Copyright Law and Practice
by William F. Patry

Copyright © 1994, 2000 by The Bureau of National Affairs, Inc.
Reprinted with permission.

Table of Contents:

Chapter 1

- Introduction

- England and the Statute of Anne

- The Colonies and Copyright

- The Constitutional Clause

- The First Copyright Act

- Statutory Revision

- Amendments to the 1909 Act

- The 1976 Act

- Amendments to the 1976 Act


- Amendments to the 1976 Act

- The Digital Millennium Copyright Act

Chapter 1 – Introduction

The First Copyright Act

While the Constitution empowered Congress to enact copyright protection, it did not address the matter of administrative procedures for registration or enforcement. Perhaps as a result of this deficiency and the wording of the clause itself (“Congress shall have the power to protect”), some authors believed they were required to apply to Congress for private copyright bills.75 Almost immediately after the initial session of the first Congress, a number of writers, including David Ramsay and John Churchman, petitioned Congress for private bills to protect their works.

Ramsay, a native of Pennsylvania, had become a prominent physician and politician in South Carolina. While a delegate to Congress in 1782-1783 and 1785-1786, he examined records of the revolution and used them, in 1785, to publish his The History of the Revolution of South Carolina.He also wrote on a general work, History of the American Revolution, for which he also sought protection.76 Churchman, also a native of Pennsylvania, had “invented {Page 26} several different methods by which the principles of magnetic variation are ‘explained,’ “ and petitioned for “a law vesting him with an exclusive right of vending spheres, hemispheres, maps, charts and tables on his principles of magnetism.”77 Both petitions were submitted to the House on April 15, 1789, by Thomas Tudor Tucker of South Carolina, and were referred to a special committee comprised of Tucker, Alexander White of Virginia, and Benjamin Huntington of Connecticut. The following day the petitions were submitted to the Senate. On April 20, the House committee favorably reported not only Ramsay and Churchman’s petitions, but also a general bill “for securing to authors and inventors the exclusive right to their respective writings and inventions.”78 The House received Ramsay and Churchman’s proposals favorably, and ordered that private bills be introduced securing the desired rights, as well as public bills providing for general copyright and patent protection.79 The {Page 27} petitions were, however, not acted on by either the House or the Senate during the first session. Other petitions for private bills were also tabled.80

On June 23, 1789, Representative Huntington introduced H.R. 10, the {Page 28} first federal copyright bill. H.R. 10 was a general bill and was possibly based on an earlier draft by Noah Webster.81 The bill was read once that day and a second time the next day. On July 6, the bill was read again, but consideration was postponed until August 17, when it was held over until the next session.

On January 8, 1790, at the start of the second session of the First Congress, President Washington reviewed the accomplishments of the first session and outlined his goals for the second session in his State of the Union address. Regarding intellectual property, Washington stated “nothing . . . can better deserve your patronage than the promotion of science and literature.”82 Both Houses then prepared responses to the President’s address. The Senate replied first, on January 11, declaring: “Literature and science are essential to the preservation of a free constitution; the measures of government should, therefore, be calculated to strengthen the confidence that is due to that important truth.”83 The House replied the next day, January 12, concurring with the President’s “sentiment that . . . the promotion of science and literature will contribute to the security of a free Government; in the progress of our deliberations we shall not lose sight of objects so worthy of our regard.”84

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On January 15, 1790, in a floor statement, Representative Hartley of Pennsylvania spoke to the general copyright and patent bills, observing that their introduction had been “solicited by some very ingenious men, to secure to them their writings and inventions. . . .” The House referred the matter to a select committee. On January 25, the private and public bills were discussed again. Representative Burke of South Carolina urged both types of bills be introduced, but in light of the immediate threats to particular works,85 he urged that the private bills be moved more quickly. Representative Alexander White of Virginia requested that patent protection be included in the bills, but Burke replied that “he meant to provide for that in another resolution” since “it would occasion a good deal of discussion.” Burke added that “it is almost as easy to ascertain literary property as any other kind of property. . . .” Three days later, Representative Burke presented H.R. 39, a general bill designed for “securing the copy right of books to authors and proprietors.” After a reading of the bill, it was ordered that the committee “prepare and bring in a bill or bills for securing to authors and inventors an exclusive right to their respective writings and discoveries. . . .”86 The next day, January 29, the bill was read a second time and ordered considered by the full House. H.R. 39 was taken up by the House on February 1, when it was ordered to be engrossed with amendments. The bill was read a third time on February 2, and ordered back to a committee consisting of Elias Boudinot of New Jersey, Roger Sherman of Connecticut, and Peter Silvester of New York, for further consideration.

