Fame Publishing Co., Inc. v. Alabama Custom Tape, Inc.

MORGAN, Cir- and GODBOLD Before BOOTLE, District Judges, and cuit Judge. MORGAN, Judge. Circuit R.

LEWIS defendants-appellants Although they “tape pirates” known as popularly accurately as more be described could ap- parasites.” When it becomes “tape recording that a of parent by plaintiffs-appellees one of “hit,” appellants become is destined recording, repro- copy of the purchase millions of thousands or duce hundreds times, pub- copies and sell producers face lic. While most expenses, and never substantial risks Tenn., Kelly, Hendersonville, F. Dulin their efforts will suc- knowing whether Estes, Term., Nashville, L. Robert for de- ceed, prob- appellants encounter fendants-appellants. lems; they song. hits for a buy their Atchison, Birmingham, W. Michael Ala., by In action music Clark, this City, John New Ar- S. York Teks, Ala., infringement, Florence, Sidney publishers1 for nold Ros- S. 1. The dissent maintains that also meet plaintiffs-appel- Clearly, plaintiffs second standing Processing’s prong lees lack Data test, tests of Associa- “whether Processing sought Organizations tion Data Service interest to be ... protected arguably 397 U.S. Camp, 150, 90 827, S.Ct. 25 within the zone of be interests (1970) L.Ed.2d regulated and Sierra Morton, Club v. by statute protected ”, Processing 727, S.Ct. 1361, 31 L.Ed.2d 636 . Association of Data Processing's Organizations two-pronged Data test 150, Service 397 U.S. Camp, alleged “injury met here. First, plaintiffs in 153, 90 S.Ct. 25 L.Ed.2d Here publishing fact.” Each sought music plaintiff the interest to be was creat- compa- alleged copyrights ny violations specific of its ed the statute in § 1; U.S.C. question, (Complaint musical argument specific compositions, there can therefore be no serious paragraphs 15-114) injunc- and asked for an the “interest” seek to plaintiffs against damages tion copyrights in- for each such their protect, compositions, fringement (Prayer paragraphs for Relief, one within are not the “zone interests to be two). paragraph In four of their com- protected.” alleged: plaint, they Sierra Club is reliance dissent’s bootleg cartridges Such tape [produced since case dealt with inapposite, alleged are sold . defendants] . . for cash at of “what must be question persons injury lower prices substantially than the prices claim of a nature who noneconomic legitimate cartridges, ”, tape to the material Morton, Sierra Club detriment artists, 1366, S.Ct song music companies, publishers even under However, Sierra Club’s great damage writers, and to the or retail seeking “the review party requirement engaged legitimate in the injured” merchants sale among himself id. p. recordings. (Emphasis supplied.) standing, clearly have p. plaintiffs Processing note, We injury finally, Data allege their since economic standing, who were held plaintiffs, publishing to have music businesses. Sierra Club alleged injury economic challenge prospective does not proposition “pal- allege while here injuries long have already economic been rec- pable injured. been ognized sufficient the basis lay granted district court their motion cases, the majority In means summary judgment permanently recorded, once a has been in- enjoined defendants from continued other artists must allowed to make a copyrights fringement plaintiffs’ recording of of it. For devel- compositions. reasons musical Appellants, re-record below, we affirm the district court. oped the first recording. precise issue for duplicating is therefore whether THE I. COPYRIGHT ACT a sound aof of a copyrighted composition is a “use” of the Appellants’ is that principal contention composition original “similar” to the re- the activity protected is cording of it. provision” of the “compulsory license 1(e). Copyright Act U.S.C. § preface As a analysis, our it may be granted therein holders of the helpful emphasize that the copyrights copyright in a the ex- the musical work here involved are in the composi- musical clusive themselves, tions particular the re- performances. corded rights These have arrangement or any make to. 1909; been by federal law since init melody of the it or of setting of no federal law provided copyright any form or any system notation protection of a particular performance an au- thought which the in record until 1971. See our discussion of the from which be may recorded thor Recording “Sound Amendment of 1971” reproduced . read or may it be (c) at infra. Plaintiffs, independent publishers, music (a) The statutory language. The Act may copyrighted refuse allow their that, provides after the first mechanical works, music,” in form of the “sheet recording of composition, others they to be recorded at all. If do ever make “similar use” of composition, the however, grant permission, such the com- upon' payment the per two cents re- provision automatically pulsory license cording. recording made, The first is applies, stipulating necessity, from a live performance; involves, in varying degrees depending extending as a condition of on the nature sing- of the composition, mechani- copyright control to such ers, instrumentalists, arrangers, con- that whenever reproductions, cal ductors. The “use” of composition has used of a musical owner thus process (a consists of per- live acquiesced permitted knowingly or or formance) as product (a well as a record- work in use of the ing); neither one by itself is sufficient to serving upon parts instruments constitute the being “use” licensed. mechanically the musical reproduce work, may make sim- any person other taped A duplicate is not a upon work the copyrighted ilar use of “similar use” of we proprie- payment understand the words. There is no live royalty of 2 on each of a cents performance; fact, tor in there are no musi manufactured, part paid by such cians at all. Only tape recorder is thereof. the manufacturer required. product, course, The end is statutory standing, specific or without a with compositions; only they plaintiffs’ if did pp. provision . . Id. royalty they permitted enti- 733— to tender the p. dissent, asserting licensed. The tled to be argues cannot The dissent are entitled to tender that defendants injured been since defendants tendered royalty, necessity have statutory assumes of royalty statutory repro- each excep- the two cent are within the license analysis This overlooks the fact tion, duction. e., duplication use.” is a “similar i. provision decision, is precisely the issue for this is But prohibition exception general against disposed of cannot be one which duplication. The central issue in this case legal legerdemain. made whether defendants “similar use” of indistin- virtually costs of “similar” however, is com- process, promoting product. guishable; the finished is not duplicators distinction pletely apparent dissimilar. This if are al- then result, is the di- metaphysics; operate, lowed to will. As a mere musical ' the stat- which viding interpreta- line new between there would be fewer it forbids. records, ute and that of hit established commands tions either record- “produce” Although appellants re- artists “unknowns.” A related use” of a “similar ings, they do not make sult would be that fewer new artists doing. in so appellees’ compositions opportunity would afforded the aspiring their own work. need not We Congressional intent. (b) caught two-way artist would be plain on the solely holding rest our squeeze; duplicators, however; statute, meaning of the financing no interest his rein- Copyright Act policy of general stardom, recording compa- shot at while by not- begin We our conclusion. forces nies, their profits duplicators, cut provision compulsory license the ing that would be to take far fewer chances able exception to the is a limited result, on untested talent. As a fewer who to decide exclusive holder’s people realistically could consider com- composition. As use of his make shall way mercial as a to a music earn liveli- narrowly, lest such, must be construed hood; inevitably artistic endeavor would prove, destroy, than rather exception the Naturally, plaintiffs’ curtailed. busi- ex- we neither should the rule. Thus nesses would suffer since there would be compulsory license pand scope the compositions publish. fewer to intend- what provision beyond Second, through protecting duplication way a it in such interpret nor ed in provision would compulsory licensing the purpose. that frustrate as to growth the promote rather than inhibit apparently Congressional intent recording industry. the monopoly future creative encourage twofold: testified Register Copyrights As the monopolization endeavor and to combat with the 1971 amendment in connection industry. H.R.Rep.No.2222, in the music Copyright Act: (1909). Gold Cong., See 60th 2d Sess. whole, The record industry, taken as a California, stein v. a highly competitive industry. 