Bruce D. Epperson

The district court’s holding in RCA Mfg. Co. v. Whiteman is really a rather extraordinary one. It asserts that musical performers have always had a property right in the skill and creativity that goes into their performances, but that because it could not be captured, and thus rendered into any kind of commodity, the question of how it should be treated as property was moot. Thus, the issue is not whether there is a performers’ right to the sound recording, merely, how it should be recognized by the courts.

The court also went on to agree with the Waring courts that the restriction label “for home use only” resulted in a limited distribution of the record. The radio station appealed, and the case ended up in the courtroom of the brilliant, quirky judge Learned Hand.

Judge Hand was a legal genius. He would often spot issues that were still way over the horizon, conflicts of law that would not ripen for another ten or twenty years. Unfortunately, in his haste to get there, he would dash past the current issues of the case with a wave of the hand, often mashing two or three thoughts together in a single point or skipping a step or two in the logic of his opinion.

In mid-July, 1940, three days before he rendered his opinion in the Whiteman case, Hand issued an opinion in a seemingly unrelated case, Fashion Originators Guild v. Federal Trade Commission. The Guild was set up to protect dressmaker’s patterns, to stop what they called “style piracy.” The FTC charged them anti-trust collusion. At the hearing, the Commission, having established that the dressmakers were acting in concert to keep non-members from poaching their designs, refused hear their defense that they were protecting a legitimate and defensible property right. Once collusion was established, claimed the FTC, the case was over.

Judge Hand rejected this, and in essence performed the second half of the FTC’s inquiry hearing himself. He quickly determined that the Guild members did have a intellectual property rights in their dress designs. It was not covered by federal copyright, so fell within the common-law of the state of New York. Most of the analysis revolved around whether the dress designs were “published” and thus divested to the public. “We have been unable to discover any case which squarely presented this situation,” lamented Hand, “that is, in which intellectual property, not covered by the copyright act then in existence, was challenged because of its ‘publication.’”

Hand went all the way back to the 1774 Donaldson v. Beckett case. The House of Lords, in the second of their three votes, had decided that in the absence of the Statute of Anne, the publication of a work did not cut off its author’s common-law copyright. The implication of this was that common-law copyright was either: 1) perpetual until cut off forever by statutory common-law copyright (the majority view); or 2) absolutely perpetual, but temporarily replaced by statutory copyright until its term expired; at which point common-law copyright was revived (i.e. “the cupcake theory”).

Hand rejected the entire House of Lords vote, at least as it applied to American law. He objected that any perpetual state common-law copyright, that did not mandate divestment upon publication defeated the purposes of the “limited times” restriction of the Progress Clause. This was, in essence, tantamount to arguing that when a thing fell within the Constitutional definition of a writing, but Congress chose not to include it within statutory copyright, it couldn’t be published without entering the public domain. That’s because publication divested it of its common-law copyright status, but it had no statutory copyright status to pass into. That left one glaring hole in the chain of legal reasoning. If a writing was outside of federal copyright law, why should it be subject to that same law’s definition of “publication”?

To be continued…

Bruce D. Epperson

In 1935, Waring had sent a copy of a recording of “Lullaby of Broadway” to the Register of Copyright, seeking to apply for the rights to the “personal interpretation” of the song. The copyright office rejected the application, writing Waring that “there is not and never has been any provision in the [Copyright] Act for the protection of an artist’s personal interpretation or rendition of a musical work.” The next battle was to go after the radio stations that Waring, Paul Whiteman, Guy Lombardo, and  the other NAPA members believed were forcing them, in Waring’s words, “to compete against ourselves for free every night.”

Waring’s contract with Victor, stated that the label of each record was to carry the notation “Not licensed for radio broadcast.” Radio station WDAS, a Philadelphia station, purchased a Waring record and broadcast it, paying the required ASCAP fee. Waring sought an injunction under Pennsylvania state law to block the further broadcast of his records, asserting that he had “property rights in their [the band’s] artistic interpretation” that was independent of the composition, and thus not covered by the ASCAP system. “Does the performer’s interpretation of a musical composition constitute a product of such novel and artistic creation as to invest him with a property right therein?” asked the court.

The answer was “yes.” The court said that a musical composition is, by itself, an incomplete work, and that the performer “contributes by his interpretation something of novel intellectual or artistic value,” so has created a thing to which he or she is entitled to as a property right. Waring had successfully climbed the first two steps: he had proved: (1) creative contribution constitutes a valid intellectual property; and (2) his ownership of the band, a Pennsylvania corporation, gave him legitimate title to that property.

