On November 17, 2015, Robert Brauneis delivered the 12th Christopher A. Meyer Memorial Lecture on “The Landscape of American Cultural Production, 1978-2012: A Quantitative Look Through the Lens of Copyright Registrations.” The lecture is an annual series from the Copyright Society of the USA, along with the U.S. Copyright Office and others. The video of the lecture has long been online (although I can’t embed it here), and the second half of the talk became An Empirical Study of the Race, Ethnicity, Gender, and Age of Copyright Registrants, published in 2018 with Dotan Oliar. The raw data and online appendix are also worth looking at. However, an earlier part of the talk, dealing with the number of individual and corporate registrants, has not been published. Bob was good enough to send me his slides, and permission to share them. To be clear, beyond the interstitial text none of this is my work, and also this data is now about a decade out of date and would need a re-do for further analysis.

In the 1890s, famed dancer Loïe Fuller had her first major success with the “Serpentine Dance,” a variation of the popular “skirt dances” of the day. But should she keep it for herself? When others started dancing an imitation of her choreography she would try, and in the process give chreographic copyright a false start a half century before it would succeed.

The case of Fuller v. Bemis is fairly well-known to historians of copyright and dance, and there’s already been an excellent post about it on IPKat. Anthea Kraut has also written both an article and a book that focuses, in full or part, on this case. In that case the Fuller sued dancer Minnie Renwood Bemis for copying her “Serpentine Dance” in 1892. However, the Southern District of New York dismissed her claim and found any copyright in the dance invalid.

“A stage dance illustrating the poetry of motion by a series of graceful movements, combined with an attractive arrangement of drapery, lights and shadows, but telling no story, portraying no character and depicting no emotion, is not a ‘dramatic composition’ within the meaning of the Copyright Act.”

Fuller v. Bemis, 50 F. 926, 929 (C.C.S.D.N.Y. 1892)

However, had Fuller received a registration? No registration is indicated in the Virtual Card Catalog.

While Southern Illinois – and its concomitant U.S. District Court – isn’t necessarily a hotbed of copyright litigation, that changed last week. In 2018, Catherine Alexander sued a number of video game companies as well as World Wrestling Entertainment (WWE) for copyright infringement in the Southern District of Illinois (docket here). Years earlier, she had done extensive tattoos on the wrestler Randy Orton, who subsequently found great success in the WWE. He was included in numerous iterations of the “WWE 2K” videogame line, with his tattoos faithfully replicated.

In September of 2020, the court denied summary judgment, holding triable issues of fact regarding whether the use was fair and whether an implied license existed. The trial was held at the end of September, and at the end of the week the jury returned a verdict for Alexander – but the victory was short lived as damages of only $3,750 were awarded. In the end the case left no-one satisfied – the game publisher and WWE still have difficult clearance issues, and the recovery surely was not what Alexander was hoping for. Experts have also criticized the jury instructions for the failure to include a question of implied license even though both sides asked for it – and indeed that was the main question the jury should have been answering.

SIU Law 2L Taylor Ingram was there for the second day of the trial (Tuesday, September 27, 2022), and recorded some impressions of the case, which I’ve shared below. I think they shed some light on the case and the real people involved – her observations and thoughts follow below:

Federal registration was established for trademarks, by statute, in 1870. I’ve written about this a few times, most recently in the upcoming Early American Federal Trademark Law and the Law of Nations, a book chapter in the upcoming Intellectual Property and the Law of Nations, 1860–1920 (P. Sean Morris, Ed., Brill 2022). However, these were not the first federal registrations of trademarks, as proprietors of trademarks had already been registering their trademarks as design patents since 1855.

This isn’t exactly a new discovery, although it’s fairly obscure – see for instance a 1912 Scientific American article on the subject. In 2007 Gerard Magliocca noted that “[p]rior to 1870, the Patent Office used [the design patent] law to protect many trademarks even though that type of subject matter was not expressly covered.” This protection was limited, though, in that the registration only covered those parts which could be protected as a design patent, and there was no protection against passing off as there is under technical trademark law. In Francis Upton’s 1860 treatise on trademarks, he noted that the design patent law was being used “to secure what is supposed to be an equivalent to trade mark property.” In his opinion such “policy of continuing such an unwarrantable construction of law…is, to say the least, very questionable.”

