Irving Berlin, Inc. v. Daigle

• Decision Date: 02 April 1929
• Docket Number: No. 5396,5397.,5396
• Citation: 31 F.2d 832
• Parties: IRVING BERLIN, Inc., v. DAIGLE. SAME v. RUSSO et al.
• Court: U.S. Court of Appeals — Fifth Circuit

31 F.2d 832 (1929)

IRVING BERLIN, Inc., v. DAIGLE.

SAME v. RUSSO et al.

Nos. 5396, 5397.

Circuit Court of Appeals, Fifth Circuit.

April 2, 1929.

Thomas G. Haight, of Jersey City, N. J., J. Studebaker Lucas, of New Orleans, La., and Nathan Burkan and Louis D. Frohlich, both of New York City, for appellant.

Fred G. Benton, of Baton Rouge, La., for appellee Daigle.

Fred G. Benton, of Baton Rouge, La. (W. A. Benton, of Baton Rouge, La., on the brief), for appellees Russo.

Before WALKER, BRYAN, and FOSTER, Circuit Judges.

WALKER, Circuit Judge.

These two cases arise under the Copyright Act of March 4, 1909, as amended (title 17, U. S. C. 17 USCA). They may be disposed of in one opinion.

Appellant, the Irving Berlin Company, Inc., filed bills as copyright proprietor of certain musical compositions, alleging infringement of each by public performance for profit, and prayed for injunctions, for damages of not less than $250 for each infringement, and for reasonable attorney's fees.

In No. 5396 it appears that appellee A. Daigle was the proprietor of a dance pavilion in Plaquemine, La., a town of about 6,000 inhabitants, to which admission was charged, and three copyrighted pieces were played there by an orchestra. It was held that there was infringement as to each composition. Actual damages and profits were not shown, and the District Court reached the conclusion that under the provisions of section 25 of the act (17 USCA § 25) it was discretionary to award damages of $10 for each infringement, and rendered judgment accordingly. 26 F.(2d) 149.

In No. 5397 it appears that appellees Joseph and Charles Russo were the proprietors of a motion picture theater, also in the town of Plaquemine, La., and during an exhibition of pictures two copyrighted musical compositions were played from records on a phonograph. In this case the District Court did not consider the question of infringement at all, but held that, as appellant had failed to allege and prove that it had filed notice in the Copyright Office in compliance with section 1(e) of the act (17 USCA § 1(e), it could not recover. Judgment was rendered in favor of defendant. 26 F.(2d) 150. In neither case was an injunction granted, nor attorney's fees allowed.

The Copyright Act gives to the copyright proprietor the exclusive rights to print, reprint, publish, and vend the copyrighted work, to perform it publicly for profit, if it be a musical composition, and for the purpose of public performance for profit, and "for the purposes set forth in subsection (a) hereof, to make any arrangement or setting of it or of the melody of it in any system of notation or any form of record in which the thought of an author may be recorded and from which it may be read or reproduced" (sections 1 (a) and (e), and 5 of the act; 17 USCA §§ 1(a), (e), and 5), and prescribes (section 25) the liabilities incurred by any person who shall infringe the copyright. With reference to the last-stated right the act, in section 1(e), provides as follows:

"Provided, that the provisions of this title, so far as they secure copyright controlling the parts of instruments serving to reproduce mechanically the musical work, shall include only compositions published and copyrighted after July 1, 1909, and shall not include the works of a foreign author or composer unless the foreign state or nation of which such author or composer is a citizen or subject grants, either by treaty, convention, agreement, or law, to citizens of the United States similar rights. 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; and the copyright proprietor may require, and if so the manufacturer shall furnish, a report under oath on the 20th day of each month on the number of parts of instruments manufactured during the previous month serving to reproduce mechanically said musical work, and royalties shall be due on the parts manufactured during any month upon the 20th of the next succeeding month. The payment of the royalty provided for by this section shall free the articles or devices for which such royalty has been paid from further contribution to the copyright except in case of public performance for profit. It shall be the duty of the copyright owner, if he uses the musical composition himself for the manufacture of parts of instruments serving to reproduce mechanically the musical work, or licenses others to do so, to file notice thereof, accompanied by a recording fee, in the copyright office, and any failure to file such notice shall be a complete defense to any suit, action, or proceeding for any infringement of such copyright.

