Brown v. Select Theatres Corporation, Civil Action No. 2194.

• Decision Date: 30 June 1944
• Docket Number: Civil Action No. 2194.
• Citation: 56 F. Supp. 438
• Court: U.S. District Court — District of Massachusetts
• Parties: BROWN v. SELECT THEATRES CORPORATION.

56 F. Supp. 438

BROWN v. SELECT THEATRES CORPORATION.

Civil Action No. 2194.

District Court, D. Massachusetts.

June 30, 1944.

Joseph N. Welch and Anthony Brayton, both of Boston, Mass. (Hale & Dorr, of Boston, Mass., of counsel), for plaintiff.

John M. Russell, James C. Gahan, Jr., and William F. Joy, all of Boston, Mass. (Ropes, Gray, Best, Coolidge & Rugg, of Boston, Mass., of counsel), for defendant.

WYZANSKI, District Judge.

Findings of Fact

Introductory

1. This action is brought by a Massachusetts citizen against a New York corporation and involves more than $3,000. Complaint is made of various species of unfair competition. But the Court has segregated for separate trial one issue in the case which in the light of developments subsequent to the pre-trial order of March 6, 1944 can be fairly re-phrased as follows: Is the version of the dialogue of The Merry Widow which was received by the Librarian of Congress on May 24, 1907, now in the public domain?

2. That main issue turns on two subordinate questions: (A) on May 7, 1907, who was the owner of the literary property in the English dialogue of The Merry Widow which was embodied in the Edwardes manuscript; and (B) did the owner either transfer to Savage the literary property in that dialogue or give him the power to publish the dialogue so that it is now in the public domain?

A. On May 7, 1907, who was the owner of the literary property in the English dialogue of The Merry Widow which was embodied in Edwardes' manuscript?

3. In 1905 Victor Leon and Leo Stein wrote in German the dialogue and lyrics and Franz Lehar wrote the music of an operetta, "Die Lustige Witwe." Leon, Stein and Lehar assigned all their rights to that operetta to Felix Block Erben.

4. George Edwardes, a prominent London theatrical producer, entered into a contract with Erben on February 27, 1906. Under that contract Erben sold to Edwardes the sole rights of production in Great Britain, Ireland, the United States and Canada of "Die Lustige Witwe" in the English language; and Edwardes agreed to produce the operetta in three acts and not to make any more alterations or additions than were necessary to insure the success of the operetta on the English-speaking stage.

5. At an unknown date in 1906 Edwardes entered into a contract with Henry W. Savage, formerly an experienced real estate operator in Boston and then a well-known New York theatrical producer. Savage enjoyed the highest reputation for good character and business ability. The terms of that contract were probably written on the back of an envelope and have not been preserved. Exhibit 71 is at best a subsequent confirmation of that contract.

6. Thereafter, on May 1, 1907, Edwardes wrote a letter to Edward Morton offering him the opportunity to make an adaptation in English of "Die Lustige Witwe"; and on May 2, 1907, Morton accepted Ex. 60 (1). Those letters have not been preserved.

7. "In accordance with" that basic contract, Edwardes by a letter to Morton dated May 22, 1907, offered to pay to Morton stipulated fees for certain performances of the adaptation, on the understanding that "all performing rights are to be my Edwardes' sole property." Morton accepted by letter dated May 23, 1907.

8. Morton had as associates in his work of adaptation Capt. Basil Hood and, so far as the lyrics are concerned, Arthur R. Ropes. Edwardes by a letter to Hood dated June 20, 1907, offered, in addition to what he paid Morton, to pay Hood for his adaptation stipulated fees for certain performances. The same day Hood accepted by letter. Edwardes apparently made a contract, now missing, with Ropes under which Ropes agreed to participate in the English adaptation in consideration of a payment of stipulated fees for performances. Then Edwardes in a letter now missing offered a modification of the fees of Ropes and of others. As part of a general scheme of reduction of fees, Ropes accepted this offer by a letter dated November 20, 1907.

9. May 7, 1907, five days after the basic contract for the English adaptation was executed, but before the execution of the subsidiary contract of May 23, 1907, with Morton, or the subsidiary contract of June 20, 1907, with Hood, or presumably the first subsidiary contract with Ropes, Edwardes delivered to Savage the completed English adaptation of the dialogue of "The Merry Widow."

