Shapiro, Bernstein & Co. v. Jerry Vogel Music Co.

• Decision Date: 24 September 1953
• Citation: 115 F. Supp. 754
• Parties: SHAPIRO BERNSTEIN & CO., Inc. v. JERRY VOGEL MUSIC CO., Inc.
• Court: U.S. District Court — Southern District of New York

115 F. Supp. 754

SHAPIRO BERNSTEIN & CO., Inc. v. JERRY VOGEL MUSIC CO., Inc.

United States District Court, S. D. New York.

July 27, 1953.

On Cross-Motions September 24, 1953.

COPYRIGHT MATERIAL OMITTED

Spring & Eastman, New York City (Lee V. Eastman, Alfred Beekman and E. Gabriel Perle, New York City, of counsel), for plaintiff.

Edwin McMahon Singer, New York City (Edwin McMahon Singer and Leo E. Falkin, New York City, of counsel), for defendant.

LEIBELL, District Judge.

This is an action for copyright infringement. It involves the renewal copyrights in the instrumental music of "12th Street Rag" composed by Euday L. Bowman in 1914 and the renewal copyright of a song bearing that title, copyrighted by a music publisher, J. W. Jenkins Music Co. in September 1919.

Bowman assigned his right and title to the copyrights of the instrumental music to the Jenkins Co. in July 1916. In the Fall of 1918 the Jenkins Co., without the authorization or consent of Bowman, had James S. Sumner write a lyric for Bowman's music and copyrighted the "song" in September 1919. The plaintiff subsequently acquired from Bowman and Jenkins all of Bowman's renewal interests in the copyright of the instrumental music written by Bowman and obtained through Bowman the renewal copyrights therein. Plaintiff also claims renewal rights in the song, "12th Street Rag", by assignment from the Jenkins Co.

In June 1947 defendant Vogel obtained from Sumner a paper purporting to assign all of Sumner's right, title and interest in the "song", including the renewal rights. Defendant thereupon filed a claim with the Register of Copyrights to the renewal rights in the song, and thereafter published the song with Bowman's music and Sumner's lyric. Plaintiff then brought this suit for copyright infringement.

The complaint contains two causes of action. Plaintiff's first cause of action is for infringement of the renewal copyrights of Bowman's instrumental music "12th Street Rag". Plaintiff's second cause of action is for infringement of plaintiff's claimed renewal rights in the song "12th Street Rag", consisting of Bowman's music and the lyric by Sumner. The complaint herein was filed August 18, 1949.

Defendant has counterclaimed for a declaratory judgment that it is a co-owner of an undivided 50% interest in the song, and for an accounting by plaintiff of its profits, and for an injunction against plaintiff.

The action was tried before me in May of this year and counsel exchanged and submitted briefs and proposed findings in June. The above is an outline of the claims of the parties. Their contentions in respect thereto will be discussed more in detail in this opinion. Findings of Fact and Conclusions of Law are being filed herewith.

One of the most contested issues of fact in this case is this: — Did Sumner write the lyric for the "12th Street Rag" as part of his duties as an employee of J. W. Jenkins Sons Music Co., or did he write it as a special job assignment for which he was paid a sum of money in addition to his regular salary? I have concluded — and the deposition of Mr. Ege, the former publication manager of Jenkins, when analyzed, supports the conclusion — that Sumner wrote the lyric as a special job assignment, outside the line of his regular duties; that he was paid $25 by the Jenkins Co. for the lyric and his rights therein; and that the payment was in addition to the regular salary he was receiving at that time as an employee of the Jenkins Co.

Bowman, who composed the music of the "12th Street Rag" as an instrumental work, copyrighted his music as an unpublished work January 30, 1914, and as a published work August 31, 1914. He obtained a further copyright of the music, an arrangement and adaptation thereof, January 21, 1915. Bowman assigned his copyrights to the Jenkins Co. on July 11, 1916.

When the Jenkins Co. filed a copyright application for the "song", "12th Street Rag" on September 2, 1919, the application listed Bowman as the composer of the music and Sumner as author of the words, and the certificate of copyright issued to the Jenkins Co. was for the "12th Street Rag". * * * "Words by James S. Sumner". * * * "Music by Euday L. Bowman". As will be shown later, Bowman never authorized or consented to the writing of the Sumner lyric for his musical composition, "12th Street Rag".

