Amicus Curiae Brief — Eldred v. Ashcroft

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No. 01-618

MAY-20 2002

Jn The es Se EC

Supreme Court of the Gnited States” —I

—@

ERIC ELDRED, et al.,

Petitioners,

JOHN D. ASHCROFT,

in his official capacity as Attorney General,

Respondent.

On Writ Of Certiorari To The

United States Court Of Appeals For The

District Of Columbia Circuit

BRIEF AMICI CURIAE OF TYLER T. OCHOA,

MARK ROSE, EDWARD C. WALTERSCHEID,

THE ORGANIZATION OF AMERICAN

HISTORIANS, AND H-LAW: HUMANITIES

AND SOCIAL SCIENCES ONLINE IN

SUPPORT OF PETITIONERS

TYLER T. OCHOA

Counsel of Record

Professor of Law and

Co-Director

CENTER FOR INTELLECTUAL

PROPERTY LAW

WHITTIER LAW SCHOOL

3333 Harbor Blvd.

Costa Mesa, CA 92626

(714) 444-4141, ext. 243

COCKLE LAW BRIEF PRINTING CO. (800) 225-6964

OR CALL COLLECT (402) 342-2831

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TABLE OF CONTENTS

Page

Dabo 66 Ate GEAEGD ccccccccvcccscscccsscccnscssesenstscsmnenessescons ii

Interests Of Amici CUTiae ...........ccccccessceesseeessseesseeess 1

Summary of Argument ...............cccscccsescssscceseseeeseeeers 2

DPEMIOT cccccccccccsseccsccsssscccsccesnncosesesensscnsseonooossenessees 3

I. English Antecedents.................ccccccecesesseeeeeeees 3

A. The Statute of Monopolies ...................+. 3

B. The Statute of Amne ................cccccseeeeeeeeees 5

C. Donaldson v. Beckett.................::sccseseeeeees 8

Il. The Patent and Copyright Clause of the

Cami nccccccccceseccsecnssnsenesnaesssetmennnnmanians 11

A. State Copyright and Patent Laws under

the Articles of Confederation................... 11

B. The Constitutional Convention and Rati-

ne 14

III. Statutory and Judicial Interpretation ............ 21

A. The Copyright and Patent Acts of 1790.... 21

B. Private Patent and Copyright Laws......... 22

C. The Copyright Act of 1831...................0006 24

BD, WRRRRS 6 PURGE ccccccecescscscccscsvssessssccsseses 26

CONE ccccnsccsscnscscsssecnnsnsssinsesincsenimentoiiemnensieeneine 29

TABLE OF AUTHORITIES

Page

CASES

FEDERAL:

Bloomer v. McQuewan, 55 U.S. (14 How.) 539

EEE ee 23

Evans v. Chambers, 8 F. Cas. 837 (C.C.D. Pa. 1807)

ESSE ee 22

Feist Publications, Inc. v. Rural Telephone Service

EE 24

Graham v. Deere, 383 U.S. 1 (1966) ..............ccccccccccceeeeeceees 3

United Christian Scientists v. Christian Science

Board of Directors, 829 F.2d 1152 (D.C. Cir. 1987)....... 24

Wheaton v. Peters, 29 F. Cas. 862 (C.C.E.D. Pa.

I 27

Wheaton v. Peters, 33 U.S. (8 Pet.) 591 (1834)......14, 27, 28

STATE:

Nathan v. Virginia, 1 U.S. (1 Dall.) 77 (Pa. C.P.

EE oa 16

Respublica v. Doan, 1 U.S. (1 Dall.) 86 (Pa. 1784)............ 16

ENGLISH:

The Clothworkers of Ipswich, 78 Eng. Rep. 147

SRS SEE nee 4

Darcy v. Allen, 74 Eng. Rep. 1131 (K.B. 1603) ................... 4

Donaldson v. Beckett, 4 Burr. 2408, 98 Eng. Rep.

NO ee 9, 10

ili

TABLE OF AUTHORITIES -— Continued

Page

Donaldson v. Beckett, 17 Parl. Hist. Eng. 953 (H.L.

ee 10

Millar v. Taylor, 4 Burr. 2303, 98 Eng. Rep. 201

EEE 9, 27

"JNITED STATES CONSTITUTION

CRB, Comat... Aad, B, 6G, Gb. © aceccccescsccccsccncsccsscccscccsssssessssssses 3

STATUTES AND LEGISLATIVE MATERIALS

Federal:

An Act for the relief of Oliver Evans, ch. 13, 6 Stat.

EE 22

An Act to continue a copy-right to John Rowlett, ch.

24GB, 6 Boat. SBD (UBB) ....cccrecercccccssceccccscccccsccscsccesescccesess 23

Act of July 3, 1832, §2, ch. 162, 4 Stat. 559..................000 22

Act of March 2, 1861, §16, ch. 88, 12 Stat. 249................. 22

Continental Congress, Resolution of May 2, 1783,

reprinted in COPYRIGHT ENACTMENTS OF THE

UNITED STATES 1783-1906 11 (2d ed. 1906)................... 12

Oe 25

7 GaLEs & SeETON’s REGISTER OF DEBATES IN

CONGRESS cxix-cxx (Dec. 17, 1830) ...............cccccccceeeeeeees 25

7 GALES & SeEtToN’s REGISTER oF DEBATES IN

CONGRESS 423-24 (Jan. 6, 1831) .................ccceseeeeeees 25, 26

TABLE OF AUTHORITIES -— Continued

Page

24 JOURNALS OF THE CONTINENTAL CONGRESS 211n

I cinta at al 12

24 JOURNALS OF THE CONTINENTAL CONGRESS 326

ee en ee a 12

Patent Act of 1790, §1, ch. 7, 1 Stat. 110.000.000.000. 22

Patent Act of 1793, §7, ch. 11, 1 Stat. 322.000.000.000... 22

Patent Act of 1836, §18, ch. 357, 5 Stat. 124-25................ 22

Priv. L. No. 92-60, 85 Stat. 857 (1971)............ccccccccccccceeeeee 24

STATE:

1783-1906 (2d ed. 1906) 2.0... cccccccccccccceeceeeeeeeeeee 12, 13

Act of Jan. 29, 1783 (Conn.), in CopyriGutT ENACT-

ee a 13

Act of Mar. 17, 1783 (Mass.), in CopyriGHT ENACT-

Ee 13

Act of Apr. 21, 1783 (Md.), in Copyricut ENACT-

BS Oe I cnnrtentierictenieesnstenintitertcennnninninneenimnniiemitntines 13

Act of May 27, 1783 (N.J.), in Copyricut ENACT.

a I ciiineeieniterite cetacean laa 13

Act of Nov. 7, 1783 (N.H.), in Copyricut ENACT-

| Ee cee e RRL ce a 13

Act of Dec. 1783 (R.I.), in CopyricGnT ENACTMENTS

ec eetiiraaciieainaradeasaiarieeinn ea 13

Act of Mar. 15, 1784 (Pa.), in Copyricut ENACT

I caine cilities 13

Act of Mar. 26, 1784 (S.C.), in Copyricut ENACT-

ee ee 13

TABLE OF AUTHORITIES — Continued

Page

Act of Oct. 1785 (Va.), in COPYRIGHT ENACTMENTS,

dN 13

Act of Nov. 18, 1785 (N.C.), in CopyriGHT ENACT

fe 13

Act of Feb. 3, 1786 (Ga.), in CopyriGHT ENACT

on 13

Act of Apr. 29, 1786 (N.Y.), in COPYRIGHT ENACT

BERBTTD, G6 BB-BI. q...cccccccccecececcccccsssssssesccsvscosssssssossossossooees 13

ENGLISH:

OO —————————————————————— 8

25 H.L. Jour. 91, 99, 106 & 111-12 (1737) ............ccccceeeeeeees 8

Licensing Act of 1662, 14 Car. 2, ch. 33 (1662)

CIBng..) 22.eececeeeecesereccsesecccessccnsssocoocsssonsssssssnooossnsoooososoossees 5,6

Statute of Anne, 8 Anne, ch. 19 (1710) (Eng.)........... passim

Statute of Monopolies, 21 Jac. I, ch. 3 (1624) (Eng.)...2, 5, 7

OTHER AUTHORITIES

Howard B. Abrams, The Historic Foundation of

American Copyright Law: Exploding the Myth of

Common-Law Copyright, 29 Wayne L. Rev. 1119

10, 16

AMERICAN STATE PAPERS, No. 231, 1 Misc. 646

| TT 23

TABLE OF AUTHORITIES -— Continued

2 Stk WILLIAM BLACKSTONE, COMMENTARIES ON THE

LAWS OF ENGLAND (Philadelphia 1771)...............000.0000+ 16

JAMES BOSWELL, THE DECISION OF THE COURT OF

SESSION UPON THE QUESTION OF LITERARY PROP-

ERTY IN THE CAUSE OF HINTON AGAINST

DONALDSON (Edinburgh 1774), reprinted in THE

LITERARY PROPERTY DEBATE: Six TRACTS 1764-

1774 (Stephen Parks, ed. 1975) ..............ccsccecseseesereeeeeeees 9

BrucE W. BUGBEE, THE GENESIS OF AMERICAN

PATENT AND COPYRIGHT LAW (1967) ....................00.-. 12,

2 THE DOCUMENTARY HISTORY OF THE CONSTITUTION

OF THE UNITED STATES OF AMERICA 1786-1870

Ns GE cccerernniernantnrensnsnininiiinieniinsinainnnnmeeseiees

2 THE DOCUMENTARY HISTORY OF THE RATIFICATION

OF THE CONSTITUTION 415 (Merrill Jensen, ed.