37 L.Ed.2d There is ease of entry; there are lot licensing provision was in companies. of small accomplishment of genious device for the objectives: is left free to these artist If can legally someone come in and composi the manner in which his hits, choose skim off going who is to suf- pub initially will fer, tion offered company the small larger or the lic, license who yet he must then others company? Hearings on S. ren present competing wish to own H.R. 6927 Before No. 3 Subcomm. Comm, ditions. Judiciary, the House on the Cong. 92d 1st Sess. 20 protecting tape It is incontestable that duplication than would frustrate rather obvious, Only of course. The answer is First, objectives. far further these from to suf- largest producers could afford creativity, encouraging artistic such stat- by duplicators. fer the losses inflicted protection precisely utory would have The issue be- authority. (c) Judicial opposite effect. infre- has raised this been fore reasons, For several duplica- obvious gen- relatively recent quently, due to tion far expensive less than the more Ap- fact, only Courts two esis. In traditional method producing popu- question; both have peals considered lar recording. The duplicator need not dupli- do that precisely we held ' exert himself in finding and developing by the statute. protected is not cation artist, nor need he bear the actual Circuit, Music Cor- in Duchess The Ninth 1305, 1311 Stern, F.2d poration provision. license The court there held 1972), (9th concluded: Cir. roll, that duplicating player piano analogue era’s recording, of a sound course, may, Rosner appel- not a “use” of the composition “similar” songs, musicians, lants’ when she hires making original roll, and was artists, Instead, and technicians. she therefore the statute. genius steals the and talent of others. Finally, Publishing in Fame Company, She deceives thinking others into Distributors, Inc. v. S & S tapes her represent her' own work. F.Supp. (N.D.Ala.1973), the court “right She has no copy.” likewise concluded provision of- She not continue piracy her fers no duplicators. flag licensing. (Ci- omitted.) tation Against impressive battery ju- authority, dicial appellants offer as their Appellants attempt distinguish Duch- principal weapon Jondora Music Publish- Rosner, grounds ess on the the du- ing Company Melody Recordings, Inc., plicator there, did not tender the two (D.N.J.1972). In holding cent royalty until after she had been duplication is a “similar use” “caught red-handed” in her copying. statute, tected that court commit- is, precisely because she at- ted one of the most legal basic of errors: tempted comply with the compulsory by asking wrong question, got provision arose; question wrong answer. Rather than asking we cannot timing see that of her duplicating whether is a changes tender or taints the issue. “similar use” of the composition, it asked Edward B. Corporation Marks Music performances whether recorded pro- Magnetics, Colorado 497 F.2d 285 tected the Copyright Act. This falla- (10th 1974) (en banc) Cir. arises from a cy clearly is most illustrated in the setting factual even more similar analysis court’s of Duchess: ours, in that defendant’s oper- method of that court be- [9th ation included Circuit] from beginning a lieved that because a musical composi- “royalties” tender of which copyrighted, tion is the unauthorized refused. There the court concluded that reproduction of em- the compulsory provision license means bodied in recording the sound of that that once Marks has licensed one record- composition is, be, ought ing, hibited copyright federal laws. But Magnetics may make its arrange- own that clearly was not the law when ments, hire its own musicians and art- Duchess was per- decided. Neither ists, and then record. It does not formance nor recording copyright- was mean that Magnetics may use the able. F.Supp. 572, (emphasis composer’s copyrighted by dupli- work supplied). cating and copying the record of a li- censed company. Such, in the Duchess court Of view, our is not a similar use. 497 per- with the concerned F.2d infringement formance but Duchess and Marks in copyright turn find in the itself. The support in Aeolian Company v. Royal simply could not distin- Music Roll district court Company, (the recording) 196 F. from (W.D.N.Y.1912), sub- guish form (the composition).2 initial stance construing the reasoning correctly The dissent cites follows this same Goldstein for the 2. The dissent proposition had Jondora and Goldstein Cali- not acted in its reliance on fornia, copyright protection area of 93 S.Ct. sound re- fact, cordings passage fixed before the from Jondo- effective date of In agree completely, quotation 1971 amendment. We the dissent is one ra chosen for but again, misconception inquiry court’s this does not advance our reveals since issue, copy- underlying piotection the issue of since it concerns for sound recordings recordings.” of “mechanical involved in this case. Based, therefore, analysis approach this lead on our surprisingly, Not intent, Congressional cul conceptual statutory language, de into court district considerations, history judicial the policy prior legislative sacs such as the 1971,” ap- we authority, can conclude Recording Amendment “Sound 391). 92-140, That pellants’ Stat. acts not fit within the com- (Public do Law in sound pulsory provision. created amendment recordings after “fixed” 1972; concern with again, court’s II. THE GRANT OF SUMMARY misconcep- this illustrates amendment JUDGMENT concerned underlying issue tion that the than the particular recordings rather challenge also Appellants dis examining In compositions themselves. grant judgment summary trict court’s amendment, history of legislative because of improper as “numerous state- numerous the court unearthed they complicated issues” of fact which “tape piracy” ments to effect argue should have been tried. The al law. The prohibited by was not leged numerous and com may issues copyrights since court concluded plicated, are not material. they Nei before the recordings “fixed” existed in ther their and affidavits below denial statute, duplication date effective deny appellants nor in their brief do legal. was therefore engaged were in the unauthorized duplication appellees’ noting Aside the basic ana from compulso in reliance on the compositions lytical reliance on confusion embodied in ry licensing provision. Their denials of amendment, two criticisms other allegations, example other that their First, the district be made. neither duplication, or that sole is such business by rather nor this court bound oper had established “clandestine legisla impressionistic statements ation,” point. They are beside the ad existing history prior tive as to what a necessary the material mitted facts when, Especially law is this true means. whether, permit the district court to rule here, (63 years) great as deal time law, activity a matter of Congresses elapsed has between two protected; no re material issue of fact Congress involved. views of one “[T]he dispute. mained in adopt the construction of a statute to many years by Summary judgment another Con ed before was therefore little, any, signifi granted, gress ‘very properly if and the district ” cance.’ United States v. Southwestern is therefore 157, 170, 88 Company, Cable Affirmed. (1968) GODBOLD, readily (citation omitted). Judge (dissenting): should Circuit guide to apparent that a more accurate copy- composition Plaintiffs sued as legislative Congressional intent is the not, right and They holders. did could itself; as we history of the 1909 Act not, manufacturers, sue as because the seen, history that the indicates haye 1909 Act created no interest in purposes would be dual of Act recordings composi- sound of musical by to extending protection thwarted duplication. its tions, protection and to extended by

