WIPIP Session 8 (copyright)

Jessica Silbey, Section 102(b) and the Fact Exclusion Genealogy in U.S. Copyright Law

Why are we so sure facts are excluded from the statute when the statute doesn’t use that word and uses a lot of other words. We cite 102(b) for what Feist tells us—that facts are excluded—but where does that come from. Looked at leg history and cases cited by Feist. Do I really know what a fact is? Research complicates the idea of facts themselves. C’s first subject matter—maps, charts, and books—may help us think about what facts are (as distinguished from works?).

Found three categories of cases distinguishable for how and why they protect/don’t protect certain subject matter, and all of them are not the same as “facts.” (1) Baker v. Selden line. (2) Originality cases, including Burrow-Giles and Harper & Row. These are two sides of the same coin: © protects only works of authors as a constitutional matter. Harper & Row is cited by Feist to reiterate that selection coordination and arrangements of facts can be copyrightable. Uses them to show what’s not protectable—no author may © ideas or facts. President Ford couldn’t prevent others from copying bare historical facts. Also cites Nimmer but reminds us that Nimmer actually says “discoveries,” not “facts.” She doesn’t think those are the same. Text of 102(b) is “universally understood” to prohibit (c) in facts. 102(b) doesn’t change the law but merely clarifies it, restating the basic idea/expression dichotomy, but that’s not about facts. Perceptible slippage b/t fact and idea that blends them together.

Feist also cites Harper & Row to get rid of “sweat of the brow.” Cites Brennan’s dissent in Harper & Row to remind us that free riding isn’t an unforeseen byproduct of the statute but its intent, to promote progress of science. (3) Leads from originality to third bucket, with origins in Wheaton v. Peters. Feist cites INS v. AP and says 1909 Act didn’t support sweat of the brow approach to ©. Feist cites INS for proposition that the “news element” is not the creation of the writer but the report of the history of the day which is public property. But INS continues—not in the quote—to allow a limited property right in news of the day. Wheaton is about no federal perpetual copyright, but it is also about what is common/public property as opposed to private property.

The only mention in leg history of facts refers to the sweat of the brow doctrine. Despite hugeness of leg history, says nothing about facts except for 3 paragraphs. The 102(b) discussion is largely about computer programs, which is about CONTU/processes and methods and distinguishing b/t methods and expression in computer programs. That’s what’s really motivating 102(b). 1975 hearing: much more specific about nonprotection of facts in that the hearing talks about it. Irwin Karp, counsel to Authors’ League of America, refutes a statement by librarians who are seeking an exemption for photocopying books for repair and research, arguing that information dissemination would be restrained w/o it. Karp says that librarians attack (c) protection for authors; on information, he says, a copyright doesn’t restrain information, b/c it doesn’t protect facts or ideas, only expression. Karp agrees that (c) is not like land, which preexisted the public domain and was acquired and distributed by gov’t. (c) does grant authors “rights in something he created” and that “already belong to him” at common law and is taken after a few short years from him and his heirs. Cites Henry George. Natural or moral right to own fruit of labors.

Henry George: an economist, 1878 book, Progress and Poverty. In his writings, he explores how to structure taxes so as not to depress labor. Footnote: © is a good kind of monopoly b/c it doesn’t interfere with productivity b/c it doesn’t prevent anyone from using facts, laws, knowledge but only the identical form of the particular book. Rests on natural moral right to enjoy products of own exertion and no interference with anyone’s right to do likewise.

So fact exclusion comes up only in context of authors asserting strong natural rights in fruits of their labor, but that’s exactly what Feist says is not ©. Karp is misreading both George and the spirit of ©.

Fact also delineates specific categories—1960 report of meaning of “writings” that is a precursor to 102(b) lists ideas, dress designs, reports of current events, names/titles. These last two could be facts, but not used as a term.

Facts could be thought of as a general theory, 102(b) is a list but not exhaustive? Public property concept—more than raw materials: public goods; common property even if investments and labor were expended. A healthy public sphere for all.

Tyler Ochoa: not clear whether they didn’t think about it or thought it was so clear that they didn’t need to write it down. What did Drone and the other old © treatises say? That might shed some light; George is writing around the same time as Baker v. Selden, and he already thinks this is an established principle. Where does he get it from?

Justin Hughes: discoveries just means inventions. But it’s possible that by time of the drafting of the Constitution “Writings” was already understood to exclude facts—look at the really old English jurisprudence. Maybe drafting process suggests that English already excluded facts and they relied on that. Another possibility: maybe int’l © treaties backfill this and exclude facts.

