TB Harms Co. v. Jem Records, Inc.

• Decision Date: 26 March 1987
• Docket Number: Civ. A. No. 85-2677.
• Citation: 655 F. Supp. 1575
• Parties: T.B. HARMS COMPANY, Plaintiff, v. JEM RECORDS, INC., Defendant.
• Court: U.S. District Court — District of New Jersey

655 F. Supp. 1575

T.B. HARMS COMPANY, Plaintiff, v. JEM RECORDS, INC., Defendant.

Civ. A. No. 85-2677.

United States District Court, D. New Jersey.

March 26, 1987.

Alan L. Shulman, Barry I. Slotnick, Silverman & Shulman, P.C., New York City, Lisa M. Palumbo, Young, Tarshis & Dimiero, West Orange, N.J., for plaintiff.

Neil J. Rosini, Barbara S. Ginsberg, Franklin, Weinrib, Rudell & Vassallo, P.C., New York City, Kenneth N. Laptook, Kimmelman, Wolff & Samson, Roseland, N.J., for defendant.

OPINION

BISSELL, District Judge.

These cross-motions arise out of a Complaint filed on June 7, 1985, by T.B. Harms Company ("Harms") against Jem Records Inc. ("Jem"). This Court has federal question jurisdiction of this action pursuant to 28 U.S.C. § 1338(a). Plaintiff's Complaint alleges that defendant infringed plaintiff's copyright in the musical composition "Ol' Man River" in violation of § 602(a) of the Copyright Act of 1976, 17 U.S.C. § 602(a), arising out of defendant's unauthorized importation, distribution and sale of phonorecords containing this composition. Presently before the Court are cross-motions for partial summary judgment on the issue of liability.

The Facts

In connection with the present cross-motions, the parties have stipulated to an agreed statement of material facts which has been filed with the Court. The stipulated facts are as follows: plaintiff Harms is a California corporation engaged in the business of licensing and marketing copyrighted musical compositions; defendant Jem is a New Jersey corporation engaged in the manufacture, distribution and sale of phonorecords into the United States which embody copyrighted musical compositions. At all times relevant to this case, Harms has been and continues to be the lawful owner of a valid copyright in the musical composition "Ol' Man River," which was written by Jerome Kern and Oscar Hammerstein II.¹ This copyright is registered in the United States Copyright Office and has been duly renewed. A notice of use has also been filed with the Copyright Office.

"Ol' Man River" as performed by Frank Sinatra has been made into a sound recording, which is embodied in a phonorecord entitled "His Greatest Hits, Frank Sinatra—New York, New York." In addition to the musical composition at issue here, this phonorecord also contains fifteen other musical compositions, each owned by a different party, and each performed by Frank Sinatra on sound recordings embodied in the phonorecord. Pursuant to the equivalent of our compulsory licensing provisions in the New Zealand Copyright Act, copies of the Sinatra phonorecord embodying the sound recording "Ol' Man River" were lawfully manufactured and distributed in New Zealand by WEA Records, Ltd., an affiliate of WEA International, Inc. Chappel & Intersong Music Group (Australia) Ltd., which owns the right to authorize the making and distribution in New Zealand of phonorecords embodying performances of plaintiff's musical compositions, received royalties with respect to the making and distribution of phonorecords by WEA Records containing "Ol' Man River."

Copies of this Sinatra phonorecord manufactured by WEA Records were imported into the United States by defendant Jem, who subsequently sold them in this country. Jem's importation of these phonorecords into the United States and its subsequent sale and distribution of them was with the consent of WEA Records, which acted under the authority of the owners of the sound recordings embodied therein. However, this importation and distribution by Jem was without the authority, consent or permission of plaintiff Harms or anyone acting on its behalf. Nor did Jem have the authority of any of the other owners of copyrights in the musical compositions contained in the Sinatra album.

Both compulsory and negotiated licenses have been issued on behalf of plaintiff permitting the manufacture and distribution in the United States of phonorecords embodying the musical composition "Ol' Man River." Moreover, a great number of licenses and other authorizations have been issued to or obtained for the making and distribution of phonorecords embodying performances of "Ol' Man River" outside the United States, many of which were obtained under compulsory licensing provisions of the copyright laws of the respective foreign countries or territories.

