Davises. The record reflects that the
statement made by the Johnsons was a false representation
of material fact, made with knowledge of its falsity, upon
which the Davises relied to their detriment as evidenced by
the $26,000 paid to the Johnsons.
The doctrine of caveat emptor does not exempt a seller
from responsibility for the statements and representations
which he makes to induce the buyer to act, when under the
circumstances these amount to fraud in the legal sense. To
be grounds for relief, the false representations need not
have been made at the time of the signing of the purchase
and sales agreement in order for the element of reliance to
be present. The fact that the false statements as to the
quality of the roof were made after the signing of the
purchase and sales agreement does not excuse the seller
from liability when the misrepresentations were made prior
to the execution of the contract by conveyance of the
property. It would be contrary to all notions of fairness and
justice for this Court to place its stamp of approval on an
affirmative misrepresentation by a wrongdoer just because
it was made after the signing of the executory contract
when all of the necessary elements for actionable fraud are
present. Furthermore, the Davises’ reliance on the truth of
the Johnsons’ representation was justified and is supported
by this Court’s decision in Besett v. Basnett, 389 So. 2d 995
(1980), where we held “that a recipient may rely on the
truth of a representation, even though its falsity could have

633

been ascertained had he made an investigation, unless he
knows the representation to be false or its falsity is obvious
to him.” Id. at 998.
In determining whether a seller of a home has a duty to
disclose latent material defects to a buyer, the established
tort law distinction between misfeasance and nonfeasance,
action and inaction must carefully be analyzed. The highly
individualistic philosophy of the earlier common law
consistently imposed liability upon the commission of
affirmative acts of harm, but shrank from converting the
courts into an institution for forcing men to help one
another. This distinction is deeply rooted in our case law.
Liability for nonfeasance has therefore been slow to receive
recognition in the evolution of tort law.
In theory, the difference between misfeasance and
nonfeasance, action and inaction is quite simple and
obvious; however, in practice it is not always easy to draw
the line and determine whether conduct is active or passive.
That is, where failure to disclose a material fact is calculated
to induce a false belief, the distinction between
concealment and affirmative representations is tenuous.
Both proceed from the same motives and are attended with
the same consequences; both are violative of the principles
of fair dealing and good faith; both are calculated to
produce the same result; and, in fact, both essentially have
the same effect.
Still there exists in much of our case law the old tort notion
that there can be no liability for nonfeasance. The courts in
some jurisdictions, including Florida, hold that where the
parties are dealing at arms’s length and the facts lie equally
open to both parties, with equal opportunity of
examination, mere nondisclosure does not constitute a
fraudulent concealment. See Ramel v. Chasebrook Construction
Co., 135 So.2d 876 (Fla. 2d DCA 1961). The Fourth
District affirmed that rule of law in Banks v. Salina, 413
So.2d 851 (Fla. 4th DCA 1982), and found that although

634

the sellers had sold a home without disclosing the presence
of a defective roof and swimming pool of which the sellers
had knowledge, “[i]n Florida, there is no duty to disclose
when parties are dealing at arms length.” Id. at 852.
These unappetizing cases are not in tune with the times and
do not conform with current notions of justice, equity and
fair dealing. One should not be able to stand behind the
impervious shield of caveat emptor and take advantage of
another’s ignorance. Our courts have taken great strides
since the days when the judicial emphasis was on rigid rules
and ancient precedents. Modern concepts of justice and fair
dealing have given our courts the opportunity and latitude
to change legal precepts in order to conform to society’s
needs. Thus, the tendency of the more recent cases has
been to restrict rather than extend the doctrine of caveat
emptor. The law appears to be working toward the ultimate
conclusion that full disclosure of all material facts must be
made whenever elementary fair conduct demands it.
The harness placed on the doctrine of caveat emptor in a
number of other jurisdictions has resulted in the seller of a
home being liable for failing to disclose material defects of
which he is aware. This philosophy was succinctly
expressed in Lingsch v. Savage, 213 Cal. App. 2d 729 (1963):
It is now settled in California that
where the seller knows of facts
materially affecting the value or
desirability of the property which are
known or accessible only to him and
also knows that such facts are not
known to or within the reach of the
diligent attention and observation of
the buyer, the seller is under a duty to
disclose them to the buyer.
In Posner v. Davis, 76 Ill. App.3d 638 (1979), buyers brought
an action alleging that the sellers of a home fraudulently

635

concealed certain defects in the home which included a
leaking roof and basement flooding. Relying on Lingsch, the
court concluded that the sellers knew of and failed to
disclose latent material defects and thus were liable for
fraudulent concealment. Numerous other jurisdictions have
followed this view in formulating law involving the sale of
homes. See Flakus v. Schug, 213 Neb. 491 (1983) (basement
flooding); Thacker v. Tyree, 297 S.E.2d 885 (W.Va.1982)
(cracked walls and foundation problems); Maguire v. Masino,
325 So. 2d 844 (La.Ct.App.1975) (termite infestation);
Weintraub v. Krobatsch, 64 N.J. 445, 317 A.2d 68 (1974)
(roach infestation); Cohen v. Vivian, 141 Colo. 443, 349 P.2d
366 (1960) (soil defect).
We are of the opinion, in view of the reasoning and results
in Lingsch, Posner and the aforementioned cases decided
in other jurisdictions, that the same philosophy regarding
the sale of homes should also be the law in the state of
Florida. Accordingly, we hold that where the seller of a
home knows of facts materially affecting the value of the
property which are not readily observable and are not
known to the buyer, the seller is under a duty to disclose
them to the buyer. This duty is equally applicable to all
forms of real property, new and used.
In the case at bar, the evidence shows that the Johnsons
knew of and failed to disclose that there had been problems
with the roof of the house. Mr. Johnson admitted during
his testimony that the Johnsons were aware of roof
problems prior to entering into the contract of sale and
receiving the $5,000 deposit payment. Thus, we agree with
the district court and find that the Johnsons’ fraudulent
concealment also entitles the Davises to the return of the
$5,000 deposit payment plus interest. We further find that
the Davises should be awarded costs and fees.
The decision of the Third District Court of Appeals is
hereby approved.

636

It is so ordered.
BOYD, Chief Justice, dissenting.
I respectfully but strongly dissent to the Court’s expansion
of the duties of sellers of real property. This ruling will give
rise to a flood of litigation and will facilitate unjust
outcomes in many cases. If, as a matter of public policy, the
well settled law of this state on this question should be
changed, the change should come from the legislature.
Moreover, I do not find sufficient evidence in the record to
justify rescission or a finding of fraud even under present
law. I would quash the decision of the district court of
appeal.
My review of the record reveals that there is not adequate
evidence from which the trier of fact could have found any
of the following crucial facts: (a) that at the time Johnson
told Mrs. Davis about the previous leaks that had been
repaired, he knew that there was a defect in the roof; (b)
that at that time or the time of the execution of the
contract, there were in fact any defects in the roof; (c) that
it was not possible to repair the roof to “watertight”
condition before closing.
As the district court and this Court’s majority have implied
but have not stated, we are hampered by the lack of specific
written findings by the trial court on issues of fact and the
application of the law to the facts. Some of the issues on
which specific findings would be helpful are:
(a) what was the condition of the roof at the time of
the discussion between Mr. Johnson and Mrs. Davis
after the Davises had paid the partial deposit of $5,000
and before they paid the additional $26,000, and had it
in fact leaked more recently than 1979?
(b) what was the extent of Mr. Johnson’s knowledge
of the condition of the roof at the time of the signing
of the contract and at the time of the conversation?

637

(c) during that conversation, did Mr. Johnson say that
there were no problems with the roof or that he had
not experienced any problems with it since the time of
the previous repairs?
(d) was it possible, and at what cost, to repair the roof
to watertight condition and had the sellers complied
with their contractual obligation by offering to do so?
On these crucial questions, there is insufficient evidence to
justify a finding of fraudulent misrepresentation or
nondisclosure of material facts.
It should be noted that very soon after first seeing the
house, the purchasers agreed to buy it for $310,000 and
paid a deposit of $5,000. Of course they had full
opportunity to inspect the house and to have it inspected
by experts before they contracted to buy it. The contract of
sale provided that prior to closing, the buyers would have
the opportunity to have the roof inspected by a licensed
roofer and that the seller would pay for repairs necessary to
correct any leaks found and to restore the roof to
watertight condition. Rather than demand that the
necessary repairs be made, the purchasers announced that
they would not complete the sale and demanded return of
their deposit. The sellers indicated that they were willing to
repair the leaks and make the roof watertight but were not
prepared to go beyond their contractual obligation by
undertaking to ensure “future watertight integrity” of the
roof as demanded by the purchasers. The buyers had
agreed that in the event of a breach by them, the sellers
could retain the deposit paid as liquidated damages.
The district court of appeal referred to evidence showing
that Mr. Johnson told Mrs. Davis about previous leaks that
had been repaired. From this fact the district court found
that Mr. Johnson had knowledge that the roof was in a
defective condition at the time of the conversation. This
evidence simply does not provide substantial, competent

638

evidence to support the factual conclusion drawn by the
third district.
Homeowners who attempt to sell their houses are typically
in no better position to measure the quality, value, or
desirability of their houses than are the prospective
purchasers with whom such owners come into contact.
Based on this and related considerations, the law of Florida
has long been that a seller of real property with
improvements is under no duty to disclose all material
facts, in the absence of a fiduciary relationship, to a buyer
who has an equal opportunity to learn all material
information and is not prevented by the seller from doing
so. See, e.g., Ramel v. Chasebrook Construction Co., 135 So.2d
876 (Fla. 2d DCA 1961). This rule provides sufficient
protection against overreaching by sellers, as the wise and
progressive ruling in the Ramel case shows. The Ramel
decision is not the least bit “unappetizing.”
The majority opinion sets forth the elements of actionable
fraud as they are stated in Huffstetler v. Our Home Life Ins.
Co., 67 Fla. 324, 65 So.1 (1914). Those elements were not
established by sufficient evidence in this case. There was no
competent, substantial evidence to show that Mr. Johnson
made a false statement knowing it to be false. There was
absolutely no evidence that the statement was made with
the intention of causing Mrs. Davis to do anything; she had
already contracted to purchase the house. There was no
competent evidence that Mrs. Davis in fact relied on Mr.
Johnson’s statement or was influenced by it to do anything.
And the only detriment or injury that can be found is that,
when the Davises subsequently decided not to complete
the transaction, they stood to forfeit the additional $26,000
deposit paid in addition to the original $5,000. The Davises
had already agreed to pay the additional deposit at the time
of the conversation. They had to pay the additional deposit
if they wanted to preserve their rights under the contract.
They chose to do so. Mr. Johnson’s statements, even if we

639

believe Mrs. Davis’ version of them rather than Mr.
Johnson’s, did not constitute the kind of representation
upon which a buyer’s reliance is justified.
I do not agree with the Court’s belief that the distinction
between nondisclosure and affirmative statement is weak or
nonexistent. It is a distinction that we should take special
care to emphasize and preserve. Imposition of liability for
seller’s nondisclosure of the condition of improvements to
real property is the first step toward making the seller a
guarantor of the good condition of the property. Ultimately
this trend will significantly burden the alienability of
property because sellers will have to worry about the
possibility of catastrophic post-sale judgments for damages
sought to pay for repairs. The trend will proceed somewhat
as follows. At first, the cause of action will require proof of
actual knowledge of the undisclosed defect on the part of
the seller. But in many cases the courts will allow it to be
shown by circumstantial evidence. Then a rule of
constructive knowledge will develop based on the
reasoning that if the seller did not know of the defect, he
should have known about it before attempting to sell the
property. Thus the burden of inspection will shift from the
buyer to the seller. Ultimately the courts will be in the
position of imposing implied warranties and guaranties on
all sellers of real property.
Although as described in the majority opinion this change
in the law sounds progressive, high-minded, and idealistic,
it is in reality completely unnecessary. Prudent purchasers
inspect property, with expert advice if necessary, before
they agree to buy. Prudent lenders require inspections
before agreeing to provide purchase money. Initial deposits
of earnest money can be made with the agreement to
purchase being conditional upon the favorable results of
expert inspections. It is significant that in the present case
the major portion of the purchase price was to be financed
by the Johnsons who were to hold a mortgage on the

640

property. If they had been knowingly trying to get rid of
what they knew to be a defectively constructed house, it is
unlikely that they would have been willing to lend $200,000
with the house in question as their only security.
I would quash the decision of the district court of appeal.
This case should be remanded for findings by the trial court
based on the evidence already heard. The action for
rescission based on fraud should be dismissed. The only
issue is whether the Johnsons were in compliance with the
contract at the time of the breach by the Davises. Resolving
this issue requires a finding of whether the roof could have
been put in watertight condition by spot repairs or by reroofing and in either case whether the sellers were willing
to fulfill their obligation by paying for the necessary work.
If so, the Johnsons should keep the entire $31,000 deposit.
4.2.2. The Deed
State of Georgia County of ss
General Warranty Deed
This indenture, made ____, between ____, of [mailing
address], grantor, and ____, of [mailing address], grantee.
(The terms “grantor” and “grantee” include the respective
heirs, successors, successors-in-title, executors, legal
representatives and assigns of the parties where the context
requires or permits.)
Grantor, for and in consideration of the sum of $10 paid at
and before the sealing and delivery of this instrument, and
for other valuable consideration, the receipt and sufficiency
of which is acknowledged, has granted, bargained, sold,
aliened, conveyed and confirmed, and by these presents
does grant, bargain, sell, alien, convey and confirm to
grantee, all of that certain tract or parcel of land lying and
being in Land Lot ____, ____ District, ____ County,
Georgia, as more particularly described as follows: [or in
the alternative: as more particularly described in Exhibit

641

(A), attached and incorporated into this instrument by
reference].
To have and to hold the property, together with all and
singular the rights, members and appurtenances thereof, to
the same belonging or in any way appertaining, to the only
proper use and benefit of grantee in fee simple.
This deed is made expressly subject to the permitted title
exceptions set forth on Exhibit [B], attached and
incorporated into this instrument by reference.
Subject to the title matters set forth above, grantor will
warrant and forever defend the right and title of grantee to
the tract or parcel of land described above against the
claims of all persons and entities.
In witness, grantor has signed, sealed and delivered this
deed the day and year written above.
[Signature of grantor, with name typed underneath]
Signed, sealed and delivered in the presence of .
[Signature of unofficial witness]
[Notary Public]
My commission expires ____.
Notes on Deeds
This is only a quick sketch of the “deed” portion of the real estate
transaction. It is meant to give an overview of the process and
highlight some of the major issues.
Deeds are just a kind of contract, representing the transfer of real
property from one person to another. Once executed by a grantor,
the deed replaces the sales contract as the complete agreement
between parties. The buyer of real estate, after delivery of the deed,
can only sue on the warranties in deed, not on promises in the real
estate contract. Deeds must satisfy certain elements in order to be

642

valid: a recitation of the parties, a description of property,1 an
intent to transfer the property immediately, the signature of
grantor, and delivery to the grantee.
Rather than the manifold promises one could find in a contract,
deeds contain certain, fixed promises. Some states, like Illinois,
have statutes that translate deed language into certain, canonical
deed types. The promises that are enforceable from a deed are
determined by its type.2 Luckily, there are only three major types:
the General Warranty deed (the strongest set of promises), the
Special Warranty Deed (warranting only against title defects arising
during the grantor’s ownership), and the Quitclaim Deed
(promising only to grant what the grantor has, which may be
nothing).
The warranties, or covenants (or promises - all the same thing),
contained in a General Warranty Deed are as follows:
Covenant of seisin and good right to convey. Seisin means legal
possession. You’re promising that you have legal possession and
the legal right to sell what you’re selling. This promise is breached,
if at all, at the moment of transfer.
Covenant against encumbrances. You may have the lawful right to
convey the property, but someone else owns some piece
(geographic or conceptual) of the property. You’re promising that
you’ve disclosed all such encumbrances. For example, you’re
promising there is no undisclosed utility easement on the property.
Like the above covenants, this promise is breached, if at all, at the
moment of transfer.
Covenant of quiet enjoyment. You’re promising that you will
defend against someone who claims title. This obligation arises, if

1 The “good lead doctrine” requires that a description provide a way to discover

with certainty the land granted. For example, granting “all of my land” in Clarke
County does just that. Granting “some of my land” in Clarke County provides no
way of knowing what was granted.
2 The enforceable promises in deeds are known as “warranties,” but they’re no

different from promises or terms in a contract.

643

at all, only when someone actually disturbs the grantee’s ownership.
(This is the key to understanding the Brown v. Lober case.3)
Deeds are important for an additional reason: they can provide
notice to others as to the ownership status of real estate. You can’t
carry land around with you, wear it, get your arms around it, or kill
it (well, sadly, you kind of can). It’s hard to signify to others that
you own land. Fencing and cultivation provide some notice. But
the ownership of land is necessarily abstract. How can I tell
whether I’m being ripped off by a purported seller of land: how do
I know that he or she owns that land and hasn’t already granted the
same land to someone else.
A system whereby the ownership of land can be determined by
searching records helps solve the problem of uncertainty in land
ownership. The idea is to place deeds, meeting the requirements
above, in a centralized, public location. Because each deed records
the grantor and grantee, you can, with an appropriate index, trace
title down through preceding owners, presumably all the way to a
patent from the sovereign.4
Suppose I want to know whether the seller has the power to
convey the land I wish to buy. I can go to the land office, and look
up my seller in a Grantee Index, finding the deed conveying the
land to the seller. I would then look in the Grantor Index and look
for any conveyances from the seller after he or she received the
land (to be sure I’m not buying land that’s already been conveyed).
Satisfied with that, I then look up my seller’s grantor in the Grantee
Index. Even though I now know that my seller acquired a deed and
didn’t convey the land since, how do I know that the seller
acquired good title from his or her grantor? So I look up seller’s
3 In Brown v. Lober, the sellers, the Bosts (succeeded by Ms. Lober) did not own all

they claimed, namely 2/3 of the subsurface coal. Thus, their promises in their
general warranty deed as to seisin and the absence of encumbrances were
probably in error. But that was a long time ago… too long under the statute of
limitations. And yet, the owners of that encumbrance have not come forward to
disturb possession, so the buyers, the Browns, can’t yet sue Lober for failing to
defend and guaranteeing quiet enjoyment of what was purported to be conveyed.
4 A patent is just a deed from the sovereign, rather than from a private individual.

644

grantor in the Grantee Index and find the deed that conveyed the
property to him or her. And then I look in the Grantor Index for
deeds from that date conveying part or all of the property before
the conveyance to my seller.
Sounds complex, but it’s pretty mechanical. Upshot is that you
keep doing this, going all the way back to the sovereign patent, at
that point sure that the title being offered to you is good. The
problem is that that may be a long way back. In England, for
example, it’s not even feasible. And so we have Marketable Title
legislation to the rescue, that makes an apparently good title truly
good if a search thirty or forty years back yields no contrary grants
and if there have been no contrary claims in that time.
Even though all of this gives some assurance, as a buyer investing a
lot of money, I will probably want, and my bank will probably
insist on, title insurance. This insurance protects me against claims
arising from a title problem down the road (as could happen if
there was a mistake in the title search, for example). There are
companies that help produce the information needed for all this,
maintaining their own “title plants,” separate from the public land
office. These companies collect not only all recorded deeds, but
also other public records that may affect title. They keep, and other
companies may also produce, “abstract of title,” which are the
collections of all the documents related to a piece of property.
Despite this effort, things can go wrong. People can fail to record
their interests, or record them improperly. What should we do
when an unscrupulous grantor grants the same land twice? First,
note that the grantor is always on the hook for damages, but let’s
assume he or she has fled the scene or has not assets to make the
disappointed buyers whole.
The common law rule was “first in time, first in right.” Based on
the idea that one can’t give away more than he or she owns, the
rule would award the property to the first buyer, and the second
buyer would take nothing.
Recording statutes make an exception to this common law rule,
giving absolute protection to the first buyer only when he or she

645

records title right away. There are basically three kinds of statutes
that do this, and each works a little differently. We will go over
some examples in class, but here is a description of the statutes:


The race statute: The first grantee to record a deed from
the grantor prevails against all other grantees, regardless of
the order in which the grants were received. This sets up a
“race” to the land office.



The notice statute: The last purchaser who took without
notice of any other grants is the winner. Recording
constitutes notice. And so the first purchaser can always
protect himself in such a jurisdiction by recording right
away. But if he fails to do so, and grantor grants the same
land to another who has no idea of the first grant, that later
grantee will win the land.



The race-notice statute: The last purchaser wins if she had
no notice at the time of the grant and records first. This
differs from notice in, for example, the following scenario:
A takes Blackacre from O. O then grants Blackacre again to
B, who has no idea about the earlier grant, which is not yet
recorded. A then records, before B records. In a notice
jurisdiction, B would win, as the last purchaser without
notice. In a race-notice jurisdiction, A would win, because
although B had no notice of the grant to A, B failed to
record first.

As mentioned above, recorded deeds generally give notice. But
problems can arise if the deed is “outside of the chain of title.” For
example, O grants to A before the grant from X to O. B will not
find the deed to A if only looking for grants from O after the grant
from X to O. We will read such a case in this section to see how
this might happen.
Brown v. Lober, 75 Ill.2d 547 (1979)
Maureen M. Lober, Litchfield (Gerald Patrick Huber,
Raymond, of counsel), for appellant.