manufacturers the 1971 amendments Second, its recordings reached con- to the Act not reach the does despite judicial precise question inter- question.1 clusion a dearth of The be- pretation; spo- scope had Appeals fore us concerns the Court the amend- to Copyright ken on issue at time afforded the 1909 Act being persons plaintiffs. ment was considered. in the position amendments, February 1. The 1971 effective manufacturer of records which were “fixed” prospective only. protec- prior were No to given by any legislation tion is initially composition copy- Congressional purpose against composer, twofold, protection of and negotiate right right holder’s time, of ar- encouragement at the same his authorized as he wishes with terms expression curbing composer’s music mo- tistic interests licensee. Once the nopolies. protection against pri- invasion of his prematurity vacy against and have been of a Congress feared the creation purpose antimonopoly vindicated the big monopoly in which the giant music implemented by the Act then com- houses, most which owned publishing pulsory licensing Copies scheme. negotiate copyrights, musical large at at made available to world companies great royalty prices composer lower than the recording contracts. exclusive might willing offer and lower over- injurious avoid a music trust To prices composer’s all than the licensee alike, composer still public and might compulsory li- offer. In addition composer in his work protect through censees be the sole means Congress faced. problem ancient, public which the can obtain ex- Goody, Miller v. unprofitable otic and otherwise record- 1956), grounds (S.D.N.Y., rev’d. on other ings which other manufacturers and Shapiro, Co. v. nom. Bernstein & sub production ducers withdraw from (CA2, 1957). Goody, 248 F.2d 260 sale. copyright holder composition The underpinning the majority granted exclusive opinion is the concept that the 1909 Act exclusivity is by U.S.C. § created in the composition copyright permits he records or limited life. Once holder a protectible interest in the un- he his others derlying musical composition, the life of record, others to thereby licenses which interest beyond extends the origi- pay must him under such others nal recording. This judicially-confected arrangement “compulsory license” interest is the response judges (e). rights These were de- subsection copying activities find dis- prevent two distinct abuses: signed to e., tasteful —i. in our enterprise free sys- (1) reproduction where the mechanical tem one ought to be able to “own” what composer yet any perma- does not want composes he and be able to “sell” it on composition, nent of his terms that he can negotiate, and it looks (2) com- use of the without almost like condemnation of property for pensation. H.R.Rep.No.2222, Cong., 60th private use or taking of property with- (1909), reprinted in Rothen- 2d Sess. S. process out due put the fruits of the Law, berg, 9 at 51—52 Copyright C.l § composer’s labor in the copiers hands of for small statutory fee. These eviscer- The impinged upon by interests the al reactions are at times not even con- first abuse are privacy the artist’s and cealed, and the pejorative terms “pi- integrity, right his to credit for his own rates” “parasites” become substi- work, and his desire that there not be tutes for analysis of scope the of the ' premature performances of his protectible incom- interests accorded the plete or unsatisfactory work. These 1909 Act. tected fully interests have been vindicat- The continuing protectible interest copyright ed once the holder records or which the majority find per- was not permits composi- another to by Congress ceived when it was consider- Recording tion. exemplifies ing the Sound Recording Amendments of piece ready public is for consumption (Pub.L. 1971 92-140, No. 391). 85 Stat. prevents others from usurping credit In their discussions members of Congress for its creation. stated that the new legislation was nec- abuse, The second use of the composi- essary loophole because of a in the 1909 tion without compensation, is allowing pirates Act to function without

