remedy, in some cases of innocent infringement is in fact the only remedy.98

(b) Impounding and destruction of copies

Some foreign copyright laws make a decree for destruction of infringing copies mandatory on the court. Thus, section 42 of the German copyright law requires destruction of infringing copies or devices after final judgment even where infringement in the production or distribution of such copies was neither intentional nor negligent, and whether the production was completed or not. The French copyright law provides in article 72 that in the case of conviction for repeated infringements the place of business of the infringer may be closed temporarily or permanently, and the employees of the infringer must be paid their regular salaries during the period of closing and for 6 months thereafter. In addition under article 23 all infringing articles are to be destroyed. The British Copyright Act provides in section 21(g) that-

the court before which a person is charged with an offense under this section [i.e., that he knowingly infringed] may, whether he is convicted of the offense or not, order that any article in his possession which appears to the court to be an infringing copy, or to be a plate used or intended to be used for making infringing copies, shall be destroyed or delivered up to the owner of the copyright in question or otherwise dealt with as the court may think fit.

II. CRIMINAL PENALTY FOR INFRINGEMENT 99

1. Effect and application of section 104

Section 104 makes it a misdemeanor willfully and for profit to infringe a copyright, or knowingly and willfully to aid or abet such infringement. The punishment in both cases may be imprisonment not exceeding 1 year, or a fine of not less than $100 nor more than $1,000 or both.

This section has rarely been invoked. The infrequency of its use, however, does not disprove its efficacy as a deterrent to willful and reckless infringements. It may be that civil actions are preferred by injured copyright owners since they offer a more lucrative result. To "charge an author with willfully infringing a copyright by plagiarism is to charge him with a crime," 100 and though charges of that nature are sometimes made in civil actions there is seldom any resulting criminal prosecution.

The problems arising in the reported cases dealing with section 104 seem to be largely of a procedural nature.

In United States v. Schmidt, 101 the court denied a motion to quash an indictment which did not strictly follow the wording of section 104. It was alleged in the indictment that one defendant

did knowingly, willfully, and for profit, and without securing permission or license so to do, print and publish certain [copyrighted] publications * * *—

that another defendant—

did knowingly, willfully, unlawfully, and for profit, aid, abet, incite, counsel, and procure the [first defendant] *** to knowingly, willfully, unlawfully and for profit, infringe ***.

$9 Sec. 22.

The only section on criminal penalties of title 17, U.S.C., discussed here is sec. 104. 100 Cloth v. Hyman, 146 F. Supp. 185 (S.D.N.Y. 1956).

101 15 F. Supp. 804 (M.D. Pa. 1936).

Defendants urged that all counts were bad for duplicity, and were vague, indefinite, and uncertain. The court, setting out in detail that the indictment was sufficient, denied the motion.

In Marx v. United States 102 one of the defendants' arguments on appeal was also that the indictment was insufficient. In this case the indictment was worded in the language of the statute, but did not allege copying and did not expressly negative the possibility that the composition alleged to be infringing was an original conception. The court held that the indictment charged

a willful infringement of the copyrighted drama by broadcasting the same to the general public. An intentional copying is sufficiently alleged.103

As to the question of willfulness, it was claimed by defendants that the evidence was insufficient to show willful infringement. The court said that admittedly defendants were familiar with the infringed work and whether they had forgotten it as they claimed, or whether they remembered but chose to disregard the rights of the proprietors, were problems for the determination of the jury.

In United States v. Backer,104 one of the errors charged on appeal again concerned the trial court's interpretation of the word "willful." The court of appeals held that a comparison of the infringing and the infringed copies

leaves no doubt, in view of other evidence in the case, that they [the infringing copies] are in most respects copies of the [copyrighted works] as charged in the indictment. Nor can there be any fair doubt that the appellant had the copies made and deliberately sold them for profit.105

In addition to the few reported cases, there have been several unreported criminal prosecutions for willful infringements of copyright for profit.

2. Brief history of provision on criminal penalty for infringement

By the act of January 6, 1897,108 section 4966 of the Revised Statutes 107 was amended to provide, in part, as follows:

If the unlawful performance and representation [of a copyrighted dramatic or musical composition] be willful and for profit, such person or persons shall be guilty of a misdemeanor and upon conviction be imprisoned for a period not exceeding 1 year.

Section 28 of the act of 1909, which was identical with the present section 104, extended the scope of the criminal provision in two respects: instead of covering only infringing performances of dramatic or musical works as in the previously existing law, the new section applied to all willful infringements for profit,108 and the penalty was made alternative, i.e., imprisonment or a fine, or both, could be imposed.