646

Paul McWilliams, of McWilliams & McWilliams, Litchfield,
for appellees.
UNDERWOOD, Justice:
Plaintiffs instituted this action in the Montgomery County
circuit court based on an alleged breach of the covenant of
seisin in their warranty deed. The trial court held that
although there had been a breach of the covenant of seisin,
the suit was barred by the 10-year statute of limitations in
section 16 of the Limitations Act (Ill. Rev. Stat. 1975, ch.
83, par. 17). Plaintiffs’ post-trial motion, which was based
on an alleged breach of the covenant of quiet enjoyment,
was also denied. A divided Fifth District Appellate Court
reversed and remanded. We allowed the defendant’s
petition for leave to appeal.
The parties submitted an agreed statement of facts which
sets forth the relevant history of this controversy. Plaintiffs
purchased 80 acres of Montgomery County real estate from
William and Faith Bost and received a statutory warranty
deed (Ill. Rev. Stat. 1957, ch. 30, par. 8), containing no
exceptions, dated December 21, 1957. Subsequently,
plaintiffs took possession of the land and recorded their
deed.
On May 8, 1974, plaintiffs granted a coal option to
Consolidated Coal Company (Consolidated) for the coal
rights on the 80-acre tract for the sum of $6,000.
Approximately two years later, however, plaintiffs
“discovered” that they, in fact, owned only a one-third
interest in the subsurface coal rights. It is a matter of public
record that, in 1947, a prior grantor had reserved a twothirds interest in the mineral rights on the property.
Although plaintiffs had their abstract of title examined in
1958 and 1968 for loan purposes, they contend that until
May 4, 1976, they believed that they were the sole owners
of the surface and subsurface rights on the 80-acre tract.
Upon discovering that a prior grantor had reserved a two-

647

thirds interest in the coal rights, plaintiffs and Consolidated
renegotiated their agreement to provide for payment of
$2,000 in exchange for a one-third interest in the
subsurface coal rights. On May 25, 1976, plaintiffs filed this
action against the executor of the estate of Faith Bost,
seeking damages in the amount of $4,000.
The deed which plaintiffs received from the Bosts was a
general statutory form warranty deed meeting the
requirements of section 9 of “An Act concerning
conveyances” (Ill. Rev. Stat. 1957, ch. 30, par. 8). That
section provides:
Every deed in substance in the above
form, when otherwise duly executed,
shall be deemed and held a conveyance
in fee simple, to the grantee, his heirs
or assigns, with covenants on the part
of the grantor, (1) that at the time of
the making and delivery of such deed
he was lawfully seized of an
indefeasible estate in fee simple, in and
to the premises therein described, and
had good right and full power to
convey the same; (2) that the same
were then free from all incumbrances;
and (3) that he warrants to the grantee,
his heirs and assigns, the quiet and
peaceable possession of such premises,
and will defend the title thereto against
all persons who may lawfully claim the
same. And such covenants shall be
obligatory upon any grantor, his heirs
and personal representatives, as fully
and with like effect as if written at
length in such deed.
Ill. Rev. Stat. 1957, ch. 30, par. 8.

648

The effect of this provision is that certain covenants of title
are implied in every statutory form warranty deed.
Subsection 1 contains the covenant of seisin and the
covenant of good right to convey. These covenants, which
are considered synonymous, assure the grantee that the
grantor is, at the time of the conveyance, lawfully seized
and has the power to convey an estate of the quality and
quantity which he professes to convey.
Subsection 2 represents the covenant against incumbrances.
An incumbrance is any right to, or interest in, land which
may subsist in a third party to the diminution of the value
of the estate, but consistent with the passing of the fee by
conveyance.
Subsection 3 sets forth the covenant of quiet enjoyment,
which is synonymous with the covenant of warranty in
Illinois. By this covenant, “the grantor warrants to the
grantee, his heirs and assigns, the possession of the
premises and that he will defend the title granted by the
terms of the deed against persons who may lawfully claim
the same, and that such covenant shall be obligatory upon
the grantor, his heirs, personal representatives, and
assigns.” Biwer v. Martin (1920), 294 Ill. 488, 497.
Plaintiffs’ complaint is premised upon the fact that
“William Roy Bost and Faith Bost covenanted that they
were the owners in fee simple of the above described
property at the time of the conveyance to the
plaintiffs.”While the complaint could be more explicit, it
appears that plaintiffs were alleging a cause of action for
breach of the covenant of seisin. This court has stated
repeatedly that the covenant of seisin is a covenant In
praesenti and, therefore, if broken at all, is broken at the
time of delivery of the deed. Tone v. Wilson (1876), 81 Ill.
529; Jones v. Warner (1876), 81 Ill. 343.
Since the deed was delivered to the plaintiffs on December
21, 1957, any cause of action for breach of the covenant of

649

seisin would have accrued on that date. The trial court held
that this cause of action was barred by the statute of
limitations. No question is raised as to the applicability of
the 10-year statute of limitations (Ill. Rev. Stat. 1975, ch. 83,
par. 17). We conclude, therefore, that the cause of action
for breach of the covenant of seisin was properly
determined by the trial court to be barred by the statute of
limitations since plaintiffs did not file their complaint until
May 25, 1976, nearly 20 years after their alleged cause of
action accrued.
In their post-trial motion, plaintiffs set forth as an
additional theory of recovery an alleged breach of the
covenant of quiet enjoyment. The trial court, without
explanation, denied the motion. The appellate court
reversed, holding that the cause of action on the covenant
of quiet enjoyment was not barred by the statute of
limitations. The appellate court theorized that plaintiffs’
cause of action did not accrue until 1976, when plaintiffs
discovered that they only had a one-third interest in the
subsurface coal rights and renegotiated their contract with
the coal company for one-third of the previous contract
price. The primary issue before us, therefore, is when, if at
all, the plaintiffs’ cause of action for breach of the covenant
of quiet enjoyment is deemed to have accrued.
This court has stated on numerous occasions that, in
contrast to the covenant of seisin, the covenant of warranty
or quiet enjoyment is prospective in nature and is breached
only when there is an actual or constructive eviction of the
covenantee by the paramount titleholder. Biwer v. Martin
(1920), 294 Ill. 488.
The cases are also replete with statements to the effect that
the mere existence of paramount title in one other than the
covenantee is not sufficient to constitute a breach of the
covenant of warranty or quiet enjoyment: “(T)here must be
a union of acts of disturbance and lawful title, to constitute
a breach of the covenant for quiet enjoyment, or warranty *

650

* *.” (Barry v. Guild (1888), 126 Ill. 439.) “(T)here is a
general concurrence that something more than the mere
existence of a paramount title is necessary to constitute a
breach of the covenant of warranty.” (Scott v. Kirkendall
(1878), 88 Ill. 465, 467.) “A mere want of title is no breach
of this covenant. There must not only be a want of title,
but there must be an ouster under a paramount title.” Moore
v. Vail (1855), 17 Ill. 185, 189.
The question is whether plaintiffs have alleged facts
sufficient to constitute a constructive eviction. They argue
that if a covenantee fails in his effort to sell an interest in
land because he discovers that he does not own what his
warranty deed purported to convey, he has suffered a
constructive eviction and is thereby entitled to bring an
action against his grantor for breach of the covenant of
quiet enjoyment. We think that the decision of this court in
Scott v. Kirkendall (1878), 88 Ill. 465, is controlling on this
issue and compels us to reject plaintiffs’ argument.
In Scott, an action was brought for breach of the covenant
of warranty by a grantee who discovered that other parties
had paramount title to the land in question. The land was
vacant and unoccupied at all relevant times. This court, in
rejecting the grantee’s claim that there was a breach of the
covenant of quiet enjoyment, quoted the earlier decision in
Moore v. Vail (1855), 17 Ill. 185, 191:
“Until that time, (the taking possession
by the owner of the paramount title,)
he might peaceably have entered upon
and enjoyed the premises, without
resistance or molestation, which was
all his grantors covenanted he should
do. They did not guarantee to him a
perfect title, but the possession and
enjoyment of the premises.”
88 Ill. 465, 468.

651

Relying on this language in Moore, the Scott court concluded:
We do not see but what this fully
decides the present case against the
appellant. It holds that the mere
existence of a paramount title does not
constitute a breach of the covenant.
That is all there is here. There has been
no assertion of the adverse title. The
land has always been vacant. Appellant
could at any time have taken peaceable
possession of it. He has in no way
been prevented or hindered from the
enjoyment of the possession by any
one having a better right. It was but
the possession and enjoyment of the
premises which was assured to him,
and there has been no disturbance or
interference in that respect. True, there
is a superior title in another, but
appellant has never felt “its pressure
upon him.”
88 Ill. 465, 468-69.
Admittedly, Scott dealt with surface rights while the case
before us concerns subsurface mineral rights. We are,
nevertheless, convinced that the reasoning employed in
Scott is applicable to the present case. While plaintiffs went
into possession of the surface area, they cannot be said to
have possessed the subsurface minerals. “Possession of the
surface does not carry possession of the minerals * * *.
(Citation.) To possess the mineral estate, one must
undertake the actual removal thereof from the ground or
do such other act as will apprise the community that such
interest is in the exclusive use and enjoyment of the
claiming party.” Failoni v. Chicago & North Western Ry. Co.
(1964), 30 Ill.2d 258, 262.

652

Since no one has, as yet, undertaken to remove the coal or
otherwise manifested a clear intent to exclusively “possess”
the mineral estate, it must be concluded that the subsurface
estate is “vacant.” As in Scott, plaintiffs “could at any time
have taken peaceable possession of it. (They have) in no
way been prevented or hindered from the enjoyment of the
possession by any one having a better right.” (88 Ill. 465,
468.) Accordingly, until such time as one holding
paramount title interferes with plaintiffs’ right of
possession (E.g., by beginning to mine the coal), there can
be no constructive eviction and, therefore, no breach of the
covenant of quiet enjoyment.
What plaintiffs are apparently attempting to do on this
appeal is to extend the protection afforded by the covenant
of quiet enjoyment. However, we decline to expand the
historical scope of this covenant to provide a remedy where
another of the covenants of title is so clearly applicable. As
this court stated in Scott v. Kirkendall (1878), 88 Ill. 465, 469:
To sustain the present action would be
to confound all distinction between
the covenant of warranty and that of
seizin, or of right to convey. They are
not equivalent covenants. An action
will lie upon the latter, though there be
no disturbance of possession. A defect
of title will suffice. Not so with the
covenant of warranty, or for quiet
enjoyment, as has always been held by
the prevailing authority.
The covenant of seisin, unquestionably, was breached when
the Bosts delivered the deed to plaintiffs, and plaintiffs
then had a cause of action. However, despite the fact that it
was a matter of public record that there was a reservation
of a two-thirds interest in the mineral rights in the earlier
deed, plaintiffs failed to bring an action for breach of the
covenant of seisin within the 10-year period following

653

delivery of the deed. The likely explanation is that plaintiffs
had not secured a title opinion at the time they purchased
the property, and the subsequent examiners for the lenders
were not concerned with the mineral rights. Plaintiffs’
oversight, however, does not justify us in overruling earlier
decisions in order to recognize an otherwise premature
cause of action. The mere fact that plaintiffs’ original
contract with Consolidated had to be modified due to their
discovery that paramount title to two-thirds of the
subsurface minerals belonged to another is not sufficient to
constitute the constructive eviction necessary to a breach of
the covenant of quiet enjoyment.
Finally, although plaintiffs also have argued in this court
that there was a breach of the covenant against
incumbrances entitling them to recovery, we decline to
address this issue which was argued for the first time on
appeal. It is well settled that questions not raised in the trial
court will not be considered by this court on appeal. Kravis
v. Smith Marine, Inc. (1975), 60 Ill.2d 141.
Accordingly, the judgment of the appellate court is
reversed, and the judgment of the circuit court of
Montgomery County is affirmed.
Sabo v. Horvath, 559 P.2d 1038 (Alaska 1975)
Trigg T. Davis, Owens, Davis & Bartlett, Anchorage, for
appellants.
Suzanne Pestinger, Birch, Jermain, Horton & Bittner,
Anchorage, for appellee.
Before BOOCHEVER, Chief Justice, and RABINOWITZ,
CONNOR, ERWIN and BURKE, Justices.
BOOCHEVER, Chief Justice.
This appeal arises because Grover C. Lowery conveyed the
same five-acre piece of land twice-first to William A.
Horvath and Barbara J. Horvath and later to William Sabo
and Barbara Sabo. Both conveyances were by separate

654

documents entitled ‘Quitclaim Deeds.’ Lowery’s interest in
the land originates in a patent from the United States
Government under 43 U.S.C. s 687a (1970) ( ‘Alaska
Homesite Law’). Lowery’s conveyance to the Horvaths was
prior to the issuance of patent, and his subsequent
conveyance to the Sabos was after the issuance of patent.
The Horvaths recorded their deed in the Chitna Recording
District on January 5, 1970; the Sabos recorded their deed
on December 13, 1973. The transfer to the Horvaths,
however, predated patent and title, and thus the Horvaths’
interest in the land was recorded ‘outside the chain of title.’
Mr. Horvath brought suit to quiet title, and the Sabos
counterclaimed to quiet their title.
In a memorandum opinion, the superior court ruled that
Lowery had an equitable interest capable of transfer at the
time of his conveyance to the Horvaths and further said the
transfer contemplated more than a ‘mere quitclaim’-it
warranted patent would be transferred. The superior court
also held that Horvath had the superior claim to the land
because his prior recording had given the Sabos
constructive notice for purposes of AS 34.15.290.1 The
Sabos’ appeal raises the following issues:
1. Under 43 U.S.C. s 687a (1970), when did Lowery
obtain a present equitable interest in land which he
could convey?
2. Are the Sabos, as grantees under a quitclaim deed,
‘subsequent innocent purchaser(s) in good faith’?

1 AS 34.15.290 states:

A conveyance of real property in the state hereafter made,
other than a lease for a term not exceeding one year, is
void as against a subsequent innocent purchaser or
mortgagee in good faith for a valuable consideration of
the property or a portion of it, whose conveyance is first
duly recorded. An unrecorded instrument is valid as
between the parties to it and as against one who has actual
notice of it.

655

3. Is the Horvaths’ first recorded interest, which is
outside the chain of title, constructive notice to
Sabo?
We affirm the trial court’s ruling that Lowery had an
interest to convey at the time of his conveyance to the
Horvaths. We further hold that Sabo may be a ‘good faith
purchaser’ even though he takes by quitclaim deed. We
reverse the trial court’s ruling that Sabo had constructive
notice and hold that a deed recorded outside the chain of
title is a ‘wild deed’ and does not give constructive notice
under the recording laws of Alaska.2
The facts may be stated as follows. Grover C. Lowery
occupied land in the Chitna Recording District on October
10, 1964 for purposes of obtaining Federal patent. Lowery
filed a location notice on February 24, 1965, and made his
application to purchase on June 6, 1967 with the Bureau of
Land Management (BLM). On March 7, 1968, the BLM
field examiner’s report was filed which recommended that
patent issue to Lowery. On October 7, 1969, a request for
survey was made by the United States Government. On
January 3, 1970, Lowery issued a document entitled
‘Quitclaim Deed’ to the Horvaths; Horvath recorded the
deed on January 5, 1970 in the Chitna Recording District.
Horvath testified that when he bought the land from
Lowery, he knew patent and title were still in the United
States Government, but he did not rerecord his interest
after patent had passed to Lowery.
Following the sale to the Horvaths, further action was
taken by Lowery and the BLM pertaining to the application

2 Because we hold Lowery had a conveyable interest under the Federal statute, we

need not decide issues raised by the parties regarding after-acquired property and
the related issue of estoppel by deed.

656

for patent3 and culminating in issuance of the patent on
August 10, 1973.
Almost immediately after the patent was issued, Lowery
advertised the land for sale in a newspaper. He then
executed a second document also entitled ‘quitclaim’ to the
Sabos on October 15, 1973. The Sabos duly recorded this
document on December 13, 1973.
Luther Moss, a representative of the BLM, testified to
procedures followed under the Alaska Homesite Law (43
U.S.C. s 687a (1970)). After numerous steps,4 a plat is
approved and the claimant notified that he should direct
publication of his claim. In this case, Lowery executed his
conveyance to the Horvaths after the BLM field report had
recommended patent.

3 On February 16, 1970, special instructions were given regarding survey. On June

14, 1972, mineral deposit reservations were made. On December 7, 1972, Lowery
published his application. Affidavit of posting was made on March 15, 1973, and
on June 28, 1973, the BLM notified Lowery that $12.50 payment must be made
for the land.
4 The entire process from the time the claimant decides on a homesite until the

patent is passed is quite involved. A notice of location is filed with the BLM by
the claimant. After filing of the notice of location, the claim normally proceeds
within a five-year statutory period until the claimant is notified that he should
submit application to purchase. After application to purchase, BLM requests a
field report on the matter, and a realty specialist examines the land. He writes a
report and makes his recommendation concerning compliance with the
appropriate statute. If the field examiner recommends approval, a request for
survey is prepared. The claim is then surveyed, and the plat of survey is forwarded
to Washington, D. C. for approval. After it is approved and accepted by the Chief,
Division of Cadastral Survey, it is returned to the Alaska State Office for filing.
The claimant is then notified that he should direct publication of his claim in the
nearest newspaper. In the case of a special survey, publication continues
throughout a nine-week period. The newspaper submits proof of publication to
the case file, and the claimant must submit an affidavit of posting to purchase the
claim along with the appropriate map and his application for purchase. After all
this is completed, the matter is finally reviewed. All reservations to the United
States Government are summarized, and a final certificate is prepared. Upon
signing of the final certificate, a patent is typed, reviewed several times, signed and
sealed and the patent number is affixed. The patent is then mailed certified mail to
the claimant.

657

The first question this court must consider is whether
Lowery had an interest to convey at the time of his transfer
to the Horvaths. Lowery’s interest was obtained pursuant
to patent law 43 U.S.C. s 687a (1970) commonly called the
‘Alaska Homesite Law’.5 Since Lowery’s title to the
5 43 U.S.C. s 687a (1970) states:

Rights to purchase; price and limit of acreage; access to water front
Any citizen of the United States twenty-one years of age,
or any association of such-citizens, or any corporation
incorporated under the laws of the United States or of any
State or Territory authorized on May 14, 1898, by law to
hold lands in the Territories, thereafter in the possession
of and occupying public lands in Alaska in good faith for
the purposes of trade, manufacture, or other productive
industry, may each purchase one claim only not exceeding
eighty acres of such land for any one person, association,
or corporation, at $2.50 per acre, upon submission of
proof that said area embraces improvements of the
claimant and is needed in the prosecution of such trade,
manufacture, or other productive industry, such tract of
land not to include mineral or coal lands except as
provided in section 270-1 of this title, and ingress and
egress shall be reserved to the public on the waters of all
streams, whether navigable or otherwise: Provided, That
any citizen of the United States twenty-one years of age
employed by citizens of the United States, associations of
such citizens, or by corporations organized under the laws
of the United States, or of any State of Territory, whose
employer is engaged in trade, manufacture, or other
productive industry may purchase one claim, not
exceeding five acres, of unreserved public lands, such tract
of land not to include mineral, coal, oil or gas lands except
as provided in section 270-1 of this title, in Alaska as a
homestead or headquarters, under rules and regulations to
be prescribed by the Secretary of the Interior, upon
payment of $2.50 per acre: Provided further, That any
citizen of the United States, after occupying land of the
character described as a homestead or headquarters, in a
habitable house, not less than five months each year for
three years, may purchase such tract, not exceeding five
acres, in a reasonable compact form, without any showing
as to his employment or business, upon payment of $2.50
per acre, under rules and regulations to be prescribed by
the Secretary of the Interior, and in such cases surveys
may be made without expense to the applicants in like
manner as the survey of settlement claims under sections

658

property was contingent upon the patent ultimately issuing
from the United States Government and since Lowery’s
conveyance to the Horvaths predated issuance of the
patent, the question is ‘at what point in the pre-patent chain
of procedures does a person have a sufficient interest in a
particular tract of land to convey that land by quitclaim
deed.’ Willis v. City of Valdez, 546 P.2d 570, 575 (Alaska
1976).
Here we must determine whether Congress, in passing 43
U.S.C. s 687a (1970), intended to prohibit the prepatent
conveyance by Lowery. This court has upheld early
conveyances under the Soldiers’ Additional Homestead
Act, 43 U.S.C. ss 271-74. Willis v. City of Valdez, supra at
575. However, cases decided under other patent laws
prohibit alienation at early stages in the ‘pre-patent chain.’6
We have found no recorded legislative history of 43 U.S.C.
s 687a (1970) which assists us, and case law decided under
this statute and its statutory predecessors does not clarify at
what point in the prepatent chain alienation is permitted.7
We note initially that 43 U.S.C. s 687a (1970) and the
regulations administering the Alaska Homesite Law are
silent as to alienability. In the context of land patent law,
this silence is significant. By comparison, the general
homestead laws specifically prohibit alienation prior to final
270-10 and 270-15 of this title: And provided further,
That the minimum payment for any such tract shall be
$10, and no person shall be permitted to purchase more
than one tract except upon a showing of good faith and
necessity satisfactory to the Secretary of the Interior.
6 Bailey v. Sanders, 228 U.S. 603, 609, 33 S.Ct. 602, 57 L.Ed. 985, 989 (1913);

Anderson v. Carkins, 135 U.S. 483, 487, 10 S.Ct. 905, 34 L.Ed. 272, 274 (1890);
Moffitt v. Bulson, 96 Cal. 106, 30 P. 1022, 1023 (1893); Harris v. McCrary, 17
Idaho 300, 105 P. 558, 559 (1909); Ronquillo v. Sandoval, 71 N.M. 459, 379 P.2d
611, 613 (1962); McDonald v. Lambert, 43 N.M. 27, 85 P.2d 78, 85 (1938);
Howard v. Standolind Oil & Gas Co., 197 Okl. 269, 169 P.2d 737, 741-42 (1946).
7 United States v. Buchanan, 232 U.S. 72, 76, 34 S.Ct. 237, 58 L.Ed. 511, 514

(1914); Russian-American Packing Co. v. United States, 199 U.S. 570, 26 S.Ct.
157, 50 L.Ed. 314 (1905).

