Thomasville v. Kaminstein – Copyright in Furniture

Recently, Brian Frye posted a picture to Instagram of a piece of furniture with a 1959 copyright notice.  I found this interesting but not entirely surprising, as Mazer v. Stein had come down a few years earlier and companies were presumably testing the boundaries of conceptual severability and design protection

I tried searching for the registration in the Catalog of Copyright Entries to no avail, but did find a tidbit in the Annual Report of the Register of Copyrights for 1969:

An action for declaratory judgment and
mandatory registration was filed on August 7,
1968, against the Register of Copyrights, in
the U.S. District Court for the District of
Columbia The suit, Thomasville Furniture
Industries, Inc. v. Kaminstein, Civil Action
No. 1959-68, concerned eight applications for
registration of claims to copyright in three-dimensional
designs applied to articles of furniture.
The Copyright Office had rejected the
claims on the grounds that the works revealed
nothing identifiable as “a work of art” within
the meaning of the copyright law. On September
26 the Department of Justice, on behalf
of the Register, filed an answer. On January 3,
1969, the case was brought to a close when the
plaintiff fled a stipulation dismissing the case
with prejudice.

With knowledge of the case in hand, I was able to get the case file from the National Archives.  It’s fairly short at 20 pages, and the interesting parts are the complaint and answer – and especially the copy of the letter denying the copyright registration.  In short, the Copyright Office held that a design for furniture was not copyrightable.  For this interested, I believe this is the Thomasville Allegro Desk that was among the eight Thomasville sought to register for copyright.  After the answer was filed Thomasville voluntarily dismissed the case, so no adjudication was ever made by the court.

In recent years there’s been a drift away from this position, as this article from INTA exemplifies.  The Star Athletica decision has been taken as further evidence of a shift to allowing copyright to protect design.  I try to avoid saying which approach is correct here, but I do think the progression of the law is interesting.

One interesting wrinkle – the copyright notice Brian found says 1959, but the denied registration and appeal were in 1968 – is it possible that in 1959 they applied a copyright notice but hadn’t filed the registration application, and the furniture in this photo wasn’t strictly related to the 1968 action?

Archival Adventures: Saving ASCAP’s Library

As folks who follow this blog know, I’ve been engaged in a semi-successful effort to track down transcripts of Supreme Court oral arguments related to IP from before they started recording audio in OT 1955.  One organization that I figured would have a couple of such transcripts, including from the foundational 1917 case of Herbert v. Shanley, was the American Society of Composers, Authors, and Publishers, or ASCAP.

The invaluable Dean Kay, author of the Dean’s List email many of you already receive daily, brokered the connection with ASCAP’s Senior VP Richard Reimer, who informed me that ASCAP was moving offices shortly, and I should move fast.  Upon arriving at ASCAP’s (former) offices, it was made clear to me that they wouldn’t have room for their library in their new offices, and it needed a new home.  About half the books were already boxed up, and I boxed up about 10 more boxes, loaded everything into the car, and drove it down to the Jacob Burns Library at the George Washington University School of Law, where I’d arranged for the books to join the collection.  The Law Library put up a nice piece about the collection here.

At first glance, one volume of particular interest to the broader public is the one related to Nathan Burkan’s defense of Mae West on charges of obscenity related to her play The Pleasure Man.  There’s a nice writeup of the story here, which I won’t repeat.  However, I have scanned the entire section of the book related to the Mae West and put it online (I didn’t scan the rest, dealing with People v. Joseph Flinn – there’s only so many hours in the day).  It’s available here, and it includes legal arguments about cross-dressing not being obscene as well as a complete draft affidavit for Mae West’s signature detailing the entire history of the production.

Below the jump I’ve included a list of the cases which have papers included in the ASCAP collection now at the GW Law Library.  This list is not complete and is just meant to help those looking for information on a particular case.

Continue reading “Archival Adventures: Saving ASCAP’s Library”

Tracking Accuracy in Copyright Records – A Case Study

A few weeks ago, Joseph Felcone emailed me to ask about helping with a mystery in the copyright records he’d been investigating, and asked if I’d help.  For folks not in the know, Joe is an expert on New Jersey books and publishing, and the author of a number of wonderful books on the subject – including a recent catalog of all New Jersey copyright registrations from 1791-1870, which all fine libraries should own (if unsure if your library is truly fine, order a copy from Joe to cement such status).

