Cresci v. Music Publishers Holding Corporation

• Citation: 210 F. Supp. 253
• Parties: Yvonne Dixon CRESCI and Estelle Dixon Jaffe, Plaintiffs, v. MUSIC PUBLISHERS HOLDING CORPORATION, Harms, Inc., M. Witmark & Sons, Remick Music Corporation and Advanced Music Corporation, Defendants.
• Decision Date: 19 October 1962
• Court: U.S. District Court — Southern District of New York

210 F. Supp. 253

Yvonne Dixon CRESCI and Estelle Dixon Jaffe, Plaintiffs, v. MUSIC PUBLISHERS HOLDING CORPORATION, Harms, Inc., M. Witmark & Sons, Remick Music Corporation and Advanced Music Corporation, Defendants.

United States District Court S. D. New York.

October 19, 1962.

Gustave B. Garfield, New York City, for plaintiffs.

Joseph D. Karp, New York City, for defendants; Paul A. Baumgarten, of counsel.

FREDERICK van PELT BRYAN, District Judge.

Defendants move pursuant to Rule 12 (h), F.R.Civ.P., to dismiss the amended complaint for lack of jurisdiction of the subject matter. Plaintiffs have cross-moved for leave to serve a further amended complaint under Rule 15(a), F.R.C.P.

In order to dispose finally of the question of subject matter jurisdiction raised by defendants' motion to dismiss, plaintiffs' cross-motion to amend further will be granted and the defendants' motion will be deemed addressed to the complaint as so further amended.

Plaintiffs are the surviving daughters of Mort Dixon, a composer and lyric writer who died on March 23, 1956. In addition to his two daughters Dixon left a widow who is their stepmother and is not a party to this action.

Dixon was a prolific writer of popular songs which were copyrighted by various music publishers. This action concerns some 65 of such songs copyrighted in the years from 1928 to 1939.

According to the amended complaint, on November 10, 1948 Dixon entered into an agreement with defendant Music Publishers Holding Corporation (Music) by the terms of which he assigned to Music all of his right, title and interest, vested and contingent, to the renewal copyrights of a large number of the copyrighted songs which he had written. The copyrights had been obtained by the other defendant publishers which are subsidiaries of Music as respectively listed in a schedule annexed to the agreement. They included the 65 compositions involved in this action.

Music agreed to pay royalties upon the compositions according to a schedule set forth in the agreement "continuing during the original and renewal periods of the copyrights," and to cancel a debit balance against advance royalties owed to it by Dixon, said to be some $25,000. Dixon also agreed to cause his wife and adult daughter to execute instruments agreeing to be bound by the agreement and assigning any right, title and interest which they might have in the renewal copyrights to Music. He also agreed to cause his minor daughter, who was then 18 or 19, to execute a similar instrument when she reached the age of 21. The agreement was binding upon and inured to the benefit of Dixon and "his heirs, executors, administrators and assigns."

On the day the agreement was executed Dixon's adult daughter (now plaintiff Estelle Jaffe) executed assignments of her renewal rights as called for by the agreement to Music and to the other defendants. On August 6, 1950 his other daughter (now plaintiff Yvonne Cresci), who had by then become of age, executed a similar document. Shortly after Dixon's death his widow also executed the assignments called for by the agreement.

These assignments were duly recorded in the copyright office and from time to time as the renewal periods of the various copyrights accrued, they were renewed by the assignees under the assignment of Dixon's renewal rights prior to his death, and thereafter under the assignment of the renewal rights by his wife and two daughters.

In substance the complaint charges that plaintiffs' father, the composer Dixon, entered into a conspiracy with the defendants to obtain from plaintiffs the assignment of their expectant renewal rights in the songs without any consideration and that in pursuance of the conspiracy Dixon took advantage of his relationship of trust and confidence with his daughters and persuaded them to execute the assignments of their renewal rights without knowing what they were doing, and by false and fraudulent misrepresentations. The claim is made that the assignments are void and of no effect because of the fraud and overreaching practiced upon the plaintiffs by their father with the connivance and participation of defendants.

Woven through the complaint are allegations to the effect that Dixon's agreement with Music as it affects plaintiffs and the assignments by plaintiffs are in violation of "the public policy of the United States as expressed in §§ 24 and 28 of the Copyright Law." Such violations of public policy are claimed to include lack of or inadequate consideration for the assignments, and coercion and fraud in inducing their execution, as well as assignment of contingent expectancies in renewal rights prior to the composer's death and before they became vested.

Additional allegations charge that defendants are "unfairly competing" with plaintiffs by exercising alleged rights to the compositions under the assignments. It is also alleged that there is an actual controversy between the parties within the purview of the federal declaratory judgment statute.