On a motion for summary judgment, "the judgment sought shall be rendered forthwith if the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law." Fed.R.Civ.P. 56(c). On the cross-motions presently before the Court, the parties agree and the Court concurs, that there exist no genuine issues of material fact. Therefore, the Court will proceed, upon consideration of the pleadings and affidavits submitted, to determine which party is entitled to judgment as a matter of law.

The Law

In its Complaint, plaintiff alleges that defendant infringed its exclusive copyright in the musical composition "Ol' Man River" by defendant's unauthorized importation of phonorecords embodying the composition in violation of § 602 of the Copyright Act of 1976 ("the Act"). Section 602 provides that:

(a) Importation into the United States, without the authority of the owner of copyright under this title 17 U.S.C. §§ 101 et seq. of copies or phonorecords of a work that have been acquired outside the United States is an infringement of the exclusive right to distribute copies of phonorecords under section 106 17 U.S.C. § 106, actionable under section 501 17 U.S.C. § 501. This subsection does not apply to—

(1) importation of copies or phonorecords under the authority or for the use of the Government of the United States or of any State or political subdivision of a State, but not including copies or phonorecords for use in schools, or copies of any audiovisual work imported for purposes other than archival use;

(2) importation, for the private use of the importer and not for distribution, by any person with respect to no more than one copy or phonorecord of any one work at any one time, or by any person arriving from outside the United States with respect to copies or phonorecords forming part of such person's personal baggage; or

(3) importation by or for an organization operated for scholarly, educational, or religious purposes and not for private gain, with respect to no more than one copy of an audiovisual work solely for its archival purposes, and no more than five copies or phonorecords of any other work for its library lending or archival purposes, unless the importation of such copies or phonorecords is part of an activity consisting of systematic reproduction or distribution, engaged in by such organization in violation of the provisions of section 108(g)(2) 17 U.S.C. § 108(g)(2).

(b) In a case where the making of the copies or phonorecords would have constituted an infringement of copyright if this title 17 U.S.C. §§ 101 et seq. had been applicable, their importation is prohibited. In a case where the copies or phonorecords were lawfully made, the United States Customs Service has no authority to prevent their importation unless the provisions of section 601 17 U.S.C. § 601 are applicable. In either case, the Secretary of the Treasury is authorized to prescribe, by regulation, a procedure under which any person claiming an interest in the copyright in a particular work may, upon payment of a specified fee, be entitled to notification by the Customs Service of the importation of articles that appear to be copies or phonorecords of the work.

17 U.S.C. § 602 (emphasis added). This provision addresses two separate situations: (1) importation of "piratical" articles, which are copies or phonorecords made without the authorization of the copyright owner, and (2) unauthorized importation of copies or phonorecords which are lawfully made. H.R.Rep. No. 94-1476, 94th Cong., 2d Sess. 169, reprinted in 1976 U.S.Code Cong. & Ad.News 5659, 5785 ("House Report"). It is the latter prohibition which is the focus of plaintiff's Complaint.

The general approach taken in section 602 is to make unauthorized importation an act of infringement in both situations dealt with in this section, but to permit the U.S. Customs Service to prohibit importation only of "piratical" articles. Unless one of the three enumerated exceptions in § 602(a) applies, any unauthorized importation of copies or phonorecords acquired outside the United States is an act of infringement. Thus, "where the copies or phonorecords were lawfully made but their distribution in the United States would infringe the United States copyright owner's exclusive rights," the mere act of importation constitutes an act of infringement. House Report at 170, U.S.Code Cong. & Admin.News 1976, p. 5786. See also 17 U.S.C. § 501(a) ("Anyone ... who imports copies or phonorecords into the United States in violation of § 602, is an infringer of the copyright"); Columbia Broadcasting System, Inc. v. Scorpio Music Distributors, Inc., 569 F.Supp. 47 (E.D. Pa.1983), aff'd mem., 738 F.2d 424 (3d Cir. 1984).

Jem Records has taken the position that § 602(a) does not apply here because it only addresses infringements of the exclusive distribution right of the copyright owner. Defendant argues that no such exclusive distribution right exists in phonorecords of compositions, such as "Ol' Man River," available for compulsory licensing under § 115 of the Copyright Act, 17 U.S.C. § 115.

The exclusive rights granted the owner of a copyright pursuant to the Copyright Act includes the exclusive right "to reproduce the copyrighted work in copies or phonorecords" and "to distribute copies or phonorecords of the copyrighted work to the public by sale or other transfer of ownership, or by rental, lease or lending." 17 U.S.C. § 106(1), (3). The scope of these...