Appeal from the District Court of the United States for the Eastern District of Wisconsin: L. B. Schwellenbach, Judge
Before SPARKS, KERNER, and MINTON, Circuit Judges.
Plaintiff, the copyright proprietor of a musical composition entitled "The Waltz You Saved For Me," sought an injunction and damages against defendant for infringing its copyright under the Copyright Act, 17 U.S.C.A.§ 25. The District Court, after a trial upon the merits, entered a decree dismissing plaintiff's complaint. To reverse the decree, plaintiff appeals.
Plaintiff is a music publisher, having its principal place of business in New York City, and is a member of the American Society of Composers, Authors, and Publishers (hereinafter referred to as "ASCAP"). There was a contract between plaintiff and ASCAP whereby the nondramatic public performing rights in the intant composition were vested in ASCAP. ASCAP undertook to protect the public performing rights from unlawful appropriation and was also authorized to license its rendition to those desiring to use it in public performances for profit. Defendant operates a place of public entertainment known as "The Allis House" in West Allis, Wisconsin, where music is provided for the entertainment of patrons and otherwise to promote defendant's operations and for the profit of defendant. During a period of several months prior to the institution of suit, various inspections of defendant's operations were made, disclosing that defendant had infringed and was infringing plaintiff's copyright by giving public performances of its musical composition for profit. Thereupon a communication was addressed to him calling his attention to the infringement and suggesting that he obtain a license to render plaintiff's composition. Thus he was fully informed that failure to do so would bring infringement proceedings.
Defendant concedes that he infringed plaintiff's copyright, but contends, and the District Court adopted his contention, that because plaintiff failed to comply with the provisions of a certain Wisconsin statute*fn1 (hereinafter referred to as the "Wisconsin statute"), it was deprived of its right to maintain this suit. The statute, which is captioned "Music brokers," provides that no person, association or corporation other than the "true or original composer" shall directly or indirectly issue licenses or other agreements for the public rendition of copyrighted musical numbers by persons within Wisconsin, unless said person, association or corporation shall first obtain a license from the Secretary of State to transact such business; that any applicant desiring such license, shall file with the Secretary of State certain information, and at the time of the filing shall pay a franchise tax equivalent to twenty-five per cent of his or its gross receipts from persons within Wisconsin for or on account of licenses or other agreements for the public rendition of copyrighted musical numbers within Wisconsin for the preceding year. The license is required to be renewed annually, and the Secretary of State, acting solely as a ministerial officer, is required to issue the license upon compliance with the foregoing provisions.
The statute further provides that those who shall, without first obtaining a license, "attempt, by threats of suit, or other means, * * * to compel persons in this state to purchase licenses for the rendition of musical numbers * * * " shall be guilty of a misdemeanor. The penalty is restricted to such an infraction. No penalty is provided for issuing licenses without having complied with the statute; neither is there any provision in the statute making contracts void or barring access to the courts by those who have failed to comply with the statute.
One further provision of the statute is that no one shall act as an investigator of the rendition of copyrighted music without paying an annual license fee of $20.
Plaintiff concedes that neither it nor ASCAP qualified to do business under the statute, and it does not contest the District Court's finding that ASCAP was the agent of plaintiff.
Since plaintiff is not the true and original composer, and violation of the statute is conceded, the only issue we must decide is whether plaintiff's failure to comply with the statute deprived it of its right to maintain a suit for infringement.
The Copyright Act gives the federal District Courts jurisdiction and prescribes the venue of actions for infringement of copyright, and provides certain remedies for its violation. 17 U.S.C.A.§§ 25, 34, 35.
In answer to defendant's contention that plaintiff may not maintain this action because it is not the real party in interest, we think the Copyright Act gives the right to sue for infringement to the copyright proprietor, 17 U.S.C.A. § 25, and since plaintiff is the proprietor, it may sue. M. Witmark & Sons v. Pastime Amusement Co., D.C. 298 F. 470, 474, 475, affirmed 4 Cir., 2 F.2d 1020; cf. Crown Die & Tool Co. v. Nye Tool & Machine Works, 261 U.S. 24, 40, 43 S. Ct. 254, 67 L. Ed. 516. Even if the Copyright Act did not provide that such actions may be brought by the copyright proprietor, plaintiff is the principal and ASCAP is the agent so that under elementary principles, in an action against a stranger, the principal is the proper party plaintiff.
The trial judge was of the opinion that plaintiff came into court with unclean hands because it had not complied with the Wisconsin statute. Thus, in effect, compliance with that statute was made a condition precedent to the institution of suit under the Federal Copyright Act. We do not believe that the Wisconsin statute should be permitted to prohibit the bringing of a federal suit. The Federal Copyright Act lays down a prohibition against the appropriation of the proprietor's copyrighted composition unless consent is given. And it is familiar doctrine that the prohibition of a federal statute may not be set at naught by a state statute. Sola Electric Co. v. Jefferson Electric Co., 317 U.S. 173, 176, 63 S. Ct. 172, 87 L. Ed. . Therefore, since a right would not long be respected if it could be violated with impunity, the remedy of an infringement action in the federal courts must still be open to plaintiff. Correlatively, the benefits of a federal statute may not be denied by a state statute, Sola Electric Co. v. Jefferson Electric Co., supra; see Orlando Candy Co. v. New Hampshire Fire Ins. Co., D.C., 51 F.2d 392, 393.
In bringing its infringement action, the plaintiff was following the course of conduct prescribed by the federal statute, and thus was seeking to enforce its rights in a wholly legal manner. As the court said in Leo Feist, Inc. v. Demarie, D.C., 16 F.Supp. 827, where a Louisiana statute was under consideration and non-compliance with that law by the plaintiff was pleaded as a defense, " * * * the action is one for the violation of a copyright granted by the federal government, and it will not be assumed that the Legislature meant to deny a litigant the right to go into a federal court for the protection of the property right ...