Von Tilzer v. Jerry Vogel Music Co.

• Decision Date: 14 September 1943
• Citation: 53 F. Supp. 191
• Parties: VON TILZER et al. v. JERRY VOGEL MUSIC CO., Inc., et al.
• Court: U.S. District Court — Southern District of New York

53 F. Supp. 191

VON TILZER et al. v. JERRY VOGEL MUSIC CO., Inc., et al.

District Court, S. D. New York.

September 14, 1943.

COPYRIGHT MATERIAL OMITTED

Phillips, Nizer, Benjamin & Krim and Louis Nizer, all of New York City, for plaintiff Harry Von Tilzer Music Pub. Co.

Goldie & Gumm and William V. Goldie, all of New York City, for plaintiff Harry Von Tilzer.

O'Brien, Driscoll & Raftery, Arthur F. Driscoll, and Milton M. Rosenbloom, all of New York City, for defendant Jerry Vogel Music Co., Inc.

Frank P. Greenberg, of New York City, for Jack Mahoney.

BONDY, District Judge.

The complaint alleges the infringement by the defendant, Jerry Vogel Music Company, Inc., of the copyright of seven songs. The complaint was not served on any of the defendants other than this corporation and Jack Mahoney.

The first cause of action involves the song "Down On The Farm". The music was composed by the plaintiff, Harry Von Tilzer. The lyrics were written either by Raymond A. Browne, as is claimed by the defendant corporation, or partly by Browne and partly by Von Tilzer, as is claimed by the plaintiff.

The defendant corporation published and sold the song, claiming the right to do so by an assignment of the renewal rights to it by the widow of Browne.

Harry Von Tilzer assigned to the plaintiff corporation the right to copyright and publish the song and agreed to make proper application for the renewal of the copyright in his name for the benefit of the plaintiff.

July 26, 1902, the plaintiff corporation copyrighted the song. July 16, 1930, within one year before the expiration of the copyright, Von Tilzer applied for renewal and received a renewal certificate which he assigned to the plaintiff corporation.

The original certificate of registration, the renewal certificate and the sheet music sold by the plaintiff corporation stated that the lyrics were written by Raymond A. Browne and the music was composed by Harry Von Tilzer.

It appears that Browne collaborated with Von Tilzer in the writing of the lyrics for the music composed by Von Tilzer. At the time, Browne worked regularly from 9 A.M. to about 5 or 6 P.M. for the plaintiff corporation in its place of business at a fixed salary.

There is no evidence that Browne claimed or received any royalty or any compensation other than his salary from July 26, 1902, when the song was copyrighted and published, to May 9, 1923, when he died, or that his widow, Jennie A. Browne Tafuri, ever claimed any renewal rights or any royalties or made any claim against the plaintiffs before about August 8, 1940, when this action was begun.

The court concludes that Browne wrote the lyrics of the song for his employer in the course of his employment by the plaintiff corporation, and that whether or not he was the author of a part or all the words, the plaintiff alone as his employer for hire was entitled to the copyright and to the renewal thereof. Section 62 of the Copyright Act, 17 U.S.C.A. § 62; Shapiro, Bernstein & Co. v. Bryan, 2 Cir., 123 F.2d 697; Tobani v. Carl Fisher, Inc., 2 Cir., 98 F.2d 57, 59, certiorari denied 305 U.S. 650, 59 S.Ct. 243, 83 L.Ed. 420; United States Ozone Co. v. United States Ozone Co. of America, 7 Cir., 62 F.2d 881, 887.

Because the plaintiff corporation was entitled to all copyrights and renewal rights, the widow could not give nor the defendant corporation receive from her any right to publish the song nor any right to any money collected by the plaintiff corporation on the theory that since the renewal it held part of the proceeds received by it in trust for the widow.

The plaintiff corporation accordingly is entitled to judgment enjoining the infringement of the song by the defendant corporation and to an accounting and to judgment dismissing the counterclaim.

Jerry Vogel has been discredited by the fact that he made irreconcilably contradictory statements under oath with reference to other songs as well as this as he himself admitted. In the song which he published he stated it was copyrighted in 1930 by Raymond A. Browne and assigned in 1938 to the Jerry Vogel Music Co., Inc., although Browne did not copyright the song and Vogel knew that Browne died before 1930.

The second cause of action relates to the song "I Want a Girl Just Like the Girl Who Married Dear Old Dad". The music was composed by Harry Von Tilzer. The words were written by Dillon or by Dillon in collaboration with Harry Von Tilzer. The song was copyrighted by the plaintiff corporation May 1, 1911.

