Announcing the Release of Over 2,000 Pages of Lost Pre-1870 Copyright Records

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).
        Since I started this blog in the fall, I’ve occasionally alluded to a number of projects I’ve been working on regarding the pre-1870 copyright records, most notably in my post where I provided links to the transcriptions of a small part of those records.  As the 2015-2016 Abraham L. Kaminstein Scholar in Residence at the US Copyright Office, my efforts were focused on a descriptive and quantitative study of the Office’s records under the Pre-1976 Act, so as to complement Robert Brauneis & Dotan Oliar’s work on the records under the current Act.  Part of that effort has resulted in a study of copyright registrations from 1870-1977, on which I’ve collaborated with Saurabh Vishnubhakat to present at a number of conferences, and which we are currently in the process of writing up into law review format.
        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.
        One set of records that is not there yet, but I hope I will be able to link to soon, is the records from South Carolina.  They are held by the South Caroliniana Library at the University of South Carolina, and I’m informed they plan to digitize them in the near future.
        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).

 What’s Next

        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.

  1. 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.”

Mazer and the Balinese Dancer

As folks who read this blog have doubtless heard, the Supreme Court recently decided the “Cheerleader Case” of Star Athletica v. Varsity Brands, which is the first case to seriously examine the Useful Articles doctrine in copyright since the Mazer v. Stein decision from 1954.  I blogged about Mazer v. Stein around the time of the oral argument in Star Athletica, sharing the transcript of argument from both the Supreme Court and District Court.  However, Sy Damle tweeted this, and it inspired me to double-check (and share) the actual statutes whose copyrightability was at issue in Mazer v. Stein:

And Sy is right…people were talking about the figure at issue in Mazer v. Stein as a “Balinese” dancer as early as the 1950s.  Stein maintained a fairly extensive catalog of statuettes that also functioned as lamp bases (PDF, 7 MB, my scan), and was involved in a number of seperate cases, one of which led to the Supreme Court decision in Mazer v. Stein.  However, looking at the original complaint in Mazer, none of the six at issue is a Balinese dancer; as Sy and I realized, the Balinese dancer was actually at issue in Stein v. Expert Lamp, where the District Court and 7th Circuit held that the lamp base was not eligible for copyright prior to being de facto overruled by the Mazer decision.  A Petition for Write of Certiorari of certiorari had been filed in by Stein in the Expert Lamp case in 1951 (so two years before the Mazer cert petiton was filed) but denied – the circuit split likely was not ripe yet.

There’s an interesting story here about how mistakes propagate in the literature.  The first mention of a statutette of a Balinese dancer being at issue in Mazer was in a note in the Cornell Law Quarterly, 39 Cornell L. Q. 725 (1953-1954), which asserted that all the cases involved by Stein involved essentially the same facts, not realizing that Stein had designed many lamps and different lamps had been copied by different competitors.  The assertion that Mazer was about Balinese dancers was repeated in the January 1955 issue of the Harvard Law Review, 68 Harv. L. Rev. 489, 517 (1954-1955).  The June 1954 Issue of the ABA Journal also stated that Mazer was about a statuette of a “Bali Dancer.”  The note didn’t cite any authority for this proposition, but the line about it being a Balinese dancer would be steadily repeated over time until it became canon.  In 1977 Melville Nimmer, author of the leading treatise on copyright, repeated this line about the Balinese Dancer in his widely cited article The Subject Matter of Copyright under the Act of 1976, 24 UCLA L. Rev. 978 (1977).

In each case citation was only made to the reported decision in Mazer v. Stein, which has no comment about what sort of human figure was on the lamp base.  However, the appellate record contains a details on the works at issue, and the transcript of the argument before the Supreme Court shows that the figure of a female ballet dancer was actually brought to the Supreme Court for the argument.  I’ve reproduced the listings of images at issue in Mazer v. Stein with images of the statuettes at issues  (along with copyright registration numbers and dates – all taken from the complaint) below the jump:

Continue reading “Mazer and the Balinese Dancer”

19th Century Congressional Extensions of Patents

Under the Patent Act of 1836, a patent had a 14-year initial term, and could be renewed for seven more years by the Commissioner of Patents.1  In theory, that would be the end of the matter, but in practice the inventor would sometimes petition Congress for a further 7-year extension.  While doing some research in the National Archives on an unrelated project2 I found a number of these, and scanned them using CamScanner.

