Whitney v. Ross Jungnickel, Inc.

• Decision Date: 18 January 1960
• Citation: 179 F. Supp. 751
• Parties: Joan WHITNEY and Alex Kramer, Plaintiffs, v. ROSS JUNGNICKEL, INC., Theodore Presser Company and Bourne, Inc., Defendants.
• Court: U.S. District Court — Southern District of New York

179 F. Supp. 751

Joan WHITNEY and Alex Kramer, Plaintiffs, v. ROSS JUNGNICKEL, INC., Theodore Presser Company and Bourne, Inc., Defendants.

United States District Court S. D. New York.

January 18, 1960.

Schulman & Stern, New York City, for plaintiffs, John Schulman, Lloyd I. Isler, M. William Krasilovsky, New York City, of counsel.

Lewis A. Dreyer and Jack M. Ginsberg, New York City, for defendant Ross Jungnickel, Inc.

Gilbert & Gilbert, New York City, for defendant Bourne, Inc. Theodore R. Jackson, New York City, of counsel.

FREDERICK van PELT BRYAN, District Judge.

This action for copyright infringement and unfair competition was tried before me without a jury. The court has jurisdiction over the subject matter and the parties, with the exception of defendant Theodore Presser Company, who was not served.

Plaintiffs Joan Whitney and Alex Kramer are professional song writers who prior to November 1950 had written and published a number of songs. In November 1950 they composed a song which they entitled "No Man Is an Island". The title was taken from the opening phrase of a quotation from the Seventeenth Century Meditation by John Donne¹ appearing on the frontispiece of Ernest Hemingway's novel "For Whom the Bell Tolls". The phrase came to plaintiffs' attention through the novel. The first line of the lyric is the same as the title of the song. The second line of the lyric "No man stands alone" is in plaintiffs' own words and is not from the Donne quotation though the theme of the lyric has to do with the brotherhood of man.

Pursuant to a written agreement dated November 21, 1950, plaintiffs assigned to defendant Bourne, Inc. all rights to their composition subject to the payment of composers' royalties. Bourne registered the song in the Copyright Office as an unpublished work and thereafter published. On February 12, 1951 a certificate of registration of a claim to copyright as a published work was issued to Bourne. Bourne's legal title to the composition and plaintiffs' beneficial interest therein are not disputed.

Bourne, Inc. was named as a party defendant under the terms of its agreement with the plaintiffs which reserved to them the right to institute an action for infringement upon the failure of Bourne to do so after written demand, provided that Bourne be named a party to the action. See Manning v. Miller Music Corp., D.C.S.D.N.Y., 174 F.Supp. 192. These conditions have been complied with. Bourne has cross-claimed against defendant Jungnickel for the same relief sought by the plaintiffs.

In the summer of 1953 Ted Lehrman and Phil Sheer composed a song which also bore the title "No Man Is an Island". Sheer was a pianist and music teacher and Lehrman, who had a variety of jobs, is now a high school teacher. They had written songs before this but this was the first which was published. Others have followed.

The title of the song was later changed to add the phrase in parentheses in smaller letters "No Man Can Stand Alone". The lyric used the two phrases in the title as its opening lines. There is no question but that the music is entirely different from that composed by plaintiffs, as are the rest of the lyrics. The lyric was originally written as a love lyric. After discussions with Theodore Presser Company, the publisher to whom the song was offered, the lyric was revised and changed to a religious theme. Theodore Presser Company registered a claim of copyright as an unpublished work on January 7, 1954 and secured a certificate of a claim to copyright as a published work on November 23, 1954. Thereafter the copyright, and all other rights in the song, were assigned to defendant Jungnickel who continued to publish it.