Joe was trying to determine information about A Member of Congress. A Novel. By William Wentworth (New York: G. W. Dillingham, 1898).  He’d already figured out a fair bit of what I discuss below, but I think the process of figuring out the information is informative, because it tells us about how inaccuracy and uncertainty can creep into the copyright records.  The story continues below.

Continue reading “Tracking Accuracy in Copyright Records – A Case Study”

Remembering the Washingtonian Case

This coming term, the Supreme Court will hear Fourth Estate Public Benefit Corp. v. Wall-Street.com, regarding whether a party has standing to sue upon application for copyright, or whether a party must wait for the Copyright Office to register (or reject) their application.  The Supreme Court only occasionally wades into this realm of technical copyright registration issues, and one of the last times the Supreme Court did so in earnest was in the 1939 case of Washingtonian Publishing Co. v. Pearson et al, where a divided court held that a 13 month delay between publication and registration did not invalidate the copyright in the work.  Although the issue is not the same in Fourth Estate, the issues are sufficiently adjacent (and issues of this ilk come before the Court so rarely), it’s unsurprising that Washingtonian v. Pearson is among the most-cited cases in Petitioner’s brief that was filed last month.

While serving as Abraham L. Kaminstein Scholar in Residence at the Copyright Office two years ago, I noticed that the Office has a bound volume of documents from the Washingtonian case, and that the transcript of record from the case available on microfilm and online from Gale includes fewer documents.  I’ve uploaded what I’m calling a “complete” casefile for Washingtonian v. Pearson, including documents from subsequent proceedings in the case after the Supreme Court remanded it.  Several years later the D.C. Circuit Court of Appeals upheld the damages award of the District Court in the amount of $15.46 (plus a worthless judgment against a bankrupt publisher), a number Washingtonian Publishing was none too pleased with, marking an anticlimax to the case.

As well as these documents, I’ve uploaded the testimony from the case following remand, which is to me the most interesting thing I found.  It includes the testimony of Drew Pearson, the defendant in this case, and longtime author of the “Washington Merry-go-Round” column.  From the testimony the broader context of the case becomes more clear – the Washingtonian magazine was owned by the still-famous Mayflower Hotel, which in 1931 declared bankruptcy.  This is why the issues of Washingtonian in question were not registered – they apparently kept publishing, but no funds were available to cover the registrations.  The shadow of the Depression hangs over this case – the corporate defendant Liveright Publishing filed for bankruptcy as well during this time.  It is doubtful that the litigation costs were terribly welcome by any of the parties to this case.

Finally, I’ve uploaded a selection of pleadings from the case that I don’t believe made their way into the transcript of record.  These include a motion to dismiss the case, a motion to strike parts of the defendant’s answer (those focusing on ownership of copyright, or lack thereof), and a motion for rehearing by the plaintiff.  Unlike the previous documents these do share parts of the argument over the issue of copyright formalities, but I don’t know if they actually add new information about the case and its reasoning/argument.

I had hoped to find a transcript of the oral argument from this case to add to my collection, but no such document was in the archives.  It might still exist, but I don’t know where it would be in this case.

Taking Common-Law Copyright for Pre-1972 Sound Recordings Seriously

For those unfamiliar with common-law copyright and sound recordings, it might be helpful to read my post Of Sheep and Goats summarizing the issues as context for this post, although I do go over the basics here as well.

Almost five years ago (how the time flies) I was reading about the then-new cases where Flo & Eddie of the Turtles were suing SiriusXM and Pandora for infringement of their common-law copyrights.  I distinctly remember going to bed and then getting up with a bit of a start, such is the drama of my life – I’d seen this before, and I didn’t think many others had.  In particular, while writing in my 2007 article The Twilight of the Opera Pirates, I remember reading various cases involving the operatic duo of Gilbert & Sullivan, including the Mikado and Iolanthe cases.  Both cases involved attempts by the British owners of the work to prevent American theaters from performing their in-house orchestrations of these operas, which had been orchestrated from the published piano reduction of the opera (designed to be performed at home).  At the time I’d focused on the success of the strategy, but looking back I realized something else – everyone seemed to agree that if the American theaters had used the unpublished orchestral score directly, they would be infringing the common-law copyright of the composer, even though (a) public performance of music was not infringing until over a decade later, and (b) the composer was British, and foreigners would not get copyright in America until 1891.

