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.

Bibliographies on Design Protection

From 1955 through 1976, the Copyright Office published three bibliographies on the issue of copyright protection for designs.  The first was prepared by Barbara Ringer, later the Register of Copyrights, in 1955.  A supplement was issued four years later.  These have been available online in the past, but the final such bibliogaphy, prepared by Kelsey Martin Mott, was published in 1976 but is not available anywhere online as far as I can tell.  I’ve included all three below.

At oral argument in Star Athletica, one frequent refrain was that design protection had been part of the proposed 1976 Act, but was removed from the bill at the 11th hour before passage.  These bibliographies were produced as part of that effort, to ensure that the Copyright Office and Congress stayed on top of current developments in design protection as the copyright bill wended its way forward over a 20+ year period.

Design protection was proposed again in the early 1990s but ran aground, supposedly due to conflict between carmakers and third-party auto parts manufacturers backed by the insurance industry.1  Time will tell if a new push comes after the decision in Star Athletica.

  1. There’s a nice summary of the history of design protection legislation in the statement then-Register of Copyrights Marybeth Peters gave to Congress in 2006. ↩

Researching Proposed but Failed Amendments to the US Constitution

In the wake of the recent election, there’s been a lot of talk about amending the Constitution regarding the Electoral College, or making other structural changes.1  When I was writing my article In Search of the Trade-Mark Cases about a decade ago I discovered that there had been eight attempts to amend the Constitution to provide for federal trademark law in the United States without the limitations of the Commerce Clause, such as they are.2  I was surprised to discover this, and I wanted to share some of the research methods for finding Constitutional Amendments that did not succeed through US history.

There have been over 11,000 proposed amendments to the US Constitution.3  However, a comprehensive survey of proposed amendments to the Constitution is surprisingly challenging.  The simplest solution nowadays is to use Lexis Congressional, but that’s a subscription service and isn’t easily available to most.4.  Michael J. Lynch’s short article The Other Amendments is an excellent start,5 pointing a reader to indices that provide  constitutional amendments proposed by Congress:

I hope this list is at least somewhat useful.  Looking through these lists, it’s clear there’s a failed Constitutional Amendment for everyone.

  1. Proposals to amend the Constitution to modify or abolish the Electoral College are a long tradition, with at least 700 officially proposed amendments on the subject, according to Fairvote. ↩
  2. There were two attempts in the years immediately following the Supreme Court’s 1897 Decision in the Trade-Mark Cases, another two in 1911 and 1913, most likely surrounding protecting trademarks at the Pan-Pacific Exhibition, and four from 1949-1955, which stemmed from the movement for a registration-based federal trademark system.  This is discussed at length at the end of my article. ↩
  3. The WaPo Article describes a proposed 1911 Amendment to allow Congress to regulate migratory birds as being “unusual,” but any con law nerd will recognize that this was part and parcel of the controversy that led to Missouri v. Holland less than a decade later. ↩
  4. And even many libraries that subscribe don’t have the Congressional Bills and Resolutions portion of the database ↩
  5. The Department of Justice also has a useful guide on its website ↩

The Firing of Rufus L.B. Clarke from the Patent Office in 1895

Both IP historians and con law fans will find interest in this post, about an event that seems to have been poorly reported in the histories up to this point, about the President’s power to remove a senior IP official in the government.

Rufus L.B. Clarke is best remembered, if he is remembered at all, as one of the framers of the Iowa Constitution of 1857, and for arguing for racial equality at that Constitutional Convention.1  Following this Clarke went to Washington, D.C., where he became one of the three Chief Examiners in the Patent Office in 1869, by appointment of the President and consent of the Senate.2  The Board of Examiners-in-Chief were not in charge of examination, but instead constituted a board of appeal of examiner decisions on patents, who formed an intermediate step before a decision would be appealed to the Commissioner.3

Clarke’s career was somewhat bumpy at the Patent Office, and in 1875 the Commissioner of Patents attempted to remove him, as Clarke explained in a letter to President Grant.4  This effort at his removal apparently was unsuccessful, and Clarke remained at the Patent Office as one of their Chief Examiners until 1895, when the President informed Clarke that his employment as Examiner-in-Chief was terminated, effective upon the confirmation of his successor.  He was replaced by one J.H. Brickenstein.

