Open Source Copyright Casebook: Class 2: The Subject Matter of Copyright

Constitutional Limits on the Scope of Copyright

As we recognized in Class 1, the Intellectual Property Clause of the United States Constitution authorizes Congress:

To promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries." Article I, Section 8, Clause 8.

The Intellectual Property Clause is the source of Congress's power to create copyrights and patents. Copyrights protect "writings" and patents protect "discoveries." Put more abstractly, copyrights protect expressions and patents protect ideas. But what kinds of expressions and ideas can Congress protect? Does the Intellectual Property Clause limit Congress's authority to create copyrights and patents?

The preamble of the Intellectual Property Clause states its purpose, "[t]o promote the progress of science and useful arts." This implies that Congress's power is limited by a quid pro quo requirement: Congress may grant copyrights and patents only in exchange for creativity and innovation.

The body of the Intellectual Property Clause gives Congress the power of "securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries." This power is explicitly limited. First, Congress can only grant copyrights to authors and patents to inventors. Second, it can only grant copyrights in an author's own writings and patents in an inventor's own discoveries. Third, it can only grant copyrights and patents of limited terms.

In other words, the Intellectual Property does limit Congress's authority to create copyrights, by only allowing Congress to protect an author's creative expressions for a limited period of time.

Questions:

Why does the Intellectual Property Clause require a quid pro quo?
Why does the Intellectual Property Clause limit copyright protection to an author's own writings?
Why does the Intellectual Property Clause limit the copyright term?
How effective are these limits?

What Does Copyright Actually Protect?

So, the Intellectual Property Clause authorizes Congress to create copyrights protecting certain kinds of expressions. But what kinds of expressions are actually protected by copyright? In other words, what does copyright protection require? And is the scope of copyright protection provided by Congress consistent with the limitations imposed by the Intellectual Property Clause?

Under Section 102(a) of the Copyright Act:

Copyright protection subsists . . . in original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device. 17 U.S.C. § 102(a).

Section 102(a) establishes the two fundamental requirements of copyright: originality and fixation.

So, copyright only protects "original works of authorship" that are "fixed in a tangible medium." But when is an expression an "original work of authorship," and when is an expression "fixed in a tangible medium"? This class will provide an overview of the originality and fixation requirements, both of which will be explored further in the next several classes.

The Originality Requirement

Copyright can only protect original works. The Intellectual Property Clause authorizes Congress to create copyrights protecting the writings of "authors." Likewise, Section 102(a) of the Copyright Act provides that copyright only protects "original works of authorship." So, authorship is both a statutory and a constitutional requirement for copyright protection.

But what is authorship? In Burrow-Giles Lithographic Co. v. Sarony, the Court held that the term "author" in the Intellectual Property Clause means, "he to whom anything owes its origin; originator; maker." 111 U.S. 53, 58 (1884). In other words, the essence of authorship is originality. As the Court held in Feist Publications, Inc. v. Rural Telephone Service Co., Inc., "Originality is a constitutional requirement" of copyright protection. 499 U.S. 340, 346 (1991).

Then, what is originality? The Copyright Act intentionally does not define originality. When Congress enacted the 1976 Act, it stated:

The phrase "original works of authorship," which is purposefully left undefined, is intended to incorporate without change the standard of originality established by the courts under the [1909 Act].

H.R. Rep. No. 94-1476. at 51-52 (1976).

According to the Supreme Court, originality requires creation and creativity. In Feist, the Court held that "originality requires independent creation plus a modicum of creativity." Id. The Feist Court relied on The Trade-Mark Cases, which held:

While the word writings may be liberally construed, as it has been, to include original designs for engraving, prints, &c., it is only such as are original, and are founded in the creative powers of the mind. The writings which are to be protected are the fruits of intellectual labor, embodied in the form of books, prints, engravings, and the like.

100 U.S. 82, 94 (1879) (emphasis in original). It also relied on Burrow-Giles, which held that a copyright owner who files an infringement action must prove "the existence of those facts of originality, of intellectual production, of thought, and conception." 111 U.S. at 59-60.

