Tattoos and Fair Use – The Alexander v. Take-Two Case

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:

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Looking for Copyright Records in Old Florida

At the 2022 Copyright Society Annual Meeting, I made an offhand comment that Florida wins the prize for fewest copyright registrations before 1870 (of states admittedly substantially before 1870) with zero. And I and the Floridian I was chatting with had a good laugh, because Florida. But I got to wondering if that was really true, and the answer is no – I’m pretty sure I discovered the first Florida copyright. That said, that zero was only slightly off, and the search shows just how difficult completeness is.

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Pre-1870 Trademarks as Design Patents

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.

Part of the application wrapper for D2629

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.

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A Theory of Different Types of Publication

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.


More Case Files From New England!

All, it’s been a while since I’ve posted, yet again, but I got some exciting news from a project that’s been ongoing for a few years with the National Archives for New England at Waltham, the Boston Public Library, and the Digital Commonwealth project – which I’ve been lucky enough to provide some guidance on. More case files of 19th century IP cases have been scanned and made available to the public, and here they are! Earlier entries in this series of scanned case files from New England are here.

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The Map, the Man, and the Lawsuits: How a Divorce Case Helped Make Copyright Law

Ownership of a physical object does not include the copyright for the work embodied in that object – be it a master tape, film negative, or a copperplate intaglio of a map. The root of this doctrine is a series of cases before the Supreme Court, where the Court held that the copyright “is wholly independent of, and disconnected from,” the physical object it is embodied in. Stephens v. Cady, 55 U.S. (14 How.) 528, 532 (1853). Two years later the Supreme Court again weighed in, holding that copyrights (and patents) were not subject to seizure by state officials. Stevens v. Gladding, 58 U.S. (17 How.) 447 (1855) (same party, Stephens was a misspelling). These cases are well-known – they’re the first cases involving copyright in maps before the US Supreme Court, and they remain important precedents. But the story behind them is obscure – even the transcripts of record filed with the Supreme Court only hint at the details of this case. So, naturally, I started digging – and what I found is a story of infidelity, divorce, alimony, and maps.

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I Got The First GRTX Registration!

Well, at least I think I did. The US Copyright Office this year finalized rules for Group Registration for Short Online Literary Works (GRTX), and the application became available on October 29, 2020. I applied as soon as the application became available, and perhaps fittingly, I used the first ten entries in this blog (not counting a brief “hello world” post from a few months earlier). I received the registration certificate today – an impressive turnaround from the Copyright Office as they strive to modernize and reduce processing times.

I’ll note that the online copyright catalog hosted by the Copyright Office does show another GRTX, registration number TX0008890234, but it’s pretty obviously a test registration done by the Copyright Office itself. So I’m going to award myself the rebuttable presumption of this prestigious achievement. Edit (as of 11/24/20) – the Copyright Office confirmed that the prior GRTX registration was a test and is no longer in the public catalog, so I feel even more comfortable claiming all the glory.

The website for GRTX has excellent detail on the application process, including a video that really walks you through the process. In lieu of a detailed explainer, I’ll simply refer people there. Instead, I figured I’d share some brief thoughts (note that I haven’t checked every single one against the regulations):

  • Firstly, the application is pretty easy to use, especially if you watch the video. You’ll want to have Excel on your system to prepare the provided spreadsheet template, otherwise the the process will be difficult. But it didn’t cause me too many problems.
  • To do the registration you’ll need to generate PDFs of each work included in the group, follow the naming convention required, and put all the PDFs and the Excel file in one zip file and upload that. It’s a little too easy right now to only upload the excel sheet; a check that a zip file hadn’t been uploaded would be helpful.
  • For people who are publishing their material on a third-party platform or otherwise creating content where a printout will show a lot of material they don’t own, the disclaimer process could get very complicated in terms of generating PDFs of the works. I’d suggest it might be simpler to either allow people to provide clean documents with just the short works being claimed, or to provide simple language for excluding anything not in the body of the claimed work. Either way, guidance here would be helpful.
  • It would be nice if a permalink to each work is included in the excel sheet for recordkeeping purposes. It can be optional.

However, the biggest thing for me is probably the time limits. The other limits (maximum of 50 works, they all must be between 50 and 17,500 words) seem fine to me. But for infrequently updated blogs like this one – and many others – making it calendar year instead of 3 calendar months would make more sense and encourage more people in the aggregate to apply. The limitation of 50 works in the group would still limit people from abusing the process.

Also, note that the works have to be published within 3 calendar months – not 90 days from the first work. So it’s basically a system for quarterly registration filings. But since in many quarters I don’t publish more than one or two entries, I’m not sure I’ll bother for the rest of the blog.

These are quibbles, though, kudos to the Copyright Office for getting this system online, and I hope it gets used more. That way, when I brag about being first, it will mean something.


Counting Copyright Registrations 1870-1909

This past spring/summer, my article (coauthored with Richard Schwinn, Ph.D) entitled “An Empirical Study of 225 Years of Copyright Registrations” was published. This post is part of a series studying particular parts of my paper, and sharing in greater detail than I could there some insights.

In 1870, copyright registration activity was centralized at the Library of Congress. My previous post looked at counting registrations before 1870 when registration activity was in the individual district Courts, and basically involved counting pages of records, which generally correspond 1:1 with registrations. However, in 1870 copyright registration was centralized, along with deposit, in the Library of Congress.