Clarke was born in 1817, and thus at this point was nearly eighty years old.  Nonetheless, he elected to tenaciously fight his removal. Clarke submitted to the Senate a a brief and other supporting documents (PDF, 12 MB) laying out the background of his case, and arguing that the President had no Constitutional power to remove him.5  Clarke made a general argument that the President lacked the authority to remove executive appointees, but also a more specific argument that as a judicial officer, the President lacked the authority as a remove him.    Brickenstein submitted his own memorandum to the Senate in this matter (included in the same PDF file above), arguing that while the Board of Examiners-in-Chief may have been a judicial tribunal, this did not make it an Article III Court with all the protections from removal that the Constitution provides.

There is no documentation of the Senate taking a particular action in regards of Clarke’s petition, and the Official Register of the US Government for subsequent years shows that Brickenstein remained as an Examiner-in-Chief while Clarke did not regain this position.  Clarke lived another fifteen years after his removal, passing in 1910.  The controversy has not generated extensive attention, but it is an interesting one, both in terms of the structure of the Patent Office and in terms of the Presidents authority over quasi-judicial officers.

  1.  Robert R. Dykstra, Bright Radical Star: Black Freedom and White Supremacy on the Hawkeye Frontier 161 (1993).  He was also a delegate to the 1860 Republican Convention that nominated Abraham Lincoln. ↩
  2. Dykstra refers to his subsequent career as a series of “anonymous patronage jobs” in Washington. Id. at 239. ↩
  3. This was a creation of the Patent Act of 1861, 12 Stat. 246 ↩
  4.  John Y. Simon, et al, The Papers of Ulysses S. Grant: 1875 at 220. ↩
  5. Parts of this file were reproduced in a print by the Senate Committee on Patents for the 54th Congress, and were subsequently reproduced as part of a CIS Microfilm, now on Proquest Congressional (for subscribers).  It is at CIS Number S3629, SuDoc Number Y4.P27/2:C55. ↩

How We Got a Register of Copyrights

One question that seems to pop up repeatedly in comment threads on the recent de facto removal of the Register of Copyrights is to ask how why the position is called the Register of Copyrights, and why the Copyright Office remained in the Library.  In this post I’ll offer some thoughts on the question, and give some history of how the US Copyright Office remained part of the Library of Congress in the waning days of the nineteenth century.

As I’ve written, Librarian of Congress Ainsworth Spofford succesfully pushed in make national copyright registration part of the portfolio of the Library of Congress in 1870.  His main interest in securing copyright registration for the library was to get the deposits of all works registered for copyright, and the centralization of copyright in the library furthered that goal.  Within two years after copyright was centralized in the Library of Congress, the Librarian felt he was being buried under an avalanche of deposits of nonliterary/nonartistic materials – mostly product labels and advertising prints – and succesfully convinced Congress to place copyright registration for such works in the Patent Office, where it remained until 1940.1

In December of 1895, a bill was introduced in the Senate providing for a Register of Copyrights, appointed by the President and Confirmed by the Senate.2  The record does not completely show why the term Register of Copyrights was used – the bills were presumably developed in consultation with Ainsworth Spofford, by then in his 31st year as Librarian of Congress.  In hearings held in November and December of 1896, Spofford indicated that he was both the Librarian of Congress and Register of Copyrights, and that the books used to record copyrights were referred to a registers.  However, Spofford recommended the “copyright business” be seperated from the Library, and be put under the control of a “Registrar of Copyrights,” but should be housed in the new Library building as a seperate agency.3

In the same Congress, a freshman (and ultimately one-term) Congressman from rural Missouri, William Treloar, introduced his own  comprehensive bill to reform copyright (PDF, 4 MB – bill text and hearing).4  Treloar was a composer and music publisher, whose advertisements trumpeted his compositions selling a million copies.5  I’ve written about the Treloar Bill in the past, in the context of the creation of performance rights for music, but what’s of interest here are the provisions for the administration of copyright in the United States.  In particular, the Treloar Bill provided for a “Commissioner of Copyrights,” appointed by the President with the advice and consent of the Senate, with the powers one would expect of an executive appointment.  At a hearing on the bill these provisions were popular with copyright stakeholders, but the Treloar Bill foundered on its provisions that would have extended the manufacturing clause.

