intention, by registered mail, upon the copyright proprietor at his last address disclosed by the records of the Copyright Office, sending to the Copyright Office a duplicate of such notice. If this be not done, the proviso goes on to provide that—

the court may, in its discretion, in addition to sums hereinabove mentioned, award the complainant a further sum, not to exceed three times the amount provided by section 1, subsection (e), of this title, by way of damages, and not as a penalty, and also a temporary injunction until the full award is paid.

These provisions have been rarely invoked, and there are few reported cases attempting to construe them.65

Although doubts concerning the constitutionality of the compulsory license provision have been raised from time to time, they apparently have never been seriously urged in any reported litigation.

66

While the copyright law since 1909 has protected, to the extent indicated above, musical compositions against recording and mechanical reproduction, it has not changed the ruling in White-Smith Music Publishing Co. v. Apollo Co. that recordings were not "copies" of the musical composition or "writings" of an author within the scope of the existing copyright statute. Accordingly, the copyright statute

17 U.S.C. 101(e) (1952). No special form is required for such notice of intention to use. Copyright Office Circular No. 5 (March 1954).

"Miller v. Goody, 125 F. Supp. 348 (S.D.N.Y. 1954) (award of damages at three times statutory royalty and impounding matrices pending defendant's filing of notice of intention to use and payment of damages); Edward B. Marks Corp. v. Foullon, 77 U.S.P.Q. 502 (S.D.N.Y. 1948) (award of $333.30 as statutory royalties and damages on 5,555 records, per license agreement, together with costs and attorney's fees), aff'd, 171 F. 2d 905, 907 (2d Cir. 1949): "Moreover, sec. 1(e) allows the judge to triple the royalties against him if he defaults in his payments; and sec. 25(e) does the same if he does not serve upon the owner notice of his intention in advance.' Leo Feist, Inc. v. American Music Roll Co., 253 Fed. 860 (E.D. Pa. 1918) (award of $373.74-equivalent to statutory royalty and $150 counsel fee, and $100 punitive damages for defendant's subsequent failure to report and pay monthly on demand). The only remedies for infringement of recording and mechanical reproduction rights are against the manufacturer under secs. 1(e) and 101 (e); distributors are accordingly not liable. Miller v. Goody, 139 F. Supp. 176 (S.D.N.Y. 1956). See also Foreign & Domestic Music Corp. v. Licht, 196 F. 2d 627 (2d Cir. 1952). (Nonimported motion picture containing sound track infringing musical composition held not subject to seizure in hands of exhibitor licensed to perform composition publicly for profit.)

The constitutional reference to copyright as "the exclusive Right" casts some doubt on the constitutionality of provisions establishing rights lacking in exclusivity, such as compulsory license provisions. Fenning, "Copyright Before the Constitution," 17 J. Pat. Off. Soe'y 379, 385 (1935); Fenning, The Origin of the Patent and Copyright Clause of the Constituiton," 17 Geo. L. J. 109, 116-117 (1929); Weil, "American Copyright Law," pp. 62-65 (1917); DeWolf, "An Outline of Copyright Law," p. 101 (1925). Of course, the recording and mechanical reproduction rights are exclusive, only becoming nonexclusive by the copyright owner's exercise of mechanical reproduction rights, thereby activating the compulsory license provision. The compulsory license was not introduced to impair existing rights but to define rights then being recognized for the first time in the Copyright statute. H. Rept. No. 2222, 60th Cong., 2d sess., p. 9 (1909). But see Evans, The Law of Copyright and the Right of Mechanical Reproduction of Musical Compositions" in Third Copyright Law Symposium 113, at pp. 148-150 (1940); Joiner, "Analysis. Criticism, Comparison and Suggested Corrections of the Copyright Law of the United States Relative to Mechanical Reproduction of Music" in Second Copyright Law Symposium 43, at pp. 66-67 (1940). For one explanation why the constitutionality of the compulsory license provision has not been litigated, at least by copyright owners, see p. 23, infra. Cf. attacks by Representative W. Sterling Cole on the constitutionality of the compulsory license provision of the Atomic Energy Act of 1954 (42 U.S.C., section 2183(e) (Supp. 1955)) on the basis of the constitutional reference to "the exclusive Right" of the inventor: 2 Hearings on S. 3690 and H.R. 9757, 83d Cong.. 2d sess.. p. 658 (1954); 2 U.S. Code Congressional and Administrative News 3487-3491 (1954): 100 Congressional Record A5356, A5358, July 23, 1954; 102 Congressional Record A1903 (daily ed. Feb. 29, 1956). See also Comment: "The Constitutionality of the Patent Provisions of the 1954 Atomic Energy Act," 22 U. of Chi. L. Rev. 920 (1955).

