Copr. © West 1997 No claim
to orig. U.S. govt. works
389 F.2d 903
157 U.S.P.Q. 69
(Cite as: 389 F.2d 903)
Copyright infringement action.
The United States District Court for the Southern District of
New York, John F. X. McGohey, J., denied copyright owners' request
for preliminary injunction and the copyright owners appealed.
The Court of Appeals, J. Joseph Smith, Circuit Judge, held that
where owners of copyrights covering mechanical reproductions of
33 musical compositions had knowingly acquiesced in use of the
copyrighted works, they no longer had any right to exclusive use
of them and were not entitled to a preliminary injunction against
alleged infringer.
Affirmed.
[1] INJUNCTION k132
212k132
Preliminary injunction is extraordinary
remedy and will not be granted unless upon clear showing of probable
success and possible irreparable injury to plaintiffs.
[1] INJUNCTION k147
212k147
Preliminary injunction is extraordinary
remedy and will not be granted unless upon clear showing of probable
success and possible irreparable injury to plaintiffs.
[2] INJUNCTION k135
212k135
Ordinarily, the issuance of
a preliminary injunction is within the sound judicial discretion
of the trial court.
[3] COPYRIGHTS AND INTELLECTUAL PROPERTY k85
99k85
Upon showing of prima facie
case of copyright infringement a copyright holder is entitled
to preliminary injunction without detailed showing of irreparable
harm. 17 U.S.C.A. § 101(e).
[4] COPYRIGHTS AND INTELLECTUAL PROPERTY k85
99k85
A copyright holder, in the
ordinary case, may be presumed to suffer irreparable harm when
his right to the exclusive use of copyrighted material is invaded.
17 U.S.C.A. § 101(e); 28 U.S.C.A. § 1292(a) (1).
[5] COPYRIGHTS AND INTELLECTUAL PROPERTY k40
99k40
Where owners of copyrights
covering mechanical reproductions of 33 musical compositions had
knowingly acquiesced in use of the copyrighted works, they no
longer had any right to exclusive use of them and were not entitled
to a preliminary injunction against alleged infringer. 17 U.S.C.A.
§ 1(e).
[5] COPYRIGHTS AND INTELLECTUAL PROPERTY k85
99k85
Where owners of copyrights
covering mechanical reproductions of 33 musical compositions had
knowingly acquiesced in use of the copyrighted works, they no
longer had any right to exclusive use of them and were not entitled
to a preliminary injunction against alleged infringer. 17 U.S.C.A.
§ 1(e).
[6] COPYRIGHTS AND INTELLECTUAL PROPERTY k48.1
99k48.1
Formerly 99k48
Any person who complied with
compulsory licensing provisions of Copyright Act was entitled
to manufacture records containing any of the 33 songs covered
by owners' copyrights without becoming liable to copyright owners
as an infringer. 17 U.S.C.A. § 1(e).
[7] COPYRIGHTS AND INTELLECTUAL PROPERTY k73
99k73
The traditional doctrines of
equity are available in a copyright action in which equitable
remedies are sought. 17 U.S.C.A. §§ 101(e), 112.
[8] EQUITY k43
150k43
The existence of an adequate
legal remedy bars a plaintiff from equitable relief.
[9] COPYRIGHTS AND INTELLECTUAL PROPERTY k86
99k86
The equitable power of a federal
district court to grant an injunction could be properly invoked,
after liability is determined, to aid a copyright holder in the
collection of his judgment against an infringer. 17 U.S.C.A.
§ 1(e).
[10] COPYRIGHTS AND INTELLECTUAL PROPERTY k87(3.1)
99k87(3.1)
Formerly 99k87(3), 99k87(4), 99k87
Trial court's use of its power
to grant treble damages and attorney fees to a copyright holder
in an infringement action is sufficient to discourage willful
violations of Copyright Act. 17 U.S.C.A. § 1(e).
