The laws of the British Commonwealth nations are most elaborate in this area and afford considerable protection to the innocent infringer in certain situations. The United Kingdom Act of 1956 has not significantly altered the approach, and may serve as an example: (1) Under various provisions of section 5, one who does not know of the infringing nature of an article is not guilty of infringement at all by reason of his unauthorized importation, sale, or exhibition; nor is one an infringer who permits the use of his premises for an infringing public performance if he had no reason to suspect the performance would be infringing or if he received no profit from granting such permission; (2) one "who was not aware and had no reasonable grounds for suspecting that copyright subsisted" is absolved by section 17(2) from liability for damages arising out of the infringement, but is liable for profits; (3) section 18 precludes any pecuniary remedy for conversion or detention of infringing copies not only where the defendant did not and could not reasonably know of the existence of copyright protection, but also if he reasonably believed that the copies were not infringing copies. Apparently, the British courts had interpreted the clause "was not aware, and had no reasonable ground for suspecting, that copyright subsisted in the work" quite narrowly under the 1911 act.106 It, therefore, did not furnish as much assistance to the innocent infringer as the language might suggest. In addition, the Canadian statute imposes another limitation on the immunity of the innocent infringer. Section 22 provides that where a work has been duly registered under the act, "the defendant shall be deemed to have reasonable ground for suspecting that copyright subsisted in the work." 107 The Indian copyright law of 1957 accepts generally the philosophy of the United Kingdom Act. At least one significant modification has been introduced, however. While one who innocently permits, though for profit, the use of his premises for an unauthorized performance of a copyrighted work is excused from liability for infringement, the innocent seller, importer, and exhibitor are apparently considered infringers.108 As in the United Kingdom Act, injunction and an award of profits are the only remedies available against anyone who "was not aware and had no reasonable grounds for believing that copyright subsisted in the work." 109 Provisions concerning the state of mind of the defendant are found more frequently in criminal sanctions where such provisions are separated from civil remedies. Thus, the Swiss law 110 specifically provides that the penal law applies only if the infringement is "inten 106 See Copinger, "The Law of Copyright" 170-171 (1948) wherein the author states: "Judging from its marginal note, the section is intended to afford protection to innocent infringers, but is framed in such language that it is difficult to imagine a case in which it can be invoked in aid. The section must be specifically pleaded, and the burden is upon the defendant to prove that 'at the date of the infringement he was not aware, and had no reasonable ground for suspecting, that copyright subsisted in the work'.. Nor is it, under section 8, sufficient to prove mere innocence and absence of carelessness; the innocence that must be proved is ignorance that 'copyright subsisted in the work', i.e., the work which has, in fact been pirated. *** "In what cases, then can the section apply? What 'reasonable ground' can a direct copyist have for not suspecting the work he copies to be the subject of copyright? It is submitted that the proper attitude of mind of a copyist toward a work that he copies is that copyright in the latter subsists unless he has evidence to the contrary. The only grounds for not suspecting copyright appears to be either (a) that the period of protection has run out; (b) that he thinks that the work is of such a character that it ought not to be a subject of copyright; or (c) that the work is a foreign work.' 107 For a discussion of the Canadian provisions, see Fox, "Evidence of Plagiarism in the Law of Copyright," 6 U. of Toronto L.J., 414, 446 (1946). 10s Sec. 51(a)(ii). 109 Sec. 55. 110 Art. 46. tionally committed." And the Monaco law requires "bad faith" for the imposition of criminal penalties. Section 17 of the Danish law limits criminal penalties to a willful or grossly negligent violation. Such express provisions are not universal even in those countries making every infringement a criminal offense. For example, the laws of France, Portugal, and Argentina do not specify intent or willfulness as an element of the offense of infringement. The Italian law 112 clearly indicates that negligence is sufficient to invoke the criminal provisions, but reduces the fine in such a situation. VI. REVIEW OF UNDERLYING PROBLEMS As indicated by the foregoing, innocent infringement is not a unitary concept. As broadly understood, the term encompasses a number of factual stituations in which infringement is not intended, for example: (1) use of material on which notice has been omitted; (2) belief that certain material in a copyrighted publication is in the public domain; and (3) a variety of secondary infringements where infringing material has been received for reproduction or distribution with the reasonable assumption of its originality. Statutory provisions dealing generally with the problem of the culpability of the defendant also vary greatly in their approach. Thus, to enjoy the limitations on recovery for infringement by motion pictures imposed by section 101 (b) of the present law, an infringer must establish freedom from negligence as well as lack of intent. Negligence would not seem to be sufficient for liability under a strict reading of section 5 of the British