Pragmatism and IP Law History, Conjugated

To trace the overlapping narratives of IP history and pragmatism, we begin with the work of legal scholars Oren Bracha and Catherine Fisk. From Bracha and Fisk, we will turn to conventional accounts of the intellectual history of pragmatism––filling in some biographical details of major figures, and briefly pointing out some limitations in the interpretations of pragmatism’s sources and significance on the part of Kloppenberg, Menand, and Bernstein––and affirm some of the claims of the more radical historians of pragmatist thought (considering certain poststructuralist philosophers, here, as intellectual historians). We conclude with a knitting together of the two threads–which leaves us, both analytically and chronologically–at the doorstep of Oliver Wendell Holmes, Jr. as he assumed his place on the Supreme Court in 1903.

The concept of “authorship”––all serious historians of copyright seem to agree––was a historical construct that rose to prominence during the eighteenth and nineteenth centuries. Bracha notes traces the history of one of the key premises upon which the new concept of authorship rested: “originality.” The “originality” doctrine–– a product of  the “dialectical interaction between commercial interest and ideology,” in Bracha’s words––appeared on the American scene in the late 1820s. From the start, the legal instrumentalization of “originality” provoked conflict between those who wanted a “minimal threshold of creativity and aesthete merit” and others who believed that copyright should be reserved only for meritorious works able to leap over a much higher threshold (Bracha, 201).

The most important figure in the development of the first position was Justice Joseph Story. In the 1845 case Emerson v. Davies, Story wrote: “In truth, in literature, in science, and in art, there are, and can be, few, if any things which, in an abstract sense, are strictly new and original throughout.”

Every literary act relies on borrowing, and “no man creates a new language for himself.” Story insisted that the “thoughts of every man are, more or less, a combination of what other men have thought and expressed, although they may be modified, exalted, or improved by his own genius or reflection.”

Bracha observes that Story’s language is striking in two related respects. First, it is not at all articulated to the Romantic concerns with the law’s obligations to genius: which is what most scholars trained in the historiography of copyright might expect to find. In fact, Story seems to  anticipate the poststructuralist critique of authorship, attentive to the aesthetic centrality of borrowing, lending, and recycling. “Rather than with a fanfare of romantic authorship imagery,” Bracha writes, “originality made its appearance in American copyright doctrine wrapped in arguments about the interdependent and the cumulative character of texts and about the market as the only criterion for assessing value.”

Second, Story rejects any notion of intrinsic merit or value in artistic objects, turning instead to the market as the sole arbiter of whether or not the law ought to protect a given object or action. “Whether to be better or worse… is not a material inquiry in this case… If worse… His work will not be used by the community at large; if better, it is very likely to be so used. But either way, he is entitled to his copyright, ‘valeat quantum valere potest’” (Bracha, 202-203).

Along with Story’s decision in Emerson v. Davies, the earlier case Clayton v. Stone (1829) served as an important precedent upon which later rulings would draw in rejecting the criteria of Romantic authorship as guiding principles of IP doctrine. Clayton v. Stone emphasized what lawyers call “substantive merit.” Denying copyright protection to a price list, the opinion explained that the Copyright Act clearly meant to protect “literary property,” which could be distinguished from other sorts of property and non-property by means of a simple review of a text’s subject matter. This was not a call for courts to evaluate the literary merit of every text. The Clayton court instead insisted that certain textual forms or genres clearly belonged outside the penumbra of copyright coverage, among them a “daily or weekly publication of the state of the market.” The Constitution’s IP Clause stipulated that its raison d’être was the “encouragement of learning.” For the Clayton court, a clear line separated “learning” from “mere industry.” By implication, any narrative text with greater claims to aesthetic coherence than a numerical list would qualify as meriting copyright protection.

In contrast, the 1850 case of Jollie v. Jaques provoked a vigorous judicial defense of  a higher threshold for copyright protection. Jollie v. Jaques centered around a conflict over a piece of music called “The Serious Family Polka” (adapted from a  German song, and “written” for the play The Serious Family). Justice Nelson’s ruling in Jollie v. Jaques reflects strong commitments to aesthetic distinction as a meaningful index of class difference. While an “original air” required “genius” for its construction, a “mere mechanic” could prepare an adaptation of that air. (We recall, with Michael Denning’s Mechanic Accents, that “mechanic” was the preferred term for “proletarian worker” in the nineteenth century vernacular). Judge Nelson argued that copyright was meant for a “substantially… new and original work.” Ostensibly trifling additions and variation––the stuff of so much demotic cultural innovations––did not deserve the law’s protections. “The musical composition contemplated by the statute must, doubtless, be substantially a new and original work; and not a copy of a piece already produced, with additions and variations, which a writer of music with experience and skill might readily make.”

A year later Nelson introduced a germinal “nonobviousness requirement” into US patent law, arguing that, in order to be patentable, an invention must be recognizable as a work of a genius and not simply the result of the tinkering of an “ordinary mechanic” (N. 57; the case was Hotchkiss v. Greenwood, 52 U.S. 248 [1851]) (204).

Several decisions built upon the logic of Jollie v. Jaques. In Martinetti v. Maguire (1867), for example, the Court refused copyright protection for the popular play The Black Rook. Denigrating The Black Rook as as a “mere spectacle,” the judgment trained its gaze at a rather remarkably microscopic level of aesthetic precision. Dialogue that was “very scant and meaningless” pointed to The Black Rook’s status as non-art. The fact that the spoken text was “a mere accessory to the action of the piece” indicated that the work was designed for illegitimate spectatorial pleasures: gawking at bodies and special effects.“The principal part and attraction of the spectacle seems to be the exhibition of women in novel or no dress, and in attractive attitudes or action.” A final scene called “Paradise,” consisting of women “lying about loose” in a “sort of Mohammedan paradise” was especially scandalous. Taken as a gestalt, The Black Rook could not be called a “dramatic composition” without abusing the language and insulting the genius of the English drama. Otherwise, a “menagerie of wild beasts” or “an exhibition of model artistes” might demand copyright protection (Bracha, 206).

The path away from such “high threshold” paradigms and towards a Holmesian pragmatism became visible in the 1870s. Bracha points to Eaton Drone’s influential 1879 copyright treatise as one important indication that a new aesthetic relativism in IP was beginning to congeal. Drone’s text insists that “the requirements of the law as to the importance or value of a production are so slight that valid copyright will attach to almost any publication, and to many that appear to be of little or no consequence.” While “not every collection of printed words or sentences” was entitled to protection, the law required only the presence of some indice that the thing in question possessed “some value as a composition sufficiently material to lift it above utter insignificance and worthlessness.”

Notwithstanding these developments, a “high threshold” logic in IP jurisprudence remained powerful in the late nineteenth and early twentieth century. Harlan’s dissent in Bleistein was not an eccentric fit of elitist pique–it reflected what was for many Progressive Era common sense.  A crucial ratification of this “high threshold” logic arrived in the form of The Trade-Mark Cases, decided in 1879–the same year that Drone’s Treatise was published. In The Trade-Mark Cases, the Court struck down the first Congressional attempts to legislate trademarks (attempts that lawmakers legitimized by pointing to the Constitution’s IP Clause). The Court’s rejection of the trademark laws rested upon close attention to the words “authors” and “writings” in the Constitutional framers’  language. Justice Miller emphasized that the Court could not approve the classification of trademarks “under the head of writings of authors” because in textual production, as in scientific invention, “originality” was required. “Writings” may be interpreted to encompass a wide variety of meanings, but the Court understood federal copyright law as reserved for works “such as are original, and founded in the creative powers of the mind.”  The “writings” protected by law are the “fruits of intellectual labor.”  (We place an asterisk here to note how significant this language is, and also to highlight its ambiguity. Does Miller mean “intellectual labor” as it was then coming into use within marginal economics, a term meant to justify the work of capitalists as non-parasitic? Is the term an early reference to the cultural worker? Is it something in between?)

“The trade-mark,” Miller writes, is protected at common law as the property of its owner, and further protected by statutory law once registered at a government trade-mark office. “But in neither case,” Miller continues, “does (the trade-mark) depend upon novelty, invention, discovery, or any work of the brain.” (Again, we highlight this language of “work of the brain”).

The creation of a trade-mark “requires no fancy or imagination, no genius, no laborious thought.” In this decision, Bracha emphasizes, the Supreme Court “elevated originality to the status of a constitutional principle that defined and restricted Congress’s power.”

In light of these historical developments, it is all the more remarkable that Homes would return, in the first decade of the twentieth century, to Justice Story’s proto-pragmatist skepticism in regard to  “originality.” By recovering this “low threshold” tradition, Holmes consecrated an “aesthetic relativism” and helped to usher in the age of mass culture in the US.

If “originality” was no longer at issue, questions of textual ontology could be set aside. In a time of rapidly mutating technologies of mass reproduction and formal flux, the bracketing of “originality” provided a working rule according to which any two aesthetic objects (a song and a piano roll, say, or a film and a short story, or a photograph and a toy) could be compared and evaluated and assimilated into the order of IP law. In the comparison of two texts, in other words, a judge might look for similarity and difference, influence and filiation, generic commonplaces and permutational tweakings. Such work could proceed perfectly well without any need for engagement with traditional questions of genius, inspiration, beauty, and the new. In class terms, this translated into a mixed blessing for the demotic arts. It modeled a new aesthetic egalitarianism while preparing the ground for the reification of the legal fiction of “corporate authorship.”


In an ideological environment in which the notion of inherent objective value lost all coherence, it was natural for judges to present their role as restricted to the neutral operation of a general set of rules and principles while leaving all substantive judgments of value to the market.

In copyright law, this meant that judges recoiled from the notion of substantive originality that would have required them to make regularly and overtly exactly the sort of substantive judgments they were claiming to abdicate.

The court that in the 1894 case Henderson v. Tompkins claimed that “box-office value” was the only value applicable to copyrighted works also wove into this argument a view of the proper role of judges and juries and the sort of determinations they were qualified to make.

“[N]either courts nor juries have any certain rule for valuing it,” the court explained, “except such as comes from evidence of the effect which the composition in question has on masses of men.” (223)

Similarly, by the time of Bleistein, Justice Holmes found it necessary to explain that “[i]t would be a dangerous undertaking for persons trained only to the law to constitute themselves final judges of the worth of pictorial illustrations, outside of the narrowest and most obvious limits.”

At this point it becomes necessary to ask: why did originality survive at all in copyright law?

Within the late eighteenth-century conception of authorship, authors were envisioned as having property rights in their intellectual creations.

Copyright was thus reimagined as ownership—that is to say, total control—over an intangible object of property.

For a long period, however, copyright doctrine was completely oblivious to this notion and remained confined to the limited traditional economic entitlement to print a text.

During the second half of the nineteenth century, this aspect of copyright underwent a fundamental doctrinal and conceptual change. 

The scope of copyright protection expanded, new entitlements were created, and a novel concept of copyright as ownership of intellectual works appeared.

Again, one emblematic case is usually remembered today of the early American approach to the character of copyright protection.

In the 1854 case Stowe v. Thomas, Justice Grier rejected an infringement suit against a German translation of Uncle Tom’s Cabin.

N 154. 23 F. Cas. 201 (Grier, Circuit Justice, C.C.E.D. Pa. 1853) (No. 13,514); see also Melissa J. Homestead, “When I Can Read My Title Clear”: Harriet Beecher Stowe and the Stowe v. Thomas Copyright Infringement Case,” 27 PROSPECTS 201 (2002) (describing the case and its implications). (225)

In his opinion (Grier) explained that the author’s “exclusive property . . . cannot be vested in the author as abstractions, but only in the concrete form which he has given them, and the language in which he has clothed them.”


The “only property” which the author has, Grier wrote, “is the exclusive right to multiply the copies of that particular combination of characters . . . . This is what the law terms copy, or copyright.”

Grier’s reasoning in Stowe was not a mere curious view.

Rather, it was well grounded in the common sense understanding of copyright that dominated American law for the first half of the nineteenth century.

By 1854, however, the decision was behind the times.

The view of copyright it represented was in decline. It was bitterly attacked by commentators,  and its outcome was overturned sixteen years later when Congress amended the Copyright Act explicitly to prohibit unauthorized translations of copyrighted works.

Note 57. Anticipating Stowe’s holding, George Ticknor Curtis had launched, in his important 1847 copyright treatise, a fierce assault on the English precedents that exempted translations.

Key: Eaton Drone included in his 1879 treatise a whole subsection entitled “Stowe v. Thomas Criticised.” DRONE, supra note 71, at 454-55.

The decline of Stowe was a part of a broader transformation of the concept of copyright’s character and scope of protection. (226)

A. The Rise of the Work

Pressures to expand the scope of copyright protection began to appear early on such expansion.

A slew of English precedents established that the only form of copyright infringement was printing copies of a protected text.

Accordingly, various forms of what would become known as derivative works, such as translations, abridgments, and adaptations, were considered independent, non-infringing works.

Two principles dominated this early framework of copyright as the right of “printing copies.”

First, questions of infringement were framed in terms of exact identity.

Second, a subsequent altered work was seen as a copy only as long as such alterations could be considered “colourable” changes introduced only in order to evade the prohibition on making copies.

When nineteenth-century pressures to expand copyright protection intensified, the ideology of authorship supplied an important source of concepts for translating copyright interests into legal arguments.

Two main authorship-based strategies were repeatedly employed to bring down the old structure of copyright.

The first built on the notion that copyright was ownership of an intellectual object created by the author rather than an economic privilege to print.

An elaborate representation of the author’s intellectual creation as an intellectual essence that could take a manifold of concrete forms gradually developed.

Copyright, in turn, was presented as a general control of this elusive intellectual essence, irrespective of form.

Second, drawing on the theme of originality, there appeared a categorical hierarchy between original works and derivative works. (227)

Traditional copyright thinking treated many such derivatives as meritorious works in their own right. In the new hierarchy, however, some works were presented as inherently superior due to their supposed originality, while others were relegated to the now, by definition, inferior status of derivatives.

The two original-authorship-based strategies were mediated through a growing tendency to identify the object of copyright protection with the market value of the intellectual work.

These three ideas permeated George Ticknor Curtis’s 1847 landmark treatise.

Curtis defined the scope of copyright protection as follows: “[W]hile the public enjoys the right of reading the intellectual contents of a book, to the author belongs the exclusive right to take all the profits of publication which the book can, in any form, produce.”

Now, the “most material inquiry” in each case was to be “whether the author has sustained or is likely to sustain any injury by the publication of which he complains.”

The new hierarchy between original works and derivative uses bolstered this view. An abridgment, for example, was for Curtis the taking of “the property of the original author” that could not be justified by “any amount of learning, judgment or invention, shown in the act by him who thus appropriates the property of another.” (228)

Rise of corollary notion of the work as a mysterious intellectual essence that kept its identity despite ephemeral changes of form.

In the words of Curtis,

“The property of the original author embraces something more than the words in which his sentiments are conveyed. It includes the ideas and sentiments themselves, the plan of the work, and the mode of treating and exhibiting the subject.”

This mutually reinforcing relationship would continue to haunt modern copyright law. The urge to protect all market value in ever-expanding derivative markets informed the definition of the work as a permanent essence that could assume many forms.

In turn, the notion of multiple forms considered to be instances of the same intellectual essence fueled the process of defining an increasing number of markets as derivative markets for the original work.

The reflection of this conceptual change in copyright doctrine was gradual.

It began in the 1830s, and Justice Joseph Story was again one of the most influential figures behind it. Justice Story subtly attacked the traditional rules shielding secondary uses of copyrighted works. In his 1836 Commentaries on Equity Jurisprudence, he repeated the English rule that “bona fide quotations . . .or a bona fide abridgment . . . or to make bona fide use of the same common materials in the composition of another work” was not an infringement. (229)

The decisive development came a few years later in the 1841 holding in Folsom v. Marsh. In Folsom, Justice Story introduced into American copyright law the concept of fair use. Ironically, the fair use doctrine is commonly celebrated today as one of the major safeguards against overexpansion of copyright protection. At the time it was introduced by Justice Story, however, it was a vehicle for a radical enlargement of the scope of copyright. The introduction of fair use fundamentally changed copyright’s baseline.

Formerly, infringement was limited to near-verbatim reproduction and all other subsequent uses were considered legitimate. In the new fair use environment, all subsequent uses became presumptively infringing unless found to be fair use. With Justice Story skillfully undertaking this transformation, one hardly notices that he was radically changing the framework of copyright, as he was citing old precedents. Yet Justice Story was obviously quite aware that he was expanding the scope of copyright well beyond the traditional right of printing copies. “So, in cases of copyright,” Justice Story explained, “it is often exceedingly obvious, that the whole substance of one work has been copied from another, with slight omissions and formal differences only, which can be treated in no other way than as studied evasions.

176. 9 F. Cas. 342 (Story, Circuit Justice, C.C.D. Mass. 1841) (No. 4901). See generally R. Anthony Reese, The Story of Folsom v. Marsh: Distinguishing Between Infringing and Legitimate Uses, in INTELLECTUAL PROPERTY STORIES, supra note 47, at 259 (describing the background of Folsom and its significance). (230)

Where formerly a use which was not a copy was not infringing, now courts had to consider the comparative use made in one of the materials of the other; the nature, extent, and value of the materials thus used; the objects of each work; and the degree to which each writer may be fairly presumed to have resorted to the same common sources of information, or to have exercised the same common diligence in the selection and arrangement of the materials.

Now, infringement might be effected by any taking that results in the diminution of the  value of the original is or “the labors of the original author are substantially to an injurious extent appropriated by another.”

In the decades that followed, this new broader understanding of copyright protection gradually took over.

After the Civil War, three overlapping developments intensified this trend.

First, through a combination of judicial decisions and legislative amendments, the traditional rules that sheltered subsequent uses, such as abridgments or translations, gradually declined and were abolished. (231)

Second, the scope of copyright protection and the tests for infringement were expanded well beyond verbatim copying and came to cover increasingly abstract and remote zones of similarity to the protected work.

Third, statutory amendments gradually added new entitlements to copyright protection that had little to do with the traditional right to print.


By the dawn of the twentieth century, the accumulation of specific entitlements and the expanding scope of protection would lead to the emergence of a general logic of derivative works in copyright thinking. Under this mode of thinking, copyright would be conceived of as the right to control any aspect of the intellectual work, irrespective of medium, format, or form.

Underlying the new doctrine was an understanding of copyright’s object of property—a postulated intellectual object that would become known as the “work.”

The concept of the work combined the two authorship-based strategies introduced earlier in the century in order to justify expansion of protection.

The first strategy was the increasingly rigid hierarchical distinction between originals and derivatives.

The early tendency to accord works based on others a status of independent beneficial works in their own right consistently declined.

Key developments of 1909: Note 188. The 1909 Copyright Act protected not only the public performance of dramatic and musical compositions, but also the public delivery of a “lecture, sermon, address, or similar production.” The already existing prohibition on dramatization blocked another avenue for public performance, although a public reading of a non-dramatic work was arguably still permissible. See Act of Mar. 4, 1909, ch. 320, $ 1(b)-(e), 35 Stat. 1075, 1075. (232)


The new attitude was to reduce the secondary work to a mere derivative that does not share the all important virtue of originality.

No one captured this new attitude better than Eaton Drone. “[T]he translator,” Drone wrote, “creates nothing” but merely “takes the entire creation of another, and simply clothes it in a new dress.”

Similarly, [t]he dramatist invents nothing, creates nothing. He simply arranges the parts, or changes the form, of that which already exists. . . . [I]n making this use of a work of which he is not the author, he avails himself of the fruits of genius and industry which are not his own, andtakes to himself profits which belong to another.

New idea of work as “rational collocation”: Again, Drone supplied the most eloquent elaboration of this outlook.

“The definition that a copy is a literal transcript of the language of the original finds no place in the jurisprudence with which we are concerned. Literary property, as has been shown, is not in the language alone; but in the matter of which language is merely a means of communication. It is in the substance, and not in the form alone. That which constitutes the essence and value of literary composition. . . may be capable of expression in more than one form of language different from that of the original.

This notion of the work as an intellectual essence capable of being expressed in a manifold of “dresses” can be found everywhere in late nineteenth-century copyright law.

The American Law Review, for example, wrote in 1869 that the case of Daly v. Palmer “may be said to advance in literary law the doctrine of romantic equivalents, analogous to the doctrine of mechanical equivalents of the patent or mechanical law.”

Notes 191-193. DRONE, supra note 71, at 451, 464. (233)

In Daly, Judge Blatchford ruled that “[t]he original subject of invention, that which required genius to construct it and set it in order, remains the same,” even when an adapted play is “performed by new and different characters, using different language.”

In Maxwell v. Goodwin, the court explained that “the author of a literary composition may claim it as his own in whatever language or form of words it can be identified as his production.”

Drone offered the most lucid account of the new concept of the work:

“So an intellectual production may be expressed in any number of different languages. The thing itself is always the same; only the means of communication is different. The plot, the characters, the sentiments, the thoughts, which constitute a work of fiction, form an immaterial creation . . . . The means of communication are manifold; but the invisible, intangible, incorporeal creation of the author’s brain never loses its identity.” (234)

In 1879 the seminal case Baker v. Selden expressed the new version of the principle that copyright does not extend to knowledge.

The plaintiff in the case had published a book explaining a new bookkeeping system. He argued that defendant’s reproduction of certain blank forms that closely resembled examples supplied in his book constituted a copyright infringement.

Justice Bradley rejected this claim. He declared that “the truths of a science or the methods of an art are the common property of the whole world, an author has the right to express the one, or explain and use the other, in his own way.”

Bradley went on to explain that “there is a clear distinction between the book, as such, and the art which it is intended to illustrate.”

The essence of “the teachings of science and the rules and methods of useful art,” he wrote, “as embodied and taught in a literary composition or book . . . consists only in their statement. This alone is what is secured by the copyright.”

The “knowledge” itself, on the other hand, is not part of the protected work. (236)

The 1899 case of Holmes v. Hurst involved a rather idiosyncratic application of what would be later known as the idea/expression dichotomy, but it supplied one of the most eloquent articulations of this rising rule. The court used the distinction between ideas and expression as a means to find that a monthly publication in a newspaper of The Autocrat of the Breakfast-Table, written by Oliver Wendell Holmes (the father of Justice Holmes), constituted a prior publication that invalidated any subsequent attempts to meet the statutory formalities and obtain a copyright in the book as a whole. It defined the scope of copyright protection in the following way:

The right thus secured by the copyright act is not a right to the use of certain words, because they are the common property of the human race, and are as little susceptible of private appropriation as air or sunlight; nor is it the right to ideas alone, since in the absence of means of communicating them they are of value to no one but the author.

But the right is to that arrangement of words which the author has selected to express his ideas.

The emerging idea/expression dichotomy and other late nineteenth-century decisions that declared that copyright protection did not extend to knowledge were probably inspired by the older principle limiting protection to concrete expressions…(237)


When Justice Wiles explained in Millar v. Taylor that “all the knowledge, which can be acquired from the contents of a book, is free for every man’s use. . . but multiplying copies in print is a quite distinct thing from all the book communicates,” it was a secondary issue to the question of intangibles as objects of property.

When Justice Thompson pointed out in Wheaton v. Peters, more than sixty years later, that “[t]he purchaser of the book has a right to all the benefit resulting from the information or amusement he can derive from it,” it appeared almost an afterthought.

The new insistence of the late nineteenth century on copyright’s limited scope was very different in exactly these two respects. It asserted that copyright was limited to control of specific forms without being able to rely on the obsolete notion of copyright as the right to multiply copies.

It insisted that copyright did not extend to ideas or knowledge in a conceptual environment that described the protected work in highly abstract and broad terms.

Lord Camden, Speech to the House of Lords Regarding Donaldson v. Beckett (Feb. 22, 1774), in 17 PARL. HIST. ENG. (1774) 999, 1001 (“If there be any thing in the world common to all man kind, science and learning are in their nature publici juris, and they ought to be as free and general as air or water” and “are not things to be bound in such cobweb chains.”) reprinted in THE LITERARY PROPERTY DEBATE: SIX TRACTS 1764-1774, at 25-26 (238)

Unlike the literary property debate, in which the distinction first appeared, the new contexts in which the distinction was used involved almost no concern about the adequacy of the intangible object of property within a conventional theory of property as ownership of things.

Instead, the dominant issue became the anxiety of private control over the public circulation of knowledge. 

Thus, the main role of the new idea/expression dichotomy was to soothe this anxiety.

It promised that, notwithstanding the ongoing expansion of copyright protection, all ideas and knowledge remained free.

Thus, like originality doctrine, the new version of the idea/expression dichotomy acquired a deeply paradoxical character.

The more abstract and broad copyright protection became, the stronger was the insistence that it was limited to concrete expressions. The more copyright came to resemble general control of an abstract and elusive object that could cover a manifold of forms, the more fundamental became the assertion that all ideas were left absolutely free for public use.

