DOMINICAN REPUBLIC STATE SECRETARIAT OF PUBLIC EDUCATION AND FINE ARTS This certifies that there is enrolled in the registry of Artistic and Literary property under date of August 6th, 1928, number 62, folios 6 and 7, a musical work entitled "Fellita," the author of which is Mr. Porfirio Golibart. At the request of an interested party that presents are issued in Santo Domingo, D. D., the 26th day of November 1935. MANUEL REYES, Temporary Chief Clerk of the State Secretariat of Public Education and Approved: (Sgnd.) R. EMILIO JIMINEZ, State Secretary of Public Education and Fine Arts. UNITED STATES DISTRICT COURT, SOUTHERN DISTRICT OF NEW YORK Juan Luis Portuondo, plaintiff, vs. Columbia Phonograph_Company, Inc., and Pedro Flores, defendants. May 13, 1937 * * * The COXE, D. J.: The Buenos Aires copyright convention of 1910 (U. S. Stats., Vol. 38, p. 1785) provides in Article 6th that “authors or their assigns shall enjoy in the signatory countries the rights that the respective laws accord." plaintiff, therefore, must look to our copyright laws for the enforcement of his rights in this country. Under Sections 1 (e) and 8 (b) of the Copyright Law (U. S. C. A. Title 17, Sec. 1, 8) protection against mechanical reproduction is denied unless substantially similar protection is accorded to United States citizens, and it is expressly provided that the existence of these reciprocal conditions shall be determined by the President "by proclamation made from time to time." In construing these sections, the Attorney General has ruled that there must be a separate proclamation of the existence of reciprocal conditions as to mechanical reproduction (29 op. Atty. Gen'l. p. 64). In the absence of such a proclamation, the plaintiff cannot avail himself of our copyright laws, and the complaint is fatally defective in not alleging affirmatively that a proclamation to that effect was made. This disposition makes it unnecessary to decide the other questions raised by the motion. The motion of the defendant, Columbia Phonograph Company, Inc., to dismiss the amended complaint is granted. (Sgd.) ALFRED C. Coxe, U. S. D. J. OFFICIAL OPINIONS OF THE ATTORNEYS GENERAL OF THE UNITED STATES ADVISING THE PRESIDENT AND HEADS OF DEPARTMENTS IN RELATION TO THEIR OFFICIAL DUTIES COPYRIGHT LAW RIGHTS OF ALIEN AUTHORS AND COMPOSERS The provision at the end of section 8 of the copyright act of March 1, 1909 (35 Stat. 1077), which requires the President to determine by proclamation the existence of the reciprocal conditions upon which alien authors and composers may acquire the general privileges under said act, applies equally to the reciprocal condition specified in the proviso to section 1 (e) of that act, upon which an alien may acquire the right of controlling the parts of instruments serving to reproduce mechanically a musical work. Where a German citizen has complied with all the general provisions of the copyright act at any time subsequent to July 1, 1909, the date upon which the act became effective, there was vested in him the rights and privileges set forth in said act, except the right specified in section 1 (e), as Germany had at that time complied with one or more of the conditions enumerated in section 8, subsection (b). A German citizen who has strictly complied with the provisions of the A German citizen could not acquire the right specified in the proviso to DEPARTMENT OF JUSTICE, May 6, 1911. SIR: I have the honor to acknowledge receipt of your communication of March 3, 1911, in which you propound a number of questions relating to the rights that may be acquired by alien authors and composers under the copyright law of March 4, 1909 (35 Stat. 1075). While some of these questions are entirely abstract, yet I think that answers to them all will appear from the conclusions reached with reference to the rights of citizens of Germany whose copyright laws and the proclamations of the President relating thereto are as follows: The laws of the German Government have complied with one of the reciprocal conditions mentioned in section 8, subsection (b) of the copyright act ever since that act went into effect on July 1, 1909, and that country was among those included in the proclamation of the President, made April 9, 1910, which declared that the citizens of the countries mentioned therein were entitled to the privileges of the copyright law as of July 1, 1909. However, the reciprocal condition as to music, provided in section 1 (e), was not complied with by Germany until September 9, 1910, and the proclamation of the President declaring that this condition had been met was issued December 8, 1910. This proclamation recited that satisfactory official assurance had been given that Germany "now permits to citizens of the United States similar rights to those accorded in section 1 (e) of the act of March 4, 1909," but did not mention the date upon which such similar rights were granted. The questions presented by this state of facts are: 1. Is it the duty of the President to determine by proclamation the existence of the reciprocal condition specified in the proviso of section 1 (e). 