Act. On the other hand, in some of the revision bills, even good faith and freedom from negligence would not have shielded the infringer from the full battery of remedies, if the work in question had been registered or published with notice.113 A possible general definition of the innocent infringer is one who invades the rights of the copyright owner without intending to do so and without having reason to suspect that he is doing so. The basis for the innocent infringer's ignorance will vary according to the factual situation. The consequences attached to his innocence will similarly vary. The problem basic to all the variations discussed above is the conflict between the full enjoyment of rights by the copyright owner on the one hand, and the interests of users who, even though scrupulously attempting to respect such rights, commit infringement. Thus, Mr. Solberg argued that the provisions of the Vestal bill are virtually inroads upon the author's right to the protection of his exclusive privileges, and they have the regrettable effect of cutting down the powers of the courts to properly adjudicate the trespass committed."14 On the other hand Representative Townsend viewed his ultimately successful proposal to limit damages for infringement by motion picture as a bill which "merely seeks to make the damage reasonable," rather than one which "excuses" infringers. 115 Some judges and commentators have expressed disapproval of certain applications of the rule that innocence is no defense. In 111 Art. 21. 112 Art. 172. 113 E.g.. Vestal bill, H.R. 10434, 69th Cong., 1st sess. (1926), see pp. 150-151, supra. 114 TTearings, note 81, supra, at 237 (1926). 11 Hearings Before Committee on Patents on H.R. 15263 and H.R. 20596 at 5 (1912). DeAcosta v. Brown,116 Judge Learned Hand, accepting the majority's analogy of conversion, likened the innocent indirect infringer to one who carries off a watch in his bag without any knowledge that it is there. This is to be contrasted with the innocent direct infringer who, by analogy, intentionally takes the watch believing that it was not the property of the plaintiff. Judge Hand felt that only an injunction and accounting for profits should be imposed against an innocent indirect copyist. Similar views were expressed in a dictum by the court in Barry v. Hughes. Others have pointed out that the blanket imposition of liability in the indirect infringement situation fails to take into account the problems faced by the radio, television, and motion picture industries, and the complex problems of publication where the author is no longer identified with the publisher or the artist with the lithographer.118 Mr. Solberg's remarks suggest an argument against any extensive legislation in this area. The flexible powers of a court in granting remedies, rather than a legislative attempt to provide for an infinite variety of factual situations, may arguably represent the more appropriate technique for solving the problems raised by innocent infringement. The court may consider all the factors involved and fashion a tailormade remedy within such areas of discretion as the statute provides. For example, the power of the court to withhold an award of counsel fees in the absence of willfulness was considered by the representative of the book publishers, in the hearings on the amendment of section 1(c), to represent an effective tool with which to adjust problems raised by innocent infringement.119 The problems common to a particular group, such as vendors, printers, periodical publishers or broadcasters, may call for special treatment. Mr. Ogilvie pointed out at the hearings leading to the 1909 act that "it is utterly impossible" for the printer to "read everything that goes into his place" and that he is not in a position to guard against copyright infringement.120 Vendors are also "secondary infringers" who must rely on their publishers. This relationship may have motivated the court's action in Detective Comics, Inc. v. Bruns Publications, Inc.,121 whereby the liability of the distributor of the infringing work was made secondary to that of the publisher. This general approach has been codified by the Spanish law where a hierarchy of liability is established subject to a showing of innocence by the publisher or printer.122 This approach recognizes the importance of permitting the plaintiff to have recourse against several defendants, in order to facilitate enforceability of a judgment. may be argued that to immunize printers and vendors from liability might remove the only financially responsible parties from the plaintiff's reach.123 It Similar considerations apply in the case of newspaper or periodical publishers with respect to advertising matter. Their ability to guard against secondary infringement through the publication of such matter would seem slight. 116 146 F. 2d 408, 413 (2d Cir. 1944) (dissenting opinion). 118 See 45 Colum. L. Rev. 644, 648 (1945). 119 Hearings Before Subcommittee of Committee on the Judiciary on H.R. 3589, 82d Cong., 1st sess. 34 (1951). 120 See note 35, supra. 121 28 F. Supp. 399 (S.D.N.Y. 1939). See p. 147, supra. 122 See p. 153, supra. 123 Cf. Miller v. Goody, 139 F. Supp. 176, 182 (S.D.N.Y. 1956) rev'd sub nom, Shapiro, Bernstein & Co. v. Goody, 248 F. 2d 260 (2d Cir. 1957) (effects of insolvency of disk pirates). The broadcasters pose a slightly different problem. They are primary, rather than secondary users, of copyrighted material. Nevertheless, the relative speed with which a great mass of material is used is said to create special problems.124 The broadcasters themselves have gone so far as to say that "a deliberate, willful infringement by a broadcasting station is a very rare thing, and in practically every infringement case, an intent to infringe is completely absent.' 