B. The Rise of the Work in Context

Similar to the process that produced the originality doctrine, the process that gave rise to “the work” involved an interaction between the concepts of authorship and a myriad of other interlocking influences.

In the abstract image of authorship, authors were presented as owning the intellectual works they created—that is to say, they were seen as having absolute control over a postulated intellectual “object.”

The direct doctrinal reflection of this vision— the claim that copyright was a perpetual property right under the common law—ultimately failed both in England and in the United States. Despite  this defeat, the conceptualization of copyright as ownership of an intellectual  work did not disappear. Arguments based on this idea constantly surfaced  within copyright doctrine. Typically such arguments were used to attack copyright’s old framework as a limited reprint entitlement and replace it with a much broader scope of protection

Note 214. See, e.g., Kalem Co. v. Harper Bros., 222 U.S. 55 (1911)… leading to the now-classic opinion of Judge Learned Hand in Nichols v. Universal Pictures Corp., 45


One early twentieth-century court clearly articulated this anxiety [Note 256. Eichel v. Marcin, 241 F. 404, 409 (S.D.N.Y. 1913)]

If an author, by originating a new arrangement and form of expression of certain ideas or conceptions, could withdraw these ideas or conceptions from the stock of materials to be used by other authors, each copyright would narrow the field of thought open for development and exploitation, and science, poetry, narrative, and dramatic fiction and other branches of literature would be hindered by copyright, instead of being promoted.(247)


v. owners of property: the work-for-hire doctrine

The area of copyright where the broadest rift between doctrinal reality and authorship rhetoric was formed was the rules that govern initial ownership.

The development here most resembled a gradual erosion of a strong authorship model.

Since the 1780s, authors—or at least the actual creators of works—were recognized as the persons entitled to receive copyright’s initial legal protection.

Throughout the first half of the nineteenth century, whenever disputes arose the actual creator was consistently preferred over other potential claimants as the original owner of copyright.

Around the middle of the century, however, cracks began to appear in this firm attitude.

Gradually the default rules that allocated ownership shifted to disfavor the actual creator.

This gradual change in the case law culminated in the 1909 legislation of the modern work-for-hire doctrine that explicitly vested ownership in employers rather than the actual creator of a work.

Thus, by that time, in the employment context, which became ever more central to creation, copyright law reverted back to publishers’ rather than authors’ rights.


There is probably no more striking example of how far modern copyright law traveled from its supposed grounding in romantic authorship.

A. Ownership and the Appearance of the Work-for-Hire Doctrine


Direct challenges to the ownership of creators by employers or persons who commissioned their work hardly arrived to the courts.

One rare case of this brand was the 1846 case Pierpont v. Fowle.

In this case, the court strongly rejected an employer’s claim that the assignment of the copyright in books written by his employee entitled him to be the owner of the renewed copyright for the additional term of fourteen years.

The reasons for this clear favoring of the actual creator were taken right out of the vocabulary of original authorship.

“It was the genius which conceived and the toil which compiled the book that is to be rewarded,” Judge Woodbury wrote, “and no one ever dreamed that an assignee could alone take the second or extended term, unless he has paid for it, [and] clearly contracted for it.

An opposite conclusion would be a law that “aids those kinds of patrons, who fatten on the labors of genius.” (252)

In the second part of the century, first cracks began to form in the uniform front of initial allocation of rights to authors.

More cases of direct disputes between authors and other claimants over initial ownership began to appear. In some of these cases, courts adhered to the traditional view that, absent express assignment, the author was the owner.  The early challenges to this guiding principle were indirect and subtle.

Thus, the 1861 case Keene v. Wheatley, which recognized the rights of a theater owner in an adapted play produced by one of her actors, was based not on copyright doctrine but on equitable principles.

Wrapped in the formalistic distinction between copyright and equitable rights, however, was a radically new proposition.  (253)

Since the employee created the adaptations “in the course of his willing performance of this duty,” the court reasoned, the employer “became the proprietor of them as products of his intellectual exertion in a particular service in her employment.”

The most important doctrinal development in this area was a shift toward analyzing initial ownership disputes in terms of implied intent.

The early cases stated clear per se rules that vested ownership in authors.

By contrast, courts in the second part of the century decided such cases using the vocabulary of the intent of the relevant parties as implied in the relationship between them.

This was the case in the Keene decision that relied on a series of new contract and trade secret cases to deduce the “duties of theatrical performers to their employers.”

The court analyzed the allocation of rights and duties as somehow embedded in the employment relationship between the parties. Thus the highly influential dictum of the 1869 case Lawrence v. Dana, which vested initial ownership in the person who commissioned a work, relied on the proposition that “the title to the same vested in the proprietor . . . as necessarily implied by the terms of the arrangement.”

The court explained that “an equitable title may vest in one person to the labors of another, where the relations of the parties are such that the former is entitled to an assignment of the production.”  (254)

The final demise of employee ownership arrived at the dawn of the twentieth century.

It occurred almost simultaneously on the case law and the legislative fronts.

A new line of cases appeared toward the end of the nineteenth century in which defense claims by alleged infringers that the plaintiff who was not the author of works created by employees was not the proper initial owner of copyright were flatly rejected.

Gone was the traditional rule according to which, in the absence of assignment, the author was the owner of the copyright.

Similarly, the practice of framing the question in terms of the implied intent of the parties either was marginalized or disappeared altogether.

Instead, courts stated a new default rule of employer ownership.

*This new rule was grounded in the degree of involvement of the employer’s representatives in the creative process, in the supervision exercised or in the expenditure undertaken by it.

From this point, the way was short to the next stage, which involved cases of direct confrontations between authors and the entities in whose employment or commission they had created the work.

Early twentieth-century courts took the last step and declared a firm default rule that allocated ownership in such contexts away from the author.

One court phrased the rule in terms of the burden of establishing ownership. It held that “when an artist is commissioned to execute a work of art . . . the burden of proving that he retains a copyright in the work of art executed, sold, and delivered under the commission rests heavily upon the artist himself.”

Whether in terms of burden of proof or as a straightforward ownership default rule, courts moved to openly side with the employer or the commissioning person.

A parallel move occurred almost simultaneously on the legislative front.

In the conferences of interest groups that led to the Copyright Act of 1909, the representatives of several publishing industries pressed their need for an easy mechanism of obtaining both initial ownership and the right of renewal. (255)

Assignment, they argued, was too burdensome and sometimes infeasible, especially when works prepared by numerous contributors were involved.

These demands resulted in an innocent-looking short provision with potentially far-reaching consequences.

“The word ‘author,’” section 62 of the 1909 Copyright Act provided, “shall include an employer in the case of works made for hire.”

The significance of this prose was that an employer was recognized as the owner of employee works and enjoyed all copyright entitlements.

By 1909, the rule of initial ownership in the employment context was completely flipped.

It was now employees, and often independent contractors, who created works who had to point to an express contract that assigned them copyright ownership.

In the absence of such a contract, initial ownership was vested in someone else. At the dawn of the twentieth century, even the most fundamental feature that one would expect to find in an authorship-based copyright regime—that authors would be the legally recognized owners— disappeared in the context in which an ever-increasing number of the most valuable works was created.

Only too often, authors were no longer owners.

B. Ownership in Context

Pressures to locate the legal entitlements to economically exploit works in

hands different from the ones that created them were, of course, as old as

copyright. In the pre-authorship era in both England and America, the outlet

for these pressures was quite straightforward. The economic privileges to

exploit a work were granted directly to the person who was seen as being in the

best position to utilize them. In the overwhelming majority of cases, this person was a publisher or a printer rather than the author

Note 291:  For the purposes of this Article, suffice it to say that shifting initial allocation to employers was a significant ideological change, whatever its actual distributive effects. That said, there seem to be compelling preliminary reasons to assume that initial ownership rules in this area were “sticky defaults”—rules that parties were less likely to consider and contract around ex ante. Thus, these rules were likely to be entitlements with substantial distributive effect. See Fisk, supra note 262, at 50-51. (256)


Copyright was openly and in the most direct sense a publisher’s right.

When authorship ascended in the eighteenth century, this arrangement lost its legitimacy. If the ideology of authorship demanded anything, it was that authors would be the actual owners of their works. The pressure for locating control in the hands of those who could best economically exploit the work did not dissipate, however.

The mechanism that was used to mediate these two conflicting demands may look too obvious to mention.

Assignabilty allowed initial ownership by authors, on the one hand, and reliance on market transactions to transfer the work to those who were best situated to exploit them, on the other.

There was, of course, nothing inevitable about assignabilty.

Indeed, some continental countries ended up significantly limiting the alienability of at least some of the rights they awarded to authors

In England and the United States, however, assignability was the unquestioned norm.

Stationers sold, bought, and mortgaged their copyrights and assigned shares in them. When the familiar publishers’ right was extended to authors in 1710, no one thought to question or even to consciously contemplate this feature.

When the United States created its authors’ copyright regime in 1790, it imported wholesale the British institutional framework, again with little conscious consideration of this feature.

Assignability was simply there as what copyright had been for more than a century.


In the second half of the nineteenth century, the pressures to locate ownership away from authors grew, and the strain on assignability as a mediating mechanism intensified.

This mounting pressure was a result of changing economic practices and of the growing relevance of copyright to various branches of industry. Economic and creative projects that were based on a collaborative effort of a large number of individuals gradually became more common and more economically significant. Such works that involved a collaborative multi-contributor effort included, for example, catalogs, dictionaries, encyclopedias, and magazines.

If creating a dictionary was at the beginning of the century a one-person project, by its end it was much more likely to be a multi-participant initiative, directly coordinated and supervised by a publisher. Moreover, as economic activity moved from individuals to firms, a rising share of this collaborative creation came to take place in the employment context. Other changes in copyright law made these rising forms of collaborative creation increasingly relevant to copyright discourse.

The steady expansion of copyrightable subject matter and the continuous decline of the originality bar brought within the auspices of copyright many of the economic activities that were likely to have such patterns of creation.

Both older industries like cartography and lithography and new ones such as advertisement and magazine publishing were likely to involve collaborative creation or a hierarchical setting and to produce a demand to locate ownership away from the actual creators…

Against the backdrop of (these) economic changes, people who created works, at least in the context of employment or commission, appeared less like genius creators and more like hired craftsmen or simply wage laborers.(258)

Ironically, the craftsman who collaborates with other craftsmen in the making of a “book” was exactly the image that the ideology of romantic authorship replaced when it first arose.

Whatever the exact motivation of judges, the mid-period cases subtly moved away from the clear framework of initial ownership by authors subject to express assignment. As explained, the main doctrinal vehicle for this move was the notion of implied intent as embedded in the relationship of the parties.

Implied intent was a mediating mechanism. It allowed judges to move away from authorial ownership without clearly saying or recognizing that they were doing so. Implied intent obscured the conflict between the ideological demand to allocate ownership to authors and the felt necessity to locate it in the hands of other economic actors. It blurred the difference between a governmental reallocation of initial ownership and the long-recognized ability of authors to privately exercise their choice and assign their rights.

The moment of the impending collapse of the implied intent construct is epitomized by Drone’s treatment of employer ownership. Drone was the great synthesizer of copyright law. His treatise, while full of rhetorical hyperbole, was nonetheless a model of coherence and clarity. 

Against this backdrop, the employer ownership section conspicuously sticks out. There is no way to describe it other than incoherent and confused. Within the space of five pages Drone managed to declare the following: that the state of New York became the owner of its law reports “by virtue of having employed and paid the reporter”; that “[t]he mere fact of employment does not make the employer the absolute owner of the literary property created by the person employed”; that “the property is in the author, unless he has consented to part with it”; that an agreement to assign “may be implied from the terms and conditions of the employment”; and that when an author is expressly employed to write . . . articles, and, especially if he be regularly employed and paid a salary, these circumstances, in the absence of an express agreement, will go far toward supporting, and in some cases will be enough to establish, an implied agreement that the publisher is to be the absolute owner of the copyright.  The linchpin that was supposed to hold all of these possibly contradictory statements together was implied intent. But the contradictions and the fictive nature of implied intent were becoming only too apparent. The final demise of implied intent through its replacement by per se rules of employer ownership was underscored by the continuous rise of the same economic trends that served as the background of the earlier undermining of authorial ownership. (259)


The turn-of-the-century cases, unlike those of the previous decades, did typically involve employers from industries such as lithography and advertisement where the pressure against authorial ownership was the strongest.

There is yet another typical feature to those cases. In the majority of them, the relevant employer was a corporation. Thus, the rise of the work-for-hire doctrine was woven with the “incorporation of America,” with the rise of the modern business corporation as a dominant social-economic phenomenon.

Corporations were both the context where romantic notions of authorship came to be seen as particularly inadequate and the least likely contenders for initial ownership under the traditional scheme.

The creator in the corporate context was usually a far cry from the romantic image of the author.

Rather than an individual independent spirit producing new ideas, he was much more likely to be a wage laborer carrying out a routine task assigned to him and controlled by his supervisors.

It was very hard to see the industrial lithographer, for example, as a genius author entitled to ownership.

Note 307. Thus, in the discussions leading to the 1909 statutory work-for-hire doctrine, the initial objection to the proposed rule by Robert Underwood Johnson on behalf of the American Authors’ Copyright League was based solely on the use of the term “author” in relation to books.

Thus, in National Telephone News Co. v. Western Union Telegraph Co., which involved a somewhat different doctrinal context, the court explained that at the time when the copyright regime was established, “[t]he business world, that in this day permits nothing to escape as a means for its exploitation had not yet pressed into her service art employers.”

Johnson thought that an employer “ought to be considered the proprietors and not the author.” 

See LEGISLATIVE HISTORY, supra note 290, at 56-57. Depriving employees of ownership in works they created was never an issue.  It was only too easy to classify such employees out of the privileged group of authors worthy of protection. (260)

At the same time, the alternative owner was possibly even less fitting. The legal fiction of a business corporation was hardly the ideal owner within an authorship-based copyright regime. The argument in one of the early cases involving corporations included an objection of this kind. The owner corporation, it was argued, “is a mere legal fiction, and not an author entitled to copyright within the meaning of the laws of the United States, in that it is incapable of intellectual labor, incapable of begetting children.”

The court rejected the argument and explained that “[i]t sufficiently appears that complainant’s publication is the result of the intellectual labor of the editors and compilers employed.”

Thus, the intellectual labor of the employees, which could not justify granting them ownership, supported the ownership of the corporation that employed them.

This important aspect of the work-for-hire doctrine was part of a more general move in the period’s legal thinking—a move to adjust traditional legal doctrines and categories to the new environment of corporate liberalism.

As one contemporary legal scholar put it, the new underlying assumption of almost every legal field came to be that “corporate bodies are really like individuals the bearers of legal rights and duties.”

The practical significance of this proposition was a general trend at the turn of the century to relocate powers and rights from the individuals composing the corporation to the corporation itself.

The work-for-hire doctrine, whose typical context was that of the corporation, was yet another instance of this trend. (261)

Was there anything left of the ideology of authorship in this branch of copyright law after its most fundamental tenet—that authors would be owners—was clearly abandoned?

Times were changing, and the court thought that the law should change with them. Should news agencies be denied protection “against the inroads of the parasite,” it asked, “for no other reason than that the law, fashioned hitherto to fit the relations of authors and the public, cannot be made to fit the relations of the public and this dissimilar class of servants?”

Its answer was unequivocal: “We choose, rather, to make precedent—one from which is eliminated, as immaterial, the law grown up around authorship . . . .”

To some extent, such willingness to toss authorship aside and find new grounds for protection characterized other courts of the era. It is common to find judges and lawyers emphasizing financial expenditure and appealing not to original authorship but rather to the need to protect investment and created “value” as the basis of copyright and related legal protections.

Yet even in the specific area of the work-for-hire doctrine, authorship refused to disappear altogether. Rather, it kept popping up in various twisted forms. One perverse use of the trope of authorship in the employer ownership age was identified by Peter Jaszi as the projection of the romantic author image on the employer rather than the actual creator.

This strategy appeared in some, although not all, of the work-for-hire cases. In Schumacher v. Schwencke, the court justified corporate ownership of the work on the basis of the corporation president’s involvement in the design process.

The artist who actually created the work, the court explained, “executed Schumacher’s design,” and this fact “cannot defeat the copyright. The sculptor seldom touches the marble from which his statues are carved. The fact that the brush which embodied Schumacher’s idea was held by another artist rather than by himself cannot be important in considering a question of this character.”

All the virtues of the romantic author were now projected from the actual creator onto the employer-corporation (262)


Note 319. Id. at 468. Similarly, the copyright owner in Bleistein, in which Justice Holmes rhetorically used the figures of the great masters, was a corporation.

The mechanism that powered this strategy was the metaphor of “agency.”

The corporation, through its managerial staff, was clothed in the garments of the “originating, inventive, and master mind.”

The employee who actually created the work was imagined as a mechanical extension of this creative subjectivity—merely carrying out instructions and performing only the physical non-creative tasks.

Even more important than such occasional use of the authorship trope was the survival of authorship within the very statutory arrangement of the work-for-hire doctrine.

The 1909 Copyright Act, remember, did not simply recognize employers as the owners of their employees’ works. Rather, it designated them as “authors.” (But one should not read too much into this)


Yet there was more. Several times when the work-for-hire provision, designed to vest initial ownership in employers, was discussed in the preparatory conference, participants expressed concern over the constitutional limitations on copyright protection.

As Samuel James Elder, speaking as an expert copyright lawyer, explained to the participants: “When you come down to the question of who can take out copyright you are confined by the language of the Constitution to authors and by the broadening of the idea that the courts have given it to the assignees of author[s].”

Concerns about whether employers as original owners, rather than assignees, could be covered by the constitutional mandate continued to bother the drafters.

When doubts were expressed about the early language that termed the employer an author, it was explained that Richard Bowker’s (of the American Authors’ Copyright League) “impulse [in using this language] originated in the authority under which Congress provides copyright laws, and that is the Constitution, and the only term used there is ‘author’ and then he had to define what ‘author’ might include in this act.”

The point should not be exaggerated. The drafters of the 1909 Act were notconspiring to create a deception by the use of the term “author.” And yet, within the flux of drafting debates and legal technicalities, the absurdity of this aspect of the process was overlooked.

Somehow it made perfect sense to the drafters to assume that the Constitution, by using the term “authors,” prescribed some real restrictions on the identity of the initial owner—possibly to the degree of frustrating the attempt to vest ownership in employers—and for the drafters then to avoid this problem by simply creating a statutory definition of an author that included whomever they wanted.

Authorship, as a constitutional requirement, was simultaneously accorded due respect and defined out of existence.

The historical account elaborated here, however, suggests… that the conceptual structure of American copyright law underwent a radical transformation during the nineteenth century. This change was not by any means the mere implementation of a preexisting aesthetic theory of authorship.

In fact, the abstract theory of original authorship never had a golden age in American copyright. At the end of the eighteenth century, copyright still had most of the institutional features of the traditional printing privilege, though it came to be supported by a new theoretical construct of original authors as proprietors of their intellectual creations.

During the nineteenth century, as features of this theoretical construct were gradually embedded in actual legal doctrines and concepts, they were mediated through the influence of the publishing industry, among others, as well as through various ideological filters. These filters include a commitment to the free flow of knowledge, a market concept of value, and a particular understanding of the legitimate role of the state and of the judiciary. (265)

The modern structure of authorship/ownership in copyright, as it emerged at the dawn of the twentieth century, was nothing like a re-creation of copyright in the image of eighteenth-century theory of authorship.

Thus, trying to extrapolate directly from late-eighteenthcentury aesthetic theory to issues of twenty-first-century copyright law seems a futile exercise.

Rather, the place to look is the very different construct of authorship that became part of the doctrinal and conceptual structure of modern copyright.

When one examines authorship ideology as embedded in copyright law, it becomes apparent that Lemley is both right and wrong.

Copyright law has many features that are diametrically opposed to the fundamental tenets of original authorship, but at the same time it is saturated with concepts that are directly traceable to these tenets. Modern copyright’s rules of ownership often favor corporations and other commercial entities at the expense of actual creators of works, but at the same time copyright is justified on the basis of authors’ rights, and many of copyright’s rules—sometimes the very rules that deprive authors of ownership—are constructed in terms taken from the vocabulary of authorship.

Copyright’s minimalist threshold originality requirement is but a mockery of the romantic vision of the author as an individual spirit who creates ex nihilo meritorious intellectual works.

Yet American copyright discourse adamantly resists a “sweat of the brow” regime and clings to originality as a constitutive feature of the field.

Moreover, other areas of copyright law, such as the rules that define the scope of protection, are dominated by latent assumptions suspiciously similar to those of original authorship, namely, a sharp distinction between a superior original and a mere derivative with substantial normative

I do not mean to claim that the story of authorship in copyright was over by 1900—a mistake that I have accused some of the existing accounts of copyright history of making. only mean to say that by that time, many of the features of the contemporary notion of authorship in copyright law had appeared. This is not meant to foreclose the possibility of further changes during the ensuing century.

Note 334. See 17 U.S.C. $ 201(b) (2000) (establishing the work-for-hire doctrine); id. $ 101 (defining a “work made for hire”).



Note 347. In the extreme case of the work-for-hire doctrine, copyright law avoids even the most basic principle that follows from an authorship-based justification, namely ownership by authors.


When in 1991 the Supreme Court declared that originality was still “[t]he sine qua non of copyright” and denied protection to certain works, it placed some limit on the ability of powerful commercial interest to use copyright to their advantage.

At least in some contexts, such as factual databases, this limit had real practical and economic significance.

In order to be effective in disguising the realities of power, the ideology of authorship sometimes may curb that power and check its incursions.

One last possible objection to the claim of persisting importance of the ideology of authorship in modern copyright is presenting it as merely a language or a discourse capable of expressing a diverse set of views and arguments. If authorship is the entire amalgam of conflicting concepts and assumptions, what difference does it make if we talk this way in copyright law?

If one can use parts of it to construct diametrically opposed positions, if it contains radically contradictory visions, such as romantic originality and creativity as a cumulative process, does it not follow that it makes no difference? Is it not just a depository of rhetorical resources, which could be used in different ways and which in itself determines nothing?

Authorship is more than a neutral language. The fact that the modern version of ideology of authorship includes conflicting structures and commitments means neither that it is radically indeterminate nor that it lacks significance. While the modern ideology of authorship, as embedded in copyright doctrines, contains these conflicting elements, the choice between them is not completely random. (270)

Likewise, the speaker is not in a position of a completely autonomous agent who can choose and apply, in each case, whichever part or whichever underlying substantive commitment she prefers. The conventional forms of the ideology of authorship, rather, have an intricate structure of managing and allocating its different elements among various fields of discourse and within each field.

It is entirely proper, for example, to employ a strong romantic account of original authorship in a legislative debate about a certain amendment to the Copyright Act. The same account would probably seem out of place when arguing certain doctrinal issues in court. This semantic segregation exists even within the same general field of discourse. Thus, for example, when engaged in a doctrinal legal argument about originality as a threshold requirement for protection, it would be most natural, indeed, necessary, to treat originality as a narrow and technical concept. When arguing questions of derivative works, however, a strong hierarchical distinction between originals and derivatives is built into the very terms of the argument. In some doctrinal contexts, it is entirely plausible to depict copyright protection as limited to a very low level of abstraction and as leaving all ideas as free for the use of all; in others, arguing that copyright protection is limited to a narrow set of concrete forms would be brushing existing concepts against the grain. A court may see it as entirely plausible to deny ownership to a contributor who had not reached the level of an author and at the same time recognize a business corporation as the original author-owner.

There is nothing necessary or natural about such divisions, but they nonetheless exist as strong conventions. They are part of the construct of authorship that was shaped by powerful forces in the past. Thus, despite its internal tensions and conflicting ingredients, authorship does often matter.

Is the foregoing analysis of any use in trying to change copyright law? It would be nave, of course, to assume that simply understanding the ideological structure of copyright and authorship will magically ensure its transformation.

The exercise nonetheless may be of some use. To begin, uncovering the genealogy of the ideology of authorship in copyright should make us more alert to the social power relations underlying it. No doubt, the array of interests shaping copyright law has changed and grown more complex in the intervening century, but many of the forces that exerted their influence in the formative era of the nineteenth century are still with us.

Second, understanding critically the structure of this ideology may help foster an attitude which is facilitative of its transformation. Coming to terms with the tensions, inconsistencies, and conflicts inherent in the current system places one in a position which is somewhat removed from and skeptical of its conventions.

Third, the existing ideology can supply the building blocks or at least the starting points for its piecemeal transformation from within. Scholars who find the recent expansion of copyright and the shrinking of the public domain worrisome often present the ideology of authorship as part of the problem.

