This post brings together two separate but related topics – a relatively unknown resource about the Supreme Court, and light it shines on what I think were the main schools of thought on copyright in the late nineteenth century. Read on for more, including original scans of archival material.
As part of a symposium on forgotten cases in intellectual property with the Syracuse Law Review, I recently wrote a short history of the US Supreme Court’s 1879 decision in Perris v. Hexamer, entitled How Perris V. Hexamer Was Lost in the Shadow of Baker V. Selden. Perris is essentially forgotten today, but it has somewhat similar facts and holding to Baker v. Selden, decided the following year. The decision is less than 1,000 words, so it’s pretty easy to give it a read, but essentially the Court held that the legend/key to a fire map showing what different symbols meant was not protected by copyright, and that using the same colors and symbols as a competitor’s map did not constitute infringement either. In some ways this decision is even more relevant than Baker (concerning the copyrightability of accounting ledgers) to the copyright questions raised in cases like Google v. Oracle, among others. However, Baker keeps being cited (hundreds of times in the past few decades alone), while a citation in 2016 by the 9th Circuit was the first citation to Perris in 3+ decades. I wanted to figure out why. Given that Perris is a fairly short opinion and Baker is an average-length opinion, I figured perhaps just the length of the opinion led Perris to be ignored, as presumably other short opinions would be ignored.
This question naturally led me to try to answer a broader question than I actually needed to. I assumed that there must be public databases out there of the number of words in an opinion, along with the number of citations to that opinion. However, while there has been some scholarship on the question, no public database of this sort exists.1 Accordingly, with help from my law school classmate Corey Mathers, I decided to try to assemble it. Paid databases like Westlaw and Lexis were not options, but the website Courtlistener.com (a project of the Free Law Project) does have the entire US Reports, along with citation tracking. Accordingly, we decided to build our database from that site.
Accordingly, our data is here (zipped CSV), with data on every Supreme Court decision, including word count, number of citations to authority in the opinion, and number of citations to the opinion (as well as caption and year). We removed cases that have less than 200 words, which are typically not real decisions but are rather summary orders like grants of certiorari.
However, the data has some weaknesses, and should really be considered more of a first step than a definitive resource. By far the most significant weakness stems from the holdings of Courtlistener – while it has many recent decisions and all Supreme Court decisions, it is missing most caselaw from before 1950 or so. Accordingly this creates a bias in favor of more recent cases, but at least the bias is uniform across all cases. Ideally the data could be recreated from a database with more decisions. Also, the word count for pre-1880 decisions frequently includes lengthy arguments of counsel as well as the actual decisions. There are several other smaller issues as well, all of which could be resolved by re-running the query we ran on a database with full coverage of federal and state decisions.
Usually these posts have been a chunk of information, but this one is really more open-ended, since I know the data we created is deeply incomplete – it was acceptable for purposes of my paper but could be improved. What would be good next steps for developing the data? What other data should we be trying to generate (only data that can be done automatically, nothing that would require manual review beyond error-checking)?
As folks to this blog likely noticed, I engaged in a project to bring together all pre-1870 copyright records, which culminated in a post earlier this year. As part of that project I was able to find a few records from Louisiana from 1837 and 1838. These were located in the National Archives Regional Division at Ft. Worth, but I wasn’t able to actually go there myself to see if there were any more. So when I had a chance to go to Ft. Worth to present at the IP Scholars Roundtable in October, I figured it would be a chance to double check the record books myself and see if there were more copyrights there.
Even the Archives are bigger in Texas. pic.twitter.com/nIQHydqMgS
— Zvi S. Rosen (@zvisrosen) October 12, 2017
Aside from the 1837-1838 records I found last year and a single registration held by the Library of Congress from 1835, there were known no copyright records from before 1851. This is a major gap in the records since New Orleans was a major city from the Louisiana Purchase onwards, and the copyright records would be a useful source for understanding the legal and cultural milieu of the time. In fact, aside from possibly Maryland, where the copyright records for the state are missing from before 1831, this is likely the largest gap in the pre-1870 copyright records.1
So, I went to the Archives, and decided to photograph the record books for the pre-1851 time period as well as looking through them (recall that the Library of Congress has copyright records for the federal court in New Orleans for 1851 on. I figured I might find more than the student who looked at the books originally had found. The National Archives catalog entry says that the series of record books is case papers, copyrights, and appointments, but in reality it’s mostly bonds and such documents related to pending litigation. I’ve uploaded my scans the two volumes to The Internet Archive, and everyone is free to look themselves, but there are no copyright records for years other than 1837 and 1838.
