Tam, The First Amendment, and Copyright

Last week the Supreme Court decided the case about the Constitutionality of the clause of federal trademark law excluding from registration disparaging, scandalous, or immoral marks, and found this clause to be unconstitutional. Part of the reasoning at both the Circuit Court level and the Supreme Court level was that such a rule would be obviously unconstitutional vis a vis copyrights, and there is no good way to develop a rule that distinguishes copyrights from trademarks in this context. I’ve been telling people informally that the history of copyright registration is actually a lot more complicated, and that I should write an article explaining this. But in the interim, in the interest of getting the information out there, I’ve put the basic information in a blog post.

In rejecting the argument that trademark registration is government speech, and thus excluded from the protection of the First Amendment, Justice Alito’s opinion states the following (Slip Op. at 21-22)

For if the registration of trademarks constituted government speech, other systems of government registration could easily be characterized in the same way.

Perhaps the most worrisome implication of the Government’s argument concerns the system of copyright registration. If federal registration makes a trademark government speech and thus eliminates all First Amendment protection, would the registration of the copyright for a book produce a similar transformation?

The Federal Circuit’s opinion is much lengthier, and explores this issue in greater detail.  This attitude is unsurprising, as nowadays the Copyright Office registers essentially anything.  Indeed, the most frequent copyright litigant, by far, is a pornographer.  However, copyright’s content neutrality has only been well established since fairly recently, and in the past the Copyright Office has denied registration – and Courts have found works uncopyrightable – driven by both legal concerns such as obscenity as well as more amorphous concerns like immorality.

As William Patry notes in a post about this question in 2005, the trial court in Bleistein held that a “picture which represents a dozen or more figures of women in tights, with bare arms, and with much of the shoulders displayed, and by means of which it is designed to lure men to a circus” was not within the protection of the statute, finding it “merely frivolous, and to some extent immoral in tendency.”1  The Supreme Court overruled this decision, but did not address the discussion of morality, focusing on other issues.  Subsequent cases would hold that works that were illegal or immoral were not the subjects of copyright.

The offending poster from Bleistein

In the first part of the twentieth century, federal prosecutions for obscenity through the mail generally made most questions of copyright in works that might even have a shade of obscenity superfluous for domestic authors.  For foreign authors the combination of obscenity prosecutions and the manufacturing clause of the copyright law at that time (requiring that English-language books be printed and typeset in America in order to receive copyright protection) was essentially a bar to copyright protection in America for books that might be within European sensibilities, but on the edge of American ones.  Robert Spoo has written about the travails of as James Joyce in this arena, and it’s a fascinating story all its own.

In the annual report of the Register of Copyrights for 1941, the Copyright Office made clear for the first time as a written policy that it would not register “seditious, blasphemous, immoral or libelous” works, as the Office did not consider them to be copyrightable at all.  1941 Annual Report at 29-30.  Although this policy was anchored in a belief that such works were generally illegal, such a policy goes far beyond the scope of the first amendment today – I can’t say for certain if it did in 1941 though.

It is unclear whether many works were rejected in these standards, but in September of 1954, the Copyright Office issued Ruling Number 32 relating to Obscene Works, reading as follows:

a. The Office will not ordinarily attempt to examine a work to determine whether it contains material that might be considered obscene.
b. If the examiner believes, upon an ordinary examination, that a work is obscene, the Chief of the Examining Division will determine whether the work should be referred to the Department of Justice for possible prosecution. If the work is not so referred, the copyright claim may be registered.
c. When a work is referred to the Department of Justice, registration will be held up pending action by that Department.

The unraveling of this system came in September 1958, with the arrest of Lawrence E. Gichner, owner of a sheet metal company and amateur sexologist, who had attempted to register his book “Erotic Aspects of Chinese Culture.”  Apparently the Copyright Office had referred it on examination to the Department of Justice, who had contacted the Washington, DC police.  The DC police arrested him, and took for evidence fifty crates of material.  The ACLU rushed to Mr. Gichner’s defense, and the Librarian asked the President to ask his Attorney General for an opinion as to whether the Copyright Office was permitted to register works that are illegal or immoral.  On December 18, 1958, the Attorney General answered that the Office was not required to turn away works on the grounds of immorality or illegality.  41 Op. Att’y Gen. 395 (1958).

