The interim 1972 Copyright Revision Act also touched off one of the messier inter-judicial disputes in the history of copyright law, the so-called “mechanical reproduction” fee controversy. The 1972 revisions retained the original 1909 compulsory licensing fee system. You will recall that under the 1909 Copyright Act, after the first release of a composition on a phonorecord or piano roll, a composer had to let all subsequent users license the song for a similar use provided they paid two cents per copy. Everyone assumed that “similar use” meant you had to hire your own musicians and make your own version of the song, but Melville Nimmer, the great copyright authority, had for years argued that the plain language of the Act allowed one to duplicate the original phonorecord and sell copies of it with impunity, provided that the copier duly filed notice and paid his fees.

He argued this because: 1) the law left the sound recording aspect federally unprotected; 2) copying, being an identical use, was about as “similar” as one could get; and 3) the law was intended to protect the interest of composers, not artists, and it made no difference to the composer if he received his two cents a copy from Victor or Cheapco Records. While a copier always faced the threat of prosecution under a state law, such as California statute 653h in the Goldstein Supreme Court case, a copier who scrupulously did his paperwork and paid his royalties was, under Nimmer’s theory, beyond the reach of federal law.

There were a plethora of lawsuits between 1972 and 1975 that fit these facts. They ultimately resolved down to four federal circuit court cases originating in New Jersey, Alabama, California, and Oklahoma. In every instance the trial court agreed with Nimmer. In all four the circuit court reversed, finding infringement had occurred, and in each there was a (usually vociferous) dissent. The majority’s reasoning in all four was roughly the same, and was based in the 1912 case, Aeolian v. Royal Music, the one in which Royal had taken out a mechanical reproduction license with composer, then used Aeolian’s piano roll of the same song (they also had a license) to make their punching matrix rather than prepare one of their own from scratch. Back then, the Supreme Court held that Aeolian’s licensee-licensor relationship with the composer meant that harming Aeolian was tantamount to harming the composer. The implication was that licensing a composition protected the exclusivity of the licensee’s sound recording.

The dissents all pointed to the 1972 copyright revisions, which had started to allow the separate registration of sound recordings partially to prevent such abuse. The legislative report for the 1972 bill noted that “If unauthorized producers pay the statutory mechanical royalty required by the Copyright Act for the use of copyrighted music there is no Federal remedy currently available,” and that if record duplicators “satisfy the claim of the owner of the musical copyright they can and do engage in widespread unauthorized reproduction of phonograph and tapes without violating Federal copyright law.” But then Congress had changed the law only for post-1972 records. Thus, the dissenters argued, if Congress elected not to change the status of the older works, that must indicate it wanted to rely on state-law enforcement. Frankly, it was a strong argument.

The 1972 revisions also changed another provision. In addition to the existing civil penalties for copyright infringement, Congress added the possibility of criminal prosecution for “willful infringement for profit.” A month after the last of the four mechanical royalty cases concluded, the Department of Justice announced that it would began prosecuting music piracy, including pre-1972 recordings. Between 1975 and 1985, the DOJ went after music duplicators who “abused” their compulsory reproduction licenses by duplicating sound recordings, even though duplicating pre-1972 recordings didn’t violate federal law. In 1985 the Department discontinued this policy for pre-1972 recordings, determining that it had insufficient jurisdiction.

To be continued…

Judge Gurfein simply developed his own system—one that was as simple as it was clever:

The use of phonograph records without compliance with the Copyright Act bars claims for infringement not because the record is a “copy” or a “publication” but because any other interpretation leads to a conflict with the Federal statutory scheme. Section 2 [of the 1909 Act, allowing states to extend common-law copyright to unpublished material] would still be read as applying to unpublished works protectable at common law, including unpublished musical compositions where no mechanical recordings have been made.

Here, Gurfein is proposing that a music composer who had neither published her composition on paper nor issued it on a record would be treated the same as any other author of undistributed manuscript material. She would be covered by state common law copyright, irregardless if her “manuscript” was a book, sheet music or an uncirculated record. He continued on:

On the other hand the failure to file notice [for the 2-cent-a-copy royalty] should not bar the copyright owner forever. By analogy, then I hold that the sale of phonograph records is not a divestment of common-law rights by publication, but that it does inhibit suit against infringement until the statutory copyright is obtained.