The impetus for posting them now is Sean O’Connor’s excellent new article Origins of Patent Exhaustion: Jacksonian Politics, ‘Patent Farming,’ and the Basis of the Bargain.  His article includes extensive discussion of the litigation over the patent received by William Woodworth in 1828 for an improved wood-planing machine, which in addition to receiving a Congressional extension in 1845, was the subject of two Supreme Court Cases – Wilson v. Rousseau, 45 U.S. 646 (1846) and Bloomer v. McQuewan, 55 U.S. 539 (1852) – both concerning the effect of extension on assignments.3 Until 1843, Woodworth entered into a cross-licensing agreement with Uri Emmons, who patented a similar wood planing machine in 1829 (patents were not examined under the pre-1836 system).  However in 1843 the Comissioner of Patents did not renew the Emmons patent, leaving the market to Woodworth.  With the Congressional extension of the Woodworth patent set to expire in 1856, the heirs of Uri Emmons petitioned congress to revive the Emmons patent for a seven year term, an action that was not successful so far as I can tell.  However their petition is fascinating, including examples of renewals of expired patents by Congress and other oddities of term that would likely not be tolerated today.  My scan of their petition is here.

An even more famous patent is that received by Samuel Morse for the telegraph,whose legal journey has been written about extensively by Adam Mossoff.  Morse received a patent for his invention in 1840, which was extended to 1861 by the Commissioner of Patents.  In 1860 Morse lobbied Congress for a further 7-year extension of his patent, but it does not appear it was granted.  In support of his application Morse filed a hand-written petition, a copy of his brief from 1854, and a newly-produced brief by Charles Mason written in support of the extension.  I have uploaded these documents to Archive.org here.  Also included was the Decision of the Comissioner of Patents approving the extension of Morse’s 1846 patent for improvements to the telegraph, which has been reproduced elsewhere.

Finally, I’ve included a petition by William Atchinson attempting to reclaim patents for rubber he had assigned away by purposes of a Congressional extension here.

  1. The National Archives has a list of all requests for renewal filed with the Patent Office, which I’ve uploaded here: Patent Extension List.
  2. Specifically, I was doing a little sleuthing for Brian Frye for what would become his article about slavery and patent law for a coming symposium.
  3. There’s more information on the Woodworth patent and machine here.

A List of Labels and Other Unusual Copyright Registrations, Compiled in 1859

Although most of the copyright records from before 1870 are held in the Rare Book Room of the Library of Congress, the Manuscript Division of the Library of Congress also has substantial holdings of miscellaneous documents regarding copyright before 1870 in the Library’s Archives, most of which seem to be sourced from the State Department or the Library itself.

I’ve gone through the four boxes of copyright records in the Library of Congress Archives, and there’s fascinating stuff there, which I will likely base several more posts around what’s there.  But while giving a talk at the Works in Progress in IP Colloquium this past weekend (which Rebecca Tushnet liveblogged, for those interested), I mentioned a list I found there of what I’ve been referring to as “irregular” copyright registrations that was compiled in 1859, although the document is entitled “Catalogue of Trade-Marks, Lables, &c, Arranged by State.”  In the same file was what appears to be a supplement, which brings the coverage of this document up to 1861.  The document does not give a specific starting date, although a non-systematic look at the document shows that the earliest date on it is 1818.

The document is available here.  Note that it is presented as two separate documents on the Internet Archive – it defaults to the 1861 Supplement, but the link to the main 1859 document is just below the document itself (direct link to the main 1859 document here).  The document is a list of product labels but also other materials including almanacs, charts, and miscellaneous other works registered for copyright that were not the sort of books commonly thought of when copyright was mentioned.

