A Blogging Experiment by Zvi S. Rosen – All views are my own. Those who do not remember IP history are doomed to relitigate it.
Author: Zvi S. Rosen
Lawyer and sometimes academic. I've written a fair deal about the evolution of intellectual property law into its present form, this blog is a way to share things that don't fit into a full-length article.
In response to the success of this project I sent the BPL and Archives a list of 19th century patent cases from New England, and they’ve scanned the case files for these as well. The length of these files varies dramatically – some are a few dozen pages long, some are hundreds of pages long. The link on the case name goes to the case file, while the link of the citation goes to the reported decision. It’s really cool to see these case files, both to see how patent litigation was conducted in the nineteenth century, and to see how famous early patent cases came to be decided.
Lowell v. Lewis, 1 Robb, Pat. Cas. 131, Circuit Court, D. Massachusetts. May Term.1817 (“usefulness” in the IP clause of the Constitution is satisfied so long as the invention is not “frivolous or injurious to the well-being, good policy, or sound morals of society”)
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.
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.
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↩
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.
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.
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. ↩
A foundational story about the development of copyright in America is the question of whether product labels could – or should – be protected by copyright. As far as I can tell this question marked the beginning of denying copyright registration on the grounds of subject matter, and I think is an important story to tell for understanding a number of current debates regarding copyrightability, and also serves as an antecedent to the modern copyright examination system. I’ve written about this story some in the past, in my 2012 article Reimagining Bleistein: Copyright for Advertisements in Historical Perspective, but it’s worth highlighting this story separately from the broader narrative in that piece, and I’ve found some additional parts to this story since I published that piece.
Although the 1790 Copyright Act only prescribed a limited species of works for protection, for instance omitting music from the list of protected works, Courts would quickly hold that a musical work or even a single sheet of paper could be registered for copyright as a “book” (or after 1802, a “print”). This matches a general early tendency to be liberal in what could be registered. However, in 1848 Justice McLean, riding Circuit, held in Scoville v. Toland that a label that reads “Doctor Rodgers’ Compound Syrup of Liverwort and Tar. A safe and certain cure for consumption of the lungs, spitting of blood, coughs, colds, asthma, pain in the side, bronchitis, whooping-cough, and all pulmonary affections. The genuine is signed Andrew Rodgers” is not subject to copyright. Justice McLean reasoned that the purpose of the label was only to identify the product, and it communicated nothing beyond its association with the product – and accordingly copyright law would not protect it. In the 1850s, the copyright records show a clear upwards trend in registrations of product labels for copyright protection, and coupled with the Scoville decision, this led some to question whether product labels were protected by copyright – especially regarding patent medicines.
A letter from the Clerk of the US District Court for the Northern District of New York (Aurelian Conkling at the time), published in the New York Journal of Medicine and Collateral Sciences in 1856, highlights the problems these so-called “patent medicines” posed for Clerks who were asked to register their labels for copyright (recall that the District Court Clerks were responsible for copyright registration until 1870). The letter explains that the usage of “patent” was sardonic, since “these notrums not truly patented, the secret of their preparation being studiously withheld in defiance of…our Patent Laws.” Rather, these patent medicines would attempt protection by registering their labels for copyright and then bringing suit against competitors for infringement of the copyright. Mr. Conkling had been refusing to grant copyrights for patent medicine labels for several years at this point.1 Conkling further opined that:
Congress did not intend to prevent the imitations of the stamps and labels of any manufactured article, or goods, or merchandise [under copyright law]. That is a subject of such extensive interest and importance, that, if it had been the intention of Congress, to embrace it in the provisions of the law, that intention would have been distinctly and unequivocally manifested.
In response to a letter from Mr. Conkling, the State Department (responsible for the administration of copyright until 1859) issued a circular stating that “inasmuch as mere labels are not comprehended within the meaning” of the copyright law, clerks were instructed to “refuse, in all cases, to record or issue a certificate for the same” under the copyright law.
