Case Files from the Archives; Vol 2: Folsom v. Marsh, Gilbert & Sullivan, and More!

Some of you may have noticed a post I did last week, about the digitization of the First Circuit’s case file from Pierce & Bushnell v. Werckmeister.  I was excited to be able to share that one, but indicated it was only the tip of the iceberg.   Well, the rest of the case files are now online, and they’re amazing.  To be clear, these are not the reported decisions, but are rather the various papers filed with the Court, including pleadings, evidentiary documents, orders, exhibits, and more, only available to the public before via a trip the National Archives at Boston.  As before, a major thank you is in order to The Boston Public Library, The National Archives – Boston, and the Internet Archive for getting these digitized.

Edit to add: the remaining case files from this project have been posted and I’ve discussed them in a subsequent post here.

The star of this batch is almost certainly the case file from Folsom v. Marsh, 9. F.Cas. 342 (C.C.D. Mass. 1841), “widely regarded as the first ‘fair use’ case in the United States.”1  To borrow verbiage from the Copyright Office’s Fair Use Index, this is a case  brought by Jared Sparks, who owned copyrights in President Washington’s personal and official papers that he edited for The Writings of George Washington, published a twelve-volume work including President Washington’s papers with plaintiff publisher Folsom, Wells and Thurston. Defendant Reverend Charles Upham, a writer and anthologist, copied 353 pages of President Washington’s papers in the two-volume work The Life of Washington in the Form of an Autobiography, published by defendant Marsh, Capen and Lyon.

Plaintiffs alleged that defendants infringed their copyrights because Upham copied the papers verbatim from Spark’s book. The court found that defendant’s use of plaintiff’s letters was not fair use. In reaching this conclusion, the court recognized principles that are the foundations for the modern fair use doctrine, stating: “In short, we must often, in deciding questions of this sort, look to the nature and objects of the selections made, the quantity and value of the materials used, and the degree in which the use may prejudice the sale, or diminish the profits, or supersede the objects, of the original work.” Although the standard narrative that Folsom v. Marsh created fair use has been largely displaced,2 it is still the most important case to the formation of the fair use doctrine.

The case file is a rich resource for learning more about Folsom v. Marsh.  It includes the Court’s final decree, certification of deposit by the State Department (hand-signed by Daniel Webster), a copy of the 1827 contract between John Marshall, Bushrod Washington, and Jared Sparks to collect and published the complete letters of George Washington, another such contract from 7 years later between John Forsyth, then-secretary of state, and George C. Washington, the letter appointing George S. Hillard as Special Master in the case to determine the amount of infringement, Hillard’s complete report, as well as the complaint and answer. No copy of Justice Story’s opinion is in the file; the case was reported by Justice Story’s son William.

In addition to the Folsom v. Marsh case file, there are a number of other newly digitized case files.  They are:

  • Dielman v. White, 102 F. 892 (C.C.D. Mass. 1900).  Case File.  This is a case about the right to photograph certain mosaics in the then-new Library of Congress Jefferson Building.  Includes pleadings and extensive testimony, as well as a catalog of reproductions of the artwork in the Library.
  • Arthur S. Sullivan el al. v. Charles A. White et al (Unreported, C.C.D.MA. 1879).  Case File.  This is a case about piracy in the operetta The Pirates of Penzance, by Gilbert & Sullivan.  I’ve written about this case in my article on the origins of the public performance right in music, and I’m excited to have full-color scans of the case file online.  Included in the file are multiple examples of illicit scores of the songs from The Pirates of Penzance.
  • Richard D’Oyly Carte v. John Clark (Unreported, C.C.D.MA. 1880).  Case File.  Breach of contract suit over the failure of John Clark, a.k.a. Signor Broccolini, to perform in Carte’s productions in America, where he was performing as The Pirate King in Pirates of Penzance.  Carte is of course best known as the impresario behind Gilbert & Sullivan.  Includes a substantial affidavit from Carte.
  • Kennedy v. McTammany, 33 F. 584 (C.C.D. Mass. 1888).  Case File.  This was the first case in America to address the question of whether a piano roll is a copy of the musical composition performed when the roll is used with a player piano.  In holding the negative, this case lead directly to the Supreme Court’s decision in White-Smith v. Apollo 20 years later.  Includes substantial pleadings which go into technical detail regarding the player piano mechanism.
  • Emerson v. Davies, 8 F. Cas. 615 (C.C.D. Mass. 1845).  Case File.  Case regarding whether certain tables could be protected; generally credited with establishing the “sweat of the brow” doctrine rejected by the Supreme Court in 1991 in Feist v. Rural Telephone.
  • Sampson & Murdock Co. v. Seaver-Radford Co., 140 F. 539 (1st Cir. 1905).  Case File.  This case is about copyright in city directories, and held the information theirin protected.  This case is among the leading cases to be overruled by Feist v. Rural Telephone.  Case file includes the transcript of record and briefs.
  • White-Smith Music Pub. Co. v. Goff, 187 F. 247 (1st Cir. 1911). Case File.  This case is about the rights of a music publisher to renew a copyright where the author had died.  The Court affirmed the District Court in holding that the renewal term was a separate term and the proprietor had no right to apply for the renewal term.  Case file includes the transcript of record and briefs.  Also includes a copy of the Attorney General’s opinion on the issue, also available at 28 Op. Att’y Gen. 162 (1910).
  • Gray v. Russell, 10 F. Cases 1035 (C.C.D.Mass. 1839).  Case File.  This case is generally seen as one of the final nails in the coffin of the rule permitting unlicensed publication of abridgements.  In an opinion by Justice Story the Court found that an abridgement of a Latin book with all the notes copied verbatim from the source text was an infringement.  The case file includes a detailed report of a special master and handwritten pleadings to the Court.
  1. Wikipedia Article, Folsom v. Marsh
  2. See, for instance, Matthew Sag’s article The Pre-History of Fair Use