[10] COPYRIGHTS AND INTELLECTUAL PROPERTY k90(2)
99k90(2)
Formerly 99k90
Trial court's use of its power to grant treble damages and attorney fees to a copyright holder in an infringement action is sufficient to discourage willful violations of Copyright Act. 17 U.S.C.A. § 1(e).
*904
Arnold I. Burns, New York City (Erwin Cherovsky, and Mermelstein,
Burns & Lesser, New York City, on the brief), for plaintiffs-appellants.
Carleton G. Eldridge, Jr.,
New York City (Stephen Sayre Singer, and Coudert Brothers, New
York City, on the brief), for defendant-appellee.
Abeles & Clark, New York
City (Julian T. Abeles, John S. Clark, and Robert C. Osterberg,
New York City, of counsel), for National Music Publishers' Association,
Inc., amicus curiae.
Before WATERMAN, FRIENDLY
and SMITH, Circuit Judges.
J. JOSEPH SMITH, Circuit Judge:
This is an appeal from an
order of the United States District Court for the Southern District
of New York, John F. X. McGohey, Judge, denying an application
for a preliminary injunction in a copyright infringement action.
We find no error and affirm the order denying an injunction.
Edward Kassner Music Co.,
Ltd., an English corporation, had acquired the world-wide copyrights
to musical compositions written by Ray Davies. [FN1] Kassner granted
control of the mechanical reproduction rights for the United States
to the various appellant corporations. All of these corporate
appellants are owned, either directly or indirectly, by American
Metropolitan Enterprises Limited, an Ontario corporation. The
appellants licensed Warner Bros. Records, Inc., the appellee,
to produce and sell in the United States records containing the
thirty-three copyrighted musical compositions. In addition, Warner
was supplied with master recordings containing performances of
these thirty-three songs sung by the Kinks, a musical group of
which composers Davies are members.
FN1. The record seems to indicate
that some of these songs may have been composed by Ray Davies'
brother, David.
In March of 1967, Warner advised
the appellants that it was withholding any licensing fees due
or to become due under their agreements. Appellants brought suit
under 17 U.S.C. § 101(e) seeking damages and a preliminary
injunction. Warner raised two defenses which it contended freed
it from any copyright obligations to the appellants: (1) appellants'
failure to comply with the Copyright Act's filing provisions barred
their recovery for the alleged infringement of some of the thirty-three
copyrights; (2) under British law, appellants' breach of their
agreements with Davies revested title in all the copyrights in
Davies, so that any copyright obligation runs to Davies and not
to the appellants. In June of 1967, Judge John F. X. McGohey
entered the order and opinion denying appellants' motion for a
preliminary injunction now before us on appeal. Jurisdiction
of this appeal from the order denying an injunction is based on
28 U.S.C. § 1292(a)(1).
[1][2][3][4] The denial of
preliminary injunction was justified in these circumstances.
'A preliminary injunction is an extraordinary equitable remedy
and it will be granted only upon a showing by the applicant that
it will probably succeed on the trial and that it will suffer
irreparable injury if the defendant is not restrained from certain
activity pending the trial. Societe Comptoir De L'Industrie,
etc. v. Alexander's Department Stores, Inc., 299 F.2d 33, 35,
1 A.L.R.2d 752 (2d Cir. 1962).' Imperial Chem. Indus. Ltd.
v. National Distillers & Chem. Corp., 354 F.2d 459, 461-462
(2 Cir. 1965). Ordinarily the issuance of a preliminary injunction
is within the sound judicial discretion of the trial court. United
States v. W. T. Grant Co., *905 345 U.S. 629, 73 S.Ct.
