Tiffany Productions v. Dewing

• Decision Date: 14 May 1931
• Docket Number: No. 1626-1629.,1626-1629.
• Parties: TIFFANY PRODUCTIONS, Inc., v. DEWING et al., and three other cases.
• Court: U.S. District Court — District of Maryland

50 F.2d 911 (1931)

TIFFANY PRODUCTIONS, Inc., v. DEWING et al., and three other cases.

Nos. 1626-1629.

District Court, D. Maryland.

May 14, 1931.

Cook, Chesnut & Markell, of Baltimore, Md. (Gabriel L. Hess and Edward A. Sargoy, both of New York City, and S. Ralph Warnken and Edward A. Smith, both of Baltimore, Md., of counsel), for plaintiffs.

Harry Wroth Shenton, of Baltimore, Md., and Samuel M. Boyd, of Washington, D. C. (Samuel M. Boyd, of Washington, D. C., of counsel), for defendants.

WILLIAM C. COLEMAN, District Judge.

The questions here involved arise under the Copyright Law (17 USCA § 1 et seq.) in its relation to motion pictures, infringement of which the plaintiffs allege in each of the four cases which have been consolidated and heard as one. The material facts are as follows: Plaintiffs are proprietors and distributors of various copyrighted motion pictures. Defendants own and operate a theater in the town of Greeensboro and also one in the town of Centreville, Md. At the theater in Greensboro, a number of the plaintiffs' copyrighted motion pictures were exhibited without a license, the films having come into the defendants' hands pursuant to a contract made with one of the defendants which permitted only limited exhibitions of the films at the theater in Centreville; vice versa, a picture of one of the plaintiffs (RKO Productions, Inc.), delivered to the theater in Greensboro under a license contract for a single day's exhibition at that theater alone, was exhibited by the defendants at the theater in Centreville. This practice of exhibiting motion pictures at times or places prohibited by the license agreements is commonly known in the industry as holding over or bicycling. The films are not produced for sale by the plaintiffs, but are distributed pursuant to so-called standard exhibition contracts (the form of which was adopted at a general trade conference in 1927), through numerous exchange centers, located throughout the United States. The right of the exhibitor signing such contract to exhibit the film is strictly limited as to time and place. It further appears that a picture of one of the plaintiffs, namely, Warner Bros. Pictures, Inc., was exhibited at the Greensboro theater after the defendants had been served with a complaint by the plaintiffs on account of an alleged similar infringement by exhibition of another of its pictures. In all four suits the relief sought is an injunction and damages under the Copyright Law.

Prior to answering the bills of complaint the defendants moved to dismiss them on the ground of lack of jurisdiction. After hearing, these motions were denied, answers were filed, and testimony taken, as a result of which three questions have been presented to the court for decision. First, does the Copyright Law give a right of action because of unlicensed exhibition of copyrighted motion pictures? Second, does plaintiffs' refusal to arbitrate their claims against the defendants, in accordance with the arbitration provisions in the licensed contracts, preclude plaintiffs from the right to resort to the present action? Third, assuming that plaintiffs are entitled to damages, must the court, as they contend, grant them an election to take the minimum statutory damages of $250 for each infringement in lieu of actual damages, or, as defendants contend, may the court award nominal damages for each infringement as the actual damages sustained?

While similar suits appear to have been brought in several other federal courts, they were for the most part uncontested, and no reported opinions dealing with these precise points existed when the cases were heard. The questions will be considered in the order above stated. We therefore come to the first question, namely, Does the Copyright Law give a right of action because of unlicensed exhibition of copyrighted motion pictures?

The provisions of the Copyright Law pertinent to this inquiry are the following:

"Any person entitled thereto, upon complying with the provisions of this title, shall have the exclusive right:

"(a) To print, reprint, publish, copy, and vend the copyrighted work. * * *

"(d) To perform or represent the copyrighted work publicly if it be a drama or, if it be a dramatic work and not reproduced in copies for sale, to vend any manuscript or any record whatsoever thereof; to make or to procure the making of any transcription or record thereof by or from which, in whole or in part, it may in any manner or by any method be exhibited, performed, represented, produced, or reproduced; and to exhibit, perform, represent, produce, or reproduce it in any manner or by any method whatsoever. * * *" 17 USCA § 1.