In 1859, copyright responsibilities were moved to the Interior Department, which delegated them to the Patent Office (although registrations themselves remained the responsibility of the clerks of the district courts). Shortly after this act was put into effect the Patent Office put out a circular to the same effect as the State Department circular a few years earlier, specifically directing the district courts not to register “stamps, labels, and other trade-marks of any manufactured articles, goods, or merchandise” because “the acts of Congress relating to copyright are designed to promote the acquisition and diffusion of knowledge, and to encourage the production and publication of works of art,” and thus labels were not “embraced within the meaning of the [copyright] acts.” Thus a label, no matter how artful, could not be registered as copyright, but might be registered as a design patent.2 It’s likely that the list of labels, trademarks, etc that the Patent Office produced in 1859 and supplemented in 1861 stemmed out of the release of this circular.
In spite of these clear pronouncements, compliance with these circulars varied. In a Series of Letters from 1864-1866 (PDF, 4 MB, from the miscellaneous files of copyright records in the Rare Book Room of the Library of Congress), a successor as clerk of the District Court for the Northern District of New York complained that he was getting many requests to register labels, and that a common complaint was that the Southern District of New York had no such compunctions about issuing copyright registrations for product labels. Given that the Southern District had a much higher volume of copyright registrations that is perhaps understandable that less attention would be paid at the Southern District (there are 4,484 pages of copyright records microfilmed from the Northern District from 1820-1870, compared with 54,822 from the Southern District for the same period). Perhaps more notable is that aside from the Northern District of New York, there’s no real record of other courts refusing to register labels (that I’ve found – the copyright records of many Courts are overflowing with labels by the end of the 1860s).
Nonetheless, the Copyright Office issued a Circular in response in 1866 (PDF, 1 MB, this copy from the NJ 1846-1870 Copyright Files at the Library of Congress) making clear that their views on whether labels were protected by copyright had not changed. The language the Commissioner of Patents used is a development from Justice McLean’s opinion in Scoville v. Toland 18 years earlier, and it has a whiff of the concept of aesthetic separability that was argued in Mazer v. Stein 88 years later.
As all the acts of Congress related to copyrights are designed to promote the acquisition and diffusion of knowledge, and to encourage the productions and publication of works of art, it has always been held that stamps, labels, and other trade-marks of any manufactured article, goods,or merchandise are not embraced within the meaning of the acts. When any production is issued as an object of art, having value in itself, and intended for sale as such, it properly comes within the provisions of the copyright law; but when, however artistically executed, it is not produced for sale as a work of art, but is designed to be affixed in the manner of a label to a manufactured article, it then plainly falls under the act relating to patents for designs, and consequently cannot be protected by copyright.
As noted, despite repeated encouragement from Washington, it does not seem that other Districts followed the lead of the Northern District of New York. As I tell in much greater detail in my article, when copyright was centralized at the Library of Congress in 1870, the Library was quickly overwhelmed with applications to register product labels for copyright, and in 1874 the Librarian convinced Congress to pass a law transferring responsibility for registering labels to the Patent Office, where they would be a sui generis form of intellectual property registered along the same rules as those for registration of copyright. The statute attempted to create this entire new form of intellectual property in one paragraph of statutory language, and hijnks predictably ensued, including a case where the Patent Office repeatedly ignored mandamus from what is now the D.C. Circuit Court of Appeals to register labels without examination.
The decision of the Supreme Court in the Trade-Mark Cases in 1879 (holding the 1870 Trademark Act unconstitutional) did not stop the process of label registration, but the Supreme Court’s 1891 holding in Higgins v. Keuffel that a label for india ink was not protected by copyright did pause the system of label registrations with the Patent Office for a number of years.
However, in 1893 the Comissioner of Patents ruled that labels could be registered, provided they were of sufficient originality to meet the authorship requirements of the copyright clause (which the label from Higgins did not). However, the Comissioner held that the advertisement at issue in Ex parte H.J. Heinz Co., 62 O.G. 1064 (Comm’r Patents, 1893) was of sufficient originality to qualify for registration as a label.
