Tempo Music, Inc. v. Myers

• Decision Date: 27 February 1969
• Docket Number: No. 12679.,12679.
• Citation: 407 F.2d 503
• Parties: TEMPO MUSIC, INC., Robbins Music Corporation, Remick Music Corporation, and Mills Music, Inc., Appellees, v. James D. MYERS, Appellant.
• Court: U.S. Court of Appeals — Fourth Circuit

407 F.2d 503 (1969)

TEMPO MUSIC, INC., Robbins Music Corporation, Remick Music Corporation, and Mills Music, Inc., Appellees, v. James D. MYERS, Appellant.

No. 12679.

United States Court of Appeals Fourth Circuit.

Argued December 2, 1968.

Decided February 27, 1969.

Robert M. Bryant, Winston-Salem, N. C., for appellant.

W. P. Sandridge, Jr., Winston-Salem, N. C., and Herman Finkelstein, New York City (Carl L. Zanger, New York City, and I. T. Cohen, Atlanta, Ga., on brief), for appellees.

Before HAYNSWORTH, Chief Judge, and BOREMAN and CRAVEN, Circuit Judges.

CRAVEN, Circuit Judge:

Because the Showmen Four "Combo" played four popular songs for the enjoyment of patrons of the Gold Leaf Supper Club, Proprietor James D. Myers found himself mulcted in damages, $250 for the performance of each song, plus an award of $1,000 as counsel fees. To prevent what seems to us manifest injustice, we reverse and remand with instructions to dismiss the complaint.

Although "cases involving popular songs are often baffling, particularly where the proof of copying rests on circumstantial evidence consisting primarily of similarities between the songs," 18 Am.Jur.2d Copyright and Literary Property § 111 (1965), we think the district judge rightly decided that there had been infringement. Certainly the performance was done "publicly for profit." 17 U.S.C. § 1(e). That the several plaintiffs held valid copyrights on "Satin Doll," "Shangri-La," "Bye-Bye Blackbird" and "I Can't Give You Anything But Love" is undisputed. There was substantial evidence that these selections, and not other similar ones as contended by defendant, were actually performed by the combo. Nor was it disputed that Myers had purchased no license for the performance of these musical compositions although he had been solicited to accept a license and to pay for it by the American Society of Composers, Authors, and Publishers as legal representative of plaintiffs. The district judge's ultimate finding of infringement is thus fully supported by the evidence and is not clearly erroneous.¹

We might quickly dispose of the case but for an omission in the court below caused, we think, by too rigid an application of a routine pretrial order. As sometimes happens, what was left out of the pretrial order turns out to be more important than what was put in it. Pretrial orders may be useful tools, but if followed too slavishly, they may actually hamper the proper administration of justice, and we think that occurred here.² Misled by the recital of counsel in the pretrial order that the only "issues of fact" were whether the defendant infringed the four musical compositions by giving a public performance for the entertainment of persons attending the Gold Leaf Supper Club, the district judge almost dealt with, but passed over, what seems to us a controlling question of law arising on virtually undisputed facts.³

According to uncontradicted testimony, Myers was solicited by an agent for ASCAP to take a license sometime during the year 1965. Myers testified as follows:

Myers: "At that time, I asked him to give me a list of the ASCAP tunes that was covered under the license, and I would not play any ASCAP tunes * * *."

* * * * * *

"QUESTION: Did the ASCAP agent give you a list of any music compositions or composers or companies — music companies — that their license would presumably cover?

"ANSWER: No, sir.

"QUESTION: Were you at any time furnished a list of musical compositions which ASCAP claimed to have exclusive right to license?

"ANSWER: No, sir, — he came back and talked with me again, and again, I asked him for a list, and he said — he said they had so many, it was almost impossible."

Though such a listing was unquestionably requested we do not fault ASCAP⁴ as agent of the defendants for its failure to supply it. Counsel advised us that the total listing of ASCAP songs fills three large volumes and, if furnished Myers, would not likely have been useful to him for the desired purpose. But without some help from ASCAP, Myers' position was impossible. Despite his expressed intention to avoid infringement, he could not possibly hope to do so except by the alternatives of (a) playing no music at his club or (b) paying what he regarded — rightly or wrongly — as an exorbitant licensing fee.

Pretrial order or not, we think the court below was presented by the testimony of Myers with a question of controlling importance: whether ASCAP had any duty to respond to Myers' request for a list of copyrighted compositions, and if so, what sort of response was required. We think the answer to this question is found in the Amended Consent Judgment⁵ of March 14, 1950, under which, we are advised by counsel, ASCAP now operates. Part of that anti-trust consent judgment provides as follows:

"XIV. Immediately following entry of this Judgment, defendant ASCAP shall upon written request from any prospective user inform such user whether any compositions specified in such request are in the ASCAP repertory, and make available for public inspection such information as to the ASCAP repertory as it has. Defendant ASCAP is furthermore ordered and directed to prepare within two years, and to maintain and keep current and make available for inspection during regular office hours, a list of all musical compositions in the ASCAP repertory, which list will show the title, date of copyright and the author, composer and current publisher of each composition."

In oral argument, counsel for ASCAP urges what seems to be a reasonable solution to Myers' problem: that he should simply have sent a list of the Showmen Four's tunes to ASCAP, which would gladly compare the list with its own listing and promptly advise Myers which tunes could not be played without infringement. Significantly, ASCAP does not maintain, nor could it, that Myers knew this, for there is nothing in the record to support such conjecture, and Myers' testimony suggests the contrary. Without some knowledge that this service, now so cheerfully offered, was available, Myers could scarcely have availed himself of it.⁶

We hold that ASCAP was under a duty to advise of its editing obligation under paragraph XIV of the antitrust consent judgment, and to advise that such service was available upon request, when a communication was made to ASCAP by Myers which could have been fairly interpreted as a request for aid in avoiding infringement.⁷ As ASCAP failed to comply with Myers' request for a listing of ASCAP compositions, and also failed to offer the editing service contemplated by the consent decree, we think it would be inequitable to permit these plaintiffs to recover for the infringement which occurred and which was caused and brought about, in part at least, by the dereliction of ASCAP in failing to facilitate Myers' expressed intention of avoiding infringement. Under such circumstances, we think these plaintiffs are estopped⁸ to assert infringement and ask for damages and counsel fees. To allow it would enable them to profit from the dereliction of their own agent, ASCAP. So to hold is merely an application of the ancient equitable doctrine of "unclean hands." Humble Oil & Refining Co. v. Standard Oil of Kentucky, 229 F.Supp. 586, rev'd on other grounds, 363 F.2d 945 (5th Cir. 1966) cert. denied 385 U.S. 1007, 87 S.Ct. 714, 17 L.Ed.2d 545 (1967). See also Folmer Graflex Corp. v. Graphic Photo Service, 41 F.Supp. 319 (D.Mass.1941). Compare Leo Feist, Inc. v. Young, 138 F.2d 972 (7th Cir. 1943), rev'g 46 F. Supp. 622 (D.C.1942).

On remand the district court will enter judgment for the defendant.

Reversed.

1 Pastime Amusement Co. v. M. Witmark & Sons, 2 F.2d 1020 (4th Cir. 1924); Bourne v. Fouche, 238 F.Supp. 745 (E. D.S.C.1965); Lerner v. Club Wander In, Inc., 174 F.Supp. 731 (D.Mass.1959). Cf. Arnstein v. Porter, 154 F.2d 464 (2d Cir. 1946); Arnstein v. Broadcast Music, 137 F.2d 410 (2d Cir. 1943).

2 In response to an inquiry from this court, counsel for the plaintiffs...