"Application for registration shall specify to which of the following classes the work in which copyright is claimed belongs: * * *

"(d) Dramatic or dramatico-musical compositions; * * *

"(l) Motion-picture photoplays;

"(m) Motion pictures other than photoplays.

"The above specifications shall not be held to limit the subject matter of copyright as defined in section 4 of this title, nor shall any error in classification invalidate or impair the copyright protection secured under this title." (17 USCA § 5).

"Copyright may also be had of the works of an author, of which copies are not reproduced for sale, by the deposit, with claim of copyright, of one complete copy of such work if it be a lecture or similar production or a dramatic, musical, or dramatico-musical composition; of a title and description, with one print taken from each scene or act, if the work be a motion-picture photoplay; * * * of a title and description, with not less than two prints taken from different sections of a complete motion picture, if the work be a motion picture other than a photoplay. * * *" (17 USCA § 11).

The classifications (l) and (m) above quoted of section 5, and the quoted provision of section 11 prescribing the method for registering copies of motion pictures, were brought into the Act of March 4, 1909, by amendment in 1912 (35 Stat. 1075-1088; 37 Stat. 488). Defendants contend that these amendments of 1912 indicate that motion pictures then came for the first time under the protection of the copyright laws; that the protection thereupon granted was limited, namely, that it was merely against duplication or vending of films, and that an unlicensed exhibition of a copyrighted picture is not within the scope of the protection afforded. In short, defendants contend that the exhibitions here complained of are neither a "publication" nor a "copy" within the meaning of section 1 (a) of the act, and further contend that a motion picture cannot be classed as a "dramatic work" as that phrase is used in section 1 (d).

The question whether the exhibition or display of a moving picture is a "copy" within the meaning of section 1 (a) of the act is probably disposed of by the Supreme Court in the case of White-Smith Music Publishing Co. v. Apollo Co., 209 U. S. 1, 28 S. Ct. 319, 52 L. Ed. 655, 14 Ann. Cas. 628. The language of this opinion, rendered prior to the amendment of 1909, would seem to require a negative answer to the question. There the court decided that a copy of a musical composition within the meaning of the statute does not include perforated rolls, that is, pianola records, saying, page 17 of 209 U. S., 28 S. Ct. 319, 323, that the definition of the word "copy" "which most commends itself to our judgment is perhaps as clear as can be made, and defines a copy of a musical composition to be `a written or printed record of it in intelligible notation.' * * * The statute has not provided for the protection of the intellectual conception apart from the thing produced, however meritorious such conception may be, but has provided for the making and filing of a tangible thing, against the publication and duplication of which it is the purpose of the statute to protect the composer." In this case there was no complaint of the public performance of copyrighted music, nor was there involved the question whether the manufacturers of the perforated music rolls, when sold for use in public performance, might be held as contributing infringers. One of the purposes of the amendment of 1909 was to overcome the effect of this decision, and to afford the copyright owner adequate protection of his mechanical rights. See Irving Berlin, Inc., v. Daigle (C. C. A.) 31 F.(2d) 832. 17 USCA §§ 1 (e), 5, 25 (e).

Turning next to the question whether the exhibition of a moving picture is a "publication" within the meaning of section 1 (a) of the act, the decision of the Supreme Court in the last-mentioned case is also strongly persuasive of a negative answer to this question, although the generally recognized definition of the word "publication" would seem to warrant a contrary conclusion. In its ordinary acceptation the word "publication" means "to make public; to make known to people in general * * * to bring before the public, as for sale or distribution; especially (a) to print, or cause to be printed, and to issue from the press either for sale or general distribution, as a book, newspaper, piece of music, engraving, etc." Webster's International Dictionary. "To make public, to make known to people in general; * * * to exhibit, display, disclose or reveal." Century Dictionary. Sale is, of course, not an essential element. If, where the question is whether an author has lost his common-law or statutory copyright, publication is accomplished by placing a book in a library (Jewelers' Mercantile Agency v. Jewelers' Publishing Co., 155 N. Y. 241, 49 N. E. 872, 41 L. R. A. 846, 63 Am. St. Rep. 666), or delivering it to a public office, or place (Callaghan v. Myers, 128 U. S. 617, 9 S. Ct. 177, 32 L. Ed. 547; D'Ole v. Kansas City Star Co. C. C. 94 F. 840), it is difficult to see any valid distinction, when, as a practical matter, the value of the copyright consists in the monopolistic right to project and exhibit the picture itself...