LIABILITY OF INNOCENT INFRINGERS OF COPYRIGHTS

I. INTRODUCTION

Copyright infringement consists of interference with any of a variety of rights and justifies resort to a number of remedies. Such interference may be intentional, negligent or accidental.

The law of torts, from which these terms are borrowed, considers intention relevant in several respects. For example, liability for conversion depends upon an intentional use of a chattel in such a way as to interfere with another's right to possession.' The defendant is [iable even though he is under the reasonable but erroneous impression that the chattel is his and accordingly intends no such interference;2 such good faith, however, may permit him to tender the chattel to the plaintiff and thus mitigate damages.

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Inasmuch as copyright infringement has been held to be an action "sounding in tort," the question is raised whether copyright law recognizes or should recognize similar distinctions based on the "innocence" of the infringer. Should one who copies, performs, or sells a copyrighted work unintentionally and in the exercise of due care be considered an infringer at all? Or should the remedies against him be limited? To what extent should a new Federal copyright statute modify existing law in this regard?

It is apparent that any answer to these questions is complicated by the great variety of copyright infringements. Innocent infringement occurs in various situations in which the opportunity to avoid infringement, and the impact of the infringement and of the imposition of certain remedies, differ. The innocent infringer might, for example, be shielded from liability for interfering with certain rights and not others. The copyright owner might be restricted in his choice of remedies against the innocent infringer or in the scope of any particular remedy. Many of the possible permutations have been attempted or proposed in this country or abroad. Of course, a balancing of policy considerations must dictate the relevance of intention or negligence in each situation. Moreover, the wide range of factual situations encompassed by the general concept of "innocent infringement" must be appreciated. The variety of factual or legal knowledge of which the "infringer" may be "innocent" may, where applicable, call for different answers to the broad questions posed above.

1 Restatement, Torts, sec. 222 (1934).

a Id. at sec. 222, comment d.

a Id. at sec. 247.

Turton v. United States, 212 F. 2d 354 (6th Cir. 1954); Howell, "The Copyright Law" 165 (1952).

II. HISTORY OF THE TREATMENT OF INNOCENT INFRINGERS IN THE UNITED STATES

A. COLONIAL STATUTES, 1783-86

The 12 colonial copyright statutes, enacted largely as a result of the recommendation of the Continental Congress, took three different approaches to the problem of intention and its relation to civil liability for infringement.

1. No distinction between innocent and willful infringement

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Four States did not distinguish in their statutes between innocent and intentional infringement. Neither by limiting language in the specifications of infringement nor by proviso was state of mind made relevant. Thus, the innocent infringer was to be made liable to the same extent as one who purposely infringed. It should be noted, however, that the sole remedy afforded by three of these statutes was recovery of a sum, limited by a stated minimum and maximum. In determining the amount of such sum which the defendant was to "forfeit and pay," it is conceivable that the courts were expected to take into consideration the degree of the defendant's culpability.

2. Liability of distributor conditioned on knowledge that consent had not been obtained to "publish, vend, utter, and distribute" protected work

The statutes of five States appear to distinguish between those who introduce a work into circulation, without the consent of the author, and those who aid in its distribution. Liability attached to anyone who, without such consent, printed or imported the work, but only to one who

shall knowingly publish, vend, and utter or distribute the same, without the consent of the proprietor thereof in writing ***. [Emphasis added.]

The distributor, to be liable, must know that his sale was unauthorized; the initiator was liable, whether he knew of his lack of authorization or not.

3. Liability of distributor conditioned on knowledge that printing or importation was unauthorized

The statutes of Virginia, Maryland, and South Carolina may not have differed in basic approach from the five statutes discussed immediately above. The different language chosen is significant, however, for it served as a model for the first Federal copyright statute. The liability for undertaking to "sell, publish, or expose to sale" was limited to a person "knowing the same to be so printed, reprinted, or imported, without such consent first had and obtained." Thus, a seller who did not know that the printing of his copies was unauthorized was not liable.

All the Original Colonies except Delaware enacted copyright statutes.