125 On the other hand, broadcasters are a principal user of copyrighted material and the representatives of authors and publishers have resisted any special treatment for them.126 Even as to special groups such as printers or vendors, the remedial problems may be more significant than the general question of liability. In other words, state of mind might be considered irrelevant to the question of infringement but might be made determinative of the remedies available against the infringer. This is basically the approach of the Lanham Act 127 with respect to trademark infringement. Under that act, an innocent printer or an innocent periodical publisher who publishes infringing advertising matter is subject only to injunction.128 The statutory provision uses the description "innocent infringers" rather than any more detailed standard. Perhaps the problem might be analyzed in terms of which of two innocent parties can more appropriately protect against the infringement. This analysis would suggest, for example, expansion of section 21 so as to shield the innocent infringer from liability where the notice was omitted by a licensee of the copyright owner. Such a result would be based on the fact that the copyright owner is better equipped than the infringer to prevent the infringement; at least he might secure indemnification from his licensee for any loss. On the other hand, the infringer would be made to bear the loss imposed on the copyright owner where such infringer receives infringing material from a third person with assurances that the material is original. Even under this approach, the loss need not be completely imposed on one party. The remedy of injunction could, as in the Vestal bills, be available in any event; but the compromise in available remedies or selection of damage limitations might be weighted against the person whose contractual or other dealings would permit protection against unintended infringements. The problem of innocent infringement is obviously part of the larger question of liability and remedies for infringement in general. Perhaps less obvious is its potential relationship with the question of formalities. The history of previous attempts at revision of the statute illustrate how close this relationship could be. For exemple, in some proposals, formalities replace provisions concerning good faith. Thus, the second Duffy bill 129 limited the remedies against infringement of a work which had not been registered, published with notice or publicly performed, regardless of the good or bad faith of the infringer. This development is to be contrasted with earlier pro 124 See e.g., Hearings Before Committee on Patents, 74th Cong., 2d sess. 478–480 (1936). 125 Hearings, note 119, supra, at p. 19. 126 Id. at 5, 32. 127 60 Stat. 427 (1946), as amended 15 U.S.C. 1051-1127 (1952), as amended 68 Stat. 509 (1954). (b) reproduce, counterfeit, copy or colorably imitate any such [registered] mark and apply such reproduction, counterfeit, copy, or colorable imitation to labels. signs, prints, packages, wrappers, receptacles, or advertisements intended to be used upon or in connection with the sale in commerce of such goods or services, shall be liable ** [for damages and profits only if] the acts have been committed with knowledge that such mark is intended to be used to cause confusion or mistake or to deceive purchasers." 139 S. 3047, 74th Cong., 1st sess. (1935). 59537-60-12 posals, such as in the Dallinger bills,130 whereby registration merely precluded the immunity which good faith might otherwise have warranted. In other words, the Dallinger bills focused on good faith but made registration a factor which could negate good faith. The question of good faith or innocence was irrelevant in the approach of the second Duffy bill. More objective criteria there determined results which were primarily dependent in the Dallinger bills on the question of good faith.131 VII. SUMMARY OF MAJOR ISSUES IN REVISION OF LAW Examination of present statutory and case law, previous proposals for revision of the law, and provisions in foreign laws reveals several major issues for policy decision. These issues are posed most sharply in particular areas which will be suggested below. Although the issues may be isolated for discussion purposes, it is apparent that the problem of the innocent infringer might be solved by an infinite combination of different provisions. The major issues may be posed as follows: A. Should all innocent infringers (i.e., all those who act in good faith without knowing or having reason to suspect that they are infringing) either be absolved from liability, or be subjected only to limited remedies? B. If not, should immunity be given, or the remedies be limited for innocent infringements in the case of 1. Printers? 2. Vendors? 3. Periodical publishers with respect to advertisements? 5. Broadcasters? 6. Any others? C. Should innocent infringement be related to formalities so that1. A copyright notice, or registration, will preclude the defense of innocence? 2. Reliance in good faith upon the absence of a copyright notice, or of registration, will constitute innocence? D. Under A or B or C-2, above, what remedies should be available against the innocent infringer: 1. Actual damages? 2. Profits? 3. Statutory damages in the usual amounts or in reduced amounts? 4. Reasonable license fees, with or without a stated minimum and maximum? 5. Injunction? 6. Impounding and destruction of infringing copies? 7. Costs? 130 H.R. 8177, H.R. 9137, 68th Cong., 1st sess. (1924). 131 The Lanham Act. note 127, supra, also attempts to deal with this problem. Damages are recoverable only if the defendant had notice, actual or through a mark on the goods, that the goods are protected by a mark registered under the act. |