Edward B. Marks Music Corp. v. Wonnell

• Decision Date: 08 May 1945
• Citation: 61 F. Supp. 722
• Parties: EDWARD B. MARKS MUSIC CORPORATION v. WONNELL et al.
• Court: U.S. District Court — Southern District of New York

61 F. Supp. 722

EDWARD B. MARKS MUSIC CORPORATION v. WONNELL et al.

District Court, S. D. New York.

May 8, 1945.

Julian T. Abeles, of New York City (Julian T. Abeles and Leopold Bleich, both of New York City, of counsel), for plaintiff.

Irwin H. Clark, of New York City (Wm. B. Petermann, of Cincinnati, Ohio, of counsel), for defendants Harry S. Wonnell, Administrator, etc., and Sallie Black Waldo.

Isidore Scherer, of New York City (Charles H. Tuttle and Gerald J. Craugh, both of New York City, of counsel), for defendant Mattie E. Shanks.

CONGER, District Judge.

This is an action in the nature of an interpleader brought under 28 U.S.C.A. § 41, Sub. 26.

The case was tried to the Court without a jury.

Three parties are interested in this controversy: The defendants, Harry S. Wonnell, as administrator of the estate of Johnny S. Black (also known as John S. Black), deceased, Sallie Black Waldo and Mattie E. Shanks. Willie Icia Black (Kissick), a defendant, was served but did not appear.

The following is a brief summarization of the pertinent facts set forth in the complaint: That prior to December 9, 1915, said Johnny S. Black wrote the original musical composition entitled "Paper Doll" which was duly copyrighted by him on December 9, 1915. That htereafter the said musical composition was duly assigned by Johnny S. Black to plaintiff. That the said Johnny S. Black died, intestate, one year prior to the expiration of said copyright and that said Sallie Black Waldo as widow of Johnny S. Black, deceased, duly renewed and extended said copyright for the further term of 28 years, and that on November 11, 1943, she duly assigned said renewal copyright to plaintiff. That plaintiff is the sole proprietor of all the rights, title, and interest in and to said renewal copyright. That four claims have been made against plaintiff arising out of this copyright and renewed copyright as follows: By Harry S. Wonnell, as administrator; by Sallie Black Waldo, widow of Johnny S. Black; by Willie Icia Black who also claims to be the widow of Johnny S. Black and by Mattie E. Shanks. That by reason of the conflicting claims of the defendants, plaintiff is in great doubt as to the rights of the defendants and as to which defendants are entitled to be paid the moneys that have become due under the copyright and the renewal copyright. That plaintiff had in its possession $15,220.17 payable under the copyright and $2,214.18 payable under the renewal copyright. That plaintiff has paid these two sums with the Registry of the Court to abide the judgment of this Court. Plaintiff prays that it be adjudged the sole owner of the said renewal copyright. That defendants be required to interplead and settle among themselves their respective claims and that plaintiff be discharged from liability in the premises.

The two defendants, Harry S. Wonnell, administrator, and Sallie Black Waldo do not dispute the title of plaintiff to the song, but rather by alleged facts support plaintiff's claim to title thereto, both to the original copyright and the renewal copyright; but they do assert that each is entitled to part of the fund, one as the administrator of Johnny S. Black to the moneys due Black under the copyright agreement and assignment and the other, as the widow of Johnny S. Black, to the moneys due under the renewal copyright agreement and assignment. Both ask for an accounting.

Defendant Mattie E. Shanks in her answer, however, by way of counter-claim and cross-claim alleges that she is the real owner of this song. That she was the joint composer of the song with Black, and that when he died she became the sole owner. She attacks plaintiff's title to the song and the right of the defendants to any of the moneys from the royalties of said song. She also attacks the validity of the renewal of the copyright and asks that it and the assignment thereunder be set aside and declared void. She also asks for an accounting from the plaintiff of all moneys due. At the trial, however, defendant Shanks by stipulation in open court withdrew any claim she might have or have had against the plaintiff concerning the title to the song, either because of the original copyright or the renewal of the copyright. In brief she, by this stipulation, recognizes the title of plaintiff to the song. She does claim, however, all the royalties or sums due by reason of the agreement made in connection with the assignment of the original copyright and the agreement made in connection with the assignment of the renewal copyright; so that now the real issue is the division of the funds due from the plaintiff under the royalty agreements.