Lawmakers and jurists who cling to that ideology, it is argued, tend to exaggerate the extent to which creation is an individualist and solitary activity, and underestimate the essential role for flourishing creativity of the ability to freely access and rework existing materials.354 This may be true. It is difficult, however, to imagine what it would mean to discard or do away with the ideology of authorship in copyright law.

Yet it is quite possible to understand what it would mean to transform or rework it. To do so would entail a process similar to the one that occurred in the nineteenth century. A process of transformation would begin by using the existing ideological forms, while rearranging or reworking them and gradually imbuing them with new meaning. The complexity of the modern ideology of authorship and the fact that it is already filled with conflicting concepts and assumptions assures us that the initial resources for accomplishing this task are already there. (271)


Catherine L. Fisk

Authors at Work: The Origins of the Work-for-Hire Doctrine

Yale Journal of Law & the Humanities 


The creative process is both inherently individual and inescapably social.

So even as the author has been submerged as employee, she claims recognition in modern copyright law in other ways––perhaps as a joint author or through moral rights.

The history I will tell here of the nineteenth-century law’s efforts to mediate the inevitable tension between individual and collective creative rights tells us something about law and the ownership of ideas today.

nineteenth-century lawyers tried to short-circuit the difficult and complex issue of balancing individual and collective rights through a neat doctrinal rule granting all rights to the employee, but the tidiness did not last.

When, at the turn of the twentieth century, courts and Congress adopted the modern work-for-hire doctrine allocating copyrights to the employer, lawyers again hoped that bright-line rules would  prevail.

Again  doctrinal confusion surfaced, revealing the underlying tension.

Under modern copyright law, “copyright in a work . . . vests initially in the author or authors of the work,” and as far as lawyers are concerned, identifiable people are in fact the creators of all work eligible for copyright protection.

Attribution of authorship  is  a matter of proof, not a process of cultural attribution, and when corporations are deemed authors, it is because  they have hired people who created works.

The case of “works made for hire.”

Here, the Copyright Act expressly recognizes the author as a legal fiction.

If a work meets the statutory  definition of a work made for hire, “the employer or other person for whom the work was prepared is considered the author” for purposes of federal copyright law.

The statute specifies that a work is “made for hire” under two circumstances: (1) if an employee (a term of art) prepares it “within the scope of his or her employment,” or (2) if one of nine statutorily enumerated types of work prepared by persons not meeting the legal definition of employee was “specially ordered or commissioned.” (Note 13.

The nine categories are (1) contributions to a collective work, (2) motion pictures or other audiovisual works, (3) translations, (4) supplementary works, (5) compilations, (6) instructional texts, (7) tests, (8) answer material for a test, and (9) atlases. However, the parties must expressly agree in a written instrument signed by them that the work shall be considered a work made for hire. Id. Thus, the default rule is that works by independent contractors are not works for hire).

On the surface, there is nothing especially noteworthy in the statute’s choice to designate employers as “authors” of works for hire. 

“Author” is simply a term of art, the operative term for the proprietor of statutory rights.

Statutes often do their substantive work of according rights and protections by  defining termsOn further consideration, however, it becomes apparent that the legal fiction that asserts the employer (usually a corporation) is the “author” of a copyrighted work has greater significance than an ordinary term of art. 

The notion of authorship is freighted with connotations of creative genius and the moral entitlements that flow from it. 


One of the claims I make in this article is that the legal fiction of corporate authorship does what Lon Fuller suggested legal fictions always do. 

That is, it persuades lawyers that the corporate employer has a legitimate right to the copyright––the moral and legal entitlements that flow from the exalted status  of being an author––without the necessity of explaining why.

But even if employer authorship is mainly fictional, it works as what Lon Fuller called an “intellectual shortcut” to persuade when a statement of the actual reasons for the ruling are difficult to explain.


A second claim I make in this article is descriptive: The creation of the modern doctrine preceded its first appearance in the federal Copyright Act of 1909.

It neither was invented by the drafters of the 1909 Act, nor was it well recognized in the cases before 1909.

The concept began to appear after 1860, though no case actually applied such a rule until a pair of cases did so in 1899 and 1900.

As one legal rule (a default rule of employee ownership) was replaced by its exact opposite  (a default rule of employer ownership)  over the course of seventy-five years, courts struggled to accommodate corporate control over intellectual property to a misty-eyed regard for the prerogatives of authors, artists, and composers. 

The process repeated an old pattern in copyright history.

Eighteenth-century booksellers had conjured up and deployed the modern author––a creative genius possessed of moral and legal entitlements to his creations––and used him to argue for a copyright law protecting against cheaper reprints.

Early twentieth-century firms used that same mythic genius in their effort to assert corporate control over an increasingly wide range of intellectual property, while at the same time downplaying or ignoring individual creative genius so as to assert corporate ownership over those copyrighted works.

The employee-writer, artist, or composer was simultaneously cloaked with the aura of the romantic genius and merged into the corporate entity.

In the long discussion in legal and literary studies about the mutually constitutive roles played by copyright law and popular and academic understandings of authorship, many have noted but few have studied the role of employed authors and employment relations.

Most legal, literary, and economic approaches to copyright history note the development of the work-for-hire doctrine in late­ nineteenth-century American copyright law as an exception to the individual authorship paradigm. 

I ask: To what extent does the employment relation make both individual authorship and corporate authorship fictional, and what role have metaphors about the nature of authorship played? Both the dominant copyright metaphors of authorship-the work as property (Locke’s mixing one’s labor with the soil of culture) and the work as progeny (Defoe’s “brat of my brain”)––break down when it is someone else’s brain and ideas being tilled or reproduced.


Peter Jaszi has said that  the  work-for-hire  doctrine has been justified by courts in the usual Romantic authorship paradigm: The “identification of employer as author is more than a crude, instrumental fiction-rather, it  is  a  logical  (if  perverse) working out of the underlying assumption that the essence of ‘authorship’ lies in original, inspired creative genius.” In his view, “it is the  ’employer’s  contribution  as the  ‘motivating  factor’  behind the work (in the words of one decision) that matters, rather than the mere drudgery of the ’employee.”‘

In other words, Jaszi says, courts still focus on the employer’s contribution, when they insist that it is the right to control the work of the employee that makes the employer the author.

As I will show, in the development of the work-for-hire principle some courts did focus on the employer’s contribution or the employer’s right to control.

But over time many came to rely simply on the legal fiction that employment renders the employer the author. 

The “crude legal fiction” was not that the employer’s right to control made it the author; it was that the employer  was the author.

In addition to my jurisprudential claim about legal fictions and my descriptive claim about what the law was and when it changed, I make five interrelated explanatory claims about why the law started out favoring employees and then changed.

Multiple forces converged to generate the radical change in the default rules of copyright ownership between the early nineteenth century and the early twentieth.

First, I argue that the facts of the cases presenting the question of employer ownership of employees’ creative products profoundly affected the courts’ perceptions of the competing claims.

The overwhelming majority of nineteenth-century cases involved either legal publishing (court reporters and treatise authors) or theater.

The discourse of authorship really meant something concrete to judges when it came to law reports, legal treatises, and theater; they thought they knew exactly what counted as authorship.

At the same time, the law developed as it did because courts had a very definite idea of what they wanted to accomplish in allocating property rights in texts.

In particular, early nineteenth-century judges thought allocating copyright to employees would facilitate the development of law publishing.

Toward the end of the nineteenth century, and at the beginning of the twentieth, cases about advertisements became more common.

Thus, a crucial part of the development of the work­ for-hire doctrine was the expansion of the types of works eligible for copyright protection to include collaboratively produced commercial media. 

The expansion of copyright made copyright ownership an important asset to an ever-growing array of businesses and, therefore, simultaneously created incentives for firms to claim ownership of their employees’ products and made it easier for courts to accept these claims.

Second, a related  explanation  for the pattern  of  doctrinal change  involves dearly-held beliefs about the moral worth and inherent individuality of the creative process

The romantic conception of authorship as the expression of creative individual genius played a major role in the early period.

In the later period, courts were able to reconcile employer ownership with authors’ rights in some cases by elaborating a fiction of employer  authorship and, in others, by positing the existence of collective creation.

This is how legal fictions about authorship played a crucial 

mediating role.

These legal fictions are a fundamental part of the common law process, in which change is incremental, analogies are essential but contestable, and the facts of the cases are of great importance.

Third, the relatively pro-employee rule of the nineteenth century would have been unthinkable in the context of nineteenth-century master-servant law but for the elevated social status of the people who created the works.

That the dominant cases involved the Reporter of Supreme Court decisions and some of the most celebrated mid-nineteenth century actor-playwrights was crucial in garnering judicial respect for the rights of employee authors.

Although I refer to the employed authors as employees, most of them would be independent contractors in modem parlance.

Few, especially in the early cases, were the sort of people who would have been governed by master-servant law in the nineteenth century.

Thus, the copyright rules described here were not in conflict with master-servant law so much as completely independent of it––doctrinally, conceptually, and socially.

The increasingly bright distinction between employees and independent contractors played a role late in the century as courts reevaluated old assumptions about the nature of the employment contract, the process by which employment contracts are negotiated, and the role of contractual default rules.

At the same time, the ascendance of an objective theory of contract in the late nineteenth century significantly expanded the ability of judges and lawyers to make the conceptual leap from individual authorship to collective creation that, as an inherent feature of the employment contract, entitled the employer to own the intellectual property.

The results of some of the cases might not have differed between the early­ nineteenth century and now, inasmuch as modem law provides that works by independent contractors are not deemed works made for hire absent an express written agreement to that effect

But the early cases, which involved workers who would today be independent contractors, were sometimes relied on in later cases that did involve workers who would today be deemed employees.

Courts did not draw the distinction until the statute was later amended to make it plain.In virtually all of the cases, whether the hired party had a contractual relationship of independence or one of full-time salaried employment, the hired party occupied a position that might customarily have been filled by a person of considerable independence.

In a sense, then, over time the kind of workers to whom the doctrinal categories applied changed as much as the doctrinal categories themselves.

Fourth, closely related to the changes in employment practices and employment law was the rise of the corporate form of business organization. When the dispute over authorship was between one natural person and another, judges tended to think that one of them had to be the real author.

But if the work was created collaboratively, and one of the claimants was the corporation that employed the creators, it was much easier to characterize the corporate employer, in its role as the legal representative of the collective, as the author than it would have been  if  the  employer were a natural person.

Fifth, the doctrinal change could occur because judges revamped their thinking about writing, authorship, and the production of works subject to copyright, and changes in the understanding of the nature of ideas made that revamping easier.

Pragmatist thought reflected a new approach to ideas which made a new approach to owning them seem more plausible: Ideas are created socially; they are not “out there” waiting to be uncovered, and they are not the product of one individual’s  solitary  genius.

They  are  produced   because  of  the individual’s past experience and social context.

If they are created collectively, and if exposure to a particular environment is crucial, then they are neither the exclusive property of the person who wrote them nor the brat of the solitary writer’s brain. Moreover, ideas are produced because they are useful. If, as Holmes believed, all thought “is at once ‘social’ and ‘on its way to action,” then both the generation and the practical use of ideas in the workplace are inherently part of the business enterprise. The belief that knowledge or an idea is a tool like any other makes it easier to see that ideas and their embodiment in texts are the product of the group setting in which employees work and which the employer arguably  has purchased through wages and the investment in tools and materials.

These five interrelated causal claims are woven throughout this article, but the organization follows the trajectory of the descriptive claim about the evolution of the doctrine. Because the development of the doctrine can be divided into three periods, the article, which is based on every reported American decision involving an employed author before 1910, is too.

Part I covers the period before 1860, in which courts quite clearly asserted that persons hired to create works owned the copyright to their works, not the person who hired the creator. Copyright registrations suggest that the actual practices of employers and firms may have recognized a default rule of employer ownership of copyrights, but the case law did not. So few copyright cases were litigated, however, that it is difficult to know whether the courts’ and the parties’ views of  the default rule were the same or different. The paucity of reported cases  and  the  tremendous influence of the few that exist both enable and require me to explore them in depth. I aim to shed light both on why courts adopted the rule and on whether the reported decisions were or were not representative of  the way other writers and  employers would have understood their rights.

Part II  treats  the  period  of  transition between 1860 and 1900 when courts began to recognize the interests of employers in copyright ownership.

Several  courts  stated  a principle of employer ownership in dicta, but the holdings still found that only an express contract was sufficient to locate the copyright in the employer. During this middle period, the rules regarding intellectual property ownership were uncertain  and  contradictory, thus  belying  the  conventional  assumption  that  certain  and  definite property rules were necessary to and a crucial factor in the rapid economic expansion of the late nineteenth century. Part III treats the beginning of  the modern era, in which courts recognized and Congress codified that the fact of employment was sufficient to vest copyright in the employer, even in the absence of a contract expressly allocating ownership.

24. Three of the earliest cases involved  “independent contractors” who, the courts held, owned their copyrights. Wheaton v. Peters, 33 U.S. 591 (1834); Little v. Gould, 15 F. Cas. 612 (C.C.N.D.N.Y 1852); Atwill v. Ferrett, 2 F. Cas. 195 (C.C.S.D.N.Y.1846). One early case involved an “independent contractor” who did not own his copyright. Heine v. Appleton, 11 F. Cas. 1031 (C.C.S.D.N.Y. 1857). In two cases from the middle period, the employment status of the author was ambiguous, and he might today be characterized as employee, contractor, or even possibly partner. Boucicault v. Fox, 3 F. Cas. 977 (C.C.S.D.N.Y. 1862); and Roberts v. Myers, 20 F. Cas. 898 (C.C.D. Mass. 1860). In another  middle period case, the author was probably an employee, and he was held not to own the rights to his work. Keene v. Wheatley, 14 F. Cas. 180 (C.C. E.D. Pa. 1861). In another case, the author was a contractor, and the court held the parties had expressly contracted for ownership by the employed person. Lawrence v. Dana, 15 F. 26 (C.C.D. Mass. 1869). In two decisions from late in the middle period,  the authors were salaried employees, and the courts held that they rather than their  employers owned the copyrights. Callaghan v. Myers, 128 U.S. 617 (1888); Peters v. Borst, 9 N.Y.S. 789 (Sup. Ct. 1889). The earliest case discussing the distinction between employees and independent contractors as relevant to ownership of literary property was Edward Thompson Co. v. Clark, 109 N.Y.S. 700, 702 (Sup. Ct. 1904), which held that because the author was an employee rather than an independent contractor, the employer owned all written work  and could prevent the employee from publishing it elsewhere even though the  employer  had rejected the work as unpublishable.

Thomas C. Grey, Holmes and Legal Pragmatism, 41 STAN. L. REV. 787 (1989). The literature on law and pragmatism is vast, and a full citation to the literature will have to await a full discussion of the influence of pragmatism on the development of the legal ownership of ideas. For better or worse, this discussion will not be found in this article.


During the first half of the nineteenth century, the hegemony of author as owner ensured that courts saw no employer claim to the creative products of their employees.

Published cases determined that employees were entitled to the copyrights in their works, even though the works had been done during the course of employment or on commission.

As will be noted, however, data on copyright registrations show that employers did sometimes copyright work prepared by their employees. The practices in some industries––I use the example of mapmaking––suggest that where authorship was communal, employers claimed copyrights.

Following a brief look at copyright and collective authorship before 1830, this section examines the only published decisions on copyright ownership involving employed authors, which involved law publishing and theater. Then, by way of comparison, I examine copyright practices in the area of map publishing.

Although the example of map publishing suggests that actual practices of copyright ownership were complicated, the rules articulated by courts in cases where employers and employees disputed copyright ownership were not. Courts were quite clear that, absent an express and clear contrary agreement, the employee-author was entitled to the copyright.


27. The doctrinal change that occurred in these three periods loosely  corresponds  to similar changes that occurred at the same time in the development of other branches of intellectual property and employment law. See Catherine L. Fisk, Removing the “Fuel of Interest” from the “Fire of Genius’:·Law and the Employee Inventor, 1830-1930, 65 U. CHI. L. REV. 1127 (1998) [hereinafter Fisk, Law and the Employee Inventorj; Catherine L. Fisk, Working Knowledge:  Trade Secrets, Restrictive Covenants in Employment, and the  Rise of Corporate Intellectual Property. 1800-1920, 52 HASTINGS L.J. 441 (2001) [hereinafter Fisk, Working Knowledge]. Similar reasons for the change  explain the law of  employee patents, trade secrets, and cognate doctrines.

The problem of reconciling corporate authorship with individual creation was more acute in the field of copyright than it was when the creative products were patented or with trade secrets because the courts struggled more consciously with the question of whether the kinds of materials that firms would create were sufficiently original, creative, or even artistic to be worthy of copyright protection. Unlike in patent law, where the only requirements were nonobviousness, novelty, and usefulness, courts seemed to think that copyright required some modicum of artistic expression or creativity. Thus, when courts came to justifying corporate authorship, they had to analogize advertisements to oil paintings and corporations to great artists.

A. Copyright and Collective Authorship Before 1830

For centuries before my study begins, people had been employed to create texts and other works that today would qualify for copyright protection.

Literary histories of copyright and authorship note that prior to the Renaissance the collective nature of the creation of texts was widespread. If texts were divinely inspired, original creation was not understood to be the essential characteristic of authorship. And the reproduction of texts involved copying rather than conjuring. The nature of book production was thus inherently collective.

Evolving notions of authorship, together with Lockean labor theories of value, gradually created the ideas that the author is the one who does the original and creative work of imagining and writing, and that property rights are justified by the labor expended in the creation.

That understanding of the nature of authorship appeared in Blackstone’s Commentaries on the Laws of England. 

Blackstone, of course, was a contemporary of the eighteenth-century English advocates of authors’ rights, and he was an author as well.

Blackstone famously stated the classic mixed-labor and genius-based justification for copyright:

When a man by the exertion of  his  rational  powers  has produced an original work, he has clearly a right to dispose of that identical work as he pleases, and any  attempt  to  take  it from him, or vary the disposition he has made of it, is an invasion of his right of property.

But as the labor theory of property melded with the Romantic notion of authorship, no attention was paid to the question of how to allocate property rights when the labor was that of an employee.


28. One description of the process reveals the similarity between book production and wage labor in the pre-Renaissance period:

With the so-called “book revolution of the twelfth century and university supervision of copying, there came a ‘putting out’ system. Copyists were no longer assembled in a single room, but worked on different portions of a given text, receiving payment from the stationer for each piece . . . .” Through a sort of guilt by association, we can see how wage labor might metonymically become associated with the  capacity  to  possess  the knowledge which is the source and aim of the labor. We can also envision how the “employer” of copyists might become a metonym for the owner of the knowledge and thus of the authority supposedly contained within the text.

Marlon B. Ross, Authority and Authenticity: Scribbling Authors and the Genius of Print in Eighteenth-Century England, in THE CONSTRUCTION OF AUTHORSHIP: TEXTUAL APPROPRIATION IN LAW AND LITERATURE 231, supra note 2 (quoting I ELIZABETH EISENSTEIN, THE PRINTING PRESS AS AN AGENT OF CHANGE 12-13 (1979)).


30. 2 WILLIAM BLACKSTONE, COMMENTARIES ON THE LAWS OF ENGLAND *405-06. Blackstone had, as a lawyer, represented one of the parties in a prominent English  case on the scope of copyright. See ROSE, supra note 3, at 75.

The modern notion of the author as the individual creator of text ex nihilo was a political and legal strategy employed by publishers to galvanize legislative and judicial support for monopoly rights over books. As Mark Rose explained in his seminal work, Authors and Owners, in the seventeenth century,

[t)here may have  been some  feeling that  authors  should  have the right to control the first publication of their writings. But in England at any rate no clearly defined set of authorial rights existed . . . . Indeed, the very concept of “author” was still incompletely developed. Not only was the modern notion of the author as an autonomous creator, the producer  and  first proprietor of original works, not yet formed, but even the Renaissance notion of the author as an individuated  authority was often problematic.

Rose argued that the conceptual foundations for the author’s copyright were established in British law in the eighteenth century. Locke’s theory of property as arising from the mixing of the individual’s labor with nature united easily with an emerging aesthetic of books as products of a creative mind and as manifestations of an individual’s personality.

The author as creative genius and the author as proprietor simultaneously described the nature of literature and justified the existence of legal rights in ideas. The author-proprietor proved to be a very durable synthesis that persists in American copyright law today.

Rose and others have shown how writers from Defoe to Dickens joined forces with publishers in advocating the moral, cultural, and economic benefits of protecting the authors’  proprietary  rights  in their works.

From the eighteenth century through the twentieth, celebrity authors have been effective lobbyists for a set of copyright rules that benefited corporate publishers as much as individual scribblers.

The early approach to employee authors is no exception. One of the authors who figured prominently in the nineteenth­ century   cases   involving    theater    employees, Dion Boucicault, successfully lobbied for a rev1s1on of American copyright law to provide that the copyright in a play allowed the author to restrict performances as well as publication.


35. The celebrity author copyright advocates include Daniel Defoe, Alexander  Pope, and William Wordsworth. See ROSE, supra note 3, at 34-37, 60-65, 110-12; Dion Boucicault, see infra text accompanying notes 105-115. A modern example of the successful melding of celebrity with copyright advocacy is the Sonny Bono Copyright Extension Act, Pub. L. No. 105-298, 11 Stat 2827 (codified in scattered sections of 17 U.S.C.) named for the late entertainer by his widow and other legislative sponsors whose Hollywood constituents perhaps care more that Mickey Mouse never enters the public domain than the music and lyrics to I Got  You, Babe.


Telescoped summaries of the nineteenth-century ethos of copyright posit an unassailable hegemony of the paradigm of the individual author.

The dominant ideology of copyright in both law and literature is the position forcefully advocated by Dickens and Wordsworth and usually described as “Romantic Authorship.”

That is, copyright exists to reward the genius of the individual author who creates great literature out of his own imagination and hard work and little else. This vision of authorship is part of the nineteenth­ century Romanticism that lionized individuality, creativity, and the unique genius that fired both.

But the Romantic Author may not have been quite as hegemonic even in the nineteenth century as is sometimes suggested. Paul Saint-Amour’s study of nineteenth­ century plagiarism apologists reveals that even in the hey-day of Romanticism, there were many who advocated a broader role for the public domain and for a continued appreciation of collective creation.

Depending on how broadly Saint-Amour’s thesis applies, the notion that employers might claim to own the creative works of their employees was not as revolutionary as one might think.


38. The dichotomy between authors’ rights and corporate rights in intellectual property is not a uniquely Anglo-American phenomenon and has therefore received attention from continental European courts and scholars as well. In France and Germany, in  contrast  to Britain and the United States, the conceptual starting point for protecting intellectual property rights in writings is the inalienable and personal right of the natural person who is the actual creator of the work. In the common law countries, the starting point is protection of the value of the work. Given the focus on authors’ rights in civil law regimes, the development of an allocation rule of employer ownership would be particularly vexing. In Germany and France, the law limits the ability of legal entities to be copyright owners more strictly than the law in the United States  and the United Kingdom. For the most part, the principle of employer ownership seems to have been achieved through notions of implied contract or implied assignment. But what is significant for present purposes is that scholarship on civil law authors’ rights regimes argues that “the present-day opposed approaches of the civil law and common law systems on the question of corporate ownership of rights are of a comparatively recent date and not rooted  in the origins of the two systems.” Gillian Davies, The Convergence of Copyright and Authors’ RightReality or Chimera?, 26 INT’L REV. OF INDUS. PROP. AND COPYRIGHT L. 964, 972 (1995); see also Thomas K. Dreier, Authorship and New Technologies from the Viewpoint of Civil Law Traditions, 26 INT’L REV. OF INDUS. PROP. AND COPYRIGHT L 989, 989-94 (1995).

The concept of the individual author’s inalienable moral rights developed in France and Germany in the nineteenth century, just at the same time that corporate ownership of copyrights developed in the United States. See GILLIAN DAVIES, COPYRIGHT AND THE PUBLIC INTEREST chs. 6-7 (1994). More significantly, there have always been counter examples in both regimes–of employer ownership in the United States even in the antebellum period and of legal entity ownership in Germany and France.

