Tam, The First Amendment, and Copyright

Last week the Supreme Court decided the case about the Constitutionality of the clause of federal trademark law excluding from registration disparaging, scandalous, or immoral marks, and found this clause to be unconstitutional. Part of the reasoning at both the Circuit Court level and the Supreme Court level was that such a rule would be obviously unconstitutional vis a vis copyrights, and there is no good way to develop a rule that distinguishes copyrights from trademarks in this context. I’ve been telling people informally that the history of copyright registration is actually a lot more complicated, and that I should write an article explaining this. But in the interim, in the interest of getting the information out there, I’ve put the basic information in a blog post.

In rejecting the argument that trademark registration is government speech, and thus excluded from the protection of the First Amendment, Justice Alito’s opinion states the following (Slip Op. at 21-22)

For if the registration of trademarks constituted government speech, other systems of government registration could easily be characterized in the same way.

Perhaps the most worrisome implication of the Government’s argument concerns the system of copyright registration. If federal registration makes a trademark government speech and thus eliminates all First Amendment protection, would the registration of the copyright for a book produce a similar transformation?

The Federal Circuit’s opinion is much lengthier, and explores this issue in greater detail.  This attitude is unsurprising, as nowadays the Copyright Office registers essentially anything.  Indeed, the most frequent copyright litigant, by far, is a pornographer.  However, copyright’s content neutrality has only been well established since fairly recently, and in the past the Copyright Office has denied registration – and Courts have found works uncopyrightable – driven by both legal concerns such as obscenity as well as more amorphous concerns like immorality.

As William Patry notes in a post about this question in 2005, the trial court in Bleistein held that a “picture which represents a dozen or more figures of women in tights, with bare arms, and with much of the shoulders displayed, and by means of which it is designed to lure men to a circus” was not within the protection of the statute, finding it “merely frivolous, and to some extent immoral in tendency.”1  The Supreme Court overruled this decision, but did not address the discussion of morality, focusing on other issues.  Subsequent cases would hold that works that were illegal or immoral were not the subjects of copyright.

The offending poster from Bleistein

In the first part of the twentieth century, federal prosecutions for obscenity through the mail generally made most questions of copyright in works that might even have a shade of obscenity superfluous for domestic authors.  For foreign authors the combination of obscenity prosecutions and the manufacturing clause of the copyright law at that time (requiring that English-language books be printed and typeset in America in order to receive copyright protection) was essentially a bar to copyright protection in America for books that might be within European sensibilities, but on the edge of American ones.  Robert Spoo has written about the travails of as James Joyce in this arena, and it’s a fascinating story all its own.

In the annual report of the Register of Copyrights for 1941, the Copyright Office made clear for the first time as a written policy that it would not register “seditious, blasphemous, immoral or libelous” works, as the Office did not consider them to be copyrightable at all.  1941 Annual Report at 29-30.  Although this policy was anchored in a belief that such works were generally illegal, such a policy goes far beyond the scope of the first amendment today – I can’t say for certain if it did in 1941 though.

It is unclear whether many works were rejected in these standards, but in September of 1954, the Copyright Office issued Ruling Number 32 relating to Obscene Works, reading as follows:

a. The Office will not ordinarily attempt to examine a work to determine whether it contains material that might be considered obscene.
b. If the examiner believes, upon an ordinary examination, that a work is obscene, the Chief of the Examining Division will determine whether the work should be referred to the Department of Justice for possible prosecution. If the work is not so referred, the copyright claim may be registered.
c. When a work is referred to the Department of Justice, registration will be held up pending action by that Department.

The unraveling of this system came in September 1958, with the arrest of Lawrence E. Gichner, owner of a sheet metal company and amateur sexologist, who had attempted to register his book “Erotic Aspects of Chinese Culture.”  Apparently the Copyright Office had referred it on examination to the Department of Justice, who had contacted the Washington, DC police.  The DC police arrested him, and took for evidence fifty crates of material.  The ACLU rushed to Mr. Gichner’s defense, and the Librarian asked the President to ask his Attorney General for an opinion as to whether the Copyright Office was permitted to register works that are illegal or immoral.  On December 18, 1958, the Attorney General answered that the Office was not required to turn away works on the grounds of immorality or illegality.  41 Op. Att’y Gen. 395 (1958).

However, an eagle-eyed reader may note that the Attorney General did not actually hold that immoral works were protected by copyright – in fact he strongly implied the opposite, that both immoral and obscene works are not protected by copyright, but that it was not the job of the Copyright Office to make that determination.  In 1979 and 1982 the Fifth and 9th Circuits held that immoral and obscene works were protected by copyright.  Jartech v. Clancy, 666 F.2d 403 (9th Cir. 1982); Mitchell Bros. Film Group v. Cinema Adult Theater, 604 F.2d 852 (5th Cir. 1979)  However, in 1998, the Southern District of New York noted that it was “far from clear that the Second Circuit will follow the Fifth and Ninth Circuits in rejecting the argument that obscene material is entitled to copyright protection.”  Devils Films, Inc. v. Nectar Video, 29 F. Supp. 2d 174, 176 (S.D.N.Y. 1998).  This would be a minority position, but Courts have been noting a split on the issue ever since (the Second Circuits and most other Circuits have never addressed the issue head-on).

As obscenity has steadily shrank into the darkest corners and immorality has essentially disappeared as a legal standard, it’s easy to miss that there was surprisingly little of substance stating that copyright law protected works which fall into the vague standard of immorality.  In fact, Tam can reasonably be stated to be a precedent for copyright’s neutrality, albeit perhaps an unwitting one.  It seems that with the decision to no longer examine for immorality or obscenity, the law came to recognize that such works were protected by copyright, even in spite of a long tradition to the contrary, only partially told here.  Whether there was a causality to this or it was simply a consequence of the expanding scope of the first amendment is an interesting one.

Further Reading:

  1. the discussion of whether the posters at issue were works of the “fine arts” may have been more relevant to the question of whether the 1874 Print and Label Act controlled than to whether they were copyrightable generally, as I discuss in my article Reimagining Bleistein

Author: Zvi S. Rosen

Lawyer and sometimes academic. I've written a fair deal about the evolution of intellectual property law into its present form, this blog is a way to share things that don't fit into a full-length article.

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