White-Smith Music Publishing Company v. Apollo Company

WHITE-SMITH MUSIC PUBLISHING COMPANY v. APOLLO COMPANY.

APPEALS FROM AND CERTIORARI TO THE CIRCUIT COURT OF APPEALS FOR THE SECOND CIRCUIT.

Nos. 110, 111.⁠Argued January 16, 17, 1908.—Decided February 24, 1908.

While this court is not bound under the doctrine of stare decisis by the decisions of lower Federal courts which have not been reviewed by this court, as to the construction of a Federal statute, or by the decisions of the highest courts of foreign countries construing similar statutes of those countries, where all of such decisions express the same views on the subject involved, the omission of Congress, when subsequently amending the statute, to specifically legislate concerning that subject may be regarded by this court as an acquiescence by Congress in the judicial construction so given to the statute.

While the United States is not a party to the Berne Copyright Convention of 1886, this court will hesitate to construe the copyright act as amended March 3, 1891, in such manner that foreign authors and composers can obtain advantages in this country which, according to that convention, are denied to our citizens abroad.

What is included within the protection of the copyright statute depends upon the construction of the statute itself, as the protection given to copyright in this country is wholly statutory.

The amendment of § 4966, Rev. Stat., by the act of January 6, 1897, 29 Stat. 481, providing penalties for infringements of copyrighted dramatic or musical compositions, did not enlarge the meaning of previous and unamended sections.

A "copy" of a musical composition within the meaning of the copyright statute is a written or printed record of it in intelligible notation and this does not include perforated rolls which when duly applied and properly operated in connection with musical instruments to which they are adapted produce the same musical tones as are represented by the signs and figures on the copy in staff notation of the composition filed by the composer for copyright.

The existing copyright statute has not provided for the intellectual conception, even though meritorious, apart from the thing produced; but has provided for the making and filing of a tangible thing against the duplication whereof it has protected the composer.

Considerations of the hardships of those whose published productions are not protected by the copyright properly address themselves to Congress and not to the courts.

147 Fed. Rep. 226, affirmed.

 

The facts are stated in the opinion.

 

Argument for Appellant

Mr. Livingston Gifford for appellant:

Appellant's interpretation is in accord with the policy of the law and appellee's interpretation is not. The policy of the law is to protect the author against every form of piracy without distinction, and the piracy of a musical composition by reproducing and selling it in the form of perforated music is just as culpable as in any other form.

The Constitution purports to secure to authors "the exclusive right to their respective writings," and it is obviously not compatible with this to protect them only against the sale of their writings in a form which requires no assistance of mechanism for reading.

As this interpretation is the only one which will carry out its policy, the statute should certainly be so interpreted, unless such interpretation is inconsistent with its terms or with the terms of the Constitution.

Article I, § 8 of the Constitution, as interpreted by the decisions, is broad enough to include perforated music.

See the copyright law in which Congress has included as writings (§ 4952), books, maps, charts, dramatic or musical compositions, engravings, etc. In principle we ask for no broader interpretation here. And see also Lithograph Co. v. Sarony, 111 U.S. 53; Holmes v. Hurst, 174 U.S. 86; Bleistein v. Donaldson Co., 188 U.S. 239; American Mutoscope Co. v. Edison Co., 137 Fed. Rep. 262.

The mutuality of the contract which the Constitution evidently contemplates between the Government, on the one hand, and the author or inventor on the other, also leads to the same conclusion.

If an author has among his writings a musical composition, the only possible way of “securing” to him the “exclusive right” thereto is by giving him the monopoly of this musical composition, no matter in what form it may be represented; otherwise, he gets only a partial exclusive right thereto. No composer can be truly said to have “the exclusive right” to his musical composition writings secured to him so long as others have the right to publish, and sell them without his consent, in the form of perforated music.

“Musical composition,” the term of the statute under which this case comes, is broad enough to include perforated music.

As applicable to this case, the right conferred by the statute is the “sole liberty of printing, reprinting, publishing, completing, copying, executing, finishing and vending” the “musical composition.” The undeniable policy of the law is to cover all forms of piracy.

