REMEDIES OTHER THAN DAMAGES FOR COPYRIGHT

INFRINGEMENT

SCOPE OF THIS STUDY

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Civil remedies and criminal penalties for infringement of copyright are dealt with in chapter 2 of our copyright law entitled "Infringement Proceedings." 1 Since the provisions on damages and profits have been treated previously, this study deals only with civil remedies other than damages and profits: that is, with injunctions, impounding during action, and destruction of infringing copies and devices; and also with criminal penalties for infringement."

I. EQUITABLE REMEDIES

1. Injunction

(a) History of injunctive relief in the copyright law

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Under the Copyright Acts of 1790 and 18028 remedies for copyright infringement were limited to an action in debt for forfeiture of copies and for statutory penalties, and to a special action on the case for recovery of all damages occasioned by the infringement.10 The Copyright Act of 1819 11 first conferred on the circuit courts of the United States

jurisdiction as well in equity as at law of all actions, suits, controversies, and cases, arising under any law of the United States, granting or confirming to authors or inventors the exclusive right to their respective writings, inventions, and discoveries.

Upon bill in equity the circuit courts had authority to grant injunctions, "according to the course and principles of courts of equity." Provisions empowering the courts to grant injunctions have been part of the copyright law ever since,12 and no question as to the appropriateness of this remedy as a general matter has been raised. Indeed, an authority on equity has stated as follows: 13

When the existence of a * * copyright is conceded or has been established by an action at law, the jurisdiction of equity to restrain an infringement is too well settled and familiar to require the citation of authorities in its support.

Title 17, U.S.C., ch. 2.

2 Strauss, "The Damage Provisions of the Copyright Law" [Study No. 22 in the present Committee Print]. That study also dealt with the award of costs and attorney's fees.

17 U.S.C. 101(a); for recordings of music, sec. 101(e).

417 U.S.C. 101(c).

17 U.S.C. 101(d).

17 U.S.C. 104. Sec. 105, providing a criminal penalty for fraudulent copyright notice does not relate to infringement and is outside the scope of this study.

71 Stat. 124 (1790).

#2 Stat. 171 (1802).

Act of 1790, sec. 2; act of 1802, sec. 3.

10 Act of 1790, sec. 6.

113 Stat. 481 (1819).

12 Act of Feb. 3, 1831, (4 Stat. 436) sec. 9; act of July 8, 1870, (16 Stat. 212) sec. 106; act of Dec. 1, 1873 (Rev. Stat. 1878, 957), sec. 4970; act of Jan. 6, 1897 (29 Stat. 481); act of Mar. 3, 1897 (29 Stat. 694) revising sec. 4963 of the Rev. Stat.: act of Mar. 4, 1909 (35 Stat. 1075) secs. 25, 36.

13 Pomeroy, "Equity Jurisprudence" (1941), sec. 1352.

From the nature of the right and of the wrong the violation being a continuous act the legal remedy is necessarily inadequate.

The Second Circuit Court has indicated that the remedy of injunction in copyright matters may well be available even if the copyright law did not expressly provide for it: 14

In cases of infringement of copyright as injunction has been recognized as a proper remedy, because of the inadequacy of the legal remedy. The remedy by injunction exists independently of exepress provision therefor in the copyright statutes, it being granted on the well-established principle that a court of equity will protect a legal right where the remedy at law is inadequate.

Since the copyright statute provides that the question of granting or withholding an injunction is decided by the court "according to the course and principles of the courts of equity," 15 it is in the sound discretion of the trial court to determine whether or not an injunction should be granted; and "an order granting the same will not be set aside on appeal, unless it is clearly shown that the court abused its discretion, or was mistaken in the view it took of the situation." 16 other words, the principles upon which injunctions are granted or withheld in the field of copyright law are those followed in all other fields of law. The cases, in this respect, show no problems peculiar to copyright jurisprudence.

(b) Injunctive relief in the present copyright statute

In

Section 101(a) provides, without any limitation, for injunctions restraining copyright infringement. The only instance in which the statute expressly restricts the courts' discretion in issuing an injunction is the very special situation in which an infringer has been misled by the accidental omission of the copyright notice from a particular copy or copies.17 In such a case

no permanent injunction shall be had unless the copyright proprietor reimburses to the innocent infringer his reasonable outlay innocently incurred if the court, in its discretion, shall so direct.