With the switch in administration of copyright law effective the day the new law was signed, the transition was not necessarily clean. Many courts show registrations later in 1870 and even in 1871 (the Utah territorial court recorded them until 1879, I’m not quite sure what was going on there). However, the general public seems to have adjusted quickly to the change. The Library of Congress put out circulars explaining how to register to assist with the change (these are mostly from the Copyright Office’s internal files, where they were already collected, but I added 1870 myself, from the Warshaw Collection at the Museum of American History). However, the process of registration really was pretty similar before and after 1870, with the only real change being that of venue. Like before registration was done by depositing a title page and making out a registration to the Librarian of Congress and paying the fee – all before publication. Within ten days after publication two copies of the best edition of the work would be sent to the Librarian of Congress to “perfect” the registration.

Data Sources

One resource I found at the US Copyright Office and was able to use was the record book kept by the Librarian of Congress tallying daily entries by type. for 1875-1885. This book was pretty clearly the basis for the tallies found in the Librarian’s annual reports, and there may be additional research to be done with it in terms of daily and monthly breakdowns. For my purposes, it mostly served to prove that in fact the tallies in the Librarian’s annual reports were for calendar years, not fiscal years. Accordingly, I was able to use the Librarian’s annual reports on copyright business for yearly tallies until 1896.

One confusing detail is that the number of registrations reported for these years was actually the number of deposits made divided by two (because in most cases two deposits of a work were required (this is obvious looking at the above record book). However, clearly in many cases only single copies were deposited, so the number is likely a mild undercount. The why of this isn’t entirely clear – there isn’t any reference to single deposits being permitted in the statute or rules, to the extent they existed, although in the future single deposits would be permitted for things like contributions to periodicals. In the mid-1890s the Librarian stopped reporting the number of deposits and instead reported the number of works deposited, meaning that the numbers no longer need to be divided in half – and are no longer an undercount.

1897 is a problem year in terms of recordkeeping, at least from looking at the annual report. Only 3 months of entries are tallied and the report is clear that this is incomplete. However, in January of 1898 the Librarian transmitted a letter to Congress with the proper numbers for the 1897 calendar year. From 1898 forward the annual reports of the new Copyright Office use fiscal year instead of calendar year for their tallies, leading to the question of how much it mattered to use fiscal year or calendar year statistics. Although in theory these tallies are mostly interesting in terms of tracking large-scale shifts in registration volume, and the change shouldn’t matter that much, having more heterogeneity in the data isn’t ideal. Indeed, there was routinely a 5-10% variance between fiscal and calendar year statistics, as seen below, and using calendar year statistics as much as possible is a way to avoid that. Nonetheless, we had to use fiscal year statistics for 1898-1902 as there is no other data source for those years.

Fiscal versus calendar year variance in total registrations, 1909-1976

The Catalog of Copyright Entries began publication in 1891, as a biweekly catalog of copyright entries, which because of its lack of organization or information beyond lists didn’t prove particularly helpful. Starting in 1903, though, the Catalog of Copyright Entries began including statistics for the first time, and using these we were able to go back to using calendar year statistics going forward, dramatically simplifying our data process through 1909 (and indeed much later).

Ghost Books

One interesting phenomenon is that of “ghost books” – works where the title was entered but the registration was not perfected by deposit. For 1878-1896 the Librarian kept records of both entries and deposits, allowing a simple calculation of percentage of registrations were perfected by deposit – and which were not. Generally speaking it seems that about 20% of works were not deposited, either through inattention or because the work was never actually completed.

Percentage of works followed by deposit

The ledgers break down by type of work as well, showing that music was perfected at a higher rate than books, although the two are pretty similar. Drama on the other hand had an abysmal rate of deposit, and it’s not clear why. Many dramas were unpublished and it’s possible only one copy was being deposited (indeed, the above record book shows many days with only a single deposit). It’s also possible that for unpublished works nothing was ever deposited, since the point was only to claim copyright without suing to enforce it.

Percentage of Title Entries followed by deposit – books, music, drama.

The Data

The purpose of this post has been to give a brief discussion of our data for this period. Much of the data from this project is available on GitHub, -including our R code as well. In addition, I’ve created an Excel File with the more detailed data on just the 1870-1909 era. This is a little different looking than our main data file – before 1909 a number of different classification schema were used, and for the main data file on Github I harmonized pre-1909 data to post-1909 forms. I hope people find this data helpful, and there’s still a few more posts to come from this article.


Counting Copyright Registrations Before 1870

This past spring/summer, my article (coauthored with Richard Schwinn, Ph.D) entitled “An Empirical Study of 225 Years of Copyright Registrations.” This post is part of a series studying particular parts of my paper, and sharing in greater detail than I could there some insights.

When I first joined the Copyright Office as the Abraham L. Kaminstein Scholar in Residence, I had figured I’d focus on the era of the copyright card catalog, which is 1870-1978 (really 1898-1978). And I did spend quite a while on that period, which I’ll go into in a subsequent post. However, I also found myself diving deeper into the pre-1870 copyright registrations, where registration was accomplished by deposit of a title page and filling out a prescribed form of registration with the clerk of the local United States District Court. Little is known about these registrations, and I set out to try to learn more about them and make them available. Many have heard that the project to scan these records, (mostly) held by the Rare Book Room of the Library of Congress is currently underway. In fact, the first part of this project – the roughly 50,000 title pages from this period – has recently been made publicly available.

In this post I intend to:

  1. Give the history of the pre-1870 copyright records themselves;
  2. Describe how Dr. Schwinn and I estimated statistics of these records;
  3. Provide information and analysis about these statistics; and
  4. Shine light on what was being registered for copyright before 1870.
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