"In the absence of a special contract, or notice by the author at the time he -consented to the use of his work, the necessary editing, arranging, or adaptation of such work for publication in book form or for use in a newspaper, magazine, or periodical, in broadcasting, in motion pictures, or in mechanical or electrical reproduction, in accordance with customary standards and reasonable requirements, shall not be deemed to contravene the right of authors reserved in this section; provided that nothing in this section shall be deemed to alter or in any manner impair any right or remedy of an author at common law or in equity." Without the proper local legislation, these suggestions if incorporated into the Bern Convention might be disastrous to the motion-picture industry. The English Board of Trade, an arm of the English Government, in 1936 instructed its representatives to the Bern Convention to change the clause on publication to meet the objections raised by the courts in Holland in the Sax Rohmer and other cases by inserting in article, subdivision 4 of the Bern Convention: "That a work shall be considered to have been 'published' in a country if copies of the work have been made available to the public in that country, provided there is at the time a bona fide intention on the part of the publisher to supply any demand of the work by the public if and when such demand shall arise." The English Board of Trade also made drastic recommendations affecting performing rights societies and other monopolies on rights in copyrighted works, as follows: "(4) Each country of the Union may, by its national legislation, provide for the regulation of the exercise of any of the rights covered by this article in respect of so great a number of such works that such person or body of persons is able to, and does: "1. Impose unduly onerous charges or conditions for permission to exercise any such rights; or "2. Unreasonably refuse to grant any such permission; but no such legislative regulation shall prevent the payment of an equitable remuneration for any dealing with such works in any of the ways covered by this article, such remuneration to be fixed, failing agreement, by the competent authority in the country concerned. "(5) For the purposes of the preceding paragraph, a musical or dramaticmusical work shall be considered to include the combination of the music with any words so closely associated therewith as to form part of the same work." III Great stress is placed by the State Department upon the action of the courts of the Netherlands in refusing to recognize as a "published work" within the meaning of that term as used in the Bern Convention, a work that was published in the United States and had simultaneous publication in a Bern Convention country. The attitude of Holland is not surprising; the Netherlands has never been very strong for copyright, either domestic or international. On February 23, 1895, our Legation at The Hague wrote to Secretary of State Walter G. Gresham, as follows: "In my last interview on the subject with the Minister of Foreign Affairs, His Excellency stated that there existed no copyright whatever in this country (Holland), public opinion being adverse thereto and hence the prospects of international copyright law were very slight indeed." Holland did not join the Bern Convention until 1914. In the Sax Rohmer case the courts of Holland denied copyright protection to a work published simultaneously in the United States and Canada, and the same course was followed in the action brought by Margaret Mitchell, author of the well-known novel Gone With the Wind. In 1938 a Dutch motion-picture-producing company made a motion picture based upon the novel and the play entitled Daddy Long Legs, written by Jean Webster. Twentieth Century-Fox Film Corporation, the owner of the world-wide silent, sound, dialogue, and talking motion-picture rights in this novel and play, instituted an action in Holland, asserting that the novel and the motion picture were protected in Holland because of reciprocal copyright relations between the United States and Holland. On April 9, 1910, the President of the United States in a proclamation said: * * * "Whereas satisfactory evidence has been received that in the Netherlands and possessions * * * has permitted to citizens of the United States the benefit of copyright on substantially the same basis as to citizens of those countries * * and stated that the citizens or subjects of Holland are entitled to the benefits of our Copyright Act with the exception of the mechanical clause. On February 26, 1923, the President of the United States issued a proclamation concerning the mechanical clause, extending the protection of 1 (e) of our Copyright Act to works by authors of the Netherlands. The proclamation stated: "Whereas the Government of the Netherlands declared on