On February, 25, 1790, Elias Boudinot presented the committee with an amended bill, H.R. 43, “for the encouragement of learning by securing the copies of maps, charts, books and other writings, to the authors and proprietors {Page 30} of such copies during the times therein mentioned.” The bill was read a second time the next day and ordered sent to the House. On March 3, the bill was read in the House, but action was postponed until April 29, at which time the amended bill was ordered engrossed and read the next day. On April 30, H.R. 43 passed the House.

On May 4, 1790, H.R. 43 was referred by the Senate to a committee comprised of Senators Read (Delaware), Paterson (New Jersey), and Johnson (Connecticut). On May 12, the committee reported the bill, but postponed consideration until the next day, when it was agreed to along with amendments. On May 14, the Senate passed the bill with its own amendments. The House considered and agreed to the Senate amendments on May 17.87 On May 31, 1790, President Washington signed H.R. 43 into law with the following preamble: “An Act for the Encouragement of Learning, by Securing the Copies of Maps, Charts, and Books, to the Authors and Proprietors of Such Copies, during the Times Therein Mentioned.”88

Rather than grant copyright protection to all authors throughout the world without the need of complying with formalities of any kind, as France would do one year later,89 Congress fell back upon the system of formalities and restrictions inaugurated by the Statute of Anne. In one respect, however, Congress took a non-British approach: unlike the English and five of the colonial statutes, which allowed government officials to reform prices believed to be too high, the U.S. Copyright Act relied solely on the marketplace.

The Copyright Act of 1790 granted protection to the author or his or her executors, administrators, or assigns of any “map, chart,90 or book”91 for 14 {Page 31} years measured from recordation of the printed title of the work before publication in the register book of the clerk’s office of the district court where the author or proprietor resided. A renewal term of 14 more years was provided to the author (or his or her assigns) if the title was again entered and the record published. The renewal term, as in the Statute of Anne, was dependent on the survival of the author throughout the first term. Although affixation of notice on copies of the work was not required, publication of a copy of the registration record within two months in one or more newspapers for four weeks was required.92 A deposit of a copy of the work in the office of the Secretary of State within six months after publication was also required.93

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The author was given the exclusive right to “print, reprint, publish, or vend” the work, and to prohibit the unauthorized importation of copies. No provision was made for the vesting of copyright initially in an employer or in an individual who specially ordered or commissioned a map, chart, or book. Suits for infringement of published works were to be brought within one year after the cause of action arose. The type of action brought depended on the remedy sought.94 An action for statutory penalties (set at 50 cents per sheet found in the infringer’s possession) was brought by an action for debt, with the recovery being qui tam: half of the penalty recovered went to the author; the other half to the U.S. government. Actions for “all damages occasioned by the infringement” were brought by a special action on the case, with all damages being awarded to the author. There was no provision for injunctive or other equitable relief, although later courts have indicated that even in the absence of a statutory provision providing for equitable relief, such relief is within the inherent powers of the court.95

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Unpublished manuscripts were also protected by the statute,96 with the infringer liable for “all damages occasioned by” the infringement. The entire amount recovered went to the copyright owner. Protection for both published and unpublished works was limited, however, to American citizens.97 This restriction severely harmed authors on both sides of the Atlantic, since the law allowed American printers to flood the market with cheap editions of leading British authors. The availability of these pirated foreign editions made the publishing of less well-known American authors economically unattractive to American publishers. The injustice caused by the lack of protection for foreign works would not be addressed until 1891.98

The most unsatisfactory effects of the 1790 Act were felt, though, by American authors, whose works were routinely thrown into the public domain for failure to comply with the Act’s many formalities, adopted from the Statute of Anne.99 We should not be surprised, therefore, that despite the obvious advantage of having a single federal statute instead of 12 different state statutes, the Act of 1790 (as well as many of its successors) does not appear to have been much used by authors. Records assembled by the Library of Congress indicate that more than 15,000 works were published in the United States between 1790 and 1800, but that only 779 copyright registrations were made in this same period. In six states (Connecticut, Delaware, Georgia, Maryland, New Jersey, and Tennessee), no records have been preserved. Even assuming registrations in these states were at a level equal to those in the states where records were kept – a very doubtful proposition given the intense concentration of printing in Philadelphia, Boston, and New York City – the number of registrations would still fall far short of the number of imprints. A number of {Page 34} explanations for this disparity are possible: (1) there was a relatively small number of printing presses, making piracy uncommon; (2) the distribution of books was primarily local; (3) a substantial number of the works were of British origin for which no protection was available; and (4) the burden of complying with the required formalities made protection undesirable.

