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.

An 1899 Proposal for a Proto-Federal Circuit

Although we tend to think of the idea of a modern appeals court focused on intellectual property issues as a recent phenomenon, in fact there had been attempts as early as 1878 create a specialized patent court.1  The issue of the complexity of intellectual property matters, especially patent law, was already apparent, and this was exacerbated by the creation of the Circuit Courts of Appeal in 1891, and the immediate circuit splits that ensued on patent law and other issues.

In 1898 Sen. Henry C. Hansbrough of North Dakota proposed the creation of a “High Court of Patents, Copyrights, and Trademarks.”2  In the new Congress the following year he reintroduced his bill, this time numbered 56th Cong., S. 1883.  The bill would have created a Court coordinate to the Supreme Court with jurisdiction over intellectual property issues, with seven Justices.  The bill would have also worked a repeal of the 1891 Act creating the Circuit Courts of Appeal and reset the federal Courts to their pre-1891 state, where both the District and Circuit Courts were trial courts with differing jurisdiction.3

Despite some support in industry publications like The American Machinist, this bill never went anywhere, but it was hardly the end of the issue, and bills to create specialized trial or appellate courts for intellectual property would continue for years to come.  The failure of the US Commerce Court in 1913 put a bit of a dent in the push for specialized Article 3 Courts generally, including the push for a specialized court in intellectual property.  The addition of patent jurisdiction to the Article 1 US Court of Customs in 1929 created an appellate patent court, but only for appeals from the Patent Office, not from the District Courts.  It would not be until 1982 that the Federal Circuit Court of Appeals was created to solve the problem of uniformity and expertise that had motivated Hansbrough’s proposal over 80 years earlier.

  1.  Felix Frankfurter, The Business of the Supreme Court of the United States – A Study in the Federal Judicial System, 39 Harv. L. Rev. 587, 615 (1926).  Part 5 of the Frankfurter piece gives the history of these attempts from 1878 through 1920.
  2. 55th Cong., S. 4256
  3. The 1891 Act did not abolish the trial-level Circuit Courts, which continued to exist until the Judicial Code of 1911 became effective

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.