** first, that Congress, before the 1909 amendment, intended that one who performed a public-domain musical composition should not be able to obtain copyright protection for a phonographic record thereof, and, second, that nothing in the 1909 amendment indicated any change in that intention.60

Judge Learned Hand, who dissented on other grounds, agreed that, although records are "writings" under the Constitution, they "could not have been copyrighted under the Act." 61 The majority opinion was based primarily upon the difficulty of adapting sound recordings to the deposit and notice requirements of the present law.62 Judge Hand, whose analysis on this point is more searching, based his conclusion upon Professor Chafee's reasoning that to accord a statutory copyright in recordings would be "to ignore the very specific provisions of section 1(e) regulating the infringement of 'musical compositions' by mechanical 'reproduction.'"' 63

Whatever may be its fate as authority for the other questions it attempts to decide, it seems probable that the Capitol Records case represents an authoritative ruling on at least two points: (1) That recorded performances are potentially copyrightable under the Constitution, and (2) they are not covered by the present copyright

statute.

2. May records be protected indirectly under the copyright statute?

61

(a) The compulsory licensing provision.-Three years after enactment of the copyright statute of 1909 the Aeolian Co., then the leading manufacturer of perforated music rolls, sued a competitor for the unauthorized "copying and duplicating" of Aeolian's products. The plaintiff had manufactured its rolls under licenses from the owners of copyright in the music reproduced, and suit was brought for copyright infringement under the Federal statute. The court acknowledged that "such music rolls or records are not strictly matters of copyright.' Nevertheless, the court granted a preliminary injunction; it held that, while section 1(e) permits a manufacturer to make his own records of a copyrighted composition without express permission, it does not authorize the duplication of a licensee's records.66 The plaintiff, who was a mere licensee of the copyright owner, was granted an independent right of action under a provision of the copyright law allowing "any party aggrieved” to file a bill in equity in a Federal district court.

68

11 65

The Aeolian decision appears to represent an unsuccessful attempt to bring a case of unfair competition under the Federal copyright statute. If the ruling represented good law, its practical effect would be to give the manufacturers of sound records the equivalent of a copyright in most of their popular recordings. Although the de

60 Capitol Records, Inc. v. Mercury Records Corporation, 221 F.2d 657, 661 (2d Cir. 1955). Judge Dimock wrote the majority opinion.

61 Id. at 665.

62 Id. at 660-661.

63 Id. at 665.

Aeolian Co. v. Royal Music Roll Co., 196 Fed. 926 (W.D.N.Y. 1912).

65 Id. at 927.

Ibid. The holding was expressed as follows:

The provision of the statute (section le) that "any other person may make similar use of the copyrighted work" becomes automatically operative by the grant of the license; but the subsequent user does not thereby secure the right to copy the perforated rolls or records. He cannot avail himself of the skill and labor of the original manufacturer of the perforated roll or record by copying or duplicating the same, but must resort to the copyrighted composition or sheet music, and not pirate the work of a competitor who has made an original perforated roll.

67 35 STAT. 1084 (1909), 17 U.S.C. § 112 (1947), as amended, 65 STAT. 710 (1951).

In speaking of "skill and labor" and of pirating "the work of a competitor," the court seems clearly to have been thinking in terms of unfair competition. But this would have required action under State law rather than under the Federal copyright statute.

69

cision has not been overruled and has been cited with approval by several commentators, it is open to severe criticism.70 It would seem safe to argue that the Aeolian case does not represent the present law of the United States."1

(b) Sound tracks.-The status of motion picture sound tracks under the present copyright law presents a very delicate and special problem. When motion pictures were added to the list of copyrightable works in 191272 the talking picture, with integrated sound track, had not been invented. After the introduction of sound films the courts held that "talkies" were "nothing more than a forward step in the same art," and that use of a copyrighted work on a sound track constituted an infringement." But whether the sound track of a copyrighted motion picture would itself be protected against copying or dubbing is still open to speculation.75

Some significance may be attached to a 1946 dictum by Judge Leibell, who drew a sharp distinction between ordinary sound reproducing devices (such as "a music roll or victrola record") and sound films. His opinion implies that "talkies" may be considered copyrightable as an integrated whole "because they are so clearly of the genus 'motion picture.""" The report of the Senate Committee on Foreign Relations dealing with the Universal Copyright Convention 78 may likewise shed some light on this problem. However, while it is possible to argue that the Federal copyright law may extend protection to sound tracks when they are synchronized with the visual portion of a motion picture, the extent of copyright protection for a sound track when used separately as a purely aural work is a much more doubtful question.

