International Tape Manufacturers Ass'n v. Gerstein

• Decision Date: 12 June 1972
• Docket Number: No. 72-164-Civ-JE.,72-164-Civ-JE.
• Citation: 344 F. Supp. 38
• Parties: INTERNATIONAL TAPE MANUFACTURERS ASSOCIATION, Plaintiff, v. Richard GERSTEIN et al., Defendants.
• Court: U.S. District Court — Southern District of Florida

344 F. Supp. 38

INTERNATIONAL TAPE MANUFACTURERS ASSOCIATION, Plaintiff, v. Richard GERSTEIN et al., Defendants.

No. 72-164-Civ-JE.

United States District Court, S. D. Florida.

June 12, 1972.

COPYRIGHT MATERIAL OMITTED

James L. Fisk, Washington, D. C., for plaintiff.

William J. Dunaj, Special Asst. Atty. Gen., Miami, Fla., and Richard Sepler, Special Asst. Atty. Gen., Hialeah, Fla., for defendants.

OPINION

LAYTON^*, District Judge.

Plaintiff, an unincorporated voluntary association, has brought this class action seeking declaratory and injunctive relief from future criminal prosecutions threatened under the provisions of a Florida statute. Plaintiff alleges that such imminent prosecutions would result in the instigation of harassing and vexatious litigation and cause it irreparable harm. Defendants are the State Attorneys, who are responsible for prosecutions initiated pursuant to the challenged Florida Statute. Plaintiff contends that the Florida statute is in conflict with Federal copyright law and is, therefore, void pursuant to the Supremacy Clause of the Constitution. It seeks a permanent injunction restraining defendants from initiating any proceedings to enforce this allegedly unconstitutional section of the Florida penal code. Furthermore, it seeks a declaratory judgment that the Florida statute is unconstitutional.

Federal jurisdiction is claimed pursuant to 28 U.S.C. §§ 1338, 2201-02, 2281-84.

On March 2, 1972, this Court granted plaintiff's motion to designate this action as a class action and entered a temporary restraining order against defendants, prohibiting them from enforcing the provisions of the challenged Florida Statute. Defendants have filed motions to dismiss the complaint and dissolve the order.

Plaintiff is engaged in the business of making and selling sound recordings in the form of discs and tapes. It purchases on the open market disc phonograph records and tapes which have been manufactured and sold through usual commercial channels by record companies. It then makes tape recordings of these sound recordings, and uses these tapes to manufacture additional copies of the recordings which it markets and sells, affixing to each recording a label containing the title of the original sound recording and the name of the recording artist whose performance has been copied.

The Florida statute, which became effective on October 1, 1971, makes it a criminal offense to engage in such "piracy" of sound recordings by selling the copies for profit:

"It is unlawful to:

1. Knowingly and willfully, without the consent of the owner, transfer or cause to be transferred any sounds recorded on a phonograph record, disc, wire, tape, film or other article on which sounds are recorded, with the intent to sell or cause to be sold for profit, such article on which sounds are so transferred.

2. Sell any such article with the knowledge that the sounds thereon have been so transferred without the consent of the owner.

(b) (2) As used in this section . . . `Owner' means the person who owns the master phonograph record, master disc, master tape, master film, or other device used for reproducing sounds on phonograph records, discs, tapes, films, or other articles upon which sound is recorded, and from which the transferred recorded sounds are directly or indirectly derived."¹

The Constitution provides that Congress has the power to grant and regulate copyrights:

"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."²

Title 17 of the United States Code contains the statutes which Congress has enacted pursuant to its powers derived from the Constitution. Public Law 92-140 is the latest amendment to Title 17. 92-140 consists of three sections which made several changes in the provisions of Title 17.

The first change added subsection (f) to 17 U.S.C. § 1—exclusive rights as to copyrighted works—which permits only the owner of a copyrighted sound recording to reproduce it for sale:

"Any person entitled thereto, upon complying with the provisions of this title, shall have the exclusive right:

(f) to reproduce and distribute to the public by sale or other transfer of ownership . . . reproductions of the copyrighted work if it be a sound recording: Provided, That the exclusive right of the owner of a copyright in a sound recording to reproduce it is limited to the right to duplicate the sound recording in a tangible form that directly or indirectly recaptures the actual sounds fixed in the recording."

