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…

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…