2. What rights, if any, could a German citizen, who was a nonresident of the United States acquire under the general provisions of the copyright law between July 1, 1909, the date upon which the copyright act of March 4, 1909, became effective, and April 9, 1910, the date of the proclamation of the President declaring that the citizens of Germany were entitled to the general privileges of that act. 3. What rights, if any, could such German citizen acquire under the special provision in section 1 (e) between September 9, 1910, the date upon which the reciprocal condition provided for therein was complied with by Germany, and December 8, 1910, the date of the proclamation issued by the President declaring such fact; and 4. Could a citizen of Germany acquire the right specified in the proviso to section 1 (e) prior to September 9, 1910. The general provisions of the act relating to the privileges of alien authors and composers to secure copyrights of their works in the United States are contained in section 8 of the act, which reads as follows: "That the author or proprietor of any work made the subject of copyright by this act, or his executors, administrators, or assigns, shall have copyright for such work under the conditions and for the terms specified in this act: Provided, however, That the copyright secured by this act shall extend to the work of an author or proprietor who is a citizen or subject of a foreign state or nation only: "(a) When an alien author or proprietor shall be domiciled within the United States at the time of the first publication of his work; or "(b) When the foreign state or nation of which such author is a citizen or subject, grants, either by treaty, convention, agreement, or law, to citizens of the United States the benefit of copyright on substantially the same basis as to its own citizens, or copyright protection substantially equal to the protection secured to such foreign author under this act or by treaty; or when such foreign state or nation is a party to an international agreement which provides for reciprocity in the granting of copyright by the terms of which agreement the United States may, at its pleasure, become a party thereto. "The existence of the reciprocal conditions aforesaid shall be determined by the President of the United States, by proclamation made from time to time, as the purposes of this act may require.' The first section of the act provides that: "Any person entitled thereto, upon complying with the provisions of this act, shall have the exclusive right. "(e) To perform the copyrighted work publicly for profit if it be a musical composition and for the purpose of public performance for profit; and for the purposes set forth in subsection (a) hereof, to make any arrangement or setting of it or of the melody of it in any system of notation or any form of record in which the thought of an author may be recorded and from which it may be read or reproduced: Provided, That the provisions of this act, so far as they secure copyright controlling the parts of instruments serving to reproduce mechanically the musical work, shall include only compositions published and copyrighted after this act goes into effect, and shall not include the works of a foreign author or composer unless the foreign state or nation of which such author or composer is a citizen or subject grants, either by treaty, convention, agreement, or law, to citizens of the United States similar rights.' Does the provision at the end of section 8, requiring the President to determine the "reciprocal conditions aforesaid," by proclamation, apply to the restriction upon aliens contained in section 1 (e)? This presents another of the many difficult questions of construction which have arisen in the enforcement of this act. It must be conceded that this pro-vision is remote from section 1 (e), that it relates directly to the preceding provisions in section 8 and that it contains nothing which necessarily requires its extension to the condition expressed in section 1 (e). However, here, as in every question of statutory construction, it is necessary to consider all parts of the act relating to the subject under consideration, and to determine therefrom as nearly as possible the legislative intent. That there is a close relationship in the subject matter of section 1 (e) and of the proviso to section 8, is apparent. The latter relates to the conditions upon which an alien may acquire the general privileges under the act, while the former specifies a particular condition upon which an alien may acquire the right of controlling the parts of instruments serving to reproduce mechanically a musical work. This condition is in a way dependent upon the conditions set forth in section 8, inasmuch as it may be complied with, and yet the right to control the parts of the instruments mentioned could not be acquired unless some one of the conditions prescribed in the latter section is also met; that is, the condition relating to this particular matter is added to those set forth in section 8. It is reciprocal in its nature, just