October 2, 1922, that under the laws in force in that country citizens of the United States may claim copyright in the Netherlands and possessions with respect to their musical works made or published for the first time since the date of this declaration, which copyright includes the exclusive right to manufacture rolls, discs and other objects for the mechanical reproduction of a work in whole or in part * * * "" Relying upon these proclamations, Twentieth Century-Fox Film Corporation instituted its action in the Netherlands. The Dutch Minister of Foreign Affairs took a special interest in the case and discovered that on November 2, 1926, the Dutch Chargé d'Affaires in Washington delivered to the Solicitor General in Washington a memorandum withdrawing the declaration of October 2, 1922, and stating expressly that the works of American authors are not protected in Holland. A search was made for this document in the Department of State without success. However, the original memorandum was located in the Dutch Embassy with an endorsement on its back, stating that a copy was delivered to the Solicitor General of the State Department on November 2, 1926; in 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. Notwithstanding the discovery of this document in 1940 by the State Department, no action has been taken by the State Department to cancel and annul the Presidential proclamation concerning our copyright relations with Holland. I desire to have incorporated in this hearing a copy of this correspondence which will be marked "Exhibit B." IV The United States should not adhere to the Bern Convention until the Bern agreement has been revised. There is a growing sentiment among the creators and users of copyright in Europe that the Bern Convention is outmoded and does not fully serve the purpose for which it was created. The feeling is strong that the convention should be revised so that the rights and obligations are fully and clearly defined in the document and nothing left to the national laws of each country. The rights should be concisely set forth in the convention and these rights should be enforced in every country of the convention; under the present convention, certain rights and remedies are left to the national laws of the countries in which these rights and remedies are claimed. For example, article 4 of the Rome Convention provides: "Consequently, apart from the express stipulations of the present convention, the extent of protection, as well as the means of redress secured to the author to safeguard his rights, shall be governed exclusively by the country where protection is claimed." And subdivision 2 of article 6 of the convention: "The determination of the conditions under which these rights shall be exercised is reserved for the national legislation of the countries of the union. The means of redress for safeguarding these rights shall be regulated by the legislation of the country where protection is claimed." This weakness in the convention is illustrated in the decisions of the courts of Holland in the Rohmer and Gone With the Wind cases. In August 1939 I conferred with some of the leading students of copyright in Europe. All seem to think that a drive should be made for a Universal Convention and when the Universal Convention became a fact, the Berne Convention should be abandoned. Mr. DeSanctis of Rome, the official copyright adviser to the Italian Government, expressed the opinion that the establishment of a Universal Convention would be an easier task than to revamp the Berne Convention. Our adherence to the Berne Convention in the present unsettled condition of the world would not benefit a single iota the American authors and American copyright proprietors. Their rights abroad are as fully protected now under our treaties and reciprocal copyright relations with foreign countries as they would be if the United States adhered to the Berne Convention. EXHIBIT A UNITED STATES DISTRICT COURT, SOUTHERN DISTRICT OF NEW YORK Juan Luis Portuondo, plaintiff, against Columbia Phonograph Company, Inc., and Pedro Flores, defendants Porfirio Golibart, a citizen of the Dominican Republic, wrote a musical composition in 1928 entitled "Fellita" which he registered on August 6, 1928, in the office of the Secretary of State of the Public Education and Fine Arts of the Dominican Republic. Thereafter, Porfirio Golibart assigned the composition to the plaintiff Juan Luis Portuondo. In 1935, defendant Pedro Flores published a composition entitled "Carmelita"; this composition was apparently recorded by the Columbia Phonograph Company. Plaintiff alleges that the composition "Carmelita" infringes, the composition "Fellita." The plaintiff claims copyright protection in the United States on the ground that the Dominican Republic is a member of the Buenos Aires Convention, August 11, 1910, and that the United