B. PROTECTION UNDER LOCAL STATUTES

1. State statutes

There are no State statutes recognizing rights in sound recordings or recorded performances. On the contrary, three States have enacted statutes which may deny a musical performer or record producer any rights against unauthorized dubbing after the recording has been

09 See, e.g., HOWELL, THE COPYRIGHT LAW 150 (3d ed. 1952); 2 SOCOLOW, THE LAW OF RADIO BROADCASTING 1185 (1939); Dubin, Copyright Aspects of Sound Recordings, 26 SO. CALIF. L. REV. 139, 142 (1953); Strauss, Unauthorized Recording of Radio Broadcasts, 11 FED. COMM. B. J. 193, 195 n.15 (1950).

70 For an extensive critical analysis of the Aeolian case see Note, Piracy on Records, 5 STAN. L. REV. 433, 443-445 (1953).

71 It might be argued that the reasoning behind the decision in the Capitol Records case is in basic conflict with the Aeolian rule. See notes 59-63 supra, and text thereto. 72 37 STAT. 488 (1912).

73 L. C. Page & Co. v. Fox Film Corporation, 83 F. 2d 196, 199 (2d Cir. 1936).

74 Foreign & Domestic Music Corp. v. Licht, 196 F. 2d 627 (2d Cir. 1952); Jerome v. Twentieth Century. Fox Film Corporation, 67 F. Supp. 736 (S.D.N.Y. 1946), aff'd, 165 F. 2d 784 (2d Cir. 1948); Encore Music Publications, Inc. v. London Film Productions, Inc., 89 U.S.P.Q. 501 (S.D.N.Y. 1951).

75 For an interesting discussion of the problerus likely to be encountered in the near future with the development of video tape recording see Meagher, Copyright Problems Presented by a New Art, 30 N.Y.U.L. REV. 1081 (1955).

76 Jerome . Twentieth Century-Fox Film Corporation, 67 F. Supp. 736, 742 (S.D.N.Y. 1946), aff'd, 165 F.2d 784 (2d Cir. 1948).

77 Id. at 741.

78 S. EXEC. REP. NO. 5, 83d Cong., 2d Sess. (1954). The report asserted that the protecting coverage of the Universal Copyright Convention "clearly embraces not only the older, silent types of motion pictures with the subtitles and dialogue printed on the film, but also sound motion pictures including the integrated soundtrack portions thereof." This was true despite the fact that Article VI of the Universal Copyright Convention refers to copies of a protected work as capable of being "read or otherwise visually perceived." The report concludes that it is "abundantly clear that nothing in the present convention will result in the loss of any protection for the integrated sound portion of a motion picture which it now enjoys."

placed on sale." The statutes were passed in the wake of the Waring decisions, 80 and were obviously aimed at preventing the collection of performance royalties from broadcasters, cafe owners, and similar secondary users.81 Nevertheless, the language of the statutes may well be broad enough to prevent a common law action for dubbing in North Carolina, South Carolina, and Florida.

As part of a concerted drive by the record industry against disk piracy, bills making unauthorized dubbing a penal offense were introduced in the New York Legislature in 1952, 1953, and 1955.82 The 1952 and 1953 bills, which were identical, provided that the rerecording of a phonograph record without the consent of the owner, and with the intent to use the dubbed record for sale or public performance for profit, constituted a misdemeanor. The bills also provided that any person who knowingly sold copies of the dubbed records would likewise be subject to criminal liability. The 1955 bill was virtually identical with the earlier measures, but contained an added clause permitting broadcasters to make their own recordings of programs embodying recorded music.83

84

The first two bills were passed without opposition, but were vetoed by Governor Dewey. The 1955 bill was also passed, but failed to become law because it was not signed by Governor Harriman. 2. Municipal ordinances

Los Angeles apparently has the distinction of having the only provision in the United States prohibiting unauthorized dubbing and sale of dubbed phonograph records. 85 The ordinance, which was passed in