4 THE DOCUMENTARY HISTORY OF THE RATIFICATION

OF THE CONSTITUTION 14, 428 (John P. Kaminski

& Gaspare J. Saladino, eds. 1997) ...............ccccccecececeeeees

8 THE DOCUMENTARY HISTORY OF THE RATIFICATION

OF THE CONSTITUTION 45

13 THE DOCUMENTARY HISTORY OF THE RATIFICATION

OF THE CONSTITUTION 466, 482 (John P. Kaminski

16 THE DOCUMENTARY HISTORY OF THE RATIFICATION

OF THE CONSTITUTION 382, 386 (John P. Kaminski

& Gaspare J. Saladino, eds. 1986)...............c0cceceeeeens

vii

TABLE OF AUTHORITIES — Continued

Craig Joyce, The Rise of the Supreme Court

Reporter: An Institutional Perspective on Mar-

shall Court Ascendancy, 83 Mich. L. Rev. 1291

Letter from Thomas Jefferson to Isaac MacPherson

(Aug. 13, 1813), in THE COMPLETE JEFFERSON

1011, 1015-16 (Saul K. Padover ed. 1943)................0++ 15

Letter from Thomas Jefferson to James Madison

(Dec. 20, 1787), in 12 THE PAPERS oF THOMAS

JEFFERSON 440 (Princeton 1955)..................sccccscseeeeereenee 17

Letter from Thomas Jefferson to James Madison

(July 31, 1788), in 138 THE PAPERS oF THOMAS

JEFFERSON 442-43 (Princeton 1956) .............cccccserseeeeeees 17

Letter from Thomas Jefferson to James Madison

(Aug. 28, 1789), in 15 THE PAPERS oF THOMAS

JEFFERSON 367-68 (Princeton 1958) .............ccccscesseeeeeeee 18

Letter from James Madison to Thomas Jefferson

(Oct. 17, 1788), in 14 THE PAPERS oF THOMAS

JEFFERSON 21 (Princeton 1958) ...............ccccccccsseeeeeeeeees 18

Letter from James Madison to George Washington

(Oct. 18, 1787), in 3 MAX FARRAND, THE RECORDS

OF THE FEDERAL CONVENTION OF 1787 129-30

A LETTER TO A MEMBER OF PARLIAMENT CONCERNING

THE BILL NOW DEPENDING IN THE HOUSE oFr CoM-

MONS (1735) (transcribed in Appendix A)............ 8, 29, 30

CHRISTINE P. MACLEOD, INVENTING THE INDUSTRIAL

REVOLUTION: THE ENGLISH PATENT SYSTEM 1660-

ee 15

James Madison, Aspects of Monopoly One Hundred

Years Ago, 128 HARPER’S MAG. 489 (1914)...............00++0 20

see

TABLE OF AUTHORITIES — Continued

Page

James Madison, The Federalist No. 43..............:.0seeeeeees 15

JAMES MADISON, NOTES OF DEBATES IN THE FEDERAL

CONVENTION OF 1787 (Ohio Univ. Press 1966)............... 14

JAMES MADISON, WRITINGS 756 (Jack N. Rakove ed.

SITET ....cccnnsesnuneasansnmnsendenuntsnnenenemnemnentesmnessnsennnsnestnentel 20, 29

Adam Mossoff, Rethinking the Development of

Patents: An Intellectual History, 1550-1800, 52

Ss |. | | ae 4

NATIONAL ARCHIVES, PAPERS OF THE CONTINENTAL

CONGRESS, No. 36, II, folios 113-114 (1783)..............00++ 12

Tyler T. Ochoa, Patent and Copyright Term Exten-

sion and the Constitution: A Historical Perspec-

tive, 49 J. Copyr. Soc’y USA 19 (2002)............... 22, 23, 24

LYMAN RAY PATTERSON, COPYRIGHT IN HISTORICAL

I CI cccccccsncccccssesensnntensesnentenannenssetnnsies 5, 6, 7

Malla Pollack, Purveyance and Power, or Over-

Priced Free Lunch: The Intellectual Property

Clause as an Ally of the Takings Clause in the

Public’s Control of Government, 30 Sw. U. L. Rev.

Remarks on the Amendments to the Federal

Constitution by the Rev. Nicholas Cottin, in 6

THE AMERICAN MUSEUM 303 (1789) ............ccccceseeeeeereeeee 20

MARK ROSE, AUTHORS AND OWNERS: THE INVENTION

OF COPYRIGHT (19938) ..........ccccccccscsssescerereseesees 6, 7, 8, 9, 10

FREDRICK SEATON SIEBERT, FREEDOM OF THE PRESS

IN ENGLAND 1476-1776: THE RISE AND DECLINE OF

GOVERNMENT CONTROLS (1952)..........ccccccccesecesseceesereennes 6

TABLE OF AUTHORITIES - Continued

EDWARD C. WALTERSCHEID, THE NATURE OF THE

INTELLECTUAL PROPERTY CLAUSE: A STUDY IN

HISTORICAL PERSPECTIVE (2002).......--0sceesssereeereeerees 16, 20

Noah Webster, Origin of the Copy-Right Laws in the

United States, in A COLLECTION OF PAPERS ON

POLITICAL, LITERARY AND MORAL SUBJECTS (1843) ........ 24

INTERESTS OF AMICI CURIAE

This brief amici curiae is submitted pursuant to Rule

37 of the Rules of this Court.’

Tyler T. Ochoa is a Professor and Co-Director of the

Center for Intellectual Property Law at Whittier Law

School. Mark Rose is a Professor of English at the Univer-

sity of California at Santa Barbara. Edward C. Walter-

scheid is a historian who has published two books and

numerous articles on the history of patent and copyright

law. The Organization of American Historians js the

nation's largest professional association dedicated to the

study of teaching American history. It is comprised of

approximately 11,000 individual and institutional mem-

bers and promotes preservation and access to historical

sources and scholarship. H-Net: Humanities and Social

Sciences OnLine is a scholarly society with over 100,000

members in more than 90 countries. H-Net currently

sponsors 140 free, electronic, interactive discussion forums

for scholars, teachers, advanced students and related

professionals.

Amici Ochoa, Rose and Walterscheid are scholars who

have studied the history and development of copyright and

patent law in England and the United States. All amici

are interested in assuring that Congressional enactments,

including the Copyright Term Extension Act of 1998

(CTEA), are consistent with, rather than in conflict with,

that history and development. To that end, amici present a

summary of their understanding of that history and

development to aid the Court in its deliberations.

* Counsel for both parties have consented to the filing of this brief,

and those consents have been filed with the Clerk of this Court. No

counsel for either party authored this brief in whole or in part, and no

person other than amici and its counsel made a monetary contribution

to the preparation and submission of this brief.

SUMMARY OF ARGUMENT

The British experience with patents and copyrights

prior to 1787 is instructive as to the context within which

the Framers drafted the Patent and Copyright Clause. The

1624 Statute of Monopolies, intended to curb royal abuse

of monopoly privileges, restricted patents for new inven-

tions to a specified term of years. The Stationers’ Com-

pany, a Crown-chartered guild of London booksellers,

continued to hold a monopoly on publishing, and to enforce

censorship laws, until 1695. During this time, individual

titles were treated as perpetual properties held by book-

sellers. In 1710, however, the Statute of Anne broke up

these monopolies by imposing strict term limits on

booksellers’ attempts to preserve their monopolies by

extending the copyright term. Failing to achieve their ends

through legislation, the booksellers sought to circumvent

Parliament by arguing that the Statute of Anne was only

supplementary to an underlying common-law right that

was perpetual; but this effort, too, was rebuffed when the

House of Lords determined in 1774 that the only basis for

In America, too, anti-monopoly sentiment was strong;

and when the Constitution was being drafted, the Fram-

ers, influenced by the British experience, specified that

patents and copyrights could only be granted “for limited

Times.” The Patent and Copyright Acts of 1790 copied the

limited terms of protection provided by the Statute of

Monopolies and the Statute of Anne. As in England,

advocates of perpetual copyright argued that statutory

common-law right. But following the precedent set by the

House of Lords, in 1834 the U.S. Supreme Court rejected

the common-law argument and perpetual copyright,

confirming the Framers’ view that patents and copyrights

should be strictly limited in duration in order to serve the

public interest.