In the end, despite the popularity of the idea of separating the copyright function from the Library of Congress, Congress was uneasy with the Constitutional implications of allowing the President to appoint, with Senate consent, a legislative officer under the supervision of the Joint Committee on the Library, as the copyright statutes stipulated.   The confusion as to whether a Register of Copyrights even could be an executive appointment lead Congress to remove any mentions of a Register of Copyrights in the omnibus funding bill that would include funds for the relocation of the Library to its new building.  However, at the last minute and with minimal debate, the Senate provided for a Register of Copyrights to be appointed by the Librarian.  Without any real further comment from Congress, that has been the state of affairs ever since.

As for the name of the position “Register of Copyrights,” a keen reader may notice I don’t have a firm answer.  However, looking at the debates and hearings at the time, the title “Register” seems to have been the functional term for the position which Ainsworth Spofford used to identify the function of being in charge of copyrights, in contrast to the title of “Registrar,” which Spofford felt he held de facto, but not officially.

  1. The 1874 Print and Labels Act and its relationship to the major cases of copyright law, including Higgins v. Keuffel and Bleistein v. Donaldson Lithographic, is the focus of my article Reimagining Bleistein. ↩
  2. The detailed legislative history this bill, with all citations, is included at Footnote 166 of Chapter 1 of the online version of William Patry’s Copyright Law and Practice. ↩
  3. Hearing appended to 54 S. Rep. 1573 at Pg. 133.  The full text of Spofford’s remarks was:
    Representative QUIGG. You made a report to one or the other branch of Congress advising that the copyright business be separated from the business of the library?
    Mr. SPOFFORD. Yes; connected with the Library of Congress, but in charge ot a separate responsible and competent officer, who might be called the registrar of copyrights.
    Representative QUIGG. Did you recommend that there be any connection between the copyright business and the Library as such?
    Mr. SPOFFORD. I entered into no detailed statement in that direction, but I would like to say that it would be eminently proper that the Registrar of Copyrights, when appointed. should hand over to the Librarian all publications received by him that have gone through the necessary process, so as to form part of the Library collections. ↩
  4. The version of the bill in the hearing print is a bit different from the original published version of the bill. ↩
  5. It’s difficult to know if this is accurate, although some skepticism may be warranted.  As an example of Treloar’s art, this is his composition Cuba Must be Free (PDF, 4MB). ↩

Copyright Registration of Coat Patterns from 1845

I’ve posted about the oral argument heard before the Supreme Court in the Star Athletica case, and the Supreme Court has since posted the audio of the argument.  Apropos of that, I wanted to share something I found in the 1790-1845 Copyright Record Book for New Jersey.

Before 1870, the individual District Courts registered copyrights on behalf of residents of their respective Districts.  Most of the records made it to Washington, DC when copyright was centralized there in 1870, but a fair number did not.  The records for before 1845 in New Jersey were considered lost for decades until Joseph Felcone transcribed them.  The original that he used to create his transcription is now in the National Archives Regional Division in New York City, and I digitized that volume today as part of a larger project that I’ll be talking about much more in the coming weeks and months.

