Washingtonian Pub Company v. Pearson/Dissent Black
Mr. Justice BLACK dissenting.

The opening words of the 1909 copyright law,  under which petitioner here claims, grant the privilege of copyright only to those who have complied 'with the provisions of this Act.' The provisions of that 1909 Act, of the first copyright Act of 1790,  and of every copyright Act passed since 1790, have required that copies of a copyrighted article be delivered to a designated governmental depository. Until today, this Court has never permitted recovery for infringement of a copyright unless the statutory requirement for deposit had been complied with in the manner and within the time required by the governing copyright statute. The 1909 Act-governing the present case requires that 'after copyright has been secured by publication of the work with the notice of copyright as provided in section 9 of this Act (title), there shall be promptly deposited in the copyright office or in the mail addressed to the register of copyrights, * * * two complete copies of the best edition thereof then published, * * *.' (Italics supplied.) 17 U.S.C.A. § 12.

It is admitted that petitioner did not comply with the statute by prompt deposit of two copies of its work. Fourteen months elapsed between the date of publication and the date of deposit. Petitioner's asserted monopoly rights rest solely on the statute  and petitioner disobeyed the statute's requirements. Notwithstanding this disobedience, petitioner is here permitted to collect damages under the statute, even for alleged infringement committed in the fourteen month period during which the statute's express command was continuously disregarded by petitioner. This century and a half old statutory requirement for public deposit of a copyrighted article provided a public record for the public's benefit. It imposes a simple and easily performed duty-not burdensome in any respect-in return for a twenty-eight year monopoly, with right of renewal for twenty-eight more years. To permit recovery here protects the copyright owner's statutory privilege of monopoly, but emasculates the statutory provisions designed-for over a century and a half-to protect the public.

The judgment here rests upon the conclusions: (1) that the statute grants a copyright from the date of first publication with notice; (2) that after deposits are made the statute permits a retroactive recovery for public use of an article of which copies were never promptly deposited as required by the statute; (3) that Section 13 provides an exclusive penalty for failure to make the deposit; and (4) that-according to administrative interpretation of the Act-deposits are not essential. These conclusions are not in harmony with the historic policy of the copyright law.

First. There is no novelty in the requirement of the Act of 1909 that deposit of copies shall be made after the copyright has already been secured. Every copyright Act, including the original Act of 1790, provided for a copyright interest which (as in the 1909 Act) vested prior to the time by which the last deposit was required. True, the 1909 Act grants a copyright upon first publication, that is, before the date on which deposit is required. But all of the previous Acts granted a copyright interest 'from the (time of) recording the title' of an article, and recording always took place before the date by which the last deposits were required.  And while a copyright interest under the Acts prior to that of 1909-as in that Act-thus vested before the last deposits were required, this Court uniformly held that under these Acts 'conditions subsequent' providing for deposits were actually 'conditions precedent' to the perfection of the copyright. Construing the requirement of deposits in the Acts of 1790 and 1802, this Court said: 'The answer is, that this is not a technical grant on precedent and subsequent conditions. All the conditions are important; the law requires them to be performed; and, consequently, their performance is essential to a perfect title. On the performance of a part of them, the right vests; and this was essential to its protection under the statute; but other acts are to be done, unless congress have legislated in vain, to render the right perfect.' (Italics supplied.) 

The 1831 Act was also construed by this Court as follows: 'Although, under section 6 of the * * * act, the exclusive right to the copyright vests upon the recording of the title to the book, and runs for the prescribed period from that date, and although the right of action for infringement, under section 6, also accrues at that time, yet it is quite clear that, under section 4, in respect, at least, to suits brought after three months from the publication of the book, (within which the 1831 Act required deposit) it must be shown, as a condition precedent to the right to maintain the suit, that a copy of the book was delivered to the clerk of the district court within three months from the publication. * * * Undoubtedly the three conditions prescribed by the statute, namely, the deposit before publication of the printed copy of the title of the book, the giving of information of the copyright by the insertion of the notice on the title-page or the next page, and the depositing of a copy of the book within three months after the publication, are conditions precedent to the perfection of the copyright.' (Italics supplied.) 

