hereinabove mentioned *** a further sum, not to exceed three times the amount provided by" section 1(e).

Questions naturally arise whether different meanings were intended by the use of different phraseology. For example, the scope of protection under section 1(e) is defined in three ways: "any form of record in which the thought of an author may be recorded and from which it may be *** reproduced"; "parts of instruments serving to reproduce mechanically the musical work"; "mechanical reproduction." The last two, unlike the first, contain the qualifying adverb "mechanically" or adjective "mechanical." An additional definition of scope of protection is found in section 101 (e): "interchangeable parts, such as disks, rolls, bands, or cylinders for use in mechanical music-producing machines." Here, again, is found the qualifying adjective "mechanical," and, in addition, some elaboration of the term "parts" ("disks, rolls, bands or cylinders") and the additional qualification that such parts be "interchangeable," a requirement lacking from section 1(e). The compulsory license provision uses only the phraseology of the second definition of scope of protection in section 1(e): "parts of instruments serving to reproduce mechanically the musical work." 48

Different phraseology is used to indicate when the compulsory license, and implementing, provisions come into operation. Thus, under section 1(e), the compulsory license provision becomes operative when the owner has used or "permitted or knowingly acquiesced" in the use of the work upon parts, etc., while the owner must file a notice of use where he uses or "licenses" the manufacture of parts, etc. The specific remedies of section 101 (e) are applicable whenever the owner has used or "permitted" the use of the work upon parts,

etc.

While the language of section 1(e) seems to be directed against the making of records, the control of parts or reproductions, and the manufacturer of parts, section 101 (e) provides specific remedies for the unauthorized "use, manufacture, or sale."

The statutory royalty rate is 2 cents per composition per "part," without any definition of "part." If the same composition is on two sides of a disk, the question naturally arises whether the disk or each side is a "part." In this connection, section 101 (e) refers to "parts, such as disks."

Section 1(e) recognizes the right "to make any arrangement" of a musical composition "or of the melody of it in any system of notation" from which it may be read. Since section 1(b) has already recognized the right to arrange or adapt a musical work, it can be contended that the reiteration of the right of arrangement in section. 1(e) was intended to permit the reasonable exercise of such right as incident to the making of parts under the compulsory license provision of that subsection.

48 See p. 54, infra. Neither the cases, the congressional report recommending passage of the 1909 act, nor subsequent amendments appear to distinguish between recording rights and mechanical reproduction rights. H. Rept. No. 2222, 60th Cong., 2d sess., pp. 4-9 (1909); 68 Stat. 1030, 17 U.S.C. 9(c) (1) (Supp. 1955).

Under section 1(e) nonpayment of the 2-cent royalty per part manufactured might result in an award for the amount of such royalty and in addition a sum not exceeding three times such amount. Whether this maximum award under section 1(e) is three or four times the amount of the statutory royalty is questionable, presumably the former judging by occasional references to treble recovery and 6 cents.49 Section 101 (e) permits a recovery of the statutory royalty and, where the person has failed to file the required notice of intention to use, in addition thereto, a further sum not to exceed three times the amount provided in section 1(e). Again, there is a problem of construction as to whether this further sum is limited to three times the statutory royalty, or three times the amount of maximum recovery under section 1(e). If the latter, and such maximum recovery under section 1(e) is either three or four times the amount of the statutory royalty, then the overall recovery, under both sections 1(e) and 101 (e), could total 12 or 16 times the statutory royalty.

C. JUDICIAL AND ADMINISTRATIVE CONSTRUCTION OF PRESENT PROVISIONS

Except for the relocation of the semicolon in section 1(e) in 1947 50 to separate the provision relating to public-performance-for-profit rights from the provisions relating to recording and mechanical reproduction rights and the change of numbering of section 25 (e) to 101 (e),51 the foregoing statutes have remained the same since 1909.52

51

Section 1(e) is, of course, the fifth and final subsection of section 1 of the copyright law, which enumerates the exclusive rights as to copyrighted works. Section 1(e) consists of three paragraphs, all limited to musical compositions. The first clause confirms publicperformance-for-profit rights, which are limited by the so-called "jukebox" exception of the third and final paragraph of section 1(e). The second clause, after a second reference to the right of arrangement,53 and of the balance of the first and second paragraphs of section 1(e) relate to recording and mechanical reproduction rights.