"See note 6 supra; see also Miller v. Goody, 139 F. Supp. 176 (S.D.N.Y. 1956).

68

provides no basis for protecting the recording itself as or the rendition recorded.69

Whether recordings are "writings" in the constitutional sense and hence constitutionally eligible subject matter for Federal statutory copyright protection, should Congress attempt to extend copyright protection to them; 70 whether the public distribution or sale of a recording constitutes publication of the work and/or rendition so as to terminate any common-law rights therein; " and whether a recording is a "copy" which can serve as the medium for securing 72 or perfecting 73 statutory copyright in the recorded work, or which, if published

PP.

68 17 U.S.C. 5 (1952); H. Rept. No. 2222, 60th Cong., 2d sess., p. 9 (1909): Copyright Office Circular No. 5 (March 1954). But see Aeolian Co. v. Royal Music Roll Co., 196 Fed. 926 (W.D.N.Y. 1912), criticized in DeWolf, "An Outline of Copyright Law." 101-102 (1925); note, 5 Stan. L. Rev. 433 (1953). Protection may be available on grounds of unfair competition. Fonotipia Ltd. v. Bradley, 171 Fed. 951 (C.C.E.D.N.Y. 1909). But see G. Ricordi & Co. v. Haendler, 194 F. 2d 914, 916 (2d Cir. 1952); Hebrew Publishing Co. v. Scharfstein, 288 N.Y. 374, 43 N.E. 2d 449 (1942).

Compare Capitol Records, Inc. v. Mercury Records Corp., 221 F. 2d 657 (2d Cir. 1955) with RCA Mfg. Co. v. Whiteman, 114 F. 2d 86 (2d Cir. 1940), cert. denied, 311 U.S. 712, 61 Sup. Ct. 393, 85 L. Ed. 463 (1940) (sale of records of rendition held divestitive of common-law rights therein). Contra: Waring v. WDAS Broadcasting Station, Inc., 327 Pa. 433, 194 Atl. 631 (1937); Waring v. Dunlea, 26 F. Supp. 338 (E.D.N.C. 1939) National Ass'n of Performing Artists v. Wm. Penn Broadcasting Co., 38 F. Supp. 531 (E.D.Pa. 1941). But see N.C. Gen. Stat., sec. 66-28 (1950); S.C. Code, sec. 66-101 (1952); Fla. Stat. secs. 543. 02-03 (1953). For a complete discussion, see Kaplan "Performer's Rights and Copyright: The Capitol Records Case." 69 Harv. L. Rev. 409 (1956); Nimmer, "Copyright 1955," 43 Calif. L. Rev. 791, 801-806 (1955); note, 31 N.Y.U.L. Rev. 415 (1955).

70 United States Constitution, art. I, sec. 8, clause 8. The White-Smith Music Publishing Co. case involved interpretation of the pre-1909 copyright act and not of the constitutional term "writings." A recent commentator has expressed opinion that constitutionally "writings" include records (and "authors" include performers). Kaplan, "Performer's Rights and Copyright: The Capitol Records Case," 69 Harv. L. Rev. 409, 413414 (1956).

