863 F.2d 1061 (2nd Cir. 1988), 92, Gaste v. Kaiserman

Docket Nº:92, 93, Dockets 88-7367, 88-7369.
Citation:863 F.2d 1061
Party Name:9 U.S.P.Q.2d 1300 Louis GASTE and Les Editions Louis Gaste, Plaintiffs-Appellees, v. Morris KAISERMAN a/k/a Morris Albert, and Fermata International Melodies, Inc., Defendants-Appellants.
Case Date:December 01, 1988
Court:United States Courts of Appeals, Court of Appeals for the Second Circuit

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863 F.2d 1061 (2nd Cir. 1988)

9 U.S.P.Q.2d 1300

Louis GASTE and Les Editions Louis Gaste, Plaintiffs-Appellees,


Morris KAISERMAN a/k/a Morris Albert, and Fermata

International Melodies, Inc., Defendants-Appellants.

Nos. 92, 93, Dockets 88-7367, 88-7369.

United States Court of Appeals, Second Circuit

December 1, 1988

Argued Oct. 5, 1988.

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[Copyrighted Material Omitted]

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Robert C. Osterberg, New York City (Abeles Clark and Osterberg, New York City, on the brief), for defendant-appellant Kaiserman.

Richard I. Wolff, New York City, for defendant-appellant Fermata International Melodies, Inc.

Donald S. Zakarin, New York City, (Andrew H. Bart, Pryor, Cashman, Sherman & Flynn, New York City, on the brief), for plaintiffs-appellees.

Before KAUFMAN, NEWMAN, and GARTH, [*] Circuit Judges.

JON O. NEWMAN, Circuit Judge:

This appeal involves a copyright infringement action against the composer and publisher of the highly successful popular song "Feelings," brought by Louis Gaste, the composer of an obscure French song written nearly 17 years earlier. The appeal is from a judgment of the District Court for the Southern District of New York (William C. Conner, Judge), entered after a jury found defendants Morris Kaiserman and Fermata International Melodies, Inc. ("Fermata") liable for copyright infringement. The jury awarded damages of $268,000 against Fermata and $233,000 against Kaiserman. The District Court also issued a permanent injunction against further infringement. Judge Conner reduced the damages against Kaiserman to $135,140 after excluding profits attributable to foreign performances. Judge Conner denied defendants' motions for a judgment notwithstanding the verdict or a new trial.

Defendants appeal from Judge Conner's denial of a new trial or judgment notwithstanding the verdict on several grounds. They argue that: (1) plaintiff did not have a valid copyright as a matter of law; (2) plaintiff failed to prove copying as a matter of law; (3) the District Court incorrectly instructed the jury on the issues of "access" and "striking similarity"; and (4) the District Court erred in not reducing the damages award to account for a portion of the profits from "Feelings" attributable to defendants' independent, non-infringing contributions. For the reasons stated below, we reject appellants' arguments and affirm the judgment.


In 1956, plaintiff-appellee Gaste, a resident and citizen of France, composed the music to a song entitled "Pour Toi" as part of the score of a motion picture Le Feu aux Poudres, which was released in France that same year. 1 Gaste registered the sheet music for the song in the United States Copyright Office in 1957. Neither the movie nor the song, which was published and recorded separately in France, had great success. Worldwide revenues of "Pour Toi" have amounted to less than $15,000.

From France, the scene shifts to Brazil, nearly two decades later. In 1973, the then unheralded and relatively unknown Brazilian singer and composer Morris Kaiserman, known professionally as Morris Albert, composed and recorded the song "Feelings." "Feelings" became a smash hit internationally, winning "gold records" in a number of countries.

Gaste contended at trial that Kaiserman had gained access to Gaste's virtually unknown song through Enrique Lebendiger, the owner of Fermata, which was Kaiserman's publisher. Gaste's evidence, detailed below in the discussion of access, established that Fermata had had some dealings with Gaste's publishing company, Les Editions Louis Gaste, in the 1950s.

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I. Validity of the Copyright

A. Attachment of Notice. Defendants-appellants Kaiserman and Fermata contend that as a matter of law Gaste did not have a valid United States copyright in the song "Pour Toi." Their principal argument is that the song was first published in 1956 in the movie Le Feu aux Poudres and that the movie lacked the formal copyright notice required by the United States Copyright Act of 1909, the statute then in force. As a result, they argue, this first publication of the song put it in the public domain, and the registration of the song at the United States Copyright Office in 1957, and the copyright renewal in 1984, were therefore invalid.

In order for Kaiserman and Fermata to prevail on this argument, we would have to hold that (1) publication of a work abroad without the attached notice required by the United States placed the work in the public domain under the 1909 Act, even if the publication was in a country that subscribed to the Berne Convention, 2 which does not require attachment of notice to secure copyright protection; (2) publication abroad of a movie with a song on its soundtrack constituted divestive publication of the song under the 1909 Act and the Universal Copyright Convention, even though Article VI of the Convention provided that divestive publication must be in a form that can be read or visually perceived; and (3) the writer of a song who licensed a film-maker to use the song in a movie could lose the right to copyright the song if, with no showing of fault on the part of the song writer, the film-maker neglected to attach the appropriate notice to the movie.

