Caseflicks

Supreme Court of the United States • 1834

Wheaton and Donaldson v. Peters and Grigg

33 U.S. 591 | 8 L. Ed. 1055 | 8 Pet. 591 | 1834 U.S. LEXIS 619

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Takeaway

In short, this case established that federal copyright is a limited statutory right, available only upon compliance with Congress’s prescribed formalities, and that judicial opinions themselves cannot be privately copyrighted by a court reporter.

Background

Henry Wheaton, a former Reporter of Decisions for the Supreme Court, published volumes of Wheaton’s Reports. Robert Donaldson claimed an interest in the asserted copyrights. Richard Peters, Wheaton’s successor as reporter, prepared a condensed edition of the Court’s decisions, and John Grigg published it. Wheaton and Donaldson alleged that the condensed reports reproduced protected material from Wheaton’s volumes, including reports of cases and judicial opinions.

The complainants sought an injunction and an accounting in federal circuit court. They claimed both a perpetual common-law copyright in Wheaton’s published reports and protection under the federal copyright statutes. The circuit court denied the requested relief. On appeal, the Supreme Court rejected the asserted perpetual common-law right, held that statutory copyright depended on compliance with every required statutory formality, and remanded for a jury to determine whether those formalities had in fact been satisfied for particular volumes.

Issues

Issue #1

Whether an author retained a perpetual common-law copyright in a work after publishing it to the public.

Holding

No. The asserted exclusive right in published works could not be sustained as a federal common-law right or as a common-law right established in Pennsylvania; any protection in this case had to rest on the federal copyright statutes.

Reasoning

The Court distinguished an author’s unquestioned property interest in an unpublished manuscript from the claimed perpetual right to control later publication after the work has been released to the public. Even English authority on the latter proposition had been deeply contested, and the prevailing English understanding after the Statute of Anne was that literary-property claims were governed by statute rather than by a perpetual common-law right.

There is no general federal common law that independently supplies a copyright rule. The federal government consists of states with their own local common-law traditions, and a claimed common-law property right therefore had to be traced to the law of the state connected to this publication—Pennsylvania.

The Court found no basis for concluding that Pennsylvania had adopted the claimed perpetual literary-property rule. Pennsylvania was settled before English courts had recognized or even fully considered that doctrine, and the complainants identified no Pennsylvania custom, judicial decision, or established practice recognizing it.

The Constitution’s Copyright Clause and Congress’s 1790 statute confirmed that the federal copyright interest was a limited statutory right. The constitutional word “secure” did not merely preserve a preexisting perpetual right, because the Clause uses the same language for inventors, who had never been understood to possess a perpetual common-law monopoly in their inventions. The 1790 Act likewise said that an author “shall have” the exclusive right for a stated term, language that created the right on statutory terms.

Issue #2

Whether the statutory copyright right could be claimed without complying with the newspaper-notice and deposit requirements in the Copyright Act of 1790, as supplemented in 1802.

Holding

No. Compliance with the required notice and deposit provisions was essential to a complete statutory copyright title.

Reasoning

Congress could condition an exclusive statutory privilege on whatever formalities it chose to prescribe. Because copyright did not arise from a perpetual common-law right, an author or proprietor seeking statutory protection had to substantially comply with the statute’s conditions.

The 1790 Act required more than recording the title with the district-court clerk. It also required publication of the clerk’s record in a newspaper for four weeks within the prescribed period and delivery of a copy of the published work to the Secretary of State. The Court treated these requirements as parts of the title, not as dispensable directions.

Although recording and printing the record in the book caused a right to accrue, that right was not perfect until the later statutory acts were performed. Characterizing the later duties as mere conditions subsequent would effectively make Congress’s additional requirements meaningless, even though the Court had no authority to disregard requirements Congress chose to impose.

The 1802 Act reinforced this reading by providing that an author could receive the benefit of the 1790 Act only in addition to meeting the requisites imposed by its third and fourth sections. The Court therefore rejected the argument that publication in newspapers and deposit with the Secretary of State were legally unimportant.

Issue #3

Whether the record established that Wheaton or another proprietor had complied with the required statutory formalities for the relevant volumes.

Holding

The Court did not resolve that factual question and remanded for a jury trial on compliance volume by volume.

Reasoning

The evidence left the Court uncertain whether the required newspaper notices had been published and whether copies of the volumes had been deposited with the Secretary of State. Because those facts determined whether statutory protection existed, the Court could not finally decide the complainants’ claim on the existing record.

The Court reversed the circuit court’s decree and directed it to submit to a jury whether the statutory notice and deposit requirements had been met for each volume of Wheaton’s Reports. The jury was also to identify any particular volumes for which compliance had been shown.

Issue #4

Whether a Supreme Court reporter may hold copyright in the Court’s written opinions, or whether the Justices may grant the reporter such a right.

Holding

No. A reporter has no copyright in the Court’s written opinions, and the Justices cannot confer one.

Reasoning

The Court unanimously concluded that judicial opinions delivered by the Supreme Court are not private literary property that a reporter may exclusively appropriate. The reporter may prepare and publish a report, but the opinions themselves remain outside the reporter’s copyright.

Because the judges themselves cannot grant a reporter an exclusive right in their opinions, any claimed copyright in Wheaton’s volumes could extend only to material that was properly the reporter’s own and otherwise protected under the copyright statutes.

Dissents

Justice Thompson

Reasoning

Justice Thompson maintained that authors possessed a perpetual common-law property right in their literary compositions. In his view, the right followed from the basic principle that a person should enjoy the fruits of intellectual labor, just as the law protects property produced by physical labor. Publication did not show an intent to donate the work to the public, especially where the author expressly asserted a copyright claim on the book’s title page.

He read the English decisions differently from the majority. Miller v. Taylor, he explained, recognized a perpetual common-law literary right, and the later decision in Donaldson v. Beckett principally addressed the effect of the Statute of Anne. Because that English statute had not been adopted in Pennsylvania, Thompson believed that it could not limit Pennsylvania’s inherited common-law protection for authors.

Thompson further concluded that Pennsylvania had received the relevant English common-law rule through its settlers and had never abolished it. He viewed colonial and early state legislation protecting literary works as evidence that legislatures understood themselves to secure a preexisting natural and common-law right, rather than to create an entirely new one.

He treated the federal copyright statutes as affirmative and cumulative protections, not as an implied repeal of the common-law right. The statutes gave additional statutory remedies and penalties during their stated terms, but contained no negative language withdrawing the author’s existing common-law remedies.

On the statutory question, Thompson regarded recording the title as the condition that vested the copyright. He considered later requirements to publish notice in a newspaper and to deposit a copy with the Secretary of State directory rather than conditions precedent to the right. He would therefore have reversed the lower court, made the injunction permanent, and ordered an accounting without remanding for a jury inquiry into those formalities.

Justice Baldwin

Reasoning

Justice Baldwin joined the dissent from the Court’s disposition. The reported opinion states that he dissented but does not provide a separate written explanation of his reasoning.