So, under the Intellectual Property Clause, a work is original and can be be protected by copyright only if it is:

independently created by an author; and
includes some creative element.

Questions:

Why does the Intellectual Property Clause require originality?
What would happen if the Intellectual Property Clause did not require originality?

The Independent Creation Requirement

Originality requires independent creation. A work is independently created only if it is neither a copy of another work nor a fact about the world.

Independent creation does not require novelty. As Congress stated when it enacted the 1976 Act, originality does not require "novelty, ingenuity, or esthetic merit." H.R. Rep. No. 94-1476. at 51-52 (1976). In fact, a work is independently created even if it is identical to a previously existing work, so long as it was not copied from the previously existing work. As a consequence, a copyright owner alleging infringement must prove both substantial similarity and copying. In other words, a copyright owner must show not only that the allegedly infringing work is substantially similar to the copyrighted work, but also that the alleged infringer actually copied the copyrighted work.

However, copyright cannot protect ideas, which are protected, if at all, only by patents. "The most fundamental axiom of copyright law is that '[n]o author may copyright his ideas or the facts he narrates.'" Feist, 499 U.S. at 344-45 (quoting Harper & Row, Publishers, Inc. v. Nation Enterprises, 471 U.S. 539, 556 (1985)). As Section 102(b) of the Copyright Act provides:

In no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work.

17 U.S.C. § 102(b). This "idea/expression dichotomy" ensures that copyright does not infringe on the First Amendment, by allowing the free expression of ideas, but protecting an author's original expression of an idea. Harper & Row Publishers, Inc. v. Nation Enterprises, 471 U.S. 539, 556 (1985).

Likewise, copyright cannot protect facts, because they are not created by an author. As the Court recognized in Feist, "facts do not owe their origin to an act of authorship. The distinction is one between creation and discovery: The first person to find and report a particular fact has not created the fact; he or she has merely discovered its existence." 499 U.S. at 347. "The same is true of all facts—scientific, historical, biographical, and news of the day. '[T]hey may not be copyrighted and are part of the public domain available to every person.'" Id. at 348 (quoting Miller v. Universal City Studios, Inc., 650 F.2d 1365, 1369 (5th Cir. 1981)).

Questions:

Why does originality require independent creation?
Why doesn't originality require novelty?
Why doesn't copyright protect ideas?

The Creativity Requirement

Originality also requires creativity, but not very much. As the Court stated in Feist:

Original, as the term is used in copyright, means only that the work was independently created by the author (as opposed to copied from other works), and that it possesses at least some minimal degree of creativity. To be sure, the requisite level of creativity is extremely low; even a slight amount will suffice. The vast majority of works make the grade quite easily, as they possess some creative spark, “no matter how crude, humble or obvious” it might be.

499 U.S. at 345 (citing 1 M. Nimmer & D. Nimmer, Copyright §§ 1.08 [C] [1] and 2.01[A], [B] (1990)).

Questions:

What is creativity?
Why does originality require creativity?

The Fixation Requirement

The Intellectual Property Clause only authorizes Congress to grant copyright protection to the "writings" of "authors." But the Court has construed the term "writings" quite broadly. "[A]lthough the word ‘writings' might be limited to script or printed material, it may be interpreted to include any physical rendering of the fruits of creative intellectual or aesthetic labor." Goldstein v. California, 412 U.S. 546, 561 (1973).

The Copyright Act provides that copyright only protects works that are "fixed in a tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device." 17 U.S.C. § 102(a). In other words, under the Copyright Act, an original work of authorship is protected by copyright only if it is documented in some fashion. An original work of authorship that is performed, but not documented, is not protected by copyright, because it was not fixed in a tangible medium of expression.

The fixation requirement is quite flexible. A work can be fixed in any manner, form, or medium, so long as the document of the work enables the perception, reproduction, or communication of the work. In fact, courts have universally held that computer programs satisfy the fixation requirement. See Williams Elec., Inc. v. Arctic Int'l, Inc., 685 F.2d 870 (3d Cir. 1982). Fixation does not require the ability to perceive the work directly, it only requires the possibility of perceiving, reproducing, or communicating the work in some fashion.