However, an eagle-eyed reader may note that the Attorney General did not actually hold that immoral works were protected by copyright – in fact he strongly implied the opposite, that both immoral and obscene works are not protected by copyright, but that it was not the job of the Copyright Office to make that determination.  In 1979 and 1982 the Fifth and 9th Circuits held that immoral and obscene works were protected by copyright.  Jartech v. Clancy, 666 F.2d 403 (9th Cir. 1982); Mitchell Bros. Film Group v. Cinema Adult Theater, 604 F.2d 852 (5th Cir. 1979)  However, in 1998, the Southern District of New York noted that it was “far from clear that the Second Circuit will follow the Fifth and Ninth Circuits in rejecting the argument that obscene material is entitled to copyright protection.”  Devils Films, Inc. v. Nectar Video, 29 F. Supp. 2d 174, 176 (S.D.N.Y. 1998).  This would be a minority position, but Courts have been noting a split on the issue ever since (the Second Circuits and most other Circuits have never addressed the issue head-on).

As obscenity has steadily shrank into the darkest corners and immorality has essentially disappeared as a legal standard, it’s easy to miss that there was surprisingly little of substance stating that copyright law protected works which fall into the vague standard of immorality.  In fact, Tam can reasonably be stated to be a precedent for copyright’s neutrality, albeit perhaps an unwitting one.  It seems that with the decision to no longer examine for immorality or obscenity, the law came to recognize that such works were protected by copyright, even in spite of a long tradition to the contrary, only partially told here.  Whether there was a causality to this or it was simply a consequence of the expanding scope of the first amendment is an interesting one.

Further Reading:

  1. the discussion of whether the posters at issue were works of the “fine arts” may have been more relevant to the question of whether the 1874 Print and Label Act controlled than to whether they were copyrightable generally, as I discuss in my article Reimagining Bleistein

The Promise and Perils of Protecting Sound Recordings with Common Law Copyright

It’s been too long since an update…and I had a couple of interesting old things to share. However, then the Northern District of Illinois granted a motion to dismiss in Sheridan v. iHeartmedia, and I needed to say a bit about it.  Some posts have been focusing on the fact that the Court found that performance rights do not exist at common law, but I think the Court actually went substantially further, and substantially abrogated civil protections for sound recordings made before 1972 in Illinois (a state criminal statute still exists for commercial record piracy).  In this post I will (hopefully) explain the doctrine, and why this case is a much bigger deal than is being commonly stated.  Finally, as always, I’ll include a tidbit from the archives.

As I’ve mentioned a number of times before, I have an article forthcoming on common-law copyright (edits are still being done by the Cincinnati Law Review).  In that piece I largely take as a given that common-law copyright protects sound recordings made before February 15, 1972, and then spend close to 100 pages exploring what exactly that means, focusing on the question of performance rights particularly and differences between statutory federal copyright law and common-law state copyright law.  And regarding New York and California, at least, that is a fairly safe presumption – given the (cryptic and outdated) California statute, coupled with caselaw from the New York Court of Appeals.  However, in other states the applicability of common-law copyright to pre-1972 sound recordings is suddenly appearing questionable, and I wanted to explore a bit what that means.

My article tells the story in much more detail, but as a result of a series of cases culminating in the Supreme Court’s 1908 decision in White-Smith v. Apollo, Courts and the Copyright Office came to understand that the 1909 Copyright Act did not protect mechanical reproductions of musical compositions (i.e. discs or piano rolls) as being protected by copyright law.  This began to be controversial in the 1930s, where big bands began to worry about radio stations using their recordings to compete with their (extremely lucrative) live radio programs.  Fred Waring and Paul Whiteman were the two primary litigants in these suits, and Waring found success, both at the Pennsylvania Supreme Court and at a Federal District Court in North Carolina (although North Carolina and several other states would abrogate these decisions by statute).  Whiteman on the other hand had his position rejected by the Second Circuit Court of Appeals, which would partially reverse itself in 1955 in the case of Capitol v. Mercury.

It is axiomatic that common law protected a creative work (under the pre-1978 laws) until it was published, but publication destroyed common-law copyright, leaving only the possibility of statutory copyright.  The arguments at issue in all these cases involved a fundamental question – is a sound recording that is commercially sold “published” within the meaning of copyright law?1  If publication occurred then no rights exist at common law, but if publication did not occur despite the public sale of the phonorecord, then common-law rights remain.