Somewhat surprisingly, commercial labels and advertisements would not be returned to the jurisdiction of the Copyright Office until 1940. The story – especially after 1874 – is told in greater detail in my article, but I’ve brought it up a few times lately, and it seemed to be worth highlighting.
Apparently the denied copyright registrations included a “elixir of life” as well as a “diarrhoea cordial.” Letter at 423. Surely the latter would test the limits of aesthetic non-discrimination even today. ↩
This paragraph is copied essentially verbatim from pg. 352 of my 2012 article. What’s next is new, though. ↩
Even more than most, this post is my opinion only, and reflects views and opinions that should only be imputed to me. The gist: The 9th Circuit should reverse in ABS v. CBS, digital remasterings of sound recordings absolutely can be protected by copyright, but aren’t always and it requires factfinding, and a digital remastering does not de facto federalize a sound recording from before 1972 protected by state law.
As some of you may know, I have a fairly lengthy piece on the scope of common-law copyright for sound recordings It’s available here, although it’s still a work in progress (the staff at the Cincinnati Law Review are currently doing edits, so pagination will change some). If you want an audio version, you can also hear a version of my talk on the issue from the Library of Congress.
One nice thing about having this blog is that I don’t need to wait for that piece to come out, though, to explain how the decision of the US District Court for the Central District of California in ABS v. CBS is incorrect and demands reversal. It misunderstands the basic ordering of authorship and derivative works, and I’d like to briefly explain why. That decision is current being briefed before the 9th Circuit, and is being briefed (the Appellants’ brief is here; Appellees’ Answering Brief is here)
ABS and a host of other parties assert that they own the common-law copyrights in sound recordings made prior to February 15, 1972. Under the current law, such older sound recordings are not protected by federal law, but may be protected by state law protections. The preemption provisions of the copyright law contain a specific exception until 2067, so protection for all pre-1972 sound recordings will terminate then. In practice, most states tend to follow the model of indefinite protection offered by New York under the doctrine of common-law copyright (the protection given at common law to unpublished works, under the legal fiction that sound recordings that have been commercially released are nonetheless unpublished), but the modern case law regarding whether common-law copyright includes a performance right (aka a broadcast right) is surprisingly sparse. One of the things I point out in my article is that if you cast a broader net there’s plenty of caselaw from the late nineteenth century, all of which agrees on a performance right at common law, but Courts thus far haven’t embraced this argument completely. In response to this confusion the Copyright Office recommended federalizing protection for pre-1972 sound recordings, but that has not yet happened.
Earlier litigation brought by Flo & Eddie of the Turtles argued that digital radio services that would be required to pay a royalty under federal law were not doing so under state law, leading to the surprising determination by the New York Court of Appeals that no performance right exists for pre-1972 sound recordings, a decision whose ramifications have yet to fully play out. However, that decision only applied to New York state in theory (how much deference other states will accord it remains unclear), so the lawsuits brought by ABS et al are going forward in a number of other states. However, ABS made a broader claim than Flo & Eddie had, claiming that all terrestrial stations (ie regular radio) had to pay a royalty for playing their sound recordings, a requirement that does not exist at federal law. CBS Radio, one of the largest station operators in the nation, was sued by ABS in the Central District of California.
The issue for the Court was that on one hand, the weight of precedent was that common-law seems to require a performance right in California (indeed, the same Court had just ruled that), and there’s no real principled way to create a separate rule for terrestrial radio as opposed to satellite radio under existing doctrine.1 However, there’s currently no requirement for paying royalties for plays of sound recordings on terrestrial radio, and there are concerns of administrability and uniformity from finding a common-law performance right on a state-by-state basis.
Facing long odds given the Court’s recent decision on performance rights at state law, CBS tried a clever move – they argued that they weren’t playing pre-1972 sound recordings at all, but were rather playing post-1972 sound recordings, which were protected by federal law – but had no performance rights for terrestrial radio. The argument is that because the radio station was not playing vinyl records made before 1972, but were rather playing subsequent digital transfers, the relevant sound recordings were the digital transfers and not the originals. As such, the case should be dismissed because all parties understood no cause of action existed under federal copyright law.