659

proof by requiring the filing of an affidavit which states
under oath that ‘no part of such land has been alienated…
.’43 U.S.C. s 164 (1964). Homestead regulations further
specify nonalienation prior to affidavit and final proof.8
Cases decided under patent laws which contain specific
prohibition against alienation have uniformly held that an
attempted conveyance prior to final proof precludes patent
from issuing from the United States Government, and such
conveyances are held entirely void and unenforceable
between the parties.9
The importance of the Alaska Homesite Law’s silence with
respect to alienation is again underlined by the fact that
Congress extended the anti-alienation provision of the
general homestead laws to the Alaska Homestead Act, 43
U.S.C. s 270 (1970).10

8 General Homestead Regulation, 43 C.F.R. s 2511.2(a) (1975) states:

Alienation of all or part of claim; ….
(1) The alienation of all or part of the land embraced in a
homestead prior to making proof except for the public
purposes mentioned … will prevent the entryman from
making satisfactory proof, since he is required to swear
that he has not alienated any part of the land … .
9 See note 5, supra.
10 The Alaska Homestead Act specifically states:

The right of any homestead settler to transfer any portion
of the land so settled upon, as provided by section 174 of
(Title 43), shall be restricted and limited within the
Territory of Alaska as follows: …, and all contracts by the
settlor made before his receipt of patent from the
Government, for the conveyance of the land homesteaded
by him or her, except as herein provided, shall be held null
and void.

The regulations promulgated pursuant to Alaska Homestead Act, 43 C.F.R. s
2567.7(c) (1975) state:
In Alaska as elsewhere in the United States, a forfeiture of
the claim results from a transfer of any part of the land or
of any interest therein before the submission of the proof,
with certain exceptions specified by law.

660

It is clear from the provision in the Alaska Homestead Act,
the general homestead laws, and the regulations
promulgated pursuant to them, that Congress and the BLM
knew how specifically to prohibit alienation. Their failure to
prohibit alienation in the Alaska Homesite Law or
regulations therefore is quite significant. In Willis v. Valdez,
supra at 574 n.7, we cited Barnes v. Poirier, 64 F. 14, 18
(8th Cir. 1894), which points to the significance of the
absence of a specific alienation clause in the Soldiers’
Additional Homestead statute. Numerous cases relating to
United States land patents under other statutes hold that
the silence of land patent statutes is determinative of the
issue of alienability.11 Significantly, the United States
Supreme Court has stated:
There is no requirement … that the
entryman shall make oath that he has
not alienated any interest in the land.
The policy of the government to
require such affidavit when it intends
to make it a condition precedent to
granting a title was indicated in the
homestead act, and could readily have
been pursued by a similar provision in
the timber culture act if it was
intended to extend the principle to
that statute … .
… If the entryman has complied with
the statute and made the entry in good
faith, in accordance with the terms of
the law and the oath required of him
upon making such entry, and has done

11 Sylvester v. Washington, 215 U.S. 80, 86, 30 S.Ct. 25, 54 L.Ed. 101, 105 (1909);

Adams v. Church, 193 U.S. 510, 516-17, 24 S.Ct. 512, 48 L.Ed. 769, 771-72
(1904); Lamb v. Davenport, 85 U.S. (18 Wall.) 307, 314, 21 L.Ed. 759, 761 (1873);
Phillips v. Carter, 135 Cal. 604, 67 P. 1031, 1032 (1902) (Desert Land Act of
1877); and McKennon v. Winn, 1 Okl. 327, 33 P. 582, 585 (1893) (Federal
Townsite Claim Act).

661

nothing inconsistent with the terms of
the law, we find nothing in the fact
that, during his term of occupancy, he
has agreed to convey an interest, to be
conveyed after patent issued, which
will defeat his claim and forfeit the
right acquired by planting the trees and
complying with the terms of the law.
Had Congress intended such result to
follow from the alienation of an
interest after an entry in good faith, it
would have so declared in the law.
(citation omitted)
Adams v. Church, 193 U.S. at 515-17, 24 S.Ct. at 514-515,
48 L.Ed. at 771-72.
It should also be noted that prior to the conveyance to the
Horvaths, Lowery had complied with a substantial portion
of his obligation under the statute and regulations. He had
filed his notice of location and his application to purchase
and had lived on the land the required amount of time. A
BLM field examiner’s report had recommended patent be
issued. It is true that various other events were necessary
prior to the issuance of the patent. After the conveyance, a
survey was conducted, various mineral reservations
claimed, application to purchase was published and the
payment of $12.50 was made to the BLM. We do not think
that the mere fact that steps remained before issuance of
patent precluded the existence of an alienable interest,
where there has been basic compliance with the statutory
demands.
In Willis v. City of Valdez, supra at 578, we held that one
who later secured a patent under the Solders’ Additional
Homestead Act had an interest in land which was alienable
at the time that he requested a survey. Here, Lowery had
complied with numerous requirements under the Homesite
Law including those of occupancy, and the BLM had

662

recommended issuance of the patent. Since 43 U.S.C. s
687a (1970) does not prohibit alienation, we hold that at
the time Lowery executed the deed to the Horvaths he had
complied with the statute to a sufficient extent so as to
have an interest in the land which was capable of
conveyance.
Since the Horvaths received a valid interest from Lowery,
we must now resolve the conflict between the Horvaths’
first recorded interest and the Sabos’ later recorded interest.
The Sabos, like the Horvaths, received their interest in the
property by a quitclaim deed. They are asserting that their
interest supersedes the Horvaths under Alaska’s statutory
recording system. AS 34.15.290 provides that:
A conveyance of real property … is
void as against a subsequent innocent
purchaser … for a valuable
consideration of the property …
whose conveyance is first duly
recorded. An unrecorded instrument is
valid … as against one who has actual
notice of it.
Initially, we must decide whether the Sabos, who received
their interest by means of a quitclaim deed, can ever be
‘innocent purchaser(s)’ within the meaning of AS
34.15.290. Since a ‘quitclaim’ only transfers the interest of
the grantor, the question is whether a ‘quitclaim’ deed itself
puts a purchaser on constructive notice. Although the
authorities are in conflict over this issue, the clear weight of
authority is that a quitclaim grantee can be protected by the
recording system, assuming, of course, the grantee
purchased for valuable consideration and did not otherwise
have actual or constructive knowledge as defined by the

663

recording laws.12 We choose to follow the majority rule and
hold that a quitclaim grantee is not precluded from
attaining the status of an ‘innocent purchaser.’
In this case, the Horvaths recorded their interest from
Lowery prior to the time the Sabos recorded their interest.
Thus, the issue is whether the Sabos are charged with
constructive knowledge because of the Horvaths’ prior
recordation. Horvath is correct in his assertion that in the
usual case a prior recorded deed serves as constructive
notice pursuant to AS 34.15.290, and thus precludes a
subsequent, recordation from taking precedence. Here,
however, the Sabos argue that because Horvath recorded
his deed prior to Lowery having obtained patent, they were
not given constructive notice by the recording system. They
contend that since Horvaths’ recordation was outside the
chain of title, the recording should be regarded as a ‘wild
deed’.
It is an axiom of hornbook law that a purchaser has notice
only of recorded instruments that are within his ‘chain of

12 See Note, Deeds-Quitclaim Grantee as a Bona Fide Purchaser, 28 Ore.L.Rev.

258 n. 1 (1949) and the many cases cited therein. See generally, Annot., 59 A.L.R.
632 (1929); Annot., 162 A.L.R. 556, 560-62 (1946); 77 Am.Jur.2d Vendor and
Purchaser, ss 711-13. On the other hand, there is also authority which holds that a
quitclaim grantee cannot be a good faith purchaser. See 28 Ore.L.Rev. 258, at 259
n. 2. See also the territorial case of Crossly v. Campion Mining Co., 1 Alaska 391
(1901). There it was held that a grantee accepting a quitclaim deed with full
knowledge of a prior unrecorded deed was not a subsequent innocent purchaser
in good faith. This case would not be conclusive with respect to quitclaim
grantees who record under a recording system and without actual knowledge. See
also Wickwire v. City and Borough of Juneau, 557 P.2d 783, fn. 7 (Alaska 1976),
holding that the right to recover damages for condemnation is not an interest in
real property which passes by quitclaim deed.

664

title.’13 If a grantor (Lowery) transfers prior to obtaining
title, and the grantee (Horvath) records prior to title
passing, a second grantee who diligently examines all
conveyances under the grantor’s name from the date that
the grantor had secured title would not discover the prior
conveyance. The rule in most jurisdictions which have
adopted a grantor-grantee index system of recording is that
a ‘wild deed’ does not serve as constructive notice to a
subsequent purchaser who duly records.14
Alaska’s recording system utilizes a ‘grantor-grantee’ index.
Had Sabos searched title under both grantor’s and grantee’s
names but limited his search to the chain of title
subsequent to patent, he would not be chargeable with
discovery of the pre-patent transfer to Horvath.
On one hand, we could require Sabo to check beyond the
chain of title to look for pretitle conveyances. While in this
particular case the burden may not have been great, as a
general rule, requiring title checks beyond the chain of title
could add a significant burden as well as uncertainty to real
estate purchases. To a certain extent, requiring title searches
of records prior to the date of a grantor acquired title
would thus defeat the purposes of the recording system.

13 1 R. Patton & C. Patton, Patton on Land Titles s 69, at 230-33 (2d ed. 1957).

Cities Service Oil Co. v. Adair, 273 F.2d 673, 676 (10th Cir. 1959); Stafford v.
Ballinger, 199 Cal.App.2d 289, 18 Cal.Rptr. 568, 572 (1962); Pierson v. Bill, 138
Fla. 104, 189 So. 679, 684 (1939); Jenkins v. Bates, 230 Miss. 406, 92 So.2d 655,
657 (1957); Baker v. Koch, 114 Ohio App. 519, 183 N.E.2d 434, 437 (1960);
Portman v. Earnhart, 343 S.W.2d 294, 297 (Tex.Civ.App.1960); Lone Star Gas
Co. v. Sheaner, 197 S.W.2d 855, 857 (Tex.Civ.App.1957); Hyson v. Dodge, 198
Va. 792, 96 S.E.2d 792, 796 (1957).
14 1 R. Patton & C. Patton, Patton on Land Title s 69, at 230-33 (2d ed. 1957);

Lacey v. Humphres, 196 Ark. 72, 116 S.W.2d 345, 347 (1938); Etchison v. Dail,
182 Ark. 350, 31 S.W.2d 426, 427 (Ark.1930); Brown v. Copp, 105 Cal.App.2d 1,
232 P.2d 868, 871 (1951); Hawley v. McCabe, 117 Conn. 558, 169 A. 192, 194
(1933); Ward v. Parks, 166 Ga. 149, 142 S.E. 690, 692 (1928); Manson v.
Berkman, 356 Ill. 20, 190 N.E. 77, 79 (1934); Blumenthal v. Serota, 129 Me. 187,
151 A. 138, 141 (1930); Smith v. Williams, 132 Okl. 141, 269 P. 1067, 1073 (1928);
Brown v. Ackerman, 17 S.W.2d 771 (Tex.Civ.App.1929).

665

The records as to each grantor in the chain of title would
theoretically have to be checked back to the later of the
grantor’s date of birth or the date when records were first
retained.
On the other hand, we could require Horvath to rerecord
his interest in the land once title passes, that is, after patent
had issued to Lowery. As a general rule, rerecording an
interest once title passes is less of a burden than requiring
property purchasers to check indefinitely beyond the chain
of title.
It is unfortunate that in this case due to Lowery’s double
conveyances, one or the other party to this suit must suffer
an undeserved loss. We are cognizant that in this case, the
equities are closely balanced between the parties to this
appeal. Our decision, however, in addition to resolving the
litigants’ dispute, must delineate the requirements of
Alaska’s recording laws.
Because we want to promote simplicity and certainty in title
transactions, we choose to follow the majority rule and
hold that the Horvaths’ deed, recorded outside the chain of
title, does not give constructive notice to the Sabos and is
not ‘duly recorded’ under the Alaskan Recording Act, AS
34.15.290. Since the Sabos’ interest is the first duly
recorded interest and was recorded without actual or
constructive knowledge of the prior deed, we hold that the
Sabos’ interest must prevail. The trial court’s decision is
accordingly.
REVERSED.
4.3. Adverse Possession
Brown v. Gobble, 474 S.E.2d 489 (W. Va. 1996)
Mark E. Wills, Wills & Sadler, Princeton, for Appellees.
Robert H. Miller, II, Katz, Kantor & Perkins, Bluefield, for
Appellants.

666

CLECKLEY, Justice.
This case involves the doctrines of adverse possession and
tacking. David L. Gobble and Sue Ann Gobble,
appellants/defendants below, appeal from a final order of
the Circuit Court of Mercer County. At the conclusion of a
bench trial the circuit court granted judgment for a strip of
land to Gary S. Brown and Mitzi Brown,
appellees/plaintiffs below. In prosecuting this appeal, the
defendants allege two assignments of error: (1) it was error
for the circuit court to apply a clear and convincing
evidence standard of proof to the doctrine of adverse
possession, and (2) the circuit court committed error in
finding that the evidence failed to prove adverse
possession.
I.
FACTUAL
BACKGROUND

AND

PROCEDURAL

The plaintiffs instituted this action by filing a complaint on
August 25, 1994. The complaint sought to have the
defendants enjoined from interfering with the plaintiffs’
intended use of a two-feet-wide tract of land that formed a
boundary running between the adjoining properties of the
parties. The defendants answered the complaint and filed a
counterclaim alleging ownership to the tract of land by
adverse possession.
The record reveals that the defendants purchased their
property by deed dated April 24, 1985. At the time of this
land purchase a fence was in place which ran along the rear
boundary of defendants’ property. The two-feet-wide tract
of land in question here, was enclosed by the fence and
visually appeared to be part of the defendants’ property.
When the defendants bought their land, they were
informed by their real estate agent that their property ran
up to and included the fence. The call references in their
deed “read” as though the two-feet-wide tract of land was

667

part of the conveyance.1 The defendants believed the twofeet-wide tract of land was part of their property, and
utilized it consistent with ownership rights up until the
filing of this law suit.
The plaintiffs purchased their property by deed dated April
28, 1989. Shortly before making this purchase, the plaintiffs
had a survey of the property done. The survey revealed that
the fenced-in two-feet-wide tract of land was part of
plaintiffs’ property.2 Although the plaintiffs were aware at
the time of the purchase of their property that the two-feetwide tract of land was, in fact, theirs, they did nothing to
show ownership to the tract until around August, 1994. It
was in August of 1994, that the plaintiffs decided to build a
road along the two-feet-wide tract of land. To do this
meant cutting down several trees that were along the tract.3
The defendants apparently attempted to prevent the
plaintiffs from building the road by asserting that they
owned the tract of land. The plaintiffs thereafter instituted
the present suit. The trial of this matter was held by the
circuit court, sitting as factfinder, on December 13, 1994.
The trial court made findings of fact and conclusions of
law, wherein it held that “the defendants have failed to
1 The pertinent call references of defendants’ deed provide:

thence leaving the said Willowbrook Road N 71° 28’ E
184.80 feet to a fence post in the line of said private
driveway, thence S 32° 33’ E 133.80 feet to a fence post in
the line of said driveway, thence S 17° 04’ W 13 feet to a
fence post in the line of said private driveway[.]

(Emphasis added.)
2 The pertinent call references of plaintiffs’ deed provide:

thence S. 62° 00’ W. 31.41 feet crossing a road to a fence
post corner of the David Gobble parcel; thence running
with the David Gobble parcel the following calls: N. 17°
32’ E. 13.00 feet to a fence post; thence N. 32° 05’ W.
133.80 feet to a fence post[.]

(Emphasis added.)
3 The road was going to provide access to an animal clinic the plaintiffs had

constructed on their property.

668

show by clear and convincing evidence their ownership by
way of adverse possession[.]”
II. DISCUSSION
The contentions raised on appeal require us to scrutinize
the record and determine whether the evidence was
sufficient to prove adverse possession by the clear and
convincing standard that we explicitly have adopted today. We
note at the outset that the standard of review for judging a
sufficiency of evidence claim is not appellant friendly.
Following a bench trial, the circuit court’s findings, based
on oral or documentary evidence, shall not be overturned
unless clearly erroneous, and due regard shall be given to
the opportunity of the circuit judge to evaluate the
credibility of the witnesses. Under this standard, if the
circuit court’s account of the evidence is plausible in light
of the record viewed in its entirety, we may not reverse it,
even though convinced that had we been sitting as the trier
of fact, we would have weighed the evidence differently.
We will disturb only those factual findings that strike us
wrong with the “force of a five-week-old, unrefrigerated
dead fish.” United States v. Markling, 7 F.3d 1309, 1319 (7th
Cir.1993). Nor is the scope of our review broadened
because the burden of proof is clear and convincing.
Indeed, the burden of proof has an impact only if the
evidence is in equipoise. Under these well established
principles, we now review the errors raised by the
defendants.
A. Standard of Proof for Adverse Possession
Claims
The first argument raised by the defendants is that the
circuit court committed error by requiring them to prove
adverse possession by clear and convincing evidence.
Although neither party presents any binding precedent of
this Court, the defendants contend that the proper standard

669

for proving adverse possession is by a preponderance of
the evidence, and that this is implicitly established by some
of our cases. The defendants cite language in our decision
in Naab v. Nolan, 174 W.Va. 390, 392 (1985), wherein we
stated:
The circuit court found by a
preponderance of the evidence the existence
of facts sufficient to establish title by
adverse possession[.] We agree with
the court’s decision.
(Emphasis added.)
The plaintiffs contend that the above language in Naab is
not controlling for two reasons. First, the quote is not
intended to be a statement of law, but is merely part of the
discussion from the court below, and there was no explicit
acceptance of this standard by the Court. Second, the
standard of proof was not disputed on appeal and,
therefore, this Court was not asked to decide the issue. The
plaintiffs take the position that we have yet, definitively, to
establish a standard of proof for adverse possession, and
would further urge that we adopt the clear and convincing
standard.4
There is a minority view that a preponderance of the
evidence is sufficient to establish adverse possession.
[citations to cases in Missouri, Nebraska, Ohio, and
Arkansas] There is little reason given for adopting this
standard other than it is the usual rule in civil cases.
On the other hand, the view adopted by a majority of
jurisdictions is that adverse possession must be shown by
clear and convincing evidence. [citations to cases in a large
number of states]
4 This Court approved in passing an adverse possession preponderance of the

evidence jury instruction given by the trial court in Selman v. Roberts, 185 W.Va. 80,
86 n. 6(1991).

