604 F.2d 852 (5th Cir. 1979), 76-4251, Mitchell Bros. Film Group v. Cinema Adult Theater

Docket Nº:76-4251.
Citation:604 F.2d 852
Party Name:1978-81 Copr.L.Dec. MITCHELL BROTHERS FILM GROUP and Jartech, Inc., Plaintiffs-Appellants, v. CINEMA ADULT THEATER, a/k/a Cinema 69, et al., Defendants-Appellees.
Case Date:October 16, 1979
Court:United States Courts of Appeals, Court of Appeals for the Fifth Circuit

Page 852

604 F.2d 852 (5th Cir. 1979)

1978-81 Copr.L.Dec.

MITCHELL BROTHERS FILM GROUP and Jartech, Inc., Plaintiffs-Appellants,


CINEMA ADULT THEATER, a/k/a Cinema 69, et al., Defendants-Appellees.

No. 76-4251.

United States Court of Appeals, Fifth Circuit

October 16, 1979

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Joseph Rhine, Robert L. Thorp, San Francisco, Cal., for plaintiffs-appellants.

Bennie R. Juarez, Joseph M. Revesz, Dallas, Tex., for Bola, Bradford, Rice & Smith.

Appeal from the United States District Court for the Northern District of Texas.

Before GODBOLD, SIMPSON and MORGAN, Circuit Judges.

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GODBOLD, Circuit Judge:

This is a copyright infringement suit, arising under the now-superseded Copyright Act of 1909. 1 But it is more than the usual commercial contest between copyright holder and alleged infringer. The infringers asserted as an affirmative defense that the copyrighted material a movie was obscene, and that, therefore, under the equitable rubric of "unclean hands" plaintiffs were barred from relief. After viewing the film the court found it obscene, adopted the unclean hands rationale, and denied relief to the copyright owners. Review of this holding requires us to consider the constitutional limits upon the power granted to Congress to issue copyrights, the manner in which Congress has chosen to exercise that power, and the applicability of the unclean hands doctrine.

Plaintiffs-appellants owned a properly registered copyright on a motion picture titled "Behind the Green Door," issued under the 1909 Act, 17 U.S.C. § 34 (1970) (repealed). Two groups of defendants, each group consisting of a theater and several individuals, obtained copies of the movie without plaintiffs' permission and infringed the copyright by exhibiting the film at the theaters. The Lido Art Theater group did not appear for trial, default judgment was entered against it and a statutory penalty awarded to plaintiffs. See 17 U.S.C. § 101(b) (1970) (repealed). The Cinema Adult Theater group appeared for trial, and after a bench trial the court found in its favor. On appeal the Cinema Adult group has not appeared.

We hold that the district court erred in permitting the assertion of obscenity as an affirmative defense to the claim of infringement, and, accordingly, reverse without reaching the question whether the film is obscene.

I. The statutory language

The statutory provision that controls in this case reads:

The works for which copyright may be secured under this title shall include all the writings of an author.

17 U.S.C. § 4 (1970) (repealed). Motion pictures are unquestionably "writings" under the Copyright Act. 2

The district court did not base its decision on standards found within the Act, which it described as "silent as to works which are subject to registration and copyright." The Act is not "silent." Rather, the statutory language "all the writings of an author" is facially all-inclusive, within itself admitting of no exceptions. There is not even a hint in the language of § 4 that the obscene nature of a work renders it any less a copyrightable "writing." There is no other statutory language from which it can be inferred that Congress intended that obscene materials could not be copyrighted. 3

Moreover, there is good reason not to read an implied exception for obscenity into the copyright statutes. The history of content-based restrictions on copyrights, trademarks, and patents suggests that the absence of such limitations in the Copyright Act of 1909 is the result of an intentional policy choice and not simply an omission. See generally 74 Colum.L.Rev. 1351, 1354

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n.27 (1974). From the first copyright act in 1790, Congress has seldom added restrictions on copyright based on the subject matter of the work, and in each instance has later removed the content restriction. 4 These congressional additions and subsequent deletions, though certainly not conclusive, suggest that Congress has been hostile to content-based restrictions on copyrightability. 5 In contrast Congress has placed explicit content-related restrictions in the current statutes governing the related areas of trademarks and patents. The Lanham Act prohibits registration of any trademark that "(c)onsists of or comprises immoral, deceptive, or scandalous matter," 15 U.S.C. § 1052(a), and inventions must be shown to be "useful" before a patent is issued. See 35 U.S.C. § 101.