Firstly, the Court looked at a number of sources, including the Compendium of U.S. Copyright Office Practices, Third Edition (the Copyright Office’s examining manual), and held that for every sound recording at issue (over 100), a derivative work had been created when it was remastered into a digital version.2 However, section 803.9 of that manual indicates that the following words are indicative of de minimis creativity where no sufficient authorship exists for an independent copyight: “Declicking, New format, Noise reduction, Reissue.” In addition, “the term ‘remastering’ may refer to authorship that is mechanical or too minimal to be copyrightable.” Put another way, a remastering absolutely can be independently copyrightable, but this is a fact-intensive question that cannot be easily resolved. The District Court’s failure to engage in factfinding on the issue for each an every sound recording at issue is an easy ground for reversal. However, there is a deeper problem with the District Court’s decision’s, one which moots the need for such a factfinding – even if a derivative work was created in the transfer to digital and radio stations are playing that derivative work, radio stations are still playing the underlying pre-1972 sound recording as well.
The RIAA’s Amicus Brief makes this point especially well – a derivative work only includes what is new – anything in the original work is protected by the copyright in the original work only. This is the core holding the Supreme Court reached in its 1990 decision in Stewart v. Abend regarding the copyright in the film Rear Window. Creating a derivative work like a digital remaster of an analog recording does not replace the protection for the underlying work. This isn’t a statement of opinion, it’s black letter law, at 17 U.S.C. 103(b):
The copyright in a compilation or derivative work 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. The copyright in such work is independent of, and does not affect or enlarge the scope, duration, ownership, or subsistence of, any copyright protection in the preexisting material.
The District Court ignored a core tenet of copyright law in concluding that performance of a derivative work in a pre-1972 sound recording is only performing that derivative work, and not the original as well.
Having spent much of the recent year thinking about common-law copyright, I have devised an alternative argument along the lines of the CBS argument, one which I think avoids this pitfall. I’ve included it below the jump, but be warned that I don’t think it actually works (especially in California) – and I’ll explain why too. It’s more a conceptual exploration of how common-law copyright plays out differently from statutory copyright.
California actually has a statute for common-law copyright, so it’s not actually common-law, but it’s generally understood to just be a codification, and it’s short on detail ↩
In theory the Compendium is only given Skidmore deference by the Courts, meaning it is advisory but not binding. However, in practice the Compendium is more than a series of arbitrary examining rules – the 3rd Edition of the Compendium was one of the triumphs of Maria Pallante’s tenure as Register, and represents a thorough attempt to reckon with the body of statutes and caselaw that govern copyrightable works to determine what the Copyright Office should and should not be registering for copyright. In practice it is now the leading treatise on what copyright does and does not protect. in the United States ↩
Following that came the task of modernizing the business of copyright registration – although Ainsworth Spofford (Librarian of Congress 1865-1897) had effected the centralization of copyright registration, in contrast to the earlier practice of registering copyright in the local federal court, the actual record-keeping done by Spofford was no better than what was done by the District Courts, with a general ledger of copyright registrations being kept, containing a few fields of basic information and then individually signed by the Librarian.1 At the beginning of the 20th Century Solberg introduced the “XXC” classification system and system of application forms, which would be used in modified fashion until the effective date of the 1976 Act. In 1903 the Copyright Office improved the Catalog of Copyright Entries as it evolved from an obscure circular into a proper catalog, including statistical information for the first time.
