Duchess Music Corporation v. Martin Stern

458 F.2d 1305

• Court: Court of Appeals for the Ninth Circuit
• Decided: April 26, 1972
• Docket: 71-1854
• Status: Published

Opinions

CHOY, Circuit Judge:

This interlocutory appeal requires construction of the remedial and compulsory license provisions of the Copyright Act of 1909, 17 U.S.C. §§ 1(e) and 101(c), (d) and (e). Appellants are a group of music companies which own the copyrights to musical compositions by such diverse and well-known musicians as Elvis Presley, Johnny Cash, Burt Bacharach, Mick Jagger, Joni Mitchell, and Buck Owens. They allege that appellee Pearl Rosner and others are music pirates who make cassette tape recordings of phonograph records legitimately issued by appellants from copyrighted compositions. After a nationwide search, appellants discovered a major pirate haven in Phoenix, Arizona. With the aid of private investigators and the local police, they obtained sufficient information to secure from the District Court an ex parte order to show cause, a temporary restraining order and a writ of seizure, all directed against the alleged pirates.

The writ of seizure, issued pursuant to 17 U.S.C. § 101(c) and the Rules of Practice issued by the Supreme Court,¹ directed the marshal to seize

“ . . . any and all parts of instruments serving to reproduce mechanically plaintiffs’ copyrighted musical works and all means for making the same, comprehending labels, cartridges, tape recordings and machinery utilized in the manufacturing process, including Livingston recording machine —side winder, Jagerberg-Werke AG brand tape machines, Weldotron brand equipment, GRT tape winders and Craig testing tape players . . . ”

The marshal seized and impounded 25,000 complete tape recordings and master recordings, which serve to reproduce mechanically appellants’ copyrighted musical compositions; blank tapes and cartridges designed for use in the manufacture of tape recordings; printed labels; machinery used to transfer the sounds onto blank tapes; packaging and promotional materials; and other equipment and machinery utilized in the manufacturing process. Appellants filed the requisite bond.

Only appellee Rosner, who does business as National Manufacturing Company, appeared and contested the seizure order. She objected to the order’s scope on the ground that the statutory authority for seizure and the Supreme Court rules implementing that authority contemplate the seizure and impoundment only of items of “ . . . such nature that they would be the last item of identifiable character used to make an infringing copy.” She also contended that since she had filed a statutory Notice of Intention to Use under 17 U.S.C. § 101(e), after the writ of seizure was issued and executed but before the hearing on the preliminary injunction, in-junctive relief prohibiting her from using appellants’ copyrighted works was unavailable.

The District Court agreed with Ros-ner on each count. It ordered the return of all “ . . . tape recording equipment and machinery, as well as . . all blank tapes, cartridges, cassettes, labels or any unmarked or uri-printed packaging materials. On the other hand, all property which either embodies a mechanical and/or electronic impression of plaintiff publishers’ copyrighted works or any packaging or promotional devices identifying or referring to same are still subject to impoundment.” The District Court also held that Rosner could avail herself of the compulsory license scheme although she had previously illegally infringed appellants’ copyrights and although she intended to continue duplicating the copyrighted material.

The District Court later amended its order, nunc pro tunc, to allow an appeal under 28 U.S.C. § 1292(b). The court also stayed its order pending the outcome of this appeal. The seized materials have not been returned to Rosner. We reverse the District Court on both counts and remand.

I

The scope of the seizure order

The Copyright Act of 1909 provides for injunctive and monetary relief for infringement, and also for impoundment and destruction of infringing articles.

“If any person shall infringe the copyright in any work protected under the copyright laws of the United States such person shall be liable:

“(c) To deliver up on oath, to be impounded during the pendency of the action, upon such terms and conditions as the court may prescribe, all articles alleged to infringe a copyright;

“(d) To deliver up on oath for destruction all the infringing copies or devices, as well as all plates, molds, matrices, or other means for making such infringing copies as the court may order.” 17 U.S.C. § 101(c) and (d) (emphasis supplied).