71 Until recently it was generally assumed that the sale of records was not publication of the embodied composition. Burton, "Business Practices in the Copyright Field," Seven Copyright Problems Analyzed 80, 102-104 (1952). Recording was neither copy ing nor publishing. White-Smith Music Publishing Co. v. Apollo Co., 209 U.S. 1, 28 Sup. Ct. 319, 52 L. Ed. 655 (1908). Records were likened to a captured performance which was not a publication. Ferris v. Frohman, 223 U.S. 424, 32 Sup. Ct. 263, 56 L. Ed. 492 (1912). Records have been frequently issued at the outset to test the public reaction, and sheet music might not be issued at all if the record failed to catch on. Sheet music has greatly declined in relative importance as a medium of exploiting popular music. The traditional view was that statutory copyright need not be resorted to unless sheet music be issued. Kaplan, "Publication in Copyright Law: The Question of Phonograph Records," 103 U. of Pa. L. Rev. 469, 472 n. 20 (1955). A growing number of recent cases has held or indicated that the sale of a recording constitutes publication of the recorded composition. Biltmore Music Corp. v. Kittinger, C.O. Bull. No. 29, p. 32 (S.D. Cal. 1954); Mills Music Co. v. Cromwell Music, Inc., 126 F. Supp. 54 (S.D.N.Y. 1954): Shapiro, Bernstein & Co. v. Miracle Record Co., 91 F. Supp. 473 (N.D. Ill. 1950); Blanc v. Lantz, 83 U.S.P.Q. 137 (Cal. Super. Ct. 1949) (intentionally making sound track of music public held divestitive of common-law rights in music under then State statute): cf. Capitol Records, Inc. v. Mercury Records Corp., 221 F. 2d 657 (2d Cir. 1955); Yacoubian v. Carroll, 74 U.S.P.Q. 257 (S.D. Cal. 1947). See Nimmer. "Copyright Publi cation," 56 Colum. L. Rev. 185, 192-194 (1956). The traditional view was incorporated in the Universal Copyright Convention, art. VI, defining "publication" as meaning the "reproduction in tangible form and the general distribution to the public of copies of a work from which it can be read or otherwise visually perceived." But see RCA Mfg. Co. V. Whiteman, 114 F. 2d 86 (2d Cir. 1940), cert. denied, 211 U.S. 712, 61 Sup. Ct. 393, 85 L. Ed. 463 (1940).

72 17 U.S.C. 10, 12 (1952). "Very doubtful" under the present statute. Kaplan, "Publication in Copyright Law: The Question of Phonograph Records," 103 U. of Pa. L. Rev. 469, 482-484 (1955). Generally, statutory copyright is secured by publication with copyright notice or registration and deposit of a copy of an unpublished work. Logically what amounts to a divestitive publication of a musical composition ought to qualify as an investitive publication thereof, although the converse would not necessarily be so. location of the copyright notice would present problems. See note 74 infra.

The

73 17 U.S.C. 12, 13 (1952). Phonograph records have not been accepted for registra tion and deposit by the Copyright Office in recent years, although works in Braille and motion pictures with sound tracks have been accepted. See Kaplan, "Publication in Copyright Law: The Question of Phonograph Records," 103 U. of Pa. L. Rev. 469, 483 n. 65 (1955). The Copyright Office has not refused to accept motion pictures because sound tracks were attached to them, but has made no ruling as to whether the registration does or does not include the sound track. If the sound track were submitted separately, reg istration would presumably be denied. See also Yacoubian v. Carroll, 74 U.S.P.Q. 257 (S.D. Cal. 1947) (issuance of records held not reproduction of copies for sale of musical composition previously copyrighted under sec. 12; hence deposit of two "copies" not required under secs. 12, 13).

or offered for sale in the United States by authority of the copyright proprietor, must bear the statutory copyright notice," are intriguing questions which are beyond the scope of this study.

II. LEGISLATIVE HISTORY OF COMPULSORY LICENSING PROVISIONS IN THE UNITED STATES SINCE 1909

A. PROPOSED BILLS

1. The 68th Congress

The compulsory licensing feature of section 1(e) did not come up for further legislative consideration for 16 years.

