Jondora Music Publishing Company v. Melody Recordings, Inc.

506 F.2d 392

• Court: Court of Appeals for the Third Circuit
• Decided: January 23, 1975
• Docket: 74-1241
• Status: Published

Opinions

OPINION OF THE COURT

WEIS, Circuit Judge.

To a schoolboy, “piracy” may mean swashbuckling adventure, lumbering merchantmen, booty, and the Jolly Roger. To a musical composer or a record manufacturer, however, piracy means not doubloons, but dollars, not cutlasses, but cut-rate losses, not the creaking of a ship under way, but the almost imperceptible hum of a reel-to-reel tape, and certainly no jollity about unauthorized copies of a musical work. We conclude here that a composer is not defenseless but, using the guns of the Copyright Act, can force the pirate to heave to in response to an injunctive shot across the bow.

The plaintiffs are publishers who own the copyrights for a number of musical compositions¹ and thus stand in the shoes of the composers of the musical works. The defendants manufacture and sell sound-tape duplications of popular phonograph records.²

Suit was brought in the district court on the allegation that the defendants had infringed the rights granted to the composers by the Copyright Act, 17 U.S.C. § 1 et seq. The district court denied relief, holding that the compulsory license provision, 17 U.S.C. § 1(e), serves to insulate the defendants from liability.³

This particular provision of the Copyright Act was passed by Congress in 1909 after the Supreme Court in White-Smith Music Publishing Co. v. Apollo Co., 209 U.S. 1, 28 S.Ct. 819, 52 L.Ed. 655 (1908), had decided that a composer could not copyright a perforated piano roll of his musical work. Although it desired to give protection to the composer, Congress wished to avoid granting a monopoly to a certain company which then held a dominant position in the piano roll manufacturing field. The problem was solved by a legislative compromise which granted the composer protection from unauthorized recording of an unreleased work. If, however, the composer chose to license one manufacturer to make mechanical reproductions,⁴ others would be allowed to record the composition upon payment of a specified royalty. The pertinent provision of the statute reads:

“. . . 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 upon the parts of instruments serving to reproduce mechanically the musical work, any other person may make similar use of the copyrighted work upon the payment to the copyright proprietor of a royalty of 2 cents on each such part manufactured, to be paid by the manufacturer thereof;

17 U.S.C. § 1(e).

The composer is thus given the right to select the licensee who will originally produce a record of the musical work, but thereafter any other manufacturer can also record the composition pursuant to this compulsory licensing provision. The effect of the statute is to impose three obligations upon those other than the original manufacturer:

1. To pay a royalty of two cents per record;

2. To file a notice of intent to use; and

3. To make a “similar use of the copyrighted work.”

The phrase, “similar use of the copyrighted work,” is the essence of this case.

There has been surprisingly little litigation on the meaning of the phrase, and the few appellate cases interpreting it in terms of the rights of the composer have occurred within recent years.

The first case to construe the language of the amendment of 1909 was Aeolian Co. v. Royal Music Roll Co., 196 F. 926 (W.D.N.Y.1912). The district court there said of “similar use:”

“. . . 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.”

196 F. at 927.

This case has been criticized for the result it reached, and the strength of the interpretation consequently has been questioned.⁵

In the years following the Aeolian case, most of the writers in the field were preoccupied with the problem of copyright for the physical recording itself.⁶ Until Congress recently provided otherwise, it was generally conceded that a record as such could not be copyrighted. See Capitol Records v. Mercury Records Corp., 221 F.2d 657 (2d Cir. 1955); Ringer, The Unauthorized Duplication of Sound Recordings, supra. Hence, the efforts of performers and manufacturers to secure relief from record piracy were unavailing under the Copyright Act, and debate continued on the desirability of extending protection to recordings, per se.

Within the past few years, however, record “pirates” or “duplicators,” ⁷ were confronted by direct challenges of the composers.⁸

In Duchess Music Corp. v. Stern, 458 F.2d 1305 (9th Cir.), cert. denied, 409 U.S. 847, 93 S.Ct. 52, 34 L.Ed.2d 88 (1972), and Edward B. Marks Music Corp. v. Colorado Magnetics, Inc.,. 497 F.2d 285 (10th Cir. 1974), aff’d bn rehearing in banc, cert. denied, - U.S. -, 95 S.Ct. 801, 42 L.Ed.2d 819, (No. 73-2006, Jan. 20, 1975), the Courts of Appeals held for the composers, though not without some voices of dissent. In both instances the majorities held that “similar use” under the compulsory license provision did not apply to those who made duplicates from authorized recordings.