At the outset, therefore, to clarify the issues, I find that plaintiff is the sole owner of the renewal copyright of the song "Paper Doll."

The following facts I believe are undisputed: On or about December, 1915, Johnny S. Black made application for copyright of a musical composition, "Paper Doll," not to be reproduced for sale. With the application he filed one complete copy of the words and music. In the application, the said Johnny S. Black stated he was the arranger of the music and the author of the words of the song.

A certificate of copyright registration was thereupon issued to the said Black by the Register of Copyrights. The copy of the song so filed bore the inscription "Words and music by John S. Black."

On or about September 12, 1924, Edward B. Marks Music Co. (plaintiff's predecessor) became the owner, by assignment from Black, of all his interest in and to said song and the original copyright thereof. In and by said assignment the said assignee agreed to pay the said Black a certain royalty on each copy of the song published and sold.

On August 27, 1942, plaintiff copyrighted the song as a published work.

Johnny S. Black died on June 9, 1936, a resident of the State of Ohio, leaving him surviving a widow, Sallie Black Waldo.

On November 9, 1943, Harry S. Wonnell was appointed, by the Probate Court of the State of Ohio (Butler County), administrator of the goods, chattels, etc., of the said Black.

The original copyright to the song expired on December 8, 1943.

During the year prior thereto and on November 13, 1943, Sallie Black Waldo, as "the widow of the author," renewed and extended said copyright.

On or about the same date the said Sallie Black Waldo assigned the said renewal copyright to the plaintiff and the plaintiff at the same time agreed to pay to the said Sallie Black Waldo, certain royalties due from the publication and use of the song by the plaintiff under the said renewal copyright.

There are certain sums now due from the plaintiff for royalties due under the original copyright and also under the renewal copyright.

Perhaps it might be as good a time as any to mention the fact that this song rested in oblivion until some time during the summer of 1942. It was then sung by a popular radio singer and after that this song enjoyed marked popularity. Hence this lawsuit.

The defendants, Wonnell as administrator and Sallie Black Waldo have made out a prima facie case. Both claim title through Black. These defendants have made a prima facie case of title by the production of the original certificate of copyright registration which shows that the author of the lyrics and words of the song "Paper Doll" was John S. Black. Such a certificate is prima facie evidence of all that appears on its face. Gerlach-Barklow Co. v. Morris & Bendien, 2 Cir., 23 F.2d 159; Jerry Vogel Music Co., Inc. v. Forster Music Publishers, 2 Cir., 1945, 147 F.2d 614.

The burden of going ahead with the evidence is with defendant Shanks; to show that the title of Black and those claiming by and through Black is defective is upon her. She has the burden of proof in this respect and to prove that she has or had any interest in this song and the proceeds therefrom.

The defendant has undertaken this burden and has testified herself and others have testified on her behalf.

The defendant, Mattie E. Shanks, in attempting to meet this burden and to prove her case, took the witness stand herself. She testified that as a young girl she was gifted in music and dancing and was teaching dancing and playing the piano in various schools in Chicago at an early age. That in connection with her work as an instructor she wrote her own music. That she went on the stage as a solo dancer. That when she started to dance professionally she continued to create her own dances and make her own costumes and write her own music for the numbers she used. That she met Johnny S. Black at the end of 1914. That she wrote the song "My Doll" (the words and music). That she got the idea from Nell Brinkley's dolls, which Nell Brinkley drew for the newspapers. That she called the piece originally "My Doll." That when she came to New York in 1915 with her brother she met Johnny S. Black and Andy M. Boyle, a pianist, at Remick's Music Publishing House. That she sang three songs there; the other two numbers were two other songs which she had written, "Adorable You" and "I Love You." That she became engaged to Black in 1915. That she brought with her from Chicago on the visit in 1915 the three songs: "Adorable You", "I Love You" and "My Doll." That the last song had two verses and a chorus. That she continued in musical vaudeville from 1915 to 1927 when she left the stage permanently. That during that time she played the leads in various Broadway productions and when she left the stage she was receiving a salary of between $400-500 per week.

Her testimony was that she wrote this song "Paper Doll," then named "My Doll" and brought the words and music to New York in 1915, where it was played by Boyle, the pianist, in the presence of Johnny S. Black. Mattie Shanks produced in corroboration of her story four witnesses. A brief resume of their testimony follows:

James W. Miller, who testified that he and Black in 1916, 1917 and 1918 were members of an act known as the ...