States of America is a party to that Convention. The defendant moved to dismiss the complaint on the ground— (1) That the Buenos Aires Convention did not extend protection to mechanical reproduction. (2) That the complaint did not allege that the statutory requirements of the copyright laws of the Dominican Republic were fully complied with. (3) That the complaint did not allege a reservation of the alleged property rights. (4) That a copy of the work was not attached to the complaint as required by Rule 2. The Court held that the plaintiff must look to the laws of the United States for the enforcement of his rights and under our Copyright Act reciprocal copyright relations are determined by proclamations by the President; in this case the complaint did not allege that a proclamation had been issued. The complaint was dismissed. UNITED STATES DISTRICT COURT, SOUTHERN DISTRICT OF NEW YORK Juan Luis Portuondo, Plaintiff vs. Columbia Phonograph Company, Inc., and Pedro Flores, defendants NOTICE OF MOTION SIR: PLEASE TAKE NOTICE that upon the Bill of Complaint in the aboveentitled action, the undersigned will move this court at a motion part thereof to be held in and for the Southern District of New York at the Federal Courthouse, Foley Square, Borough of Manhattan, New York City, on the 19th day of January 1937, at 10:30 o'clock in the forenoon of that day, or as soon thereafter as counsel can be heard, for an order, granting judgment dismissing the Bill of Complaint, on the ground that said complaint does not state facts sufficient to constitute a cause of action, and for such other and further relief as to this court may seem just and proper together with costs of this motion. Dated New York, N. Y., this 11th day of January 1937. (Signed) HERBERT A. Huebner, UNITED STATES DISTRICT COURT FOR THE SOUTHERN DISTRICT OF NEW YORK Juan Luis Portuondo, Plaintiff, against Columbia Phonograph Company, Inc., and Pedro Flores, defendants DEFENDANT'S MOTION TO DISMISS BILL OF COMPLAINT Now comes the defendant, COLUMBIA PHONOGRAPH COMPANY, INC., and moves this Honorable Court to dismiss the bill of complaint with costs to defendant on the ground that the bill of complaint, which purports to set forth an action in equity for alleged infringement of musical copyright does not allege facts sufficient to constitute a cause of action, in that 1. The Convention to which the United States of America and the Dominican Republic are parties as alleged in Paragraph "Seventh" of the bill of complaint does not extend to authors protection in the field of mechancial reproduction as in the form of phonograph records. 2. The bill of complaint does not allege facts showing that the steps required by the laws of the Dominican Republic in securing copyright and registering claim thereto have been duly taken and that statutory requirements have been fully complied with. 3. The bill of complaint does not allege facts showing that there appears in the alleged copyrighted work a statement that indicates the reservation of the alleged property right, and on the further ground that the bill of complaint fails to comply with Rule 2 of the Rules adopted by the Supreme Court of the U. S. for practice and procedure under the copyright laws, the pertinent portion of which reads as follows: "A copy of the alleged infringement of copyright, if actually made, and a copy of the work alleged to be infringed, should accompany the petition, or its absence be explained.' COLUMBIA PHONOGRAPH COMPANY, INC., By (Sgnd) HERBERT A. HUEBNER, Attorney for Defendant, Office and P. O. Address, 1776 Broadway, Borough of Manhattan, City of Of Counsel: JOSEPH E. MCMAHON. (Signd.) (Joseph E. McMahon), 1776 Broadway, New York, N. Y. UNITED STATES DISTRICT COURT, SOUTHERN DISTRICT OF NEW YORK Juan Luis Portuondo, plaintiff, against Columbia Phonograph Company, Inc., and Pedro Flores, defendants. Equity AMENDED BILL OF COMPLAINT Plaintiff, complaining of the defendant, by LEON A. BRODY, his attorney' respectfully alleges: FIRST. That at all the times hereinafter mentioned plaintiff's assignor, PORFIRIO GOLIBART, was and still is a citizen of the Dominican Republic. SECOND. That the plaintiff is a resident of the City, County, and Southern District of New York. THIRD. Upon information and belief that the defendant, PEDROS FLORES, is a citizen and resident of the City, County, and Southern District of New York. FOURTH. That the defendant, COLUMBIA PHONOGRAPH COMPANY, INC., is a corporation organized under the laws of the State of New York, with its principal place for the transaction of business in the City, State, and Southern District of New York. FIFTH. That in 1928 plaintiff's assignor composed a musical composition entitled "Fellita"; that a copy of the said musical composition is annexed hereto as Exhibit A and made a part hereof. SIXTH. That on or about August 6th, 