It’s not entirely clear to me who created this list, or why it was created; it would have involved substantial work to assemble it from the various District Courts all over the country that were doing copyright registrations at the time.  However, my best guess relates to the battle over copyright registration in patent medicine labels, something I wrote about on pp. 350-352 of my article Reimagining Bleistein.1  Briefly, in 1856 the Secretary of State had sent out a circular, on the urging of the Clerk of the District Court for the Northern District of New York,  stating that product labels were not the proper subject of copyright and should not be registered.  Three years later in 1859 the Patent Office took over responsibility for copyright deposits and issued a similar circular, which I’ve included a transcription of below.  My guess is that the effort to create a catalog of nonstandard copyright registrations was part of the same effort that produced this circular:

As 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 as the “map, chart, musical composition, print, cut or engraving” to be protected by copyright must have a title applicable to itself, which title is to be recorded, it is therefore held that stamps, labels and other trade-marks of any manufactured article, goods or merchandise are not embraced within the meaning of the acts.2

  1.  https://papers.ssrn.com/sol3/papers.cfm?abstract_id=1507125
  2. Circular reproduced in The Law of Copyright, N.Y. Times, July 25, 1859

Transcriptions of Pre-1870 US Copyright Records

Until mid-1870, copyright registration duties were handled by the local U.S. District Court of the author or proprietor, while the work itself was deposited with the Department of State (until 1846), Library of Congress (1846-1859, 1865-1870), Smithsonian Institution (concurrently 1846-1859), and Patent Office (1859-1865, 1865-1870 concurrently).  In 1870 all copyright responsibilities were centralized in the Library of Congress.

I’ve been working on a number of projects regarding these oldest federal copyright records, which I hope to discuss more on this blog.  One of these projects has been to assemble all currently existing printed transcriptions of these records.  As each District Court maintained its own records and the pre-1870 records are still organized by Court, these transcriptions have mostly focused on individual states.  The list follows below: Continue reading “Transcriptions of Pre-1870 US Copyright Records”

9th Circuit Historical Records and Briefs: the United States v. Groucho and Chico Marx

Essentially every case filed on appeal has a printed transcript and briefs created as part of the appellate rules of most courts.  These transcripts are a trove of information about the case, because they contain everything recorded from the trial court, typeset and organized.  The briefs, of course, are the written arguments to the appellate court.  The Records and Briefs of the US Supreme Court (available as a database from Gale or on microfilm) are the best-known set of records, but every US Circuit Court of Appeals and state supreme and intermediate appellate court have such records.

Tonight, I discovered that a substantial cache of briefs from the 9th Circuit of Appeals, which had been collected by the Library at UC Irvine School of Law, are available online through the Internet Archive.  It’s unclear if the UC Irvine Library prepared an index to the volumes, but it doesn’t seem to be online anywhere.  There is a tool called the 9th Circuit Historical Records Index System (or 9chris), using the uncorrected OCR from the Internet Archive, but it’s a little wonky (although it works decently once you get used to it).

One case I did find was The United States v. Groucho & Chico Marx, filed 1937 with the 9th Circuit Court of Appeals, where they were appealing their conviction for criminal copyright infringement.  The LA Times has a bit of information about the case, which concerned the use of a script the brothers had been sent but rejected.  The brothers were fined $1,000 but spared prison time.  In 1938 the 9th Circuit affirmed their conviction.

The case file contains a transcription of the original “Mr. Dibble and Mr. Dabble” sketch, transcripts of testimony from Groucho and Chico Marx , transcripts of radio programs in full, and of course the briefs of all parties.

A few other copyright cases I found, in a quick search:

  • K-91, Inc. v. Gershwin Publishing Corporation, 372 F. 2d 1 (9th Cir. 1967).  Case File
  • Warner Bros. Pictures v. Columbia Broadcasting Sys., 216 F.2d 945 (9th Cir. 1954) Case File (the Maltese Falcon / Sam Spade character copyright case)

There’s plenty more up there.  Surely a treasure trove for anyone looking at litigation on the west coast.

Transcribed Proceedings of CONTU

CONTU, or the Commission on New Technological Uses of Copyrighted Works, was established in 1974 by United States Congress to study issues associated with copyrighted works in computers and computer-related works.1.  The Report examined issues of computers and copyright, as well as other related issues like photocopying, and issued its final report in 1978, which asserted inter alia that copyright could protect a computer program.2  Although the final report of CONTU has been available online for some time, transcripts of the proceedings of CONTU were prepared but have only been available in a haphazard manner, on or off-line.  With this post I’ve endeavored to compile and make available all the transcripts of CONTU.