ARGUMENT

The Constitutional provision granting Congress the

power “Io promote the Progress of Science and useful

Arts” by securing copyrights and patents “for limited

Times,” and the implementation of that power by the

First Congress in 1790, both reflect the Framers’ knowl-

edge of and reliance on the earlier British experience with

patents and copyrights.* Indeed, the 1790 Copyright Act is

directly modeled on the British Statute of Anne,* both in

its title (“An Act for the Encouragement of Learning”) and

in many of its provisions, notably its specification of the

basic term of copyright as 14 years.’ An understanding of

the prior British experience with patents and copyrights —

and specifically with the matter of the limited term - is

thus essential to understanding the Framers’ approach to

I. English Antecedents

A. The Statute of Monopolies

Around 1550, British monarchs began to grant

monopoly privileges by means of “letters patent,” in order

? U.S. Const., Art. I, §8, cl. 8.

* See Graham v. Deere, 383 U.S. 1, 5 (1966) (“The clause ... was

written against the backdrop of the practices — eventually curtailed by

the Statute of Monopolies — of the Crown in granting monopolies to

court favorites in goods or business which had long before been enjoyed

by the public.”).

* An Act for the Encouragement of Learning, by Vesting the Copies

of Printed Books in the Authors or Purchasers of such Copies, during

the Times therein mentioned, 8 Anne, ch. 19. (1710) (Eng.).

* 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, §1, ch. 15, 1 Stat. 124

(1790).

to encourage foreign tradesmen and manufacturers to

introduce their trades into England, and to train appren-

tices in their craft. During the second half of Elizabeth’s

reign, however, the Queen began to dispense monopoly

patents not for the introduction of new trades, but as

rewards for political patronage.’ Her 1598 grant of a

monopoly over the manufacture of playing cards led to the

landmark case of Darcy v. Allen,’ in which the judges of

the King’s Bench held that a patent granting a monopoly

over an existing trade, as opposed to a new trade or

invention, was invalid. Similar conditions were imposed on

the Crown’s use of monopoly patents in The Clothworkers

of Ipswich,” in which it was held:

(I}f a man hath brought in a new invention and a

new trade within the kingdom, ... or if a man

hath made a new discovery of any thing, . . . [the

King] may grant by charter unto him, that he

only shall use such a trade or trafique for a cer-

tain time... .[B)ut when that patent is expired,

the King cannot make a new grant thereof; for

when the trade is become common, and others

have been bound apprentices in the same trade,

there is no reason that such should be forbidden

to use it.”

Despite these rulings, King James I continued to abuse

the royal privilege of granting monopolies.” This led to the

* See Adam Mossoff, Rethinking the Development of Patents: An

Intellectual History, 1550-1800, 52 Hast. L.J. 1255, 1259-64 (2001).

" Id. at 1264-67; Malla Pollack, Purveyance and Power, or Over-

Priced Free Lunch: The Intellectual Property Clause as an Ally of the

Takings Clause in the Public’s Control of Government, 30 Sw. U. L. Rev.

1, 40-54 (2000).

* 74 Eng. Rep. 1131 (KB. 1603).

* 78 Eng. Rep. 147 (KB. 1615).

* Id. at 148.

" Pollack, supra note 7, at 65-70.

enactment in 1624 of the Statute of Monopolies,” which

declared broadly that all monopoly grants were invalid.

The Statute had a number of exceptions, however, includ-

ing one for new inventions “for the Term of fourteen Years

or under.” The Statute also contained an exception for

existing monopoly patents for inventors, “for the Term of

one and twenty Years only, to be accounted from the Date

of the first Letters Patents and Grants thereof made.””

This was a transitional measure, in effect imposing a term

limit on those patents which had been granted for longer

terms or which had been unlimited in time.

B. The Statute of Anne

The Statute of Anne was enacted in 1710 in response

to petitions from the Stationers’ Company, a Crown-

chartered guild of booksellers and printers which held a

near monopoly on printing and publishing in England

until 1695.

Prior to 1710, the Stationers maintained a system

whereby guild members could register their “copies,” as

publishing rights were called, with the guild. Once secured

by registration, the right to print a book continued forever,

and might be bequeathed or sold to other stationers.”

These rights were available only to guild members -

booksellers and printers, not authors — and thus were not

properties that might be freely exchanged in a public

market. Under the terms of the Licensing Act of 1662 and

* 21 Jac. I, ch. 3 (1624) (Eng.).

* Id. $6.

* Id. $5.

“ See LYMAN Ray PATTERSON, COPYRIGHT IN HISTORICAL PERSPEC-

TIVE 47-49 (1968).

its predecessors, no book could be printed in England

unless it had first been registered with the Stationers."

In 1695, the Licensing Act of 1662 expired, throwing

the book trade into disarray. The Stationers at first sought

the revival of licensing,” but when that attempt failed,”

they petitioned Parliament for an act that would re-

institute their traditional guild system by confirming the

Stationers’ Company copyrights.” As introduced, the

proposed legislation did not limit the duration of the

Stationers’ copyrights.”

Parliament was sympathetic to the booksellers’ claims

about disorders in the trade, but it was not sympathetic to

the monopolizing practices whereby the booksellers had

turned the literary classics into perpetual private estates.

Accordingly, the Statute of Anne acted in two ways to

break the booksellers’ monopolies. First, the Act estab-

lished authors as the original proprietors of copyrights.

Thus, for the first time, one no longer had to be a member

of the Stationers’ Company to own copyrights.” Second,

the proposed legislation was amended to impose term

* 14 Car. 2, ch. 33 (1662) (Eng.). This requirement was used by the

Crown as an instrument of censorship. See PATTERSON, supra note 15,

at 114-142.

" See PATTERSON, supra note 15, at 138-42. One of the House of

Commons’ principal objections to renewing the Licensing Act was the

monopoly enjoyed by the Stationers’ Company. Jd. at 139-40.

* It was during this period that party politics first emerged, and

neither party trusted the other with the power of press censorship. See

FREDRICK SEATON SIEBERT, FREEDOM OF THE PRESS IN ENGLAND 1476-

1776: THE RISE AND DECLINE OF GOVERNMENT CONTROLS 260-63 (1952).

“ See MARK ROSE, AUTHORS AND OWNERS: THE INVENTION OF

* Id. at 43.

PATTERSON, supra note 15, at 147; ROSE, supra note 19, at 47-48.

limits modeled on those in the Statute of Monopolies.” The

term of copyright in new works was limited to 14 years,

with the possibility of renewal for a second 14-year term if

the author were still living at the end of the first.” For

books that were already in print, including such valuable

old literary properties as the works of Shakespeare and

Milton, the act provided a single 21-year term.” Like the

parallel provision in the Statute of Monopolies, this was a

transitional provision. The stationers had always treated

their guild publishing rights as perpetual; thus, the effect

of the 21-year provision was to limit rights that previously

had been regarded as unlimited.

The great London booksellers could accept some of the

novel provisions of the Act, but not the limited terms of

protectiou, which struck at the heart of the Stationers’

Company system. For a time they simply ignored the term

limit provision and continued to buy and sell copyrights as

if they were still perpetual. Then in 1735, when they

believed the political climate favored their cause, the

booksellers asked Parliament to change the term of

booksellers argued that the proposed change would

improve the author’s position and foster learning and

knowledge; but in fact the consequences for living authors

would have been minimal. The most significant effect

would have been to extend the statutory copyright on

™ PATTERSON, supra note 15, at 144, 147-150; Rose, supra note 19,

at 43-45.

* 8 Anne ch. 19 (1710) (Eng.).

* Id.

* Rose, supra note 19, at 52-53. This bill actually reduced the

twenty-eight years, to a single twenty-one-year term. In effect, it traded

term on new books for extended protection of valuable old

books.

classics such as Shakespeare and Milton until 1756. The

booksellers’ purposes in requesting the new term did not

go unremarked at the time. As one anonymous pamphle-

teer said:

I see no Reason for granting a further Term now,

which will not hold as well for granting it again

and again, as often as the Old ones Expire; so

that should this Bill pass, it will in Effect be es-

tablishing a perpetual Monopoly, a Thing deserv-

edly odious in the Eye of the Law; it will be a

great Cramp to Trade, a Discouragement to

Learning, no Benefit to the Authors, but a gen-

eral Tax on the Publick; and all this only to _in-

crease the private Gain of the Booksellers .

Not surprisingly, the booksellers’ bill failed in the House of

Lords, which was particularly hostile to anything that

smacked of monopoly.” Two years later in 1737, when the

booksellers again sought a term extension, a second bill

was also defeated by the House of Lords.”

C. Donaldson v. Beckett

In the 1730s and 1740s, as titles began entering the

public domain, a group of Scottish booksellers began

printing their own editions of out-of-copyright titles.

Despite the Statute of Anne, the great London booksellers

regarded these reprints as piracies. They argued that

statutory law. Labor, they maintained, gave authors a

™ A LETTER TO A MEMBER OF PARLIAMENT CONCERNING THE BILL

NOW DEPENDING IN THE HOUSE OF COMMONS (1735). A transcript of this

pamphlet is attached as Appendix A.

” ROSE, supra note 19, at 56. The bill died when the second

reading was postponed. 24 H.L. Jour. 550 (1735).