In the copyright record book was a complete copy of a pamphlet from 1845, entitled Index of Fashion for Fall A.D. 1845 (PDF, 592kb).  The volume contains some prefatory information, but it is largely patterns for garments and instructions on how to make them.  It does not appear that any issue was seen with the copyright registration of this document,1 and indeed a similar volume had been deposited earlier that year:

idxoffashionsummer

  1. While uncommon, District Courts did sometimes reject copyright applications, for instance in the case of Patent Medicines, as I have written about in the past. ↩

How Copyright Came to the Library of Congress

With recent events, new focus has been put upon the relationship between the US Copyright Office and the Library of Congress.  I think it’s worth exploring a bit of how things got this way.  In this post, I’ll explicate a bit on how copyright ended up in the Library of Congress, and in a subsequent post I’ll explore how the Copyright Office became its own entity.  I’ve already posted a bit about the early interactions between the Library of Copyright and nascent Copyright Office, and I hope to post more about that as well.

As most people who dabble in copyright know, copyright in America has generally consisted of three parts: Notice, Registration, and Deposit.  The notice is generally an act taken by the author or his/her assignee (generally the publisher)to provide notice of copyright – in the very beginning this actually required publishing a notice in a newspaper, but mostly all that has been required is placing a copyright notice on the work.  Registration is of course the act of registering the work for copyright with the statutorily-designated register.  Deposit is the act of depositing one or more copies pursuant to the statute.

From 1790 to 1846, Copyrighted works were registered with the local federal district court, and the registration was only perfected when copies were deposited with the Secretary of State in Washington DC – at first directly by the author/publisher, and later by the clerk of the District Court in bulk.  However, in 1846 the act establishing the Smithsonian Institution contained a provision requiring deposit of copies registered for copyright with both the new Smithsonian and the Library of Congress.1  This provision was not part of the original versions of the act, but instead was proposed orally by Stephen Douglas (of Lincoln/Douglas fame) as the final amendment offered before the successful vote on the bill in the House.2  Accordingly, there is precious little legislative history for the change, although it does generally fit into the Smithson bequest’s requirement that it be used to fund “an establishment for the increase and diffusion of knowledge among men.”

However, the Smithsonian Institution was never particularly happy with being a depository for copyright books, and in 1859, with the acquiescence of the Librarian of Congress, Congress shifted the venue for copyright deposit to the Patent Office.  And even as these changes for copyright deposit ensued, copyright registration had steadfastly remained with the local district courts.  In 1862 a bill was introduced in the House of Representatives to move copyright registration to the Patent Office and divest the District Courts of their registration duties.  In response, a group of publishers sent a memorial (PDF, 1MB) to Congress, protesting any such change.  The bill never gained any traction, although it is possible there were simply higher priorities in Congress in 1862.

In 1865, the newly-appointed Librarian of Congress, Ainsworth Spofford, was able to insert language into the law adding photographs to copyright law revitalizing the requirement of deposit of copyrighted works with the Library of Congress.3  The new librarian vigilantly lobbied to increase the role of the Librarian of Congress, and when a friend of Spofford’s was appointed the new commissioner of Patents in 1869, the resistance to Spofford’s efforts faded away.4  In 1870 the only omnibus revision of intellectual property law in American history was passed, and one of its changes was the transfer of all copyright registration and deposit activities to the Library of Congress.

This story continues with the story of how the Copyright Office formed

  1. 9 Stat. 102, 106.  The relevant §10 of the Law stated that “the author or proprietor of any book, map, chart, musical composition, print, cut, or engraving, for which a copyright shall be secured under the existing acts of Congress, or those which shall hereafter be enacted respecting copyrights, shall, within three months from the publication of said book, map, chart, musical composition, print, cut, or engraving, deliver, or cause to be delivered, one copy of the same to the librarian of the Smithsonian Institution, and one copy to the librarian of Congress Library, for the use of the said libraries.”  An amendment was proposed by Sen. Dix to replace “Congress Library” with “Library of Congress,” but this amendment did not succeed. ↩
  2. Pg. 749 of the Congressional Globe, April 29, 1846 ↩
  3.  13 Stat. 540. ↩
  4. This is discussed in more detail in the footnotes to William Patry’s Copyright Law and Practice. ↩