The legislative history of the 1976 Act reveals that Congress intends to continue the policy of the 1909 Act of avoiding content restrictions on copyrightability. In recommending passage of the 1976 Act, the House Judiciary Committee stated:

The phrase "original works of authorship," (§ 102) which is purposely left undefined, is intended to incorporate without change the standard of originality established by the courts under the present copyright statute. This standard does not include requirements of novelty, ingenuity, or Esthetic merit, and there is no intention to enlarge the standard of copyright protection to require them.

H.R.Rep.No. 1476, 94th Cong., 2d Sess. 51, Reprinted in (1976) U.S.Code Cong. & Admin.News pp. 5659, 5664 (emphasis added).

It appears to us that Congress has concluded that the constitutional purpose of its copyright power, "(t)o promote the Progress of Science and useful Arts," U.S.Const. art. 1, § 8, cl. 8, is best served by allowing all creative works (in a copyrightable format) to be accorded copyright protection regardless of subject matter or content, trusting to the public taste to reward creators of useful works and to deny creators of useless works any reward. It is not surprising that Congress would choose to rely on public acceptability as a measure of a work's worth rather than on the judgment of such public officials as the Register of Copyrights 6 and federal and state judges. As Justice Holmes said, in rejecting the argument that under an earlier version of the Copyright Act the courts had a duty to pass upon the artistic merits of engravings and prints,

It would be a dangerous undertaking for persons trained only to the law to constitute themselves final judges of the worth of pictorial illustrations, outside of the narrowest and most obvious limits.

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At the one extreme, some works of genius would be sure to miss appreciation. Their very novelty would make them repulsive until the public had learned the new language in which their author spoke. It may be more than doubted, for instance, whether the etchings of Goya or the paintings of Manet would have been sure of protection when seen for the first time. At the other end, copyright would be denied to pictures which appealed to a public less educated than the judge. Yet if they command the interest of any public, they have a commercial value, it would be bold to say that they have not an aesthetic and educational value, and the taste of any public is not to be treated with contempt.

Bleistein v. Donaldson Lithograph Co., 188 U.S. 239, 251-52, 23 S.Ct. 298, 300, 47 L.Ed. 460, 462 (1903). The Ninth Circuit has recently voiced similar concerns in rejecting the defense of fraudulent content in copyright infringement actions:

There is nothing in the Copyright Act to suggest that the courts are to pass upon the truth or falsity, the soundness or unsoundness, of the views embodied in a copyrighted work. The gravity and immensity of the problems, theological, philosophical, economic and scientific, that would confront a court if this view were adopted are staggering to contemplate. It is surely not a task lightly to be assumed, and we decline the invitation to assume it.

Belcher v. Tarbox, 486 F.2d 1087, 1088 (CA9, 1973).

In our view, the absence of content restrictions on copyrightability indicates that Congress has decided that the constitutional goal of encouraging creativity would not be best served if an author had to concern himself not only with the marketability of his work but also with the judgment of government officials regarding the worth of the work.

Further, if Congress were receptive to subject matter restrictions on copyright, there are many reasons why it would be unlikely to choose obscenity as one of those restrictions. Obscenity law is a concept not adapted for use as a means for ascertaining whether creative works may be copyrighted. Obscenity as a constitutional doctrine has developed as an effort to create a tolerable compromise between First Amendment considerations and police power. It is an awkward, barely acceptable concept that continues to dog our judicial system and society at large. The purpose underlying the constitutional grant of power to Congress to protect writings is the promotion of original writings, an invitation to creativity. This is an expansive purpose with no stated limitations of taste or governmental acceptability. Such restraints, if imposed, would be antithetical to promotion of creativity. The pursuit of creativity requires freedom to explore into the gray areas, to the cutting edge, and even beyond. Obscenity, on the other hand, is a limiting doctrine constricting the scope of acceptability of the written word. 7

Denial of (copyright) Registration could work to discourage the development of the Arts. At least one commentator has argued that denial of registration will increase the circulation of material to the public, by removing the right to sue for unauthorized publication and dissemination of copied material. (Cite omitted.) This view, however, ignores the potentially discouraging effect a stated policy of denial on the ground of obscenity would have on authors, publishers and promoters of works inhabiting the hazy border between obscenity and protected speech.

Schneider, Supra note 3, at 719.


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