Questions:

Should the Court construe the term "writings" broadly?
Why does the Copyright Act require fixation?
Is a computer program "fixed in a tangible medium"?

Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53 (1884)

This is a writ of error to the circuit court for the southern district of New York. Plaintiff is a lithographer, and defendant a photographer, with large business in those lines in the city of New York. The suit was commenced by an action at law in which Sarony was plaintiff and the lithographic company was defendant, the plaintiff charging the defendant with violating his copyright in regard to a photograph, the title of which is ‘Oscar Wilde, No. 18.’ A jury being waived, the court made a finding of facts on which a judgment in favor of the plaintiff was rendered for the sum of $600 for the plates and 85,000 copies sold and exposed to sale, and $10 for copies found in his possession, as penalties under section 4965 of the Revised Statutes. Among the finding of facts made by the court the following presents the principal question raised by the assignment of errors in the case:

‘(3) That the plaintiff, about the month of January, 1882, under an agreement with Oscar Wilde, became and was the author, inventor, designer, and proprietor of the photograph in suit, the title of which is ‘Oscar Wilde, No. 18,’ being the number used to designate this particular photograph and of the negative thereof; that the same is a useful, new, harmonious, characteristic, and graceful picture, and that said plaintiff made the same at his place of business in said city of New York, and within the United States, entirely from his own *55 original mental conception, to which he gave visible form by posing the said Oscar Wilde in front of the camera, selecting and arranging the costume, draperies, and other various accessories in said photograph, arranging the subject so as to present graceful outlines, arranging and disposing the light and shade, suggesting and evoking the desired expression, and from such disposition, arrangement, or representation, made entirely by the plaintiff, he produced the picture in suit, Exhibit A, April 14, 1882, and that the terms ‘author,’ ‘inventor,’ and ‘designer,’ as used in the art of photography and in the complaint, mean the person who so produced the photograph.'

Other findings leave no doubt that plaintiff had taken all the steps required by the act of congress to obtain copyright of this photograph, and section 4952 names photographs, among other things, for which the author, inventor, or designer may obtain copyright, which is to secure him the sole privilege of reprinting, publishing, copying, and vending the same. That defendant is liable, under that section and section 4965, there can be no question if those sections are valid as they relate to photographs.

Accordingly, the two assignments of error in this court by plaintiff in error are: (1) That the court below decided that congress had and has the constitutional right to protect photographs and negatives thereof by copyright. The second assignment related to the sufficiency of the words ‘Copyright, 1882, by N. Sarony,’ in the photographs, as a notice of the copyright of Napoleon Sarony, under the act of congress on that subject.

With regard to this latter question it is enough to say that the object of the statute is to give notice of the copyright to the public by placing upon each copy, in some visible shape, the name of the author, the existence of the claim of exclusive right, and the date at which this right was obtained. This notice is sufficiently given by the words ‘Copyright, 1882, by N. Sarony,’ found on each copy of the photograph. It clearly shows that a copyright is asserted, the date of which is 1882, and if the name Sarony alone was used, it would be a *56 sufficient designation of the author until it is shown that there is some other Sarony. When, in addition to this, the initial letter of the Christian name Napoleon is also given, the notice is complete.