Also at the beginning of his tenure, Solberg effectively engineered the appointment of Herbert Putnam to be librarian, and would serve alongside him from 1899-1930 (when Solberg retired). With the Copyright Office reaching a certain operational stability, attention then turned to the question of reforming the copyright laws. It’s fairly well-known that the original 1790 Copyright Act was largely an Americanized version of the 1710 Statute of Anne. The 1831 Act was a major advance, expanding the scope of copyright (music was not technically protected by the 1790 Act, for instance, although in practice music was registered as a “book” or print”), and making many other reforms. For most of the nineteenth century the main question of American copyright law was whether to extend copyright to foreigners, a measure that did not become law until 1891. In the interim there had been an omnibus revision to all intellectual property laws in 1870 – including a revised patent code and the first instance of federal trademark law – but aside from the change of venue to the Library of Congress, the 1870 Act was not a major shift from the 1831 Act. By the early 20th century motion pictures and sound recordings were already being widely consumed, and a heavily modified copyright law from an entirely different era was clearly inadequate. Given that international copyright had withstood a number of challenges in its first decade and now felt secure, it was time for a 20th century copyright law.
Beginning in his 1901 Annual Report, Solberg would annually advocate for a new copyright law. The ball began rolling in the Senate Committee on Patents, which requested that a commission be formed to study the copyright laws in January of 1905, after which the Librarian delegated to Solberg to plan a series of conferences to meet with copyright industry representatives in the Spring of 1905 to the Spring of 1906. Transcripts of these conferences were created and were much later compiled as part of the printed Legislative History of the 1909 Copyright Act, currently available on Heinonline. By this time, Solberg was also deep into a period of study of the copyright laws that would leave him the undisputed master of them. His first major work was a study of every copyright enactment in the United States up to 1900, published that same year. In February of 1905 he followed that with his study Copyright in Congress: 1789-1904, which chronicles every action regarding copyright in Congress, including failed bills and long-forgotten petitions and memorials. By the time the revision process began, Solberg had quite literally read every proposed copyright law in this Country’s history.
Following the Spring 1905 conference, Solberg and his small staff at the Copyright Office began the project of drafting a copyright bill out of the suggestions and comments made. By the Spring of 1906 a bill was ready, and was published along with comparisons to the current statute. The bill was introduced in May of 1906, and underwent extensive revision – with Solberg in consultation every step of the way.2 The Librarian was also involved in the discussion as the bill moved forward, but the Copyright Office had become the experts on copyright law.
As mentioned, Solberg would stay in office until 1930, serving alongside the Librarian he had helped appoint all along. Even after his retirement the Copyright Office maintained its position as the governmental experts on copyright, and further existed as a largely independent agency ingrown into the Library of Congress, left alone by Librarians who had other priorities – and who also were not prepared to bring the requisite subject-matter expertise in copyright to bear.
In addition, Spofford had also been alarmingly lax in his handling of funds deposited by repeat copyright registrants ↩
Many bills were introduced during this period, but they were mostly revisions of proposed revisions of the Solberg bill ↩
Those who looked closely at the guide to these records hosted by GW Law may have already noticed these records. They fall into two categories of records – letter books of copyright correspondence with the State Department, and what I’ve termed “ephemeral” copyright records, to indicate small lists of copyright registrations, usually compiled by the clerk of the court.
The letter books are correspondence related to copyright with the Secretary of State, who was mostly responsible for copyright deposits until 1870. There are three continuous letter books for 1818-1824, 1824-1828, and 1828-1832. The bulk of the letters in these books are cover letters that accompanied individual deposits, although there are other documents as well. For instance, there is a letter in the 1828-1832 book from counsel for Henry Wheaton, attempting to establish the proper deposit of Wheaton’s Reports as part of the litigation that would become the Supreme Court case of Wheaton v. Peters. There is also a book that appears to be deposits with the State Department for 1853-1854, but it is on onion paper and was too fragile and voluminous to scan easily. According to the Roberts survey of the copyright records, there is also a letter book of the Patent Office regarding copyright matters for 1859-1870 as well in the Rare Book Room, which would presumably be digitized along with the rest of the copyright-related material held there.
A short post for World IP Day, now nearly over. In part of the run-up to the Star Athletica argument, I had a chance to look at the amicus brief the Copyright Office filed with the Supreme Court in Mazer v. Stein some 64 years earlier (and not the Solicitor General – although they are among the names listed on the brief, the Copyright Office is the only office identified on the cover page, and the final signature block before the appendices).
