Lottie Joplin Thomas Trust v. Crown Publishers, Inc.
| Citation | 592 F.2d 651 |
| Decision Date | 21 September 1978 |
| Docket Number | No. 641,D,641 |
| Parties | , 1978-81 Copr.L.Dec. 25,034 The LOTTIE JOPLIN THOMAS TRUST, Mary L. Wormley, Administratrix d/b/n the Estate of Lottie Joplin Thomas, and Mary L. Wormley, Individually, Plaintiffs- Appellees, v. CROWN PUBLISHERS, INC., Olympic Records Corporation, and Joseph Abend, Defendants-Appellants. ocket 77-7417. |
| Court | United States Courts of Appeals. United States Court of Appeals (2nd Circuit) |
Robert C. Osterberg, New York City (Abeles Clark & Osterberg, New York City, on the brief), for defendants-appellants.
Joseph Calderon, New York City (Jules D. Zalon, and Linden & Deutsch, New York City, on the brief), for plaintiffs-appellees.
Before LUMBARD, TIMBERS and GURFEIN, Circuit Judges.
This is an appeal from a judgment for copyright infringement entered after a bench trial in the Southern District of New York, John M. Cannella, District Judge, 195 U.S.P.Q. 49 (1977), awarding to plaintiff Mary L. Wormley declaratory and injunctive relief, together with $177,980.73 damages ($73,242.46 against defendants Olympic Records Corporation and Joseph Abend; $104,738.17 against defendant Crown Publishers, Inc.), plus interest and costs according to law.
We affirm substantially on the opinion of Judge Cannella dated May 26, 1977. We accept his findings of fact, Fed.R.Civ.P. 52(a), and we agree with his conclusions of law.
The complaint in this copyright infringement action which was commenced in April 1975 alleged that the record album "Scott Joplin His Complete Works", produced and distributed by defendants, infringed plaintiff's 1 copyrights in the opera composed by Scott Joplin, "Treemonisha", and two compositions originally contained in it, "A Real Slow Drag: from Treemonisha" and "Treemonisha (Prelude to Act III)".
Scott Joplin had obtained from the Copyright Office certificates of copyright registration of these three works in 1911 and 1913. He died in 1917. In 1938 and 1940, Scott Joplin's widow, Lottie Joplin Thomas, obtained certificates of renewal of the three copyrights. 2
On September 26, 1952, Lottie Joplin Thomas assigned her copyright interests in the three works to Wilbur Sweatman as trustee of the Lottie Joplin Thomas Trust. Sweatman had been an associate of Scott Joplin. On August 14, 1959, Sweatman "acting as executor of the estate of Scott Joplin" 3 purported to assign the copyrights to the Wilbur Sweatman Music Publishing Company. Sweatman's assignment of August 14, 1959 was recorded in the Copyright Office on August 17, 1959. No evidence of such an assignment was ever found in the files of the Lottie Joplin Thomas Trust.
Upon the death of Sweatman in 1961, Robert Sweeney became the owner of the Wilbur Sweatman Music Publishing Company and the purported copyright assignment. The Surrogates Court's records, however, do not refer in any way to the compositions of Scott Joplin or to the Wilbur Sweatman Music Publishing Company.
In the fall of 1974, Joseph Abend, president and sole shareholder of Olympic Records Corporation, contacted the Harry Fox Agency to inquire whether a license to record the three compositions here involved could be obtained. The agency told Abend that it could not grant such a license. Abend made no further attempt to obtain a license. Instead, Olympic Records proceeded to record, and in the fall of 1974 to sell, the album "Scott Joplin His Complete Works." One side of the five record set included selections from the opera "Treemonisha" under the caption "Highlights from Treemonisha", including the compositions, "A Real Slow Drag" and "Prelude to Act III".
By a letter dated January 7, 1975, plaintiff's counsel notified defendants that the album infringed the copyrights held by the Joplin trust. Upon receipt of this letter, Abend contacted the American Society of Composers, Authors and Publishers (ASCAP). He was told that the Wilbur Sweatman Music Publishing Company was the publisher of the compositions in question. A search of the Copyright Office records disclosed the purported Sweatman "assignment" of August 14, 1959. Armed with this disclosure, Olympic Records continued to sell the record album here involved.
The instant action was commenced in the Southern District of New York on April 23, 1975. Shortly thereafter Abend, having learned of the Sweatman assignment, contacted Sweeney, the owner of the Wilbur Sweatman Music Publishing Company since Sweatman's death in 1961. The upshot was that Sweeney, on behalf of the Company, assigned the renewed copyrights to the compositions in question to himself and Abend for a consideration of $1.00.
We shall not tarry on the issue of liability. Our careful review of the record as a whole leaves us with the firm conviction that the district court's findings of fact were not clearly erroneous. We also agree with the district court's conclusions that Mary L. Wormley is the copyright proprietor of the three musical compositions here involved; that defendants infringed the copyrights of those compositions; that defendants' counterclaims were properly dismissed on the merits; that permanent injunctions were properly entered enjoining defendants from further manufacture and sale of records of such compositions unless defendants obtain licenses to do so; and, liability having been correctly determined, that the award of damages, interest and costs in favor of plaintiff and against defendants was properly made.
