314 F.Supp. 640 (S.D.N.Y. 1970), 64 Civ. 3295, Picture Music, Inc. v. Bourne, Inc.

Docket Nº:64 Civ. 3295 (MP).
Citation:314 F.Supp. 640
Party Name:PICTURE MUSIC, INC., Plaintiff, v. BOURNE, INC., Defendant.
Case Date:July 06, 1970
Court:United States District Courts, 2nd Circuit, Southern District of New York

Page 640

314 F.Supp. 640 (S.D.N.Y. 1970)



BOURNE, INC., Defendant.

No. 64 Civ. 3295 (MP).

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

July 6, 1970

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[Copyrighted Material Omitted]

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Lewis A. Dreyer, New York City, for plaintiff; by Lewis A. Dreyer and Norma Hack, New York City, of counsel.

Phillips, Nizer, Benjamin, Krim & Ballon, New York City, by Walter S. Beck and Robert R. Salman, New York City, of counsel.


POLLACK, District Judge.

This action seeks to determine the ownership of copyright interests, original and renewal, in a popular song and to obtain an accounting in respect thereof.

In May, 1933, Walt Disney Productions, Inc. (hereafter 'Disney') produced, copyrighted and released a motion picture musical cartoon entitled the 'THREE LITTLE PIGS' which enacted the fable of the two heedless pigs who built their houses of straw and sticks but were saved from the huffing, puffing wolf by the third pig's house of brick. In the cartoon was a simple musical composition, a verse sung by each pig stating its choice of its kind of house, followed by a refrain consisting of repetitions of all or part of the line, 'Who's Afraid of the Big Bid Wolf?'. The composition was a lyric set to music. The words and music were written by Disney's employee, a pianist, Frank E. Churchill.

The cartoon was exhibited at various motion picture houses in New York City and was a notable success. George E. Joy, the professional manager of Irving Berlin, Inc., heard the tune and conceived the notion that it could be a hit as a popular vocal song. He communicated his idea to Miss Ann Ronell, a successful songwriter, some of whose works were being published by the Berlin organization, and to Johnny Burke, a lyric writer who was under contract to Berlin. He took both of them to the Trans Lux Theatre in New York City where they saw and heard the Disney musical cartoon. Joy told them in effect that he wanted the musical composition in the motion picture adapted for use as a popular song. This required restructuring and lengthening the central melody to the customary proportions for a popular song and supplying incidental necessary musical changes and additional lyrics to accomplish this. Joy apparently felt that Miss Ronell was under some obligation to help him because he had recently taken one of her songs to Paul Whiteman, the famous band leader, who introduced it to the public for her. He explained: 'We were quite friendly, and in those days you didn't think much of asking another writer to help you out and fix up a middle or punch line.' Sometimes, he noted, the assistance was free of charge, and 'sometimes for a few dollars.'

The musical score of the cartoon was obtained by the Berlin organization and

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furnished to Miss Ronell. She worked on it with Johnny Burke at the Berlin offices as well as by herself at home. The music was adapted by them for use as a popular song, lyrics were added by Miss Ronell and the product was submitted to Joy who directed that it be gone over by the Berlin music editor and arranger, Helmy Kresa; the latter went over it, made suggestions and inserted certain revisions thereon. The result was then forwarded to Disney by the Berlin organization through one Kay Kamen, the New York agent for Disney.

Disney agreed to permit the publication of the song by Berlin and assigned its ownership interest and the right to apply for copyrights, original and renewal, to Berlin, in exchange for agreed royalties. Disney also executed a written assignment to Miss Ronell for her services, of one-fourth of Disney's royalty income from the song. The song became a popular success almost immediately.

The Berlin organization published the first edition of the song sheet with the credit that the 'Words and Music (were) By Frank E. Churchill and Ann Ronell'. Whether this was merely reciprocal appreciation for her help is not clear but at all events the credits overshot the mark. However, the later editions of the song sheet were published with a modified legend reading 'words and Music by Frank E. Churchill, Additional Lyric by Ann Ronell'. This modification was prompted by the complaints of the writers on Disney's staff who had collaborated in making the cartoon. They had complained of the credit given to her for what she had done with the work and demanded that they should be given public artistic recognition for their contributions to the works on which they were employed. Disney met the discontent in his organization by causing the modification of the legend on the popular song sheets. Ann Ronell protested the change, but to no avail. She also complained that her understanding was that she would receive one-third of the royalty income and not merely one-fourth thereof, and there is some support from the Berlin organization for her contention. Again, she was unable to gain her point; Disney refused to pay more than one-fourth. She was represented during this period and in this connection by experienced independent counsel as well as by her brother, an outstanding lawyer, both of whom she consulted in respect of her rights and interests and both of whom presented her viewpoint to Berlin and/or Disney.