Even this is not an absolute prohibition of an injunction: the court is to exercise its discretion as to whether or not it will require reimbursement; and only if it orders reimbursement and the copyright proprietor does not comply with the order, will the court be precluded from issuing a permanent injunction. Presumably, if the court saw fit, it could issue an injunction without imposing that condition. Also, this prohibition does not come into play if the copyright propretor has taken no steps toward compliance with the notice requirement 18 or if the infringer had actual notice of the copyright despite the lack of notice on the infringed copy.1

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Apart from this special rule in section 21, there exists no provision in the copyright statute preventing an injunction, temporary or permanent, to issue in any case where a court deems it appropriate, even in cases where the infringer did not know, and could not reasonably foresee, that he was infringing. The present law, in stating that "any person" who infringes is liable to an injunction,20 offers no statutory protection to the innocent infringer against the possibility that he may

14 American Code Co. v. Bensinger, 282 Fed. 829 (2d Cir. 1922).

15 Title 17, U.S.C., sec. 112.

16 Supra, note 14.

17 Title 17, U.S.C., sec. 21.

18 Nat'l Comics Publications, Inc. v. Fawcett Publications, Inc., 191 F. 2d 594 (2d Cir. 1951).

19 W. H. Anderson Co. v. Baldwin Law Pub. Co., 27 F.2d 82 (6th Cir. 1928); Schellberg v. Empringham, 36 F. 2d 991 (S.D.N.Y. 1929).

20 17 U.S.C. sec. 101, first sentence in conjunction with sec. 101(a).

be enjoined. But the issuance of an injunction is a matter of the court's discretion,21 and the courts may be expected to take into account the circumstances of the particular case, including the "innocence" of the infringer and the comparative effect of an injunction on him and on the complainant.

In what manner have the courts applied the provision on injunction? In Markham v. A. E. Borden Co.22 the court said that where the infringement has come to an end before suit was commenced and there is little likelihood of its future renewal, an injunction will be denied.28 An injunction will not be granted merely to allay litigants' fear without clear proof of the imminence of real injury.24 As to the granting of injunctions in general, it has always been the rule of the courts that their power to issue injunctions is an extraordinary one which should be used with moderation and then only in clear and unambiguous cases.25 The courts generally take great care in judiciously weighing the legitimate interest of the plaintiff in the issuance of an injunction against the possibility of undue injury to the defendant in the case that the injunction should issue. This is quite evident from the reported cases. Nevertheless, legislative proposals have purported to withhold from the courts the injunctive power under certain circumstances. These proposals will now be discussed. (c) Legislative proposals regarding the remedy of injunction

A number of the general copyright revision bills submitted to Congress between 1924 and 1940 contained provisions limiting or denying altogether the remedy of injunction in some situations where the infringement was innocent, and restricting it in other cases to an injunction preventing future infringement.

Section 26(b) of the Dallinger bill 26 provided that the copyright proprietor of a work of architecture could not obtain an injunction restraining the construction of an infringing building if substantially begun, nor an order for its demolition or seizure.27 A similar provision appeared in the Duffy bill.28

The first Vestal bill,29 which limited the remedies available for innocent infringements by persons engaged solely in printing, binding, or manufacturing printed copies (except of dramatic-musical or musical works), permitted injunctions against them only as to future printing, binding, or manufacturing of printed copies.30 This limita

21 By contrast, courts have expressed their dissatisfaction with the provision in sec, 101(b) which makes it mandatory to impose statutory minimum damages on innocent infringers. Cf. Dreamland Ballroom v. Shapiro, Bernstein & Co., 36 F. 2d 354 (7th Cir. 1929); Fisher v. Dillingham, 298 Fed. 145 (S.D.N.Y. 1924). Cf. Strauss, op. cit. supra, note 2.

22 108 F. Supp. 695 (D. Mass. 1952), rev'd on other grounds 206 F. 2d 199 (1st Cir. 1953), aff'd 221 F. 2d 586 (1st Cir. 1955).

23 Accord: Trifari, Krussman and Fishel, Inc. v. B. Steinberg-Kaslo Co., 144 F. Supp. 577 (S.D.N.Y. 1956). However, if the plaintiff alleges he will suffer irreparable harm in the event that defendants are not restrained from pursuing their present course, a detailed showing of irreparable harm in the absence of relief is not a prerequisite to a preliminary injunction if the infringement is plain. Geo-Physical Maps, Inc. v. Toycraft Corp. 162 F. Supp. 141 (S.D.N.Y. 1958); see also: Rushton v. Vitale, 218 F. 2d 434 (2d Cir. 1955); Houghton Mifflin Co. v. Stackpole Sons, 104 F. 2d 306 (2d Cir. 1939), cert. denied 308 U.S. 597 (1939); Inge v. 20th Century Fox Film Corp., 143 F. Supp. 294 (S.D.N.Y. 1956). Inconvenience or loss to the defendant arising from the issuance of a preliminary injunction will not prevent its being granted where the infringement is blatant. Geo-Physical Maps, Inc. v. Toycraft Corp., supra, citing L. C. Page and Co. v. Fox Film Corp., 83 F.2d 196 (2d Čír. 1936).