670

It is appropriate, in our opinion, that adverse possession be
proved by a more stringent standard than a mere
preponderance of the evidence. First, West Virginia appears
to have been leaning toward the majority rule. Even before
the turn of the century, this Court had indicated that
“clear” evidence was needed to establish adverse
possession. In Syllabus Point 2 of Boggs v. Bodkin, 32 W.Va.
566 (1889), this Court explicitly stated: “whether he has had
ten years’ adversary possession of the land, he must, …
specifically establish by clear evidence, that he has had such
adversary possession for ten years … .” (emphasis added).
Moreover, we agree with the plaintiffs that it would be
inconsistent for this Court to adopt a preponderance of the
evidence standard for adverse possession, in light of the
fact that we have adopted a clear and convincing standard
for proving an easement. See Syl. pt. 3, Norman v. Belcher,
180 W.Va. 581 (1989).
Second, on policy grounds there is sound and reasonable
justification for the majority view. The function of a
standard of proof is to “instruct the factfinder concerning
the degree of confidence our society thinks he [or she]
should have in the correctness of a factual conclusion for a
particular kind of adjudication.” In re Winship, 397 U.S. 358,
370 (1970) (Harlan, J. Concurring). “The standard [of
proof] serves to allocate the risk of error between the
litigants and to indicate the relative importance attached to
the ultimate decision.” Addington v. Texas, 441 U.S. 418, 423
(1979).
While the preponderance standard applies across the board
in civil cases, a higher standard is needed where fairness
and equity require more persuasive proof. Although the
standard clear and convincing is less commonly used, it
nonetheless is no stranger to West Virginia civil cases. In
Wheeling Dollar Sav. & Trust Co. v. Singer, 162 W.Va. 502,
510 (1978), this Court stated that “clear and convincing” is
the measure or degree of proof that will produce in the

671

mind of the factfinder a firm belief or conviction as to the
allegations sought to be established. It should be the
highest possible standard of civil proof. Cramer v. Dep’t of
Hwys., 180 W.Va. 97, 99 n. 1 (1988). The interest at stake in
an adverse possession claim is not the mere loss of money
as is the case in the normal civil proceedings. Rather, it
often involves the loss of a homestead, a family farm or
other property associated with traditional family and
societal values. To this extent, most courts have used the
clear and convincing standard to protect these important
property interests. See Stevenson v. Stein, 412 Pa. 478, 482
(1963) (to prove adverse possession “credible, clear and
definitive proof” is needed). Adopting the clear and
convincing standard of proof is more than a mere academic
exercise. At a minimum, it reflects the value society places
on the rights and interests being asserted.
The bottom line is that the function of the legal process is
to minimize the risk of erroneous decisions. See Mathews v.
Elderidge, 424 U.S. 319, 335 (1976). The law should not
allow the land of one to be taken by another, without a
conveyance or consideration, merely upon slight
presumption or probabilities. The relevant evidence in an
adverse action must necessarily expand over a ten year
period. A preponderance standard, in our judgment, would
create the risk of increasing the number of cases whereby
land is erroneously taken from the title owner under
spurious adverse possession claims. This heightened
standard of clear and convincing is one way to impress the
factfinder with the importance of the decision, and thereby
reduce the chances that spurious claims of adverse
possession will be successful. Having concluded that the
preponderance standard falls short of meeting the demands
of fairness and accuracy in the factfinding process in the
adjudication of adverse possession claims, we hold that the
burden is upon the party who claims title by adverse
possession to prove by clear and convincing evidence all

672

elements essential to such title. To the extent that a
different standard is intimated in our previous decisions, we
herein expressly reject such intimations.
B. The Sufficiency of the Evidence
The next argument raised by the defendants is that their
evidence was sufficient to establish adverse possession
under either a preponderance of the evidence standard or,
on the other hand, under the clear and convincing evidence
standard. Of course, we now must determine whether the
record supports the trial court’s findings under the clear
and convincing standard.
It is well settled in this jurisdiction that in a case tried
without the aid of a jury, the trial court, and not the
appellate court, is the judge of the weight of the evidence.
Actually, in a nonjury trial, the trial judge has usually been
regarded as a surrogate for the jury, and his or her findings
are accorded corresponding weight. Subject only to
W.Va.R.Civ.P. 52(a)’s clearly erroneous standard, this
standard precludes a reviewing court from reversing a
finding of the trier of fact simply because the reviewing
court would have decided the case differently. In fact, it is
clear that the burden on an appellant attempting to show
clear error is especially strong when the findings are
primarily based upon oral testimony and the circuit court
has viewed the demeanor and judged the credibility of the
witnesses. Accordingly, the circuit court’s factual findings
come here well armed with the polished buckle and shield
of the “clearly erroneous” standard embodied in Rule 52(a).
Because of the weight to be given to evidence is peculiarly
within the province of the trial court, it is the trial court and
not this Court that draws the distinction between evidence
which is clearly convincing and that which merely
preponderates. However, the question whether the circuit
court considered the proper material elements for adverse

673

possession is a question of law, subject to our de novo
review.
Were we given the task, we would not hesitate to find that
the record before this Court demonstrates overwhelmingly
that adverse possession has been proven by clear and
convincing evidence. However, our decisions have made
plain that an appellate court is not the appropriate forum
for a resolution of the persuasive quality of evidence. To
the contrary, our opinions have suggested that a reviewing
court ought not to disturb such a finding unless, on the
whole of the record, this Court forms a strong, unyielding
belief that a mistake has been made. In plain terms, we
should not overrule a circuit court’s finding or conclusion
as to whether the burden of persuasion has been met unless
the evidence is so one-sided that it may be said that a
reasonable factfinder could not have gone the way of the
circuit court. In order to sharpen the focus of our inquiry,
we first illuminate the legal framework and elucidate the
requirements that attend a proper showing of adverse
possession.
Regarding the doctrine of adverse possession, we stated in
Naab, 174 W.Va. at 392, the following:
The doctrine of adverse possession is
firmly established in our property law
and accompanies W. Va.Code 55-2-1
in settling land disputes equitably and
efficiently. This doctrine enables one
who has been in possession of a piece
of real property for more then ten
years to bring an action asserting that
he is now the owner of that piece of
property even when title rests in
another. In Syllabus Point 3 of Somon v.
Murphy Fabrication and Erection Co., 160
W.Va. 84, 232 S.E.2d 524 (1977) this
Court stated:

674

One who seeks to assert title to a
tract of land under the doctrine
of adverse possession must prove
each of the following elements
for the requisite statutory period:
(1) That he has held the tract
adversely or hostilely; (2) That the
possession has been actual; (3)
That it has been open and
notorious (sometimes stated in
the cases as visible and
notorious); (4) That possession
has been exclusive; (5) That
possession has been continuous;
(6) That possession has been
under claim of title or color of
title.
We also held in Syllabus Point 4 of Somon,
that:
Where one by mistake occupies land
up to a line beyond his actual
boundary, believing it to be the true
line, such belief will not defeat his
right to claim that he holds such land
adversely or hostilely under the
doctrine of adverse possession.5

5 Thus, the law in West Virginia is that where a person, acting under a mistake as

to the true boundary lines between his or her land and that of another, takes
possession of land believing it to be his or her own, up to the mistaken line,
claims a prescriptive right to it and so holds, the holding is adverse, and, if
continued for the requisite period may ripen into adverse possession. The fact
that the one who takes possession under these circumstances had no intention of
taking what did not belong to him or her, does not effect the operation of this
rule. In all cases, the intention and not the mistake is the test by which the
character of the possession is determined.

675

In addition to recognizing the common law doctrine of
adverse possession, we have long recognized the principle
of “tacking.” … .
With the above principles of law in view, we now turn to
the evidence presented below. The plaintiffs called three
witnesses during their case-in-chief. Plaintiff Mr. Brown
testified that he and his wife purchased property in 1989,
and that their deed gave them ownership of the two-feetwide tract. The plaintiffs called Dana Pettrey, the surveyor
of their property. Mr. Pettrey testified that his survey in
1989, revealed that the two-feet-wide tract of land was part
of the plaintiffs’ property. The plaintiffs also called
defendant Mrs. Gobble for the purpose of showing that the
defendants did not have possession of the two-feet-wide
tract ten years prior to the month of August, 1995, when
the plaintiffs first exercised ownership rights to the twofeet-wide tract. During the plaintiffs’ case-in-chief, the
following exchange occurred between defendant Mrs.
Gobble and counsel for plaintiffs:
Q. Mrs. Gobble, you have not lived on
that property for 10 years, have you?
A. No, sir.
Q. It won’t be 10 years until April,
1995?
A. Yes, sir.
The defendants do not contend that they are the lawful
owners of the two-feet-wide tract of boundary land as a
result of call references in their deed. That is, they do not
claim possession under color of title. They have alleged
ownership through claim of title or right.6 The defendants

6 In Somon, 160 W.Va. at 91-92, 232 S.E.2d at 529, we distinguished claim of title

and color of title as follows:

676

also do not contend that they have personally possessed the
two-feet-wide tract for the requisite ten-year period.
Instead, they contend that they have established adverse
possession by tacking on the time periods that their
predecessors in title claimed the two-feet-wide tract. We
have held that “tacking” permits adding together the time
period that successive adverse possessors claim property,
and that should this period of time added together be more
than ten years, adverse possession may be allowed.
To establish the element of “tacking” the defendants
presented evidence that Edward and Virgie Blevins (the
“Blevins”) were the original owners of the property they
purchased in 1985. The Blevins owned the property as far
back as 1937, and during the entire time of their ownership
they believed the two-feet-wide tract was part of their land,
and they exercised dominion and control over the tract
consistent with ownership rights. The Blevins sold their
property on October 30, 1978, to Norman and Martha
Fletcher (the “Fletchers”), believing that they were also
conveying the two-feet-wide tract. Mr. Fletcher testified
that when they bought the property they believed that they
had purchased the two-feet-wide tract, and possessed it
consistent with ownership rights. The defendants testified
that they bought their property from the Fletchers in 1985,
and believed their land purchase included the two-feet-wide
tract of boundary land, and that they possessed it consistent
with ownership rights, up until the filing of this lawsuit.
Based upon this tacking evidence, the defendants contend
that they are entitled as a matter of law to add the period
1937-1985, to their nine-and-a-half year claim to the two-

A claim of title has generally been held to mean nothing
more than that the disseisor enters upon the land with the
intent to claim it as his own. Whereas, “color of title”
imports there is an instrument giving the appearance of
title, but which instrument in point of law does not.

(Citations omitted.)

677

feet-wide tract, which would give them far in excess of ten
years adverse possession of the tract.7
To establish the element of “hostile” or “adverse”
possession by tacking, the defendants called several
witnesses who testified that the two-feet-wide tract was
fenced off as far back as 1937, that the Blevins placed the
fence along the tract, and that the Blevins claimed the tract
as theirs.8 Evidence was presented to show that the
Fletchers maintained the fence along the two-feet-wide
tract, and that the fence remained in place throughout their
ownership of the property. The defendants testified that
they purchased their property from the Fletchers in 1985,
and that they claimed ownership of the two-feet-wide tract,
and that it remained fenced off up until the start of the
instant law suit.
To establish the element of “actual” possession by tacking,
the defendants called several witnesses who testified that

7 Based upon the evidence the defendants presented regarding the Blevins and

Fletchers, the defendants actually misunderstand the import of their evidence.
The evidence seems to suggest that the Blevins may very well have actually
established adverse possession to the two-feet-wide tract, because they maintained
the tract for over ten years. The Blevins conveyed their adversely possessed
property to the Fletchers, and the Fletchers in turn conveyed the same to the
defendants. Therefore the tacking involved here does not require analysis of the
defendants’ period of ownership, unless it is established that the Blevins did not in
fact acquire adverse possession. If it is determined that the Blevins acquired
adverse possession of the two-feet-wide tract, the issue then merely becomes
whether the Blevins intended to convey the two-feet-wide tract to the Fletchers,
and whether the Fletchers intended to convey the two-feet-wide tract to the
defendants. See Doty v. Chalk, 632 P.2d 644, 646 (Colo.App.1981) (“Title to
property acquired by adverse possession matures into an absolute fee interest after
the statutory prescriptive period has expired.”). The period of ownership by the
defendants becomes irrelevant under this scenario. It is only if a determination is
made that the Blevins did not establish adverse possession that the defendants’
period of ownership becomes relevant for tacking on the time period of the
Fletchers.
8 We have held that to establish “hostile” or “adverse” possession, evidence must

be presented which shows that possession of disputed property was against the
right of the true owner and is inconsistent with the title of the true owner for the
entire requisite ten-year period.

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the Blevins periodically repaired the fence surrounding the
two-feet-wide tract, that they routinely planted a garden
along the tract, and that the Blevins constructed and
maintained a shed along a portion of the tract. Mr. Fletcher
testified that he regularly planted a garden along the tract,
that he routinely removed weeds from along the tract and
fence, and that he picked blackberries from the area and
walnuts from trees that had grown along the tract.9 The
defendants testified that they planted gardens along the
tract, that they built a treehouse in one of the trees that had
grown along the tract, and that they regularly mowed the
grass and weeds in the area.
To establish the element of “open and notorious”
possession by tacking, the defendants called several
witnesses who testified that during the period that the
Blevins owned the defendants’ property, the reputation of
the two-feet-wide tract in the community was that it
belonged to the Blevins.10 Mr. Fletcher testified that the
reputation in the community was that the two-feet-wide
tract was part of his property. The defendants testified that
the reputation in the community was that the two-feet-wide
tract was part of their property.
To establish the element of “exclusive” possession by
tacking, the defendants presented testimony by two of the
original owners of plaintiffs’ property.11 These two
witnesses testified that neither the Blevins’ nor the
9 We have held that to establish “actual” possession, evidence must be presented

which shows that possession of disputed property was used for enjoyment,
cultivation, residence or improvements for the entire requisite ten-year period.
10 We have held that to establish “open and notorious” possession, evidence must

be presented which shows that possession of disputed property was in such a
manner as to give notice to the true owner that the property is being claimed by
another for the entire requisite ten-year period.
We have held that to establish “exclusive” possession, evidence must be
presented which shows that possession of disputed property was used only by the
occupant and others were not permitted to use it or claim ownership during the
entire requisite ten-year period.
11

679

Fletchers’ claim to the two-feet-wide tract was ever
objected to by them or those who owned the property with
them. The defendants also presented evidence to show that
only the Blevins and Fletchers respectively had control and
dominion over the two-feet-wide tract. The defendants also
testified that they had exclusive control and dominion over
the two-feet-wide tract up until the time of this law suit.
To establish the element of “continuous” possession the
defendants presented testimony that the Blevins enclosed,
maintained, cultivated and claimed ownership of the twofeet-wide tract up until they sold their property to the
Fletchers.12 Mr. Fletcher testified that he maintained,
cultivated and claimed ownership of the two-feet-wide tract
up until he sold the property to the defendants. The
defendants testified that they maintained, cultivated and
claimed ownership of the two-feet-wide tract up until the
instant law suit.
To establish the element of “claim of title” the defendants
presented evidence to show that neither the Blevins,
Fletchers nor the defendants had actual title to the twofeet-wide tract, yet each claimed ownership of it pursuant
to all of the above conduct, during their entire respective
occupancy.13
Based upon the above evidence of tacking and adverse
possession, the defendants contend that they established
adverse possession under the clear and convincing evidence
standard. The trial court found that this evidence did not
establish tacking or adverse possession by clear and
convincing evidence. The trial court made this finding

We have held that to establish “continuous” possession, evidence must be
presented which shows that possession of disputed property was enclosed,
maintained or cultivated during the entire requisite ten-year period.
12

13 We have held that to establish “claim of title,” evidence must be presented

which shows that possession of disputed property was claimed without actual title
ownership by the occupant during the entire requisite ten-year period.

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notwithstanding the fact that none of the defendants’
tacking or adverse possession evidence was challenged or
rebutted by the plaintiffs.
Nevertheless, we are reluctant to conclude, though invited
to do so by the defendants, that the evidence was so onesided that no rational trier of fact could find that adverse
possession had not been established by clear and
convincing evidence. While we agree with the defendants,
that the quantity of evidence tends to fall in their favor, in
assessing evidence, the trier of fact is the ultimate judge of
credibility and is free to accept or reject any testimony it
does not find credible. However, when a judge, sitting
without jury, decides against the greater amount of the
evidence, the judge is obligated to give a fuller explanation
for his or her ruling. Under these circumstances, the
findings in a bench trial must be sufficiently detailed,
reasoned, and logical to enable the reviewing court to trace
a persuasive path between the evidence and the judgment.
See Schneiderman v. United States, 320 U.S. 118, 129-31.
Where the determinative factor at trial is the credibility of
the witnesses, this requires a trial court to specify what
witnesses were not credited and why.
Additionally, though the clear error standard is formidable,
it is not a bulldozer that crushes everything in its way. One
important qualification is that the jurisprudence of clear
error does not inhibit an appellate court’s power to correct
errors of law, including those that may affect a so-called
mixed finding of law and fact that is predicated on the
misunderstanding of the governing rule of law. Similarly,
the deference accorded to a circuit court may evaporate
when, in making its ultimate decision: (1) a relevant factor
that should have been given significant weight is not
considered; (2) all proper factors, and no improper factors,
are considered, but the circuit court in weighing those
factors commits an error of judgment; and (3) the circuit

681

court failed to exercise any discretion at all in issuing its
decision. Banker v. Banker, 196 W.Va. 535 (1996).
Consistent with this approach, courts must be careful not
to wear blinders. The judge must sift the evidence
produced at trial and gather enough information to paint a
true picture of the attendant facts and circumstances. The
trial judge must then make a realistic appraisal of what the
picture discloses. We think this analysis exposes the
principal flaw in this case. The findings made by the trial
court are inadequate to allow this Court to find that all
relevant factors were considered. Though helpful, the
findings are not all-encompassing. Indeed, the findings of
the circuit court ignored the central thrust of the
defendants’ evidence.
The circuit court either misunderstood or misapplied the
theory of the defendants. The defendants do not claim that
their actual possession of the property in question is
sufficient to establish adverse possession. Rather, they
contend that their predecessors in interest met all the
necessary prerequisites of adverse possession and under the
doctrine of tacking, the predecessors’ interest was passed
onto the defendants. The circuit court’s findings never
addressed this aspect of the defendants’ case. This
conclusion draws sustenance from the circuit court’s order
which provides in pertinent part:
10. Defendants did not exercise actual
dominion over the area between the
deed description and fence line.
11. The fence … was more likely a
fence around the plaintiffs’ [property]
rather than enclosing defendants’
property. The defendants did not
maintain the fence nor did the
defendants make any use of the small

682

area of land in dispute between the
boundary line and fence.
The upshot is that the circuit court failed to make any
findings that would dispose of the defendants’ tacking
claim. As we have stated several times above, a circuit court
sitting without a jury cannot paint with too broad a brush.
Rule 52(a) requires the trial judge make findings and
conclusions of law that are sufficiently detailed to permit a
reviewing court to ascertain the factual core of, and the
legal foundation for, the ruling below. This bedrock rule
has particular force in cases of this genre. Adverse
possession claims are often marked by a significant degree
of complexity. Typically, the resolution of such claims
demands a careful sifting of imbricated and highly ramified
facts. The legal principles that must be applied are
convoluted, and they almost always touch upon ancient
common-law precepts. Accordingly, a trial court must be
scrupulous in chronicling the relevant facts and delineating
the linkage of those facts and the ultimate conclusion of
adverse possession vel non. To this end, the circuit court
must discuss not only the evidence that supports its
decision but also all the substantial evidence contrary to its
opinion.14
Even though the circuit failed to make adequate findings,
and virtually ignored the thrust of the defendants’ evidence
as to tacking, the defendants are not entitled to an adverse
judgment decision on appeal. It must be remembered that

We take this step reluctantly, mindful that the circuit courts have heavy
caseloads. An appellate tribunal should not stand unduly on ceremony, but should
fill in the blanks in the circuit court’s account when the record and circumstances
permit this to be done without short-changing the parties. In this situation,
however, the record and the burden of proof do not lend itself to curing the
omission in this fashion. We are fortified in this cautious approach by what we
envision as the distinct possibility that the circuit court undervalued the import of
the tacking doctrine and the defendants’ evidence in support of it. Upon remand,
the circuit court may summon and utilize the efforts of counsel in submitting
detailed and case specific proposed findings of fact and legal conclusions.
14

683

we do not sit in nisi prius, and at all times the burden of
proof remains with the defendants as to adverse
possession; plaintiffs’ burden is an entry level burden of
production, if they have any at all. Thus, once the plaintiffs
have proffered enough evidence to raise their title to the
land, the ultimate burden of persuading the factfinder that
they were the beneficiaries of adverse possession under the
tacking theory rests with the defendants. On this basis, we
reject the defendants’ request for judgment as to their
adverse possession claim. As we stated in Burnside, 194
W.Va. at 275, “[f]indings of facts are adequate only if they
are sufficient to indicate the factual basis for the ultimate
conclusions. If an order lacks adequate detail, the case will
be remanded for additional specificity.”
III. CONCLUSION
To recapitulate, the circuit court’s opinion in many respects
deftly navigates the marshy terrain of adverse possession
jurisprudence. Yet, we believe that the circuit court’s
opinion lacks essential clarity in its factual findings. For one
thing, the circuit court neither acknowledges nor discusses
critical evidence that appears to support establishing
adverse possession under the tacking theory. For another
thing, it never identified nor adequately explained the
evidence upon which it relied to support its ultimate
conclusion. And, finally, it omits any meaningful discussion
or mention of potentially salient factors such as the
persuasive quality of the defendants’ overall evidence.
We leave the procedure to be followed on remand to the
circuit court’s informed discretion, without endeavoring to
set an outer limit on its range of options. At a minimum,
the circuit court must discuss the evidence we have
identified as troubling (or as possibly overlooked), and
explain the relationship of this evidence to the issue of
tacking and adverse possession. The circuit court need not
stop there, however, it is free to reopen the record, to take

684

additional evidence, and to reconsider any parts of its
earlier ruling. To this end, while we neither require or
anticipate a new trial, the court may in its discretion permit
the parties to supplement the record with additional facts.
Accordingly, the judgment of the Circuit Court of Mercer
County is reversed and remanded.
Cahill v. Morrow, 11 A.3d 82 (R.I. 2011)
James H. Reilly, Esq., for Plaintiff.
Lauren E. Jones, Esq., for Defendant.
JUSTICE INDEGLIA, for the Court.
I: Facts and Procedural History
The property in dispute is located on Gooseberry Road in
the Snug Harbor section of South Kingstown, Rhode
Island. Identified as lot 19 on assessor’s plat 88-1, the land
is sandwiched between lot 20, currently owned by Cahill,
and lot 18, formerly co-owned by members of the Morrow
family. Morrow is the record owner of the subject property,
lot 19.
In 1969, Morrow’s husband, George Morrow, purchased
lot 19,1 and the same year George and his brothers jointly
purchased lot 18. At the time of lot 19’s purchase, it was
largely undeveloped, marked only by a preexisting
clothesline, grass, and trees. Since that time, the Morrows
have not improved or maintained lot 19, but have paid all
property taxes assessed to it. As such, instead of
vacationing on their lot 19, the Morrows annually spent
two weeks in the summer at the cottages on the adjacent lot
18. During these vacations, the Morrow children and their
cousins played on lot 19’s grassy area. Around 1985, the

1 Morrow became the successor in interest and legal title holder of lot 19 after

George passed away in 2003.