The Duchess court reviewed the legislative history of the 1909 amendment and gave favorable consideration to the language interpretation of Aeolian Co. v. Royal Music Roll Co., supra. The Court of Appeals for the Tenth Circuit, in discussing the phrase, “any other person may make similar use of the copyrighted work,” said:

“This means, to us, that one who complies with royalty payment called for by the statute, though not having any authorization from the copyright owner, may nonetheless then ‘use,’ not a third party’s record, but the copyrighted composition, which has been characterized as the ‘raw material,’ in a manner ‘similar’ to that employed by the recording company which did have authorization from the copyright owner [U]nder the statute [defendants] . . . may ‘use’ the copyrighted composition in a manner ‘similar’ to that made by the licensed recording company ... It does not mean that [defendants] may use the composer’s copyrighted work by duplicating and copying the record of a licensed recording company. Such, in our view, is not a similar use.” ⁹ 497 F.2d at 288.

We agree with this interpretation of the statute but feel even more strongly that the duplicators or pirates do not “use” the composer’s work in a “similar” fashion — indeed, they do not utilize the composer’s work at all. It is a recording which is used. Rather than permit the use of a recording of the composition, the statute only authorizes the use of the copyrighted work, that is, the written score.

The use to which the original licensee put the composer’s work, i. e., the musical score, was much more elaborate, involving as it did the preparation of an arrangement from the written composition and its performance by musicians and vocalists. The mere duplication of a recording by the pirate is not the same as, or “similar” to, the efforts made by the original licensee in utilizing the characters on a piece of paper as the basic plan for producing harmonious sounds.¹⁰

The copyright law is enacted for the benefit of the composer in accordance with the constitutional grant of Art. I, § 8, cl. 8:

“The Congress shall have Power .

“To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.”

The amendment of 1909 was intended to protect the creative efforts of the composer, and the compulsory license provision was inserted, not in an effort to penalize him, but to prevent monopolization by manufacturers. The statute should be interpreted in that spirit.

The interest of the composer may be adversely affected by the pirating of licensed recordings. The decision by a manufacturer to make a recording of a musical work necessarily involves consideration of the expense in obtaining outstanding performers and arrangers, as well as the initial cost of the master recording. These factors must be balanced against the anticipated number of copies to be sold. Generally, the life of a popular song recording is a short one. If a record producer can arrange for the happy combination of an outstanding performer and an exceptional song, he will be able to sell enough records to make a profit. Since the pirate’s only initial expense is the purchase of one phonograph record or sound tape, he obviously can sell a duplicate at a substantially lower price. If the market is reduced by these cut-rate copies, the record manufacturer’s incentive to market other hit recordings is necessarily diminished. In turn, this is a detriment to the composer, who may anticipate that his works will be performed in a less costly production and possibly receive less public attention. To this extent, the interests of the composer and manufacturer coincide in combating piracy.¹¹

The Supreme Court has not yet spoken on the issue before this court. Its closest approach was in Goldstein v. California, 412 U.S. 546, 93 S.Ct. 2303, 37 L.Ed.2d 163 (1973), where the Court held that recordings, in and of themselves, were not copyrightable until 1971, when Congress amended the Act to permit such protection for producers and performers. The Court decided that since Congress had not made the Act applicable to any recording “fixed” before February 15, 1972, there was no constitutional impediment to state statutés prohibiting piracy of records prepared before the effective date. The duplicators in that case did not argue that there was any direct conflict between the state regulation and the compulsory license provision of § 1(e).¹² Again in Goldstein as in the earlier cases, the issue was focused upon the question of copyrighting the record itself — not on the rights of the composer. We agree with the Marks court and the court below that Goldstein did not pass on the issue here — the nature and extent of the interest of the composer.

When Congress did amend the Copyright Act in 1971 to provide protection for sound recordings, the legislative history reviewed one phase of the problem to be corrected. The district court in its opinion relied upon statements in both the House and Senate Reports to the effect that under the former state of the law, if the “unauthorized” producers paid the statutory royalty, there was no federal remedy available to prevent unauthorized reproduction of the recording. But a court is not bound by a congressional interpretation of a statute passed in a preceding session. The weight to be given a legislative committee’s views on the meaning of a statute enacted in years past is the same as that given to any other commentator — having due regard to whether the subject was specifically addressed and to the objective of the committee work.¹³

Furthermore, we note that, in discussing a proposal for a compulsory license for recordings, the legislative report reads:

“The Senate Committee rejected this proposal on the ground that the two situations are not parallel: the existing compulsory license [under § 1(e)] merely provides access to the copyrighted musical composition, which is the ‘raw material’ of a recording, and the performers, arrangers, and recording artists are needed to produce the finished creative work in the form of a distinctive sound recording.” 1971 U.S.Code Cong. & Admin.News, p. 1569.