” ROSE, supra note 19, at 56 n.3. Again, the Lords allowed the bill

to die at the end of the term. 25 H.L. Jour. 91, 99, 106 & 111-12 (1737).

natural right of property in their works, a right that lasted

forever just like a right in a parcel of land or a house; and

this right passed undiminished to the booksellers when

they purchased literary works from authors.” The Statute

of Anne merely provided supplemental remedies to an

underlying common-law right that was perpetual; there-

fore all reprints of fairly purchased copyrights were illegal,

no matter how old the work in question.

Starting in the 1740s, the booksellers pressed their

common-law argument in a series of cases. No decision

was reached, however, until 1769, when in Millar v.

Taylor” the court of King’s Bench ruled by a three-to-one

vote that there was a common-law right and that literary

property was perpetual. As an English court, however, the

jurisdiction of King’s Bench did not extend to Scotland,

where the reprint industry continued to thrive. In 1773, in

Hinton v. Donaldson,” the Scottish Court of Sessions

reached the opposite decision, determining that in Scot-

land there was no such thing as a common-law right of

literary property. Finally, in the landmark decision of

Donaldson v. Beckett,” the House of Lords, acting as the

Supreme Court of Great Britain, decisively rejected the

claim of perpetual common-law copyright and established

that the only basis for copyright was the Statute of Anne.

The historical record left the basis for the Lords’

decision somewhat unclear. In 1774 the House of Lords

still decided cases by a general vote of the peers, lawyers

* ROSE, supra note 19, at 4-8 & 67-91.

” 4 Burr. 2303, 98 Eng. Rep. 201 (K_B. 1769).

" See JAMES BOSWELL, THE DECISION OF THE COURT OF SESSION

UPON THE QUESTION OF LITERARY PROPERTY IN THE CAUSE OF HINTON

AGAINST DONALDSON (Edinburgh 1774), reprinted in THE LITERARY

PROPERTY DEBATE: Six TRACTS 1764-1774 (Stephen Parks, ed. 1975).

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

and laymen alike. In important cases such as Donaldson,

the twelve common-law judges of the realm (the judges of

King’s Bench, Common Pleas, and the Exchequer) would

be summoned to the House to give their advice on matters

of law, after which the peers would debate the issue and

vote. The judges were closely divided in their advisory

opinions in Donaldson, and the most widely cited report of

the case indicates that while seven of the eleven judges

believed there was a common-law copyright that survived

publication, a bare majority of six believed that the

common-law right had been divested by the Statute of

Anne.” Contemporary accounts of the subsequent debate,

however, indicate that the claim of common-law copyright

was vigorously disputed, and that the peers rejected

perpetual copyright by a strong majority.”

The great booksellers of London regarded Donaldson

as a disaster, claiming with some justification that in an

instant hundreds of thousands of pounds worth of literary

properties had been annihilated.” But for the publishing

trade as a whole and for the public at large, which was

now able to buy cheap reprints of classic works, the

™ Id. In fact, historians now believe that one vote was incorrectly

recorded, and that the judges had voted six-to-five that a common-law

98-99, 154-58; Howard B. Abrams, The Historic Foundation of

American Copyright Law: Exploding the Myth of Common-Law

advocates of common-law copyright to claim that the peers had simply

followed the vote of the judges, which was not the case. Jd. at 1169-70;

ROSE, supra note 19, at 107-10.

“ See ROSE, supra note 19, at 97-103. Although it is unclear

whether a forma) division of the house occurred, id. at 102, an often-

cited account published in 1813 reports that the vote was 22-11 against

perpetual] copyright. Donaldson v. Beckett, 17 Pari. Hist. Eng. 953, 992-

1003 (H.L. 1774). See Abrams, supra note 33, at 1159-64.

™ See ROSE, supra note 19, at 97.

decision had positive effects. It also had positive effects on

authors. Prior to Donaldson, the most valuable properties

were the old classics that the booksellers could count on as

perennials. The Donaldson decision meant that now

publishers had to pay greater attention to living authors

in order to replenish their continually expiring stock of

copyrights.” In several ways, then, Donaldson contributed

to the statutory goal of “the encouragement of learning.”

As a result of the Lords’ decision, classic books became

more readily accessible, and living authors acquired new

incentives to write.

Il. The Patent and Copyright Clause of the

Constitution

The history of copyright in the United States bears

many similarities to the history of copyright in England

prior to the Revolution. In America, as in England,

proponents of the natural right view of copyright repeat-

edly sought a perpetual copyright; in America, as in

England, the term of copyright was instead strictly limited

in order to serve the public interest; and in America, as in

England, it took an authoritative decision by the highest

court in the land to firmly establish the utilitarian

rationale as the dominant rationale for copyright.

A. State Copyright and Patent Laws under

the Articles of Confederation

In March 1783, in response to several authors’

petitions, the Continental Congress appointed a committee

“ On the impact of the Donaldson decision, see Terry Belanger,

Publishers and Writers in Eighteenth-Century England, in BOOKS AND

ed. 1982).

“to consider the most proper means of cherishing genius

and useful arts throughout the United States by securing

to the authors or publishers of new books their property in

such works.” The committee reported that it was “per-

suaded that nothing is more properly a man’s own than

the fruit of his study, and that the protection and security

of literary property would greatly tend to encourage

genius, to promote useful discoveries and to the general

extension of arts and commerce.™ Under the Articles of

Confederation, the Continental Congress had no authority

to issue copyrights; so on May 2, 1783, it passed a resolu-

tion encouraging the States

to secure to the authors or publishers of any new

books not hitherto printed ... the copy right of

such books for a certain time not less than four-

teen years from the first publication; and to se-

cure to the said authors, if they shall survive the

term first mentioned, ... the copy right of such

books for another term of time not less than four-

teen years.”

Three states had already enacted copyright statutes

earlier that year; and within three years all of the remain-

ing states except Delaware had followed suit.“ As had the

Continental Congress’ resolution, the preambles of several

” NATIONAL ARCHIVES, PAPERS OF THE CONTINENTAL CONGRESS, No.

36, Il, folios 113-114, reprinted in Bruce W. BUGBEE, THE GENESIS OF

AMERICAN PATENT AND COPYRIGHT LAW 112 (1967). The Committee

consisted of Hugh Williamson of North Carolina, Ralph Izard of South

Carolina, and James Madison of Virginia. See 24 JOURNALS OF THE

CONTINENTAL CONGRESS 211n (March 24, 1783).

™ 24 JOURNALS OF THE CONTINENTAL CONGRESS 326 (May 2, 1783).

In 80 stating, this report set forth both natural right and utilitarian

justifications for copyright.

” Resolution of May 2, 1783, reprinted in COPYRIGHT ENACTMENTS

OF THE UNITED STATES 1783-1906 11 (2d ed. 1906).

“ See COPYRIGHT ENACTMENTS, supra note 39, at 11-31.

of these statutes set forth both natural right and utilitar-

ian justifications for copyright. Significantly, however, all

of them were limited to a specified term of years. Seven of

the States followed the Statute of Anne and the Continen-

tal Congress’ resolution in providing two 14-year terms.”

The five remaining States granted copyrights for single

terms of 14,° 20,“ and 21“ years’ duration, with no right of

renewal.

South Carolina’s copyright statute also included the

ouly general state patent law enacted prior to the Consti-

tution. It provided “that the inventors of useful machines

shall have a like exclusive privilege of making or vending

their machines for the like term of fourteen years, under

the same privileges and restrictions hereby granted to,

and imposed on, the authors of books."” Throughout this

time period, however, the states continued to enact

individual patents.“ The terms of these patents were

sometimes as short as five years; but the English fourteen-

year term became “almost universal among state patents

issued in 1786 and thereafter.”

“ See Act of Jan. 29, 1783 (Conn.); Act of Apr. 21, 1783 (Md.); Act of

May 27, 1783 (N.J.); Act of Mar. 15, 1784 (Pa.); Act of Mar. 26, 1784

(S.C.); Act of Feb. 3, 1786 (Ga.); Act of Apr. 29, 1786 (N.Y.), in Copy-

RIGHT ENACTMENTS at 11-13, 15-17, 20-24, 27-31.

* Act of Nov. 18, 1785 (N.C.), in CopyRIGHT ENACTMENTS at 25-27.

* Act of Nov. 7, 1783 (N.H.), in COPYRIGHT ENACTMENTS at 18.

“ See Act of Mar. 17, 1783 (Mass.); Act of Dec. 1783 (R.I.); Act of

Oct. 1785 (Va.), in COPYRIGHT ENACTMENTS at 14-15, 19, 24-25.

“ Act of Mar. 26, 1784 (S.C.), in CopyriGHT ENACTMENTS, at 23.

“ See generally BUGBEE, supra note 37, at 84-103.

“ Id.a 101.

B. The Constitutional Convention and

Ratification Debates

At the Constitutional Convention of 1787, both James

Madison of Virginia and Charles Pinckney of South

Carolina submitted proposals to give Congress the power

to grant copyrights. Madison’s proposal read: “To secure to

literary authors their copy rights for a limited time.”