- Eastern District of Louisiana Record Book of Bonds etc for 1820-1839
- Eastern District of Louisiana Record Book of Bonds etc for 1840-1850
However, I realized that the copyright records had to be somewhere, and I knew I wouldn’t have a chance to be in Ft. Worth again for a while. Accordingly, I decided to look at the Minute Books of the Louisiana District Court on microfilm, which is where I found this:
It’s a little difficult to read, but this indicates that on October 11, 1810, Thomas H. White registered a book for copyright entitled “New Orleans & Natchez Directory and Louisiana Almanac.” I’ve also included a link to the introduction to the microfilm and a reproduction of the complete page containing this registration here. The volume has a mark on the first page indicating that there is a copyright registration on page 257, along with a few other indications of highlights in the volume but no other mentions of copyrights, strongly suggesting that this was the first copyright in Louisiana.
I haven’t taken the time to go through the remainder of the minute books on microfilm, which would be extremely laborious, but this at least suggests that there may be more copyright records there, pointing to a resolution for where at least some of the missing records are. It’s also instructive for the “lost” records from the early Republic, suggesting that just because we don’t know where they are, it doesn’t mean they’re necessarily lost forever.
- Another contender for largest gap is Virginia, but even though the original records from Richmond are missing until the 1860s, a transcription exists for 1790-1844, and the “second set” of records held in the Library of Congress should cover much the rest of the gap until the Civil War. The question of how that early transcription is made is an interesting one, but it might be too esoteric even for a blog post unless I can bundle it with a discovery or two. ↩
To be clear, this is my opinion only, and the views expressed in this post, and indeed this blog, should not be imputed or otherwise associated with anyone else.
This one from the Supreme Court of Florida, finding that Florida common law does does not recognize an exclusive right of public performers for the holders of common-law copyrights in sound recordings made before February 15, 1972. The 11th Circuit certified a series of questions to the Florida Supreme Court, namely:
- Whether Florida recognizes common law copyright in sound recordings and, if so, whether that copyright includes the exclusive right of reproduction and/or the exclusive right of public performance?
- To the extent that Florida recognizes common law copyright in sound recordings, whether the sale and distribution of phonorecords to the public or the public performance thereof constitutes a publication for the purpose of divesting the common law copyright protections in sound recordings embedded in the phonorecord and, if so whether the divestment terminates either or both of the exclusive right of public performance and the exclusive right of reproduction?
- To the extent that Florida recognizes a common law copyright including a right of exclusive reproduction in sound recordings, whether Sirius’s back-up or buffer copies infringe Flo & Eddie’s common law copyright exclusive right of reproduction?
- To the extent that Florida does not recognize a common law copyright in sound recordings, or to the extent that such a copyright was terminated by publication, whether Flo & Eddie nevertheless has a cause of action for common law unfair competition / misappropriation, common law conversion, or statutory civil theft under FLA. STAT. § 772.11 and FLA. STAT. § 812.014?
Instead of addressing these questions, the Court chose to address a reformulated question of its own, “Does Florida common law recognize the exclusive right of public performance in pre-1972 sound recordings?” The obvious problem with this is that it fails to address whether pre-72 sound recordings are protected under Florida law more generally. The Court notes (pp. 19-20) that Florida criminal law provides penalties against commercial bootleggers of sound recordings, but those criminal provisions do not impact a range of activity including noncommercial infringement.