In Britain, the law was relatively similar, including the rise of contract concepts in the mid­ nineteenth  century  and  the  vagueness  about  what  kinds  of  circumstances  would  give  an

It is important to remember that what courts said the default rules were and what employers thought they were may have differed. As Zorina Khan has demonstrated, between forty-four and forty-nine percent of copyright registrations between 1790 and 1800 were by a person other than the  actual author.39 (At that time, one had to register in order  to obtain a copyright; today,  registration is no longer required.) A significant number of registrations were for works other than the kinds of books that typically would have an individual author; they included maps and charts, dictionaries, and directories. “implied” contractual right to the employer. EATON S. DRONE, A TREATISE ON THE LAW OF PROPERTY IN INTELLECTUAL PRODUCTIONS IN GREAT BRITAIN AND THE UNITED STATES EMBRACING COPYRIGHT IN WORKS OF LITERATURE AND ART, AND PLAYRIGHT IN DRAMATIC AND MUSICAL COMPOSITIONS 243-53 (Boston, Little Brown, 1879). I discuss Drone’s treatise infra beginning at note 162. But in countries with a stronger  emphasis  on authors’ rights, the story seems to have been somewhat different. In France and Germany, to varying degrees, employee-authors were entitled to the copyright, and employers could obtain the copyright only by express or implied assignment. As the moral rights concept developed in both countries over the course of the nineteenth century, the employee’s rights increased, for moral rights are inalienable. Yet, at the same time, courts  in France, Britain, and Germany employed similar implied contract concepts to transfer, as a matter of law, or at least without any express agreement between employer and employee, whatever rights could be transferred from the author to another. See generally Davies, supra, at chs. 2-3.


It is reasonable to suppose that among these, some employers were registering the copyright to works that persons in their employ had created, at least in part. It is unclear whether all those registrations were pursuant to an express assignment by the employed author. Absent an express assignment, however, the scant case law suggests employers might not have been able to obtain a copyright for a work prepared by an employee. In Binns v. Woodruff, Justice Washington, sitting as a circuit judge, held that one who employed others to create an elaborately decorated print of the Declaration of Independence could not obtain a copyright because he had neither designed, drawn, nor engraved the work and thus was not an author as required by the statute.41

In the face of a dearth of legal or business archival evidence of how firms handled  employee  copyrights,  two  somewhat contradictory facts appear. First, compared with today, relatively few kinds of works were subject to copyright (the first Copyright Act of 1790 provided for copyright only in maps, charts, and books)42 and there  were  relatively  few copyright  registrations  in the  antebellum

39. KHAN, supra note 7, at ch. 8, tbl. 1.

40. Id In the period from 1790 to 1800, for example, 17% of the registrations were for dictionaries, directories, atlases, maps, and works of “commerce.” Among books that likely had individual authors, 14% were for what Khan calls “social and political” books and another 17% were for textbooks. Eleven percent were for music, poetry, and plays, and 5.7% were for law books. Id

41.    Binns v. Woodruff, 3 F. Cas. 421 (C.C.D. Pa. 1821) (No. 1424). 42.   Act of May 31, 1790, ch. 15, 1Stat. 124.

period. Second, copyright played  a relatively minor role even in those few employment settings in which people were paid by others to create material subject to copyright protection. Although the case law did not recognize an employer’s right to employee works until the late nineteenth century, persons not the authors frequently registered copyrights, and it is reasonable to infer that they were registering the copyright in works created by their employees. Thus, employers may have contracted around the default rule or may simply have assumed that the default was precisely the opposite of what it was.43

B. Authors, Owners, and, American La w Publishing: Wheaton v. Peters and the Early Rise of Employee Authorship

One of the most pressing needs of the early American legal community was to develop an adequate system for the reporting and publication of the new American law. It turned  out to be a struggle to find enough competent people to report the decisions of the various state and federal courts. Even more difficult was finding printers willing to print the reporters’ work at a price that lawyers would pay and to develop a plan for distributing the books once printed. A system, if one can call it that, emerged whereby lawyers interested in the work of the court obtained some  sort  of appointment from the judges (and, in some states, the legislature) as the official reporter of the court, and it was up to the lawyer to find a printer who would print the reports at a price and quantity to fulfill the reporter’s obligation to the court and  to enable the  reporter  to sell enough to make a profit to support himself. The court reporters in these years were not exactly employees of the court; neither the court nor the government paid a salary. They were independent contractors in the modern parlance, although  in some jurisdictions they were also office holders.44

43. Doctrine and practice were not necessarily inconsistent, in the sense that courts acknowledged the legitimacy of  express contracts assigning the copyright to the employer. However, without knowing whether early copyright registrations by employers were pursuant to an express agreement, it is difficult to know whether the court’s description of the default rule was consistent with the practice of employer registrations or not.

44. On early American Jaw publishing, see EDWIN c. SURRENCY: A HISTORY OF AMERICAN LAW PUBLISHING (1990). On the Jaw reports and law reporters of particular courts and states, see Ann Fidler, “Till You Understand Them in Their Principal Features”: Observations on Form and Function in Nineteenth-Century American Law Books, 92 BIBLIOGRAPHY SOC’Y AM. 427 (1998); Joel Fishman, The Digests of Pennsylvania, 90 LAW LIBR. J. 481 (1998); Joel Fishman, The Reports of the Supreme Court of Pennsylvania, 87 LAW LIBR. J. 643 (1995); Craig Joyce, The Rise of the Supreme Court Reporter: An Institutional Perspective on Marshall Court Ascendancy, 83 MICH. L. REV. 1291 (1985); John H. Langbein, Chancellor Kent and the History of Legal Literature, 93 COLUM. L. REV. 547 (1993); Kurt X. Metzmeier, Blazing Trails in a New Kentucky Wilderness: Early Kentucky Case Law Digests,

The first American copyright case in which the author was hired to write was the famous dispute between the third and fourth reporters for the U.S. Supreme Court, Henry Wheaton and Richard Peters.45 More accurately, Wheaton v. Peters was a dispute between the publishers of the reporters, for just as in the famous eighteenth­ century English copyright disputes that established the author’s copyright, Wheaton the author had assigned his copyright to his publisher, and it was the publisher who litigated the suit. Wheaton v. Peters was also the Supreme Court’s first intellectual property decision.46 Although it is famous for its rejection of the notion that courts could confer common law copyrights in circumstances where the statutory requirements were not met, a less well-known aspect of the opinion was its assumption that reporters of judicial decisions were entitled to copyright their work.

Henry Wheaton was the reporter of decisions of  the  Supreme Court from 1816 to 1827, the third in the Court’s  history.47  After Richard Peters became the reporter in 1827, he published and sold a volume called Condensed Reports of Cases in the Supreme Court of the United States containing all the Court’s decisions from its founding until 1827, including Wheaton’s. Wheaton sued Peters for copyright infringement, and Peters  argued  that  Wheaton  (actually, his publisher) had not complied with the statutory procedures for registering a copyright, and that the copyright was therefore void.48 The Court  remanded for factual findings on the adequacy of Wheaton’s efforts to register the copyright.49 The Court’s opinion assumed that if his efforts were sufficient, he would have a valid copyright, notwithstanding his employment or appointment  as reporter  for the Court.50  His status—whether  employee or appointed

officer of the Court or of the United  States—was,  in  the  Court’s view, irrelevant to his copyright claim. Nor did the Court mention whether Wheaton’s claim to the copyright was based on a contract, on the Reporters Act of 1817 (which said nothing about copyright),51

93 LAW LIBR. J. 1 (2001); and Edwin C. Surrency, Law Reports in the United States, 25 AM. J. LEGISLATIVE HIST. 48 (1981).

45. Wheaton v. Peters, 33 U.S. 591 (1834).

46. My account of Wheaton v. Peters draws heavily on EDWARD WHITE, THE MARSHALL COURT AND CULTURAL CHANGE, 1815-1835, at ch. 6 (1988) and Joyce, supra note 44.

47. Alexander Dallas and William Cranch, Wheaton’s predecessors, reported the Court’s decision before 1816. After serving, like them, in an uncompensated and unofficial capacity beginning in 1816, Wheaton became the Court’s first official reporter in 1817 after Congress enacted a statute providing for an official reporter of the Supreme Court’s decisions. See WHITE, supra note 46, at 389-90; Joyce, supra note 44, at 1343.

48.    33 U.S. at 634-35.

49. Id at 667.

50. Id at 668.

51. See infra note 54.

or on other terms of his appointment as the reporter. His right to the copyright was simply assumed, provided he had complied with the statutory registration procedures.

Wheaton had himself assumed he owned the copyright in his reports.52 The first Term during which Wheaton was the reporter ended in March 1816, and by early May, Wheaton had the volume ready to publish. But he could find no publisher willing to print it. He finally was forced to give the copyright to the Philadelphia bookseller Matthew Carey in order to persuade Carey to print it, and Carey paid only $1200 in notes for all the rights.53 Wheaton was not unreasonable in thinking he owned the copyright to the volume. In the first place, Congress had resisted his requests to vote him a formal title and salary as reporter,54 and, in the second place, his first volume contained 487 pages of abstracts, arguments, and opinions and forty-six pages of notes; the abstracts, arguments, and notes were, of course, largely Wheaton’s writing rather than the Justices’.55

Yet in another sense, his employment status had the potential, realized in later cases involving reporters of decisions,56 both to strengthen and to weaken his claim to the copyright. In particular, the Court stated “no reporter has or can have any copyright in the written opinions delivered by this court; and . . . the judges thereof cannot confer on any reporter any such right. “57 Wheaton could copyright whatever he added: headnotes, a summary of the decision, arguments of counsel, pagination, and perhaps even his report of opinions rendered orally. He simply could not copyright the Justices’ own work.

As to the parts of the reports that were not opinions, the Court surely had no doubt that Wheaton’s work was “authorship” in the sense that would ordinarily entitle him to copyright protection. 58 Wheaton’s industry and erudition in writing the marginal notes and the appendices on admiralty and prize law were plain to all. The

52. So, indeed, did the Justices and both the  members of Congress who supported the Reporters Act of 1817 and those who opposed it on the ground that it was unnecessary to pay a salary to the Reporter. See WHITE, supra note 46, at 389-90.

53. Joyce, supra note 44, at 1326.

54. Id at 1325. The Reporters’ Act of Mar. 3, 1817, ch. 63, 3 Stat. 376 provided a salary of

$1000 per annum, but Wheaton had been employed before that to prepare the first volume at no salary. As to every year after 1817, Wheaton argued that the $1000 was “unequal to the labour and time” and was, in any event, compensation for the eighty volumes that the statute obliged him to deliver to the government. 33 U.S. at 614.

55. Joyce, supra note 44, at 1327. In fact, some were anonymously written by Justice Story, who gave them to Wheaton to assist him in publishing the Reports. Id ; WHITE, supra note 46, at 391, 393, 402.

56. See infra text accompanying notes 64-67.

57. Wheaton, 33 U.S. at 668.

58. See WHITE, supra note 46, at 390-91.

Court recognized these as his valuable work. And, inasmuch as he was not being compensated for writing them, it would be inconceivable to say that the copyright was not his. Besides sympathy for him, there would also be the instrumental concerns–if he could not sell the copyright to the printer, there would be no printer willing to print, and the opinions  would never  be  disseminated.59  It might also have mattered, as the Justices no doubt knew, that the  very limited market for law books made the risk of copying seem quite remote.60 And finally, there would be the matter of the  Justices’ respect and affection for Wheaton. He was a personal friend of Story’s; indeed, they were roommates at the Washington boarding house where all the Justices stayed during the Term.61

It was obvious why Wheaton could not copyright the Justices’ opinions without their consent, but the Court went further: The Justices could not confer a copyright on the reporter.62 The Court did not explain why, although later courts  explained  that judges  could not copyright their written opinions because they were  public servants.63 But so were reporters. What was the difference? Two rationales are possible, though neither was offered in the Court’s opinion in Wheaton v. Peters. One was that law reports, like judges’ opinions, could not be copyrighted because they were either not a proper subject of property or should be the “property” of all. In this

59. Wheaton v. Peters seems an apt example of why the initial allocation of intellectual property rights as between employer and employee can matter. First of all, the early nineteenth-century judicial mind did not equate allocation of “authorship” as the legal equivalent of allocating rights in Blackacre. Second, the Justices had institutional reasons to insist that Wheaton was the “author” and therefore the initial copyright owner of his Reports. The Justices thought it mattered a great deal whether they, the people of the United States, or Wheaton had the initial entitlement to copyright, for only Wheaton was in a position  to negotiate with printers like Matthew Carey to publish and distribute the Reports.

60. See WHITE, supra note 46, at 389.

61. See Joyce, supra note 44, at 1313, 1322. On the effect of the boarding house residence on Marshall Court practice, see WHITE, supra note 46, at 160-61, 190-91.

62.    33 U.S. at 668.

63. Today, there can be no copyright at all in works produced by U.S. government employees. 17 U.S.C. §§ 101, 105. Section 105 provides that copyright protection “is not available for any work of the United States Government,” and § 101 defines such works to include “a work prepared by an officer or employee of the United States Government as part of that person’s official duties.” The legislative history of the 1976 revision of § 105 states that the concept should be construed “in the same way” as works made for hire. H.R. REP. No. 94- 1476, at 59 (1976). The purpose of § 105, according to the legislative history of the 1976 Act, was “to place all work of the United States Government, published or unpublished, in the public domain.” Id The predecessor to § 105 first appeared in the Printing Act of 1895, ch. 23, 28 Stat. 601 (1895), and was recodified and retained unchanged in the 1909 Copyright Act. Act of Mar. 4, 1909, ch. 320, 35 Stat. 1075. See H.R. Rep. No. 60-1 (to accompany house bill H.R. 28192, Feb. 1909). Even prior  to 1895, there was some recognition that copyrighting federal government materials was problematic. See Robert M. Gellman, Twin Evils: Government Copyright and Copyright-Like Controls Over Government Information, 45 SYRACUSE L. REV. 999 (1995).

view, the nature of the written product as law makes it unfit for copyright-the law must be in the public domain so that it is free for all to use, quote, reproduce, and disseminate widely.

A second rationale might be that judges could not obtain copyright and thus could not assign it to reporters because they were public servants and their “employer,” the U.S. government, could be the only proper owner of the copyright. As public servants, the judges could not acquire the copyright in the work they were employed to dc:r-t:he preparation of opinions–and thus had no rights to confer upon the reporter. If that were the rule the Court adopted, then it might mean more generally that employment to create copyrighted works should be deemed to constitute an assignment of the copyright to the employer.

The one case that did adopt such a rule was based both on an express contract and on a statute providing that the reporter of decisions of the New York Court of Appeals would not obtain a copyright to his notes, to his reports, or to the references he compiled. The view that judges, as public servants, could have no copyright in their opinions to assign to the reporter because the judges’ employer-the state government-should own the copyright was thus not a default rule in the case.64 Indeed, the underlying contract between the reporter and the New York Secretary of State contained an assignment of the copyright to the Secretary of State, which suggests that both the reporter and the Secretary of State may have believed that the reporter would, absent the contract, have a copyright to assign.

No nineteenth-century case read Wheaton v. Peters to hold that judges, as “employees” of the government, could not confer a copyright on the reporter because the copyright was not the judges’ to confer. A few cases adopted at most a hybrid, but did so only much later. For example, in Banks v. Manchester, the Supreme Court held that the reporter of Ohio could not enjoin the copying of the official reports:

In no proper sense can the judge who, in his judicial capacity, prepares the opinion or decision, the statement of the case, and the syllabus, or head-note, be regarded as their author or their proprietor . . . so as to be able to confer any title by assignment on the states, sufficient to authorize it to take a copyright for such matter . . . . Judges, as is well understood, receive from the public treasury a stated annual salary, fixed by law, and can

64. Little v. Gould, 15 F. Cas. 612, 613 (C.C.N.D.N.Y. 1852) (No. 8395). Other phases of the litigation over the copyright to the reports were published as well. Little v. Hall, 59 U.S. 165 (1855); Little v. Gould, 15 F. Cas. 604 (C.C.N.D.N.Y. 1851) (No. 8394).

themselves have  110 pecunjary jnterest  or proprjetorshjp,  as agajnst thepublic at large, jn the fruits of thekjud icial labors.65

Although the second, italicized part of the passage suggests employment as a public servant rendered one unable to obtain a copyright, the first part of the passage suggests that even the government cannot obtain one. It suggests that opinions prepared by judges are essentially and inherently common property and can be copied by anyone, a rule that was codified as regards U.S. government documents in the Printers Act of 1895.66 Moreover, by 1888, courts had begun to see and enforce employees’ agreements to assign copyrights. From there it was not a large step to conclude that the contract of employment itself might in particular cases operate as an assignment agreement.

The predominance of disputes involving reporters of appellate decisions in the early cases played a significant role in shaping the law. Although judges no doubt understood them as public servants, they were not the judges’ own servants, nor were they “servants” in the conventional sense. They were men of stature and education, trained in the law, whose diligence, analytic skills, and attention to detail were crucial in the dissemination of the law. Their work was also essential to the edification of the bench and bar. They were far too important for judges to see them as servants or to compromise their independence by restricting their claim to copyright. In many cases, their relations with their “employer”-the court or the government–more closely resembled what today would be deemed an independent contractor relationship. In the early nineteenth century, master-servant law applied only to masters and servants, not to every person who worked for someone else, and there was no unified body of law that applied to all who worked for others.67 By the late nineteenth century, courts began to apply master-servant principles to all kinds of employed persons. They thus effaced the distinctions of status and independence that previously had accorded different rights to different kinds of persons and replaced them with a uniform body of law that translated rights and obligations previously determined as a matter of status into implied contractual terms. But since the early employee copyright cases had involved persons who would not be governed by the hierarchical rules of

65.   128 U.S. 244, 253 (1888) (emphasis added).

66.   See Gellman, supra note 63, at 1002-05,1023-24 & n.102.

67. See DAVID GIBBONS, RUDIMENTARY TREATISE ON THE LAW OF CONTRACTS FOR WORKS AND SERVICES 54, 109 (London, John Weale 1857) (contrasting obligations owed by contractors and those owed by servants); HORACE GAY WOOQ, A TREATISE ON THE LAW OF MASTER AND SERVANT 2-3 (Albany, J.D. Parsons, Jr. 1877). See generally CHRISTOPHER L. TOMLINS, LAW, LABOR, AND IDEOLOGY IN THE EARLY AMERICAN REPUBLIC (1993).

master and servant, the courts did not apply the assumptions of master and servant law in deciding the respective rights of the hired person and the hiring party. As a result, the relatively pro-employee rules became settled doctrine, only to be changed at the beginning of the twentieth century once the distinction between employees and independent contractors emerged.

Judges probably  also understood more clearly in the case of reporters than in the case of almost any other occupation how crucial allocation of copyright ownership was to the economics of law publishing. Granting the reporter the copyright was in lieu of paying a more generous compensation from the public fisc. In  an  era  in which government was quite limited in its ability to raise revenue to fund a judicial bureaucracy, judges doubtless were reluctant to interfere with the scheme by which reporters could be compensated from sources other than a full salary paid from the treasury. Perhaps judges understood  that the willingness  of competent, educated men to take on the task depended on their ability to make a profit. The speedy publication and distribution of reports necessary to the law’s development may also have benefited from  the  reporter’s  industry arid been spurred on by the profit motive.

Although law publishing  cases dominated  the early  development of employee copyright law, one other decision from this era took a similar position. Judicial solicitude for the rights of employee authors was thus not entirely the result of concerns  about  law  book publishing. Pierpont v. Fowler, a case between an author who  had been commissioned to write school books and the person who hired him, presented the question of whether the author or the employer had the right to obtain the renewal term.68 The court concluded that the renewal rights did not pass with the contract assigning the initial copyright to the employer.69 In explaining the result, the court emphasized the importance of authors’ rights:

It was the genius which conceived and the toil which compiled the book that is to be rewarded by even the first copyright, and no one ever dreamed that an assignee could alone take out the second or extended term, unless he has paid for it, clearly contracted for it . . . . [I]f such a hirer of others was entitled before to take out a copyright, how does this act encourage and aid genius? It rather aids those kinds of patrons, who fatten on the labors of genius.70

68.   19. F. Cas. 652 , 14 Copyright Dec. 2075 (C.C.D.Mass 1846).

69. 14 Copyright Dec. at 2088-89.

70. 14 Copyright Dec. at 2087-88.

The court appeared to be more concerned with protecting authors from bad bargains than with facilitating the development of  the publishing business.71

C Commissioned Worksand the Relationship Between Playwrights and Theaters

If the first cases involving law publishing are the antecedents of the branch  of work-for-hire  doctrine involving  employees,  the other branch  of  modern  work-for-hire  doctrine–commissioned  works­ had its origins in a different line of cases that began in this early period  as well. These were  the cases involving  playwrights  and composers commissioned by theater managers or owners to write a play or adapt or compose a musical score for performance at the theater. During this period, the playwright or composer invariably acquired the copyright unless the parties agreed otherwise in writing. There  is an interesting  irony  in the  courts’  insistence  that  the playwright owned the copyright rather than the theater owner, for in the 1840s and 1850s the playwright had yet to obtain the status of genius artist that people later accorded to Ibsen, Shaw, or O’Neill. Theater in the 1840s was hardly considered art. An evening’s bill might last four to six hours and include a main piece, a curtain­ raising farce, and a closing burletta. The audience wanted  to see comedy, melodrama, and extravaganzas with spectacular effects.72  In that  context,  the  playwright  was  a  sort  of  “handyman  to  the company. He existed to make their performance  possible,  rather

than they to interpret his work to an audience.”73

Yet this was beginning to change around 1860, and one of the moving forces in that transformation was both an important litigant and one of the most prominent playwrights, actors, and theater managers of the era: Dion Boucicault. What is particularly interesting is that the ambiguous roles of playwright, actor, and theater manager in that era were reflected in the ambiguous approaches of the courts to the allocation of intellectual property

71. The restriction of the assignment of renewal rights, so as to protect authors from improvident bargains made when the value of a copyrighted work was unknown, was a pervasive concern in copyright law into the twentieth century. See infra note 224. Thus, one ought not read the case as being just about employment, but also about the concern for protecting  all  authors-employees  or not.

72. On the evolving nature of melodrama in the mid-nineteenth century, see BRUCE A. MCCONACHIE, MELODRAMATIC FORMATIONS: AMERICAN THEATRE AND SOCIETY, 1820- 1870 xii-xiii, 242-43 (1992). On Dion Boucicault’s use  of  sensational  melodrama,  see  James Hurt, Dion Boucicault’s Comic Myths, in WHEN THEY WEREN’T DOING SHAKESPEARE: ESSAYS ON NINETEENTH-CENTURY BRITISH AND AMERICAN THEATRE 253 (Judith L. Fisher

& Stephen Watt eds., 1989).


24 Yale Journal of Law & the Humanities         (Vol. 15:1

rights in plays. Though the playwright may have worked for the company or the theater, some playwrights such as Boucicault were beginning to enjoy a certain celebrity status and to assert their entitlement to copyright their works (even when they plagiarized from others and were paid to do so by a theater). If, as in the case of Laura Keene discussed  below, the playwright, the actor, and the theater manager were one and the same, and the competing claimant was an actor in her company, the courts saw the entitlement to copyright very differently.

The earliest case involving a commissioned work was Atwill v. Ferrett, a theater case which stated a general rule that the writer of an opera was the author, even if the work was commissioned by another.74 The opinion also stated, however, that since the theater manager who had commissioned the work had been so involved in modifying the opera, he was entitled to a copyright in the version performed in his theater. The plaintiff, Atwill, sought to produce in New York an opera, The Bohemian Girl, that had been composed and performed in Europe. He commissioned an unnamed third party to compose an arrangement of the opera, and Atwill copyrighted the new arrangements in his own name. The defendants copied and sold the plaintiff’s arrangements and, in demurring to the infringement suit, argued that the plaintiff’s copyright was void as he was not the composer. The plaintiff’s counsel argued that, under English law, one could secure the copyright in works he had commissioned others to create. The court rejected the contention. In the court’s view, the English cases

recognize the right of authorship, although the materials of the composition were procured by another, and  also  an  equitable title in one person to the labors of another, when the relations of the parties are such that the former is entitled to an assignment of the production. But, to constitute one author, he must by his own intellectual labor applied to the materials of his composition, produce an arrangement or compilation new in itself.75

The cases cited, according to the court, related to “new productions arranged or compiled from materials before known, or obtained by others for the author, and not to the appropriation by copyright of those materials in the same state in which they are furnished.”76   The  court  ultimately  determined  that  the  plaintiff ‘s

74.   2 F. Cas. 195 (1846).

75.   Id at 197-98.

76. Id at 198.

allegations of having added to and altered the music were legally sufficient to constitute him the author. It cautioned, however, that if the plaintiff’s title had rested only on his having commissioned the composition, his claim would have been defective. In short, although the court was prepared to recognize as a matter of equity that an author might have a duty to assign the copyright in a work he had been commissioned to create, the law of copyright recognized no principle that employment or a commission to create by  itself entitled the employer to the copyright. The court simply asserted, without defending the proposition, that only intellectual labor could make one an author.

