Ruskin v. Sunrise Management, Inc., Civ. A. No. 79-K-709.

• Decision Date: 29 January 1981
• Docket Number: Civ. A. No. 79-K-709.
• Citation: 506 F. Supp. 1284
• Parties: Richard RUSKIN, Plaintiff, v. SUNRISE MANAGEMENT, INC., a Colorado Corporation d/b/a Sunrise Mobile/Modular Housing; Owen Advertising, Inc., a Colorado Corporation d/b/a Studio 40 Productions, d/b/a Glen Owen Advertising, Inc., and John Does I through X inclusive, Defendants.
• Court: U.S. District Court — District of Colorado

506 F. Supp. 1284

Richard RUSKIN, Plaintiff, v. SUNRISE MANAGEMENT, INC., a Colorado Corporation d/b/a Sunrise Mobile/Modular Housing; Owen Advertising, Inc., a Colorado Corporation d/b/a Studio 40 Productions, d/b/a Glen Owen Advertising, Inc., and John Does I through X inclusive, Defendants.

Civ. A. No. 79-K-709.

United States District Court, D. Colorado.

January 29, 1981.

COPYRIGHT MATERIAL OMITTED

James G. Benjamin, Towey & Zak, Denver, Colo., for plaintiff.

Theodore H. Merriam, Denver, Colo., for Sunrise.

David C. Deuben, Lakewood, Colo., for Glen Owen.

ORDER

KANE, District Judge.

Defendant Glen Owen Advertising, Inc., filed a motion for summary judgment in this copyright infringement action on December 13, 1979. Defendant Sunrise Management, Inc., joined in the motion on January 10, 1980. According to the complaint in this action, plaintiff Richard Ruskin is a musician and the sound recording performer of the song entitled "Here Comes The Sun," written by George Harrison, on Takoma Records, Catalog Number C-1039. Ruskin alleges he is the assignee of Copyright Number SR 11-534 which gives him the exclusive right to public performance of the sound recording of the song. He alleges in his complaint that defendants violated or infringed upon his copyright by publicly performing and broadcasting the song on the radio and in television advertisements. He also asserts common law claims of misappropriation of talent without his knowledge or consent, and breach of contract. Jurisdiction is appropriate pursuant to 28 U.S.C. § 1338(a).

Defendants move for summary judgment on four grounds:¹ Ruskin, or Takoma Records, forfeited statutory copyright protection by publishing sound recording C-1039 without the required statutory copyright notice prior to obtaining the copyright; Ruskin is not entitled to institute an infringement action as an assignee because the instrument of assignment has not been recorded in the United States Copyright Office as required by 17 U.S.C. § 205(d); the conditioned assignment contains no transfer of copyright to pursue a claim against Owen Advertising for infringement, but only against Sunrise Management; and the defendants incur no liability for actual or statutory damages under 17 U.S.C. § 504 because any infringement, if it occurred, was an innocent infringement and excepted by 17 U.S.C. § 405(b). Having given careful consideration to each of these grounds, I find that summary judgment is inappropriate.

COPYRIGHT NOTICE

During the period of at least May 1, 1978 to August 31, 1978, Owen Advertising represented Sunrise Management in a commercial advertising capacity. The affidavit of Glen Owen, president of Owen Advertising, states that the advertising agency receives as a matter of course record albums from local radio stations without cost to the agency for promotional and other purposes and retains the record albums in a library. He averred that the agency so received Ruskin's record album on the Tacoma label, Serial Number C-1039, containing the song "Here Comes The Sun." He further averred that neither the record album itself nor the jacket contained a notice of copyright. Photographs of the record album was by all accounts published on or about January 15, 1974. Defendants acknowledge that the album copies submitted to the Copyright Office on June 28, 1979, for purposes of obtaining Registration SR 11-534, contained the necessary notice. Nonetheless, defendants assert that Takoma's failure to publish the 1974 copies of the recording with the required statutory copyright notice resulted in the irrevocable forfeiture of all rights under the United States copyright laws.

The present copyright law, 17 U.S.C. § 101 et seq., was enacted on October 19, 1976 and became effective on January 1, 1978. Section 103 of the enactment, Public Law 94-553, Title 1, 90 Stat. 2599, entitled "Lost and Expired Copyrights; Recording Rights," provides that "this Act does not provide copyright protection for any work that goes into the public domain before January 1, 1978...." See note to Title 17. Tacoma applied for its copyright under the new law in June, 1979. If it placed publications of the sound recording of "Here Comes The Sun," Catalog Number C-1039, into the public domain without the copyright notice, as defendants assert, then its copyright protection should have been forfeited and the registration would be improper. I find, however, that in this motion for summary judgment Ruskin has successfully rebutted defendants assertions and thus they have failed to meet their burden of proof.