In a brief filed in Mazer the Copyright Office went above and beyond the usual contours of the amicus brief form, offering a detailed history of office registration practice for works of design. The body of the brief identifies the history of the regulations, and the Appendix B is a partial reprinting of relevant listings in the Catalog of Copyright Entries for 1912-1952. Perhaps most interestingly, Appendix C of the brief comprises photostatic reproductions of the registrations filed for works of design from before 1909.
The amicus brief has long been available through Gale’s database of Supreme Court Records and Briefs, sourced from the microfilm, but the conversion to black and white rendered the final exhibit essentially illegible. Accordingly, I’ve uploaded a scan of the US Copyright Office’s original copy of the amicus brief, which they were good enough to allow me to photograph after their wonderful program in honor of today.
Folks who follow the law have usually heard about the Oyez Project, which is the result of the titanic effort to digitally transfer and make available the audio recording of most oral arguments before the US Supreme Court since the October Term (“OT”) of 1955 (a Term being October to June of the following year). Earlier than that it has generally been stated that only a few earlier transcripts of oral arguments existed for the civil rights cases of the early 1950s existed, and I assumed that was all there was. Then I was told that a transcript existed for the case of Mazer v. Stein, argued in 1953, and I decided to look a bit deeper. What I found surprised me.
When I refer to transcripts in this post I’m referring to a transcription of the oral argument before the Supreme Court, as opposed to the “Transcript of Record” filed with the Court which is a typeset version of all relevant documents from the Court(s) below. The Transcript of Record (and the Briefs) for the vast majority of cases before the Court – including rejected Petitions for Certiorari – are available through the (paywalled) Gale database The Making of Modern Law: U.S. Supreme Court Records and Briefs, 1832–1978, as well as the microfilm it is based on. The originals are held at the main National Archives building in Washington, DC. However, these collections only include submissions to the Court in anticipation of the argument, they do not include any record of the oral argument before OT 1955.
Certain traces of older oral arguments were known to exist. Folks who have read cases from the Supreme Court from before 1880 or so know that there is frequently a restatement of the argument of counsel included in the report. This was not done by verbatim transcription, but was rather made (as I understand it) by a mix of the notes of the Reporter and the notes of counsel, which were supplied later to the Reporter. Counsel would also sometimes pay to have their arguments before the Court printed out in pamphlet form, as Salmon P. Chase did for his argument in the Morse telegraph patent case, which led opposing counsel to also print his argument. The lack of any questions from the bench strongly suggests that these were created from the prepared arguments of counsel, not a transcription of the proceedings. John Quincy Adams’s 1841 argument in the Amistad case (later dramatized in film) is generally considered the first transcript of an argument before the Court, but it is most likely taken from Adams’s notes, coupled with the notes of another individual present.
At the dawn of the republic limited shorthand techniques made verbatim transcription difficult, something which plagues early transcriptions of Congressional Debates, particularly the Annals of Congress and Register of Debates. Techniques of shorthand steadily developed in the nineteenth century, and in 1879 Miles Bartholomew received the first of several patents for a stenographic typewriter, which would revolutionize the practice of transcribing court proceedings.1 For this period until the dawn of recording in 1955 the Supreme Court allowed transcriptions to be created at the expense of one or both of the parties if they wanted it, but copies were generally not provided to the Supreme Court except by occasional courtesy (no set procedure seems to have existed).
One surprise I had was how many transcripts are held at the Supreme Court Library, and the list I’ve included below the jump is as I understand it the first time this list has been made public. On reflection it isn’t surprising that many of these transcripts exist – it generally stands to reason that given the expense of litigating a case all the way to the US Supreme Court (high even in those days, especially with the introduction of intermediate appellate review in 1891), it would have been worthwhile to pay for a transcript to be made. However, the US Supreme Court Library only has about 150 of them from before OT1955. I strongly suspect that there are dozens if not hundreds more buried in old law firm files, waiting to be found (especially from the 1940s and early 1950s). A concerted effort among lawyers and scholars to find more of these transcripts might open a goldmine.