7 N.C. GEN. STAT. c. 66, §§ 68-28 (1943); S.C. CODE, § 6641 (1942); FLA. STAT. ANN. §§ 543.02, 543.03 (1943). The text of the provision reads as follows:

When any phonograph record or electrical transcription upon which musical performances are embodied, is sold in commerce for use within this state, all asserted common law rights to further restrict or to collect royalties on the commercial use made of any such recorded performances by any person are hereby abrogated and expressly repealed. When such article or chattel has been sold in commerce, any asserted tangible rights shall be deemed to have passed to the purchaser upon the purchase of the chattel itself, and the right to further restrict the use made of phonograph records or electrical transcriptions, whose sole value is in their use, is hereby forbidden and abrogated.

Nothing in this section shall be deemed to deny the rights granted any person by the United States copyright laws. The sole intendment of this enactment is to abolish any common law rights attaching to phonograph records or electrical transcriptions whose sole value is in their use, and to forbid further restrictions or the collection of subsequent fees and royalties on phonograph records and electrical transcriptions by performers who were paid for the initial performance at the recording thereof.

80 Waring v. Dunlea, 26 F. Supp. 338 (E.D.N.C. 1939); Waring v. WDAS Broadcasting Station, Inc., 327 Pa. 433, 194 Atl. 631 (1937). See notes 124-129, infra, and text thereto.

91 See Diamond and Adler, Proposed Copyright Revision and Phonograph Records, 11 AIR L. REV. 29, 44 (1940); Note, Rights of Performers and Recorders Against Unlicensed Record Broadcasts, 49 YALE L. J. 559, 561 (1940).

$2 No. 2267 (In Senate, February 19, 1952); No. 2681 (In Assembly, February 19, 1952); No. 188 (In Senate, January 13, 1953); No. 347 (In Assembly, January 13, 1953); Nos. 965, 3299, 3514 (In Senate, January 25, 1955); Nos. 1224, 3627, 3818 (In Assembly, January 25, 1955). The text of the 1952 and 1953 bills reads as follows:

Any person who:

1. Shall directly or indirectly by any means, knowingly transfer or cause to be transferred any sounds recorded on a phonograph record, disc, wire, tape, film or other article on which sounds are recorded, with intent to sell, or cause to be sold, or to use or cause to be used for profit through public performance, such article on which such sounds are so transferred, without the consent of the owner;

or

2. Shall sell any such article with the knowledge that the sounds thereon have been so transferred thereon without the consent of the owner,

shall be guilty of the misdemeanor.

As used in this section, the word "person" shall mean any individual, partnership, corporation or association; and the word "owner" shall mean the person who owns the master phonograph record, master disc, master tape, master film or other device used for reproducing recorded sounds on phonograph records, discs, tapes, films or other articles on which sound is recorded, and from which the transferred recorded sounds are directly or indirectly derived.

The added clause read as follows:

Nothing in this Act shall apply to any person engaged in broadcasting who makes any such transfer, or to the article resulting from such transfer, where the transfer is made for the purpose of recording a program if such person has the right to broadcast the sounds recorded on the original phonograph record, disc, wire, tape, film, or other article.

4 See Note, Piracy on Records, 5 STAN. L. REV. 433, 440 (1953); BILLBOARD, Aug. 7, 1954, p. 18. The latter item stated: "Both times Dewey let it be known that he believed relief from piracy should come thru Federal legislation."

MUNICIPAL CODE OF THE CITY OF LOS ANGELES § 42.19.1 (1948).

1948, reads as follows:

SEC. 42.19.1. PHONOGRAPH RECORDS REPRODUCTION RIGHTS

It shall be unlawful for any person to manufacture or reproduce for sale any phonograph records without the written consent of the owner of the reproduction rights thereto, or to knowingly distribute for sale or keep for sale phonograph records which have been manufactured or reproduced without the written consent of the person owning the reproduction rights thereto.