I dove deeper into the issue, and last month the Cincinnati Law Review published my article about common-law copyright for sound recordings, called “Common-Law Copyright.” I’ve been talking about this piece for a while now, and this will be the last such post, because it’s been published, and the final PDF is online.  My initial goal was to find more such examples from older cases, and I believe I demonstrated conclusively that common-law copyright has always included performance rights, and that such performance rights are not dependent on federal statute granting performance rights.  However, as I was writing I started to wonder whether performance rights and duration were the only points of difference between statutory and common-law copyright.

And that is why I gave my article the title “Common-Law Copyright,” instead of a title more explicitly linking it to sound recordings.  Because we’ve really failed to think through the doctrinal consequences of using common-law copyright to protect older sound recordings, or even really what common-law copyright is.  In my article I believe I document pretty clearly just how different common-law copyright is from statutory copyright, and how we’ve fairly to take it seriously as a doctrine and ended up with a muddle of unpredictability and confusion.

So, what is common-law copyright? In a nutshell, common-law copyright is the perpetual right of control over unpublished works – both pre-publication manuscripts and documents meant to be kept private, like letters and diaries.1  Copyright law both common-law and federal provides that if a work is published then it loses common-law protection In the 1930s through the 1950s, a number of court cases held that sound recordings are not published under state laws, even if publicly sold, and thus could be protected by common-law.  In 1972 sound recordings were brought within federal law and state-law protection was rendered largely moot, but this change only applied to sound recordings made on February 15, 1972 or later, leading to the current predicament regarding “pre-72” sound recordings.

In the middle of the 20th century, it wasn’t entirely clear if the doctrine was actually common-law copyright or a different sui generis protection – Courts generally didn’t use the phrase “common-law copyright,” and Nimmer – the major treatise on copyright at the time (and one of the major ones still) said in the 1973 edition that the protection for sound recordings is not common-law copyright.  However, in recent years Courts, especially in New York, have settled on the protection for pre-72 sound recordings being under common-law copyright.

Common-law copyright was abolished except for pre-72 sound recordings by the 1976 Copyright Act, meaning that Courts generally only encounter common-law copyright issues in this narrow context now.  Courts have thus tended to treat common-law copyright for pre-72 sound recordings as being largely identical to statutory copyright.  I believe this is a mistake, and if we’re going to use common-law copyright for pre-72 sound recordings, we should take the doctrine seriously and understand that it is substantially broader from statutory copyright.

The article covers a lot of ground, and I hope folks in the various affected fields find it helpful.  The Music Modernization Act, if passed, will require payment of royalties for digital audio transmission of pre-72 sound recordings, implicitly but not explicitly recognizing common-law rights in pre-72 sound recordings.  Whether we choose to take common-law copyright seriously going forward is up to us.

I try to include something archival with each post, so here‘s the casefile from Gee v. CBS on appeal to the 3rd Circuit Court of Appeals from the decision of the Eastern District of Pennsylvania, on the question of whether common-law copyright in sound recordings made by Bessie Smith is subject to adverse possession.  The very short unpublished opinion of the 3rd Circuit is also included.

Earlier Posts, which can also be seen in this blog’s Common-Law Copyright tag:

 

 

  1. The concept of mailing a document to yourself, sometimes called common-law or “poor man’s” copyright, is completely different, not to mention largely ineffectual.

Video Post: A 1992 Hearing on Copyright in Legal Compilations

One interesting thing about case reporters is that even though the text of reported cases themselves been denied copyright protection by the courts, going all the way back to 1834 in Wheaton v. Peters, case reports have been consistently registered for copyright.  In the latter part of the 1980s, Mead (the service now known as Lexis) introduced star pagination, allowing a reader to identify when a new page began in the printed reporter, which was published by West.  West Publishing sued, and in 1986 the 8th Circuit held that West had shown a likelihood of success that the Mead star pagination feature infringed their copyrights in page numbers, in other words the selection and arrangement of the case text.