I didn’t see a scholarly source on this subject in a brief search, so I used this post and a few others ↩
This set was created in 1975, but Hathitrust makes the volumes covering cases until 1923 free to view – an interesting position re copyright. Presumably they believe that briefs may be covered by copyright but the edited volumes have thin protection at best. Or they didn’t notice that the set was published in 1975, regardless of the dates of cases. ↩
This post is fairly long, and I don’t want to bury the lede, so here it is: I’ve tracked down and digitized over 2,000 pages of copyright records from before 1870 that had generally been assumed lost. The whole story follows, but to jump to the records, they are here (part of the GW Law Library Website).
However, while doing that project, I became curious about the oldest records, those from before Copyright was centralized at the Library of Congress in 1870. Until that point copyright registrations had been made (and the records kept) at the individual Federal District Courts. In 1870 those records were transmitted to the Library of Congress, but it’s been fairly well-known that a substantial number of records never made it to the Library, and these records have generally been assumed lost.
The Pre-1870 Copyright Records
The pre-1870 copyright records that made it to the Library were held by the Copyright Office until the 1930s,1 when they were transferred to the Rare Book Room of the Library of Congress, and in 1939 Martin Roberts prepared the first comprehensive study of these records. His work provides both a narrative description of these records and a checklist of what records came into the possession of the Rare Book Room (pp. 16-19). The main body of these records were transferred to microfilm, and this is the breakdown of of the microfilm, by number of pages per state:
Looking at Roberts’s Checklist and these statistics, two things become clear – for New York, Philadelphia, and Boston, whose District Courts together handled 85% of copyright activity before 1870, the Library of Congress has a complete or essentially complete set of the records. However, for many jurisdictions with a comparatively small volume of copyright activity, records may only exist for the years immediately before 1870, if it at all. This seemed strange to me, thinking that so many Federal Court records had gone missing, and I began digging into the question.
What I’ve been describing as a unitary series of records is actually a number of interrelated records. These are:
The actual registrations – Congress provided a specific form for the registration in the 1790 and 1831 Acts, and the Clerk of the Court would either write it out or have application blanks printed where the applicant would fill in the title and other details (all the lost records were handwritten, as only the jurisdictions with a large volume of copyrights bothered to have blanks printed up). These were generally kept in a record book, meaning that there’s likely no missing records from the period covered by a record book.
Title pages – Part of the procedure for registration was the deposit of a title page with the District Court, on which the Clerk would typically make a notation about the registration. These mostly go in-hand with the registration record, but in a few cases (like the New Hampshire records for 1821-1842 included in this project) they comprise the only record.
Assignment records – As now, the Courts would record assignments of copyright and keep records of those assignments.
Indices – As the name implies, these are indexes maintained by Courts to assist in locating the copyright registrations they’d made.
Account books – the District of Massachusetts and likely others kept records of the funds paid for copyright registrations, and those records are included in this project.
Finding & Digitizing the Lost Records
One breakthrough was finding the research G. Thomas Tanselle had done on the copyright records in the 1960s, which led to his study Copyright Records and the Bibliographer. In that study Tanselle identified many records which had not found their way to the Library of Congress, and listed them in Appendix B to that work. I was able to find all the records Tanselle listed except for the Ohio records for 1829-1842, which have continued to elude me (see below for more on still-missing records). The work of other bibliographers, including Joseph J. Felcone and Roger E. Stoddard was also extremely helpful. In addition, using the online National Archives Catalog, older printed sources, and systematic inquiries to the staff at each regional division of the National Archives, I was able to locate copyright records which had not made it to the Library of Congress from seventeen states as well as the District of Columbia.
At that point, I began to strategize how to get scans of these records, considering that I had no real budget for this project. Colleagues at law schools local to various National Archives locations were able to connect me with interested law students (who had a camera), and in particular Valerie Snow, Zachary Swartz, and Preston Morgan, who assisted by digitizing materials in Waltham, Atlanta, and Fort Worth, respectively. A number of colleagues including Brian Frye also assisted with getting scans of these records.