Available evidence indicates that this final reason was an important one. In his annual report to Congress in 1897, Librarian of Congress Ainsworth Spofford stated that “[u]nder the old law the copyright was an annoyance at times, and not an advantage – incomplete in its provisions and awkward in administration. It was difficult for the owner of a title to protect his rights.”100

The federal statute also seems to have appealed to a different class of authors than the colonial statutes. Under the previous regime of state laws, literary and musical works comprised the bulk of registrations. By contrast, under at least the early years of the federal statute, practical or commercially useful books, such as works of instruction, textbooks, manuals, geographical atlases, and commercial directories, comprised the bulk of the registrations.101

As in England, the question arose of whether the federal statute had replaced the common law as the exclusive mechanism for copyright protection.102 In Wheaton {Page 35} v. Peters,103 the first copyright case before the Supreme Court, this question, presented in Great Britain in Millar v. Taylor104 and Donaldson v. Becket,105 was faced. Although the Supreme Court found, as had the House of Lords in construing the Statute of Anne, that the Copyright Act provided the exclusive mechanism for protection of published works, it did so not on the ground that the Copyright Act had “preempted” existing common law rights, but rather on the ground that there was no federal common law and that, therefore, such rights “originated, if at all, under the acts of Congress.”106 This holding was {Page 36} controversial among legal writers, and subsequently the Supreme Court, noting the controversy over the “propriety” of Wheaton’s holding, wrote “while a right did exist by common law, it has been superseded by statute.”107

Next section: Statutory Revision

75 Inventors were under the same impression and also petitioned the Congress with requests for private patent bills. Among the more unusual of these was one presented to the House by William Hoy. Mr. Hoy claimed that he had “discovered an infallible cure for the bite of a mad dog,” and prayed that “an adequate compensation be made for him for his labour and assiduity in the discovery, which in that case he will make public.” See Journal of the House of Representatives, 1st Cong., 1st Sess. 143 (September 18, 1789).

76 Although Ramsay did not succeed in getting a private copyright bill passed, he nevertheless published his work in Philadelphia in 1785. Ramsay’s inspiration came from his confinement as a British prisoner of war in Saint Augustine, Florida, in 1780 and 1781. Ramsay’s frank account of plundering by Cornwallis, Lord Rawdon, and other British officers during the Revolution caused English booksellers to avoid selling the book, and it was, in fact, subsequently banned. At this point, Ramsay enlisted Thomas Jefferson’s help in sale of the book in Europe. Ramsay’s second, more general history, was pirated in London and Ireland; pirated Irish copies were then imported into Boston. See Brunhouse, David Ramsay’s Publication Problems, 1784-1808, 39 Papers of the Bibliographical Soc’y of America 51 (1945).

       Ramsay’s petition read:

To his Excellency the President and the Honorable the members of the Senate of the United States. The Petition of the subscriber humbly sheweth that your Petitioner having devoted a number of years to an investigation of the principles of the late revolution and to the collection of information and materials for writing the History of the same has at a great expense of time and money published a Book entitled “The History of the Revolution of South Carolina from a British province to an Independent State” and that with great labour he has prepared a general History of the late war with Great Britain which he proposes to publish in a short time under the title of “The History of the American Revolution” and your Petitioner humbly conceiving that in reason and justice he ought to be entitled to any Endowments arising from the sale of the aforementioned works as a compensation for his labour and expense and finding the same principle expressly recognized in the new Constitution your Petitioner therefore prays that a Law may pass securing to your Petitioner his heirs and assigns for a certain term of years the sale and exclusive right of vending and disposing of the same within the United States or that such other Regulation as to your wisdom may seem proper for the above purposes may be adopted. And your Petitioner as in duty bound with ever pray.

77 Journal of the House of Representatives, 1st Cong., 1st Sess. 17 (Apr. 15, 1789); Journal of the Senate, 1st Cong., 1st Sess. 14 (Apr. 16, 1789). Churchman also petitioned (unsuccessfully) for public funds to undertake a voyage to Baffin Bay to conduct magnetic experiments. His scientific contributions had been ridiculed two years earlier in an April 14, 1787, letter from David Rittenhouse to Thomas Jefferson. Both Ramsay’s History of the American Revolution and Churchman’s An Exploration of the Magnetic Atlas were, however, in Thomas Jefferson’s private library, and sold by Jefferson to Congress in 1815. Jefferson’s library, including his copies of Ramsay and Churchman’s works, is now in the possession of the Library of Congress’s Rare Book Division. Churchman’s work has a dedication to George Washington.

