Bruce D. Epperson

Following Fashion Originators and RCA v. Whiteman, the definitive case in this series occurred in 1955 in Capitol Records v. Mercury Records. But before then, there were some suggestive lead-up cases. The first was in an Illinois federal court case, Shapiro, Bernstein & Co. v. Miracle Record Co. The case was poorly explained by Judge Igoe, but apparently the Shapiro firm had issued a record containing a song written by one Lewis, that had never been copyrighted in the required sheet music format. Miracle Records produced their own record of the song. Miracle argued that their record was not a copy of the composition. Shapiro, Bernstein, on the other hand, argued that because the sheet music had not yet been submitted for copyright, the composition was in pre-publication status, and thus Miracle’s record violated their common-law copyrights.

Judge Igoe argued that “publication is a practical question and does not rest on any technical definition of the word ‘copy.’” Citing Judge Learned Hand’s opinion in RCA v. Whiteman as “very close to our case,” he concluded that when Lewis permitted his composition to be issued on a phonorecord, it was published, and thus amounted to a dedication to the public. He implied, but did not explicitly state, that if Lewis had secured federal copyright of his sheet music first, then the publication of the phonorecord would not have affected those rights. If so, this meant that issuing phonorecords amounted to publication, leading to divestment, for common-law copyright in the composition, but not for statutory copyright.

A second, far more significant case was Metropolitan Opera Assn. v. Wagner-Nichols Recorder Co., also in 1950. It was a fairly straightforward case. The Met had an exclusive contract with Columbia Records to record its opera performances. Wagner-Nichols lifted the Met’s famous Saturday afternoon radio performances and used them to make albums competing with Columbia’s. The Met sought an injunction to block Wagner-Nichols. There were several ancillary matters dealing with issues such as intentional misrepresentation of goods beyond the scope of the present discussion. But, the major contention between the opera company and Wagner-Nichols was the latter’s assertion that the Met had “no property right in the broadcast performances and that [Wagner-Nichols] are therefore free to record these performances and sell their recordings.”

Although it never cited the earlier New York case, Metropolitan Opera was a throwback to the 1909 Fonotopia case. Its distinctive feature was the idea that “unfair competition” could be broadened beyond the idea of “palming off” mislabeled goods to include their actual misappropriation: “in recent years its scope has been extended. It has been held to apply to misappropriation as well as misrepresentation . . .to misappropriation of what equitably belongs to a competitor.” It is axiomatic that for misappropriation to occur, there must be property to misappropriate, so it was no surprise that the court held that the Met had a property right “protected in the creative element in intellectual productions—that is, the form or sequence of expressions.”

The court also found that the broadcasts did not amount to publication. Here, the court pulled a bit of legal bait-and-switch. After quickly noting the old Ferris v. Frohman stage play line of cases, the court turned to a recent Supreme Court case, International News Service v. Associated Press. But the issue in International News wasn’t whether the press items in dispute had been published, but whether they had been abandoned — a rather different thing. Abandonment turns on the question of intent; publication depends on the extent of actual distribution regardless of intent. The court then proceeded to ignore the question of whether the Met had published its sound recordings, holding instead that it had not abandoned its property through the broadcasts, because it had not demonstrated the requisite intent.

To be continued…