Thomasville v. Kaminstein – Copyright in Furniture

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

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

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

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

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

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

Archival Adventures: Saving ASCAP’s Library

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

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

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

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

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

Tracking Accuracy in Copyright Records – A Case Study

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

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

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

Remembering the Washingtonian Case

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

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

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

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

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

Video Post: A 1992 Hearing on Copyright in Legal Compilations

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

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

Robert Fulton’s 1811 Steamboat Patent – Lost and Found

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

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

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

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

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

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

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

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

The Supreme Court’s Docket Books and Three Strands of 19th Century Copyright Jurisprudence

This post brings together two separate but related topics – a relatively unknown resource about the Supreme Court, and light it shines on what I think were the main schools of thought on copyright in the late nineteenth century.  Read on for more, including original scans of archival material.

Continue reading “The Supreme Court’s Docket Books and Three Strands of 19th Century Copyright Jurisprudence”

Opinions of the US Supreme Court – Does Word Count Correlate to Citations?

As part of a symposium on forgotten cases in intellectual property with the Syracuse Law Review, I recently wrote a short history of the US Supreme Court’s 1879 decision in Perris v. Hexamer, entitled How Perris V. Hexamer Was Lost in the Shadow of Baker V. Selden.  Perris is essentially forgotten today, but it has somewhat similar facts and holding to Baker v. Selden, decided the following year.  The decision is less than 1,000 words, so it’s pretty easy to give it a read, but essentially the Court held that the legend/key to a fire map showing what different symbols meant was not protected by copyright, and that using the same colors and symbols as a competitor’s map did not constitute infringement either.  In some ways this decision is even more relevant than Baker (concerning the copyrightability of accounting ledgers) to the copyright questions raised in cases like Google v. Oracle, among others.  However, Baker keeps being cited (hundreds of times in the past few decades alone), while a citation in 2016 by the 9th Circuit was the first citation to Perris in 3+ decades.  I wanted to figure out why.  Given that Perris is a fairly short opinion and Baker is an average-length opinion, I figured perhaps just the length of the opinion led Perris to be ignored, as presumably other short opinions would be ignored.

This question naturally led me to try to answer a broader question than I actually needed to.  I assumed that there must be public databases out there of the number of words in an opinion, along with the number of citations to that opinion.  However, while there has been some scholarship on the question, no public database of this sort exists.1  Accordingly, with help from my law school classmate Corey Mathers, I decided to try to assemble it.  Paid databases like Westlaw and Lexis were not options, but the website Courtlistener.com (a project of the Free Law Project) does have the entire US Reports, along with citation tracking.  Accordingly, we decided to build our database from that site.

Accordingly, our data is here (zipped CSV), with data on every Supreme Court decision, including word count, number of citations to authority in the opinion, and number of citations to the opinion (as well as caption and year).  We removed cases that have less than 200 words, which are typically not real decisions but are rather summary orders like grants of certiorari.

However, the data has some weaknesses, and should really be considered more of a first step than a definitive resource.  By far the most significant weakness stems from the holdings of Courtlistener – while it has many recent decisions and all Supreme Court decisions, it is missing most caselaw from before 1950 or so.  Accordingly this creates a bias in favor of more recent cases, but at least the bias is uniform across all cases.  Ideally the data could be recreated from a database with more decisions.  Also, the word count for pre-1880 decisions frequently includes lengthy arguments of counsel as well as the actual decisions.  There are several other smaller issues as well, all of which could be resolved by re-running the query we ran on a database with full coverage of federal and state decisions.

Usually these posts have been a chunk of information, but this one is really more open-ended, since I know the data we created is deeply incomplete – it was acceptable for purposes of my paper but could be improved.  What would be good next steps for developing the data?  What other data should we be trying to generate (only data that can be done automatically, nothing that would require manual review beyond error-checking)?

  1. There is the Supreme Court Database, which has extensive information on cases, and is of special interest to political scientists and legal historians.  However, it does not contain this information.