Chapter III

Commercial Prints and Labels

The registration of commercial prints and labels was transferred from the Patent Office to the Copyright Office, Library of Congress, by the amendatory law approved July 31, 1939, effective July 1, 1940 (53 St. L. 1142). During the interval the Patent Office transported to the Copyright Office the vast accumulations of over 65 years, consisting of applications, correspondence, deposits, indexes, records and so-called specimen books displaying in regular order the prints and labels registered since 1874, totaling 73,145 items (of which approximately 55,063 were labels and 18,082 prints). Before considering the new Act, it will be profitable to give some heed to section 3 of the old Act of 1874, which it replaces, and to the practices of the Patent Office thereunder.

Part 1-Former Law and Practice

Prior to 1870 the commercial world filed its emblems of trade for registration in the Clerk's Office of the various District Courts in accordance with the provisions of the general copyright law. But in that year the copyright law was changed so as to require all deposits and entries to be made in the Library of Congress, and all copies of works of whatsoever character previously deposited elsewhere, as well as all records relating thereto, were transferred to the care of the Librarian of Congress. The Library at that time was located in limited quarters at the Capitol Building, and in order to relieve the Librarian from the need of entering and providing space for the constantly growing accumulation of advertisements, cartons, labels, and similar articles, which he regarded as beneath the dignity of literature proper, Congress at his request incorporated in the amendatory Act of June 18, 1874 (18 St. L. 78) (the primary purpose of

which was to authorize a shorter form of copyright notice) the following provision:

Sec. 3. That in the construction of this act, the words "engraving, cut, and print" shall be applied only to pictorial illustrations or works connected with the fine arts, and no prints. or labels designed to be used for any other articles of manufacture shall be entered under the copyright law, but may be registered in the Patent Office. And the Commissioner of Patents is hereby charged with the supervision and control of the entry or registry of such prints or labels, in conformity with the regulations provided by law as to copyright of prints, except that there shall be paid for recording the title of any print or label, not a trade-mark, six dollars, which shall cover the expense of furnishing a copy of the record, under the seal of the Commissioner of Patents, to the party entering the same. That this was intended to be part of the general copyright law, distinct from the sphere of patent, trade mark or design law, was early decided in the case of Marsh v. Warren, 14 Blatch. 263 (1878), and confirmed by the Supreme Court in Higgins v. Keuffel, 140 U.S. 428 (1891), and for many years the Patent Office governed itself accordingly. Under these circumstances, one would have thought that when the present law entitled "An Act to Amend and consolidate the Acts respecting Copyright", containing a general repealing clause, went into effect July 1, 1909, old section 3 would have passed into the discard. The Commissioner of Patents thought so; but the Register of Copyrights was doubtful, presumably because his original draft of the bill had expressly included commercial prints and labels "as heretofore registered in the Patent Office", but this was later objected to in the committee hearings and stricken as being "unconstitutional" (Hearings, Vol. 1, June 6, 1906, p. 172). So the question was submitted to the Attorney General, who approved the finding of his Assistant to the effect that the Act of 1909 was not "in conflict with" section 3 of the Act of 1874 and that consequently the Patent Office was still required to register all such prints and labels as theretofore. 28 Op. Att. Gen. 116 (1909), approved without opinion by a later Attorney General in 1914, 203 O.G. 602.

In Hoague-Sprague Co. v. Meyer, 27 F.2d 176 (1928), some doubt as to the correctness of this ruling was indicated by Judge Inch on motion for preliminary injunction, but on trial of the

case before Judge Campbell, 31 F.2d 583 (1929), the latter expressed the view that the doubt was removed by Congress when on June 28, 1926, it enacted the United States Code and set its seal of approval on the construction given by the Attorney General and the long continued practice of the Patent Office, by embodying old section 3 as section 63 of the Copyright Act (replacing the repealing clause), which made it prima facie the law.

At first the Patent Office made no distinction between prints and labels but treated both as labels attached to goods and refused to register under section 3 if the device carried a trade mark. Later on, however, the practice was changed and two separate categories and serial numbers were assigned to prints and labels, and the presence of a trade mark was regarded as no bar to registration, provided the print or label contained some additional element sufficient to qualify for copyright protection, Ex parte Heinz Co., 62 O.G. 1064, 1893 C.D. 21, even though "the feature thereof which imparts originality is used or is capable of use as a trade mark". Ex parte Wahrmann, 204 O.G. 1345, 1914 C.D. 67.

