Patent Case Files From the Archives: New England Edition

This fall, I recommended that the Boston Public Library look into scanning the case files (pleadings, evidence, etc) of major case files in copyright law held by the National Archives location for New England, located in Waltham, MA.  In collaboration with the Internet Archive they did so, and I highlighted these results in a series of blog posts.

In response to the success of this project I sent the BPL and Archives a list of 19th century patent cases from New England, and they’ve scanned the case files for these as well.  The length of these files varies dramatically – some are a few dozen pages long, some are hundreds of pages long. The link on the case name goes to the case file, while the link of the citation goes to the reported decision.  It’s really cool to see these case files, both to see how patent litigation was conducted in the nineteenth century, and to see how famous early patent cases came to be decided.

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

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.