RCA Mfg. Co. v. Whiteman, 357.

• Decision Date: 16 December 1940
• Docket Number: No. 357.,357.
• Parties: RCA MFG. CO., Inc., v. WHITEMAN et al.
• Court: U.S. Court of Appeals — Second Circuit

114 F.2d 86 (1940)

RCA MFG. CO., Inc., v. WHITEMAN et al.

No. 357.

Circuit Court of Appeals, Second Circuit.

July 25, 1940.

Writ of Certiorari Denied December 16, 1940.

Crawford & Sprague, of New York City (White & Case, Joseph M. Hartfield, and Stuart Sprague, all of New York City, of counsel), for W. B. O. Broadcasting Corporation.

David Mackay, of New York City (David Mackay, Lawrence B. Morris, and Jerome H. Adler, all of New York City, of counsel), for RCA Mfg. Co., Inc.

Maurice J. Speiser, of New York City (Herbert A. Speiser and Nathan Bass, both of New York City, of counsel), for Paul Whiteman.

Before L. HAND, CLARK, and PATTERSON, Circuit Judges.

Writ of Certiorari Denied December 16, 1940. See 61 S.Ct. 393, 85 L.Ed. ___.

L. HAND, Circuit Judge.

This case comes up upon appeals by the plaintiff, RCA Manufacturing Company, Inc., and the defendants, Paul Whiteman and W. B. O. Broadcasting Corporation. Before the action was brought Whiteman had filed a complaint against W. B. O. Broadcasting Corporation and Elin, Inc., to restrain the broadcasting of phonograph records of musical performances by Whiteman's orchestra. By leave of court RCA Manufacturing Company, Inc., then filed the complaint at bar, as ancillary to Whiteman's action, asking the same relief against W. B. O. Broadcasting Corporation and Elin, Inc., as Whiteman had asked in his action, and in addition asking that Whiteman be adjudged to have no interest in the records of his performances, because of contracts between him and itself. Whiteman thereupon discontinued his action, leaving only the ancillary action in which the judgment on appeal was entered. The dispute is as to whether W. B. O. Broadcasting Corporation, as the purchaser of phonographic records prepared by RCA Manufacturing Company, Inc., of Whiteman's orchestral performances, may broadcast them by radio. Whiteman's performances took place in studios of RCA Manufacturing Company, Inc., which arranged for their reproduction upon ordinary phonographic disc records, and which, with the consent of Whiteman, sold the records to the public at large. Of the nine records here in question five were sold between November, 1932, and August 15, 1937, during which period every record bore the legend: "Not Licensed for Radio Broadcast". (Apparently the four earlier records did not advise the purchaser of any such limitation.) After August 15, 1937, this notice was changed to read as follows: "Licensed by Mfr. under U. S. Pats. 1625705, 1637544, RE. 16588 (& other Pats. Pending) Only For Non-Commercial Use on Phonographs in Homes. Mfr. & Original Purchaser Have Agreed This Record Shall Not Be Resold Or Used For Any Other Purpose. See Detailed Notice on Envelope." These later records were inclosed in envelopes which even more clearly gave notice of the same limitations. W. B. O. Broadcasting Corporation every week bought from a New York company, Bruno-New York, Inc., such records as it needed; it used them thereafter to broadcast over its radio system. Bruno-New York, Inc., had bought the records in question under a contract with RCA Manufacturing Company, Inc., in which they agreed after its date (August 9, 1937) to resell "only for non-commercial use on phonographs in homes as per the notice appearing on the record labels and envelopes." It may be assumed that W. B. O. Broadcasting Corporation is charged with notice of the legends on the records, and with the contract of Bruno-New York, Inc., and that it broadcasts them on its radio system in disregard of both.