Q: patent parallels: to what extent were parallels solidified in patent law already?  Tension b/t invention and discovery. What about scope/building blocks questions?

A: socially created facts are still facts; legal opinions are considered facts. That might distinguish it from patent facts/observable things in the world.

George clearly got pushback b/t editions b/c first edition said that both patents and copyrights were worrisome; revised edition just said that patents were worrisome.

Zvi Rosen, Examining Copyright

It’s very hard to figure out the history of examination! What are the rejections? They weren’t looking at content, they were looking at form—what type of work? They were just looking at title page and had to rely on what it said it was and not what was inside. So you got Baker v. Selden and label rejections. They stopped recording rejections in 1905 and never started again. So rejection info is really anecdotal.

Eventually they start creating annual reports w/statistics. 10-12% need correspondence, 2.5% rejection, incredibly consistent 1957-77. Visual art rejected at consistently higher rate; music almost never rejected. Requiring correspondence, not so consistent. Visual arts: technical drawings as pseudo-patents are rejected 20-25% of the time. Photos about 5-7% rejections. Why? It’s tricky to find out. By 2015, almost all rejections are visual arts. Review board 1995-2020: same basic story. Common shapes, originality, useful art, labels/logos, jewelry design are being rejected.

Raises real admin law questions, which are of relevance with CASE Act and other Office jobs. So we should think about how to understand CO as administrative agency.

What is the CO? District judge initially could hire and fire clerks in charge of ©—that was Art. III. But how then would an Art. III entity register ©? The past is another country, they do things differently there! What made it constitutional then?

[Maybe they didn’t have admin separation of powers!]

Then the TM office did it for a while. DC Circuit repeatedly issued mandamus overruling rejections saying they didn’t have authority to reject—supposed to be ministerial. The TM examiners used to ignore that. Librarian is presidentially appointed but works for Congress. Weird!

1896: Congress declined to make a Commissioner of Copyrights on constitutional concerns, kept it in Library instead. 1898: Ct held Librarian didn’t have discretion to examine but declined to issue mandamus for a void act. So examination continued. 1976 Act finally resolves authority to examine in Office’s favor, but authority technically didn’t exist until then.

1937: set up a review board for appeals for registration but no further appeal; AG said it was constitutional in 1941.

Eltra v. Ringer: challenges authority to examine on nondelegation grounds in case involving typeface rejection. Only executive branch can examine substantively! DC DCt holds that Register is part of Executive Branch.

Today: lots of rulemaking; CO tasked w/standing up and administering Copyright Claims Board; they’re doing all sorts of rulemaking, including 1201. Framework sure seems constitutionally rickety. A constitutional coelacanth—assumed to have been extinct for millions of years, but actually survived. CO comes from a different era of constitutional and administrative law. How can that be justified?

Betsy Rosenblatt: Long and proud history of doing things that are ultra vires/not constitutional, and they still do so. Not b/c they desire to be unconstitutional, but b/c Congress keeps telling them to do things. Triennial rulemakings in 1201 don’t fit well w/in constitutional structure, and CASE Act doesn’t fit well w/in constitutional structure. One solution is to say we should change everything to make CO part of executive branch. Another version is to say it can go on being vaguely unconstitutional b/c it always has been. Is there a third option? Neither seem great.

A: making Register a presidential appointment would solve some problems.

Ochoa: Ralph Oman is still around; you should talk to him about Eltra backstory.

Hughes: There are also 1985 suits, 1996, DC Cir. saying in 2009 we’re not going to touch this Q b/c it’s of far-reaching significance and could jeopardize every registered copyright. So it’s still out there to be decided, which he finds shocking, especially after the DMCA 1201 rulemakings. But the IP community doesn’t have much interest in this. Tillis wanted to study having a unified IP office. It will die b/c the IP community wants CO and PTO separate. It gives them additional voices to lobby for IP in interagency meetings and before other entities. They get to bolster the USTR. That’s a structural reason they oppose it.

Q: Why are photos rejected less than artwork?

A: because logos fall w/in the category artwork and are more often rejected—photos are generally considered protectable b/c of their characteristics. And art reproductions were ©able too.

One suggestion: maybe we should stop examining text—Hughes mentions being asked to disclaim long quotes in his law review articles—and switch people to examining artwork where rejections actually happen.

Hughes: maybe we should switch them to having oppositions and cancellations.