But was this property right lost through publication? Recall the distinction between “limited” and “general” publication. Prior to 1912, some courts had said that producing an as-yet unpublished play constituted a “limited” publication, and that rivals could stage competing productions, but could not produce printed versions. In 1912, the Supreme Court quashed this, stating that live performances did not constitute publication at all. But there is also another sense in which “limited” publication occurs.

Because they were marked “Not licensed for radio broadcast,” it was clear that Waring’s intent was to restrict their distribution to a defined audience. Thus, the publication was not sufficiently general to divest Waring of his rights in its sound recording. Two years later, Waring repeated his success, this time in a North Carolina court. This case was even stronger, as it involved a transcription disc from one of the Ford shows, marked “To be used only on the Ford Motor Program.” Bolstered by these successes, NAPA decided to go for the big prize: New York State.

NAPA member Paul Whiteman was picked to go up against station WNEW in RCA Mfg. Co. v. Whiteman. The facts were virtually identical to the Waring Pennsylvania case. The district court held for Whiteman, explaining that:

Prior to the advent of the phonograph, a musical selection once rendered by an artist was lost forever, as far as that particular rendition was concerned. It could not be captured and played back again by any mechanical contrivance then known. Thus the property right of the artist, pertaining as it did to an intangible musical interpretation, was in no danger of being violated. During all this time the right was always present, yet because of the impossibility of violating it, it was not necessary to assert it. (emphasis added)

To be continued…

Bruce D. Epperson

While Judge Chatfield may have used a modernized version of the established tort of unfair competition to stop Continental’s record piracy, he was far from smug in his handiwork:

Since the beginning of the present action, the copyright law has been amended, and since the first day of June, 1909, any form of recording or transcribing a musical composition, or rendition of such composition, has been capable of such registration, and the property rights therein secured. It would seem therefore that the questions raised in the present case may be avoided as to future compositions by copyrighting the original rendition of the song . . [but] serious discussion may arise over the right obtained, for instance, by a grand opera singer who files a copyright for resigning of a song already recorded by him or her, and sold to the public upon a disc record.

In other words, the singer’s rights to the sound recording. (It should be noted that Judge Chatfield apparently had the mistaken belief that a composer could register his or her composition by sending a copy of the record to the Copyright Office. In 1909, this was an unresolved question. The answer proved to be “no, at least until 1972.)

The earliest case to be tried wholly under the new Copyright Act was Aeolian Co. v. Royal Music Co. (1912) Aeolian had licensed a song from a music publisher to make piano rolls. Royal then entered into a license with the same publisher for the same song, also to make piano rolls, but instead of independently arranging their own tune, they simply copied Aeolian’s perforation matrix. Royal claimed that by securing a composition license from the music publisher, they had done everything the law required. The court held that Aeolian was protected by their licensed use of the copyrighted composition. Royal could not avail themselves “of the skill and labor of the original manufacturer of the perforated roll or record [Aeolian] by copying or duplicating the same, but must resort to the copyrighted composition or sheet music, and not pirate the work of a competitor.”

Aeolian v. Royal was sort of a legal half-way house: yes, a specific sound recording was protected, but it was only through the power the Copyright Act gave to composers to control the use of their sheet music, not to the performer on the recording. Here, Aeolian could sue Royal only with the acquiescence of the unnamed music publisher who owned the composition; in fact Royal had maintained that the suit could not be continued because the publisher was not an “aggrieved” party, that is, had not been harmed. The court determined that Aeolian’s license agreement gave them standing to sue.

More complex and far-reaching were the NAPA cases. The National Association of Performing Artists (NAPA), which existed between 1935 and World War II, was largely the brainchild of bandleader Fred Waring. The leader of a Whiteman-style dance band, the Pennsylvanians, Waring was also a masterful businessman and entrepreneur. In 1936, he was approached by the inventor of a patented, but as-yet unworkable, appliance for making fruit juices called a “blender.” Waring invested in the idea, made a few technical changes, and contracted with a firm in Toledo to make the “Waring Mixer.” It made him a fortune. He was also getting paid $13,500 a week by Ford to play a two-hour-a-week radio show—in the middle of the Great Depression.

ASCAP collected fees for stage (and later, radio) performances for a select group of composers starting in 1914, and was joined by the more inclusive SESAC in 1930 and BMI in 1939. (The Harry Fox Agency collected the two-cent royalties owed to composers for records and cylinders under the 1909 Copyright Act.) However, these were fees paid to composers, not to the performers, who had no statutory rights in their sound recordings. It was the purpose of NAPA to press for performers’ rights in recorded music.

To be continued…