The argument that the sale of phonorecords does not constitute a publication of the sound recording they contain is bipartite.  The first part is objective, and argues that selling a record is more akin to public performance (which is not publication) than public sale (which is), because the record is just a captured performance.  Because the American rule is that performance is not publication, therefore commercial sale of a record does not constitute a publication.  The other half is subjective, and notes that a publication is a dedication to the public, and that the bandleaders in question did not intend to dedicate their recordings to the public without any intellectual property protections – accordingly the records were not “published” and common-law protection remains.

In the 1960s piracy became a serious problem with the advent of prerecorded tapes, and state common law would prove insufficient as a remedy.  In 1971 sound recordings were brought within federal law, but this amendment applied only to sound recordings made February 15, or thereafter, of 1972 leaving state common-law copyright as the main source of legal protection for sound recordings made before that point against unauthorized exploitation .  Shortly thereafter the US Supreme Court confirmed that state-law protections for sound recordings older than 1972 were both Constitutional and not preempted by the federal statute.  A few decades passed, and the New York Court of Appeals once again affirmed that sound recordings from before 1972 remained unpublished in that state.

And that has remained the bedrock of a rich panoply of litigation in recent years over whether the common law right includes a performance rights. And at least in New York state that has resulted in a decision I took issue with that pre-1972 sound recordings lack a performance right.  However, as the issue comes before other states, Courts are showing skepticism of the underlying argument made by Waring & Whiteman, both because it’s a transparent (if possibly necessary) legal fiction and because it offers a convenient way to resolve these cases neatly.  And as mentioned whether there has been a publication that destroys common law copyright is a question of state law, so we possibly have fifty different standards for whether sale of a phonorecord constitutes publication of the sound recording it embodies – and most states have no caselaw on this specific question.

This leads us to the Sheridan decision which is the spur for this posting.  In concluding that the motion to dismiss on common-law grounds should be granted, the Court held that “There is no dispute that the Sheridans voluntarily sold their recordings. When they did so, the Sheridans lost their common law right to control the public performance of those recordings in Illinois (and pretty much everywhere else).”  This doesn’t leave the Sheridans without legal protection (48 out of 50 states, including Illinois, have criminal statutes aimed at commercial record piracy.  However, these statutes do not go beyond commercial copying and resale, and leave the putative owner of the recording at common law without any civil remedies in most cases.

And it’s not just the Illinois decision where a Court questions whether a sound recording is published or not – in the Flo & Eddie litigation in Florida the District Court questioned whether Florida protected sound recordings at all, before holding it did not need to reach the question.  At recent oral argument, the Justice of the Florida Supreme Court seemed mightily suspicious of the arguments regarding nonpublication, although one cannot infer too much from oral arguments.

What happens when a state’s highest court holds that sound recordings are not published?  Is federalization finally going to get the boost it needs from stakeholders?  Surely leaving such a situation in place would be unacceptable to the owners of the sound recording?  I’m curious to find out.

As promised, a tidbit from the archives.  The Whiteman v. RCA case has a fascinating file, at the New York location of the National Archives.  It includes extensive deposition testimony and more.  One thing that I’m not aware of having been circulated is the District Court’s findings of fact and conclusions of law, which are substantially more detailed than its published opinion.  Sadly I only have cell phone pictures of the Findings of Fact and Conclusions of Law (PDF 10 MB), but here it is.

I planned on having a whole separate section on whether the protection for pre-1972 sound recordings is really common-law at all – many commentators in the mid-20s century said no, including Nimmer.  But that’s really a matter of semantics, fun as those are, and this post is more than long enough already.

  1. One interesting (to me at least) question is whether this question of publication is a matter of state or federal law.  I go into this more in the paper, but I’m inclined to think that the question of whether a publication occurred to destroy common-law copyright (a “divestative” publication) is a question of state law, except a successful federal registration is one of the ways common-law copyright is destroyed.  On the other hand, whether sufficient publication occurred to have a valid registration under the terms of the 1909 copyright act (a so-called “investative publication”) is a question of federal law.  One nice benefit of this understanding is that it clarifies that the differentiation between investative and divestative publication is not an artificial legal construct – they are actually two different things.