This could be excused as judicial minimalism if it wasn’t central to the case – Flo & Eddie sued in Florida specifically because SiriusXM has servers there, and alleged that copying was ongoing on those servers in violation of their exclusive right of reproduction. The Court later in the opinion reasoned that because the criminal statute exempts copying made in the course of “as part of a radio, television or cable broadcast transmission,” so the copying would not trigger civil liability under common-law copyright, regardless of whether any such rights exist. But of course this analysis doesn’t properly follow – whether certain actions do not give rise to criminal liability does not mean the same actions give rise to civil liability. One only need to look at federal copyright law (or, indeed, nearly any body of law) for ample demonstration of this – most conduct which gives rise to a civil claim for infringement does not give rise to a criminal claim for the same conduct.
So, in revising the question formulating by the Circuit Court to one it preferred, the Florida Supreme Court effectively ignored one of the main claims being brought by Flo & Eddie. However, I believe the Court’s reasoning on the performance rights claim is problematic as well. One key part of the Court’s analysis is that finding performance rights would upset settled expectations and cause wide-ranging impacts not expected by the statute. Regardless of whether this is true, 1 the Court relies on a second argument as well. The Court notes that Congress extended federal copyright protection to sound recordings in 1972, but in the same breath denied them performance rights. The Court thus reasons that Congress could not have intended to take away rights that existed, and thus performance rights must not have existed before that time as well.
The problem with this analysis is that Congress clearly was taking away performance rights, at least for sound recordings from Pennsylvania, where a performance right had existed at common law since the decision of that state’s Supreme Court in the 1937 Waring v. WDAS decision.2 And by the evidence, this was a tradeoff sound recording rightsholders were fine with at the time – the right to federal remedies against bootleggers of recorded music was worth far more than a right in some states to demand royalties for sound recording performance. This is especially true because record companies did not want to imperial radio airplays by demanding additional royalties at the time.
Regardless, Florida is unlikely to revisit this decision anytime soon. California is the next stop, where the same issue is now being briefed before that state’s Supreme Court.
- I’m skeptical that the Flo & Eddie cases would actually have such an effect since they’re only aimed at services that already pay royalties for sound recordings, and indeed Flo & Eddie and SiriusXM reached a settlement that would resolve the issue, but that’s another story. By contrast, I do think the ABS series of cases, targeting terrestrial radio stations, may raise broader concerns, regardless of the legal merits. ↩
- Whether New York recognized such a right was unclear in 1972 – the 1940 RCA v. Whiteman decision had said no, but in 1955 the same Court (the 2nd Circuit) found that decision to be overruled. Three states including Florida had expressly abrogated the performance right by statute, and as far as I’m aware 45 states had no precedential decisions or laws on the topic. ↩
It’s hard to believe that today marks the one-year anniversary of when I first posted to this blog in earnest (I started it a few months earlier but hadn’t posted anything beyond a “hello world” post). In the process I’ve been pleasantly surprised at how many people are interested in what is surely one of the more esoteric blogs about intellectual property law out there.
I have an awful lot in the backlog of stuff to share, including a lot of tidbits about sound recording copyright and the White-Smith decision, as well as a post I really should get out soon on Copyright and the 11th Amendment/Sovereign Immunity. However, the biggest project I’m working on is an empirical project, bringing together statistics of copyright in America from 1790 through 2015. Here’s a teaser of what I’m working on (with my coauthor Richard Schwinn, an economist):
This chart shows the number of copyright registrations made, per 100,000 people, per year, with the color of the line representing the cost of registration adjusted for inflation. This is only the tip of the iceberg – the statistics I’ve assembled are broken down for the type of work for 1870 to the present, and I have rates of renewal for 1909-2005 as well for all classes. A paper that hopefully lays it out all is in the works. Here’s to another great blog-year.
It’s fairly well-known that photographers like Matthew Brady used photographs in unique and important ways during the Civil War to document the conflict like never before. It’s also known among copyright nerds that 1865 saw not just the end of the Civil War, but the amendment of the federal copyright statute to include photographs. However, the conventional narrative of this law has always been that the amendment to the law to include photographs was close to a bolt from the blue. As William Patry puts it:
This Act had a remarkably short legislative history. On February 22, 1865, the Committee on Patents and the Patent Office, which had been studying the issue, reported S.468, which was passed by the Senate the same day. The House passed the bill on March 2, and President Lincoln signed it into law the next day.
