IRVING R. KAUFMAN, Circuit Judge:
The rock opera Jesus Christ Superstar and several of its individual musical compositions have enjoyed large commercial success as well as substantial critical acclaim. More than two million records and tape cartridges of the full opera have been sold, the authorized touring production grossed over one million dollars in its first four weeks, and tickets to the Broadway version have been among the more difficult to acquire. We can understand, therefore, the desire of promoters and producers throughout the country to capitalize on the success of Jesus Christ Superstar, and it is not surprising that one consequence of its explosive yet impermanent popularity is litigation.
Timothy Rice wrote the libretto for Jesus Christ Superstar and Andrew Lloyd Webber composed the score of the opera's overture and 22 songs which depict the last seven days in the life of Christ. Rice and Webber assigned the rights in the work (except "King Herod's Song") to Leeds Music Limited which duly obtained United States copyrights for the opera as a "dramatico-musical composition" pursuant to 17 U.S.C. § 5(d) and for several of the individual
Stigwood brought this suit, inter alia, to enjoin: one, OATC's performance of Jesus Christ Superstar or portions thereof; two, any references to Jesus Christ Superstar in advertisements for OATC performances; and three, use of the name The Original American Touring Company. The district court's preliminary injunction, 332 F.Supp. 1206, issued pursuant to 17 U.S.C. § 112, barred only the references to Jesus Christ Superstar in OATC advertisements, and both parties appealed.
OATC's claim that its productions do not infringe Stigwood's rights is based upon the usual and customary agreement between the American Society of Composers, Authors and Publishers ("ASCAP") and Leeds Music Corporation, an ASCAP member. Although a complete description of the purpose of ASCAP and its methodology are unnecessary to our decision, some understanding of its function is vital to an examination of the agreements it makes with its members. The Copyright Act of 1909 granted several rights to the holders of copyrights in works including the exclusive right "to perform the copyrighted work publicly for profit if it be a musical composition." 17 U.S.C. § 1(e). Composers and publishers soon realized it was impractical for each copyright holder to attempt to enforce this right since he could not possibly police all public performances for profit of every musical composition throughout the United States. ASCAP was formed to meet this need. By obtaining licenses from its members, this organization, staffed for the purpose, could enforce the performing rights of its members. It was believed, however, that each copyright owner could appropriately police and license performances of musical comedies or operas because of the relative infrequency of such productions and the lengthy preparation and publicity which must precede these productions. See, Nimmer, "Copyright 1955," 43 Cal.L. Rev. 791, 798 (1955).
In any event, ASCAP is authorized by its members to license only nondramatic performing rights of compositions in its repertory. Consequently, pursuant to the standard ASCAP agreement utilized here, ASCAP was authorized by Leeds to give:
Thus, while ASCAP licensees
Both parties and the court agree, therefore, that selections from Jesus Christ Superstar can be properly presented by ASCAP licensees if they are presented in "nondramatic" performances. See generally, M. Nimmer, Copyright § 125.6 (1971). Accordingly, we must decide if OATC's performances fall into the "dramatic" or "nondramatic" category.
The Copyright Act distinguishes between "musical" and "dramatico-musical" works.
The only case cited to us which discusses the scope of the ASCAP license is April Productions, Inc. v. Strand Enterprises, Inc., 221 F.2d 292 (2d Cir. 1955). In April the copyright owner of The Student Prince sued the proprietor of a cabaret, "The Harem," for infringement based upon performances there of a medley of songs from The Student Prince. The medley was a small part of one of ten scenes of the nightclub's show, and was not connected by a story line or otherwise. The Court stated:
221 F.2d at 296. In the opinion, Judge Dimock (District Judge, sitting by designation), laboring without guidance or precedent, of course, was unable to cite us to a single authority.
In any event, Strand's use of several songs from The Student Prince pales by comparison with Sperber's use of almost the entire score from Jesus Christ Superstar. The twenty musical compositions from Superstar were almost the entire OATC performance rather than less than one-tenth as in "The Harem" club's show. Moreover, April has been
M. Nimmer, Copyright § 125.6 (1971).
Where the defendant has not even supplied a new "book" in its performances, a determination that dramatic rights have been infringed would seem simple. But, OATC asserts that plaintiff's "book" is not used either and insists that there is no story line whatever to defendant's performances. Recently, in Rice v. American Program Bureau, 446 F.2d 685 (2d Cir. 1971) a panel of this court in a 2-1 decision, favored this contention of defendants. Rice also dealt with performances of Jesus Christ Superstar allegedly executed pursuant to the ASCAP license. Because of the sparse record before it, the majority was unable to conclude that the performance was "dramatic." It did however, make clear that "presentation of all of the songs from the opera Jesus Christ Superstar without costumes, words, or scenery, but in sequence could arguably develop the overall plot of the opera, and . . . might possibly be `dramatic'." Id. at 690. We have come to the conclusion that the fuller record before us establishes that a dramatic story is developed by defendant's productions, as Judge Smith in his dissenting opinion in Rice would have found and District Judge Motley did find even on the skimpier record there.