Resolution of Continental Congress, May 2, 1783. This resolution, in addition to the colonial statutes, are reproduced in "Copyright Laws of the United States of America, 1783-1956," a publication of the Copyright Office.

7 Massachusetts, New Hampshire, Rhode Island and Pennsylvania.

The Pennsylvania statute provided for recovery of "double the value" of the infringing copies, without apparent variation. Connecticut. Georgia. New Jersey, New York and North Carolina.

B. ACT OF 1790

Section 2 of the first Copyright Act passed by the Congress of the United States 10 provided in pertinent part:

That if any other person or persons *** shall print, reprint, publish, or import, or cause to be printed, reprinted, published, or imported from any foreign Kingdom or State, any copy or copies of such map, chart, book or books without the consent of the author or proprietor thereof, first had and obtained in writing ***; or knowing the same to be so printed, reprinted, or imported, shall publish, sell, or expose to sale or cause to be published, sold, or exposed to sale, any copy of such map, chart, book or books, without such consent first had and obtained in writing as aforesaid, then such offender shall forfeit all and every copy * * *: And every such offender and offenders shall also forfeit and pay the sum of fifty cents for every sheet ***. [Emphasis added.]

Thus, persons who printed, published, or imported copies without consent were liable without regard to their innocence; but those who published or sold copies were liable only if they knew that the copies were printed or imported without consent. The statute was ambiguous in its reference to "publish" in both contexts.

C. ACT OF 1870

Sections 99 and 100 of the 1870 act 11 retained the distinction between persons who printed, published, or imported copies, and those who sold copies; but removed the ambiguity in the dual use of the term "publish" in earlier statutes by deleting that word from the description of acts which, if innocent, did not constitute infringement. Subsequent amendments of the law relating to copyrights prior to the 1909 act continued the requirement of knowledge on the part of the vendor.

III. THE PRESENT LAW

A. THE STATUTE

The general features of the law of innocent infringement were shaped prior to 1909. Except for the innocent vendor, innocence or lack of intent to infringe was not generally a defense to an action for infringement.12 There is considerable evidence that this situation was realized by those participating in the drafting and enactment of the 1909 act; 13 although the problem of the innocent infringer was considered at some length in the hearings, the 1909 statute contained no broad provisions excusing innocent infringers. Moreover, the act eliminated the provision in earlier statutes expressly protecting the innocent seller.

However, several provisions limiting available remedies in certain instances of innocent infringement were inserted. These provisions were supplemented by amendments in 1912 15 and 1952.16

12 Drone, "Copyrights" 401-403 (1879); Spalding, "The Law of Copyright" 55 (1878); Morgan, "The Law of Literature" 240, 665, (1875).

13 E.g., Hearings Before Committees on Patents on II.R. 19853, and S. 6330, 59th Cong., 1st sess. 17, 137 (June 1906).

14 These developments were considered significant in DeAcosta v. Brown, 146 F. 2d 408, 411 (2d Cir. 1944). 15 37 Stat. 489.

10 66 Stat. 752.

1. Accidental omission of notice and the innocent infringer: Section 21

The only section in the present copyright act which uses the term "innocent infringer" deals with only a narrow area of the problem. Section 21 seeks generally to protect the copyright proprietor from the loss of copyright where notice has been omitted by accident or mistake from a limited number of copies. The section provides that such omission shall not invalidate the copyright or prevent recovery for infringement against any person who, after actual notice of the copyright, begins an undertaking to infringe it

*** but shall prevent the recovery of damages against an innocent infringer who has been misled by the omission of the notice; and in a suit for infringement no permanent injunction shall be had unless the copyright proprietor shall reimburse to the innocent infringer his reasonable outlay innocently incurred if the court in its discretion, shall so direct. [Emphasis added.]

This section appears only to bar the recovery of damages and, in some circumstances, the granting of injunctive relief against an innocent and misled infringer. The profits of an innocent infringer may apparently still be recovered even though he has been misled by the omission of the notice.17

2. Innocent infringement by means of motion pictures: Section 101(b)

The rapidity and frequency of the exhibition of a motion picture were considered to pose special problems as to innocent infringement. If a motion picture infringed a copyrighted work, the number of infringements in its repeated exhibitions could lead to the cumulative recovery of a potentially staggering amount of statutory damages. If such infringement were innocent, it was felt that this recovery would be unjustified.18 Accordingly, in 1912, when Congress amended the 1909 act to enumerate motion pictures as a class of copyrightable works, it limited the amount of statutory damages recoverable for infringement by means of motion pictures.

