Bell v. Combined Registry Company, 72 C 1819.

• Decision Date: 14 July 1975
• Docket Number: No. 72 C 1819.,72 C 1819.
• Citation: 397 F. Supp. 1241
• Parties: Robert L. BELL, d/b/a Crescendo Publishing Company, Plaintiff, v. COMBINED REGISTRY COMPANY, an Illinois Corporation, Defendant.
• Court: U.S. District Court — Northern District of Illinois

397 F. Supp. 1241

Robert L. BELL, d/b/a Crescendo Publishing Company, Plaintiff, v. COMBINED REGISTRY COMPANY, an Illinois Corporation, Defendant.

No. 72 C 1819.

United States District Court, N. D. Illinois, E. D.

July 14, 1975.

COPYRIGHT MATERIAL OMITTED

James E. Beckley, Jeffrey Jahns, Roan & Grossman, Chicago, Ill., for plaintiff.

Carmen V. Speranza, Speranza & Veverka, Chicago, Ill., for defendant.

MEMORANDUM OPINION

FLAUM, District Judge.

This is an action for copyright infringement arising out of the publication of a poem¹ (herein referred to as "Desiderata") by defendant in the August, 1971, issue of Success Unlimited Magazine. The case has been submitted to the Court for decision on affidavits, depositions, exhibits, and memoranda. The following shall constitute the findings of fact and conclusions of law.

THE ISSUES

Plaintiff alleges that the poem (originally untitled) was written by Max Ehrman in Terre Haute, Indiana, in the early 1920s; Mr. Ehrman obtained a federal copyright (No. 962402) on the poem on January 3, 1927 under the name of "Indiana Publishing Company"; Mr. Ehrman bequeathed the copyright to his widow Bertha upon his death in 1945; Bertha Ehrman renewed the copyright in 1954; Bertha Ehrman bequeathed the copyright to her nephew Richmond Wight upon her death in 1962; Richmond Wight assigned the copyright for value to plaintiff in 1971. Plaintiff also claims that in 1948 Bertha Ehrman copyrighted a book entitled THE POEMS OF MAX EHRMAN (copyright No. A28266) which included Desiderata; Bertha Ehrman assigned this copyright in the same year to Bruce Humphreys Inc. for value; in 1968 an assignment was made by the above assignee to plaintiff. Plaintiff claims that the copyrights are valid and have been infringed by defendant. He cites Bell v. Pro Arts Inc., 366 F.Supp. 474 (N.D.Ohio 1973), aff'd, 511 F.2d 451 (6th Cir. 1975), in which his ownership and the validity of the instant copyrights were upheld.

Defendant raises a number of issues and defenses. It claims that Max Ehrman violated the Indiana statute on fictitious names when he applied for the copyright; that the legacy from Bertha Ehrman to Richmond Wight did not include the copyright; that Max Ehrman authorized the publication of the poem without the required copyright notice; that an improper notice was used prior to the recordation of the assignment; that plaintiff authorized publication of the poem without the required copyright notice; that the copyrights were abandoned by Max Ehrman and by plaintiff; that plaintiff is estopped from asserting the copyrights; and that plaintiff is guilty of laches.

Defendant has counterclaimed for the fair value of a retraction which it printed which included an advertisement for the poem.

EFFECT OF PRIOR LITIGATION

At the outset the effect of prior litigation over the instant copyrights must be delineated. In Bell v. Pro Arts Inc., 366 F.Supp. 474 (N.D.Ohio 1973), aff'd, 511 F.2d 451 (6th Cir. 1975), plaintiff's ownership and the validity of the copyrights were upheld. In Blonder-Tongue v. U. of Illinois Foundation, 402 U.S. 313, 91 S.Ct. 1434, 28 L.Ed.2d 788 (1971), the Supreme Court Court ruled that a prior judicial finding of a patent's invalidity estops the patentee (who was plaintiff in the prior action) from reasserting the patent's validity in a subsequent infringement suit.² The Court also noted that due process prohibited applying a collateral estoppel to one who never appeared in the earlier litigation. Applied to the instant case, Blonder-Tongue is no bar to defendant's efforts to demonstrate that the copyrights upheld in Pro Arts are invalid. See Boutell v. Volk, 449 F. 2d 673, 678 (10th Cir. 1971). Pro Arts, of course, does have weight as precedent. In this connection it should be noted that the issues of prior publication without notice and of abandonment were never raised or passed on by the court in Pro Arts.

BURDEN OF PROOF

To prevail on his claim of copyright infringement plaintiff must show (1) ownership of the copyright and (2) copying by the defendant. The corporate defendant in the instant case does not dispute the fact that it published the poem Desiderata in the August, 1971, issue of Success Unlimited Magazine. A copying issue is not present in this case. Ownership includes such elements as originality, copyrightability, citizenship, compliance with statutory formalities (registration, notice, etc.), and a chain of title reaching to the plaintiff. See Nimmer on Copyrights § 141.1.