Plaintiffs claim that the copyright of their song "No Man Is an Island", with the opening lines "No man is an island, No man stands alone", is infringed by the Lehrman and Sheer song "No Man Is an Island (No Man Can Stand Alone)". They assert that Lehrman and Sheer copied the title of the song they composed, the two opening lines and the repeated line "No man can stand alone" in the closing verse of the lyric, from their original composition. They also claim that publication of the song by defendant Jungnickel constitutes unfair competition.

Defendant Jungnickel contends that the phrase "No man is an island", like that of plaintiffs' song, was derived by the composers from the Donne quotation in the Hemingway novel and not from the plaintiffs' song. The second phrase of the title and the second line of the song "No man can stand alone", Jungnickel says, is in Lehrman's own words but was also inspired by the theme of the Donne quotation. The composers, Lehrman and Sheer testified to this effect upon the stand and steadfastly maintained that they had no knowledge whatsoever of plaintiffs' song when they composed theirs, but that their inspiration came solely from the Donne quotation, and that, with the exception of the words taken from that source, the lyrics are Lehrman's original work.

Whether or not Donne's quotation was widely known prior to its use on the frontispiece of "For Whom the Bell Tolls", it was certainly widely disseminated in Hemingway's distinguished and best selling novel. Plaintiffs would have had great difficulty in establishing a claim of infringement or unfair competition based solely on the words "No man is an island" taken directly from Donne.² Plaintiffs, however, center their attack on the phrase "No man can stand alone", coupled with the Donne line, both as used in parentheses in the title of the Lehrman and Sheer song and as used in its second line. They urge that this phrase was copied by Lehrman from the line "No man stands alone" in their song and was deliberately exploited as part of the title in order to make it appear that the two songs were identical.

Plaintiffs must establish that actual copying occurred in order to make out a case of copyright infringement. Mere coincidental similarity, absent copying, is not enough. Heim v. Universal Pictures Co., Inc., 2 Cir., 154 F.2d 480; Alexander v. Irving Trust Co., D.C.S.D. N.Y. 132 F.Supp. 364, 367, affirmed 2 Cir., 228 F.2d 221, certiorari denied 350 U.S. 996, 76 S.Ct. 545, 100 L.Ed. 860.

In cases like this, however, it is virtually impossible to adduce direct proof of copying, and the plaintiffs have not attempted to do so. Evidence of copying must necessarily be circumstantial and is ordinarily based on proof of access and similarity. This is the theory on which plaintiffs proceed here. If copying did in fact occur, it does not matter if it was done unconsciously and without intent to appropriate plaintiffs' work. Bad faith is not a necessary ingredient of plaintiffs' proof. Sheldon v. Metro-Goldwyn Pictures Corp., 2 Cir., 81 F.2d 49, certiorari denied 298 U.S. 669, 56 S.Ct. 835, 80 L.Ed. 1392; Buck v. Jewell-LaSalle Realty Co., 283 U.S. 191, 51 S.Ct. 410, 75 L.Ed. 971; Fred Fisher Inc. v. Dillingham, D.C.S.D.N.Y., 298 F. 145.

Here, only two lines are claimed to have been appropriated from plaintiffs' lyric, one of which is from a source in the public domain. The similarity concededly ends there. This would not prevent recovery if the lines claimed to have been appropriated constitute an important and vital part of the two compositions rather than being merely incidental or trivial. See Boosey v. Empire Music Co., D.C. S.D.N.Y., 224 F. 646; Paramore v. Mack Sennett, Inc., D.C.S.D.Cal., 9 F.2d 66; M. Witmark & Sons v. Pastime Amusement Co., D.C., 298 F. 470, affirmed 2 Cir., 2 F.2d 1020; Ball, The Law of Copyright and Literary Property, p. 336. It is, however, unnecessary to determine this question here, for I find that the plaintiffs have failed to meet their burden of establishing that either of the two lines which they claim to have been appropriated were in fact copied by Lehrman and Sheer from their song.

Plaintiffs sought to establish access to their song by Lehrman and Sheer from which it could be inferred that knowing or unconscious copying occurred,...