Professor David Post
H2O has permission to use this resource.
The Burrow-Giles opinion can be difficult for students to parse, in part because of the antiquated style in which the Court writes. The basic facts are straightforward: Sarony, the photographer, took a photograph of the great English-Irish author Oscar Wilde, and distributed copies of that photograph to the public (and, as the Court notes, sold more than 85,000 copies(!) of the photograph). Defendant Burrow-Giles was a lithography company that reproduced the photograph without Sarony’s authorization, and Sarony sued for copyright infringement.
[Notice that the Court occasionally refers to Burrow-Giles as the “plaintiff,” or the “plaintiff in error” in this action. (See the second paragraph of Justice Miller’s opinion) That is because Sarony prevailed in the court below, and Burrow-Giles, the original defendant, has filed a “writ of error” (what is now more generally called a “writ of certiorari”) with the Supreme Court to obtain review; Burrow-Giles therefore becomes the “plaintiff-in-error,” i.e. the party prosecuting the action, in the Supreme Court; for that reason, his name is listed first in the caption. In modern terminology, we would call Burrow-Giles the “petitioner” in the Supreme Court action, Sarony the “respondent,” which is considerably less confusing.]
What argument is Burrow-Giles making in this appeal? It’s not arguing that it didn’t do what Sarony says it did (i.e., reproduce the photograph), nor is it arguing that copyright holders are unable to stop others from reproducing their copyright protected works. Instead, it argues that Sarony’s photograph is not protected by copyright at all – which, if true, will require dismissal of Sarony’s suit.
What’s particular confusing about this case is that the copyright statute then in effect expressly listed photographs as copyrightable works. See page 1, *279-80, where the Court writes:
“Other findings leave no doubt that plaintiff had taken all the steps required by the act of Congress to obtain copyright of this photograph, and section 4952 [of the current Copyright Act] names photographs among other things for which the author, inventor, or designer may obtain copyright, which is to secure him the sole privilege of reprinting, publishing, copying and vending the same. That defendant is liable under that section . . . there can be no question, if those sections are valid as they relate to photographs.”
So that’s a little strange: if the statute says photographs are protected by copyright, how can Burrow-Giles argue that Sarony’s photograph is not? Two possibilities: either Burrow-Giles is arguing (a) that the thing that that Sarony created and that it reproduced is not a “photograph” within the meaning of the statute, or (b) that the statute, while purporting to protect photographs (including this photograph), cannot constitutionally do so, i.e. that Congress exceeded its Constitutional authority in including photographs within the category of copyright-protected works.
In fact, it makes a variant of both arguments, i.e., that the statutory inclusion of photographs is unconstitutional, and that even if the Constitution permits protection of some photographs, it can’t permit protection of Sarony’s photograph. As you read the case, ask yourself how the Court deals with these two arguments.