The language used throughout the Supreme Court rules which implement these provisions is not uniform,² and there is some verbal confusion about what is to be seized and destroyed. But the statutory mandate is clear. “All articles alleged to infringe the copyright” are to be impounded, and “all infringing copies . . . ” are to be destroyed. Neither the statute nor the Supreme Court rules give the District Court any discretion to determine what to impound or what to destroy. The process Congress granted the aggrieved copyright proprietor is a summary one. Universal Film Manufacturing Co. v. Copperman, 206 F. 69, 70 (S.D.N.Y.1913). It is to impound everything the plaintiff alleges infringes his copyright. Rules 9 and 10 then provide that the defendant may apply to the court for return of the seized articles if he shows that “the articles seized are not infringing copies, records, plates, molds, matrices, or other means for making the copies alleged to infringe the copyright.” Rule 9. The court, in its discretion, may order a return, but only if the defendant has met his burden of proof. Rule 10. If the articles seized are infringing copies or infringing means, the District Court has no discretion to return them. A similar interpretation is applicable to the destruction provision.

There is no reason here to apply the statutory construction rule of ejusdem generis³ to narrow the items to be impounded and destroyed to the general class of plates, molds, and matrices, that is, to items embodying an identifiable impression of the copyrighted work. The statute and Supreme Court rules provide for the impoundment and destruction of three classes of items: (1) infringing copies; (2) plates, molds, matrices, etc.; and (3) other means for making the allegedly infringing copies. If ejusdem generis is applicable here, it is applicable to construe the word “etc.,” not the words “other means for making such infringing copies.” Machines, blank cassettes and cartridges, blank and printed labels, and other devices are “other means” for making infringing copies to appellants’ copyrights. They fall within the scope of both the statute and the rules and were properly impounded.

In dealing with copyright infringers, Congress did not halt at injunctive and monetary relief. It prescribed impoundment and destruction. While the Joint Committee reporting the proposed Act did not elaborate on these remedies,⁴ they were often discussed in extensive hearings before the Joint Senate and House Committee, held in June and December, 1906, and March, 1908. Congressmen, supporters, and opponents of the copyright bill agreed that the im-poundment and destruction provisions were sweeping in their scope, and encompassed machines and items which could be used for other, allegedly innocent purposes. During the June, 1906 hearings, opponents of the bill foresaw the spectre of the destruction of equipment, machines, and entire plants. Hearings on S. 6330 and H.R. 19853 before the Senate and House Committees on Patents, conjointly, 59th Cong., 1st Sess., 124, 177-178, 200 (June, 1906). Proponents of the bill envisioned the same.⁵ Congress intended to impound and destroy “the whole of the paraphernalia,” including those items which may be used for other purposes.⁶

We, therefore, reverse the District Court’s order on this point, and direct that all material and machinery seized continue to be impounded pending a hearing on the merits.

II

The compulsory license provision

The congressional committees which drafted the 1909 Act were conscious of the “advance ground” they were taking in “securing the right of composers in the matter of the reproduction by mechanical means of their music.” ⁷ H.R. Rep. 5 (1909). However, they were also acutely aware of the possibility of the creation of a vast “music monopoly” if copyright holders had the exclusive right to determine who was to reproduce their works. Therefore,

“The only way to effect both purposes, as it seemed to the committee, was, after giving the composer the exclusive right to prohibit the use of his music by the mechanical reproducers, to provide that if he used or permitted the use of his music for such purposes, then, upon the payment of a reasonable royalty, all who desired might reproduce the music.” H.R.Rep. 6 (1909).

Against this background, Congress enacted § 1(e) of the Copyright Act, 17 U.S.C. § 1 et seq., which reads in relevant part,

“And as a condition of extending the copyright control to such mechanical reproductions, that whenever the owner of a musical copyright has used or permitted or * * * knowingly acquiesced in the use of the copyrighted work, any other person may make • similar use of the copyrighted work, upon payment to the copyright propri-etory of a royalty of 2 cents on each such part manufactured, to be paid by the manufacturer thereof

Section 1(e) is implemented by § 101(e), which reads in part,

Provided also, That whenever any person, in the absence of a license agreement, intends to use a copyrighted musical composition . . . relying upon the compulsory license provision of this title, he shall serve notice of such intention . . . upon the copyright proprietor . . . ”

Rosner invoked these provisions of the Act when she filed a notice of intention to use, declaring her intention to continue the manufacture of tapes by the same duplicating methods used in the past. While appellants argued that the compulsory license provisions were inapplicable to a pirate and that, in any event, the notice was filed too late, the District Court, noting the “gaping loopholes in the Act,” agreed with Rosner. We do not.