Pinckney’s proposal read: “To secure to Authors exclusive

rights for a certain time.” Pinckney also proposed that

Congress be given the power “to grant patents for useful

inventions.” These proposals were referred to the

Committee on Detail. Later, provisions which had not been

acted upon were referred to the Committee of Eleven (of

which Madison was a member),” which drafted the Patent

and Copyright Clause as it exists today, and recommended

its adoption.” The clause was unanimously approved by

the delegates with no debate.”

The language cf the Clause is ambiguous when it

speaks of “securing” exclusive rights. For the next 47

years, the meaning of this term would be debated, with

proponents of perpetual copyright arguing that “securing”

meant the affirmation of pre-existing rights, and propo-

nents of the utilitarian view arguing that “securing”

meant nothing more than “to obtain” or “to provide.” In

Wheaton v. Peters," this Court held the utilitarian view

“ JAMES MADISON, NOTES OF DEBATES IN THE FEDERAL CONVENTION

OF 1787 (Ohio Univ. Press 1966) at 477 (Aug. 18, 1787).

* Id. at 478.

* Id.

" Id. at 569 (Aug. 31, 1787).

“ Id. at 580 (Sept. 5, 1787).

" Id. at 581 (Sept. 5, 1787).

“ 33 U.S. (8 Pet.) 591 (1834). See Section III.D., below.

was correct, noting that the term “securing” applies to

both “authors” and “inventors,” and that in England, it

had always been the case that inventors did not have a

natural right in their inventions.”

In the ratification debates, the Clause was rarely

mentioned. The most significant reference came in the

Federalist No. 43, authored by James Madison:

The utility of this power will scarcely be ques-

tioned. The copy right of authors has been sol-

emnly adjudged in Great Britain to be a right at

Common Law. The right to useful inventions

seems with equal reason to belong to the inven-

tors. The public good coincides in both cases with

the claims of individuals. The States cannot

separately make effectual provision for either of

the cases, and most of them have anticipated the

decision of this point by laws passed at the in-

stance of Congress.”

In light of the decision in Donaldson v. Beckett,” Madison's

statement that copyright had been adjudged to be a

common-law right is problematic. It has been suggested

that Madison was relying on the first American edition of

Blackstone’s Commentaries, which reported the decision in

Millar v. Taylor, but not its subsequent overruling in

“ Id. at 661. See also CHRISTINE P. MACLEOD, INVENTING THE

INDUSTRIAL REVOLUTION: THE ENGLISH PATENT SYSTEM 1660-1800 198

(1988) (in Donaldson, “the lack of a natural right in mechanical

inventions provided a fixed pole of the debate.”) (emphasis in original).

In a letter to Isaac MacPherson, Thomas Jefferson set forth a famous

critique of the natural rights view with regard to inventions. See Letter

of Aug. 13, 1813, in THE COMPLETE JEFFERSON 1011, 1015-16 (Saul K.

Padover ed. 1943).

“ James Madison, The Federalist No. 43 at 279 (Modern Library

ed. 1941).

" See Section I.C., above.

Donaldson.” It has also been suggested that Madison was

relying on Burrow’s report of the Donaldson case, in which

it was reported that the advisory judges were of the

opinion that copyright was a common-law right, but one

that had been divested by the Statute of Anne.” It is also

possible that Madison was referring only to the common-

law right of first publication; or that he was simply trying

to win the support of those who believed that copyright

was a natural right.” In any case, Madison later took the

position that the English common law was deliberately not

made applicable in the United States by the new Constitu-

tion.” This seems to preclude any argument that Madison

believed the Clause was “securing” a pre-existing right.”

What is clear from the Federalist is that Madison

believed that the state copyright laws were ineffectual.

This point was also made during the ratification debates

by Thomas McKean of Pennsylvania,” and future Justice

“ See 2 SiR WILLIAM BLACKSTONE, COMMENTARIES ON THE LAWS OF

ENGLAND 405-07 (Philadelphia 1771). Blackstone qualified his report of

Millar v. Taylor, however, stating that “[njeither with us in England

hath there been any fina] determination upon the right of authors at

the common law.” Jd. at 406-07. It should be noted that Blackstone was

a prominent advocate of common-law copyright, and that he argued the

booksellers’ cause in both Tonson v. Collins (1760) and Millar v. Taylor.

“ See Section I.C., above. The fourth volume of Burrow’s reports

was published in 1776, and citations to it are found in early Pennsyl-

vania cases. See, e.g., Respublica v. Doan, 1 U.S. (1 Dall.) 86, 90-91 (Pa.

1784); Nathan v. Virginia, 1 U.S. (1 Dall.) 77, 78 (Pa. C.P. 1781).

” See Abrams, supra note 33, at 1177-78.

" See Letter from James Madison to George Washington (Oct. 18,

1787), in 3 MAX FARRAND, THE RECORDS OF THE FEDERAL CONVENTION

OF 1787 129-30 (1911).

“ For a more extensive analysis, see EDWARD C. WALTERSCHEID,

THE NATURE OF THE INTELLECTUAL PROPERTY CLAUSE: A STUDY IN

HISTORICAL PERSPECTIVE 201-238 (2002).

CONSTITUTION 415 (Merrill Jensen, ed. 1976).

James Iredell of North Carolina.“ Iredell also set forth

the utilitarian justification for copyright, saying, “such

encouragement may give birth to many excellent writings

which would otherwise have never appeared.”

The stipulation that patent and copyright protection

be granted only “for limited Times,” only to “authors” and

“inventors,” and only “To promote the Progress of Science

and useful Arts,” appears to have been aimed at prevent-

ing the kinds of abuses that had prompted the Statute of

Monopolies 150 years earlier. It is clear that many of the

Framers were concerned with restraining monopolies of all

kinds. This concern was most clearly expressed in corre-

spondence between Thomas Jefferson and James Madison

concerning the proposed Constitution.

After receiving a draft of the Constitution, Jefferson

wrote to Madison, saying: “I will now add what I do not

like. First, the omission of a bill of rights providing clearly

and without the aid of sophisms for . . . restriction against

monopolies.™ Jefferson amplified his views in a letter to

Madison dated July 31, 1788:

[I]t is better to ... abolish . . . Monopolies, in all

cases, than not to do it in any.... The saying

there shall be no monopolies lessens the incite-

ments to ingenuity, which is spurred on by the

hope of a monopoly for a limited time, as of 14

years; but the benefit even of limited monopolies

is too doubtful to be opposed to that of their gen-

eral suppression.”

“ See 16 DOCUMENTARY HISTORY, supra note 63, at 386 note (c).

“ Id. at 382.

“ Letter from Jefferson to Madison (Dec. 20, 1787), in 12 THE

PAPERS OF THOMAS JEFFERSON 440 (Princeton 1955).

“ Letter from Jefferson to Madison (July 31, 1788), in 13 THE

PAPERS OF THOMAS JEFFERSON 442-43 (Princeton 1956).

Madison replied in a letter dated October 17, 1788:

With regard to Monopolies they are justly classed

among the greatest nuisances in Government.

But is it clear that as encouragements to literary

works and ingenious discoveries, they are not too

valuable to be wholly renounced? Would it not

suffice to reserve in all cases a right to the public

to abolish the privilege at a price to be specified

in the grant of it”

Madison’s explanation is revealing in several respects.

First, it endorses the utilitarian justification for copyrights

and patents. Second, in using the words “privilege” and

“grant,” it indicates that patents and copyrights are

bestowed by the government, rather than merely confirm-

ing existing rights. Third, in recommending that the

public reserve the right to buy out the author or inventor

during the term of the grant, Madison suggests that even

the 14-year terms with which he was familiar might work

a hardship upon the public in certain circumstances.

Jefferson was apparently persuaded by Madison’s

argument; but he remained concerned that the power to

grant exclusive rights could be abused. Upon receiving

Madison’s draft of the Bill of Rights, Jefferson wrote:

I like it as far as it goes; but I should have been

for going further. For instance, the following al-

terations and additions would have pleased

me. ...Art. 9. Monopolies may be allowed to per-

sons for their own productions in literature and

their own inventions in the arts for a term not

exceeding __ years but for no longer term and for

no other purpose.”

“ Letter from Madison to Jefferson (Oct. 17, 1788), in 14 THE

PAPERS OF THOMAS JEFFERSON 21 (Princeton 1958).

“ Letter from Jefferson to Madison (Aug. 28, 1789), in 15 THE

PAPERS OF THOMAS JEFFERSON 367-68 (Princeton 1958).

Jefferson’s concerns were widely shared by others at the

time. George Mason, a delegate to the Constitutional

Convention from Virginia, refused to sign the proposed

Constitution, in part because “[uJnder their own construc-

tion of the general clause at the end of the enumerated

powers, the Congress may grant monopolies in trade and

commerce.”” Elbridge Gerry of Massachusetts refused to

sign for similar reasors.” In New York, “A Son of Liberty”

wrote that “Monopolies in trade [will be] granted to the

favorites of government, by which the spirit of adventure

will be destroyed, and the citizens subjected to the

extortion of those companies who will have an exclusive

right.”” In addition, the ratifying conventions of four

states requested an amendment expressly restricting

Congress’ power to grant “exclusive advantages of com-

merce.”