Source (internal citations/quotations omitted). The law is one of Abraham Lincoln’s two main accomplishments on copyright, the other being his appointment of Ainsworth Spofford to be the Librarian of Congress in the same year. However, the legislative history of the law was longer than has currently been understood, as a bill to include photographs within copyright law had actually been introduced in the House the previous year by Thomas A. Jenckes and committed to that chamber’s Committee on Patents. However, for reasons that are unclear the House did not order the Bill printed, and as a result it has been all but forgotten until I found a manuscript copy of the bill in the Congressional files at the National Archives.
Finding the bill was a bit of a fluke – when I was writing my article on the origin of performance rights for music in 1897, I went through Thorvald Solberg’s work Copyright in Congress, 1789-1904, in search of any previous bills to provide such performance rights. What I found is that for a number of bills, he describes copyright bills, but provides no details as to the content of the bill. The Library of Congress’s American Memory – A Century of Lawmaking site does not have a copy of the bill (House Bill 505 from the 38th Congress), so I (perhaps excessively) checked the files of the Committee at the National Archives. Sure enough, there’s a handwritten copy there. My scan of the bill is here, and I’ve included a transcription below the jump.
The act that would be passed in 1865 to include photographs in copyright is extremely terse, stating that the provisions of the copyright law “shall extend to and include photographs and the negatives thereof which shall hereafter be made, and shall enure [sic] to the benefit of the authors of the same in the same manner, and to the same extent, and upon the same conditions as to the authors of prints and engravings.”1 On the other hand, the bill introduced by Jenckes in 1864 created a whole mechanism for deposit of a “memorandum” describing the photograph with the clerk of the District Court (since copyright registration was still at the District Courts until 1870). Also included, seemingly added later, were two final sections establishing limited trademark protection for the marks of photographers (six years before the first law providing for federal trademark protection).
I don’t currently know the connection between the 1864 Jenckes Bill in the House and the bill a year later in the Senate which became law, but the introduction of the Jenckes Bill gives an explanation of how Congress moved so quickly on the issues – even if the public record doesn’t make it clear, the House Committee on Patents had been considering a bill to include photographs within copyright since the previous session of Congress. There’s probably the necessary information to link these bills in the Papers of Thomas A. Jenckes; one of these days I hope to be able to tell the whole story. But in the interim, this seemed a nugget of information worth sharing. The bill text follows below the jump.
- the 1865 Act then includes several paragraphs reestablishing the requirement of copyright deposit with the Library of Congress, a requirement which has been retained ever since ↩
It’s been too long since I made a proper post – I’ve been busy putting together a piece I’m calling An Empirical Study of 225 Years of American Copyright Registrations (title subject to change, natch), which I fully expect to be the bees knees, all while being no bigger than a breadbox. But there’s still a lot I want to share, and this seems as good a time as any to share a report the US Copyright Office issued in 1947 which has been almost completely forgotten.
Until 1947, the US Copyright Office would not register editions of public-domain music for copyright. Obviously the music could not be reinserted to copyright protection, but the Office held that merely editing public-domain music was insufficient for copyright protection. However, in that year the Office issued a report (link to my scans) that gave the history of Office rules for registration of music, and an argument for how they should be changed to include edited versions of public-domain works. The Office changed its position based on this report and allowed such editions of music to be registered for copyright. The Office had distributed the report to interested outside parties, and copies are available at a number of law libraries, but I haven’t seen it online.
The issue of whether editions of public domain music are nonetheless protected was litigated in England in the Hyperion Records case, involving a small classical music label in a suit by a scholar over his editions of the music of an early 18th century composer. However, I think the discussions in the report are illuminating for discussing the scope of music copyright protection and infringement more generally, something Joe Fischman also discusses in his upcoming article Music as a Matter of Law, and I of course discuss in my upcoming article Common-Law Copyright (never miss an opportunity to plug one’s own work).
I’m not pushing a normative argument with this post, I just think it’s useful to understand how some of the debates over copyright have evolved – or not – over 200 years. Some parts of this article are expanded upon much further in my article The Twilight of the Opera Pirates, which tells the history of the origins of performance rights for music, but I wanted to focus on a different aspect of the Ingersoll Bill than that article looked at.