Copyright Casefiles from the Archives, Vol. 1: Pierce & Bushnell v. Werckmeister

I’m pleased to announce one of the first fruits of a partnership between the Boston Public Library, National Archives at Waltham, and the Internet Archive.1  At my suggestion, they’ve begun digitizing the case files for a number of copyright cases that I thought were particularly worth seeing from before 1923.  The National Archives at Waltham includes federal court records from all of New England, but I limited my list of cases to the First Circuit – so if there are suggestions for cases from Connecticut or Vermont, feel free to leave them in the comments or just tell me directly.  I’ve also only requested case files from cases before 1923 to avoid any possible copyright issues, at least for now.

The first casefile to come online is the file for Pierce & Bushnell Mfg. Co. v. Werckmeister, 72 F. 54 (1st Cir. 1896), which reversed Werckmeister v. Pierce & Bushnell Mfg. Co., 63 F. 445 (C.C.D. Mass. 1894).  Briefly put, the case involved photographic reproduction of a painting entitled “Die Heilige Cacilie” by the German artist Gustav Naujok, who assigned all reproduction rights to Photographische Gesellschaft Berlin, which in turn photographed the work, copyrighted the photograph with the Librarian of Congress, and inscribed the notice required under the 1870 Copyright Act, as amended in 1891.  The painting depicts “the patron saint of music, St. Cecilia, sitting before an organ, and cherubs dropping flowers, and by means of the artistic coloring of the picture and the expression in the face of St. Cecilia, express emblematically the power of sacred music.”  Case File, Transcript of Record at 1.  It was undisputed that Pierce & Bushnell Mfg. Co. had made copies of the work without permission.  However, upon suit by Emil Werckmeister, a principal of Photographische Gesellschaft Berlin, Pierce & Bushnell argued that the copyright was invalid, because no copyright notice was inscribed on the original painting, and that it had been publicly exhibited without that notice before any copyright was registered.

The Circuit Court for the District of Massachusetts (sitting as a trial court, as it would in certain matters until 1911) disagreed with the defendants, and held that the copyright was valid, and that copyright notice only needed to be inscribed on copies of a work, not on the original.  The case file thus shows the case presented to the then-new First Circuit Court of Appeals – including the main and supplemental briefs of both parties, the transcript of record including interrogatories taken as part of the litigation.  Unfortunately, it does not seem that any example of the photograph at issue is included.

The Circuit Court of Appeals would overturn the trial court, and hold that notice was required on the original painting.  However, the Supreme Court would overrule that result in a different case, also involving Werckmeister, in 1907.  American Tobacco Co. v. Werckmeister, 207 U.S. 284 (1907).

Lots more coming, including (I hope) the case file from Folsom v. Marsh.

  1. In particular, I’d like to thank Tom Blake at the Boston Public Library for taking the lead in facilitating this project, as well as Alfie Paul at the National Archives.

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:


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

How Copyright Came to the Library of Congress

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

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

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

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

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

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

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

Oral Arguments in Mazer and Star Athletica

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

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

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


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

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