674 as- the somewhat royalties, as the long so law Violation to those that as tounding is result are met: licensing provisions prior Febru- recordings fixed sound producers pay the the unauthorized If 1972, infringer 15, he is not ary royalty required statutory mechanical only Copyright Act. use of Act for the Copyright he has recorded of that which portion music, Federal is no there Copy- protectible under which to combat currently available remedy Act, respect re- to sound right reproduction unauthorized cordings prior to fixed recording . itself, composition is the musical 2; 92-487, 92-72, 4; p. p. H.R. S.R. to use he is authorized and that Admin.News, 1971, p. Cong. & Code payment upon purposes the oth- All of statutory royalties. (statutory) satisfy who] [Persons original elements contained er the music the owner of (sic) of clam authority he has without record which engage do in wide- can and copyright, copyrightable, not duplicated reproduction of spread unauthorized elements of such other his use hence tapes with- records and phonographic an action give rise to does violating copyright law. Federal out (footnotes infringement. 2; Cong.' & Ad- 92-487, p. U.S.Code H.R. omitted). min.News, 1971, p. 1567. at 431-433. Id. upholding Courts distinction “identical”-“similar” infringement claim of copyright owner’s imple- semantical me seems analyses based by “pirates” have judicial distaste mentation employed in the use” phrase “similar com- gives to the have described. I have held courts 1909 Act. These than monopoly statutory a better poser “identical” duplication is an “pirate” statu- and erodes gave him use, and as such than “similar” rather indirectly Additionally, tory scheme. exception. statutory within the amounts what licensee upon confers Corp. v. Colora B. Marks Music Edward his mechanical exclusive to an Inc., (CA10) Magnetics, 497 F.2d 285 do Congress acted right which recording, a 3017 filed 43 (petition for cert. U.S.L.W. ground in 1971 on to confer 1974) 73-2006)); (No. July (U.S. non-existent. Stern, 458 F.2d Corp. Music Duchess nom. Rosner (CA9), cert. denied sub 1305 agree I with Professor Nimmer. I. Corp., Duchess Music reasoning would follow the used sev This ex 34 L.Ed.2d eral courts that have denied or wished to analysis has been ceedingly technical deny relief by many commenta subject to criticism Music Publishing holders. See Jondora See, Nimmer, e.g., The Law of J. tors. Melody Recordings, Co. at 429— 108.46—108.4621 Copyright, §§ (D.N.J., 1972), 362 F.Supp. F.Supp. 434.1 (D.N.J., 1973), F.Supp. Suppose licensee en- (D.N.J., 1973); Tape Mfgs. International is, gages piracy. in record That he Gerstein, (S.D. Ass’n. v. performers not assemble his own Fla., 1972), does grounds, vacated on other a “simi- technicians to make new (CA5, 1974). and Judge 494 25 also F.2d See upon copy- lar” record based the same dissenting Byrne’s opinion in Duchess righted he du- Stern, 1305, work. Instead Corp. Music v. 458 F.2d plicates previously nom., denied, re-records (CA9), 1311 — 1313 cert. sub saving most Corp., authorized thus Music 409 U.S. Duchess Rosner 52, to the manufac- (1972), 847, of the costs attendant L.Ed.2d 88 and 93 34 S.Ct. Assuming such a rec- Judge ture of records. Lewis Ed dissent Chief duly notice of in- pirate Corp. ord serves a v. Colorado Marks Music B. ward use, 285, pays Inc., tent 497 F.2d 291 — 292 Magnetics,