I have linked to the transcripts of 22 out of 23 meetings of CONTU; the transcript to the 22nd Meeting was not easily available, although it was supposedly only an administrative meeting.  If anyone has it, let me know.  This list is adapted from the online version of Appendix G of the report, available here.

In addition to the transcripts I have digitized some of the Administrative Documents of CONTU (PDF, 4 MB), held by the Library of Congress, including the charter and annual reports from 1977 and 1978.

Links below the fold:

Continue reading “Transcribed Proceedings of CONTU”

  1. Wikipedia, CONTU
  2. The Copyright Office had accepted computer programs for registration since 1964, but the issue of whether this was appropriate lingered.

Movie Copyright Litigation from 1915: O’Neill v. General Film Co.

Today’s New York Times ran an article about the modernization of the Archives for New York County, and it reminded me of some research I did there for my draft article on common-law copyright.  Although I ended up not using it that much, I tracked down the files from a number of nonmusical common-law copyright cases, and this led me to the same New York County Municipal Archives, to look at the case file for O’Neill v. General Film Co., 171 App. Div. 854 (N.Y. App. Div. 1916).

The case was brought by James O’Neill, best known today as father of Eugene O’Neill, but an important actor of his day who owned the American common-law copyright rights to Charles Fechter’s English stage adaptation of the County of Monte Cristo.  He sued the General Film Company for distributing a film also based on the novel The Count of Monte Christo, which he alleged was also based on Fechter’s adaptation, and made substantially the same editorial and dramatic choices as Fechter.  1  O’Neill had been playing the lead role of Edmond Dantes for some 35 years by this point, to tremendous financial success, and in the same year the suit was originally brought (1912), he had starred in an authorized adaptation of The Count of Monte Christo.

Both sides hired prominent lawyers.  The plaintiff hired Dittenhoefer, Gerber & James, likely the leading theatrical law firm of its day – Judge A.J. Dittenhoefer had been a leading theater lawyer for decades at this point.2.  The defendant hired Nathan Burkan, a rising star in the legal world who only a few years later (and before the appeal was decided) would help found ASCAP.

At trial, the Court took testimony and ruled in favor of the plaintiff O’Neill, holding that the motion picture at issue infringed his rights in the the Fechter play at common law.  On appeal, the Court had no difficulty affirming the trial court on the count of copying, but found the question of chain of title and publication more pressing.  On the question of whether O’Neill truly had valid title to the common-law rights in the play the Court was equivocal, finding the evidence scanty, but ultimately affirmed the trial Court and held that he had produced sufficient evidence to bring the case and create a rebuttal presumption of ownership.  The Court had the most difficulty with publication – they agreed that performance of the play or taking photos of the production did not constitute a divestative publication that would destroy common-law rights, which only made sense following existing NY precedents and the US Supreme Court’s recent decision in Ferris v. Frohman.  However, O’Neill had signed a contract several weeks earlier with the Famous Players Film Co,3 and the Court was concerned that this might have been a divstative publication of the unpublished play.  In the end, the Appellate Division held that the motion picture rights to any part of the unpublished play that were used in the authorized motion picture were deemed published, and thus the common-law rights had been lost.  However, O’Neill retained the common-law film rights to whatever parts of Fechter’s play had not been used in the motion picture.

The printed record of the case on appeal, which I scanned at The New York State Library in Albany, proved much more manageable than the original handwritten records of the case at The New York County Archives.  It contains a transcript of the testimony at trial which includes extensive documentation of theater practices for common-law copyright, by the plaintiff and others.4   The appellate briefs of the parties are also included, laying out the issue of common-law copyright as it was understood as of 1915.  However, not everything from the records in the New York County Archives is reproduced in the printed appellate record.  Notably, the New York County Archives has what appears to be a complete copy of Fechter’s dramatization, dated 1868.  Fechter’s drama has been reprinted several times, although not recently, and in differing versions.  It might be of interest to literary scholars.  In addition, the case file included a number of advertisements as exhibits; I’ve included them after the jump.

