United States: Hot News, Shredded Wheat and Wool Underwear: Brandeis On Copyright And Trademark

Last Updated: October 11 2016
Article by David A. Kluft

October 9 marks the 100th anniversary of Louis Brandeis' first session as a justice of the Supreme Court of the United States (October 9, 1916 was the second Monday in October – in 1917, the Court began meeting on the first Monday). This occasion is worthy of remembrance not only because of the historical importance of the man himself, but also because Brandeis was the first Jewish jurist (or non-Christian of any creed) to ascend to the high court, a fact that in large part led to an historically lengthy and nasty nomination process (then-former President and future Chief Justice Taft in particular is noteworthy for his opposition).

Brandeis served from 1916 to 1939, and died October 5, 1941. In honor of the centenary of his first session, the Trademark and Copyright Law Blog has gathered and summarized the relatively small number of trademark and copyright cases in which Justice Brandeis authored an opinion. They appear below in chronological order:

International News Service v. Associated Press, 248 U.S. 215 (1918). The AP obtained an injunction against a competitor that was securing early editions of AP stories and copying them for distribution to its own readers. Justice Pitney, writing for the majority, recognized that copyright law could not be used to justify the injunction for several reasons, including because facts cannot be copyrighted and because the speed at which the news business operates precluded copyright registration (a requirement under the 1909 Copyright Act). However, the majority did recognize a "quasi-property" right in the commercial value of recent news, and held that this value could be protected by way of an unfair competition claim (what became known as the "hot news" misappropriation doctrine). Justice Brandeis dissented, setting up and knocking down each potential justification for news as property. Brandeis stated:

The general rule of law is that the noblest of human productions — knowledge, truths ascertained, conceptions, and ideas — became, after voluntary communication to others, free as the air to common use. . . [E]xceptions are confined to productions which, in some degree, involve creation, invention, or discovery . . . The knowledge for which protection is sought in the case at bar is not of a kind upon which the law has heretofore conferred the attributes of property; nor is the manner of its acquisition or use nor the purpose to which it is applied, such as has heretofore been recognized as entitling a plaintiff to relief.

FTC v. Winsted Hosiery Co., 258 U.S. 483 (1922). The FTC issued a cease and desist order against the manufacturer of underwear that was labeled "wool" but in fact consisted of mostly cotton. The Second Circuit reversed, finding that those within the industry understood what the labels really meant and holding that "it may be that it will be desirable to prevent the use of the particular labels, but it is in our opinion not within the province of the Federal Trade Commission to do so." Even if consumers were misled, the Second Circuit held, such a result was "in no way legally connected to unfair competition." The Supreme Court, in an opinion authored by Justice Brandeis, reinstated the FTC's order. Justice Brandeis wrote:

The fact that misrepresentation and misdescription have become so common in the knit underwear trade that most dealers no longer accept labels at their face value does not prevent their use being an unfair method of competition . . . [W]hen misbranded goods attract customers by means of the fraud which they perpetrate, trade is diverted from the producer of truthfully marked goods. That these honest manufacturers might protect their trade by also resorting to deceptive labels is no defense to this proceeding brought against the Winsted Company in the public interest.

Lumiere v. Mae Edna Wilder, Inc., 261 U.S. 174 (1923). The President of a company located in Rochester (in the Western District of New York) was visiting Manhattan when he was served with a Southern District of New York copyright infringement complaint against his company. The District Court found that service was improper, and the Supreme Court affirmed in an opinion by Justice Brandeis. Because the President of the Company was not in Manhattan on business when he was served, he was not acting as the Company's agent at the time and thus service was improper.

FTC v. Klesner, 280 U.S. 19 (1929). Mr. Sammons, an interior designer in Washington, D.C., ran the "Shade Shop" at a location he leased from Mr. Klesner. The parties had a falling out, resulting in violence, criminal charges and Sammons relocating his store. Out of spite, Mr. Klesner kept the "Shade Shop" sign on the store and started competing with Mr. Sammons. Sammons called the FTC, which filed a complaint against Mr. Klesner. The Court of the Appeals for the District of Columbia dismissed the complaint, holding that "Shade Shop" was merely descriptive. The Supreme Court, in a unanimous opinion written by Justice Brandeis, affirmed but on other grounds: The Court held that the FTC should never have become involved, and the Court of Appeals should not have reached the merits, because "the Federal Trade Commission Act does not provide private persons with an administrative remedy for private wrongs."

Buck v. Jewell-La Salle Realty Co., 283 U.S. 191 (1931). The La Salle hotel in Kansas City installed a close circuit radio system by which it received radio programs on a master receiver and then channeled the sound to its guest rooms, where guests could listen to the music on headphones. The District Court denied relief to the plaintiff, an ASCAP member composer, on the grounds that the wiring of the sound into individual rooms did not constitute a new public "performance" within the meaning of the 1909 Copyright Act. The Eighth Circuit certified the question to the Supreme Court which, in an opinion by Justice Brandeis, reversed the District Court. Justice Brandeis rejected the argument that each rendition of a song was only one single authorized performance, writing that:

Nothing in the Act circumscribes the meaning to be attributed to the term "performance," or prevents a single rendition of a copyrighted selection from resulting in more than one public performance for profit. While this may not have been possible before the development of radio broadcasting, the novelty of the means used does not lessen the duty of the courts to give full protection to the monopoly of public performance for profit which Congress has secured to the composer.

In a companion case issued by Brandeis the same day, the Court ruled on the proper measure of statutory damages in the absence of proof of actual damages. Jewell-La Salle Realty Co. v. Buck, 283 U.S. 202 (1931).

Kellogg Co. v. National Biscuit Co., 305 U.S. 111 (1938). National Biscuit, the predecessor in interest to the inventor of shredded wheat cereal, alleged that Kellogg was committing trademark infringement and unfair competition by using the term "shredded wheat" and by manufacturing its cereal in the pillow-shaped form that had become associated with the product. After several procedural twists and turns, the Third Circuit ordered that an injunction issue, but the Supreme Court reversed. Justice Brandeis noted the absence of secondary meaning and held that "shredded wheat" had become generic since its invention in 1893. He also found that the pillow shape was the subject of utility patents that had expired; thus the shape was functional and, even if not functional, was now in the public domain. Moreover, there was no unfair competition because Kellogg's cartons were easily distinguishable to consumers from those of the plaintiff.

Our friends downstairs at Nutter, co-founded by Justice Brandeis in 1879, have also paid tribute to his legacy this week by discussing his patent cases on their IP Law Bulletin blog.

To view Foley Hoag's Trademark and Copyright Law Blog please click here

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