as those in class (b) of section 8 are reciprocal. Every reason which prompted the insertion of the clause in section 8 relating to the proclamation by the President, applies equally to the proviso in section 1 (e). Without the specification of some method by which it may be determined whether the laws of a foreign country comply with this particular condition, the general public could possess no adequate knowledge as to whether a copyright of a musical composition carried with it the protection of the right declared therein, and the proof of such right in actions for infringement would often be uncertain and difficult to obtain. There can be but little doubt that Congress intended that the requirement that the existence of "the reciprocal conditions aforesaid" shall be determined by the President of the United States, should apply to the reciprocal requirements specified in section 1 (e), and that it was not there expressed because it was assumed that the language of the concluding clause of section 8 implied that all reciprocal conditions upon which the right of foreign authors or composers depend, should be determined and proclaimed by the President. I hold, therefore, that it is the duty of the President to determine and proclaim what foreign countries grant to the citizens of the United States rights similar to those specified in the provisions of section 1 (e). The remaining questions may be discussed and determined together. In an opinion transmitted to you from this department on March 19, 1910 (28 Op. 222, 226), with reference to whether a proclamation of the President issued under section 8 of this statute might be made retroactive, it was said: "It will be observed that the determination of the specified conditions of the foreign laws and the proclamation of the President made with reference thereto does not create the right of foreign authors and proprietors to enjoy the rights and privileges of our copyright laws, but that such proclamation is only the evidence of the existence of the conditions under which those rights and privileges may be exercised. It is true that the absence of such proclamation is conclusive evidence that such rights do not exist, while, on the other hand, the proclamation is conclusive evidence that they do exist; but, nevertheless, the proclamation is not a condition precedent to the existence of the rights themselves. Therefore, there is no reason why such proclamation may not be retroactive in its effect; and, consequently, if a proclamation were made showing the determination of fact by the President that either of the conditions required in the statute have been complied with since a specified date, such proclamation would be conclusive evidence of that fact, and the citizens or subjects of such country would be entitled to avail themselves of our copyright laws from the date mentioned in the proclamation.' Another careful consideration of the provisions of the act relating to this subject but confirms in my mind the view there expressed. Germany having complied with one or more of the conditions set forth in section 8, subsection (b), on or before July 1, 1909, at any time thereafter and independent of the President's proclamation, a German citizen could acquire the rights declared by the act of March 3, 1909, by a compliance with its terms. It is true that, in the absence of the President's proclamation, he could not obtain a registration of his claim to copyright; but under this statute registration is not a necessary prerequisite to the existence of the rights and privileges of copyright, as they are vested by a compliance with the conditions of the statute by the author or composer. Hence, I am of the opinion that where a German citizen complied with all the general provisions of the act at any time after July 1, 1909, there was vested in him the rights and privileges set forth in the act, except the right specified in section 1 (e) which will be hereinafter considered. An important question, however, is whether, after the issuance of the proclamation on April 9, 1910, he acquired any remedy for an infringement upon his copyright between the dates mentioned. As above said, there can be no doubt that prior to the proclamation no action could be maintained for an infringement, because of the absence of the essential evidence to sustain such action. But it does not follow that when the evidence became available it could not be used to maintain an action brought to enforce a right which had previously existed. For illustration, it is familiar law that a deed, though inadmissible for the want of registration, may yet be registered and introduced as evidence to sustain an action brought before its registration. A more difficult question, however, is whether an infringer would have an equitable defense to an action for infringement between the dates mentioned, on the ground that he did not possess at the time of the infringement any legitimate notice of the existence of the copyright. Section 9 of the act requires that notice shall be affixed to each copy of the work or composition published, and