685

Morrows ceased summering on Gooseberry Road,2 but
continued to return at least once a year to view the lot.
Morrow stopped visiting lot 19 in October 2002, after her
husband became ill, and she did not return again until July
2006.
In 1971, two years after George Morrow purchased lot 19,
Cahill’s mother bought the land and house designated as lot
20 as a summer residence. Between 1971 and 1975, Cahill
and her brother did some work on lot 19. They occasionally
cut the grass, placed furniture, and planted trees and
flowers on it.
Cahill’s mother passed away in 1975, and in 1977, after
purchasing her siblings’ shares, Cahill became the sole
record owner of the lot 20 property. Once she became lot
20’s owner, Cahill began living in the house year-round.
From that time through 1991, she and her boyfriend, James
M. Cronin, testified that they continued to mow lot 19’s
grass on occasion. In addition, she hung clothing on the
clothesline, attached flags to the clothesline pole, used the
picnic table,3 positioned a bird bath and feeder, and planted
more flowers and trees. Cahill placed Adirondack chairs on
lot 19 and eventually replaced the clothesline and picnic
table. In 1987, Cahill held the first annual “cousins’ party”
allowing her relatives free rein with respect to her property
and lot 19 for playing, sitting, and car parking. She also
entertained friends and family on lot 19 during other
summer days. Mary Frances McGinn, Cahill’s cousin,
likewise recalled that lot 19 was occupied by Cahill kindred
during various family functions throughout this time
period. Cahill admitted that she never objected to
neighborhood children using lot 19, however.

2 In 1991, George Morrow and his joint-owner brothers sold lot 18.
3 The record was unclear as to who first placed a picnic table on lot 19, but Cahill

testified that there was a table on the lot from at least 1981.

686

During the period of 1991 through 1997, Cahill testified
that she planted more flowers and trees, in addition to
cutting the grass occasionally. Cahill also stored her gas grill
and yard furniture on the lot and had her brother stack
lobster pots for decorative purposes. In 1991 or 1992, she
began hosting the annual “Cane Berry Blossom Festival,”
another outdoor event that used both her lot and lot 19 as
the party venue. Like the other gatherings, the festival
always took place on a day during a warm-weather month.
In 1997 or 1998, she installed a wooden border around the
flower beds.
On July 22, 1997, Cahill wrote to George Morrow
expressing an interest in obtaining title to lot 19. In the
1997 letter, Cahill stated: “I am interested in learning if
your narrow strip of property is available for sale. If so, I
would be interested in discussing purchasing it from you.”
Cahill continued: “If there is a possibility that you would
like to sell it, could you please either call me or send me a
note?” Cahill did not receive a response.
In the “late 1990s,” though Cahill is unclear whether this
occurred before or after the 1997 letter, a nearby marina
sought permission to construct and elevate its property.
Cahill attended the related zoning board hearings and
expressed her concerns about increased flooding on lot 19
due to the marina elevation. She succeeded in having the
marina developer grade part of lot 19 to alleviate flooding.
Additionally, Cahill instituted her own trench and culvert
drainage measures to divert water off of lot 19 and then
reseeded the graded area. By Cahill’s own admission,
however, her trenching and reseeding work occurred in
1999 or 2000.

687

Subsequent to 2001, the new owners of lot 184 stored their
boat on lot 19 and planted their own flowers and small
trees on the property. In 2002, when the town (with
approval from George Morrow) erected a stone wall and
laid a sidewalk on the Gooseberry Road border of lot 19,
Cahill loamed and planted grass on that portion of the lot.
Also in 2002, Cahill asked Morrow’s two sisters on separate
occasions whether George Morrow would be interested in
selling lot 19. The Morrows gave no response to her 2002
inquiries. In 2003, George Morrow passed away.
After making her third inquiry concerning the purchase of
lot 19 in 2002, Cahill testified, she continued using the
property in a fashion similar to her prior practice until
December 2005, when she noticed heavy-machinery tire
marks and test pits on the land. Thereafter, she retained
counsel and authorized her attorney to send a letter on
January 10, 2006 to Morrow indicating her adverse
possession claim to a “20-foot strip of land on the
northerly boundary” of lot 19. According to a survey of the
disputed property, however, the width of lot 19 from the
northerly boundary (adjacent to Cahill’s property) to lot 18
is 49.97 feet and therefore, more than double what Cahill
originally claimed in this letter. Nonetheless, on April 25,
2006, Cahill instituted a civil action requesting a declaration
that based on her “uninterrupted, quiet, peaceful and actual
seisin and possession” “for a period greater than 10 years,”
she was the true owner of lot 19 in its entirety. On July 25,
2007, the trial justice agreed that Cahill had proved adverse
possession under G.L.1956 § 34-7-1 and vested in her the
fee simple title to lot 19.
….
II: Standard of Review

4 In approximately 2001, new owners purchased lot 18 from the Morrow brothers’

successor.

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“This Court gives great weight to the factual findings of a
trial justice sitting without a jury in a civil matter, and we
will not disturb such findings unless they are ‘clearly
erroneous or unless the trial justice misconceived or
overlooked material evidence or unless the decision fails to
do substantial justice between the parties.’” … . “However,
‘[i]n contrast to our deferential stance vis-[a]-vis factual
findings made by a trial justice, we review in a de novo
manner a trial justice’s rulings concerning questions of
law.’” Costa, 996 A.2d at 611 (quoting Grady v. Narragansett
Electric Co., 962 A.2d 34, 41 (R.I. 2009)).
III: Analysis
A: The History and Policy Rationale of Adverse
Possession
Before we begin our analysis, a brief history of adverse
possession may be of assistance. After first using an
amalgamation of Roman and Germanic doctrine, our
English predecessors in common law later settled upon
statutes of limitation to effect adverse possession. See Axel
Teisen, Contributions of the Comparative Law Bureau, 3 A.B.A.
J. 97, 126, 127, 134 (1917). In practice, the statutes
eliminated a rightful owner’s ability to regain possession
after the passing of a certain number of years, thereby
vesting de facto title in the adverse possessor. See
Restatement (Third) Property: Servitudes § 2.17, cmt. b at 26364 (2000). For example, a 1623 statute of King James I
restricted the right of entry to recover possession of land to
a period of twenty years. 10 Thompson on Real Property §
87.01 at 74-75 (2d Thomas ed. 1998) (citing An Act for
Limitation of Actions, and Avoiding of Suit in Law, 1623,
21 Jac. I., c. 16). Essentially, in England, the “[o]riginal
policy supporting the development of adverse possession
reflected society’s unwillingness to take away a ‘right’ which
an adverse possessor thought he had. Similarly, society felt

689

the loss of an unknown right by the title owner was
minimal.” William G. Ackerman & Shane T. Johnson,
Comment, Outlaws of the Past: A Western Perspective on
Prescription and Adverse Possession, 31 Land & Water L.Rev.
79, 83 (1996). As an overarching principle, however, the
English adhered to an irrefutable truth that “neither fraud
nor might can make a title where there wanteth right.” J &
M Land Co. v. First Union National Bank, 166 N.J. 493, 766
A.2d 1110, 1114 (2001) (quoting Altham’s Case, 8 Coke Rep.
150b, 153b, 77 Eng. Rep. 701, 707 (1610)).
In the United States, although the 1623 statute of King
James I “came some years after the settling of Jamestown
(the usual date fixed as the crystalizing of the common law
in America), its fiat is generally accepted as [our] common
law. Hence ‘adverse possession’ for 20 years under the
common law in this country passes title to the adverse
possessor with certain stated qualifications.” 10 Thompson on
Real Property § 87.01 at 75. Today, all fifty states have some
statutory form of adverse possession, typically requiring
proof that “possession was actual, hostile, open and
notorious, exclusive, and continuous for the period of the
statute of limitations. Color of title and payment of taxes
can also be elements in some cases.” Jeffrey Evans Stake,
The Uneasy Case for Adverse Possession, 89 Geo. L.J. 2419,
2423 (2001); see Ackerman, 31 Land & Water L.Rev. at 84
n. 42, 111 (collecting adverse possession statutes for the
fifty states).
Given the doctrine’s widespread codification in this
country, adverse possession is certainly “part of our
adoptive consciousness.” Ackerman, 31 Land & Water
L.Rev. at 84. Courts and commentators generally ascribe to
“four traditional justifications or clusters of justifications
which support transferring the entitlement to the [adverse
possessor] after the statute of limitations runs: the problem
of lost evidence, the desirability of quieting titles, the
interest in discouraging sleeping owners, and the reliance

690

interests of [adverse possessors] and interested third
persons.” Thomas W. Merrill, Property Rules, Liability Rules,
and Adverse Possession, 79 Nw. U.L.Rev. 1122, 1133 (1984);
see also Finley v. Yuba County Water District, 99 Cal.App.3d
691, 160 Cal.Rptr. 423, 427 (1979) (summarizing the
rationales supporting adverse possession). Effectively, our
society has made a policy determination that “all things
should be used according to their nature and purpose” and
when an individual uses and preserves property “for a
certain length of time, [he] has done a work beneficial to
the community.” Teisen, 3 A.B.A. J. at 127. For his efforts,
“his reward is the conferring upon him of the title to the
thing used.” Id. Esteemed jurist Oliver Wendell Holmes, Jr.
went a step further than Teisen, basing our society’s
tolerance of adverse possession on the ideal that “[a] thing
which you have enjoyed and used as your own for a long
time, whether property or an opinion, takes root in your
being and cannot be torn away without your resenting the
act and trying to defend yourself, however you came by it.”
O Centro Espirita Beneficiente Uniao Do Vegetal v. Ashcroft, 389
F.3d 973, 1016 (10th Cir.2004) (quoting Oliver Wendell
Holmes, Jr., The Path of the Law, 10 Harv. L.Rev. 457, 477
(1897)).
Regardless of how deeply the doctrine is engrained in our
history, however, courts have questioned “whether the
concept of adverse possession is as viable as it once was, or
whether the concept always squares with modern ideals in a
sophisticated, congested, peaceful society.” Finley, 160
Cal.Rptr. at 427. Commentators have also opined that,
along with the articulated benefits of adverse possession,
numerous disadvantages exist including the “infringement
of a landowner’s rights, a decrease in value of the servient
estate, and the encouraged exploitation and development of
land. In addition, they represent the generation of
animosity between neighbors, a source of damages to land
or loss of land ownership, and the creation of uncertainty

691

for the landowner.” Ackerman, 31 Land & Water L.Rev. at
92; see also Stake, 89 Geo. L.J. at 2432, 2433 (listing also
“diminish[ing] utility by discouraging owners from letting
others use their land,” wasting the rightful owner’s time
and resources to monitor his land, and “creat[ing] an
opportunity to steal land” as other costs associated with
adverse possession). In reality, “[a]dverse possession ‘[i]s
nothing more than a person taking someone else’s private
property for his own private use.’ It is hard to imagine a
notion more in contravention of the ideals set forth in the
U.S. Constitution protecting life, liberty and property.”
Ackerman, 31 Land & Water L.Rev. at 94-95 (quoting 2
C.J.S. Adverse Possession § 2 (1972)).
Although this Court duly recognizes its role as the judicial
arm of government tasked with applying the law, rather
than making law, it is not without an eyebrow raised at the
ancient roots and arcane rationale of adverse possession
that we apply the doctrine to this modern property dispute.
B: The Trial Justice’s Application of Rhode
Island’s Adverse-Possession Precedent
In Rhode Island, obtaining title by adverse possession
requires actual, open, notorious, hostile, continuous, and
exclusive use of property under a claim of right for at least
a period of ten years. Corrigan v. Nanian, 950 A.2d 1179,
1179 (R.I.2008) (mem.); see also § 34-7-1. “The party who
asserts that adverse possession has occurred must establish
the required elements by strict proof, that is, proof by clear
and convincing evidence.”5 Corrigan, 950 A.2d at 1179

5 Clear and convincing evidence is defined in a variety of ways; for example, to

establish a fact or an element by clear and convincing evidence a party must
persuade the jury that the proposition is highly probable, or must produce in the
mind of the factfinder a firm belief or conviction that the allegations in question
are true. The clear and convincing evidence standard does not require that the
evidence negate all reasonable doubt or that the evidence must be
uncontroverted.” 29 Am.Jur.2d Evidence § 173 at 188-89 (2008).

692

(citing Tavares v. Beck, 814 A.2d 346, 350 (R.I.2003)); see also
Carnevale v. Dupee, 853 A.2d 1197, 1199 (R.I.2004).
Here, the trial justice recited the proper standard of proof
for adverse possession and then found that Cahill had
“met her burden of establishing all of
the elements of an adverse possession
claim to lot 19 by her and her mother’s
continuous and uninterrupted use of
the parcel for well in excess of ten
years. She maintained the property,
planted and improved the property
with shrubs, trees, and other plantings,
sought drainage control measures, and
used the property as if it were her own
since 1971. She established that use
not only by her own testimony, but as
corroborated by other witnesses,
photographs, and expert testimony
relative to the interpretation of aerial
photographs.”
At trial, as here on appeal, Morrow argued that Cahill’s
offers to purchase the property invalidated her claim of
right and the element of hostile possession. To dispose of
that issue, the trial justice determined that “even assuming
that [Cahill’s] inquiry is circumstantial evidence of her
knowledge that George Morrow, and subsequently
Margaret [Morrow], were the legal title holders of [lot] 19,
that does not destroy the viability of this adverse
possession claim.” The trial justice relied upon our opinion
in Tavares, 814 A.2d at 350, to support his conclusion.
Recalling that this Court stated in Tavares that “even when
the claimants know they are nothing more than blackhearted trespassers, they can still adversely possess the
property in question under a claim [of] right to do so if they
use it openly, notoriously, and in a manner that is adverse
to the true owner’s rights for the requisite ten-year period,”

693

the trial justice found that Cahill’s outward
acknowledgement of Morrow’s record title did not alone
“negate her claim of right.” He further found that “even if
somehow the expression of interest in purchasing lot 19,
made initially in 1997, stopped the running of the ten[-]year
period under * * * § 34-7-1, the evidence was
overwhelming that [Cahill] and her predecessor in title had
commenced the requisite ten-year period beginning in
1971.”
C: Issues on Appeal
On appeal, Morrow challenges the trial justice’s legal
conclusion that Cahill’s offers to purchase lot 19 did not
extinguish her claim of right, hostile possession, and
ultimately, the vesting of her title by adverse possession.
Morrow also contends that the trial justice erred in finding
that Cahill’s testimonial and demonstrative evidence was
sufficient to prove adverse possession under the clear and
convincing burden of proof standard. We agree that as a
matter of law the trial justice failed to consider the impact
of Cahill’s offers to purchase on the prior twenty-six years
of her lot 19 use. As a result, we hold that this failure also
affects his factual determinations.
1. 1997 Offer-to-Purchase Letter
In Tavares, this Court explained that “requir[ing] adverse
possession under a claim of right is the same as requiring
hostility, in that both terms simply indicate that the
claimant is holding the property with an intent that is
adverse to the interests of the true owner.” Tavares, 814
A.2d at 351 (quoting 16 Powell on Real Property, § 91.05[1] at
91-28 (2000)). “Thus, [we said] a claim of right may be
proven through evidence of open, visible acts or
declarations, accompanied by use of the property in an
objectively observable manner that is inconsistent with the
rights of the record owner.” Id. (citing Picerne v. Sylvestre, 122

694

R.I. 85, 91-92, 404 A.2d 476, 479-80 (1979)). Here, the first
issue on appeal is how an offer to purchase has an impact
on these elements.
To assert her position that Cahill’s 1997 offer to purchase
lot 19 negates Cahill’s claim of right by failing to deny the
owner’s title, Morrow argues that this Court should adhere
to our precedent in Picerne and decline to credit the “dicta”
in Tavares that the trial justice relied upon. Opportunely,
however, the instant case permits this Court to affirm both
precedents while clarifying a salient point of law regarding
the effect offers to purchase have on the adverse
possession elements of hostility and claim of right.
In Picerne, 122 R.I. at 91-92, 404 A.2d at 479-80, we focused
on the narrow issue of whether a taxpayer who lost a home
in a tax sale could prove hostile use for purposes of adverse
possession. This Court considered whether the taxpayer’s
affirmative and open acts, such as painting the exterior,
installing a new door and windows, and replacing the front
stairs put the tax-sale purchaser on sufficient notice that
there was a “hostile air.” Id. at 92, 404 A.2d at 480. We
explained that the “[h]ostility of possession necessary to
establish adverse possession implies the denial of the
owner’s title; and possession, however open and long it
may be, is not adverse without the denial of the owner’s
title.” Id. This Court held that the individuals in possession
of the house failed to deny the tax-sale owner’s title for at
least three years of the ten-year period because their
possession was permissive. Id. We likewise ruled that the
claim had failed because the taxpayer’s adverse actions did
not meet the requisite ten-year period. Id. Without the
requisite ten years of denying the owner’s title and ten years
of possessing adversely to the owner’s title, the Picerne
claimants could not establish adverse possession.
Analogously here, Cahill did not deny Morrow’s title when
she sent her 1997 letter to George Morrow. Rather, she was
outwardly declaring to the rightful owner himself the

695

viability of his title and fully acknowledging her subservient
interest to that owner’s title. This manifestation from Cahill
interrupted the accrual of her claim. See Heggen v. Marentette,
144 N.W.2d 218, 242 (N.D.1966) (“[T]he recognition of
the owner’s title by an adverse claimant interrupts the
adverse possession.”); Smith v. Vermont Marble Co., 99 Vt.
384, 133 A. 355, 358 (1926) (“Nothing can more effectively
interrupt the running of the [adverse possession] statute
than an express acknowledgment of the true owner’s title. *
* * This recognition of another’s title may be by acts, as
well as words. So when one who was wrongfully [using
another’s land] * * * yields to the latter’s demands * * * and
offer[s] to buy the right, his adverse use is interrupted, and
his claim of prescriptive right fails.”); see also Bowen v.
Serksnas, 121 Conn.App. 503, 997 A.2d 573, 579 (2010)
(“[T]he possession of one who recognizes or admits title in
another, either by declaration or conduct, is not adverse to
the title of such other. * * * Such an acknowledgment of
the owner’s title terminates the running of the statutory
period, and any subsequent adverse use starts the clock
anew.”) (quoting Allen v. Johnson, 79 Conn.App. 740, 831
A.2d 282, 286 (2003)); 3 Am.Jur.2d Adverse Possession § 104
at 171-72 (2002) (“Although efforts to obtain deeds from
other claimants to the property do not disprove the hostile
character of a possession, efforts to buy the property from
the record owner constitute an acknowledgment of the
record owner’s superior title, and thus disprove the adverse
holding, because there has been no claim of right.”).
Accordingly, applying Picerne to the instant facts, we hold
that Cahill failed to deny George Morrow’s title by her
1997 letter, thereby halting her adverse-possession claim at
that time. See Picerne, 122 R.I. at 92, 404 A.2d at 480.
Likewise, in Tavares, 814 A.2d at 351, with regard to
“establishing hostility and possession under a claim of
right,” we explained that “the pertinent inquiry centers on
the claimants’ objective manifestations of adverse use rather

696

than on the claimants’ knowledge that they lacked colorable
legal title.” (Emphases added.) Essentially, Tavares turned
on the difference between the adverse possession
claimant’s “knowledge” regarding the owner’s title and his
“objective manifestations” thereof. In that case, the
adverse-possession claimant surveyed his land and
discovered “that he did not hold title to the parcels in
question.” Id. at 350. After such enlightenment, however,
the claimant objectively manifested his claim of ownership
to the parcels by “posting no-trespass signs, constructing
stone walls, improving drainage, and wood cutting.” Id. at
352. This Court explained that simply having knowledge
that he was not the title owner of the parcels was not
enough to destroy his claim of right given his objective,
adverse manifestations otherwise. Id. at 351-52. In fact, we
went so far as to state that “even when claimants know that
they are nothing more than black-hearted trespassers, they
can still adversely possess the property in question under a
claim of right to do so if they use it openly, notoriously,
and in a manner that is adverse to the true owner’s rights
for the requisite ten-year period.” Tavares, 814 A.2d at 351.
This statement is legally correct considering that adverse
possession does not require the claimant to make “a good
faith mistake that he or she had legal title to the land.” 16
Powell on Real Property § 91.05[2] at 91-23; see 5 Restatement
of the Law Property: Servitudes § 458, cmt. d at 2927 (1944)
(“[I]t is not necessary in order that a use be adverse that it
be made either in the belief or under a claim that it is legally
justified.”). However, to the extent that Tavares’s reference
to “black-hearted trespassers” suggests that this Court
endorses an invade-and-conquer mentality in modern
property law, we dutifully excise that sentiment from our
jurisprudence.
In the case before this Court, Cahill went beyond mere
knowledge that she was not the record owner by sending
the offer-to-purchase letter. As distinguished from the