This court has substantially decided that the subject of property in a copyrighted musical composition is the order of the notes in the author’s composition, by adopting in Holmes v. Hurst, 174 U.S. 86, Mr. Justice Erle’s definition of the subject of property in a book or literary composition as being “the order of the words in the author’s composition.” And the same thing must also be true as to the notes of a musical composition. The only thing that has to be copied to constitute a copy of the copyright property is the order in which the notes were set down.

Appellee’s witnesses admit that in making the infringing perforated music they copy the order of the notes.

It is immaterial that in the year 1831, when the term “musical composition” was first placed in the copyright statute the perforated form of musical compositions was not known. See Edison v. Lubin, 122 Fed. Rep. 240, holding that while the advance in the art of photography has resulted in a different type of photograph, yet it is none the less a photograph.

So, as to music, while the perforated notation is a different type of notation, yet it is none the less a “musical composition;” none the less a perfect record, and none the less a “writing.”

Where the order of the notes or words is copied, infringement of literary or musical compositions is not avoided by variations in other respects. Jollie v. Jacques, 1 Blatch. 625; Blume v. Spear, 30 Fed. Rep. 631; Daly v. Palmer, 6 Blatch. 266; Nicols v. Pitman, 26 Ch. Div. 374; Edison v. Lubin, 122 Fed. Rep. 240; Fishel v. Leuckel, 53 Fed. Rep. 499; Falk v. Howell, 37 Fed. Rep. 202; Falk v. Donaldson, 57 Fed. Pep. 32; Turner v. Robinson, 10 Ir. Ch. 121, 510; Drone on Copyright, 385; Scrutton on Copyright, ed. 1903, 135, note.

The meaning of “musical composition” in § 4952, must be read in the light of its manifest meaning in § 4966 wherein it is the subject of protection against public performance.

The prohibition of the public performance of a copyrighted “musical composition” is the prohibition of the public reproduction of that order or succession of notes which constitutes the composition. It is the musical composition that is publicly performed, and not a sheet of music.

Public performance is prohibited, whether or not any notation or record be used. And it cannot be questioned that a performance in public of a musical composition upon an Aeolian organ or pianola, by means of perforated music, would be as much a public performance of a musical composition as if it had been played in public from a printed sheet of music in staff notation, and as such would be equally within the condemnation of the statute, provided the musical composition had been copyrighted. One who, like the appellee, sells the musical composition is a contributory infringer with the infringer under § 4952 who plays it in public.

Readability by the person without mechanical assistance is not made a test of copyrightability or of infringement by the statute. So long as it can be read or reproduced in any way, it makes no difference what assistance the person calls in from means known in the art.

Whether a musical composition, in addition to the musical function performed by the order of its notes, does, or does not, perform also a mechanical function is not made a test of copyrightability or of infringement by the statute.

It is impossible to say that the order of the perforated notes is the mere adjunct of a valve mechanism, because the valve mechanism would work with the perforations in .whatever order. It is not the machine that puts or requires the perforations in this order, but the appellee.

There is no controlling authority opposed to complainant’s contention. The two decisions in this country relied upon by the appellee are neither binding upon this court nor apposite to the facts disclosed by this record. Kennedy v. McTaremany, 33 Fed. Rep. 584, and Stern v. Rosey, 17 App. D.C. 562, discussed and distinguished. The English decision of Boosey v. Whight, L. R. 1900, 1 Ch. 122, was based upon the narrow wording of the English statute, and in view of the amendment of that statute in 1902, can no longer be regarded as authority, even in England.

Argument for Appellee

Mr. Charles S. Burton and Mr. John J. O’Connell for appellee:

Copyright is strictly statutory in the United States. If a common law right ever existed it was taken away by the statute of Anne, and that statute and those amendatory of it are now in England the only source of an author’s right. There never existed any common law right of copyright in the United States. Copyright in this country is the creature of statute pure and simple. Wheaton v. Peters, 8 Pet. 591, see p. 664 quotation; Banks v. Manchester, 128 U.S. 244; Thompson v. Hubbard, 131 U.S. 123.

Existing by virtue of statute only, the limitations of copyright are those which the statute fixes, or, more accurately speaking, its extent is only that which the statute gives. Ewer v. Coxe, Fed. Cases 4,584; S. C., 4 Wash. C. C. 487; Holmes v. Hurst, 174 U.S. 82; Perris v. Hexamer, 99 U.S. 674.