I am also indebted to the staffs at various regional locations of the National Archives, including those locations, Philadelphia (especially Gail Farr), Seattle, Kansas City, and more. Thanks are also due to the members of the faculty and law library staff at the George Washington University Law School. Finally, this project owes much to my colleagues from my time at the Copyright Office.
Making the Lost Records Available
The staff at the Burns Law Library at the George Washington university, especially Ken Rodriguez, were instrumental in putting together a guide to these records that will be available to all. The guide to the lost records is now online here, with links to scanned versions of these records. Let me know about cool finds, or any other cool uses you find for these records. My ultimate hope is that the Rare Book Room of the Library of Congress will digitize their holdings of pre-1870 copyright records (which I would guesstimate as being 300,000 pages), and when combined with this project, will represent an essentially complete record of copyright (and thus literary, musical, etc) activity in America in its earliest days.
Special thanks to the Virginia Historical Society, for giving me permission to share my scans of copyright records they hold from 1864-1865.
Also of note, the records of the Confederate Secretary of State contain information on copyrights from the states that seceded during the Civil War, and have been put online by the Library of Congress.
Records Still Missing
One interesting question to ask is “what records are still missing?” The major set of missing records are from Virginia, where records only exist from the District Court in Richmond (the busiest by far in that era) for 1867-1870, although the inclusion of records from 1864 and 1865 in this project ameliorates the problem slightly. There is also a printed list of copyright records for 1790-1844 from Richmond, taken from a source that no longer seems to exist. I’ve included a list of other states with records that are still missing below, note that it may not be exhaustive – in particular a list of records received from the US State Dept. in 1870 (that I located and scanned from the Library of Congress Manuscript Division) suggests that there may be some substitute records for these jurisdictions for dates after 1831:
Connecticut – No records exist from before 1804
District of Columbia – No records exist from before 1845 (the State Dept. records indicate records from 1814-1844 may have survived from there).
Georgia – No records exist from before 1845
Florida – Essentially no records known before 1870
Iowa – No records exist from before 1868
Indiana – No records exist for between 1841 and 1853
Kansas – No records exist from before 1865
Louisiana – Records from before 1851 are extremely spotty – seven records from 1837 and 1838 were located as part of this project, but presumably many more existed at one point.
Maryland – No records exist from before 1831 (presumably this represents a decent volume of records)
Missouri – No records exist from before 1857 (State Dept. records indicates substitute records for 1834-1852)
Mississippi – No records exist from before 1850
North Carolina – North Carolina was divided into a large number of Districts in this time, and this project uncovered the records from Raleigh, which presumably had the greatest volume of copyright activity in the state. Scattered records exist from other Districts, including Cape Fear and Pamplico.
Ohio – The copyright record book from the US District Court for the Southern District of Ohio at Cincinnati for 1829-1842 is listed by Tanselle, but I have been unable to find it. The last mention of it was in a WPA Survey of federal records; this is the Form 58SA created by the WPA cataloging the volume. I’ve been in touch with the Court and the Chicago location of the National Archives, but neither one can find it.
Rhode Island – No records exist from before 1831
Texas – Almost no records exist from before 1867
Virginia – No records exist from Richmond before 1863, as discussed above. A letter from 1863 indicates that the records had been destroyed in a recent fire (it’s unclear how the list of copyrights from before 1844 was created, presumably the letter was partly in error).
Looking at the Guide, people may note that there are also uploads of letter books as well as what I’m referring to as “ephemeral” copyright records, both held by the Manuscript Division of the Library of Congress. I plan to blog more about those next.
As I noted callings these records as “lost” is a bit misleading – or at least my wan attempt at clickbaiting. However, they have been essentially unknown, especially to the legal community, and I hope this will spur interest in a fascinating area where law and culture converged in early America.
This is discussed in Ruth Shaw Leonard’s unpublished 1944 Master’s Thesis at Columbia Univ. “A Bibliographical Evaluation of the Copyright Records for the United States District Court of Massachusetts, 1800-1809.” ↩