The copyright act provides that the certificate of registration ". . . shall be admitted in any court as prima facie evidence of the facts stated therein." 17 U.S.C. Section 209. There is authority in this Circuit that the certificate constitutes prima facie evidence not only of the "facts stated therein" but also of the overall validity of the copyright. Wihtol v. Wells, 231 F.2d 550, 553 (7th Cir. 1956). In Nimmer on Copyrights Section 141.1, p. 612, however, the author states:

". . . the only evidence required of the plaintiff to establish prima facie ownership in addition to the registration certificate is evidence of the proper affixation of the copyright notice on published copies of the work, and of plaintiff's chain of title from the original claimant."

In the instant case plaintiff does seek to establish his chain of title to the copyrights, whereas the notice issue is raised by the defendant. This is not the typical case in which the presence or absence of the copyright notice on prior publications is a matter uniquely within the knowledge of the plaintiff. In view of Wihtol, supra, and the apparent understanding of the parties, the court will treat the notice issue as a potential affirmative defense subject to rebuttal by the plaintiff. Thus to make out a prima facie case of ownership of the copyrights, plaintiff must show a registration certificate and a chain of title to him.

PLAINTIFF'S CHAIN OF TITLE

Defendant raises two issues in an attempt to show that plaintiff is not the proprietor of the copyrights in issue. For the reasons stated below, the Court agrees with the holding in Pro Arts, supra, that plaintiff has sustained his burden of proof on this issue.

As outlined above, plaintiff has submitted the following evidence to show his title to the copyrights:

(1) A certified copy of the certificate of registration of copyright No. 962402; dated January 3, 1927; listing as author of a prose piece beginning "Go placidly . . ." Max Ehrman, and naming as proprietor the Indiana Publishing Company.

(2) Defendant's admission that Indiana Publishing Company was the name under which Max Ehrman did business.

(3) The will of Max Ehrman; defendant's admission that he left his entire estate to his widow Bertha upon his death in 1945.

(4) A certified copy of Bertha Ehrman's renewal of the copyright in 1954.

(5) Bertha Erhman's will, by which she makes a specific devise involving the copyright to Richmond Wight, and a residual devise to a trust. (The legal consequences of this will are disputed).

(6) A copy of the assignment by Richmond Wight to plaintiff, dated May 14, 1971.

The authenticity of these documents is not challenged. This evidence makes out a prima facie case showing that the original copyright is owned by plaintiff. Clearly copyrights can be assigned or passed by will, 17 U.S.C. Section 28.

Defendant's first contention is that Max Ehrman did not register the name "Indiana Publishing Company" under the applicable Indiana fictitious name statute.³ Defendant has submitted a certification from the Recorder of Vigo County, Indiana, which states that no such registration was made. This fact is not contested by plaintiff. The legal implication of this omission, defendant argues, is that Max Ehrman did not obtain a valid copyright under the name "Indiana Publishing Company". Defendant relies on Haas v. Leo Feist, Inc., 234 F. 105 (S.D.N.Y.1916). In that case Judge Learned Hand ruled that a copyright taken in the name of a nonexistent partnership was invalid because under the law of New York State all acts of such nonentities were void. As a result, the court held, the copyright proprietor could not put the proper notice on its work as required by federal copyright law. 17 U.S.C. Section 18 (now Section 19). Plaintiff argues that the decision of this Circuit in Leo Feist, Inc. v. Young, 138 F.2d 972 (7th Cir. 1943), repudiates Haas; and that no deceptive notice issue is present in the instant case. Young held that failure to comply with a Wisconsin statute requiring "music brokers" to register could not defeat a federal copyright registration.

The Court finds that Haas and the failure to comply with the Indiana statute do not operate to invalidate the copyright in Indiana Publishing Company. It is conceded that any copyright notices were under the name of Indiana Publishing Company. Thus the federally-required notice provisions are not affected as they were in Haas. The law in this Circuit, embodied in Young, supra, is that the operation of state law cannot defeat the validity of a federal copyright. Even if the opposite were true, the Indiana statute did not render void all acts of an unregistered fictitious name; but only those acts which misled a third party. For all of these reasons, the Court finds that the defect in registration under Indiana law does not invalidate the copyright.

Defendant's second contention is that the bequest from Bertha Ehrman to Richmond Wight did not operate to pass the copyright to Wight, but only the income from the copyright. In pertinent part, the will provides:

I further bequeath to my said nephew, Richmond Wight, all my right, title and interest in and to all royalties and income from the writings, poems, and plays of Max Ehrman, including royalties from individual plays.

The will then establishes a trust for Richmond Wight and provides for income to be paid to him from assets of the trust. Under Indiana law, this will is to...