697

Tavares claimant who did not communicate his survey
findings with anyone, Cahill’s letter objectively declared the
superiority of George Morrow’s title to the record owner
himself. See Tavares, 814 A.2d at 352; see also Eddy v. Clayton,
44 So.2d 395, 397 (Miss.1950) (“Moreover, the request of
appellant to purchase the land, which was later repeated, is
a pointed answer to any contention of an adverse claim,
since it was an acknowledgment of a superior title and
claim of [the record owner].”); Chambers v. Bessent, 17 N.M.
487, 134 P. 237, 240 (1913) (“It may safely be assumed as a
general proposition that, if a defendant in possession of
disputed territory concede[s] that the true title is in another,
and offer to purchase from him, then the continuity of
adverse possession is broken.”) (quoting Headerick v. Fritts,
93 Tenn. 270, 24 S.W. 11, 12 (1893)); Shanks v. Collins, 782
P.2d 1352, 1355 (Okla.1989) (“A recognition by an adverse
possessor that legal title lies in another serves to break the
essential element of continuity of possession.”).
In the face of this precedent, Cahill contends that the trial
justice accurately applied the law by finding that an offer to
purchase does not automatically negate a claim of right in
the property. While we agree that this proposition is correct
with respect to offers made in an effort to make peace in an
ongoing dispute, we disagree that this proposition applies
in situations, as here, where no preexisting ownership
dispute is evident. For example, the trial justice and Cahill
both cited Richterberg v. Wittich Memorial Church, 222 F.Supp.
324, 328 (W.D.Okla.1963), to support their view that an
offer to purchase should not defeat an otherwise valid
claim of adverse possession. However, Richterberg dealt with
an already disputed claim and offer to compromise. Id.
(concluding that “[a]n offer of settlement or compromise
made with reference to a pending suit is not admissible in
evidence” and that “[b]argaining for an outstanding claim
or title does not constitute a recognition of the superiority
of such claim or title”). Here, there was no dispute ongoing

698

when Cahill sent the 1997 letter. Her offer was not an olive
branch meant to put an end to pending litigation with the
Morrows. Rather, it was a clear declaration that Cahill
“wanted title to the property” from the record owner. By
doing so, she necessarily acknowledged that her interest in
lot 19 was subservient to George Morrow’s. Likewise, the
trial justice’s and Cahill’s citations to Manning v. Gregoire, 97
Or. 394, 191 P. 657, 658 (1920), are equally inapposite
because again, unlike Cahill’s letter, the adverse possessor’s
offer-to-purchase letter in Manning was an attempt “to buy
his peace.” See also Sanderson v. McManus, 252 S.W.2d 351,
356 (Mo.1952) (“The fact that defendants attempted to
purchase a strip 3 feet wide from plaintiffs * * * might have
been persuasive evidence against the claim of adverse
possession in some circumstances, but is not conclusive
here * * *. If this were an effort to settle and adjust the
controversy * * * an issue of fact was presented.”). Cahill
also incorrectly proffers the holding of Branch v. Hinson, 183
So.2d 655, 659-60 (La.Ct.App. 1966), as supporting her
position. In Branch, after a survey was conducted on the
property, “a dispute arose between the adjoining owners as
to precisely where the [property] line lay.” Id. at 659.
Although “on several occasions [the claimant] attempted to
purchase the strip in controversy as a means of settling all
doubt as to where the correct dividing line lay[,]” the court
held that these “offers to purchase did not constitute
recognition of [the record owner’s] title * * *, but were
merely attempts to compromise a disagreement without
acknowledging or recognizing [the record owner’s] title to
the land in dispute.” Id. at 660. Again, Cahill’s situation is
distinguishable from the parties’ plight in Branch because
there was no preexisting, ongoing dispute between Cahill
and Morrow when Cahill sent the letter. Based on this
caselaw, Cahill’s 1997 offer for purchase does, in fact,
recognize the superior title of the record owner and arrests
the accrual of her claim.

699

….
As such, Cahill’s cited authorities do not convince this
Court that an offer to purchase does not destroy the
elements of hostility and claim of right when there is no
ongoing dispute or outstanding claim. Here, the 1997 letter
was not an attempt to make peace with her neighbors as a
way to avoid litigation. Rather, Cahill was openly and
objectively manifesting direct evidence that George
Morrow was the true owner of lot 19 and her interest in the
property was subservient to his. This communication
negates the requisite claim of right that the doctrine of
adverse possession requires and interrupts the accrual of
Cahill’s claim. See Heggen, 144 N.W.2d at 242 (“[T]he
recognition of the owner’s title by an adverse claimant
interrupts the adverse possession.”); see also Bowen, 997 A.2d
at 579 (“‘Such an acknowledgment of the owner’s title
terminates the running of the statutory period, and any
subsequent adverse use starts the clock anew.’“). This
Court holds as a matter of law that Cahill’s 1997 letter to
George Morrow was an unequivocal offer to purchase that
halted her claim of adverse possession at that point.
Accordingly, the trial justice erred by considering any
incidents of ownership exhibited by Cahill after the 1997
letter to George Morrow interrupted her claim. Because the
“drainage control measures” were instituted in 1999 or
2000 (by Cahill’s own admission), the trial justice should
not have cited these acts as supporting Cahill’s adversepossession case. Likewise, if the trial justice’s reference to
Cahill’s “maint[enance of] the property” or “improve[ment
of] the property with * * * other plantings” implicitly
considered her reloaming and reseeding after the town
installed the retaining wall and sidewalk in 2002 or her
reseeding after the drainage improvements in 1999 or 2000,
this reliance also was in error.

700

2. The Impact of Cahill’s Offer to Purchase
on her Pre-1997 Adverse-Possession Claim
Furthermore, we also conclude that the trial justice should
not have assumed that even if Cahill’s “inquiry is
circumstantial evidence of her knowledge that George
Morrow, and subsequently [Morrow], were the legal title
holders of [lot] 19, that does not destroy the viability of this
adverse possession claim.” We agree that an offer to
purchase does not automatically invalidate a claim already
vested by statute, but we nonetheless hold that the
objective manifestations that another has superior title,
made after the statutory period and not made to settle an
ongoing dispute, are poignantly relevant to the ultimate
determination of claim of right and hostile possession
during the statutory period. See Harp v. Christian, 215 Ark.
833, 223 S.W.2d 778, 779 (1949) (“It is true that an offer to
purchase will not divest a title that has already become
vested in the adverse claimant, but such testimony may be
considered in determining the character of the possession
during the statutory period.”); Okuna v. Nakahuna, 60 Haw.
650, 594 P.2d 128, 132 n. 5 (1979) (“[A]ppellant’s conduct
subsequent to the expiration of the statutory period of
limitations, while not enough to defeat title already acquired
by adverse possession, is evidence to be considered in
determining whether the prior possession of appellant was
in fact hostile.”); see also First National Bank of Marshall v.
Beavers, 602 S.W.2d 327, 330 (Tex.Civ.App.1980) (“[W]here
a possessor acknowledges another’s superior title * * * after
the limitation period has been completed, such
acknowledgment does not automatically destroy the title
thus obtained, but it is admissible in evidence as tending to
show that possession was not in fact adverse.”).
Cahill’s 1997 offer-to-purchase letter and the two 2002
purchase inquiries (though occurring after a time period
statutorily sufficient to convey title by adverse possession)
still are relevant as to whether the twenty-six years of

701

possession prior to 1997 were made under a claim of right.
How the offer and inquiries affect the nature and character
of Cahill’s pre-1997 possession necessarily are questions for
the fact-finder to evaluate and are not resolvable by this
Court. See Lowe v. Cox, 210 Ark. 169, 194 S.W.2d 892, 896
(1946) (holding that “the weight to be given to such
recognition [in an offer to purchase] would be a question
for the jury, and the court could not declare as a matter of
law that the mere fact that defendant had recognized the
title of the [plaintiff] entitled plaintiff to a judgment for
possession”) (quoting Shirey v. Whitlow, 80 Ark. 444, 97 S.W.
444, 445 (1906)); Gonthier v. Horne, 576 A.2d 745, 748
(Me.1990) (stating that deed requests made after the
statutory period “rationally could be considered indicative
of the nature of [the claimant’s] prior holding during the
20-year [statutory] period [that] * * * [t]he Superior Court
acting as the trier of fact was free to determine, as clearly it
did, that this evidence indicated that [the claimant] did not
possess the parcel under a claim of right during the crucial
20-year period”).
3. Questions of Fact Remain
Despite the significant deference afforded to the trial
justice’s findings of fact, such findings are not unassailable.
Here, we find clear error in the trial justice’s conclusion
that “even if somehow the expression of interest in
purchasing [lot] 19, made initially in 1997, stopped the
running of the ten[-]year period * * * the evidence was
overwhelming that [Cahill] and her predecessor in title had
commenced the requisite ten-year period beginning in
1971.” Given our opinion that some of Cahill’s lot 19
activities cannot be considered because of the time frame
of their occurrence, we disagree that the trial record can be
classified as presenting “overwhelming” evidence of
adverse possession.

702

Specifically, this Court holds that the drainage
improvements and lawn reseedings that occurred after the
1997 offer-to-purchase letter cannot be used as evidence of
Cahill’s adverse possession. Whether the evidence
remaining in the record is sufficient to constitute clear and
convincing proof that Cahill perfected her claim prior to
1997 remains a question of fact. On remand, the trial
justice is directed to limit his consideration to pre-1997
events and make specific determinations whether Cahill’s
intermittent flower and tree planting, flag flying, clothesline
replacing, lawn chair and beach-paraphernalia storing, and
annual party hosting are adequate. Furthermore, given our
ruling today, the trial court must evaluate the nature of
Cahill’s and her predecessor’s twenty-six-year acts of
possession in the harsh light of the fact that Cahill openly
manifested the existence of George Morrow’s superior title
on three occasions. Lastly, this Court instructs the trial
court to determine the impact of Cahill’s initial demand,
made in the letter of January 10, 2006, from her counsel to
Morrow, on the claim of right and hostility elements.
Cahill’s 2006 letter staked a claim only to “a 20-foot strip,”
less than half the area of lot 19, while the later-filed 2006
complaint declared Cahill’s right to the entire parcel. How
Cahill’s change of heart colors the adverse nature of her
possession is a question that must be addressed by the
finder of fact.
….
JUSTICE FLAHERTY, dissenting.
I respectfully dissent from the holding of the majority in
this case. Before setting forth my reasons for doing so,
however, I take this opportunity to express my approval of
the Court’s scholarly opinion with respect to the origin and
philosophy underpinning the doctrine of adverse
possession. In summary, I agree with the majority’s
observations about the efficacy of adverse possession in a
modern world. The doctrine is a legal anachronism

703

reminiscent of a time when landowners lived on or near
their land and thus could observe encroachments on their
property. Also, it is certainly worth noting that during the
period when the adverse-possession doctrine developed,
our society believed that it was in the public interest that
land be used productively rather than being allowed to lie
fallow. Neither of those situations is the case at present in
our more mobile society. However, adverse possession
remains the law in this state until the Legislature sees fit to
change it.
A: The 1997 Letter
Simply put, I do not agree that the correspondence
between plaintiff and defendant in which plaintiff offers to
purchase defendant’s interest in lot 19 is the smoking gun
the majority perceives it to be. As is clear from a fair
reading of plaintiffs testimony, she believed that she owned
the property as a result of her longtime use of and
dominion over it. But her testimony also demonstrates that
she drew a crisp distinction between whatever ownership
rights she may have acquired and record title, which she
recognized continued to reside in the Morrows. In my
opinion, the trial justice correctly found that the “fact that
the plaintiff beginning in 1997 inquired as to the Morrow’s
willingness to consider a sale of the lot to her may certainly
show that she was aware of the Morrow’s record title. That
alone, however, does not negate her claim of right.” In
Tavares v. Beck, 814 A.2d 346, 351 (R.I.2003), we held that
the trial justice improperly factored a party’s subjective
knowledge into a claim-of-right analysis. In that case, we
clarified that “a claim of right to own or use property does
not arise from the claimants’ mistaken belief that they hold
title to the land, but rather from their objective acts of
ownership evidencing an intent to use and possess the
premises in a manner adverse to the owner of record.” Id.
at 351-52. Further, we held that “[t]his remains true even in

704

a situation in which the claimants know that they do not
hold record title to the property in question * * *.” Id. at
352. Such is the case here. Therefore, the 1997 letter was
not a “silver bullet,” but simply another piece of evidence
that should have been, and properly was, considered by the
trial justice.
Even if that letter were as significant as the majority
contends, there is no doubt that it was sent after the
statutory period had run. It is beyond dispute that plaintiffs
correspondence could not serve to divest her of title if she
had already acquired it by adverse possession. Rather, as
this Court has discussed about the elements of exclusivity
and claim of right, “in order for a defendant to successfully
defend against an adverse possession claim of disputed
land, ‘there would have to be evidence indicating that the
defendants or others had made improvements to the land
or, at the very least, had used the land in a more significant
fashion than merely walking across it.’” Anthony v. Searle,
681 A.2d 892, 898 (R.I.1996) (quoting Gammons v. Caswell,
447 A.2d 361, 368 (R.I. 1982)). There certainly was credible
evidence for the trial justice to find that plaintiff had used
the property as her own for well over twenty years before
she corresponded with Mr. Morrow in 1997. Further, there
was a stark absence of evidence that the Morrows “used the
land in a more significant fashion than merely walking
across it.” Id. There is, in my opinion, ample support for
this finding in the record, and the trial justice’s finding is
not clearly wrong.
B: The Factual Findings
Likewise, it is my view that there is sufficient evidence in
the record that plaintiffs use of the property satisfied the
statutory requirements of actual, open, notorious and
hostile use for a period of at least ten years. As we have
said in numerous cases, to establish the requisite hostility,
the adverse possessor “need only establish a use

705

‘inconsistent with the right of the owner without
permission asked or given, * * * such as would entitle the
owner to a cause of action against the intruder [for
trespass].’” Tavares, 814 A.2d at 351 (quoting 16 Powell on
Real Property, § 91.05[1] at 91-23 (2000)). Similarly, to satisfy
the requirement of open and notorious use, a claimant
must demonstrate that “the use to which the land is put
must be similar to that which would ordinarily be made by
owners of similarly situated real estate.” Id. at 352 (citing
Sherman v. Goloskie, 95 R.I. 457, 466, 188 A.2d 79, 84
(1963)). Furthermore, it is appropriate for the trial court to
“tak[e] properly into account the geophysical nature of [the]
land.” Carnevale v. Dupee, 853 A.2d 1197, 1201 (R.I.2004)
(quoting Anthony, 681 A.2d at 898).
The majority makes much of the fact that the plaintiff’s use
of the land was somewhat sporadic and seasonal in nature.
However, this is consistent with how owners of a vacant lot
adjoining a home in a beach area of the state would use this
type of property. To this point our Court has said, “[y]earround occupation is not required to prove actual and
continuous possession.” Lee v. Raymond, 456 A.2d 1179,
1183 (R.I.1983). And, this Court also has held “that in
determining whether there has been actual possession of
property, there must be considered its character and
locality, and the uses and purposes for which it is naturally
adapted * * *.” Sherman, 95 R.I. at 466, 188 A.2d at 84
(quoting Goen v. Sansbury, 219 Md. 289, 149 A.2d 17, 21-22
(1959)). There was uncontradicted testimony that the
plaintiff cut the grass, planted flowers, improved the flower
beds, and entertained on the property. This is entirely
compatible with the type of use that would be expected of
the owner of unimproved land. Moreover, this Court
repeatedly has made the statement that “[c]ultivating land,
planting trees, and making other improvements in such a
manner as is usual for comparable land have been
successfully relied on as proof of the required possession.”

706

Acampora v. Pearson, 899 A.2d 459, 467 (R.I. 2006) (quoting
Anthony, 681 A.2d at 898).
I realize that because he discounted the legal effect of the
1997 letter from the plaintiff to the defendant inquiring
about a possible sale of the property, the trial justice
referred to some improvements that were made after the
letter was sent. But, even discounting that consideration,
the trial justice found “overwhelming evidence” that the
plaintiff had exercised dominion over lot 19 as an owner
would for well in excess of ten years.6 Viewing this case
through the prism of our deferential standard of review, I
am unable to conclude that the trial justice was clearly
wrong when he found that the plaintiffs use of that land for
a period exceeding two decades met the legal requirements
to establish that she had acquired lot 19 by adverse
possession. I therefore would affirm the judgment of the
Superior Court.

6 It is true that the trial justice did not make use of the terms “strict proof” or

“clear and convincing evidence” in his decision, but to me, evidence that is found
to be “overwhelming” easily surpasses that criteria.

707

Problems
1. Is tacking likely to be an important issue on remand in Gobble?
2. How was the “open and notorious” element proved in Gobble?
How could it be proved in Cahill?
3. Explain, succinctly, the difference between the “clear error”
standard and the “clear and convincing evidence” standard.
4. If the Browns had granted the Gobbles permission to maintain
the strip as soon as they discovered the error, would the Gobbles
still have an AP claim? Why or why not?
Answers
1. Is tacking likely to be an important issue on remand in Gobble?
See fn. 7. Because all of the evidence goes to the satisfaction
of the elements beginning as far back as 1937 by the Blevins,
adverse possession was almost certainly established before the
Gobbles even acquired the property. Tacking is the adding of
the period of one adverse possessor’s possession of property
to that of the possessor’s successor in order to meet the
statutory period. That wouldn’t be necessary here if the
Blevins adversely possessed for the necessary period.
Remember, once you meet the elements for the statutory
period, the property is yours. No formal act need be done. We
can’t be absolutely certain that tacking is irrelevant to this
case, because the court sent the case back down to the trial
court for either a more detailed discussion of its decision or
the taking of more evidence. Thus, tacking may well become a
live issue. It’s important to note, though, that tacking wasn’t
really relevant to the WVa Supreme Court’s decision.
2. How was the “open and notorious” element proved in Gobble?
How could it be proved in Cahill?
Straight from the case. The Gobbles called witnesses,
including the Fletchers and the Gobbles, who testified that
the reputation in the community was that the strip belonged

to the Blevins/Fletchers/Gobbles. How might this be done in
Cahill?
3. Explain, succinctly, the difference between the “clear error”
standard and the “clear and convincing evidence” standard.
Clear error is the standard of review that appellate courts
typically apply on reviewing individual findings of fact by a
trial court. Unless the appellate court, reviewing only the cold
record, finds clear error, they will uphold a factual finding
even if it seems like it’s probably wrong. (Remember the dead
fish standard from the Gobble case.) The clear and convincing
evidence standard is a standard of proof that a litigant must
meet in order establish a fact in the trial court. As we saw, this
standard, rather than the usual “preponderance standard,”
which means 50% plus a scintilla, must be met when proving
adverse possession.
4. If the Browns had granted the Gobbles permission to maintain
the strip as soon as they discovered the error, would the Gobbles
still have an AP claim? Why or why not?
Though further facts will be developed on remand, it’s almost
certainly true that the Gobbles’ AP claim doesn’t depend on
their having met the AP elements during their own period of
possession. If there was AP, it very likely occurred back when
the Blevins owned the land. Since AP already occurred,
permission from the Browns was irrelevant. Yes, normally
permission defeats AP, but that’s not true if AP has already
occurred, meaning the statutory period has already passed, at
the time permission is granted.
Carpenter v. Ruperto, 315 N.W.2d 782 (Iowa 1982).
James R. Bowers, Jr. and Keith E. Uhl of Scalise, Scism,
Gentry, Brick & Brick, Des Moines, for appellant.
John D. Hudson and Timothy R. Williams of Carney,
Hudson, Williams & Green, Des Moines, for appellees.

