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.

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:

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

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.

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

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

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

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

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

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

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

Discussion of the three cases follows after the jump.

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