In 1988 the parties settled, but concerns lingered about the applicability of copyright to law reporters and other legal compilations.  This was amplified by the 1991 Supreme Court decision in Feist v. Rural Telephone, which cast the holding of the 8th Circuit in the Mead case into some doubt.  In Congress a bill was introduced to make clear that page numbers in legal compilations could not be protected by copyright.  Thus a Congressional hearing was held on May 14th, 1992, before a subcommittee of the House Judiciary Committee, to discuss the issue of whether copyright should protect such things as page numbers.  The text of this hearing has long been available, but I think it’s much more interesting on video, and in some cases it illuminates the content of the hearing as well.  I’ve included the video below.

Robert Fulton’s 1811 Steamboat Patent – Lost and Found

Robert Fulton is generally remembered as the inventor of the steamboat.  There is some controversy over his debts to previous inventors, but Fulton was the one able to develop a steamboat which was commercially successful, and which led to the rise of steamboat transit.  I hadn’t thought about it much, but his patent in his steamboat is one of the key documents in the history of American invention and technology.  That changed a bit ago when Adam Mossoff tweeted this out about how the patents Robert Fulton took out in his famous steamboat were lost, and I couldn’t just leave it be.

Perhaps nothing gets my attention more than saying that something is “lost,” so I had to look into it.  It turns out that the patents are less lost than has commonly been assumed.  Continue reading “Robert Fulton’s 1811 Steamboat Patent – Lost and Found”

All the Forgotten IP Cases, Where Do they All Come From…

Two years ago last month, I was reading the trial court opinion from White-Smith v. Apollo from 1905 (the player piano case), and I noticed a cite to a 1878 Supreme Court case I hadn’t heard of before, Perris v. Hexamer.  I gave the decision a read and found that it was about the copyrightability – or rather lack of copyrightability – of using specific colors and shapes to denote features on a map, where the alleged infringing map was of a different city (and thus obviously not copied).  At this time I was about to close out a year as the Abraham L. Kaminstein Scholar in Residence at the U.S. Copyright Office, and I was a bit loathe to admit that I’d never even heard of a Supreme Court case on copyrightability.  So, instead, I asked the coterie of IP professors I’m friends with on Facebook “why don’t people talk about Perris v. Hexamer more?” (the story continues after the jump)

Continue reading “All the Forgotten IP Cases, Where Do they All Come From…”

Video Post: Waldo Moore on the History of the Copyright Office

Below is a video recorded at the U.S. Copyright Office in early 1987, at an event for staff, where Waldo Moore, who had been at the Office since 1951, provided some history of the Copyright Office, and discussed some of the individuals who had held the position of Register of Copyrights.  Moore retired the year before he gave this talk, and William Patry has a nice piece about him on his now-defunct blog.  Much of the material Moore includes in his talk has, to my knowledge, not been published.

I will caution, for those seeking details on recent events, the Moore is quite circumspect about events from 1970 on, preferring to speak about earlier eras.  Looming in the background of the talk was George Cary’s appointment as Register in 1971, which led Barbara Ringer to sue and that appointment to be vacated, at which point George Cary retired and Barbara Ringer was named Register.  George Cary is specifically mentioned as being in the audience for this talk, which would make discussion of the controversy impolitic (it probably would have been even without him in the room).

Of Sheep and Goats: A Condensed History of Common-Law Copyright for Sound Recordings

“Some sheep are being treated like goats and the resulting mélange can satisfy no one except those who happen to profit from the confusion.”
Benjamin Kaplan, Harvard Law Professor, on sound recording copyright, from Publication in Copyright Law: The Question of Phonograph Records, 103 U. Penn. L. Rev. 469 (1955).

To be clear, what follows is solely my opinion, and should not be attributed to any institution, public or private.  Much to my chagrin I received no support for writing this post, directly or indirectly.

There’s been a lot of talk lately about the CLASSICS Act, now incorporated into the Music Modernization Act which passed the House and is now pending before the Senate.  There’s been a number of posts arguing whether it’s an extension of copyright to 144 years, or a clarification of the status quo.  I’ve personally spent a while on the issue of pre-1972 sound recordings and copyright, and my article Common-Law Copyright should be coming out soon, so I figured it might be helpful to explain a bit more why I tend to think this bill is largely a clarification and federalization of the status quo, by way of providing the background for pre-72 sound recordings.  This is fairly condensed, and I’d urge folks who want the whole story to read my article.  Those interested in the subject should also look at the Copyright Office’s Report from 2011 on pre-1972 sound recordings, as well as its related documents.

Continue reading “Of Sheep and Goats: A Condensed History of Common-Law Copyright for Sound Recordings”