În several of the bills to revise the Copyright Act of 1909, changes, principally of form, were proposed in the provision on criminal penalty for infringement; in some bills the section on criminal penalty for infringement was altogether omitted. In the latter group was

10% See the explanation in the committee report, H.R. Rept. No. 2222, 60th Cong., 2d sess., on the bill enacting the Copyright Act of 1909, on sec. 28

H.R. 12549 109 in which remedies for infringement were limited to civil actions.110

111

The changes proposed varied considerably. In a bill introduced in 1931 to amend sections 23, 25, and 28 of the Copyright Act of 1909, imprisonment for willful infringement for profit was limited to 6 months and the fine to $500, but no other substantive changes were proposed. A criminal provision of considerably enlarged scope was proposed in the first Sirovich bill.112 It provided criminal penalties for other acts (involving fraudulent misrepresentations) as well as for willful infringement for profit. Section 38 of this bill read as follows:

Any person who, with intent to defraud, shall assign a copyright or grant any license thereunder, knowing that he has previously assigned and/or licensed the same right to others, or knowing that he has no right or authority to make such assignment or license, or who willfully and for profit shall infringe or conspire to infringe any copyright secured by this Act, or who, with fraudulent intent, shall institute or threaten to institute any action or other proceeding under this Act, knowing such action or other proceeding to be without foundation, or who shall register or cause to be registered a pirated work with knowledge that such work is pirated, or who shall record or cause to be recorded a false or fraudulent assignment or license with the knowledge that such assignment or license is false or fraudulent, or who shall make a false and fraudulent statement in any affidavit or other writing filed in the Copyright Office shall be deemed guilty of a misdemeanor, and upon conviction thereof, shall be punished by a fine of not more than $2,000 and/or imprisonment for not more than six months.113

The Thomas bill 114 similarly combined the criminal provisions on willful infringement for profit with provisions imposing criminal penalties for other acts (involving fraudulent misrepresentations) as follows: 115

Any person who willfully and for profit shall infringe any right secured by this Act, and who shall knowingly aid or abet such infringement, or who shall insert, impress, or affix any notice of copyright upon any article with knowledge that such notice is false, or any person who shall knowingly issue, publish, sell, distribute, or import into the United States any such article containing such false notice, or who shall remove or alter with fraudulent intent the copyright notice upon any article duly affixed by the persons entitled so to do, or who shall register or cause to be registered a pirated work with knowledge that such work is pirated, or who shall record or cause to be recorded a false or fraudulent grant with the knowledge that such grant is false or fraudulent, or shall knowingly make a false and fraudulent statement in any affidavit or other writing filed in the Copyright Office, shall be deemed guilty of a misdemeanor, and upon conviction thereof shall be punished for each offense by imprisonment for not exceeding one year, or by fine of not less than $100 nor more than $1,000, or both such fine and imprisonment.

3. Provisions in foreign laws on criminal penalties for infringement

The copyright laws of practically all foreign countries contain provisions for criminal penalties for infringement of copyright. These provisions are used to a much greater extent, particularly in the "civil law" countries, than is the case in this country. One of the reasons for this more frequent application of criminal provisions

100 71st Cong., 3d sess., Jan. 21, 1931, as it came to the Senate from the House (passed by the House Jan. 13. 1931). H.R. 12549, 71st Cong., 2d sess., as introduced May 22, 1930, by Mr. Vestal contained, in sec. 26, a criminal provision. This provision was restored in S. 176, 72d Cong., 1st sess., introduced Dec. 9, 1931, by Mr. Hebert. Also in this group was the Dill bill, S. 3985, 72d Cong., 1st sess., introduced Mar. 2, 1932. 110 Under sec. 32 of H.R. 12549 use of a fraudulent copyright notice was a misdemeanor.

111 S. 5687, 71st Cong., 3d sess., introduced Jan. 5, 1931, by Mr. King.

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

113 The fine was reduced to $1,000 in sec. 39 of H. R. 10976, 72d Cong., 1st sess., introduced on Mar. 30,1932, by Mr. Sirovich, committed to the Committee of the Whole House on the State of the Union, Apr. 5, 1932 (Union Cal. No. 190).

114 S. 3041, 76th Cong., 3d sess., introduced Jan. 8, 1940.

115 Sec. 18. The note on the draft bills preceding the Thomas bill states as to sec. 18: "This section combines and revises secs. 28 and 29 of the law of 1909."