Second. All copyright laws before 1891 had required deposit within some designated period after publication. The Act of 1891, however, required deposit 'not later than the date of (first) publication.' The Joint Committee on the bill which became the 1909 Act considered this requirement too drastic because 'the delay of a single day' (after publication) in making the deposit 'might destroy a copyright.' Instead of requiring deposit within a fixed number of days, or by the date of publication, the bill as reported, and the 1909 Act as passed, permitted a copyright to be perfected by a 'prompt deposit' after publication. The Committee did not recommend, nor did Congress provide that copyright could be perfected without deposit; the Committee did recommend, and Congress enacted an extension of the time for deposit.

In considering what Congress meant by continuing in the 1909 revision of the copyright laws the requirement for the deposit of copies, 'we must look to the origin and source of the expression, and the judicial construction put upon it before the enactment in question was passed.'  Prior to the 1909 Act this Court had construed provisions for deposit as essential requirements to the perfection of copyright, whether considered as conditions precedent or subsequent.  The Committee reporting the 1909 Act pointed out that 'Under existing law (the 1891 Act) the filing of title and deposit of copies on or before the date of first publication are conditions precedent, and any failure to comply with them works a forfeiture of the copyright. It is proposed under this bill to so change this as to have the copyright effective upon the publication with notice, and the other formalities become conditions subsequent.' 

'A condition precedent is one which must happen or be performed before the estate to which it is annexed can vest' or which must be performed 'before some right dependent thereon accrues.'  A 'condition subsequent is one annexed to an estate already vested, * * * and by the failure or non-performance of which it is defeated.' 

It is clear that Congress intended that the requirement as to deposits must be complied with in order to perfect the copyright interest under the 1909 Act. Any other construction runs counter to the policy of the copyright law and rewards disobedience to plain statutory provisions.

Only compelling language could justify the conclusion that Congress intended to abandon a statutory policy-in effect since 1790-which required owners of patent or copyright monopolies to disclose upon the public records the extent of their claimed monopolies. Under the prevailing judgment here, public deposit and public registration are no longer necessary in order to obtain rights under the copyright law. And without deposit and registration, there need be no public disclosure of the day or the year of publication (by which copyright is obtained) of many copyrighted works. Under Section 18, 17 U.S.C.A. § 18-the only mandatory provision for public disclosure now left unimpaired-many types of copyright will be obtained merely by marking publications with the name of the proprietor and the word 'Copyright', 'Copyr.', or 'C'. Hereafter, there need be no public (or even private) record of the beginning and the ending of many of these monopolies. And it is unreasonable to assume that an owner of a copyright will voluntarily make the extent and limitations of his monopoly more public than the law requires. Congress did not intend to enshroud copyright monopolies in such secrecy. See Sections 16, 23, 55, 62, 17 U.S.C.A. §§ 16, 23, 55, 62. If disobedience of the statutory requirement is to be rewarded, the reward should certainly be limited-as the Court of Appeals held-so that a deposit which does not comply with the law could not be given retroactive operation permitting recovery of damages for public use during the period of disobedience.

Third. Section 12 of the 1909 Act-requiring registration and prompt deposit, after publication, of two complete copies of the best edition of a copyrighted article-provides that no action or proceeding shall be maintained for copyright infringement until the required copies are deposited and the article registered with the register of copyrights. Under Section 13, if the copies are not promptly deposited after publication, the register of copyrights may demand deposit by the proprietor. If deposit is not then made within three months, the proprietor is liable to a fine of $100 and payment to the Library of Congress of twice the amount of the retail price of the best edition of the article, and the copyright becomes void for all purposes. It is suggested that Section 13 provides the sole and exclusive penalty for failure to comply with the statutory requirement of prompt deposit of copies. But this ignores one of the two distinct purposes of Congress in requiring deposits of copies in the 1909 Act and in all preceding copyright Acts. First, the deposit is intended to record publicly full and complete information about a work for which copyright is claimed and to make that work continuously available for public inspection in order that the extent and boundaries of the monopoly may be understood by the public at all times during the life of the copyright. The judgment here renders this primary Congressional purpose ineffective. Second, Congress intended to preserve 'desirable or useful'  works in a governmental agency dedicated to the diffusion of public knowledge. In furtherance of this second purpose the Act of 1909,-as did other Acts since 1846 required copies to be deposited with the Library of Congress. These two separate and distinct purposes have been manifested by Congress sometimes in different sections of a single copyright statute and at other times in separate Acts.