The constitutional question is not free from difficulty. The eighth section of the first article of the constitution is the great repository of the powers of congress, and by the eight clause of that section congress is authorized ‘to promote the progress of science and useful arts, by securing, for limited times to authors and inventors the exclusive right to their respective writings and discoveries.’ The argument here is that a photograph is not a writing nor the production of an author. Under the acts of congress designed to give effect to this section, the persons who are to be benefited are divided into two classes—authors and inventors. The monopoly which is granted to the former is called a copyright: that given to the latter, letters patent, or, in the familiar language of the present day, patent-right. We have then copyright and patent-right, and it is the first of these under which plaintiff asserts a claim for relief. It is insisted, in argument, that a photograph being a reproduction, on paper, of the exact features of some natural object, or of some person, is not a writing of which the producer is the author. Section 4952 of the Revised Statutes places photographs in the same class as things which may be copyrighted with ‘books, maps, charts, dramatic or musical compositions, engravings, cuts, prints, paintings, drawings, statues, statuary, and models or designs intended to be perfected as works of the fine arts.’ ‘According to the practice of legislation in England and America, (says Judge BOUVIER, 2 Law Dict. 363,) the copyright is confined to the exclusive right secured to the author or proprietor of a writing or drawing which may be multiplied by the arts of printing in any of its branches.’
The first congress of the United States, sitting immediately after the formation of the constitution, enacted that the ‘author or authors of any map, chart, book, or books, being a *57 citizen or resident of the United States, shall have the sole right and liberty of printing, reprinting, publishing, and vending the same for the period of fourteen years from the recording of the title thereof in the clerk's office, as afterwards directed.’ 1 St. p. 124, § 1.

This statute not only makes maps and charts subjects of copyright, but mentions them before books in the order of designation. The second section of an act to amend this act, approved April 29, 1802, (2 St. 171,) enacts that from the first day of January thereafter he who shall invent and design, engrave, etch, or work, or from his own works shall cause to be designed and engraved, etched, or worked, any historical or other print or prints, shall have the same exclusive right for the term of 14 years from recording the title thereof as prescribed by law. By the first section of the act of February 3, 1831, (4 St. 436,) entitled ‘An act to amend the several acts respecting copyright, musical compositions, and cuts, in connection with prints and engravings,’ are added, and the period of protection is extended to 28 years. The caption or title of this act uses the word ‘copyright’ for the first time in the legislation of congress.

The construction placed upon the constitution by the first act of 1790 and the act of 1802, by the men who were contemporary with its formation, many of whom were members of the convention which framed it, is of itself entitled to very great weight, and when it is remembered that the rights thus established have not been disputed during a period of nearly a century, it is almost conclusive. Unless, therefore, photographs can be distinguished in the classification of this point from the maps, charts, designs, engravings, etchings, cuts, and other prints, it is difficult to see why congress cannot make them the subject of copyright as well as the others. These statutes certainly answer the objection that books only, or writing, in the limited sense of a book and its author, are within the constitutional provision. Both these words are susceptible of a more enlarged definition than this. An author in *58 that sense is ‘he to whom anything owes its origin; originator; maker; one who completes a work of science or literature.’ Worcester. So, also, no one would now claim that the word ‘writing’ in this clause of the constitution, though the only word used as to subjects in regard to which authors are to be secured, is limited to the actual script of the author, and excludes books and all other printed matter. By writings in that clause is meant the literary productions of those authors, and congress very properly has declared these to include all forms of writing, printing, engravings, etchings, etc., by which the ideas in the mind of the author are given visible expression. The only reason why photographs were not included in the extended list in the act of 1802 is, probably, that they did not exist, as photography, as an art, was then unknown, and the scientific principle on which it rests, and the chemicals and machinery by which it is operated, have all been discovered long since that statute was enacted. Nor is it supposed that the framers of the constitution did not understand the nature of copyright and the objects to which it was commonly applied, for copyright, as the exclusive right of a man to the production of his own genius or intellect, existed in England at that time, and the contest in the English courts, finally decided, by a very close vote in the house of lords, whether the statute of 8 Anne, c. 19, which authorized copyright for a limited time, was a restraint to that extent on the common law or not, was then recent. It had attracted much attention, as the judgment of the king's bench, delivered by Lord MANSFIELD, holding it was not such a restraint, in Millar v. Taylor, 4 Burr. 2303, decided in 1769, was overruled on appeal in the house of lords in 1774. Id. 2408. In this and other cases the whole question of the exclusive right to literary and intellectual productions had been freely discussed.

We entertain no doubt that the constitution is broad enough to cover an act authorizing copyright of photographs, so far as they are representatives of original intellectual conceptions of the author.