Proponents of the Constitution responded to these

concerns not by denying that monopolies were generally

harmful, but by emphasizing the utilitarian justification

for copyrights and patents, and the limitations placed on

” 8 DOCUMENTARY HISTORY, supra note 63, at 45.

" 4 DOCUMENTARY HISTORY, supra note 63, at 14.

™ 13 DOCUMENTARY HISTORY, supra note 63, at 482. See also 4

DOCUMENTARY HISTORY, supra note 63, at 428 (“The unlimited right to

regulate trade, includes the right of granting exclusive charters... . We

hardly find a country in Europe which has not felt the ill effects of such

a power.... [In England,) Individuals have been enriched, but the

country at large has been hurt.”) (“Agrippa”).

™ 2 THE DOCUMENTARY HISTORY OF THE CONSTITUTION OF THE

UNITED STATES OF AMERICA 1786-1870 (State Dept. 1894) at 95

(Massachusetts), 142 (New Hampshire), 198 (New York) 274 (North

Carolina).

them by the Clause.“ Expressions of anti-monopoly

sentiment were sometimes qualified in this regard.”

Many years later, in a manuscript published after his

death, Madison summed up his views as follows:

Monopolies though in certain cases useful ought

to be granted with caution, and guarded with

strictness against abuse. The Constitution of the

U.S. has limited them to two cases, the authors

of Books, and of useful inventions, in both which

they are considered as a compensation for a

benefit actually gained to the community as a

purchase of property which the owner otherwise

might withhold from public use. There can be no

just objection to a temporary monopoly in these

cases; but it ought to be temporary, because un-

der that limitation a sufficient recompense and

encouragement may be given... .

Thus, the Clause appears to have been designed not so

much to limit the means by which Congress could promote

the progress of science and useful arts, but rather to limit

“ See Remarks on the Amendments to the Federal Constitution by

the Rev. Nicholas Cottin, in 6 THE AMERICAN MUSEUM 303 (1789),

reprinted in Walterscheid, supra note 62, at 10.

™ James Kent of New York wrote to Nathaniel Lawrence, a

delegate to the New York ratifying convention: “I have just been reading

Smith on the Wealth of Nations & he has taught me to look with an

unfavorable eye on monopolies — But a monopoly of the mental kind I

take to be laudable and an exception to the rule.” 14 DOCUMENTARY

HISTORY, supra note 63, at 76. And in Pennsylvania, “Centinel” wrote

“that monopolies in trade or arts, other than to authors of books or

inventors of useful arts, ought not to be suffered.” 13 DOCUMENTARY

HISTORY, supra note 63, at 466.

™ JAMES MADISON, WRITINGS 756 (Jack N. Rakove ed. 1999). This

essay was published posthumously in 1914. See James Madison,

Aspects of Monopoly One Hundred Years Ago, 128 HARPER’S MAG. 489,

490 (1914).

the duration and purposes for which exclusive rights could

be granted.

III. Statutory and Judicial Interpretation

A. The Copyright and Patent Acts of 1790

The Copyright Act of 1790 granted copyrights for a

term of 14 years, with a right of renewal for another 14-

year term if the author survived to the end of the first

term.” The Act covered “any map, chart, book or books

‘already printed within these United States,” as well as

“any map, chart, book or books already made and com-

posed, but not printed or published, or that shall hereafter

be made and composed.”” Except for the addition of maps

and charts, this language was copied almost verbatim

from the Statute of Anne.

Granting federal copyrights to previously published

works was consistent with the Statute of Anne and with

the utilitarian justification for copyright. Just as the

Statute of Anne had provided a term of 21 years for

previously published works, in order to limit previously

unlimited guild rights and to ease the transition from a

state-licensed monopoly to a free market,” the Copyright

Act of 1790 likewise may have provided protection to

previously published works in order to limit the term of

any claims based on state or common law, and to ease the

transition from uncertain and largely ineffective state

initial 14-year term was shorter than the term provided by

four of the states;” but the availability of a renewal term

ensured that no author would be deprived of the term that

” An Act for the encouragement of learning, §1, ch. 15, 1 Stat. 124

(1790).

” Id.

” See Section I.B., above.

” See Section I1.A., above.

he or she had been promised under previous state legisla-

tion.

The Patent Act of 1790 permitted patents to be

granted “for any term not exceeding fourteen years.” No

provision was made for the extension or renewal of a

patent.” Unlike the Copyright Act of 1790, the Patent Act

of 1790 did not expressly address the issue of retroactivity;

but the Patent Act of 1793 expressly required that an

inventor relinquish any state patent rights as a condition

of obtaining a federal patent.”

B. Private Patent and Copyright Laws

In 1808, Congress extended by private act the term of

a patent owned by inventor Oliver Evans.“ Evans’ patent

had been held invalid because the face of the document did

not recite the allegations made in the patent application.”

The form of the document, however, was drafted by the

Secretary of State, not by Evans. James Madison, then

Secretary of State, reported that “a compliance with [the

" An Act to promote the progress of useful Arts, §1, ch. 7, 1 Stat.

110 (1790).

“ Because of this omission, many inventors petitioned Congress for

extension or renewal of their individual patents. See Section III.B.,

below. In 1832, Congress enacted a statute specifying the conditions

under which it would consider such petitions. Act of July 3, 1832, §2, ch.

162, 4 Stat. 559. In 1836 this was replaced with an administrative

procedure by which a single extension of seven years could be granted.

Patent Act of 1836, §18, ch. 357, 5 Stat. 124-25. This provision was

repealed in 1861, when the basic patent term was increased from 14

years to 17 years. Act of March 2, 1861, ch. 88, §16, 12 Stat. 249. See

Tyler T. Ochoa, Patent and Copyright Term Extension and the

Constitution: A Historical Perspective, 49 J. Copyr. Soc’y USA 19, 52-54

(2002).

" Patent Act of 1793, §7, ch. 11, 1 Stat. 322.

“ An Act for the relief of Oliver Evans, ch. 13, 6 Stat. 70 (1808).

“ Evans v. Chambers, 8 F. Cas. 837 (C.C.D. Pa. 1807) (No. 4,555).

decision] would admit the invalidity of all the patents

issued in the same form since the commencement of the

Government.™ As a result, Congress agreed to extend the

term of Evans’ patent to compensate him for the adminis-

trative error. While this action indicates that the Congress

of 1808 believed it could extend the term of a patent for

equitable reasons,” it is also consistent with the utilitar-

ian rationale. Evans had relied on the benefit of a 14-year

patent term, and he was deprived of a portion of that term

not through any fault of his own, but as a result of an

administrative error. Granting an extension restored to

Evans the benefit of his patent bargain.” Similar equitable

adjustments of individual patent terms have been granted

in recent years for reasons beyond the inventor’s control,

such as war, judicial corruption, and delay in FDA ap-

proval.”

In 1828, Congress extended by private act the

compiled by James Rowlett.” Rowlett had invested a great

deal of time and money in ensuring the accuracy of his

tables, and he sought an extension to recover some of the

“ See AMERICAN STATE PAPERS, No. 231, 1 Misc. 646 (1807).

” Congress also extended the terms of nine more patents between

1809 and 1836. See Bloomer v. McQuewan, 55 U.S. (14 How.) 539, 543

(1852) (listing extensions). It should be noted, however, that by 1808

only one delegate to the 1787 Constitutional Convention, Nicholas

Gilman of New Hampshire, remained in Congress; and that of the nine

additional extensions, only one was enacted prior to Gilman's leaving

Congress in 1814.

“ In fact, however, Congress was more generous than necessary,

granting Evans a full 14-year extension. For a more extensive analysis,

see Ochoa, supra note 82, at 58-72, 97-109.

” See Ochoa, supra note 82, at 72-82.

” An Act to continue a copy-right to John Rowlett, ch. 145, 6 Stat.

389 (1828).

money he had lost on the first edition.” At that time, the

investment of time and money was at least arguably an

acceptable basis for copyright protection; but now that this

Court has firmly rejected the “sweat of the brow” doctrine

as inconsistent with the Patent and Copyright Clause, the

basis of Rowlett’s claim to an extension has been eroded.”

Since then, Congress has extended a copyright by private

act only once, and that extension was held invalid.”

C. The Copyright Act of 1831

In 1826, Noah Webster wrote to Daniel Webster,

seeking his assistance in securing a perpetual copyright,

saying “an author has, by common law, or natural justice,

the sole and permanent right to make profit by his own

labor.“ Daniel Webster replied that he would forward the

letter to the House Judiciary Committee, but he added “I

confess frankly that I see, or think I see, objections to

make it perpetual. At the same time I am willing to extend

it further than at present.”

Noah Webster’s son-in-law, William W. Elisworth, was

elected to Congress in 1828 and was appointed to the

Judiciary Committee. Webster “applied to him to make

efforts to procure the enactment of a new copy-right law.”

" See Ochoa, supra note 82, at 46-48.

" Feist Publications, Inc. v. Rural Telephone Service Co., 499 U.S.

340 (1991); see Ochoa, supra note 82, at 50-51.

