M. Witmark & Sons v. Calloway

• Decision Date: 29 October 1927
• Docket Number: No. 75.,75.
• Citation: 22 F.2d 412
• Court: U.S. District Court — Eastern District of Tennessee
• Parties: M. WITMARK & SONS v. CALLOWAY et al.

22 F.2d 412 (1927)

M. WITMARK & SONS v. CALLOWAY et al.

No. 75.

District Court, E. D. Tennessee, N. D.

October 29, 1927.

Frank J. McGhee, of Knoxville, Tenn., and W. E. Arnaud, of Atlanta, Ga., for plaintiff.

L. H. Carlock, of Knoxville, Tenn., for defendants.

HICKS, District Judge.

The plaintiff, M. Witmark & Sons, brought this bill in equity against defendants, R. M. Calloway and C. S. Hughes, for an infringement of a copyright. The bill contains the usual prayer for an injunction and damages.

Calloway and Hughes formerly operated a theater at Lenoir City, Tenn., under the trade-name of the Consolidated Amusement Company. This theater was known as the "Grand Theater." At the time of the matters complained of in the bill, the defendant Hughes was no longer connected with the business. The defendant Calloway was the sole owner and proprietor. This theater was a moving picture house, and, in addition to the exhibition of moving pictures, musical performances were given to attract and entertain the public. The theater was operated for profit and admission fees were charged.

One Arthur A. Penn wrote the verse or lyric and composed the music for a song called "Smilin' Through," which was assigned to plaintiff, M. Witmark & Sons. There was no written assignment, nor was that necessary, first, because a parol assignment is sufficient (Callaghan v. Myers, 128 U. S. 617, 9 S. Ct. 177, 32 L. Ed. 547; Lawrence v. Dana, Fed. Cas. No. 8136); and, second, because the copyright is in the name of petitioner M. Witmark & Sons.

There was introduced at the hearing a certificate of copyright registration under seal of the copyright office for this song, showing the copyright in the name of plaintiff. This certificate is prima facie evidence of the facts stated therein. 35 Stat. 1086, c. 320, § 55 (17 USCA § 55), this being the Copyright Act of March 4, 1909. There is nothing to contradict it, and it is therefore sufficient proof to establish a valid copyright in the plaintiff. Berlin v. Evans (D. C.) 300 F. 677. The rule was different before the Copyright Act of 1909. Bosselman v. Richardson (C. C. A.) 174 F. 622; Lederer v. Saake (C. C.) 166 F. 810. The plaintiff, being the proprietor of the copyright, had "the exclusive right * * * (e) to perform the copyrighted work publicly for profit, if it be a musical composition and for the purpose of public performance for profit." Chapter 320, § 1, 35 Stat. 1075, Copyright Act of March 4, 1909 (17 USCA § 1).

In connection with the exhibition of moving pictures, the defendant had in this Grand Theater at Lenoir City, Tenn., a photo player piano, which could be played by the human hand, or which could be operated by means of music rolls. This theater had formerly used copyrighted music rolls in connection with this player piano, but, a controversy having arisen over it, had abandoned the copyrighted music something like a year and a half or two years before the incident complained of.

On June 9, 1926, Frank J. McGhee, a musician and also an attorney representing the American Society of Composers, Authors, and Publishers, after paying the usual admission fee, visited this theater as a patron, remaining there from about 7 until 9 o'clock in the evening, and heard performed on the player piano, by means of the music rolls, several pieces of music, and among others the piece in question, to wit, "Smilin' Through." It was for the infringement in using this copyrighted piece, "Smilin' Through," that the suit was brought. Neither the owner of the theater, Mr. Calloway, nor the manager, Mr. Wallace, knew that it was used, nor had they given any instructions to use this or any other copyrighted music. This music roll, "Smilin' Through," was not among the rolls ordinarily used on the piano. The operator of the piano, a young man named Williams, remembers nothing touching this particular roll. He, however, testifies that upon one occasion he borrowed from or exchanged with certain drug stores in Lenoir City certain music rolls, which he used in this player piano during one or more of the performances in the theater, when he returned them. I assume, therefore, that the weight of the proof is that this theater did, upon the occasion mentioned by the witness McGhee, use the copyrighted music roll "Smilin' Through" during at least one performance. This unwarranted use of it in connection with the moving picture exhibition was, of course, for profit. Admissions were charged at the door. Harms v. Cohen (D. C.) 279 F. 276; M. Witmark & Sons v. Pastime Amusement Co. (D. C.) 298 F. 470; Jerome H. Remick & Co. v. American Automobile Accessories Co. (C. C. A.) 5 F.(2d) 411, 40 A. L. R. 1511; also Herbert v. Shanley Co., 242 U. S. 591, 37 S. Ct. 232, 61 L. Ed. 511.

The defendant insists that, even though his employee, Williams, used this copyrighted music roll, "Smilin' Through," yet there is no proof of infringement, because the record fails to contain any copy of the original copyrighted production or song, with lyric and words, "Smilin' Through." To the deposition of plaintiff's witness Sadie Einstein is filed as Exhibit I this copyrighted song. The point made is that this deposition is inadmissible, because it is a deposition, and therefore not in accordance with equity rule 46, requiring testimony to be taken orally in open court in equity cases, but this rule has its exceptions. Equity rule 47. The deposition of Sadie Einstein comes within one of the exceptions. The witness lived in New York City, more than 100 miles from the place of trial. Section 863, Rev. Stat. (28 USCA § 639 Comp. St. § 1472). There was never any formal exception filed to this deposition of Sadie Einstein, and for the reasons indicated the deposition was clearly admissible.

The defendants further insist that the use of this music roll was not an infringement, because the copyright was for both music and lyric, and a mechanical music roll could, of course, only produce the tune, and not the words. Whatever may have been the law formerly, this insistence is now ineffective, as against section 3, c. 320, 35 Stat. 1076 (17 USCA § 3), passed March 4, 1909, known as the Copyright Act, which provides that "the copyright provided by this title shall protect all" of the copyrighted "component parts of the work copyrighted. * * * The copyright upon composite works * * * shall give to the proprietor thereof all the rights in respect thereto which he would have if each part were individually copyrighted under this title." The copyright, therefore, protected not only the words, but the music or tune, and the use of the music by defendants was prohibited. Standard Music Roll Co. v. F. A. Mills, Inc. (C. C. A.) 241 F. 360; King Features Syndicate v. Fleischer (C. C. A.) 299 F. 533.

Assuming that the defendant did not intend to infringe, the lack of...