But it is said that an engraving, a painting, a print, does embody *59 the intellectual conception of its author, in which there is novelty, invention, originality, and therefore comes within the purpose of the constitution in securing its exclusive use or sale to its author, while a photograph is the mere mechanical reproduction of the physical features or outlines of some object, animate or inanimate, and involves no originality of thought or any novelty in the intellectual operation connected with its visible reproduction in shape of a picture. That while the effect of light on the prepared plate may have been a discovery in the production of these pictures, and patents could properly be obtained for the combination of the chemicals, for their application to the paper or other surface, for all the machinery by which the light reflected from the object was thrown on the prepared plate, and for all the improvements in this machinery, and in the materials, the remainder of the process is merely mechanical, with no place for novelty, invention, or originality. It is simply the manual operation, by the use of these instruments and preparations, of transferring to the plate the visible representation of some existing object, the accuracy of this representation being its highest merit. This may be true in regard to the ordinary production of a photograph, and that in such case a copyright is no protection. On the question as thus stated we decide nothing.

In regard, however, to the kindred subject of partents for invention, they cannot, by law, be issued to the inventor until the novelty, the utility, and the actual discovery or invention by the claimant have been established by proof before the commissioner of patents; and when he has secured such a patent, and undertakes to obtain redress for a violation of his right in a court of law, the question of invention, of novelty, of originality is always open to examination. Our copyright system has no such provision for previous examination by a proper tribunal as to the originality of the book, map, or other matter offered for copyright. A deposit of two copies of the article or work with the librarian of congress, with the name of the author and its title page, is all that is necessary to secure a copyright. It is therefore much more important that when the supposed author sues for a violation of his copyright, the *60 existence of those facts of originality, of intellectual production, of thought, and conception on the part of the author should be proved than in the case of a patent-right. In the case before us we think this has been done.

The third finding of facts says, in regard to the photograph in question, that it is a ‘useful, new, harmonious, characteristic, and graceful picture, and that plaintiff made the same * * * entirely from his own original mental conception, to which he gave visible form by posing the said Oscar Wilde in front of the camera, selecting and arranging the costume, draperies, and other various accessories in said photograph, arranging the subject so as to present graceful outlines, arranging and disposing the light and shade, suggesting and evoking the desired expression, and from such disposition, arrangement, or representation, made entirely by plaintiff, he produced the picture in suit.’ These findings, we think, show this photograph to be an original work of art, the product of plaintiff's intellectual invention, of which plaintiff is the author, and of a class of inventions for which the constitution intended that congress should secure to him the exclusive right to use, publish, and sell, as it has done by section 4952 of the Revised Statutes.

The question here presented is one of first impression under our constitution, but an instructive case of the same class is that of Nottage v. Jackson, 11 Q. B. Div. 627, decided in that court on appeal, August, 1883. The first section of the act of 25 & 26, Vict. c. 68, authorizes the author of a photograph, upon making registry of it under the copyright act of 1882, to have a monopoly of its reproduction and multiplication during the life of the author. The plaintiffs in that case described themselves as the authors of the photograph which was pirated in the registration of it. It appeared that they had arranged with the captain of the Australian cricketers to take a photograph of the whole team in a group, and they sent one of the artists in their employ from London to some country town to do it. The question in the case was whether the plaintiffs, who owned the establishment in London, where the photographs *61 were made from the negative, and were sold, and who had the negative taken by one of their men, were the authors, or the man who, for their benefit, took the negative. It was held that the latter was the author, and the action failed, because plaintiffs had described themselves as authors. BRETT, M. R., said, in regard to who was the author: ‘The nearest I can come to is that it is the person who effectively is as near as he can be the cause of the picture which is produced; that is, the person who has superintended the arrangement, who has actually formed the picture by putting the persons in position, and arranging the place where the people are to be-the man who is the effective cause of that.’ Lord Justice COTTON said: ‘In my opinion, ‘author’ involves originating, making, producing, as the inventive or master mind, the thing which is to be protected, whether it be a drawing, or a painting, or a photograph;' and Lord Justice BOWEN says that photography is to be treated for the purposes of the act as an art, and the author is the man who really represents, creates, or gives effect to the idea, fancy, or imagination. The appeal of plaintiffs from the original judgment against them was accordingly dismissed.