When the Jenkins Co. specially engaged Sumner to write words for the instrumental music composed by Bowman, the Jenkins Co. was exercising a right incident to its proprietorship over the Bowman copyrights. The musical composition consisting of Bowman's instrumental music and Sumner's lyric was registered as a "new work", pursuant to Sec. 6 of the Copyright Act of 1909, which corresponds to Sec. 7 of the Copyright Act of 1947, 17 U.S.C.A. § 7, as it exists today. What the copyright of the "new work" served to protect, was the new matter, in this case, the lyric written by Sumner. Adventures in Good Eating v. Best Places to Eat, 7 Cir., 131 F.2d 809, 813; G. Ricordi & Co. v. Paramount Pictures Inc., 2 Cir., 189 F.2d 469, certiorari denied 342 U.S. 849, 72 S.Ct. 77, 96 L.Ed. 641.

All that Sumner sold to Jenkins was his right to copyright the lyric for "12th Street Rag". There was no formal agreement between Sumner and Jenkins. Sumner did not part with his renewal interest in the lyric of the song "12th Street Rag". Defendant, as Sumner's assignee and attorney in fact, could exercise whatever rights Sumner had. When the defendant, in June 1947, acting under an assignment from Sumner, filed for a renewal on the "song", including Bowman's music, defendant was claiming something more than Sumner possessed, because Bowman and Sumner were not "joint authors" of the song. That brings us to the next important issue in this case.

It is defendant's contention that Sumner was a "joint author" with Bowman in the composition of the "song"; that the song was properly copyrighted as a "new work"; that Sumner by his renewal through defendant acquired a half interest in the "song"; and that defendant by virtue of the assignment from Sumner now has that one half interest and may publish the "song", consisting of the music composed by Bowman and the lyric written by Sumner, accounting to the plaintiff for one half the profits.

The defendant argues that because the Jenkins Co. "joined" the Sumner lyric to the Bowman music, both of which Jenkins owned, and obtained a copyright for the resulting "song", the copyright was that of a "joint work" as that term is understood in copyright law; and that Jenkins' action had the same legal effect as if Bowman had requested Sumner to write the lyric or as if Bowman had authorized the Jenkins Co. to get some one to write a lyric for the Bowman music.

Even though at the time the Jenkins Co. engaged Sumner to write the lyric, the Jenkins Co. had already (July 11, 1916) received an assignment from Bowman which covered the Bowman copyrights for their original term and Bowman's renewal interests in the music, that did not make the "song", the combination of the Bowman music and the Sumner lyric, a "joint work" of Bowman and Sumner, because Bowman never authorized or consented to the writing of the Sumner lyric for Bowman's music. The song was a "composite work".

In Edward B. Marks Music Corp. v. Jerry Vogel Music Co., 2 Cir., 140 F.2d 266, Judge L. Hand expressly reaffirmed his acceptance of the definition of "joint authorship" as it was laid down in Levy v. Rutly, L. R., 6 C.P. 523. "Joint authorship" was defined in that case by Keating, J., at p. 529 as being a "joint laboring in furtherance of a common design", and by Montague, J., at p. 530 as an agreement "to write a piece, there being an original joint design".

In the Marks case, Edward B. Marks had composed the words for a song. He sold his lyric "December and May," to Harding, a publisher of songs in 1893. The latter, without the knowledge of Marks, engaged one Loraine to compose a melody for the words. The song, consisting of the music by Loraine and the lyric by Marks, was copyrighted by Harding in November 1893. It was established that Marks intended that his lyric should be set to music, which someone else would compose. Loraine understood that the music he was composing was for use with those particular words, the lyric written by Marks. Marks and Loraine did not meet until years later. Within the statutory time Marks applied in November 1920 for a renewal copyright upon the song, "December and May," as a musical composition and assigned his renewal copyright to the Marks Corp. Loraine never applied for a renewal but assigned all his rights in the song to Vogel in July 1940. Vogel published the song and the Marks Corp. sued Vogel for infringement.

The Circuit Court of Appeals held that the "song" was the product of "joint authorship", and that the Marks Corp. held the renewal copyright for itself, as to the share of Marks, and upon a constructive trust for Loraine as to his share; and that Marks could not forbid Loraine's assignee (Vogel) from exploiting the subject matter of their right. In reaching that conclusion, the Court stated that the authors of a joint work need not work in concert or even know of each other's existence:—"It is enough that they mean their contributions to be complementary in the sense that they are to be embodied in a single work to be performed as such." Judge Hand stressed the necessary purpose that each author should have in preparing his particular contribution to the join work, explicitly ruling that if the first part of a work, to which two different persons devote their talents, is composed without any such common design, the combination of the two is a "composite work". But this is "not so, when both plan an undivided whole". Whether or not the combined work product of two authors is to be adjudged their "indivisible product", turns on the intent each had in mind in respect to his share of the unitary whole. Unless each had...