54

Under the first paragraph of section 1(e) (subsequent to the first clause), the proprietor of the copyright of a musical composition," written by an American author or a foreign author whose country grants similar rights to U.S. citizens as evidenced by a Presidential

See note 65, infra.

See note 47, supra.

Act of July 30, 1947 (61 Stat. 652).

For clause-by-clause analysis of the compulsory license provisions, see Evans, "The Law of Copyright and the Right of Mechanical Reproduction of Musical Compositions" in Third Copyright Law Symposium 113, at pp. 118-131 (1940).

The second clause can be said to embrace two distinct rights: (1) the right to make any arrangement or setting of the musical composition or the melody thereof in any system of notation from which it may be read, and (2) the right to make any form of record from which it may be reproduced. Sec. 1(b) previously recognizes the right to arrange or adapt a musical work. Howell, "Copyright Law." 148 (3d ed. 1952).

The term "musical compositions" is defined by the Regulations of the Copyright Office (37 Code Fed. Regs., sec. 202.6 (1955)) as follows:

202.6 Musical compositions (Class E). This class includes all musical compositions (other than dramatico-musical compositions), with or without words, as well as new versions of musical compositions, such as adaptations, arrangements and editings, when such editing is the writing of an author."

proclamation,55 originally 56 copyrighted, either as a published or unpublished work,57 after July 1, 1909, enjoys, as part of the copyright, the exclusive right to record and make mechanical reproductions thereof.58 The proprietor need not exercise nor authorize the exercise of such rights. However, if the proprietor does exercise or authorize the exercise of mechanical reproduction rights, any other person may,

"Proclamations, Conventions, and Treaties Establishing Copyright Relations Between the United States of America and Other Countries" (Copyright Office, May 1956); "International Copyright Relations of the United States of America" (Department of State. revised as of Jan. 20, 1955); 29 Ops. Att'y Gen. 64 (1911). The Universal Copyright Convention (see pp. 43-44, infra), and implementing legislation (act of Aug. 31. 1954. 68 Stat. 1030, effective Sept. 16, 1955); 17 U.S.C. 9(c) (Supp. 1955) eliminates the sec. 1(e) requirement of reciprocal treatment with respect to mechanical reproduction rights (since the Convention is based on national treatment) and of special proclamations so far as musical compositions which have qualified for protection under the Convention are concerned. Sec. 1(e), defining authors whose copyrighted musical compositions are entitled to recording and mechanical reproduction rights, is to be distinguished from the differently worded sec. 9, defining the authors whose works are eligible for statutory copyright. Compare G. Ricordi & Co. v. Columbia Graphophone Co., 258 Fed. 72 (S.D.N.Y. 1919), overruling 256 Fed. 699 (S.D.N.Y. 1919), with Leibowitz v. Columbia Graphophone Co., 298 Fed. 342 (S.D.N.Y. 1923). See also H. Rept. No. 2222, 60th Cong., 2d sess., p. 9 (1909). 50 Sec. 1(e) became effective July 1, 1909, and was not retroactive. M. Witmark & Sons v. Standard Music Roll Co., 213 Fed. 532 (D.N.J. 1914), aff'd, 221 Fed. 376 (3d Cir. 1915). The date of original copyrighting controls. Musical compositions originally copyrighted prior to July 1, 1909, are not protected against recording and mechanical reproduction as the result of renewal of copyright subsequent to that date. E. B. Marks Music Corp. v. Continental Record Co., 120 F. Supp. 275, on rearg., 100 U.S.P.Q. 446 (S.D.N.Y. 1954), aff'd, 222 F. 2d 488 (2d Cir. 1955), cert. denied, 350 U.S. 861, 76 Sup. Ct. 101, 100 L. Ed. 69 (1955). Rejecting the contention that renewal, since a "new estate,' a "new copyright" for purposes of sec. 1(e), the court stated (222 F. 2d at 491): "We think the words above quoted from the proviso to sec. 1(e) are clearly destructive of the plaintiff's contention that Congress intended that the mechanical reproduction of a song, which for years had been in the 'public domain,' may, by renewal, be fenced into a monopolistic field."

was

See also Jerome v. Twentieth Century Fox-Film Corp., 67 F. Supp. 736, 741-742 (S.D.N.Y. 1946), aff'd on other grounds per curiam, 165 F. 2d 784 (2d Cir. 1948):

"Assuming that plaintiff's copyright does not include the mechanical reproduction rights because the original copyright was obtained in 1896, almost 13 years prior to July 1909, that does not support defendant's argument that the renewal of the copyright in 1923 did not carry with it the motion picture rights."