" Priv. L. No. 92-60, 85 Stat. 857 (1971); United Christian

Scientists v. Christian Science Board of Directors, 829 F.2d 1152 (D.C.

Cir. 1987).

“ Noah Webster, Origin of the Copy-Right Laws in the United

States, in A COLLECTION OF PAPERS ON POLITICAL, LITERARY AND MORAL

SUBJECTS 176 (1843) (emphasis in original).

™ Id. at 176-77.

™ Id. at 177.

—— —oe oee -

The Report prepared by Ellsworth for the Judiciary

Committee shows the influence of Webster’s views. It

states: “[uJpon the first principles of proprietorship in

property, an author has an exclusive and perpetual right,

in preference to any other, to the fruits of his labor.” It

also asserts (erroneously) that:

In England, the right of an author to the exclu-

sive and perpetual profits of his book was en-

joyed, and never questioned, until it was decided

in Parliament, by a small vote . . . that the stat-

ute of Ann had abridged the common law right,

which, it was conceded, had existed, instead of

merely guarding and securing it by forfeitures for

a limited time, as was obviously intended.”™

Despite this endorsement of perpetual copyright as a

natural right, the bill provided only for an initial term of

28 years and a renewal term of 14 years,” the term of

which was extended to all subsisting copyrights.”

When the bill was debated in Congress, Rep. Michael

Hoffman of New York complained that it would “establish

a monopoly of which authors alone would reap the

advantage, to the public detriment.”” He noted that

patents were limited to 14 years, and argued:

So it should be ... with the author or publisher.

There was an implied contract between them and

the public. They, in virtue of their copyright, sold

their books to the latter at an exorbitant rate;

” 7 GaLes & Seton's REGISTER OF DEBATES IN CONGRESS cxx (Dec.

17, 1830).

" Id. at cxix.

” Copyright Act of 1831, §§1-2, ch. 16, 4 Stat. 436.

™ Id. $16, 4 Stat. 439.

™ 7 GaLes & SETON’s REGISTER OF DEBATES at 423 (Jan. 6, 1831).

and the latter ... had the right to avail them-

selves of the work, when the copyright expired.”

Ellsworth replied, arguing that the bill would “enhance

the literary character of the country, by holding forth to

men of learning and genius additional inducements to

devote their time and talents to literature and the fine

arts.” Ellsworth did not explain how this justified the

retroactive extension; but Rep. Gulian C. Verplanck of

New York maintained that “[tJhere was no contract; the

work of an author was the result of his own labor. It was a

right of property existing before the law of copyrights had

been made. That statute did not give the right, it only

secured it.”

This record reveals that the 1831 term extension was

based on the view that copyright was a natural right of the

author. Three years later, this view was rejected by the

U.S. Supreme Court in Wheaton v. Peters.

D. Wheaton v. Peters

In 1827, Richard Peters succeeded Henry Wheaton as

the reporter of decisions for the U.S. Supreme Court.™ In

1829, Peters began to publish “Condensed Reports” of the

cases that had been decided prior to his appointment.”

™ Id.

'* Id. at 424. Verplanck also stated erroneously that in “the great

case of literary property ... the judges were unanimously of opinion

that an author had an inherent right of property in nis works.” Jd.

* It should be noted that by 1831, not a single member of the

Constitutional Convention or the First Congress remained in Congress.

"* See Craig Joyce, The Rise of the Supreme Court Reporter: An

Institutional Perspective on Marshall Court Ascendancy, 83 Mich. L.

Rev. 1291, 1351-58 (1985).

“" Id. at 1362-70.

-- — An —— ee a ee ——

Wheaton and his publisher sued, alleging that Peters had

copied Wheaton’s Reports. Peters answered that Wheaton

had not complied with the requirements for obtaining a

statutory copyright, and that no right to common-law

dismissing the complaint and dissolving the preliminary

injunction on January 9, 1833."

On appeal, Elijah Paine, arguing for Wheaton,

contended that “An author was entitled, at common law, to

a perpetual property in the copy of his works, and in the

profits of their publication.” Representing Peters, Joseph

Reed Ingersoll argued that Wheaton’s view was inconsis-

tent with the Patent and Copyright Clause, saying “[tJhere

would be no occasion to secure for a limited time, if the

exclusive right already existed in perpetuity.”"”

Justice McLean delivered the majority opinion, which

dealt a decisive blow to the notion of copyright as a

perpetual common-law right:

[TThe law appears to be well settled in England,

that, since the statute of 8 Anne, the literary

property of an author in his works can only be

asserted under the statute. And that, notwith-

standing the opinion of a majority of the judges

in the great case of Millar v. Taylor was in favour

of the common law right before the statute, it is

Wheaton v. Peters, 29 F. Cas. 862 (C.C.E.D. Pa. 1832) (No.

17,486), rev'd, 38 U.S. (8 Pet.) 591 (1834). Although the judgment was

reversed and remanded for a determination whether Wheaton had

complied with the requirements for a statutory copyright, the Supreme

Court opinion made it clear that Wheaton could not claim a common-

law copyright.

™ 33 U.S. at 595-96, citing Millar v. Taylor, 4 Burr. 2303 (KB.

1769).

™ 33 U.S. at 629.

still considered, in England, as a question by no

means free from doubt.

That an author, at common law, has a prop-

erty in his manuscript, and may obtain redress

against any one who deprives him of it, or by im-

properly obtaining a copy endeavours to realise a

profit by its publication, cannot be doubted; but

this is a very different right from that which as-

serts a perpetual and exclusive property in the

future publication of the work, after the author

shall have published it to the world... .

In so holding, the Court expressly relied on the lack of a

natural right in inventions.” It said:

[TjJhe word secure, as used in the constitution,

could not mean the protection of an acknowl-

edged legal right. It refers to inventors, as well

as authors, and it has never been pretended, by

any one, either in this country or in England,

that an inventor has a — right, at com-

mon law, to sell the thing inven

The Court concluded that - then, by this act,

instead of sanctioning an existing right, as contended for,

created it.... [I}f the right of the complainants can be

sustained, it must be sustained under the acts of con-

pll4

gress.

In rejecting Wheaton’s claim of perpetual common-law

ian view embodied in the Constitution that patents and

™ Td. at 657.

™ Id. at 657-58.

™ Id. at 661. See also note 55, above.

™* Td. at 661-62. The court added that “[i}Jt may be proper to

remark that the court are unanimously of the opinion, that no reporter

has or can have any copyright in the written opinions delivered by this

court; and that the judges thereof cannot confer on any reporter any

such right.” Jd. at 668.

copyrights are exclusive rights of limited duration, granted

in order to serve the public interest in promoting the

creation and dissemination of new works. By placing these

limits in the Constitution, the Framers hoped to avoid the

kinds of abuse of monopoly power that had existed in

England. In the words of Madison, “[t]here can be no just

objection to a temporary monopoly in these cases; but it

ought to be temporary, because under that limitation a

sufficient recompense and encouragement may be

given.”

CONCLUSION

When the U.S. Constitution granted Congress the

power to secure copyrights “for limited Times,” it did so in

the context of the British struggles to restrain the book-

sellers’ monopoly claims. The circumstances of the present

case seem strikingly parallel to those of 18th-Century

Britain. Once again the viderlying struggle is between the

great holders of old copyrights (movie studios, music

publishers, and others) and those who would reprint or

otherwise reproduce classic works and circulate them

more widely. The Framers were wary about allowing

perpetual monopolies, and there is every reason to believe

that they would have been as skeptical as the British

pamphleteer of 1735 who remarked that allowing an

endless series of term extensions would establish a de

facto perpetual monopoly, “a Thing deservedly odious in

the Eye of the Law.” His warning seems as relevant today

as they did then: If the CTEA is upheld, what is to prevent

the great copyright holders from obtaining further

extensions again and again, as often as the old ones

expire? In the words of the pamphleteer, it will be “a great

™* JAMES MADISON, WRITINGS 756 (Jack N. Rakove ed. 1999).

Cramp to Trade, a Discouragement to Learning, no Benefit

to the Authors, but a general Tax on the Publick; and all

this only to increase the private Gain of the Booksellers.”

Respectfully submitted,

TYLER T. OCHOA

Counsel of Record

Professor of Law and

Co-Director

CENTER FOR INTELLECTUAL

PROPERTY LAW

WHITTIER LAw SCHOOL

3333 Harbor Blvd.

Costa Mesa, CA 92626

(714) 444-4141, ext. 243

App. 1

APPENDIX A

A Letter to a Member of Parliament concerning the

Bill now depending in the House of Commons, for making

more effectual an Act in the 8th Year of the Reign of Queen

Anne, entitled, An Act for the Encouragement of Learning,

by Vesting the Copies of Printed Books in the Authors or

Purchasers of such Copies, during the Times therein

mentioned (London, 1735)’

Sir,

The Bill now depending in your House for making

more effectual, An Act for the Encouragement of Learning,

etc. having the specious Shew of being calculated for the

Furtherance of Learning, and the Securing of Property;

two things for which you have always shewn a becoming

Zeal; I wonder not, that you should at first be inclin’d to

favour it, especially considering the many deceitful Arts,

and false Insinuations which some have made use of, in

order to make the World entertain that Opinion of it: But

when, upon a serious Review, those Arts shall be exposed,

and the Falsehoods detected, it will plainly appear to be so

far from having any real Tendency to the promoting of

Learning, that, on the contrary, it will greatly cramp it,

and manifestly hinder its spreading in the World; so far

from the securing of Property, that it will notoriously

invade the natural Rights of Mankind, and subject the

Publick to an exorbitant Tax, in order to increase the

Profits of those, who have neither Colour of Title, nor

Pretence of Merit; and when this shall appear to be the

Case, I doubt not but the same laudable Motives which at

* This is a transcript of a broadside publication, from the copy in

the Bodleian Library, Oxford (Ms. Carte 207 f. 31).

