Goldwyn Pictures Corporation v. Howells Sales Co., Inc., 301.

• Decision Date: 17 April 1922
• Docket Number: 301.
• Parties: GOLDWYN PICTURES CORPORATION v. HOWELLS SALES CO., Inc., et al.
• Court: U.S. Court of Appeals — Second Circuit

282 F. 9

GOLDWYN PICTURES CORPORATION v. HOWELLS SALES CO., Inc., et al.

No. 301.

United States Court of Appeals, Second Circuit.

April 17, 1922

Charles J. Katzenstein, of New York City (Charles H. Tuttle and Carl E. Peterson, both of New York City, of counsel), for appellants.

Kelley & Becker, of New York City (Charles E. Kelley, of New York City, of counsel), for respondent.

Appeal from an order of the District Court for the Southern District of New York enjoining defendants pendente lite from producing or dealing in a motion picture called 'Vendetta.' The bill alleges that on or about March 8, 1887, Archibald Clavering Gunter secured a copyright for a book entitled 'Mr. Barnes of New York.' Gunter died in 1907 leaving a will which was duly probated, and under which he bequeathed all of his right, title, and interest in the copyright to his widow, who was appointed executrix. The copyright would have expired by limitation on March 8, 1915.

On August 28, 1913, Mrs. Gunter sold, assigned, etc., to John F Stephens, his executors, administrators, and assigns, all of her right, title, and interest 'in and to the dramatic moving picture rights of the said book, and duly sold assigned, transferred, and granted to the said Stephens, his executors, administrators, and assigns, the sole and exclusive dramatic moving picture rights of the said book for the full term of the copyright thereof, and all renewals thereof in the United States of America, and all other countries. * * * ' On October 7, 1914, Mrs. Gunter, as widow and executrix of the will of the author, applied for a renewal of the copyright, which renewal was granted for a further term of 28 years from March 8, 1915.

There is no allegation that thereafter Mrs. Gunter conveyed any right or interest to any one. The complaint, therefore discloses Mrs. Gunter as the sole proprietor of the copyright in the book, 'Mr. Barnes of New York,' since the date of the renewal by her. Plaintiff alleges that, upon acquiring the dramatic motion picture rights of the book, it produced a dramatic motion picture and had about completed the same at an expense of over $117,000, when the defendants commenced the exhibition of the 'Vendetta,' which plaintiff claims is an infringement of its copyright.

Before HOUGH, MANTON, and MAYER, Circuit Judges.

MAYER Circuit Judge (after stating the facts as above).

We shall not discuss defendants' contention that a renewal of the copyright of the book was not properly secured. For the purposes of this appeal we shall assume, without deciding, that plaintiff is the legal owner of the dramatic motion picture rights.

The relief prayed for in the bill is that prescribed in section 25 of the Copyright Act (Comp. St. Sec. 9546), and the prayer is substantially the same as that in New Fiction Pub. Co. v. Star Co. (D.C.) 220 F. 994. At the outset it is insisted by plaintiff that it is not a licensee, but the assignee of a separately copyrightable copyright under the copyright statute. The Act of August 24, 1912, amended Copyright Law, Sec. 11 (Comp. St. Sec. 9532), so as to permit the copyrighting of motion picture photoplays and 'Motion pictures other than photo plays.'

At the time the suit at bar was commenced, plaintiff did not have a copyright under the act above referred to, but was merely the assignee of rights which may enable it hereafter to copyright a motion picture photoplay. Until then it will not be the owner of a copyright. Its present legal position is that it is the assignee of rights, but is in no sense the owner of a copyright. To say that plaintiff is the assignee of such rights is merely another way of saying that it is a licensee, so far as concerns the power of the court to grant injunctive relief.

Section 25, subd. (a), provides for an injunction restraining the infringement of 'the copyright in any work protected under the copyright laws of the United States. ' This subdivision (a) of section 25 does not set forth who shall be the plaintiff in a suit for the infringement of a copyright, although subdivision (b) of the same section provides, inter alia, that an infringer shall pay damages and profits to 'the copyright proprietor.' Section 36 of the Copyright Law (Comp. St. Sec. 9557) provides 'that any such court or judge thereof shall have power, upon bill in equity filed by any party aggrieved, to grant injunctions. * * * ' Sections 25 and 36 must be read together, under the principle applied by Lacombe, J., in New York Times Co. v. Star Co. (C.C.) 195 F. 110.

The expression in section 36, 'any party aggrieved,' necessarily means any party who has a cause of action. The history of section 36 may be traced throughout the statutes and the decisions interpreting them. Section 36 does not create any new cause of action, but confers jurisdiction, and was enacted to extend the equitable jurisdiction of the United States courts to patent law and copyright controversies between citizens of the same state. Laws 1790 c....