The 25% Share of Disney's royalty income was paid to Miss Ronell semi-annually during the next 27 years for the period from 1933 until 1960 when applications for renewal copyrights on the song became timely. Although she demurred in the early years, ultimately she accepted every royalty payment so calculated. From 1960 she declined to receive her share of royalties on a newly asserted ground and the royalties payable to her have been accumulated by the defendant for her. In a letter to the defendant prepared for her by new counsel, Miss Ronell claimed an ownership interest in the last year of the original copyright together with an undivided one-half interest in the renewal copyright as well as the right as an owner to designate the music publisher. She assigned her alleged rights to Ross Jungnickel, Inc., which in turn assigned to the plaintiff. She filed renewal copyright claims in September, 1960 and obtained registration certificates. In about 1961, the plaintiff published a new edition of the song under its own name. This has given rise to the defendant's counterclaim for infringement.

In addition to sharing Disney's income from royalties on the sale of sheet music, Miss Ronell has also received performance benefits from her connection with the popular song through her membership in ASCAP (American Society of Composers, Authors & Publishers). The latter is an unincorporated membership association comprising publishers, authors and composers who own interests in various separate

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musical compositions. ASCAP functions as a licensing agent for its members. When someone in the professional entertainment field wants to perform a copyrighted piece, he merely secures a license from ASCAP rather than seeking out the individual publisher or writer whose work he wants to perform. ASCAP collects a fee or royalty for the license, which is divided equally between the publisher and the writers; this is periodically paid over to them. Cf. K-91, Inc. v. Gershwin Publishing Corp., 372 F.2d 1, 2 (9th Cir. 1967), cert. denied, 389 U.S. 1045, 88 S.Ct. 761, 19 L.Ed.2d 838 (1968). These performance fruits are distributed in this manner as an incident of the agreement among ASCAP members.

In this case the writer's share was split equally between Churchill and Ronell; each thus received on-fourth of the receipts collected by ASCAP and that has been paid to them since 1933. This fact has no significance on the question in this case of the ownership of the copyright interests, original or renewal. The publisher's share of the performance receipts was paid by ASCAP to Berlin (later Bourne) through September 78 1961 and from that date until June 30, 1962 the publisher's share was divided and paid 50% To Bourne and 50% To plaintiff, Picture Music, Inc. Thereafter, this division was terminated and Bourne was credited by ASCAP with the full publisher's share as a result of furnishing ASCAP with a letter of indemnification. These facts too, have no bearing on the decision of the issue in this case as to the ownership of the renewal copyrights.

Both plaintiff and defendant agree that defendant owns at least a one-half interest in the United States renewal copyright of the song. Defendant, however, claims ownership of the entire renewal copyright, while plaintiff, as assignee of Ann Ronell, claims ownership of a one-half interest. Plaintiff's claim derives from the asserted co-authorship of Miss Ronell. Defendant maintains that Miss Ronell's contribution cannot be deemed an authorship and that, in any event, her contribution was made in the course of an employment for hire.

By its first claim for relief, plaintiff seeks a declaration that it held the ownership of a one-half interest in the final year of the original term of the United States copyright and holds a like interest in the United States renewal copyright of the song. By the second claim for relief, plaintiff seeks a similar interest as to foreign copyrights of the song. An accounting is demanded of one-half of all moneys and benefits received by defendant for the use and licensing of the song from and after April 1, 1960.

Defendant, in a counterclaim, seeks, inter alia, to enjoin plaintiff's alleged infringement of defendant's copyright interest in the song, and seeks an accounting of the profits derived by plaintiff from such infringement together with counsel fees. Plaintiff denies infringement on the contention that it is a co-owner of the renewal copyright interest.

In has been stipulated that all issues relating to an accounting, damages...

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