One can see an example of an application for patent registration of a trademark here (special thanks to Robert Beebe of the National Archives in Kansas City for this), which would be granted as D2629. The petition crosses out almost all the instances of “invention” or “discovery” in place of language of “production.” Perhaps the most revealing thing about the application is simply that it was granted, in spite of the problems manifest simply from looking at the petition.

In September of 1870, following the passage of the federal trademark law in July, the Commissioner of Patents announced In re King that he would no longer accept registration of trademarks as designs. In this decision the Commissioner read the new law as giving trademarks exclusive protection under trademark law, and prohibiting their registration as designs. Looking at indexes shows three design registrations for trademarks subsequent to 1870, but the two from the 1880s appear to be a clerical mistake where the trademark description with the same number was attached instead of the proper design record. In 1914 a design patent was given for a decorative insignia, which was also claimed as a trademark – this appears to be the only design patent for a trademark given after 1870.

As follows is a list, with links to PTO images, for all of the design patents for trademarks. Although I started making my own list, Dennis Crouch of Patently-O (and the University of Missouri School of Law) had already done so, which he was gracious enough to share; I’ve thus used his data as a source. You can see how trademarks fit into his timeline of most popular design patents (briefly) here.

One thing that’s frequently been commented on over the years has been the different types of publication under the 1909 Copyright Act – so called “investitive” and “divestitive” publication, meaning an act of publication which respectively vests and divests a work of copyright protection. This has generally been treated as a judge-made kludge meant to prevent works from accidentally slipping into the public domain. But I believe there’s a fairly straightforward differentiation between divestitive and investitive publication – they come from two entirely seperate copyright systems. Investitive publication is publication under federal law, while divestitive publication is publication at common law. I believe this helps explain which type of publication is at issue, and which precedents are relevant to determining publication today.

This isn’t entirely a new observation – I wrote about this in a paper I published a few years back called Common Law Copyright, although I’m not sure this part of the piece was widely noticed. The U.S. Supreme Court also discussed this briefly in 1973 in Goldstein v. California, although I also haven’t seen much discussion of this point. Footnote 28 of that decision reads:

Petitioners place great stress on their belief that the records or tapes which they copied had been “published.” We have no need to determine whether, under state law, these recordings had been published or what legal consequences such publication might have. For purposes of federal law, “publication” serves only as a term of the art which defines the legal relationships which Congress has adopted under the federal copyright statutes. As to categories of writings which Congress has not brought within the scope of the federal statute, the term has no application.

Goldstein v. California, 412 U.S. 546, 570 n. 28 (1973)

In that case, Goldstein et al were arguing that the sale of records at record stores constituted a divestitive publication. The Court noted that common-law publication at state law was not their concern. Admittedly, the second part is a bit more equivocal for my thesis since it’s talking more about the fact that federal law publication isn’t at issue since sound recordings weren’t covered by federal law at all. The footnote is a clear acknowledgement that there are two different publication regimes though – state common law and federal statutory law.

Until 1909 the only publication was at common law. A work was protected by common law copyright until published, at which point protection was lost unless copyright had been secured by deposit of a title page, payment of a fee, and entry of a registration had been made beforehand. As such, publication was a purely divestitive act, so no need to delineate it so was needed. When publication is discussed prior to 1909, it is common-law publication AKA divestitive publication which is being discussed.

The 1909 Act flipped the script on registration. Except for a few categories of unpublished works, mostly music and drama, federal copyright was now secured by publication with a copyright notice which confirmed to the law. This created a new form of publication – publication under federal law, AKA investitive publication. When looking at publication cases from this period, to determine whether it’s federal or state law being applied, the relevant question is whether the publication in question is alleged to be investitive or divestitive.

The 1976 Act (effective 1978) largely eliminated the requirement of publication for protection, saying copyright protection subsists upon fixation in a tangible medium (i.e. you get copyright when you write/record it). Save for sound recordings recorded before 2/15/1972 and a few other very minor categories, common-law copyright was abolished. With the abolition of common-law copyright the concept of divestitive publication was likewise abolished save for those same categories of works. This was reinforced in 1989 with the passage of the Berne Convention Implementation Act, which completely eliminated any requirement of copyright notice. When we speak about publication since 1989, we are speaking about the publication standards under federal law, not under state law.

Critiques welcome. There are many publication decisions which don’t seem to really consider this distinction, but I think it’s a helpful distinction for understanding the publication doctrine and copyright.