The statutes creating and covering copyright must be strictly construed in all respects. Banks v. Manchester, 128 U.S. 244; Bolles v. Outing Co., 175 U.S. 268.

Departure from this rule of strict construction cannot be justified on the ground of extending the statute by analogy from things expressed, to things thought to be similar; or from rights named, and defined in respect to named subjects, to analogous rights in respect to subjects thought to be analogous.

As the legislature alone created the right and set its bounds in the first instance, so the legislature may, as civilization and art develop and the considerations governing legislative discretion change, extend or contract those bounds from year to year and from generation to generation, but as the creation of the right waited, so the extension, as much as its contraction, must wait upon the legislative act.

If the invention of automatic musical instruments and the graphophone have opened new fields and methods for the exploitation, promulgation, or what may be called “publication” of musical compositions which did not exist or were not in contemplation of the legislature when the present statutes were enacted, it is not for the courts to enter the domain of legislation to weigh the considerations either of equity or expediency which might move for er against such proposed extensions. All arguments directed to the supposed reasonableness of treating copyright as covering automatic means of audible reproduction of speech and music are utterly irrelevant and beside the question. See Osgood v. Aloe Instrument Co., 69 Fed. Rep. 291; Higgins v. Keuffel, 140 U.S. 428; Werckmeister v. American Lithograph Co., 117 Fed. Rep. 360; Tompkins v. Rankin, Fed. Cases, 14,090; Thompson v. Hubbard, 131 U.S. 123; Littleton v. Oliver Ditson Co., 62 Fed. Rep. 597, affirmed, 67 Fed. Rep. 905; Wood v. Abbott, Fed. Cases, 17,938; Hills v.

Austrich, 120 Fed. Rep. 862.

Musical compositions mentioned as the subject of copyright are tangible and legible embodiments of the intellectual product of the musician, and not the intangible intellectual product itself.

“Copies” which infringe a musical copyright must be tangible embodiments of the intellectual product of the composer in the same sense and for the same purpose as tangible embodiment which constitutes the copyrighted “musical composition.”

The primary use and adaptation of the thing determines its copyrightability or infringement of copyright. Intention as to use is material and may be controlling.

Things intended for mechanical function—for use in themselves—will not infringe copyright, and are not copyrightable merely because of incidentally being able to perform some part of the function of things copyrightable. Baker v. Selden, 101 U.S. 99; Amberg File Co. v. Shea, 82 Fed. Rep. 314, aff’g 78 Fed. Rep. 429; Rosenbach v. Dreyfuss, 2 Fed. Rep. 217.

The protection designed to be afforded to the composer by copyright of a musical composition is only the monopoly of the multiplication and selling of copies, and this applies to musical compositions as it does to all other subjects of copyright.

As to this definition of the monopoly see Stephens v. Cady, 14 How. 529; Stowe v. Thomas, Fed. Cases, 13,514; Lawrence v. Dana, Fed. Cases, 8,136; Perris v. Hexamer, 99 U.S. 674.

That perforated sheets and other mechanical means of automatically producing music audibly are not infringements of copyrights upon the musical compositions which are thus audibly reproduced, has been the conclusion of every court of England and America before which this question has ever come for decision. Stern v. Rosey, 17 App. D.C. 562; Kennedy v. McTammany, 33 Fed. Rep. 584; Boosey v. Whight, 15 L. T. R. 322 (1899); 1 Ch. 836 (1899); 80 L. T. R. (N. S.) 561.

These prior decisions have established a rule of property and of business, and should be sustained under the doctrine of stare decisis, unless greater injury would result from sustaining than from reversing them. Every enactment of Congress is properly interpreted by reference to established public policy and then known existing conditions.

The existence at the time of the enactment of the United States copyright law of 1891, of the Berne convention of 1886 compels the conclusion that said law of 1891 was not intended by Congress to subject perforated rolls to copyright.

Participation of Amici Curiae

By leave of court, the following briefs were filed in these cases on behalf of parties interested in the decision:

By Mr. Nathan Burkan for Victor Herbert sustaining the contentions of the appellant.

By Mr. Albert H. Walker for the Connorized Music Company; by Mr. George W. Pound for the De Kleist Musical Instrument Manufacturing Company and the Rudolph-Wurlitzer Company, sustaining the contentions of the appellee.