78 Journal of the House of Representatives, 1st Cong., 1st Sess. 98 (Apr. 20, 1789).

79 Id. at 101. A committee comprised of Mr. Huntington, Mr. Cadwalader of New Jersey, and Mr. Contee of Maryland was set up to draft the bills.

80 On May 12, 1789, the Speaker of the House laid before the House the petition of Jedidiah Morse requesting protection for his book, The American Geography, or a View of the Present Situation of the United States of America. See id. at 40. On May 14, 1789, a committee was appointed to examine the petition and report on the matter to the House. Id. at 43. On June 8, 1789, Nicholas Pike petitioned the House for protection for his book, A New and Complete System of Arithmetic, which was similarly referred. Id. at 57. On July 22, 1789, a petition was submitted by Hannah Adams for An Alphabetical Compendium of the Various Sects Which Have Appeared in the World From the Beginning of the Christian Era to the Present Day, With an Appendix Containing a Brief Account of the Different Schemes of Religion Now Embraced Among Mankind. Id. at 80. On January 7, 1790, at the beginning of the second session of the first Congress, a report on the private copyright bills was made to the House. The report was tabled and no action was ever taken on them in light of President Washington’s signing the general statute into law on May 31, 1790.

       Petitions for private bills have continued to be submitted and granted even into this century. One such petition was presented to the House a week after the Congress passed the 1790 Copyright Act.See Journal of the House of Representatives, 1st Cong., 2d Sess. 115, 116 (May 26, 1790) (petition of Enos Hitchcock of Rhode Island seeking protection for his book, Memoirs of the Bloomsgrove Family). To date, ten private copyright laws have been enacted. The first three bills were for the benefit of John Rowlett, to extend the copyright in his work Rowlett’s Tables of Discount or Interest, published initially in 1802. The first bill was signed into law on May 24, 1828, 20th Cong., 1st Sess., 6 Stat. 389; the second on February 11, 1830, 21st Cong., 1st Sess., 6 Stat. 403; and the third on March 3, 1843, 27th Cong., 3d Sess., 6 Stat. 897. All totalled, Rowlett enjoyed protection for 52 years. On February 19, 1849, a bill for Levi H. Corson to protect his Perpetual Calendar or Almanac was enacted, 30th Cong., 2d Sess., 9 Stat. 763. The fifth bill, “An Act for the purchase of the copyright of a work published by Thomas H. Sumner, wherein he describes his new method of ascertaining a ship’s position at sea” was signed into law on August 2, 1854, 33d Cong., 1st Sess., 10 Stat. 810. The work was put into the public domain by the government on the same date. On January 25, 1859, a bill for the benefit of the widow of Henry R. Schoolcraft was signed by the President, 35th Cong., 2d Sess., 11 Stat. 557. Schoolcraft’s work, History, Statistics, Conditions, and Prospects of the Indian Tribes of the United States, was published by an order of Congress, and the term had apparently expired. Mrs. Schoolcraft was granted an additional 14 years protection. Originally, the bill would have provided patent protection, but the word “patent” was struck out and the word “copyright” was substituted on the floor of the House on January 21, 1859. See Journal of the House of Representatives, 35th Cong., 2d Sess. 235. On May 24, 1866, the seventh private bill, another “widow’s” bill, was signed on behalf of Mrs. William L. Herndon, whose husband’s work, Exploration of the Valley of the Amazon, had also been published by order of Congress, 39th Cong., 1st Sess., 14 Stat. 587. On June 23, 1874, a private bill for William Helmuth’s work, A System of Surgery, was signed, 43d Cong., 1st Sess., 18 Stat. 618. The final private bill of the nineteenth century, for Judson Jones’ The Alphabet of Orthoepy, was signed into law on February 17, 1898, 55th Cong., 2d Sess., 30 Stat. 1396. In the twentieth century, there has been only one private copyright law: Priv. L. 92-60, approved on December 15, 1971, 92d Cong., 1st Sess., 85 Stat. 392, to extend the term (and in some cases revive the copyright) in the religious works of Mary Baker Eddy. This statute was held unconstitutional because it violated the establishment clause of the First Amendment in United Christian Scientists v. First Church of Christ, Scientists, 829 F.2d 1152 (D.C. Cir. 1987).