Differing views prevailed with respect to what that additional element must consist of, especially in the case of labels. According to some of the earlier cases, the Commissioner of Patents stressed artistic quality as essential. Ex parte Palmer, 58 O.G. 383, 1892 C.D. 6; Ex parte Baldwin, 98 O.G. 1706, 1902 C.D. 54. But no nice distinctions were made as to the degree of artistic or intellectual qualities to be displayed by the label. Generally speaking, it was registered as a matter of course "when recognized to be of a character which is commonly regarded as the result of artistic effort." In a more recent case, however, the Assistant Commissioner remarked that "It is not to be inferred . . . that registration should be refused merely because a label bears only a composition of words displayed in conventional typography, but the composition must bear evidence of originality and intellectual effort"; (otherwise) "there would come a time when it would be impossible for manufacturers to describe their wares on a label without employing language which had already been copyrighted." Ex parte Irish, 27 USPQ 312 (1935). This is in line with the decision of the Circuit Court of Appeals in Fargo v. Brechet, 295 F. 823 (CCA 8, 1924), to the effect that the label in question was properly registrable at the Patent

Office even though the only copyrightable feature consisted of original recipes with directions for making various articles of food and drink, regardless of the status of the fanciful emblem which accompanied the same.

With respect to prints, however, no reported case is found, either in or outside of the Patent Office, to the effect that an advertisement consisting solely of words could be registered as a "print" under section 3. On the contrary, an examination of the specimen books of the Patent Office shows that registration in that category was confined to such advertisements as contained pictorial or artistic decorative matter as well as text.

The Commissioners always laid special stress upon the requirement that the print or label must describe on its face the particular article or type of material for which it was used. This was based upon an interpretation of the words "designed to be used for articles of manufacture," to the effect that this clause did not refer to the state of mind or intention of the applicant but to the evidence afforded by the contents of the print or label itself; otherwise, so it was claimed, "the distinction attempted to be drawn by Congress between the two classes of artistic products (i.e., those registrable in the Copyright Office and those registrable in the Patent Office) would be practically nullified". Ex parte Lion Fig and Date Co., 1903 C.D. 35; Ex parte Regina Music Box Co., 1902 C.D. 286.

In practice, however, a considerable latitude was allowed as to how the print or label should "describe" the article of manufacture. An examination of the specimen books of the Patent Office shows that a mere word or tiny print was often regarded as sufficient. Nevertheless, this "rule of description" seems to have been one of the chief bones of contention and many applications were rejected under its operation, especially with respect to labels.

With respect to prints, on the other hand, the specimen books show that registration was not always confined to such prints as identified any particular article or line of goods, but included single sheets, Ex parte Relda Mfg. Co., 115 Ms D. 419 (1914), advertising various products offered for sale, differing as widely in character and use as ink bottles and baby carriages. Advertisements consisting of several sheets stitched or bound together and published in pamphlet form were considered "books", and

applicants for registration of such material were relegated to the Copyright Office. In Ex parte Schmidt, 312 O.G. 399, 1923 C.D. 33, an advertising sheet containing pictorial element relating to "Old and modern silver, Sheffield plate, old and modern glass, garnatures and fine porcelains" was found registrable by the Assistant Commissioner, overruling the decision of the primary examiner, because "the goods listed by applicant are articles of manufacture, and there is no ground for holding that the print must relate to a specific individual article".

But sometimes the print might clearly be intended to be used for advertising purposes and yet not disclose pictorially any particular product. In Ex parte Pennzoil Co., 34 USPQ 34 (1937), the print in question displayed clasped hands over which appeared the words "Perfect Partners" and underneath "PennzipPennzoil". Motorists would undoubtedly recognize the reference here to motor oil but the registration was refused on the ground that the print was not descriptive of an article of manufacture.

In this connection, there should be noticed the case of DixieVortex Co. v. Lily-Tulip Cup Corp., 33 USPQ 496 (EDNY 1937); affirmed 37 USPQ 164, where the print in question showed an arctic scene with a polar bear in the foreground, bearing the title "Chily-Bear". There was nothing to show specifically what it was used for, and registration was made in the Copyright Office as a print or pictorial illustration. On trial of the case, however, the plaintiff's witness admitted that the picture was "not used for any purpose other than for a paper cup" to serve ice cream, and on this oral evidence the court held that the registration was invalid and should have been made in the Patent Office under the Act of 1874 as a commercial print. But there, probably, the plaintiff would have been up against the rule of description and refused registration.

'In recent cases a distinction in practice was made by the Patent Office between labels used for one particular type of goods and those used for different products. For example, in Ex parte Price Bros., 25 USPQ 176 (1935), the Assistant Commissioner (overruling the examiner) passed for registration a single application listing a plurality of labels for wines where the sole point of difference was in the name of the type of wine, port, sherry, etc. This decision was based on the ground that the copyright could only apply to the artistic element and, inasmuch as