Bruce D. Epperson

Almost nobody involved in the three-year-long struggle that resulted in the Copyright Act of 1909 was satisfied with the outcome, but most believed that its most glaring errors and oversights—the failure to adequately address mechanical sound reproductions, the lack of coordination with the 1896 Berne Convention, and so on–would soon be ironed out. Nobody would have believed you if you had told them that the process would require another 67 years. The Dallanger bill of 1924 died in committee. The Perkins bill of 1925-26 barely went farther, mostly because of objections to the Berne Convention standard requiring investiture at the moment of creation, not upon publication or a formality like registration.

The Vestal bill of 1931 actually passed the House, but was filibustered to death in the Senate. The Sirovich bill of 1932 was a non-starter, as was the Duffy bill of 1934-36, and the Shotwell bill of 1938-39. In 1954, Congress permitted the United States to join UNESCO, but wouldn’t adopt the Berne Convention. The first legislation approving any sort of minor revision passed in 1947. Six more tweaks were added between 1948 and 1972. In 1955 the Register of Copyrights began preparing the first of 34 major studies, the start of a major overhaul process that would take 21 years (and 5,400 pages of reports, drafts and testimony) before the next comprehensive revision was passed in 1976.

One of the major uncertainties was the status of the “sound recording,” the specific expression on a phonorecord independent of its composition. (Sound recordings can include the performance of a composition, an improvised performance, or even non-musical sounds, such as spoken words or nature sounds.) First, it was uncertain if sound recordings were “writings” for the purposes of the Constitution’s Progress Clause, thus falling within the category of things eligible for federal copyright protection. If they weren’t writings, could they be protected by state-law (also known as common-law) copyright? If they were writings, and were copyright-eligible, but Congress had simply elected not to extend them protection, what was their status under either federal or state law?

Second, did selling a record with a song, be it copyrighted or not, release either its composition or the sound recording into the public domain? After all, if phonorecords weren’t copies of the compositions of the songs they contained, how could their sale amount to a publication of their contents? Were they some special form of performance?

Within months of the new Act, the issue arose in the courts in Fonotopia Ltd. v. Bradley. Victor, Columbia (and its British subsidiary, Fonotopia), and others alleged that the Continental Record Co. was dubbing their records and sued for unfair competition under New York state law. The court faced a dilemma. This was not a patent, copyright or trademark case. Traditionally, unfair competition involved harm to the public from the palming off of inferior goods off to the public under a well-known brand name. But Continental sold the records under their own name, and claimed they were just as good. Judge Chatfield pointed out the problem:

The basis of recovery is the damage to the property rights of the complainant, rather than the deception of the public. It is from this contended: the better the imitation the greater reason there is for issuing an injunction. . . it would seem that where a product is placed upon the market, under advertisement and statement that the substitute or imitating product is a duplicate of the original, and where the commercial value of the imitation lies in the fact that it takes advantage of and appropriates to itself the commercial qualities, reputation, and salable properties of the original, equity should grant relief.

This, for the first time, was a clear, well-defined explanation of how and why the long-standing tort of unfair competition could be extended into a thing resembling modern-day “common-law” copyright.

To be continued…

By Bruce D. Epperson

It was the inability of the other justices (and, for that matter, most congressmen and industry executives) to grasp that a phonorecord was comprised of two separate elements that muddled the Court’s decision and the deliberations of the Congressional copyright committee. First, there is the musical composition, an idealized musical concept, which can usually be published on paper. Second, there is the sound recording, a “rational collocation of sounds,” the specific actual expression of a performance or a sequence of captured sound. This can be the playing of a composition, an improvised musical performance, or even non-music.

Moreover, in basing the idea that a “copy” must be a “written or printed record” of the original, the majority came very close to, if not outright stating, that a record could never meet the eligibility criteria of the Progress Clause. Albert Walker, lawyer for the Victor Co., subsequently told the copyright committee that “the Supreme Court says these perforated rolls are not copies. If not, they are not writings.” This, of course, is a logical inversion, but in the air of uncertainty after the White-Smith Music decision he was able to get away with it.

 On the other hand, Walker’s boss, Horace Pettit of the Victor Co., told the committee that Section 4 of the proposed act, which made “all the works of an author” eligible for copywriting, actually pulled phonorecords within the class copy-eligible works. However, noting that this was “somewhat doubtfully expressed,” He urged the committee to add records to the list of things like books, magazines, maps, drawings and photographs for which specific copyright registration could be sought from the copyright office. The committee refused this suggestion, making an (almost literally) last-minute decision.