The questions raised below were whether Whiteman and/or RCA Manufacturing Company, Inc., had any musical property at common-law in the records which radio broadcasting invaded; whether Whiteman had passed any rights which he may have had to RCA Manufacturing Company, Inc., under certain agreements, not necessary to be set out; and whether, if either Whiteman or RCA Manufacturing Company, Inc., had any such common-law property, the legends and notice enabled them, or either of them, to limit the uses which the buyer might make of the records. The judge held that all of Whiteman's rights had passed to RCA Manufacturing Company, Inc., which for that reason was entitled to enjoin the broadcasting of these records; and that Whiteman was also entitled to an injunction against W. B. O. Broadcasting Corporation because it was unfair competition to broadcast his performances without his consent. All parties appealed except Elin, Inc. The RCA Manufacturing Company, Inc., appealed because the judge did not recognize its common-law artistic property, arising out of the skill and art necessary to obtain good recording, and also because of the affirmative relief granted to Whiteman. Whiteman appealed because of the holding that he had lost all his rights to RCA Manufacturing Company, Inc., under its contracts with him. W. B. O. Broadcasting Corporation appealed because any relief was granted against it.

It is only in comparatively recent times that a virtuoso, conductor, actor, lecturer, or preacher could have any interest in the reproduction of his performance. Until the phonographic record made possible the preservation and reproduction of sound, all audible renditions were of necessity fugitive and transitory; once uttered they died; the nearest approach to their reproduction was mimicry. Of late, however, the power to reproduce the exact quality and sequence of sounds has become possible, and the right to do so, exceedingly valuable; people easily distinguish, or think they distinguish, the rendition of the same score or the same text by their favorites, and they will pay large sums to hear them. Hence this action. It was settled at least a century ago that the monopoly of the right to reproduce the compositions of any author — his "common-law property" in them — was not limited to words; pictures were included. Turner v. Robinson, 10 Ir.Ch. 121; S.C. 10 Ir.Ch. 522; Prince Albert v. Strange, 1 McN. & G. 25. This right has at times been stated as though it extended to all productions demanding "intellectual" effort; and for the purposes of this case we shall assume that it covers the performances of an orchestra conductor, and — what is far more doubtful — the skill and art by which a phonographic record maker makes possible the proper recording of those performances upon a disc. It would follow from this that, if a conductor played over the radio, and if his performance was not an abandonment of his rights, it would be unlawful without his consent to record it as it was received from a receiving set and to use the record. Arguendo, we shall also assume that such a performance would not be an abandonment, just as performance of a play, or the delivery of a lecture is not; that is, that it does not "publish" the work and dedicate it to the public. Ferris v. Frohman, 223 U.S. 424, 435, 32 S.Ct. 263, 56 L.Ed. 492; Nutt v. National Institute, 2 Cir., 31 F.2d 236; McCarthy & Fischer v. White, D.C., 259 F. 364; Uproar Co. v. National Broadcasting Co., D.C., 8 F. Supp. 358. Nevertheless, even if Whiteman's "common-law property" in his performances survived the sale of the records on which they were inscribed, it would be very difficult to see how he, or à fortiori the maker of the records, could impose valid restrictions upon their resale. Concededly that could not be done (regardless of the present statutory prohibition) if the restriction went to the resale price. BobbsMerrill Co. v. Straus, 210 U.S. 339, 28 S.Ct. 722, 52 L.Ed. 1086. It would also have been impossible if the restriction for bad the buyer to use the article except with other articles bought of the record maker. Motion Picture Patents Co. v. Universal Film Co., 243 U.S. 502, 37 S.Ct. 416, 61 L.Ed. 871, L.R.A.1917E, 1187, Ann. Cas.1918A, 959. We do not, however, have that question to decide, for we think that the "common-law property" in these performances ended with the sale of the records and that the restriction did not save it; and that if it did, the records themselves could not be clogged with a servitude.

Copyright in any form, whether statutory or at common-law, is a monopoly; it consists only in the power to prevent others from reproducing the copy-righted work. W. B. O. Broadcasting Corporation has never invaded any such right of Whiteman; they have never copied his performances at all; they have merely used those copies which he and the RCA Manufacturing Company, Inc., made and distributed. The putatively protected performances were themselves intended...