A question people love to hash out in the public discussions of copyright is whether copyright is a property right. Of course the question is a little misleading, because copyright is obviously at least a form of property, but what people are really debating is whether copyright is substantially equal to real property in the deference given by the law and society. These debates are typically accompanied by calls to history, but these are typically given in a general sense without reference to specific incidents. In the nineteenth century the vast majority of references to property rights in copyright in the records of Congress are in respect to the lengthy fight for international copyright protection, which did not culminate until 1891. However, the Ingersoll Copyright Bill, introduced in 1844 and quickly disappearing, is the exception, and provides I think an interesting window into what people thought about copyright at the time.
At the beginning of 1844, Charles Jared Ingersoll, a Democratic Congressman from Philiadelphia, who also had a career as a lawyer, orator, and playwright, introduced a copyright bill.[His plays included Edwy and Elgiva and Julian, and his widely circulated Discourse Concerning the Influence of America on the Mind included a discussion of copyright law as well.] This bill was intended as a complete revision of copyright law, and was generally far ahead of its time. Amendments Ingersoll added two weeks later further modernized his bill, adding performance rights as well as a system of design protection. However, Section 15 of the bill contained a clause that I haven’t seen in other copyright legislation, at least not phrased this way:
[A]ll copyright shall be deemed personal property, and shall be transmissible by bequest, or, in case of intestacy, shall be subject of the same law of distribution as other personal property.
This clause is obviously aimed partially at insuring that copyrights can be transmitted to heirs, but there’s also a clear intent to assert that copyright is a form of property. Indeed, reading over the bill and amendments, assertions that copyright is a property right are all over the bill – in stark contrast to the then-in-force 1831 Act, which does not use the word “property” once.
After being introduced the bill was referred to a Select Committee, where it failed to go anywhere. However, luckily, one of the members of this Select Committee was an elderly John Quincy Adams, still keeping his daily diary. Ingersoll and Adams were fierce opponents on issues of the gag rule and slavery, so it is perhaps unsurprising that Adams was less than enamored of Ingersoll’s proposal. When the subject was first broached, Adams noted in his diary that he “offered some suggestions as to the natural right of literary property, to the principles of which, as entertained by me, Ingersoll immediately declared his dissent. His principles are radically depraved, and never can harmonize with mine.” A month later the bill was discussed again, leading Adams to describe the bill as “an entire but most incongruous system of copyright property, fit for nothing but to multiply litigation.”
It’s of course impossible to know exactly what Adams was referring to, but the property aspects of the Ingersoll bill seem like the obvious answer (although in fairness the bill is sprawling and pointing to any one aspect is difficult). That said, the very fact that the Ingersoll bill needed to state that copyright is a property right is suggestive that this was not uniformly agreed on.1
An illustrated of the debate as to whether copyright is on par with real property was illustrated in a Senate Report from six years earlier on international copyright, where the Senate Committee on Patents wrote that
The committee do not deem it necessary to argue the question, which has been so much discussed, whether an author has a property in his written and published productions, by natural right, which society is bound to protect. It will, perhaps, be sufficient to admit, that in most cases there will be found equitable considerations, constituting strong claims for aid and protection in some form, to those from whose intellectual labors mankind derive a benefit. Partly with reference to such considerations of justice to authors, and partly with it view to the advancement of literature and science, all civilized nations have established copyright laws.
In the end the Select Committee on the Ingersoll Bill focused on issues of international copyright instead, including a memorial from Nahum Capen, Miscellaneous Memorials on the issue of international copyright from around the country (my scans from the National Archives, 2 MB), as well as a Memorial from John Jay, presumably a son of the former Chief Justice (my scan from the National Archives, 2 MB). These all concerned the recently failed effort for international copyright from the late 1830s, not the question of property in copyright.
One of these days I want to write a proper account of the history of copyright in America from 1789 to 1909, and one of the strands I want to show is that the triumph of international copyright in 1891 also represented a triumph of a property model of copyright, which was then codified by the 1909 Act. In the 1840s the issue was still much more equivocal. As Justin Hughes has demonstrated, the term “literary property” was already in wide use by authors and advocates of international copyright. However, the term “property” was assiduously avoided by others, including the pirate press and opponents of international copyright. In a way, it seems like little about the debate has changed in some 170 years, but the law itself clearly has.