"In case of the failure of such manufacturer to pay to the copyright proprietor within thirty days after demand in writing the full sum of royalties due at said rate at the date of such demand the court may award taxable costs to the plaintiff and a reasonable counsel fee, and the court may, in its discretion, enter judgment therein for any sum in addition over the amount found to be due as royalty in accordance with the terms of this title, not exceeding three times such amount.

"The reproduction or rendition of a musical composition by or upon coin-operated machines shall not be deemed a public performance for profit unless a fee is charged for admission to the place where such reproduction or rendition occurs."

The evidence in the Daigle Case, No. 5396, showed an infringement by the appellee of the copyright which was in question in that case, as the unauthorized public performance of a copyrighted musical composition in a dance hall to which admission is charged is an infringement, as clearly the music is the main inducement to pay the admission fee. Herbert v. Shanley Co., 242 U. S. 591, 37 S. Ct. 232, 61 L. Ed. 511. In the case of Westerman Co. v. Dispatch Co., 249 U. S. 100, 39 S. Ct. 194, 63 L. Ed. 499, the court passed on the question of the damages recoverable under section 25(b), 17 USCA § 25(b), in lieu of actual damages and profits for an infringement of a copyright for pictorial illustrations, and held that the damages "in lieu of actual damages and profits" could not be less than $250 in each case. The reasoning in that case is applicable to the case under consideration for the infringement of a copyright of a musical composition, with the result that for the infringement in question the minimum amount assessable was $250 instead of the amount stated in subdivision "fourth" of section 25, 17 USCA § 25 (b) (4).

The subject of the above set out part of section 1(e) of the act is the right of a proprietor of a copyright for a musical composition with reference to reproducing mechanically the copyrighted work. That part of the act does not deal with other separate and distinct exclusive rights conferred on the copyright proprietor. The connection in which the words "such copyright" are used in the provision "and any failure to file such notice shall be a complete defense to any suit, action or proceeding for any infringement of such copyright," indicates that those words referred, not to the aggregate of rights possessed by the copyright proprietor, but to the mechanical reproduction right conferred on him, which right was referred to in the clause: "Provided, that the provisions of this title, so far as they secure copyright controlling the parts of instruments serving to reproduce mechanically the musical work," etc. We conclude that the provision in question does not have the effect of making a failure to file the notice referred to a defense to a suit for the infringement of the right to perform a copyrighted work publicly for profit. The same conclusion was reached in the case of Standard Music Roll Co. v. F. A. Mills, Inc. (C. C. A.) 241 F. 360. It follows that the court erred in its above-mentioned ruling in the Russo Case, No. 5397. As that ruling calls for a reversal of the judgment in that case it is proper, for the purposes of another trial, to consider the question as to what relief is grantable for the infringement alleged in that case.

We first consider a suggestion which has been made as to the meaning and effect of a provision contained in section 25 of the Copyright Act. That section, which defines the liability of an infringer, after dealing in subsections (a), (b), (c), and (d), 17 USCA § 25(a), (b), (c), (d), with the subjects injunction, damages, and profits, impounding during the pendency of the action of alleged infringing articles, and destruction of infringing copies and plates, contains the following provision:

"(e) Whenever the owner of a musical copyright has used or permitted the use of the copyrighted work upon the parts of musical instruments serving to reproduce mechanically the musical work, then in case of infringement of such copyright by the unauthorized manufacture, use, or sale of interchangeable parts, such as disks, rolls, bands, or cylinders for use in mechanical music-producing machines adapted to reproduce the copyrighted music, no criminal action shall be brought, but in a civil action an injunction may be granted upon such terms as the court may impose, and the plaintiff shall be...