The defendant corporation claims the right to publish the song under an assignment of his renewal rights by Dillon.

On August 4, 1911, Dillon, in consideration of its promise to pay one cent for every printed copy sold, assigned all his interest in the song and his renewal rights to the plaintiff corporation by a written instrument, which, however, was not filed in the office of Registrar of Copyrights until the 2d day of May, 1938, when Harry Von Tilzer, as composer, filed an application for renewal and assigned the renewed term to the plaintiff corporation.

On May 4, 1938, Dillon filed an application for the renewal term. On June 15, 1938, he assigned his renewal right to Jerry Vogel. Thereafter he also assigned to the defendant corporation all claims he had against plaintiff by reason of the publication of the song by it.

The certificate of registration, the renewal certificate, as well as all the sheet music of the songs sold by the plaintiff corporation stated that the words were written by Dillon.

Since Dillon was living on the first day of the twenty-eighth year of the original term, the 1911 assignment by him to the plaintiff corporation vested in it all his renewal rights and gave it the exclusive right to publish the song not only during the original term but also during the renewed term. The application for the renewal filed by Dillon May 4, 1938, after he had assigned all his rights to the renewal term to the plaintiff corporation, accordingly did not vest any renewal rights in his assignee, M. Witmark & Sons v. Fred Fisher Music Co., 2 Cir., 125 F.2d 949, affirmed by United States Supreme Court April 5, 1943, 318 U.S. 643, 63 S.Ct. 773, and the publication of the song by defendant constituted infringement of plaintiff's copyright.

Though the assignment to the plaintiff corporation was not recorded within three months of its execution, it was good as against the recorded assignment to Vogel, because he did not pay anything for the assignment and therefore was not a purchaser for valuable consideration and without notice, the mere promise to pay consideration not constituting a valuable consideration within the recording act. See Rossiter v. Vogel, 2 Cir., 134 F.2d 908, 911.

The defendant corporation counterclaims one cent for every copy of the song sold by the plaintiff corporation, including copies in folio, and demands judgment for an accounting of all printed copies sold during the original and renewal terms, as well as an injunction to prevent plaintiff from slandering defendant's title.

The assignment of the renewal rights was made by Dillon to Jerry Vogel, who is not a defendant, and not to the defendant corporation.

In any case, the plaintiff's failure to pay royalties on folios was not a breach of its contract with Dillon to pay royalties of one cent on each and every printed copy sold.

Twelve years after the song was published folios, including this song, were published by the plaintiff corporation. The president of a large music publishing company testified that royalties are never paid on music published in folio, that the words "printed copy" as used in the music publishing industry apply to sheet music only and do not include copy in folio.

A former president of the Song Writers Protective Association, who is a well known and successful composer and song writer, testified that since the organization of the Association in 1931 there has been paid to composers for publishing their songs in folios from $5 to $25, irrespective of the number of copies of the folios sold, and that no publisher would eliminate the possibility of selling a single sheet of music for 25¢ or 50¢ by publishing a book containing many songs in folio for the same price simply to avoid the payment of a royalty. This testimony was given not to vary the terms of the written contract but to explain the meaning of words "every printed copy sold" used technically in it. See Mutual Chemical Co. v. Marden, Orth & Hastings Co., 235 N.Y. 145, 151, 139 N.E. 221. A folio in evidence, published by the plaintiff corporation and including this song, states that it is an artist's complimentary copy not for sale, given with the compliments of the publisher.

Von Tilzer, as composer of the music, and the plaintiff corporation, as assignee of the writer of the lyrics, having had the exclusive right to renew, the plaintiff corporation is entitled to judgment enjoining infringement by the defendant. The defendant, however, is entitled to an accounting as to the number of printed copies of the song not in folios sold by the plaintiff since September 23, 1934, the recovery of the royalties which became due before September 23, 1934 being barred by the statute of limitations. Section 48, New York Civil Practice Act; Brick v. Cohn-Hall-Marx Co., 276 N.Y. 259, 11 N. E.2d 902, 114 A.L.R. 521; Keys v. Leopold, 241 N.Y. 189, 149 N.E. 828.

The third cause of action involves the song "All Alone". The music was composed by Harry Von Tilzer and the lyrics were written by Dillon or by Dillon in collaboration with Harry Von Tilzer.

On February 6, 1911, Dillon assigned to the plaintiff corporation all his interest in the song together with all his renewal rights.

On February 10, 1911, the plaintiff corporation copyrighted the song. On February 10, 1938, Harry Von Tilzer renewed the copyright and assigned it to the plaintiff corporation.

On March 21, 1938, Dillon applied for renewal and on June 15, 1938, he...