Allen v. Walt Disney Productions

• Decision Date: 27 June 1941
• Citation: 41 F. Supp. 134
• Parties: ALLEN v. WALT DISNEY PRODUCTIONS, Limited, et al.
• Court: U.S. District Court — Southern District of New York

41 F. Supp. 134

ALLEN v. WALT DISNEY PRODUCTIONS, Limited, et al.

District Court, S. D. New York.

June 27, 1941.

Julian T. Abeles, of New York City (Julian T. Abeles and Arnold J. Bernstein, both of New York City, of counsel), for complainant.

Gilbert & Gilbert, of New York City (Francis Gilbert, Godfrey Cohen, Franklin Waldheim, and William S. Savage, all of New York City, of counsel), for respondents.

CONGER, District Judge.

This is an action for infringement of a copyright. Two musical compositions are involved in this controversy — complainant's number entitled "Old Eli March" (Yale University), and respondents' song "Some Day My Prince Will Come." The alleged infringing portion of the latter song involves the music of the chorus only.

The complainant was not the composer of "Old Eli". He is a publisher of college songs and music. "Old Eli" was written by Wadsworth Doster, during the year 1909, while he was a student at Yale University. Mr. Doster was not a professional musician, but he had studied music at Yale and it would appear from his testimony that he was interested in music, mainly as played on the piano. He testified that he played his composition while at Yale; that he frequently played it at Yale re-unions; that he played it at times in restaurants and in a few private homes; and that on several occasions it was broadcasted — once under a different title in connection with an international yacht race. Mr. Doster never copyrighted the song himself, but assigned all his right, title and interest in it, including the right to copyright the same, to the complainant herein.

Thereafter complainant included "Old Eli" in a volume of musical compositions entitled "Intercollegiate Song Book, Eastern Edition", which was published and put out to the public for sale on or about October 6, 1936; the copyright registration thereof was September 26, 1936.

The song "Some Day My Prince Will Come" was written by Frank Churchill, on or about November, 1934, in connection with the movie production "Snow White and the Seven Dwarfs". Mr. Churchill had been for nine years in the employ of Walt Disney Productions, Ltd., the producer of said motion picture. Mr. Churchill was a professional musician. His occupation, as he stated, was that of a writer of musical scores for motion pictures. The copyright on his song was obtained on January 25, 1935, as an unpublished work, and requests for copyrights as a published work were made on December 14, 1937. "Some Day My Prince Will Come" was published when the motion picture "Snow White" was first shown, which was around Christmas, 1937. This motion picture was an innovation and a tremendous success. The song "Some Day My Prince Will Come" was one of its most tuneful numbers. Some time later this song was published separately and apart from the motion picture with some changes in the words.

RKO Radio Pictures, Inc., is joined as a respondent herein because the movie "Snow White and the Seven Dwarfs", containing the alleged infringing musical composition, was released by it.

Irving Berlin, Inc., is joined as a respondent because it subsequently published, as a separate song, the alleged infringing composition.

Before I take up the question of plagiarism, I shall dispose of several other issues raised by the respondents. It is respondents' contention that complainant can not sustain the copyright claimed herein, because the complainant registered his copyright in the name of "The Thornton Allen Company", and that as an individual he was not entitled to use that name without filing a certificate as prescribed by Section 440 of the Penal Law of the State of New York, Consol.Laws, c. 40. It is respondents' contention that no such certificate has been filed, although it does appear that such a certificate was filed under the name of T. W. Allen Company.

I find against the respondents on this point. The difference between the name set forth in the certificate and the name on the copyright is at most a slight variance and is not material. The name on the copyright notice gives sufficient notice to the public of the name of the owner of the composition upon which copyright is claimed, and the date when this right was obtained. That is all that the statute requires. Fleisher Studios, Inc. v. Ralph A. Freundlich, Inc., 2 Cir., 73 F.2d 276; Burrow-Giles Lithographic Company v. Sarony, 111 U.S. 53, 4 S.Ct. 279, 28 L.Ed. 349.