We note in passing that there is authority contrary to the premises of appellants' argument on the Berne Convention issue, see Heim v. Universal Pictures Co., 154 F.2d 480, 486-87 (2d Cir.1946) (dictum); 2 M. & D. Nimmer, Nimmer on Copyright Sec. 7.12[D][a] (1988); the non-visual publication issue, see 1 M. & D. Nimmer, supra, Sec. 4.05[B]; cf. Rosette v. Rainbo Record Manufacturing Corp., 354 F.Supp. 1183 (S.D.N.Y.1973), aff'd, 546 F.2d 461 (2d Cir.1976); and the licensee issue, see Modern Aids, Inc. v. R.H. Macy & Co., 264 F.2d 93 (2d Cir.1959). But we need not, and do not, reach any of these issues because we hold that Gaste's certificate of copyright registration created a presumption of validity that the jury was entitled to conclude was not rebutted.

Gaste registered his song with the United States Copyright Office in 1957 and renewed the registration in 1984. Under section 410(c) of the current Copyright Act of 1976, 17 U.S.C. Sec. 410(c) (1982), copyright registration made within five years of first publication of a work constitutes prima facie evidence of the validity of the copyright in any judicial proceeding. It is well settled that this puts the burden of proof as to invalidity on the defendant in an infringement action. See Oboler v. Goldin, 714 F.2d 211, 212 (2d Cir.1983); 3 M. & D. Nimmer, supra, Sec. 12.11.

Less settled, however, is whether the 1909 Act created the same presumption of validity. Unlike the 1976 Act, section 209 of the 1909 Act does not say that the certificate of registration shall constitute prima facie evidence of validity of the copyright. It says only that the certificate shall be prima facie evidence "of the facts stated therein." Generally, the only "facts" stated in a certificate of registration are registration, deposit, and date of publication (where copyright is claimed in a published work).

Thus, by its terms, the 1909 Act does not expressly create a presumption of validity. Nonetheless, a number of courts, including this Circuit, have interpreted the 1909 Act as creating a presumption of validity and of compliance with statutory formalities such as initial publication with copyright notice. See, e.g., Novelty Textile Mills, Inc. v. Joan Fabrics Corp., 558 F.2d 1090, 1092 n. 1 (2d Cir.1977); Stuff v. E.C.

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Publications, Inc., 342 F.2d 143, 144 (2d Cir.), cert. denied, 382 U.S. 822, 86 S.Ct. 50, 15 L.Ed.2d 68 (1965); Monogram Models, Inc. v. Industro Motive Corp., 448 F.2d 284, 286 (6th Cir.1971); Tennessee Fabricating Co. v. Moultrie Manufacturing Co., 421 F.2d 279, 282 (5th Cir.), cert. denied, 398 U.S. 928, 90 S.Ct. 1819, 26 L.Ed.2d 91 (1970); Champion Map Corp. v. Twin Printing Co., 350 F.Supp. 1332, 1334-35 (E.D.N.C.1971); Irving J. Dorfman Co. v. Borlan Industries, Inc., 309 F.Supp. 21, 24 (S.D.N.Y.1969).

Despite some authority to the contrary, see Krafft v. Cohen, 117 F.2d 579, 581 (3d Cir.1941); 3 M. & D. Nimmer, supra, Sec. 12.11[B], we follow the majority rule and hold that under section 209 of the 1909 Act, a valid certificate of registration creates a rebuttable presumption of compliance with the requirements for validity, including the statutory requirement of initial publication with notice.

The legislative history of section 410 of the 1976 Act, although obviously not controlling our interpretation of the 1909 Act, is nonetheless illuminating. The House Report on the 1976 Act says that by expressly creating a presumption of validity for registered copyrights, Congress was not creating a new law, but was following a "sound" principle that had "been established in a long line of court decisions." H.R.Rep. 1476, 94th Cong., 2d Sess., 156-57 (1976), reprinted in 1976 U.S.Code Cong. & Admin.News 5659, 5773. As the House Report states:

It is true that, unlike a patent claim, a claim to copyright is not examined for basic validity before a certificate is issued. On the other hand, endowing a copyright claimant who has obtained a certificate with a rebuttable presumption of the validity of the copyright does not deprive the defendant in an infringement suit of any rights; it merely orders the burdens of proof. The plaintiff should not ordinarily be forced in the first instance to prove all of the multitude of facts that underline the validity of the copyright unless the defendant, by effectively challenging them, shifts the burden of doing so to the plaintiff.


Although the statutory formalities of the 1909 Act were generally stricter and less forgiving than the...

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