The statute provides that anyone who properly invokes the license provision “may make similar use of the copyrighted work.” (emphasis supplied.) Rosner admits that she duplicates appellants’ copyrighted compositions. She does not make “similar use” of them, she makes exact and identical copies of them. This is clearly outside the scope of the compulsory license scheme.⁸

In Aeolian Co. v. Royal Music Roll Co., 196 F. 926 (W.D.N.Y.1912), a piano roll manufacturer having a license to use certain copyrighted musical compositions on its perforated rolls sought an injunction against a competitor who was duplicating the rolls. In granting the injunction, the court said,

“The provision of the statute (section le) that ‘any other person may make similar use of the copyrighted work’ becomes automatically operative by the grant of the license; but the subsequent user does not thereby secure the right to copy the perforated rolls or records. He cannot avail himself of the skill and labor of the original manufacturer of the perforated roll or record by copying or duplicating the same, but must resort to the copyrighted composition or sheet music, and not pirate the work of a competitor who has made an original perforated roll.” At 297.

Accord, Standard Music Roll Co. v. F. A. Mills, Inc., 241 F. 360, 363 (3rd Cir. 1917).⁹ Cf. Jeweler’s Circular Publishing Co. v. Keystone Publishing Co., 281 F. 83, 95 (2nd Cir. 1922); Produce Reporter Co. v. Fruit Produce Rating Agency, 1 F.2d 58 (N.D.Ill.1924).

Rosner asserts that the courts have recently recognized a “right to copy” i. e., duplicate, which she is entitled to invoke. None of the cases she cites supports her claimed right to make exact and identical copies of appellants’ records. In Sears, Roebuck & Co. v. Stiffel Co., 376 U.S. 225, 84 S.Ct. 784, 11 L.Ed.2d 661 (1964) and Compco Corp. v. Day-Brite Lighting, Inc., 376 U.S. 234, 84 S.Ct. 779, 11 L.Ed.2d 669 (1964), the Supreme Court held only that business competitors could commercially produce an item “substantially identical” to an item produced by another company, but unprotected by patent or copyright, without fear of liability under state unfair competition laws. In both Sears and Compco the products at issue were unprotected by patent. The “Paladin” character in Columbia Broadcasting System, Inc. v. DeCosta, 377 F.2d 315 (1st Cir. 1967), was likewise unprotected by a copyright. As we said in Cable Vision, Inc. v. KUTV, Inc., 335 F.2d 348, 351 (9th Cir. 1964),

“Save for the limited protection accorded the creator of literary and intellectual works under the Copyright Act and its exceptions . . . , anyone may freely and with 'impunity avail himself of such works to any extent he may desire and for any purpose whatever subject to the qualification that he does not steal good will, or, perhaps more accurately stated, deceive others in thinking the creations represent his own work.” (emphasis supplied.)

Sears and Compco do not sanction Rosner’s outright appropriation, in violation of copyright, of the actual performances contained on appellants’ records. Rosner may, of course, record appellants’ songs, when she hires musicians, artists, and technicians. Instead, she steals the genius and talent of others. She deceives others into thinking that her tapes represent her own work.¹⁰ She has no “right to copy.” See Capitol Records, Inc. v. Greatest Records, Inc., 43 Misc.2d 878, 252 N.Y.S.2d 553 (S.Ct. 1964). She may not continue her piracy under the flag of compulsory licensing.

Reversed and remanded.

1 . 214 U.S. 533 (1909), as amended by 307 U.S. 652 (1939). See 17 U.S.C. pp. 276-281.

