M. Witmark & Sons v. Jensen

• Decision Date: 09 September 1948
• Docket Number: 1798,Civ. No. 1026,1797,1799.
• Citation: 80 F. Supp. 843
• Parties: M. WITMARK & SONS v. JENSEN. SANTLEY-JOY, Inc. v. HASTINGS THEATRE CORPORATION. HARMS, Inc. v. GRAND THEATRE CORPORATION. M. WITMARK & SONS et al. v. BERGER AMUSEMENT CO., Inc.
• Court: U.S. District Court — District of Minnesota

80 F. Supp. 843

M. WITMARK & SONS v. JENSEN.

SANTLEY-JOY, Inc. v. HASTINGS THEATRE CORPORATION.

HARMS, Inc. v. GRAND THEATRE CORPORATION.

M. WITMARK & SONS et al. v. BERGER AMUSEMENT CO., Inc.

Civ. Nos. 1026, 1797, 1798, 1799.

United States District Court D. Minnesota, Fourth Division.

September 9, 1948.

Louis D. Frohlich, of New York City, and Thomas Vennum, of Minneapolis, Minn., for plaintiffs.

Louis B. Schwartz and Samuel P. Halpern, both of Minneapolis, Minn., for defendants.

Bogle, Bogle & Gates, of Seattle, Wash., amicus curiæ.

NORDBYE, Chief Judge.

Plaintiffs in these cases are seeking (1) damages for alleged infringement by defendants of certain musical composition copyrights owned by plaintiffs, and (2) an injunction restraining future threatened violation of those copyrights. Plaintiffs contend that defendants, who operate certain motion picture theatres, gave public performance of those compositions for profit when showing certain films in their theatres without first obtaining from plaintiffs a license to perform publicly the compositions for profit.

Defendants contend that plaintiffs are entitled to no relief upon the grounds that (1) plaintiffs have illegally extended their copyrights, and (2) plaintiffs' method of doing business is in violation of the Sherman Anti-Trust Act, 15 U.S.C.A. §§ 1-7, 15 note. Unless these defenses can be sustained, it follows from the evidence that plaintiffs have established infringement of the musical copyrights referred to in the complaint and are entitled to an injunction, damages, and counsel fees.

Plaintiffs are members of the American Society of Composers, Authors and Publishers, better known as Ascap, which is a voluntary association including within its membership many composers, authors, and publishers of musical compositions. Motion pictures in the United States are produced principally by eight major companies and are licensed by the producers to exhibitors to be exhibited in various motion picture theatres. Sound for pictures cannot be played unless the music included in the sound track is also played, in that the dialogue and music are on the same sound track and obviously cannot be separated. Plaintiffs and the other members of Ascap have adopted by their arrangements, agreements, and practices a uniform plan whereby copyright music owned by them is licensed through an agent to motion picture producers. The music is licensed to them at a license fee agreed upon, permitting the producers to synchronize the copyrighted music on the sound track of the motion picture film to be produced. The music by such synchronization will be integrated with the film, and all the members of Ascap know and are informed that the film on which the music is recorded will be copyrighted by the motion picture producer and thereafter licensed for exhibition in motion picture theatres for profit throughout the United States and elsewhere. As stated, the rights granted to the motion picture producers are merely synchronization rights. The license agreements covering synchronization seem to vary in form, but all of them specifically indicate that the rights granted are recording rights alone and do not extend to performance rights of the copyrighted music. In some the following reservations are made: "The right to perform said musical composition as covered by this agreement is conditioned upon the performance of said musical composition in theatres having valid licenses from the American Society of Composers, Authors and Publishers, or any other performing rights society having jurisdiction in the territory in which said musical composition is performed." In other license contracts, the word "perform", as noted in the first line, is changed to the word "record". There may be other changes in the wording in the various forms of contracts used.

Furthermore, it may be noted that, in the agreements between the copyright owner and the producers granting synchronization rights to the producers, the latter specifically assent that there is a reservation to the copyright owner of the right to license the performance rights to the exhibitors of the films, and, in carrying out the arrangement between the copyright owner and the producer, the latter in its contract with the theatre owner limits the exhibition of the film, where Ascap rights are involved, to theatres having licenses from Ascap.