See also 58 F. Supp. 13, 15 (S.D.N.Y. 1944). Renewal results essentially in a new copyright, distinct from the original copyright. G. Ricordi & Co. v. Paramount Pictures, Inc., 189 F. 2d 469 (2d Cir. 1951); cf. note 56 supra. The renewal copyright is "free and clear of any rights, interests, or licenses attached to the copyright for the initial term." Fitch v. Schubert, 20 F. Supp. 314, 315 (S.D.N.Y. 1937); Silverman v. Sunrise Pictures Corp., 273 Fed. 909 (2d Cir. 1921), cert. denied, 262 U.S. 758, 43 Sup. Ct. 705, 67 L. Ed. 1219 (1923); Southern Music Pub. Co. v. Bibo-Lang, Inc., 10 F. Supp. 972 (S.D.N.Y. 1935). Quaere, as to the effect of renewal on licenses, negotiated or compulsory, under the original copyright. See note 230 infra.

57 Musical compositions (music or words and music, but not words alone) (see note 54 supra) may be copyrighted as published works or unpublished works (that is, works not reproduced for sale). See note 235 infra. The word "published," as used in sec. 1(e), has been construed as including unpublished as well as published works. Shilkret v. Musicraft Records, 131 F. 2d 929 (2d Cir. 1942). Cf. Marx v. United States, 96 F. 2d 204 (9th Cir. 1938). But see Leibowitz v. Columbia Graphophone Co., 298 Fed. 342 (S.D.N.Y. 1923).

58 This right obviously embraces recording and mechanical reproduction methods known in 1909, e.g., records, disks, and cylinders for phonographs; rolls for player-pianos. It has never been seriously urged that subsequently developed methods, such as long-playing records, electrical transcriptions, tape and wire recordings, were not covered. Some question, however, has been raised with respect to use in sound motion pictures, so-called "synchronization rights." Early sound films used a record on a turntable synchronized with the film ("Vitaphone"). Today the sound is reproduced by a sound track on the film itself ("Movietone"). See Jerome v. Twentieth Century-Fox Film Corp., 67 F. Supp. 736, 741 (S.D.N.Y. 1946) (stating sound track on film is not type of "mechanical reproduction" to which sec. 1(e) applies), aff'd on other grounds per curiam, 165 F. 2d 784 (2d Cir. 1948), criticized in Dubin, "Copyright Aspects of Sound Recordings," 26 So. Calif. L. Rev. 139, at 147-149 (1953). Cf. Foreign & Domestic Music Corp. v. Licht, 196 F. 2d 627, 629 (2d Cir. 1952); Encore Music Publications, Inc. v. London Film Productions, Inc., 89 U.S.P.Q. 501 (S.D.N.Y. 1951); Foreign & Domestic Music Corp. v. Michael Wyngate, Inc., 66 F. Supp. 82 (S.D.N.Y. 1946); Famous Music Corp. v. Melz, 28 F. Supp. 767, 769 (W.D. La. 1939) (dictum). Cf. L. C. Page & Co. v. Fox Film Corp., 83 F. 2d 196, 199 (2d Cir. 1936) (copyright of motion picture held to protect music on sound track). Quaere, as to kinescope recordings,. See pp. 13-14, supra, 51-52, infra.

under the compulsory license provision, make "similar use" 5 of the musical composition upon payment by the manufacturer to the proprietor of a royalty of 2 cents "on each such part manufactured," 60 and the proprietor is required to file a notice of use in the Copyright

See 2 Ladas, "The International Protection of Literary and Artistic Property," pp. 790-791 (1938):

Thus, not only the same, but a similar use may be made by other persons. This should mean that use by the owner on phonograph records would involve permission for use by others on rolls of piano players."