24 Worthington Pump and Machinery Corp. v. Charles Douds, 97 F. Supp. 656 (S.D.N.Y. 1951); Northrop Corp. v. Madden, 30 F. Supp. 993 (S.D. Cal. 1937). And see the very recent case of Christie v. Raddock, 169 F. Supp. 48 (S.D.N.Y. 1959).

25 Leland v. Morin, 104 F. Supp. 401 (8.D.N.Y. 1952).

20 H.R. 9137, 68th Cong., 1st sess., introduced May 9, 1924. Sec. 15(n) of this bill protected works of architecture.

23 S. 3047, 74th Cong., 1st sess. (1935), sec. 17.

29 H.R. 10434, 69th Cong., 1st sess., introduced Mar 17, 1926.

30 Sec 16(e). The same provision was contained in H.R. 6990, 71st Cong., 2d sess., introduced Dec. 9, 1929, by Mr. Vestal.

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tion did not apply where the infringer was also engaged in publishing, selling, or distributing the work or was interested in any profits from these operations.31

A subsequent Vestal bill 32 contained the above limitation,33 and provided further that injunctions against a newspaper publisher would be granted only against the continuation or repetition of the infringement in future issues of the newspaper, but not against the completion of publication and distribution of any issue where actual printing had commenced. This bill further provided that no temporary restraining order should issue which would prevent publication of a newspaper or periodical, and that in the case of a newspaper or periodical reproduction of a copyrighted photograph no injunction should issue.

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This last Vestal bill, H.R. 12549, also contained liminations on the courts' power to grant injunctions in the case of innocent infringement by way of advertising matter printed in a newspaper or periodical. In such cases an injunction might be granted before manufacture of an issue had commenced, or against the continuation or repetition of infringement in future issues, but not against completion of the publication and distribution of an issue where manufacture had already commenced. The remedy of injunction was, however, fully available against the advertiser or other person responsible for the infringement,37 or against the publisher if he was also interested in the advertising matter in a capacity other than as publisher. 38

H.R. 12549 also generally provided 39 that if a defendant proved that he had acted innocently (in the situation where no copyright registration had been made and the work infringed bore no copyright notice), the plaintiff should not be entitled "to any remedy *** other than to recover an amount equivalent to the fair and reasonable value of a license, but not less than $50 nor more than $2,500 ***” thus denying in the stated circumstances the right to all remedies (including an injunction) except monetary recovery as stated.40

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The Dill bill, which proposed to subject performing rights' organizations to statutory control, provided that, in any action brought by an organization or by an individual whose infringed work was controlled by an organization, injunctions would be limited to works proved to have been infringed.

The first Sirovich bill42 limited the remedy of injunction as follows: in respect to infringement by printing to an injunction against future printing; 3 in respect to infringement by presentation of advertising matter to an injunction against future public presentation of the

31 Sec. 16(e).

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$2 H.R. 12549, 71st Cong., 2d sess., introduced May 22, 1930, superseding H.R. 9639, 71st Cong., 2d sess., introduced Feb. 7, 1930. H.R. 12459 was passed by the House, and reported favorably with amendments (not germane here) by the Senate committee, but died on the Senate floor at the close of the 71st Cong. 33 Sec 15 (e).

24 Sec. 15 (e), second proviso.

35 Sec. 15 (a), provisos.

36 Sec. 15 (f).

37 Sec. 15 (f), second proviso.

38 Sec. 15 (f), third proviso.

39 The provisions of sec. 15 in H.R. 12549 were substantially repeated in sec. 14 of H.R. 139, 72d Cong., 1st sess., introduced Dec. 8, 1931, by Mr. Vestal, and in sec. 14 of S. 176, 72d Cong., 1st sess., introduced by Senator Hebert.

40 During the hearings, Mr. Fenning, a well-known Washington attorney, said: “* * * sec. (d) is a provision with respect to a man who infringes innocently and [against whom the copyright owner] is entitled to no remedy excepting a money remedy. It seems to me an injunction should be granted against his repeating that offense." Hearings on H.R. 12549, January 1931 at 22.

41 S. 3985, 72d Cong., 1st sess., introduced Mar. 2, 1932, sec. 21(c).

42 H.R. 10364, 72d Cong., 1st sess., introduced Mar. 10, 1932.

43 Sec. 10(a).