- Of course, the counterargument is that it went without saying in previous bills. ↩
Last week the Supreme Court decided the case about the Constitutionality of the clause of federal trademark law excluding from registration disparaging, scandalous, or immoral marks, and found this clause to be unconstitutional. Part of the reasoning at both the Circuit Court level and the Supreme Court level was that such a rule would be obviously unconstitutional vis a vis copyrights, and there is no good way to develop a rule that distinguishes copyrights from trademarks in this context. I’ve been telling people informally that the history of copyright registration is actually a lot more complicated, and that I should write an article explaining this. But in the interim, in the interest of getting the information out there, I’ve put the basic information in a blog post.
In rejecting the argument that trademark registration is government speech, and thus excluded from the protection of the First Amendment, Justice Alito’s opinion states the following (Slip Op. at 21-22)
For if the registration of trademarks constituted government speech, other systems of government registration could easily be characterized in the same way.
Perhaps the most worrisome implication of the Government’s argument concerns the system of copyright registration. If federal registration makes a trademark government speech and thus eliminates all First Amendment protection, would the registration of the copyright for a book produce a similar transformation?
The Federal Circuit’s opinion is much lengthier, and explores this issue in greater detail. This attitude is unsurprising, as nowadays the Copyright Office registers essentially anything. Indeed, the most frequent copyright litigant, by far, is a pornographer. However, copyright’s content neutrality has only been well established since fairly recently, and in the past the Copyright Office has denied registration – and Courts have found works uncopyrightable – driven by both legal concerns such as obscenity as well as more amorphous concerns like immorality.
As William Patry notes in a post about this question in 2005, the trial court in Bleistein held that a “picture which represents a dozen or more figures of women in tights, with bare arms, and with much of the shoulders displayed, and by means of which it is designed to lure men to a circus” was not within the protection of the statute, finding it “merely frivolous, and to some extent immoral in tendency.”1 The Supreme Court overruled this decision, but did not address the discussion of morality, focusing on other issues. Subsequent cases would hold that works that were illegal or immoral were not the subjects of copyright.
In the first part of the twentieth century, federal prosecutions for obscenity through the mail generally made most questions of copyright in works that might even have a shade of obscenity superfluous for domestic authors. For foreign authors the combination of obscenity prosecutions and the manufacturing clause of the copyright law at that time (requiring that English-language books be printed and typeset in America in order to receive copyright protection) was essentially a bar to copyright protection in America for books that might be within European sensibilities, but on the edge of American ones. Robert Spoo has written about the travails of as James Joyce in this arena, and it’s a fascinating story all its own.
In the annual report of the Register of Copyrights for 1941, the Copyright Office made clear for the first time as a written policy that it would not register “seditious, blasphemous, immoral or libelous” works, as the Office did not consider them to be copyrightable at all. 1941 Annual Report at 29-30. Although this policy was anchored in a belief that such works were generally illegal, such a policy goes far beyond the scope of the first amendment today – I can’t say for certain if it did in 1941 though.
It is unclear whether many works were rejected in these standards, but in September of 1954, the Copyright Office issued Ruling Number 32 relating to Obscene Works, reading as follows:
a. The Office will not ordinarily attempt to examine a work to determine whether it contains material that might be considered obscene.
b. If the examiner believes, upon an ordinary examination, that a work is obscene, the Chief of the Examining Division will determine whether the work should be referred to the Department of Justice for possible prosecution. If the work is not so referred, the copyright claim may be registered.
c. When a work is referred to the Department of Justice, registration will be held up pending action by that Department.
The unraveling of this system came in September 1958, with the arrest of Lawrence E. Gichner, owner of a sheet metal company and amateur sexologist, who had attempted to register his book “Erotic Aspects of Chinese Culture.” Apparently the Copyright Office had referred it on examination to the Department of Justice, who had contacted the Washington, DC police. The DC police arrested him, and took for evidence fifty crates of material. The ACLU rushed to Mr. Gichner’s defense, and the Librarian asked the President to ask his Attorney General for an opinion as to whether the Copyright Office was permitted to register works that are illegal or immoral. On December 18, 1958, the Attorney General answered that the Office was not required to turn away works on the grounds of immorality or illegality. 41 Op. Att’y Gen. 395 (1958).
