Metro-Goldwyn-Mayer Dist. Corp. v. Bijou Theatre Co., 3254

• Decision Date: 11 May 1931
• Docket Number: 3255.,No. 3254,3254
• Citation: 50 F.2d 908
• Parties: METRO-GOLDWYN-MAYER DISTRIBUTING CORPORATION v. BIJOU THEATRE CO., Inc., et al. EDUCATIONAL FILM EXCHANGES, Inc., v. SAME.
• Court: U.S. District Court — District of Massachusetts

50 F.2d 908 (1931)

METRO-GOLDWYN-MAYER DISTRIBUTING CORPORATION v. BIJOU THEATRE CO., Inc., et al.

EDUCATIONAL FILM EXCHANGES, Inc., v. SAME.

Nos. 3254, 3255.

District Court, D. Massachusetts.

May 11, 1931.

Hill, Barlow & Homans, of Boston, Mass., for plaintiffs.

John C. Coughlin, of Boston, Mass., for defendant.

MORTON, District Judge.

These are bills in equity to enjoin alleged infringements of copyright on certain moving picture films and for damages. The defendant has moved to dismiss on several grounds.

The first ground, that the plaintiff has brought suits against these defendants in the state court which are now pending, is disposed of by McClellan v. Carland, 217 U. S. 268, 30 S. Ct. 501, 54 L. Ed. 762. See too Consolidated Ordnance Co. v. William T. Marsh et al., 227 Mass. 15, 116 N. E. 394. The second ground argued is misjoinder of parties, the objection being that the exclusive licensee of the owners of the copyright is joined as a party-plaintiff. Inasmuch as it has an interest in the litigation, it has properly been made a party-plaintiff to the suit under Equity Rule 37 (28 USCA § 723). The third ground is that no case is shown for an injunction because there is no allegation of continued or threatened infringement and that, there being no case for injunctive relief, the equity of the bill fails. The answer to this is found in the statute (17 USCA § 25), which provides that a suit for damages may be combined with one for an injunction. It follows that though the injunction be denied the case may stand as one for damages.

The other grounds are more basic and important, viz., that the unauthorized showing of a motion picture does not constitute a violation of the copyright on it; and that the plaintiff, having turned over the films in question to the defendant under a contract regulating the use of them and providing for arbitration of disputes as a condition precedent to legal action, cannot sue without complying with the terms of the contract, nor maintain an infringement proceeding for acts amounting to a breach of the contract.

As to whether showing a copyrighted motion picture film constitutes an infringement of the copyright: This question seems not to have been decided in any case in which an opinion was written. There is no provision in the statute concerning the scope or effect of the copyright of moving picture films. They were commercially unknown when section 1 of the current act was passed (1909) and are referred to only in the classification section of the statute, being brought in there by the amendment of 1912. As the statute does not in terms give to the proprietor of the copyright the rights contended for by the plaintiff, the question is whether such rights are conferred by the general provisions of section 1, or by implication from those provisions. The only case which throws much light on the matter is Kalem v. Harper Bros., 222 U. S. 55, 32 S. Ct. 20, 56 L. Ed. 92, Ann. Cas. 1913A, 1285, where it was held that the exhibition of a motion picture based upon a dramatization of a copyrighted novel was a dramatic production within the meaning of the copyright law, and consequently was an infringement of the copyright on the novel, because by the statute the copyright owner is given exclusive control of dramatization and dramatic performance of his work. The point decided was as to the scope of the copyright on the novel "Ben Hur."

The present question is different. Here the film itself is the subject of the copyright. Nobody questions that the plaintiff has the exclusive right to control copying it. If the film were an ordinary photograph or transparency, nobody would contend that the mere exhibition of it violated the copyright. The understanding of Congress that it does not do so in the case of a moving picture film is established with very unusual clearness. The point was explicitly raised and discussed in connection with the amendments of 1912. During the debate on them in the House, apprehension was expressed lest the exhibitor be made liable as an infringer of the copyright; and the following colloquy occurred:

Mr. Borland: "Would not the gentlemen be willing to consent then that the penalty should apply against the men who made the film?"

Mr. Townsend (who was in charge of the bill): "That is the intention of the law."

Mr. Borland: "And that the exhibitor should not be liable for an innocent infringement?"

Mr. Townsend: "That was the understanding of the lawyers on the Committee."

The rather lengthy discussion from which this excerpt is taken makes it clear that the House understood that neither under the existing law, nor under the proposed amendment, was an unlawful exhibition of the copyrighted film, an infringement of the copyright. It should require unambiguous language in a statute to the contrary to warrant disregarding such clearly proved legislative intent.

The only part of section 1 which can possibly be regarded as having that effect, as it seems to me, is clause (d) relating to "drama" or "dramatic work." If the film itself be regarded as a drama, the Kalem decision applies. The provisions about "drama" and "dramatic work" in this section go back to the Act of 1856 and relate to the written and spoken drama as then known. They have since been revised and extended, the last time in 1909, when as above stated moving pictures were still unknown commercially. Nobody then thought of "drama" or "dramatic work" in terms of motion pictures. A moving picture play is utterly different from anything then conceivable — an entirely new method of communicating ideas.

Copyright statutes were originally intended to control copying. See Bobbs-Merrill Co. v. Straus, 210 U. S. 339, 28 S. Ct. 722, 52 L. Ed. 1086; Jeweler's Circular Pub. Co. v. Keystone Pub. Co., 281 F. 83, 26 A. L. R. 571 (C. C. A. 2). Until Kalem Co. v. Harper Bros., 222 U. S. 55, 32 S. Ct. 20, 56 L. Ed. 92, Ann. Cas. 1913A, 1285, the development of copyright law had been strictly statutory; it had not been extended by judicial enlargement of existing law. Statutes were required to give authors of dramatic works a monopoly of the spoken performance of them (Act of August 18, 1856 11 Stat. 138), and to give composers control of public performances of their music or operas. The Mikado Case (C. C.) 25 F. 183, 187; 17 USCA § 1 (e). When mechanical instrumentalities were invented to reproduce music and sound, statutory action was again necessary in order to protect composers; it being held that the copyright on the printed music did not give a monopoly of audible reproduction of it by perforated rolls. White-Smith Music Pub. Co. v. Apollo Co., 209 U. S. 1, 28 S. Ct. 319, 52 L. Ed. 655, 14 Ann. Cas. 628. There are now special provisions in the statute dealing with talking-machine records (section 1, e), and also special provisions concerning infringement by mechanical reproduction which is, however, limited to musical works (section 25). As a general rule, the...