17 U.S.C. §§ 19 and 20—notice; form —were amended to prescribe the form of notice of a copyright on a published sound recording, as required by 17 U.S. C. § 10.

17 U.S.C. § 26—terms defined—was also amended:

"A reproduction of a sound recording shall be considered to be a copy thereof. `Sound recordings' are works that result from the fixation of a series of musical, spoken, or other sounds. . . . `Reproductions of sound recordings' are material objects in which sounds . . . are fixed by any method now known or later developed, and from which the sounds can be . . . reproduced . . . and include . . . discs or tapes for use in mechanical music-producing machines."

Section 2 of 92-140 added a new subsection of 17 U.S.C. § 101—infringement —which stated that unauthorized use of copyrighted sound recordings was an infringement:

"(e) Discs or tapes for use in mechanical music-producing machines adapted to reproduce copyrighted musical works, shall be considered copies of the copyrighted musical works which they serve to reproduce mechanically . . . and the unauthorized manufacture, use, or sale of such interchangeable parts shall constitute an infringement of the copyrighted work rendering the infringer liable in accord with all provisions of this title dealing with infringements of copyright and, in a case of willful infringement for profit, to criminal prosecution pursuant to section 104 of this title."

Section 3 of 92-140 provided the effective dates for the provisions of the amendments to Title 17:

"This Act shall take effect four months after its enactment except that section 2 of this Act shall take effect immediately upon its enactment. The provisions of title 17, United States Code, as amended by section 1 of this Act, shall apply only to sound recordings fixed, published, and copyrighted on and after the effective date of this Act and before January 1, 1975, and nothing in title 17, United States Code, as amended by section 1 of this Act, shall be applied retroactively or be construed as affecting in any way any rights with respect to sound recordings fixed before the effective date of this Act."³

Prior to determining the merits of the substantive issues which plaintiff raises in the case at bar, substantial jurisdictional questions raised by defendants must be adjudicated. These challenges attack the standing of the plaintiff, the underlying federal jurisdiction, declaratory judgment jurisdiction and injunctive jurisdiction. Finally, should the first four challenges fail, defendants contend that this Court should abstain from exercising its jurisdiction.

STANDING

The defendants argue that the plaintiff lacks standing to prosecute this action because it is not the real party in interest as defined by the Federal Rules.⁴

The Supreme Court has held that the question of standing is not related to the precise nature of the legal interests asserted by a plaintiff. A determination of the legal interests lies within the scope of a ruling on the merits of the case.⁵ To demonstrate standing, a plaintiff must show that he has (1) such a personal stake in the controversy as to assure adverseness, and (2) injury or threat of injury to an arguably legally recognized, rather than a personal, interest.⁶ Plaintiff has demonstrated its personal stake through its involvement in this and other suits. It is clearly threatened with injury by the initiation of prosecutions pursuant to the provisions of the Florida statute. Therefore, the plaintiff has standing to prosecute this action and the first contention of the defendants must be dismissed.

UNDERLYING FEDERAL JURISDICTION

The defendants argue that there is no jurisdictional statute providing for federal jurisdiction in the case at bar.

Generally, a plaintiff in a copyright suit argues either that he is entitled to a copyright, or that a copyright which he owns has been infringed. In the case at bar, plaintiff raises neither contention. Here, defendants claim that in their absence, there is no federal jurisdiction pursuant to 28 U.S.C. § 1338,⁷ and that this Court must dismiss the suit. This Court is not persuaded by defendants' reasoning.

Congress has expressed an interest in preserving for authors certain rights with respect to the control of the dissemination of their works and the rewards attained from such distribution. It also has regulated the works entitled to such protection, and the time within which those works may be protected. While not necessarily preempting the field, Congress has clearly manifested an interest extending to the entire breadth of copyright protection provided by both the federal and state systems. Under such circumstances, this Court feels that there may be an inherent jurisdiction covering the entire field of copyrights lodged in the district courts, which, while not exclusive, may permit federal courts to hear such cases as those filed by plaintiff in the instant action.⁸ This result may occur even where state law governs the entire disposition of the substantive issues presented by the case.⁹

The fact that the plaintiff in the case at bar does not claim a copyright is not dispositive of whether jurisdiction is present pursuant to § 1338. Clearly, Title 17 U.S.C. §§ 1-215 is an "Act of Congress relating to . . . copyrights." § 1338 does not require that only the plaintiff...