Lesson 1 : Of the importance of the Notice to Use
The "Slow Walk" case
Pub Sues King For Royalties Billboard February 2, 1959
NEW YORK — Norbay Music, a BMI affiliated Chicago publisher firm, brought suit here last week against King Records, in U.S. District Court of New York alleging non-payment of royalties on a record of the tune "Slow Walk."
The complaint states that the writer of the tune, Sil Austin, recorded it on Mercury. Thereafter, according to the complaint, Bill Doggett covered the song on King, which recording became a top hit. It's further alleged that this was done without the filing by King of a notice of intent to use, or a request from the label for a license. Under a provision in the copyright act, triple damages of 6 cents per record will be sought.
Martin J. Machat represents the plaintiff, while Jack Pearl will act on behalf of the defendant.
'Slow Walk' Decision May Affect Pubbers Billboard August 22, 1960
NEW YORK — A precedent setting decision, which could have far-reaching effects on the payments of mechanical royalties by record labels to music publishers, was handed down here last week by Judge Edelstein in Second District Federal Court.
The suite originally filed by Norbay Music (Jordon Ross) againt King Records, in a move to collect mechanical royalties on King's waxing of the Norbay tune, "Slow Walk," a hit in late 1956. The Doggett disk was a cover of Sil Austin's original Mercury platter. Both records were best sellers.
King Records filed a notice of summary judgment - admitting the validity of the copyright, but claiming payment did not have to be made because, according to the copyright act, unless a Notice of Use is filed with the copyright office a record firm doesn't have to pay mechanical royalties on a song.
Norbay's attorney Marty Machat acknowledged the clause and admitted that Norbay had not filed a Notice of Use until 11 months after the Doggett disk was released. However, he contended it (the clause) was a practical measure rather than one of law," and that once the Notice of Usa was filed payments should have been amended back to the date the King disk was first released.
In holding for the defendent, King, Judge Edelstein said that Norbay failed to comply with the copyright law by not filing a Notice of Use when they licensed the first waxing of the tune, Mercury's Austin record. The judge also noted that it was the first case of its kind.
There have been several similar incidents involving failure of a publisher to file a Notice of Use, but heretofore they were all settled out of court. This is the first time all the facts were admitted and it was taken to court as a question of law.
In line with this, Machat said he plans to appeal the decision and endeavor to "clarify the issue." One of the things he wants clarified is whether or not King Records is still liable for royalties collected on sales made after the Notice of Use was finally filed, since the decision merely stated that "payments were barred."
In this particular case, said Machat, a clarification would be meaningless, since an insignificant amount of royalties would be due for the period after the song had died. However, he noted, it could be of vital importance to the industry in general.
Both Machat and King's attorney, Jack Pearl, described the case as unique. Interestingly, Machat is scheduled to represent another client in a similar case shortly; only this time he will take a reverse stand on interpretation of the copyright clause.
MPPA Acts in Norbay-King Suit: Atty. Abeles Files Appeal Brief Billboard March 20, 1961
NEW YORK - The Music Publishers Protective Association has taken a strong stand through its attorney, Julian T. Abeles, in a continuing court case here regarding protection afforded publishers through the filing in the Copyright Office in Washington.
Last week, Abeles, long a legal champion of publishers' rights and also attorney for the office of Harry Fox, publisher's agent and trustee, filed an amicus curiae brief with the U.S. Court of Appeals for the Second Circuit here. The case was originally filed by Norbay Music, a Chicago publishing firm, against King Records in connection with the song, "Slow Walk." New York attorney Walter Hofer brought the Norbay action.
The U. S. District Court held that a publisher who files a late notice of use after a recording is made of a tune, is thereafter barred from collection of mechanical royalties and any other relief on all future unauthorized uses of the copyrighted work. Norbay had filed suit against King for alleged failure to pay mchanicals on a record of the tune.
Since publishers are frequently late in filing notices of use, for various reasons, this ruling, if it stands, can have a tremendous effect on many current copyrights, on which notices of use may not have been filed long after an initial license was granted for recording.
Late last week, Abeles said he has been swamped by requests from music business attorneys for copies of his brief. Many appeared to be in a state of shock over te legal reversal for publishers.
In a letter to Walter Douglas, head of the MPPA, Abeles warned that henceforth "It shall be the duty of the copyright owner, if he uses the musical composition himself for the manufacture of records, or licenses others to do so, (he should) to file notice thereof in the copyright office and any failure to file such notice shall be a complete defense in any suit." in view of the present decision. The appeal on the case will be heard for the Second Circuit, the week of April 3. Hofer will argue the case for Norbay.
Appeals Court Reverses Ruling in Norbay Music Vs. King Case Billboard May 29, 1961
NEW YORK - A Lower-court decision in favor of the defendant in the now celebrated Norbay Music case, was reversed last week by the U. S. Circuit Court of Appeals for te Second Circuit. The appeals panel consists of Justices Charles Clark, Harold Medina and Henry Friendly.
The original case launched by the Chicago-based music firm, Norbay Music against King Records was based on the question of whether a publisher loses mechanical royalty rights on recordings of his song if he fails to file a notice of use. In the initial decision, Federal Judge David N. Edelstein held that plaintiff's failure to file a notice of use until approximately one year after the initial recording of the song "Slow Walk," on Mercury Records, barred him from relief from the alleged infringing recording on King.
The Copyright Law states that failure to file notice of use by a publisher is a complete defense on the part of a record company against charges of infringement of a mechanical copyright. The Edelstein decision held that since the publisher was late in filing of notice of use, he was not eligible to receive royalties. This decision was regarded with considerable anguish by a startled publishing fraternity in view of its precedental nature, and in view of the fact that in the case of numerous well-known standard types of copyrights, no notices of use have ever been filed.
In the appeal, principal argument for the plaintiffs was handled by attorney Walter Hofer, with amicus curiae briefs filed by Julian T. Abeles on behalf of the Music Publishers' Protective Association, and by Morris Ebensein on behalf of Chappell and Company. Jack Pearl was attorney for defendant
Point at issueThe point at issued in the case was, according to last week's Appeals Court decision, the fact that "the statute is quite silent as to when notice shalle be filed beyond the implication that it must be done before suit is instituted if a successful defense is to be avoided."
The Court concluded: "This permanent forfeiture of the semi-exclusive right to mechanical reproduction is a drastic method of punishing the late filer. The statutory language does not compel such a resultt, since the complete defense referred to could well apply only to actions for inringement prior to filing."
In this case, the defendant also failed to serve notice of intention to use the song for recording. The Court noted that the Copyright Law provides a definite sanction for such failure, an award to plaintiff of three times the basic royalty in addition to the 2-cent basic fee. "We cannot extend this statutory provision to make it applicable to copying before the notice," the decision continued, however.
The Court concluded that plaintiff is entitled to recover the statutory royalty of 2 cents for each record manufactured after the filing of the notice of use and that the district court may, in its discretion, grant an award in addition not to exceed three times the royalties found to be due, plus costs and attorney fees.
King's liability in the case is limited, however, since the publisher did not file the use notice until the disk was already a bit hit. Sales accomplished after the filing were relatively small.