Respondents further contend that complainant's composition was not protected by copyright because it had been published without a claim of copyright prior to its first publication with a claim of copyright. The testimony is that Mr. Doster, on various occasions, had given or loaned a manuscript copy of "Old Eli" to piano players in places of amusement for them to play; that on a few occasions he had also loaned the manuscript to orchestra leaders for them to play; that Mr. Allen had tried to interest several orchestra leaders in "Old Eli"; that he had sent a copy of the manuscript in 1932 to Disney; and that he had also left a copy of the manuscript with the Fleisher Company with the hope of interesting them.

The composition was not printed until 1936. No copies were ever sold. At the most there were, until 1936, only a very few manuscript copies in existence.

What Doster and Allen did, before 1936, in my opinion, did not constitute publication as defined by the statute and the decisions. Giving the composition to a few musicians and leaders of orchestras to play does not constitute publication. McCarthy & Fischer, Inc., v. White et al., D.C., 259 F. 364. There was no general offer or dedication to the public. The sending of the manuscript copy to Disney and to Fleisher in no way was a publication. Had either firm used the composition, or made use of it in any public way, then there would no doubt have been a publication.

The next point to take up is that of direct access or copying. This point divides itself into two branches: (1) Whether Churchill ever heard "Old Eli" played or broadcasted, and (2) whether he ever saw the manuscript copy which the complainant insists he mailed to Disney at Hollywood, California, in 1932.

(1) In connection with this, it should be borne in mind that from 1909 until 1936 complainant's song had no great vogue. It had never been printed; there were only a very few manuscript copies in existence. Doster himself had played it, as I have heretofore indicated. It had been played over the radio on at least two occasions. It had never been featured, and was little known. As an example of this, the testimony of Mr. Bartholomew is enlightening. Mr. Bartholomew had graduated from Yale in 1907 and had been prominently connected with Yale University for many years in the field of music. Yet he testified that he had never heard "Old Eli" until this litigation started.

Churchill testified that he had no recollection of ever having heard "Old Eli". I am inclined to accept his statement as true. At least there has been no such showing which would lead to the inference or conclusion that he must have heard it. Were I to find from the testimony that Churchill, between the years 1909 and 1934, had heard "Old Eli" played, then I would be guessing or surmising.

(2) Mr. Allen testified that on or about November 25, 1932, he mailed a package of music to the Disney Studio in Hollywood, and that in this package was included a manuscript copy of "Old Eli". He testified that the package of music followed a letter he wrote to the Disney Studio concerning the shipment. Mr. Allen relied entirely on his recollection as to the mailing of the music, and particularly as to the inclusion of the copy of "Old Eli." It may be that he did send this copy to Disney when he says he did. On the other hand, Mr. Allen had no record of any kind, either to refresh his recollection or to substantiate his statement. He did have from the Disney Studio an acknowledgement of his letter of November 26, 1932. Mr. Allen was unable to produce a copy of his letter, but the respondents eventually produced the original from the Hollywood office of the Disney Studio, and it there appeared that the letter was directed to the Disney New York office, and not to the Hollywood office. It further appeared that there was enclosed in the letter a list of musical compositions which Mr. Allen was sending to Disney. The composition "Old Eli" was not specifically mentioned, but Mr. Allen claimed it was among those designated at the end of the list as "etc., etc." After all, the proof on this point is supported only by Mr. Allen's recollection after these many years.

Taking for granted, however, that he did send this copy of "Old Eli" to Disney in 1932, there is no proof that Mr. Churchill ever saw it. He has testified that he did not. It was not sent to him direct. If it was retained by Disney, it undoubtedly would have been in their library. Mr. Churchill testified that he used the library very little. That he composed by thinking of a tune in his mind, and then writing it down on a piece of paper. Weighing all the probabilities, I have come to the conclusion that the evidence is not sufficiently strong for me to hold that Churchill actually did see and have in possession, prior to or at the time he wrote his composition, a copy of "Old Eli".

Were I to find from the evidence before me that Churchill had direct access to and did copy or use complainant's composition when he wrote "Some Day My Prince Will Come", I would again have to indulge in speculation, conjecture and suspicion.

Having thus found, complainant is not foreclosed from recovery herein. Direct access is hard to prove. The courts have held that access may be inferred from the similarity of the two compositions.

As was stated in Wilkie v. Santly Bros., Inc., 2 Cir., 91 F.2d 978, at page 979: "But the charge of infringement does not fail merely because the infringer is not caught in the act, for access may be inferred...