(a) Infringement of a nondramatic work

Section 101 (b) provides in part:

*** and in the case of the infringement of an undramatized or nondramatic work by means of motion pictures, where the infringer shall show that he was not aware that he was infringing, and that such infringement could not have been reasonably foreseen, such [statutory] damages shall not exceed the sum of $100; [Emphasis added.] (b) Infringement of a dramatic work

***

Congress took a slightly different approach with respect to infringement in a motion picture of a work in dramatic form. Innocent infringement of such a work was to be subject to the same scale of statutory damages as an ordinary infringement, but the entire process of making the motion picture and distributing it to exhibitors was to be considered a single infringement.

Thus, in another portion of section 101 (b), it was provided:

*** and in the case of an infringement of a copyrighted dramatic or dramatico-musical work by a maker of motion pictures and his agencies for distribu

17 Strauss v. Penn. Printing & Publishing Co., 220 F. 977 (E.D. Pa. 1915). Sec. 21 is discussed at length in Weil, "American Copyright Law" 351-354 (1917); see also Ball, "Law of Copyright and Literary Property" 327 (1944).

18 H.R. Rept. No. 756, 62d Cong., 2d sess., 3 (1912).

tion thereof to exhibitors, where such infringer shows that he was not aware that he was infringing a copyrighted work, and that such infringements could not reasonably have been foreseen, the entire sum of such damages recoverable by the copyright proprietor from such infringing maker and his agencies for the distribution to exhibitors of such infringing motion pictures shall not exceed the sum of $5,000 nor be less than $250 ***. [Emphasis added.]

3. Innocent infringement of a nondramatic literary work by broadcasting: Section 1 (c)

In 1952, section 1(c) was amended to extend public performance rights to nondramatic works.19 Included in the amendment was the following provision:

*** The damages for the infringement by broadcast of any work referred to in this subsection shall not exceed the sum of $100 when the infringing broadcaster shows that he was not aware that he was infringing and that such infringement could not have been reasonably foreseen; * * *. [Emphasis added.]

It should be noted this limitation is almost identical to the provision of section 101 (b) limiting the remedy for infringement of a nondramatic work by motion pictures.

4. Discretion of the court in granting remedies: Sections 101(b), 101 (c), 101 (d), and 116

Section 101(c) provides for the impounding of infringing articles during the pendency of an action for infringement "upon such terms and conditions as the court may prescribe." Section 101 (d) provides for delivery for destruction of all infringing copies or devices for making such copies "as the court may order." There is some indication in the legislative hearings that the discretion given to the court in these provisions may have been intended to give some measure of protection to the innocent infringer.20 Similarily, section 101 (b) provides, in lieu of actual damages and profits, for "such [statutory] damages as to the court shall appear to be just," within a specified range of minimum and maximum amounts; 21 and section 116 contains a provision by which "the court may award to the prevailing party a reasonable attorney's fee as part of the costs." In granting these various remedies, the courts may mitigate the remedies accorded against an innocent infringer.

5. Criminal provision and innocent intention: Section 104

Section 104 makes willful infringement for profit a misdemeanor. The requirement of willfulness thus expressly excludes the innocent infringer from the sweep of this criminal provision.

19 66 Stat. 752 (1952).

20 See discussion in Hearings (December 1906) 178-179 and Hearings (June 1906) 177.

21 The limitations on the amount of such statutory damages are made inapplicable to: "*** infringements occurring after the actual notice to a defendant either by service of process in a suit or other written notice served upon him." The willful infringement after notice at which this provision is directed might include certain types of infringements which would otherwise be considered "innocent." Thus, one who reasonably but erroneously relies upon the supposed invalidity of a claim to copyright after written notice of the claim might not be protected by his good faith.