Fred Fisher, Inc., v. Dillingham

• Decision Date: 26 January 1924
• Parties: FRED FISHER, Inc., v. DILLINGHAM et al.
• Court: U.S. District Court — Southern District of New York

298 F. 145

FRED FISHER, Inc., v. DILLINGHAM et al.

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

January 26, 1924

[Copyrighted Material Omitted]

Julien T. Abeles, of New York City, for plaintiff.

Nathan Burkan, of New York City, for defendants.

LEARNED HAND, District Judge (after stating the facts as above).

$1, 2$ The copyright to the composition 'Dardanella' covered the piece as a whole; there were not several copyrights for each part of it. Nevertheless the plagiarism of any substantial component part, either in melody or accompaniment, would be the proper subject of such a suit as this. To sustain it, however, more must appear than the mere similarity or even identity, of the supposed infringement with the part in question. In this lies one distinction between a patent and a copyright. One may infringe a patent by the innocent reproduction of the machine patented, but the law imposes no prohibition upon those who, without copying independently arrive at the precise combination of words or notes which have been copyrighted. The plaintiff therefore concedes that it must show that Kern, the composer, used 'Dardanella' as the source of his accompaniment.

The argument is a strong one. Not only is the figure in each piece exactly alike, but it is used in the same way; that is as an 'ostinato' accompaniment. Further, the defendants have been able to discover in earlier popular music neither this figure, nor even any 'ostinato' accompaniment whatever. The fact that 'Kaula' appeared shortly after 'Dardanella' had faded out and was written by one who had necessarily known it, as a musician knew it, makes it still more hard to assume any independent provenience for 'Kalua.' Can I suppose that such parallelism could be the result of coincidence only?

Mr. Kern swears that he was quite unconscious of any plagiarism, and on the whole I am disposed to give him the benefit of the doubt. For this I rely, not only upon the impression which he made upon me, but upon the insufficiency of the motive. I cannot agree that the accompaniment was at all as important to the success of 'Dardanella' as the plaintiff would ask me to believe. I admit that it was a good bass, and helped; but I think the piece won its success substantially because of the melody. It is of course possible that Kern might have lifted it bodily, hoping to escape detection. However, he has an established place among composers of light opera, and has already succeeded more than once. Certainly detection would be a matter of some moment to him. No producer willingly invites the suits which follow musical piracy. Once convicted in such a case, Kern's market might suffer. With the profit small and price high, it seems to me unlikely that he should have set about deliberate plagiarism.

Whether he unconsciously copied the figure, he cannot say, and does not try to. Everything registers somewhere in our memories, and no one can tell what may evoke it. On the whole, my belief is that, in composing the accompaniment to the refrain of 'Kalua,' Mr. Kern must have followed, probably unconsciously, what he had certainly often heard only a short time before. I cannot really see how else to account for a similarity, which amounts to identity. So to hold I need not reject his testimony that he was unaware of such a borrowing. This I understand to have been Judge Knox's conclusion, reached upon the affidavits alone.

On the issue of infringement this conclusion is enough. The point is a new one, but I think it is plain. The author's copyright is an absolute right to prevent others from copying his original collocation of words or notes, and does not depend upon the infringer's good faith. Once it appears that another has in fact used the copyright as the source of his production, he has invaded the author's rights. It is no excuse that in so doing his memory has played him a trick. In an indictment under Copyright Act, Sec. 28 (Comp. St. Sec. 9549), the excuse might be a defense, since the infringement would not be willful; but it is seldom that a tort, as this is, depends upon the purpose of the wrongdoer. Therefore I find with the plaintiff on the issue of infringement.

The defendant next asserts that the proof of authorship is insufficient. Fisher swears that Bernard said he was the author, and there was no objection to that evidence on the score of hearsay, which is competent, if not objected to. He further said that Black later claimed to have contributed to the composition, and that he (Fisher) bought him out. In view of the fact that the insufficiency of the proof was not raised upon the trial, or until reargument (London v. Biograph Co., 231 F. 696, 145 C.C.A. 582), the plaintiff's case might therefore stand, even if proof of authorship were necessary dehors the certificate of registration.

However, the objection is independently bad under the act of 1909, because section 55 (Comp. St. Sec. 9576) makes such a certificate, in fact offered in evidence, prima facie proof, among other things, of the name of the author. Bosselman v. Richardson, 174 F. 622, 98 C.C.A. 127 (C.C.A. 2), is made obsolete by this section. Indeed, Chief Justice Taney under the old act had held the copyright such prima facie proof in Reed v. Carusi, Fed. Cas. No. 11,642.