Continue reading “Movie Copyright Litigation from 1915: O’Neill v. General Film Co.”

  1. The film was not actually made by General Film, but rather by the Selig Polyscope Company in Chicago.  General Film was the distribution company of the Edison Trust.
  2. Dittenhoefer is best-remembered today for his association with Abraham Lincoln
  3. Famous Players later merged into what would become Paramount
  4. The testimony begins at page 61

Another Bibliography, This One for Performers/Sound Recordings

A bit ago I posted about the bibliographies the Copyright Office compiled the three bibliographies of design protection produced by the Copyright Office from 1955 to 1976.  Also in 1955, William Strauss of the U.S. Copyright Office produced a Bibliography on Neighboring Rights, which compiled everything known to have been published, up to that time, on the issue of the rights of performers under copyright, including protection under copyright law for sound recordings.  This book is available in a few law libraries but does not seem to be online, so I figured it made sense to share it here, especially given the recent decision of the New York Court of Appeals in the Flo & Eddie Case.

The Copyright Office did a very substantial study on performance rights for sound recordings in 1978, which included a selected bibliography of its own, commencing on page 1143.

Why The NY Court of Appeals Was Wrong Regarding Flo & Eddie

The New York (State) Court of Appeals (“COA”) recently issued an opinion on the question that had been certified to them from the Federal Second Circuit Court of Appeals, where the COA was asked to state whether New York common-law provides a right of public performance to sound recordings, and if it does, what the contours of that right are.  The case is captioned Flo & Eddie v. SiriusXM, and you can get the whole backstory here.

As folks who have been following my scholarship may know, I’ve been working on a extensive article on the problem of common-law copyright as applied to sound recordings in the 21st century for a few years now.  Due to a series of legal and legislative decisions in the first decade of the twentieth century, sound recordings had no protection under federal copyright law until a 1971 amendment, which applied only to sound recordings made February 15, or thereafter, leaving state common-law copyright as the main source of legal protection for sound recordings against unauthorized exploitation until that point.  Common-law copyright is limited to unpublished works, but a consensus emerged among the courts that a sound recording is unpublished for purposes of common-law copyright no matter how many copies of that recording are sold.

I completed a draft a few months ago (forthcoming and currently being edited by the University of Cincinnati Law Review – note that the draft online is still a bit rough), where I examined the question of whether common-law copyright includes an exclusive right to perform a work publicly, and whether that right is dependent on such a right existing at federal law.  I chose the 1880s as a period to study in detail, because it offers the most closely analogous period to the current situation in terms of the law – musical compositions did not have a performance right under federal law until 1897, just as sound recordings only have a limited performance right under federal law today.  I was curious as to whether courts found that unpublished musical works nonetheless had a performance right at common law before the 1897 federal amendment.  What I found was unanimous – a surprising number of both reported decisions and unreported dispositions where courts found that common-law provided a performance right to musical compositions, regardless of what federal law provided.

This result was even more remarkable considering that many of these works (mostly light opera) were by non-American composers, who were not eligible for any copyright protection whatsoever in the United States until 1891, and yet American Courts were not only protecting their unpublished works at common law, they were extending performance rights to their works that published musical works that had been registered for copyright did not receive.

Following that inquiry I then launched a broader study of common-law copyright more generally, and discovered that although common-law copyright often acts similarly to statutory copyright, it is different in many pertinent ways, all of which provide broader protection.  For instance, common-law copyright likely provides moral rights of attribution and integrity, which federal law only provides in a limited way under the Visual Artists Rights Act.

I was therefore disappointed to read the COA opinion.  Briefly, four Justices of the New York Court of Appeals held that New York common law does not provide a right of public performance to sound recordings.  One justice concurred, but would have held that there may be a performance right at common-law regarding “on demand” services like Spotify.  Two justices dissented, stating they would have recognized a performance right in sound recordings at common-law.

