Copyright Case Files from the Archives, Vol. 3: A Few More Cases and a Register of Trademarks from 1874-1879

As the New Year approaches, it seems appropriate to share the remainder of the case files digitized by The Boston Public Library, The National Archives – Boston, and the Internet Archive.  In addition to the three case files, there is a somewhat confusing register of trademarks and labels created by the U.S. District Court for Massachusetts from 1874-1879.  Also, I want to wish all my readers a Happy New Year, and to expect lots more on this blog in 2017, including plenty more on common-law copyright for sound recordings, pre-1870 copyright record information, and generally more intellectual property history than you might think possible.

The case files are:

  • Arthur S. Sullivan el al. v. Louis P. Goulland 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 – a companion to the Sullivan v. White case discussed in the previous post on these files.  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.
  • Greene v. Bishop, 10 F. Cas. 1128 (C.C.D. Mass. 1858).  Case File.  The opinion by Justice Clifford is famous for being one of the first after Folsom v. Marsh (also in the previous post) to discuss fair use, along with the copyrightability of abridgements.  The case file tips the scales at 733 pages, and includes substantial evidentiary documents, including lengthy answers to interrogatories.
  • Lawrence v. Dana, 15 F. Cas. 26 (C.C.D. Mass. 1869).  Case File.  Another early fair use case from MA, another giant case file at 762 pages.  This case concerns whether the copying of the notes on cases from Henry Wheaton’s treatise on international law was fair use.1  The Court’s opinion references the evidence in the case file frequently and excerpts it as well, so it is helpful to see the entire case file.  The file is also a bit more readable than the case file in Greene v. Bishop, as parts of it are typeset instead of being entirely handwritten.

In addition to the case files, there is a register of trademarks and product labels registered for copyright with the District Court in Boston from 1874-1879.  I’m not entirely sure why this volume exists.  Under the 1870 Trademark Act registration was done at the Patent Office, and the 1874 Print and Label Act moved copyright registration for product labels and advertising prints was moved to the Patent Office as well.  Copyright registration had of course been in the District Courts until 1870, but the 1870 Copyright Act moved it to the Library of Congress, and no measure moved any part of it back to the District Courts since.  Whatever the case, the record book is here, and I welcome comments or suggestions as to why it exists – there is no record of such a book existing in any other District Court.2  There are some fascinating product labels from the 1870s pasted into the record book.

  1. This is the same Wheaton who was the Supreme Court Reporter and plaintiff in Wheaton v. Peters.
  2. Ignore the “Minute Book in Bankruptcy” title on the cover – I assume they just repurposed a blank minute book

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.

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