675 2006)). Jondora relies on a broad read- copying, plaintiffs are receiving all California, 412 ing of Goldstein to which they are entitled. Their com- 546, 2303, (1973), 37 163 plaint 93 S.Ct. L.Ed.2d is Congress for not giving them support its conclusions. In Goldstein a broader statutory monopoly. upheld anti-piracy a California Court may argue piracy Plaintiffs harm covering recordings made before statute ar- public through discouragement 1971 Amendments’ effective date. expression encouragement tistic , correctly that the ab- Jondora reasoned by causing monopolies small record com- preemption sence federal could result panies collapse profits sapped only legislation if no had federal been by allegations pirates. Even if these against pi- provide remedy enacted to a evidence, plaintiffs’ supported by were rates. position improved, would not be Thus, 15, 1972, pre-February allege is no harm to themselves. This law, where the States are free very flaw which barred consideration grant equivalent what is the of state pri- complaint of the A in Sierra Club. protection, it clear that party pub- vate cannot seek redress copy- exercised its Congress has not private injury allegation lic absent an powers. plaintiffs’ . . [I]f and individuated harm. the view Duchess view—and have no plaintiffs I Thus conclude sound, is, that me- Court—were standing. standing, But if do have recordings enjoyed chanical they are not entitled to relief.3 before