The irony of Atwill v. Ferrett  is palpable. Notwithstanding the court’s insistence that only intellectual labor could make one an author, both the plaintiff and the unnamed third-party author of the arrangement of the opera  were pirating it from the European composer and librettist. They were not alone: American book publishers and theater managers were notorious in their liberal reprinting of works that appeared abroad. As described below, Dion Boucicault, who  fought so hard for improved American copyright protection for authors, freely borrowed from others. Yet what is significant about Atwill is the clear statement of law: employers acquired a claim to the copyright based only on their intellectual contributions, not by virtue of having paid the employee to create.

The same principle of employee ownership was asserted in another case fifteen years later, in a dispute between the copyright owner of a book and newspaper publishers who allegedly printed the entirety of the book in the papers. In De  Witt v. Brooks, the plaintiff  registered a copyright in a book about the life and exploits of a pirate.77 Part of the book was allegedly written by the pirate himself, part was the pirate’s alleged confession to a Deputy U.S. Marshal, and part was a description of the “phrenological character” of the  pirate  “as described by L.N. Fowler, Office U.S. Marshal.”78 Although the court’s opinion has been lost, the headnotes state that the court held that the plaintiff could not maintain the action for infringement because he was not the author: “The literary man who  writes  the book and prepares it for publication is the author, and the copyright is intended to protect him and not the person who employed him.”79

77. 7 F. Cas. 575 (C.C.S.D.N.Y. 1861). The report in Federal Cases contains only the headnotes. 13 Copyright Dec. 756 contains the declarations of the plaintiff and the defendants and a note indicating that the opinion of the court has been lost.

78. 13 Copyright Dec. at 757.

79.    7 F. Cas. at 575.

D. Cartography and Copyright: The Making and Publishing of Maps and Charts

Unlike other industries described in this paper, there appears to have been little reported litigation over the copyrights  to maps. Nonetheless, map-making is an important counterpoint to law publishing and theater in a study of copyright. The available evidence suggests that employers may have obtained the copyrights to the works of their employees even if the legal rules described above would suggest they were not entitled to them.

The first American copyright act mentioned only books, maps, and charts among the works subject to copyright. It was not established until the mid-nineteenth century that music and art could be copyrighted. Photography, lithography, and other media followed in the late nineteenth and early twentieth centuries.80 Maps and charts were in great demand in early America because of the rapid expansion of white settlements into new regions, the development of roads, canals, and railroads, and the absence of a long-established collection of maps for the white population.  Especially  noteworthy for my purposes, the making of all but the most rudimentary maps required the efforts of many people, including surveyors, draftsmen, and printers.

My study of the cartography literature suggests that this is a field where, from the beginning, the person or firm who managed to organize the collective effort of the surveyors, draftsmen, and printers was the one who claimed the copyright.  The secondary literature does not reveal, however, whether the person or firm who claimed the copyright contracted with the various contributors to assign whatever rights they might have, or whether they simply assumed they owned it.

For the most part, mid-nineteenth-century cartography seems to have been characterized by small enterprises: partnerships, sole proprietors, and, later, small corporations.81 The  publisher–often one or two individuals, sometimes a firm–usually claimed the copyright.82  What the publisher did to merit such a claim varied. A

80.   See 4  Stat.  436  (1831)  (music);  11 Stat.  138 (1856)  (dramas);  13 Stat  540  (1865)

(photographs);  16 Stat 212 (1870) (painting, drawing,  and sculpture); 31 Stat 488 (1912) (motion pictures).



82. See, for example, the discussion of Henry Francis  Walling and his “Map Establishment” in New York City. RISTOW, supra note 81, at 332. Some of his maps stated that the surveys had been made “under the direction of H.F. Walling”; some have the imprint, “Engraved, Printed, Colored Mounted at H.F. Walling’s Map Establishment”; and some have the imprint  “Walling & Rice, Publishers.”  Id  S ee also Judith  A. Tyner, Images  of the

single person seldom did all the actual work of surveying, drafting, and design. Although one person could map a town or village with a compass and odometer, larger maps would require the work of more than one surveyor. Maps frequently gave credit to the engraver or lithographer, but not to the draftsmen or surveyors. In some cases, an individual who sought to publish a map did the surveying and draf ting himself and contracted with an engraver, lithographer, or printer to manufacture it.83 In others, a publisher with no professional training or experience in cartography or surveying staked his claim to the status of publisher based on his knowledge of map reproduction and printing.84

Even before some map publishers grew quite  large-Rand McNally was publishing a very large number of maps by the 1870s-the practice of not crediting the contributions of all but the supervising engraver was well established. Even during its early years, Rand-McNally did not identify the compilers, cartographers, or draftsmen who helped create its maps. At most the published maps credited the supervising engraver. An 1876 map said, for example,” engraved under the direction of C.H. Waite.” Immediately below that line, however, the map’s title cartouche read, “Drawn, Engraved and Printed in Colors (under Letters Patent) by RAND MCNALLY & Co. Chicago.”85

Cartography would seem to be a promising area for the study of copyright and the social construction of knowledge in the work relationship. The creative process is inherently collaborative and usually builds—-explicitly or tacitly–on past work. Cartography has been thoughtfully analyzed from this perspective, but the full implications of their insights have been suggested rather than studied.86 J. Brian Harley has written that,

Southwest in Nineteenth-Century American Atlases, in THE MAPPING OF THE AMERICAN SOUTHWEST 57, 60-77 (Dennis Reinhartz & Charles C. Colley eds., 1987) (discussing various atlases from 1817 to the 1880s).

83. Henry Francis Walling used this method, for example. See RISTOW, supra note 81, at 327.

84. Robert Pearsall Smith is an example. See RISTOW, supra note 81, at 339-53. Another prominent example was Matthew Carey, one of the leading publishers in Philadelphia and, hardly coincidentally, the publisher of Wheaton’s Reports of the Supreme Court decisions. See supra text accompanying notes 44-62.

85. RISTOW, supra note 81, at 471-72. The patents were presumably for the color printing process. A similar phenomenon regarding authorship-usually, but not always, the publisher claimed it-may be seen in the maps of the American Southwest discussed  in Tyner, supra note 82, at 57, 60-77.

86. See, e.g., J.B. HARLEY, THE NEW NATURE OF MAPS: ESSAYS IN THE HISTORY OF CARTOGRAPHY 35-36 (Paul Laxton ed., 2001); SHORT, supra note 81, at 34 (arguing that “the illusion of single authorship” and that “maps resulted solely from the gaze of the  Western observer”  are  two  misconceptions   about   early  American   maps,  but   that   maps  were  often

far from holding up a simple mirror of nature that is true  or false, maps redescribe the world–like any other document-in terms of power and of cultural practices, preferences, and priorities. What we read on a map is as  much related to an invisible social world and to ideology as it is to phenomena seen and measured in the landscape.87

He also noted that, “more than many  other texts, maps are thus mediated by a series of technical activities, each performed by a different ‘author.”’88 Cartographers evidently debate  the extent to which copyright should restrict later cartographers from using earlier maps.89 Yet, the dearth of reported litigation suggests that proof of infringement was either so difficult or so easy as to make few cases uncertain enough to require litigation to a published disposition.

The paucity of reported decisions involving disputed claims to copyrights in maps or charts suggests that the question of map copyright ownership appears to have been  resolved significantly through self-help.90 The evidence that does exist is somewhat contradictory. On the one hand, there is the case of Abraham Bradley, Jr., Assistant Postmaster General  in the late eighteenth century, who obtained one of the earliest copyrights for a map in

U.S. history.91 Bradley obtained information from postmasters in various parts of the country, and it was their work–the fact that his map was based on new information rather than on previously published maps–that distinguished it from maps published before. Significantly,  although  Bradley  obtained  the  information  on which

his map was based from government officials in connection with his official duties, he copyrighted it in his own name and published it privately.

In some respects, he was like the reporters of decisions, in that he was copyrighting a work produced during the course of his government  employment,  and he was even more of  an “employee”

composites building on earlier maps, the notes and sketches of travelers, and the reports of indigenous peoples).

87. HARLEY, supra note 86, at 35-36.

88. Id at 38.

89. See, e.g., id at 199 (referring to “the perennial copyright problem,” but suggesting that a more pressing ethical issue for cartographers should be the political and social judgments they make when they draw maps, such as when cartographers of South Africa made the white urban areas the center of city maps and the black townships all but invisible).

90. The editors’ note following one case stated that “[t]he publication of a map made from materials collected while in the service of the government as draughtsman belongs to the government.” Chapman v. Ferry, 12 F. 693, 696 (C.C.D. Ore. 1882). However, the report of the case indicates  it concerned available remedies for copyright infringement rather  than ownership of the copyright as between employer and employee. Id at 695.

91. This 1796 map was obviously the product of work by postal employees. My account . draws primarily on RISTOW, supra note 81, at 20, 70.

(and less an “independent contractor”)  than  they  were.  It may  be that the Post Office concluded, just as the courts had, that allowing government employees to copyright their work would be most likely to ensure that the map would be published and distributed widely to those who might benefit from it. Although Bradley’s chart  became the official map of the United States Post Office around 1825, the nature of his understanding with  the  Post  Office  about  ownership and use of the map is not known. Bradley had practiced law before his appointment to the Post Office Department, which may explain his interest in asserting his legal rights to the map. His legal experience is also likely to have given him greater sophistication in negotiating over copyright than most employee authors had at that time.92

Although Bradley’s exploits  suggest a principle of employee ownership akin to those enjoyed by reporters and playwrights, a few cases and an attorney general opinion suggest a different rule regarding maps prepared by government employees. These cases might be read either as exceptions to the early rule of employer ownership or as evidence of the coming of  the  transition  period, since they were all decided in the late 1850s.93

92. Other persons commissioned by the government to compile maps may also have claimed the copyright. The commander of the U.S. Army operations in Texas in 1849, General William Jenkins Worth, commissioned the Federal Indian Agent for Texas, Robert Simpson Neighbors, to determine whether troops could pass through Texas between the Pecos and El Paso. Neighbors recruited a former Ranger, John Salmon “Rip” Ford, to accompany him. Both Ford and Neighbors prepared reports; Ford’s report was incorporated into a pamphlet published in 1849 by a draftsman employed by the General Land Office named Robert Creuzbaur, who evidently sought to profit from sales of the pamphlet to the large number of people crossing Texas on their way to the California gold rush in 1849. The pamphlet was privately published in Austin and in New York in 1849. See Robert Sidney Martin, United States Army Mapping in Texas, 1848-50, in THE MAPPING OF THE AMERICAN SOUTHWEST, supra note 82, at 37, 42-43 & n.16. This article reveals nothing about the copyright on the map or about the nature of the employment relation (if any) between Ford, Neighbors, and the U.S. Army. I infer it was privately published because the citation is to a New York publisher and to Creuzbaur for the Texas publication. However, the maps prepared by Neighbors and Ford probably were incorporated, along with maps and surveys conducted by other Army personnel in 1848-1850, into a larger  map that was presented to the Senate and printed by the War Department in 1850. Id at 55-56 & n.50. Thus, the private publication and perhaps sale of the earlier version might not have been objectionable, since the U.S. Army  obtained  what  it wanted in the process.

93. No provision in the early Copyright Acts addressed government maps. In Atwill v. Ferrett, the court mentioned in passing that “the title to road-books, maps & c., rests upon [the] principle” that one who, by his own intellectual labor, produces a new composition may claim the copyright even if others procured the materials for him. 2 F. Cas. 195, 198 (C.C.S.D.N.Y. 1846). The 1909 Copyright Act, repeating the prior rule established in the Printing Act of 1895, prohibited copyright in “any publication of the United States Government.” 17 U.S.C. § 8 (1909). See supra note 63. However, if a cartographer copyrighted the map before publication by the government, he might have retained the copyright, as § 8 also provided that “the publication or republication by the Government, either separately or in a public document, of any material in which copyright is subsisting shall not be taken to cause any abridgement of the copyright.” Id

One 1858 case concerned a map made by a cartographer who had gathered his materials either while conducting surveys in the employ of the Commonwealth of Pennsylvania or while employed as a draughtsman “of a party working  at her cost.”94 The court held that all rights to the map were the property of the state, as all the results of his labor while in the  state’s employ  were  state property.95  An 1856 opinion letter written by Attorney  General  Cushing  to Jefferson Davis, then serving as Secretary of War, concerned a man who had contracted with the government to engrave plates for a nautical chart, the original manuscript of which was the property of the United States. Attorney General Cushing  opined  that  the engraver had no right to make prints from the engravings: “The printer, who is hired to print any of the works of Irving, Prescott, or Bancroft, might, with as much sense and reason, claim a copyright in them against the author, as Seibert can set up such claim here against the United States.”96 But, unlike Bradley, he appeared to be copying an existing chart in a new medium rather than designing a new map from survey data; the different levels of originality in the mapmakers’ work might, therefore, explain the result  as much  as their employment  status.

A case decided in 1857, concerning a field related to cartography, suggests the likelihood that surveyors, engravers, and printers may have explicitly agreed that copyrights would be owned by the publisher. In Heine v. Appleton, an artist named William Heine accompanied an expedition to Japan and the China Sea commanded by Commodore Perry.97 The U.S. Government had funded the expedition, and Heine’s drawings were included in the expedition report to the Secretary of the Navy, which was published by order of Congress. When Heine later sought to enjoin publication of books containing his illustrations from the expeditions, the court denied the injunction on two alternative grounds. First, the court found that Heine and Perry had expressly agreed that Heine’s drawings would become the property of the U.S. government.98 Second, the court found that, after the expedition, the defendants (publishers of the books) had paid Heine to modify several of the original drawings to make them suitable for inclusion in the books. At that time Heine had not claimed the copyright in the drawings. “It would be inequitable now to permit him, when he has been paid to aid in their

94. Pennsylvania v. Desilver, 3 Phila. 31, 14 Copyright Dec. 2039 (C.P. 1858).

95. Id 14 Copyright L.Dec. (CCH) at 2039.

96.   7 Op. Att’y Gen. 656 (1856), 15 Copyright Dec. 3049.

97.    Heine v. Appleton, 11 F. Cas. 1031 (C.C.S.D.N.Y. 1857).

98.   Id at 1032.

publication and sale, and has thus aided in their publication, with a view to their sale, to stop their sale, even if he had a valid copyright in them.”99

Heine cannot be read as an early work-for-hire case in the modern sense of works-for-hire. Neither of Heine’s alternative holdings recognizes that the employer would own the copyright to employee drawings simply by virtue of employment. One holding relied on an express agreement and emphasized that  Heine  persuaded Commodore Perry to allow him to accompany the expedition  only by promising that the government would own his sketches and drawings.100 The other relied on the notion that Heine was estopped from seeking an injunction against publication of drawings because he had been paid to modify them for publication and had failed to claim a copyright.

At the very least, the example of cartography suggests that even during the mid-nineteenth century (and certainly later), the attribution of authorship and the ownership of copyright of works produced for commercial purposes depended on the nature of the work relationship and the creative process that occurred within it. The more likely that there were multiple creators, the more likely that copyright could be claimed by the coordinator of the creative effort rather than by other contributors. Had the cases that ended up in litigation forced courts to contemplate such a creative process, they might have crafted a different sort of default rule for all other cases involving the employment of creative people. Later in the century, when cases that involved collaborative creative processes in the workplace were litigated, courts struggled to decide whether

99.   Id at 1033.

100.   The opinion explained the negotiations as follows:

Previous to the sailing of the expedition to Japan, the plaintiff applied to Commodore Perry, to be employed as an artist, and to accompany the expedition, as  such . . . . [F]inally the commodore consented to receive him in the capacity of a master’s mate, on condition that he should sign the shipping articles as such master’s mate, and  do whatever duties might be required of him, and be subject to all the rules and regulations of the squadron. When the commodore consented that the plaintiff might join the expedition, he informed him that all the sketches and drawings which should be made by any one attached to the expedition were to be the exclusive property of the government of the United States, and that no one could appropriate to his own use any sketch or drawing that might be made. To this the plaintiff gave his assent . . . . Upon the return of the expedition to his country, the sketches and drawings which the plaintiff made, were, with his assent, incorporated in the report made by the commodore to the secretary of the navy, and were placed at the disposal of congress; . . . Under these circumstances, the plaintiff was not such author of the prints and engravings in question, as to be able to acquire an exclusive right to the same as author or proprietor, by virtue of the certificate of copyright which he obtained. The sketches and drawings were made for the government, to be at their disposal.

Id at 1032-33.

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these early precedents,  which clearly articulated a rule uf employee ownership, were distinguishable.

The change in default rules between the early nineteenth century and the early twentieth may be explained, in part, by a rise in the number of cases involving employees who participated  in collaborative creative processes. The more the courts saw cases in which a number of people had contributed to the work, the more logical it was to accord the copyright to the representative of the collective-that is, the employer. On the other hand, the increasing presence of collaborative creation surely was not the only factor. As explained below, cases involving individual authors working alone (although in the employ of another) continued to dominate the field of  employee-employer  copyright  litigation  throughout  the nineteenth  century.

Prior to the Civil War, no court recognized that an employer was entitled to copyright the works of its employees simply by virtue of the employment; indeed, courts assumed just the opposite. It took an express agreement to assign the copyright to the employer,  as in Heine v. Appleton, to persuade a court to conclude that an employer owned the copyright. The strikingly pro-employee law was a function of the elevated social status and independence of the  “employees” who created the work, the judges’ assumptions  about the nature of the creative process, instrumental concerns about facilitating book distribution, and the powerful rhetoric of authorship as highly personal  intellectual labor.


In the postbellum period, courts began to recognize the rights of employers in the copyrighted works of their employees. At the beginning, employer ownership was based on the existence of an express contract granting the employer the copyright or, in one case, on an equitable principle, not a copyright rule. By the end of the century, however, courts increasingly began to  describe the employment relationship as a contract by which the employer acquired the rights to all of the employee’s work, including the copyrights. Furthermore, by the end of the century, corporations as employers came to the fore. In the earliest such cases, the personal involvement of the corporation’s president was identified as the basis for corporate copyright ownership, but in the twentieth century, courts came to understand that a corporation-the quintessential “corporate” (as in collective) author–should own the rights to the work created by all of the persons who worked for the corporation.

A. Civil War Theater and the Beginning of the End of Employee Ownership

A spate of theater cases decided in 1860, 1861, and 1862 began the transition from the old rule of  authorial  ownership  to  the  modem rule of employer ownership. All involved actors-cum-theater managers who contracted with theater owners to write a play to be performed in the theater. The cases stated a rule that the employee/actor/stage manager owned  the  copyright  and  the employer at most had a license to perform it in  that  particular theater for that particular run. Yet the  courts  suggested  the possibility for greater rights for theater manager/employers by emphasizing the contributions that they had made to the changes in the plays. Because these cases involved some of the most acclaimed actors of their day, it is unclear how much light they shed on how courts would (or did) handle anonymous, unreported cases involving litigants who were not celebrities.

The first two cases involved The Octoroon, written by the famous playwright and actor, Dion Boucicault.  These cases should  be understood in the context of their facts. Boucicault was famous and, at the time of the litigation, had already had plays produced in New York theaters. He had made his debut on the American  stage  in Boston and New York in 1854, he and his wife appeared in numerous plays he had written in the late 1850s, and he received significant attention for his successful play, The Poor of New York, which opened in 1857 at Wallack’s  theater in New York.101 Thus, at the time the pair of Octoroon cases were  decided, Boucicault was hardly the ordinary, anonymous employee. He was something of a celebrity in American theater, and he was a recognized playwright (even if some  took a  dim  view of the intellectual merit  of Boucicault’s  work).102

Boucicault had been active in a successful effort to secure improved copyright protection for American playwrights. Along with others, he had lobbied Congress to amend the law to provide for copyright protection in presentations of plays as well as in their texts; Congress enacted such a law in 1856.103 Ironically, as one of Boucicault’s biographers tartly observed, Boucicault fought for copyright revisions and litigated to protect his rights, yet “he had not

101. See generally RICHARD FAWKES, DION BOUCICAULT (1979); HOGAN, supra note 73.

102. Boucicault ranked only behind Shakespeare as the most frequently performed playwright in Philadelphia theaters between 1856 and 1878. The numbers were: Shakespeare, 2314; Boucicault, 1587; Tom Taylor, 934; J.B. Buckstone, 839; John Brougham, 829; and J.M. Morton, 652. BRUCE A. MCCONACHIE, MELODRAMATIC FORMATIONS: AMERICAN THEATRE AND SOCIETY, 1820-1870, at 241 (1992).

103.    11 Stat. 138 (1856).

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the least hesitation in continuing his piratical raids on French dramatic literature and, indeed, any place that  suggested  a  fertile idea. Sometimes he quite generously acknowledged his source, but I doubt that he usually paid any royalties.” 104 He complained bitterly about London theater managers who preferred to pay £25 for a translation of a successful French play than £300 to £500 for a new but untried work. By such practices, Boucicault protested, “the English dramatist was obliged to relinquish the stage altogether or to become a French copyist.”105 Or, as Boucicault himself labored to do, the dramatist simply had to make sure that his pirated versions  of others’ works were more successful than others’ pirated versions of his.106

Just as Boucicault was no ordinary  employee,  The Octoroon was no ordinary work.101 Its portrayal of life on a Louisiana plantation created a sensation in American theater, in part because it dealt with slavery in a way calculated to offend neither North nor South by suggesting that slavery was an intolerable system while depicting Southern slave owners as sympathetic characters. The portrayals of the slaves (and the Indian, who was played by Boucicault)  were at once dismally racist and yet humane (at least by the white standards of the time).108

According to the facts recited in the opinion, Boucicault wrote the

104. HOGAN, supra note 73, at 33.

105. Id (quoting Dion Boucicault, The Decline of the Drama,  125 N. AM. REV. 243 (September  1877)).

106. Boucicault was not alone in such “raids” or in complaining about the lack of copyright protection. Others complained that Laura Keene preferred foreign plays  to  native  ones because she could obtain them free. Tice L. Miller, The Image of Fashionable Society in American Comedy, 1840-1870, in WHEN THEY WEREN’T DOING SHAKESPEARE: ESSAYS ON NINETEENTH-CENTURY BRITISH AND AMERICAN THEATRE 244 (Judith L. Fisher & Stephen Watt eds., 1989)[hereinafter WHEN THEY WEREN’T DOING SHAKESPEARE].

107. It was Boucicault’s first success in American theater; he evidently had made a careful study of American theater and American taste and in the  Octoroon he finally hit gold. James Hurt, ‘in WHEN THEY WEREN’T DOING SHAKESPEARE, supra note 106, at 255.

108. See Dion Boucicault, THE Octoroon, in SELECTED PLAYS BY DION BOUCICAULT 135-90 (Andrew Parker ed., 1987). The story of The Octoroon is worth telling. A Louisiana plantation is to be sold to satisfy debts incurred by its late, spendthrift former owner, Judge Peyton, on account of the mismanagement of the scheming yankee overseer M’Closky. The slaves are to be sold along with the plantation. The plantation had been left to the judge’s son, George, a charming playboy recently returned from Paris. Zoe, the judge’s daughter by a slave, is to be sold along with the slaves because the judge’s letter manumitting her is declared invalid on account of a legal technicality. Zoe had been raised as a daughter by Mrs.  Peyton. Naturally, George and Zoe fall in love. M’Closky arranges to intercept a letter and check containing enough money to pay off the debts, but the faithful slave, Paul, gets the letter first. M’Closky kills Paul and blames the Indian Wahnotee (played by Boucicault) for the murder. A camera happened to photograph the murder and later the  photograph  is  discovered.  The Indian Wahnotee avenges the death of Paul by murdering M’Closky. Unfortunately, M’Closky is discovered too late, because Zoe, who had already been sold to M’Closky at  the  slave auction, swallows poison to avoid her fate, and in the closing scene she dies in George’s arms.

play in 1859 while “employed as an actor and stage manager” of the Winter Garden  Theater in New York City.  William Stuart (sometimes spelled  Stewart) was the lessee and manager of the theater. A couple of years before, Stuart and Boucicault had opened the Washington Theater in Washington, D.C., but the theater was not a success.109 So the Winter Garden was not their first collaboration, and, obviously, Boucicault was not an “employee” in the sense of being Stuart’s subordinate.110

Boucicault and Stuart orally agreed that the former would, as one court found, “write a play representing life on the Mississippi, and that it should be performed at Stewart’s theater so long as it should continue to draw good audiences.”111 Boucicault quit the Winter Garden after six nights because he and his wife, Agnes Robertson, who also acted in the play, were in a dispute with Stuart over their salaries. The day before quitting, Boucicault registered  a copyright on the play in his own name. When Stuart continued to run the play without him, Boucicault brought suit in Massachusetts for a preliminary injunction,112 and in New York for damages.113 Although both courts found that Boucicault was Stuart’s employee at the time he wrote the play, neither thought that fact entitled Stuart to the copyright.