prescribes precisely the character of such notice. The existence of this notice upon each copy certainly informs every person examining the same that the author or composer claims a right to a copyright therein, which embraces the claim that the country of which he is a citizen has complied with one or more of the reciprocal conditions specified in the law. Therefore, after such claim is made and notice thereof is given, it is not inequitable that anyone who shall undertake thereafter to infringe upon the rights of such author or composer, shall be required to do so at his own risk. It is practically impossible for the President to be informed whether the conditions required by the act have been complied with on the very day upon which the compliance is had. It must require some time, and often a considerable time, for the information to be transmitted through the proper channels and for the proclamation relating thereto to be prepared and published. Hence, when a copyright is claimed by an alien author or composer in strict accord with the provisions of the statute, everyone must be aware of the fact that the absence of the proclamation is not conclusive evidence that the reciprocal conditions have not been complied with by the country of such alien, and any infringement in the meantime is made subject to the knowledge that the President may determine by proclamation thereafter issued that compliance was had prior to the infringement. I am of the opinion, therefore, that if a German citizen strictly complied with the provisions of the act at any time between July 1, 1909, and April 9, 1910, he is not only vested with a copyright in his work or composition, but that he may maintain an action for any infringement which occurred between said dates. With reference to an infringement of the particular right specified in the proviso of section 1 (e) between September 9, 1910, and December 8, 1910, the same principle must apply; but it will be observed that the proclamation of the President does not recite that this condition had been met prior to the date of the proclamation; and therefore the proclamation would not afford evidence sufficient for the maintenance of an action for infringement between said dates. It is apparent, therefore, that when a proclamation is issued by the President, the precise date upon which the foreign country brought itself within the conditions of the act should be stated. With reference to the fourth question, it is clear that the right specified in the proviso to section 1 (e) could not be acquired by any German citizen prior to September 9, 1910. The reciprocal condition therein provided was a necessary prerequisite to the acquiring of the right mentioned. Previous to that date the condition of the German citizen, insofar as that particular right was concerned, was precisely the same is if the act did not exist. Mr. FULTON BRYLAWSKI, 1331 G. Street NW., Washington, D. C. MY DEAR MR. BRYLAWSKI: Referring to your letter of June 29, 1940, in regard to a memorandum of November 2, 1926, understood to have been delivered to the Department by the Legation of the Netherlands at Washington, I am now able to inform you that the Legation has very courteously placed at the disposal' of the Department its file copy of what purports to be the memorandum in question. A copy of this file copy is transmitted to you herewith. Before returning the memorandum to the Legation, the Department had a photostat copy made for its files. Should you desire a photostat copy of this photostat, it will be furnished to you at the usual charge. Sincerely yours, For the Acting Secretary of State: WALLACE MCCLURE, Acting Chief, Treaty Division. MEMORANDUM FROM THE NETHERLANDS GOVERNMENT ON THE RECIPROCALCOPYRIGHT RELATIONS BETWEEN THE UNITED STATES AND THE NETHERLANDS (November 2, 1926) It is claimed by the Dutch Government that a copy of this memorandum was delivered on November 2, 1926, to the Solicitor General of the Department of State. On May 16, 1940, the original memorandum was located by Fulton Brylawskf in the Dutch Embassy; it has an endorsement on its back stating that a copy was delivered by the Dutch Charge d'Affaires to the Solicitor General of the State Department on November 2, 1926. In the summer of 1940, the United States Department of State obtained from the Legation of the Netherlands at Washington a copy of the memorandum and under date of July 31, 1940, Dr. Wallace McClure of the Treaty Division of the Department of State forwarded a copy of the memorandum of Mr. Fulton Brylawski. There is no Solicitor General in the Department of State. There is a United States Solicitor General in the Department of Justice; at that time (1926), the Solicitor of the State Department was sometimes known as the Solicitor General. There is no record in the Department of State or in the Office of the United States Solicitor General showing that the memorandum had been delivered. The existence of the document was unearthed in an investigation in the summer of 1939 ordered by the Dutch Minister of Justice at the request of Mr. Vonck, attorney |