The general publication without restriction of a copyrightable work with the consent of the creator or proprietor places the work in the public domain. Caliga v. Inter Ocean Newspaper Co., 215 U.S. 182, 188, 30 S.Ct. 38, 39, 54 L.Ed. 150 (1909). Accord Burke v. National Broadcasting Co., 598 F.2d 688, 691 (1st Cir. 1979), cert. denied, 444 U.S. 869, 100 S.Ct. 144, 62 L.Ed.2d 93 (1980); Bell v. Combined Registry Co., 397 F.Supp. 1241 (N.D.Ill.1975), aff'd, 536 F.2d 164 (7th Cir. 1976), cert. denied, 429 U.S. 1001, 97 S.Ct. 530, 50 L.Ed.2d 612 (1976); Mitchell Bros. Film Group v. Cinema Adult Theater, 192 U.S.P.Q. 138 (N.D. Tex.1976). By definition, a general publication is such dissemination of the work itself among the public as justifies the belief that it had been dedicated to the public and rendered common property. American Tobacco Co. v. Werckmeister, 207 U.S. 284, 300-301, 28 S.Ct. 72, 77-78, 52 L.Ed. 208 (1907). By contrast, a limited or qualified publication of the work will not prohibit later copyrighting, Baker v. Selden, 101 U.S. 99, 25 L.Ed. 841 (1879), nor will a publication or showing of the work with only the right to view or inspect it without more, American Tobacco Co. v. Werckmeister, 207 U.S. at 300, 28 S.Ct. at 77; Patterson v. Century Productions, Inc., 93 F.2d 489, 492 (2d Cir. 1937), cert. denied, 303 U.S. 655, 58 S.Ct. 759, 82 L.Ed. 1114 (1938). Neither situation constitutes "general publication." Likewise, a limited publication to a select group, for a limited purpose, and without the right to reproduce, distribute, or sell the work is not a general publication, White v. Kimmell, 193 F.2d 744, 746 (9th Cir. 1952), cert. denied, 343 U.S. 957, 72 S.Ct. 1052, 96 L.Ed. 1357 (1952); Williams and Wilkins, Co. v. United States, 487 F.2d 1345 (Ct.Cl.1973), nor is an exhibition or showing of a work to get a reaction or opinion, Ferris v. Frohman, 223 U.S. 424, 435, 32 S.Ct. 263, 266, 56 L.Ed. 492 (1912); Key West Hand Print Fabrics, Inc. v. Serbin, Inc., 269 F.Supp. 605, 619 (S.D.Fla. 1966), aff'd, 381 F.2d 735 (5th Cir. 1967).

Ruskin contends that the limited publication in 1974 of sound recording C-1039 did not present it to the public domain. According to the affidavits of Charles Mitchell, president of Takoma Records at the time of production of sound recording C-1039, and of Ruskin, the 1974 printing of the master recording without the copyright notice was of a small number and was inadvertent and a mistake. In addition, the records were not distributed for sale or for general distribution but were only for promotional purposes, the promotional copy record jackets were marked with a "promotional only" sticker or had the corner cut, and the copies of the records sent to radio stations as promotional materials were for exhibition only and not for resale, commercial use, or general publication. In Owen's affidavit he concedes that the advertising agency received the record album C-1039 published in 1974 for promotional purposes. The affidavits of Mitchell and Ruskin further aver that all record album copies distributed generally or for sale contained the copyright notice: "© 1974 Takoma Records, Inc." Photocopies of an album with the copyright notice support this assertion.

I find that Ruskin has successfully rebutted defendants' assertions that the receipt by it of the 1974 copy of C-1039 was a general publication. In Hirshon v. United Artists Corp., 243 F.2d 640 (D.C.Cir.1957), the court reversed an order granting summary judgment on the issue of forfeiture of copyright, holding that the copying and distribution of 2,500 copies of a song for promotional or "plugging" purposes, but for no other use, did not vitiate the copyright. Id. at 645. Although a notice was affixed to the song copies in Hirshon, it was incorrect, naming the songwriter and not the copyright proprietor. The court indicated that in the circumstances of the limited distribution for the particular purpose of promotional activities a copyright notice was not necessary to protect the copyrightability of the song. Id. at 644. Defendants have failed to show that Takoma's distribution of the 1974 record album copies was general and not limited promotional distribution. Therefore, summary judgment on this issue is improper.

RECORDATION OF TRANSFER

17 U.S.C. § 205(d) of the copyright laws of the United States provides:

(d) Recordation as Prerequisite to Infringement Suit. — No person claiming by virtue of a transfer to be the owner of copyright or of any exclusive right under a copyright is entitled to institute an infringement action under this title until the instrument of transfer under which such person claims has been recorded in the Copyright Office, but suit may be instituted after such recordation on a cause of action that arose before recordation.

A certified search report dated November 30, 1979 and issued by the Copyright Office of the United States indicates that as of that date no recordation of a transfer of copyright to pursue legal claims against either Sunrise Management or Owen Advertising existed. This suit was instituted on June 14, 1979. An assignment document dated January 8, 1980 transferred from Takoma Records to Ruskin the limited right under its copyright to prosecute all claims against Sunrise Management, its subsidiaries, or any advertising...