To effectuate the first purpose, that is, to notify the public of the existence and extent of a copyright monopoly, the first Act of 1790 required deposit, public recording and registration in a District Court, and publication in a newspaper; the Act of 1831 required deposit with the Clerk of a District Court (without penalty for failure to deposit); the Act of 1870 required deposit of one copy of the title with the Librarian of Congress before publication and two copies of the article within ten days after publication without provision for money penalty for failure to comply; Section 4956 of the Revised Statutes (1878) required deposit of one copy of the title before publication and two copies of the work after publication. Deposit has served as an integral part of every legislative plan to give the public full information of copyright monopolies. These plans have included deposits, registration, notice on the copyrighted article itself and full publication in newspapers. Deposit, registration and notice on the article-which every prior copyright Act required-are specifically provided for in the 1909 Act.

To effectuate the second purpose, that is, to preserve worthy works for the diffusion of knowledge, the Act of 1790 made separate provision for delivery of an additional copy to the Secretary of State 'to be preserved in his office;' in a non-copyright Act of 1846, (9 Stat. 102, 106) creating the Smithsonian Institute 'for the diffusion of knowledge,' Congress required deposit of separate copies with the Institute and with the Library of Congress; a special Act of 1865 (13 Stat. 540, the origin of Section 13 now considered) permitted a separate copy to be franked to the Library of Congress within a month of publication 'for the use of said Library,' gave the Librarian the right to demand this additional copy, and penalized non-compliance with his demand by forfeiture of copyright; Section 93 of the Act of 1870 required two additional copies of the best edition to be delivered, within ten days after publication, to the Librarian of Congress, and (Section 94) 'in default of such deposit' which was required for the benefit of the Library, a penalty of $25 could be collected by the Librarian of Congress; Section 4959 of the Revised Statutes (1878) required deposit of two additional separate copies of the best edition 'within ten days from publication' with the Librarian of Congress, and Section 4960 extended the penalty of $25 to cover all failures to make deposits of copies.

Section 12 of the Act of 1909, following the provisions of the Act of 1891 (26 Stat. 1106), provided in a single Section for deposit of copies with the Librarian both for notice to the public and for use of the Library. Section 13 of the 1909 Act now provides in a single Section-as had Section 4960 of the Revised Statutes-a penalty for failure to make deposits which are required for the two purposes of notice to the public and use by the Library. Neither this Section 13 nor any of its legislative predecessors indicated a Congressional intent to abandon-as a condition to the perfection of a copyright-the requirement of deposits for the salutary purpose of providing adequate public records of the existence and continuing extent of copyright monopolies. Section 13 gives the Librarian of Congress authority to demand deposit of copies of every article on which copyright is claimed, adding an additional penalty for failure to comply with his demand. This additional penalty may be imposed whether the claimed copyright is valid or invalid, and does not nullify the mandatory provision of Section 12 requiring deposit of copies for the public benefit.

Section 12 itself provides that 'no action or proceeding shall be maintained for infringement of copyright in any work until the provisions of this Act (title) with respect to the deposit of copies and registration of such work shall have been complied with.' Compliance with 'the provisions of this Act' is made a condition of the right to sue, and the Act is not complied with by delaying fourteen months after publication before making deposit. The Act requires 'prompt deposit.'

It is said that two new Sections (59 and 60) of the 1909 Act, 17 U.S.C.A. §§ 59, 60, indicate an intention of Congress to abandon the protective mandate for public record of copyright monopolies. These Sections show a contrary purpose and distinctly mark the line between deposits for Library uses and deposits for public information.

Section 59 permits the Librarian of Congress acting alone to transfer deposited copies to other governmental libraries for their use. Since 1909, acting under this authority, the Librarian has distributed 186,037 volumes. 

Section 60 permits the Librarian (supervising both the Library and Copyright offices) acting jointly with the Register of Copyrights (directly in charge of deposits for copyright purposes), to determine what deposits 'received during any period of years it is desirable or useful to preserve in the permanent files of the copyright office * * *.' (Italics supplied.) After duly published notice to the public, and 'specific notice to the copyright proprietor of record' other articles can be destroyed or returned to the proprietor 'of record.' But even as to articles destroyed or returned, public records of the copyright monopolies must be retained in the registration files (Sections 10, 11, 16, 45, 47, 53, 54, 55) and in the indices or catalogues (Section 56). All these records 'shall be open to public inspection.' (Section 58.) And-among other purposes-these records remain open to public inspection, in the event of a copyright renewal.