10. Since the foregoing facts are admittedly equivocal and since Edwardes, Savage, Morton, Hood, Ropes and the Fromme brothers are dead, it becomes necessary for the Court to rely on interpretation and inference to reach its conclusion as to the ownership of the dialogue. It has seemed to me a reasonable inference from all the facts that when Morton and Hood wrote the English dialogue and Ropes (sometimes known as Ross) wrote the English lyrics of "The Merry Widow" at the request of Edwardes, they and he intended that the title and property to the completed English dialogue should belong to Edwardes and that he should exploit it. In reaching this conclusion I have given particular weight to the underlying facts that Edwardes had initiated the project by procuring from Erben the right to produce an English version of "Die Lustige Witwe"; that Edwardes had contracted with Erben that there should be no substantial changes in the text; that Edwardes had made a contract with Savage with respect to the English version before Edwardes made contracts with Morton, Hood or Ropes; and that neither Edwardes, nor Savage, nor Morton, nor Hood, nor Ropes ever stated that Morton, Hood or Ropes had any literary property in the dialogue of "The Merry Widow." I have also borne in mind that the agreements between Edwardes, Morton, Hood and Ropes were made in England in 1907. At that time section 18 of the Copyright Act, 1842 (5 & 6 Vict. c. 45) provided that: "When any * * * person shall * * * have projected * * * any book whatsoever, and * * * shall employ any persons to compose the same * * * and such work * * * shall hereafter be composed under such employment, on the terms that the copyright therein shall belong to such * * * projector * * * and paid for by such * * * projector, * * * the copyright in every such * * * portion so composed and paid for * * * shall be the property of such * * * projector." And the English courts, construing that statute, had ruled that where a person employs and pays another to write a book for him, the author prima facie is held to assign his interest in the literary property even though the parties made no reference to the assignment of the literary property or the privilege of taking out a statutory copyright, Lawrence & Bullen, Ltd. v. Afalo 1904 A.C. 17, 23; Sweet v. Benning, 16 C.B. 459. In reaching my conclusion that Edwardes acquired the literary property, I have not overlooked the fact that the subsidiary agreements with Morton, Hood and Ropes all provided payment on a fee basis for performance rights, and that such form of payment ordinarily might indicate that the authors were not making sales of their property, but giving licenses for its use. However, these considerations seem less important to me because the basic adaptation contract between Edwardes and Morton is missing; the subsidiary contracts were made after the adaptation was complete and after Edwardes had given Savage a copy; and although "The Merry Widow" has been exploited by Edwardes and those with whom he has dealt not only by representations on the stage but by motion pictures and perhaps in other ways such as the sale of printed copies of the dialogue, the representatives of Morton and Hood have never sought any different or other rate of royalties than the limited fees stipulated for theatrical performances (Ex. 60, par. 5). I, therefore, find as a fact that on May 7, 1907, Edwardes was the owner and proprietor of the literary property of the dialogue of "The Merry Widow" which he delivered to Savage on that day.

B. Did the owner either transfer to Savage either the literary property in that dialogue or give him the power to publish the dialogue so that it is now in the public domain?

11. When Edwardes on May 7, 1907, transferred to Savage the manuscript of "The Merry Widow" he did not intend to and did not transfer to him either the legal or the equitable title to the literary property in the operetta. To be sure we are without direct knowledge of the terms of the contract of April 3, 1906, pursuant to which the transfer was made, for that contract is lost. However, other circumstances make it obvious that the parties thought that Edwardes retained legal and equitable title and gave Savage principally an exclusive license to perform the operetta in the United States and Canada. That this was the attitude of the parties is shown by their correspondence in 1907 and their supplemental contract of January 6, 1908 Ex. 71, 72, 73. It is also shown by the facts that one month after the transfer, June 8, 1907, Edwardes produced the operetta on the English stage; and two months after the transfer, July 4, 1907, Edwardes registered the operetta in the Register Book of the Stationer's Company pursuant to the permissive provisions of the English Copyright Act of 1842, 5 & 6 Vict. c. 45, which apparently do not require registration prior to performance. Russell v. Smith, 12 Q.B. 217, Drone, Copyright p. 280.

12. Edwardes, however, intended to and did transfer to Savage an exclusive license for the American performing rights which would be effective, durable and virtually impervious to litigation.

13. At the time Edwardes made the...