In

Textually, sec. 1(e) is capable of the construction that protection to the copyright owner thereunder renders unlawful the making of recordings, whether known in 1909 or subsequently developed, including mechanical reproductions known in 1909 (i.e., disks, rolls, bands, cylinders); that the compulsory license provision comes into operation only upon the owner's making or authorizing the making of mechanical reproductions known in 1909; and that the "similar use" permitted under compulsory license must, by way of further limitation, be the same type of such mechanical reproduction, thus excluding (by strict construction since the clause is in derogation of the composer's rights) such post-1909 uses as electrical transcriptions and tape and wire recordings for radio broadcasting, kinescope, and television tape recordings for telecasting, and synchronization of sound film by means of disks or sound tracks. Accordingly, even if use on motion picture sound tracks be proscribed by sec. 1(e), it does not necessarily follow that the compulsory license provision would ever apply to permit use on sound tracks, whether the Copyright owner permitted use on disks, sound tracks, or otherwise. Cf. Dubin, "Copyright Aspects of Sound Recordings," 26 So. Calif. L. Rev. 139. 147-148 (1953). connection with the enjoyment of a compulsory license, some latitude is allowed manufacturers to prepare individual instrumental or vocal arrangements of the composition. Edward B. Marks Music Corp. v. Foullon, 79 F. Supp. 664 (S.D.N.Y. 1948), aff'd, 171 F. 2d 905 (2d Cir. 1949). Furthermore, under a compulsory license, the words of the musical composition may not be used. F. A. Mills, Inc. v. Standard Music Roll Co., 223 Fed. 849 (D.N.J. 1915), aff'd, 241 Fed. 360 (3d Cir. 1917). But see M. Witmark & Sons v. Standard Music Roll Co., 213 Fed. 532 (D.N.J. 1914), aff'd, 221 Fed. 376 (3d Cir. 1915). Nor may the composition be publicly performed for profit by means of any record made under a compulsory license. Irving Berlin, Inc. v. Daigle, 31 F. 2d 832 (5th Cir. 1929); Famous Music Corp. v. Melz, 28 F. Supp. 767 (W.D. La. 1939); Associated Music Publishers, Inc. v. Debs Memorial Radio Fund, Inc., 46 F. Supp. 829 (S.D.N.Y. 1942). Contrariwise, if an exhibitor has a public-performance-for-profit license covering the music composition, a motion picture with a sound track which infringes such composition may be exhibited without making the exhibitor an infringer. Foreign & Domestic Music Corp. V. Licht, 196 F. 2d 627 (2d Cir. 1952). Persons desirous of making recordings or other uses of the work may always attempt to negotiate a license with the copyright owner in cases where the availability of the compulsory license provision is doubtful. See pp. 51-52, infra.

The term "part" refers to the statutory phrase, "parts of instruments serving to reproduce mechanically the musical work," which codified the ruling of the U.S. Supreme Court in White-Smith Music Publishing Co. v. Apollo Co., 209 U.S. 1, 28 Sup. Ct. 319, 52 L. Ed. 655 (1908), that a pianola roll, since incapable of being read, was not a "copy" but a part of a mechanical music-producing machine. Verified reports and royalty payments may be required by the copyright proprietor on the 20th day of each month on the "number of parts" manufactured during the previous month. Two cents per part was thought in 1909 to be equivalent to 5 percent of the manufacturer's selling price, and a "reasonable royalty" and “adequate return" to the composer. H. Rept. No. 2222, 60th Cong., 2d sess., pp. 6, 7 (1909). Quaere, in the case of two or more compositions on the same "part," whether the royalty was intended to be 2 cents per composition, or, if two cents in toto, how it was intended to be allocated; in the case of disks or tapes, whether each side thereof or the whole is a "part." See p. 14, supra. It has been contended that the royalty should be based on parts sold, not on parts manufactured. 37 Music Trades 6 (Mar. 13, 1909). Although the royalty is at the same rate for all compositions, the statutory royalty provision calls for returns to composers based theoretically on manufacturer's estimates of prospective sales. and hence is automatically geared to public acceptance. Payment of the royalty cannot be avoided by going through the final manufacturing step outside the United States. G. Ricordi & Co. v. Columbia Graphophone Co., 258 Fed. 72 (S.D.N.Y. 1919) (disk records made and sold in Canada held subject to statutory royalty as "manufactured" in United States since first eight of nine manufacturing steps occurred in United States. For the Canadian law since 1921, see p. 38, infra. Application of the statutory royalty rate for long-playing records, tape and wire recordings, motion picture sound tracks, etc., obviously creates difficulty, especially in the case of longer musical compositions. If, say, 500 positive prints of a sound motion picture were made to supply exhibition demands, the producer, at the statutory royalty rate, would pay only $10 per musical composition recorded on the sound track. See Jerome v. Twentieth Century Fox Film Corp., 67 F. Supp. 736, 741 (S.D.N.Y. 1946), aff'd on other grounds per curiam, 165 F. 2d 748 (2d Cir. 1948). The payment of the royalty does not compensate for public performance for profit of the recorded musical composition; permission for such performance must be obtained by actual license.