709

Considered by UHLENHOPP, P. J., and McCORMICK,
ALLBEE, LARSON, and SCHULTZ, JJ.
MCCORMICK, JUSTICE
Plaintiff Virginia Carpenter appeals from an adverse decree
in her action to quiet title to land adjacent to her residential
premises based on a theory of adverse possession.
Defendants Charles L. Ruperto, Edith C. Ruperto, and
Tom McCormick cross-appeal from a portion of the decree
awarding plaintiff limited relief on equitable grounds. We
affirm on the merits of the appeal and dismiss the crossappeal for want of jurisdiction.
The determinative question on the appeal is whether the
trial court misinterpreted the law governing the claim of
right element in finding plaintiff failed to carry her burden
of proof. The determinative question on the cross-appeal is
whether it was timely.
Because the case was tried in equity, we find the facts anew.
The evidence is largely undisputed.
Plaintiff and her husband moved in 1951 to a home which
they purchased in southeast Des Moines. Plaintiff’s
husband subsequently died, but plaintiff has lived on the
premises continuously. Her lot has a frontage of 40 feet
and is 125 feet long. It is legally described as:
Lot One Hundred Forty-Four (144) in
Gray’s Subdivision of Lots Fifty (50)
and Sixty-Two (62) in BROOKS AND
COMPANY, an Addition, now
included in and forming a part of the
City of Des Moines, Iowa.
A larger undeveloped lot bounded plaintiff’s property to
the north. It is described as:
The East 125 Feet of the North 474
Feet of Lot Sixty-Two (62) in

710

BROOKS
AND
COMPANY’S
ADDITION TO THE CITY OF
DES MOINES, now included in and
forming a part of the City of Des
Moines, Iowa.
Defendants and their predecessors have held record title to
this lot at all material times.
The property which plaintiff claims to have acquired by
adverse possession is the south 60 feet of defendants’ lot.
Thus, the property in dispute is a 60 by 125 foot parcel
adjacent to the north boundary of plaintiff’s lot.
When plaintiff and her husband moved into their home in
July 1951, the lot north of their property was a cornfield.
Although plaintiff was not certain of the location of the
northern boundary of her lot, she knew her lot’s
dimensions, and she knew it did not include the cornfield.
In 1952 the corn was not planted as far south on the
adjacent lot. Concerned about rats and the threat of fire,
and desiring additional yard for their children, plaintiff and
her husband cleared several feet of the property to the
north, graded it, and planted grass seed on it. Since that
time plaintiff has used the land as an extension of her yard.
She planted peony bushes on it during the 1950’s, installed
a propane tank on it approximately 30 feet north of her lot
in 1964, constructed a dirt bank on the city right of way to
divert water from that parcel in 1965, and put in a driveway
infringing five feet onto the land in 1975.
The remainder of defendants’ lot was planted in corn until
approximately 1957. The lot was owned by Abraham and
Beverly Rosenfeld from July 1960 until February 1978.
During that period the only use Rosenfelds made of the
property was to store junk and debris on it. Except for the
strip used by plaintiff, the lot was overgrown with brush
and weeds. The Rosenfelds paid all taxes and special
assessments on the property. Plaintiff and her husband at

711

one time obtained the Rosenfelds’ permission to keep a
horse on the lot. On one occasion in the 1960’s plaintiff
examined the plat of defendants’ lot in the courthouse to
see if it ran all the way to a street to the north.
When defendant McCormick purchased his interest in the
lot in 1978, he was aware of the possibility of a boundary
dispute because of the location of plaintiff’s propane tank
and driveway. He and the other defendants were
unsuccessful in their efforts to settle the dispute with
plaintiff, who subsequently brought this action.
In seeking to establish her ownership of the disputed
parcel, plaintiff alleged she had “for more than thirty (30)
years last past been in open, exclusive, hostile, adverse and
actual possession under claim of right.”The trial court held
in part that she did not establish her possession was under
a claim of right. The court reasoned that a claim of right
must be made in good faith and that plaintiff was not in
good faith because she knew someone else had title to the
land. Although the court found plaintiff had not proved her
claim of adverse possession, it ordered defendants to “do
equity” by deeding to her the strip of land her driveway was
on and to pay the costs of moving the propane tank to her
lot. The appeal and cross-appeal followed.
I. The appeal.
The doctrine of adverse possession is based on the ten-year
statute of limitations for recovery of real property in
section 614.1(5), The Code. One claiming title by adverse
possession must establish hostile, actual, open, exclusive
and continuous possession, under a claim of right or color
of title, for at least ten years, by clear and positive proof.
Because the law presumes possession under regular title,
the doctrine is strictly construed. These and other
governing principles are explained in I-80 Associates, Inc.
v. Chicago, Rock Island and Pacific Railroad, 224 N.W.2d
8, 10-11 (Iowa 1974).

712

As permitted, plaintiff relied on claim of right rather than
color of title. In contending the trial court erred in finding
she failed in her proof of this element, she attacks the
viability of the principal case relied on by the trial court,
Goulding v. Shonquist, 159 Iowa 647, 141 N.W. 24 (1913).
Its facts are analogous to those here.
In Goulding the individual also cleared land adjacent to his
house. The land was overrun with brush and willows and
was frequented by hunters. After clearing it, the individual
used the land as a pasture and garden. In finding he did not
establish good faith claim of right, the court said:
When he moved into his present
property, the lands in question were
objectionable because they were
frequented by hunters, and for that
reason he and his wife thought they
ought to clear them up. He says he
supposed they were part of the old
river bed or waste land upon which
anyone could enter. No other facts are
offered by defendant as a reason for
entering into the possession of the
land at that time. Whether the title to
the land was in the state or some other
person, the defendant knew that he
had no title and that he had no claim
of title, and no right whatever to enter
into the possession, and his possession
was not in good faith for that reason.
Id. at 651, 141 N.W. at 25. The court quoted a statement
from Litchfield v. Sewell, 97 Iowa 247, 251, 66 N.W. 104,
106 (1896), that “that there can be no such thing as adverse
possession where the party knows he has no title, and that,
under the law, he can acquire none by his occupation.”
Plaintiff argues that it is inconsistent to say ownership can
be acquired by claim of right as an alternative to color of

713

title and at the same time say ownership cannot be acquired
by a person who knows he does not have title. She also
argues that the good faith requirement was eliminated by
the court’s decision in I-80 Associates, Inc. Although we
agree it is an overstatement to say ownership cannot be
acquired by a person who knows he does not have title,
plaintiff is incorrect in her argument that good faith is not
an essential component of claim of right. Moreover, we
agree with the trial court that plaintiff did not prove this
element of her adverse possession claim.
The overbreadth of the statement that title cannot be
obtained through adverse possession by one who knows he
has no title is demonstrated in Litchfield, Goulding and
subsequent decisions. In Litchfield the court rejected the
adverse possession claim of a person in possession of land
under a quitclaim deed from a squatter. In finding an
absence of good faith, the court noted the adverse
possession doctrine “has no application to one who actually
knows that he has no claim, or title, or right to a title.” 97
Iowa at 250, 66 N.W. at 106. Under this holding a mere
squatter or one who claims under a squatter cannot have a
good faith claim of right to the property, but mere
knowledge by the person that he has no title is not
preclusive. A claim of right by a squatter is a false claim. To
permit a squatter to assert a claim of right would put a
premium on dishonesty. See 4 H. Tiffany, Real Property s
1147 at 792 (3d ed. 1975). One of the main purposes of the
claim of right requirement is “to bar mere squatters from
the benefits of adverse possession.”7 R. Powell, Real
Property P 1015 (Rohan ed. 1981).
As in Litchfield, the possessor in Goulding not only knew
that he had no title but that he had no claim of title or any
right to enter into possession of the property. He was a
mere squatter.
Knowledge of a defect in title is not alone sufficient to
preclude proof of good faith:

714

One is not deprived of the benefit of
the statute of limitations merely
because his claim of right is
unenforceable or his title is known to
be defective. The doctrine of adverse
possession presupposes a defective
title. It is not based on, but is hostile
to, the true title. If the statute were to
run only in favor of a valid title, it
would serve no purpose. The holder of
such a title has no need to invoke the
statute. Where bad faith is held to
negative an alleged claim of right, it is
only another way of saying that such
claim has been disproved.
Creel v. Hammans, 234 Iowa 532, 535, 13 N.W.2d 305, 307
(1944).
Nevertheless, when knowledge of lack of title is
accompanied by knowledge of no basis for claiming an
interest in the property, a good faith claim of right cannot
be established. For example, a mere exchange of quitclaim
deeds by persons who know legal title is in another will not
support a claim of right:
It is evident the claim and possession of George C.
Abel could not have been in good faith. There was no
reason why he and his brother should believe they had
any right to divide and apportion between themselves
the real estate of their father while he was an insane
patient in the state hospital. They must be held to
have known the quitclaim deeds they exchanged gave
them no title. At best, they proceeded upon what
proved to be an unfounded assumption that their
father would never be discharged from the
adjudication of insanity. No claim of ownership by
adverse possession will be sustained upon such a

715

foundation. Plaintiff’s position at this point does not
appeal to a court of equity.
Abel v. Abel, 245 Iowa 907, 920, 65 N.W.2d 68, 75 (1954).
The good faith requirement was not an issue in I-80
Associates, Inc. The discussion of claim of right in that case
concerned mode of proof and did not include a
comprehensive definition of the element. See 224 N.W.2d
at 11. The requirement of good faith was implicitly
reaffirmed in a subsequent case, Pearson v. City of
Guttenberg, 245 N.W.2d 519, 532 (Iowa 1976). We now
confirm that good faith, as explained in this case, is
essential to adverse possession under a claim of right.
We believe plaintiff failed to prove a good faith claim of
right in the present case. She knew her lot did not include
the cornfield north of it. She knew someone else had title
to it and she had no interest in it or claim to it. This is not a
case of confusion or mistake. At the time she entered
possession of the disputed land, plaintiff knew she had no
legal right to do so. To say that one can acquire a claim of
right by merely entering possession would recognize
squatter’s rights. Possession for the statutory period cannot
be bootstrapped into a basis for claiming a right to
possession.
We hold that the trial court was right in rejecting plaintiff’s
claim.
II. The cross-appeal.
Under Iowa R.App. 5(a), a “cross-appeal may be taken
within the thirty days for taking an appeal or in any event
within five days after the appeal is taken.”Defendants did
not take their cross-appeal within the thirty days for taking
an appeal. Nor did they take their cross-appeal within five
days after plaintiff filed her notice of appeal with the clerk
of the district court. They argue, however, that the rule
should be interpreted to allow a cross-appeal within five

716

days after receipt of a copy of the notice of appeal. They
provided an affidavit to show their cross-appeal was taken
within five days after their attorney received a copy of the
notice of appeal in the mail.
The rule is not susceptible to the interpretation urged by
defendants. The five-day period commences when an
appeal is “taken.” Under rule 6(a), the appeal is “taken and
perfected by filing a notice with the clerk of court where
the order, judgment or decree was entered, signed by
appellant or his attorney.”Therefore the five-day period
began on the date the notice of appeal was filed with the
clerk, and the cross-appeal was taken too late. Compliance
with the time limitations for taking a cross-appeal is
mandatory and jurisdictional. See Hogan v. Chesterman,
279 N.W.2d 12 (Iowa 1979). Because the cross-appeal was
untimely, we did not acquire jurisdiction of it, and it must
be dismissed.
AFFIRMED ON THE APPEAL; DISMISSED ON THE
CROSS-APPEAL.
Howard v. Kunto, 477 P.2d 210 (Ct. App. Wash 1970).
GLENN E. CORREA, SHELTON, FOR APPELLANT.
R. F. DOTSCH, PHILIP W. RICHARDSON, OLYMPIA, FOR
RESPONDENT.
PEARSON, JUDGE.
Land surveying is an ancient art but not one free of the
errors that often creep into the affairs of men. In this case,
we are presented with the question of what happens when
the descriptions in deeds do not fit the land the deed
holders are occupying. Defendants appeal from a decree
quieting title in the plaintiffs of a tract of land on the shore
of Hood Canal in Mason County.
At least as long ago as 1932 the record tells us that one
McCall resided in the house now occupied by the appellantdefendants, Kunto. McCall had a deed that described a 50-

717

foot-wide parcel on the shore of Hood Canal. The error1
that brings this case before us is that 50 feet described in
the deed is not the same 50 feet upon which McCall’s
house stood. Rather, the described land is an adjacent 50foot lot directly west of that upon which the house stood.
In other words, McCall’s house stood on one lot and his
deed described the adjacent lot.2 Several property owners to
the west of defendants, not parties to this action, are
similarly situated.
Over the years since 1946, several conveyances occurred,
using the same legal description and accompanied by a
transfer of possession to the succeeding occupants. The
Kuntos’ immediate predecessors in interest, Millers, desired
to build a dock. To this end, they had a survey performed
which indicated that the deed description and the physical
occupation were in conformity. Several boundary stakes
were placed as a result of this survey and the dock was
constructed, as well as other improvements. The house as
well as the others in the area continued to be used as
summer recreational retreats.
The Kuntos then took possession of the disputed property
under a deed from the Millers in 1959. In 1960 the
respondent-plaintiffs, Howard, who held land east of that
of the Kuntos, determined to convey an undivided one-half
interest in their land to the Yearlys. To this end, they

1 Plaintiff’s survey, the validity of which is challenged by defendant, demonstrates

the error.
2 Defendant’s deed and chain of title purported to convey

The West fifth (50) feet of the East two hundred (200)
feet of Government Lot two (2), Section nineteen (19);
and the West fifty (50) feet of the East two hundred (200)
feet of Government Lot one (1), Section thirty (30); all in
Township twenty-two (22), North, of Range two (2) West,
W.M.; …

The land defendants and their predecessors occupied, according to the survey,
was the ‘West 50 feet of the east 150 feet of Government Lot 2, in Section 19,
Township 22 North, of Range 2 West of W.M. …

718

undertook to have a survey of the entire area made. After
expending considerable effort, the surveyor retained by the
Howards discovered that according to the government
survey, the deed descriptions and the land occupancy of the
parties did not coincide. Between the Howards and the
Kuntos lay the Moyers’ property. When the Howards’
survey was completed, they discovered that they were the
record owners of the land occupied by the Moyers and that
the Moyers held record title to the land occupied by the
Kuntos. Howard approached Moyer and in return for a
conveyance of the land upon which the Moyers’ house
stood, Moyer conveyed to the Howards record title to the
land upon which the Kunto house stood. Until plaintiffs
Howard obtained the conveyance from Moyer in April,
1960, neither Moyer nor any of his predecessors ever
asserted any right to ownership of the property actually
being possessed by Kunto and his predecessors. This action
was then instituted to quiet title in the Howards and
Yearlys. The Kuntos appeal from a trial court decision
granting this remedy.
At the time this action was commenced on August 19,
1960,3 defendants had been in occupance of the disputed
property less than a year. The trial court’s reason for
denying their claim of adverse possession is succinctly
stated in its memorandum opinion: “In this instance,
defendants have failed to prove, by a preponderance of the
evidence, a continuity of possession or estate to permit
tacking of the adverse possession of defendants to the
possession of their predecessors.”

3 The inordinate delay in bringing this matter to trial appears from the record to

be largely inexcusable. However, neither counsel who tried the case was at fault in
any way. We have intentionally declined to consider defendant’s motion (probably
well founded) to dismiss this case for want of prosecution (Rules of Pleading,
Practice and Procedure 41.04W (1950)) for the reason that a new trial of the same
issues would be inevitable and in light of our disposition of the case on the merits,
defendants are not prejudiced by disregarding the technical grounds.

719

Finding of fact 6,4 which is challenged by defendants,
incorporates the above concept and additionally finds
defendant’s possession not to have been “continuous”
because it involved only “summer occupancy.”
Two issues are presented by this appeal:
(1) Is a claim of adverse possession
defeated because the physical use of
the premises is restricted to summer
occupancy?
(2) May a person who receives record
title to tract A under the mistaken
belief that the has title to tract B
(immediately contiguous to tract A)
and who subsequently occupies tract
B, for the purpose of establishing title
to tract B by adverse possession, use
the periods of possession of tract B by
his immediate predecessors who also
had record title to tract A?

4 “In the instant case the defendants” building was not simply over the line, but

instead was built wholly upon the wrong piece of property, not the property of
defendants, described in Paragraph Four (4) of the complaint herein, but on the
property of plaintiffs, described in Paragraph Three of the complaint and herein.
That the last three deeds in the chain of title, covering and embracing defendants’
property, including defendants’ deed, were executed in other states, specifically,
California and Oregon. And there is no evidence of pointing out to the grantees in
said three deeds, aforesaid, including defendants’ deed, of any specific property,
other than the property of defendants, described in their deed, and in Paragraph
Four (4) of the complaint, and herein; nor of any immediate act of the grantees,
including defendants, in said Three (3) deeds, aforesaid, of taking possession of
any property, other than described in said three (3) deeds, aforesaid; and the
testimony of husband, defendant, was unequivocally that he had no intention of
possessing or holding anything other than what the deed called for; and, that there
is no showing of any continuous possession by defendants or their immediate
predecessors in interest, since the evidence indicates the property was in the
nature, for us, as a summer occupancy, and such occupancy and use was for
rather limited periods of time during comparatively short portions of the year, and
was far from continuous.’

720

In approaching both of these questions, we point out that the
evidence, largely undisputed in any material sense, established that
defendant or his immediate predecessors did occupy the premises,
which we have called tract B, as though it was their own for far
more than the 10 years as prescribed in RCW 4.16.020.5
We also point out that findings of fact is not challenged for its
factual determinations but for the conclusions contained therein to
the effect that the continuity of possession may not be established
by summer occupancy, and that a predecessor’s possession may
not be tacked because a legal ‘claim of right’ did not exist under the
circumstances.
We start with the oft-quoted rule that:
(T)o constitute adverse possession,
there must be actual possession which
is uninterrupted, open and notorious,
hostile and exclusive, and under a
Claim of right made in good faith for
the statutory period.
(Italics ours.) Butler v. Anderson, 71 Wash.2d 60, 64, 426 P.2d
467, 470 (1967). Also see Fadden v. Purvis, 77 Wash.Dec.2d
22, 459 P.2d 385 (1969) and cases cited therein.
We reject the conclusion that summer occupancy only of a
summer beach home destroys the continuity of possession
required by the statute. It has become firmly established
that the requisite possession requires such possession and

5 This statute provides:

(4.16.020) Actions to be commenced within ten years. The
period prescribed in RCW 4.16.010 for the
commencement of actions shall be as follows: “Within ten
years; Actions for the recovery of real property, or for the
recovery of the possession thereof; and no action shall be
maintained for such recovery unless it appears that the
plaintiff, his ancestor, predecessor or grantor was seized or
possessed of the premises in question within ten years
before the commencement of the action.”

721

dominion ‘as ordinarily marks the conduct of owners in
general in holding, managing, and caring for property of
like nature and condition.’ Whalen v. Smith, 183 Iowa 949,
953, 167 N.W. 646, 647 (1918). Also see Mesher v. Connolly,
63 Wash.2d 552, 388 P.2d 144 (1964); Skoog v. Seymour, 29
Wash.2d 355, 187 P.2d 304 (1947); Butler v. Anderson, Supra;
Fadden v. Purvis, Supra.
We hold that occupancy of tract B during the summer
months for more than the 10-year period by defendant and
his predecessors, together with the continued existence of
the improvements on the land and beach area, constituted
‘uninterrupted’ possession within this rule. To hold
otherwise is to completely ignore the nature and condition
of the property. See Fadden v. Purvis, Supra.
We find such rule fully consonant with the legal writers on
the subject. In F. Clark, Law of Surveying and Boundaries,
s 561 (3d ed. 1959) at 565: “Continuity of possession may
be established although the land is used regularly for only a
certain period each year.” Further, at 566:
This rule (which permits tacking) is
one of substance and not of absolute
mathematical continuity, provided
there is no break so as to sever two
possessions. It is not necessary that the
occupant should be actually upon the
premises continually. If the land is
occupied during the period of time
during the year it is capable of use,
there is sufficient continuity.
We now reach the question of tacking. The precise issue
before us is novel in that none of the property occupied by
defendant or his predecessors coincided with the property
described in their deeds, but was contiguous.
In the typical case, which has been subject to much
litigation, the party seeking to establish title by adverse

722

possession claims More land than that described in the
deed. In such cases it is clear that tacking is permitted.
In Buchanan v. Cassell, 53 Wash.2d 611, 614, 335 P.2d 600,
602 (1959) the Supreme Court stated:
This state follows the rule that a
purchaser may tack the adverse use of
its predecessor in interest to that of his
own where the land was intended to
be included in the deed between them,
but was mistakenly omitted from the
description.
El Cerrito, Inc. v. Ryndak, 60 Wash.2d 847, 376 P.2d 528
(1962).
The general statement which appears in many of the cases
is that tacking of adverse possession is permitted if the
successive occupants are in ‘privity.’ See Faubion v. Elder, 49
Wash.2d 300, 301 P.2d 153 (1956). The deed running
between the parties purporting to transfer the land
possessed traditionally furnishes the privity of estate which
connects the possession of the successive occupants.
Plaintiff contends, and the trial court ruled, that where the
deed does not describe Any of the land which was
occupied, the actual transfer of possession is insufficient to
establish privity.
To assess the cogency of this argument and ruling, we must
turn to the historical reasons for requiring privity as a
necessary prerequisite to tacking the possession of several
occupants. Very few, if any, of the reasons appear in the
cases, nor do the cases analyze the relationships that must
exist between successive possessors for tacking to be
allowed. See W. Stoebuck, The Law of Adverse Possession
In Washington in 35 Wash.L.Rev. 53 (1960).
The requirement of privity had its roots in the notion that a
succession of trespasses, even though there was no

723

appreciable interval between them, should not, in equity, be
allowed to defeat the record title. The ‘claim of right,’ ‘color
of title’ requirement of the statutes and cases was probably
derived from the early American belief that the squatter
should not be able to profit by his trespass.66
However, it appears to this court that there is a substantial
difference between the squatter or trespasser and the
property purchaser, who along with several of his
neighbors, as a result of an inaccurate survey or
subdivision,77 occupies and improves property exactly 50
feet to the east of that which a survey some 30 years later
demonstrates that they in fact own. It seems to us that
there is also a strong public policy favoring early certainty
as to the location of land ownership which enters into a
proper interpretation of privity.
On the irregular perimeters of Puget Sound exact
determination of land locations and boundaries is difficult
and expensive. This difficulty is convincingly demonstrated
in this case by the problems plaintiff’s engineer
encountered in attempting to locate the corners. It cannot
be expected that every purchaser will or should engage a
surveyor to ascertain that the beach home he is purchasing
lies within the boundaries described in his deed. Such a
practice is neither reasonable nor customary. Of course, 50foot errors in descriptions are devasting where a group of
adjacent owners each hold 50 feet of waterfront property.
The technical requirement of ‘privity’ should not, we think,
be used to upset the long periods of occupancy of those
who in good faith received an erroneous deed description.
Their ‘claim of right’ is no less persuasive than the

6 The English common law does not require privity as a prerequisite for tacking.

See F. Clark, Law of Surveying and Boundaries, s 561 (3d ed. 1959) at 568.
7 Defendants’ deed and chain of title had an alternate description referring to an

unrecorded plat called the Navy Yard Additions 1 and 2.

