Group Publishers v. Winchell

• Decision Date: 11 October 1949
• Citation: 86 F. Supp. 573
• Parties: GROUP PUBLISHERS, Inc. v. WINCHELL et al. (EAGLE-LION FILMS, Inc., third-party defendant).
• Court: U.S. District Court — Southern District of New York

86 F. Supp. 573

GROUP PUBLISHERS, Inc. v. WINCHELL et al. (EAGLE-LION FILMS, Inc., third-party defendant).

United States District Court S. D. New York.

October 11, 1949.

Lackenbach & Hirschman, New York City, Armand E. Lackenbach, New York City, of counsel, for plaintiff.

McCauley & Henry, New York City, for defendants.

Phillips, Nizer, Benjamin & Krim, New York City, Louis Nizer, Jerome Edwards, and Jerome P. Phillips, New York City, of counsel, for third-party defendant.

S. H. KAUFMAN, District Judge.

Plaintiff, Group Publishers, Inc., sues Walter Winchell and The Hearst Corporation for alleged infringement of copyright, and both plaintiff and defendants move for summary judgment.

The complaint alleges that on January 7, 1947 Natamsa Publishing Company, Inc. secured a copyright on an original book entitled "The Romance of Money"; that by an instrument in writing, Natamsa assigned all its interest in said material and the copyright thereof to plaintiff; that since December 30, 1946 said book has been published by plaintiff in accordance with the copyright statute; that plaintiff is sole proprietor of all rights in the copyright and that after January 7, 1947 defendants infringed the copyright by the publication in Winchell's column in the New York Daily Mirror, a newspaper published by defendant The Hearst Corporation, and by publications elsewhere, of material copied largely from "The Romance of Money".

Copies of plaintiff's book and of the alleged infringing article in the Mirror are annexed to the complaint. From these it appears that plaintiff's publication is a printed booklet of 16 pages containing approximately 60 separate insets purporting to describe interesting episodes in the historical evolution of money as a medium of exchange, from the use of bricks of pressed tea by the early Mongolians to the present use of coins and paper. The various steps, or comments thereon, or in reference thereto, are described in very brief narrative, each in a separate inset and each accompanied by an illustration depicting the occasion described or some attending circumstance. The alleged infringing article in the Winchell column of the Mirror consisted of a column of 26 short paragraphs, none of which is illustrated. Of these 26 paragraphs, all except one or two state the same fact as appears in one or more of the insets in plaintiff's publication, though at times slightly paraphrased or coupled with brief additional comment.

Defendants' answer admits the publication and puts in issue the other material allegations of the complaint.

On defendants' motion, Eagle-Lion Films, Inc. was brought in as third-party defendant, but it is unnecessary to describe the claim alleged in the third-party plaintiffs' complaint or the third-party defendant's answer thereto inasmuch as the motions now before the court relate only to the cause of action alleged by plaintiff against defendants Winchell and The Hearst Corporation, to which the third-party defendant has not been made a party. Malkin v. Arundel Corporation, D. C., 36 F.Supp. 948, 951; Crim v. Lumbermens Mut. Casualty Co.,D.C., 26 F.Supp. 715, 720; Thompson v. Cranston, D.C., 2 F.R.D. 270; see 3 Moore's Federal Practice (2d ed.), p. 495.

The answer of the third-party defendant to the complaint of the plaintiff, after putting in issue all material allegations of the complaint except the allegation of publication, pleads as a defense that before the alleged infringement by defendants plaintiff had published its book bearing a copyright notice stating that plaintiff was the copyright proprietor, without first recording the alleged assignment to it from Natamsa; that such publication violated the copyright laws and by reason thereof plaintiff abandoned its alleged copyright and dedicated the material in the book to the public.

The affidavit of Winchell, submitted in opposition to plaintiff's motion describes the circumstances in which the column was written and sets forth that defendants' publication was without knowledge of plaintiff's publication and in good faith.

In opposition to plaintiff's motion, the third-party defendant submits a photostat of the assignment from Natamsa to plaintiff, the accuracy and completeness of which are not disputed. This is dated May 18, 1948 and by it the assignor "hereby assigns" to plaintiff all its right, title and interest in the copyright of "The Romance of Money". A photostatic copy of the certificate of the Register of Copyrights, attesting that the assignment was received in the Copyright Office on May 20, 1948 and that a search did not disclose the recordation of any other assignment referring to said work, was also submitted and its accuracy and completeness are likewise not disputed. From these documents, it would appear that plaintiff did not acquire the copyright by assignment from Natamsa until upwards of four months after the alleged infringing publication. The assignment does not in terms confer any rights against prior infringers.

To meet this, plaintiff states, by affidavit of its president, that although the assignment recorded on May 20, 1948 was executed by Natamsa on May 18, 1948, that assignment was merely a "confirmatory" assignment, the "actual" assignment having taken place on September 11, 1947 pursuant to an agreement dated July 17, 1947 between Natamsa and plaintiff's president individually. A photostatic copy of the agreement of July 17, 1947, referred to in the affidavit, is attached thereto.

This agreement is between Natamsa and Harold E. Group (not Group Publishers, Inc., plaintiff herein), and the affidavit submitted on behalf of the third-party defendant, and not controverted, shows that plaintiff corporation did not come into existence until July 22, 1947, i. e., five days after the agreement with Mr. Group was executed. By said agreement, Natamsa sells to Harold E. Group and he purchases, the assets listed on Schedules "A" and "B", thereto annexed, "effective immediately after the publication of the August 1947 issue of Savings Bank Journal or on September 2, 1947, whichever is earlier". The agreement recites that the seller has executed a bill of sale and delivered it to Frederick W. Marquand, Esq., its attorney, in escrow; there is also a provision that the buyer contemplates the organization of a New York corporation for the purpose of taking over the assets which are the subject of the contract and that "upon notice to the seller that such corporation has been organized" the corporation shall be regarded and recognized as the buyer for all purposes under the agreement, as though originally designated as the buyer in the agreement. The agreement provides that the "transaction" shall close immediately after the publication of the August 1947 issue of the Savings Bank Journal or on September 2, 1947, whichever is earlier, at which time the bill of sale shall be delivered to the buyer. Annexed to the agreement is a copy of the bill of sale referred to, by the terms of which Natamsa grants and conveys to Harold E. Group the property listed on Schedules "A" and "B" thereto annexed, among which property is an item described "assignment of copyright for `The Romance of Money' from Natamsa Publishing Company, Inc. to Group Publishers, Inc." Mr. Group's affidavit states that the bill of sale was delivered to him by the escriant on September 11, 1947, and this is confirmed by the affidavit of Mr. Marquand, the escriant.

The question presented by the motion is whether or not a triable issue is shown to exist with respect to (a) the copyrightability of the material in plaintiff's book; (b) whether the copyright has been infringed; (c) whether or not plaintiff was the owner of the copyright at the time of the alleged infringement; and (d) the effect of plaintiff's publication bearing a copyright notice stating that plaintiff was the copyright proprietor, prior to the recording of the assignment from Natamsa to plaintiff.

The copyrightability of pla...