Duchess Music Corporation v. Martin Stern, 458 F.2d 1305

Duchess Music Corporation v. Martin Stern

458 F.2d 1305

9th Cir.

1972

Check Treatment

*2 CHOY, Before KILKENNY and Cir Judges, BYRNE,* cuit Dis Senior Judge. trict CHOY, Judge: Circuit interlocutory appeal This requires compul- construction of the remedial and sory 1(e) Act of 17 U.S.C. §§ (d) 101(c), (e). Appellants are a group companies of music which own copyrights compositions to musical

by such diverse and well-known musi- Presley, Cash, cians as Johnny Elvis * Byrne, Judge, M. Senior United States District Honorable William Central District of California, sitting designation. Jagger, authority implementing con- Bacharach, rules Mick Joni Burt They allege impoundment template Mitchell, the seizure and Buck Owens. “ nature appellee items Rosner others Pearl of iden- pirates would be item make cassette music last in- recordings tape phonograph tifiable used to make records character fringing copy.” legitimately by appellants also contended from issued She *3 statutory compositions. filed a Notice copyrightеd After na- since she had a appellants Intention to under 17 U.S.C. search, § discovered a Use tionwide 101(e), is- Phoenix, major writ seizure Arizona. after haven in investigators hear- private sued and executed but aid of With the ing injunction, in- preliminary police, they suffi- on local obtained and the junctive prohibiting us- her from from relief to secure cient information ing parte appellants’ works an ex order to District show Court restraining cause, tеmporary order unavailable. seizure, and all directed a writ agreed Ros- The Court District alleged against pirates. re- ner count. “ It ordered the on each recording pursuant tape seizure, . issued . . The writ of turn of all 101(c) equipment machinery, well as as and the Rules and to 17 U.S.C. § Court,1 Supreme cartridges, cas- tapes, . . Practice issued all blank settes, uri- any or directed marshal or unmarked to seize labels “ packaging printed mаterials. On any parts of . . and all instru- . property either hand, other all which serving reproduce mechani- ments to electronic embodies a mechanical and/or plaintiffs’ cally copyrighted musical copy- impression plaintiff publishers’ making all for works and means righted pro- packaging any or or works comprehending labels, cartridges, same, referring identifying motional devices or recordings tape machinery uti- and subject impound- to same are still manufacturing process, lized in in- ment.” District also The Court recording cluding Livingston machine avail herself that Rosner could winder, Jagerberg-Werke —side AG although she license scheme tape machines, brand brand Weldotron infringed appel- previously illegally had equipment, tape GRT winders ” although in- she copyrights lants’ Craig testing tape players copy- duplicating the tended continue impounded The marshаl seized and righted material. 25,000 recordings complete tape its The amended District Court later recordings, repro- master serve to order, appeal tunc, pro nunc to allow mechanically appellants’ copyright- duce 1292(b). The court under 28 U.S.C. § compositions; tapes ed musical blank stayed pending out- order also its cartridges designed for use in the appeal. materi- The come of seized this tape rеcordings; print- manufacture of Rosner. als have not been returned to labels; machinery ed used to transfer on both the District Court We reverse tapes; packaging onto the sounds blank counts remand. promotional materials; and other equipment machinery utilized process. Appellants filed manufacturing requisite bond. scope seizure order Only appellee Rosner, who does busi- Manufacturing Compa- National Act of ness as ny, monetary appeared provides injunctive re for and contested the seizure objected infringement, scope lief for im order. She for and also order’s infringing ground poundment on destruction of that the author- ity Supreme for seizure and articles. pp.