The facts before us vividly paint the dramatic nature of OATC's performance. Nowhere has Sperber disputed the accuracy of Stigwood's Exhibit 3 which is a program of one of OATC's concerts. A comparison between this exhibit and Exhibit 4,
Once we have concluded as we do, that Stigwood will probably succeed at the trial in establishing that OATC's concerts infringe Stigwood's copyrights, we must modify the preliminary injunction below to prevent further infringing performances, if irreparable injury will result. Further, once a prima facie case of infringement has been made out, a preliminary injunction should issue, even in the absence of a detailed showing of irreparable injury where dramatico-musical works are concerned, since "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." American Metropolitan Enterprises of New York v. Warner Bro. Records, Inc., 389 F.2d 903, 905 (2d Cir. 1968). See Rice, supra, 446 F.2d at 688; Rushton v. Vitale, 218 F.2d 434 (2d Cir. 1957); Chappell & Co. v. Fields, 210 F. 864 (2d Cir. 1914).
Fashioning the injunctive provisions in the instant case presents complexities we should explicate. It would not be sufficient merely to enjoin further concerts which follow the format set forth in Exhibit 3. Simply making insignificant changes in sequence that would still not materially affect the performance we have described or interfere with the development of the story, would not be sufficient. Nor would a simple limitation on the number of selections which could be performed suffice. Even the presentation of five or six songs could under certain circumstances, develop an essential portion of the drama, for example, the last two days in the life of Christ, thus infringing on a part of the opera. The sequence of the songs seems to be the linchpin in this case. If the songs are not sung in sequence., i.e., no
In view of our disposition of the primary issue in this case and the accompanying discussion, our resolution of the remaining issues may be of only academic interest. Nevertheless, we feel obliged to affirm the conclusion reached below and in Rice that defendants cannot make reference to Jesus Christ Superstar in its advertisements. Sperber argues that there can be no copyright in titles, and, for the first time on appeal, claims that no protection can be afforded on any other theory because of Supreme Court decisions in Sears, Roebuck & Co. v. Stiffel Co., 376 U.S. 225, 84 S.Ct. 784, 11 L.Ed.2d 661 (1964) and Compco Corp. v. Day-Brite Lighting, Inc., 376 U.S. 234, 84 S.Ct. 779, 11 L.Ed.2d 669 (1964). We disagree. Sears and Compco prevent protection outside of the copyright laws, of works which Congress could have protected but chose not to. It may be that titles are not "writings" in the constitutional sense and thus cannot be protected by copyright but can be protected under unfair competition doctrine. In any event, Sears and Compco carved out a specific exemption for trademarks and labels of products which can be protected to prevent deception of the public. That is precisely the situation we have here. Thus, while Sears could manufacture a pole lamp identical to Stiffel's, it could not call it a Stiffel pole lamp. Similarly, OATC may perform songs under the ASCAP license but may not indicate that they are from the opera. The Senate Judiciary Committee, in its proposed general revision of the Copyright Law, preserves the right to regulate deceptive trade practices outside of the copyright laws. S. 543, § 301(b)(3), 91st Cong., 1st sess. (1969). Since the title Jesus Christ Superstar may well be associated with the opera as a whole and thus a "secondary meaning" has developed, we agree with the district court that defendants must be enjoined from directly or indirectly advertising or in any way representing any presentation as being from Jesus Christ Superstar or any song, instrumental selection or excerpt as taken therefrom in whole or in part. We also agree, however, that subject to the conditions we have set forth in Part I, the individual song titles can be listed.
Finally, although we do not doubt that the defendants chose the name "The Original American Touring Company" with the hope of misleading the public, we agree with the district court that there is insufficient evidence in the record to support an inference of likelihood of confusion strong enough to underpin a preliminary injunction to restrain the use of that name, provided the restrictions we have set forth are observed. See Remco Industries, Inc. v. Toyomenka, Inc., 286 F.Supp. 948 (S.D. N.Y.1967), affirmed 397 F.2d 977 (2d Cir. 1968). The likelihood of confusion is especially slight in view of the inability of OATC to make reference to Jesus Christ Superstar in its promotional efforts.
The preliminary injunction is modified and it is ordered that defendants be enjoined from:
(1) performing any song in such a way as to follow another song in the same order as in the original Jesus Christ Superstar opera;
(2) performing any songs from the opera accompanied by dramatic action, scenic accessory or costumes; and
(3) advertising or in any way representing any presentations as being from Jesus Christ Superstar or any song, instrumental selection or excerpt as taken therefrom in whole or in part.
The preliminary injunction is modified as we have indicated. The mandate shall issue forthwith.
Exhibit 3 lists songs as follows: Overture Heaven On their Minds What's the Buzz? Strange Thing Mystifying Simon Zealotes Pilate's Dream The Temple I Don't Know How to Love Him This Jesus Must Die Damned For All Time The Last Supper Don't Go The Lord's Prayer Gethsemane The Arrest Peter's Denial Pilate and Christ King Herod's Song He's Gone Judas' Death Trial Before Pilate Superstar The Crucifixion Exhibit 4 lists songs as follows: Overture Heaven On Their Minds What's the Buzz Strange Thing Mystifying Everything's Alright. This Jesus Must Die Hosanna Simon Zealotes/Poor Jerusalem Pilate's Dreams The Temple Everything's Alright I Don't Know How to Love Him Damned For All Time/Blood Money The Last Supper Gethsemane The Arrest Peter's Denial Pilate and Christ King Herod's Song Judas' Death Trial Before Pilate Superstar Crucifixion John Nineteen: Forty-One