724

purchaser who believes he is purchasing More land than his
deed described.
In the final analysis, however, we believe the requirement
of ‘privity’ is no more than judicial recognition of the need
for some reasonable connection between successive
occupants of real property so as to raise their claim of right
above the status of the wrongdoer or the trespasser. We
think such reasonable connection exists in this case.
Where, as here, several successive purchasers received
record title to tract A under the mistaken belief that they
were acquiring tract B, immediately contiguous thereto, and
where possession of tract B is transferred and occupied in a
continuous manner for more than 10 years by successive
occupants, we hold there is sufficient privity of estate to
permit tacking and thus establish adverse possession as a
matter of law.
We see no reason in law or in equity for differentiating this
case from Faubion v. Elder, 49 Wash.2d 300, 301 P.2d 153
(1956) where the appellants were claiming More land than
their deed described and where successive periods of
occupation were allowed to be united to each other to
make up the time of adverse holding. To the same effect
See Naher v. Farmer, 60 Wash. 600, 111 P. 768 (1910), and
cases cited therein; Buchanan v. Cassell, 53 Wash.2d 611, 335
P.2d 600 (1959) and cases cited therein; El Cerrito, Inc. v.
Ryndak, 60 Wash.2d 847, 376 P.2d 528 (1962); See 17
A.L.R.2d 1128 (1951). This application of the privity
requirement should particularly pertain where the holder of
record title to tract B acquired the same with knowledge of
the discrepancy.
Judgment is reversed with directions to dismiss plaintiffs’
action and to enter a decree quieting defendants’ title to the
disputed tract of land in accordance with the prayer of their
cross-complaint.
ARMSTRONG, P.J., and PETRIE, J., concur.

725

Nome 2000 v. Fagerstrom, 799 P.2d 304 (Alaska 1990)
Constance Cates Ringstad, Paul A. Barrett, Call, Barrett &
Burbank, Fairbanks, for appellants.
Jon R. Larson, Larson, Timbers & Van Winkle, Inc.,
Nome, for appellees.
Before MATTHEWS, C.J., and RABINOWITZ, BURKE,
COMPTON and MOORE, JJ.
MATTHEWS, CHIEF JUSTICE.
This appeal involves a dispute over a tract of land
measuring approximately seven and one-half acres,
overlooking the Nome River (hereinafter the disputed
parcel).1 Record title to a tract of land known as mineral
survey 1161, which includes the disputed parcel, is held by
Nome 2000.
On July 24, 1987, Nome 2000 filed suit to eject Charles and
Peggy Fagerstrom from the disputed parcel. The
Fagerstroms counterclaimed that through their use of the
parcel they had acquired title by adverse possession.
A jury trial ensued and, at the close of the Fagerstroms’
case, Nome 2000 moved for a directed verdict on two
grounds. First, it maintained that the Fagerstroms’ evidence
of use of the disputed parcel did not meet the requirements
of the doctrine of adverse possession. Alternatively, Nome
2000 maintained that the requirements for adverse
possession were met only as to the northerly section of the
parcel and, therefore, the Fagerstroms could not have
acquired title to the remainder. The trial court denied the
motion. After Nome 2000 presented its case, the jury found
that the Fagerstroms had adversely possessed the entire
parcel. The court then entered judgment in favor of the
Fagerstroms.

1 A diagram of the disputed parcel is attached as an appendix to this opinion.

On appeal, Nome 2000 contests the trial court’s denial of
its motion for a directed verdict and the sufficiency of the
evidence in support of the jury verdict. It also challenges
two evidentiary rulings made by the trial court and the trial
court’s award of attorney’s fees to the Fagerstroms.
I. FACTUAL BACKGROUND2
The disputed parcel is located in a rural area known as
Osborn. During the warmer seasons, property in Osborn is
suitable for homesites and subsistence and recreational
activities. During the colder seasons, little or no use is made
of Osborn property.
Charles Fagerstrom’s earliest recollection of the disputed
parcel is his family’s use of it around 1944 or 1945. At that
time, he and his family used an abandoned boy scout cabin
present on the parcel as a subsistence base camp during
summer months. Around 1947 or 1948, they moved their
summer campsite to an area south of the disputed parcel.
However, Charles and his family continued to make
seasonal use of the disputed parcel for subsistence and
recreation.
In 1963, Charles and Peggy Fagerstrom were married and,
in 1966, they brought a small quantity of building materials
to the north end of the disputed parcel. They intended to
build a cabin.
In 1970 or 1971, the Fagerstroms used four cornerposts to
stake off a twelve acre, rectangular parcel for purposes of a

Because Nome 2000 challenges the trial court’s denial of its motion for a
directed verdict, and the sufficiency of the evidence underlying the jury verdict, we
are constrained to view the evidence in a light most favorable to the Fagerstroms.
See Kavorkian v. Tommy’s Elbow Room, Inc., 694 P.2d 160, 163 (Alaska 1985); Levar v.
Elkins, 604 P.2d 602, 603 (Alaska 1980). Our statement of the facts is made from
this viewpoint.
2

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Native Allotment application.3 The northeast and southeast
stakes were located on or very near mineral survey 1161.
The northwest and southwest stakes were located well to
the west of mineral survey 1161. The overlap constitutes
the disputed parcel. The southeast stake disappeared at an
unknown time.
Also around 1970, the Fagerstroms built a picnic area on
the north end of the disputed parcel. The area included a
gravel pit, beachwood blocks as chairs, firewood and a 50gallon barrel for use as a stove.
About mid-July 1974, the Fagerstroms placed a camper
trailer on the north end of the disputed parcel. The trailer
was leveled on blocks and remained in place through late
September. Thereafter, until 1978, the Fagerstroms parked
their camper trailer on the north end of the disputed parcel
from early June through September. The camper was
equipped with food, bedding, a stove and other household
items.
About the same time that the Fagerstroms began parking
the trailer on the disputed parcel, they built an outhouse
and a fish rack on the north end of the parcel. Both fixtures
remained through the time of trial in their original
locations.4 The Fagerstroms also planted some spruce trees,
not indigenous to the Osborn area, in 1975-76.
During the summer of 1977, the Fagerstroms built a
reindeer shelter on the north end of the disputed parcel.

3 Federal law authorizes the Secretary of the Interior to allot certain non-mineral

lands to Native Alaskans. See Act of May 17, 1906, 34 Stat. 197, as amended, Act
of August 2, 1956, 70 Stat. 954; repealed by the Alaska Native Claims Settlement
Act, § 18, with a savings clause for applications pending on December 18, 1971,
43 U.S.C. § 1617(a) (1982); modified by the Alaska National Interest Lands
Conservation Act, § 905, 43 U.S.C. § 1634 (1982). As a result of her application,
Peggy was awarded two lots (lots 3 and 12) which border the disputed parcel
along its western boundary. (See Appendix.)
4 The outhouse was blown over one winter by strong winds, but was re-erected

the following summer with additional supports.

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The shelter was about 8x8 feet wide, and tall enough for
Charles Fagerstrom to stand in. Around the shelter, the
Fagerstroms constructed a pen which was 75 feet in
diameter and 5 feet high. The shelter and pen housed a
reindeer for about six weeks and the pen remained in place
until the summer of 1978.
During their testimony, the Fagerstroms estimated that
they were personally present on the disputed parcel from
1974 through 1978, “every other weekend or so” and “[a]
couple times during the week … if the weather was good.”
When present they used the north end of the parcel as a
base camp while using the entire parcel for subsistence and
recreational purposes. Their activities included gathering
berries, catching and drying fish and picnicking. Their
children played on the parcel. The Fagerstroms also kept
the property clean, picking up litter left by others.
While so using the disputed parcel, the Fagerstroms walked
along various paths which traverse the entire parcel. The
paths were present prior to the Fagerstroms’ use of the
parcel and, according to Peggy Fagerstrom, were free for
use by others in connection with picking berries and
fishing. On one occasion, however, Charles Fagerstrom
excluded campers from the land. They were burning the
Fagerstroms’ firewood.
Nome 2000 placed into evidence the deposition testimony
of Dr. Steven McNabb, an expert in anthropology, who
stated that the Fagerstroms’ use of the disputed parcel was
consistent with the traditional Native Alaskan system of
land use. According to McNabb, unlike the non-Native
system, the traditional Native system does not recognize
exclusive ownership of land. Instead, customary use of
land, such as the Fagerstroms’ use of the disputed parcel,
establishes only a first priority claim to the land’s resources.
The claim is not exclusive and is not a matter of ownership,
but is more in the nature of a stewardship. That is, other
members of the claimant’s social group may share in the

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resources of the land without obtaining permission, so long
as the resources are not abused or destroyed. McNabb
explained that Charles’ exclusion of the campers from the
land was a response to the campers’ use of the
Fagerstroms’ personal property (their firewood), not a
response to an invasion of a perceived real property
interest.5
Nevertheless, several persons from the community testified
that the Fagerstroms’ use of the property from 1974
through 1977 was consistent with that of an owner of the
property. For example, one Nome resident testified that
since 1974 “[the Fagerstroms] cared for [the disputed
parcel] as if they owned it. They made improvements on it
as if they owned it. It was my belief that they did own it.”
During the summer of 1978, the Fagerstroms put a cabin
on the north end of the disputed parcel. Nome 2000 admits
that from the time that the cabin was so placed until the
time that Nome 2000 filed this suit, the Fagerstroms
adversely possessed the north end of the disputed parcel.
Nome 2000 filed its complaint on July 24, 1987.
II. DISCUSSION
A.
The Fagerstroms’ claim of title by adverse possession is
governed by AS 09.10.030, which provides for a ten-year
limitations period for actions to recover real property.6
Thus, if the Fagerstroms adversely possessed the disputed
parcel, or any portion thereof, for ten consecutive years,
then they have acquired title to that property. See Hubbard
5 However, Charles Fagerstrom testified that when he excluded the campers he

felt that they were “on our property.” He also testified that during the mid to late
70’s he would have “frown[ed]” upon people camping on “my property.”
6 A seven-year period is provided for by AS 09.25.050 when possession is under

“color and claim of title.” The Fagerstroms do not maintain that their possession
was under color of title.

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v. Curtiss, 684 P.2d 842, 849 (Alaska 1984) (“[T]itle
automatically vests in the adverse possessor at the end of
the statutory period.”). Because the Fagerstroms’ use of the
parcel increased over the years, and because Nome 2000
filed its complaint on July 24, 1987, the relevant period is
July 24, 1977 through July 24, 1987.
We recently described the elements of adverse possession
as follows: “In order to acquire title by adverse possession,
the claimant must prove, by clear and convincing evidence,
… that for the statutory period ‘his use of the land was
continuous, open and notorious, exclusive and hostile to
the true owner.’” Smith v. Krebs, 768 P.2d 124, 125 (Alaska
1989) (citations omitted). The first three conditionscontinuity, notoriety and exclusivity-describe the physical
requirements of the doctrine. See R. Cunningham, W.
Stoebuck and D. Whitman, The Law of Property § 11.7 at
758-60, 762-63 (1984). The fourth condition, hostility, is
often imprecisely described as the “intent” requirement. Id.
at 761.
On appeal, Nome 2000 argues that as a matter of law the
physical requirements are not met absent “significant
physical improvements” or “substantial activity” on the
land. Thus, according to Nome 2000, only when the
Fagerstroms placed a cabin on the disputed parcel in the
summer of 1978 did their possession become adverse. For
the prior year, so the argument goes, the Fagerstroms’
physical use of the property was insufficient because they
did not construct “significant structure[s]” and their use
was only seasonal. Nome 2000 also argues that the
Fagerstroms’ use of the disputed parcel was not exclusive
because “[o]thers were free to pick the berries, use the
paths and fish in the area.” We reject these arguments.
Whether a claimant’s physical acts upon the land are
sufficiently continuous, notorious and exclusive does not
necessarily depend on the existence of significant
improvements, substantial activity or absolute exclusivity.

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Indeed, this area of law is not susceptible to fixed standards
because the quality and quantity of acts required for
adverse possession depend on the character of the land in
question. Thus, the conditions of continuity and exclusivity
require only that the land be used for the statutory period
as an average owner of similar property would use it.
Alaska National Bank v. Linck, 559 P.2d 1049, 1052 (Alaska
1977) (One test for determining continuity of possession is
to ask whether the land was used as an average owner
would use it.); Peters v. Juneau-Douglas Girl Scout Council, 519
P.2d 826, 831 (Alaska 1974) (“[P]ossession need not be
absolutely exclusive; it need only be a type of possession
which would characterize an owner’s use.”). Where, as in
the present case, the land is rural, a lesser exercise of
dominion and control may be reasonable. See Linck, 559
P.2d at 1052 (citing Cooper v. Carter Oil Co., 7 Utah 2d 9, 316
P.2d 320 (1957) for the proposition that “pasturing of
sheep for three weeks a year is sufficient where land is
suitable only for grazing”), 1053 (citing Monroe v. Rawlings,
331 Mich. 49, 49 N.W.2d 55, 56 (1951) for the proposition
that “6 visits per year to hunting cabin plus some timber
cutting found sufficient where land was wild and
undeveloped”); Peters, 519 P.2d at 831 (citing Pulcifer v.
Bishop, 246 Mich. 579, 225 N.W. 3 (1929) for the
proposition that exclusivity is not destroyed as to beach
property commonly used by others).
The character of the land in question is also relevant to the
notoriety requirement. Use consistent with ownership
which gives visible evidence of the claimant’s possession,
such that the reasonably diligent owner “could see that a
hostile flag was being flown over his property,” is
sufficient. Shilts v. Young, 567 P.2d 769, 776 (Alaska 1977).
Where physical visibility is established, community repute is

732

also relevant evidence that the true owner was put on
notice.7 Id.
Applying the foregoing principles to this case, we hold that
the jury could reasonably conclude that the Fagerstroms
established, by clear and convincing evidence, continuous,
notorious and exclusive possession for ten years prior to
the date Nome 2000 filed suit.8 We point out that we are
concerned only with the first year, the summer of 1977
through the summer of 1978, as Nome 2000 admits that
the requirements of adverse possession were met from the
summer of 1978 through the summer of 1987.
The disputed parcel is located in a rural area suitable as a
seasonal homesite for subsistence and recreational
activities. This is exactly how the Fagerstroms used it
during the year in question. On the premises throughout
the entire year were an outhouse, a fish rack, a large
reindeer pen (which, for six weeks, housed a reindeer), a
picnic area, a small quantity of building materials and some
trees not indigenous to the area. During the warmer season,
for about 13 weeks, the Fagerstroms also placed a camper
trailer on blocks on the disputed parcel. The Fagerstroms
and their children visited the property several times during
the warmer season to fish, gather berries, clean the
premises, and play. In total, their conduct and
improvements went well beyond “mere casual and
occasional trespasses” and instead “evince[d] a purpose to
exercise exclusive dominion over the property.” See Peters,

The function of the notoriety requirement is to afford the true owner an
opportunity for notice. However, actual notice is not required; the true owner is
charged with knowing what a reasonably diligent owner would have known. Linck,
559 P.2d at 1053.
7

8 Neither the trial court’s denial of Nome 2000’s motion for a directed verdict nor

the jury’s verdict should be disturbed if reasonable jurors could have concluded
that the requirements for adverse possession were met. See Kavorkian, 694 P.2d at
163; Municipality of Anchorage v. Baugh Construction & Engineering Co., 722 P.2d 919,
927 (Alaska 1986).

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519 P.2d at 830. That others were free to pick berries and
fish is consistent with the conduct of a hospitable
landowner, and undermines neither the continuity nor
exclusivity of their possession. See id. at 831 (claimant
“merely acting as any other hospitable landowner might” in
allowing strangers to come on land to dig clams).
With respect to the notoriety requirement, a quick
investigation of the premises, especially during the season
which it was best suited for use, would have been sufficient
to place a reasonably diligent landowner on notice that
someone may have been exercising dominion and control
over at least the northern portion of the property. Upon
such notice, further inquiry would indicate that members of
the community regarded the Fagerstroms as the owners.
Continuous, exclusive, and notorious possession were thus
established.
Nome 2000 also argues that the Fagerstroms did not
establish hostility. It claims that “the Fagerstroms were
required to prove that they intended to claim the property
as their own.” According to Nome 2000, this intent was
lacking as the Fagerstroms thought of themselves not as
owners but as stewards pursuant to the traditional system
of Native Alaskan land usage. We reject this argument and
hold that all of the elements of adverse possession were
met.
What the Fagerstroms believed or intended has nothing to
do with the question whether their possession was hostile.
See Peters, 519 P.2d at 832 (with respect to the requirement
of hostility, the possessor’s “beliefs as to the true legal
ownership of the land, his good faith or bad faith in
entering into possession … are all irrelevant.”); The Law of
Property at 761 (citing, inter alia, Peters for the view “of most
decisions and of nearly all scholars, that what the possessor
believes or intends should have nothing to do with
[hostility]”). Hostility is instead determined by application
of an objective test which simply asks whether the possessor

734

“acted toward the land as if he owned it,” without the
permission of one with legal authority to give possession.
Hubbard, 684 P.2d at 848 (citing Peters, 519 P.2d at 832). As
indicated, the Fagerstroms’ actions toward the property
were consistent with ownership of it, and Nome 2000
offers no proof that the Fagerstroms so acted with
anyone’s permission. That the Fagerstroms’ objective
manifestations of ownership may have been accompanied
by what was described as a traditional Native Alaskan
mind-set is irrelevant. To hold otherwise would be
inconsistent with precedent and patently unfair.
Having concluded that the Fagerstroms established the
elements of adverse possession, we turn to the question
whether they were entitled to the entire disputed parcel.
Specifically, the question presented is whether the jury
could reasonably conclude that the Fagerstroms adversely
possessed the southerly portion of the disputed parcel.9
Absent color of title,10 only property actually possessed may
be acquired by adverse possession. Bentley Family Trust v.
Lynx Enterprises, Inc., 658 P.2d 761, 768 (Alaska 1983) and
Linck, 559 P.2d at 1052-53 n. 8. See also Krebs, 768 P.2d at
126 and n. 7 (recognizing the possibility that the
requirements of adverse possession may be met only as to a
portion of a disputed parcel). Here, from the summer of
1977 through the summer of 1978, the Fagerstroms’ only
activity on the southerly portion of the land included use of
the pre-existing trails in connection with subsistence and
recreational activities, and picking up litter. They claim that
these activities, together with their placement of the
cornerposts, constituted actual possession of the southerly
9 See supra n. 8.
10 “Color of title exists only by virtue of a written instrument which purports to

pass title to the claimant, but which is ineffective because of a defect in the means
of conveyance or because the grantor did not actually own the land he sought to
convey.” Hubbard, 684 P.2d at 847. As noted above, see n. 6, the Fagerstroms do
not claim the disputed parcel by virtue of a written instrument.

735

portion of the parcel. Nome 2000 argues that this activity
did not constitute actual possession and, at most, entitled
the Fagerstroms to an easement by prescription across the
southerly portion of the disputed parcel.
Nome 2000 is correct. The Fagerstroms’ use of the trails
and picking up of litter, although perhaps indicative of
adverse use, would not provide the reasonably diligent
owner with visible evidence of another’s exercise of
dominion and control. To this, the cornerposts add
virtually nothing. Two of the four posts are located well to
the west of the disputed parcel. Of the two that were
allegedly placed on the parcel in 1970, the one located on
the southerly portion of the parcel disappeared at an
unknown time. The Fagerstroms maintain that because the
disappearing stake was securely in place in 1970, we should
infer that it remained for a “significant period.” Even if we
draw this inference, we fail to see how two posts on a
rectangular parcel of property can, as the Fagerstroms put
it, constitute “[t]he objective act of taking physical
possession” of the parcel. The two posts simply do not
serve to mark off the boundaries of the disputed parcel
and, therefore, do not evince an exercise of dominion and
control over the entire parcel. Thus, we conclude that the
superior court erred in its denial of Nome 2000’s motion
for a directed verdict as to the southerly portion. This case
is remanded to the trial court, with instructions to
determine the extent of the Fagerstroms’ acquisition in a
manner consistent with this opinion.
….
Affirmed in part, reversed in part, and remanded.
APPENDIX (omitted)

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