The Massachusetts court rejected Stuart’s defense that Boucicault was employed to write the play. The court determined that  he was employed as an actor and stage manager, but not as an author, and that a simple agreement to write a play for his employer did  not entitle the  employer to the  copyright.114 The court’s framing  of the case left open the possibility that an employer might obtain the copyright of works by one employed for no purpose other than to write.

In the suit for damages two years later, the New York court did not emphasize the difference between employment as an actor and employment as a writer. Rather, it suggested that only an express contract would entitle the employer to the copyright in any of its employees’ works because of the special nature of authorship. Boucicault’s  agreement  to write and perform  in the play, and to

109. HOGAN, supra note 73, at 40.

110. Boucicault indeed is credited in some books as being the producer of the play; certainly one may think of him and Stuart more as partners than as employer and employee in the modern sense. See, e.g., MARY CAROLINE CRAWFORD, THE ROMANCE OF AMERICAN THEATRE 369 (1913).

111. Roberts v. Myers, 20 F. Cas. 898, 899 (C.C.D. Mass. 1860).

112. Id at 898.

113. Boucicault v. Fox, 3 F. Cas. 977 (C.C.S.D.N.Y. 1862).

114. Roberts, 20 F. Cas. at 899.

36 Yale Journal of Law & the Humanities (Vol.  15:1

share half the profits from it, did not confer upon Stuart title to the drama:

The title to literary property is in the author whose intellect has given birth to the thoughts and wrought them into the composition, unless he has transferred that title, by contract, to another. In the present case, no such contract  is proved.  The most that could possibly be said, in regard to the right of Stuart, or his trustee, in the play, is, that the arrangement entitled them to have it performed at the Winter Garden as long as it would run.115

Note how the paternity metaphor-the work is the “brat of the brain,” in Daniel Defoe’s terms, or “the author whose intellect has given birth to the thoughts” here-does the rhetorical work of justifying employee ownership. In the earlier theater case, Atwill v. Ferrett, the court had invoked the property metaphor to achieve the same result: “to constitute one an author, he must by his own intellectual labor applied to the materials of his composition, produce an arrangement or compilation new in itself.”116 In both cases, the crucial reasoning began with a metaphor of the nature of authorship that by itself was supposed to justify copyright-either the rights that flow from Locke’s theory of property or the rights of parents in their children-and then used that metaphor to justify employee ownership of the copyright.

The court ruled that only an express agreement to assign the copyright would suffice to transfer it from employee to employer. It grounded the rule in the particularly personal nature of authorship: “A man’s intellectual productions are peculiarly his own, and, although they may have been brought forth by the author while in the general employment of another, yet he will not be deemed to have parted with his right and transferred it to his employer.” 117 If authorship is the “bringing forth” of new life, a new creation, and the creation is “peculiarly” one’s own and irreducibly personal, a legal rule should not presume one has given away one’s property (or one’s children) in the absence of a clear intent to do so. Thus, the court articulated a clear statement rule, explaining that “producers” who employed “authors in particular literary enterprises” could easily, when they felt it in their interests, contract for employer ownership of the copyright, and that a contract transferring the copyright would

115. Boucicault, 3 F. Cas. at 980 .

116. Atwill, 2 F. Cas. at 198. See supra text accompanying note 75.

117. Id

be The personal nature of authorship, in the court’s view, justified a default rule of employee ownership and required a clear agreement to transfer the copyright to anyone else.

The third case in the trilogy  of actor/writer cases from the Civil War period was the 1861 case Keene v. Wheatley, which concerned the famous play Our American Cousin.119 The decision articulated a very different and more employer-friendly view of copyright ownership. Keene drew on a variety of precedents having to do with ownership of inventions 120 and trade secrets,121 and with the doctrine of Lumley v. Wagner, which held that an opera singer who breached a contract to perform at one theater could be enjoined  from performing elsewhere for the term of her contract.122 Significantly, it did not rely on copyright doctrine or on any of the copyright cases that preceded it.123

According to the statement of facts, Joshua Silsbee, an American actor, had performed in Our American Cousin in Benjamin Webster’s famous London theater company. Silsbee returned with a copy of the play to the United States where he died, bequeathing the manuscript to his widow, who later sold  it to two Philadelphia theater producers, Wheatley and John Clark. Meanwhile, the British author of the play, Tom Taylor, sold the American rights to Laura Keene, the proprietor of a theater in New York, for $1000. With the assistance  of Joseph Jefferson,  an actor in her  company, Keene

118. Id

119. 14 F. Cas. 180 (C.C.E.D. Pa. 1861). The play is about a gullible English baronet whose financial advisor swindles him out of the family fortune. To save the fortune, the baronet’s lovely daughter is engaged to be married to the unscrupulous advisor. An American relative turns up on the scene and eventually everything is straightened out. TOM TAYLOR, OUR AMERICAN COUSIN: THE PLAY THAT CHANGED HISTORY (Welford Dunaway Taylor ed., 1990).

120. See 14 F. Cas. at 187 (“Where an inventor, in the course of his experimental essays, employes an assistant who suggests, and adapts, a subordinate improvement, it is, in law, an incident, or part, of the employer’s main invention.”).

121. See id at 186-87 (“A calico printer discharged his head colorman, who sued him in trover for a book of entries of processes of mixing the colors used in his business. . . . The decision was that he could not recovery . . . . [T)hough there might be inventions of the plaintiff in it, yet they were the property of the master.”) (citing Makepeace v. Jackson, 4 Taunt. 770). The principle of employer ownership of a book of secret dye recipes and samples·was later adopted in Pennsylvania in a pair of cases, Dempsey v. Dobson, 39 A. 493 (Pa. 1898), and Dempsey v. Dobson, 34 A. 459 (Pa. 1896). I discuss them in Fisk, Law and the Employee Inventor, supra note 27, at 1154-56.

122. See 14 F. Cas. at 186 (citing Lumley v. Wagner, 42 Eng. Rep. 687 (Ch. 1852)). In a related case, a court held that a theater manager could be enjoined from soliciting the singer to break her exclusive engagement. Lumley v. Gye, 118 Eng. Rep. 749, 755 (Q.B. 1853). The Lumley doctrine is discussed in Lea S. VanderVelde, The Gendered Ongins of the Lumley Doctnne: Binding Men’s Consciences and Women’s Fidelity, 101 YALE L.J. 775 (1992).

123. 14 F. Cas. at 188 (“[T]he equitable jurisdiction which we are now considering is exercisable on grounds which are independent of proprietary right in the party injured, or in any other person.”).

adapted it for performance in her theater. 124 After the play’s wildly successful run at Keene’s Theater in New York, Keene and her theater company took it to Ford’s Theater in Washington, D.C. 125

Due to Our American Cousin’s huge success in New York-which not only shaped taste in theater, but also created fashion 126-theater managers in other cities eagerly sought to mount their own productions and share in its success. Jefferson, too, sought to share the wealth and sold to Wheatley and John Clark the additions he had developed with Keene’s company. But Keene, who had a long and successful career as an actress and  theater manager, was a determined adversary. In addition to acting, managing her theater, and touring, Keene also had a play-brokering business. She constantly sought out new material and revised it to suit her needs; she wrote her own plays; she copyrighted all of the plays in her own name; and she frequently licensed them to theater managers all over the country. 121 It is thus not surprising that Keene litigated over the rights to the play, for she obviously thought of plays as valuable literary properties that she could license to others as well as perform herself. She regarded the company’s changes to Our American Cousin as her property rather than as the creative property of Jefferson and the others. She copyrighted the play shortly before the

124. Id at 182.

125. It was during the play that John Wilkes Booth shot Abraham Lincoln. He was able to plan the assassination because he knew the play and the theater. After Booth shot Lincoln, he jumped from the state box down onto the stage, knocked Keene out of his way, and ran out the stage door. Keene went up to the box and held Lincoln’s head for some of the time until he was carried to the boarding house across the street, where he died. She stayed with Mary Todd Lincoln at the boarding house until morning. Evidently Keene’s blood-stained dress became an artifact much sought-after by souvenir hunters. Keene herself was briefly arrested when she and her company left Washington, presumably on suspicion that she had been involved  in Booth’s plot. She was promptly released and never prosecuted. VERNANNE BRYAN, LAURA KEENE: A BRITISH ACTRESS ON THE AMERICAN STAGE, 1826-1873, at 136-42 (1993).

An interesting coincidence is that Lincoln saw the play on the closing night  at  Ford’s Theater; the play scheduled to open the next night was The Octoroon. See TAYLOR, supra note 119, at 30 (showing a photograph of Ford’s Theater draped in black following the assassination, and in the foreground a billboard announcing The Octoroon, which was scheduled to open). The enormous popularity of both plays makes the coincidence not improbable. Boucicault and Keene had also collaborated on other projects. He wrote  the famous play The Colleen Ba wn for her, which premiered in March 1860. CRAWFORD, supra note 110, at 370-71.

126. However, perhaps it is a bit much to call it “the play that changed history,” as one recent work does. TAYLOR, supra note 119.

127. She offered to license one of “her plays” to a Boston theater manager as follows:

It is now the sensation of London and Paris. It has been carefully rewritten by myself to suit America. All my stage knowledge has been employed to give the two grand scenic effects the elements of such a success as will create a genuine sensation. The story is simple, yet thrilling, the piece full of good parts, incidents and fun. . . . It must be played immediately in your city and I give your house the preference therefore an early reply will oblige.

BRYAN, supra note 125, at 115-16.

premiere, and, according to her biographer, she dreamed up the title when she filed for copyright because Tom Taylor, the play’s original author, had not titled it.128

The work of those in Keene’s company, including Jefferson, who played the American cousin, Asa Trenchard, may have contributed to the success of the play. Keene allowed an unprecedented two weeks for rehearsal of the play before it opened in New York, and it must have been during those two weeks that the play evolved to the point that she and others would dispute ownership. The two weeks “gave the cast members the unusual privilege of ‘developing their characters.”‘ 129 Jefferson developed the American cousin character he played by significantly altering a stock character in nineteenth century theater (the “Yankee”), transforming the role from a “droll, awkward, bumpkin” or “broad and extravagant boor” into someone of “stature,” a “quiet, easy, natural, and at the same time excessively droll fellow.”130 Edward Sothern created many distinctive aspects of his Lord Dundreary character: He evidently devised the drooping mustache that became the hallmark of an eccentric comic as well as a variety of verbal and physical tics that became staples of nineteenth­ century comedy.131 The cast, which included and was directed by Keene, collectively revised the script. Keene designed elaborate new sets.132 All the work paid off. Sothern and Jefferson became stars and Keene’s own fame and wealth grew.133

The court  concluded  that,  because  the  British  author  was  not  a

U.S. resident, Keene did not have a valid copyright claim to the original version of the play.134 Moreover, she could not obtain a copyright  for  the  additions,  even  though  they  were  done  by

128. Id at 83. Keene and Jefferson disagreed about the extent of their own contributions in revising Taylor’s version of the play for the American stage. Keene’s biographer emphasizes Keene’s rewriting. Id. Jefferson’s autobiography, not surprisingly, emphasizes his. He suggests that Keene initially “thought little of the play, which remained neglected upon her desk for some time” and that it was only because her business manager “chanced” upon it and gave it to Jefferson, who saw “the chance of making a strong character of the leading part,” that the play was recommended for production. JOSEPH JEFFERSON, THE AUTOBIOGRAPHY OF JOSEPH JEFFERSON 193-94 (New York, Century Co. 1889).

129. BRYAN, supra note 125, at 83.

130. Id at 84 (quoting Frank Leslie, ILLUSTRATED NEWSPAPER, Mar. 5, 1859).   1

131. See CRAWFORD, supra note 110, at 334. The book also contains a photograph of Sothern as Dundreary.

132. Id

133. Id at 327-33. The play was so popular that she gave benefit performances to raise money for good causes, and eventually she established the tradition of  a  charity  matinee. Society ladies who previously had snubbed Keene began to flock to her theater for the charity performances, and Keene began to find the social acceptance that eluded most actresses and theater people. She also found prosperity. Jefferson quipped that during the run, Keene began “to twinkle with little brilliants until at the end of three months she was ablaze with diamonds.” BRYAN, supra note 125, at 84 (quoting JEFFERSON, supra note 128, at 194).

134.   14 F. Cas. at 185.

American residents (principally  Joseph  Jefferson),  because  they were only accessions, not an independent work. Nor could she challenge the defendants’ use of the play obtained from Silsbee’s widow on any other grounds, for they owed her no duty not to use it.135 But the court found she could seek a remedy for the use of the additions procured from Jefferson, which is what makes the case particularly significant:

Mr. Jefferson, while in the general theatrical employment of the complainant, engaged in the particular  office of assisting in the adaptation  of  this play; and made  the  additions in question  in the   course   of   his   willing   performance of   this   duty.   She consequently  became the proprietor  of them as products of his intellectual exertion in a particular service in her employment.136

To reach this result, the court downplayed the relevance of copyright law, looking rather to general principles of “equitable jurisprudence,” independent “of any question of literary proprietorship.” 137 Rather than emphasizing the role of the author, the court relied instead on cases involving other sorts of employees: a calico printer forced to relinquish a book of his dye recipes when fired,138 and the opera singer Johanna Wagner, who was enjoined from performing for any other theater during the term of her exclusive engagement.139 The court further relied on general principles governing “secrets of inventors, or improper disclosures of knowledge acquired in professional relations or in those of service or agency.”140

The  court’s  treatment   of   these  cognate  doctrines  involving ownership of workplace knowledge–the enticement rule of Lumley v. Wagner, the emerging trade secret rule–was unprecedented. Most of the cases it cited involving employees were of recent vintage (none was more than a decade or two old), and Keene v. Wheatley was the first court to put them all together in a published opinion articulating a default rule of employer ownership. The court stated a general principle of employer ownership of employee knowledge or creative works at a time when very few courts had so ruled and when there were some cases stating just the opposite.


Note 141. Keene’s win in Keene v. Wheatley in 1861 was not the end of the story. She spent years and instituted at least three suits trying (unsuccessfully) to protect her exclusive right to Our American Cousin. Six years later, Keene was again trying to fend off those who sought to produce the play  without  her  permission. 142  She learned that Edwin Booth, brother of  the  infamous  John  Wilkes  Booth, 143 had purchased the Winter  Garden  theater  and  named  as manager her adversary from Keene v. Wheatley, the co-defendant John Clark. She sued Clark and, perhaps growing skeptical about the efficacy of legal remedies, took her fight public. She wrote a letter addressed to him, but intended for publication, in which she accused him of theft. She asserted that it was her “enterprise, industry and  expenditure” that made the play a success:

You know well this is not a case of copyright it was my personal, private property, and should have been held sacred to me  by every respectable member of our profession . . . . I am so identified with that play that I consider it one of my most valuable possessions. Why seek to deprive a woman of her honestly acquired property? Why not take the Beteran or Rosedale or any other play owned by a man? 144

142. Keene v. Clark, 2 Abb. Pr. (n.s.) 341 (N.Y. Super. Ct. 1867). In Keene v. Clark, Keene sought to prove that her entitlement to Our American Cousin was res judicata by virtue of the judgment in Keene v. Wheatley. (She could assert res judicata because Clark was a defendant in both suits; presumably her theory was that Booth was in privity with Clark and thus could be bound by the judgment in the first suit even though he was not a party.) The trial court refused to admit the pleadings and decree, but on appeal the Superior Court held that  the record should be admitted, and remanded for a trial at which Keene would prevail if she proved that she had not printed or otherwise dedicated to the public the manuscript to her version of Our American Cousin, and that Clark had obtained a copy of it from a “surreptitious source” and intended to produce it in New York. Id. at 341. Neither the published opinion nor Keene’s biography indicates what happened after the Superior Court sent the case back for trial. Presumably it settled, though on what terms remains unknown.


Note 144. The letter read:

Sir-I see by your advertisement in the Herald that you purpose playing Our American Cousin. No one in our profession is better aware than yourself that in all honor, honesty and fair dealing the said play is my sole property. I gave the author a large sum for it when it was an unacted manuscript. By my enterprise, industry and expenditure, I made the play a great success. You then being one of the managers of the Arch street theatre, Philadelphia, determined to act the play. You obtained a copy of it, which was proven on trial to have been stolen from the author, Tom Taylor. I brought a suit against you then and it was proved you had obtained all the original matter which had been written by my stage manager and myself from an employee of my theatre. Judge Cadwalader decided against you, and under whose decision you were compelled to play damages. You ultimately apologized for your share of the transaction and wished to shift all the blame on others. You had made many thousands of dollars, however, while the suit lasted. Since then you have played it in Washington, Baltimore, etc., knowing full well that my professional engagements would prevent restraining you by law from so doing. In these places you have again made large sums from its production. Should not the money you

Keene was absolutely right that this was “not a case of copyright.” Unlike the cases involving The Octoroon, the ruling in her favor was based on “equitable principles,” not copyright, and thus it was nominally consistent with the Boucicault rulings. But at another level, it was not at all consistent. Except for the fact that she had been involved in adapting Our American Cousin, and no one alleged that Stuart had been involved in the creation of The Octoroon, there was no more reason for her to receive copyright protection than Stuart, so long as one adheres to the intellectual labor theory of authorship.

The court did not attempt to distinguish the cases, so why the difference? Perhaps it was Keene’s own involvement in adapting Our American Cousin that led the court to recognize her entitlement. Keene’s lawyer may have made in litigation the same  claim  that Keene herself later made in print: the play was her “personal, private property,” and the prod uct of her “enterprise, industry and expenditure.” Characterizing the  play  as Keene’s  own  work  made the claim of employer ownership more compelling because it did not contradict the extant justification for employee ownership of the copyrights to works that were entirely the product of  their  own efforts (even though they were employed to exert that effort).

Finally, there was her celebrity, the notoriety of the play, and the fact that it was well known that neither she nor Jefferson was really the  “author” in the  copyright  sense. These  facts, as well  as her

have already made from my property content you? You know well this is not a case of copyright it was my personal, private property, and should have been held sacred to me by every respectable member of our profession; but now, while I am absent from New York, you take advantage of that absence to play Our American Cousin. I am so identified with that play that I consider it one of my most valuable possessions. Why seek to deprive a woman of her honestly acquired property? Why not take the Beteran or Rosedale or any other play owned by a man?

The bad taste of seeking to deprive me of the use of this play is only equaled by your ever appearing in a comedy which ought to have only a memory of shame and horror for you and every member of your family. You cannot lift the cloud which has fallen upon our whole profession by acts which set at naught all regard for principle and right.

Laura Keene

BRYAN,  supra  note  125,  at  144-45  (quoting  BEN  GRAF  HENNEKE,  LAURA  KEENE,  A

BIOGRAPHY 223-24 (1990)). The letter and its subsequent history underscore the importance of claiming the moral high ground and the rhetorical force of staking that claim in authorship. Keene’s letter used a number of devices to do so. Obviously, one was the characterization of the play as her property that he had stolen. Interestingly, in the ensuing litigation, Keene v. Clark, attorneys for both parties stipulated that she did not in fact write the letter accusing him of theft, since, as a lady, she could not possibly have written such a scurrilous attack. BRYAN, supra note 125, at 145. Perhaps one ought not take this stipulation at face value. Lawyers for both litigants might have wanted the letter excluded from the record for other reasons. A second tactic was to remind the world that a member of the Booth family, above all people, should not have any connection with the play that Lincoln was watching when John Wilkes Booth killed him. Third, invoking chivalry and feminine prerogative,  she accused him of stealing from her because she was a woman.

aggressiveness in claiming the fruits of her “industry and enterprise” in hiring Jefferson and promoting the play, combined to make her claim to ownership of the play more compelling than the theater managers’ claims had been. The old rhetoric of authorship, thus, did not fit. The court, free from the adverse precedent of Atwill and Wheaton, created a new rhetoric of employer prerogative based on industry, enterprise, and collaborative creation.

B. Law Publishing and Early Recognition of Employer Ownership

The possibility of distinguishing the Keene cases from the Boucicault cases on the difference between copyright rules and equitable rules did not last even a decade. In 1869, a federal court in Massachusetts stated in dicta, without acknowledging its apparent departure from Roberts v. Myers, that an employer would have the copyright in the literary products of its employees. La wrence v. Dana, which became a very influential decision, was another chapter in the long (and unsuccessf ul) copyright battles fought by Henry Wheaton,  the erstwhile  Supreme  Court  reporter.  Wheaton  authored a respected treatise on international law and, after his death, his wife Catharine contracted with William Lawrence to prepare an updated edition of her late husband’s work. 145

In La wrence, as in previous cases, the existence (or absence) of an express contract was crucial. Catharine Wheaton had expressly contracted with Lawrence that she would make no use of his notes in any later editions without his written consent and that he would have the right to make any use of them he wished. However, what is significant about the case is the dictum. The court remarked that, absent such a contract, Catharine would have owned the copyright to the  notes.146

The principle of employer ownership as a default rule, recognized in Keene and La wrence v. Dana, could be introduced relatively painlessly because in both cases the employee did not lose significant rights. In Keene, Jefferson lost little because he was not a party to the litigation; presumably, he had sold Wheatley and Clark his rights, and they were the ones who would stand to lose if it turned out that he had no rights to sell. In any event, he only authored certain additions, not the whole play, and the defendants had an independent source for everything in the play except his additions. In La wrence v. Dana, the employee-author lost nothing by recognition of the principle because there was an express contract protecting his claim to copyright.

145.   15 F. Cas. 26 (C.C.D. Mass. 1869).

146.   Id. at 50-51.

44 Yale Journal of Law & the Humanities [Vol. 15:1

It is enormously important that the work-for-hire principle slipped into the cases without the usual adversary process (either because the actual employee author was not a party or because the principle was stated in dicta), for these seminal cases did not actually force a court to choose between the rights of the employee and those of the employer. For a generation afterward, courts simply repeated the principle as dicta giving it the patina of age, without ever actually relying on it to decide a case. A string of cases decided in the 1880s and early 1890s persisted in finding one reason or another to recognize the copyright of the employee-author. Many acknowledged employer ownership in dicta, but no courts actually held that the fact of employment ipso facto entitled the employer to the copyright.147

The Supreme Court’s 1888 opinion in Callaghan v. Myers, an action alleging infringement of the Illinois Reports, also articulated a default rule of employee ownership, making clear that the rationale for the rule was that it reflected the likely intent of the parties. 148 The plaintiff had purchased the copyright from the reporter of decisions. He sued the publisher who was selling copies of the Reports, including the reporter’s headnotes, statements of the case, and summaries of the arguments of counsel. The defendants argued that the reporter could acquire no copyright in them. The lower court found the contention would have “great force” “if an adequate compensation was paid by the state to the  reporter  for  the  work done by him in preparing the volumes.” But the court concluded:

I cannot find that view was taken of the case by the state and the court in the appointment of the reporter at that time. On the contrary, it seems to have been considered that the reporter was entitled to any profits which might arise from the sale of these volumes, and that they constituted part of the perquisites of his office.149

On review, the Supreme Court found no merit to the contention that the reporter, as a public servant, could acquire no copyright:

Even though a reporter may be a  sworn  public  officer, appointed by the authority of the government which creates the court of which he is made the reporter, and even though he may be paid a fixed salary for his labors, yet, in the absence of any inhibition forbidding him to take a copyright for that which is the lawf ul subject of copyright in him, or reserving a copyright

147.   See infra text accompanying notes 148-153 and 178. 148.   128 U.S. 617 (1888).

149.   Myers v. Callaghan, 5 F. 726 (C.C.N.D. Ill. 1881).

to the government as the assignee of his work, he is not deprived of the privilege of taking out a copyright which would otherwise exist.150

Later, the Court added that whether the reporter was compensated by salary (he was not), or even by the state’s purchase of a certain number of volumes, was irrelevant: “[I]n the view we take of the case, the question of a salary or no salary has no bearing upon the subject.” 151 Rather, the Court said, there was “a tacit assent by the government to his exercising such a privilege.” 152

In just twenty years, courts had reallocated copyright ownership simply by rewriting the implied  contract  between employer and employee to include a principle of employer ownership.153 In other words, once the courts began to think of copyright ownership as a matter of “tacit assent”-rather than as a virtually inalienable right associated with ownership of real property or in terms of the strong tie connoted by the paternity metaphor–courts felt a different default rule was appropriate.

C Employees and Independent  Contractors

A number of factors may explain the change in default  rules. Courts might have felt that a default rule of employer ownership was more likely to reflect the intent of most parties and wanted to save the parties the trouble of negotiating for employer ownership. Alternatively, courts might have begun to see employers as possessing a stronger moral claim and believed that any employee who planned to assert copyright ownership ought to be forced to disclose that intent and negotiate for it. Finally, as changing assumptions about the nature of authorship strengthened the rhetorical force of the employer’s claim, a default rule of employer ownership might have seemed more intrinsically  appealing, irrespective of whether the parties might negotiate around it.