1. 214 U.S. 533 as amended See 17 U.S.C. 276-281. infringe any person infringing copies, records, “If seized shall are not protected plates, matrices, under the molds, work means making alleged infringe copies States for laws United person copyright.” court, shall be liable: Rule 9. The discretion, may return, its order a but only if the defendant has met his burden “(c) up oath, im- To to be deliver on proof. Rule If ‍‌‌‌‌‌‌‌‌‌‌‌‌‌‌‌‌‌‌‌‌‌‌‌‌‌‌‍the articles seized pounded during pendency of the infringing infringing copies action, upon and conditions such terms means, the District Court has no discre- may prescribe, all articles as court interpre- tion return A them. similar alleged cоpyright; infringe applicable tation is the destruction “(d) up oath de- deliver To provision. copies infringing struction all the molds, devices, plates, as all well *4 There ap is no reason here to making matrices, or other means for ply statutory the construction rule of infringing copies such as the court 3 ejusdem generis to narrow items to 101(c) may order.” 17 and U.S.C. § impounded gen be destroyed and (d) supplied). (emphasis plates, eral molds, matrices, class of and is, embodying to items an identifia language throughout The preme used the Su- impression ble of the work. implement rules which The Supreme statute and Court rules provisions uniform,2 and is not provide impoundment for the and de verbal about there is some confusion (1) struction of three classes of items: destroyed. But is seized and what to be infringing copies; (2) plates, molds, “All ar- mandate is clear. etc.; matrices, (3) and other means for alleged infringe copyright” ticles to making allegedly infringing copies. infringing impounded, are to and “all be ” ejusdem generis here, applicable If is it destroyed. copies . . . are to be applicable “etc.,” construe to the word Supreme Neither nor the statute making not the words “other means for give Court rules the District Court infringing Machines, copies.” such impound discretion determine what to to cartridges, blank cassettes аnd blank and destroy. process or The Con- what to labels, printed and other devices gress granted aggrieved copyright making infringing “other means” for proprietor summary is a one. Universal copies appellants’ copyrights. They to Manufacturing Copperman, Film v.Co. scope fall within the both statute (S.D.N.Y.1913). to 206 It F. 70 properly and the rules and were im alleges impound everything plaintiff pounded. infringes copyright. Rules and his 9 10 provide may ap- dealing infringers, copyright then that the defendant Congress ply injunctive the court for return of the seized did and to not halt at monetary prescribed impound- articles if he shows that “the articles relief. It “ infring- specific particular 2. 2 and 3 refer to words Rules ing copies, records, plates, molds, matrices, meaning, general words are not extent, etc., making copies in but or be construed their widest other means for applying only alleged infringe copyright persons are to be held as ...” things general in of the same kind class Rule 2. Rule 9 and Rule a second sentence, specifically omit the “etc.” Rules 6 and as those mentioned.” Black’s Dictionary 1968) However, “infringing (4th ar- Law refer to articles” and “the ed. ejusdem generis applied ticles seized.” is not general meaningless, United render words “Ejusdem 680, 682, generis, kind, Alpers, 3. 70 S. State v. 338 U.S. of the same class laws, L.Ed. or to thwart or nature. In the Ct. constructiоn ‘ejusdem Congress’ intent, instruments, United States Gilli wills and other generis land, 86, 93, general L. 61 S.Ct. rule’ is that where words person (1941). things, Ed. 598 an enumeration of follow Joint II While the ment destruction. proposed reporting Committee provision remedies,4 on these elaborate did not congressional committees which in extensive they discussed were often drafted the were conscious of 1909 Act hearings Joint Senate ground” they taking the “advance were De- Committee, in June House “securing right composers March, Con- cember, reproduction by me- the matter opponents gressmen, supporters, of their H.R. chanical means music.” agreed im- bill Rep. However, were also poundment destruction possibility acutely aware of the scope, en- sweeping their were monopoly” if creation of a “music vast compassed and items machines right exclusive holders had the allegedly inno- other, could be used for reproduce to determine was to their June, During purposes. cent Therefore, works. foresaw hearings, opponents bill only way pur effect both “The equip- spectre destruction committee, poses, as it seemed to the plants. machines, ment, entire was, giving composer ex after Hearings 19853 be- on S. and H.R. prohibit clusive the use of fore House Committees the Senate and reproducers, by the mechanical music Cong., conjointly, 1st Patents, 59th *5 provide permit or that if he used 1906). Sess., (June, 177-178, 124, 200 pur ted the use his music for such of Proponents the of envisioned the bill then, upon payment poses, the of a impound Congress intended to same.5 royalty, all who desired reasonable parapher- destroy of “the the and whole might reproduce music.” H.R. the may including nalia,” items which those (1909). Rep. 6 purposes.6 used for other Against background, Congress en- this We, therefore, the District reverse Act, 1(e) Copyright 17 acted of the § point, direct Court’s order on this seq., 1 in rele- U.S.C. et which reads § machinery part, seized that all material vant impounded pending a to be continue extending “And of the as a condition hearing on merits. copyright the such mechanical control 4. The Committee commented in 7. Act was intended While the legislation way this kind is neces- “some White-Smith Music some to overrule 2222, sary.” H.R.Rep. Cong., 1, Co., Publishing Apollo No. 60th Co. v. Note, Sess., (1909). 