       Protection for the rules of the Senate and House was granted to the respective parliamentarians in a series of public laws in the 1940s-1980s. See Act of June 26, 1948, Pub. L. No. 80-789, 80th Cong., 2d. Sess.,62 Stat. 1052 (Cannon’s Procedure in the House of Representatives); Act of August 30, 1950, Pub. L. No. 8 1-741, 81st Cong., 2d Sess., 64 Stat. 567 (same); Act of July 7, 1952, Pub. L. No. 82-463, 82d Cong., 2d Sess., 66 Stat. 411 (same); Act of August 4, 1955, Pub. L. No. 84-230, 84th Cong., 1st Sess., 69 Stat. 493 (same); Act of May 2, 1956, Pub. L. No. 84-504, 84th Cong., 2d Sess., 70 Stat. 126 (Watkins and Riddick’s Senate Procedure); Act Of October 18, 1963, Pub. L. No. 88-15, 88th Cong., 1st Sess., 77 Stat. 273 (same); Act of May 4, 1977, Pub. L. No. 95-27, 95th Cong., 1st Sess., 91 Stat. 115 (same); Act of July 29, 1985, Pub. L. No. 99-75, 99th Cong., 1st Sess., 99 Stat. 176 (same). In 1927, a public resolution was enacted directing President Coolidge to appoint a joint select committee to consider purchase of the patents and copyrights to the Harriman Geographic Code, which the government had been using for some years under a wartime contract. Act of March 4, 1927, P. Res. No. 70, 44 Stat. 1455, 69th Cong., 2d Sess. A favorable report, albeit with a dissent, was made and bills introduced, but no action was taken. See S. Doc. No. 159, 70th Cong., 1st Sess. (1928); S. 4584, 70th Cong., 1st Sess. (May 26, 1928) (Moses); H.R. 14127, 70th Cong., 1st Sess. (May 29, 1928) (Temple).

81 Webster’s draft bill had been printed in New York on June 23, 1789. See Tanselle, Copyright Records and the Bibliographer, 22 Studies in Bibliography 85-86 (1969). H.R. 10 was 11 pages long. The original was apparently destroyed when the British burned the Capitol building on August 25, 1814. Copies have survived, however. Among the interesting features of the bill were provisions granting copyright not only to authors, but also to booksellers and printers; extending protection only to books; and permitting the author to obtain protection after a refusal to register by publishing a notice in newspapers.

82 Journal of the Senate, 1st Cong., 2d Sess. 5-8 (Jan. 8, 1790).

83 Id. at 104 (Jan. 11, 1789).

84 Journal of the House of Representatives, 1st Cong., 2d Sess. 139 (Jan. 12, 1790). On January 11, 1790, Rep. Elias Boudinot of New Jersey reported that the private bills introduced during the preceding session had been tabled. His report was itself then tabled, id. at 137-38, and no further action was ever taken on the particular private bills in question. Id. at 8-9.

85 Jedidiah Morse’s American Geography is one such example. Seeid. at 20 (Jan. 25, 1790):

Mr. Burke said there was a bill of some consequence brought forward at the last session, which had been left in an unfinished state and as the House seemed inclined to direct all such business anew, he would beg leave to call upon them to appoint a committee for the purpose of securing literary property. He said that such a bill was very much wanted, as several gentlemen had lately published the fruits of their industry and application, and were every hour in danger of having them surreptitiously printed. He believed this was no unfounded surmise, for he had been informed that it had taken place in some instances already; he would mention one of them: Mr. Morse had published an American geography illustrated with two sheet maps of the Southern and Northern states, these had been surreptitiously copied, and annexed to another publication, since the business was brought before the House at the last session; and the same gentleman was under apprehension that the whole work would be re-printed without his consent, unless a law was speedily passed to secure him his copy right.

See also infra note 101.

       Some of our Founding Fathers were themselves pirates, at least of English books. In 1744, for example, Benjamin Franklin came out with a pirated edition of Richardson’s popular novel Pamela.

86 Id. at 149 (Jan. 28, 1790).

87 Principal among the differences were those relating to the scope of protection: the version that the House passed would have protected “any map, chart, book or other writing” (emphasis added). As enacted, the statute protected only maps, charts, and books. One obvious interpretation of this amendment is that it was intended to narrow the subject matter of protection.

