COMMENTS AND VIEWS SUBMITTED TO THE COPYRIGHT OFFICE ON THE REGISTRATION OF COPYRIGHT By George E. Frost OCTOBER 5, 1958. A few comments on the Patent Office examining procedure and experience may have some value in connection with the subject of copyright registration. There was a period from 1793 to 1836-when patents were issued on a registration system somewhat similar to the present copyright registration procedure. An intolerable situation resulted, with overlapping and conflicting issued patents and a considerable number of fraudulent patents. See the report of the Ruggles Committee of the Senate in 1836, reprinted at 18 Jl. Pat. Off. Soc. 853. In 1836 the registration system was superceded by the present examination system. Despite the criticism that has been made of the Patent Office, there is essentially universal agreement that the examination system has been successful and that it is essential to a practical patent system in this country. The main emphasis in the patent examination is the "prior art" and the search by which the examiner locates that art. Similarly in the case of trademark registration applications the principal emphasis is on the search of prior uses of the same or a similar mark. Both of these are, of course, irrevalent to a consideration of copyright registration, for the originality concept of the copyright law makes "prior art" immaterial. In other respects, however, the Patent Office experience bears consideration. The Office never has confined its attention to the matter of prior art. Rather, it has a long history of interpreting the patent and trademark law. Perhaps the most vivid example occurred during the time when the patent registration system was being followed. Impressed by the practical need to correct issued patents, the Secretary of State issued reissue patents even though the statutes were silent on the subject. In the classic case of Grant v. Raymond, 31 U.S. 208 (1832), the Supreme Court sustained a reissue. Later in that same year a statute providing for reissues was passed. More recently, the Patent Office has been the source of creative doctrine on the subject of patentable subject matter. An excellent example is found in ex parte Scherer (103 U.S.P.Q. 107), where the Commissioner and essentially all members of the Board of Appeals determined that letters patent could issue for a method of treating the human body. In ex parte Haig and Haig (118 U.S.P.Q. 229), Assistant Commissioner Leeds recently held that a bottle configuration could be registered on the principal register of the 1946 Trademark Act. In both the patent and trademark field the Patent Office has taken the position that it is responsible for determining in the first instance whether there is or is not proper subject matter. Another facet of the Patent Office examination procedure warrants consideration. This is the effect of the examination in fixing the scope of the patent or trademark registration. In the patent field the "file wrapper estoppel" doctrine is the most vivid example of this effect. See Exhibit Supply Co. v. Ace Patents Corp. (315 U.S. 126). In the trademark field the best example is the formal "disclaimer." See P. D. Beckwith's Estate v. Commissioner (252 U.S. 538 (1920)). When we turn to a consideration of the Copyright Office operations, we find the rudiments of both the examination as to subject matter and the idea that the subject matter of the copyright should be defined. In both instances, however, the matter is handled gingerly and often with a disclaimer by the Office of any responsibility. This may be sound policy-and it apparently does please a segment of the bar. But the above comparison with the Patent Office history at least raises the question of whether the copyright system might be more effective if the Office took a different approach. In Mazer v. Stein the Copyright Office did take a forthright and definite position and could point to a history of registration practice going back almost to 1870 to support its position. In my opinion the Office was a real source of creative doctrine in this instance and was performing a function of the kind it is especially equipped to perform. In the Ballentine case the Office took a different approach. It disclaimed any intent to interpret the law and characterized its practice as mere expediency in view of doubt as to the law. What would have happened if-when the matter first arose many years ago the Office had (1) taken the firm position that children are entitled to renew during the lifetime of the widow or (2) taken the opposite position and refused such renewals? In the latter instance we presumably would have had a court action and a decision one way or the other. Cf. Brown v. Warner (161 F. (2d) 910). In the former instance we would have had the Office backing up its position in the Supreme Court. In either event the Office would have filled the gap in an ambiguous statute in a way that would appear to be in the public interest. Turning now to the issues listed at page 64 of the Kaplan piece, it seems to me that the answers to them might be as follows: 1. There should be a registration system. This 2. Insofar as possible the data supplied on registration should enable others to determine what is and what is not the subject matter of the copyright. includes, for example, specifying sources from which a work is derived. 3. With the exception indicated, registration should be mandatory. 4. My own feeling is that a time limit along the lines of the proposed ornamental designs bill would be desirable. At the very least, sanctions must be adequate to assure registrations and some time period more definite than that now in the law should be used. One possibility-if the fixed limit of the designs bill is considered too rigid-is that of providing for "intervening rights" along the lines applicable to reissue patents. See 35 U.S.C. 252. 5. No answer required. 6. My own feeling is that the present prima facie rule should continue to apply. Sincerely yours, By Samuel W. Tannenbaum GEORGE E. FROST. OCTOBER 7, 1958. Prof. Benjamin Kaplan's study, "The Registration of Copyright," is a comprehensive and scholarly exposition of the origin and historical development of registration in the law of copyright in the United States and foreign jurisdictions. In addition to the detailed reservoir of reliable data, it crystallizes the essential elements which must be considered in the program for revision of the U.S. copyright law. In my opinion, based upon my daily experience in the field of copyright, as consultant and adviser to creators and users of intellectual properties, the principal features of the existing provisions of copyright registration should remain undisturbed and the practical aspects of registration, in the light of existing uses and trade practices should be carefully considered. I am, however, opposed to any mandatory requirement of registration as a condition for securing copyright protection. The practical benefits of registration with deposit of copies have been demonstrated over the years. Section 12 of the Copyright Act, which provides that registration with deposit of copies should be a condition precedent for actions or proceedings for infringement should be preserved. It requires a claimant to establish a public record where litigants and prospective users can identify the particular work. It also facilitates the search to determine the essential data, such as the origin of the copyright, the date of publication (which is synonomous with the date of copyright), the work protected, the copyright claimant and other important information. It furnishes a point of commencement from which the record can be searched to ascertain the chain of title, the dates and owners of the renewals of copyright, and the last copyright proprietor of record. In short, a clear picture of the U.S. copyright status of a work is readily obtainable. On It has all the advantages of the recording acts pertaining to real property. the other hand, private recordkeeping would be chaotic and unreliable. It would not have the stamp of official authority which has long existed under our present Copyright Act. While the foreign system of private recordkeeping may be adequate, as the volume of copyrightable material produced and the uses thereof are small, such system would be inadequate for the needs of American industry. In litigation, the public recording system also makes for facility of proof of the essentials. By the continuance of the present system, making such public record |