The most important point of law in the case is whether it is a defense that there was in the prior art substantially the same figure. First, I think there is a clear difference between its use at intervals, as in Wagner, Schumann, or Kummer, and its use by Bernard as an 'ostinato.' To the ear the two are toto coelo different, auditorially nand emotionally, as different as eight notes when used alone and when used as part of a larger phrase. Musical melody is single, the sense of the earlier notes carrying over into those which succeed. Repetition is in substance the same in this respect, the effect upon the ear being entirely different when the figure is rolled over and over again. The only composition in the public domain which I should consider an anticipation, if this were a patent suit, is Landon's adaptation of Weber's 'Mermaid Song.'

The differences between Landon and the copyrighted 'ostinato' are not enough to make the latter an 'adaptation or arrangement' of the first, under section 6 (Comp. St. Sec. 9522), had it been taken directly from Landon's work. There is a minimum of change which the law will disregard. Jollie v. Jaques, 1 Blatchf. 825, Fed. Cas. No. 7,437; Atwill v. Ferrett, 2 Fed.Cas. 195, No. 640; Cooper v. James (D.C.) 213 F. 871. Yet there is no evidence to sustain the assertion that the Dardanella 'ostinato' was in fact taken from Landon or from any other composition. For the purposes of this case it must be deemed to be original, if by original one means that it was the spontaneous, unsuggested result of the author's imagination. And so this case squarely raises the question whether it be a defense to a copyright that the precise work has independently appeared before it and is in the public domain.

Section 7 (Comp. St. Sec. 9523) provides that 'no copyright shall subsist in the original text of any work which is in the public domain. ' This is not new law, and means no more than that by taking such a text you may not get a copyright upon it. It is illustrated by such cases as Bullinger v. Mackey, 4 Fed.Cas. 649, No. 2,127, Kipling v. Putnam's Sons, 120 F. 631, 57 C.C.A. 295, 65 L.R.A. 873 (C.C.A. 2), and Eggers v. Sun Sales Co., 263 F. 373 (C.C.A. 2). The same rule was recognized in West Publishing Co. v. Lawyers' Co-operative Pub. Co. (C.C.) 64 F. 360, 25 L.R.A. 441, Mead v. West Publishing Co. (C.C.) 80 F. 380, Ed. Thompson Co. v. American, etc., Co., 122 F. 922, 59 C.C.A. 148, 62 L.R.A. 607, and Banks, etc., Co. v. Lawyers,' etc., Co., 169 F. 386, 94 C.C.A. 642, 17 Ann.Cas. 957. It has no application whatever to a work which is of original composition, because such a work is not the 'original' text of any work in the public domain, but a second and equally 'original' text of a work never published before its copyright.

The decisions relied upon by the defendant, other than those already cited, for the most part turn upon infringement, as, for example, Marks v. Feist (C.C.A.) 290 F. 959; Chautauqua School v. National School, 238 F. 151, 151 C.C.A. 227; Stevenson v. Harris (D.C.) 238 F. 432; Bachman v. Belasco, 224 F. 817, 140 C.C.A. 263; Haas v. Feist (D.C.) 234 F. 105; Vernon v. Shubert (D.C.) 220 F. 694; Howell v. Miller, 91 F. 129, 33 C.C.A. 407; Simms v. Stanton (D.C.) 75 F. 6; Burnell v. Chown (C.C.) 69 F. 993; Daly v. Palmer, 6 Blatchf. 256, Fed. Cas. No. 3,552; Reed v. Carusi, Fed. Cas. No. 11,642; D'Almaine v. Boosey, 1 Younge & C. 288; Chatterton v. Cave, L.R. 10 C.P. 572. In these cases it was indeed constantly discussed whether the defendant had copied the plaintiff's work, or whether he derived the alleged infringement, however similar, independently, but the similarity of his work with an earlier one in the public domain was used only as evidence in corroboration of his contention that that was its source. The cases do not decide that the copyrighted work is not valid, because there was a similar or identical work in the public domain. The quotations cited are to be read in the light of this rule governing infringement.

London v. Biograph Co., 231 F. 696, 145 C.C.A. 582 (C.C.A. 2) was a case which may have meant to go further, though the precise ratio decidendi is not wholly clear. The plaintiff had written a story based upon a very old and often repeated plot, modernized in its incidents. The infringing picture play contained the same plot, but only unimportant resemblances to the new details of the story. An injunction was denied, but the grounds are not certain. It nowhere...