894, 97 L.Ed. 1303 (1953); Carroll v. American Federation of Musicians,
295 F.2d 484, 488 (2 Cir. 1961). In a number of cases involving
the enforcement of the Copyright Act, it has been held that upon
the showing of a prima facie case of copyright infringement a
copyright holder is entitled to a preliminary injunction without
a detailed showing of irreparable harm. Uneeda Doll Co. v. Goldfarb
Novelty Co., 373 F.2d 851, 852 n. 1 (2 Cir. 1967); Joshua Meier
v. Albany Novelty Mfg. Co., 236 F.2d 144 (2 Cir. 1956); Rushton
v. Vitale, 218 F.2d 434 (2 Cir. 1955). A copyright holder in
the ordinary case may be presumed to suffer irreparable harm when
his right to the exclusive use of the copyrighted material is
invaded.
[5][6] Copyrights covering
mechanical reproductions of musical compositions, however, are
given different statutory treatment from copyrights covering other
material. Section 1(e) of the Act provides that:
whenever the owner of a musical
copyright has used or permitted or knowingly acquiesced in the
use of the copyrighted work * * * any other person may make similar
use of the copyrighted work (upon compliance with the fee and
notice provisions of this section).
Since the appellants had 'knowingly
acquiesced in the use of the copyrighted work(s),' they no longer
have any right to the exclusive use of them. Any person who complies
with the compulsory licensing provisions of the Act, may manufacture
records containing the thirty-three songs in question without
becoming liable as an infringer. See G. Ricordi Co. v. Columbia
Graphophone Co., 263 F. 354 (2 Cir. 1920). Thus, the usual rationale
for granting a preliminary injunction upon the showing of a prima
facie copyright infringement does not apply where the copyright
covers musical compositions mechanically reproduced since the
copyright holder does not have any right of exclusivity once he
has permitted use. No irreparable injury may be presumed in such
a situation.
Beechwood Music Corp. v. Vee
Jay Records, Inc., 328 F.2d 728 (2 Cir. 1964) is not to the contrary.
In that case we merely held that the knowing acquiescence in
use by others to which the act refers applies only to use in the
United States. Since the copyrights in question had only been
used in Great Britain, the copyright holder still had a right
of exclusivity within the United States. Protection of that right
justified the issuance of a preliminary injunction.
[7][8][9] The Copyright Act
expressly preserves the traditional doctrines of equity when one
seeks equitable remedies in a copyright action. 17 U.S.C. §
112. The existence of an adequate legal remedy traditionally
bars a plaintiff from equitable relief. This rule has frequently
been applied in patent litigation in which a licensee has refused
to pay royalties under a licensing arrangement. See Keyes v.
Eureka Mining Co., 158 U.S. 150, 15 S.Ct. 772, 39 L.Ed. 929 (1895);
Unilectric, Inc. v. Holwin Corp., 243 F.2d 393, 396-397 (7 Cir.),
cert. denied 355 U.S. 830, 78 S.Ct. 42, 2 L.Ed.2d 42 (1957); American
Safety Device Co. v. Kurland Chemical Co., 68 F.2d 734, 735 (2
Cir. 1934). Of course, the equitable power of a federal district
court to grant an injunction could be properly invoked, after
liability is determined, to aid a copyright holder in the collection
of his judgment against an infringer, as specifically authorized
by the proviso to 17 U.S.C. § 101(e). [FN2]
FN2. Reeve Music Co. v. Crest
Records, Inc., 285 F.2d 546 (2 Cir. 1960); Miller v. Goody, 125
F.Supp. 348 (S.D.N.Y.1954). In the case before us, the district
judge expressly found that Warner was a solvent corporation with
liquid assets of over $11,000,000.00, making it well able to pay
any judgment which might be returned against it in this copyright
action.
[10] Appellants and the amicus
curiae [FN3] argue that the district court's *906 ruling
enables a financially strong manufacturer of records to violate
the copyright laws at will. The discouraging of willful violations
of the Copyright Act can be sufficiently handled through the trial
court's use of its power to grant treble damages and attorneys'
fees to a copyright holder in an infringement action. 17 U.S.C.
§ 1(e).
FN3. National Music Publishers'
Association, Inc.
The interlocutory order appealed
from is affirmed.
END OF DOCUMENT