319, (1908), 2d All references future 7 28 52 L.Ed. 655 S.Ct. Report H.R.Rep. Copy Recordings, Records, to this will be to “Sound Compco,” right: Aftermath of Sears and Albany 371, it did L.Rev. 372 33 Hearing 5. See on S. 6330 19853 H.R. copy phonograph permit records to be not before the Senate House Committees Mercury Records, Capitol righted. Inc. v. Patents, conjointly, Cong., on 59th 1st (S.D.N.Y. Corp., F.Supp. 109 330 Record 1906). Sess., (December, 146 1955). (2d 1952) F.2d 657 aff’d 221 Cir. copy Howеver, underlying See, hearings, supra, n. if work is 6. in the the December infringement 8, pp. Hearings may 179-180, righted, in be an on S. there by duplicating copyright the record. 2499 before the Com- Senate and House Goody, Patents, conjointly, Shapiro, F. & Co. mittees on 60th Con- 37, Bernstein v. Congress 1957). (2d gress, Sess., (March, 1908), pp. has Cir. 1st 2d 260 anomaly by creating remedied this and 139. at last copyright right judicial practice holder an This was not the exclusive j)ub reproduce Copyright Act, g., and distribute е. Morrison v. Petti “[t]o copy- reproductions (N.D. bone, 1897). of the . . F. How lic . Ill. recording ever, thorough righted it be a sound statute was re work if a Sess., Cong., law, 1st copyright 92nd .” S. vision of American right legislative hearings new This demonstrate that Con enacted October gress cognizant not retroactive. of the use innocent problem. compositions copyrighted reproductions, the own- that whenever certain musical sought injunc- perforated оr has used on its er rolls an of a musical * * * knowingly against competitor dupli- ac- permitted tion or cating granting injunc- copyrighted quiesced of the the rolls. use (cid:127) may said, tion, make person court work, other work, copyrighted similar use provision (section “The of the statute propri- upon payment le) ‘any person may make each royalty etory of 2 cents aof copyrighted similar use of ‍‌‌‌‌‌‌‌‌‌‌‌‌‌‌‌‌‌‌‌‌‌‌‌‌‌‌‍the work’ by paid manufacturеd, to be part operative automatically becomes thereof the manufacturer grant license; but the sub- thereby sequent does secure implemented § user 1(e) not Section right copy perforated rolls 101(e), part, reads He avail himself cannot records. any per- also, whenever That Provided original skill labor of agree- son, a license absence in the perforated manufacturer roll or ment, use intends duplicating by copying record relying . composition . . musical same, copy- resort but must provision upon compulsory license righted music, composition sheet notice title, serve he shall this competi- of a work upon . . . such intention ” original perfo- tor made who has proprietor rated roll.” At 297. provisions of the invoked these Rosner Accord, A. Co. Standard Music Roll v. F. intention filed a when she notice Mills, Inc., (3rd F. declaring contin- use, intention to 1917).9 Publish Cf. Jeweler’s Circular tapes by same manufacture ue the Publishing Co., ing Keystone Co. v. past. duplicating used in the methods (2nd 1922); Re F. Produce argued com- appellants While Rating Agen porter Co. Fruit Produce inappli- pulsory were *6 (N.D.Ill.1924). cy, 1 F.2d 58 event, any that, in cable to a late, the District the notice filed too Rosner was asserts that courts noting loopholes recognized in Court, “gaping “right recently have agreed do Act,” cоpy” duplicate, Rosner. We e., she i. is enti which tled None of she not. to invoke. the cases supports cites her make claimed anyone provides The statute copies appellants’ exact and identical of provi properly license invokes Sears, & records. In Co. v. Roebuck copy “may use sion make similar of 784, 225, Co., 84 Stiffel S.Ct. righted supplied.) (emphasis work.” (1964) Compco 11 L.Ed.2d 661 duplicates appel Rosner аdmits that she Corp. Day-Brite Lighting, Inc., v. 376 compositions. She lants’ 234, 779, 84 669 U.S. 11 L.Ed.2d S.Ct. them, make use” does “similar of not Supreme Court held copies she exact and identical makes competitors could commer business scope clearly them. This is outside the cially produce “substantially an item compulsory license scheme.8 produced identical” to an item anoth Royal In Roll Music unprotected by Aeolian Co. v. patent company, еr but piano Co., (W.D.N.Y.1912), a 196 926 liability F. copyright, fear having use roll a license to manufacturer competition under unfair In state laws. duplication Compulsory Given view that is our exact over the License: Mechanical use,” not we need not decide Music,” “similar Recording of 36 Colum.L.Rev. prospective when a licensee invoke must (1964) ; Diamond, “Copyright compulsory scheme license and file Phonograph Industry,” Problems of the intention notiсe of to use. ; Note, (1962) 15 Vand.L.Rev. Ball, Copyright Rutgers 9. See The Law of Lit L.Rev. erary Property ; (1944) Note, “Battle products differing interpretations Compco in to what at as both Sears view, appel- truly my unprotected by patent. The In in issue. issue were seeking protect Broad are in Columbia lants not “Paladin” character rights composi- DeCosta, casting System, F. hold on musical Inc. v. case, controversy. 