M. Witmark & Sons v. Fred Fisher Music Co.

• Decision Date: 24 March 1941
• Parties: M. WITMARK & SONS v. FRED FISHER MUSIC CO., Inc., et al.
• Court: U.S. District Court — Southern District of New York

38 F. Supp. 72

M. WITMARK & SONS v. FRED FISHER MUSIC CO., Inc., et al.

District Court, S. D. New York.

March 24, 1941.

R. W. Perkins, of New York City (Stuart H. Aarons and Stanleigh P. Friedman, both of New York City, of counsel), for plaintiff.

Hays, St. John, Abramson & Schulman, of New York City (John Schulman and Robert J. Burton, both of New York City, of counsel), for defendants.

CONGER, District Judge.

This is a motion to enjoin pendente lite defendants Fred Fisher Music Co., Inc., and George Graff Jr., from printing, publishing, copying or vending the song "When Irish Eyes Are Smiling." No preliminary relief is requested against the other defendant, Mills Music, Inc.

In 1912, Ernest Ball, Chauncy Olcott and defendant Graff jointly composed the song "When Irish Eyes Are Smiling", Ball writing the music, Olcott and Graff the lyrics. Ball and Olcott have since died.

At the time the song was written Graff and Ball were under general contract to plaintiff, whereby, for stated royalties, they transferred to plaintiff all their property in songs which they composed, and which contracts contained the following clause: "* * * and the party of the second part (Graff) hereby expressly grants and conveys to the party of the first part (plaintiff) the copyright or copyrights of, with renewals and with right to copyright and renew, and property in any and all musical compositions which he may write or compose or acquire control of * * *".

Olcott, although not under a general contract, transferred to plaintiff all his rights to this song by a separate agreement. The song was copyrighted in the name of the plaintiff on August 12, 1912, and was thereupon published.

On May 17, 1917, Graff sold, assigned, transferred and delivered to plaintiff for $1,600 all his rights to some 69 songs, including the song in question, and which transfer provided, in part:

"* * * and all copyrights and renewals of copyrights and the right to secure all copyrights and renewals of copyrights in the same or in any arrangements or adaptations thereof, and any and all rights therein that I * * * may at any time be entitled to.

"And I do, for myself * * * hereby irrevocably authorize and appoint the Publisher, its successor, successors and assigns, my attorneys and representatives, in my name * * * to take and do such actions, deeds, and things, and make, sign, execute and acknowledge all such documents as may from time to time be necessary to secure to the Publisher * * * the renewals and extensions of the copyright in said compositions and all rights therein for the term of such renewals and extensions. And I agree, for myself * * * upon the expiration of the first term of any copyright in said composition, in this or in any country, to duly make, execute, acknowledge and deliver or to procure the due execution, acknowledgment and delivery to the Publisher * * * of all papers necessary in order to secure to it the renewals and extension of all copyrights in said compositions and all rights therein for the terms of such renewals and extensions."

This instrument was recorded in the United States Copyright Office on November 21, 1935.

On August 12, 1939, plaintiff, upon the authority of the above contract and upon special authority of Mrs. Olcott, applied for the renewal registration in the name of Graff and Mrs. Olcott, which renewal copyright was registered in the name of Graff and Mrs. Olcott.

On August 12, 1939, plaintiff, in the name of Graff, and pursuant to the authority above stated, and as attorney-in-fact for Graff, assigned Graff's interest in the renewal copyright to itself and recorded the assignment in the United States Copyright Office on August 14, 1939.

On August 23, 1939, Graff made personal application to the United States Copyright Office for a renewal registration, and after its registration, on October 24, 1939, he sold this renewal copyright to defendant Fred Fisher Music Co., Inc.

The question presented by this motion is whether or not Graff's original contract with plaintiff, and his later 1917 agreement in which he purported to give to plaintiff the right to obtain the renewal copyright in his name¹ are not invalidated by the Copyright Law and against public policy, and hence a nullity.

Section 23 of the Copyright Law, 17 U.S. C.A. § 23, reads, in part, as follows: "Duration; renewal. The copyright secured by this title shall endure for twenty-eight years from the date of first publication, whether the copyrighted work bears the author's true name or is published anonymously or under an assumed name; * * * And provided further, That in the case of any other copyrighted work, including a contribution by an individual author to a periodical or to a cyclopedic or other composite work when such contribution has been separately registered, the author of such work, living, or if such author, widow, widower, or children of the author, if the author be not living, of if such author, widow, widower, or children of the author be not living, then the author's executors, or in the absence of a will, his next of kin shall be entitled to a renewal and extension of the copyright in such work for a further term of twenty-eight years when application for such renewal and extension shall have been made to the copyright office and duly registered therein within one year prior to the expiration of the original term of copyright * * *."

This section specifically provides that if the author be living, he alone has the privilege of obtaining the renewal in the twenty-eighth year, and if he be dead, the renewal privilege depends on the status of the persons mentioned in the statute who are living in the twenty-eighth year. Fox Film Corp. v. Knowles, 261 U.S. 326, 43 S. Ct. 365, 67 L.Ed. 680.

When Congress passed this section of the statute, the Committee to which the bill had been referred rendered a report which reads as follows: "Section 23 deals with the term of the copyright. Under existing law the copyright term is twenty-eight years, with the right of renewal by the author, or by the author's widow or children if he be dead, for a further term of fourteen years. The act of 1790 provided for an original term of fourteen years, with the right of renewal for fourteen years. The act of 1831 extended the term to its present length. It was urged before the committee that it would be better to have a single term without any right of renewal, and a term of life of fifty years was suggested. Your committee, after full consideration, decided that it was distinctly to the advantage of the author to preserve the renewal period. It not infrequently happens that the author sells his copyright outright to a publisher for a comparatively small sum. If the work proves to be a great success and lives beyond the term of twenty-eight years, your committee felt that it should be the exclusive...