(a) H.R. 11258 and S. 4355

On January 2, 1925, Representative Perkins introduced a bill designed to revise the copyright law and permit the entry of the United States into the International (Berne) Copyright Union. H.R. 11258 75 and its Senate counterpart, S. 4355,7% had been drafted by the Register of Copyrights, Thorvald Solberg, at the request of the Authors' League, and contained no provision for compulsory licensing of mechanical reproduction rights. Instead, section 12(d) simply granted to authors, their administrators, executors, or assigns the right

to make, copy, and vend any phonograph record, or any perforated roll or other contrivance by means of which, in whole or in part, the copyright work may be mechanically reproduced *

77

Hearty support for the complete elimination of the licensing provision was given by Nathan Burkan, of ASCAP, who testified during hearings held from January 22 through February 24, 1925, that compulsory licensing was an arbitrary, discriminatory class legislation which forced authors to do business with persons not of their own choosing at terms contrary to those specified in section 1(e) and without any means of enforcing their claims against unknown record producers. More specifically Mr. Burkan alleged the phonograph industry was reporting on sales of records, rather than the number of records produced; was furnishing uncertified statements of accounts on a quarterly, instead of a monthly, basis; and was charging the author 10 percent for "breakage" as well as costs for "arrangements" and advertising. Mr. Burkan further claimed manufacturers were refusing to pay royalties on records exported abroad or on records. produced from matrices shipped abroad. In addition, many record companies produced records without any intention of paying the license fee or delayed payment, sometimes until they became bank

17 U.S.C. 10 (1952). The statute is silent with respect to the location of copyright notice on records, tape and wire recordings, etc. 17 U.S.C. 19, 20 (1952). Cases in the past have held that a copyright notice was not required on a phonograph record or perforated roll. Irving Berlin, Inc. v. Daigle; Irving Berlin, Inc. v. Russo, 31 F. 2d 832 (5th Cir. 1929); Buck v. Heretis, 24 F. 2d 876 (E.D.Š.C. 1928); Buck v. Lester, 24 F. 2d 877 (E.D.S.C. 1928). Quaere, whether a record manufactured under the compulsory license provision (assuming it to be a copy, and its public distribution or sale to be a publication, of the recorded musical composition) can be said to be published or offered for sale by authority of the copyright proprietor.

H.R. 11258, 68th Cong., 2d sess. (1925).

S. 4355, 68th Cong., 2d sess. (1925) (introduced by Senator Ernst, Feb. 17, 1925). Hearings on H.R. 11258, 68th Cong., 2d sess., pp. 148-168 (1925).

46476-60- 3

rupt. Thus an author, even after securing judgment, was frequently left without recourse against the manufacturer.78

Representatives of the Music Industries Chamber of Commerce and individual record manufacturers replied to these charges by reminding the committee that American business had been passing through an economic recession which had affected other industries as well as phonograph record manufacturers, and that failure to pay royalties had in several of the instant cases been due to the belief that the alien author had not been domiciled in the United States," and therefore not entitled to such payment.

Claiming $2 million in royalties had been paid in 1924 on the basis of a $50 million business to approximately 300 to 400 copyright owners, and that elimination of the compulsory license provision was not necessary for the entry of the United States into the Berne Union, the record manufacturers pleaded for the retention of the compulsory license provision, but with modifications which would (1) change the "unfair method of basing royalty payments upon production"; (2) extend the license to include "word" music rolls; and (3) protect publishers against financially or otherwise irresponsible manufacturers of mechanical devices.81

On the last day of the hearings a subcommittee was appointed to consider the bill during recess, and informal hearings were held April 22 and May 8, 1925.

(a) H.R. 5841

2. The 69th Congress

A bill identical to the two bills considered by the 68th Congress was reintroduced by Representative Perkins at the beginning of the 69th Congress, on December 17, 1925,82 but no further action was taken. For the next 2 years, 1926-27, compulsory licensing continued a controversial subject.

