T.B. Harms & Francis, Day & Hunter v. Stern

• Decision Date: 15 February 1916
• Docket Number: 56.
• Citation: 231 F. 645
• Court: U.S. Court of Appeals — Second Circuit
• Parties: T. B. HARMS & FRANCIS, DAY & HUNTER v. STERN et al.

231 F. 645

T. B. HARMS & FRANCIS, DAY & HUNTER v. STERN et al.

No. 56.

United States Court of Appeals, Second Circuit.

February 15, 1916

Max D Josephson, of New York City, for appellant.

Cohen &amp Richter, of New York City, for appellees.

Before LACOMBE, WARD, and ROGERS, Circuit Judges.

ROGERS Circuit Judge.

This cause was argued in this court on October 22, 1915, and a decision was rendered in which we directed the District Court for the Southern District of New York to issue an injunction pendente lite to restrain the defendants from infringing plaintiff's copyright in a musical composition entitled 'Oh, Those Days.' We decided the case as we did because the record contained a judgment entered in the Supreme Court of the state of New York in a suit between the same parties or their privies, and that judgment had dismissed the complaint on the ground that the contract entered into between Romberg and the plaintiffs in that suit was unequitable and lacked mutuality of obligations and remedy. As there can be no contract where there is no mutuality of obligation we considered that judgment as res adjudicata of this controversy. That suit had been brought by the defendants in this suit against Sigmund Romberg, the Shubert Theatrical Company and Jacob J. Shubert, and the plaintiffs in this suit derived their rights through an assignment by Romberg to the Winter-Garden Company of New York which in turn assigned to them.

In December, 1915, an application for a reargument was made. That application was based on the claim that the New York judgment was not in fact as it had been disclosed in the record. We filed a per curiam opinion on January 5, 1916, in which we said:

'Application has been made for a reargument, and with such application there has been filed a copy of the printed case on appeal to the Appellate Division in said cause in the state court. This printed case on appeal apparently indicates that the state Supreme Court amended its judgment, subsequent to original entry, so that its disposition of the issues before it is different from what it was in the original judgment.

'The mere filing of this paper book in no way changes the situation here; the only record before us is the record certified to this court by the United States District Court. We will, however, withhold mandate from issue during this session, so that the counsel, who has moved for reargument, may make application, on notice, on one of our regular motion days, for such relief as he may be advised, to show, if he can, that the state court did not hold the contract sought to be enforced invalid at law, and so operate to deprive his client of the opportunity to obtain a decision on the merits of this cause in the federal courts.' 229 F. 50, . . . C.C.A. . . . .

Subsequently there was presented to this court the record of the case in the New York court, and the parties on both sides stipulated in open court that the judgment roll in the action in the state court was correctly set forth in the printed appeal book entitled 'Case on Appeal.' It appears now that in the action in the Supreme Court of New York judgment was rendered on December 23, 1914, in which it was 'ordered, adjudged and decreed that the complaint herein be and the same hereby is dismissed upon the merits. ' It appears, also, that on January 19, 1915, the justice who tried the case resettled the judgment making it read as before but striking therefrom the words 'upon the merits.' It appears, further, that under the New York Code of Civil Procedure a final judgment dismissing the complaint, either before or after trial, does not prevent a new action for the same cause of action unless it expressly declares, or it appears from the judgment roll, that it is rendered upon the merits. Section 1209, New York Code of Civil Procedure. We, therefore, consider that this court is at liberty, as our mandate has not yet been sent down, to take up this appeal for further consideration.

The contract which Romberg made need not be set out in full. The main portion of it was stated in our former opinion. In it Romberg agreed with the present defendants that he would 'sell, assign, transfer and set over and vest' in them the right to print, publish and sell all compositions which he might write during a period of five years from the date of the agreement. Romberg expressly agreed in the contract that he transferred to Stern & Co., defendants herein, the sole and exclusive publishing right (copyright) of all the compositions 'which he is going to write during the next five years. ' The contract also stated that 'in compensation for this transfer of the copyright Stern & Co. will have to pay to Mr. Romberg a share of profits on each copy of each composition, as follows. ' Then followed a detailed statement as to the royalties to be paid, which it is not important to set forth herein. For reasons stated in our former opinion, and which we do not now find it necessary to enlarge upon, this agreement constituted a valid and binding contract supported by a valuable consideration. The contract was a valid executory agreement to sell, and the breach of the agreement could be redressed in an action at law for damages. We are not now concerned with whether it could or could not be enforced specifically in a court of equity. It is enough for us at this time to know that the contract is a valid contract and that it imposed a legal and moral obligation upon Romberg which he has...