However, an eagle-eyed reader may note that the Attorney General did not actually hold that immoral works were protected by copyright – in fact he strongly implied the opposite, that both immoral and obscene works are not protected by copyright, but that it was not the job of the Copyright Office to make that determination. In 1979 and 1982 the Fifth and 9th Circuits held that immoral and obscene works were protected by copyright. Jartech v. Clancy, 666 F.2d 403 (9th Cir. 1982); Mitchell Bros. Film Group v. Cinema Adult Theater, 604 F.2d 852 (5th Cir. 1979) However, in 1998, the Southern District of New York noted that it was “far from clear that the Second Circuit will follow the Fifth and Ninth Circuits in rejecting the argument that obscene material is entitled to copyright protection.” Devils Films, Inc. v. Nectar Video, 29 F. Supp. 2d 174, 176 (S.D.N.Y. 1998). This would be a minority position, but Courts have been noting a split on the issue ever since (the Second Circuits and most other Circuits have never addressed the issue head-on).
As obscenity has steadily shrank into the darkest corners and immorality has essentially disappeared as a legal standard, it’s easy to miss that there was surprisingly little of substance stating that copyright law protected works which fall into the vague standard of immorality. In fact, Tam can reasonably be stated to be a precedent for copyright’s neutrality, albeit perhaps an unwitting one. It seems that with the decision to no longer examine for immorality or obscenity, the law came to recognize that such works were protected by copyright, even in spite of a long tradition to the contrary, only partially told here. Whether there was a causality to this or it was simply a consequence of the expanding scope of the first amendment is an interesting one.
It’s been too long since an update…and I had a couple of interesting old things to share. However, then the Northern District of Illinois granted a motion to dismiss in Sheridan v. iHeartmedia, and I needed to say a bit about it. Some posts have been focusing on the fact that the Court found that performance rights do not exist at common law, but I think the Court actually went substantially further, and substantially abrogated civil protections for sound recordings made before 1972 in Illinois (a state criminal statute still exists for commercial record piracy). In this post I will (hopefully) explain the doctrine, and why this case is a much bigger deal than is being commonly stated. Finally, as always, I’ll include a tidbit from the archives.
As I’ve mentioned a number of times before, I have an article forthcoming on common-law copyright (edits are still being done by the Cincinnati Law Review). In that piece I largely take as a given that common-law copyright protects sound recordings made before February 15, 1972, and then spend close to 100 pages exploring what exactly that means, focusing on the question of performance rights particularly and differences between statutory federal copyright law and common-law state copyright law. And regarding New York and California, at least, that is a fairly safe presumption – given the (cryptic and outdated) California statute, coupled with caselaw from the New York Court of Appeals. However, in other states the applicability of common-law copyright to pre-1972 sound recordings is suddenly appearing questionable, and I wanted to explore a bit what that means.
My article tells the story in much more detail, but as a result of a series of cases culminating in the Supreme Court’s 1908 decision in White-Smith v. Apollo, Courts and the Copyright Office came to understand that the 1909 Copyright Act did not protect mechanical reproductions of musical compositions (i.e. discs or piano rolls) as being protected by copyright law. This began to be controversial in the 1930s, where big bands began to worry about radio stations using their recordings to compete with their (extremely lucrative) live radio programs. Fred Waring and Paul Whiteman were the two primary litigants in these suits, and Waring found success, both at the Pennsylvania Supreme Court and at a Federal District Court in North Carolina (although North Carolina and several other states would abrogate these decisions by statute). Whiteman on the other hand had his position rejected by the Second Circuit Court of Appeals, which would partially reverse itself in 1955 in the case of Capitol v. Mercury.
It is axiomatic that common law protected a creative work (under the pre-1978 laws) until it was published, but publication destroyed common-law copyright, leaving only the possibility of statutory copyright. The arguments at issue in all these cases involved a fundamental question – is a sound recording that is commercially sold “published” within the meaning of copyright law?1 If publication occurred then no rights exist at common law, but if publication did not occur despite the public sale of the phonorecord, then common-law rights remain.