88 Act of May 21, 1790, 1st Cong., 2d Sess., 1 Stat. 124. On October 22, 1985, S.J. Res. 169, introduced by Sen. Mathias to commemorate this Act (and the first Patent Act) was signed into law. Pub. L. No. 99-523, 99th Cong., 1st Sess., 100 Stat. 3002.

89 See Laligant, The French Revolution and Authors’ Rights or Perenniality of the Subject Matter for Protection, 147 Revue Internationale du Droit d’Auteur 2 (1991).

90 March 1899 “Directions for Securing Copyrights” issued by the Copyright Office stated that “[t]he term ‘chart’ should only be used to indicate some form of map. . . .” Yet, 11 years later, the Office’s rules stated: “The term ‘book’ as used in the law includes tabulated forms of information, frequently called charts.”Rules for Registration ¶4(a) (Aug. 20, 1910). The most likely meaning of the term “chart” in the first Copyright Act is that of a nautical map.

91 The term “book” was not defined, but was generally construed broadly; it extended not just to bound narrative works, but also to works that were compilations of information. See 1897 Annual Report of the Librarian of Congress at 5: “[U]nder the head of books entered for copyright are classified hotel registers, form books, circulars, syndicate articles, and so on – the law providing no other term.” Cong. Globe 981 (Feb. 22, 1896) (remarks of Mr. Cowan: “in the construction of this act the word ‘book’ is to be construed to mean every volume and part of a volume, together with all maps, prints, or engraving belonging thereto . . .”). Cf. Brightley v. Littleton, 37 F. 103, 104 (C.C.E.D. Pa. 1888) (“The statute . . . has been so liberally construed as to make it embrace within the term ‘book,’ every character of publication; whether a volume, pamphlet, newspaper article, calendar, or catalogue. In this construction our courts have simply followed those of England in their interpretation of similar language in the English statute”); Drury v. Ewing, 7 F. Cas.1113, 1115 (C.C.S.D. Ohio 1862)(No. 4,095) (chart entitled “The ladies’ chart for cutting dresses and basques for ladies, and coats, jackets, etc., for boys” consisting of a single large sheet representing a series of diagrams interspersed with printed instructions characterized as a “book” within the meaning of the statute). This practice of considering everything that did not fit into another category as a “book” continued under the 1909 Act, and explains why, in 1964, when the Copyright Office decided to register computer programs, it classified them as “books.” Copyright Office Circular No. 61 (1964). Although musical compositions did not receive express statutory protection until 1831, they too were registered under the 1790 Act as books. Clayton v. Stone, 5 F. Cas. 999, 1000 (C.C.S.D.N.Y. 1829)(No. 2,872) (“A book within the statute need not be a book in the common and ordinary acceptation of the word, viz., a volume made up of several sheets bound together; it may be printed only on one sheet, as the words of a song or the music accompanying it”). The first registration for a musical composition was made on January 6, 1794, for The Kentucky Volunteer: A New Song, written by “a lady of Philadelphia.” The composer is believed to have been Raynor Taylor. See Federal Copyright Records 1790-1800 at 15 (1987).

92 The wording of the notice was: District of ____ to wit: Be it remembered, that on the ____ day of ____ in the year of the independence of the United States of America, ____ of the said district, hath deposited in this office the title of a map, chart, book or books, (as the case may be) the right whereof he claims as author or proprietor, (as the case may be) in the words following, to wit: [here insert the title] in conformity to the Act of Congress of the United States, intitled “An act for the encouragement of learning, by securing the copies of maps, charts, and books, to the authors and proprietors of such copies, during the time therein mentioned.” ____ Clerk of the district of ____.

93 No special office was set up in the State Department to handle copyright matters. On April 16, 1816, President Madison sent a message to Congress recommending the establishment of such an office. Congress, however, discharged the message without further consideration. The House had tabled the message on April 11. The first Secretary of State was Thomas Jefferson. A letter from Noah Webster to Jefferson, dated October 14, 1790, reveals an unexpected glitch in the statutory procedures: Webster was uncertain whether the Secretary of State’s office was located in New York City or Philadelphia. As a way around this problem, Webster sent Jefferson two requisition orders, addressed to agents in both New York and Philadelphia. Webster included in the orders an extra copy for Jefferson’s private use. Jefferson replied to this letter on December 4, apparently telling Webster that the six-month time limit had to be complied with, since Webster’s letter to Jefferson on December 12 assured Jefferson he would faithfully comply.