The licensing of the performance rights of the copyrighted music thus recorded on the sound film is handled exclusively by Ascap for these plaintiffs and other members of that Society. There are some fifteen thousand theatres in the United States which obtain music performance rights from Ascap. The performance rights of any musical composition controlled by Ascap may be licensed singly, but it appears that Ascap's copyrighted music is always licensed as a group under a blanket license from Ascap. And while the copyright owners, including the plaintiffs herein, since the consent decree entered into in 1941 between Ascap and the Federal Government, may deal individually with anyone seeking a license for the performance of their compositions publicly for profit, it seems that, in the licensing of the performance rights of the music integrated in a sound film, as a matter of practice theatre owners have but little opportunity to obtain licenses from the many individual copyright owners belonging to Ascap who may have copyrighted music in the particular film purchased by the theatre owner. Defendants term the right of granting individual licenses by the individual Ascap copyright owner as "illusory" in that the motion picture theatre owner is generally required to buy his pictures for his theatre before he knows what copyrighted music may be contained therein. It is contended that often he does not know the titles of the pictures for which he has contracted and which he has agreed to exhibit in his theatre. The "cue sheets", which contain the entire music score of the particular film and which are made available with each film production, reflect whether the music is copyrighted or in the public domain, but usually they are not made available to the exhibitor until he has bound himself to purchase the film. Obviously, therefore, it is urged that he is in no position to bargain for a license with the copyright owners of the music. That is, he must have the license or licenses or he cannot exhibit the film in his theatre. Defendants contend that, in the relatively short time available to the motion picture operator after the cue sheets are available, it would be quite impossible for any motion picture exhibitor to contact all the different copyright owners of music for licenses, and that the very predicament that he would be in if he would assume to wait until the cue sheets are prepared and made available before he bargained for a license for copyright music requires him to obtain a yearly blanket license for all Ascap music if he is to carry on his theatre business successfully. That the necessities of the situation seem to make this practice uniform is sustained by the record herein, and there is no deviation in the manner in which theatre owners obtain a license for the performance rights of copyrighted music. They all clear through Ascap, and for years Ascap has built up its business in this regard accordingly and with full knowledge of all of these circumstances. In fact, one of the witnesses, informed as to the methods of doing business in this regard, testified, and his testimony is not contradicted, that he had never heard of any theatre owner's approaching anyone but Ascap for performance rights where the music was copyrighted by an Ascap member. Then, in addition, there are certain practical aspects which undoubtedly have brought about the uniform practices of Ascap in this regard. If a member of Ascap intends to issue a performance license to a motion picture theatre owner, he is required to give notice to the Society of his intention to do so, and the issuance of such license by him must have the approval of all parties interested in the copyright — the composer, the author, and the publisher. All license fees obtained by Ascap members for performance of motion picture films for profit are paid to Ascap and these fees are distributed to the members by Ascap according to a formula devised by that Society. These factors undoubtedly have had a bearing upon, and apparently were devised to bring about, the plan of Ascap's being in exclusive control of the granting of performance rights of music copyrighted by Ascap members, but whatever may have occasioned the plan, it is evident that Ascap has obtained over the years a monopoly of the music thus integrated in sound motion picture films. It is uncontradicted that on an average at least 80% of the music integrated in sound films is copyrighted and owned by members of Ascap and the licensing exclusively controlled by Ascap.

This plan and method of doing business by plaintiffs and the other members of Ascap undoubtedly was prompted by a desire to protect their rights as copyright owners, facilitate the collection of license fees so that they might be distributed in accordance with the formula agreed upon, enable them to handle more expeditiously the licensing of films to theatre owners, and enable the Society to police the violations of their copyrights. But, notwithstanding these seeming beneficent purposes, plaintiffs and their associates through Ascap have obtained by these methods and practices which they have carried on over the years monopolistic control over the copyrighted films in which their music is integrated. This seems evident because, unless the theatre owner obtains a license at a fee which plaintiffs and their associates through Ascap demand, no theatre owner can exhibit a sound film which he rents from a producer and which contains Ascap music. In other words, plaintiffs and their associates have, through Ascap, the...