Oral Arguments in Mazer and Star Athletica

One of the pleasures of living in DC is the ability to semi-randomly saunter over to oral arguments of interest being held at the US Supreme Court, and I did so on Monday in the “cheerleader case” of Star Athletica v. Varsity Brands.  The case concerned a suit by the market leader in cheerleader uniforms (Varsity) against a comparatively recent competitor that offered identical uniforms to those created by Varsity’s custom uniform tool on its website.  The District Court granted summary judgment to Star, holding that the cheerleader uniforms were useful articles and thus not eligible for copyright protection.  The Circuit Court reversed, and the Supreme Court granted certiorari.  It was hoped that the Supreme Court would offer guidance as to which of the multitude of tests for determining whether a work is a useful article was appropriate, but the transcript of Monday’s argument shows that the question of which test is appropriate never really came up.  The members of the Court were engaged with the discussion throughout, but their focus was more on the broader questions raised by granting copyright protection to garments for the lengthy term copyright offers.

Of course, the Star Athletica case is the first time the Supreme Court has addressed the useful articles doctrine since its 1954 decision in Mazer v. Stein, which held a sculpture that was primarily used as a lamp base copyrightable.  The Mazer decision is a staple of law school classes on copyright, but up until now it was assumed that no transcript of the oral argument had survived.  The Supreme Court began audio recording oral arguments in October of 1955, and transcripts of cases before that date are rare, and are generally focused on constitutional cases.1  However, the transcript (PDF, 7 MB) of oral argument from Mazer v. Stein was recently unearthed, and it is a fascinating document.  It shows a Court wrestling with some of the same concerns of duration that the Court wrestled with yesterday, as well as engaging in substantial discussion of the relationship of copyright law to design patents.

The argument in Mazer also featured testimony directly from the Copyright Office, including substantial discussion of historical practices of the copyright office regarding the registration of artwork.  There was also a lengthy demonstration and discussion of the “curved ballet dancer” figurine (shown below), one of the six statutes/lamp bases at issue in that case, discussing how it was made.

curved_ballet

Also of some interest is the trial transcript from the Mazer case (PDF, 3 MB), which in addition to discussion of some of the same issues that came before the Supreme Court, includes some fascinating background on the case, including reference to the Commercial Supply Co. of Chicago funding the defense of the case.

  1. The Oyez Project  has preserved these audio recordings and keeps them publicly available on its website. ↩

The Antebellum DC Circuit Court

One thing that tends to confuse folks about older cases is the changing nature of the Federal Circuit Courts – until 1891 they were trial courts that operated in tandem with the District Courts, staffed by District Court Judges as well as US Supreme Court Justices “riding circuit.”1  The National Archives has the files of the old Circuit Courts in their holdings, mostly in their regional branches, and I’ve become familiar with the Circuit Court records because pretty much every trial-level case on intellectual property in the nineteenth century was brought in the Circuit Court.  The only Circuit Court records held in the DC location of the National Archives on Pennsylvania Avenue are for the DC Court, and the Archives was recently good enough to share three inventories made in the 1990s of these records.  All are searchable PDFs under 2 MB.

The first of these inventories is a general inventory of interesting cases, which includes mentions of a case involving the cost of printing the Congressional Globe, a patent case, and a great deal else.

The second is perhaps the most interesting to scholars, and it is also the longest at 80 pages.  It is an inventory of all DC Circuit Court actions involving african-americans during the antebellum era.  The picture that emerges is a depiction of the banality of slavery in society over sixty years.  Listed in this file are many petitions for freedom, and these petitions are available online.

Finally, there is an inventory of household items seized by marshalls.

It’s worth remembering that every case mentioned in these inventories corresponds to a folder at the National Archives in Washington DC.