Phonorecordings would not be considered “copies” of a composition, and couldn’t be copyrighted. However, provided the composition was registered and the composer had allowed at least one person to record it, then all comers could too, if they paid a mandatory license fee of two cents a copy. This was somewhat analogous to the licensing system used  for stage plays.

Congress made one other change in reaction to Pettit’s testimony, and in doing so, created a century-long conundrum, and not just for phonorecords. They changed Section 4 of the Act from “That the works for which copyright may be secured under this Act shall be all the works of an author” to “That the works for which copyright may be secured under this Act shall be all the writings of an author.” “Writings,” of course, is the language used in the Constitution, so it defines the maximum power that Congress can exercise. But in making the 1909 change, did Congress mean that all writings fell under the umbrella of the act, but that it could refuse registration and protection to some of them (such as records); or did it mean that some products of artistic creation (like records) were not “writings” and thus were Constitutionally outside of Congress’s power to exercise power over them pursuant to the Progress Clause? As Pettit feared, what ensued was almost a century of legal chaos.

To be continued…

Bruce D. Epperson

But technology changed everything. In 1888, the rights-holders of sheet music sued in Massachusetts to stop the makers of perforated paper rolls for a player piano-like device called an organette from copying their song, “Cradle’s Empty, Baby’s Gone.” The judge in Kennedy v. McTammany ruled that the rolls were not copies, as “they are not made to be addressed to the eye as sheet music, but [rather] they form part of a machine.” In 1901 Tin Pan Alley songwriter/entrepreneur George Rosey was similarly sued by the Joseph W. Stern Music Co. when he churned out 5,000 phonograph cylinders of two of their most popular songs, “Take Back Your Gold” and “Whisper Your Mother’s Name.” Again, the court said Rosey had not violated Stern’s copyrights because his wax cylinders were, like the metal cylinder of a music box, merely part of a machine. “We cannot regard the reproduction, through the agency of the phonograph, as copying or publication,” the court said.

Starting in 1901, the Register of Copyrights had pleaded with Congress to update the Copyright Act, and in 1905 the President added his voice, stating that “Our copyright laws urgently need revision.” Work started in early 1906 and promptly bogged down for the better part of three years. One of the main sticking points was mechanically reproduced music. In spite of the Kennedy v. McTammany and Stern Music v. Rosey decisions, the Register of Copyright had been accepting piano rolls for registration, and by 1906 the Aeolian Co. had registered over 2,000.

As the Copyright Act revisions ground through 1908 and into 1909, composers, music publishers and record makers started working at cross-purposes in a confusing maze of interests. Some composers and music publishers didn’t want records and cylinders considered “copies,” because they wanted the same type of performance royalties from record companies they got from stage productions. Other composers and publishers did want piano rolls and cylinders considered copies so they could fully control them like paper sheet music. Some record companies argued that phonorecords and piano rolls weren’t even “writings,” and thus fell completely outside the scope of the Progress Clause of the Constitution. Others thought this was chasing after a fool’s pot of gold, and that their fellow record executives were taking more of a risk of having their own products pirated than they stood to gain from dodging payments to composers and publishers. Frankly, everyone was biding their time until the Supreme Court decided a case called White-Smith Music Publishing v. Apollo Co., due out in February, 1908.

The case concerned player piano rolls, but the decision clearly covered phonograph cylinders and discs as well. The Court based its reasoning on a recent English case, Boosey v. Whight, also dealing with piano rolls. The English court had defined a music copy as “that which comes so near to the original as to give every person seeing it the idea created by the original.” The U.S. Supreme Court tweaked that to create its own definition: “a copy of a musical composition is ‘a written or printed record of it in intelligible notation.’” Therefore, while “it may be true that in a broad sense a mechanical instrument which reproduces a tune copies it” the court concluded that “this is a strained and artificial meaning [as] these musical tones are not a copy which appeals to the eye.”

Justice Holmes dissented. He argued that music is a “rational collocation of sounds,” and that “on principle anything that mechanically reproduces that collation of sound ought to be held a copy,” although he admitted that given the wording of the then-current Copyright Act, piano rolls and phonograph cylinders probably were not included. His theoretical “extraordinary right” to protect the “rational collocation of sounds,” of a recording was not the same right as an author or music composer received under copyright. “The restriction is confined to the specific form, to the collocation devised.” In other words, Holmes was describing a specific expression protection, or, as it has become known, the “sound recording” protection.

To be continued…