The majority opinion of the Court of Appeals speaks for itself, but the crux of the opinion is the question as to why this issue is only being raised in 2016, when the issue of performance rights in sound recordings could have been raised for almost a century.  However, as the opinion tacitly acknowledges, rightsholders did attempt to assert performance rights at common law during the latter part of the 1930s through 1940, when performers and radio were locked in a bitter struggle over the use of recordings instead of live musicians for radio broadcast.  In 1937 the Pennsylvania Supreme Court enjoined a radio station performing sound recordings created by the plaintiff.  However, three years later the Second Circuit Court of Appeals, in an opinion in RCA v. Whiteman by the famed Judge Learned Hand, held that any common-law rights in the sound recording ended when it was sold.

However, fifteen years later in 1955, the Second Circuit overruled Whiteman, and held that sale of records does not constitute a publication that destroys a work’s rights at common-law in the decision of Capitol v. Mercury.   The New York Court of Appeals unambiguously affirmed this holding regarding publication a half-century later, in 2005’s Capitol v. Naxos decision.

When the question of whether common law protected sound recordings from unauthorized broadcast came before courts in the 1930s, no court held that a work was unpublished and yet lacked a performance right – either a sound recording was unpublished and thus protected from unauthorized broadcast, or it was published and could be broadcast freely, assuming royalties were paid to the composer under federal law.1

To put this history another way, when recording artists were opposed to their records being played on radio, they were active litigants to preserve these rights, until a 1940 ruling called these rights into question.  By the time that ruling was reversed in 1955, recording artists were desperate to get radio airplay, and the idea of suing radio stations for playing music without paying additional royalties in the era of payola was simply asinine.  It was only when Sirius and Pandora stopped paying royalties on pre-1972 sound recordings circa 2012 that the lawsuits began.  Common-law copyright has always had public performance as part of its bundle of rights, regardless of what federal law provides, and failure to litigate when it would be contrary to good business does not destroy that right.

In search of support for its conclusion that common law does not include a performance right for sound recordings, the Court of Appeals attempts to argue that Whiteman remains good law regarding performance rights, and was only modified by Mercury to protect reproduction of records.  However this attempted hybrid of these cases requires a willful blindness of what Whiteman actually says.  The Whiteman case analyzes common law rights from the perspective of whether or not they exist, and having found that the commercial sale of the records constituted publication, determined that no rights existed at common law.  The Whiteman case makes no effort to split up the bundle of rights contained in common-law copyright, and makes no indication that performance might be a different question from reproduction at common law.  2  As the New York Court of Appeals expressly rejected that approach to publication in Naxos, following its rejection by the Second Circuit a half century earlier, it is unclear what relevance Whiteman has anymore.

Indeed, the majority opinion of the COA is unprecedented – for the first time I have seen a Court has found a major limitation to the protections granted by common-law copyright.  Looking at the underlying nature of common-law copyright, such a holding is surprising.  As a doctrine focused on pre-publication protection for works, the idea that they only have protection against duplication makes precious little sense.  As we have seen many times, playing a leaked rough cut of a song on the radio on the radio is deeply problematic.  Admittedly, the idea that sound recordings are not published even after they have been sold commercially is the most problematic aspect of the common-law copyright doctrine for sound recordings, but that is not at issue in this case, because the COA has unambiguously recognized this legal fiction.  Legally, playing a commercially sold pre-1972 sound recording on Sirius is no different from playing a studio bootleg – either way you’re infringing rights absent an agreement with the owner of the sound recording common law rights.

One other thing, acknowledged by the COA, is that this decision creates a split with Pennsylvania, whose common law has recognized a common-law performance right since 1937.3  It is difficult to predict what complications will arise from this, but the thought of fifty states with different rules for public performance of sound recordings makes the federalization of pre-1972 sound recordings recommended by the Copyright Office sound even more tempting.

This is a complicated issue, and I’ve simplified a number of things (explained at greater length in the article draft) for purposes of writing a readable blog post.  If people would like clarification on anything, I’d be happy to provide it in the comments.

  1. In addition to the Pennsylvania and New York cases, a North Carolina case from 1939 held substantially along the lines of the Pennsylvania case.
  2.  Whiteman does discuss whether language printed on the record that it may not be played on the radio is effective as an equitable servitude, but this is a different question from whether common-law copyright limits play on the radio, which would be effective regardless of whether such language was printed on the record
  3. I’ve wondered why Flo & Eddie didn’t attempt to find a plaintiff to bring suit in Pennsylvania – it would have been the most direct option.