  1. The Circuit Courts were not abolished until 1912, but the creation of the Circuit Courts of Appeal substantially limited their importance.  More from Wikipedia. ↩

The Librarian of Congress and the Register of Copyrights

I was surprised this past Friday to learn that Maria Pallante, who had served as Register of Copyrights (the head of the US Copyright Office) since 2011, had been removed from this position by Carla Hayden, who recently became the Librarian of Congress.  In theory the Register of Copyrights is subordinate to the Librarian of Congress, but no Register has been removed by a Librarian in the past 120 years, and in fact the relationship between the two offices is much more complicated than this hierarchy would suggest.  Understanding why this is the case requires a bit of history regarding the interactions of the Library and the Copyright Office.1

After eighty years of copyright registration being handled by the Federal District Court for the region of the state the author or publisher lived in, copyright was centralized in the Library of Congress in July of 1870.2  For 27 years, Librarian of Congress Ainsworth Spofford was in charge of copyright registration in the United States.  However, perhaps inevitably, Spofford’s administration of copyright was somewhat disorganized, as his main interest in copyright was ensuring that the Library of Congress received deposits of all books and other library materials registered for copyright.3  It was obvious that a head of copyright for the United States was needed, and in 1897 the position of Register of Copyrights was created by Congressional Act.  Spofford had just stepped down from the position of Librarian of Congress after 32 years, and the Library moved into its first dedicated building, now the Jefferson Building, that same year.  With the library entering the modern era Thorvald Solberg was appointed the first Register of Copyrights.

However, in 1898 Spofford’s succesor died in his second year in office, and the hunt for a new librarian began.  Solberg feared that the next Librarian would be a political appointee, and took it upon himself to engineer the appointment of a Librarian who would be nonpartisan.  This story has been rarely told, but Solberg left a handwritten account entitled “The Librarian of Congress and the Register of Copyrights” (PDF, 15 MB) in his personal papers, now held in the Manuscript Division of the Library of Congress.4  The full account is worth reading, but briefly Solberg convinced the President to delay making an appointment and convened a conference of librarians from around the country.5  This conference put forward the name of Herbert Putnam as the best choice for the next Librarian of Congress, and Putnam duly became the Librarian of Congress in 1899.

Solberg and Putnam would continue in their respective positions for decades, until Solberg retired at the age of 78 in 1930.6  Putnam would serve another decade beyond that as Librarian of Congress.  It is impossible to ask them anymore, but it is difficult to imagine that Solberg could have been Putnam’s subordinate in any meaningful sense once Solberg had engineered Putnam’s appointment.  Over time, the Copyright Office developed into an independent agency inside the Library of Congress – oral histories done by the Library of Congress confirm that by the 1970s employees of the Copyright Office generally considered the Office’s connection to the Library tenuous at most.

The Register of Copyrights engineered the appointment of a new Librarian of Congress 117 years ago as of this post, after which time the Copyright Office has been largely left to its own devices.  It will be interesting to see what the future holds.

  1. A bit of context to this post is that I only recently completed a (enjoyable and productive) term as the 2015-2016 Abraham L. Kaminstein Scholar in Residence at the US Copyright Office, reporting to then-Register Pallante.  I’m no longer at the Copyright Office, and to the extent any opinions are offered, they’re offered in my personal capacity anyway. ↩
  2. This is a simplified version of the story, William Patry’s Copyright Law and Practice gives more detail for those interested ↩
  3. And nothing but books, music, and other materials of interest to libraries.  In fact, Spofford pushed for and received legislation moving copyright registration for product labels and advertising prints into the Patent Office, a move only repealed in 1940. ↩
  4. Thank you to Will Slauter for pointing this document out to me ↩
  5. Solberg remembers it as being President (Theodore) Roosevelt, but in fact the President was still McKinley. ↩
  6. He would live until 1947, remaining active in copyright issues in his retirement ↩

Hillary Clinton, IP Attorney

One little-remarked aspect of the current presidential election is that Hillary Clinton may be the first IP lawyer to be elected President of the United States.  This aspect of her biography isn’t generally discussed, but sources indicate that her practice during her 18 years at the Rose Law Firm in Arkansas was focused on intellectual property law.

This is borne out in the reported cases where Secretary Clinton served as counsel.  Of the five cases where she is listed as counsel of record in the written decision, three concern trademark law (the other two are contract disputes).  Interestingly, trademark law is the only major area of intellectual property not discussed in her Initiative on Technology & Innovation.

Discussion of the three cases follows after the jump.

Continue reading “Hillary Clinton, IP Attorney”