(b) S. 2328 and H.R. 10353

With the rapid development of radio broadcasting in the early 1920's a dispute soon developed between ASCAP and the radio stations over the licensing of the performances of musical compositions. S. 2328 83 and H.R. 10353 84 were introduced on January 26 and March 15, 1926, by Senator Dill and Representative Vestal, respectively, as a possible solution to the controversy between the two interests. By adding a new subsection (f) to section 1, the bills proposed to extend compulsory licensing to musical compositions used for broadcast purposes, with a license fee based on the power of the transmitting station. This license was to be applicable only to sub

78 Id., at pp. 157-160.

79 See note 55, supra.

80 Piano rolls on which the lyrics were printed. Use of the words had been held to infringe under sec. 1 (a) of the act. F. A. Mills, Inc. v. Standard Music Roll Co., 223 Fed. 849 (D.N.J. 1915), aff'd, 241 Fed. 360 (3d Cir. 1917). Rolls without words were becoming unsalable; 10 cents or more royalty per roll was usually asked. 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) (pre-1909 work).

81 Hearings on H.R. 11258, 68th Cong., 2d sess., pp. 233-275 (1925).

83 H.R. 5841, 69th Cong., 1st sess. (1925).

83 S. 2328, 69th Cong., 1st sess. (1926).

H.R. 10353, 69th Cong., 1st sess. (1926).

sequently copyrighted compositions so as not to impair existing contracts.85

Joint hearings were held April 5 to 22, 1926, at which a representative of the Music Industries Chamber of Commerce listed the bad features of the existing compulsory license provision as: (1) failure to include the so-called "word" roll; (2) pressure on the part of music publishers to make the record manufacturers take a certain number of compositions each month in order to get the few they actually wanted; and (3) lack of protection for the copyright owner against use of his music by financially irresponsible concerns.8

86

On the other hand, Nathan Burkan questioned the constitutionality of compulsory licensing and explained failure to make an attack in the courts as follows: 87

Unquestionably this act was so artfully drawn, that if an attack was made upon the compulsory provisions of the act and the court declared them unconstitutional, the whole act would have to fall. That would have left the authors in the same plight they were in from 1888 to July 1909 ***

Another reason for the failure to make any attack upon the constitutionality of this proposition was the power of boycott that these reproducers of mechanical instruments possessed.

Mr. Burkan also alleged:88

The act of 1909, while it provided in case of any infringement of the copyrighted work that the infringer should be liable to very severe penalties, damages, costs, to injunction, seizure, and forfeiture of infringing material, and to criminal punishment, in the case of the illegal mechanical reproduction, the sole remedy is limited to a recovery of three times the royalty fixed by the statute; * If the mechanical reproducer made no reports or kept false books as to the number of records or rolls he manufactured then the composers' plight is more desperate ***

In discussing Wheaton v. Peters, often cited as a basis for the compulsory licensing provision, Mr. Burkan stated:

This case is no authority for the proposition that Congress can attach to a copyright grant a compulsory license feature.

On the contrary, the holding of the case is that Congress in vesting the exclusive right may impose conditions. A compulsory license is the antithesis of the exclusive right."

In short, Mr. Burkan characterized the two bills as being

91

vicious and paternalistic price-fixing measures, lacking in merit and iniquitous because unconstitutional, because depriving a body of useful citizens of their property, without just compensations, for the private benefit of a powerful group

(c) H.R. 10434

In the meantime Representative Vestal had also introduced a general revision bill, H.R. 10434,92 which was designed to permit the entry of the United States into the Berne Union. Approximately two-thirds of H.R. 10434 contained text identical with the Perkins bill, the remainder constituted compromises worked out by conflict

Hearings on S. 2328 and H.R. 10353, 69th Cong., 1st sess., pp. 31-32 (1926). See note 66 supra.

"Id., at p. 87.

Id., at p. 314.

s Id., at p. 315.

See note 66 supra.

8 Pet. 591 (U.S. 1834).

Hearings on S. 2328 and H.R. 10353, 69th Cong., 1st sess., p. 329 (1926). See note 66 supra.

Id., at p. 371.

H.B. 10434, 69th Cong., 1st sess. (1926).