       Division of the administration of copyright between the clerks of the district courts (for filing the pre-publication title of the work) and the Secretary of State (for post-publication deposit of copies) led to a practice called “scarecrow copyright.” Some publishers, principally those of periodicals, would file the title before publication with the clerk of the district court, and affix a copyright notice to copies after publication, but not subsequently submit deposit copies with the Secretary of State. Because there was no central registry until 1870, it was difficult to check for compliance with all of the law’s formalities. See letter of W. M. Griswold, Chief Clerk of the Copyright Department of the Library of Congress in the October 19, 1892, issue of The Nation, reproduced in the Appendix to the April 27, 1971, issue of the Copyright Office’s Copyright Notices.

94 The federal trial courts were not granted original jurisdiction over copyright cases until 1819. Act of February 15, 1819, 15th Cong., 2d Sess., 3 Stat. 481. Prior to this time, unless the controversy involved more than $500 and was between citizens of different states, the suit was tried in state court. See Kilty v. Green, 4 H. & McH. 345 (General Court of Maryland 1799), reproduced in 14 Copyright Decisions 1790-1909 at 1500; Nichols v. Ruggles, 3 Day 145 (Conn. Supreme Court of Errors 1808), reproduced in 14 Copyright Decisions 1790-1909 at 1919. The federal courts had been established by the Judiciary Act of 1789, Act of Sept. 24, 1789, Ch. 20, 1 Stat. 73, but were not given federal question jurisdiction.

95 American Code Co. v. Bensinger, 282 F. 829 (2d Cir. 1922). There is also support for this position in Section 16 of the Judiciary Act of 1789, Act of Sept. 24, 1789, Ch. 20, 1 Stat. 73, which declared that “suits in equity shall not be sustained in either the Courts of the United States, in any civil cases where plain, adequate remedy may be had at law.” It follows from this that where no adequate remedy at law was available, equitable relief was available. See also Blunt v. Patten, 3 F. Cas. 762, 763 (C.C.S.D.N.Y. 1828)(Nos. 1,579, 1,580) (bill in equity in copyright case dismissed because issues of disputed fact existed that had to be tried to a jury).

96 Unpublished works were entitled, arguably, to perpetual protection, since the 14-year term of protection set forth in §1 of the Act applied only to published works. Unpublished works, protected under §6, contained no such limitation, a surprising omission in view of the Constitution’s express conditioning of Congress’s power to grant copyright protection for a “limited time.” Under the 1909 Act, however, the courts construed registration as equivalent to publication for the purpose of calculating term. See Chapter 6, note 16.

97 Indeed, §5 of the Act seems to have been included in order to encourage piracy of foreign works, reading: “[N]othing in this act shall be construed to prohibit the importation, or vending, reprinting or publishing within the United States, of any map, chart, book or books, written, printed, or published by any person not a citizen of the United States, in foreign parts or places without the jurisdiction of the United States.” Works written by U.S. citizens or residents in foreign languages were protectible, books in French and German were among the earliest registered under the 1790 Act.

98 By 1876, for example, the United States was importing $940,000 worth of books and related items from England, compared to exporting to England only $93,000. See H.R. Misc. Doc. 6, 47th Cong., 2d Sess.1071 (1882-1883), and generally, Chapter 17.

99 See 1901 Report of the Register of Copyrights at 60: “Our copyright laws are based on antiquated models – the early English statutes. . . .”

100 Report of the Librarian of Congress, S.Doc. No. 13, 55th Cong., 2d Sess. 12 (1897). See also Spofford’s April 1891 speech “The Copyright System of the United States – Its Origin and Growth,” reproduced in Celebration of the Beginning of the Second Century of the American Patent System (1892), noting the following problems: (1) determination of residence for the purpose of filing title with the district court was not always easy; (2) one deposit copy had to be mailed to the district court and a second one to Washington; (3) there was no central registry for the examination of records. Id. at 149-50.

101 The first work entered for federal copyright was John Barry’s The Philadelphia Spelling Book, Arranged Upon a Plan Entirely New, registered with the clerk of the District Court for Pennsylvania in Philadelphia on June 14, 1790, exactly two weeks after the Act went into effect. Barry was master of the Free School of the Protestant Episcopal Church. John Churchman registered his An Explanation of the Magnetic Atlas in Philadelphia on June 17. A reproduction of the title page deposited for this work is contained in Federal Copyright Records 1790-1800 at xi (1987). Churchman also began petitioning Congress (without success) for an increase in the penalties provided under the 1790 Act. On June 22, 1790, Noah Webster registered two works in Connecticut, his Grammatical Institute of the English Language, and his Essays. The first two works entered in Massachusetts were written by the Reverend Jedidiah Morse: The American Geography and Geography Made Easy, both of which had been published previously and were to be often reprinted.

