JEWELL-LA SALLE REALTY CO. v. BUCK et al.

The American Society of Composers, Authors and Publishers, and one of its members sued the Jewell-La Salle Realty Company in the federal court for Western Missouri for an unauthorized orchestral performance of a musical composition for which they held the exclusive nondramatic performing rights. The infringement was proved, but there was no showing of actual damages. The defendant contended that the plaintiffs were entitled to only $10 statutory damages; the plaintiffs that $250 was the minimum allowable under the Copyright Act of 1909 (17 USCA §§ 1-62). The court granted an injunction and awarded $250 damages (D. C.) 32 F.(2d) 366, 368. The defendant appealed; and the Circuit Court of Appeals certified questions numbered II, III, and IV, relating to the subject of damages.1

Question II. 'In a case disclosing infringement of a copyright covering a musical composition, there being no proof of actual damages, is the court bound by the minimum amount of $250 set out in the so-called 'no other case' clause of Section 25(b) of the Copyright Act (17 U. S. C. § 25), reading, 'and such damages shall in no other case exceed the sum of $5,000 nor be less than the sum of $250, and shall not be regarded as a penalty?" The provision referred to is section 25 of the Act of March 4, 1909, c. 320, 35 Stat. 1075, 1081, as amended by the ct o f August 24, 1912, 37 Stat. 488, 489, 17 USCA § 25(b), which provides:

'That if any person shall infringe the copyright in any work protected under the copyright laws of the United States such person shall be liable: * * *

'(b) To pay to the copyright proprietor such damages as the copyright proprietor may have suffered due to the infringement, * * * or in lieu of actual damages and profits such damages as to the court shall appear to be just, and in assessing such damages the court may, in its discretion, allow the amounts as hereinafter stated, but (here follow limitations applicable specifically to newspaper reproductions of photographs, and certain motion picture infringements of undramatized or nondramatic work and of copyrighted dramatic or dramatic-musical work), and such damages shall in no other case exceed the sum of $5,000 nor be less than the sum of $250, and shall not be regarded as a penalty. But the foregoing exceptions shall not deprive the copyright proprietor of any other remedy given him under this law, nor shall the limitation as to the amount of recovery apply 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.'

Then follows the so-called schedule, of which the fourth item is:

'In the case of a dramatic or dramaticomusical or a choral or orchestral composition, $100 for the first and $50 for every subsequent infringing performance; in the case of other musical compositions $10 for every infringing performance.'

The Copyright Act confers two monopolies-that of making copies and that of giving public performances for profit. it was settled in Westerman Co. v. Dispatch Printing Co., 249 U. S. 100, 39 S. Ct. 194, 63 L. Ed. 499, which dealt with the infringement by a newspaper of the monopoly of copying, that for each publication $250 is the minimum damages. An unbroken line of decisions in the lower courts has since held that the rule declared in the Westerman Case is applicable also to infringement of the monopoly of giving public performances. It is now contended that, as applied to performances, the rule is burdensome and unreasonable; that it was followed unwillingly2 by the lower courts in the mistaken belief that the Westerman Case required them to do so; that the legislative history of section 25, when considered in the light of earlier Copyright Acts, indicates that the fourth subdivision, relating to musical compositions, was not intended to be controlled by the maximum and minimum provisions of the so-called 'no other case' clause; and that the decision in the Westerman Case is not decisive of the question certified.

The argument is that section 25 was a codification of section 4965 and section 4966 of the Revised Statutes, which embodied a distinction recognized in earlier acts between the imposition of penalties for copying, and the awarding of damages for performing; that there is no language in section 25 indicating an intention to apply the maximum and minimum provisions, theretofore contained in the penal section 4965 which dealt with unauthorized copying, to cases falling within the former remedial section 4966 which gave damages for unauthorized performing; and that a contrary intention appears from the House Report of the 1909 act.3 This argument overlooks the fact that the primary purpose of section 25 was to incorporate in one section all of the civil remedies theretofore given, including statutory damages where actual proof was lacking. It is true that the second subdivision, involved in the Westerman Case, had been part of the old penal section 4965 of the Revised Statutes. But there is nothing to show an intention to exclude the infringements mentioned in the other subdivisions from the operation of the maximum and minimum clause. The history of the section, as revealed in the extended hearings which preceded the act of 1909, makes the contrary clear.4 We are of opinion that the maximum and minimum provisions were intended to be applicable alike to all types of infringement except those for which the section makes other specific provision.

It is urged, however, that under such interpretation the suggested measure of $10 a performance, scheduled in the fourth subdivision of section 25, would not be applicable unless more than twenty-five infringing performances were proved. This appears to be the meaning of the section, read as a whole, particularly since the amounts in the scheduled subdivisions appear to have been inserted merely as an aid to the court in awarding such damages as 'shall appear to be just.'5 The definite specification of a maximum and minimum in every case, is not contradicted in any way by these legislative suggestions as to what may be deemed reasonable allowances in cases falling within the prescribed limitations. See Westerman v. Dispatch Printing Co., 249 U. S. 100, 106, 109, 39 S. Ct. 194, 63 L. Ed. 499. If as applied to musical compositions, the provisions of the entire section have proved unreasonable, the remedy lies with Congress.6 Question II is answered in the affirmative.

Question III. 'Is section 25(b) Fourth of the Copyright Act (17 U. S. C. § 25), applicable in the discretion of the Court, to a case disclosing infringement of copyright covering a musical composition, there being no proof of actual damage?'

This question has in part been necessarily answered by our discussion of question II, for, unless the number of infringing performances of a copyrighted musical composition exceeds twenty-five, the minimum allowance of $250 must be made. Where more than twenty-five infringing performances are proved, and there is no showing as to actual loss, the court must allow the statutory minimum, and may, in its sound discretion, employ the scheduled $10 a performance as a basis for assessing additional damages. See Westerman v. Dispatch Printing Co., 249 U. S. 100, 106, 39 S. Ct. 194, 63 L. Ed. 499. Subject to this limitation, question III is answered in the affirmative.

Question IV. 'In Section 25(b) of the Copyright Act (17 U. S. C. § 25) is the clause reading, 'nor shall the limitation as to the amount of recovery apply to infringements occurring after the actual notice to a defendant,' confined in its scope to the particular cases of infringement theretofore specifically mentioned in said Section 25(b)?' Inasmuch as the plaintiffs did not ask for more than the minimum statutory damages of $250, and did not appeal from the decree awarding only this sum, the question whether the court might have awarded more than the maximum of $5,000 is not properly raised upon the facts presented in this certificate. We have no occasion to consider it. Dillon v. Strathearn S. S. Co., 248 U. S. 182, 184, 39 S. Ct. 83, 63 L. Ed. 199; Reinecke v. Gardner, 277 U. S. 239, 245, 48 S. Ct. 472, 72 L. Ed. 866; White v. Johnson, 282 U. S. 367, 371, 51 S. Ct. 115, 75 L. Ed. 388.

As to question IV, the certificate is dismissed.

Question II, Yes.

Question III, Yes.

Question IV, not answered.