C. COMMON LAW PROTECTION AGAINST IMITATION

Before discussing common law theories for the protection of a recording against duplication or repressing, it may be worthwhile to distinguish the situation in which the general style or characteristics of the record are imitated, mimicked, satirized, or burlesqued in another record.86 This paper is concerned with rights against the actual reproduction of one record upon another, whether by repressing or by recapturing the sounds electrically or acoustically. It is important to differentiate this situation from that in which one recorded performance is imitated in another recorded performance, even where the style of performance and manner of interpretation is followed so closely as to be virtually indistinguishable. In the second case a new performance has taken place, and American courts have been extremely reluctant to grant protection in this area.87 In a 1950 California case 88 involving similarities in the manner in which a musical composition was performed on two phonograph records, one of the grounds for denial of relief was that there are no property rights in a general style of performance.89 On the other hand, if the plaintiff could show real fraud or passing off, it is likely that he could enjoin the sale of a record imitating his own."

D. COMMON LAW THEORIES FOR PROTECTION AGAINST DUBBING

1. In general

It seems clear on the basis of the foregoing analysis " that, for all intents and purposes, sound recordings are given no protection. under the Federal copyright statute. Performers and record producers must look to the laws of the various States for any recogni

86 A footnote to the majority opinion in Waring v. WDAS Broadcasting Station, Inc., states:

It has been said that the owner of the production rights of a play cannot enjoin an imitation of the actors and stage business: [citations omitted]. Such imitations, while they may resemble the original, are not identical with it. In the present case, however, it is not a copy or imitation but the exact reproduction of the performance itself, transfixed by a mechanical process, for which protection is sought. 327 Pa. 433, 438-439 n. 3, 194 Atl. 631, 634 n. 3 (1937). See Young, Copyright Law-Musical Style PiracyPossible Methods of Legal Protection for the Musical Stylist, 28 KY. L.J. 447 (1940).

87 Cf. Bloom & Hamlin v. Nixon, 125 Fed. 977 (E.D. Pa. 1903); Savage v. Hoffman, 159 Fed. 584 (S.D.N.Y. 1908); Green v. Minzensheimer, 177 Fed. 286 (S.D.N.Y. 1909); Murray v. Rose, 30 N.Y.S. 2d 6 (Sup. Ct. 1941). 88 Supreme Records, Inc. v. Decca Records, Inc., 90 F. Supp. 904 (S.D. Cal. 1950). For a discussion of this case see Burton, Business Practices in the Copyright Field, in SEVEN COPYRIGHT PROBLEMS ANALYZED 87, 114-115 (1952).

S Supreme Records, Inc. v. Decca Records, Inc., 90 F. Supp. 904, 908–909 (S.D. Cal. 1950). Judge Yankwich stated his conclusion as follows (Id. at 909):

There is a line of cases which holds that what we call generically by the French word représentation,— which means to perform, act, impersonate, characterize, and is broader than the corresponding English word, is not copyrightable or subject to any right recognized under the law of unfair competition... If recognition were given to the right of ownership in a musical arrangement, we would have to disregard all these cases. We would have to hold that Mr. Charles Laughton, for instance, could claim the right to forbid anyone else from imitating his creative mannerisms in his famous characterization of Henry VIII, or Sir Laurence Olivier could prohibit anyone else from adopting some of the innovations which he brought to the performance of Hamlet.

90 Cf. Jones v. Republic Productions, Inc., 112 F 2d 672 (9th Cir. 1940); Lone Ranger, Inc. v. Cox, 124 F.2d 650 (4th Cir. 1942); Lone Ranger, Inc. v. Currey, 79 F. Supp. 190 (M.D. Pa. 1948); Chaplin v. Amador, 93 Cal. App. 358, 269 Pac. 544 (1928); Goldin v. Clarion Photoplays, Inc., 202 App. Div. 1, 195 N.Y. Supp. 455 (1st Dep't 1922),

1 See Section II.A., supra.

tion of rights in their recordings.92 These laws consist almost entirely of judge-made common law. They differ widely from State to State, and are often conflicting and irreconcilable.93

94

The body of case law dealing with protection for recordings and recorded performances is entirely a product of the 20th century, although it was necessarily built upon older concepts. In attempting to secure recognition of rights in their recordings, performers and record manufacturers have relied upon two principal legal theories: (1) "common law copyright" (also called literary property right, common law property right, and intellectual property), and (2) unfair competition.