       Among the more famous works registered were Thomas Paine’s The Age of Reason (1796); Alexander Hamilton’s Observations on Certain Documents in No. V & VI of the “History of the United States for the Year 1796, “In Which the Charge of Speculation Against Alexander Hamilton, Late Secretary of the Treasury, is Fully Refuted” (1797); and James Monroe’s A View of the Conduct of the Executive, in the Foreign Affairs of the United States, Connected with the Mission to the French Republic, During the Years 1794, 5, & 6 (1798).

102 One question not addressed in Wheaton v. Peters was the possible preemptive effect of the colonial statutory laws on the state common law. The Court ruled that there was no federal common law of copyright and that this holding was also dispositive of the doubtful proposition that there was a state common law of copyright in Pennsylvania. But cf. the dissenting opinions of Justice Thompson and Justice Baldwin. Another question not addressed in Wheaton was the effect of the availability of protection for unpublished works under Section 6 of the federal statute on state protection for such works. Would such state protection be preempted under the supremacy clause? The appellant in Wheaton argued it was not, based on the word “secure.” See 33 U.S. (8 Pet.) Records and Briefs at 600 (1834).Compare id. at 639 (appellee disputing appellant’s argument).

       As late as 1880, publishers were still attempting to get around Wheaton. In a suit brought in the New York state courts over the works of Washington Irving, it was claimed that Wheatondid not apply in New York, since the 1786 New York copyright statute declared that nothing in that act would “affect, prejudice, or confirm the rights which any person may have to the printing or publishing of any books or pamphlets at common law, in cases not mentioned in this act.” The court rejected the argument. G.P. Putnam’s Son’s v. Pollard & Moss, 14 Copyright Decisions 1790-1909 at 2127 (N.Y. Sup. Ct. 1880). The New York courts had earlier, however, recognized the existence of a perpetual, common law right in unpublishedworks, independent of any statute. Palmer v. DeWitt, 47 N.Y. 532 (1872). Louisiana, as a civil law state, does not recognize common law copyright. Eager v. Coles, 303 So. 2d 864, 866 (Ct. App. 1st Cir. 1974), cert. denied, 307 So. 2d 628 (La. 1975).

103 33 U.S. (8 Pet.) 591 (1834). Wheaton also addressed the question whether an author who had complied with the requirements of registration of the title and affixation of notice, but who had not deposited copies of the work with the Secretary of State nor published the requisite announcement in newspapers, could maintain an action for general (nonmonetary) relief. The Court answered the question negatively, declaring that all four of the statutory formalities had to be complied with.

       A final point addressed (and negatively decided) by Wheaton was the copyrightability of reports of judicial opinions. In reaction to the Wheaton decision, on April 10, 1834, the House of Representatives ordered the Committee on the Judiciary to examine extending copyright to reports of federal and state opinions. No action was taken, however. See Journal of the House of Representatives, 23d Cong., 1st Sess. 513.

104 4 Burr. 2303, 98 Eng. 201 (K.B. 1769).

105 4 Burr. 2408, 98 Eng. Rep. 257 (H.L. 1774).

106 33 U.S. (8 Pet.) at 661. The lack of common law rights also resulted in limiting monetary remedies to those granted in the statute. See Globe Newspaper Co. v. Walker, 210 U.S. 356 (1908); Hills & Co. Ltd. v. Hoover, 220 U.S. 329 (1911). For a discussion of the impact of Millar and Donaldson on the Court’s decision, see Whicher, The Ghost of Donaldson v. Becket, 9 Bull. Copyright Soc’y 102 (1961). See also Justice Holmes’ remarks in 1 Holmes-Pollock Letters 53 (Howe ed. 1941) (“The notion that such a right could exist at Common law or be worked out by it seems to me imbecility”). Cf. International Copyright: Report of the Honorable W.E. Simonds, of Connecticut, from the House Committee on Patents Accompanying H.R. 10881, June 10, 1890, which strongly criticized Wheaton v. Peters and asserted that copyright is premised on authors’ natural rights.

107 Holmes v. Hurst, 174 U.S. 82, 85 (1899). This opinion also took the unusual view that the earliest “recognition” of the existence of a common law right of authors is found in “the charter of the Stationers’ Company, and in certain decrees of the Star Chamber . . . providing for licensing and regulating the manner of printing. . . .” Id. at 84-85.