The argument that the sale of phonorecords does not constitute a publication of the sound recording they contain is bipartite. The first part is objective, and argues that selling a record is more akin to public performance (which is not publication) than public sale (which is), because the record is just a captured performance. Because the American rule is that performance is not publication, therefore commercial sale of a record does not constitute a publication. The other half is subjective, and notes that a publication is a dedication to the public, and that the bandleaders in question did not intend to dedicate their recordings to the public without any intellectual property protections – accordingly the records were not “published” and common-law protection remains.
In the 1960s piracy became a serious problem with the advent of prerecorded tapes, and state common law would prove insufficient as a remedy. In 1971 sound recordings were brought within federal law, but this amendment applied only to sound recordings made February 15, or thereafter, of 1972 leaving state common-law copyright as the main source of legal protection for sound recordings made before that point against unauthorized exploitation . Shortly thereafter the US Supreme Court confirmed that state-law protections for sound recordings older than 1972 were both Constitutional and not preempted by the federal statute. A few decades passed, and the New York Court of Appeals once again affirmed that sound recordings from before 1972 remained unpublished in that state.
And that has remained the bedrock of a rich panoply of litigation in recent years over whether the common law right includes a performance rights. And at least in New York state that has resulted in a decision I took issue with that pre-1972 sound recordings lack a performance right. However, as the issue comes before other states, Courts are showing skepticism of the underlying argument made by Waring & Whiteman, both because it’s a transparent (if possibly necessary) legal fiction and because it offers a convenient way to resolve these cases neatly. And as mentioned whether there has been a publication that destroys common law copyright is a question of state law, so we possibly have fifty different standards for whether sale of a phonorecord constitutes publication of the sound recording it embodies – and most states have no caselaw on this specific question.
This leads us to the Sheridan decision which is the spur for this posting. In concluding that the motion to dismiss on common-law grounds should be granted, the Court held that “There is no dispute that the Sheridans voluntarily sold their recordings. When they did so, the Sheridans lost their common law right to control the public performance of those recordings in Illinois (and pretty much everywhere else).” This doesn’t leave the Sheridans without legal protection (48 out of 50 states, including Illinois, have criminal statutes aimed at commercial record piracy. However, these statutes do not go beyond commercial copying and resale, and leave the putative owner of the recording at common law without any civil remedies in most cases.
And it’s not just the Illinois decision where a Court questions whether a sound recording is published or not – in the Flo & Eddie litigation in Florida the District Court questioned whether Florida protected sound recordings at all, before holding it did not need to reach the question. At recent oral argument, the Justice of the Florida Supreme Court seemed mightily suspicious of the arguments regarding nonpublication, although one cannot infer too much from oral arguments.
What happens when a state’s highest court holds that sound recordings are not published? Is federalization finally going to get the boost it needs from stakeholders? Surely leaving such a situation in place would be unacceptable to the owners of the sound recording? I’m curious to find out.
As promised, a tidbit from the archives. The Whiteman v. RCA case has a fascinating file, at the New York location of the National Archives. It includes extensive deposition testimony and more. One thing that I’m not aware of having been circulated is the District Court’s findings of fact and conclusions of law, which are substantially more detailed than its published opinion. Sadly I only have cell phone pictures of the Findings of Fact and Conclusions of Law (PDF 10 MB), but here it is.
I planned on having a whole separate section on whether the protection for pre-1972 sound recordings is really common-law at all – many commentators in the mid-20s century said no, including Nimmer. But that’s really a matter of semantics, fun as those are, and this post is more than long enough already.
- One interesting (to me at least) question is whether this question of publication is a matter of state or federal law. I go into this more in the paper, but I’m inclined to think that the question of whether a publication occurred to destroy common-law copyright (a “divestative” publication) is a question of state law, except a successful federal registration is one of the ways common-law copyright is destroyed. On the other hand, whether sufficient publication occurred to have a valid registration under the terms of the 1909 copyright act (a so-called “investative publication”) is a question of federal law. One nice benefit of this understanding is that it clarifies that the differentiation between investative and divestative publication is not an artificial legal construct – they are actually two different things. ↩