The amended complaint predicates subject matter jurisdiction on 28 U.S.C. §§ 1338(a) and (b), asserting that this is a civil action arising under the Act of Congress relating to copyrights joined with a substantial and related claim for unfair competition.

Judgment is sought declaring that the agreement between Dixon and Music and the assignment of plaintiffs' renewal rights to Music and the other defendants are void and of no effect; that defendants have acquired no rights in the renewal copyrights and that plaintiffs are the owners of an undivided interest in them. Plaintiffs ask that defendants be directed to execute such documents as may be necessary to vest them with title to the copyrights which have been renewed and to the renewal rights in the copyrights not yet renewed; that defendants be enjoined from renewing any copyrights in the future as plaintiffs' agents and that they be required to account for any benefits received under the renewed copyrights.

A plaintiff invoking the jurisdiction of the federal courts is required to allege affirmatively in his complaint facts showing that such jurisdiction exists. Gully v. First National Bank, 299 U.S. 109, 113, 57 S.Ct. 96, 81 L.Ed. 70 (1936); Louisville & Nashville R. Co. v. Mottley, 211 U.S. 149, 152, 29 S.Ct. 42, 53 L.Ed. 126 (1908).

In the case at bar there is concededly no diversity jurisdiction under 28 U.S.C. § 1332. Federal jurisdiction here is predicated on 28 U.S.C. § 1338(a) and (b). Under these sections the district courts are given original jurisdiction of civil actions arising under any Act of Congress relating to copyrights and over civil actions asserting claims of unfair competition when joined with a substantial and related claim under the copyright laws.

The allegation that the suit is laid under the federal declaratory judgment statute, 28 U.S.C. §§ 2201 and 2202, in no way enlarges the scope of the court's jurisdiction. That statute by its terms covers only cases in which jurisdiction has otherwise been conferred on the court.

The sole question before me is whether, under the complaint as now amended, this suit is one arising under the copyright laws, jurisdiction over which has been conferred on this court by 28 U.S.C. § 1338(a). If it is not this court has no jurisdiction over the subject matter of the action and defendant is entitled to a dismissal.¹

No claim is made in the amended complaint that the copyrights involved, original or renewed, are invalid or that they have been infringed. The basic claim is that the assignments by plaintiffs of their renewal rights in the copyrights of their father's compositions were procured by the fraud of their father and through his breach of a confidential relationship with them and that the defendants participated in these acts. The question posed therefore is simply whether plaintiffs are equitably entitled to a restoration of the renewal rights so assigned and to the renewal copyrights obtained through such assignments.

The resolution of such questions depends on principles of common law and equity governing fraud and overreaching and plaintiffs' rights are dependent upon such principles. The fact that fraud has been committed with respect to a patent or a copyright does not confer federal jurisdiction. Wells v. Universal Pictures Co., 166 F.2d 690 (2 Cir., 1948); Eckert v. Braun, 155 F.2d 517 (7 Cir., 1946); Hoyt v. Bates, 81 F. 641 (C.C.D.Mass., 1897); Sachs v. Cluett, Peabody & Co., 91 F.Supp. 37 (S.D.N.Y. 1950); Walters v. Shari Music Publishing Corp., 193 F.Supp. 307 (S.D.N.Y. 1961). See also Harrington v. Mure, 186 F.Supp. 655, 657 (S.D.N.Y.1960) and Gorham v. Edwards, 164 F.Supp. 781, 783-784 (S.D.N.Y.1958).

Here the copyrights and the renewals in them are only incidentally involved in the claim of fraud and the plaintiffs' rights are not dependent in any way upon the federal statute. Plainly such a claim standing alone does not present a case arising under the copyright laws within the purview of § 1338(a) over which this court has jurisdiction. See Danks v. Gordon, 272 F. 821 (2 Cir., 1921) and cases above cited.

Jurisdiction is not conferred on this court merely because ownership of the renewed copyrights or of the renewal rights assigned is in issue. There are cases which recognize the standing of an equitable owner of a copyright to sue for infringement. See Harrington v. Mure, supra, and cases cited at 186 F. Supp. 656. But as Judge Palmieri pointed out there, a federal court has no original jurisdiction to hear and decide a claim of title to a copyright. Such incidental power as it has to do so must depend upon its power to adjudicate an infringement claim where, in a case of that nature, as a preliminary matter, the federal court may permit the plaintiff to establish the facts as to his ownership interest on which his right to sue for infringement depends.

Where, as here, however, a claim of infringement is absent, the federal courts...