2 . Rules 2 and 3 refer to “ . . . infringing copies, records, plates, molds, matrices, etc., or other means for making the copies alleged to infringe the copyright ...” Rule 2. Rule 9 and Rule 3, in a second sentence, omit the “etc.” Rules 6 and 11 refer to “infringing articles” and “the articles seized.”

3 . “Ejusdem generis, of the same kind, class or nature. In the construction of laws, wills and other instruments, the ‘ejusdem generis rule’ is that where general words follow an enumeration of person or things, by words of a particular and specific meaning, such general words are not to be construed in their widest extent, but are to be held as applying only to persons or things of the same general kind or class as those specifically mentioned.” Black’s Law Dictionary (4th ed. 1968) However, ejusdem generis is not to be applied to render general words meaningless, United State v. Alpers, 338 U.S. 680, 682, 70 S.Ct. 352, 94 L.Ed. 457 (1950), or to thwart Congress’ intent, United States v. Gilliland, 312 U.S. 86, 93, 61 S.Ct. 518, 85 L.Ed. 598 (1941).

4 . The Committee commented only that “some legislation of this kind is necessary.” H.R.Rep. No. 2222, 60th Cong., 2d Sess., 7 (1909). All future references to this Report will be to H.R.Rep. (1909).

5 . See Hearing on S. 6330 and H.R. 19853 before the Senate and House Committees on Patents, conjointly, 59th Cong., 1st Sess., 146 (December, 1906).

6 . See, in the December hearings, supra, n. 8, pp. 179-180, and in the Hearings on S. 2499 before the Senate and House Committees on Patents, conjointly, 60th Congress, 1st Sess., (March, 1908), pp. 37, 123, and 139.

This was not the judicial practice before the Copyright Act, e. g., Morrison v. Pettibone, 87 F. 330 (N.D. Ill. 1897). However, the 1909 statute was a thorough revision of American copyright law, and the legislative hearings demonstrate that Congress was cognizant of the innocent use problem.

7 . While the Copyright Act was intended in some way to overrule White-Smith Music Publishing Co. v. Apollo Co., 209 U.S. 1, 28 S.Ct. 319, 52 L.Ed. 655 (1908), Note, “Sound Recordings, Records, and Copyright: Aftermath of Sears and Compco,” 33 Albany L.Rev. 371, 372 (1969), it did not permit phonograph records to be copyrighted. Capitol Records, Inc. v. Mercury Record Corp., 109 F.Supp. 330 (S.D.N.Y.1952) aff’d 221 F.2d 657 (2d Cir. 1955). However, if the underlying work is copyrighted, there may be an infringement of that copyright by duplicating the record. Shapiro, Bernstein & Co. v. Goody, 248 F.2d 260 (2d Cir. 1957). The Congress has at last remedied this anomaly by creating an exclusive right in the copyright holder “[t]o reproduce and distribute to the j)ublic . . . reproductions of the copyrighted work if it be a sound recording.” S. 646, 92nd Cong., 1st Sess., enacted October 15, 1971. This new right is not retroactive.

8 . Given our view that exact duplication is not “similar use,” we need not decide when a prospective licensee must invoke the compulsory license scheme and file his notice of intention to use.

9 . See Ball, The Law of Copyright and Literary Property 461 (1944); Note, “Battle over the Compulsory License: Mechanical Recording of Music,” 36 Colum.L.Rev. 501, 503 (1964); Diamond, “Copyright Problems of the Phonograph Industry,” 15 Vand.L.Rev. 419, 426 (1962); Note, 13 Rutgers L.Rev. 365, 368 (1958).

10 . It has long been the law in this Circuit that “[o]ne cannot copy the substance of another’s work without infringing his copyright.” Benny v. Loew’s Inc., 239 F.2d 532, 537 (9th Cir. 1956). See also Berlin v. E. C. Publications, 329 F.2d 541 (2d Cir. 1964); Columbia Pictures Corp. v. National Broadcasting Co., 137 F.Supp. 348 (S.D. Calif. 1955). Under the Copyright Act, if the copying is “substantial,” it is an infringement. Comment, “Piracy or Parody: Never the Twain,” 38 U.Col. L.Rev. 550 (1966). Kosner’s copying is exact.