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

• Decision Date: 30 January 1923
• Docket Number: 169.
• Parties: GOLDWYN PICTURES CORPORATION et al. v. HOWELLS SALES CO., Inc., et al.
• Court: U.S. Court of Appeals — Second Circuit

287 F. 100

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

No. 169.

United States Court of Appeals, Second Circuit.

January 30, 1923

At the hearing defendants appellant urged a motion for a mandamus directed to one of the judges of the said court, requiring him to set aside a certain order permitting the amendment of the bill of complaint herein and the admission of the above named Stephens as coplaintiff, and further requiring the final dismissal of said bill of complaint.

This is a litigation heard by this court in 282 F. 9. We there reversed a previous order for injunction pendente lite and remanded the case for further proceedings in conformity with the opinion there recorded. The substantial question raised both by defendants' appeal and by their motion for mandamus is whether the procedure under or subsequent to our mandate has been in conformity therewith.

Charles J. Katzenstein, of New York City (Charles H. Tuttle and Emily C. Holt, both of New York City, of counsel), for appellants.

Kelley & Becker, Chas. E. Kelley, and Henry Stanton, all of New York City, for appellees.

Before ROGERS, HOUGH, and MANTON, Circuit Judges.

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

Upon the previous appeal this court held that the then sole plaintiff, Goldwyn Company, had (under the copyright statute (26 Stat. 1106)) no cause of action, because it owned no copyright. But, although the corporation that brought suit had no right to sue, we thought it might obtain such right and therefore left the case open. It now appears that Goldwyn Company, having discovered in Stephens the copyright proprietor, did not itself acquire the copyright, but literally hired Stephens to lend his name to this litigation he assigning in advance to Goldwyn Company any damages that might 'be recovered by himself in actions for violation of (the) copyright. ' Thereupon motion was made to admit Stephens as a plaintiff and amend the bill of complaint, so as to show copyright title in him.

The motion to amend and for the admission of Stephens was granted by an order said to have been nonappealable. Then followed a motion for preliminary injunction, which was granted; the injunction being, as against defendants, substantially similar to that which we reversed ut supra. Thereupon defendants appealed from said order, and simultaneously moved for a mandamus to compel the vacation of the order which admitted Stephens and allowed an amendment as above stated.

We have no doubt that a motion such as this may be made, and mandamus granted, if in any true sense the action to be compelled by mandamus is reasonably necessary for the full and unhampered exercise as of the appellate jurisdiction of this court. American, etc., Co. v. Metropolitan, etc., Co., 285 F. 677. For a very recent instance, see Grable v. Killits (C.C.A.) 282 F. 185. But, as shown by the American Co. Case, supra, mandamus is extraordinary, and should not be used, when ordinarily the remedy of appeal is available.

Mandamus is not here required. This appeal is under section 129, Judicial Code (Comp. St. Sec. 1121), which in substance re-enacts section 7 of the Act creating Circuit Courts of Appeal (26 Stat. 828). On such appeals our power to review cannot be 'hampered or restricted by any prior ruling of the trial court, * * * though made in an order from which a direct appeal is not allowed, especially where such ruling relates to the jurisdiction of the court. ' Lake Street, etc., Co. v. Farmers', etc., Co., 77 F. 769, 23 C.C.A. 448. Such appeal brings up the whole case as it is, and we may 'consider and determine the case on its merits, and thereupon render or direct a final decree dismissing the bill. ' Smith v. Vulcan Iron Works, 165 U.S. 518, 17 Sup.Ct. 407, 41 L.Ed. 810. Therefore we are entitled to consider and pass upon the propriety of the order admitting Stephens as plaintiff, without regard to the effect of the prior appeal.

But the power of a trial court to act in any litigation after the issuance of a mandate on appeal is limited by an obligation to do nothing contrary to either the letter or the spirit of the mandate, as explained or elucidated by the opinion. There are some matters which are usually left sub silentio to the lower court (e.g., The Ada, 255 F. 50, 166 C.C.A. 378), and sometimes a wide discretion is expressly left to the...