Readers familiar with contemporary American doctrine on work­ for-hire  would  find  the  result  quite  unsurprising.  In  today’s  law,

150.   128 U.S. at 647.

151. Id at 650.

152. Id  at 647 (emphasis added).

153. Two other cases from the 1880s contain significant dicta on the employer ownership principle. Sarony v. Burrow-Giles Lithographic Co., 17 F. 591 (C.C.S.D.N.Y. 1883), restated in dicta the principle from Wheaton v. Peters that judges could not own the copyright in their opinions and that, therefore, a reporter could not either. It did so, however, in a way that emphasized the fact of the judges’ employment rather than the public nature of statements of law. See Wheaton, 33 U.S. at 668. Similarly, In re Gould & Co., 2 A. 886, 896 (Conn. 1885), which preceded the Supreme Court’s pro-employee decision in Callaghan, held that “[t]he judges and the reporter are paid by the state; and the product of their mental labor is the property of the state, and the state, as it might lawfully do, has taken to itself the copyright.”

when the creator is an employee, the default rule is employer ownership; when the creator is an independent contractor, the default rule is employee ownership. 154 The reporter in Callaghan would be characterized as an independent contractor because he was paid by the job (rather than salaried) and, for all that appears, the judges had no control over the manner, means, or timing of his work.155 But the distinction between employees and independent contractors did not exist as clearly in American law in the nineteenth century as it does today,156 and, in any event, it was never mentioned in the copyright cases. An English treatise on labor contracts, while discussing the right of the “master” to the “produce of the servant’s labour and inventions,” did not note any distinction between servants and other employed persons. It stated:

A person who employs and pays an author to write a drama or literary work, is not by virtue of the employment entitled to the exclusive  right  of  representation  or  copyright,  because  the

154.  17 u.s.c. § 101.

155. See Cmty. for Creative Non-Violence v. Reid, 490 U.S. 730 (1989) (making the hiring party’s right to control the creator’s work the crucial determinant of whether the creator is an employee or independent contractor within the meaning of copyright law).

156. The distinction between servants and contractors functioned to determine the liability of the employer to third parties for torts committed by the servant or contractor. See 2 HORACE GAY WOOD, A TREATISE ON THE LAW OF MASTER AND SERVANT 601 (1877) (defining a servant as “a person who, by contract  or operation of law, is for a limited period subject to the authority or control of another person in a particular trade, business or occupation.” and explaining that an employer is not liable for the acts of contractors “except when he retains control over the manner or instrumentalities of the work”). Mechem’s treatise on the law of agency confessed that

(t)he line of demarcation between the relation of principal and agent, and that of master and servant is exceedingly difficult to define. This difficulty arises largely from the fact that the two relations are essentially similar. Indeed, there is much reason for saying that the difference between them is one of degree only, and not of kind.


1889). Mechem ultimately concluded that agency

properly relates to transactions of business with third persons, and implies more or less of discretion in the agent as to the time and manner  of his performance. Service, on the other hand, has reference to actions upon or about things. It deals chiefly with matters of mere manual or mechanical execution, in which the servant acts under the direction and control of the master.

Id. at 3. The distinction between “things” and “business” obviously no longer holds, although the different degrees of supervision are today the essential distinction between employees and independent contractors. But Mechem went on to note all the exceptions to  the notion of supervision as being determinative, and added that the agent typically works by the project rather than for a fixed period. He then cautioned, however, that an agent’s period of employment might be fixed. Id at 4. See generally WILLIAM EVANS, A TREATISE ON THE LAW OF PRINCIPAL AND AGENT IN CONTRACT AND TORT (Chicago, Chicago Legal News Co.

1879) (containing a chapter on the liability of employers for injuries caused by the negligence of fellow servants but little discussion otherwise of employment, and no discussion of the distinction between agents and servants); FRANCIS WHARTON, A COMMENTARY ON THE LAW OF AGENCY AND AGENTS § 321, at 227 (Philadelphia, Kay & Bro. 1876) (explaining that an agent is paid by commission, whereas a servant is paid by wages).

statutes vest such right in the author, and require the transfer of such a right to be in writing. 157

While it is true, as noted above, that most of the early cases articulating a default rule of employee ownership involved workers who today would likely be deemed independent contractors, courts never mentioned whether the author was a servant or a contractor.158 Nor did courts observe the distinction when they applied the rule to cases involving workers who today would be deemed employees. It may very well have been the independence of the employee-author that influenced the court to adopt a default rule of employee ownership, and thus the intuition of early courts was similar to the intuition underlying the modern law that independent  contractors should presumptively own the copyrights to their works. But none of that was made explicit in the cases. Rather, the courts contended simply that one must examine the “contract express or implied” between the parties, without articulating the basis for interpreting implied understandings. 159

D. Doctrinal Confusion, Default Rules, and the Role of Contracts

By the last two decades of the nineteenth century, the law of employee copyrights was highly uncertain and the results of cases were quite unpredictable. However, as illustrated by Callaghan v. Myers, there remained a strong line of cases articulating pro­ employee rules.

One might expect, therefore, that firms concerned about copyright ownership would increasingly resort to express contracts to achieve their ends. To some extent, the case law bears this out: the reported  cases from the 1890s involve more express contracts than appeared in earlier cases. At the same time, as Callaghan also illustrates, courts became more inclined to characterize the rules regarding copyright ownership in contract terms rather than in the terms of immutable rules and moral right that had predominated in earlier cases. Courts thus facilitated contracting around the default rules.

The judicial endorsement of a contractarian view of copyright ownership paved the way for employers to gain control of copyrights more effectively. At the same time, employers were more likely to see the need for, and to be able to effectively negotiate and draf t, contracts allocating workplace copyrights.

The uncertain status of the employee-author and the role of contract concepts in creating a default rule of employer ownership can be seen quite clearly in Eaton Drone‘s influential 1879 Treatise on the La w of Property in Intellectual Productions in Great Britain and the United States.

Drone’s was the leading nineteenth-century copyright treatise and was frequently cited by courts and lawyers.

His utterly ambiguous characterization of the state of the law, as explained below, provided ammunition for employers and employees on almost any position they might have wanted to take.



158. See cases cited supra note 24.

159. WOOD, supra note 156, at 4.

160. See supra text accompanying notes 148-52.

Drone began his analysis with the uncontroversial proposition that a “literary production is primarily the property  of  the  author  who has created it.” He then elaborated on this idea: “When a person has conceived the design of a work, and has employed others to execute it, the creation of the work may be so far due to his mind as to make him the author.” But, cautioned Drone, “he is not an author who ‘merely suggests the subject, and has no share in the design or execution of the work.”‘163

Drone then went on to explain how authors could assign their common law rights  in  an  unpublished work to another and how the other would thus obtain the right to apply for the statutory copyright. Analogizing from this principle, Drone  asserted:

Assuming that the law is rightly expounded above, to the effect that copyright will vest ab initio in the owner of an unpublished production, it follows that any person may secure statutory copyright for a work which he has employed another to write. The produce of labor may become the property of him who has employed and paid the laborer. Literary labor is no exception to this universal rule. When an author is employed on condition that what he produces shall belong to the employer, the absolute property in such production vests in the employer by virtue of such employment and by operation of law.

Drone cited no cases in support of this proposition. Later, when he came to discussing the cases, he moderated the rule considerably. As to the law in Britain, he agreed that, it may be going too far to say that the law to this effect is judicially settled. It is conceded that, when one person has employed and paid another to write a work, with the mutual understanding that it shall be the property of the employer, the latter acquires an equitable title which will enable him in a court of chancery to assert  his rights in the published production against either the person employed or others.

However, said Drone, “Whether  a complete legal title to the copyright will vest ab initio in such employer without the necessity of a written assignment, is a point on which the law has not been expressly declared by the courts of law.”

161. John Witt has argued that uncertain default rules enhance the ability of employers to use express contracts to their preferred results. See John Fabian Witt, Rethinking the Nineteenth-Century Employment Contract, Again, 18 LAW & HIST. REV. 627, 654-56 (2000).

162. DRONE, supra note 38, at 236-61.

163. Id at 236 (quoting Shepherd v. Conquest, 17 C.B. 427, 445).

164. Id at 243.

Drone then discussed an English case in which the court articulated the rule that one employed to compose a musical score for a play retained ownership to the copyright unless the employment involved an express understanding that the composition would belong to the theater owner.

The case indicated that the law in Britain, like the law in the United States during that era, found employer ownership only on the basis of an express agreement. Drone recognized as much when he came to discussing American law:

The mere fact of employment does not make the employer the absolute owner of the literary property created by the person employed. Where there is no agreement or  implied understanding that what is produced shall belong to  the employer, it is clear that the latter acquires no title to the copyright.

The employer acquires the copyright only if there is an “agreement that he, and not the person employed, is to be the owner of the work produced. But such agreement need not be express. It may be implied from the terms and conditions of the employment.”

Thus, Drone’s treatise could be, and was, read to support three contradictory propositions: a default rule of employee ownership; a default rule of employer ownership; and a rule that ownership should be assessed in each case from the express or implied understanding of the parties. Perhaps the confusion Drone reported was due to the fact that default rules of copyright ownership were doubly sticky; not only did parties infrequently contract around them (which is the  usual  sense in which  scholars refer  to sticky default rules), but courts also made them hard to contract around

This fact is more than simply amusing; it invites us to think about how industries premised on intellectual property rights could thrive in a climate of legal uncertainty. If it is claimed that nineteenth­ century economic development was facilitated by the existence of certain and definite property rules, surely contrary evidence from the most influential copyright treatise of the era suggests that American publishing and advertising somehow managed to grow without definite rules.

165.   Id. at 248.

166. Id.

167. Id. (citing Hatton v. Kean, 7 C.B. n.s. 268).

168. DRONE, supra note 38, at 257 (emphasis added).

169.  Id. at 258.

The uncertainty of property rights and the doctrinal chaos reported in Drone’s treatise were perhaps ameliorated by the importance of express contracts.

Drone explicitly noted the possibility of contracting around whatever default rule existed. Moreover, the fact that most copyrighted materials in the era were produced by people who would have entered into relatively short­ term contracts in which both parties contemplated the creation of copyrighted works suggests that in many cases the parties probably allocated ownership rights by contract. The extent to which parties contracted around the default rule is unclear and probably varied significantly by industry

However, Rochelle Cooper Dreyfuss offers two reasons to believe that it was not particularly easy to contract around the uncertain defaults. First, the costs of transacting might be high when the parties have to discuss something as touchy as authorship. Employers might have been afraid to alienate employees by demanding assignment of the copyright, preferring to run the risk of litigation later. Employees may have lacked legal sophistication to realize that it was necessary to contract for copyright ownership. Second, the instability of the law may have made enforcement of any contract they did reach highly uncertain.

The experience of Dion Boucicault and William Stuart bears this out. Why, when they agreed that Boucicault would write The Octoroon for performance at the Winter Garden, did they not agree who would own the copyright? Surely they both contemplated that their association would produce a copyrighted work and both must have hoped  it would be valuable. Moreover, Boucicault was not nai”ve about copyright law. Perhaps they failed to negotiate explicitly for copyright ownership for the same reasons that playwrights and those who assist them often fail to today: There may be serious costs to the relationship in raising those issues and/or in reducing them to writing. The parties may each hope for a better result through informal resolution, or they may be unsure at the outset what each of their contributions will be and how, therefore, best to divide the credit and profit. 173 Then as now, there may be many reasons why even those most likely to anticipate the production of a copyrighted work might not negotiate around the default rule.

And when there was no express contract, as Drone’s treatise recognized, the problems arose. The dominant contemporary American legal habit of creating all sorts of implied contractual rules defining the obligations of employer and employed was not yet entrenched. 174 Contract surely reigned supreme, but the problem was that Drone provided (because the cases provided) little guidance on how to identify an implied understanding between employer and employee for the ownership of copyrights. The concept of default rules was less familiar than it is today in part because the notion of employment as an entirely contractual relationship in which all obligations are subject to negotiation was only just beginning to emerge.

After publication of Drone’s treatise, reported decisions continued to reflect significant uncertainty about whether the default rule was one of employer or employee ownership.

170. See Ian Ayres & Robert Gertner, Majoritarian vs. Minoritarian Defaults, 51 STAN. L.

REV.1591, 1598 (1999).

171. In future work, I expect to report on an empirical study of the contracting practices of firms that produced copyrighted information. My work in other areas of employee-generated intellectual property, however, suggests that the default rule of employee ownership of trade secrets remained quite sticky until the early twentieth century. See Fisk, Working Knowledge, supra note 27.

172. See Rochelle Cooper Dreyfuss, Collaborative Research: Conflicts on Authorship, Ownership, and Accountability, 53 VAND. L. REV. 1162, 1172-79 (2000).

As we have seen in Callaghan, the dominant view was that the employee-author was entitled to copyright. The Court’s decision five years earlier in Burrow-Giles Lithographic Co. v. Sarony further illustrated this approach. Burrow-Giles Lithographic Co. involved a claim to a copyright of a photograph of Oscar Wilde. The Court held that the photographer,  not  the  man  who  hired  him,  had  used  sufficient

creativity in the composition and lighting to entitle him to a copyright.176 At the end of the opinion, the Court described with approval an English case involving an employee sent to photograph an Australian cricket team.177 In that case, the Queen’s Bench held that the photographer, not his employer, was entitled to the copyright because “the author is the man who really represents, creates, or gives effect to the idea, fancy, or imagination.”178 The Supreme Court said that the English justices’ “views of the nature of authorship and of originality, intellectual creation, and right to protection” confirmed the Court’s own views. 179 This statement was dicta in that Burrow-Giles did not involve a dispute between employer and employee, but nevertheless it reflects the Court’s view that the work of the creator is crucial to copyright ownership.

The one other frequently cited employer-employee copyright dispute of the era, Peters v. Borst, also articulated a default rule of employee ownership. The employer-the Litchfield Observatory at Hamilton Collegeaimed ownership of a star catalog prepared by the director of the observatory and his assistant. Noting that there was no “agreement that any production of these parties as authors should be the property of the observatory or the college,” the trial court insisted, “it can hardly be claimed the observatory or college would become the owners of the work they might, as authors, produce and publish to the world.” The institution could look only to the more intangible benefits that flow from having in their employ “men who might become eminent and distinguished by reason of the mental labor and results they achieved.” The Court of Appeals placed more emphasis on the fact that the Director’s modest salary was provided by an endowment and that the college was unable to increase it:

Since the college was financially unable to pay him anything approaching a reasonable salary, it may easily be inferred that the director would be allowed and expected to do for himself much work of his own, for which he would not be accountable to the college, and which he could use or dispose of as he pleased.

Note 173. See Thompson v. Larson, 147 F.3d 195 (2d Cir. 1998) (deciding a dispute between the heirs of the playwright and the dramaturg of Rent, the successful Broadway musical of  the 1990s); Roberta Rosenthal Kwall, supra note 2 (discussing Thompson v. Larson); Paulette S. Fox, Note, Preserving the Col/aborative Spirit of American Theater: The Need for a “Joint Authorship Default Rule” in Light of the Rent Decision’s Unanswered Question, 19 CARDOZO ARTS & ENT. L.J. 497 (2001) (same); see also Seth F. Gorman, Who Owns the Movies? Joint Authorship Under the Copyright Act of 1976 After Childress v. Taylor and Thompson v. Larson, 7 UCLA ENT. L. REV. 1 (1999); Jane C. Lee, Comment, Upstaging the Playwright: The Joint Authorship Entanglement Between Dramaturgs and Playwrights, 19 LOY. L.A. ENT. L. REV. 75 (1998).

Note 174. Indeed, the rise of an objective theory of contract removed from the particulars of the contracting party’s status was a phenomenon of the end of  the nineteenth  century. It was underway at the time of these cases, but hardly well settled.

Presuming copyright ownership by the  employee because of otherwise insufficient compensation, the  court  appears  to  have adopted a default rule that reflected the likely expectations of the parties. If both employee and employer are relatively sophisticated negotiators and both contemplate that the employment will produce copyrightable work, courts need not  impose  default  rules  to  force one side to disclose its intentions regarding copyright ownership. In later cases, as we shall see, courts felt the need to force disclosure by employees who intended later to claim their copyrights justified a diametrically opposite default rule of employer ownership.

During the 1890s, while courts continued to uphold  a default rule of employee ownership, some cases enforced express contracts allocating the copyrights variously to employer and employee. Press Publishing Co. v. Monroe involved a poem commissioned by the World’s Fair organizing committee.

The Second  Circuit concluded that the contract allocated the copyright to the author of  the poem and granted the committee only a license to publish and reproduce it.

In Mallory v. Mackaye, by contrast,  the Circuit Court for the Southern District of New York concluded that a contract expressly provided that a theater manager owned the copyright to a  play written by an actor in the theater.186 Carte v. Evans, which involved the efforts of Gilbert and Sullivan to obtain a U.S. copyright for The Mikado, established the principle that an express agreement that the employer should own his employee’s literary product vested the copyright entitlement in the employer, even in the absence of  a formal assignment. 187   This principle  made it easier for employers  to obtain copyright protection without the cooperation of the creative employee and without the need to seek an order compelling the recalcitrant employee to assign the copyright.

The doctrinal uncertainty about the nature of the  default  rules raises the question of their role in actually structuring relations between creative employees and firms.  As John  Witt  has  pointed out, there is every reason to believe a huge gap existed between employment doctrines and actual practices. Consequently, we cannot be certain about the extent to which parties contracted around defaults. 188 It may have been especially difficult for nineteenth­ century employees and firms to contract for the allocation of copyrights, even if both had understood the need to do so. As Rochelle Cooper Dreyfuss has explained, it can be exceptionally difficult for collaborators in innovation to agree in advance upon an allocation of credit and profit, since the likelihood of  profit,  the nature of profit, and even the contributions that collaborators might make are highly uncertain.

Negotiating over the terms of the association may be especially painful at an interpersonal level, as it involves an attempt to value and assign creativity.  Given the complexity and uncertainty of ex ante valuation and the very high transaction costs, it may be that few even attempted to  contract around the default rules allocating copyrights in the workplace.

Apart from questions about the effect of defaults on employment practices, there are separate questions about what courts thought they were accomplishing by establishing default rules. In some cases, courts might have adopted a default rule of employers’ rights simply because they deemed it more likely to reflect the actual understanding of most employers and creative employees (“majoritarian defaults”). In other cases, they may have wanted to force employees who planned to claim copyright to disclose that intent and negotiate for it in advance (“penalty defaults”).

Boucicault v. Fox seems to have imposed a penalty default, as the court explained that it expected employers to contract expressly for copyright ownership when they deemed it possible  and desirable.191 In still other cases, however, such as such as Peters  v. Borst, the tenor of the court’s opinion suggests that it believed a rule of employee ownership genuinely reflected what the parties likely understood, or at least should have.

The change in the default rule around 1900 may reflect both a changing judicial perception of the likely intent of the parties and a changing judicial perception of which party-the employer or the employee-likely has the best information about its future plans to claim the copyright, and which party should, thus, be forced to disclose its intent under penalty of losing the copyright. Whether is the ensuing rule is best described as a penalty default or an “off-the rack” default, the change seems to reflect a changing judicial perception of whether employers or employees ought to be able to control the copyright.

This shift began gradually after 1860 and rapidly accelerated after 1900.

Note 186. 86 F. at 122. As the court paraphrased the contract, Mackaye “agreed to give and devote to the service of Mallory the whole of his time and energy, as Mallory might direct, in any of the capacities of an author, a manager, an actor, a director, or in any other capacity having any connection with theatrical labor, and that the entire product and income of  his intellectual and physical labor and skill should belong absolutely to Mallory.” Mackaye attempted to gain control of the play he had written and copyrighted, as well as the double stage he had developed and patented under contract with Mallory and for an accounting of the profits Mallory received. Courts found that the contract transferred both the copyright and the patent to the employer and, eventually, decided that Mackaye had breached the employment agreement. These decisions absolved Mallory of the obligation to account for the profits or to continue paying Mackaye under the contract. See Mackaye v. Mallory, 6 F. 743 (C.C.S.D.N.Y. 1881); Mackaye v. Mallory, 12 F. 328 (C.C.S.D.N.Y.  1882); Mackaye v. Mallory, 80 F. 256 (C.C.S.D.N.Y. 1897); Mallory v. Mackaye, 86 F. 122 (C.C.S.D.N.Y. 1898); Mallory v. Mackaye, 92 F. 749 (2d Cir. 1899).

Note 187. 27 F. 861 (C.C.D. Mass. 1886). The case held that Gilbert & Sullivan’s contract with Tracy to compose a piano arrangement of the orchestral score of The Mikado and  then to copyright the piano arrangement in the United States obviated  the need for a formal assignment of the U.S. copyright:

The proprietor  as well  as the  author  is entitled  to enter the work  for copyright.  The consent  of  Tracy  was  sufficient  to  constitute  [the  registered  copyright  holder]  the proprietor for this purpose, without a formal assignment. The effect of the transaction was the same as if Tracy had made the entry in his own name and then assigned to [the plaintiff].

Id. (citing Lawrence v. Dana, 15 F. Cas. 26 (C.C.D. Mass. 1869). Another case enforcing an express contract giving a publisher the entire “right, title, or interest” in books written by an employee was Clark v. West, 86 N.E. 1 (N.Y. 1908), which involved law books published by West.



The principle of employer ownership of copyrights in employee works was established in the first decade of the twentieth century.

The ambivalence of earlier courts about whether the employer’s right arose only from an express, or relatively clear, understanding between the employer and employee disappeared.

Instead, it became quite clear in cases, and was finally enacted  by statute, that the employer was entitled to the copyright as a matter of law unless there was an express agreement to the contrary. In other words, where earlier courts had attempted to find an agreement to employer ownership implied in the facts, twentieth-century courts found such agreements implied by operation of law in every employment relationship in which an employee created copyrighted work during the scope of his or her employment.

A. Corporations and Creativity

The ultimate legal fiction underlying modern copyright law is the fiction of corporate authorship. If the fiction were merely a shorthand way of saying that the corporation is the assignee of the works of an author, it would be one thing.

But not every case that recognized employer ownership did so simply by assuming that the employee had expressly or impliedly agreed to assign a copyright.

Some courts persisted in analyzing the matter as if the employer itself had to be the creator.

In this context, the rise of the corporation played an ambiguous role.

On the one hand, if judges saw authorship as a collaborative  process,  the fact that  a business  entity was a corporate body helped the employer’s case. The claim of a corporate ‘author,’ composed  of many different  people  working toward  a common end, had greater rhetorical appeal than the claim of one individual partner to the work of another.

On the other hand, the rise of corporate power threatened the very individualist premises and values  of much  nineteenth-century  law.

Inasmuch  as courts regarded  authorship  as uniquely  individual, corporate  authorship was  simultaneously  oxymoronic  and  repugnant.  Courts  did  not immediately  capitulate  to  the  empire-building  tendencies  of  the growing corporations in this area any more than they did in any other area of law. One way to understand the schizophrenic state of the law of ownership of ideas is as a working-out  of the tension between individualism and corporatism in American law and society.

The first case in which a court explicitly held that a corporation owned  a  copyright  in  an  employee’s  creation  did  not  require significant  departure  from  past  authorship  rhetoric  because  the president  of  the  corporation,  ‘himself  an  artist  of  respectable attainments,’ had been personally  involved  in the design  of the advertising woodcut at issue.

The employee allegedly painted the print  under  the supervision  of the corporation’s  president. The corporation’s “money paid for the painting; its artist colored it; its president designed it, his was the ‘originating, inventive, and master mind.’” Analogizing  the  corporation  to the  artist’s studio, the  court said:

The fact that the artist Stecher [an employee of the corporation] executed Schumacher’s design cannot defeat the copyright. The sculptor seldom touches the marble from which his statues are carved. The fact that the brush which embodied Schumacher’s idea was held by another artist rather than by himself cannot be important in considering a question of this character.

The personal involvement of the corporation’s president made the step to the fiction of corporate creation seem to be nothing more than an easy step of agency law attributing to the corporation the acts of its chief officer.

At the same time that courts were first contemplating corporate authorship, they also were grappling with growth in the types of materials subject to copyright. What makes the rhetoric in the cases particularly interesting is the two levels on which the law was changing. On the one hand, courts were invoking eighteenth- and nineteenth-century notions of Romantic authorship to justify the existence of copyrights in new media such as advertising. By analogizing these commercial and corporate creations to the great artistic works of the past,  judges and lawyers legitimated new property rights in new media. Schumacher was “an artist of respectable attainments,” and his involvement as corporate president was akin to the master sculptor in his studio who “seldom touches the marble.”198 Yet, at the same time, courts alternately invoked and ignored the great authors and great painters of the past to justify corporate ownership of the creative works of employees.