61

Office. The proprietor's failure to file such notice of use constitutes a complete defense to any suit, action, or proceeding for an infringement of the recording or mechanical reproduction rights.62

Remedies for infringement of recording or mechanical reproduction rights in musical compositions are outlined in various sections of the copyright law. Where the copyright proprietor has not exercised or permitted the exercise of mechanical reproduction rights, and the compulsory license provision, therefore, does not come into operation, the general remedies of sections 101 (a)-(d), 104, 106, 108-112, 115-116 of the copyright law, so far as relevant, apply. However, where the mechanical reproduction rights have been duly exercised, thereby activating the compulsory license provision, specific remedies are set forth in sections 1(e) and 101 (e). These sections are not consistent in terminology or in substance, as pointed out above.63 The second paragraph of section 1 (e) provides:

In case of failure of such manufacturer to pay to the copyright proprietor within thirty days after demand in writing the full sum of royalties due at said rate at the date of such demand, the court may award taxable costs to the plaintiff and a reasonable counsel fee, and the court may, in its discretion, enter judgment therein for any sum in addition over the amount found to be due as royalty in accordance with the terms of this title, not exceeding three times such amount.

These provisions are somewhat restated in the first half of section 101 (e):

SEC. 101. *** (e) ROYALTIES FOR USE OF MECHANICAL REPRODUCTION OF MUSICAL WORKS.-Whenever the owner of a musical copyright has used or permitted the use of the copyrighted work upon the parts of musical instruments serving to reproduce mechanically the musical work, then in case of infringement of such copyright by the unauthorized manufacture, use, or sale of interchange able parts, such as disks, rolls, bands, or cylinders for use in mechanical musicproducing machines adapted to reproduce the copyrighted music, no criminal action shall be brought, but in a civil action an injunction may be granted upon such terms as the court may impose, and the plaintiff shall be entitled to recover in lieu of profits and damages a royalty as provided in section 1, subsection (e), of this title: Provided, also * *

Then follows the proviso which constitutes the second half of section 101 (e) to the effect that whenever any person intends to rely upon the compulsory license provision, he must serve notice of such

61 The notice of use should be filed on Form U, either with or after the application for copyright registration of the composition, and should be accompanied by the $2 recordation fee for a notice containing five titles or less, plus 50 cents for each title over five. The copyright registration numbers, dates of publication or registration, and names of authors should be given as well as the correct titles of the compositions. Copyright Office Circular No. 5 (March 1954). In the fiscal year 1955, almost 8,000 notices of use were filed. Annual Report of the Register of Copyrights for the Fiscal Year Ending June 30, 1955, p. 11. Such notice-of-use requirement, since not a condition of the copyright but a procedural prerequisite to enforcement, is not affected by the Universal Copyright Convention. Cary, "The United States and Universal Copyright: An Analysis of Public Law 743" in "Universal Copyright Convention Analyzed," pp. 100-101 (1955); Sherman, "The Universal Copyright Convention: Its Effect on United States Law," 55 Colum. L. Rev. 1137, 1155 (1955).

Although the statute provides that the proprietor's failure to file the notice of use shall be a complete defense to any suit, action, or proceeding for any infringement of such copyright, the courts have limited the defense to claims of infringement of mechanical reproduction rights, treating the latter as the antecedent of such copyright. Lutz v. Buck, 40 F. 2d 501 (5th Cir. 1930); Irving Berlin, Inc. v. Daigle, Irving Berlin, Inc. v. Russo, 31 F. 2d 832 (5th Cir. 1929), rev'g 26 F. 2d 149, 150 (E.D. La. 1928) (public performance for profit) F. A. Mills, Inc. v. Standard Music Roll Co., 223 Fed. 849 (D.N.J. 1915), aff'd, 241 Fed. 360 (3d Cir. 1917) (copying of words). The statute failed to incorporate the provisions of some five earlier bills that each of the rights given the copyright proprietor be treated as a "separate estate." See note 43 supra; see also note 56 supra. 3 See pp. 14-15, supra.