15, 1972, no would there be action,

need for state state action barred, would since felt view that a na- indicated its necessary, policy

tional uniform piecemeal state-by-state ap- proach. al., Plaintiffs, Rudolph et SWEET at 493. Rhyne al., Eddie et my ultimate result of view is Plaintiffs-Appellants, plaintiffs standing have not established sue, prerequisite plain- A to relief.2 allege tiff showing must facts that he is etc., al., etc., CHILDS, et Robert E. adversely affected defendant’s acts. Defendants-Appellees. Morton, Sierra Club v. 405 U.S. 1361, 636, (1972); S.Ct. L.Ed.2d No. 73-3842. Association of Processing Data Service Appeals, Court of United States Organizations, Camp, Inc. v. Fifth Circuit. 150, long So as defendants tender the statu- Jan. 1975. tory fee, plaintiffs do any inju- not show judicially cognizable

ry. Although copiers’ actions plaintiffs, offensive to

might higher royalties earn but for 2. such as this. tional standing erence Broadcasting I have been unable prerequisite own motion. L.Ed. standing, any Co., 351 U.S. 192, 197, 76 S.C.t. reported the court may inquire parties to find a discussion United States since have made opinion of a case jurisdic Storer into ref more Jondora Music pouse. 74 — 1241. Circuit cordings, Since ably than in a two-one this dissent Judge 506 F.2d Publishing I Gibbons’ position which prepared Co. v. Melody Re dissent CA3, 1974, No. has expresses reversed Third I es

Case Details

Case Name: Fame Publishing Co., Inc. v. Alabama Custom Tape, Inc.

Court Name: Court of Appeals for the Fifth Circuit

Date Published: Jan 31, 1975

Citation: 507 F.2d 667

Docket Number: 74-1200

Court Abbreviation: 5th Cir.