It is our conclusion that making an identical copy of a recorded version of a copyrighted musical composition is not a “similar use” as permitted by the compulsory license provisions of § 1(e). Therefore, the judgment of the district court will be vacated, and the case remanded for further proceedings consistent with this opinion.

1 . Some of the songs involved are: “I Believe,” “Raindrops Keep Failin’ on my Head,” and “Blowin’ in the Wind.”

2 . Included in this case are recordings by Johnny Cash, Elvis Presley, Bob Dylan, and George Harrison.

3 . The opinions of the district court are reported at 351 F.Supp. 572 (D.N.J.1972); 362 F.Supp. 488 (D.N.J.1973); and 362 F.Supp. 494 (D.N.J.1973).

4 . We see no need in this case to enter the debate over the contention that the statute would not apply to electronic recording since it was unknown in 1909 (although the use of phonograph records was widespread at the time). See Henn, The Compulsory License Provisions of the U.S. Copyright Law (1956), Studies on Copyright Law Revision For the Subcomm. on Patents, Trademarks, and ’ Copyrights of the Senate Comm, on the Judiciary, 86th Cong., 1st Sess., Study No. 5 at 17 n. 59 (S.Comm. Print 1960).

5 . The Aeolian court recognized that music rolls or records were not, per se, subject to copyright but allowed the plaintiff-licensee-manufacturer an injunction as a “party aggrieved” under the Copyright Act. It is this holding that is incorrect. See Note, Piracy on Records, 5 Stan.L.Rev. 433, 443 (1953).

6 . E. g„ in the oft cited Ringer, The Unauthorized Duplication of Sound Recordings, Studies on Copyright Law Revision For the Sub-comm. on Patents, Trademarks, and Copyrights of the Senate Comm, on the Judiciary, 86th Cong., 2d Sess., Study No. 26 (S.Comm. Print 1961), the author states preliminarily, “The right of an author to control sound recordings of his work is outside the scope of this paper. What we are concerned with are the rights of performers and record producers to prevent unauthorized duplication of their own contributions to the record.” See also, Chafee, Reflections on the Law of Copyright: II, 45 Colum.L.Rev. 7119 (1945); Kalodner & Vance, The Relation Between Federal and State Protection of Literary and Artistic Property, 72 Harv.L.Rev. 719 (1959); Note, Piracy on Records, 5 Stan.L.Rev. 433 (1953).

7 . We use these two words interchangeably with no particular significance attached to the choice. The plaintiffs here prefer the pejorative overtones of “piracy,” and the defendants, understandably, prefer the more innocuous “duplicators.”

8 . One reason for these recent cases may be the increased remedies provided to the composers by Pub.L. 92-140, effective October 15, 1971, 17 U.S.C. § 101(e). Before that time, no criminal sanctions were available to the composer for violation of the compulsory license provision, and he was limited to injunctive relief and civil damages not to exceed three times the statutory royalty.

9 . Nimmer on Copyright, § 108.4621 (1973 ed.), disagrees with this interpretation, but we are not persuaded by that eminent author’s argument to the contrary.

10 . To put the concept in a different setting— the court reporter, who listens to the sound of a witness’s voice, makes notes on a steno-type machine, and then types the words on sheets of paper, makes use of the witness’s oral statements. A person who simply photocopies the transcript does not make the same or a similar use of the witness’s voice sounds.

11 . In Note, Record Piracy and Copyright: Present Inadequacies and Future Overkill, 23 Maine L.Rev. 359 (1972), the author points out that not all piracy is concerned with making money on hit records but that some duplicators make possible the preservation of recordings, particularly in the jazz and classical fields, which were not commercially successful and were prematurely withdrawn from the market by profit-conscious manufacturers.

12 . While an argument might be made that our interpretation of “similar use” leads to a conclusion that Congress intended to preempt the field of sound recording protections, the thrust of the Goldstein opinion was to give a narrow interpretation to pre-emption in the copyright field. Furthermore, it bears repeating that while the interests in composition and recording at times may track closely, they are separate and distinct — as an example, a duplication of a recording of a musical work in the public domain would not infringe the rights of any composer but might be a real detriment to the performer.

13 . See Kurlantzick, The Constitutionality of State Law Protection of Sound Recordings, 5 Conn.L.Rev. 204, 234 n. 102 (1972). For another commentary on the 1971 amendment, see Schrader, Sound Recordings: Protection Under State Law and Under the Recent Amendment to the Copyright Code, 14 Ariz.L.Rev. 689 (1972).