Common law copyright and unfair competition both involve the recognition of property rights, and this has led some courts to confuse the two concepts and to speak interchangeably of them.96 Essentially, however, the two theories are quite different:

a. A work may be protected by a common law copyright only if it constitutes an original intellectual creation. The work need not be eligible for a statutory copyright, but it must embody some creative intellectual or artistic contribution. A common law copyright confers complete protection against unauthorized use, and this protection ordinarily lasts as long as the work remains unpublished.97 b. The theory of unfair competition recognizes a property right in business assets which have been acquired by the expenditure or investment of money, skill, time, and effort. The work need not be original, new, or creative to be protected. The concept of unfair competition does not confer a monopoly, but protects only against unfair use in business. It is not affected by publication.98 It is entirely possible for the same person to assert two separate common law property rights in a sound recording-both a common law copyright and a right against unfair competition.99 Before one can attempt to analyze the problem, however, it is essential that the two concepts be sharply distinguished.

In addition to cases involving protection of recordings on theories of common law copyright or unfair competition, situations may arise

The American judicial system provides for a Federal judiciary, which exists in addition to the courts of each State. The Federal courts deal not only with cases involving Federal statutes, but also with controversies in which the parties are citizens of different States. Before 1938 it was assumed that in these "diversity of citizenship" cases the Federal courts could apply the so-called "Federal common law" and were not bound by any State court precedents. Following the Supreme Court decision in Erie Railroad Co. v. Tompkins, 304 U.S. 64 (1938), however, the Federal courts are required to apply the law of the State where the district court in which the action was brought happened to be located. This has presented the courts in cases involving performers' rights and rights in sound recordings with problems of extreme complexity; see, e.g., Capitol Records, Inc. v. Mercury Records Corporation, 221 F. 2d 657 (2d Cir. 1955); Ettore v. Philco Television Broadcasting Corporation, 229 F. 2d 481 (3d Cir. 1956), cert. denied, 351 U.S. 926 (1956). The court may be called upon to determine (1) the State conflict of laws rule, (2) which State laws apply, (3) what the various State laws are, and (4) how to resolve conflicts among the applicable State laws. See, in particular, Section II.D.2.d., infra.

93 This lack of uniform standards was apparently the underlying basis for Judge Learned Hand's dissent in the Capitol Records case, note 92 supra, at 664. Judge Hand concluded that, since recorded performances are "writings" and are constitutionally eligible for copyright protection, the question should be one of Federal law. He felt that failure of Congress to include performances in the Federal statute should not give the States the power to create a perpetual monopoly and thus defeat the constitutional requirement that protection be granted only for "limited times." Judge Hand conceded that this conclusion might be regarded as harsh, and implied that copyright legislation is needed to correct the situation. For an interesting discussion of this position see Kaplan, supra note 59.

4 The phonograph was not invented until 1877, and the vogue for sound reproducing devices did not become general until more than a decade later.

95 The cases dealing with recordings and recorded performances involve not only protection against dubbing but also rights against unauthorized broadcasting and public communication. This paper is concerned solely with dubbing, but it is essential to refer to cases dealing with other types of uses in order adequately to cover the problem. It is certainly arguable that a decision upholding a right to enjoin unauthorized broadcasting likewise furnishes a precedent for an injunction against dubbing. The opinions themselves tend to emphasize the nature of the right rather than the type of use to be restrained.

See, e.g., Waring v. Dunlea, 26 F. Supp. 338 (E.D.N.C. 1939); Metropolitan Opera Ass'n, Inc. v. Wagner-Nichols Recorder Corp., 101 N.Y.S. 2d 483 (Sup. Ct. 1950), aff'd, 107 N.Y.S. 2d 795 (App. Div. 1951). 97 See Comment, Protection of Intellectual Property 35 ILL. L. REV. 546 (1941); Baer, Performer's Right to Enjoin Unlicensed Broadcasts of Recorded Renditions, 19 N.C. L. REV. 202 (1941).

98 See Chafee, Unfair Competition, 53 HARV. L. REV. 1289 (1940).

For example, an opera impresario might have a common law copyright in a recording of an operatic performance derived from employment agreements or assignments from the performers and his own creative contributions, and at the same time a right against unfair competition derived independently from his investment of time, money, skill, and effort in the production.