In a sense, the core problems of copyright law-what it is that a copyright protects and why we protect it-underlie the difficulty in allocating authorship between employer and employee. Deciding what kinds of materials could be treated as intellectual property was a new and highly controversial exercise for much of the nineteenth century. It became even more difficult as the subjects of copyright protection expanded from books into new media.

Questions naturally arose: is it the idea or the expression that is protected? What is it about a particular work that makes it appropriate to grant a monopoly over its use? If rewarding and incentivizing creativity were crucial in justifying the existence of copyrights at all, it became all the more important to identify and lionize the originator. Attribution of authorship is another facet of the same. To the extent that property rights are justified by the moral superiority of the individual artist, corporate authorship is troubling. But to the extent that intellectual property rights exist to encourage investment in intellectual endeavor, corporate authorship is essential.

Note 197. Several   years   later,   however,    the   court   regarded    corporate    authorship    as unproblematic even without evidence of corporate officers’ involvement in the acts of creation. In 1908, an author employed to write a book on the law of corporations challenged enforcement of a contract assigning the entire interest in the manuscript to the employer.

He argued, among other things, that the defendant had breached the contract by causing the book to be copyrighted in the name of a corporation that was not a party to the contract. The New York Court of Appeals rejected the claim. Clark v. West, 86 N.E. 1 (N.Y. 1908).

Note 198. Schumacher, 25 F. at 468; cf. Nat’! Cloak & Sit Co. v. Kaufman, 189 F. 215, 216 (C.C.M.D. Pa. 1911) (holding that a corporation owned the copyright to a fashion catalogue because it “made large outlays and expenditures employing in the preparation of its various component parts artists and authors of peculiar skill and ability . . . [and] the illustrations forming component parts of said book were the work and embodied the personal reaction of artists of recognized skill in their calling, and were pictures of artistic merit, and, in addition to their merit as artistic productions, were of peculiar value as portraying original conceptions and creations relating to wearing apparel, of great  interest to a large proportion of the public”).


This difficulty of reconciling corporate ownership and individual artistic expression is evident in Justice Holmes’s opinion for the Supreme Court in Bleistein v. Donaldson Lithographic Co.199 The Court held that three chromolithographs prepared by employees of a corporation for use as advertisements were proper subjects for copyright protection. Holmes justified copyright protection on the basis of the artistic genius and the uniqueness or singularity of the “personality” or self-hood of the artist, but he found corporate ownership of copyright to be entirely unremarkable.

In determining that a lithograph for use as an advertisement was the sort of creative work that should be accorded copyright protection even though it was intended to be a faithful representation of actual persons, Holmes wrote a paean to the individuality of artistic genius quite at odds with the previously asserted facts of corporate creation and control. If the law were otherwise, it “would mean that a portrait by Velasquez or Whistler was common property because others might try their hand on the same face.”

Holmes insisted that the pictures were

the personal reaction of an individual upon nature. Personality always contains something unique. It expresses its singularity even in handwriting, and a very modest grade of art has in it something irreducible, which is one  man’s  alone.  That something he may copyright unless there is a restriction in the words of the act.

Ultimately,   the  fiction  that  the  employer  is  the  author  allowed Holmes to elide the question of how a corporation could be entitled to copyright an advertisement if the justification for the copyright is “the personal reaction of the individual upon nature.”

Holmes’ opinion in Bleistein is a lovely illustration of  his insight about the essential characteristic of the common law method.

He invoked  the  traditional  notion  of  authorship  as  artistic creation––”the     personal     reaction     of     an     individual      upon nature”––while giving it an entirely new significance: corporate authorship of advertisements. To expand copyright protection  into new media, he equated “the etchings of Goya” and “the paintings of Manet” with commercial advertising. He did so precisely because giving new content to the old form of authorship was an effective rhetorical strategy to expand copyright protection. By eliding the distinction between the legal fiction of corporate authorship and the fact of collaborative creation in a corporate setting, and by effacing the (ever-shrinking) difference between advertising and art, Holmes made a significant change in doctrine that  seemed  to  be  nothing more than a simple analogy.

Note 202. Id. at 248. Justice Harlan’s dissenting opinion  asserted that an advertisement could not be copyrighted because it was not “art” and lacked sufficient “connection with the fine arts to give it intrinsic value.” Id. at 252 (Harlan, J., dissenting). Holmes rejected Harlan’s view of the proper scope of copyright law:

It would be a dangerous undertaking for persons trained only to the law to constitute themselves final judges of the worth of pictorial illustrations, outside of the narrowest and most obvious limits…

B. The Work-for-Hire Doctrine in the Courts

The first cases in which courts found that the fact of employment or the act of commissioning a work, without more, entitled the employer to the copyright were decided in 1899 and 1900, respectively.

In neither case did the court acknowledge  the difference between the precedents, all of which involved a contractual allocation of copyright, and the instant situations where no contract existed.

In  Collier Engineer  Co.  v.  United  Correspondence  Schools, a salaried employee had the job of preparing and revising instructional materials for a correspondence school.

In subsequent employment, the employee-author sought to write similar materials. Although the court declined a preliminary injunction, finding it unclear from the evidence whether the new materials infringed because both the new and the original materials were compilations drawn from other sources, the court nevertheless stated without elaboration that the employer was entitled to the copyright on the materials.

The court acknowledged the possibility that the employee would be unduly constrained from using the knowledge he had acquired  about teaching and so attempted to find a middle ground:

[A]lthough Ewald was not at liberty to reproduce so much of his work as had been copyrighted by the employers for whom it was prepared, even by availing of his recollection of the contents of the copyrighted pamphlets, he was not debarred,  after  his contract terminated, from making a new compilation, nor from using the same original sources  of  information,  nor  from availing of such information as to the needs of students and the best methods of getting in mental touch with them as he may have acquired while superintending complainant’s school.

Gone was the focus on the author’s entitlement to the fruits of his creative genius. Instead the court focused on the task of accommodating employer ownership of intellectual property with some measure of employee freedom to use his knowledge in subsequent  employment.

The next year, in Dielman v. White, a court recognized the right of the person who commissions a work to own the copyright. Dielman had received the commission to design a mosaic for the Library of Congress. He painted a sketch of the mosaic, copyrighted it, and then sent it to Venice, where the mosaic “was manufactured in the usual manner by workers in mosaic.” Both the sketch and the mosaic bore the notation: “Copyright, 1896, by Frederick Dielman.” Nothing was said in the correspondence between Dielman and the Library of Congress about copyright ownership. When officials of the Library published photographs of the mosaic, Dielman sought an injunction against their publication, which the court denied:

In general, when an artist is commissioned to execute a work of art not in existence at the time the commission is given, the burden of proving that he retains a copyright in the work of art executed, sold, and delivered  under  the  commission  rests heavily upon the artist himself. If a patron gives a commission to an artist, there appears to me a very strong implication that the work of art commissioned is to belong unreservedly and without limitation to the patron.

The court recognized the constraints such a rule might impose on an artist’s ability to make further use of the design, but concluded that those issues were matters “of artistic ethics rather than of law.” What had been a legal  rule  only  a generation  before  had been downgraded to the status of “artistic ethics.”

After these cases, courts more readily saw employees who produced copyrighted materials as employees hired to write rather than as independent creators whose individuality was reflected in their creation. In Edward Thompson Co. v. American La w Book Co., which concerned the copyright to multi-volume encyclopedias of English and American law, the court deemed it “unnecessary, as it might be impracticable” to identify the actual authors of the work, since “[i]t sufficiently appears that complainant’s publication is the result of the intellectual labor of the editors and compilers employed by the complainant. ”

Similarly, in National Cloak & Suit Co.  v. Kaufman, the court easily accepted the proposition that a corporation could copyright a fashion catalogue prepared  by its employees.

The basis for the corporation’s copyright protection was that the corporation “exercised the most caref ul supervision and discrimination and made large outlays and expenditures.”

The court did not find artistic or literary creativity irrelevant; it only decided that the corporation was entitled to the credit. The corporation employed “artists and authors of peculiar skill and ability,” and the pictures and text, embodied the personal reaction of artists of recognized skill in their calling, and were pictures of artistic merit, and . . . were of peculiar  value  as portraying  original conceptions  and creations relating to wearing apparel, of great interest  to a large proportion of the public on account of the originality and exercise of trained aesthetic faculties displayed in said illustrations.

Finally, in a few cases decided just before the enactment of the 1909 Copyright Act, courts enforced express contracts allocating to employers the copyright in law books  prepared by employees. The courts rejected the employees’ contentions that they were entitled to credit as authors or to control the corporation’s  subsequent alterations of their work. The cases thus made clear that  employers of works made for hire pursuant to express contracts owned all the rights to the works, just as if the corporations were the authors themselves.

(“The customs, beliefs, or needs of a primitive time establish a new rule or a formula. In the course of centuries the custom, belief, or necessity disappears, but the rule remains. The reason that gave rise to the rule has been forgotten, and ingenious minds set themselves to inquire how it is to be accounted for. Some ground of policy is thought of, which seems to explain it and to reconcile it with the present state of things; and then the rule adapts itself to the new reasons that have been found for it, and enters on a new career. The old form receives a new content, and in time even the form modifies itself to fit the meaning which it has received.”).

Note 209. Id at 893. This characterization of the contribution of the Italian mosaic workers raises the question whether anything that they did was sufficiently creative as to vitiate the claim of either of the American contenders to be the true “author” of the mosaic. The court did not address that question, revealing that its ability or willingness to understand the truly collaborative nature of the creation was not without limits.


Note 213. Eventually, courts distinguished the rights of employees from those of independent contractors and backed away from the presumption of employer ownership articulated in Dielman v. White. In Edward Thompson Co. v. Clark, 109 N.Y.S. 700 (Sup. Ct. 1904), and W.H Anderson Co. v. Baldwin Law Publishing Co., 27 F.2d 82 (6th Cir. I 928), both of which involved publishers of law books, the courts distinguished the rights of independent contractors from those of employees. The Sixth Circuit wrote:

[W]here a contract of employment is silent, there may be an implication in favor of the employer. But in the present case plaintiff was an independent contractor, rather than an employee; moreover, it may properly be inferred that the parties did not intend plaintiff to surrender a copyright in consideration of a sum less than the bare cost of the work.

C The Enactment of a Work-for-Hire Doctrine in the 1909 Copyright Act

The 1909 revision of the copyright law made concrete, as well as catapulted forward, a change that had just begun in the case law. The 1909 Copyright Act added a provision stating that employers were the authors of works made by employees.

The decision to label the employer an “author,” rather than create a default rule of implied automatic assignment, appears to have been based on three considerations. First, it was a matter of ease in statutory drafting (“author” is a term of art used throughout the statute). Second, it avoided constitutional doubts about a default rule of employer ownership stemming from the constitutional provision that Congress may give “authors” a copyright. Third, and most importantly, the drafters of the revision wanted to be sure that the employer would be the initial copyright owner rather than an assignee, because only the initial owner is entitled to obtain a renewal.

Of course, Congress could have achieved the same result by changing the law regarding who may apply for a renewal, but that option was not considered, perhaps because it was deemed too big an incursion into the public domain.

The work-for-hire provision originated in a pair of conferences that Herbert Putnam, the Librarian of Congress, convened in 1905 at the request of the Chairman of the Senate Committee on Patents.

Putnam invited representatives from a number of industries and from the American Authors’ League to discuss the need for and the desirable terms of a revised copyright law. The early version of the draft bill presented at the first conference stated that only “authors” could obtain copyrights.222 In a series of discussions on that provision, various representatives of publishing and lithographic industries advocated recognizing the right of the employer to obtain copyright under the statute. One Samuel J. Elder of Boston urged that publishers of encyclopedias and other works requiring the assistance of a large number of people needed some method other than individual assignments to obtain effective ownership of the copyright to the complete project. The problem, he explained, was that only the “author” of a work, and not the “proprietor” who might own the copyright because of an assignment by the author, could obtain a renewal of the copyright after the expiration of the original term. To renew the copyright to an encyclopedia, the publisher would “have to go searching all over the world from widows and legitimate children, and the search is so great that the renewal term can hardly be obtained.”

Elder noted, however, that any revision to enable publishers to obtain renewals would be “confined by the language of the Constitution to authors and by the broadening of the idea that the courts have given it to the assignees of authors. ” He thus seemed to suggest that employers must be defined in the statute as the “authors” of the works in order to obtain a renewal term.


Note 218. See. e.g., Chamberlayne v. Am. Law Book Co., 163 F. 858 (C.C.E.D.N.Y.), rev’d, 165 F. 313 (2d Cir. 1908) (holding that by assigning a copyright by express contract an employee lost his right to sue for “trespass to literary property” for alterations to an article he wrote for inclusion in an encyclopedia); Jones v. Am. Law Book Co., 109 N.Y.S. 706 (N.Y. App. Div. 1908) (holding that an express contract assigned a copyright to an employer and that therefore the employee cannot insist that he be listed as an author of the work).

Note 224. Id. Renewal rights were inheritable but not readily assignable. Prior to the 1909 Act, the renewal right was given to the author, if living, or to his spouse and children if the author died prior to the commencement of the renewal term. Act of Feb. 3, 1831, ch. 16, § 2, 4 Stat. 436. See generally Seymour M. Bricker, Renewal and Extension of Copyright, 29 S. CAL. L. REV. 23, 24 (1955) (summarizing provisions of the 1831 Act).

The 1909 Act included a similar provision. It did not prevent authors from assigning future rights to renew during the original copyright term. Such an assignment, however, granted only an expectancy, the fulfillment of which depended upon the author’s surviving to the end of the initial term. If the author did not survive, the renewal right returned to the author’s statutory successors. See Miller Music Corp. v. Charles N. Daniels, Inc., 362 U.S. 373 (1960).

The rationale for the restriction on renewal was to protect authors and their dependents from improvident bargains; the  compulsory bequest that favored the author’s heirs over assignees was an additional protection to allow the author’s family to renegotiate the value of the assignment when the value of the copyright was known. Daniel A. Saunders, Comment, Copyright’s Broken Rear Window: An Appraisal of Damage and Estimate of Repair, 80 CAL. L. REV. 179, 185 & nn.23-27 (1992).


Robert Underwood Johnson, Secretary of the American Authors’ Copyright League, objected to the notion that an employer should be deemed the “author” of works created by employees. He proposed that the statute create two categories: “authors” and “proprietors.”

Each term should be given “the most inclusive definition possible,” but he insisted that “a man who gets up a cyclopedia and contracts with other people to write for him” was only “the proprietor and ought to be considered the proprietor, and not the author.”

Underwood’s objection was based on the symbolic value of the term “author,” rather than on the notion that the encyclopedia publisher was not entitled to copyright, or even to a renewal term.

Based on the comments made during the first few days of the conference, the Copyright Office drafted a revised bill.  It did  not have a general work-for-hire provision. Rather, it listed in separate sections the various persons who would be entitled to claim a copyright. Among them was the “publisher of a composite  or collective work (a ‘series,’ a ‘library,’ or an encyclopaedia) which has been produced at his instance and expense.”

In a separate section, the draft bill stated:

If a person employs another for valuable consideration to make a portrait, that is to say a work whose principal object is the likeness of any person in any form of art, the copyright in such portrait shall belong to the employer as if he were the author, in the absence of any agreement in writing to the contrary.

The discussion on the revised draft circulated by the Copyright Office revealed that publishers and employers remained dissatisfied. One  complained:

We have people who work for us who make engravings or etchings for us under salary. Under the new law–if it becomes a law as drafted–they would have the right to copyright, and  I think it would be well to express in such a law that where no agreement exists to the contrary the payment of a salary to an employee shall entitle an employer to all rights to obtain a copyright in any work performed during the hours  for  which such salary is paid. It seems to me these things should not be left to the courts to decide.

This  comment  reflected  a number  of  concerns.  It reflected  a perception that the extant law did not operate as a default rule that could be modified by contract since courts would not enforce contracts for employer ownership. It suggested that courts were too unpredictable in what they would find sufficient. It also suggests that employers found it too onerous to have to contract for employer ownership. In other words, this was one of those circumstances in which the initial entitlement to copyright mattered  because it would be too expensive or difficult to contract for any other allocation. Employers may also have wanted a default rule of employer ownership because they thought employees were unlikely  to realize the rule and would need to contract for their copyrights.  As John Witt has suggested, the uncertainty of the default rule may have systematically advantaged employers “who were  able to spread the cost of legal expertise and contract negotiation across multiple employment contracts.”

Whatever the reason, employers plainly realized that a default rule of employer ownership would be to their advantage.

Richard Bowker of the American Authors’ Copyright League proposed alternative language for the definition of author to include not only writers, composers, and painters, but  also “the conductors of a periodical, the joint authors of a collaborative work, a corporate body with respect to the publications of such corporation, and  a person or persons at whose instance and expense a composite work is produced. ”

The representative of the Lithographers’ Association and the Reproductive Arts Copyright League argued that “the case of manufacturers” should be distinguished from the case of other artists and writers:

“Now, it seems to me that we have forgotten that, and that the right belonging to that artist who is employed for the purpose of making a work of art so many hours a day, or that literary producer who is employed for so many hours, should be very different from the right that is held by the independent artist or man who makes a painting for art’s sake. I would suggest, therefore, that in this clause there should be an exception that this does not apply, where contractual relations exist between the owner and the artist.”

In response, it was suggested that “an exception [be] made in behalf of the person at whose expense such works were made. ”

After that conference, the Librarian of Congress and  the Copyright Office circulated a new draft bill. This version contained a new section 21 defining who may obtain a copyright. The provision stated:

That the author of any work made the subject of copyright by this Act, or his executors, administrators, or assigns, shall have copyright for such work under the conditions and for the term specified in this Act, including: –

The author of any original literary, dramatic, artistic, musical, cartographical, geographical, or other similar production:

An employer, in the case of  a work produced by an employee during the hours for which his salary is paid, subject to any agreement  to the contrary.

Finally, in December of 1906 joint hearings were held before the House and Senate Committees on Patents on S. 6330 and  H.R. 19853, which included the results of the Librarian of Congress’s conferences. The version of the work-for-hire provision that was enacted into law appeared in those bills. It was section  63, which read, in full:

That in the interpretation and construction of this act “the date of publication” shall in the case of a work of which copies are reproduced for sale or distribution be held to be the earliest date when copies of the first authorized edition were sold or placed on sale; and the word “author” shall include an employer in the case of works made for hire.

This statutory definition of the author as including the employer in the case of “works made for hire” has been in the statute  ever since.236

It would be too simple to say that the drafters of the 1909 Act simply codified what was already clear in the cases, or that the cases changed their tune as soon as the statute was enacted. Rather, both the courts and the drafters seemed to arrive at the same conclusion at roughly the same time, and evidenced similar sorts of practical concerns as they changed the law. Moreover, neither the courts nor the drafters described their efforts as creating a  new rule.  Rather, both seemed to think they were simply stating what a sensible analysis of what the employment contract already was.



Throughout the nineteenth century, the rights of employee authors (like those of employee inventors) received considerable  respect from courts that were not otherwise inclined to grant significant protections to employee rights. From the Supreme  Court’s widely cited decision in Wheaton v. Peters until 1860 (and in some cases beyond), virtually every court that confronted the issue determined that, as a default rule, employees  who produced copyrighted work owned the copyright, even if they did so in the scope of their employment.

Around 1860, courts began to recognize employer ownership, either through express contracts as a matter of equity, or, eventually, by discerning in the employment relationship  the existence of implied contracts to the same effect. In the first decade of the twentieth century, the default rule became the exact opposite of what it had been in the last century, and employers  became entitled to their employees’ creative works in the absence of an agreement to the contrary.

It had been well understood for hundreds of years that employers had a property interest in the fruits of their employees’ labor. Employers owned the goods they produced, the minerals they extracted, the crops they harvested. Why were creative works different? And why did the rule flip 180 degrees over the course of a few generations?

One task of this article has been to illuminate the many reasons why creative works were different. They were different because they were creative and because the rhetoric of authorship carried special force on the facts of the cases the courts confronted that it did not carry with other forms of property. They were different because the employees who generated them were not servants. They were different because courts thought that employee ownership was a principle that most likely reflected the actual understanding between the parties and, even if they did not, courts were prepared to punish the employer who failed to negotiate explicitly for copyright ownership. And, finally, they were different because employee ownership was most likely to produce the greatest production of copyrighted material that courts cared about most: law books.

Toward the end of the nineteenth century and the early twentieth, however,  things had changed. The rise of the corporation ‘ made

employer control of all intellectual output of the persons in their employ more logical and more rhetorically appealing. One could say a corporation was the “author” of materials produced by a group of persons in its employ in a way that one could not say that Dion Boucicault’s business partner was the “author” of a play that both of them conceded Boucicault had in fact written. The kinds of materials that were subject to copyright had expanded to include  more materials prepared in a collaborative way in a corporate setting. It became apparent that  employee  ownership  of  copyrights  thwarted the publication of encyclopedias by making it difficult to obtain renewals. Workers who created copyrighted material could more easily be subsumed into the class of employees (not servants). The rise of a unified law of employment, and newly uniform  implied rights and obligations, also favored employers.

The development of the work-for-hire doctrine was not inevitable. If American law had recognized moral rights as French law does, it might have been more difficult to imagine how the corporation could acquire all the rights to the employee’s works. One of the drafters of the 1909 Act expressed precisely this concern: He  worried that employer ownership might allow a firm to alter and degrade a work after its creation and injure the reputation of the individual employee who was known to have been its creator.237

Even as late as 1909, those with reservations about a wide-ranging  work-for-hire doctrine might have won the day. Conversely, if more map cases and fewer theater and law publishing cases were litigated at mid-century, perhaps the doctrine would have been settled in favor of the employer much earlier. Even a rule that today seems intuitively obvious to many might have taken a turn in a different direction at a number of points in the past.

This episode of doctrinal change suggests a larger point about the crucial importance that legal fictions and the common law method play in mediating profound legal change. The cases are rife with tension between crucial competing policies: the power of the individual and the felt imperatives of economic development, the ideology of individual authorship, and the premises of master and servant law. The basic conflict between individual and corporate rights was obscured in vague discourse about the nature of legal rules. Courts recharacterized the nature of authorship, filling an empty, or perhaps a very malleable, vessel like “authorship” with an evolving meaning. The old form received new content, even as the rhetorical force  of the form carried on. Given the force  of the concept of “authorship,” it was especially important that the courts use the old form rather than reject it and invent a new one, because the old form legitimated a profound change in property rights at a time when the property rights of the individual were near and dear to the hearts of judges and the accumulating power of corporations was viewed with suspicion.

Though this is not the place to assay a theory of jurisprudence and the common law method, a few preliminary thoughts must have their say. I think it was the extraordinary case, not the ordinary one, which drove the development of the law.238

In Wheaton v. Peters and Boucicault v. Fox, the employee’s claim to authorship was compelling. The absence of an applicable overarching legal category that directed an opposite result (neither Wheaton nor Boucicault was a “servant” and there was not yet a unified law of “employees”) made it logically possible to create a rule of employee authorship without regard for the old master-servant doctrine that would place ownership of the servant’s work product in the hands of the master. True to what Llewellyn called the “Grand Style,” the Justices or judges felt free to create a rule of employee authorship because there was not a contrary rule and because it suited their philosophical inclination (in both cases) and their instrumental goals (especially in Wheaton). Thereafter, judges felt themselves sufficiently restrained by the dictum of Wheaton and the holding of the two Boucicault cases to rule in most cases that employees owned the copyrights to their works. But they were not constrained entirely, as illustrated by Llewellyn’s “selection of available impeccable precedent techniques” for distinguishing precedent. 239

In Keene v. Wheatley, the court could create a new equitable principle of employer ownership because copyright rules were not at issue–see Llewellyn’s principle No. 19 (the prior rule is kept from application because its reason does not fit); No. 35 (the case falls outside the rule); and No. 54 (the case establishes a new concept).240

When Congress administered the coup de grace in the 1909 Copyright Act, one could plausibly claim that the change was simply a small one of statutory drafting, not a large one divesting creative employees of the fruits of their intellectual labor.

But since the kind of  works  subject  to  copyright  had  begun  to  include  things  less intellectual, and as the replacement of small partnerships by large corporate enterprises was well underway, the moral claim of the firm seemed stronger (and the notion of corporate authorship less fictional) just as the moral claim of the employee waned.

238. On the question whether the ordinary case or the extraordinary one is the engine of common law change, see BENJAMIN CARDOZO, THE NATURE OF THE JUDICIAL PROCESS 99 (1921), who identifies as factors in common law change “the force of logical consistency,” the “gradual breaking down [of doctrines] before the demands of practical convenience in isolated or exceptional instances,” and “the generative force of the exceptions as a new stock.”


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