Prof. Randal C. Picker, The University of Chicago Law School
May 24, 2010

I am working on a paper on the history of razors and blades (yes, I know that sounds obscure, even for an ivory tower sort; I’ll leave it to another day to try to persuade you that you should be fascinated, too).  I have been reading turn-of-the-century – that is, the 19th century – catalogues.  The 1895 Montgomery Ward & Co. catalogue was a wonder.

Montgomery Ward was the Amazon of its day, a market leader in the mail-order business.  Local stores, especially outside of big cities, might offer only a limited selection, but Montgomery Ward promised the world to the entire country.  Catalogue No. 57 – Spring and Summer, 1895 – was a behemoth, running 624 pages and offering tens of thousands of items for sale.

You would think that it would be a trick to find the 1895 catalogue, and, in truth, putting together a run of catalogues from, say, 1895 to 1930 does involve an unpleasant mix of brittle paper and clumsy microfilm.  But you can have the 1895 catalogue in your hands tomorrow: Go to Amazon, spend $22.21, and jump into the Monkey Ward time machine to see what life looked like back then.

What you actually will receive is a Dover Publication described as an unabridged facsimile of the original 1895 catalogue.  In a word, a copy.  Dover, I assume, scanned an original version of the catalogue to produce the book that it is selling to us.  Scanned, meaning, took pictures of the pages of the catalogue.  We shouldn’t fear for Dover, of course, as whatever the original copyright status of the Ward catalogue, the U.S. cutoff date for the public domain is 1923.  Anything published in the United States before that date has entered the public domain, so Dover is on safe ground in making its copy.

In selling the public domain, Dover is doing exactly what it is allowed to do.  You can copy the public domain, remix it, turn it into movies and take in more than $330 million at the box office – the Alice in Wonderland remake, of course – and sell it in its original form as Dover is doing with the Ward catalogue.

But that isn’t what I care about.  If you turn to the copyright page in the Dover facsimile, it says “Copyright © 1969 by Dover Publications, Inc.”  This is where the plot thickens. What exactly – if anything – does Dover have a copyright in?  There is an introduction to the catalogue and Dover can hold a copyright in that, as you can with any newly created content, but what about the catalogue itself?

And while I’d like to know where I stand as to the Dover book, of course, the real question is: Where do I stand as to Google?  Google is the big enchilada when it comes to the scanned public domain, and we are going to care a great deal about what rights we have as to the scanned images that Google has created.  It isn’t clear yet what will happen to Google Book Search – I have views here, here, and here – but Google is perfectly within its rights to scan works in the U.S. public domain, and that will be a core part of its database going forward.

But what can I do with what Google – and Dover – have created?  We should review quickly the basics of copyright in photographs.  We start, of course, with the Supreme Court’s 1884 decision in Burrow-Giles and Sarony’s photograph of Oscar Wilde.  Burrow-Giles helped itself to that photograph and then defended its use on the ground that the photograph was a “mere mechanical reproduction” and hence insufficiently original to qualify for copyright protection.  The Court acknowledged that that might be the case for the “ordinary production of a photograph” though it declined to conclude that no copyright would attach even then.  But Sarony had done much more in creating the photograph of Wilde: Sarony had composed the picture, arranged Wilde’s pose and the setting for it, adjusted the lighting and shading, and all of that together represented an original creation by Sarony.

But the line that Sarony seemed to suggest – we should look for originality in the creation of the subject of the photograph – went by the by as courts embraced copyright in uncreated subjects (outdoor settings such as the New York Public Library).  As soon as we took that path, we were going to have huge numbers of original photographs.  Go to a party, take a bunch of pictures, create original copyrighted works.  Indeed, the more interesting question quickly becomes: What does an unoriginal photograph look like?  Burrow-Giles could of course have copied the Sarony photograph of Wilde by getting Wilde to repose and making sure that every aspect of the new photograph matched the old one.  That would be as much a copy of the Sarony photograph – and therefore unoriginal – as what Burrow-Giles did in the actual case.

Next have Burrow-Giles take a photograph of Sarony’s photograph of Wilde.  That is just as much a copy of the original photograph as when Burrow-Giles recreated the picture per my hypo.  That photograph of the photograph should be treated as a copy of the original photograph and unoriginal.  You could of course make an original photograph that incorporated the Sarony photograph – perhaps with the photograph surrounded by other objects – but a pure photo of the photo should be treated as a copy.  When you take such a photo of a copyrighted photo, you infringe.  When the original photo is no longer copyrighted because it has entered the public domain, your photo doesn’t infringe but it doesn’t cease to be a copy and it still lacks originality.

Where does that put Google (and Dover) with its digital scanners?  We are starting to see skirmishes over photographs and scans of public domain works.  The British National Portrait Gallery got into a spat with Wikipedia when Wikipedia uploaded onto its website digital images created by the NPG of public domain works in its collection.  Actual caselaw is scarce, with Bridgeman Art Library v. Corel Corp., a 1999 federal district court decision, as a leading case.  The court characterized the dispute as one over “’slavish copies’ of public domain works of art” and concluded that such copies lacked the spark of originality and therefore could not be copyrighted.

That isn’t to say that an owner of such a digital file couldn’t try to control use of it through some means other than copyright.  Go to Google Book Search and download Alice in Wonderland.  The first page is from Google, not Lewis Carroll, and it offers a strong defense of the public domain: “Public domain books belong to the public and we are merely their custodians.”  Then we get to the next word “nevertheless” and you can guess what follows: Digitization is expensive – as indeed it is – so Google has imposed a series of limits on how the digital file can be used.

To be sure, there are oddities about this analysis.  A photograph of a rose in your backyard is probably nothing more than a slavish copy of the rose and yet it is hard to imagine that a court would find insufficient originality in the photo.  Yet a photo of a photo (or a digital scan of the 1895 Ward catalogue) will probably be found to be nothing more than a copy of the original work, infringing or not depending on whether the work has entered the public domain – but almost certainly lacking sufficient originality for the second photo or scan to be independently copyrightable.

Comments From Our Readers

James Todd Garza: Back in 2007 I posted a very similiar question here:

Unfortunately, no one answered my question (which is essentially the same as yours). Are slavish copies copyrightable?