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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 0.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 0.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 0.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 this element was identical in each specimen, the differential in name was insufficient to require separate registrations. Subsequently, in a similar case, Ex parte Hong Kong Food Products Co., 33 USPQ 109 (1937), an application for registration of a plurality of labels was rejected by another Assistant Commissioner upon the ground that the three sets of labels submitted were each descriptive of a different product and should be separately registered even though the only difference in the several labels was the name of the product and the recipe for making it. The Price Bros. case was differentiated in that the goods involved there were of the same type (namely, wine), whereas in the instant case the products differed as widely as noodles, bean sprouts and chop suey vegetables. This ruling was also applied in the case of Ex parte Austin, Nichols & Co., 37 USPQ 620 (1938), where the labels were identical except for the names of the products, such as salad dressing, prune juice and fruit cake. Of course a label applied to a bottle of prune juice would hardly do for a jar of salad dressing, but if the copyrightable element in each case is identical it is difficult to see any statutory basis for requiring separate registration of the same copyright claim, since names as such are not copyrightable. The Copyright Office does not insist upon separate registrations in such cases.
For many years the Patent Office refused to give its approval to the use of the flag * or other public insignia of this or any foreign country as an advertising device by registering a print or label embodying the same, in analogy to the statutory prohibition against registration of a trade mark embodying such insignia. Ex parte Ball, 98 O.G. 2366, 1902 C.D. 102; Ex parte Biddle Co., 1918 C.D. 821. But in a more recent case the practice was relaxed in favor of registration of a label which included the letters “U.S.A.”, on the ground that the copyright statute did not in terms forbid it, and that if Congress had intended this particular restriction of the Trade Mark Act to apply to copyrightable labels it would presumably have so indicated by appropriate legislation. Ex parte Loeb & Co., 41 USPQ 410 (1939). So also we find a relaxation of the rule of consent relative to the use of pictures of individuals in advertising prints or labels. Ex parte Spark Plug Co., 25 USPQ 75 (1935). The Commissioner took occasion, however, to point out that in certain states the law of privacy operated to forbid such use locally without permission of the individual concerned.
* By special act of Congress the use of representations of the national flag for the purpose of advertising or decorating any articles of merchandise within the District of Columbia is made a misdemeanor (U.S. Code, Tit. 4, sec. 3).
These various fine distinctions in practice on the part of the Patent Office arose largely from the apparent attempt to apply to commercial prints and labels the rigid rules governing the registration of trade marks. The Copyright Office is of course under no obligation to regard these rules and practices as in all respects controlling precedents for its own practice in dealing with such material. On the contrary, the outright repeal of the old law and the use of entirely different phraseology in the new law imposes upon the Copyright Office the duty of reappraising the former rules of practice of the Patent Office with a view to making any changes or variations that may seem necessary to carry out the intent of Congress as expressed in the copyright law considered as a whole.
Part 2—Present Law and Practice The provisions of the amendatory Act approved July 31, 1939 (Public No. 244, 76th Congress) have been incorporated in Title 17 (Copyrights) of the United States Code (Supp. V) as sections 5(k), 64 and 65 of the general Act. However, for the purpose of comment and comparison with the old law, it is reproduced here in the original form:
"AN ACT to transfer jurisdiction over commercial prints and labels, for the purpose of copyright registration, to the Register of Copyrights.
Be it enacted by the Senate and House of Representatives of the United States of America in Congress assembled, That effective at the close of business June 30, 1940, section 3 of the Act entitled 'An Act to amend the law relating to patents, trade-marks, and copyrights', approved June 18, 1874 (17 USC 63), is hereby repealed, but all original or renewal copyrights effected thereunder shall continue in full force and effect for the balance of the respective unexpired terms, subject to all the rights and remedies accorded by existing copyright law.
Sec. 2. Section 5 (k) of the Act entitled 'An Act to amend and consolidate the Acts respecting copyright' approved March 4, 1909, is hereby amended to read ‘(k) Prints and Pictorial