116

would seem to be that, under these foreign laws, criminal penalties and civil damages are frequently imposed in one action and both may accrue to the benefit of the plaintiff.1 Another reason may be that civil damage awards are usually for smaller sums in foreign countries than in the United States. It therefore appears difficult to compare the criminal provisions of the foreign and U.S. copyright laws.

The British Copyright Act, 1956,117 provides, in section 21, for penalties and summary proceedings in respect of dealings which infringe copyright. Under this section fines may be imposed from a minimum of 40 shillings for each infringing article to a maximum of 50 pounds, and in cases of repeated infringement, imprisonment not exceeding 2 months. Acts which are punishable under this section of the British Copyright Act, 1956, include, e.g., knowingly making for sale or hire, selling, exhibiting, or distributing infringing copies, making or possessing plates knowing they are to be used for making infringing copies, or knowingly and without authority performing a copyrighted work.

The Canadian Copyright Act 118 contains a criminal provision 119 which is similar to that of the British Copyright Act.

III. ISSUES PRESENTED

1. Analysis

Two subjects are analyzed in this paper: civil remedies other than damages, and criminal penalties for infringement. What are the problems raised in connection with these subjects?

(a) Injunction

The present law leaves it to the discretion of the court whether an injunction will be granted or denied. It has always been the rule of the courts that an injunction is an extraordinary remedy to be used only where further injury to the plaintiff is likely and the equities of the situation are on the side of injunctive relief, and the courts have denied an injunction in cases where it was thought that this remedy would be unduly harsh on the defendant.

Some of the past bills for general revision of the copyright law contained proposals to limit the power of the courts to grant injunctions in certain instances, particularly where an infringing undertaking had been innocently begun. Thus, it was proposed that no injunction shall be issued against the completion of a building or of printing innocently begun, or against the publication of a newspaper or periodical, or against the publication or broadcasting of infringing advertisements for which preparation had been innocently begun. A provision was also proposed that no temporary restraining order shall be issued against the production of a motion picture substantially begun or its distribution or exhibition.

The question whether in these or other circumstances, there should be in a revised law any express limitations on the injunctive power of the courts. It should be noted that no reported case has been

116 For details see Strauss, "The Damage Provisions of the Copyright Law" [Study No. 22 in the present Committee Print, pt. A-m].

117 4 and 5 Eliz. 2, ch. 74.

119 Can. Rev. Stat., 1952, ch. 55.

119 Sec. 25.

found where a court has issued an injunction that the revision proposals mentioned above would have prevented.

(b) Impounding and destruction

Impounding is a temporary remedy to be used either to insure defendant's compliance with a decree of the court, or as a measure preliminary to possible destruction of the infringing articles. Such destruction may be ordered only after the fact of infringement has been judicially established and only against a proven infringer. Impounding and destruction are matters for the court's discretion. As to impounding, two of the past revision bills proposed an added provision granting a successful defendant an award of such damages as he may have incurred due to the impounding. The Supreme Court Rules requiring the plaintiff to file a bond would seem to take care of this.

Some of the past revision bills provided variously that the remedies of impounding and destruction were not to be available in regard to a building under construction or an issue of a periodical or newspaper of which manufacture had innocently begun, or against an innocent broadcaster or motion picture producer or distributor, or against innocent infringers generally.

Impounding and destruction, like injunctions, are extraordinary remedies which courts, in their discretion, apply as the situation in each case seems to require in order to prevent further injury to the plaintiff; and these remedies are not applied where the court feels that they would be unduly injurious to the defendant. The proposals in past revision bills to deny these remedies in certain situations were apparently prompted by an abundance of caution. No reported case has been found in which impounding or destruction was ordered in a situation where it would have been precluded by these proposals. (c) Criminal penalties

Though infrequently invoked, the criminal provision in section 104 of the present law may serve as a deterrent to willful infringement. It does not appear to have created any special difficulties in its application.

Two of the past revision bills omitted this provision entirely, without explanation; perhaps it was considered unnecessary. In other revision bills the provision was left intact, or was merely changed in form to combine this with other criminal provisions relating to fraudulent misrepresentations. Some bills proposed to change the penalties: maximum imprisonment for 6 months, instead of the present 1 year; or a maximum fine of $500 in one bill, of $2,000 in another, instead of the present $1,000.

2. Summary of issues

(a) Should any limitations be imposed by the statute on the issuance of injunctions against copyright infringements? If so, what limitations?

(b) Should any limitations be imposed by the statute on the impounding or destruction of infringing copies and devices? If so, what limitations?

(c) Should the criminal penalty for willful infringement for profit, or for knowingly and willfully aiding or abetting such infringement, be retained, eliminated, or modified?