While we agree with the district court's disposition of each of appellants' contentions, we nevertheless shall briefly state here the reasons for our rulings on what we regard as the principal contentions of appellants.
First, appellants argue that plaintiff was barred by laches and estoppel from denying that the Wilbur Sweatman Music Publishing Company owned the copyrights here in question. In attempting to establish the defense of laches defendants failed to make the required showing that plaintiff (or her predecessors in interest) did not assert her or their rights diligently, and that such asserted lack of diligence, even had it been established, resulted in prejudice to them. Costello v. United States, 365 U.S. 265, 282 (1961); Roberts v. Morton, 549 F.2d 158, 163-64 (10 Cir. 1976); Weiszmann v. District Engineer, United States Army Corps of Engineers, 526 F.2d 1302, 1306 (5 Cir. 1976); Advanced Hydraulics, Inc. v. Otis Elevator Co., 525 F.2d 477, 479 (7 Cir.), Cert. denied, 423 U.S. 869 (1975). 4 Defendants also failed to establish their defense of estoppel. Among other things, they did not prove that they relied detrimentally upon plaintiff's failure to contest the Sweatman assignment. Rohauer v. Killiam Shows, Inc., 379 F.Supp. 723, 731 (S.D.N.Y.1974), Rev'd on other grounds, 551 F.2d 484 (2 Cir.), Cert. denied, 431 U.S. 949 (1977). 5
The district court also properly rejected defendants' claims that they were the copyright proprietors of the musical compositions in question as a result of the assignment of the copyrights by Sweatman to the Wilbur Sweatman Music Publishing Company, and eventually by that company to Abend. The purported assignment refers to Sweatman as executor of Scott Joplin's estate. There never was any such executor. The renewal rights actually were owned by Lottie Joplin. Even assuming that Sweatman thought that he was acting as trustee of the Lottie Joplin Thomas Trust, his assignment of trust property to his own company would be highly suspect. Moreover, the assignment failed to recite any consideration for the transfer. Absent any other evidence of the circumstances of this transaction, the district court correctly held the transfer invalid as the basis for a defense in the instant infringement action.
The district court also was correct in rejecting the defense based upon the compulsory licensing provisions of Section 1(e) of the Copyright Act. 17 U.S.C. § 1(e) (1970). 6 The record amply supports the court's finding that plaintiff neither authorized nor acquiesced in the recording of compositions as to which notice was required to be filed. Proper notice was filed with respect to "A Real Slow Drag". Defendants moreover failed to give notice of their reliance on the compulsory licensing provisions of Section 1(e), as required by Section 101(e) of the Copyright Act. 17 U.S.C. § 101(e) (1970). 7
On this record therefore the district court correctly held that defendants were liable for infringing plaintiff's copyrights on the three compositions here involved.
Having affirmed the district court's decision on the issue of liability, we turn now to the issue of damages. It was with respect to this issue particularly the burden of proof on the apportionment of profits derived from copyright infringement that we requested counsel at the time of argument to submit in letter form the authorities upon which they relied. They did. Having carefully examined the authorities submitted by counsel and having further reviewed the record in the light of such authorities and those disclosed by our own research, we affirm in all respects the district court's determination on the issue of damages.
On this aspect of the case, the district court awarded to plaintiff:
(1) Profits
Each defendant was held liable for one-half
of the profits it realized on the sale of the
infringing album, as follows:
Abend and Olympic ........................ $15,426.78
Crown ..................................... 77,225.17
-----------
Total profits .......................... $92,651.95
(2) Damages
Statutory "in lieu" damages 8 were awarded
against each defendant as follows:
Abend and Olympic ........................ $57,815.68
($1.00 per album for "Treemonisha
In 3 Acts"; $1.00 per album
for "Treemonisha (Prelude to Act
III)"; and 8 cents per album for
"A Real Slow Drag: from
...To continue reading
Request your trial
-
Basic Books, Inc. v. Kinko's Graphics Corp.
... ... BASIC BOOKS, INC., Harper & Row Publishers, Inc., John Wiley & Sons, Inc., McGraw-Hill, ... Olds, Jeffery A. Handelman, Thomas A. Schmidt, Kevin J. McDevitt, Willian, Brinks, ... These four elements were adopted in Lottie Joplin Thomas Trust v. Crown Publishers, Inc., ... ...
-
New Era Publications Intern. v. Henry Holt and Co.
... ... HENRY HOLT AND COMPANY, INC., A New York Corporation, Defendant ... No. 88 ... See Harper & Row Publishers, Inc. v. Nation Enterprises, 471 U.S. 539, 105 ... is not limited to telling the readers, "Trust me; those ideas are bizarre," nor required to ... See Lottie Joplin Thomas Trust v. Crown Publishers, 592 ... ...
-
Video Views, Inc. v. Studio 21, Ltd.
... ... 79, 88 L.Ed.2d 64 (1985). See also Lottie Joplin Thomas Trust v. Crown Publishers, Inc., ... ...
-
Esmark, Inc. v. N.L.R.B.
... ... Sys., Inc. v. St. Joseph Bank & Trust Co., 855 F.2d 406, 413-16 (7th Cir.1988); Van ... 1165, 1177 (D.Colo.1988) (citing Lottie Joplin Thomas Trust v. Crown Publishers, Inc., ... ...