1967), (1st likewise un tions in This is not a 2d 315 it, in proteсted copyright. said where the holders of the As as I see we Inc., KUTV, copyright seeking Vision, 335 F. retribution Cable Inc. 1964), uncompensated (9th use their com- 2d musical positions. Rather, may this conflict protection ac- the limited “Save for attempt by seen as an literary and in- corded the creator of forever, ap- preclude holders Rosner’s Copyright works under tellectual recordings propriation of these of their any- exсeptions ,. and its compositions. opinion’s majority 'impunity may freely one and with approval consequence dis- such a any ex- avail himself of such works to counts, subsequent it, as see Rosner’s pur- may desire and for he tent compliance with the subject qualifica- pose whatever provisos. consequence It is to that will, good tion that he does steal not views, my as were those stated, perhaps accurately de- or, more court, district are directed. thinking the ceive creations others represent (emphasis his own work.” legislative recently history supplied.) amendments enacted Compco setting Sears do sanction guide Act serves as instructive outright appropriation, in vio- Rosner’s Act at forth the limitations per- copyright, lation of actual controversy occurred. time events appellants’ formances containеd amending report on the bill its course, may, records. Rosner record Judiciary Copyright Act, Com- House appellants’ songs, she hires musi- when “there mittee observed because Instead, cians, artists, and technicians. protection of sound no Federal [was] genius she of others. steals the talent legislation recordings, such,” new thinking deceives others into She protection, Absent needed. tapes represent her work.10 own pirates if record Committee noted that “right copy.” Capitol She has no See “satisfy the owner of the the cla[i]m Inc., Records, Records, Inc. v. Greatest [they] en- do can and musical (S.Ct. 43 Misc.2d 252 N.Y.S.2d gage widespread repro- unauthorized *7 1964). may pi- She continue tapes phonograph records and duction of racy flag under licens- the of violating Federal ing. supplied). (emphasis 92- H.R. law.” Reversed and remanded. propounded the House 487. The view by the Judiciary echoed Committee Judge (dis BYRNE, Senior District Congress: the “Neither of Librarian senting) : nor present statute Federal respectfully dissent. of the vari- or statutes common law the purpose. adequate this for disagreement ous states are My majority the with duplication of [Controlling unauthorized opinion relief which is that sanctions it tapes]. The phonograph records ap- I do not believe is available coрy- solution, the of an amendment disagreement pellants. best of this The basis F.Supp. Co., Broadcasting long v. National been the law this Circuit 10. It has Copy 1955). (S.D. the Under Calif. copy of the substance that cannot “[o]ne “substantial,” copying right Act, is infringing if the another’s work without “Piracy Comment, infringement. Benny Inc., it is an copyright.” 239 F. v. Loew’s Twain,” Parody: U.Col. (9th 1956). Never the See also 2d copying is Kosner’s Publications, L.Rev. F.2d 541 Berlin v. E. C. Corp. 1964) ; (2d exact. Pictures Columbia pertinent protеction promulgated court rules provide limited law to recording equip- against duplication, disposition is of Rosner’s that unauthorized entirely ment was the to amend consistent with bill [the embodied in S. 646 governing Simply stated, then the States law. Code.]” of the Title 17 United Department, application of the Similarly, which trial court’s sound the State ejusdem generis conse- con- international of avoids the deal rule has had to with tradictory impounding thаt result of record- quences piracy, of record concluded ing inadequate: equipment same time af- pre-amended and at the Act firming pre-amended per- that present, Federal statute Act there is no “At recording duplication prohibits ‍‌‌‌‌‌‌‌‌‌‌‌‌‌‌‌‌‌‌‌‌‌‌‌‌‌‌‍if the com- traf- mits of expressly commercial that legit- pulsory duplications are met with of fic in unauthorized compliance: recordings. bill [The imate sound States the United amend Titlе 17 of practice implementing “The of rules need and answer that would Code] 101(c) (d), one ex- sections with satisfactory provide means of would ception, terminology similar use curbing combating unauthorized 101(d). that section duplication piracy of sound record- ambig- recognizing that this “While ings.” Commerce and Justice De- language inter- admits of several uous inadequa- partments also attested to pretations, only con- this Court can light pre-amended cies of Act. one reasonable clude that the most representa- expressed the views precludes impounding the seizure and Legislative tives Executive recording tape machin- defendants’ agree es- Branches, I cannot equipment. Application ery opinion majority sence of the ejusdem generis requires the rule of pre-amended Copyright state Act its phrase ‘or other means of rights safeguarded adequately making infringing copies’ such appellants. Accord, Nimmer instant general apply only class same Copyright (1970) is stated: wherein it specifically enumer- are those items duly “Assuming a record pre- immediately phrase ated use, intent a notice of serves ceding, preceding enu- each royalties, pays compulsory license molds, plates, matri- merated items — astounding is result somewhat particulаr character ces —is of such infringer that he is under not an suggests, embody, as defendant as to portion Copyright Act. impression of identifiable he which has recorded which righted work. protectible under the Act “Furthermore, if eventual destruc- composition itself, the musical im- purposes of is one of the tion he is to use authorized pounding, Pub- Jewelers’ Circular see recording purposes upon payment of Publishing lishing Keystone Co. v. royaltiеs. All (S.D.N.Y.1921), this Co., 274 F. 932 origi- elements contained in no rationale can conceive nal record which he has without au- wording within *8 duplicated copyrighta- thority are not any prop- justify destruction would ble, and hence use of such el- non-infringing erty other, usable for give ements does not rise to an action purposes.” infringement.” at rule, trial applying the said In so (emphasis supplied). property which that “all court ordered by As recapitulаtion demonstrated a a either mechanical embodies and/or legislative pub- history, plaintiff amendments’ impression electronic pack- piracy prohib- act record not was lishers’ works by pre-amended identifying ited aging promotional if the com- devices pulsory subject license referring had been sat- are still same I isfied. believe trial Thus, court’s result impoundment.” inter- the net pretation provisos order the court’s confiscation deny noneompli- fruits her Rosner the provi- compulsory