1928, plaintiff's assignor duly procured the said composition to be copyrighted in the cffice of the Secretary of State of the Public Education and Fine Arts of the Dominican Republic. A copy of the certificate of registration of said copyright, marked "Exhibit B," is attached hereto and made a part hereof; that all the steps required by the laws of the Dominican Republic in securing the copyright to the said song and registering claim thereto have been duly taken and that the statutory requirements have been duly complied with; that in the said song, as copyrighted and registered, there appeared a statement indicating the reservation of the property right. SEVENTH. That the United States of America and the Domincian Republic are parties to a Convention concerning Literary and Artistic Copyright signed at Buenos Aires, August 11th, 1910; that Article 2nd of the said Convention provides that musical compositions with or without words include all productions that can be published by any means of impression or reproduction; that the following countries are also parties to the said Convention: Argentine Republic, Brazil, Chile, Colombia, Costa Rica, Cuba, Ecuador, Guatemala, Haiti, Honduras, Mexico, Nicaragua, Panama, Paraguay, Peru, Salvador, Uruguay, and Venezuela. EIGHTH. That Article 3rd of the said convention provides: "The acknowledgment of a copyright obtained in one State, in conformity with its laws, shall produce its effects of full right, in all the other States, without the necessity of complying with any other formality * * "" * NINTH. That the defendants with full knowledge of the rights of plaintiff's assignor in said musical composition in or about 1935 and thereafter unlawfully published and caused to be published and placed on the market for sale in various stores and elsewhere in the City of New York, United States of America and foreign countries, a musical composition "Carmelita" and mechanical reproductions thereof; that said musical composition is taken and copied from "Fellita," the aforementioned composition of plaintiff's assignor. TENTH. That the said publication and sale by the defendants was and is without the consent and authority of the plaintiff or his assignor; that by reason of the foregoing wrongful acts of the defendants, the Plaintiff's assignor has suffered great damage. That the defendant PEDRO FLORES claims to be the composer of the said composition "Carmelita" and has received and is receiving royalties and benefits for its use; that the said PEDRO FLORES has performed and is performing said composition over the radio and on phonograph records; that the defendant, COLUMBIA PHONOGRAPH COMPANY, INC., has manufactured and sold and is at present manufacturing and selling phonographic reproductions of the said composition in the City and State of New York, the United States of America, foreign countries and particularly through North America and South America, including those countries which are signatory to the convention above-mentioned. ELEVENTH. That the publication and sale of the said composition and mechanical reproductions thereof is in contravention of the rights of the plaintiff and his assignor and has caused and will cause irreparable damages for which he has no adequate remedy at law. TWELFTH. That prior to the commencement of this action PORFIRIO GOLIBART duly assigned to the plaintiff all his rights in the premises. THIRTEENTH. That the plaintiff's damages cannot be computed without an accounting. WHEREFORE, plaintiff demands judgment that the defendants, their agents, employees and all persons under their control be forever restrained and enjoined from manufacturing, publishing, selling or in any manner distributing the said musical composition entitled "Carmelita" or any other composition which is a colorable imitation of any substantial part of the composition of plaintiff's assignor; that the defendants account to the plaintiff for any and all damages sustained by the plaintiff by reason of the acts aforesaid and that the defendants pay said damages to the plaintiff; that the defendants pay to the plaintiff the costs and disbursements of this action; and that the plaintiff have such other and further relief as may be proper. LEON A. BRODY, Office and Post Office Address, 1501 Broadway, Borough of Manhattan, STATE OF NEW YORK, County of New York, ss: JUAN LUIS PORTUONDO, being duly sworn, deposes and says that he is the plaintiff in the within action; that he has read the foregoing Amended Bill of Complaint and knows the contents thereof; that the same is true to his own knowledge, except as to the matters therein stated to be alleged on information and belief, and that as to those matters he believes it to be true. (Sgnd.) JUAN LUIS PORTUondo. Sworn to before me this 3rd day of March, 1937. [SEAL] (Sgnd.) INNOCENTE COLMENARES, Commission expires March 30, 1937. |