Once the composer had circulated her song composition on a record, without securing a Class E sheet music copyright, others would be free to use it without filing a notice or paying the mechanical fee royalty. In addition, they would be immune from suit by the composer for state common-law copyright infringement. However, the author’s compositions would not be permanently divested into the public domain, because phonorecords aren’t copies. Thus, once the author had secured her Class E copyright, other parties would be obligated to file notice and start paying mechanical fee royalties. The author could also start to use state common law to enjoin any further illegal record sales.

The real beauty of this system is that it could be made to work just as well for sound recordings. Since sound recordings made after February, 1972 were separately copyrightable under Class N, Gurfein’s solution pointed a way towards a workable method for pulling pre- and post-1972 recordings into a single system. A pre-1972 recording could be replicated by others, because it wasn’t a “copy,” but once it was registered under the new system, such replication had to cease. Although the appeals court upheld both Gurfein’s novel decision, and his award of $14,300, it was now late 1976, and Congress had finally seen fit to replace the 1909 Copyright Act, but not as envisioned by Judge Gurfein. On the other hand, the legal world had not heard the last of Marion Rosette or her nursery rhyme songs.

To be continued…

Between February 15, 1972, when the Copyright Act’s section on phonorecords was modified, and October 19, 1976, when the old 1909 Act was entirely replaced, sound recordings lived in sort of a legal netherworld. Before 1972, music legally existed, as far as the federal government was concerned, only in the form of musical compositions, written in the form of visible notation, on paper.

After the February 15, 1972 action, a phonorecord was still not considered a copy of the composition. A disc or tape could not be submitted to the Copyright Office in lieu of a paper score for the purposes of copyrighting a composition. However, a new “Class N” copyright (Sound Recording) was added to the traditional “Class E” (Musical Composition) copyright. Class N material included “works that result from the fixation of a series of musical, spoken or other sounds,” including music, drama, or narration. Only works first affixed onto disc, tape, cassette, piano roll, etc. and published after February 1972 were eligible for submittal. “Affixed” was defined as “when the complete series of sounds constituting the work is first produced on a final master recording that is later reproduced in published copies.”

Under Class N only the sound content itself was protected. A composition or arrangement could not be registered by sending in a record or tape. Unlike books and other works, which were required to bear the © symbol, copyrighted sound recordings had to carry a circle-P symbol.

In a coincidence, the timing of the law, along with a brilliant new theory advanced by a New York federal court judge, almost revolutionized copyright law in regards to phonorecords, both in their composition and sound recording aspects. Alas, Judge Gurfein was a prophet before his time.

Rosette v. Rainbow Records was a 1973 dispute over composition rights. Keep in mind that thus far we have been almost exclusively talking about whether issuing phonorecords publishes the sound recording, not the composition of the songs on the disc. Marion Rosette was a composer and performer of children’s songs, most based on classic fairy and folk tales. She had been publishing since about 1964; all the records in this dispute were from the pre-1972 period. Rainbow issued exact reproductions of at least 33 of her songs. Rosette had not registered federal copyright in any of her compositions, so she sued under New York state law. Rainbow asserted that by issuing records, Rosette had published her compositions, divesting them to the public.

Reviewing precedent, Judge Gurfein found little guidance. Shapiro, Bernstein v. Miracle Records (Ill., 1950), implied, but didn’t directly state, that publication divested composition rights. Mills Music v. Cromwell Music (S.D.N.Y. 1954), stated so outright, but the point was tangential to the case. The same was true for McIntire v. Double A Music (S.D. Cal. 1958). The one exception was Nom Music v. Kaslin (S.D.N.Y., 1964), in which the court held that issuing records did not publish the composition because records were not copies. (Shapiro, Bernstein is the only case I have previously discussed.)

The problem was that section 2 of the 1909 Copyright Act gave almost unlimited protection to “unpublished” works. The jury-rigged two-cents per copy “mechanical reproduction” fee provision in section 1 obviously required some kind of registration system, but section 5 of the Act didn’t include phonorecords as works eligible for copyright registration, and of course the entire Act excluded records as copies. Lacking any help from precedent, and forced to admit that the Copyright Act was the problem, not the cure, he devised his own solution.

To be continued…