anee with the license meaningless rendering sions as

any subsequent compliance. a If this concerned case compul- complied

who had with the not

sory provisions, be in would I

complete majority opin- accord with prohibit- duplication ‍‌‌‌‌‌‌‌‌‌‌‌‌‌‌‌‌‌‌‌‌‌‌‌‌‌‌‍ion’s view that acknowledged Here, Rosner, du-

ed. because, pirate,

plicator, is majority opinion, had she

noted use, de- “filed a of intention to notice claring intention to continue dupli- tapes by same

manufacture of

cating past.” in the Be- methods used “loop- very I this to be the

cause believe the new amendments are intended

hole” close, majority concur I cannot in the

opinion’s disposition of the

license issue. complied

Although Rosner now has provision, compulsory license

with the opin- majority prohibited she is engaging duplica-

ion from the act tenable, prohibition is not

tion. Such light legislative it, his- as I see

tory and the views of the amendments Nimmer.

of Professor court. the district would affirm UNION

LOCAL INTERNATIONAL ENGINEERS, OF OPERATING ‍‌‌‌‌‌‌‌‌‌‌‌‌‌‌‌‌‌‌‌‌‌‌‌‌‌‌‍AFL-CIO, Plaintiff-Appellee, CO.,

SIEGRIST CONSTRUCTION a Colo- corporation, Defendant-Appellant. rado

No. 71-1443. Appeals,

United States

Tenth Circuit.

May 5, 1972.