App. 2

first prompted you to encourage it, will prevail with you to

oppose a Design so unjust in itself, and so detrimental to

the Interest it is pretended to promote.

And whereas many have been artfully made to

believe, that the aforesaid Act passed in the 8th Year of

Queen Anne is now expired, and therefore have the more

readily concurred in promoting a Bill which they look on

only as the Continuance or Revival of an expiring Law, it

will be proper to give you a true State of the Case in that

Particular.

Before the Act of the 8th of Queen Anne, there was no

Law which vested in any one the sole Copy-Right of any

Books which were published to the World; but when once a

Treatise was made publick, every one was at Liberty to

make free with it. This, to be sure, was a great Discour-

agement to Authors, who were by this means in great

measure deprived of the Profit of their Works; and this

that Act, in order to remedy which, by giving due Encour-

agement to Authors, and yet to prevent the contrary

Extreme, by giving a Monopoly for too long a Time, that

Act provides as follows.

1. As to such Books which were printed and pub-

lished before the Date of the Act, viz. April 10. 1710, the

Authors, or those who had purchased of the Authors,

should have the sole Right and Liberty of Printing them

for the Term of Twenty One Years from the Date of the Act.

2. As to such Books which should be afterwards

printed and published, the Authors, or those who should

purchase them of the Authors, should have the sole Right

and Liberty of Printing them for the Term of Fourteen

Years from the Time of their being first published; and if

— oe. ——

App. 3

the Authors be living at the End of that Term, they should

have another Term for Fourteen Years, in all Twenty eight

Years; and all others are prohibited under certain Penal-

ties from Re-printing or Importing the same.

As this was not a temporary Law, and stands unre-

pealed, it is as much in Force now as ever, only the Term of

Twenty One Years, which was granted for Books printed

and published before the Date of the Act is expired. But the

Booksellers, it seems, do not think this Term sufficient, and

are therefore desirous to have it renewed for another

Twenty One Years. But what Reasons have they offer’d why

such a Request should be granted? In all other Inventions,

which yet are as much the natural Property of the Inven-

tors, as Books are of the Authors, the Law deems Monopo-

lies so destructive of the publick Good, that the Crown is

restrained by 21 Jac. cap. 3. from granting a Patent for any

Term exceeding Fourteen years. In this Instance therefore

the Legislature has already been more than ordinary

liberal; and tho’ they very justly thought, that some certain

Term should be secured to the Authors, yet, at the same

time, they judg’d it reasonable that some Limitation should -

be set to that Term, that one time or other the Publick

might have the common Benefit of a Work, after they had

for several Years contributed to the Author’s Profit. This

Limitation they have fixd to Twenty One Years; and

therefore the Act provides that the sole Liberty of Printing

‘etc. shall continue no longer. And why is not this Encour-

agement sufficient? Or, what has since happen’d, which

should occasion the Legislature to alter their Judgment in

this Point? Is there any room to think, that any useful or

valuable Work has been supprest, for want of a longer Term

to the Authors? No, the Authors, for what appears, are very

well satisfied with the Encouragement the Law allows

App. 4

them; for it is not they, but the Booksellers who make this

Application; and what Pretence can the Booksellers have to

a larger Term? Will Learning be encourag’d by giving them

a longer Interest in Books already published, even to the

Exclusion of the Authors themselves? But it is said they

have purchased the Copies of the Authors; but what have

they purchased? Only an Interest for Twenty One Years.

The Author by Law had no more, and therefore could grant

no greater Interest to the Booksellers than what they

themselves had. So that, if it were reasonable to enlarge the

Term, surely it ought to be enlarged to the Authors, and not

the Booksellers, who cannot be supposed to have paid a

Consideration greater than what was adequate to the

Interest assigned to them. To what Purpose then is any

Argument fetch’d from Family Settlements? Can private

Settlements overturn the Law? Or, can any one gain a

greater Interest in an Estate, by taking upon him to make a

Disposition of that which he has no Right to dispose of?

But it is pretended, that if the Authors could assign a

larger Interest, the Booksellers could afford them a better

Price for their Copy. This then is a Concession, that they

have hitherto allowed the Authors only in Proportion to

the Interest which the Laws now in Being would permit

them to convey; how unreasonable then is it, that the

additional Term sought for should be vested in the

Booksellers, who have paid no Consideration for the same,

consequently have no natural nor equitable Right thereto.

And as to any Books hereafter to be published, what

additional Advantage can it be expected an Author can

have by a longer Term, over and above what he may now

have for his Fourteen Years, and a Covenant for Fourteen

Years longer, if he lives? The Booksellers will always take

care, to extort from the Author the whole Interest he is

ewer -.

App. 5

able to convey; I would gladly know therefore, what these

generous Booksellers would be willing to advance to an

Author for a Reversion after Twenty eight Years, and by

that some Judgment may be made what additional Benefit

a longer Term will be to the Author. I believe most People

will be ready to answer, little or nothing. Where then is

the Advantage that will accrue thereby to the Author? On

the contrary, if the Author should outlive the exclusive

Property of the Bookseller, he may hope, by re-printing his

own Work, to gain some new Profit, since an Edition

published by the Author will always have the Preference

to any other. Thus it is in respect to the Author; but, as to

the Publick, should the Bill pass, it would be much worse;

for many Tradesmen who can now employ themselves in

their respective Callings, must then stand still for want of

Work. Books will now be sold at much easier Rates, and

consequently, by passing into more Hands, will render the

Knowledge contained in them more diffusive; but should

this Bill pass into a Law, by being the sole Property of one

or a few, they will be sold at higher Prices, and conse-

quently be confined to a small Number, in comparison of

what they would otherwise be. Many Books that are now

scarce will probably be re-printed, while they are left free

and open to the Publick, which while they are private

Property, may long continue out of Print; the particular

Proprietors either thro’ Indolence, or for some other

Reason, being indisposed to venture a new Impression of

them.

As to any Argument drawn from the Employment of

Printers, Bookbinders, Women and Children, it is certain,

while the Liberty of Printing and Selling Books is left at

large, they will be sold cheaper, and in larger Numbers,

and therefore will increase the Business of these Trades,

App. 6

and of the Women and Children employed therein, much

more than if they are restrained to be the Property of a

few, as Experience abundantly shews.

As to the Pretence of furnishing foreign Markets,

there can be no doubt but that End will be best attained by

such Methods as may enable us to afford our Books at so

low a Price, that Foreigners may not be able to undersell

us; which can be done no way so well, as by leaving it open

to the whole [rade: For, as to the Method of settling the

Price of Books by the Archbishop of Canterbury, etc. The

Booksellers very well know, that the Nature of their Trade

is such, as renders the same impracticable; for which

Reason, it has scarce ever been exercised, altho’ the

Booksellers have not been wanting in furnishing just

Cause of Complaint.

Here I cannot but observe one Artifice made use of by

the Booksellers in Reprinting Mr. Addison’s Tatler, No.

101. upon this Subject, at this Juncture, as if that Ingen-

ious Author had thought the Term of Twenty-One Years

not sufficient. But it is to be noted, that whatever is there

said by him is said on behalf of Authors and not Booksell-

ers, and was said before the Act of Q. Anne; so that

whatever Ground of Complaint there might then be, the

same was wholly taken away by that Statute, and Mr.

Addison must be understood to complain only of the Law

as it then stood, and not as it has been since alter’d by

that Statute to which his Arguments are no Way applica-

ble. Upon the whole, I see no Reason for granting a further

Term now, which will not hold as well for granting it again

and again, as often as the Old ones Expire; so that should

this Bill pass, it will in Effect be establishing a perpetual

Monopoly, a Thing deservedly odious in the Eye of the

Law; it will be a great Cramp to Trade, a Discouragement

—— oe

App. 7

to Learning, no Benefit to the Authors, but a general Tax

on the Publick; and all this only to increase the private

Gain of the Booksellers, who as they can have no natural

Title to the Copy, so they can have no legal or equitable

Title thereto, beyond the Interest assigned them by the

Author, which could be for no more than the Term allowed

by Law. For these Reasons I doubt not your Zeal for the

Publick Good, which you have used to exert on other

Occasions, will be exerted on this, to prevent a Law, which

is likely to be productive of such mischievous Conse-

quences to the Publick.

This is a copy of a public record, reproduced as it was published. It is not legal advice, and it may not be the version a court would rely on. Check the official source before you cite it.