During the last forty-one years copyright registrations numbered over five million, and 'have increased over five-fold.'  In 1909, it was obviously necessary to enact legislation providing for disposal of some of the multitudinous accumulated copyrighted articles no longer necessary for the purpose of public disclosure. But far from showing a Congressional intent to permit copyright monopolies with no public governmental record available for public inspection, Sections 59 and 60 are the clearest and most conclusive evidence of a contrary purpose. They carried forward and emphasized once more the dual statutory purpose to require deposits for the use of the Library, and to preserve for the public the historic and wise policy that the ownership, nature and extent of private monopolies granted by government should always be spread upon government records open for public inspection.

Fourth. There remains the suggestion that administrative interpretation of the 1909 Act lends support to the judgment here under which the statutory provisions for public registration and deposit are nullified. On the contrary, the rules and regulations promulgated by the Register of Copyrights under the 1909 Act have continuously and consistently recognized that registration and deposit are mandatory. From the first (1910) until the latest (1927) edition of these rules and regulations they have substantially provided as follows:

'Promptly after first publication of the work with the copyright notice inscribed, two complete copies of the best edition of the work then published must be sent to the Copyright Office with the proper application for registration correctly filled out and a money order for the amount of the legal fee.

'The statute requires that the deposit of the copyrighted work shall be made 'promptly' which has been defined as 'without unnecessary delay.' It is not essential, however, that the deposit be made on the very day of publication.' (Italics supplied.) 

But it is said that a letter from the Register of Copyrights to the Librarian of Congress-dated September 17, 1938-indicates a different interpretation of the Act by the Copyright Office. However, this letter does not purport to change the formal rules and regulations-in force and effect since 1910-which provide that deposit and registration 'must' be 'promptly' made. The 1909 Act gives the Register of Copyrights authority to promulgate rules and regulations but it does not give him authority to alter the law's meaning by communicating with the Librarian of Congress. Nor, in fact, does this letter represent an effort by the Register of Copyrights to change the rules and regulations dating from 1910. Practitioners in the Copyright Office, as well as the public generally, rely upon formal rules and regulations made available to the public. But whether they have access to interdepartmental communications such as the letter does not appear.

This interdepartmental communication bears the date of September 17, 1938. It appeared in public form for the first time January 4, 1939. Its appearance thus occurred nearly six years after the complaint in this suit was filed; more than eight months after the Circuit Court of Appeals decided that the statutory provisions for deposit were mandatory; almost three months after this Court granted certiorari, 305 U.S. 583, 59 S.Ct. 85, 83 L.Ed. --, and twenty-nine days after the cause was argued and submitted for final decision by this Court. The communication is admittedly contrary to the only two court decisions which it cites on the precise question of the effect of failure to make deposit.  It does not represent an administrative practice consistently pursued, or an administrative interpretation of long standing, and therefore is not entitled to any weight in the construction of the 1909 Act. The administrative rules and regulations-to which we may look-have since 1910 consistently required that deposit 'must' be made.

It is of far greater importance to the public today than it was in 1790, 1831, 1870, or 1891, that public record be made of copyright monopolies granted to further the arts and sciences, since these privileges have been extended by statute to include almost every conceivable type of production of the human mind.  It has been well said that the 'general rule of law is, that the noblest of human productions-knowledge, truths ascertained, conceptions, and ideas become, after voluntary communication to others, free as the air to common use.'  All voluntary communications become 'free as the air to common use' unless protected by compliance with the copyright statutes. More than twenty-five years ago (1911) a careful and accurate survey of the copyright laws led to the conclusion that 'For 75 years it has been the settled law of this country that protection under the copyright law is granted only to those who perform the conditions essential to a perfect copyright title.'  No decision of this Court-previous to that of today-has questioned the consistent purpose of Congress to require 'that the public should have notice, by a true and correct official registry, as to the real author or proprietor entitled to the enjoyment of such monopoly as against the public.'  To grant monopoly privileges-by judicial construction-to those who fail to comply with statutory safeguards intended to protect the public against abuses of such privileges conflicts with statutory policy extending back to the beginning of the nation's history. An author is entitled to the benefit of every right afforded by copyright law, but only 'upon complying with the provisions of' that law. Congress has provided for a grant of monopoly privileges under copyright for a term which may extend by renewal to fifty-six years for those who do comply. Petitioner having conceded that it disobeyed a plain requirement of the Act designed to inform and protect the public, I cannot agree that it should recover damages under the very law it admittedly disobeyed.

Mr. Justice ROBERTS and Mr. Justice REED concur in this dissent. 

Notes